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Checkpoint Sys., Inc. v. Check Point Software Techs., Inc. , ___F.3d. ___ (3d Cir., Oct. 19, 2001); http://laws.lp.findlaw.com/3rd/002373.html
 

Checkpoint Systems, the Plaintiff, produces commercial electronic security control systems designed to track the physical location of goods in order to prevent merchandise theft. Checkpoint Systems, Inc. registered the mark “Checkpoint” with the U.S. Patent & Trademark Office in 1967, while Check Point Software Technologies, Inc., was founded in Israel in 1993. Checkpoint Systems appealed a District Court decision finding no likelihood of confusion, and therefore no violation of the Lanham Act, between its trademark and the “CHECKPOINT” trademark of Check Point Software Technologies, Israel’s software giant and producer of “firewall” technology products.

On October 19, 2001, the United States Court of Appeals for the Third Circuit affirmed the District Court decision, stating that the two companies compete in different markets, marketing to different consumers, each of whom exercise a high degree of care in making purchasing decisions. It is not enough that both marks are nearly identical, and that both companies operate in the general field of corporate security, rather courts must weigh the strength of the mark in the industry in which the infringement is alleged. Because the trademark strength of Checkpoint Systems is in the physical article security market, Checkpoint Systems is not entitled to any heightened trademark protection in the domain of network access security. Check Point Software Technologies, Inc. is therefore free to use its “CHECKPOINT” trademark in the field of network access security since this is there is little, if any, likelihood of confusion between the two companies.

The Court’s decision is this case indicates that although likelihood of confusion is generally established based on the weighing of many factors, one must place added consideration on the strength of a trademark in the context of the specific industry in which the infringement is alleged. It is important for practitioners to note that although Check Point Software Technologies, Inc. was successful in upholding its Trademark, this success came at the high cost of litigation.

The court noted that when founding Checkpoint Software in 1993, the founders were unaware of the fact that a trademark had already been issued for the name “Checkpoint” to Checkpoint Systems. A simple, inexpensive trademark search in 1993 would have revealed that information and should have led the founders of Checkpoint Software to simply choose another name rather than risk expensive litigation.

By Craig Weiss, U.S. Patent Attorney
Jerusalem
Of Counsel, Zell, Goldberg & Co.
Of Counsel, Weiss & Moy, P.C. Washington, D.C.

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