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Missouri media strategies firm sues competitor over name

By Jonathan Bilyk | Mar 21, 2014

A Missouri-based media strategies firm has brought a federal trademark infringement suit against a competitor it claims intentionally rebranded itself with a name similar enough to use its good name to drum up business from potentially confused clients.

On March 17, True Media LLC of Columbia Mo. filed a six-count infringement suit in Chicago's federal court against its Los Angeles-based competitor, TrueX Media Inc., and TrueX’s CEO and founder Joe Marchese.

The suit stems from Marchese’s November 2013 decision to change the name and identity of the company he helped found in 2006 as SocialVibe. The company had built its business creating advertisements to run in mobile video games and streaming music services.

According to published reports, Marchese left Socialvibe around 2011 to pursue other business ventures, but returned to the company in 2013.

At that time, he moved to give the company “a facelift" -- changing its name to TrueX and creating new media and advertising services called TrueAttention and TrueResults -- to reflect a new emphasis on creating interactive ads to run on streaming online television services, according to a November report in the Los Angeles Business Journal.

In addition to its headquarters in Los Angeles, TrueX operates offices in Chicago, Atlanta and New York City.

True Media, however, asserts in the recently-filed suit that TrueX's new company name and the names of its commercial products are far too close to its own trademarked brand.

Since it was founded in 2005, True Media has built a business that now operates throughout North America from its headquarters in Columbia and has offices in St. Louis,  and Calgary, Alberta, Canada. The company provides traditional and online media campaign services, including interactive and social media services.

In its complaint, True Media describes itself as “a recognized industry leader in adapting to the changes in traditional ‘media planning and buying’ necessitated by the revolutionary changes in the media environment” brought on the by the rise of such phenomena as social media.

“True’s (trade)mark has penetrated into the minds of a nationwide base of relevant purchasers and non-purchasers with the rise of the Internet over the last 10 years,” True Media asserts in its complaint.

True Media obtained its trademark from the U.S. Patent and Trademark Office in 2006, and has marketed itself and its products under that mark ever since, the suit states.

Claiming it obtained “incontestability status” for its trademark in April 2013, the plantiff company further alleges it has “policed its mark on several occasions,” including threatening litigation against potential infringers.

True Media said it was aware that TrueX, then known as SocialVibe, was a competitor, and offered similar services.

But True Media said Marchese and TrueX went beyond good faith competition by changing that company’s name to something so “confusingly similar.”

“Marchese thus traded on the progressivism contained in the goodwill of the (True Media) mark by appropriating it for his company’s ‘facelift’ in the form of the confusingly similar infringing marks (TrueX, True Attention and True Results,)” True Media asserts.

True Media noted its own trademarks predate TrueX’s “by eight years,” and True Media, as a business, is even older than SocialVibe.

“TrueX was aware of the ownership of the mark by True, and despite such knowledge, willfully and intentionally set off on a course of conduct to use the mark in sales, advertising and marketing, in an attempt to confuse the public, trade off the reputation, ingenuity and goodwill of True, all to the detriment of True,” True Media contends.

True Media states in its suit that it contacted TrueX, asking it to stop marketing itself and its products under the potentially infringing name. In February, TrueX informed True Media it would not change its name, prompting it to file the suit.

The plaintiff company has requested unspecified treble damages based on a full accounting of TrueX’s profits and income derived from the name change.

True Media is being represented in the action by attorney Nelson L. Mitten of the firm of Riezman Berger P.C. in  St. Louis.

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