holding that Commodity Exchange’s proposed “Comex 500 Stock Index” violated the Lanham Act by tending to cause consumers to confuse the Comex 500 Stock Index and the Standard & Poor 500 Index
How later courts described this case
- holding that Commodity Exchange’s proposed “Comex 500 Stock Index” violated the Lanham Act by tending to cause consumers to confuse the Comex 500 Stock Index and the Standard & Poor 500 Index
- noting that “[i]n the preliminary injunction context [of a trademark action], a showing of likelihood of confusion as to source or sponsorship establishes the requisite likelihood of success on the merits as well as risk of irreparable harm”
- suggesting that third-party companies might be free to base contracts on the value of indices without a license from the indices’ owner
- recog.nizing that courts “may go much further both to give or to withhold relief in furtherance of the public interest than where only private interests are involved”
Written by the judges who cited it.
The opinion
NEWMAN, Circuit Judge
(concurring):
When Standard & Poor’s enters the business of publishing an index of selected stock issues, there can be little doubt that another company endeavoring to publish the same index would face liability for misappropriation no matter how it merchandised its product and would face liability for trademark infringement if its merchandising created a risk of confusion between its product and that of Standard & Poor’s. However, when Standard & Poor’s makes its stock index known to the public, different, novel, and, in my judgment, close questions are presented when another company enters a business other than the publishing of stock indices — here, the marketing of futures contracts — and in its business uses the Standard & Poor’s index as a reference point— here, the settlement price for the contracts. And the issues remain different, novel, and close notwithstanding the fact that Standard & Poor’s itself has elected to contract with another entity for the marketing of futures contracts based on the Standard & Poor’s stock index. The issues in this case include the issue of whether Standard & Poor’s has the type of interest in its index that is capable of being protected by license against the unlicensed use by Comex in marketing a futures contract using the Standard & Poor’s index as a settlement price.
I fully agree that the public interest concerns expressed by Judge Pierce weigh heavily in favor of maintaining the status quo pending prompt resolution of the merits, and for that reason concur in the result.