Reply All Corp. makes software that allows users to “create and share publicly available conversations.” It told a federal court in Brooklyn that Gimlet’s popular podcast was likely to cause consumer confusion.
The district court ruled for Gimlet, and the U.S. Court of Appeals for the Second Circuit agreed. It found all of the factors in the likelihood-of-confusion analysis favored the podcast network.
RAC’s mark wasn’t strong because it “suggests what Reply All may do—respond to multiple individuals’ questions and conversations” and because RAC didn’t show it had become distinctive in the computer-services market, the court said.
It also found RAC and Gimlet’s marks weren’t similar in context despite using the same name. RAC’s logo and Gimlet’s early logo at issue both reference a “ubiquitous email icon with which consumers are already likely to be familiar,” the court said. Gimlet’s “Reply All” mark will normally be spoken or used on podcasting platforms, while RAC’s will appear on its website or third-party sites, it said.
“Thus, while the two marks undoubtedly share aural and typographic similarities, they are unlikely to appear in the marketplace in a similar manner,” the Second Circuit said.
The court also said the marks don’t cover related products and aren’t used in the same trade channels.
“The vast majority of Gimlet’s consumers listen to their podcasts, including Reply All, and those consumers encounter the Reply All show wherever they get their podcasts,” the court said. “By contrast, RAC’s services are embedded within webpages—primarily third-party websites. An end consumer would therefore rarely, if ever, view the parties’ respective marks in the same trade channels.”
RAC’s isolated examples of actual confusion—such as accidental tags on social media and “Reply All” listeners mistakenly contacting the company—also didn’t convince the court that confusion was likely. The Second Circuit also said that advertisers were “reasonably sophisticated” and unlikely to be confused and that RAC didn’t provide any evidence that the average internet user would be confused.
Judges John M. Walker Jr., Robert D. Sack, and Richard J. Sullivan wrote the joint opinion.
Browne George Ross O’Brien Annaguey & Ellis LLP represented RAC. Wolf, Greenfield & Sacks PC represented Gimlet.
The case is Reply All Corp. v. Gimlet Media LLC, 2d Cir., No. 20-952, unpublished 2/19/21.