Metropolitan News-Enterprise


Monday, May 22, 2023


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Ninth Circuit:

Holder of Trademark ‘Smart Walkie Talkie’ Not Due Damages for Use of Those Words As Mere Descriptor


By a MetNews Staff Writer


The Ninth U.S. Circuit Court of Appeals held Friday that the proprietor of the trademark “Smart Walkie Talkie” is not entitled to damages from the manufacturer of a competing product called “Onyx” which the manufacturer describes as a “smart walkie talkie.”

Plaintiff Al McZeal sought $500 million in damages in his action against Orion Labs which makes the Onyx devices, and against and Best Buy which market it online, and others. District Court Judge Stephen V. Wilson of the Central District of California on Nov. 8, 2021, dismissed the action for failure to state a claim, and the Ninth Circuit, in a memorandum opinion, affirmed.

Wilson set forth in his order:

“Here, Plaintiffs own complaint and the attachments thereto demonstrate that the Defendants’ use of the term ‘smart walkie talkie’ is a descriptive fair use and Plaintiffs claims accordingly fail as a matter of law.

“In all of the examples that Plaintiff attaches to the complaint, the Defendants uses the term ‘smart walkie talkie’ to describe the product being sold: Orion Labs’ ‘Onyx.’ Each time the phrase ‘smart walkie talkie’ is used, it is accompanied by either ‘Orion’ or ‘Orion Labs’ and ‘Onyx,’ clearly denoting that Onyx is the name of the product, Orion is the creator of that product, and ‘smart walkie talkie’ is merely a descriptor to help consumers understand the product’s capabilities….In no circumstance is the term being used in an attempt to evoke Plaintiffs trademark for his competing walkie talkie product or create consumer confusion.”

The Ninth Circuit’s opinion—signed by Judges Mark J. Bennett, Eric D. Miller, and Lawrence VanDyke—declares:

“The district court properly dismissed McZeal’s trademark infringement and unfair competition claims because they are barred by the classic fair use doctrine.”

The judges discerned no abuse of discretion on Wilson’s part in denying a preliminary injunction.


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