comparative advertising isn't confusing

Windmar PV Energy, Inc. v. Solar Now Puerto Rico, LLC, 2025WL 725078, NO. 24-1570 (RAM) (D.P.R. Mar. 6, 2025)

A frivolous lawsuit against comparative advertising; thecourt gets the right result at least. Windmar and Solar now compete in the PuertoRico market for the sale and installation of solar energy equipment. Windmarhas registrations with various elements including: the silhouette of the sun’scorona; the words “WINDMAR” or “WINDMAR HOME”; a combination of the colorsorange, blue, black, and grey; and a stylized image of a windmill replacing the“I” in “WINDMAR.” The typical logo shows the words “WINDMAR HOME” written inblue and grey, with the “I” replaced by a blue windmill logo; the words areplaced under and within an orange outline of a sunburst or corona. Windmaralleged that it was the “number one” company in the “solar energy industry inPuerto Rico.”

Solar Now’s marketing campaign featured ads and billboards thatshowed a salesman pointing to a form listing three different options for solarcompanies: a colored logo of Solar Now and two greyscale logos that feature theprofile of a sun and its corona, one titled “PAQUITO SOLAR” and the other“MOLINITO.” Windmar alleged that “MOLINITO” (which translates to “littlewindmill”), when used in conjunction with the sun-related imagery, alludes toWindmar’s logo. Solar Now’s logo is next to a “X” mark of approval while thetwo greyscale logos are placed further down the form, allegedly implying thatthey are inferior options to Solar Now.

This just didn’t plausibly allege likely confusion, althoughthe court relied way too heavily on the dissimilarity of the Windmar marks fromwhat Solar Now actually used, as opposed to the obvious comparative advertisingcontext. At least the court noted that most of the Pignons factorsfavoring Windmar (similarity of goods, channels of trade, advertising, and prospectiveconsumers) “could be true for any two companies competing in the same marketand geographic area, and do not weigh as heavily in the Court’s analysis.” Thecourt declined to rely on nominative use because the First Circuit hasn’tadopted a specific test.

Nor did Windmar successfully plead fame for dilution. Evenif the marks were famous, the comparative advertising and parody exclusionsapplied. “[W]hen viewed in the light most favorable to Plaintiff, the purposeof billboards and social media posts at issue is clear to a reasonableconsumer: humorous comparative advertising showing Solar Now should be chosenover its (fictional or real) competitors.” Separately, the parody exclusionalso applied, because “MOLINITO” “is not a particularly flattering phrase,mocking Plaintiff’s logo and reputation by referencing it as a tiny windmill.”It did not plausibly serve as a source-indicator for Solar Now. “It isabundantly clear that Plaintiff is the subject of Solar Now’s joke.”

Although the court misunderstood descriptive fair use to belimited to personal names, that didn’t matter.