Modern Storage Media (MSM) has prevailed in a federal trademark lawsuit brought by Arkansas self-storage operator Modern Storage, LLC.
On Sept. 30, U.S. District Judge D.P. Marshall Jr. granted summary judgment to Store Local Media Corporation, which operates Modern Storage Media, on Modern Storage's claims of trademark infringement and unfair competition. The lawsuit was filed in December 2023.
At issue was whether consumers were likely to be confused about the source or affiliation of MSM's self-storage publications because of the similarity between the companies' names.
At the time the lawsuit was filed, Travis Morrow, CEO of MSM, said, “In the 43 years of its existence, MSM has served independent operators of the industry and it’s unfortunate that one of them has decided to enter into litigation against us. In all of those years, MSM has never rented a storage unit to a single tenant given our role as an industry news and trade journal.”
In reaching its decision, the court found that “Modern Storage” is a descriptive and conceptually weak mark. The court stated that MSM's print and online publications do not directly compete with Modern Storage's self-storage units and that the companies serve different customers. MSM's customers are primarily self-storage professionals, including subscribers and advertisers, whom the court found would exercise greater care in identifying the source of the publications.
The court also found no evidence that Store Local Media intended to create confusion, noting that the Modern Storage Media name grew out of the company's 2023 acquisition of Mini-Storage Messenger and its desire to retain the publication's established “MSM” shorthand while rebranding.
Modern Storage cited social media mis-tags and several trade-show mix-ups as evidence of actual confusion. In addressing Modern Storage's reliance on mis-tagging as the core of its argument, Marshall noted, “That's novel.”
The court found those incidents insufficient, concluding that the record showed “at most, casual confusion” and that the examples of “misunderstanding, inattention, or ambiguity” did not indicate actual confusion among consumers.
Marshall also addressed the potential for initial confusion online. “Some initial fuzziness is the hardly surprising outcome of the circumstances as a whole: a company with a weak, descriptive mark such as ‘Modern Storage,’ doing business in an internet age where hurry is the norm, in the large and growing self-storage industry.”
“To expect Store Local Media, or any business, to police the internet isn't reasonable.”
—U.S. District Judge D.P. Marshall Jr.
Marshall concluded, “Store Local Media is entitled to summary judgment on all Modern Storage's trademark infringement and unfair competition claims.” Store Local Media's motion for summary judgment was granted, while Modern Storage's motions for summary judgment were denied.
“This is the best outcome we could have hoped for,” said Morrow. “This allows us to keep our readers up to date, using ‘modern’ to underscore that the news, information, and data we provide is the most current they’ll find in the industry.”