MassMutual Sues JPMorgan Seeking Judgment That ‘RetireSmart’ Doesn’t Constitute Trademark Infringement
October 21, 2014 by Fran Matso Lysiak
BOSTON – Massachusetts Mutual Life Insurance Co. has sued JPMorgan Chase & Co. in federal court over its use of the term “RetireSmart” for financial services, saying it does not constitute trademark infringement on JPMorgan’s rights in the term “SmartRetirement.”
According to its suit, JPMorgan recently demanded MassMutual stop its use of the RetireSmart term, alleging MassMutual’s use is likely to cause confusion with JPMorgan’s use of the term SmartRetirement.
However, there is “a justiciable controversy regarding MassMutual’s right to use the term RetireSmart in connection with its financial investment services free from any allegations by JPMorgan that such conduct constitutes an infringement of JPMorgan’s claimed rights in the term SmartRetirement,” MassMutual contends.
“For at least the past eight years, MassMutual has used the term RetireSmart to identify these investment planning and education services,” the complaint says. “Additionally, MassMutual uses the term RetireSmart in connection with its mutual fund and retirement planning services, which helps it clients make smart financial decisions when saving money for retirement.”
MassMutual said it’s not the only company that uses the terms Retire and Smart related to retirement planning financial services. “Indeed, many individuals and companies use — and in several cases have federally registered — these descriptive terms…in connection with providing services to help people save money for retirement,” the suit says. “To MassMutual’s knowledge, however, none of those companies uses the exact formulation RetireSmart.”
JPMorgan owns federal service mark registrations covering the terms SmartRetirement and JPMorgan SmartRetirement in connection with retirement and investment services, the lawsuit says. “These registrations issued in 2010 and are therefore not incontestable.”
An attempt to speak with JPMorgan Chase was unsuccessful.
MassMutual alleges the term SmartRetirement lacks the legal requirements to be protected under the Lanham Act.
A spokesperson for MassMutual said in an email the company is “confident in our position” but had no additional comment beyond the complaint.
Massachusetts Mutual Life Insurance Co. currently has a Best’s Financial Strength Rating of A++ (Superior).