Recent Decisions on Trademark Infringement and How Ninth Circuit Analyzes Likelihood of Confusion Test
"Likelihood of confusion" is the defining test in deciding whether a claim for trademark infringement claim will succeed or fail in a court of law. However, the cases below demonstrate that when analyzing a trademark infringement claim for likelihood of confusion, while the courts review and analyze the same factors, courts can weigh the factors differently in ultimately reaching their decision. This article addresses this issue.
Initially, a trademark is "a word, phrase or symbol that is used to identify a manufacturer or sponsor of a good or the provider of a service. It's the owner's way of preventing others from duping consumers into buying a product they mistakenly believe is sponsored by the trademark owner." Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900 (9th Cir. 2002).
When attempting to prove a claim for trademark infringement, the moving party must meet a two-prong test.
1. Evidence of a valid, protectable trademark; and
2. Defendant’s use of the mark is likely to cause confusion.
A plaintiff can show he/she/it has a protectable trademark in three different manners:
1. He/she has a federally registered trademark in goods or services;
2. The trademark is descriptive but has acquired a secondary meaning;
3. He/she has a suggestive mark, which is inherently distinctive and protectable.
Registration of a mark with the United States Patent and Trademark Office ("USPTO") constitutes prima facie evidence of the validity of the registered mark and of the registrant’s exclusive right to use the mark on the goods and services specified in the registration. Applied Info. Sciences v. eBay, Inc., 511 F.3d 966, 970 (9th Cir. 2007). Once this is shown, the burden shifts to the defendant, who can attack the validity of plaintiff’s trademark. One way to attack the validity of a trademark is by showing that someone else first used the mark in commerce. Another way to do this is to show that the registration process was flawed. Blue v. Johnson, 2008 WL 2024995 at * 4 (N.D. Cal. 2008).
Once the validity of the trademark is recognized by the Court, then the Court determines whether there is a likelihood of confusion between the moving party’s goods or services, on the one hand, and the responding party’s goods or services, on the other. The test for likelihood of confusion is whether a "reasonably prudent consumer in the marketplace is likely to be confused as to the origin of the goods or services bearing one of the marks." Dreamworks Prod. Group v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998).
In order to make this determination, the Ninth Circuit has set forth eight factors to weigh and evaluate in determining whether a likelihood of confusion exists between the goods or services. This is known as the Sleekcraft test, so named because of the case entitled AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-349 (9th Cir. 1979). In this case, the Ninth Circuit identified eight factors to be considered and analyzed in determining whether there is a likelihood of confusion. These factors are the following:
1. Strength of the mark;
2. Proximity or relatedness of the goods;
3. Similarity of the marks (especially in sight, sound and meaning);
4. Evidence of actual confusion;
5. Marketing channels;
6. Type of goods and purchaser care (meaning how much care does a purchaser take before buying the product);
7. Intent when choosing the mark; and
8. Likelihood of expansion of the product lines.
Although these factors must all be considered, "the factors are not rigidly weighed." Blue, supra. In fact, the Ninth Circuit has held that: "this eight-factor test for likelihood of confusion is pliant. Some factors are much more important than others, and the relative importance of each individual factor will be case specific." Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054 (9th Cir. 1999).
In Blue, supra, plaintiff Violet Blue ("Plaintiff Blue"), who according to the case is well-known in the field of human sexuality and sexual health, filed a lawsuit against defendant Aida Mae Johnson, an adult film actress who used the stage name "Violet Blue," ("Defendant Blue") for trademark infringement and injunctive relief for using the name "Violet Blue." Since May of 1999, Plaintiff Blue had used her name to regularly publish articles on the Internet about human sexuality and pornography. In addition, plaintiff had written about sex for several publications, including the San Francisco Chronicle and Forbes Magazine. In March of 2008, the USPTO registered "Violet Blue" as a trademark and recognized that Plaintiff Blue first used her name in commerce on May 1, 1999. Defendant Blue admitted she first used the name "Violet Blue" in December of 2000 and that she appeared in over 100 adult films under the name "Violet Blue."
The alleged confusion arose in late October of 2006 when Plaintiff Blue received notices from others that she would be attending the Exotic Erotica Ball in South San Francisco, when that was not the case. Shortly thereafter, Plaintiff Blue learned that Defendant Blue would be attending that event. Plaintiff Blue later learned that there were other instances in which Plaintiff Blue was confused with Defendant Blue. Therefore, in October of 2007, Plaintiff Blue brought a lawsuit against Defendant Blue.
As set forth above, the Court applied the two-part test. First, the Court held Plaintiff Blue had a valid, protectable trademark in the name "Violet Blue" because Plaintiff Blue had a federally registered trademark. Moreover, Plaintiff Blue’s name was well-known within her field of expertise and had acquired "secondary meaning." Thereafter, the Court applied the Sleekcraft test and found there was a likelihood of confusion between Plaintiff Blue and Defendant Blue. In particular, the Court applied the second factor (the proximity of goods and services), the third factor (similarity of the marks) and the fourth factor (evidence of actual confusion) in making its findings. The Court found that both Plaintiff Blue and Defendant Blue were involved in the sex industry and that their use of the name "Violet Blue" was in relationship to goods and services that were very similar. Regarding the similarity of the marks, the Court held they were identical. Finally, regarding evidence of actual confusion, Plaintiff Blue came forward with evidence demonstrating actual confusion between her and Defendant Blue, including the fact that Plaintiff Blue, not Defendant Blue, would be appearing at the Exotic Erotic Ball. Therefore, based primarily on these three factors, Plaintiff Blue demonstrated a likelihood of confusion and her request for a preliminary injunction was granted.
In U.S. Olympic Committee v. Xclusive Leisure & Hospitality Ltd., 2008 WL 3971120 (N.D. Cal., August 14, 2008), the United States Olympic Committee ("USOC") sued Xclusive for trademark infringement, alleging Xclusive set up a ticket website to sell tickets to the 2008 Beijing Olympics and used the USOC’s trademarks (including the Olympic rings and the word "Olympic") in order to lend authenticity to its website, when it did not have the authority to do so. First, the Court found the Olympic rings and the word "Olympic" were valid trademarks, as they were federally registered trademarks. Second, the Court applied the eight-factor test and found that Xclusive’s use of the Olympic rings and the name "Olympic" on its website was likely to confuse the reasonably prudent consumer into believing its website was official when, in fact, it was not an officially licensed website by the USOC. The Court found the USOC’s trademarks were strong and that Xclusive’s use of the Olympic marks were nearly identical or identical to the USOC’s marks. The Court also held that since Xclusive was offering the same goods (tickets to the 2008 Beijing Olympics), offered by the USOC, the parties’ goods and services were highly related. In addition, there was evidence of actual confusion (since Forbes Magazine thought that Xclusive was an official website for 2008 Olympic tickets). In addition, Xclusive’s intent in using the USOC’s marks were in bad faith, as it waw using these marks similar to the USOC’s marks in order to deceive consumers into believing that they were purchasing "official tickets" to the 2008 Beijing Olympics. Thus, in this case, the Court found that 5 of the 8 factors weighed heavily in favor of the USOC and, therefore, issued a preliminary injunction in favor of the USOC.
In a case which may appear as though it is an obvious case of trademark infringement, the Court did not think there was enough evidence to grant summary judgment. In Hit Entertainment, Inc. v. National Discount Costume Co., 552 F. Supp. 2d 1099 (S.D. Cal. 2008), Hit Entertainment, the owners of intellectual property rights in the children’s television characters "Barney the Dinosaur", "Baby Bop" and "BJ", as well as "Bob the Builder", sued National Discount, a costume company, for trademark infringement, alleging that National Discount infringed on its trademarks in these characters by selling costumes of these characters. After applying the eight-factor test, the Court denied Hit Entertainment’s motion for summary judgment. In particular, the Court did find that Hit Entertainment had very strong marks in connection with these characters, that National Discount’s costumes were substantially similar to the protected characters due to similar color combinations, head shapes and facial features and that National Discount intended that their costumes look similar to Hit Entertainment’s protected characters. However, because there was little evidence with respect to the rest of the Sleekcraft factors (such as marketing channels used and evidence of actual confusion), the Court denied Hit Entertaiment’s motion for summary judgment, even though Hit Entertainment had strong evidence on three of the eight factors and even though the Court acknowledged that Hit Entertainment appears to have a "strong claim of trademark infringement." Id. at 1105.
In Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008), Jada Toys ("Jada"), a manufacturer of toy cars and trucks, sued Mattel for trademark infringement. From 2001 – 2004, Jada produced a line of toy trucks called HOT RIGZ. In 2001, Jada filed an application with the USPTO. The trademark was issued by and registered with the USPTO in 2002. Mattel is a well-known toy company and has marketed its HOT WHEELS miniature vehicle brand since 1968. Jada filed a lawsuit against Mattel for trademark infringement for marks other than the HOT RIGZ mark. In response, Mattel answered Jada’s complaint and filed a counterclaim against Jada for trademark infringement as to Jada’s use of the HOT RIGZ mark. Jada and Mattel filed cross-motions for summary judgment. Both were denied. Mattel appealed the district court’s denial of its motion for summary judgment as to the HOT RIGZ mark. At the district court level, Mattel’s motion for summary judgment was denied for the sole reason that the marks were dissimilar. However, the district court did not weigh or analyze any of the other eight factors in making its ruling. Mattel appealed the district court’s decision on the basis that the district court failed to apply the Sleekcraft test. Jada contended that since the eight-factor test was "pliant" and that "some other factors are more important than others" depending on the facts of the case, the district court was within its right to only consider the dissimilarity of the two marks. The Ninth Circuit disagreed. The Jada court held that: "though it may be true that very dissimilar marks will rarely present a significant likelihood of confusion, dissimilarity alone does not obviate the need to inquire into evidence of other important factors. Only upon such an inquiry may a court ensure that its judgment as to the likelihood of confusion is fully informed and without error." Jada Toys, Inc., 518 F.3d at 633-634. In particular, the Ninth Circuit noted that Mattel had presented "strong evidence of other important factors…to counter the conclusion that dissimilarity alone could be dispositive." Id. at 633.
Prior to Jada Toys, there were two other cases: Brookfield Communications, Inc. v. West Coast Entertaiment Corp., 174 F.3d 1036 (9th Cir. 1999) and Sleeper Lounge Co. v. Bell Manufacturing Co., 253 F.2d 720, 723 (9th Cir. 1958) which arguably stood for the proposition that if two marks were entirely dissimilar, there is no likelihood of confusion (and there was no need to look at the other factors). Now, with the decision in Jada Toys, the Ninth Circuit now requires district courts to weigh and analyze all eight factors of the Sleekcraft test. Even if some of those eight factors are irrelevant or are not weighed as heavily by the Court in its analysis, the courts must at least mention and analyze these factors.
What can be gleaned from this sampling of cases is that in a trademark infringement case, while courts apply the "likelihood of confusion" test in each case, the weight of the factors in each case may very well be different. The nucleus of facts will guide the Court in deciding which factors are most important to weigh in reaching a conclusion whether a likelihood of confusion exists in that particular case.
Please call the Law Offices of David H. Boren if you find yourself in a situation in which you believe your trademark is being infringed.