By Cheryl Beise, J.D.
Use of GORILLA GYM mark on indoor pull-up bars and accessories was likely to cause confusion with GORILLA PLAYSETS mark for outdoor playsets.
The federal district court in Atlanta did not err in finding that Velex Corporation’s use of the mark GORILLA GYM on indoor pull-up bars and accessories infringed PlayNation Play Systems’ previously registered GORILLA PLAYSETS mark for outdoor playsets, the U.S. Court of Appeals in Atlanta has held. In view of Velex’s infringement, cancellation of Velex’s trademark registration was appropriate. However, the district court’s willful infringement finding, purportedly based solely on Velex’s continued use of its facially valid mark after the complaint was filed, was reversed and the case remanded for reconsideration of appropriate damages (PlayNation Play Systems, Inc. v. Velex Corp., May 21, 2019, Wilson, J.).
Since 2002, PlayNation Play Systems, Inc., has manufactured children’s outdoor playground equipment using the GORILLA PLAYSETS mark and design. PlayNation owns three trademark registrations for GORILLA PLAYETS for games and other playthings in International Class 28. Velex Corporation sold doorway pull-up bars and accessories—including swings, trapezes, and rings—under the GORILLA GYM mark and design. In 2014, Velex obtained a trademark registration for GOORILLA GYM for similar goods in Class 28. Both parties’ marks included a drawing of a gorilla. In 2014, PlayNation sued Velex Corporation for trademark infringement. Following a bench trial, the district court entered judgment in favor of PlayNation, awarded damages, and ordered cancellation of Velex’s trademark. Velex appealed.
Trademark infringement and cancellation. Velex conceded that PlayNation had priority in its mark, but argued that the district court erred by concluding that consumers would likely be confused by Velex’s use of Gorilla Gym. The district court held that all likelihood of confusion factors, except the defendant’s intent, weighed in favor of confusion.
The Eleventh Circuit reviewed the district court’s likelihood of confusion finding for clear error. The district court did not err in finding that PlayNation’s mark was strong. The mark was incontestable and there was no evidence that other businesses had used the mark "gorilla" in connection with play equipment. The district court properly found that the parties’ marks were similar because the dominant portion of both marks consisted of an image of a large gorilla and the word "gorilla." While the colors and fonts in the marks were different, and the gorillas were different and found in different positions in the respective marks, these differences did not make the marks similar.
The district court did not clearly err in finding that the products, retail outlets, and advertising of PlayNation and Velex were similar. Velex argued that it sold only outdoor products, while PlayNation sold only indoor products. However, PlayNation and Velex each sold a core unit with separate attachable accessories for children, including swings, ropes, and rings. In addition, both parties used similar means of advertising and sold their products through similar retail outlets, including big box stores, their own websites, and other online retailers like Amazon and Walmart. Consumers could believe that that the products originated from the same source.
To show actual confusion, PlayNation produced two ultimate purchasers of PlayNation’s Gorilla Playsets swing sets who contacted Velex for customer service. In addition, there was evidence of confusion in comments consumers posted on retail websites selling Gorilla Gym playsets. This evidence supported a finding of actual confusion. PlayNation was not required to produce survey evidence.
Velex contended that the district court erred by not relying on the USPTO’s decision that Velex’s mark was registrable. Citing the Supreme Court’s decision in B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (2015), Velex argued that issue preclusion prevented the district court’s likelihood of confusion finding. The Eleventh Circuit disagreed. B&B Hardware dealt with an adversarial proceeding before the Trademark Trial and Appeal Board and district court litigation between the same parties regarding the same marks. In this case, PlayNation did not oppose Velex’s trademark application and was not a party to proceedings before the USPTO. The district court was not bound by the USPTO’s registration of Velx’s mark.
The district court did not err in holding that Velex’s mark was likely to cause confusion with PlayNation’s mark. In addition, having concluded that Velex infringed on PlayNation’s trademark, it was not an abuse of discretion for the district court to order cancellation of Velex’s trademark registration.
Willful infringement and profits award. This district court concluded that Velex willfully infringed on PlayNation’s trademark and awarded PlayNation Velex’s profits for sales of its Gorilla Gym’s products. A successful plaintiff may recover a defendant’s profits in trademark cases where (1) the defendant’s conduct was willful and deliberate, (2) the defendant was unjustly enriched, or (3) it is necessary to deter future conduct.
The Eleventh Circuit found that the district court erred in finding that Velex’s infringement was willful. The district court found willful infringement solely based on Velex’s continued sale of its Gorilla Gym products after it was served with PlayNation’s complaint. However, when it received PlayNation’s complaint, Velex had a valid registered trademark on Gorilla Gym, the appeals court pointed out. In addition, PlayNation did not obtain a preliminary injunction, and at the time, no court had adjudicated whether Velex was infringing on PlayNation’s trademark. Velex’s "continued sale under the color of a valid federal trademark cannot alone establish willfulness," the court said. The Eleventh Circuit vacated the district court’s damages award and remanded the case for the district court to "consider whether other evidence of willfulness exists and whether … alternative theories [could] support an accounting of profits.’
The case is No. 17-15226.
Attorneys: Marc Brian Hershovitz (Marc B. Hershovitz, PC) for PlayNation Play Systems, Inc. d/b/a Gorilla Playsets. Robert M. Ward (Robert M. Ward, Attorney at Law) for Velex Corp. d/b/a Gorilla Gym.
Companies: PlayNation Play Systems, Inc.; Velex Corp.
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