By Brian Craig, J.D.
The visual similarity of marks held by a seller of vaping supplies and an apparel seller, and the strength of the complaining apparel seller’s mark, weigh in favor of finding a likelihood of confusion.
The U.S. Court of Appeals in Denver has concluded that a jury must decide whether a likelihood of initial interest and post-sale confusion exists between similar marks that feature a stylized fleur-de-lis. In reversing a Utah federal district court’s grant of summary judgment, the court found that a genuine issue of material fact exists in the likelihood of confusion between the registered mark owned by a California-based apparel seller and the mark registered by a Utah-based seller of vaping accessories and promotional apparel (Affliction Holdings, LLC v. Utah Vap Or Smoke, LLC, August 27, 2019, Lucero, C.).
Affliction Holdings LLC, which is headquartered in California, designed and sold apparel and accessories traditionally associated with the mixed martial arts community. Utah Vap or Smoke, LLC, which is headquartered in Utah, primarily sold vaping accessories, but it also sold a limited amount of promotional apparel. Affliction filed suit against Utah Vap alleging trademark infringement under the Lanham Act and false designation of origin. The federal district court in Salt Lake City, Utah, granted Utah Vap’s motion for summary judgment, finding no evidence to support a finding of likelihood of confusion. Affliction Holdings appealed to the Tenth Circuit, which reserved the grant of summary judgment.
Similarity of marks. In analyzing the likelihood of confusion factors, the Tenth Circuit first concluded that there are sufficient similarities in the marks to weigh in Affliction’s favor. In this case, the degree of similarity between the parties’ marks is high with significant stylistic overlap. Both marks are circular, with lettering running inside an outer circle. Both marks have the same word taking up approximately half of the total text. Both marks also contain a heavily stylized fleur-de-lis with similar appearance, even though oriented in opposing directions. Particularly in initial interest or post-sale contexts, a consumer could plausibly be confused as to a product’s origin. Because the court gives the similarities of the marks more weight than the differences, there are sufficient similarities in the marks to weigh in Affliction’s favor.
Strength of mark. The court also concluded that the strength of Affliction’s mark weighs in favor of likelihood of confusion. Utah Vap concedes that Affliction’s mark has some degree of strength. Affliction has sold goods with its marks since 2005, had revenues of more than $275 million in the last six years, and spent more than $3.2 million on advertising and marking since 2009. Thus, Affliction demonstrated that its mark is both conceptually and commercially strong.
Other factors. The Tenth Circuit held that the other factors do not overcome the visual similarity of the marks and the strength of Affliction’s mark. The record indicates the marks are placed on some number of similar products and are marketed through at least some similar channels. The remaining factors—the absence of specific evidence that Utah Vap deliberately adopted its mark with an intent to infringe, of actual customer confusion, or of the level of consumer care—do not overcome the prior factors. As Utah Vap failed to meet its burden of showing that no reasonable juror could find a likelihood of confusion and that a genuine issue of material fact exists as to likelihood of confusion, the appeals court reversed the district court’s grant of summary judgment.
Evidence of damages. Utah Vap also alleges that Affliction failed to provide a sufficient computation of damages, and thus a jury would have insufficient evidence to award damages even if it found a likelihood of confusion between the marks. As the district court held there was no likelihood of confusion, it was not necessary to determine whether to allow more time for the parties to conduct discovery on the issue of damages. The Tenth Circuit remanded the case to the district court to consider, in its discretion, whether to permit additional discovery on damages.
This case is No. 18-4146.
Attorneys: Brent H. Blakely (Blakely Law Group) for Affliction Holdings, LLC. Clinton E. Duke (Durham Jones & Pinegar) for Utah Vap or Smoke, LLC.
Companies: Affliction Holdings, LLC; Utah Vap or Smoke, LLC
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