IP Law Daily ONEPUL dog-waste bag mark not infringed as matter of law; questions remain on validity
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Friday, April 27, 2018

ONEPUL dog-waste bag mark not infringed as matter of law; questions remain on validity

By Thomas Long, J.D.

Because there was conflicting evidence as to whether the registered mark ONEPUL, for dog waste disposal bags and dispensers was valid, a district court erred in granting summary judgment in favor of the mark owner on the question of validity, the U.S. Court of Appeals in St. Louis has decided. Although the fact that the mark had been registered without a requirement of a showing of secondary meaning constituted evidence that the mark was inherently distinctive, there was evidence that the mark was used by competitors in a descriptive or generic way. The question of mark validity was therefore one for the trier of fact, not the district court. The district court correctly held, however, that a defending competitor’s use of the term "one-pull" to describe its own bags was not likely to cause consumer confusion with the ONEPUL mark. The evidence submitted by the mark owner showed only that the parties were in competition; this alone was not sufficient to permit a jury to infer that consumers could be confused by the defendant’s product descriptions. Accordingly, the district court’s grant of summary judgment in favor of the defendant regarding that mark was affirmed (ZW USA, Inc. v. PWD Systems, LLC, April 26, 2018, Kelly, J.).

Plaintiff’s marks. Plaintiff ZW USA, Inc.— doing business as Zero Waste USA—marketed and sold wicket-style dog waste bags under the names "ONEPUL" and "SINGLEPUL." Wicket bags are designed to hang from prongs or hooks inside or on a bag dispenser. ZW also sold the ONEPul® Bag Dispenser. In August 2014, ZW obtained federal registration for its marks ONEPUL and SINGLPUL.

Defendant’s product descriptions. In 2013, defendant PWD Systems, LLC, began selling wicket bags and roll bags under the name "BagSpot." On its website and in its advertisements PWD described its wicket bags as "one pull" or "one-pull" bags. The bags were advertised as fitting "most header/wicket/one-pull style dispensers."

Lower court proceedings. ZW sued PWD in 2014, asserting claims for trademark infringement under the Lanham Act, trademark infringement and law unfair competition under Missouri common law, and trademark dilution under Missouri’s anti-dilution statute. PWD counterclaimed for declaration of noninfringement on various grounds and for cancellation of ZW’s trademarks as invalid. Both sides moved for summary judgment. The district court denied ZW’s motion. Granting summary judgment for PWD on infringement, but denying it on the question of validity, the district court concluded that, although ZW’s ONEPUL mark was valid, confusion was unlikely between the parties’ products. Both parties appealed. The district court did not rule on the validity of the SINGLEPUL mark, and that mark was not at issue on appeal.

Infringement. ZW asserted that PWD’s description of its wicket bags as "one-pull" infringed on its ONEPUL trademark. The district court granted PWD’s motion for summary judgment, finding that there was no likelihood of confusion. Reviewing the issue de novo, the Eighth Circuit affirmed. First, the court stated that ONEPUL was a conceptually weak mark. It was little more than a misspelling of "one-pull." ZW’s significant advertising expenditures constituted circumstantial evidence of commercial strength, but this evidence said little about "minds of consumers," in the court’s view. The ONEPUL mark was similar to PWD’s descriptive term "one-pull," but the manner in which consumers would encounter those usages did not weigh in favor of a finding of likely confusion. The court specifically noted that PWD’s "one-pull" bags were sold from a website that prominently displayed PWD’s trade name, BagSpot. The fact that ZW and PWD competed in the market for dog-waste disposal products rendered confusion more likely, the court said, but a showing of direct competition was not enough, by itself, to establish a likelihood of confusion. The court stated that there was "minimal evidence" that PWD intended do anything but compete fairly with ZW, and it rejected ZW’s contention that PWD acted with the intent to pass off its bags as ZW’s. ZW’s knowledge of PWD’s mark did not, by itself, show bad intent. There was no evidence of actual confusion. Balancing the likelihood of confusion factors, the court decided that the only one favoring ZW was the degree of competition between the parties, and this was not enough to raise a genuine issue of material fact on the question. Therefore, the district court’s grant of summary judgment of noninfringement was affirmed.

Validity. The appellate court reversed, however, the district court’s decision regarding PWD’s invalidity counterclaim. The district court both denied PWD summary judgment on the question and determined that ZW had made out a prima facie case that the ONEPUL mark was valid. According to the Eighth Circuit, there was a factual dispute as to whether the ONEPUL mark was generic or merely descriptive without secondary meaning. The USPTO registered the mark without requiring ZW to show that it had acquired secondary meaning; therefore, the registration constituted evidence that the mark was inherently distinctive. PWD therefore had the burden of showing that the mark was no valid. On genericness, PWD submitted printouts from several websites showing that competitors used the phrases "one pull" or "one-pull" to describe their dog bags. PWD contended that this evidence established that "one-pull" was just a type of dog bag. On descriptiveness, PWD submitted ZW’s product descriptions to show that ONEPUL was a variant of the phrase "one-pull." PWD argued that this term immediately conveyed the message that ZW’s bags were dispensed with one pull of the hand. Because the parties had presented conflicting evidence, the only way the district court could have granted ZW summary judgment was to improperly decide that ZW’s evidence was stronger or more credible than PWD’s evidence. This was a question for the trier of fact, the appellate court said. The case was remanded for further proceedings.

The case is No. 16-3999.

Attorneys: Gordon E. Gray, III (Mandour & Associates) for ZW USA, Inc. Richard L. Brophy (Armstrong Teasdale LLP) for PWD Systems, LLC.

Companies: ZW USA, Inc.; PWD Systems, LLC

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