IP Law Daily Snapchat escapes injunction in suit over ‘cartoon eyeball’ mark
Tuesday, May 9, 2017

Snapchat escapes injunction in suit over ‘cartoon eyeball’ mark

By Mark Engstrom, J.D.

Reading glasses designer Eyebobs LLC was not entitled to an injunction that would preliminarily enjoin Snapchat developer Snap Inc. from using a "cartoon eyeball" mark that allegedly infringed similar marks that Eyebobs owned, the federal district court in Minneapolis has ruled. Because the Spectacles mark was not likely to be confused with the registered and common law marks of Eyebobs, a preliminary injunction was not warranted (Eyebobs, LLC v. Snap, Inc., May 8, 2017, Schiltz, P.).

Eyebobs designed and sold reading glasses under an incontestable registered trademark. The mark included an oval, upward-looking, black-and-white "cartoon eyeball" above the word "Eyebobs." The registered mark was typically displayed against a golden-yellow background. Eyebobs also claimed an unregistered, common-law mark that included the eyeball design without the word "Eyebobs."

Snap’s popular mobile application—"Snapchat"—allows users to take photos and videos and send them to other Snapchat users. The company decided to launch a new product—called "Spectacles"—that fixes a camera in a pair of sunglasses. In marketing the new product, Snap used the "Spectacles" mark, which included a round, forward-looking, black-and-white "cartoon" eyeball. The eyeball was typically displayed against a vibrant-yellow background that was often placed near the word "Spectacles."

Eyebobs sued Snap for trademark infringement. According to Eyebobs, Snap’s use of the Spectacles mark infringed its registered and common-law marks. Eyebobs sought a preliminary injunction to enjoin Snap from using the Spectacles mark.

The court considered four factors in its preliminary injunction analysis: (1) the likelihood of success on the merits; (2) the threat of irreparable harm in the absence of an injunction; (3) the balancing of the parties’ harms; and (4) the public interest.

Likelihood of success. Whether Eyebobs would likely succeed on the merits of its infringement claim under the Lanham Act turned on whether the company could prove that Snap’s use of the Spectacles mark created a likelihood of confusion, deception, or mistake on the part of an appreciable number of ordinary purchasers, with respect to an association between Eyebobs and Snap, based on their common use of the marks at issue.

The court conducted a likelihood of confusion analysis based on reverse confusion, which occurs when a large junior user (in this case, Snap) saturates the market with a trademark that is similar or identical to the mark of a smaller, senior user (Eyebobs). The court evaluated the strength and similarity of the parties’ marks, the degree to which the parties’ products competed, Snap’s intention to confuse the public, the evidence of actual confusion, and the conditions of purchase. The court found that all but one of those factors weighed against the likelihood that consumers would be confused by Snap’s use of the Spectacles mark. The single divergent factor was deemed neutral.

Strength of marks. The court found that Eyebobs’s registered mark, which included the eyeball logo and the word "Eyebobs," was "at least suggestive and perhaps arbitrary or fanciful." Its conceptual strength was therefore "substantial." In contrast, the Spectacles mark had "very little commercial strength."

The court noted that Snap had not engaged in a sustained or large-scale advertising of its Spectacles product. Instead, Snap’s promotions appeared to have been limited to setting up temporary Snapbots, operating a now-closed retail store, and selling Spectacles on a dedicated website. Nothing in the record suggested that the Spectacles mark had "anywhere near the commercial strength" that would be necessary to overwhelm the registered Eyebobs mark, particularly among consumers who bought Eyebob products.

Eyebob argued that, in the future, the Spectacles mark would likely gain sufficient commercial strength to overwhelm the registered mark. In support of that contention, however, Eyebob cited the size and resources of Snap and not much more. In the court’s view, nothing in the record suggested that the Spectacles mark would ever gain sufficient commercial strength to overwhelm the registered mark among consumers in the relevant market. On balance, the court decided that the strength-of-marks factor militated against a finding that consumers would likely be confused.

Similarity of marks. The registered mark was dominated by the word "Eyebobs," the court noted, which clearly identified the source of the plaintiff’s product and greatly diminished the possibility of confusion. In addition, the Spectacles mark included the word "Spectacles"—which did not resemble the word "Eyebobs"—in a substantially different font than the word "Eyebobs" in the registered mark. For those reasons, the court found that the similarity of marks factor did not favor a likelihood of consumer confusion.

Competition. Eyebobs sold reading glasses, and reading glasses were largely purchased by consumers over the age of 40. In the court’s view, a consumer looking for a pair of reading glasses would not stumble across Snap’s hands-free recording device, even accidentally. The Spectacles device was purchased by individuals who used Snapchat, the court noted, and 85 percent of Snapchat users were 13 to 34 years of age, and thus "too young" to need reading glasses.

In short, there was "almost no overlap" between the reading glasses that were marketed by Eyebobs and the Spectacles that were marketed by Snap. The "very different products" were sold to "very different consumers" through "very different channels." As a result, the "competitive proximity" factor strongly disfavored a likelihood of confusion finding.

Intent. According to the court, the record was devoid of any evidence indicating that Snap was aware of the registered mark before Eyebobs threatened litigation, or that Snap had intended to confuse the public. Snap would have no reason to lead potential purchasers of its Spectacles to believe that the product was affiliated with Eyebobs, the court noted. The Spectacles mark was inspired by the Spectacles design, and the fact that it resembled the registered mark was "mere happenstance." For those reasons, the court concluded that the intent-to-confuse factor militated against a likelihood of confusion finding.

Actual confusion. Nothing in the record suggested that any consumer had formed the mistaken belief that an Eyebobs product was in some way affiliated with Snap. Therefore, for actual confusion to arise, Snap would have to saturate the market with the Spectacles mark to such a degree that "even middle-aged and elderly consumers would be familiar with it." And the registered mark would have to resemble the Spectacles mark so closely that those consumers would become confused about whether Snap had gone into the reading-glasses business. The court, however, had already found that the Spectacles mark had little commercial strength and did not closely resemble the registered mark.

The court recognized that evidence of actual confusion would almost never exist in a reverse-confusion case when—as here—the senior user sought a preliminary injunction to prevent the junior user from saturating the market with the allegedly infringing mark. In light of that difficulty, the absence of actual-confusion evidence was generally not noteworthy, and thus was given little probative weight. Ultimately, the court found that the actual-confusion factor neither strongly favored nor strongly disfavored a likelihood of consumer confusion.

Conditions of purchase. The court noted that the relevant consumers were purchasing expensive products (Snap’s Spectacles sold for $129.99 and Eyebobs’s reading glasses sold for $79 to $150) and were therefore likely to ensure that they were "getting exactly what they want." In the court’s view, there was little chance that someone looking for a pair of Eyebobs reading glasses would mistakenly believe that those glasses were affiliated in some way with Snap. The court thus concluded that the "conditions of purchase" factor militated against a likelihood of confusion finding.

Conclusion. Five of the confusion factors weighed against a finding that consumer confusion was likely; the sixth factor was neutral. Under those circumstances, the court could not find that Eyebobs would likely prevail on its claim that Snap was infringing the registered mark.

The court’s analysis of Eyebobs’s common-law mark closely tracked its analysis of the registered mark, except for two differences. First, the conceptual strength of the common-law mark was not as strong as the conceptual strength of the registered mark because the common-law mark was suggestive and the registered mark was arbitrary or fanciful. That helped Snap, the court observed. Second, the common-law mark was limited to the eyeball logo without the word "Eyebobs," and for that reason, the common-law mark was more similar to the Spectacles mark than was the registered mark, at least when the Spectacles mark was used without the word "Spectacles." That helped Eyebobs, but not by much.

In the court’s view, neither of those differences materially changed its analysis of the confusion factors. Therefore, for essentially the same reasons that the court had found that Eyebobs would be unlikely to prove Snap’s infringement of the registered mark, it also found that Eyebobs would be unlikely to prove Snap’s infringement of the common-law mark.

Irreparable harm. To establish a threat of irreparable harm, Eyebobs had to show that its harm was certain, great, and of "such imminence" that equitable relief would be clearly and presently required. Eyebobs did show that harm would result if reverse confusion occurred, but it failed to show that reverse confusion was likely to occur during the pendency of the suit. For that reason, the court could not find an imminent threat of irreparable harm.

Balance of harms, public interest. The court did not believe that Eyebobs would suffer harm, in the absence of an injunction, while the lawsuit was pending. Snap, however, would be unable to use millions of dollars of merchandise bearing the Spectacles mark if a preliminary injunction were granted. Preliminary injunctive relief was therefore not favored. In addition, the court could not discern how the public interest would be served by a preliminary injunction.

The case is No. 16-CV-4276 (PJS/DTS).

Attorneys: James R. Steffen (Faegre Baker Daniels LLP) for Eyebobs, LLC. Dennis L. Wilson and Christopher T. Varas (Kilpatrick, Townsend & Stockton, LLP) and Kristen G. Marttila (Lockridge Grindal Nauen PLLP) for Snap, Inc.

Companies: Eyebobs, LLC; Snap, Inc.

MainStory: TopStory Trademark MinnesotaNews

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