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Take two - Court revives trademark infringement claim
You might think that using the exact words of a competitor’s trademark in your own mark would pretty clearly constitute infringement. While a trial court evaluating such a situation disagreed, the U.S. Court of Appeals for the Second Circuit found infringement in what it described as a “somewhat unusual” trademark case.
Something doesn’t smell right
Car-Freshner Corporation (CFC) and American Covers LLC both sell automotive air fresheners and trademark the name of the scents. CFC sued American Covers for, among other things, trademark infringement. It contended that American Covers’ sale of products labeled with the words “Midnight Black Ice Storm” infringed its mark “Black Ice.”
The trial court rejected the claim before trial, finding that Midnight Black Ice Storm wasn’t similar enough to the plaintiff’s mark to create a likelihood of confusion about the source of the products. The plaintiff appealed.
Case gets a fresh look
As the Second Circuit explained, a court considers a number of factors when determining whether the requisite likelihood of confusion has been shown to proceed to trial on a trademark infringement claim. In the Second Circuit, the likelihood of confusion test uses the Polaroid factors. It reviewed each of the factors as follows:
- The strength of the senior user’s marks. The Black Ice mark had “considerable strength” in the context of automotive air fresheners. The court pointed to the millions of dollars in sales of Black Ice products and widespread recognition of the mark in unsolicited news coverage, social media posts and popular culture.
- The similarity of the parties’ marks. Despite differences in the packaging, this factor favored the plaintiff. The defendant’s mark was significantly similar to the plaintiff’s mark because it used the same two nondescriptive words, in sequence or on adjacent lines, where the words were readily read together because they form a well-known phrase.
- The market proximity of the products. The parties’ products directly compete with each other and often are displayed side-by-side on retailers’ shelves. The factor thus favored the plaintiff.
- The likelihood that the senior user will bridge any gap separating the parties’ current markets. The court found this factor irrelevant because the parties already competed in the same market.
- The existence of actual consumer confusion. The plaintiff didn’t demonstrate actual consumer confusion. But the court noted that, while evidence of actual confusion is “very helpful” to an infringement claimant, its absence isn’t fatal.
- Whether the junior user acted in bad faith in adopting its mark. “Rarely,” the court said, “does an infringement case reveal such explicit evidence of bad faith.” It cited undisputed evidence from internal staff emails showing the defendant’s intent to mislead consumers. One email, for example, referred to getting “as close to the Black Ice name as we can.”
- The quality of the junior user’s products. The products were found to be of similar quality, so the relative quality didn’t play a significant role in the existence of a likelihood of confusion.
- The sophistication of the relevant consumer group. The competing products were priced relatively modestly, not complicated to use and sold in general merchandise stores. These circumstances made confusion more likely because consumers were unlikely to spend much time on their buying decisions.
Scent back for trial
The Second Circuit acknowledged the lack of guidance on how the Polaroid factors are to be weighed in the aggregate, or whether any one or more are entitled to extra weight. Nonetheless, it found the balance in this case favored the plaintiff enough to preclude a dismissal before trial. Should the case reach trial rather than settle, the “smoking gun” emails probably won’t help the defendant much with a judge or jury.
