David Lilenfeld Blog The intellectual property blog of David Lilenfeld

30Jan/17237

Strength of a Trademark in an Infringement Action

By David Lilenfeld on January 30, 2017

In this blog post, David Lilenfeld breaks down the fourth factor in the likelihood of confusion analysis, which is the strength of the plaintiff's trademark.

4.  Strength of Clearly Canadian’s mark

David Lilenfeld Clearly Canadian

Clearly Canadian

(David M. Lilenfeld: here are the traditional considerations when analyzing the strength of a trademark). “The more likely a mark is to be remembered and associated in the public mind with the mark’s owner, the greater protection the mark is accorded by trademark laws.” GoTo.com, Inc., 202 F.3d at 1207. The “‘strength’ of the trademark is evaluated in terms its conceptual strength and commercial strength.” Id. “Marks can be conceptually classified along a spectrum of increasing inherent distinctiveness.” Id. “From weakest to strongest, marks are categorized as generic, descriptive, suggestive, and arbitrary or fanciful.” Id. For purposes of this motion, the court concludes that a jury could reasonably find that the Clearly Canadian trademark is either descriptive or suggestive. Entrepreneur Media, 279 F.3d at 1141-42 (“Descriptive marks define qualities or characteristics of a product in a straightforward way that requires no exercise of the imagination to be understood. A suggestive mark is one for which a consumer must use imagination or any type of multistage reasoning to understand the mark’s significance, the mark does not describe the product’s features, but suggests them.”).

“Although a suggestive or descriptive mark is inherently a weak mark (David M.. Lilenfeld: weak, but still protectable), it may be strengthened by such factors as extensive advertising, length of exclusive use, [and] public recognition.” Id. Clearly Food claims that its mark enjoys substantial public recognition to this day. (Resp. at 16.) In support of that claim, Clearly Food provides evidence that the Clearly Canadian mark has been in use since 1989 (Ledden Decl. Ex. 6 (“2014 Marketing Pres.”); that CC Beverage sold millions of dollars worth of Clearly Canadian beverages yearly through 2007 (although sales dwindled substantially after 1992) (id.); that Clearly Canadian’s Facebook page has received over 35,000 “Likes” by members of the public (Screenshot (Dkt. # 57-6)); and that in November 2014, a daily Internet comedy show with in excess of one million subscribers discussed the Clearly Canadian beverages for four-and-a-half minutes (see Resp. at 13 (citing the Good Mythical MORE YouTube Channel.

A jury could reasonably find that this evidence of public recognition so strengthens the mark as to tip this factor in favor of finding a likelihood of confusion.7  See Entrepreneur Media, Inc, 279 F.3d at 1141-42 (finding that monthly sales of half a million products could strengthen a descriptive mark such that the factor weighed in favor of likely confusion). However, this evidence is by no means overwhelming; a jury could also reasonably find that the mark remained weak. Therefore, the court concludes that, for summary judgment purposes, this factor weighs only slightly in Clearly Food’s favor.

Here, Clearly Food contends—but provides no evidence showing—that the Clearly Canadian mark is incontestable. (Resp. at 2.) The incontestable status of a mark serves as conclusive proof that the mark has secondary meaning.  Entrepreneur Media, Inc., 279 F.3d at 1142, n.3. Therefore, an incontestable mark cannot be challenged as invalid on the basis that the mark is descriptive and has not acquired secondary meaning.  Id. If the Clearly Canadian mark is incontestable, Top Shelf’s arguments that the mark is not entitled to protection because it is descriptive must fail.  (See Mot. at 24.) The incontestable status, however, does not require a finding that the mark is strong for infringement purposes.  Entrepreneur Media, Inc., 279 F.3d at 1142, n.3. Therefore, the relative strength or weakness of an incontestable mark is still relevant to the likelihood of confusion analysis.  Id.

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