David Lilenfeld Blog The intellectual property blog of David Lilenfeld


Nike Sues Skechers for Trademark Infringement

Nike is suing Skechers for patent infringement arising under Patent Laws of the United States, 35 U.S.C. § 101 et seq because Skechers copied sneaker designs from Nike. In the lawsuit, Nike claims Skechers is selling sneakers that infringe on eight Nike design patents issued to the company. The Burst, Flex Appeal and Flex Advantage are the alleged patented designs owned by Nike that Skechers used without Nike’s permission. Without Nike’s authorization, Skechers made, used, sold, and imported sneakers having designs that violate the Nike patents. This lawsuit precipitates less than four months after Adidas sued Skechers for trademark infringement.

Nike's design

Nike's design

Skecher's allegedly trademark infringing shoe

Skecher's allegedly infringing version

On January 4th in Oregon’s U.S. District Court, Nike claimed Skechers used designs that were too similar to Nike’s shoes for the Burst, Women’s Flex Appeal, Men’s Flex Advantage, Girl’s Skech Appeal and Boy’s Flex Advantage Shoes. Nike owns the exclusive rights in the ornamental designs of the named sneakers. Thus, it has the right to sue and recover for past, present and future infringement of each of the Nike patented sneaker designs from the date each patent duly and legally was issued to Nike. The company is asking for a permanent injunction to prevent Skechers from further manufacturing shoes with the infringing designs. Nike is also seeking damages from the sale of Skechers’ shoes. Nike has and will continue to suffer irreparable harm by Skechers’ infringement of the Nike patents.

The spokeswoman for Skechers, Jennifer Gray, has said that no court date has been set for this case. Skechers has declined to comment further on the matter. It is worthy to note, this is the second lawsuit Nike has filed against Skechers. In 2014, the Nike-owned brand, Converse said its Chuck Taylor design was infringed upon by Skechers. In 2015, the Skechers stock was up 150% surpassing top brands such as Nike and Adidas. Skechers argues it created its own niche in the sneaker industry. Instead of targeting professional athletes like LeBron James or James Harden, Skechers sought to target pop singers like Demi Lovato or Meghan Trainor as endorsers. Furthermore, the Skechers sneakers focused on style and comfort as opposed to athletic performance, which was Nike and Adidas goal.

Even though the brands used different model names, the overall appearance of the designs of the Nike patents and the designs of the Skecher’s infringing shoes are substantially similar. It would appear that these designs are likely to cause confusion to ordinary consumers.


Trademark fight: NC State and KeukaCollege Battle Over WOLFPACK

Was @PackAthletics right to force @KeukaCollege to drop WOLFPACK as its nickname/trademark?

According to its website, North Carolina State University adopted the WOLFPACK nickname for their sports teams in 1921.  Fast forward to 2016 and apparently North Carolina State University thought it was time to act.  NC State “lawyered up” and compelled the small, upstate New York liberal arts college to drop WOLFPACK. Feeling cornered by the Big Bad Wolf, the college acquiesced and is now known as the Wolves. The colleges will not change its logo, which depicts a threatening canis lupus.

I used my Twitter account (David Lilenfeld Twitter post) to take an informal poll. An overwhelmingly 87 people voted that NC State overstepped, while only 12 people thought NC State did the right thing. My next idea is for the two to settle this on the basketball court – winner gets the name, loser rebrands. Game on!

David Lilenfeld

Twitter Poll Results -- Overwhelming


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GAME FACE For Masks Confusingly Similar With GAME FACE For Goggles

GAME FACE by Markwort

Markwort Sporting Goods Company filed an application to register the trademark GAME FACE. The TTAB affirmed the refusal to register the trademark GAME FACE for protective sports masks because the trademark is likely to cause confusion with the same already registered trademark for paint ball goggles. Markwort argued the sports masks would be sold in different markets from paint ball goggles; however, the TTAB still found the products to be confusingly similar.

Regarding a likelihood of confusion issue, a more lenient level of relatedness between the sports masks and the paint ball goggles is allowed because the trademarks are identical. Katherine S. Chang, the Examining Attorney, found three different stores that sell lacrosse, field hockey and catcher’s masks as well as paint ball goggles. This discovery supports her theory that the products are being used in the same manner and have the same purpose.

Markwort Sporting Goods, on the contrary, claimed the stores were of little probative value because a finding that the products are being sold in the same stores of a large store does not mean the goods are related. Furthermore, the masks Markwort sells perform an entirely different function than paint ball goggles, as they would not protect a person’s eyes from harmful liquid such as that which is used in paint ball activities. The TTAB agreed, for the above reasons, that the PTO failed to establish that the channels of trade are related. Thus, it considered this du Pont factor to be neutral.

Next, the relatedness of the goods and the trade channels are taken into consideration. In deciding the relatedness of the products, there only needs to be a viable relationship between the goods. In this case, there is such a relationship because the products are identical. Both products protect the consumer’s face and eyes.

Markwort asserted that the products could be expensive thereby requiring more care in the purchasing process. The TTAB, however, was not convinced because the items are not considered expensive enough to fall into this category.

Therefore, the TTAB affirmed the refusal to register the trademark GAME FACE because the goods are likely to be confused as Markwort’s trademark is identical to the registered trademark and the goods are related.

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Trademark Office Rules Dumbbells and Soccer Goals Unrelated

The Trademark Office reversed a Section 2 (d) refusal to register the trademark QUIK-CHANGE for dumbbell systems finding the trademark is not likely to cause confusion with the already registered trademark KWIK CHANGE for soccer goals. Plaintiff, Hoist Fitness System, applied to register the trademark QUIK-CHANGE for exercise equipment, mainly a dumbbell system with a handle, weights and a stand.

KWICK CHANGE soccer goal

KWICK CHANGE soccer goal

Quick-Change dumbbell system

Quick-Change dumbbell system

The Examining Attorney refused to register the trademark QUIK-CHANGE because the trademark was merely identical in appearance and would be found in the same sporting goods market as the trademark KWIK CHANGE. Applicant pointed out that the trademarks are spelled differently and that the equipment for soccer and weight training are different.

Although the Trademark Office agreed with the PTO that the trademarks have the same meaning and pronunciation, the Trademark Office recognized the trademark is on the Supplemental Register, which is an admission that the trademark is descriptive. The Trademark Office therefore took into consideration the descriptiveness of the trademark as well as the fact that the applicant’s trademark is at least suggestive of the fact that its weight is subject to change.

The Trademark Office also considered the issue of whether the goods are related and if they are related how closely they are related. The Board pointed out the intent-to-use applications and the non-use based registrations are not entitled to much weight. The most pertinent registrations are use-based registrations but these appear to be house marks. Even though they may show there is some relationship between sporting goods, it is hardly evidence that goods as different as soccer goals and dumbbells are closely related.

Just because goods are sold in the same stores or on the same websites does not prove that the goods are related. Soccer and exercise products can be sold on the same website like e-bay without demonstrating that the sources of the products are associated or related.

In conclusion, based on the nature of the trademarks and the fact that the goods are not closely related, the Trademark Office held that confusion was not likely between the trademark QUIK-CHANGE and the registered trademark KWIK CHANGE.


“Consumer degree of care” — another likelihood of confusion factor

Here we move on to the seventh factor in the likelihood of confusion (based on the 9th Circuit's view).  How much care do consumers pay when purchasing the respective products of the parties?

7.  Consumer degree of care

“In analyzing the degree of care that a consumer might exercise in purchasing the parties' goods, the question is whether a ‘reasonably prudent consumer’ would take the time to distinguish between the two product lines. Surfvivor Media, Inc., 406 F.3d at 634. “[T]he standard used by the courts is the typical buyer exercising ordinary caution.

[W]hen the goods are expensive, the buyer can be expected to exercise greater care in his purchases . . . .”  Network Automation, Inc., 638 F.3d at 1152.  Again, the parties present conflicting evidence as to the degree of care consumers of their products are likely to exercise. Top Shelf’s expert opines that kombucha is a “niche product” and that the price point of Clearly Kombucha is high enough, relative to other bottled beverages, to foster a relatively greater degree of care among consumers. (See Silverman Rep. ¶¶ 55-56.) Top Shelf’s founder testifies that its clients are particularly health-conscious, and therefore are more discerning when choosing bottled beverages. (Cargle Decl. ¶ 20.) On the other hand, Clearly Canadian points to evidence showing that Top Shelf’s beverages have been sold at a variety of price points, ranging on the low end from $1.50 to $3.00. (See Supp. Resp. at 12-13).

“With respect to small, inexpensive goods . . . the consumer is likely to exercise very little care.” Surfvivor Media, Inc, 406 F.3d at 634; see also CytoSport, Inc. v. Vital Pharm., Inc., 617 F. Supp. 2d 1051, 1076 (E.D. Cal. 2009) (finding a low degree of care with respect to bottled drinks costing between $3.00 and $5.00). A jury reviewing the parties’ evidence could reasonably find that consumers purchasing Clearly Canadian and Clearly Kombucha beverages exercise a low degree of care. Therefore, for the purposes of summary judgment, this factor weighs in Clearly Food’s favor.


Likelihood of Expansion — factor in likelihood of confusion

In some circuit courts, likelihood of expansion is a factor in the likelihood of confusion analysis.  Here is the likelihood of expansion portion from the Clearly Canadian opinion.

6.  Likelihood of expansion

Clearly Food claims that it intends to release a sparkling tea beverage in the United States that will overlap with the Clearly Kombucha product. (Mot. at 24. (citing Khan Dep. at 106-08). ) However, Clearly Food fails to provide any supporting evidence for that assertion. The pages of Mr. Khan’s deposition to which Clearly Food cites do not discuss expansion plans into sparkling tea beverages or otherwise. (See Khan Dep. at 106-08 (discussing whether Mr. Kahn believed Clearly Canadian-branded air fresheners would infringe his company’s trademark).) “[M]ere speculation is not evidence.” Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 634 (9th Cir. 2005). Clearly Food’s “complete inability to adduce any concrete evidence of expansion plans tilts this factor in favor of” Top Shelf. Id. (David Lilenfeld: this seems like an evidentiary issue, not legal. Clearly Food probably had the plan, but evidence of those plans did not make it into the record).



Actual Confusion – Important Factor in Likelihood of Confusion Analysis

5.  Actual confusion

“Evidence of actual confusion is strong evidence that future confusion is likely.”  Entrepreneur Media, Inc, 279 F.3d at 1150. However, “the converse is not true.” GoTo.com, Inc., 202 F.3d at 1208. Nonetheless, a “reasonable juror may . . . find de minimis evidence of actual confusion unpersuasive as to the ultimate issue of likelihood of confusion.” Id.

Here, the parties present conflicting evidence as to confusion. Top Shelf relies on a survey taken by its expert, Dr. Thomas Maronick, in which “the majority of respondents . . . said that Clearly Kombucha is either not affiliated with or sponsored by any other company organization, or they ‘don’t know.’” (Ledden Decl. Ex. 18 (“Maronick Rep.”) at 9.) For its part, Clearly Food presents evidence of actual consumer confusion: in five separate instances, written comments from consumers encountering Top Shelf’s products online have expressed the belief that Clearly Kombucha and Clearly Canadian are affiliated. (See Whittaker Decl. Exs. M (comment asking Clearly Kombucha, “are you no longer making Clearly Canadian, too?”), N (comment next to picture of Clearly Kombucha bottles: “instead of clearly Canadian it’s clearly Kombucha!”), O (comment next to picture of Clearly Kombucha bottles: “I’ve heard of (and loved) Clearly Canadian, but never Clearly Kombucha!”); Ledder Decl. Ex. 13 (“Silverman Rep.”) ¶ 47 (referencing consumer queries posted on Clearly Kombucha’s Facebook page asking, “Are you producing Clearly Canadian too? You are the same company yes?” and “Why are you pushing only Clearly Kombucha? Your Clearly Canadian should be on top! I used to drink you all the time growing up.”).) Clearly Food also identifies various flaws in Top Shelf’s survey that Clearly Food claims require the expert’s opinion to be discounted. (Resp. at 25-26 (pointing out that a majority of the survey respondents also answered that Clearly Kombucha was affiliated with another company, or they “don’t know”).)

The court is not permitted to weigh the evidence on summary judgment. Although a jury could reasonably find that Clearly Food’s evidence was de minimus, a jury could also reasonably credit Clearly Food’s evidence of actual confusion over Top Shelf’s survey. See Americana Trading Inc. v. Russ Berrie & Co., 966 F.2d 1284, 1289 (9th Cir. 1992) (finding that one letter from a confused consumer plus evidence of retailer confusion was sufficient evidence for a trier of fact to find actual confusion). Therefore, for summary judgment purposes, this factor weighs in Clearly Food’s favor.



“Clearly Canadian” – Likelihood of Confusion – Similarity of Marketing Channels

2.  Marketing channels

Here, there is evidence that both companies market and sell their beverages over the Internet through their own websites, third party retail sites, and Facebook. (See Zarrow Dep. at 51:24-52:5; Cargle Dep. at 83:21-25; Khan Dep. at 46:12-19; 91:15-92: 95:8-15.) Yet, “[g]iven the broad use of the Internet today, the same could be said for countless companies.” Playboy Enterprises, Inc. v. Netscape Commc'ns Corp., 354 F.3d 1020, 1028 (9th Cir. 2004). “Some use of the Internet for marketing . . . does not alone and as a matter of law constitute overlapping marketing channels.” Entrepreneur Media, Inc., 279 F.3d at 1151.

The parties hotly contest whether the two products would typically be stored in the same shelves, aisles, or general areas of a retail store. (See Mot. at 22 (contending that Clearly Kombucha must be located in the refrigerated section); Supp. Resp. (Dkt. # 94) at 10-11 (contending that Clearly Kombucha appears on warm shelves).) Because the court  must weigh the facts in the light most favorable to Clearly Food, the court assumes for the purposes of this motion that retail stores would choose to display Clearly Kombucha products near Clearly Canadian products more often than not, which weighs in favor of finding of likelihood of confusion. (See Billick Decl. Ex. I (restocking notes from 2013 showing that retail stores stocked Clearly Kombucha on warm shelves and next to bottled  water products such as Perrier, Smart Water, Vitamin Water, Evian, and Fiji, as well as next to flavored beverages such as Snapple and Sobe), Ex. J.) The significance of the potential adjacent storage, however, is blunted by the fact that Clearly Canadian is not currently sold in any brick and mortar retail stores. Clearly Food has recently engaged a sales and marketing company to market Clearly Canadian “to the top twenty-five grocery store chains across the United States,” and expects that Clearly Canadian will be sold in unspecified grocery stores in 2015. (2d Khan Decl. ¶¶ 3, 5.) However, it remains unclear     whether Clearly Canadian will be sold in similar retail stores as Clearly Kombucha, or in the same geographic region as Clearly Kombucha, in the near or intermediate future.  (See Zarrow Dep. at 27:21-28 (explaining that Clearly Kombucha was sold in limited

In sum, a reasonable jury could not find that the parties’ current marketing  channels “overlap to any significant degree.” See Entrepreneur Media, Inc., 279 F.3d at 1151. Future overlap, although possible, is speculative, and the minor existing overlap in Internet use is insignificant because the “shared use of a ubiquitous marketing channel does not shed much light on the likelihood of consumer confusion,” Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1151 (9th Cir. 2011). Therefore, the court finds that this factor merits little weight in the likelihood of confusion analysis, and what weight it does merit benefits Top Shelf. Id.

3.  Relatedness of the goods

“Related goods are generally more likely than unrelated goods to confuse the public as to the producers of the goods.” GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1207 (9th Cir. 2000). “Related goods are those products which would be reasonably thought by the buying public to come from the same source if sold under the same mark.” Entrepreneur Media, Inc., 279 F.3d at 1147. The Ninth Circuit applies “a sliding scale approach as to the weight that relatedness will carry dependent upon the strength of the trademark holder’s mark.” Entrepreneur Media, Inc., 279 F.3d at 1147.

Clearly Food identifies the following undisputed similarities between the two products. To begin with the obvious, Clearly Canadian and Clearly Kombucha are single-serve, bottled beverages. (See Ledden Decl. Ex. 21.) Moreover, both products are  “sparkling” (carbonated) beverages, and are marketed as such. (See Dkt. # 47-4 (2014 presentation to Clearly Canadian investors); Billick Decl. (Dkt. # 95) Ex. A (a December,  2010 “Gourment California Foods Product Brief” identifying Clearly Kombucha’s “core position” as a “lightly sparkling” beverage), Ex. B (2009 business plan to market Top Shelf Kombucha as “the world’s first luxury sparkling elixir”), Ex. C (October 2013 email from Ms. Zarrow to a potential distributor describing Clearly Kombucha as a “sparkling, fermented, nonalcoholic tea”), Ex. D (2013 business plan describing Clearly Kombucha as a “sparkling fermented tea”), Ex. E, Ex. F at 3, Ex. G (“Brand Ambassador” handbook instructing marketers demonstrating Clearly Kombucha in retail stores to “[a]sk EVERY person that walks by if they would like a sample of  ‘sparkling tea’” unless the person already had kombucha in his or her cart).) Additionally, both products are “clear” beverages, and are marketed as such. (See Cargle Dep. (Dkt. # 57-3)

Finally, both products are perceived as healthy alternatives to other carbonated beverages, such as soda, and marketed as such. (See Ledden Decl. Ex. 8 (“2007 Survey”); Dkt. # 47-4 (2014 presentation to Clearly Canadian investors); 2012 Bus. Plan; Billick Decl. Ex. D (Clearly Kombucha 2013 business plan) at 9), Ex. E (notes from a Clearly Kombucha marketing demonstration).

Top Shelf points out that Clearly Kombucha differs from Clearly Canadian in that it is a flavored fermented tea rather than flavored water. (See Mot. at 22.) Top Shelf attempts to further distinguish the products by emphasizing the affirmative health benefits allegedly associated with kombucha, as well as the fact that Top Shelf targets a “niche” health-conscious demographic. (See Mot. at 21-23.) However, “the relatedness of each company’s prime directive isn’t relevant.” Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1056 (9th Cir. 1999). Rather, “the focus is on whether the consuming public is likely somehow to associate [the alleged infringer’s]  products with [the mark owner].” Id.see also Am. Int’l Group, Inc. v. Am. Int’l Bank, 926 F.2d 829, 832 (9th Cir. 1991).

Viewing the evidence in the light most favorable to Clearly Food, the court concludes that a jury could reasonably find that the consuming public is likely to associate the Clearly Kombucha product with the Clearly Canadian brand. The thrust of  Top Shelf’s argument is that the two brands do not directly compete for customers. But  even if a jury concluded that the two brands do not directly compete, a jury could still  reasonably find that the similarity of their products—namely, clear, sparkling, single-serve beverages—would likely result in consumer confusion between the brands and products. See American Int’l Group, Inc., 926 F.2d at 832 (concluding that although the parties were not direct competitors, customer confusion could result in light of the similarities between the financial services offered by the parties). Therefore, for summary judgment purposes, this factor weighs in Clearly Food’s favor.


“Clearly Canadian” Likelihood of Confusion – Similarity of Trademarks

David Lilenfeld breaks down the likelihood of confusion section of the court's ruling in this trademark infringement case. The case pits CLEARLY CANADIAN against CLEARLY KUCHABU. In this post, the similarity of the trademarks are assessed.

E.        Infringement

Top Shelf also moves for summary judgment on Clearly Food’s trademark infringement claims. (See Mot. at 19-22.) To assess whether a defendant has infringed a plaintiff’s trademark, courts apply a “likelihood of confusion” test that asks whether use of the plaintiff’s trademark by the defendant is likely to cause confusion or to cause mistake, or to deceive as to the affiliation, connection, or association of the two products.”5  Mattel, Inc. v. Walking Mountain Productions, 353 F.3d 792, 806-07 (9th Cir. 2003); see also New W. Corp. v. NYM Co. of Calif., Inc., 595 F.2d 1194, 1201 (9th Cir. 1997). (David Lilenfeld: although the factors can vary from circuit-to-circuit, all eleven circuits require a likelihood of confusion analysis in trademark infringement cases).

(David Lilenfeld: Clearly Food brought claims under Sections 32 of the Lanham Act, 15 U.S.C. § 1114(1), and 43 of the Lanham Act, 15 U.S.C. § 1125(a)(1)).  (See generally Compl.) Although Section 32 provides protection only to registered marks and Section 43 provides protection to unregistered marks, with respect to proving infringement, the same “likelihood of confusion” standard applies to both    provisions.  See GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1207 (9th Cir. 2000); Brookfield Commc’ns, Inc., v. West Coast Entm’t Corp., 174 F.3d 1036, 1046-47 n.8 (9th Cir.1999).  As such, the court’s analysis of the “likelihood of confusion” standard is independent of the prospective outcome of Top Shelf’s cancellation-of-registration claim.  See Grupo Gigante SA De CV v. Dallo & Co., 391 F.3d 1088, 1108 (9th Cir. 2004) (“Ultimately, very little turns on the cancellation-of-registration claim because registration is not necessary to establish trademark protection under federal . . . law.”).

The Ninth Circuit has developed an eight-factor (David Lilenfeld: the number of factors can vary from circuit-to-circuit, but are non-exhaustive) test to guide courts in assessing likelihood of confusion. Id. (citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49    (9th Cir.1979), abrogated on other grounds by Mattel Inc. v. Walking Mountain Prods., 353 F.3d 792, 810 n.19 (9th Cir. 2003)). The non-exclusive factors include (1) strength of the protected mark, (2) proximity and relatedness of the goods, (3) type of goods and degree of consumer care, (4) similarity of the protected mark and the allegedly infringing mark, (5) marketing channel convergence, (6) evidence of actual consumer confusion, (7) the defendant’s intent in selecting the allegedly infringing mark, and (8) likelihood of product expansion. Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1125 (9th Cir.  2014).

(David M. Lilenfeld: as the court will point out, all likelihood of confusion analyses are facts intensive). The “ultimate question of likelihood of confusion is predominantly factual in nature, as is each factor.” Entrepreneur Media, 279 F.3d at 1141. Rather than mechanically identifying the number of factors that favor of each party, a court must  “consider what each factor, and—more importantly—what the analysis as a whole, reveals about the ultimate question . . . : the likelihood of consumer confusion as to the origin of the product or service bearing the allegedly infringing mark.” Id. At the end of the day, “it is the totality of facts in a given case that is dispositive.” Pom Wonderful LLC, 775 F.3d at 1125.

1.  Similarity of the marks (David Lilenfeld: Factor #1 - how similar are the trademarks)

“The greater the similarity between the two marks at issue, the greater the likelihood of confusion.” GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2000). The Ninth Circuit has “developed three axioms that apply to the ‘similarity’ analysis: 1) Marks should be considered in their entirety and as they appear in the marketplace; 2) Similarity is best adjudged by appearance, sound, and meaning; and, 3) Similarities weigh more heavily than differences.” Entrepreneur Media, Inc., 279 F.3d at 1144.

(David Lilenfeld: instead of focusing on the trademarks here, it delves into how the trademarks are presented (i.e., screen-printing v. paper label)). First and foremost, the court notes that both marks appear in the marketplace primarily as labels on the bottles of single-serve beverages. (See Mot. at 21 (showing pictures of the trademarks alone and as used on bottles).) The salient differences are that the Clearly Canadian logo is screen printed, whereas the Clearly Kombucha logo is a paper label, and the Clearly Canadian bottle has a “teardrop” shape, whereas the Clearly Kombucha label has a traditional “beer bottle” shape. (See Ledden Decl. Ex. 21 (side-by-side comparison of the bottled beverages).) Second, the court notes that the appearance of the trademarks as used on the bottle labels is not overly similar: the Clearly Canadian label has horizontal text and a picture of the fruit that represent’s the beverage’s flavor; the Clearly Kombucha label has vertical text and an apparently whimsical drawing; the fonts are also different.6  (See id.) Moreover, the logos as used separately from the bottles are not overly similar: Clearly Canadian’s logo consists of blue, horizontal text, (David Lilenfeld: the court seems to be heading toward no likelihood of confusion conclusion) and a red bottle with a maple leaf; Clearly Kombucha’s label is a black, oversized letter “C” with the work “Clearly” written vertically inside the “C” and the word “kombucha” written in a different font outside of the “C.” (Compare Ledden Decl. Ex. 19 with

(David Lilenfeld: Obviously, the first word in each mark is identical sounding, but we don't normally see courts break down the wounds of words -- instead opting  to assess the sound of the word in its entirety) On the other hand, the sound of the trademarks is quite similar: both begin with the word “clearly” and end with a word that begins with a phonetic hard “c” sound. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372 (Fed. Cir. 2005) (finding that the first word in the trademark constituted the “dominant feature in the commercial impression” created by the mark). In addition, as Clearly Food points out, the common word “clearly” is the operative word (David Lilenfeld: determining the "operative" word is tough and which it is in this case is debatable) in both trademarks: the Trademark Office required both registrants to disclaim rights to the use  of the words “Canadian” and “kombucha” without the preceding word “clearly.” (Req. for Not. Ex. C; Ledden Decl. Ex. 2 (Appendix A).) Last, the meaning of the trademarks is also similar, insofar as they both rely on the word “clearly” to describe an aspect of their product. (See Zarrow Dep. at 16:22-17:2.)

Overall, the court finds that the third axiom—that similarities weigh more heavily than differences—controls the result here. Although Top Shelf has identified certain differences between the marks, a reasonable jury could find that the similarities in how the marks are used in the marketplace and the sound and meaning of the marks outweigh those differences. See Entrepreneur Media, Inc., 279 F.3d at 1144. Therefore, the court concludes that a reasonable jury could find that the marks are similar. As such, for summary judgment purposes, this factor weighs in Clearly Food’s favor. (David Lilenfeld: I am surprised at this result.  I think the trademarks are quite different in appearance and sound).


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