Affliction Holdings, LLC v. Utah Vap Or Smoke, LLC
Opinion of the Court
Affliction Holdings, LLC ("Affliction") sued Utah Vap or Smoke, LLC ("Utah Vap") alleging trademark infringement. The district court granted Utah Vap's motion for summary judgment, holding there was no likelihood of confusion between the parties' marks. Exercising jurisdiction under
I
Affliction is an apparel company headquartered in California. It has registered trademarks which include the AFFLICTION Word Mark, and the "Affliction LF Fleur-de-Lis" (composed of a decorative upside-down fleur-de-lis contained inside of a circle, with the words "AFFLICTION LIVE FAST" in Gothic lettering).
Utah Vap is an electronic nicotine delivery system (i.e., e-cigarette) accessory company headquartered in Utah. It primarily sells vaping accessories but also sells some promotional apparel. Utah Vap's marks incorporate a right-side-up decorative fleur-de-lis within a circle, and the words "VAPE AFFLICTION" in a font dissimilar to the Gothic lettering on the Affliction LF Fleur-de-Lis mark.
*1114Affliction alleged Utah Vap was selling products using marks that misrepresent the products as being from Affliction. It filed suit claiming: (1) trademark infringement under the Lanham Act; (2) false designation of origin and false descriptions; (3) common law trademark infringement; (4) common law unfair competition; and (5) unfair competition in violation of a Utah statute. Affliction sought damages, noting in its initial discovery disclosures that it "currently lack[ed] information sufficient to calculate either [Utah Vap]'s profits or its actual damages." It later claimed damages based on Utah Vap's revenue.
Utah Vap moved for summary judgment, asserting that there was insufficient evidence to create a triable issue as to a likelihood of confusion between the marks, and that Affliction failed to disclose a computation of damages during the discovery period sufficient to introduce evidence of damages at trial. The district court granted summary judgment to Utah Vap. Affliction timely appealed.
II
We review the grant of summary judgment de novo. Hobbs ex rel. Hobbs v. Zenderman,
Claims of trademark infringement require a party to establish that it has a legal right to a mark
"In this circuit, likelihood of confusion is a question of fact [ ] amenable to summary judgment," Sally Beauty Co. v. Beautyco, Inc.,
In assessing whether there is a likelihood of confusion, we consider the following non-exhaustive factors:
*1115(1) the degree of similarity between the marks; (2) the intent of the alleged infringer in adopting its mark; (3) evidence of actual confusion; (4) similarity of products and manner of marketing; (5) the degree of care likely to be exercised by purchasers; and (6) the strength or weakness of the marks.
Sally Beauty Co.,
The degree of similarity between the parties' marks in this case is high. Looking beyond name similarity, we consider the mark's "effect o[n] marketplace presentation, including lettering styles [and] logos," the placement of words within the marks, the item on which the marks were placed, and the meaning of the marks. Hornady Mfg., Inc.,
Additionally, "[t]he stronger a trademark, the more likely that encroachment upon it will lead to ... confusion."
Our assessment of the other four factors does not overcome the visual similarity of the marks and the strength of Affliction's mark. The record indicates the marks are placed on some number of similar products and are marketed through at least some similar channels.
Accordingly, Utah Vap has not met its burden of showing that "no reasonable juror could find [a] likelihood of confusion." King of the Mountain Sports, Inc.,
III
Trademark damages under the Lanham Act are governed by
"The determination of whether a Rule 26(a) violation is justified or harmless is entrusted to the broad discretion of the district court." Woodworker's Supply, Inc. v. Principal Mut. Life Ins. Co.,
IV
For the forgoing reasons, the district court's grant of summary judgment is REVERSED and the case is REMANDED for further proceedings consistent with this opinion.
There is no dispute in this case that Affliction owns the relevant marks.
At oral argument, Affliction stated it would only pursue theories of initial interest and post-sale confusion upon remand. (Oral Arg. at 10:06-10:42 ("I would not pursue [point-of-sale confusion] at trial.").)
We have previously rejected the assertion made here by Affliction that "a jury could infer defendants' intent to derive the benefit and goodwill of [the] mark" simply "because they failed to conduct a full trademark search before using" the mark.
Affliction also argues that it can recover statutory damages because Utah Vap has used a "counterfeit mark." § 1117(c). But a counterfeit mark is one that "is identical with, or substantially indistinguishable from" another's mark. Utah Vap's mark, although similar to Affliction's, is not "substantially indistinguishable from" it. Finally, Affliction briefly requests injunctive relief. Because the district court held as a matter of the law that there was no likelihood of confusion, it did not reach this question. We remand to allow the district court to determine in the first instance whether injunctive relief is appropriate.
Reference
- Full Case Name
- AFFLICTION HOLDINGS, LLC v. UTAH VAP OR SMOKE, LLC
- Cited By
- 13 cases
- Status
- Published