Actual Confusion
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All’s Well That Edwell: Two Markets Can Be Substantially Different if Defined Narrowly Enough

Despite evidence of actual confusion and seemingly similar services, the US Court of Appeals for the Tenth Circuit upheld a district court’s noninfringement finding concerning two nearly identical education-related marks because the parties targeted different goods and marketing channels. M Welles & Assocs., Inc. v. Edwell, Inc., Case No. 22-1248 (10th Cir. May 31, 2023) (Ebel, Bacharach, JJ.) (Tymkovich, J., dissenting). In his dissent, Judge Tymkovich criticized the lower court for characterizing the scope of the parties’ services too narrowly and observed that “[a]ny court can find some differences between businesses and markets at a particular level of generality.”

M Welles & Associates provides classes, seminars and certification workshops in the project management space under the brand name EDWEL (derived from “education done well”). The classes are designed for professionals in a variety of industries, including information technology, healthcare, education and the military. Welles primarily advertises its services via social media, Google and email, and further owns a variety of domain names incorporating both EDWEL and EDWELL. The defendant, Edwell, is a nonprofit organization that provides mental health coaching services to schoolteachers using the domain name Edwell.org and the brand name EDWELL (derived from “to be an educator and to be well”). Edwell operates by partnering with schools to provide its services and currently has partnerships with 10 K-12 public schools. Edwell does not target institutions of higher learning and does not offer services to corporations.

Welles first learned of Edwell’s services when it received a call from a potential customer asking about classes at Denver North High School—classes that were in fact offered by Edwell, not Welles. Welles sent a cease-and-desist notice to Edwell, which rebranded to “Educator Wellness Project” for a short time before reverting back to EDWELL. Welles then sued Edwell for trademark infringement, and the district court found that there was no likelihood of confusion. Welles appealed.

Welles raised three arguments on appeal:

  1. The magistrate judge used the wrong legal standard in assessing likelihood of confusion.
  2. The Tenth Circuit should adopt a presumption of confusion.
  3. The magistrate judge clearly erred in the analysis of Edwell’s intent, the similarity of the parties’ services and marketing, the degree of purchaser care and actual confusion.

Welles also moved to supplement the appellate record with new evidence of actual confusion that occurred after the trial.

Supplementation

The Tenth Circuit first addressed Welles’s motion, finding that there was no legitimate basis for supplementing the record. Fed. R. of Civ. P. 10(e) permits a court to modify the appellate record “only to the extent necessary to ‘truly disclose what occurred in the district court.’” Because the new evidence of actual confusion was not before the district court, the Tenth Circuit concluded that Rule 10(e) would not permit it to be added to the record. The Court further reasoned that the rare exception to Rule 10, which permits the court to supplement the record to correct misrepresentations, demonstrate mootness, or raise an issue for the first time on appeal, did not [...]

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Confused? How Do You Factor That?

Considering the eight-factor likelihood of confusion test, the US Court of Appeals for the Sixth Circuit affirmed the district court’s finding on all factors, concluding that two competing marks in the transportation logistics industry are overlapping to the extent that consumers would likely be confused. AWGI, LLC v. Atlas Trucking Co., LLC, Case No. 20-1726 (6th Cir. May 18, 2021) (Cook, J.)

Atlas Movers owns the “Atlas” mark and a federal registration for the mark for “freight forwarding services and transportation of household goods of others.” It first used the mark “Atlas Van Lines” in 1948 for transportation and logistics services. In 2007, it revised its name to Atlas Relocation Services and marketed its services under “Atlas Logistics.”

Atlas Trucking, a part of Eaton Steel, manufactured and distributed steel under its Atlas Trucking mark starting in 1999. Later, in 2003, Eaton expanded its services to ship other goods under the mark Atlas Logistics. Eaton admitted it knew of Atlas Van Lines for logistics before it began using the mark.

Atlas Movers sued Eaton for infringement of its “Atlas” mark and Eaton counterclaimed that it owned the Atlas Logistics mark.

The district court found that Eaton’s use of “Atlas” creates a likelihood of confusion with Atlas Movers. The court went through the eight-factor likelihood of confusion test, considering: (1) strength of the plaintiff’s mark; (2) relatedness of the goods or services; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) likely degree of purchaser care; (7) defendant’s intent in selecting the mark and (8) likelihood of expansion of the product lines or services “Atlas” marks. The court ultimately found for Atlas Movers on its trademark infringement claim. Eaton appealed.

The Sixth Circuit agreed with the district court’s analysis. First, on commercial strength, the district court found Atlas Movers’ mark to be commercially strong because of its significant advertising expenditures, exposing consumers to its trademark with public recognition. Eaton tried to demonstrate weakness of the mark by presenting evidence of third parties’ use of similar marks, but the lower court rejected the argument, noting the other marks did not use “Atlas” for transportation and logistics. The court found this factor favored Atlas Movers.

The Sixth Circuit also agreed with the district court on the second factor, relatedness of goods and services, concluding buyers would be likely to believe the parties’ respective goods and services, which relate to the same industry and are directed to common consumers, come from the same source or are connected with a common company. The court found this factor also favored Atlas Movers.

Third, as to similarity of the marks, the lower court gave weight to pronunciation, appearance and verbal translation of the marks in their entirety, finding the dominant potion of the mark (“Atlas”) was identical. Again, this factor favored Atlas Movers.

Fourth, on the issue of actual confusion, the lower court considered evidence of five people experiencing actual confusion from Eaton’s use of its “Atlas” mark. There were also consumer [...]

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Fifth Circuit Says No Preliminary Injunction in Boozy Beverage Trademark Fight

The maker of BRIZZY-brand hard seltzer claimed that consumers would confuse a product branded VIZZY hard seltzer with its own. The United States Court of Appeals for the Fifth Circuit disagreed, however, and affirmed the district court’s denial of the preliminary injunction with an explanation as to how the plaintiff failed to demonstrate a substantial likelihood of success on the merits with respect to its trademark infringement claim. Future Proof Brands, L.L.C., v. Molson Coors Beverage Company, et. al., Case No. 20-50323 (5th Cir. December 3, 2020) (Smith, J.).

With a booming market for hard seltzers and ready-to-drink cocktails, it is no surprise that disputes over brand names of the bubbly alcoholic beverages have followed. After the district court denied Proof Brands’ request for a preliminary injunction against Molson Coors’ entry into that market, Proof Brands appealed. The Fifth Circuit issued a reminder that a preliminary injunction is “an extraordinary remedy which should not be granted unless the party seeking it has clearly carried [its] burden of persuasion,” and reviewed the district court’s denial of Future Proof’s request for an abuse of discretion. The Court further noted that under Planned Parenthood Ass’n of Hidalgo Cnty. v. Suehs, Future Proof must demonstrate four factors to obtain a preliminary injunction, namely: (1) a substantial likelihood of success on the merits, (2) a substantial threat of irreparable injury if the injunction is not granted, (3) that the substantial injury outweighs the threatened harm to the party sought to be enjoined and (4) that granting the preliminary injunction would not disserve the public interest. Concluding that Future Proof was unable to demonstrate a substantial likelihood of success on the merits of its trademark infringement claim, the court did not address the remaining three preliminary injunction factors.

Future Proof argued that in the course of determining whether there was a likelihood of confusion between the BRIZZY and VIZZY trademarks, the district court erred in analyzing the various factors, or “digits,” of consumer confusion used by the Fifth Circuit. The Court tackled each of the “digits” assessing the likelihood of consumer confusion, noting that even with “some errors,” the district court correctly concluded that Future Proof failed to show a substantial likelihood of success on its trademark infringement claim.

Starting with the type or strength of the trademark allegedly infringed factor, the Fifth Circuit disagreed somewhat with the district court and found the BRIZZY mark to be suggestive, rather than merely descriptive of “fizzy” beverages. Nevertheless, the Court noted that suggestive marks—like descriptive marks— are “comparatively weak” for purposes of a confusion analysis, and cited a number of third-party carbonated beverage brands sharing the common “-IZZY-” root to affirm its agreement with the district court that BRIZZY is a weak trademark. With a “weak” mark at issue, the Court found the similarity factor to weigh only marginally in favor of the injunction, especially given key differences between the product packaging and labels for the respective BRIZZY and VIZZY beverages.

Moving on to the defendant’s intent factor, [...]

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