Source: cases/15usc1125/f3d-921-1364-versatop-v-georgia-expo.case
Case source: https://www.neochart.com/catalog/cases/f3d/volume_921/1364_01/index.html
Contrary to this precedent, the district court in this case incorrectly applied the definition of "use in commerce" that is included in the statute for purposes of trademark registration. This definition does not apply to trademark infringement. See Network Automation , 638 F.3d at 1144-45 ; Playboy , 354 F.3d at 1024 n.11.
On the correct law, violation of the Trademark Act was established on the admitted facts.
Nor does Georgia Expo "dispute VersaTop's ownership of the trademarks at issue."
These factors, as summarized in Au-Tomotive Gold , are "(1) strength of the mark(s); (2) relatedness of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels; (6) degree of consumer care; (7) defendant's intent; (8) likelihood of expansion." 457 F.3d at 1075-76. The Ninth Circuit has emphasized that "the eight factors [ Sleekcraft ] recited are not exhaustive," and should be applied "in a flexible manner." Network Automation, 638 F.3d at 1145.
We therefore "conclude as a matter of law that likelihood of infringement is clear cut here."
casedsl 1 case /f3d/921/1364-01 name Versatop Support Sys., LLC v. Ga. Expo, Inc. cite 921 F.3d 1364 (2019) court United States Court of Appeals for the Federal Circuit date 2019-04-19 url catalog/cases/f3d/volume_921/1364_01/index.html source ir/caselaw/f3d_921.jsonl sha1=48ced4dbb529e86d289237579add0a19772018ab chars=22488 law 15usc1125 role applied posture Cross-motions for summary judgment; Federal Circuit applies Ninth Circuit trademark law, reverses noninfringement and enters judgment for VersaTop with further proceedings on remand. result claimant-won element commerce-use : satisfied [law] variant infringing-use/trade-show-brochures fact @19596..19752 [supports] | Georgia Expo admitted that it used VersaTop's marks in its advertising and brochures, and that the parties "compete directly" in the drape and rod industry. rule @15449..15774 | Contrary to this precedent, the district court in this case incorrectly applied the definition of "use in commerce" that is included in the statute for purposes of trademark registration. This definition does not apply to trademark infringement. See Network Automation , 638 F.3d at 1144-45 ; Playboy , 354 F.3d at 1024 n.11. held @862..951 | On the correct law, violation of the Trademark Act was established on the admitted facts. gloss The legal use question was actually resolved on admitted commercial advertising, not merely announced for remand. This 2019 holding does not resolve later territorial limits. element protected-mark : satisfied [conceded] variant ownership/uncontested-product-names fact @1542..1647 [supports] | VersaTop states that since 2011 it has sold these systems with the trademarks PIPE & DRAPE 2.0™ and 2.0™. held @4623..4703 | Nor does Georgia Expo "dispute VersaTop's ownership of the trademarks at issue." gloss The case-specific ownership premise is conceded on appeal; the court does not newly analyze distinctiveness or priority. element likely-confusion : satisfied [law] variant market-overlap/identical-marks-and-goods rule @18544..19034 | These factors, as summarized in Au-Tomotive Gold , are "(1) strength of the mark(s); (2) relatedness of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels; (6) degree of consumer care; (7) defendant's intent; (8) likelihood of expansion." 457 F.3d at 1075-76. The Ninth Circuit has emphasized that "the eight factors [ Sleekcraft ] recited are not exhaustive," and should be applied "in a flexible manner." Network Automation, 638 F.3d at 1145. fact @19791..19873 [supports] | The type of goods sold by both companies-the pipe and drape systems-are identical. fact @19990..20134 [supports] | It is undisputed that the parties operate in the same marketing channels-the flyers were distributed by Georgia Expo for an industry trade show. fact @20363..20597 [cuts-against absent] | Georgia Expo, in both its own motion for summary judgment, and in opposition to VersaTop's cross-motion, made no argument regarding these likelihood of confusion factors, contending only that there was no evidence of actual confusion. held @21850..21943 | We therefore "conclude as a matter of law that likelihood of infringement is clear cut here." gloss The court enters judgment on undisputed facts rather than merely finding a triable issue. The mixed fact sentence tagged cuts-against absent refers to its last clause, the asserted absence of actual confusion; its uncontested-factors clause supports the result. Absence of actual confusion does not defeat likely confusion under the flexible Ninth Circuit factors.