Hard Candy, LLC v. Anastasia Beverly Hills, Inc.

921 F.3d 1343 (2019) United States Court of Appeals for the Eleventh Circuit 2019-04-23

civil action for trademark infringement and unfair competition under 15 U.S.C. ยงยง 1114(1), 1125(a); jury demand struck because only equitable remedies (profits, injunction) remained; bench-trial judgment for defendant (no likelihood of confusion; alternatively fair use) affirmed on clear-error review (result: claimant-lost)

Facts

  1. 3 Likely consumer confusion about source or sponsorship not proved
    The Gleam Glow Kit included the words "hard candy" in capital letters on the back and inside of the package to designate a peach-pink shade of makeup.
  2. 3 Likely consumer confusion about source or sponsorship not proved
    There was no dispute that both companies sell cosmetics products online and in retail stores, their customers are primarily women between the ages of 18 and 35, and both advertise their products through trade shows, social media, and traditional print media.
  3. 3 Likely consumer confusion about source or sponsorship not proved
    But the trial court must "compare[ ] the marks and consider[ ] the overall impressions that the marks create, including the sound, appearance, and manner in which they are used."
  4. 3 Likely consumer confusion about source or sponsorship not proved
    The district court looked to the overall impression created by the Gleam Glow Kit-the words "HARD CANDY" appeared only on the back and inside of the kit, "nam[ing] one shade of a product that is otherwise clearly and prominently featured as an Anastasia Beverly Hills mark."
  5. 3 Likely consumer confusion about source or sponsorship not proved
    Uncontroverted testimony at trial established that Anastasia sold 248,075 Gleam Glow Kits, totaling over $5 million in revenue.
  6. 3 Likely consumer confusion about source or sponsorship not proved
    And still, Hard Candy did not produce any evidence that a customer was ever actually confused about the source of the Gleam Glow Kit.
  7. 3 Likely consumer confusion about source or sponsorship not proved
    In sum, the record does not suggest that the district court committed clear error as to any of its findings, and it does not show clear error as to the court's ultimate conclusion that Hard Candy had not shown a likelihood of confusion.