Versatop Support Sys., LLC v. Ga. Expo, Inc.

921 F.3d 1364 (2019) United States Court of Appeals for the Federal Circuit 2019-04-19

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)

Facts

  1. 1 Use in commerce connected with goods or services satisfied law
    On the correct law, violation of the Trademark Act was established on the admitted facts.
  2. 1 Use in commerce connected with goods or services satisfied law
    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.
  3. 1 Use in commerce connected with goods or services satisfied law
    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.
  4. 2 Enforceable source-identifying mark or trade dress satisfied conceded
    VersaTop states that since 2011 it has sold these systems with the trademarks PIPE & DRAPE 2.0™ and 2.0™.
  5. 2 Enforceable source-identifying mark or trade dress satisfied conceded
    Nor does Georgia Expo "dispute VersaTop's ownership of the trademarks at issue."
  6. 3 Likely consumer confusion about source or sponsorship satisfied law
    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.
  7. 3 Likely consumer confusion about source or sponsorship satisfied law
    The type of goods sold by both companies-the pipe and drape systems-are identical.
  8. 3 Likely consumer confusion about source or sponsorship satisfied law
    It is undisputed that the parties operate in the same marketing channels-the flyers were distributed by Georgia Expo for an industry trade show.
  9. 3 Likely consumer confusion about source or sponsorship satisfied law
    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.
  10. 3 Likely consumer confusion about source or sponsorship satisfied law
    We therefore "conclude as a matter of law that likelihood of infringement is clear cut here."