United States Court of Appeals for the Federal Circuit · 2019-04-19
Case and law context
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; claim:
Instances and excluded annotation blocks
| Case | Element | Holding and scope | Variant | Exact source quotations |
|---|---|---|---|---|
| /f3d/921/1364-01 — United States Court of Appeals for the Federal Circuit · 2019 | Use in commerce connected with goods or services | satisfied Counted merits instance applied / merits basis: law 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. | infringing-use/trade-show-brochures | 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.Source: docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1364-01; Unicode character offsets [19596:19752] (end exclusive); SHA-256 e097d77ff3e2b2660ec97b4240c13672eab0fc9d8f05781fdfaf1b120b8c1ec9.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.Source: docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1364-01; Unicode character offsets [15449:15774] (end exclusive); SHA-256 e097d77ff3e2b2660ec97b4240c13672eab0fc9d8f05781fdfaf1b120b8c1ec9.On the correct law, violation of the Trademark Act was established on the admitted facts.Source: docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1364-01; Unicode character offsets [862:951] (end exclusive); SHA-256 e097d77ff3e2b2660ec97b4240c13672eab0fc9d8f05781fdfaf1b120b8c1ec9. |
| /f3d/921/1364-01 — United States Court of Appeals for the Federal Circuit · 2019 | Likely consumer confusion about source or sponsorship | satisfied Counted merits instance applied / merits basis: law 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. | market-overlap/identical-marks-and-goods | 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.Source: docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1364-01; Unicode character offsets [18544:19034] (end exclusive); SHA-256 e097d77ff3e2b2660ec97b4240c13672eab0fc9d8f05781fdfaf1b120b8c1ec9.The type of goods sold by both companies-the pipe and drape systems-are identical.Source: docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1364-01; Unicode character offsets [19791:19873] (end exclusive); SHA-256 e097d77ff3e2b2660ec97b4240c13672eab0fc9d8f05781fdfaf1b120b8c1ec9.It is undisputed that the parties operate in the same marketing channels-the flyers were distributed by Georgia Expo for an industry trade show.Source: docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1364-01; Unicode character offsets [19990:20134] (end exclusive); SHA-256 e097d77ff3e2b2660ec97b4240c13672eab0fc9d8f05781fdfaf1b120b8c1ec9.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.Source: docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1364-01; Unicode character offsets [20363:20597] (end exclusive); SHA-256 e097d77ff3e2b2660ec97b4240c13672eab0fc9d8f05781fdfaf1b120b8c1ec9.We therefore "conclude as a matter of law that likelihood of infringement is clear cut here."Source: docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1364-01; Unicode character offsets [21850:21943] (end exclusive); SHA-256 e097d77ff3e2b2660ec97b4240c13672eab0fc9d8f05781fdfaf1b120b8c1ec9. |
| /f3d/921/1364-01 — United States Court of Appeals for the Federal Circuit · 2019 | Enforceable source-identifying mark or trade dress | satisfied Counted merits instance applied / merits basis: conceded The case-specific ownership premise is conceded on appeal; the court does not newly analyze distinctiveness or priority. | ownership/uncontested-product-names | VersaTop states that since 2011 it has sold these systems with the trademarks PIPE & DRAPE 2.0™ and 2.0™.Source: docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1364-01; Unicode character offsets [1542:1647] (end exclusive); SHA-256 e097d77ff3e2b2660ec97b4240c13672eab0fc9d8f05781fdfaf1b120b8c1ec9.Nor does Georgia Expo "dispute VersaTop's ownership of the trademarks at issue."Source: docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1364-01; Unicode character offsets [4623:4703] (end exclusive); SHA-256 e097d77ff3e2b2660ec97b4240c13672eab0fc9d8f05781fdfaf1b120b8c1ec9. |
Court interpretations recorded from this case
interpretation
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.
/f3d/921/1364-01 — United States Court of Appeals for the Federal Circuit · 2019
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.Source:
docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1364-01; Unicode character offsets [15449:15774] (end exclusive); SHA-256 e097d77ff3e2b2660ec97b4240c13672eab0fc9d8f05781fdfaf1b120b8c1ec9.VersaTop rejects importing registration/affixation requirements into infringing advertising use. Current territorial limit: Abitron (2023) confines §1125(a)(1) to domestic infringing use in commerce; U.S. consumer confusion alone does not supply domestic conduct. Official update is recorded in NOTES, not silently attributed to the 2019 case.
interpretation
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.
/f3d/921/1364-01 — United States Court of Appeals for the Federal Circuit · 2019
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.Source:
docroot/ir/caselaw/f3d_921.jsonl#/f3d/921/1364-01; Unicode character offsets [18544:19034] (end exclusive); SHA-256 e097d77ff3e2b2660ec97b4240c13672eab0fc9d8f05781fdfaf1b120b8c1ec9.VersaTop is a Federal Circuit decision applying Ninth Circuit law. The cited Sleekcraft factors are flexible, not a nationwide arithmetic formula. Actual confusion is relevant evidence but not mandatory proof of likely confusion. Remedies may require evidence beyond liability.