Seventh Circuit: Several likelihood of confusion factors favored plaintiff, no summary judgment
September 22, 2008
The Seventh Circuit recently reversed a district court's summary judgment for the defendant in a trademark infringement case. The district court held no reasonable fact finder could find the marks likely to be confused.On appeal, the Seventh Circuit reminded us that the test for likelihood of confusion is not simply whether consumers will confuse two marks, but whether upon viewing the junior mark a consumer will be likely to associate the product or service with the source of the products or services of the senior mark. In other words, the relevant query is whether consumers will believe that goods/services offered under the junior mark are sponsored, endorsed, or otherwise affiliated with the senior trademark owner. Applying this standard, the court held there was at least a genuine issue of fact regarding likelihood of confusion, and reversed the grant of summary judgment.More detail of AutoZone, Inc. v. Strick after the jump.Plaintiffs, AutoZone, Inc. and AutoZone Parts, Inc. (collectively "AutoZone") comprise one of the largest retailers of automotive parts in the United States, operating approximately 3,500 stores nationwide. AutoZone is known primarily for the sale of goods, but also provides a few services such as battery testing. AutoZone has sold its goods to both commercial automotive establishments and end consumers under the federally registered trademark AUTO ZONE and design since at least as early as 1987, and since the mid-1990s has engaged in extensive advertising efforts with a concerted effort in Chicago Illinois. The mark is depicted below:AutoZone While AutoZone was advertising heavily in the Chicago market, Defendant Michael Strick, who had been working in the automotive goods and services industry, opened two automotive service businesses in the Chicago area under the mark Oil Zone. The Oil Zone mark is depicted below:Oil ZoneYou can also view the defendant's storefront on Google Street View here. Strick also used the mark "Wash Zone" at one of the locations where he offered car wash services. Strick maintains that he was completely unaware of AutoZone at the time he began using the Oil Zone mark.Several years after first learning about Strick's use of the Oil Zone and Wash Zone marks, AutoZone filed a lawsuit asserting, among other things, trademark infringement and trademark dilution. The parties eventually filed cross motions for summary judgment. Upon review of the motions, the district court held in favor of Strick, holding that the AutoZone mark and the Oil Zone and Wash Zone marks were not similar enough for a reasonable fact finder to find that there is a likelihood of confusion. AutoZone appealed.The Seventh Circuit reversed. In its decision, the court agreed that "[n]o consumer would mistake an AutoZone store, which mainly sells products, for a Wash Zone or an Oil Zone, which primarily provides services." However, the court held that "viewed in light of the similarity of the marks [and the relatedness of the parties goods and services], a reasonable consumer may very well be led to believe that Oil Zone and Wash Zone are AutoZone spinoffs. A retailer or manufacturer with a strong mark venturing into a related service industry would not be that surprising." The court also found that most of the other likelihood of confusion factors also favored AutoZone including, for example, the strength of the plaintiff's mark, the area and manner of concurrent use, and the degree of care likely to be exercised by consumers. Consequently, the court reversed the district court's judgment and held that a genuine dispute exists such that the case should be allowed to proceed to a final determination before a judge or jury.To read the full decision in AutoZone, Inc. v. Strick, click here.
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