United States: Hair Care Company Can't Wash Away Absence Of Infringement

In an opinion concerning likelihood of confusion of a weak mark, the US Court of Appeals for the Fourth Circuit affirmed partial summary judgment in favor of a defendant in a trademark infringement case concerning hair care products. Grayson O Company v. Agadir International LLC, Case No. 15-2552 (4th Cir., May 5, 2017) (Motz, J). The Court's decision confirmed that, at least in the Fourth Circuit, it is very unlikely that a trademark infringement case will proceed beyond summary judgment where weak marks are dissimilar, evidence of intent to infringe is absent, and evidence of actual confusion is de minimis.

Grayson O Company owns the registered word mark "F 450" for hair care products. The mark appeared on Grayson's products with a lowercase "f," a stylized "450," and no space between "f" and "450." In the hair care industry, 450 generally refers to the temperature to which hair can be heated before being damaged. Grayson claimed that Agadir International's use of the marks "Hair Shield 450° Plus" and "Agadir Argan Oil Hair Shield 450° Plus" were likely to cause confusion with Grayson's F 450 mark, and sued Agadir for trademark infringement in violation of both the Lanham Act and North Carolina law. Agadir moved for partial summary judgment on trademark infringement liability. Grayson also moved for summary judgment. The district court granted Grayson's motion and denied Agadir's motion. 

Agadir appealed. On review, the Fourth Circuit affirmed. In reviewing the likelihood-of-confusion factors, the Court focused only on the four factors that the parties had disputed:

  • Strength of the plaintiff's mark as used in the marketplace
  • Similarity of the two marks
  • Defendant's intent
  • Evidence of actual confusion

The Fourth Circuit agreed with the district court's finding that Grayson's F 450 mark was weak. Although it was undisputed that the F 450 mark was only suggestive and thus inherently distinctive, the Court determined that the mark was conceptually weak in light of widespread use of "450" in the hair care industry. The Court also found that the F 450 mark was commercially weak because of Grayson's minimal advertising and sales in relation to the multibillion-dollar hair care industry, and Grayson's failure to submit any other evidence demonstrating commercial strength.

The Fourth Circuit also found that the marks were not similar because they significantly differed in how they appeared in the marketplace. The Court rejected Grayson's argument that "450" formed the dominant portion of its mark, reasoning that Grayson's F 450 mark appeared in the marketplace as a single word.

With respect to intent, the Fourth Circuit summarily rejected Grayson's contention that it had proven that Agadir intended to infringe Grayson's F 450 mark. After receiving Grayson's cease-and-desist letter, Agadir changed its label so that all of the text on its label was in a larger font, not just "450." If anything, this showed Agadir's intent to distinguish its label from Grayson's label, the Court reasoned.

The Fourth Circuit was similarly unimpressed with Grayson's evidence of actual confusion, which consisted of its president's deposition testimony that his employees and customers notified him that Agadir was "infringing" Grayson's mark. The Court stated that the reasonable inference from this evidence is that the public could differentiate between the two products, and, in any event, Grayson's evidence of actual confusion was de minimis.

Practice Note: A trademark registration, particularly where the mark is suggestive, may not establish conceptual strength and will not prove commercial strength under the likelihood-of-confusion analysis. Additional evidence concerning commercial strength, including the scope of advertising and sales and unsolicited media coverage referring to the mark, must be submitted. 

Hair Care Company Cant Wash Away Absence of Infringement

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