The US Court of Appeals for the Eighth Circuit affirmed a district court summary judgment finding that no evidence had been presented from which a jury could infer that consumers were likely to be confused. ZW USA, Inc. v. PWD Systems, LLC, Case Nos. 16-3999; -4035, (8th Cir., Apr. 26, 2018) (Kelly, J).
ZW USA sells plastic bags (so-called wicket bags) for picking up and disposing of dog waste. Wicket bags are similar to grocery bags; they are sold stacked on top of one another and connected to a header strip, and are designed to be dispensed one at a time with a single pull of the hand. ZW used the marks ONEPUL and SINGLPUL in connection with its wicket bags and was granted federal trademark registrations for its trademarks in 2014. During prosecution of the trademarks, the US Patent and Trademark Office did not ask ZW for proof that the trademarks had acquired distinctiveness in the dog bag marketplace.
PWD Systems is also in the dog bag market and sells its wicket bag under the trademark BagSpot. PWD entered the dog bag market after ZW. On its website, PWD uses the phrase "one-pull" to describe some of its products. ZW filed suit, arguing that PWD infringed its ONEPUL trademark by describing its product as "one-pull." PWD countersued, claiming that the ONEPUL trademark was invalid. The district court concluded that PWD had not infringed ZW's trademarks by using "one-pull," and that PWD had not presented enough evidence to overcome the strong presumption that ZW's registered trademarks were valid. Both parties appealed.
To determine likelihood of confusion, the following six factors are of importance:
- The strength of the owner's mark
- The similarity between the owner's mark and the alleged infringer's mark
- The degree to which the products compete with each other
- The alleged infringer's intent to "pass off" its goods as those of the trademark owner
- Incidents of actual confusion
- The type of product, its costs and its conditions of purchase
The Eighth Circuit reviewed these factors and found that "taken as a whole, the evidence that ZW submitted at summary judgment showed only that ZW and PWD were in competition with one another," and that "ZW presented no evidence from which a jury could infer that consumers are likely to confuse ZW's ONEPUL wicket bags with PWD's BagSpot 'one-pull' wicket bags." The Court therefore affirmed the district court's grant of summary judgment to PWD on the infringement claim.
The district court had also determined, on summary judgment, that ZW's ONEPUL mark was invalid. On that issue the Eighth Circuit reversed, explaining that there was a fact dispute as to whether the ONEPUL mark was generic or descriptive and therefore it should be left to the trier of fact.
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