In an opinion that appears to raise the bar for mark owners pleading trademark infringement, while at the same time lowering the bar for accused infringers hoping to get out on summary judgment, the U.S. Court of Appeals for the Ninth Circuit affirmed the district court’s ruling that the use of the mark SURVIVOR does not infringe the rights of the owner of the SURFVIVOR mark. Surfvivor Media, Inc v. Survivor Productions, Case No. 02-17064 (May 4, 2005) (Rawlinson, J.).
The plaintiff owns three federal trademark registrations for the mark SURFVIVOR, used on a variety of beach-themed goods–including t-shirts, sunscreen and surfboards–sold exclusively in Hawaii. The defendants, the producers of the popular "Survivor" television show, use their SURVIVOR mark and associated logo design on merchandise used to market the program (including t-shirts, shorts, hats and sunscreen).
In reviewing the district court’s grant of summary judgment, the Ninth Circuit first considered the plaintiff’s claim the district court improperly failed to consider evidence of "forward confusion" (that is, evidence that consumers purchased goods with the SURVIVOR mark thinking they came from the plaintiff). The plaintiff "may not proceed on this theory because he failed to reference it in his complaint," the Court observed without further analysis.
As to the plaintiff’s claims of reverse confusion (that is, when consumers purchase goods with the SURFVIVOR mark thinking they came from the defendants), the Court applied the Sleekcraft factors. The Court found that at least some of the factors (in particular, the strength of the mark and both marketing channels and degree of customer case, at least as to some of the accused products) supported a finding of likelihood of confusion. The Court found that others (specifically, evidence of actual confusion, the defendants’ intent and the likelihood of expansion by the plaintiff) did not favor the plaintiff.
As to the remaining factor–relatedness of the goods–the Court found the factor favored the defendants because there was no evidence in the record that "customers are likely to associate the two products or conclude that the products come from the same source." Citing the Dreamwoks case by way of contrast, the Court concluded: "The distribution of the Sleekcraft factors does not raise a material issue of fact regarding likelihood of confusion."
Practice Note: This case is curious for two reasons. First, to the extent the Court is imposing a requirement to particularly plead the specific type of confusion the accused infringer is creating, this would appear to be a new rule. Prudence would dictate that plaintiffs expressly allege and plead both theories to the extent the facts allow. Second, it appears the Court in this case may have misapplied the Sleekcraft factor concerning relatedness of the goods. As the Ninth Circuit itself made clear in the Sleekcraft case, this factor should be a consideration of whether particular types of goods are likely to be confused with other types of goods. Cars and motorcycles might be considered related goods; lawnmowers and toothpaste are not. The touchstone of the analysis is whether the buying public might consider the products "to have come from the same source if sold under the same mark." Since at least some of the products at issue in this case were identical (for example, sunscreen), its seems this factor should have favored the plaintiff.
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