In a trademark action involving lightweight car toys, the Ninth Circuit has clarified the weight to be given to the eight Sleekcraft factors when determining the likelihood of confusion. Business concerned about trademark infringement issues should consider the ruling in Jada Toys, Inc. v. Mattel, Inc., 2007 WL 2199286 (9th Cir. 2007), where the court refused to completely rule out a claim of infringement even where the two marks were dissimilar. The court wanted to make it clear that even though some factors are “more important than others,” a determination of dissimilarity alone is insufficient to support a finding that there was no evidence of infringement.
Jada Toys filed suit against Mattel asserting claims for trademark infringement, false designation of origin, and unfair competition related to Mattel’s advertising and sale of it’s OLD SCHOOL and NEW SCHOOL line of car toys, where Jada Toys had registered the trademark of OLD SKOOL. In turn, Mattel filed counterclaims asserting that Jada’s use and sale of its HOT RIGZ mark infringed on Mattel’s HOT WHEELS mark. Both parties moved for summary judgment.
Trademark infringement claims often turn on whether the alleged infringer’s use of a mark creates a likelihood of confusion. The eight factors employed to determine the likelihood of confusion (the “Sleekcraft factors”) are (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product lines. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979).
The district court granted summary judgment against Mattel on its infringement counter-claim, relying on the principle that the dissimilarity of the marks alone determined that no likelihood of confusion existed. None of the other Sleekcraft factors were considered. On appeal, the Ninth Circuit reversed because dissimilarity alone does not obviate the need to inquire into evidence of other important factors. While it is true that the test for likelihood of confusion is “pliant” and that some factors are more important than others, that does not mean that dissimilarity alone is determinative of the likelihood of confusion. Evidence of “relatively important factors” must be considered as well. The decision indicates that even a dissimilar mark may be infringing if some of the other Sleekcraft factors are present.
Full Opinion Text: http://www.ca9.uscourts.gov/ca9/newopinions.nsf/F552D4DFDE50F88B8825732A007F4367/$file/0555627.pdf?openelement