Jeffrey Sorensen v. WD-40 Company
Filing
Filed opinion of the court by Judge Flaum. AFFIRMED. William J. Bauer, Circuit Judge; Joel M. Flaum, Circuit Judge and Daniel A. Manion, Circuit Judge. [6669807-1] [6669807] [14-3067]
Case: 14-3067
Document: 39
Filed: 06/11/2015
Pages: 32
In the
United States Court of Appeals
For the Seventh Circuit
____________________
No. 14 3067
JEFFREY SORENSEN,
Plaintiff Appellant,
v.
WD 40 COMPANY,
Defendant Appellee.
____________________
Appeal from the United States District Court for the
Northern District of Illinois, Western Division.
No. 12 cv 50417 — Frederick J. Kapala, Judge.
____________________
ARGUED FEBRUARY 25, 2015 — DECIDED JUNE 11, 2015
____________________
Before BAUER, FLAUM, and MANION, Circuit Judges.
FLAUM, Circuit Judge. Plaintiff Jeffrey Sorensen is the
founder and CEO of Inhibitor Technology Corporation,
which produces a line of rust inhibiting products containing
a substance called volatile corrosion inhibitor (“VCI”). This
line of products is branded with the federally registered
trademark THE INHIBITOR. That word mark is owned by
Sorensen; he also claims common law trademark rights in a
Case: 14-3067
Document: 39
Filed: 06/11/2015
2
Pages: 32
No. 14 3067
design mark associated with his products, an orange and
black crosshair.
In 2011, the WD 40 Company, the well known maker of
spray lubricant, introduced a new sub brand of products
known as the WD 40 Specialist product line. According to
Sorensen, the branding for these products infringes upon his
marks. In particular, one of the WD 40 products—WD 40
Specialist Long Term Corrosion Inhibitor, which contains
VCI and has a purpose similar to that of Sorensen’s prod
ucts—contains on its packaging both the word “inhibitor”
and an orange crosshair. So, Sorensen filed suit against WD
40 in the Northern District of Illinois, alleging trademark in
fringement and unfair competition under both federal and
Illinois law.
The district court granted summary judgment in favor of
WD 40 on all counts. It found that WD 40’s use of the word
“inhibitor” on the label of WD 40 Specialist Long Term Cor
rosion Inhibitor was a non trademark descriptive fair use of
the word. As to the crosshair mark, the district court found
that Sorensen had not presented sufficient evidence to
demonstrate a genuine issue of material fact as to a likeli
hood of confusion. Sorensen appeals the grant of summary
judgment. We affirm the judgment of the district court.
I. Background
In 1997, Jeffrey Sorensen founded a company called Van
Patten Industries and began selling rust preventative prod
ucts under the name THE INHIBITOR. That company exist
ed until 2010. Now, Sorensen is the CEO of Inhibitor Tech
nology Corporation, which he founded and which continues
to sell THE INHIBITOR line of products. These products
Case: 14-3067
No. 14 3067
Document: 39
Filed: 06/11/2015
Pages: 32
3
contain VCI, which prevents corrosion by creating a chemi
cal barrier on materials that repels moisture and water.
Sorensen claims to own two trademarks related to his
line of products. First, he is the owner of the word mark THE
INHIBITOR, which was registered on the United States Pa
tent and Trademark Office’s Principal Register on August 6,
2002. See THE INHIBITOR, Registration No. 2,604,283. That
mark attained incontestable status in August 2008. Second,
Sorensen claims ownership of a common law (i.e., unregis
tered) trademark in a crosshair design, which consists of a
black crosshair symbol over an orange background, with a
different black symbol in each quadrant of the crosshair (the
“Sorensen crosshair”).1 The district court assumed without
deciding that these marks were valid and protectable.
Sorensen sells a variety of products using these marks,
including “plugs,” “pro chips,” spray oil, oil wipes, grease,
degreaser, covers, “poly bags,” “VCI paper,” and wiping
cloths, all of which contain VCI. The words THE INHIBITOR
appear consistently on all of these products. The crosshair
design mark, however, appears on only some of his prod
ucts, and its appearance is inconsistent. For example, on the
VCI Pro Chips and the V80 VCI Wiping Cloth—among oth
ers—there is no crosshair, but rather only an orange and
black bull’s eye that replaces the “O” in a stylized THE
INHIBITOR logo. But on the V80 VCI Oil Blend and the V80
1
Below, Sorensen also argued that he owned a third, unregistered,
trademark in the “inhibitor design mark,” which is a stylized version of
THE INHIBITOR in which the “O” has been replaced with the crosshair
design mark. Sorensen’s briefs on appeal do not mention this mark,
however, so we do not discuss it further.
Case: 14-3067
Document: 39
Filed: 06/11/2015
4
Pages: 32
No. 14 306
67
VCI Oil Wipe, the crossha mark ap
O
t
air
ppears both on its ow
h
wn
and as the “O” in THE INH
a
HIBITOR.
Items in TH INHIBI
HE
ITOR Line
e
So
orensen gen
nerally targ
gets his sa
ales at firea
arm, fishin
ng,
and hunting ent
h
thusiasts, as well as m
members of the militar
ry.
Until 2008, he pr
romoted hi products in various hunting an
is
nd
fishin print and online me
ng
d
edia; since then, he ha used Fac
as
ce
book and his we
ebsite as his primary m
methods of advertisin
f
ng.
Soren
nsen also promotes his products at trade sh
hows and b
by
word of mouth. Since July 2012, his chips and plugs hav
d
y
s
d
ve
been sold in th tools, st
he
torage, and tool box sections of
d
x
Case: 14-3067
Document: 39
Filed: 06/11/2015
No. 14 3067
Pages: 32
5
Mena
ards retail stores in the Midw
west. In his depositio
s
on,
Soren
nsen also st
tated that he was wor
h
rking on ge
etting his o
oil
produ into Menards, but has not ye done so. He also said
ucts
M
et
that his product are sold in other big box stores and small
h
ts
i
g
s
ler
hardw
ware stores across the country.
s
So
orensen Cr
rosshair
W 40 Cross
WD
shair
WD 40 is a well known producer of multipu
W
w
n
urpose lubr
ri
cant spray. Its primary pro
s
p
oduct carrie a tradem
es
mark consis
st
ing of a yellow shield bea
o
w
aring the n
name “WD 40” in blu
D
ue
chara
acters. Acco
ording to a survey cond
s
ducted by t compan
the
ny
and submitted into the re
s
ecord, four out of fiv American
ve
ns
have used WD 40 product In late 20
4
ts.
011, WD 40 introduce
0
ed
a sub brand call the WD 40 Specia
b
led
D
alist produc line. The
ct
ere
are ei
ight produ
ucts in this line. With one except
tion, they a
all
come in metal aerosol spray bottles with the W 40 shield
e
a
WD
above the tradem
e
marked SPE
ECIALIST mark. Belo that is th
ow
he
specif product name, su as “Lo
fic
t’s
uch
ong Term C
Corrosion In
n
hibito and below that is the crossh
or,”
s
hair design that is at i
is
sue in this suit (t “WD 40 crosshair”
n
the
0
”).
WD 40 obtai
W
ined a reg
gistered des
sign mark in a simp
ple
black and white crosshair design. On the bottles though, th
k
e
d
s,
he
Case: 14-3067
Document: 39
Filed: 06/11/2015
6
Pages: 32
No. 14 306
67
WD 40 crosshai appears differently on each p
4
ir
y
product. For
exam
mple, on the Long Ter Corrosio Inhibito the cros
e
rm
on
or,
ss
hair is made of a gray cross over a bur orange backgroun
s
rnt
nd,
with a black ci
ircle perim
meter and a different silver blac
t
ck
symb in each quadrant of the cros
bol
sshair. The backgroun
nd
color and symb
bols are di
ifferent on each of th Speciali
he
ist
produ
ucts. Becau of its or
use
range cross
shair and i name, th
its
he
Long Term Corr
rosion Inhi
ibitor is of central im
f
mportance to
this case. That product is also impo rtant becau of its in
c
p
use
n
gredi
ients and fu
unction; it contains V and is meant to in
VCI
hibit rust for a long period of time. A
l
d
According t WD 40, in
to
mark
keting its Sp
pecialist pr
roducts, th company focuses o
he
y
on
tradesmen, indu
ustrial cons
sumers, aut consume constru
to
ers,
uc
tion workers, an mainten
w
nd
nance work
kers, with the greate
est
focus on the aut industry The Spec
s
to
y.
cialist produ
ucts are pr
ro
moted in numer
d
rous print and online media, no of whic
e
one
ch
overlap with th media in which Sorensen’s pr
he
n
roducts hav
ve
been advertised.
WD 40 Specialis Line
st
Case: 14-3067
Document: 39
Filed: 06/11/2015
Pages: 32
No. 14 3067
7
WD 40 Specialist Lo Term C
ong
Corrosion I
Inhibitor
WD 40’s deci
W
ision to dev
velop the Sp
pecialist lin was led b
ne
by
an ex
xecutive na
amed Graham Milner, who head
r,
ded a grou
up
called the Brand Extension Exploratio Project. At his depo
d
d
n
on
sition Milner de
n,
enied that WD 40 eve considere forming a
W
er
ed
g
partn
nership with Sorensen’ company However, a document
h
’s
y.
,
produ
uced for WD 40 by an outside c
W
n
consulting g
group, Inn
no
vation Edge, su
n
uggested the possibilit of WD 4 forming a
ty
40
partn
nership with one of fiv firms to produce a new corr
h
ve
o
ro
sion inhibition product; on of the fiv firms me
i
p
ne
ve
entioned was
Van Patten Indu
P
ustries, Sor
rensen’s fo
ormer comp
pany. Miln
ner
stated that his te
d
eam first be
ecame awar of Van Pa
re
atten as a po
tentia technolog provider when he received th document
al
gy
r
his
in 200 or 2010. Milner als said tha he was a
09
.
so
at
aware of Va
an
Patten before WD 40’s deci
n
W
ision to use the name “Long Ter
e
rm
Corro
osion Inhib
bitor,” but he denie any kn
t
ed
nowledge of
Soren
nsen’s cross
shair design mark. Acc
n
cording to Milner, WD
D
40’s marketing for the Spe
m
f
ecialist line focuses o mechani
e
on
ics
and other professional use but not the huntin or fishin
o
ers,
t
ng
ng
indus
stry.
Case: 14-3067
8
Document: 39
Filed: 06/11/2015
Pages: 32
No. 14 3067
Milner also testified that WD 40 had considered using
other names for this product, including “corrosion
preventing spray,” “advanced corrosion preventer,” and
“rust preventing spray.” According to Milner, the name
Long Term Corrosion Inhibitor was chosen due to findings
by an outside research agency. The district court found that
there are multiple products on the market containing VCI
and displaying the word “inhibitor” that are not manufac
tured or sold by either party to this case. The WD 40 cross
hair design was created by ECHO Brand Design, a London
based firm. WD 40 adopted the design after testing it with
consumers.
Another WD 40 executive, Maria Mitchell, was also de
posed. She testified that she had never heard of Sorensen,
Van Patten, or THE INHIBITOR products prior to the filing
of this suit. At her deposition, Mitchell identified a 10 page
document generated by Innovation Edge entitled “Executive
Summary,” which WD 40 had produced in discovery and
which reads: “The resulting product [WD 40’s VCI spray]
may have some characteristics related to, for example, … In
hibitor® VCI technology from Van Patten Industries.”
Mitchell admitted that the document indicated that WD 40
had knowledge of Van Patten and The Inhibitor line of
products but she did not know when WD 40 came into pos
session of the document.
Cheryl Perkins, the founder of Innovation Edge, was also
deposed. She described the making of that Executive Sum
mary, and acknowledged an email sent by Innovation Edge
to WD 40 that listed Van Patten as a prospective partner for
VCI technology development. Another document, “Concep
tual Ideas Presented to Innovationedge, LLC,” was created
Case: 14-3067
No. 14 3067
Document: 39
Filed: 06/11/2015
Pages: 32
9
by Innovation Edge and sent to individuals at WD 40 in ear
ly 2010. That document includes a reference to Van Patten as
a possible partner, as does another document sent from In
novation Edge to WD 40 called “WD 40 Brand Extension
Exploration Project Business Case Corrosion Products.” Per
kins stated that Innovation Edge never incorporated any of
Sorensen’s products into any presentation or document pro
vided to WD 40, and that she had never visited Sorensen’s
website, though the website address was referred to in a
document produced by Innovation Edge. Perkins explained
that someone else at Innovation Edge had reviewed the web
site prior to the preparation of that document. Innovation
Edge did not participate in the design of the packaging or
labels for the Specialist line and did not suggest the use of
the word “inhibitor” or the crosshair design.
Nicholas Dormon, the managing director and co owner
of ECHO, the firm that designed the WD 40 crosshair, pro
vided a declaration. He swore that he had never heard of
Sorensen, Van Patten, the Inhibitor product line, or the
crosshair mark, and that none of these were considered
when ECHO designed the WD 40 crosshair.
Additional testimony was given by WD 40’s Senior Vice
President of North American Sales, Peter Andrew Dumiak.
He testified that, prior to this litigation, he was not aware of
Sorensen or his companies, products, or trademarks. He also
testified that WD 40 products are sold through various
channels, including big box stores such as Home Depot,
Lowe’s, and Menards; “mass” stores such as Walmart and
Target; “club” stores such as Costco and Sam’s; automotive
stores such as Autozone and Pep Boys; hardware stores such
as Ace and True Value; and through industrial distributors
Case: 14-3067
10
Document: 39
Filed: 06/11/2015
Pages: 32
No. 14 3067
such as Fastenal and Grainger. WD 40 also sells to govern
ment agencies such as Armed Forces Information Services
(“AFIS”) and the Defense Commissary Agency (“DeCA”),
which provide the products through military commissaries.
Dumiak also testified that WD 40 does not sell directly to
fishing and hunting stores such as Bass Pro Shop and
Cabela’s, but agreed that there could be WD 40 products in
those stores if a distributor provided them to the stores.
Brady Lamb, WD 40’s brand manager for the Specialist
line, testified that an earlier WD 40 product, the “3 In One
No Rust Shield” (since discontinued) was advertised in
hunting and fishing magazines, and was promoted at the
Shooting, Hunting, Outdoor Trade Show (“SHOT” show) in
2010. Sorensen also claims that WD 40 exhibited this product
at the show in 2009, when Sorensen promoted his own
products there, though WD 40 denies this. WD 40 says it no
longer targets hunting and fishing enthusiasts.
Eric Vander Weit testified that he worked for Sorensen in
multiple capacities between approximately 1996 and 2001.
He has maintained a personal relationship with Sorensen
since then. On July 25, 2012, Sorensen called Vander Weit
and asked him to go to Menards and see if Vander Weit
could find WD 40 Specialist products. When asked if he
thought the products were made by Sorensen the first time
he saw them, Vander Weit said he thought that the presence
of the crosshair indicated that Sorensen “was doing co
branding with WD 40,” but he agreed that the products’
brand was clearly WD 40.
Sorensen filed this lawsuit against WD 40, alleging
trademark infringement of his THE INHIBITOR word mark;
false designation of origin with respect to WD 40’s use of a
Case: 14-3067
Document: 39
Filed: 06/11/2015
No. 14 3067
Pages: 32
11
crosshair mark, both standing alone and in combination
with the word “inhibitor;” and related state claims under Il
linois common law and the Illinois Uniform Deceptive Trade
Practices Act, 815 Ill. Comp. Stat. 501/1 et seq. The district
court granted summary judgment in favor of WD 40 on all
counts. First, the court held that WD 40’s use of the word
“inhibitor” on its Long Term Corrosion Inhibitor product is
a descriptive fair use of the term. Second, it held that there
were no genuine issues of material fact as to whether WD
40’s use of its crosshair mark is confusingly similar to
Sorensen’s crosshair mark. Finally, because Sorensen’s state
claims all require a likelihood of confusion, the district court
granted summary judgment to WD 40 on those claims as
well.
II. Discussion
We review a district court’s grant of summary judgment
de novo. Tindle v. Pulte Home Corp., 607 F.3d 494, 495 (7th Cir.
2010). Summary judgment is appropriate when the plead
ings, depositions, answers to interrogatories, and admissions
on file, together with any affidavits, show that there is no
genuine issue of material fact and the movant is entitled to
judgment as a matter of law. Fed. R. Civ. P. 56(a); Celotex
Corp. v. Catrett, 477 U.S. 317, 322 (1986). In reviewing the dis
trict court’s summary judgment order, we view all facts and
draw all inferences in the light most favorable to Sorensen.
See Ball v. Kotter, 723 F.3d 813, 821 (7th Cir. 2013). Summary
judgment was appropriate if, on the evidence presented, no
reasonable juror could return a verdict in Sorensen’s favor.
See id.
Case: 14-3067
Document: 39
12
Filed: 06/11/2015
Pages: 32
No. 14 3067
A. Descriptive fair use
The district court found that no reasonable jury could
conclude that WD 40 is liable for infringing Sorensen’s THE
INHIBITOR word mark because WD 40’s use of the word
“inhibitor” in the name of its Long Term Corrosion Inhibitor
is a descriptive fair use of the word. Under 15 U.S.C.
§ 1115(b)(4), a defendant in a trademark infringement action
may invoke the fair use defense by demonstrating that the
alleged infringement “is a use, otherwise than as a mark …
which is descriptive of and used fairly and in good faith only
to describe the goods or services of such party.” This defense
“is based on the principle that no one should be able to ap
propriate descriptive language through trademark registra
tion.” Packman v. Chi. Tribune Co., 267 F.3d 628, 639 (7th Cir.
2001). The hypothetical producer of “Crunchy” brand potato
chips, for example, cannot block its competitors from de
scribing their chips as crunchy. It may, though, be able to
block its competitors from selling chips that are branded
“Crunchy.”
To prevail on a fair use defense, a defendant must show
that: (1) it did not use the mark as a trademark; (2) the use is
descriptive of its goods or services; and (3) it used the mark
fairly and in good faith. Id. The fair use defense is available
even against federally registered trademarks that are incon
testable, such as Sorensen’s THE INHIBITOR mark. Sunmark,
Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055, 1058 (7th
Cir. 1995).
i. Non trademark use
“A word or phrase functions as a trademark when it is
used by a source of a product to identify itself to the public
Case: 14-3067
No. 14 3067
Document: 39
Filed: 06/11/2015
Pages: 32
13
as the source of its product and to create in the public con
sciousness an awareness of the uniqueness of the source and
of its products.” Sands, Taylor & Wood Co. v. Quaker Oats Co.,
978 F.2d 947, 953 (7th Cir. 1992) (internal quotation marks
omitted).
In finding that there was no genuine factual dispute that
WD 40’s use of “inhibitor” was a non trademark use, the dis
trict court reasoned that the word could not function as a
source indicator because the Long Term Corrosion Inhibitor
bottle also displays the famous WD 40 shield, and it is the
shield that serves as the source indicator for customers. That
reasoning is in some tension with our analysis in Sands, Tay
lor & Wood Co. There, the defendant—the producer of Ga
torade—argued that the words “Thirst Aid” could not func
tion as a trademark because they were used in conjunction
with the well known “Gatorade” mark. Id. We disagreed,
noting that, in the related context of determining likelihood
of confusion, “some courts have observed that the conjunc
tion of defendant’s trademark and the allegedly infringed
term ‘may actually increase the misappropriation by linking
defendant’s name to plaintiff’s goodwill.’” Id. at 954 (quoting
Banff, Ltd. v. Federated Dep’t Stores, Inc., 841 F.2d 486, 492 (2d
Cir. 1988)). “Clearly, then,” we held, “the fact that the Ga
torade trademark always appears in Quaker’s ‘Thirst Aid’
advertisements does not preclude a finding that those adver
tisements also use ‘Thirst Aid’ as a trademark.” Id.
Moreover, the district court’s reasoning rested on the
premise that a given product can only contain one indicator
of source. That, we know, is incorrect—WD 40’s Specialist
products contain at least three registered trademarks: the
WD 40 shield, the word mark “Specialist,” and the WD 40
Case: 14-3067
14
Document: 39
Filed: 06/11/2015
Pages: 32
No. 14 3067
crosshair mark. The fact that the WD 40 shield serves as a
source indicator, therefore, does not mean that the word
“inhibitor” does not also serve to indicate the product’s
source.
The district court supported its conclusion in three other
ways that we think are worth mentioning. First, it pointed
out that WD 40 did not use the words “the inhibitor” on its
product, but rather just the word “inhibitor.” This fact, how
ever, goes to whether Sorensen’s trademark was infringed,
not whether WD 40 used the word as a mark. Had WD 40
called its product “Inhibitor” and placed that word in large,
bold letters on its can, we think it probable that a jury would
find that to be trademark use, despite the lack of the word
“the.” Whether that trademark use infringed upon Sorensen’s
mark would be a separate question. Next, the district court,
citing to McCarthy on Trademarks, noted that there are com
peting products on the market that also use the word “inhib
itor” to describe their products. But, as McCarthy makes
clear, the use of a term by other sellers of similar goods is an
indicia of the descriptiveness of the term, not of its being used
in a non trademark manner. See 2 McCarthy on Trademarks
and Unfair Competition § 11:20 (4th ed.). In Sands, Taylor &
Wood Co., we cautioned against conflating these two ele
ments of the fair use defense. 978 F.2d at 954. Descriptive
terms, after all, are protectable as a trademark if they have
developed secondary meaning. See id. Finally, the district
court said that the fact that WD 40 uses the word “inhibitor”
on only one of its Specialist line of products, rather than on
every product in the line, is an indicia that the word is not
being used as a mark. That is partially correct: Sorensen’s ar
gument would be much stronger if “inhibitor” appeared on
all of the products in the Specialist line. However, a mark
Case: 14-3067
No. 14 3067
Document: 39
Filed: 06/11/2015
Pages: 32
15
that is used on only one product within a larger line can
nevertheless be a source indicator, not for the whole line, but
for that product in particular. For example, Gatorade, which
we mentioned above, has a line of “Gatorade Frost” energy
drinks, in five different flavors. The names of two of those
flavors—“Glacier Freeze” and “Glacier Cherry”—are regis
tered as separate trademarks. See GLACIER FREEZE, Regis
tration No. 2,098,324; GLACIER CHERRY, Registration No.
4,401,610.
Nonetheless, we agree with the district court’s ultimate
conclusion that WD 40’s use of the word “inhibitor” is a
non trademark use. Simply put, we believe that no reasona
ble juror looking at a bottle of Long Term Corrosion Inhibi
tor could conclude that the word is used as an indicator of
source. Compared to other features in the bottle’s design, the
word “inhibitor” is much less prominent or noticeable. It is
much smaller than the bright and eye catching WD 40
shield. It is also smaller than the stylized and colored word
“Specialist” and the colorful crosshair mark. Finally, the
word “inhibitor”—which is written in relatively small, white
type—is less attention grabbing than even the word “Corro
sion,” which is larger and colored in orange. Due to the
word’s small size, plain color, and non privileged placement
on the bottle, we find that “inhibitor” is not an “attention
getting symbol,” and does not function as a source indicator.
See Sands, Taylor & Wood Co., 978 F.2d at 954 (quoting 1
McCarthy, supra § 11:17, at 476 (1991 Supp.)).
Sorensen argues in response that WD 40’s communica
tions guide requires that employees and advertisements only
refer to the product at issue as “WD 40 Specialist Long Term
Corrosion Inhibitor;” no shorter name is acceptable. We do
Case: 14-3067
Document: 39
16
Filed: 06/11/2015
Pages: 32
No. 14 3067
not agree with Sorensen that this fact is relevant. He seems
to suggest that, because the word “inhibitor” must be in
cluded whenever WD 40 mentions the product, it must be a
trademark. But though the guideline’s requirement that the
full name be used may suggest that the name as a whole is an
indicator of source, it does not mean that each individual
word in the name serves as a mark. We doubt that Sorensen
would argue that the word “term” is a trademark for WD
40’s product.
ii. Descriptive of the product
A descriptive term ordinarily names a characteristic of a
product or service. H D Mich., Inc. v. Top Quality Serv., Inc.,
496 F.3d 755, 759 (7th Cir. 2007). There can be no dispute
here that the word “inhibitor,” following the word “corro
sion,” describes a characteristic of WD 40’s product, which
contains VCI and is meant to inhibit corrosion for a long pe
riod of time. Multiple competing products made by third
parties use the word “inhibitor” to describe their products,
and WD 40 uses the word multiple times on its bottle in a
manner that is clearly non source identifying.
Sorensen offers little resistance to this aspect of the dis
trict court’s opinion, though he does argue that the word
“inhibitor” is suggestive rather than merely descriptive be
cause it requires “some operation of the imagination” to
make the connection between the term “inhibitor” and a rust
preventative oil product. G. Heileman Brewing Co. v. An
heuser Busch, Inc., 873 F.2d 985, 996 (7th Cir. 1989). We disa
gree, but, regardless, this framing of the issue is incorrect.
The WD 40 product is called a “Corrosion Inhibitor,” not just
an “Inhibitor.” It takes no operation of the imagination to
Case: 14-3067
Document: 39
No. 14 3067
Filed: 06/11/2015
Pages: 32
17
make a connection between the term “Corrosion Inhibitor”
and a product that inhibits rust and other forms of corrosion.
Sorensen points to the case Fortune Dynamic, Inc. v. Victo
ria’s Secret, 618 F.3d 1025, 1035 (9th Cir. 2010), in which the
Ninth Circuit held that a jury—and not a judge on summary
judgment—should decide whether the trademarked term
DELICIOUS was being used in a descriptive sense. “Deli
cious,” of course—like “inhibitor”—seems like an inherently
descriptive word, which would seem to make for an easy
case for the judge on summary judgment. But the key to For
tune Dynamic was that the word “Delicious” was a trade
mark for women’s shoes, and not for a food or beverage. Id.
at 1029. Whether or not a term is descriptive depends not on
ly on the term itself, but also on the product for which it
serves as a source indicator. “Corrosion Inhibitor,” for ex
ample, is clearly descriptive of WD 40’s VCI spray; if it ap
peared on a t shirt, though, our conclusion very well might
be different.
iii. Bad faith
Finally, the proponent of a fair use defense must show
that it used the plaintiff’s mark fairly and in good faith.
Sorensen’s primary argument regarding this element is that
the evidence shows that WD 40 had knowledge of Sorensen,
his products, and his THE INHIBITOR word mark when it
decided upon the name of its Long Term Corrosion Inhibi
tor. Given that WD 40 had this knowledge, Sorensen argues,
a jury could infer that WD 40 included the word “inhibitor”
in a bad faith attempt to siphon off business from Sorensen.
The district court concluded that there was no evidence
that WD 40 had knowledge of Sorensen’s product and word
Case: 14-3067
18
Document: 39
Filed: 06/11/2015
Pages: 32
No. 14 3067
mark, but we disagree. There are multiple documents in the
record which were in WD 40’s possession and which specifi
cally reference Sorensen and his mark. The district court dis
counted the relevance of these documents, finding that there
is no evidence that WD 40’s marketing department, the entity
that decided upon the name “Long Term Corrosion Inhibi
tor,” was provided with these documents or had any aware
ness of Sorensen’s mark. Many people at the company,
though, clearly did have this information, and a jury could
reasonably infer that the marketing department—or at least
someone with final decision making authority—had this
knowledge as well.
WD 40’s mere knowledge of Sorensen’s mark, however, is
insufficient to establish that WD 40 acted in bad faith. Pack
man, 267 F.3d at 642. To survive summary judgment, a plain
tiff must point to something more that suggests subjective
bad faith; Sorensen has not done so here. See id. All Sorensen
can point to is the fact that WD 40 conducted no trademark
search prior to using the word “inhibitor” on its product. A
failure to investigate can, in some circumstances, support an
inference of bad faith. See Fortune Dynamic, 618 F.3d at 1043.
In this case, however, this fact cannot help Sorensen survive
summary judgment. First, if WD 40 believed—correctly, as
we have concluded—that it was not using the word “inhibi
tor” as a trademark, it had no reason to conduct a trademark
search. Second, and more fundamentally, Sorensen’s com
plaint that WD 40 failed to undertake a trademark search is
inconsistent with his theory that WD 40 knew about his
mark, and decided to copy it anyway. Because WD 40 al
ready knew that Sorensen owned a trademark for THE
INHIBITOR, a trademark search would have been useless.
Case: 14-3067
Document: 39
No. 14 3067
Filed: 06/11/2015
Pages: 32
19
Other than pointing to WD 40’s mere knowledge of
Sorensen’s mark, Sorensen has identified no evidence that it
acted in subjective bad faith. Because WD 40’s use of the
word “inhibitor” was also a non trademark, descriptive use,
we therefore agree with the district court’s conclusion that
WD 40 is entitled to summary judgment on its fair use de
fense with regard to Sorensen’s word mark claims.
B. Likelihood of confusion
Having concluded that Sorensen’s claims regarding his
word mark are barred by the descriptive fair use defense, we
are left with his claim that WD 40’s use of a crosshair logo on
its Specialist products infringes upon Sorensen’s common
law crosshair trademark.2 The district court granted sum
mary judgment to WD 40 on these claims, finding that no
reasonable jury could find a likelihood of confusion.
“The ‘keystone’ of trademark infringement is ‘likelihood
of confusion’ as to source, affiliation, connection or sponsor
ship of goods or services among the relevant class of cus
tomers and potential customers.” Sands, Taylor & Wood Co.,
978 F.2d at 957. “To decide whether there is a likelihood of
confusion … a court must ask whether consumers, and spe
cifically consumers who would use either product, would be
likely to attribute them to a single source.” Bd. of Regents of
Univ. of Wis. Sys. v. Phx. Int’l Software, Inc., 653 F.3d 448, 455
(7th Cir. 2011). Possible confusion is not enough; rather, con
fusion must be “probable.” 4 McCarthy, supra § 23:3. Likeli
hood of confusion is a question of fact, usually reserved for
the jury. Bd. of Regents, 653 F.3d at 452.
2
For the purposes of this analysis, we assume without deciding that
Sorensen’s crosshair mark is valid and protectable.
Case: 14-3067
Document: 39
Filed: 06/11/2015
20
Pages: 32
No. 14 3067
This circuit uses the following seven factors to determine
the likelihood of confusion: (1) the similarity between the
marks in appearance and suggestion; (2) the similarity of the
products; (3) the area and manner of consistent use; (4) the
degree of care likely to be exercised by consumers; (5) the
strength of the plaintiff’s mark; (6) any evidence of actual
confusion; and (7) the intent of the defendant to “palm off”
his product as that of another. Id. at 454. No single factor is
dispositive, but we have said that three are especially im
portant: the similarity of the marks, the intent of the defend
ant, and evidence of actual confusion. Ty, Inc. v. Jones Grp.,
Inc., 237 F.3d 891, 898 (7th Cir. 2001). A court may grant
summary judgment even if there is a genuine issue of mate
rial fact as to one or more of the seven factors, as long as no
reasonable jury, looking at the seven factors as a whole,
could conclude that there is a likelihood of confusion. AHP
Subsidiary Holding Co. v. Stuart Hale Co., 1 F.3d 611, 616 (7th
Cir. 1993).
i. Similarity between the marks
“To determine whether two marks are similar, we view
the marks as a whole.” AutoZone, Inc. v. Strick, 543 F.3d 923,
929 (7th Cir. 2008). Important to this case, “[w]e must com
pare the marks in light of what happens in the marketplace
and not merely by looking at the two marks side by side.”
Id. at 930 (internal quotation marks omitted). “The test is not
whether the public would confuse the marks, but whether
the viewer of an accused mark would be likely to associate
the product or service with which it is connected with the
source of products or services with which an earlier mark is
connected.” Id. (quoting James Burrough Ltd. v. Sign of Beefeat
er, Inc., 540 F.2d 266, 275 (7th Cir. 1976)). “[C]omparison of
Case: 14-3067
No. 14 3067
Document: 39
Filed: 06/11/2015
Pages: 32
21
the labels rather than simply the trademarks is appropriate.”
Henri’s Food Prods. Co., Inc. v. Kraft, Inc., 717 F.2d 352, 355 (7th
Cir. 1983) (emphasis added). “The court should therefore
consider whether the customer would believe that the
trademark owner sponsored, endorsed, or was otherwise af
filiated with the product.” AutoZone, 543 F.3d at 930 (citation
and internal quotation marks omitted).
The central dispute regarding this factor is demonstrated
by the differing sets of pictures presented in the parties’
briefs. In Sorensen’s brief, he shows zoomed in side by side
pictures of his crosshair and the burnt orange version of the
WD 40 crosshair. From that perspective, there are some basic
similarities between the marks—they are both orange with a
black border and with various symbols in the quadrants of
each crosshair.
But the similarity of the marks analysis does not focus on
the appearance of the trademarks in isolation; rather, it looks
at the labelling as a whole. The pictures found in WD 40’s
brief and the district court opinion, which show the entire
labels of the products, are therefore much more relevant. We
agree with the district court that consumers looking at the
entirety of the WD 40 labels would not think that the Spe
cialist products come from the same source as Sorensen’s
THE INHIBITOR line of products. The WD 40 bottles are
primarily black and silver, with a large yellow WD 40 shield
and a bright yellow cap. The packaging of Sorensen’s prod
ucts, in contrast, is primarily orange, yellow orange, and
black. Even the appearance of the parties’ crosshairs is quite
different. WD 40’s silver and burnt orange crosshair, with
silver symbols shaded to show depth, creates a different im
pression than Sorensen’s bright orange and black crosshair,
Case: 14-3067
22
Document: 39
Filed: 06/11/2015
Pages: 32
No. 14 3067
which features two dimensional symbols that are silhou
ettes. The relative size of the crosshairs on the labels is dif
ferent, as is their placement—on the few “The Inhibitor”
products which contain Sorensen’s crosshair, it most com
monly appears as the “O” in “Inhibitor,” not as a free
standing mark near the bottom of the bottle, like on the Spe
cialist products. Simply put, the overall commercial impres
sion of the two bottles is quite distinct.
We have also previously stated that the prominent dis
play of a well known trademark—such as WD 40’s shield—
along with an allegedly infringing mark is a strong indica
tion that there is no likelihood of confusion. Packman, 267
F.3d at 645. Sorensen argues that such a presumption should
not exist. First, he contends that this presumption essentially
gives companies with strong marks carte blanche to infringe
on weaker senior user’s marks.3 Trademark law, though, ex
ists primarily to protect consumers, not only the holder of the
trademark. See, e.g., Henri’s Food Prods., 717 F.2d at 365 (“In
deed the underlying purpose of trademark law is to prevent
confusion.”). If the holder of a strong mark such as WD 40
puts its mark on one of its products, consumers will not be
confused—they will correctly surmise the source of the
product. Moreover, there is a remedy for the evil that
Sorensen identifies—a reverse confusion claim, which
Sorensen has not made here. See Custom Vehicles, Inc. v. Forest
River, Inc., 476 F.3d 481, 484 (7th Cir. 2007) (explaining the
concept of reverse confusion, in which “a junior uses its size
and market penetration to overwhelm the senior, but small
3
The “senior user” of a mark is the first entity to use the mark—here,
Sorensen. The “junior user” is a subsequent user of the mark—here, al
legedly, WD 40.
Case: 14-3067
No. 14 3067
Document: 39
Filed: 06/11/2015
Pages: 32
23
er, user,” and which exists to “protect[] the senior user’s con
trol of its mark and the goodwill created by the mark from a
junior user’s employment of the mark, and protects the pub
lic from being deceived into believing that the senior user’s
product emanates from, is connected to, or is sponsored by
the junior user”).
Second, Sorensen argues that, even if consumers will
know that WD 40 is a source of the Specialist products, WD
40’s use of Sorensen’s mark will confuse consumers into
thinking that his company is also a source—in other words,
that the companies worked together to co produce the prod
uct. By fooling consumers in this way, WD 40 could improp
erly benefit from Sorensen’s goodwill, and consumers may
be harmed if they see Sorensen’s crosshair mark as an indica
tor of quality but accidentally purchase a Specialist product
instead. Sorensen points to our case International Kennel Club
of Chicago., Inc. v. Mighty Star, Inc., in which we endorsed the
proposition that the presence of a junior user’s house mark
might not always prevent a consumer from “mistakenly as
suming that [a senior user] is somehow associated with [a
junior user] or has consented to the mark’s use.” 846 F.2d
1079, 1088 (7th Cir. 1988) (quoting Lois Sportswear U.S.A., Inc.
v. Levi Strauss & Co., 799 F.2d 867, 876 (2d Cir. 1986)). In that
case, however, the senior user’s mark was much stronger
than the junior user’s, lending credibility to the theory that
the junior user was trying to feed off of the senior user’s
goodwill.
In contrast, we have considered multiple cases in which
the presence of the junior user’s famous mark has been suffi
cient to dispel confusion. In Packman, the presence of the
Chicago Tribune mark on each page of a newspaper edition
Case: 14-3067
24
Document: 39
Filed: 06/11/2015
Pages: 32
No. 14 3067
which used plaintiff’s “Joy of Six” mark dispelled consumer
confusion. 267 F.3d at 645. And, in G. Heileman Brewing Co.,
we held that the defendant’s use of the strong Anheuser
Busch mark in juxtaposition with a “category descriptor”
mark—“LA,” meaning “low alcohol”—dispelled any likeli
hood of confusion. 873 F.2d at 1000.
The lesson of these cases is that although the use of an
especially strong house mark can greatly lessen the likeli
hood of confusion, it may not wholly eliminate the possibil
ity that consumers will believe a product to be cross
branded. In determining the extent of this possible confu
sion, we must make two comparisons. First, we must com
pare the strength of the junior user’s house mark to the sen
ior user’s mark that is allegedly being appropriated. A con
sumer is more likely to think of cross branding where the
senior mark is well known; after all, if the consumer has
never heard of the senior user, cross branding will not come
to mind. Here the WD 40 mark is very strong, while, as we
detail below, Sorensen’s crosshair mark is quite weak. This
makes it unlikely that a consumer will think that the WD 40
product is cross branded with Sorensen’s line. The second
relevant comparison is between the senior user’s mark and
the image that appears on the junior user’s product. If cross
branding were indeed occurring, the junior user would like
ly use an exact copy of the senior user’s mark, and probably
the name of the senior user’s product as well. Here, though,
as we concluded previously, the WD 40 crosshair is quite
different from Sorensen’s. Moreover, if the product were
cross branded, it would not just contain this crosshair, since
that is a relatively weak source of Sorensen’s product. Ra
ther, it would probably feature Sorensen’s stylized THE
INHIBITOR logo, with either the crosshair or a bull’s eye in
Case: 14-3067
Document: 39
No. 14 3067
Filed: 06/11/2015
Pages: 32
25
the place of the “O.” If cross branding were occurring, the
junior user would seek to make it as clear as possible; it
would not use a significantly different form of a seldom
used logo. Altogether, we think that that no consumer would
think that the Specialist products were co branded by
Sorensen.
ii. Similarity of the products
The relevant inquiry with respect to the similarity of the
products factor is not whether the products are interchange
able, but whether the products are the kind the public might
very well attribute to a single source. Autozone, 543 F.3d at
931. The district court found that this factor supports WD 40,
but we disagree. Two of the products at issue—Sorensen’s
V80 VCI blend and WD 40’s Long Term Corrosion Inhibi
tor—are functionally identical. So, at the very least, this fac
tor supports Sorensen with regard to whether WD 40 in
fringes his trademark by using its crosshair logo on that
product in particular.
Looking at the parties’ product lines as a whole, the dis
trict court concluded that the products in Sorensen’s line and
the Specialist products are not the type that the public might
attribute to a single source. Sorensen’s line of products in
cludes oil, grease, poly bags, wiping clothes, plugs, paper,
and pro chips, all of which contain VCI. The Specialist prod
ucts, with one exception, are all sprays that come in aerosol
cans; only one contains VCI. We think, however, that con
sumers might very well expect Sorensen, as the producer of
rust preventive products, to expand his product line into the
types of sprays included in the Specialist line. See id. (“The
rights of an owner of a registered trademark extend to any
goods or services that, in the minds of consumers, might be
Case: 14-3067
26
Document: 39
Filed: 06/11/2015
Pages: 32
No. 14 3067
put out by a single producer.”). The fact that Sorensen’s cur
rent products all contain VCI is minimally relevant; WD 40’s
line demonstrates that the same producer sometimes manu
factures both products that do and do not contain VCI. It al
so seems eminently possible that WD 40 might expand its
Specialist line into the products produced by Sorensen. WD
40 already makes a rust preventing spray containing VCI. It
would not be surprising for the company to start producing
other VCI containing rust preventive materials. Again, the
contents of Sorensen’s product line demonstrate that compa
nies sometimes produce both VCI spray and other VCI
containing materials.
WD 40 points to a case, Barbecue Marx, Inc. v. 551 Ogden,
Inc., 235 F.3d 1041, 1045 (7th Cir. 2000), in which we said
that, in considering this factor in the context of restaurants,
courts should consider the restaurants’ “ambiances and
themes.” In other words, we said that two restaurants are
not necessarily similar products just because they are both
restaurants. In the context of this case, WD 40 suggests that
its Specialist products are different than Sorensen’s because
they have a different “ambiance”—the “WD 40 ambiance”—
due to the presence of the WD 40 shield. It further suggests
that its products have different “themes”—essentially, col
ors—than Sorensen’s.
This argument misses the mark entirely. It is obvious that
two restaurants can be so dissimilar as to be essentially dif
ferent products. A Michelin starred French restaurant is
wholly different from a Chinese take out restaurant.4 Con
4
The restaurants in Barbeque Marx were admittedly not as dissimilar as
those in our hypothetical. Both were barbeque restaurants. The plaintiff’s
restaurant, however, was small, decorated in a 1950s style, and focused
Case: 14-3067
Document: 39
Filed: 06/11/2015
No. 14 3067
Pages: 32
27
sumers, moreover, would not expect the owner of one of
these restaurants to branch into the other’s part of the mar
ket. A restaurant’s ambiance and themes are part of its prod
uct, because visiting a restaurant is a service experience. The
products at issue in our case, in contrast, do not have themes
or ambiance—they only have branding. The colors and de
signs found on the outside of an aerosol can are not the
product. It is circular to look at products’ branding—in other
words, their trademarks—to consider, for trademark in
fringement purposes, whether two products are similar.
Products that come in spray bottles can of course be very dif
ferent—window cleaner is not the same as spray paint. But
that’s because of what is inside the bottle, not what is printed
on the outside. We therefore find that this factor favors
Sorensen.
iii. Area and manner of concurrent use
In considering this factor, courts look at “whether there is
a relationship in use, promotion, distribution or sales be
tween the goods or services of the parties.” CAE, Inc. v. Clean
Air Eng’g, Inc., 267 F.3d 660, 681 (7th Cir. 2001). We also look
to whether the parties use the same channels of commerce,
target the same general audience, or use similar marketing
procedures. Id. at 681–82.
This factor generally provides little support for Sorensen.
He presents no concrete evidence that WD 40’s products and
on blues music. The defendant’s, in contrast, “style[d] itself as an ‘irrev
erent’ restaurant, using … sexually charged slogans,” and had a very
different interior feel than plaintiff’s restaurant. But, as we note above,
even these relatively minor differences had to do with the parties’ prod
ucts, not merely with their branding.
Case: 14-3067
Document: 39
Filed: 06/11/2015
28
Pages: 32
No. 14 3067
his own products have ever been sold next to each other, that
they target the same consumers, that they have ever been
advertised through the same channels, or that the products
were both shown at the same trade show in the same year.
Sorensen does, however, provide some evidence from
which a jury could make limited inferences in his favor. It is
undisputed that Sorensen and WD 40 both sell products at
Menards, though the products are currently sold in different
sections and Sorensen’s VCI oils and sprays—the products
most similar to WD 40’s—are not sold at Menards. So, while
a consumer may encounter both parties’ products while in
the same store, he will not see them both simultaneously.
Though Sorensen’s products are not sold at big box or mass
stores other than Menards, a jury could infer that both his
and WD 40’s Specialist products are sold at smaller hard
ware stores such as Ace. And, though there is no evidence
that WD 40 specifically markets to Sorensen’s target audi
ence—hunters and fishermen—that is somewhat beside the
point, as WD 40 effectively targets all consumers. Sorensen
also specifically targets members of the military. WD 40 ar
gues that it does not, but a jury could infer that it does
through its sale of its products to AFIS and DeCA, which in
turn supply military commissaries.
Even making all inferences in Sorensen’s favor, as we
must at this stage, this factor only weakly supports Sorensen.
iv. Degree of care exercised by consumers
Generally, courts considering this factor assume that
“[t]he more widely accessible and inexpensive the products
and services, the more likely that consumers will exercise a
lesser degree of care and discrimination in their purchases.”
Case: 14-3067
No. 14 3067
Document: 39
Filed: 06/11/2015
Pages: 32
29
Id. at 683. When customers use a lesser degree of care, this
supports a finding that there is a likelihood of confusion.
Both Sorensen’s and WD 40’s products are quite inexpen
sive (under $12), and could even be characterized as impulse
purchases. The district court held that this factor tended to
support Sorensen, and we agree. WD 40 argues that con
sumers searching for its famous shield—which appears on
its Specialist products—take much greater care in purchas
ing to ensure that they are indeed choosing the correct
product. That may be true, but it is irrelevant to this case, in
which Sorensen alleges that WD 40 is infringing his trade
mark. The consumers relevant to our likelihood of confusion
inquiry are not those who go to the store seeking to buy
WD 40 products. Rather we are interested in those custom
ers who seek to buy Sorensen’s products (or are undecided
about what to buy), and are potentially misled into buying a
Specialist product. That fact that WD 40’s brand may be
strong does not influence how careful these customers are
likely to be. WD 40 points to a number of our cases in which
we have stated that the existence of a well known mark can
lead consumers to exercise a higher degree of care. See, e.g.,
Barbecue Marx, 235 F.3d at 1045. In each of those cases, how
ever, the famous mark belonged to the plaintiff; the strength
of the plaintiff’s mark meant that consumers searching for
the plaintiff’s good or service were likely to take more care to
ensure that they chose correctly. Here, though, the situation
is reversed, and the relevant consumers are unlikely to exer
cise a great deal of care. This factor, therefore, weighs in
Sorensen’s favor.
Case: 14-3067
Document: 39
Filed: 06/11/2015
30
Pages: 32
No. 14 3067
v. Strength of Sorensen’s mark
“The ‘strength’ of a trademark refers to the mark’s dis
tinctiveness, meaning its propensity to identify the products
or services sold as emanating from a particular source.”
CAE, 267 F.3d at 684. “The stronger the mark, the more likely
it is that encroachment on it will produce confusion.” Auto
Zone, 543 F.3d at 933. A mark’s strength ordinarily corre
sponds to its economic and marketing strength. Id.
Sorensen has presented little evidence demonstrating the
strength of his crosshair mark. Though there is evidence that
Sorensen has included the crosshair mark in advertising
since the late 1990s, he has offered no consumer surveys or
testimony regarding the public’s awareness of the mark, or
sales data showing that products bearing the mark are so
widely sold that a jury could infer that many consumers are
aware of the mark. Most damaging to Sorensen’s argument
regarding this factor is his inconsistent use of the crosshair
mark. Inconsistent use makes a symbol less helpful to con
sumers as a source indicator, and therefore a weaker mark.
Sorensen’s crosshair has been used since 1997, but inconsist
ently—sometimes the crosshair has symbols in each quad
rant, sometimes the quadrants are empty, and many times
there is no crosshair at all, but rather a bull’s eye. This factor
therefore squarely supports WD 40.
vi. Evidence of actual confusion
Sorensen admits that he does not have any evidence of
actual confusion. As he correctly points out, however, evi
dence of actual confusion is not required to prove that a like
lihood of confusion exists. CAE, 267 F.3d at 686.
Case: 14-3067
Document: 39
Filed: 06/11/2015
No. 14 3067
Pages: 32
31
vii. Bad faith intent
This factor focuses on evidence that the defendant is at
tempting to pass off its product as having come from the
plaintiff. Packman, 267 F.3d at 644. Mere knowledge of some
one else’s mark is insufficient to show intent to pass off.
Barbeque Marx, 235 F.3d at 1046. We above concluded that
there is enough evidence for a jury to infer that WD 40 knew
about Sorensen’s products and his THE INHIBITOR word
mark; we come to the same conclusion regarding his cross
hair mark. Just as with the word mark, however, we find that
Sorensen has presented no evidence that WD 40 attempted
to pass off its products as Sorensen’s. There is no evidence
that ECHO, the firm that first designed the WD 40 crosshair,
had any knowledge of Sorensen’s mark. It seems highly un
likely, therefore, that, after ECHO came up with the design
on its own, WD 40 chose it because it hoped to siphon off
sales from Sorensen. Furthermore, the fact that the WD 40
shield appears on the Specialist products tends to suggest a
lack of bad faith—why include this well known mark if WD
40 was attempting to confuse consumers into thinking that
the product was not produced by WD 40, but rather by
Sorensen.
Though a reasonable jury could find that WD 40 knew
about Sorensen’s crosshair mark when it adopted its own
crosshair design, it could not reasonably conclude that it
copied the mark in bad faith. This factor therefore supports
WD 40.
*
*
*
We agree with the district court that summary judgment
was appropriate in this case. Although, as noted above, a
Case: 14-3067
Document: 39
Filed: 06/11/2015
32
Pages: 32
No. 14 3067
number of the likelihood of confusion factors provide sup
port for Sorensen, that is not enough to create a material dis
pute of fact that must be presented to a jury. AHP, 1 F.3d at
616. Rather, the relevant question is whether, looking at the
seven factors collectively, a reasonable jury could find in
Sorensen’s favor. The three most important factors—
similarity of the marks, bad faith intent, and evidence of ac
tual confusion—all point decisively in favor of WD 40. Par
ticularly important is the dissimilarity of the marks; because
we conclude that no consumer would think that the marks
are similar, we cannot imagine any consumer being con
fused. Also central to our conclusion is the clear weakness of
Sorensen’s marks, which appear only rarely and inconsist
ently on his products. Weighed together, the seven factors
show no disputed issue of material fact that must be pre
served for the jury.
III. Conclusion
We AFFIRM the judgment of the district court.
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?