WISH ATLANTA LLC v. CONTEXTLOGIC INC

Filing 89

ORDER - FINDINGS OF FACT AND CONCLUSIONS OF LAW - Ordered by US DISTRICT JUDGE CLAY D LAND on 12/2/2015. (esl)

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF GEORGIA
COLUMBUS DIVISION
WISH ATLANTA, LLC,

*

Plaintiff,

*

vs.

*

CONTEXTLOGIC, INC.,

*

Defendant.

*

CASE NO. 4:14-CV-51 (CDL)

O R D E R
Wish Atlanta, LLC sued Contextlogic, Inc. for federal and
common law trademark infringement and related state law claims.
The Court conducted a bench trial on these claims.

Based on the

following findings of fact and conclusions of law, the Court
finds

that

Wish

Atlanta

has

not

carried

its

burden

of

establishing any of its claims and that Contextlogic is entitled
to judgment in its favor.
FINDINGS OF FACT
1.
Wish Atlanta is a Georgia corporation with its principal
place of business in Atlanta, Georgia.

Compl. ¶ 1, ECF No. 1.

2.
Wish Atlanta is an upscale boutique located in a restored
historic Carnegie library in Atlanta, Georgia.

It specializes

in high-end “street wear” clothing and accessories.

Trial Tr.

vol. 1, 14:10-14; 17:7-19; 24:4-25:9, ECF No. 78.
3.
“Street
influenced

wear”

by

is

hip-hop

a

broad

culture.

term
Id.

that
at

includes

59:20-24.

apparel
For

Wish

Atlanta’s targeted market—the upscale, image-conscious consumer
with

substantial

disposable

income

and

an

oversized

fashion

budget—that street wear includes $200 jeans, $650 Nike sneakers,
and $300 ball caps.
end,

exclusive

See id. at 24:8-25:16 (describing the high-

nature

of

the

“street

wear”

sold

at

Wish

Atlanta).
4.
Wish Atlanta sells hard to find, limited-edition items from
manufacturers such as Nike® that are sold at only a handful of
stores in the United States.

Id. at 24:4-22.
5.

Wish Atlanta is highly selective in its offerings and does
not offer goods that could be purchased at a mall.

Id. at

24:18-22; 25:4-16.
6.
The

target

males in Atlanta.

market

for

Wish

Atlanta

Id. at 27:1-7, 112:4-5.

2

is

African-American

7.
Wish

Atlanta

uses

the

following

design

mark

(the

“Wish

Atlanta Design Mark”) in connection with its retail store:

Combined

Decl.

of

Use

and

Incontestability 4-6, Ex. P-19, ECF No. 76-1.
8.
Wish

Atlanta

has

used

the

Wish

Atlanta

Design

Mark

connection with a website, www.wishatl.com, since 2010.

in

Trial

Tr. vol. 1, 21:25–22:9; Wish Atlanta Website Printout, Ex. D-77,
ECF No. 77-1.

That website offers some of the goods that are

offered through Wish Atlanta’s retail store.

Trial Tr. vol. 1,

74:21–75:10.
9.
Not all of the goods shown on the Wish Atlanta website can
be purchased through the website.
the brick-and-mortar store.

Some are only available in

Id. at 74:21–75:5.

Wish Atlanta

uses the website as a marketing tool to drive business to its
brick-and-mortar store.

Id. at 78:2-3.
10.

84% of Wish Atlanta’s sales in 2014 were sales made through
its brick-and-mortar store.
Profit

and

Loss

Sheets,

Exs.

Id. at 77:16-78:2; Wish Atlanta
D-41,

3

D-42,

D-43,

D-44,

D-52.

Sales through the www.wishatl.com website have never constituted
more than 16% of sales in any year since the website went live.
11.
Wish Atlanta had an opportunity to purchase the wish.com
domain name at the time it purchased the www.wishatl.com domain
name, but did not do so.

Trial Tr. vol. 1, 47:7-12.
12.

Wish Atlanta introduced no evidence of the amount of sales
made outside of the Atlanta metropolitan area.
13.
Wish Atlanta holds two federal registrations for the Wish
Atlanta Design Mark.

It holds U.S. Reg. No. 3,783,165 for use

of the design mark in connection with a variety of apparel, and
for use of the mark in connection with retail store services
featuring clothing and accessories, footwear, handbags, eyewear,
and other items.

Trademark Record Ex. P-3.

It also holds U.S.

Reg. No. 4,242,361 for use of the design mark in connection with
online

retail

store

services

featuring

clothing,

clothing

accessories, fashion accessories, footwear, handbags, and other
items.

Trademark Record, Ex. P-2.
14.

In its description of the Wish Atlanta Design Mark, Wish
Atlanta notes as a component of its mark that “the ‘i’ is offset

4

to the right and slightly over the left side of the ‘s’ to form
the image of a person.”

Id. at 2.
15.

Wish
Design

Atlanta

Mark

as

views

being

this

so

component

important

that

of
it

the

Wish

Atlanta

has

obtained

two

trademark registrations for this “reclining man” component of
its design mark:

Trademark Record, Ex. D-76.
16.
Wish Atlanta also features the “reclining man” component of
the

Wish

Atlanta

Design

Mark

on

its

website.

Wish

Atlanta

Website Printout, Ex. D-77.
17.
Wish Atlanta depicts its Wish Atlanta Design Mark in black.
Trial Tr. vol. 2, 13:8–14:6, ECF No. 79.
18.
Wish Atlanta alleges rights in the word mark “WISH” apart
from the design depicted above.

Trial Tr. vol. 1, 40:23–41:3.
19.

In support of this claim, Wish Atlanta presented the expert
testimony of Dr. Thomas J. Maronick.

Dr. Maronick conducted a

survey of African-American males over the age of eighteen in the
5

Atlanta

market

Empirical

that

Analysis

were

of

familiar

Perceptions

with
of

“street

“Wish”

wear.”

Among

“Street Wear” (“Maronick Study”), Ex. P-18, at 4.

Buyers

An
of

Of the 165

participants, the majority, 69.1%, either did not associate the
word “wish” with any particular store or retailer, or did not
know whether they associated the word with a particular store or
retailer.

Id.

at 8.

Only six of the 46

participants

who

associated “wish” with a particular store or retailer (3.6% of
the total 165 participants) identified Wish Atlanta as the store
they associated with the word “wish.”

Id.; Trial Tr. vol. 1,

194:20-195:1.
20.
Wish Atlanta produced no evidence as to any association
between the word mark “wish” and Wish Atlanta outside of the
target market surveyed by Dr. Maronick.
21.
The only documentary evidence that Wish Atlanta uses the
word “wish” without incorporating that word into its design mark
is one screen from its website that shows the word “wish” as
well as the Wish Atlanta Design Mark and the “reclining man”
mark on the same web page.

Wish Atlanta Website Printout, Ex.

D-77.

6

22.
Wish Atlanta places a modest balance sheet value on its
trademark.

Wish Atlanta Balance Sheet as of Mar. 31, 2015, Ex.

D-64.
23.
Wish Atlanta’s records show that it has spent a total of
$214 advertising its website since that website went live.

Wish

Atlanta Advertising Expenditures by Year, Ex. D-84.
24.
Wish Atlanta produced evidence at trial that it has been
mentioned in the media.

Trial Tr. vol. 1, 17:20–18:22.
25.

Representatives of Wish Atlanta testified that they were
aware of two other entities that had offered or were offering
clothing under a name that included the word “wish.”
vol. 1, 63:17–65:1; 105:9-16; 114:3-12.

Trial Tr.

Wish Atlanta has made

no effort to stop either of these entities from continuing to
use the word “wish” in their names.

Id. at 65:4-6; 114:9-12.

26.
In addition, several entities throughout the United States
sell

clothing

“Wish,”
Boutique

and

including
Beacon

accessories
entities

Hill

“About

over

websites

located

in

Wish,”

Ex.

using

the

mark

Massachusetts,

Wish

D-18;

Wish

Boutique

Beacon Hill Website Photo, D-19; Wish Boutique Beacon Hill Yelp

7

Page, D-20, North Carolina, Wish Boutique Facebook Page, Ex. D33; Wish Boutique “Welcome to Wish,” Ex D-34, South Carolina,
Wish Boutique Yelp Page, Ex. D-21; Wish Boutique “About us,” Ex.
D-36; Wish FivePoints Facebook Page, Ex. D-37; Wish Boutique
Products, Ex. D-38, New Jersey, Wish Boutique NJ Facebook Page,
Ex. D-22; Wish “In Wish’s Words,” Ex. D-28, Colorado, “About
Wish Boutique,” Ex. D-23; Wish Boutique Facebook Page, Ex. D-24;
“Welcome,”

Ex.

D-25,

Texas,

Wish

California, Ai Wish, Ex. D-27,

Yelp

Page,

Ex.

D-26,

New York, Wish Inc. Facebook

Page, Ex. D-32, Wisconsin, Wish Boutique Wisconsin, Ex. D-39,
and Louisiana, Wish Boutique French Quarter Facebook Page, Ex.
D-29; Wish Yahoo Page, Ex. D-30; Wish Yelp Page, Ex. D-31.
27.
Several of these websites include a design component in
connection with their use of the mark “Wish,” including:

Ex. D-28

Ex. D-36

Ex. D-27

Ex. D-33

8

Ex. D-32

Ex. D-24

Ex. D-26

Ex. D-39

Ex. D-18

28.
Dr. Maronick found that survey participants who associated
the word “wish” with particular stores or websites associated
the word “wish” with a number of different entities, including
entities that Dr. Maronick found in a simple internet search he
conducted, and fictional entities that he made up for his study.
Trial Tr. vol. 1, 195:5-21; Maronick Study, Ex. P-18, at 8-9.
29.
Defendant Contextlogic is a Delaware corporation with its
principal

place

of

business

in

San

Francisco,

California.

Trademark Registration, Ex. D-3.
30.
Contextlogic was founded in 2010 by Peter Szulczewski, a
former Google employee, and Danny Zhang.

Trial Tr. vol. 1,

209:8-9; 323:23–324:1; Trial Tr. vol. 2, 6:7-14.
31.
Contextlogic

was

founded

to

use

inference

technology

to

anticipate what goods users of a mobile application (“app”) or

9

an internet website might be interested in purchasing.

Trial

Tr. vol. 1, 246:25–248:20; 286:2-19.
32.
Contextlogic

began

www.wishwall.me.

by

operating

Initially

that

a

website

website

located

at

users

to

allowed

compile a “wish list” of goods that he or she could share with
others.

Id. at 287:11-21; 288:19–290:3; Wish Website Archive,

Ex. D-11, at 1-4.
33.
That website operated under the mark “Wish.”

Trial Tr.

vol. 1, 321:7-18; Wish Website Archive 1, Ex. D-11, at 1.
34.
In

October

2012,

www.wish.com.

It

has

Contextlogic
since

acquired

operated

the

its

www.wish.com address (the “Wish Website”).

domain

website

name

at

the

Trial Tr. vol. 1,

290:8-10.
35.
It spent $500,000 to purchase the www.wish.com domain name.
Id. at 290:11-14.
36.
Contextlogic has obtained two registered trademarks, Reg.
Nos.

4,311,924

and

4,340,974,

for

the

mark

WISH

for

use

in

connection with the wish list and gift registry services that it
offers

through

its

app

and

its

10

website.

Id.

at

223:13-15;

Trademark Registration, Ex. D-3; Trademark Registration, Ex. D9.
37.
In June 2012, Contextlogic began offering an app that could
be downloaded onto a user’s cell phone under the mark WISH (the
“Wish App”).

Trial Tr. vol. 1, 292:21–293:1.

free to download.

The Wish App is

Id.
38.

Contextlogic’s Wish app and Wish website also allow users
to purchase goods from featured vendors.

Id. at 290:25–292:10.

The Wish App and Wish website function as a virtual shopping
mall, allowing users to purchase home décor, clothing, hunting
bows, kitchen sinks, and other goods.

Id. at 207:11-25; 208:14-

25.
39.
The Wish App and Wish website identify the merchant of the
product the user is considering purchasing.

Id. at 307:11-14.

40.
Contextlogic does not offer products that are branded WISH.
Id. at 212:13-19.
41.
Contextlogic

does

not

typically

take

ownership

products being offered through its website and app.

of

the

Rather, it

serves as a facilitator, receiving a commission for facilitating

11

the transaction between the Wish App or Wish Website user and
the merchant.

Id. at 208:1-10; 209:12-18.

that Contextlogic presently earns income.

This is the only way
Id. at 225:9–228:19.

42.
The Wish App is identified by this logo:

Id. at 296:19–297:5; Video Ex. D-81.
43.
The

stylized

“W”

is

meant

to

suggest

a

shopping

cart.

Trial Tr. vol. 1, 297:6-14.
44.
The

Wish

App

also

uses

the

mark

WISH

with

the

phrase

“Shopping Made Fun” in the following design:

Id. at 298:13-21; Video Ex. D81.

12

45.
Contextlogic depicts its WISH mark in blue, or in white
against a blue background.

Trial Tr. vol. 1, 297:16-18; Video,

Ex. D-81.
46.
Over 155 million users have downloaded the Wish App since
it was first offered.

Trial Tr. vol. 1, 293:17-20.
47.

The Wish App became more popular than the Wish Website soon
after the Wish App was first offered in 2012.
more

of

the

transactions

facilitated

by

conducted through the Wish App rather than
Website.

Id.

at

202:1-3.

Contextlogic

Currently 90% or
Contextlogic

are

through the Wish
has

not

promoted

consumer use of the Wish Website since it launched the Wish App.
Id. at 216:1-10.
48.
Only about 35% of sales made through the Wish App are sales
made to users located in the United States.

Id. at 221:5-7;

295:3-7.
49.
The Wish App and the Wish Website are targeted primarily at
women.

Women place 66-67% of the transactions in the Wish App

and the Wish Website.

Id. at 295:3-7.

13

50.
As of October 2015, Contextlogic offered millions of items
through its Wish App, offered by tens of thousands of different
vendors.

Id. at 207:20-25.
51.

Contextlogic offers a wide variety of products through its
Wish App.

Currently, the majority of those products are items

other than clothing and accessories.

Id. at 202:17-22.

52.
Most of the products offered through the Wish App do not
carry a brand name.

Id. at 212:13–213:3.
53.

Contextlogic’s focus is on the value-conscious consumer.
Id.

The average price of a transaction made through the Wish

App is less than twenty-five dollars.

Id. at 248:16-17.

54.
When a search for “street wear” was conducted on the Wish
App

using

the

search

functions

contained

in

the

app,

only

thirty-five of the millions of items available through the Wish
App were identified as “street wear.”

Id. at 293:21–294:14.

55.
Both the Wish App and the Wish Website offer users the
ability to contact Contextlogic through email or through the app

14

directly with questions or complaints about orders.

Id.

at

231:14-21; 313:12–314:8; 316:2-12; 319:5-10.
56.
As of October 2015, Contextlogic was responding to most of
these communications within two hours after their receipt.

Id.

at 233:12-16; Trial Tr. vol. 2, 9:12–10:5.
57.
Contextlogic does not provide a toll free number to its
users.

Trial Tr. vol. 1, 223:10-12.

It experimented with a

toll free number for several months but found that customers
preferred

communicating

through

the

app

or

email.

Id.

at

230:24–232:2; Trial Tr. vol. 2, 8:11–9:4.
58.
Contextlogic spends significant amounts of money on mobile
install ads and on Facebook advertising.

Trial Tr. vol. 1,

320:3-7.
59.
To date, Contextlogic has not made a profit on the Wish App
or Wish Website.

Id. at 217:4-5.
60.

In

November

2013,

Wish

Atlanta

noticed

that

it

began

receiving occasional telephone calls from customers who did not
appear to be calling for Wish Atlanta.

15

Id. at 148:5-12.

61.
Wish Atlanta typically receives a total of twenty-five to
fifty telephone calls each day.

Id. at 148:1-4.
62.

At trial, Wish Atlanta asserted that it had received dozens
of

calls

trying

to

152:3-8.

from

disgruntled

reach

Contextlogic

Contextlogic.

Id.

at

consumers
122:17-21;

that

were

150:11-12;

Wish Atlanta employees were instructed to keep call

logs of every misdirected call.

Id. at 97:21-24; 102:6-16.

But

those logs identify only fifty misdirected phone calls received
by Wish Atlanta between February 2014 and March 2015.
Phone

Calls,

Ex.

P-5;

Wish

Complaint

Log,

Ex.

Wish App
P-6;

Wish

Complaint Log, Ex. P-7.
63.
According to the call logs, the calls from Contextlogic
customers reaching Wish Atlanta became less frequent after the
2013-2014 holiday season.
identify

only

five

For example, Wish Atlanta’s call logs

inadvertent

calls

in

March

2015.

Wish

Complaint Log, Ex. P-7.
64.
There is no evidence of any misdirected calls reaching Wish
Atlanta after March 2015.

16

65.
At trial, Wish Atlanta introduced the testimony of one of
the callers who inadvertently reached Wish Atlanta.
testified

that

she

had

Contextlogic’s Wish App.

placed

several

The witness

orders

through

Trial Tr. vol. 1, 257:19–258:1.

She

wanted to contact Contextlogic by telephone concerning an order,
so

she

conducted

telephone

an

number.

internet
Id.

at

search

258:13-21.

to

find
In

Contextlogic’s

conducting

that

internet search, she found the phone number for Wish Atlanta and
called that number.

Id.

She did not look at Wish Atlanta’s

website before calling its telephone number.

Id. at 261:15-21.

She was not aware of Wish Atlanta or its trademark before she
placed her call.

Id. at 264:8–265:5.
66.

Wish Atlanta also introduced a chain of emails that began
with an email from a Wish App user to Contextlogic.

After some

exchange between the user and Contextlogic’s help desk, the user
added as a courtesy-copy recipient two email addresses ending in
wishatl.com.

Customer Emails, Ex. D-82, at 1.

There was no

evidence as to why the user did so.
67.
Aside from this email chain, Contextlogic has not received
any

communications

meant

for

Wish

Atlanta

or

copying

Wish

Atlanta, nor has it received any communications asking whether

17

there is an affiliation between Wish Atlanta and Contextlogic.
Trial Tr. vol. 1, 320:11-22; Trial Tr. vol. 2, 21:22–22:23.
68.
The evidence does not support a finding that the callers
were calling about merchandise that was substantially similar to
the

merchandise

sold

by

Wish

Atlanta.

The

callers

simply

located Wish Atlanta’s telephone number, likely through a sloppy
internet
number

search,
was

for

and

mistakenly

Contextlogic.

concluded
No

that

evidence

the
was

telephone
introduced

indicating that these callers intended to purchase merchandise
from Wish Atlanta and instead mistakenly purchased merchandise
through Contextlogic’s Wish App.

The evidence suggests only

that consumers knew that they had purchased merchandise through
the Wish App, but they mistakenly reached Wish Atlanta in their
inquiries about their orders.
69.
Prompted by the telephone calls mentioned above, counsel
for Wish Atlanta sent a cease and desist letter to Contextlogic
on February 10, 2014.

Letter from Jerry L. Watts, to Peter

Szulczewski (Feb. 10, 2014), Ex. P-1.

Wish Atlanta demanded,

among other things, that Contextlogic cease and desist from any
use of the mark WISH, and that it turn over to Wish Atlanta the
domain name www.wish.com.

Id. at 2.

18

70.
Contextlogic did not agree to these demands.

Trial Tr.

vol. 1, 230:12-23.
71.
Contextlogic was not aware of Wish Atlanta or the Wish
Atlanta

Design

letter.

Id.

Mark
at

before

320:8-10.

receiving

this

cease

and

desist

Contextlogic researched the WISH

trademark before initially adopting its own WISH mark but did
not find Wish Atlanta or its trademark registrations.

Id. at

323:7-22.
72.
There is no evidence that any item offered by Wish Atlanta
has ever been available through the Wish App or the website
www.wish.com.

Id. at 140:6-9; 294:20–295:2.
73.

There is no evidence that anyone familiar with Wish Atlanta
has

ever

downloaded

the

Wish

App

or

done

business

with

Contextlogic because that user believed he or she was dealing
with Wish Atlanta.

Id. at 143:11–144:10.
74.

Wish Atlanta cannot identify any sales that it has lost as
a result of Contextlogic’s use of its WISH mark.
21.

19

Id. at 87:17-

75.
Wish Atlanta cannot identify any sales that Contextlogic
made as a result of trading on the goodwill that Wish Atlanta
may have in the Wish Atlanta Design Mark or the word mark WISH.
Id. at 87:22–88:2.
76.
To the contrary, both Wish Atlanta’s brick-and-mortar store
and internet store sales have increased since Contextlogic began
offering its Wish App.

Wish Atlanta Gross Income by Year, Ex.

D-83.
CONCLUSIONS OF LAW
I.

Trademark Infringement and Unfair Competition
1.
Wish Atlanta brings claims for infringement of a registered

mark, common law trademark infringement under Section 43(a) of
the Lanham Act, and state law claims for unfair competition and
deceptive trade practices.

To prevail on any of these claims,

Wish Atlanta must prove that Contextlogic created a likelihood
of confusion among potential buyers by adopting and using its
own WISH trademark.

See

Caliber Auto.

Liquidators, Inc. v.

Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 934 (11th Cir.
2010)

(setting

forth

the

elements

of

infringement

of

a

registered trademark); Tana v. Dantanna’s LLC, 611 F.3d 767, 773
(11th Cir. 2010) (stating the elements of common law trademark

20

infringement under Section 43(a) of the Lanham Act); Univ. of
Ga. Athletic Ass’n v. Laite, 756 F.2d 1535, 1539 n.11 (11th Cir.
1985)

(explaining

that

the

elements

for

Georgia’s

unfair

competition and Deceptive Trade Practices Act are the same as
those under the Lanham Act).
2.
The evidence is undisputed that Contextlogic has not acted
with the authorization of Wish Atlanta.

Thus, the fundamental

question is whether Contextlogic’s use of its WISH trademark is
likely to cause “confusion in the mind[s] of an appreciable
number of reasonably prudent buyers.”

John H. Harland Co., v.

Clarke Checks, Inc., 711 F.2d 966, 979 n. 22 (11th Cir. 1983)
(alteration in original) (quoting J.T. McCarthy, Trademarks &
Unfair Competition § 23:27, at 87-88 (1973)).
3.
The Eleventh Circuit has identified the following factors
for courts to consider in evaluating whether a likelihood of
confusion exists:
In evaluating whether there is a likelihood of
confusion between two marks, our court applies a
multifactor test, evaluating the following seven
factors:
(1) strength of the mark alleged to have
been infringed; (2) similarity of the infringed and
infringing marks; (3) similarity between the goods and
services offered under the two marks; (4) similarity
of the actual sales methods used by the holders of the
marks, such as their sales outlets and customer base;
(5) similarity of advertising methods; (6) intent of
the
alleged
infringer
to
misappropriate
the

21

proprietor’s good will; and (7) the existence and
extent of actual confusion in the consuming public.
Tana, 611 F.3d at 774-775; accord Conagra, Inc. v. Singleton,
743 F.2d 1508, 1514 (11th Cir. 1984).
4.
Application of these factors to the present case clearly
demonstrates

that

Wish

Atlanta

has

failed

to

establish

Contextlogic’s use of its own WISH trademarks

that

has created a

likelihood of confusion with Wish Atlanta’s marks.

As a result,

Wish Atlanta’s trademark and unfair competition claims fail.
A.

Strength of the Mark
5.

The first element considered in a likelihood of confusion
analysis

is

plaintiff.

the

strength

of

the

mark

being

asserted

by

To determine the strength of the mark, the Court

looks to the following sliding scale of distinctiveness.
types

of

the

marks

(1) generic,
(4) arbitrary.

are

listed

(2) merely

in

ascending

descriptive,

Tana, 611 F.3d at 774.

order

of

The

strength:

(3) suggestive,

and

Suggestive and arbitrary

marks are deemed “inherently distinctive.”

Id. (quoting Two

Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 783 (1992)).
Generic

marks

protection.

are
Id.

deemed

incapable

Descriptive

22

marks,

of

receiving

though

not

trademark
inherently

distinctive,

may

become

sufficiently

distinctive

to

trademark protection by acquiring “secondary meaning.”

enjoy

Id.

6.
Wish Atlanta asserts both registered trademark rights in
its Wish Atlanta Design Mark

, as well as common law rights

in the word WISH, regardless of how that word might be depicted,
for

use

clothing

in
and

connection

with

accessories.

retail
Wish

store

Atlanta

services
had

the

featuring
burden

of

proving that it has common law trademark rights in the word mark
WISH, and the geographic scope of those common law rights.

Id.

at 780 (considering the geographic remoteness of the mark’s use
to

determine

Atlanta’s

the

burden

likelihood
differs

of

between

confusion).
its

claims

Because
based

on

Wish
the

registered Wish Atlanta Design Mark and its common law claim to
the word mark WISH, the Court will assess the strength of the
marks separately.
7.
The Court concludes that the word mark WISH, when used in
connection with the sale of clothing and apparel, is extremely
weak and is “merely descriptive” at best.
8.
Third party use of a mark is important in considering the
strength of the mark.

The more third parties that use the mark

for the same or related goods or services, the weaker the mark.
23

See Sun Banks of Fla., Inc. v. Sun Fed. Sav. & Loan Ass’n, 651
F.2d 311, 316 (5th Cir. 1981) (finding “the extensive thirdparty use of the word ‘sun’ impressive evidence that there would
be no likelihood of confusion”); Armstrong Cork Co. v. World
Carpets, Inc., 597 F.2d 496, 505 (5th Cir. 1979) (finding that
numerous third-party uses of the word ‘world’ militates against
the finding of likelihood of confusion).
9.
The

evidence

establishes

that

a

number

of

different

entities located across the United States use the mark WISH in
connection with clothing boutiques.

Therefore, the word “wish”

standing alone is merely descriptive.

See Giant Mart Corp. v.

Giant Disc. Foods, Inc., 247 Ga. 775, 777, 279 S.E.2d 683, 686
(1981)

(concluding

that

a

trial

court

erred

in

affording

protection to the trade name “Giant” because the word “is a
descriptive term commonly used in the grocery business” that
“may not be exclusively appropriated as part of a trade name.”).
10.
Wish Atlanta’s survey expert confirmed the extremely weak
nature of the WISH word mark.

In his survey, only 3.65% of Wish

Atlanta’s target market—African-American males over the age of
eighteen residing in the Atlanta metropolitan area and familiar
with “street wear”—associated the word “WISH” with Wish Atlanta.

24

11.
“[W]here a plaintiff holds only common-law trademark rights
in

a

mark . . . it

protection

accorded

is

well-established

his

mark

is

that

coextensive

the

scope

of

only

with

the

territory throughout which it is known and from which it has
drawn its trade.”

Tana, 611 F.3d at 780.

In Tana, for example,

the court concluded that the plaintiff’s rights in its common
law mark were weak outside of Los Angeles, where the plaintiff
operated a restaurant under the contested trademark.

Id. at

776.
12.
The evidence establishes that to the extent Wish Atlanta
has any rights in the word mark WISH, those rights are confined
to the sale of upscale street wear in the Atlanta metropolitan
area.
retail

Over 80% of Wish Atlanta’s sales take place through its
store

located

in

Atlanta.

Although

Wish

Atlanta

maintains a website, sales through the website are modest, and
there

is

no

evidence

that

any

of

those

sales

were

customers outside of the Atlanta metropolitan area.

made

to

Moreover,

Wish Atlanta CFO Pam Sutter testified that the website is used
as a marketing tool to drive traffic to Wish Atlanta’s brickand-mortar store.

25

13.
Thus, any trademark rights that Wish Atlanta holds in the
word mark WISH are extremely weak and are confined to the sale
of upscale street wear in the Atlanta metropolitan area.
14.
Regarding the registered design mark for Wish Atlanta, the
word component of the mark is extremely weak for all of the
reasons described above.

In addition, Wish Atlanta cannot claim

broad protection for the design component of the mark because
there are numerous registrations and common law uses of design
marks used in connection with the sale of clothing and apparel
that incorporate the word “wish” into their designs:

Ex. D-28

Ex. D-26

Ex. D-24

Ex. D-27

Ex. D-77

Ex. D-32

Ex. D-36

Ex. D-39

Ex. D-33
26

15.
In light of these many other designs, consumers must pay
attention to the specific design component of the mark, rather
than

assume

that

any

design

incorporating

emanates from a particular source.

the

word

“wish”

Thus, to the extent that

Wish Atlanta asserts trademark rights based on its design mark,
those rights are extremely weak outside of the very specific
design that its registered trademark protects.
16.
In summary, both the WISH word mark and the Wish Atlanta
Design Mark are extremely weak and merit only narrow protection.
Because the marks are weak, reasonably prudent buyers would not
assume that goods came from or were associated with Wish Atlanta
when those consumers encountered goods or services offered under
another entity’s WISH mark.
B.

Similarity of the Infringed and Infringing Marks
17.

In

considering

the

similarity

of

the

marks,

“the

court

compares the marks and considers the overall impressions that
the marks create, including the sound, appearance, and manner in
which they are used.”

Frehling Enters., Inc. v. Int’l Select

Grp., Inc., 192 F.3d 1330, 1337 (11th Cir. 1999).

The evidence

presented at trial failed to establish that the marks in this
dispute are substantially similar.

27

18.
The
black.

Wish
The

Atlanta
mark

has

Design
a

Mark

very

is

typically

specific

form.

rendered
Wish

in

Atlanta

carefully defined the design to the United States Patent and
Trademark Office as “the letters ‘w,’ ‘i,’ ‘s,’ and ‘h,’ where
the dot from the ‘i’ is offset to the right and slightly over
the

left

side

of

the

‘s’

to

form

Trademark Record, Ex. P-2, at 2.

the

image

of

a

person.”

Wish Atlanta places so much

importance on this offset dot over the “s” component of its mark
that

it

obtained

component alone.

a

registered

trademark

Trademark Record, Ex. D-76.

for

that

design

It also uses that

design component standing alone on its website.
19.
By contrast, Contextlogic’s use of a “wish” related mark is
almost always used in connection with its own design, rendered
in blue, or in white against a blue background:

Video, Ex. D-81.
20.
Contextlogic’s

design

does

person,” as Wish Atlanta’s does.

not

“form

the

image

of

a

Rather, the focus is on the

“w,” with the handle on the “w” meant to conjure up images of a
shopping cart.

Contextlogic placed so much emphasis on this

28

stylized “w” that it uses that stylized letter alone in the icon
promoting the Wish App.
21.
Additionally,

as

discussed

above,

the

Court

notes

that

there are several entities using WISH design marks for goods and
services similar to those offered by Wish Atlanta that have
design

elements

similar

to

the

design

elements

of

the

Wish

Atlanta Design Mark in their own designs.
22.
In summary, Contextlogic’s mark is not confusingly similar
to the Wish Atlanta Design Mark.

The different presentations of

the mark WISH by the parties reduce any likelihood of confusion.
Therefore, this element of the likelihood of confusion analysis
tips in Contextlogic’s favor.
C.

Similarity Between
Under the Two Marks

the

Goods

and

Services

Offered

23.
Wish Atlanta uses its marks in connection with the sale of
high-end “street wear” clothing and accessories.

Wish Atlanta’s

owner, Lauren Amos, testified that Wish Atlanta sells limitededition items that are sold at only a few stores in the nation.
The items sold by Wish Atlanta cannot be found at a typical
mall.

They

include

extremely

baseball caps and designer shoes.

29

expensive

and

hard-to-find

24.
Contextlogic, by contrast, facilitates the sale of goods
offered

by

various

vendors.

The

Wish

App

allows

users

purchase everything from fishing equipment to electronics.
of

the

goods

sold

clothing or apparel.

through

Contextlogic’s

Wish

App

are

to

Most
not

Moreover, the great majority of the goods

sold through the Wish App are not branded and are inexpensive.
25.
There is no evidence that Contextlogic has offered a single
item of clothing through the Wish Website or the Wish App that
was also available from Wish Atlanta.

In fact, the evidence

suggests that the high-end goods that Wish Atlanta is known for
could

not

Website.

be

purchased

on

Contextlogic’s

Wish

App

or

Wish

Thus, although both parties sell clothing under their

respective WISH marks, Contextlogic does not sell the same goods
that Wish Atlanta sells.
26.
The parties also offer different services.
functions as a traditional retail store.

Wish Atlanta

Contextlogic is a

facilitator of sales between merchants and customers.

In this

sense, Contextlogic’s Wish App functions as a virtual shopping
mall, allowing users to see and purchase products from a wide
variety of merchants, all of whom are identified on the Wish
App.

30

27.
In addition, the Wish App allows users to compile wish
lists of product that can be shared with other users of the Wish
App.

This aspect of Contextlogic’s app was so important to

Contextlogic that it obtained two trademark registrations for
the word mark WISH for use in connection with these services.
Wish Atlanta offers no comparable service.
28.
The

Wish

merchants.

App

Trial

also
Tr.

allows
vol.

1,

users

to

rate

210:25–211:14;

products

and

306:23–307:10.

Wish Atlanta offers no similar services.
29.
The different services offered by the parties (wish lists
and product ratings versus traditional retail services), and the
differences in the products offered under the marks, minimizes
any

likelihood

of

confusion

between

Contextlogic.
30.
Thus, this factor favors Contextlogic.

31

Wish

Atlanta

and

D.

Similarity of the Actual Sales Methods Used by the
Parties
31.

The Court next looks to the similarity between the sales
methods and customers of Wish Atlanta and Contextlogic.
32.
As alluded to previously, the parties use different methods
to sell their goods and services.
sales

are

through

Less

Atlanta.

made

than

a

20%

website, www.wishatl.com.
used

as

a

device

to

Over 80% of Wish Atlanta’s

brick-and-mortar
of

its

sales

store

are

made

located
through

in
its

Moreover, that website is primarily

promote

Wish

Atlanta’s

brick-and-mortar

store.
33.
Wish

Atlanta

has

no

app

that

may

be

loaded

onto

a

prospective consumer’s cell phone.
34.
Wish Atlanta functions as a traditional retailer, buying
clothing and accessories that it then sells to customers through
its brick-and-mortar store and website.
35.
Contextlogic, by contrast, has no brick-and-mortar store.
The vast majority of its sales are made through the Wish App.

32

Only

approximately

10%

of

its

sales

are

made

through

its

website, www.wish.com.
36.
Contextlogic does not own the products offered through its
Wish

App.

Rather,

it

is

like

an

electronic

shopping

mall,

offering users the ability to peruse the stores of thousands of
different vendors.

In the process, Contextlogic identifies the

merchant who is selling the good.
37.
Contextlogic’s target market is primarily women, whereas
Wish Atlanta’s is men.

Moreover, only 35% of the sales brokered

through the Wish App are made to users located in the United
States.
38.
In

summary,

this

factor

weighs

strongly

against

any

likelihood of confusion being created by Contextlogic’s use of
its WISH mark in connection with its services.
E.

Similarity of Advertising Methods
39.

Wish Atlanta and Contextlogic have very different methods
of advertising.
on

stickers,

media.

Wish Atlanta has spent nominal amounts of money

buttons,

and

promoting

its

products

on

social

Wish Atlanta primarily promotes itself through media

33

attention

and

celebrity

appearances

at

the

brick-and-mortar

store.
40.
Contextlogic,
resources

in

advertises

by

contrast,

advertising

primarily

and

through

has

invested

promoting
the

its

internet,

Wish
on

significant
App.

It

websites

like

Facebook®.
41.
These differences in advertising and promotional efforts
indicate little likelihood of confusion.
F.

Intent of Contextlogic
42.

Wish Atlanta failed to establish that Contextlogic had any
intention to trade on any goodwill that Wish Atlanta may have in
its marks when Contextlogic adopted and began use of its WISH
mark.

Contextlogic was not even aware of Wish Atlanta or Wish

Atlanta’s marks before it received a cease and desist letter
from Wish Atlanta’s counsel.
43.
There is no evidence that Contextlogic intended to trade on
any

goodwill

that

Wish

Atlanta

may

receiving the cease and desist letter.

34

have

in

its

mark

after

44.
Contextlogic had constructive knowledge of the Wish Atlanta
Design Mark, the mark in which Wish Atlanta has registrations,
by virtue of the registration of that mark.
of

constructive

necessarily

notice

intended

is

to

not

evidence

confuse.”

But “the existence
that

4

J.

a

Thomas

later

user

McCarthy,

McCarthy on Trademarks and Unfair Competition, § 23:109 (4th ed.
1996).
45.
In sum, the intent factor weighs in favor of Contextlogic.
G.

Evidence of Actual Confusion
46.

At trial, Wish Atlanta emphasized that its primary concern
was

the

possibility

that

people

already

familiar

with

Wish

Atlanta may encounter Contextlogic’s website or Wish App and be
confused as to whether they were dealing with Wish Atlanta.
Trial Tr. vol. 1, 50:13–51:21.
credible
Atlanta

evidence
has

ever

But Wish Atlanta introduced no

indicating
intended

that

to

anyone

purchase

a

familiar

with

Wish

product

from

Wish

Atlanta but mistakenly purchased a product from Contextlogic’s
Wish App instead.

See id. 142:20–144:10.
47.

Wish Atlanta alleges actual confusion based on telephone
calls it received that were meant for Contextlogic.

35

48.
Wish

Atlanta

had

the

burden

of

establishing

that

this

evidence constitutes evidence of “actual confusion” rather than
inattentiveness on the part of the caller.
49.
Wish Atlanta attempted to introduce evidence of confusion
through customer call logs.
evidence

that

the

The Court considers the logs as

identified

calls

were

identity of the party making those calls.

received,

and

the

The Court does not

consider the logs as evidence of the reasons for the calls.

The

alleged

are

reasons

excluded

as

for

hearsay

the

calls

because

recorded
they

on

reflect

these
the

logs

subjective

assessment of Wish Atlanta employees, not the statements of the
callers.

Thus, the logs are inadmissible as records of what the

callers allegedly stated.
50.
Wish
employees

Atlanta
who

also

received

presented
many

of

testimony
the

of

two

former

misdirected

calls.

Contextlogic objected to this evidence at trial as hearsay.

The

Court accepts this challenged evidence under Federal Rule of
Evidence 803(3) as evidence of receipt of telephone calls from
callers seeking an entity other than Wish Atlanta, but declines
to consider it for the substance of what the callers allegedly
said.

See Angel Flight of Ga., Inc. v. Angel Flight Am., Inc.,

36

522 F.3d 1200, 1206 (11th Cir. 2008) (noting that the district
court’s consideration of the substance of what the out-of-court
“confused” donors said was a classic violation of Federal Rule
of Evidence 801(c)).
51.
In addition, the Court discounts this evidence because of
its imprecision.

Wish Atlanta employees testified that they

were instructed to log every misdirected call.

Although the

employees testified to dozens of allegedly misdirected calls,
the logs reflected only fifty misdirected calls.
52.
One of the callers identified in Wish Atlanta’s call logs
testified that she had not heard of Wish Atlanta at the time
that she bought goods through the Wish App.

When she decided

that she wanted to cancel her order, she conducted an internet
search for a telephone number for Contextlogic.

She found the

telephone number for Wish Atlanta in that search and called Wish
Atlanta by mistake.
53.
This evidence does not constitute “actual confusion” for a
likelihood of confusion analysis.

Mere inadvertence on the part

of the person making a phone call does not constitute actual
confusion.

See.,

e.g.,

Duluth

News-Tribune,

a

Div.

of

Nw.

Publ’ns, Inc. v. Mesabi Publ’g Co., 84 F.3d 1093, 1098 (8th Cir.

37

1996) (finding that “vague evidence of misdirected phone calls
and mail . . . show[s] inattentiveness on the part of the caller
or sender rather than actual confusion.”).
communications
search

prompted

constitute

by

actual

a

sloppy

or

confusion.

Nor do misdirected
incomplete

internet

Therma-Scan,

Inc.

v.

Thermoscan, Inc., 295 F.3d 623, 636 (6th Cir. 2002) (discounting
misdirected email communications as evidence that the consumers
were

“inattentive

confused”).

or

careless,

as

opposed

to

being

actually

The evidence simply shows that the confused callers

were likely “inattentive or careless when attempting to find the
[phone number] for [Contextlogic], rather than confused about
the source of the [products they had purchased].”

Id.

54.
In this case, the witness’s telephone call to Wish Atlanta
was prompted by a sloppy internet search, exacerbated by the
fact that the witness had never heard of Wish Atlanta.

The

witness had not confused the two parties.
55.
The Court also notes that the bulk of allegedly misdirected
telephone
During

calls

that

took

time,

place

in

Contextlogic

November
was

in

developing its customer service network.
9:25–10:25.

and
the

December
early

Trial

2013.

stages

Tr.

of

vol. 2,

The misdirected calls dwindled after Contextlogic

developed a more robust customer service network.

38

See

Wish

Atlanta Complaint Log, Ex. P-7.

In light of these facts, the

Court concludes that the misdirected calls were a result of
inattentiveness or carelessness on the part of the callers, not
trademark infringement.
56.
In addition, the type of alleged confusion is relevant in
determining

whether

“actual

confusion”

exists.

“Short

lived

confusion or confusion of individuals casually acquainted with a
business is worthy of little weight while confusion of actual
customers

of

a

business

is

worthy

of

substantial

Caliber Auto. Liquidators, Inc., 605 F.3d at 936.
establishes

that

any

individuals

unfamiliar

alleged
with

confusion
Wish

was

Atlanta,

weight.”

The evidence

confusion
and

was

among
quickly

dispelled by providing the caller with the email address for
Contextlogic.
57.
To the extent that the evidence produced by Wish Atlanta
could be construed as evidence of actual confusion, rather than
evidence of inattentiveness on the part of a mistaken consumer
calling the wrong entity, Wish Atlanta’s evidence of alleged
actual confusion is de minimis.

Wish Atlanta has engaged in

numerous transactions since Contextlogic began operations, and
has

received

thousands

of

telephone

first began use of its WISH trademark.

39

calls

since

Contextlogic

During that same period,

Contextlogic has assisted its users in millions of transactions
through

the

Wish

App

and

the

website

www.wish.com.

To

the

extent there is evidence of actual confusion, it is de minimis.
See Duluth News-Tribune, 84 F.3d at 1098 (finding evidence of
occasional misdirected telephone calls and mail was de minimis).
58.
The

Court

emphasizes

that

Wish

Atlanta

presented

no

evidence that anyone familiar with or seeking to contact Wish
Atlanta contacted Contextlogic instead.
59.
Finally, the Court acknowledges that Wish Atlanta presented
Dr. Maronick as an expert witness testifying as to the alleged
confusion caused by Contextlogic’s adoption and use of its own
WISH

mark.

The

Court

discounts

relating to likelihood of confusion.

Dr.

Maronick’s

opinions

Dr. Maronick used neither

of the survey methods identified in Union Carbide Corp. v. EverReady, Inc., 531 F.2d 366, 385-88 (7th Cir. 1976), superseded by
statute on other grounds as stated in Scandia Down Corp. v.
Euroquilt,

Inc.,

772

F.2d

1423,

1429

(7th

Cir.

1985),

or

SquirtCo. v. Seven-Up Co., 628 F.2d 1086, 1089 n.4 (8th Cir.
1980).

Trial Tr. vol. 1, 184:8–185:16; 189:13-19.

He could not

identify any published opinion endorsing his novel methodology.
Id. at 185:17-25.

Moreover, while Dr. Maronick purports to have

found that survey participants identified a number of sources of

40

products offered under the word “wish”—some of which were nonexistent entities made up by him—there is no evidence that any
participant who associated the word “wish” with Wish Atlanta
also associated the word with Contextlogic, or vice versa.
at 198:14–199:14.

Id.

As a result, Dr. Maronick’s opinion does not

establish a likelihood of confusion between Wish Atlanta and
Contextlogic.
60.
For all of these reasons, the actual confusion prong in the
likelihood of confusion analysis is neutral.
H.

Summary of Factors
61.

Based on all of the factors discussed above,
concludes

that

Wish

Atlanta

has

not

carried

its

the Court
burden

of

establishing that Contextlogic created a likelihood of confusion
among reasonable consumers when it adopted and used its own WISH
mark.

As a result, judgment shall be entered in Contextlogic’s

favor on Counts One, Two, Five through Eight, Ten and Eleven of
the Amended Complaint.
II.

Service Mark and Trade Name Dilution
62.
In

addition

competition

to

claims,

its
Wish

trademark
Atlanta

infringement

also

sues

and

unfair

Contextlogic

service mark and trade name dilution under Georgia law.

41

for
See

O.C.G.A. § 10-1-451(b).
Atlanta

need

not

Unlike the claims discussed above, Wish

prove

that

Contextlogic

has

created

a

likelihood of confusion to be entitled to relief under O.C.G.A.
§ 10-1-451(b).

Georgia law provides that the Court may enjoin

“use by another of the same or any similar trademark, trade
name,

label,

or

form

of

advertisement

if

there

exists

a

likelihood of injury to business reputation or of dilution of
the

distinctive

name . . . .”

quality

of

the

trademark

[or]

trade

there

is

O.C.G.A. § 10-1-451(b).
63.

The

evidence

has

failed

to

establish

that

a

“distinctive quality” in the word mark WISH used in connection
with the sale of clothing and accessories sufficient to warrant
protection

under

§ 10-1-451(b).

As

a

result,

Wish

Atlanta

cannot base its trademark dilution claim on that word mark. See
Giant Mart Corp., 247 Ga. at 777, 279 S.E.2d at 686 (holding
that “the word ‘Giant’ is a descriptive term commonly used in
the grocery business” that “may not be exclusively appropriated
as part of a trade name”).
64.
Similarly, any trade name claim based on Wish Atlanta’s
trade name WISH ATLANTA fails because the only component that
name has in common with Contextlogic is the use of the word

42

“wish.”

As discussed above, “wish” is a word commonly used in

connection with the sale of clothing and apparel.
65.
To the extent that Wish Atlanta seeks to base a trademark
dilution claim on its design mark, that claim fails because
Contextlogic has not appropriated the distinctive quality of the
mark, which is the design component of that mark.

Contextlogic

uses a different design than Wish Atlanta, and its accent is on
the

“w”

component

of

its

mark

rather

than

the

“i”

and

“s”

components.
66.
Wish Atlanta also appears to seek relief based on harm to
its business reputation.
generalized
media.

negative

Specifically, Wish Atlanta points to

comments

about

Contextlogic

in

social

But Wish Atlanta presented no evidence that any of these

comments had a negative impact on Wish Atlanta.

Moreover, Wish

Atlanta’s President admitted at trial that “if you go on a lot
of

stores

Trial

Tr.

[social
vol.

1,

media

sites]

see

There

73:13-15.

you

is

negative
simply

comments.”

insufficient

evidence that any of Contextlogic’s actions have harmed Wish
Atlanta’s business reputation.

Wish Atlanta has not proved its

claim under O.C.G.A. § 10-1-451(b).

43

CONCLUSION
Based on the foregoing findings of fact and conclusions of
law, judgment shall be entered in favor of Contextlogic as to
all of the remaining claims contained in Wish Atlanta’s Amended
Complaint.

Contextlogic shall recover its costs.

IT IS SO ORDERED, this 2nd day of December, 2015.
S/Clay D. Land
CLAY D. LAND
CHIEF U.S. DISTRICT COURT JUDGE
MIDDLE DISTRICT OF GEORGIA

44