ZW USA, Inc. v. PWD Systems, LLC
MEMORANDUM AND ORDER: IT IS HEREBY ORDERED that plaintiffs motion for partial summary judgment [Doc. # 74 ] is denied. IT IS FURTHER ORDERED that defendants motion for summary judgment [Doc. # 77 ] is granted as to plaintiffs claims. IT IS FURTHER ORDERED that the defendants motion for summary judgment is denied as to its counterclaim for trademark invalidity regarding ONEPUL, and is moot as to its other counterclaims. Signed by District Judge Carol E. Jackson on 9/22/16. (JAB)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
ZW USA, INC.
PWD SYSTEMS, LLC,
Case No. 4:14-CV-1500-CEJ
MEMORANDUM AND ORDER
This matter is before the Court on plaintiff’s motion for partial summary
judgment and defendant’s motion for summary judgment, pursuant to Fed. R. Civ.
P. 56(a). Responses have been filed, and the issues are fully briefed.
Plaintiff ZW USA, Inc. and defendant PWD Systems, LLC are competitors in
the dog waste disposal industry. Both companies market dog waste disposal bags,
which they sell to a variety of customers: individual dog owners, wholesalers,
contractors, dog waste removal services, veterinary clinics, apartment complexes,
campgrounds. They also sell dog waste disposal bag stations, which are dispensers
from which dog owners may obtain the bags.
It is undisputed that dog owners benefit from retrieving the disposal bags by
using only one hand and with minimal distraction or effort from the primary task of
controlling a leashed dog. The purchasers of these bags also benefit from reducing
the incidence of mistakenly dispensed and unused bags, as may happen if a hurried
user reaches for a bag and accidentally takes more than one from the dispenser.
Hence, the parties agree, a market exists for dog waste disposal dispensers and
bags that are designed to permit retrieval of only one bag at a time with one hand.
Among the basic types of dog waste disposal bags are “roll bags” and “wicket
bags,” which are also called “header bags.” The primary difference between header
bags and roll bags is the dispensing mechanism they use. Roll bags are packaged
in a single roll, with perforations to facilitate tearing a single bag from the roll as it
is dispensed from the dispensing station. Evidence has been submitted that some
roll bags and dispensers are designed to allow the user to tear an individual bag
from the roll with a “single pull” of the hand (i.e., in “one pull”). [Doc. #79-7 at 2–
14, 17–21]1 Other designs of roll bags and dispensers allegedly do not include this
“one-pull” feature. See id.
Wicket bags are hung by the top from prongs or hooks inside or on a
dispenser. Like some versions of roll bags, all wicket bags appear to be designed to
allow a user to retrieve a single bag with one pull of the hand. The dispute in this
case centers on plaintiff and defendant’s marketing and sale of competing wicket
bags that both employ this “one pull” or “single pull” feature.
Doing business as Zero Waste USA, plaintiff markets and sells wicket bags on
its company-branded website and on several other websites. According to plaintiff,
the company began to market and sell wicket bags under the name “ONEPUL” by
September 9, 2010, and under the name “SINGLPUL” by October 30, 2010. [Doc.
#85 at 6]
Plaintiff has marketed wicket bags using several variations of those
Plaintiff takes issue with defendant’s evidentiary submission of third-party websites, suggesting they
are unauthenticated and have not been admitted. But evidence need only be “admissible” at trial to
be considered at summary judgment. Crews v. Monarch Fire Prot. Dist., 771 F.3d 1085, 1092 (8th
Cir. 2014); see Fed. R. Civ. P. 52(c)(2) (“A party may object that the material cited to support or
dispute a fact cannot be presented in a form that would be admissible in evidence.”). Plaintiff has not
challenged the authenticity of the websites or the accuracy of the statements regarding the companies
and products advertised. Indeed, those websites would be admissible at trial through the proper
authenticating witnesses to show that third-parties advertise dog waste disposal bags with “one pull”
and “single pull” features. Nor has plaintiff disputed that third-parties in fact sell such products.
Because the admissibility and accuracy of the websites and the underlying products advertised is not
genuinely in dispute, the Court will consider them here.
terms: SINGLPUL® BAGS, SINGLPul® Bags, SINGLPul® Header Bags, ONEPul® bags,
ONEPul® Bags, ONEPul® Bags, and ONEPul® DOG WASTE BAGS. [Doc. #79-5 at 2–
6]. Plaintiff has also marketed its dog waste disposal bag dispensing system as the
ONEPul® Bag Dispenser.
It also claims to have “originated the ONE-PULL
STRAP technology” that “restricts dispensing” dog waste disposal bags “to ONLY
one-bag-at-a-time!” [Doc. #79-4 at 2–5] (emphasis in original).
On October 22, 2013, plaintiff applied for federal trademark protection inthe
terms ONEPUL and SINGLPUL.
[Doc. #84-4 at 7–10]
Neither party submitted
copies of plaintiff’s applications to register the trademarks. On August 5, 2014, the
United States Patent and Trademark Office (USPTO) granted plaintiff’s applications
to register ONEPUL (#4,581,881) and SINGLPUL (#4,581,879). Id. Plaintiff filed
this suit shortly after the USPTO issued the registrations.
The registrations cover the use of such marks “without claim to any
particular font, style, size, or color” for “fixed dispensers of metal for pet waste
bags” and for “plastic bags for disposing of pet waste.” Id. The USPTO accepted
that both marks were first used in commerce on October 30, 2010.
undisputed that the USPTO granted plaintiff’s applications without first requiring
plaintiff to submit proof that ONEPUL or SINGLPUL had “become distinctive of”
plaintiff’s “goods in commerce,” pursuant to 15 U.S.C. § 1052(f).
The defendant was incorporated in February 23, 2012, and it does business
as BagSpot. In May 2012, defendant began purchasing wicket bags from a thirdparty supplier.2 By 2013, it began selling wicket bags and roll bags on its website
The parties submitted evidence regarding the status of defendant’s supplier and other suppliers,
specifically with regard to plaintiff’s alleged prior or existing relationship with those third-parties.
None of that evidence is material to the dispositive issues here, and the Court therefore will not
address the disputes over it. See Fed. R. Civ. P. 56(a).
and by phone. Defendant is not licensed or authorized to use plaintiff’s trademarks.
On its website and in its advertisements defendant refers to the wicket bags
it markets and sells as “one pull” or “one-pull” bags.
It has used various
formulations of those words to refer to the wicket bags: BagSpot® One-Pull Bags,
BagSpot One-Pull Bags, BagSpot One Pull Bags, One Pull Bags, ONE-PULL BAGS,
One-Pull Bags, One-Pull bags, One- Pull bags, One- Pull style, One-pull style bags,
One-Pull style Bags, and Single pull bags. [Docs. ##79-1 at 2; 82-2 at 5–6, 25–
44] (all terms as in original).
These bags are advertised as fitting “most
header/wicket/one-pull style dispensers.” [Doc. #82-2 at 6]
None of those terms appear on defendant’s bags themselves, which are
instead branded with defendant’s phone number, website, and trademarked
BagSpot® label. Id. Though plaintiff contends the subject terms are all “identical,”
plaintiff has not argued—and no evidence was submitted—that defendant has ever
marketed its bags using plaintiff’s trademarked terms ONEPUL or SINGLPUL, or any
variant in capitalization thereof.
Nor has plaintiff alleged or introduced evidence
that defendant has ever employed any form of the unhyphenated, single-word
terms “onepull” or “singlepull.”
trademark ONEPUL and the defendant’s use of “One Pull” in advertisements and on
its website. In response to defendant’s motion for summary judgment, plaintiff did
not submit any relevant data, survey evidence, expert witness depositions or
affidavits, or a deposition, declaration, or affidavit from anyone not affiliated with
the parties.3 Plaintiff states that it has spent more than $1.5 million for advertising
Plaintiff submitted only excerpts of depositions despite the Court’s order that the parties must
“submit complete transcripts of all deposition testimony that is cited in support of or in opposition to a
the ONEPUL and SINGLPUL trademarks since it first began using them. Defendant
contests that figure, because it appears to represent plaintiff’s entire advertising
expenditures over several years, rather than advertising unique to the subject
trademarks. In any event, the Court assumes here that plaintiff’s statement as to
the amount it has spent on advertising the trademarks is accurate. Plaintiff also
introduces evidence of its sales and revenues from ONEPUL and SINGLPUL bags.
As other evidence of its claims, plaintiff points to an excerpt from Ruth
Springer explained that on defendant’s website, several
references to “One Pull Bags” are highlighted hyperlinks that direct website patrons
to the portion of the webpage where consumers may purchase those bags. [Doc.
#92-3 at 25]
Those hyperlinks to “One Pull Bags” on defendant’s website are
capitalized so that customers will “notice” them, according to Springer. Id.
Additionally, defendant has purchased the keyword “Zerowaste” from Google
Adwords, which means that a user’s Google search for plaintiff’s company will also
identify defendant’s website as a potentially relevant link. Defendant has also paid
Google to display advertisements for its products among the banners that appear in
the search results when users query for plaintiff’s company. It is undisputed here
that such practices are common in online advertising.4
Plaintiff further alleges that defendant has “taken multiple customers directly
from” plaintiff, including the cities of Brentwood, Olivette, and Washington,
motion.” [Doc. #29] The Court further ordered: “Excerpted portions of a witness’s deposition
testimony will not be considered by the Court absent a showing of good cause for not submitting the
entire transcript.” Id. Plaintiff has not shown (or even attempted to show) good cause for not
submitting the full depositions. Nevertheless, the Court will consider the deposition excerpts because
doing so does not alter the outcome and does not prejudice the defendant.
See, e.g., Select Comfort Corp. v. Baxter, No. CV 12-2899 (DWF/SER), 2016 WL 158516, at *3–5 (D.
Minn. Jan. 13, 2016) (collecting sources, describing in detail Google’s system of keyword searches and
pay-per-click, “organic search,” and “display” advertising, and granting in part and denying in part
summary judgment on trademark infringement claims).
Missouri, and a homeowners association in Virginia.
Viewed in the light most
favorable to plaintiff, the evidence shows that those entities were previously
customers of plaintiff until they began purchasing defendant’s products.
plaintiff argues, proves those customers’ decisions to change bag suppliers were
“caused by” or “because of” defendant’s use of the “One Pull” terms. But plaintiff
has introduced no evidence why those customers switched suppliers in the
competitive market for dog waste disposal products. There is no evidence in the
record from those customers relevant to their decisions to switch bag suppliers, nor
advertisements, its website, or called its phone number.
Finally, plaintiff admits it has no evidence of actual consumer confusion
between its ONEPUL trademark and defendant’s marketing of “One Pull” bags.
Instead plaintiff argues that “consumers do not recognized the term ‘one-pull’ as
describing wicket bags.” It offers no evidence to support this, only conjecture and
speculation from its own employees and its counsel.
Plaintiff asserts the following claims: (1) infringement of a federally
registered trademark under the Lanham Act, 15 U.S.C. § 1114; (2) Missouri
common law trademark infringement; (3) Missouri common law unfair competition;
and (4) violation of Missouri’s anti-dilution statute, Mo. Rev. Stat. § 417.061.
seeks an injunction forbidding defendant from infringing on its marks, an
accounting of defendant’s profits from the infringement and unfair competition,
treble damages, and attorney’s fees.
Defendant asserts counterclaims for cancellation of plaintiff’s trademarks and
for declaratory relief, based on two alternative grounds: (1) the trademarks were
improvidently registered, because they are not distinctive or (2) the trademarks
were fraudulently registered, where plaintiff claimed a date of first use of October
30, 2010, for both marks but it did not begin using ONEPUL or SINGLPUL in
commerce until at least 2012.
Defendant also seeks a declaration of non-
infringement based on the absence of evidence to support the elements of plaintiff’s
claims or, alternatively, because plaintiff’s claims are barred by the defenses of
acquiescence, estoppel, laches, unclean hands, or waiver.
II. LEGAL STANDARD
Rule 56(a) of the Federal Rules of Civil Procedure provides that summary
judgment shall be entered if the moving party shows “that there is no genuine
dispute as to any material fact and the movant is entitled to a judgment as a
matter of law.” In ruling on a motion for summary judgment the court is required
to view the facts in the light most favorable to the non-moving party and must give
that party the benefit of all reasonable inferences to be drawn from the underlying
facts. AgriStor Leasing v. Farrow, 826 F.2d 732, 734 (8th Cir. 1987). The moving
party bears the burden of showing both the absence of a genuine issue of material
fact and its entitlement to judgment as a matter of law. Anderson v. Liberty Lobby,
Inc., 477 U.S. 242 (1986); Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475
U.S. 574, 586–87 (1986).
Once the moving party has met its burden, the non-
moving party may not rest on the allegations of his pleadings but must set forth
specific facts, by affidavit or other evidence, showing that a genuine issue of
material fact exists. United of Omaha Life Ins. Co. v. Honea, 458 F.3d 788, 791
(8th Cir. 2006) (quoting Fed. R. Civ. P. 56(e)).
Rule 56 “mandates the entry of
summary judgment, after adequate time for discovery and upon motion, against a
party who fails to make a showing sufficient to establish the existence of an
element essential to that party’s case, and on which that party will bear the burden
of proof at trial.” Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
Defendant moves for summary judgment on all of plaintiff’s claims related to
the SINGLPUL trademark. It contends that plaintiff has produced no evidence from
which a reasonable juror could conclude that defendant has infringed upon, diluted,
or unfairly competed with plaintiff with respect to that trademark. Indeed, plaintiff
did not respond to defendant’s arguments or produce any evidence as to its claims
Therefore, the Court will grant defendant’s motion for
summary judgment on all of plaintiff’s claims premised on the SINGLPUL
Defendant’s use of “single pull” (in all its variants) is non-infringing.
The Court need not determine whether defendant’s trademark cancellation or other
counterclaims and defenses succeed with respect to SINGLPUL.
“A ‘trademark’ is ‘any word, name, symbol, or device, or any combination
thereof—used by a person . . . to identify and distinguish his or her goods, including
a unique product, from those manufactured or sold by others and to indicate the
source of the goods, even if that source is unknown.’” Lovely Skin, Inc. v. Ishtar
Skin Care Products, LLC, 745 F.3d 877, 882 (8th Cir. 2014) (quoting 15 U.S.C.
§ 1127). “The Lanham Act grants the ‘owner of a trademark used in commerce’ the
right to apply for registration of its trademark on the Principal Register” by filing an
application with the USPTO. Id. (quoting 15 U.S.C. § 1051). As discussed, ONEPUL
is a registered trademark.
The Lanham Act also establishes a civil remedy for infringement of a
registered trademark. 15 U.S.C. § 1114. Section 1114 provides in pertinent part:
Any person who shall, without the consent of the registrant[,] . . . use
in commerce any reproduction . . . or colorable imitation of a
registered mark in connection with the sale, offering for sale,
distribution, or advertising of any goods or services on or in connection
with which such use is likely to cause confusion, or to cause mistake,
or to deceive . . . shall be liable in a civil action . . . .
Id. § 1114(a)(1); see Sensient Techs. Corp. v. SensoryEffects Flavor Co., 613 F.3d
754, 760 (8th Cir. 2010) (describing § 1114 claims).
To prevail on a claim of infringement of a registered trademark under 15
U.S.C. § 1114(1), a plaintiff must establish: (1) that it owns a valid, protectable
mark, (2) that the defendant has used a mark in commerce without the plaintiff’s
consent; and (3) that there is a likelihood of confusion between the plaintiff’s mark
and the defendant’s mark.
15 U.S.C. § 1114(1); see B & B Hardware, Inc. v.
Hargis Indus., Inc., 569 F.3d 383, 389 (8th Cir. 2009).
“If a plaintiff succeeds in making out a prima facie case of trademark
infringement,” then “the defendant may offer rebutting evidence to undercut the
force of the plaintiff’s evidence on” the “element of consumer confusion” or “any”
other element, or “raise an affirmative defense to bar relief even if the prima facie
case is sound, or do both.” KP Permanent Make-Up, Inc. v. Lasting Impression I,
Inc., 543 U.S. 111, 120 (2004); see also 15 U.S.C. § 1115(b) (listing several
defenses). Indeed, “merely rebutting the plaintiff’s case on confusion” will “entitle
the defendant to judgment, good faith or not.” KP Permanent Make-Up, 543 U.S.
(1) Standards Governing Validity
To succeed on the first element of its prima facie case of infringement,
plaintiff must prove that the ONEPUL trademark is valid. For a “mark that is invalid
cannot be infringed.” Fair Isaac Corp. v. Experian Info. Sols., Inc., 650 F.3d 1139,
1151 (8th Cir. 2011) (citation omitted). To be a valid trademark, “a mark must be
capable of distinguishing the applicant’s goods from those of others.” Two Pesos,
Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992) (citing 15 U.S.C. § 1052).
“Marks are often classified in categories of generally increasing distinctiveness” as:
“(1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.”
“The latter three categories of marks, because their intrinsic nature serves to
identify a particular source of a product, are deemed inherently distinctive and are
entitled to protection.” Id.
“In contrast, generic marks—those that refer to the genus of which the
particular product is a species—are not registrable as trademarks.” Id. (quotation
marks, bracketing, and citations omitted). “[A] registered mark may be canceled
at any time on the grounds that it has become generic.” Park 'N Fly, Inc. v. Dollar
Park & Fly, Inc., 469 U.S. 189, 193–94 (1985) (citations omitted).
“has the burden of proving by a preponderance of the evidence that [a] registered
mark [is] generic and that [its] registration should thus be cancelled.” Cmty. of
Christ Copyright Corp. v. Devon Park Restoration Branch of Jesus Christ’s Church,
634 F.3d 1005, 1011 (8th Cir. 2011).
“To determine whether a registered mark
has become [a] generic name,” courts “consider ‘the primary significance of the
registered mark to the relevant public rather than purchaser motivation.’”
(quoting 15 U.S.C. § 1064(3)). For example, the Eighth Circuit has held that the
capitalized phrase “Brick Oven” is a generic identifier for a type of pizza, and thus
not entitled to protection. Schwan’s IP, LLC v. Kraft Pizza Co., 460 F.3d 971, 974
(8th Cir. 2006).
“The dictionary definition of a word is an appropriate and relevant indication
of the ordinary significance and meaning of words to the public.”
WSM, Inc. v.
Hilton, 724 F.2d 1320, 1327 (8th Cir. 1984). But “a word need not appear in all
dictionaries in order to be found generic. Whether a term is generic is determined
by actual common usage.” Id. “A consumer survey is the most definitive evidence
of genericness, but absent such a survey, a court may consider indirect evidence,
such as use by defendants, the trademark owner, or a third-party.” Baxter, 2016
WL 158516, at *6. “Where the proponent of trademark status itself uses the term
as a generic name, it is strong evidence of genericness.” Id. at *7 n.6 (quotation
marks and citation omitted).
“A merely descriptive mark . . . describes the qualities or characteristics of a
good or service, and this type of mark may be registered only if the registrant
shows that it has acquired secondary meaning, i.e., it has become distinctive of the
applicant’s goods in commerce.” Park 'N Fly, 469 U.S. at 193–94 (quotation marks
and citations omitted); see Two Pesos, 505 U.S. at 767–69. “A term is descriptive
if it conveys an immediate idea of the ingredients, qualities or characteristics of the
goods” in question. Frosty Treats Inc. v. Sony Comput. Entm’t Am. Inc., 426 F.3d
1001, 1004 (8th Cir. 2005) (quotation marks and citation omitted).
Treats, for example, the court held that “the phrase ‘Frosty Treats’ [was], at best,
descriptive” of the plaintiff’s “business of selling frozen desserts out of ice cream
trucks.” Id. at 1005. The Eighth Circuit explained that the term “‘Frosty Treats’
convey[ed] an immediate idea of the qualities and characteristics of the goods that”
the plaintiff sold, and that, “no imagination, thought, or perception [was] required
to reach a conclusion as to the nature of its goods.”
Id. The Eighth Circuit has
similarly held the term “350–850” is merely descriptive of the “qualities or
characteristics” of credit scores. Fair Isaac, 650 F.3d at 1147–48.
“Secondary meaning is used generally to indicate that a mark or dress has
come through use to be uniquely associated with a specific source.”
505 U.S. at 784 n.4 (quotation marks and citation omitted); see Lovely Skin, 745
F.3d at 882 (same). “To establish secondary meaning, a manufacturer must show
that, in the minds of the public, the primary significance of a product feature or
term is to identify the source of the product rather than the product itself.” Two
Pesos, 505 U.S. at 784 n.4 (quotation marks and citation omitted). The Supreme
Court has explained that “trademark law requires a demonstration of secondary
meaning only when the claimed trademark is not sufficiently distinctive of itself to
identify the producer . . . .” Id. at 767.
The secondary meaning requirement as to descriptive marks exists because a
business cannot “pluck a word” from “the general vocabulary and appropriate it to
[its] exclusive use no matter how much effort and money [it] may expend in the
attempt . . . .” Duluth News-Tribune, a Div. of Nw. Publ’ns, Inc. v. Mesabi Publ’g
Co., 84 F.3d 1093, 1100 (8th Cir. 1996) (quotation marks and citation omitted).
“This right to describe is the reason that descriptive terms qualify for registration as
trademarks only after taking on secondary meaning as distinctive of the applicant’s
goods, with the registrant getting an exclusive right not in the original, descriptive
sense, but only in the secondary one associated with the markholder’s goods.” KP
Permanent Make-Up, 543 U.S. at 122 (quotation marks and citations omitted). As
a leading treatise in the field of trademark law explains:
The combination of two or more admittedly descriptive elements as a
composite mark may result in a composite which is nondescriptive.
That is, the commercial impression of a composite mark may be
arbitrary or suggestive even though its separate parts are descriptive.
The composite may be more than the mere sum of its parts.
. . . Common words in which no one may acquire a trademark
because they are descriptive or generic may, when used in
combination, become a valid trademark.
2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition
§ 11:26 (4th ed. 2016); see also id. § 11:31 (explaining that the “slight misspelling
of a word will not generally turn a descriptive word into a nondescriptive mark”).
Examples of such composite marks include SUGAR & SPICE, MOUSE SEED, and
SEASON-ALL, all of which are non-descriptive marks imbued with secondary
meaning, but which are composed of generic or descriptive terms that are not
themselves eligible for trademark protection. Id. § 11:26; see also Duluth NewsTribune, 84 F.3d at 1097 (holding that “although the mark ‘Duluth News-Tribune’
merits some level of protection, the shorthand ‘News-Tribune’ merits none”).
(a) Effect of Registration
Notwithstanding the standards governing trademark validity, the Lanham Act
provides that the USPTO’s registration of a trademark is admissible as, “prima facie
evidence of the validity of the registered mark and of the registration of the mark,
of the registrant’s ownership of the mark, and of the registrant’s exclusive right to
use the registered mark in commerce on or in connection with the goods or
15 U.S.C. § 1115(a).
“A mark registered on the Principal Register is
presumed to be valid, 15 U.S.C. § 1057(b), and the presumption of validity is a
strong one.” Lovely Skin, 745 F.3d at 882 (quotation marks and citation omitted).
But the act of registration does “not preclude another person from proving any legal
or equitable defense or defect . . . which might have been asserted if such mark
had not been registered.” 15 U.S.C. § 1115(a). “[A] mark’s registered status is
only an evidentiary tool, and the fact of registration does not affect the plaintiff’s
ultimate burden of proof in an infringement action.” Gen. Mills, Inc. v. Kellogg Co.,
824 F.2d 622, 626 (8th Cir. 1987) (citing 15 U.S.C. § 1057).
It is a complete defense to a trademark infringement claim to rebut the
presumption that a registered trademark is valid, by proving the trademark is
generic or merely descriptive and devoid of secondary meaning—i.e., that the
registration was issued in error and is subject to cancellation. See Park 'N Fly, 469
“presumption” created by registration “by a preponderance of the evidence
. . . . The party seeking to cancel registration of a mark always bears the burden of
persuasion, that is, the ultimate burden of proving invalidity of the registration by a
preponderance of the evidence.” Cold War Museum, Inc. v. Cold War Air Museum,
Inc., 586 F.3d 1352, 1358 (Fed. Cir. 2009); see Lovely Skin, 745 F.3d at 883.
Defendant contends that ONEPUL’s registration should be cancelled, either
because the mark is generic or merely descriptive and without secondary meaning,
or because the mark was fraudulently obtained.
The Court must first address
whether the ONEPUL trademark is contestable or incontestable before turning to
those arguments, as it affects the scope of the available defenses.
The avenues available to rebut the presumption that a registered trademark
is valid narrow with the passage of time in certain circumstances. See 15 U.S.C.
§ 1065. The Lanham Act provides that an owner’s right to use a registered “mark
in commerce for the goods or services on or in connection with which” it “has been
in continuous use for five consecutive years subsequent to the date of such
registration and is still in use in commerce shall be incontestable . . . .”
Where a registered trademark has become incontestable, a defendant may no
longer assert the affirmative defense of cancellation “on the grounds that the mark
is merely descriptive.”
Park 'N Fly, 469 U.S. at 205.
But even an incontestable
registered trademark is subject to cancellation—and affords a complete defense to
infringement claims—if it is either generic at the time of registration or becomes
Id. at 201 (citations omitted); see 15 U.S.C. §§ 1064(3),
The Lanham Act also, “under certain circumstances, permits the
nontrademark use of descriptive terms contained in an incontestable mark.” Park
'N Fly, 469 U.S. at 201.
As relevant to ONEPUL, the parties dispute whether that trademark has
achieved incontestability. Two points definitively settle that question of law. First,
by its plain text the Lanham Act provides that the five-year period of use in
commerce required to achieve incontestability begins to accrue only “subsequent to
the date of” the trademark’s “registration” with the USPTO.
15 U.S.C. § 1065.
Second, incontestability cannot vest while a “proceeding involving said rights” is
“pending in . . . a court and [is] not finally disposed of . . . .” Id. § 1065(2). The
ONEPUL trademark has not achieved incontestability because, inter alia, it was only
registered on August 5, 2014.
Additionally, this litigation is ongoing, and
commenced less than a month after the accrual period began.
ONEPUL trademark is not incontestable and plaintiff’s allegations of infringement
may be defended against by raising all potential arguments to rebut the
presumption of validity.
(c) Inherent Distinctiveness
In Two Pesos, the Supreme Court explained that because the Lanham Act
“requires secondary meaning only as a condition to registering descriptive marks,
there are plainly marks that are registrable without showing secondary meaning.
These same marks, even if not registered, remain
inherently capable of
distinguishing the goods of the users of these marks.”
505 U.S. at 772.
Accordingly, when the USPTO registers a trademark without first requiring an
applicant to show proof of secondary meaning, pursuant to 15 U.S.C. § 1052(f), it
may be presumed the agency determined that the mark in fact is at least
suggestive and therefore protectable without such proof, i.e., inherently distinctive.
See Lovely Skin, 745 F.3d at 882; see also JDR Indus., Inc. v. McDowell, 121 F.
Supp. 3d 872, 885 (D. Neb. 2015); McCarthy, supra, § 11:43 (“Almost all courts
interpret the Lanham Act to mean that . . . when the USPTO registers a mark
without requiring evidence of secondary meaning (‘acquired distinctiveness’), it is
presumed to be inherently distinctive.”).
It is undisputed that the USPTO accepted plaintiff’s application and registered
the ONEPUL trademark without requiring plaintiff to show proof of secondary
Defendant has not challenged the agency’s determination of that
question of fact here. See Lovely Skin, 745 F.3d at 884 (noting that the “federal
officials who register a mark have some expertise in assessing if it is entitled to
registration,” holding that a registered mark is “entitled to a strong presumption of
validity,” and explaining that a “finding of acquired distinctiveness,” i.e., secondary
meaning, “is a question of fact” the USPTO may decide (citation omitted)).
Further, even if the Court were to revisit that determination, defendant has
not met either “the initial burden to establish a prima facie case that” the ONEPUL
trademark was not distinctive “at the time of [its] registration” or “the ultimate
burden of persuasion to prove that” plaintiff’s “trademark [is] invalid by a
preponderance of the evidence.” Id. at 884–85. No evidence has been submitted
suggesting that ONEPUL has independent meaning. See WSM, 724 F.2d at 1325
(“How a particular word has been used and how it has been understood by the
public is a question of fact.”).
On this evidence, ONEPUL is not a word in the
English language or in any other. Defendant submitted no evidence that the term
ONEPUL is generic for dog waste bags or a particular genus of dog waste bag that
can be dispensed with a single movement of the hand. See Two Pesos, 505 U.S. at
Nor is ONEPUL descriptive.
It “does not convey an immediate idea of the
ingredients, qualities, or characteristics” of the dog waste disposal bags or
dispensers plaintiff sells. Mountain Mktg. Grp., LLC v. Heimerl & Lammers, LLC, No.
14-CV-846 SRN/BRT, 2015 WL 5602805, at *7 (D. Minn. Sept. 23, 2015)
(quotation marks and citation omitted).
It “neither informs a consumer about
qualities, ingredients or characteristics” of plaintiff’s products, “nor points to” those
products’ “intended purpose, function or intended use, size, or merit.” Id. In short,
a person who had never seen the term ONEPUL before would not immediately think
of dog waste bags or the method of dispensing them.
Therefore, and consistent with what the USPTO has already determined,
ONEPUL is inherently distinctive, and no showing of secondary meaning is required.
The ONEPUL trademark is therefore not invalid for lack of distinctiveness. See Park
'N Fly, 469 U.S. at 205. Of course, contrary to plaintiff’s suggestion, the validity of
an inherently distinctive trademark is not equivalent to determining the scope of
protection it affords, as discussed further below.
In addition to proving that a contestable, registered trademark is invalid as
generic or merely descriptive and without secondary meaning, see id. at 193–94, a
defendant may also escape liability by proving one or more other available
See 15 U.S.C. § 1115(b).
As asserted by defendant here, one such
defense is to prove that “the registration or the incontestable right to use the mark
was obtained fraudulently . . . .”
Id. § 1115(b)(1).
“Fraud in procuring a
trademark registration or renewal occurs when an applicant knowingly makes false,
material representations of fact in connection with his application.” Fair Isaac, 650
F.3d at 1148 (quotation marks and citation omitted). “Because direct evidence of
deceptive intent is rarely available, such intent can be inferred from indirect and
circumstantial evidence. But such evidence must still be clear and convincing, and
inferences drawn from lesser evidence cannot satisfy the deceptive intent
requirement.” Id. (quotation marks, bracketing, and citation omitted). Further, the
USPTO “has consistently held that a misstatement of the date of first use in an
application for registration is not fraudulent as long as there has been some use of
the mark prior to the filing date.” Aveda Corp. v. Evita Mktg., Inc., 706 F. Supp.
1419, 1426 (D. Minn. 1989) (citations omitted). Where a defendant has “failed to
produce any evidence establishing a genuine issue of fact concerning a material
misrepresentation which would be grounds for cancellation” of a plaintiff’s
registered trademark, summary judgment on a counterclaim for cancellation based
on alleged fraud is required. Id.
Here, defendant argues that plaintiff committed fraud when it applied for the
trademark over ONEPUL by falsely claiming it first used that mark in commerce on
October 30, 2010.
Defendant cites several discrepancies in addresses listed on
plaintiff’s invoices and contends that plaintiff only began using ONEPUL in 2012.
Defendant did not introduce into evidence plaintiff’s application to the USPTO, the
most important evidence necessary to prove its counterclaim that plaintiff
committed fraud on the application. Further, even if the application contains the
wrong date, that raises no genuine dispute of material fact. The USPTO has long
interpreted errors in the alleged date of first use on trademark applications to be
immaterial to the validity of a trademark’s registration.
See id. Defendant does
not challenge the agency’s determination on that question of administrative law,
which the Court does not reach. Even if the application contains the error alleged,
because it is not material, such an error cannot serve as a predicate for cancelling
the mark on the basis that it was “obtained fraudulently.” 15 U.S.C. § 1115(b)(1);
see Fair Isaac, 650 F.3d at 1148.
Therefore, the fraudulent registration
counterclaim fails as a matter of law.
For those reasons, ONEPUL is both a valid and validly registered inherently
Defendant has not succeeded on its counterclaim for
invalidity, and plaintiff has established the first element of its prima facie case of
(2) Defendant’s Use of a Mark
The second element of plaintiff’s prima facie case is disputed in part.
parties agree plaintiff has not authorized defendant to use any of its trademarks.
See 15 U.S.C. § 1114(1); B & B Hardware, 569 F.3d at 389. However, the parties
disagree about whether defendant’s use of any iteration of the term “one pull”
constitutes its use of “a mark,” or only the good-faith use of generic or merely
descriptive terms for its dog waste disposal bags.
See 15 U.S.C. § 1115(b)(4)
(setting out the affirmative defense of fair use).
In any event, because the
likelihood of confusion analysis is dispositive, the Court will assume arguendo that
at least one of the defendant’s uses of “one pull” may qualify as use of “a mark,”
and the Court also will not address the other elements of the fair use affirmative
(3) Likelihood of Confusion
“[T]he burden of proving likelihood of confusion rests with the plaintiff . . . .”
KP Permanent Make-Up, 543 U.S. at 121.
To succeed on the “likelihood of
confusion” element, a plaintiff must prove that the defendant’s alleged infringing
mark “is likely to produce confusion in the minds of consumers about the origin of
the goods or services in question.” Id. at 117. “Confusion means more than that
the junior user’s mark merely calls to mind the senior user’s mark. . . . While the
junior user’s mark may call to mind the senior user’s famous mark, this alone is not
sufficient for a likelihood of confusion.” Frosty Treats, 426 F.3d at 1010 (quotation
marks and citation omitted).
The “relevant inquiry” is “whether consumers are
confused as to the existence of any sponsorship of or affiliation or association with
the” defendant’s products by the plaintiff.
Id.; see Lovely Skin, 745 F.3d at
887(citing 15 U.S.C. § 1114(1)(A), and Sensient Techs., 613 F.3d at 763 n.3, and
holding that to prove trademark infringement or unfair competition requires a
plaintiff demonstrate, inter alia, “that a likelihood of confusion exists between” the
plaintiff’s trademark and the defendant’s usage).5 Further, the Lanham Act was not
“meant to deprive commercial speakers of the ordinary utility of descriptive words.
If any confusion results, that is a risk the plaintiff accept[s] when it decide[s] to
Plaintiff also raises a putative claim of “initial interest confusion,” a subspecies of trademark
infringement that the Eighth Circuit has neither accepted nor rejected. See Sensient Techs., 613 F.3d
at 766 (declining to “adopt the ‘initial interest confusion’ doctrine” because “it would not apply” in that
case even if it were accepted “in this circuit,” and recognizing that in circuits that have accepted the
doctrine, a plaintiff still must prove initial interest confusion with evidence). Even if that type of
infringement claim were cognizable in this circuit, it would not aid plaintiff here. A claim of initial
interest confusion requires sufficient evidence to survive summary judgment, like any other
infringement claim. See id. Plaintiff has introduced no evidence from which a reasonable jury could
determine “confusion” caused by defendant’s specific use of “one pull” (as opposed to its entry into
the market and its legitimate business practices) likely “create[d] an initial customer interest” in
defendant’s dog waste disposal bags. Id.; see 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229,
1243–45 (10th Cir. 2013) (discussing the data and other evidence presented that there was a
likelihood of actual initial interest confusion and concluding summary judgment was not granted in
error, where the evidence left no genuine dispute of material fact that such confusion was unlikely).
identify its product with a mark that uses a well known descriptive phrase.”
Permanent Make-Up, 543 U.S. at 122 (quotation marks and citation omitted).
“[L]ikelihood of confusion is a factual question.” ConAgra, Inc. v. George A.
Hormel, & Co., 990 F.2d 368, 371 (8th Cir. 1993).
“When, as in this case, a
trademark dispute centers on the proper interpretation to be given to the facts,
rather than on the facts themselves, summary disposition is appropriate.” Duluth
News-Tribune, 84 F.3d at 1099.
“To show a likelihood of confusion,” a plaintiff
“must show a probability of confusion, not merely a possibility.” Lovely Skin, 745
F.3d at 887. “In order to survive a motion for summary judgment, the non-moving
party must be able to show sufficient probative evidence that would permit a
finding in his favor on more than mere speculation, conjecture, or fantasy.”
Sensient Techs., 613 F.3d at 762 (quotation marks and citation omitted). Members
of the industry are “not members of the purchasing public,” and a plaintiff may not
rely on “secondhand testimony—persons testifying to the alleged confusion of third
parties”—as “proof of the existence of a likelihood of confusion.” WSM, 724 F.2d at
1330, 1332 n.3.
“The Eighth Circuit applies a six-factor test to determine whether there is a
likelihood of confusion, no part of which is dispositive standing alone.”
Techs., 613 F.3d at 763 (citing Frosty Treats, 426 F.3d at 1008). Those six factors
(1) the strength of the owner’s mark; (2) the similarity between the
owner’s mark and the alleged infringer’s mark; (3) the degree to which
the products compete with each other; (4) the alleged infringer’s
intent to ‘pass off’ its goods as those of the trademark owner; (5)
incidents of actual confusion; and (6) the type of product, its cost, and
conditions of purchase.
Id. “The relative weight of the factors depends on the facts of the individual case.”
Lovely Skin, 745 F.3d at 887 (quotation marks, bracketing, and citations omitted).
The “factors do not operate in a mathematically precise formula,” and courts “use
them at the summary judgment stage as a guide to determine whether a
reasonable jury could find a likelihood of confusion.”
Frosty Treats, 426 F.3d at
1008 (quoting Duluth News-Tribune, 84 F.3d at 1096). “Factual disputes regarding
a single factor are insufficient” to deny “summary judgment unless they tilt the
entire balance in favor of such a finding.”
Id. (quoting Duluth News-Tribune, 84
F.3d at 1096). Accordingly, the Court applies each factor in turn.
“Two relevant measurements of a mark’s strength are its conceptual strength
and its commercial strength.”
Lovely Skin, 745 F.3d at 888 (citation omitted).
“Whether a mark is federally registered does not bear on a mark’s strength or
affect the likelihood of confusion analysis.”
Id. at 887 (citations omitted).
plaintiff may establish a mark’s strength by “direct evidence,” such as with
“consumer surveys or consumer testimony,” and advertising expenses and sales
figures must be sufficiently tied to the trademark in question. Id. at 888 (holding a
district court did not err in its consideration of detailed evidence submitted of the
plaintiff’s advertising expenditures and revenues over time). Further, “evidence of
third party usage of similar marks on similar goods is admissible . . . and relevant
to show that the mark is relatively weak and entitled to a narrower scope of
protection.” Gen. Mills, 824 F.2d at 626–27 (holding a district court did not clearly
err when it recognized “component words” that are “in common usage and function
to describe the ingredients and nature of the product” are “highly descriptive,” and
found the term “APPLE RAISIN CRISP” merely descriptive and without secondary
Plaintiff submitted no evidence that bears on ONEPUL’s commercial or
conceptual strength other than the fact of the mark’s registration, which is
See Lovely Skin, 745 F.3d at 887 (citations omitted).
surveys were introduced.
Plaintiff also did not offer consumer declarations,
affidavits, or deposition testimony to demonstrate a genuine factual dispute that
would preclude summary judgment. The only statements of record are those from
plaintiff and its counsel, neither of which prove consumer perception.
Even assuming plaintiff spent over $1.5 million advertising the ONEPUL
trademark since 2010, without comparators, that also is irrelevant. On this record,
a factfinder would have no evidence about ONEPUL’s relative position in the market,
or whether $1.5 million in advertising expenses over five years is significant or
insignificant in the pet waste disposal bag industry.
The amount of money a
company spends advertising a product is not by itself reliable evidence that
consumers are actually purchasing the product, let alone in mass quantities.
Plaintiff also submitted unverified balance sheets for its sales of ONEPUL and
Assuming the details are accurate, plaintiff made $5.5 million
from sales of both products from August 2010 through August 2015, of which only
approximately $850,000 was generated from ONEPUL bag sales. Out of the 50,119
boxes and cases sold in five years, only 12,215 of them contained ONEPUL bags,
under 25%. That evidence tends to undermine any claim that the ONEPUL mark is
strong, even relative to plaintiff’s other branded bags. The sales numbers also tell
very little without comparator data. Absent is evidence of what any other company
spends on advertising or generates in revenue from selling dog waste disposal
bags. Without such evidence, a factfinder would be left with only plaintiff and its
counsel’s word that ONEPUL is a strong mark.
Finally, third parties sell dog waste disposal bags with “one-pull” features.
Plaintiff suggests the evidence is irrelevant because those third-parties sell “one
pull” roll bags, not wicket bags.
But that actually undercuts its argument.
ONEPUL and the use of “one pull” on dog waste disposal bags is “identical,” as
plaintiff contends (which is far from evident, as discussed below), then the use of
“one pull” on roll bags only serves to underscore that the ONEPUL mark is weak. If
plaintiff’s proposition is accepted, it means ONEPUL is only weakly associated with
its particular brand of wicket bags, because third parties are selling roll bags under
the “identical” moniker.
At minimum, that third parties sell “one pull” roll bags
leaves no doubt the ONEPUL mark is “entitled to a narrower scope of protection,”
suggesting it cannot cover defendant’s use. Gen. Mills, 824 F.2d at 626–27.
“[W]hen ‘products are closely related, less similarity in trademarks is
necessary to support a finding of infringement.’”
ConAgra, 990 F.2d at 371
(quoting SquirtCo. v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980)).
“otherwise similar marks are not likely to be confused when used in conjunction
with” the “clearly displayed name of” the seller. Duluth News-Tribune, 84 F.3d at
1097 (citing Pignons S.A. de Mecanique v. Polaroid Corp., 657 F.2d 482, 487 (1st
A court analyzing the similarity of two marks is to “evaluate the
impression that each mark in its entirety is likely to have on a purchaser exercising
the attention usually given by purchasers of such products.” Id. Courts “consider
the marks’ visual, aural, and definitional attributes and compare the trade dress of
the products in determining whether the total effect conveyed by the two marks is
Sensient Techs., 613 F.3d at 764 (quotation marks and
The “use of identical dominant words does not automatically
equate to similarity between marks.” Id. at 765 (quoting Gen. Mills, 824 F.2d at
Where even identical “features are components of longer product names with
different auditory and visual depictions,” confusion is less likely.
Id.; see KP
Permanent Make-Up, 543 U.S. at 114 (discussing the parties’ use of the term
“microcolor” as “one word or two, singular or plural”). The “prominent display of” a
company’s “house marks” with a product also reduces the likelihood of confusion.
Sensient Techs., 613 F.3d at 765 (quotation marks and citation omitted). In cases
where “the point of contact between the companies and the customers generally
occurs via telephone,” the “auditory similarities should be given priority” over the
visual differences, but the question is whether the “composite marks maintain a
distinct auditory difference.” Id.
The evidence of record seriously undercuts any similarity that may exist
between the marks. First, defendant sells its products only online and by phone.
Its website prominently and repeatedly displays its BagSpot house mark, greatly
reducing the risk that a consumer stumbling upon the website will mistake the
products sold there for plaintiff’s ONEPUL bags. Even a consumer who viewed one
of defendant’s advertisements likely would not mistake the product in question,
because to purchase it would require the affirmative act of visiting defendant’s
website, with all its clear indicia that the products originate from BagSpot.
even a consumer merely viewing the advertisement would see defendant’s website
displayed with the advertisement, showing the marketer is defendant, not plaintiff.
Second, defendant uses its BagSpot® trademark in conjunction with “One
Pull” and “One-Pull” in several places on its website, reducing the likelihood that
consumers viewing that website as a whole will mistakenly purchase defendant’s
bags believing they are ONEPUL bags from plaintiff. A consumer also is unlikely to
purchase defendant’s bags by phone all the while thinking she or he has called
plaintiff, where the sources from which the consumer obtains defendant’s phone
number also refer to BagSpot—i.e., its website, its advertisements, or its bags.
Plaintiff introduced no evidence of deceptive phone practices, and nothing in the
record suggests that defendant does not clearly identify itself as BagSpot on the
Third, it is undisputed that defendant’s bags are not actually branded with
any variant of the term “one pull.”
They are instead clearly labelled BagSpot®
bags, with defendant’s phone number and website address prominently displayed.
Even the unwitting consumer who happened to see a “one pull” bag out in the
world—e.g., in a dispenser at a dog park—would not be left with any mistaken
impression the product is one of plaintiff’s ONEPUL bags.
Finally, viewed in their entirety the two marks are not “identical,” as plaintiff
suggests. Plaintiff offered no audiologist, linguist, semiologist, or market research
expert, or other evidence, from which to determine the overall impression and total
effect the two marks would have on purchasers.
Plaintiff also did not put forth
evidence as to the degree of attention usually given to purchasing dog waste
disposal bags from which to make such a determination.
Regardless, the closest the two marks have appeared to resembling one
another was in an advertisement (on defendant’s website) where the entire product
title was capitalized: “ONE-PULL BAGS.”
But even that example shows that the
separate (or hyphenated) term “ONE PULL” is visually distinct from the single word,
misspelled term ONEPUL or ONEPul. The BagSpot trade dress accompanying the
use of the term across defendant’s website and its advertisements only further
serves to distinguish even the most similar instance of the two marks, while many
others bear almost no resemblance to one another, i.e., “one pull” versus ONEPul.
Nor is there evidence of record that consumers are likely to assign the same
meaning to ONEPUL as “one pull,” or that they will pronounce the single, misspelled
term the same as the two English words from which it appears to have been
derived. Cf. Aveda, 706 F. Supp. at 1429 (recognizing auditory similarities between
two marks at summary judgment where the plaintiff had linguistic expert evidence
that the marks were pronounced similarly). But even assuming arguendo the terms
actually sound the same and would be interpreted by purchasers to mean the same
thing, that is still insufficient to withstand summary judgment.
All of the factors
discussed above show the terms are markedly dissimilar as they are used in the
real world, to advertise distinct products, on separate websites, prominently
branded to identify different dog waste disposal bag distributors.
Where there is a high degree of competition among the companies’ products
or services, confusion is also more likely where the products are closely related.
Sensient Techs., 613 F.3d at 766.
Confusion is more likely to arise where an
alleged infringer “utilizes identical or substantially similar marks while offering the
same category of services in the same geographical location” as the trademark
owner. Devon Park, 634 F.3d at 1009.
Plaintiff and defendant compete with each other in the dog waste disposal
bag market. As discussed, however, ONEPUL is not as closely related to “one pull”
as plaintiff suggests, such that the marks are neither identical nor substantially
This is particularly true when one considers the context in which both
marks appear, on different websites and surrounded by trade dress that
But confusion may be more likely because defendant offers
putative customers the same wicket-type dog waste disposal bags as plaintiff, and
at least in some of the same geographic areas, i.e., to municipalities in Missouri.
Therefore, the parties’ competitive status renders confusion more likely. Of course,
that this single factor makes confusion more likely is insufficient to forestall
summary judgment where the evidence relevant to other factors shows no
reasonable jury could conclude it is likely that consumers will be confused.
Lovely Skin, 745 F.3d at 887; Frosty Treats, 426 F.3d at 1008.
The question of intent with regard to trademark infringement is “whether the
alleged infringer intended to pass off its goods as the trademark owner’s goods.”
Sensient Techs., 613 F.3d at 766.
A defendant’s intent may be shown by
circumstantial evidence. See Anheuser–Busch, Inc. v. Balducci Pubs., 28 F.3d 769,
774 (8th Cir. 1994). Though evidence of intent raises an inference of a likelihood
of confusion, a plaintiff need not present proof of bad intent to succeed on an
infringement claim. SquirtCo., 628 F.2d at 1091. The absence of evidence of bad
intent is also considered. Sensient Techs., 613 F.3d at 766.
Further, and critically here, proof of a defendant’s predatory intent must be
based on more than mere knowledge of a plaintiff’s product and desire to enter the
market and compete with that product. Id. at 766–67. “Knowledge of another’s
product and an intent to compete with that product is not . . . equivalent to an
intent by a new entrant to a market to mislead and to cause consumer confusion”
between those products. Id. at 766 (quotation marks and citation omitted). Even
if a defendant knew of and sought to compete with a plaintiff’s product before
adopting its allegedly infringing mark, that knowledge and intent is only
“speculation” as to the likelihood that consumers will confuse the parties’ products.
Id. at 767.
Such knowledge and intent is not sufficient evidence of “intent to
confuse customers by using a name similar to” that of the plaintiff’s product. Id.
As putative evidence of intent to infringe on the ONEPUL mark, plaintiff first
suggests that defendant’s principals were aware of the ONEPUL trademark, aware
of its registration, and aware that plaintiff advertised its bags using that mark.
Defendant disagrees for reasons not relevant here. Crediting plaintiff’s version of
the events, see AgriStor Leasing, 826 F.2d at 734, defendant’s knowledge of
plaintiff’s business and ONEPUL trademark and its desire to enter the market and
compete with plaintiff is still no evidence of an intent to confuse consumers
regarding the ONEPUL bags.
See Sensient Techs., 613 F.3d at 766.
plaintiff is correct that defendant entered the dog waste disposal industry with the
intent of competing with plaintiff’s business—i.e., to engage in a capitalist
enterprise—that is not the equivalent of an intent to dupe consumers into believing
its bags are ONEPUL bags. See id.
The second argument plaintiff raises with regard to intent relates to defendant’s
purchase of keywords and advertisements from Google.
But what is true of
defendant’s knowledge of the products is also true of its marketing practices,
including its purchase of keywords and advertisements. Assuming those allegations
are true, it may be strong evidence of a desire to compete with plaintiff in the
marketplace. But it is no evidence of unfair competition or intent to infringe.
Plaintiff has offered no evidence that defendant has done anything more than
advertise its own products to potential consumers who are shopping for dog waste
disposal bags online.
Advertising its own products to those consumers is not,
without more, evidence from which a reasonable jury could conclude defendant
hoped to confuse customers into believing its bags were ONEPUL bags.
Plaintiff additionally, points out that it has lost several customers to defendant.
The evidence suggests that there are municipalities that switched from purchasing
plaintiff’s products to defendant’s products.
However, plaintiff does not suggest
that the municipalities switched their dog waste bag providers after having actually
been exposed to defendant’s marketing materials, let alone that defendant’s use of
“one pull” was the cause or even a contributor to the decisions to change bag
That evidence shows only that defendant competes with plaintiff for
customers in the dog waste disposal bag market and that in at least some instances
defendant has successfully convinced customers to purchase its products instead.
As with defendant’s online advertising practices, its competition for customers
without evidence those customers were affected by the “one pull” mark does not
Finally, plaintiff suggests that defendant’s selection of “one pull” or “One Pull”
to describe its products is evidence of intent to pass off its bags as plaintiff’s
ONEPUL bags, contending the marks are “identical” or nearly so.
above, however, the marks are in fact dissimilar.
Even if that were not so,
plaintiff’s point is undercut by third-parties’ use of the same terms in the industry.
Other dog waste disposal bag merchants sell “one-pull” and “one pull” bags and
variously capitalize or emphasize those terms depending on the advertisement in
question. Plaintiff also uses the term “ONE-PULL” on its own website to describe
features of dog waste disposal bags, separate from its specific references to
ONEPUL bags. No genuine dispute of fact exists that “one pull” is a commonplace
descriptor for dog waste disposal bags that can be dispensed with a single pull of
the hand, a feature common among certain classes of roll bags and wicket bags,
and commonly advertised in the industry. Plaintiff therefore has not shown on this
evidence that defendant sought to use “One Pull” with the intent to confuse
consumers that they were purchasing ONEPUL bags.
(e) Actual Confusion
Evidence of incidents of actual confusion is useful to show the likelihood that
consumers will be confused by two products. See id. at 768. But a “plaintiff is not
required to bring forth incidents of actual confusion to succeed in an infringement
Id. (citation omitted).
“In analyzing this factor, weight is given to the
number and extent of instances of actual confusion.”
Id. (quotation marks and
citation omitted). Though “evidence of actual confusion may be the best evidence
of likelihood of confusion,” even evidence of “a few instances” of actual confusion
“is not conclusive of” the existence of a likelihood that consumers would “be
confused as to the source” of the product, the “core element” of trademark
Davis v. Walt Disney Co., 430 F.3d 901, 905 (8th Cir. 2005)
(quotation marks and citations omitted); see Duluth News-Tribune, 84 F.3d at
1098–99 (holding that “even several isolated incidents of actual confusion” are
insufficient to support a finding of likelihood of confusion).
Plaintiff admits it has no evidence of any incidents of consumers actually
having been confused into believing defendant’s bags are ONEPUL bags. Though
this is not dispositive, the absence of such evidence of record only further
undermines plaintiff’s supposition that it is likely consumers will be so confused.
(f) Type, Cost, and Conditions of Purchase
Finally, courts consider “the kind of product, its costs and the conditions of
purchase,” which “are important factors in considering whether the degree of care
exercised by the purchaser can eliminate the likelihood of confusion which would
otherwise exists.” Lovely Skin, 745 F.3d at 889 (citation omitted). “In considering
this factor,” courts “must stand in the shoes of the ordinary purchaser, buying
under the normally prevalent conditions of the market and giving the attention such
purchasers usually give in buying that class of goods.” Sensient Techs., 613 F.3d
at 769 (quotation marks and citation omitted).
Where products are expensive,
consumers are likely to exercise greater care in making purchases, thus reducing
the likelihood of confusion.
See Lovely Skin, 745 F.3d at 889.
products are sold to “sophisticated customers after a collaborative process,” the
likelihood of confusion tends to be mitigated.
Sensient Techs., 613 F.3d at 769.
But even where consumers are “unlikely to exercise significant care in their
purchasing decisions, this fact alone cannot tilt the balance . . . regarding the
likelihood of confusion.” Frosty Treats, 426 F.3d at 1010 (citation omitted). The
“reality of” a “defendant[’s] distribution methods” is also relevant, even where
“ordinary buyers will exercise only minimal care in selecting” a product.
News-Tribune, 84 F.3d at 1099. Where a defendant’s “distribution methods ensure
that the vast majority of ordinary purchasers will not be confused, . . . no factual
dispute exists the resolution of which would allow a reasonable jury to find a
likelihood of confusion.” Id.
Scant evidence here details the conditions in which various commercial
consumers and individual dog owners typically purchase dog waste disposal bags.
Drawing all reasonable inferences in plaintiff’s favor, consumers do not typically
exercise a high degree of care when selecting moderately priced boxes or cases of
dog waste disposal bags online or by phone.
The bags appear to retail for
approximately $0.05 each, and are typically sold in boxes of several hundred or
cases of up to 2,000 bags. The overall purchase price is usually less than $100.00.
It is therefore reasonable to presume that consumers are more likely to be
confused by products in the dog waste disposal bag market because the products
The same can be said for the type of product, as no evidence
shows consumers are unusually cautious and discerning when selecting a dog waste
disposal bag or bag supplier.
However, undercutting that evidence are the defendant’s online and phone
distribution methods as discussed above.
Both parties sell their wares online.
Defendant’s website and all of plaintiff’s websites contain highly specialized trade
dress, different color schemes and fonts, different phone numbers, and different
logos. No reasonable jury examining that evidence could find that customers—even
careless ones—would strain to recognize that they are purchasing BagSpot One Pull
Bags from BagSpot rather than ONEPUL bags from Zero Waste USA. Consequently,
there is no genuine dispute of material fact in this instance that ordinary purchasers
of the parties’ bags would notice the distinction between them.
C. State Law Claims
Defendant also moves for summary judgment on plaintiff’s Missouri common
law trademark infringement and unfair competition claims, and its anti-dilution
statutory claim under Mo. Rev. Stat. § 417.061. Plaintiff appears to concede that
the same elements that comprise its federal trademark infringement claims also
govern all of its Missouri law claims; they rise or fall together. See [Doc. #82 at
11] Regardless, plaintiff’s Missouri common law claims for trademark infringement
and unfair competition would be subject to summary judgment on the basis of the
same dearth of evidence that forecloses success on its federal trademark
See Devon Park, 634 F.3d at 1010 (“Missouri law is well
settled that the same facts which support a suit for trademark infringement support
a suit for unfair competition and common law infringement.” (quotation marks and
citations omitted)); Heaton Distrib. Co. v. Union Tank Car Co., 387 F.2d 477, 483
(8th Cir. 1967) (“Trademark infringement is but a part of the broader law of unfair
competition, and facts supporting a suit for infringement and one for unfair
competition are substantially identical.” (citations omitted)).
With respect to the dilution claim, plaintiff has offered no evidence that its
ONEPUL trademark is famous or that the dog waste disposal bags at issue are
dissimilar classes of products, both of which are requisite elements of the claim.
Luigino’s, Inc. v. Stouffer Corp., 170 F.3d 827, 833 (8th Cir. 1999) (explaining that
“[d]ilution occurs when consumers associate a famous mark with a new product,”
that “[n]ormally, the doctrine applies in cases where similar marks are used on
dissimilar goods,” and holding that a dilution claim was not viable where both the
plaintiff and defendant were marketing the same types of goods, “low-fat frozen
entrees”). Further, though a dilution claim does not require showing a likelihood of
confusion, the same dissimilarities in sight, sound, and meaning that undercut
plaintiff’s infringement claim also foreclose success on its dilution claim.
Sensient Techs., 613 F.3d at 769–71 & n.3 (explaining that likelihood of confusion
is a prerequisite to success on Missouri common law trademark infringement and
unfair competition claims, and that a plaintiff’s anti-dilution claim, see Mo. Rev.
Stat. § 417.061, also fails where the marks in question are dissimilar, as
demonstrated by, inter alia, differences in sight, sound, and meaning); Steak n
Shake Co. v. Burger King Corp., 323 F. Supp. 2d 983, 986–92 (E.D. Mo. 2004).
As discussed above, plaintiff has not submitted evidence establishing a genuine
dispute of material fact from which a reasonable jury could conclude that there is a
likelihood of consumer confusion between its ONEPUL trademark and defendant’s
various uses of the term “one pull.”
The Court therefore does not address
defendant’s additional counterclaims or defenses. See Masters v. UHS of Del., Inc.,
631 F.3d 464, 469 (8th Cir. 2011) (discussing remedies available under the
Lanham Act and the acquiescence, estoppel, and laches defenses).
entitled to summary judgment on plaintiff’s claim that defendant infringed the
ONEPUL trademark. Therefore, defendant’s uses of “one pull,” however capitalized
or hyphenated, are non-infringing.
Similarly, plaintiff has not presented evidence to support its state law claims
of infringement, unfair competition, and dilution. Therefore, defendant is entitled
to summary judgment on those claims.
IT IS HEREBY ORDERED that plaintiff’s motion for partial summary
judgment [Doc. #74] is denied.
IT IS FURTHER ORDERED that defendant’s motion for summary judgment
[Doc. #77] is granted as to plaintiff’s claims.
IT IS FURTHER ORDERED that the defendant’s motion for summary
judgment is denied as to its counterclaim for trademark invalidity regarding
ONEPUL, and is moot as to its other counterclaims.
CAROL E. JACKSON
UNITED STATES DISTRICT JUDGE
Dated this 22nd day of September, 2016.
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