Sterling Jewelers, Inc. v. Artistry Ltd.
Memorandum of Opinion and Order. Based on the evidence and the record, the Court finds no likelihood of confusion. Therefore, summary judgment is Granted in favor of Sterling. Having found no likelihood of confusion, Sterling's trademar ks are valid and subsisting. Because summary judgment has been granted on the issue of confusion, Limited's counterclaims are without merit and the Court need not reach the issues of laches and damages. See Order for complete details. Judge John R. Adams on 09/26/2017. Related document 46 .(M,TL)
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF OHIO
STERLING JEWELERS INC.,
CASE NO. 5:14-CV-1369-JRA
JUDGE JOHN R. ADAMS
MEMORANDUM OF OPINION
This matter comes before the Court on the Motion for Summary Judgment of
Plaintiff/Counterclaim Defendant Sterling Jewelers, Inc. (“Sterling”). Sterling seeks resolution of
its own declaratory judgment claim as well as the counterclaims of Defendant/Counterclaimant
Artistry, Ltd. (“Limited”). The Court has reviewed the parties’ pleadings, motion, opposition,
reply, exhibits, and applicable law. For the reasons that follow, Sterling’s motion is GRANTED.
Sterling is one of the largest retail jewelers in the United States, headquartered in Akron,
Ohio. Sterling’s retail operations include more than 3,000 stores operating nationwide under
various names including Kay Jewelers, Zales, Jared the Galleria of Jewelry, as well as several
regional brands such as Shaw’s Jewelers, Belden Jewelers, and Goodman Jewelers. Sterling
markets itself to retail customers as providing a full range of jewelry from lower-priced everyday
items to items listed for several thousand dollars. Sterling primarily develops its product lines inhouse and designs much of its own product. Sterling sources directly from manufacturers, does
not deal with jewelry wholesalers, and does not wholesale its own products. Sterling owns and
operates its variously named stores and its website, selling directly to end user consumers. Sterling
markets extensively to consumers via television, radio, internet advertising (including digital
banner and key word advertisements as well as multiplatform social media activities), catalogs,
direct mail, point of purchase advertising, and consumer magazines.
Limited is a comparatively small jewelry wholesaler headquartered in Skokie, Illinois.
Limited has operated under the “Artistry, Ltd.” name since 1982. Limited markets its products to
retailers as a private label brand. Limited purchases unbranded jewelry from manufacturers for
sale to independent jewelry retailers, who may in turn apply their own brand or mark to the product.
Limited products are sold in hundreds of retail jewelry stores nationally, but Limited discourages
the use of “Artistry” or “Artistry, Ltd.” in conjunction with its products. When Limited’s products
are required by law to have an identifying mark, Limited uses “LLK,” the initials of its founder
and president, Laura Klemt (“L. Klemt”), not “Artistry” or “Artistry, Ltd.”
Limited markets itself to industry participants at industry trade shows, in industry
publications, and through its own website. Limited will not sell to retail consumers. To obtain a
copy of Limited’s printed catalogue, a company or individual must be listed with the Jewelers
Board of Trade and vetted by the employees of Limited for creditworthiness and to confirm they
are actually a retailer capable of purchasing inventory. Although Limited maintains a website,
images of its products are not available on the site to end user consumers. Limited engages in
targeted email marketing through email blasts to its curated customer list of retailers who purchase
its products for resale. Limited considers its customers more “up market” than Kay Jewelers and
explains that they “don’t want to be associated with a mainstream mall brand” and, as such, an
association with Sterling or Kay is unhelpful to Limited. Doc. 47-2, p. 22-23, 31.
Sterling began using the “Artistry Diamond Collection” to market diamond bridal jewelry
in 2007 and registered the trademark with the United States Patent and Trademark Office
(“USPTO”) in June of 2009.
Initially the “Artistry Diamond Collection” was offered in
approximately fifty Kay Jewelers branded stores.
Sales were later expanded, but Sterling
discontinued the line after obtaining the trademark. The 2009 registration was subsequently
cancelled by the USPTO due to Sterling’s failure to file a declaration of continued use under
Section 8 of the Lanham Act. In 2012, Sterling sought and obtained additional trademark
registrations using “artistry,” including: Artistry Blue Diamonds, Artistry Black Diamonds,
Artistry Yellow Diamonds, Artistry Purple Diamonds, and Artistry Green Diamonds. Sterling
then launched what would become over the following years a $20 million national advertising
campaign. By 2013, Artistry products were sold in Kay Jewelers locations nationwide. L. Klemt
became aware of Sterling’s use of “Artistry” due to its national ad campaign during the 2013
In June of 2014, Limited sent a letter to Sterling’s counsel informing Sterling of Limited’s
senior use of “artistry.” At that time, Limited also sought cancellation of Sterling’s 2009
registration. On June 23, 2014, without responding to Limited’s letter, Sterling filed the instant
suit seeking a declaratory judgment that Sterling was not infringing on Limited’s existing rights.
Limited answered and counterclaimed that Sterling was infringing on its trademark. Limited seeks
relief under the Lanham Act and Ohio law. Limited also seeks the cancellation of Sterling’s
trademark registrations and an award of damages including Sterling’s profits, among other
Sterling contends summary judgment is merited on three issues: 1) Sterling’s request for
declaratory judgment; 2) Sterling’s laches defense; and 3) Limited’s request for damages including
an award of Sterling’s profits. Limited opposes the motion and Sterling has further replied in
support. The matter is now ripe for the Court’s review.
II. Legal Standard
Summary judgment is appropriate when the “pleadings, depositions, answers to
interrogatories and admissions on file, together with the affidavits, if any, show that there is no
genuine issue of material fact and that the moving party is entitled to judgment as a matter of law.”
Estate of Smithers v. City of Flint, 602 F.3d 758, 761 (6th Cir. 2010). A fact must be essential to
the outcome of a lawsuit to be “material.” Anderson v. Liberty Lobby Inc., 477 U.S. 242, 248
(1986). Summary judgment will be entered when a party fails to make a “showing sufficient to
establish . . . an element essential to that party’s case.” Celotex Corp. v. Catrett, 477 U.S. 317,
322-323 (1986). “Mere conclusory and unsupported allegations, rooted in speculation, do not meet
[the] burden.” Bell v. Ohio State Univ., 351 F.3d 240, 253 (6th Cir. 2003).
Summary judgment creates a burden-shifting framework. Anderson, 477 U.S. at 250. The
moving party has the initial burden of showing there is no genuine issue of material fact. Plant v.
Morton Int’l, Inc., 212 F.3d 929, 934 (6th Cir. 2000). When evaluating a motion for summary
judgment, the Court construes the evidence and draws all reasonable inferences in the light most
favorable to the non-moving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S.
574, 587 (1986). The non-moving party may not simply rely on its pleadings; rather it must
“produce evidence that results in a conflict of material fact to be resolved by a jury.” Cox v.
Kentucky Dep’t of Transp., 53 F.3d 146, 150 (6th Cir. 1996). A party seeking summary judgment
in a case alleging trademark infringement “must establish that a genuine issue of material fact
exists concerning those factors that are material to whether confusion is likely in the marketplace
as a result of the alleged infringement.” Holiday Inns, Inc. v. 800 Reservations, Inc., 86 F.3d 619,
622-623 (6th Cir. 1996).
III. Law and Analysis
Sterling’s complaint seeks declaratory judgment stating that Sterling has not infringed upon
Limited’s existing rights. Limited’s counterclaims fall under Section 43(a) of the Lanham Act, 15
U.S.C. § 1125(a); Ohio Deceptive Trade Practices Act, Ohio Rev. Code § 4165.02; and Ohio
common law. Likelihood of confusion is a required element of all claims. Sterling moves for
summary judgment on the ground that there exists no likelihood of confusion.
The parties agree that their competing claims turn on a likelihood of confusion analysis
under the eight factors set forth in Frisch’s Rests. Inc. v. Elby’s Big Boy of Steubenville, Inc., 670
F.2d 642 (6th Cir. 1982). The eight factors are:
(1) strength of the senior use’s mark;
(2) relatedness of the goods;
(3) similarity of the marks;
(4) evidence of actual confusion;
(5) marketing channels used;
(6) likely degree of purchaser care;
(7) the junior user’s intent in selecting the mark; and
(8) the likelihood of expansion of the product lines.
Frisch’s Rests. Inc. 670 F.2d at 648. “Not all of these factors will be relevant in every case, and
in the course of applying them, ‘the ultimate question remains whether relevant consumers are
likely to believe that the products or services offered by the parties are affiliated in some way.’”
Progressive Distribution Services, Inc. v. United Parcel Service, Inc., 856 F.3d 416, 424 (6th Cir.
2017), quoting Homeowners Grp., Inc. v. Home Mkg. Specialists, Inc., 931 F.2d 1100, 1107 (6th
Cir. 1991). The factors themselves “imply no mathematical precision, but are simply a guide to
help determine whether confusion is likely.” Homeowners Grp., 931 F.2d at 1107.
The Sixth Circuit “considers the question of whether there is a likelihood of confusion to
be a mixed question of fact and law.” Progressive Distribution Services, 856 F.3d at 427. “Any
dispute about the evidence that pertains to the eight factors presents a factual issue.” Id. “If the
facts relevant to the applicable factors are contested, factual findings must be made with respect
to each of these factors.” Data Concepts, Inc. v. Digital Consulting, Inc., 150 F.3d 620, 624 (6th
Cir. 1998) abrogated on other grounds by Hana Fin., Inc. v. Hana Bank, --- U.S. ---, 135 S.Ct.
907, 190 L.Ed.2d 800 (2015). Determination of whether “a given set of foundational facts
establishes a likelihood of confusion is a legal question.” Progressive Distribution Services, 856
F.3d at 427, quoting Homeowners Grp., Inc. 931 F.2d at 1107. To survive a summary judgment
motion on the likelihood of confusion, the nonmoving party must identify factors in dispute that
may be material to the case. Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931
F.2d at 1107. One factor alone in favor of the nonmoving party is not enough to resist summary
The parties initially characterized the relevant market and analysis differently. Sterling
contends, pursuant to Maker’s Mark Distillery, Inc. v. Diageo N. Am., Inc., 679 F.3d 410 (6th Cir.
2012), that the relevant analysis is of the strength of Limited’s mark among the general public as
potential buyers of Sterling’s junior product. In contrast, Limited argues that it raises a “reverse
confusion” claim that is distinct from conventional confusion and requires a different analysis:
A reverse confusion claim differs from the stereotypical confusion of source or
sponsorship claim. Rather than seeking to profit from the goodwill captured in the
senior user’s trademark, the junior user saturates the market with a similar
trademark and overwhelms the senior user. The public comes to assume the senior
user’s products are really the junior user’s or that the former has become somehow
connected to the latter. The result is that the senior user loses the value of the
trademark—its product identity, corporate identity, control over its goodwill and
reputation, and ability to move into new markets.
Ameritech, Inc. v. Am. Info. Techs. Corp., 811 F.2d 960, 964 (6th Cir. 1987). Thus, according to
Limited, the relevant market is not Sterling’s end user consumers, but Limited’s independent
retailers and the relevant inquiry is the strength of Sterling’s junior mark and its ability to
“overpower” Limited’s senior mark in that market.
Sterling acknowledges the difference between a conventional infringement claim and
Limited’s reverse claim and has replied to Limited’s arguments addressing the relevant market –
Limited’s current and potential industry customers. The Sixth Circuit, however, has rejected the
distinction between “forward and reverse” confusion claims on which Limited relies. “[W]hile
certain circuits have adopted a different test for claims for forward and reverse confusion, the Sixth
Circuit is not one of them.” Progressive Distribution, 856 F.3d at 431. Instead, the Sixth Circuit
Rather, this Court explicitly stated that “the stronger a trademark, the greater the
protection afforded.” Our basis for reversing the district court’s dismissal of
plaintiff’s reverse confusion claim in Ameritech was our recognition that a mark
“might be weak in the national market, but might still be strong in the senior user’s
geographical and product area and thus deserving of protection.”
Progressive Distribution, 856 F.3d at 431. Thus, Limited’s formulation of the appropriate inquiry
with regard to the strength of Sterling’s mark is flawed. The relevant inquiry is the strength of
Limited’s mark, not Sterling’s ability to overpower it. Id. This Court will address Limited’s
reverse confusion claim as the Sixth Circuit directs, by evaluating the strength of Limited’s mark
in its segment of the industry.
1. Strength of the Marks
According to the Sixth Circuit, the strength evaluation “encompasses two separate
components: ‘(1) ‘conceptual strength,’ or ‘placement of the mark on the spectrum of marks,’
which encapsulates the question of inherent distinctiveness; and (2) ‘commercial strength’ or ‘the
marketplace recognition value of the mark.’” Progressive Distribution, 856 F.3d at 428, quoting
Maker’s Mark, 679 F.3d at 419.
(a) Conceptual Strength
“The more distinct a mark, the more likely is the confusion resulting from its infringement,
and therefore, the more protection it is due.” Daddy’s Junky Music Stores, Inc. v. Big Daddy’s
Family Music Ctr., 109 F.3d 275, 280 (6th Cir. 1997). A mark’s distinctiveness and resulting
conceptual strength “depends partly upon which of four categories it occupies: generic,
descriptive, suggestive, and fanciful or arbitrary.” Therma-Scan, Inc. v. Thermoscan, Inc., 295
F.3d 623, 631 (6th Cir. 2002) (internal quotation marks omitted).
A descriptive mark “specifically describes a characteristic or ingredient of an article,”
while an arbitrary mark “has significance recognized in everyday life, but the thing it normally
signifies is unrelated to the product or service to which the mark is attached, such as CAMEL
cigarettes or APPLE computers.” Id. (internal quotations and brackets omitted). “A descriptive
mark, by itself, is not protectable.” Innovation Ventures, L.L.C. v. N.V.E., Inc., 694 F.3d 723, 730
(6th Cir. 2012). A “merely descriptive” term can “by acquiring a secondary meaning, i.e.,
becoming distinctive of the applicant’s goods, become a valid trademark.” Id. (internal quotation
marks and ellipses omitted).
Neither party directly addresses the distinctiveness of “artistry” as a trademark. Although
no proof of distinctiveness was required by the USPTO, Limited argues that the existence of
Sterling’s multiple trademarks for “artistry” proves ipso facto that “artistry” is protectable and
strong. Sterling, without discussing distinctiveness, emphasizes the presence of third parties who
use “artistry” in their jewelry business names and promotional materials. Limited objects to the
sources of Sterling’s information on third party use but does not offer any evidence of defect or
inaccuracy in the information and has not filed any motion necessary to exclude the reports.
Limited cites Lucky’s Detroit, L.L.C. v. Double L, Inc., 533 Fed. Appx. 553, 557 (6th Cir. 2013),
in support of its contention that the information offered by Sterling is insufficient. However,
Limited omits the relevant portion of the quote, which reads in its entirety: “Merely showing the
existence of marks in the records of the USPTO will not materially affect the distinctiveness of
another’s mark which is actively used in commerce.” Id. (italicized portion omitted by Limited).
In Lucky’s Detroit the issue was lists of third party users who were not demonstrated to be in the
relevant southeast Michigan market. The particular concerns in play in Lucky’s Detroit are absent
here. Limited claims a nationwide presence in the jewelry retail industry, and the material
presented by Sterling addresses the jewelry industry and existing operators within it. Moreover,
the Sixth Circuit accepts the use of internet searches, in the proper context, to demonstrate third
party use. See, e.g., Progressive Distribution, 856 F.3d at 427-431.
Sterling has produced material demonstrating the current use of “artistry” throughout the
United States to sell or promote jewelry or other high end consumer goods, including at least
twenty-three active businesses using “artistry” in a company name, product name, or advertising
campaign related to jewelry. Limited admits to knowledge of at least three third-party users, one
in California, one in Illinois, and one, “Artistry in Gold,” among its own clientele. The Sixth
Circuit recognizes evidence of “‘extensive third party use of similar marks’” to show that a mark
is not distinctive, explaining that “third party use weakens a mark because the mark is not an
identifier for a single source.” Progressive Distribution, 856 F.3d at 429, quoting AutoZone, Inc.
v. Tandy Corp., 373 F.3d 786 (6th Cir. 2004).
Limited has produced nothing to demonstrate the distinctiveness of its claimed senior mark
and similarly offers nothing to contradict the material presented by Sterling. Accordingly, the
Court finds the conceptual strength of “artistry” as a trademark in connection with the sale of
jewelry is weak.
(b) Commercial Strength
The strength analysis does not end with the “existence or non-existence of distinctiveness”
because “[a] mark can be conceptually strong without being commercially strong, and thus weak
under Frisch.” Progressive Distribution, 856 F.3d at 430 (internal quotation marks omitted). A
mark’s commercial strength “depends on public recognition, or the extent to which people
associate the mark with the product it announces.” Maker’s Mark, 679 F.3d at 419.
The Sixth Circuit generally considers survey evidence the “most persuasive evidence of
commercial recognition . . . however it is by no means a requirement. Proof of marketing may be
sufficient to support a finding of broad public recognition.” Progressive Distribution, 856 F.3d at
430 (internal quotation marks omitted). “Conversely, proof that third parties have extensively
used a trademark or similar trademarks in the relevant market may indicate that the trademark is
commercially weak.” Id. citing Homeowners Grp., 931 F.2d at 1108.
In opposition to Sterling’s motion for summary judgment, Limited states without citation
to the record or supporting material:
Artistry, Ltd., however, has spent many hundreds of thousands of dollars
advertising and promoting its products and services to its customers in the retail
jewelry trade, and the evidence supports the conclusion that Artistry Ltd. is wellknown to its customers and potential customers in that market.
Doc. 51, p. 12. In the absence of any material produced by Limited in support of its market
recognition or actual advertising expenditure, this Court is again left with contradicted evidence
that use of “artistry” is far from unique in the jewelry business, including among Limited’s clients.
Accordingly, in the absence of supporting evidence, this Court finds that “artistry” when used in
connection with jewelry is commercially weak. Progressive Distribution, 856 F.3d at 430
(“Despite its assertions of an extensive internet presence, Progressive provides only minimal
evidence to support its statements. In fact, the only evidence in the record that exists which can
speak to Progressive’s commercial presence is the aggregate sum of Progressive’s advertising
costs. But that by itself is not enough to avoid summary judgment.”). Having determined that
“artistry” is both conceptually and commercially weak, the Court concludes the strength factor
weighs against a finding of likelihood of confusion.
Relatedness of the Goods
The Sixth Circuit has established three benchmarks to consider when evaluating the
relatedness of parties’ goods and services. “First, if the parties compete directly, confusion is
likely if the marks are sufficiently similar; second, if the goods and services are somewhat related,
but not competitive, then the likelihood of confusion will turn on other factors; finally if the
products are unrelated, confusion is highly unlikely.” Kellogg Co. v. Toucan Gold, Inc., 337 F.3d
616, 624 (6th Cir. 2003). Goods and services are not necessarily related simply because they
“coexist in the same broad industry.” Homeowners Grp., 931 F.2d at 1109. The relatedness
inquiry focuses on whether goods and services are “similarly marketed and appeal to common
customers” and are therefore “likely to lead consumers to believe that they ‘come from the same
source, or are somehow connected with or sponsored by the same company.’” Terma-scan, 265
F.3d at 633, quoting Homeowners Grp., 931 F.2d at 1109.
While both parties sell jewelry, the Sixth Circuit directs this Court to focus on whether
parties compete directly for a common customer. The Court finds they do not. Limited is a
wholesaler who refuses to sell directly to end user consumers and operates no retail stores. Sterling
sells only to end users via its variously named retail stores and website. Limited suggests, without
supporting evidence, that some of Sterling’s smaller regional branded locations may also offer
Limited’s products. Sterling has clarified that none of its variously branded retail stores carry
outside product. Sterling markets, extensively, to the general public via print, digital, and
broadcast advertisements. Limited markets exclusively to trade participants via trade shows and
trade publications; Limited further vets inquiries to ensure companies or individuals are listed with
the Jewelers Board of Trade and creditworthy. Although they offer distinct goods and services to
a completely different customer base, it is true that a prospective trade customer could be aware
of Sterling’s use of “artistry” and wonder whether Limited was supplying Sterling. Thus, drawing
every possible inference in favor of Limited, the Court finds this factor is neutral.
Similarity of the Marks
In determining the similarity of trademarks, the Court “must determine, in the light of what
occurs in the marketplace, whether the mark will be confusing to the public when singly
presented.” Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1187 (6th Cir. 1988). Sterling argues that
its use of “artistry” is always accompanied by the well-known trademarks of its stores, including
Kay Jewelers, and that the use of a challenged junior mark with a strong existing mark or
tradename makes confusion less likely. Limited urges the Court to simply view the marks side by
side and ignore the Sixth Circuit’s preference for a much “broader” inquiry “inasmuch as we are
obligated to evaluate the marks as they appear in commerce—not just as they appear in black and
white.” Progressive Distribution Services, 856 F.3d at 433. Limited cites Tovey v. Nike, Inc., No.
1:12CV448, 2014 WL 3510975 (N.D. Ohio. July 10, 2014), and J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition § 23:10, for the proposition that use of a junior mark along
with an existing house mark may be more, not less, confusing.
The Sixth Circuit disagrees. “As this Court has already stated in AutoZone, Inc., 373 F.3d
at 797, the inclusion of a house mark can reduce the likelihood of confusion from any similarity
that does exist. This is especially true when one mark—namely that of UPS—is so easily
recognizable and associated with a strong and popular brand . . . .” Progressive Distribution, 856
F.3d at 433. The circumstances here—a smaller company who operates in a specific market and
a well-established national brand that always appears with the challenged mark—are similar to
those in Progressive. Moreover, as this Court previously noted, Sterling’s advertising is directed
at end users and promotes a specific line of colored diamond jewelry available at its retail stores,
unlike “Artistry, Ltd.” which is a wholesale company name, not a separately promoted product
line. Because the market context for each mark is dissimilar, it does not appear that the marks are
“confusing to the public when singly presented.” Id. (internal quotation marks omitted). Thus,
this factor militates against finding there is a likelihood of confusion.
Evidence of Actual Confusion
“Nothing shows the likelihood of confusion more than the fact of actual confusion.”
Groeneveld Transport Efficiency, Inc. v. Lubecore Intern., Inc., 730 F.3d 494, 517 (6th Cir. 2013).
Yet, evidence of actual consumer confusion is not necessary to show likelihood of confusion. See
Frisch’s Restaurant, Inc., 759 F.2d at 1267. Even where confusion exists, “isolated instances of
confusion are insufficient to support a finding of likely confusion.” Progressive Distribution, 856
F.3d at 433.
Sterling contends that eleven instances of alleged confusion during the nine year period of
Sterling’s use of various “artistry” marks is insignificant.
Limited states that Sterling
mischaracterizes “numerous” instances of confusion but offers no numbers or details in support of
this representation. The portions of the L. Klemt transcript Limited cites name four individuals
who L. Klemt remembers having asked whether Limited had a relationship with Sterling or Kay.
Susan Klemt, who oversees many of Limited’s daily operations, references some of the same
names, and describes additional conversations. Taken together, the testimony appears to identify
eleven interactions in which Sterling was mentioned. Some of the referenced conversations do not
deal with actual confusion. At least one individual knew the two were not affiliated and another
emailed an inquiry with a picture of a white gold ring that was a Sterling product. Limited’s
records of these interactions continue into 2016, three years after the most recent use of “artistry”
by Sterling, after the $20 million in advertising was spent, and after artistry colored diamonds were
offered in 1,000 Kay branded stores nationwide.
Under similar circumstances the Sixth Circuit states: “We believe that if there are a large
volume of contacts or transactions, which could give rise to confusion, and only limited instances
of confusion present themselves, then evidence of actual confusion should receive little weight.”
Id. citing McCarthy, supra, § 23:14 and George & Co., L.L.C. v. Imagination Entertainment, Ltd.,
575 F.3d 383, 399 (4th Cir. 2009) (“[T]he company’s failure to uncover more than a few instances
of actual confusion creates a presumption against likelihood of confusion in the future” when there
are so many opportunities for confusion to occur.) (internal citations omitted). Given the record
before the Court, this factor weighs against a finding of likelihood of confusion.
To determine marketing channels, this Court must consider “how and to whom the
respective goods or services of the parties are sold.” Leelanau Wine Cellars, Ltd. v. Black & Red,
Inc., 502 F.3d 504, 519 (6th Cir. 2007). There is less likelihood of confusion where the goods are
sold through different avenues. Id. “Where the parties have different customers and market their
goods or services in different ways, the likelihood of confusion [also] decreases.” Therma-Scan,
295 F.3d at 636. Sterling and Limited admittedly use vastly different forms of marketing. Sterling
uses all media, nationwide; Limited specifically targets industry participants and will not sell to
end users. Nevertheless, Limited contends, because Sterling’s broad, nationwide, consumer
directed efforts inevitably reach Limited’s own customers due to their ubiquity, a jury could find
likelihood of confusion. Limited offers no case law in support of its argument. Sterling cites
several cases. This Court finds Homeowners Group, Inc. v. Home Marketing Specialists, Inc.,
particularly helpful on the subject:
Obviously, dissimilarities between the predominant customers of a plaintiff’s and
defendant’s goods or services lessens the possibility of confusion, mistake, or
deception. Likewise if the services of one party are sold through different
marketing media in a different marketing context than those of another seller, the
likelihood that either group of buyers will be confused by similar service marks is
much lower than if both parties sell their services through the same channels of
trade. As one commentator has noted:
If one mark user sells exclusively at retail and the other exclusively
to commercial buyers, then there may be little likelihood of
confusion since no one buyer ever buys both products. For example,
if one user sells food only at retail to consumers and the other sells
only to commercial food brokers (and the product never reaches
consumers under the mark), then there is no one buyer who will be
faced with both products, and hence no confusion.
Homeowners Grp., 931 F.2d at 1110, quoting McCarthy, supra, at § 24:7, 190-91 (2nd Ed.1984).
In Homeowners, the court was faced with two marks, both used the letters “HMS” with a
rooftop design. The first company marketed to real estate brokers and targeted its marketing to
that commercial group. The second company sold exclusively to the owners of real estate who
might consider selling their property. Naturally, it was likely that any number of real estate brokers
would see the consumer service marketed in the real estate section of newspapers. Despite this
reality, the Sixth Circuit concluded it was apparent that the two companies market and sell to
different sets of potential customers with little, if any, overlap in media used. The circumstances
in Homeowners are precisely the circumstances here. Accordingly, this Court finds the parties’
marketing channels are distinct and do not contribute to a likelihood of confusion.
Likely degree of purchaser care
“Generally, the standard for determining whether a likelihood of confusion would arise is
predicated upon an ordinary buyer exercising ordinary caution.” Progressive Distribution, 856
F.3d at 435. A “higher degree of care, in contrast, is appropriate where the buyer in question has
a particular expertise or sophistication.” Homeowners Grp., 931 F.2d at 1111. “This expectation
of greater attention, where appropriate, diminishes the likelihood of confusion.” Therma-Scan, 295
F.3d at 638.
Sterling argues that individuals making fine jewelry purchases are particularly attentive to
such transactions due to the large sums of money involved. Limited abandons its argument that
the appropriate consumer to evaluate is its own independent retail operator and instead states that
individuals buying mall jewelry store items for less than fifty dollars are unlikely to exercise
“substantial care.” Doc. 51, p. 21. Bearing in mind Limited’s reverse confusion claims, the
relevant buyer is an independent retailer purchasing inventory from Limited, not the optimistic
boyfriend in a mall jewelry store. Limited has described its customers as discerning, higher end,
independent retailers. It further vets their professional affiliations and creditworthiness before it
will send a catalogue. Clearly, Limited anticipates high value transactions for its offerings from
sophisticated business buyers. The Limited customer is exactly the consumer the Sixth Circuit
expects to exhibit a greater degree of care and attention to commercial purchases. For these
reasons this factor weighs against likelihood of confusion.
Intent when selecting the mark.
Courts have held that “[i]f a party chooses a mark with the intention of creating confusion
between its products and those of another company, ‘that fact alone may be sufficient to justify an
inference of confusing similarity.’” Therma-Scan, 295 F.3d at 638, quoting Daddy’s Junky Music
Stores, Inc., 109 F.3d at 286. Circumstantial evidence of copying, particularly the use of a
contested mark with knowledge that the mark is protected, may be sufficient to support an
inference of intentional infringement where direct evidence is not available. Id. at 638–39.
However, knowledge of a trademark alone will not support a finding of intent to confuse if other
circumstances show that the defendant believed there was no infringement. See AutoZone, Inc.,
373 F.3d at 800. Moreover, a finding of “bad-faith intent to infringe upon another mark may not
increase the likelihood of confusion if the other seven factors suggest that confusion is
improbable.” Id. at 799.
Sterling states that it was unaware of Limited and its business when it selected “artistry” to
use in connection with diamond jewelry. Limited has placed nothing in the record that contradicts
this representation. Limited contends that some degree of bad faith should be imputed in the
alleged insufficiency of Sterling’s research when seeking trademark registrations and in Sterling’s
continued use of the mark after filing suit. Limited’s arguments do not address the relevant inquiry
identified by the Sixth Circuit. The Court also notes that Limited never took action to restrain
Sterling’s use of the mark during the pendency of this suit. Nothing in this record suggests an
intention to create confusion or copying that would support a finding of bad-faith intent.
Accordingly, in the absence of material probative of bad-faith intent, the Court concludes that this
factor weighs against finding a likelihood of confusion.
Expansion of product lines
There is no evidence in the record that either party intends to expand its operations or
services with respect to the competing marks. Sterling states that it does not intend to operate a
wholesale business; Limited does not intend to use “artistry” for retail sales. Accordingly, the
Court does not consider this factor.
Summary of factors
When applying the Frisch factors, “[t]he ultimate question remains whether relevant
consumers are likely to believe that the products or services offered by the parties are affiliated in
some way.” Homeowners Grp., 931 F.2d at 1107. The factors “imply no mathematical precision,
but are simply a guide to help determine whether confusion is likely.” Id. “A court may find that
at least one factor favors the nonmoving party while ultimately concluding that the disputed factor
is not sufficient to preclude summary judgment.” Progressive Distribution, 856 F.3d at 436
(internal quotation marks omitted). The balance of the factors, including those identified by the
Sixth Circuit as the most significant—the strength of the mark and the similarity of the marks—
favor Sterling. Maker’s Mark, 679 F.3d at 424 (highlighting the most important factors in a
likelihood of confusion analysis). Accordingly, summary judgment is appropriate.
Based on the evidence and the record, the Court finds no likelihood of confusion.
Therefore, summary judgment is GRANTED in favor of Sterling. Having found no likelihood of
confusion, Sterling’s trademarks are valid and subsisting. Because summary judgment has been
granted on the issue of confusion, Limited’s counterclaims are without merit and the Court need
not reach the issues of laches and damages.
IT IS SO ORDERED.
/s/ John R. Adams
JUDGE JOHN R. ADAMS
UNITED STATES DISTRICT COURT
Date: September 26, 2017
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