935 F.3d 1112
10th Cir.2019Background
- Affliction Holdings, LLC (apparel company) owns registered marks including an AFFLICTION word mark and a circular "Affliction LF Fleur-de-Lis" logo used on clothing and related goods.
- Utah Vap or Smoke, LLC (vaping accessories and some promotional apparel) used circular marks reading "VAPE AFFLICTION" around a right-side-up fleur-de-lis; Affliction alleged the marks created source confusion.
- Affliction sued for Lanham Act trademark infringement, false designation of origin, common-law trademark infringement/unfair competition, and a Utah unfair-competition statute, seeking damages and injunctive relief.
- Utah Vap moved for summary judgment arguing no likelihood of confusion and that Affliction failed to disclose a damages computation under Rule 26. The district court granted summary judgment for Utah Vap.
- The Tenth Circuit reviewed de novo and focused on likelihood of confusion (initial-interest and post-sale theories) and whether discovery failures barred damages evidence. The court reversed and remanded.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion between marks (initial-interest and post-sale) | Affliction: marks similar in overall marketplace impression; likely to cause initial-interest and post-sale confusion | Utah Vap: marks are distinguishable (orientation, font, different goods/channels) so no triable issue of confusion | Reversed: triable issue exists — marks are visually similar and Affliction's mark is strong, so reasonable juror could find likelihood of confusion |
| Strength of plaintiff's mark | Affliction: mark is conceptually arbitrary and commercially strong based on sales, advertising, and recognition | Utah Vap: did not seriously contest strength but relied on differences to avoid confusion finding | Court: Affliction's mark is both conceptually and commercially strong; strength weighs toward likelihood of confusion |
| Damages disclosure under Rule 26 | Affliction: initially lacked complete computation but later relied on Utah Vap revenue to calculate damages | Utah Vap: insufficient initial damages computation; evidence should be excluded | Remanded: district court has discretion to determine whether Rule 26 violation is justified/harmless and whether additional discovery on damages should be allowed |
| Injunctive relief availability | Affliction: seeks injunction contingent on proving likelihood of confusion | Utah Vap: argued no likelihood of confusion so injunctive relief inappropriate | Remanded: district court to decide injunctive relief in first instance given reversal on confusion |
Key Cases Cited
- 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229 (10th Cir.) (likelihood-of-confusion framework and pre-/post-sale confusion categories)
- Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964 (10th Cir.) (likelihood-of-confusion is a fact question sometimes suitable for summary judgment)
- King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084 (10th Cir.) (similarity of marks is the key inquiry; similarities weigh more than differences)
- Hornady Mfg., Inc. v. Doubletap, Inc., 746 F.3d 995 (10th Cir.) (degree-of-similarity and overall marketplace presentation analysis)
- Woodworker's Supply, Inc. v. Principal Mut. Life Ins. Co., 170 F.3d 985 (10th Cir.) (district court discretion in addressing Rule 26 discovery violations)