Debbie Rohn v. Viacom Int'l, Inc.
706 F. App'x 319
| 6th Cir. | 2017Background
- Debbie and Dean Rohn own two registered trademarks for "GUPPIE" and a GUPPIE logo used on children’s apparel marketed as "Guppie Kid," with total historical sales of about $12,000 and only ~$2,000 since 2005.
- Viacom operates the children’s TV show Bubble Guppies (premiered 2011) and licenses Bubble Guppies apparel to large retailers; its logo also uses a fish-like G.
- The Rohns sued Viacom and retailers for trademark infringement, alleging likelihood of consumer confusion between Guppie Kid and Bubble Guppies apparel.
- The district court granted summary judgment for Viacom; the Rohns appealed to the Sixth Circuit.
- The Sixth Circuit reviewed de novo and evaluated likelihood of confusion, focusing on mark strength (conceptual and commercial) and evidence of actual confusion.
- Court found the Rohns’ marks conceptually distinctive but commercially weak/nearly unknown to consumers; no evidence of actual confusion; incontestability rebutted by commercial weakness.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Bubble Guppies apparel infringes Guppie Kid marks (likelihood of confusion) | Rohns: marks are protectable and similar; consumers likely to confuse products | Viacom: Rohns’ marks are commercially weak/virtually unknown so confusion unlikely | No infringement; summary judgment for Viacom affirmed |
| Effect of incontestable status of Rohns’ registrations | Rohns: incontestability conclusively proves mark strength | Viacom: incontestability creates only a presumption, rebuttable by evidence of weakness | Incontestability is a rebuttable presumption; commercial weakness rebuts it |
| Reverse confusion theory applicability | Rohns: weak mark favors reverse confusion claim because defendant saturated market | Viacom: Rohns’ mark is essentially nonexistent, so no practical risk of consumer confusion | Reverse confusion not supported where mark is virtually unknown; no reverse confusion proof |
| Relevance of similar logo elements (fish-tail G) | Rohns: shared piscine G and logo similarities support likelihood of confusion | Viacom: similarity alone insufficient without evidence consumers know Rohns’ mark or were confused | Similarity insufficient without evidence of consumer awareness or confusion; no jury could find confusion |
Key Cases Cited
- Richmond v. Huq, 872 F.3d 355 (6th Cir. 2017) (standard of de novo review and summary judgment principles)
- Progressive Distrib. Servs., Inc. v. United Parcel Servs., Inc., 856 F.3d 416 (6th Cir. 2017) (likelihood-of-confusion factors; conceptual and commercial strength explained)
- Ameritech, Inc. v. Am. Info. Tech. Corp., 811 F.2d 960 (6th Cir. 1987) (reverse confusion doctrine explained)
- Homeowners Grp., Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100 (6th Cir. 1991) (ultimate issue is whether consumers are likely to believe brands are related)