Drew Estate Holding Co. v. Fantasia Distribution, Inc.
875 F. Supp. 2d 1360
S.D. Fla.2012Background
- Drew moved for summary judgment on its unfair competition claim under the Lanham Act against Fantasia.
- Drew holds the ACID mark via exclusive license from Morfiya for cigars and related products; Morfiya owns the ACID marks '808 and '647.
- Drew licensed Starbuzz to produce ACID hookah tobacco; Fantasia sought to register SURFER ON ACID for hookah tobacco.
- Fantasia applied for SURFER ON ACID in 2010 and marketed it as a separate line; Drew asserted priority and likelihood of confusion with ACID cigars.
- The court has previously held ACID has priority over SURFER ON ACID and applied the natural expansion/source-sponsorship doctrine to include hookah within Drew’s protection.
- The motion was granted because the court found standing, priority, and likelihood of confusion in Drew’s favor.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Standing to sue over the ACID mark | Drew, as exclusive licensee, has standing to enforce the ACID mark | Fantasia argues Drew’s license does not prove exclusive rights | Drew has standing to sue for rights in ACID mark |
| Priority of Drew’s ACID mark in hookah tobacco | ACID has priority; natural expansion covers hookah tobacco | Fantasia disputes hookah as within priority scope | ACID has priority in hookah products as within natural expansion/ source-sponsorship |
| Likelihood of confusion between ACID and SURFER ON ACID | Marks similar; same industry; potential consumer confusion | Surfer on Acid is distinct; no confusion | Likelihood of confusion established; injunction granted |
| Weight of the Partridge expert report | Partridge supports no confusion | Partridge is admissible expert testimony | Partridge report given little weight; not dispositive |
| Use of judicial estoppel against Fantasia | Fantasia previously claimed similarity with ACID; estoppel applies | Judicial estoppel does not apply here | No definitive estoppel effects alter the conclusion; still, marks are considered similar |
Key Cases Cited
- Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 122 F.3d 1379 (11th Cir.1997) (elements for trademark infringement and confusion)
- Davidoff & CIE, S.A. v. PLD Int’l Corp., 263 F.3d 1297 (11th Cir.2001) (similarity and likelihood of confusion test)
- Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188 (11th Cir.2001) (natural expansion/source-sponsorship test; confusion factors)
- E. Remy Martin & Co., S.A. v. Shaw-Ross Int’l Imports, Inc., 756 F.2d 1525 (11th Cir.1985) (brandies and cognac analogies for source attribution)
- Celotex Corp. v. Catrett, 477 U.S. 317 (1986) (summary judgment burden-shifting and absence of genuine issues of material fact)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) (materiality and genuine issue standard for summary judgment)