944 F.3d 649
7th Cir.2019Background
- Two non-competing family businesses used the surname mark “Fabick.” Fabick, Inc. (FI) manufactured polyurethane/polyurea sealants and registered the FABICK mark in the 1990s; JFTCO (a Caterpillar dealer subsidiary using “Fabick CAT”) rebranded after acquiring FABCO in 2015.
- FI sued JFTCO in 2016 for trademark infringement asserting a reverse-confusion Lanham Act claim (and common-law infringement). JFTCO defended on prior-use grounds.
- The jury found JFTCO liable under the Lanham Act (reverse confusion) but rejected FI’s common-law infringement claim and JFTCO’s prior-use defense.
- The district court denied FI’s request for JFTCO’s profits and denied a broad permanent injunction; instead it ordered limited disclaimers/notice measures for five years.
- FI appealed the remedies ruling; JFTCO cross-appealed challenging the jury instruction and JMOL denials. The Seventh Circuit affirmed on all issues, upholding the jury instructions, the denial of JMOL on prior use and likelihood of confusion, and the district court’s remedy choices.
Issues
| Issue | Plaintiff's Argument (FI) | Defendant's Argument (JFTCO) | Held |
|---|---|---|---|
| Jury instruction on reverse confusion | Instruction should allow finding liability where junior user’s use causes public to think senior user is connected to junior user | Instruction was erroneous because it permitted liability for generalized confusion beyond origin/sponsorship confusion | Court upheld the modified instruction; read in context it properly addressed reverse confusion (confusion as to source/connection) and did not allow mere "general confusion" claims |
| Prior-use defense (JMOL) | FI argued JFTCO was not the senior user in the relevant region and the jury could find JFTCO failed to prove continuous, public use | JFTCO argued it (or parent/privity) used FABICK prior to FI’s registration and continuously in the region, so JMOL should be entered for JFTCO | Court denied JMOL; reasonable jury could discredit JFTCO’s evidence of continuous regional use and find prior-use unproven |
| Likelihood of confusion (JMOL) | FI relied on reverse-confusion theory and substantial evidence of actual confusion (240+ instances) | JFTCO argued marks/products differ, customers are sophisticated, and confusion evidence was insufficient or limited to JFTCO’s customers | Court affirmed jury verdict; record (same uncommon surname, overlap in channels/use, many actual confusion instances) supports a reasonable finding of likelihood of confusion |
| Remedies: profits and injunction | FI argued statutory entitlement to defendant’s profits and sought a sweeping permanent injunction barring JFTCO’s use of “Fabick” | JFTCO argued profits inappropriate in reverse-confusion context and permanent bar is overbroad given related family history and limited harm shown | Court affirmed district court: denied profits award (no evidence/ theory of unjust enrichment/bad faith) and upheld limited, tailored injunctive relief (five-year disclaimers), not an across-the-board ban |
Key Cases Cited
- Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947 (7th Cir. 1992) (articulates reverse-confusion theory and senior-user injury when junior user’s market saturation causes consumers to think senior user is connected to junior user)
- Fortres Grand Corp. v. Warner Bros. Ent. Inc., 763 F.3d 696 (7th Cir. 2014) (trademark liability requires confusion about origin, sponsorship, or approval—not mere generalized confusion)
- Int’l Kennel Club of Chicago, Inc. v. Mighty Star, Inc., 846 F.2d 1079 (7th Cir. 1988) (senior user may show irreparable harm from loss of control over mark even without demonstrated lost sales)
- Berghoff Rest. Co. v. Lewis W. Berghoff, Inc., 499 F.2d 1183 (7th Cir. 1974) (limited injunctions and disclaimers can balance surname/trademark rights between related parties)
- Zazu Designs v. L'Oreal, S.A., 979 F.2d 499 (7th Cir. 1992) (continuous and active use is required for consumers to associate a mark with particular goods)
- S.C. Johnson & Son, Inc. v. Nutraceutical Corp., 835 F.3d 660 (7th Cir. 2016) (common-law prior-use defense standards and the need to prove public association of the mark)