Fierce, Inc v. Franklin Covey Co
2:18-cv-01449
W.D. Wash.Apr 2, 2019Background
- Fierce, Inc. (Fierce) publishes corporate training books and owns registered FIERCE-formative trademarks and uses an orange color scheme and sans‑serif typeface for its “Fierce” book series.
- Franklin Covey planned a book titled "Fierce Loyalty" with a similar "Fierce _" naming convention, orange color scheme, and similar typography, and used the domain www.fierceloyalty.com and Amazon pre‑listing prior to changing the title to "Leading Loyalty."
- Fierce sued Franklin Covey alleging trademark infringement, trade dress infringement, false designation of origin (Lanham Act), and Washington consumer protection violations; Fierce also alleged cybersquatting and sought preliminary injunctive relief.
- During litigation Franklin Covey changed the book title and removed the domain/listings; Fierce withdrew its preliminary injunction motion but sought damages and leave to amend for cybersquatting claims.
- Franklin Covey moved to dismiss; the court considered judicial‑notice evidence, denied dismissal of trademark/unfair competition claims, granted dismissal with prejudice of the trade dress claim for lack of inherent distinctiveness, and granted a short extension to amend pleadings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Fair use / likelihood of confusion under Lanham Act | Fierce alleged Franklin Covey’s use was likely to confuse given similar title, color, typeface, market, and alleged willful intent | Franklin Covey argued "fierce" is descriptive and used fairly as a non‑source descriptive term | Court denied dismissal: pleadings sufficiently allege likelihood of confusion; fair use not established as a matter of law |
| Expressive‑work (Rogers) defense to title use | Fierce: title use was explicitly misleading and likely to cause confusion given mimicry of series presentation | Franklin Covey: book title is expressive and protected unless artistically irrelevant or explicitly misleading | Court denied dismissal: allegations support that title was used in same context and could be explicitly misleading |
| Trade dress protectability (color + typeface) | Fierce claimed an orange/black/white color scheme and sans‑serif typeface as protectable trade dress for its series packaging | Franklin Covey argued trade dress not clearly defined, lacks secondary meaning, and may be functional | Court granted dismissal with prejudice: alleged trade dress not inherently distinctive as pleaded, therefore not protectable |
| Judicial notice of external materials | Fierce objected to some screenshots and USPTO records | Franklin Covey sought judicial notice of trademark records, Amazon and website screenshots, and dictionary definition | Court took notice of dictionary and certain website/Amazon screenshots incorporated into complaint; denied notice of some USPTO and prior Amazon listing exhibits as unnecessary or disputed |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (pleading standard: factual allegations must plausibly state a claim)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (plausibility pleading standard)
- AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (multi‑factor likelihood of confusion test)
- Cairns v. Franklin Mint Co., 292 F.3d 1139 (9th Cir. 2002) (fair use defense elements)
- Mattel, Inc. v. MCA Records, 296 F.3d 894 (9th Cir. 2002) (Rogers balancing for expressive works)
- Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (expressive title test: artistic relevance and explicit misleadingness)
- Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011) (conceptual and commercial strength analysis)
- Wal‑Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000) (distinction between product design and product packaging; inherent distinctiveness vs. secondary meaning)