Grayson O Company v. Agadir International LLC
856 F.3d 307
| 4th Cir. | 2017Background
- Grayson O Co., owner of federal registration for the mark “F 450,” sued competitor Agadir for trademark infringement and unfair competition under the Lanham Act and North Carolina law, alleging Agadir’s use of “450º” on salon-only haircare products caused likely confusion.
- Grayson O’s registered mark is un-stylized "F 450" (no degree symbol); in marketplace Grayson O’s label appears as “f450º” (lowercase f, ligature-like presentation, degree symbol). Agadir’s label reads “Hair Shield 450º Plus” and uses different fonts, colors, and imagery.
- Both companies sell nearly identical salon-exclusive products in similar channels; parties agreed factors regarding goods, facilities, advertising, and product quality favored confusion analysis for plaintiff.
- Grayson O sent a cease-and-desist in 2012; Agadir replied it used “450º” descriptively (to indicate heat resistance) and later adjusted its label (increasing the prominence of “Hair Shield 450º” while not adopting an "F").
- The district court granted summary judgment to Agadir, finding Grayson O failed to show a likelihood of confusion because Grayson O’s mark was conceptually and commercially weak, the marks were not similar in actual marketplace use, there was no evidence of bad-faith intent, and there was only de minimis evidence of actual confusion.
- Grayson O appealed; the Fourth Circuit affirmed, applying the nine-factor likelihood-of-confusion test and emphasizing the primacy of mark strength and actual marketplace appearance.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Strength of mark (conceptual/commercial) | F450 is suggestive and thus entitled to protection; strong enough to support infringement claim | "450" is commonly used in haircare (refers to temperature); Grayson O lacks commercial strength (limited sales/advertising) | Mark is conceptually and commercially weak; plaintiff waived substantive commercial-strength argument and record supports weakness |
| Similarity of marks | "450" is the dominant portion; presence of “450” on both labels creates likelihood of confusion | Whole-label appearance differs materially (presence/absence of "f", additional words, fonts, colors, degree symbol, imagery) | Marks are not similar as used in marketplace; side-by-side textual comparison insufficient when actual uses differ |
| Defendant's intent | Agadir increased size/boldness of its "450" after notice, evidencing intent to infringe | Agadir increased size of entire phrase "Hair Shield 450" (not isolating “450”) to distinguish its label; used "450º" descriptively | No evidence of bad-faith intent to appropriate Grayson O’s goodwill; intent does not support confusion finding |
| Actual confusion / likelihood overall | Trade-show reports of infringement and similar channels suggest confusion risk | Reports reflected observers saying Agadir was infringing (not that consumers mistook products); only de minimis confusion evidence | Evidence of actual confusion is de minimis; combined with weak mark and dissimilar appearance, no likelihood of confusion — summary judgment for defendant affirmed |
Key Cases Cited
- CareFirst of Md., Inc. v. First Care, P.C., 434 F.3d 263 (4th Cir. 2006) (establishes inquiry into mark strength and relevance of actual marketplace use and absence of actual confusion)
- George & Co. LLC v. Imagination Entm’t Ltd., 575 F.3d 383 (4th Cir. 2009) (articulates the nine-factor likelihood-of-confusion test and discusses weak marks rule)
- Pizzeria Uno Corp. v. Temple, 747 F.2d 1522 (4th Cir. 1984) (discusses dominance of mark components and conceptual strength analysis)
- Synergistic Int’l, LLC v. Korman, 470 F.3d 162 (4th Cir. 2006) (notes that not all likelihood factors must support claim and reviews similarity analysis)
- Lone Star Steakhouse & Saloon, Inc. v. Alpha of Virginia, Inc., 43 F.3d 922 (4th Cir. 1995) (on significance of dominant feature in trademark similarity analysis)
- Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150 (4th Cir. 2014) (rejects dissecting single-word marks into separable dominant parts)
- Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455 (4th Cir. 1996) (contrasts strong evidence of actual confusion and secondary meaning)