Groupion, LLC v. Groupon, Inc.
859 F. Supp. 2d 1067
N.D. Cal.2012Background
- Groupion, LLC sues Groupon, Inc. for trademark infringement and unfair competition; Groupon moves for summary judgment on all claims.
- Court reviews the parties’ papers and grants Groupon’s motion for summary judgment.
- Court analyzes likelihood of confusion under the Ninth Circuit’s Sleekcraft eight-factor test.
- Court finds the marks are not substantially similar when viewed in their marketplace context.
- Court finds Groupion failed to prove relatedness of goods or related marketing channels, strength of Groupion’s mark, or willfulness/mistaken intent.
- Court concludes no genuine issue of material fact supports Groupion’s claims for infringement, cancellation, or monetary recovery and grants Groupon’s requested relief.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion between marks. | Groupion argues marks are similar and confusion probable. | Groupon argues marks are dissimilar overall and confusion unlikely. | No genuine issue; no likelihood of confusion. |
| Relatedness of goods/services. | Groupion’s CRM/groupware products overlap with Groupon’s offerings. | Overlap is minimal; products serve different markets; not related. | No material fact showing relatedness. |
| Monetary recovery remedies. | Groupion seeks profits, damages, and restitution. | No willful infringement; no damages; UCL restitution unsupported. | Monetary recovery denied; cancellation and damages denied. |
Key Cases Cited
- Celotex Corp. v. Catrett, 477 U.S. 317 (U.S. 1986) (summary judgment burden-shifting standard)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (U.S. 1986) (genuine issue of material fact requires substantial evidence)
- Brookfield Communications, Inc. v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999) (eight-factor test for likelihood of confusion; strength of mark considerations)
- GoTo.Com, Inc. v. Walt Disney Co., 202 F.3d 1199 (9th Cir. 2000) (eight-factor test; similarity measured by marketplace appearance)
- Sleekcraft Boats v. Fuller, 599 F.2d 341 (9th Cir. 1979) (factor-based framework for likelihood of confusion (confusion factors))
- Official Airline Guides, Inc. v. Goss, 6 F.3d 1385 (9th Cir. 1993) (importance of convergent marketing channels in confusion analysis)
- Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625 (9th Cir. 2005) (summary judgment appropriate when no confusion issues; actual confusion not required)
- Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135 (9th Cir. 2002) (summary judgment disfavored in trademark cases but appropriate where no confusion shown)