Hypnotic Hats, Ltd. v. Wintermantel Enters., LLC
335 F. Supp. 3d 566
| S.D. Ill. | 2018Background
- Hypnotic Hats, Ltd. (Hyp) owns an incontestable federal trademark for "HYP" used on apparel (including socks) since ~2002 and registered in 2005; it sells primarily off-the-shelf through retailers and e-commerce.
- Defendants (Wintermantel Ent., Hype Socks, Hype Cheer) sell custom-designed athletic socks (HYPE SOCKS) primarily to coaches and teams since ~2014 and began using HYPE CHEER on bras in 2015.
- Hyp sent a cease-and-desist in April 2015; Defendants continued use and later reorganized/rebranded; Defendants' promotional materials sometimes displayed third-party marks without authorization.
- Hyp sued for federal trademark infringement, Lanham Act unfair competition/false designation, and common-law unfair competition; both sides moved for summary judgment and Defendants sought to exclude Hyp’s survey expert.
- The Court treated Hyp’s mark as incontestable but addressed Defendants’ fraud claim (rejected for lack of clear-and-convincing evidence); it analyzed likelihood-of-confusion under the Polaroid factors for socks and bras.
- The Court found (inter alia) limited marketplace proximity, insufficient actual confusion (survey had methodological flaws), no bad faith, and no use of HYP on Hyp’s bras; granted Defendants’ summary judgment and denied Hyp’s summary judgment.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Validity/ownership of HYP mark | HYP is a valid, incontestable federal mark used continuously since registration | Defendants claim fraud in trademark filings (wrong dates/use) making the mark invalid | Mark held incontestable; fraud claim fails for lack of clear-and-convincing evidence of knowing misrepresentation |
| Likelihood of confusion (socks) | HYP is strong and HYPE SOCKS is visually/aurally similar; some anecdotal confusion and survey evidence show confusion | Marks differ in marketplace presentation, products and channels target different customers (retail vs. custom team orders); no bad faith | No likelihood of confusion: strength and similarity weighed in Plaintiff’s favor but marketplace differences, limited proximity, minimal actual confusion, and no bad faith lead to judgment for Defendants |
| Likelihood of confusion (bras/use) | HYP covers "clothing," thus includes bras; Hyp points to catalogs advertising bras with HYP | Defendants argue Hyp does not "use" HYP on bras in commerce (no point-of-sale use) | No use of HYP on bras in commerce shown; even assuming coverage, no likelihood of confusion — summary judgment for Defendants |
| Admissibility/weight of consumer survey | Survey by Dr. Pittaoulis shows net confusion (12% overall; 21.6% for coaches) supporting actual confusion | Defendants attack methodology: wrong survey type (Squirt), poor distractors, leading questions, control noise, miscounts | Survey admitted but given limited weight due to multiple methodological flaws; not enough to create a triable issue on confusion |
Key Cases Cited
- Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93 (2d Cir.) (two-step trademark inquiry: validity then likelihood of confusion)
- Savin Corp. v. Savin Group, 391 F.3d 439 (2d Cir.) (Polaroid multifactor test summarized and applied)
- Polaroid Corp. v. Polarad Elec. Corp., 287 F.2d 492 (2d Cir.) (origin of the Polaroid factors)
- Gruner + Jahr USA Publ'g v. Meredith Corp., 991 F.2d 1072 (2d Cir.) (registered mark as prima facie evidence and incontestability principles)
- In re Bose Corp., 580 F.3d 1240 (Fed. Cir.) (fraud in procurement standard for trademark registrations)