911 F. Supp. 2d 1099
D. Or.2012Background
- Icebreaker Limited (NZ) sells performance outdoor apparel under ICEBREAKER since 1995; Moon conceived logo in 1994 after exposure to ‘Ice Breakers’ merino wool concept.
- Gilmar S.p.A. uses ICEBERG as a flagship fashion trademark; ICEBERG sales in US declined sharply after 2002, with minimal US activity by 2010–2012.
- Icebreaker began US distribution in 2001 via a third-party; IBNC was formed in 2004 to distribute ICEBREAKER in the US; IBMR opened first store in Portland in 2007.
- Plaintiff filed a declaratory judgment action in 2011 seeking no infringement and cessation of certain registrations; Defendant counterclaimed for trademark infringement and related claims.
- Court granted summary judgment for Icebreaker on no infringement; held ICEBREAKER is not confusingly similar to ICEBERG; damages issue rendered moot.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion under Sleekcraft factors | Icebreaker argues strong unrelated goods, distinct marketing channels favoring no confusion | Iceberg asserts closer market proximity and potential confusion with fashion lines | No substantial likelihood of confusion |
| Similarity of marks | ICEBREAKER visually/sound/distinct; not similar to ICEBERG when viewed with context | Both marks share 'ice' start; some capitalized forms resemble | Marks not sufficiently similar |
| Actual confusion evidence | Some evidence of confusion not required; presence of same city usage; surveys lacking | No convincing actual-confusion evidence in record | Lack of strong actual-confusion evidence weighs against infringement |
| Marketing channels | Both use broad channels, including online presence and magazines; potential overlap | Distinct channels (outdoor/sport vs high-fashion magazines); minimal overlap | Distinct channels weigh against likelihood of confusion |
| Strength and expansion outlook of marks | Iceberg in crowded field weakens strength; Icebreaker nonetheless strong in activewear | Iceberg is conceptually strong and well-known; crowded field reduces protective scope | Overall strength factor slightly favors Icebreaker; no infringement |
Key Cases Cited
- Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 406 F.3d 625 (9th Cir. 2005) (likelihood of confusion analysis framework)
- Sleekcraft Boats v. Vendo Co., 599 F.2d 341, 599 F.2d 341 (9th Cir. 1979) (Eight-factor test for likelihood of confusion)
- Fortune Dynamic, Inc. v. Victoria’s Secret Stores, 618 F.3d 1025, 618 F.3d 1025 (9th Cir. 2010) (factors; strength of mark; crowded field)
- M2 Software, Inc. v. Madacy Entm’t Corp., 421 F.3d 1073, 421 F.3d 1073 (9th Cir. 2005) (marketing channels and overall impact on confusion)
- One Industries, LLC v. Jim O’Neal Distributing, Inc., 578 F.3d 1154, 578 F.3d 1154 (9th Cir. 2009) (intent; crowded field; strength of marks)
- GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 202 F.3d 1199 (9th Cir. 2000) (similarities weighed heavily; market-context assessment)
- Network Automation, Inc. v. A-D/S Concepts, LLC, 638 F.3d 1137, 638 F.3d 1137 (9th Cir. 2011) (online marketing channels and confusion likelihood)