Lodestar Anstalt v. Bacardi & Company Ltd., 31 F.4th 1228

Background

Lodestar (Liechtenstein) obtained a Madrid Protocol extension of protection for the mark “UNTAMED” for rum, whiskey and distilled spirits (certificate issued Oct. 4, 2011; constructive/priority date from its filings in 2009).
Bacardi launched a national advertising campaign using the phrase “Bacardi Untameable” in November 2013 (advertising/media use only; not on product labels).
Lodestar’s pre-2013 U.S. activities were limited: some YouTube ads (2011), trade-show promotion (Miami, 2013), samples, and TTB label approvals for Wild Geese rum labels that used "Untamed" on back labels; Lodestar developed and launched a separate “Untamed Revolutionary Rum” product after Bacardi’s campaign and made minimal sales in late 2014.
Lodestar sued Bacardi (Aug. 2016) for trademark infringement (§ 32) and unfair competition (§ 43) and alleged reverse confusion; the district court granted summary judgment for Bacardi, excluding the post-infringement product from the Likelihood-of-Confusion analysis and finding no likely confusion.
The Ninth Circuit affirmed: it held that a Madrid-Protocol extension confers a constructive-use priority that can be enforced once the registrant makes bona fide use in the U.S., but Lodestar failed to prove the required likelihood of confusion (and one post-infringement product was a token use and excluded).

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Effect of Madrid Protocol extension on priority	Madrid extension gives Lodestar constructive-use priority as of its claimed date and thus superior rights against later users.	Bacardi argued use-based priority should govern and Madrid registration without U.S. use does not entitle Lodestar to injunctive relief over prior U.S. users.	Held: Madrid extension confers the constructive-use priority (like §7(c)); registrant gains a priority right enforceable once it makes bona fide U.S. use.
Requirement to have used the mark before suing	Lodestar: it need not have used before registration; once it begins bona fide U.S. use after registration, it may sue relying on the constructive date.	Bacardi: a registrant that first actually uses after an alleged infringer cannot enjoin earlier users.	Held: Registrant must show bona fide use before suing, but post-infringement bona fide use can invoke the earlier constructive priority to sue.
Treatment of post-infringement product development (Untamed Revolutionary Rum)	Lodestar: its post-2013 product use is legitimate commercial use and should be considered in likelihood-of-confusion analysis.	Bacardi: the post-infringement product was created to “reserve rights” and combat Bacardi and therefore is token/not bona fide and should be excluded.	Held: Post-infringement uses are not categorically excluded, but here the Untamed Revolutionary Rum was a token use (developed to fight Bacardi, minimal sales) and properly excluded.
Likelihood of confusion (reverse confusion analysis)	Lodestar: consumers would confuse Bacardi’s widely publicized “Untameable” campaign with Lodestar’s use of “Untamed” on rum; multiple Sleekcraft factors favor confusion.	Bacardi: marks encountered differently in marketplace (Bacardi in broad ad media; Lodestar mainly on back-labels), no evidence of actual confusion; Sleekcraft factors weigh against confusion.	Held: On balance no reasonable jury could find probable confusion — Sleekcraft factors (market encounter, lack of actual confusion, marketing channels, consumer exposure) weigh against liability; summary judgment for Bacardi affirmed.

Key Cases Cited

B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (addresses priority and benefits of federal registration)
Zobmondo Ent., LLC v. Falls Media, LLC, 602 F.3d 1108 (9th Cir.) (explains constructive-use priority for intent-to-use filings)
SCM Corp. v. Langis Foods Ltd., 539 F.2d 196 (D.C. Cir.) (foreign filing/constructive use under §44 establishes priority over intervening U.S. use)
American Petrofina, Inc. v. Brown, 391 F. Supp. 757 (E.D.N.C.) (registrant under foreign-registration scheme can enjoin later U.S. users once registrant begins U.S. use)
AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.) (sets out the eight-factor likelihood-of-confusion test)
Social Technologies LLC v. Apple Inc., 4 F.4th 811 (9th Cir.) (token use vs. bona fide use; post-infringement rush-to-market to reserve rights is not bona fide)
Chance v. Pac-Tel Teletrac Inc., 242 F.3d 1151 (9th Cir.) (defines commercial/use standards and when limited sales may suffice)
Ironhawk Techs., Inc. v. Dropbox, Inc., 2 F.4th 1150 (9th Cir.) (reverse confusion framing and Sleekcraft application)
Brookfield Commc’ns, Inc. v. West Coast Ent. Corp., 174 F.3d 1036 (9th Cir.) (priority of use principle and natural zone of expansion)