Marketquest Group, Inc. v. Bic Corp.
862 F.3d 927
| 9th Cir. | 2017Background
- Marketquest, owner of USPTO-registered trademarks "All-in-One" and "The Write Choice" (used since 1999–2000), sued Norwood (acquired by BIC) and BIC for trademark infringement after Norwood/BIC used those phrases in 2010–2011 marketing.
- Norwood used "All-in-One" prominently on a consolidated 2011 catalogue and in several related promotional materials; BIC used a variant phrase referencing its pen anniversary.
- The district court denied a preliminary injunction (finding Defendants likely to succeed on a fair use defense) and later granted summary judgment for Defendants, holding fair use defeated Marketquest’s claims for both marks.
- Marketquest appealed, arguing (inter alia) that reverse confusion need not be specially pleaded, that genuine factual disputes exist on fair use for "All-in-One," and that fair use was improperly applied to "The Write Choice" where no likelihood of confusion was found.
- The Ninth Circuit reversed and remanded: it held reverse confusion is a theory of confusion (not a separate claim requiring special pleading), found triable issues of fact on fair use as to "All-in-One," and ruled the district court erred applying fair use to "The Write Choice" without a prior showing of likely confusion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether reverse confusion must be pleaded separately | Marketquest: reverse confusion can be alleged generally and is encompassed by its complaint | Defendants: plaintiff failed to specifically plead reverse confusion, so claim is deficient | Court: reverse confusion is a theory of likelihood of confusion, not a separate claim; specific pleading not required when plausible from complaint |
| Standard and role of intent/good-faith in reverse confusion | Marketquest: mere knowledge of senior mark supports inference of bad faith in reverse confusion context | Defendants: must show deliberate intent to push plaintiff out of market to infer bad faith | Court: no bright-line rule; various indicia (knowledge, failure to search, market saturation) may support intent/bad faith; mere knowledge alone insufficient on summary judgment |
| Whether Defendants’ uses of "All-in-One" are protected by classic fair use | Marketquest: many uses appear as source-identifying or non-descriptive and show bad faith; genuine issues of fact exist | Defendants: uses were descriptive (heading for consolidated catalogue) and precautionary design choices show non-trademark use | Held: Triable issues of material fact exist on whether uses were trademark use, descriptive, and in good faith; summary judgment on fair use improper |
| Whether fair use may be applied where no likelihood of confusion exists ("The Write Choice") | Marketquest: fair use is an affirmative defense triggered only after plaintiff shows likely confusion | Defendants: fair use focuses on objective fairness; confusion not prerequisite for resolving fair use at summary judgment | Court: fair use only comes into play after plaintiff shows likelihood of confusion; district court erred by granting fair use where it found no evidence of confusion |
Key Cases Cited
- KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596 (9th Cir. 2005) (summary-judgment and fair-use principles in trademark cases)
- KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004) (fair-use defense scope and relationship to likelihood of confusion)
- Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625 (9th Cir. 2005) (distinguishing forward and reverse confusion pleading and plausibility)
- AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (Sleekcraft likelihood-of-confusion factors)
- Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Mgmt., Inc., 618 F.3d 1025 (9th Cir. 2010) (flexible application of Sleekcraft and analysis of intent/precautionary measures)
- Cairns v. Franklin Mint Co., 292 F.3d 1139 (9th Cir. 2002) (classic fair-use defense elements)