NRRM, LLC v. Kingstar Holdings, LLC
4:17-cv-01665
E.D. Mo.Oct 30, 2017Background
- Plaintiff NRRM, LLC (d/b/a CarShield) owns federally registered word marks CARSHIELD and CARSHIELD.COM for vehicle service contracts and alleges substantial advertising and continuous use since April 2016.
- Defendants Kingstar Holdings, LLC and Caresure LLC use the marks CARSURE (word and design) for competing vehicle service contracts and began use in early 2017; they applied to register CARSURE in November 2016.
- Plaintiff sued for trademark infringement and unfair competition under the Lanham Act and Missouri law; Defendants moved to dismiss under Rule 12(b)(6) arguing Plaintiff failed to plead a plausible likelihood of confusion.
- Court framed likelihood-of-confusion analysis around the six Eighth Circuit factors: mark strength, similarity, competition, intent, purchaser care, and actual confusion.
- On a motion to dismiss the court accepted all factual allegations as true and evaluated whether Plaintiff pleaded sufficient facts to make a likelihood-of-confusion claim plausible.
- The Court denied the motion to dismiss, finding Plaintiff adequately alleged each relevant factor (commercial strength, similarity in appearance/sound/meaning, direct competition, intent to trade on goodwill, possible consumer care issues, and incidents/evidence of actual confusion).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether complaint pleads a plausible likelihood of confusion | Alleged mark strength, similarities ("car" + "s"/"sh" sound, similar look/colors/meaning), overlapping channels, intent, and instances of confusion make confusion plausible | Plaintiff’s mark is weak/generic; similarities insufficient; lack of bad intent; insufficient actual confusion; purchasers exercise high care | Denied dismissal — allegations suffice to state a plausible likelihood of confusion under the six-factor test |
| Strength of CarShield mark | Substantial advertising, promotion, and public use support commercial strength | Mark is weak/generic ("car" common) and lacks logo/color registration | Sufficient factual allegations of commercial strength at pleading stage |
| Similarity of marks | Pleaded similarities in appearance, sound, meaning, and color create an overall similar impression | Shared common elements do not automatically make marks similar; summary-judgment cases cited | Plaintiff pleaded enough detail on appearance/sound/meaning to make similarity plausible at pleading stage |
| Evidence of actual confusion | Alleged consumer comment and third-party website complaints showing mistaken identity and lost sales | Single hearsay incident insufficient | Court found allegations (more than one type of instance) adequate to plead actual confusion |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (pleading standard requires plausible claim)
- Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (complaint must state a claim that is plausible on its face)
- B&B Hardware, Inc. v. Hargis Indus., Inc., 569 F.3d 383 (trademark infringement requires valid mark and likelihood of confusion)
- Duluth News-Tribune v. Mesabi Pub. Co., 84 F.3d 1093 (definition of likelihood of confusion)
- ConAgra, Inc. v. George A. Hormel & Co., 990 F.2d 368 (likelihood of confusion is a factual question)
- Roederer v. J. Garcia Carrion, S.A., 569 F.3d 855 (six-factor likelihood-of-confusion framework)
- Frosty Treats Inc. v. Sony Computer Ent. Am. Inc., 426 F.3d 1001 (strength of mark and related analysis)
- Lovely Skin, Inc. v. Ishtar Skin Care Prods., LLC, 745 F.3d 877 (conceptual and commercial strength of marks)
- Sensient Techs. Corp. v. SensoryEffects Flavor Co., 613 F.3d 754 (absence of bad intent is a factor; overlap of Missouri and Lanham Act claims)
- SquirtCo. v. Seven-Up Co., 628 F.2d 1086 (degree of care and product cost factor in confusion analysis)