PlayNation Play Systems, Inc. v. Velex Corporation
924 F.3d 1159
11th Cir.2019Background
- PlayNation has sold children’s outdoor play equipment under the Gorilla Playsets mark since 2002 and owns incontestable federal registrations for that mark.
- Velex sold Gorilla Gym doorway pull-up bars and attachable accessories (swings, ropes, rings) and registered the Gorilla Gym mark in 2014 in the same goods class (Class 28).
- PlayNation sued Velex for trademark infringement; the bench trial court found for PlayNation on liability, awarded an accounting of Velex’s profits based on willful infringement, and cancelled Velex’s registration.
- The Eleventh Circuit reviewed the district court’s factual findings for clear error and legal conclusions de novo.
- The court affirmed infringement and cancellation of Velex’s registration but vacated and remanded the damages/accounting award because willfulness was not adequately supported.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of consumer confusion (overall) | Gorilla Playsets is senior, commonly used/recognized; Gorillas + similar words create likelihood of confusion across seven-factor test | Marks differ visually; products/markets distinct enough to avoid confusion; PTO registration supports Velex | Affirmed: district court did not clearly err — most factors (except intent) favored confusion; actual confusion and mark strength probative |
| Strength of PlayNation’s mark | Mark is at least suggestive/descriptive with acquired distinctiveness and nationwide use; incontestable registration strengthens mark | "Gorilla" appears in many third-party marks, so mark is weak | Affirmed: mark is strong—incontestability, sustained use, limited relevant third-party use support strength |
| Actual confusion | Presented instances of ultimate consumers contacting Velex believing products were from same source; online retailer questions showed confusion | Consumers were careless; no survey evidence; isolated misidentifications are insufficient | Affirmed: actual confusion factor favored PlayNation—instances involved ultimate consumers and need not be numerous |
| Damages: accounting of profits for willful infringement | Continued sale after suit supports willfulness and justifies disgorgement | Velex had a valid federal registration and lacked intent to infringe; continued sale under registration does not alone show willfulness | Vacated & remanded: cannot base willfulness solely on post‑complaint sales while Velex retained a valid registration; remand to assess other evidence and alternative bases (deterrence, unjust enrichment) |
| Cancellation of Velex’s registration | Infringement satisfies grounds to cancel under §2(d) for a mark on the register less than five years | PTO registration is entitled to weight; absence of TTAB decision means no issue preclusion | Affirmed: cancellation was within district court discretion once infringement established |
Key Cases Cited
- Tartell v. S. Fla. Sinus & Allergy Ctr., Inc., 790 F.3d 1253 (11th Cir.) (standard of review for bench trial)
- Frehling Enterprises, Inc. v. International Select Group, Inc., 192 F.3d 1330 (11th Cir.) (seven-factor confusion test and strength/actual confusion guidance)
- Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 122 F.3d 1379 (11th Cir.) (enumeration of likelihood-of-confusion factors)
- B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (U.S.) (PTO/TTAB findings and issue preclusion principles)
- Safeway Stores, Inc. v. Safeway Discount Drugs, Inc., 675 F.2d 1160 (11th Cir.) (limited effect of third‑party use in unrelated markets)
- Burger King Corp. v. Mason, 855 F.2d 779 (11th Cir.) (standards for remedies and accounting of profits)
- Howard Johnson Co. v. Khimani, 892 F.2d 1512 (11th Cir.) (when accounting of profits is appropriate)
- Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188 (11th Cir.) (district court discretion to cancel registrations)
- Maltina Corp. v. Cawy Bottling Co., Inc., 613 F.2d 582 (5th Cir.) (contrast where post‑refusal continued use supported willfulness)