Progressive Distribution Services, Inc. v. United Parcel Service, Inc.
856 F.3d 416
| 6th Cir. | 2017Background
- Progressive Distribution Services operated a paid, multi-service order-fulfillment platform called “OrderLink,” registered (incontestable) in 2004 and used commercially for years; it targeted merchants and required setup, contracts, and fees.
- UPS developed a free online tool for existing UPS customers to import eBay/Amazon orders and named it “UPS OrderLink”; UPS filed a USPTO application that was rejected for likely confusion but launched the service in December 2013.
- Progressive sent a cease-and-desist in February 2014; UPS negotiated and ultimately renamed its service to “Ship Marketplace Orders” by August 2014 and abandoned the UPS OrderLink name.
- Progressive sued under the Lanham Act (also alleged state and common-law claims but waived those on appeal), claiming reverse confusion and unfair competition; the district court granted summary judgment for UPS on likelihood-of-confusion grounds.
- On appeal, the Sixth Circuit reviewed de novo, considered the eight Frisch factors for likelihood of confusion (strength, relatedness, similarity, actual confusion, marketing channels, purchaser care, defendant’s intent, expansion), and affirmed the grant of summary judgment for UPS.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the USPTO examiner's preliminary refusal deserves deference | USPTO rejection of UPS application supports likelihood of confusion and should be given weight | USPTO examining decision is preliminary and lacked marketplace evidence, so it need not be afforded deference | Court refused to afford deference to the USPTO examiner's preliminary determination |
| Whether UPS’s use of “UPS OrderLink” created a likelihood of confusion (including reverse confusion theory) | Progressive: UPS’s nationwide brand flooded the market and caused reverse confusion; OrderLink is protectable and consumers could be confused | UPS: marks differ in presentation and context; services differ in nature and customers; Progressive’s mark is conceptually and commercially weak | No likelihood of confusion; summary judgment for UPS affirmed |
| Strength and incontestability of Progressive’s mark | Progressive: incontestable registration makes the mark presumptively strong | UPS: mark is descriptive with extensive third‑party use and little evidence of marketplace recognition; incontestability can be rebutted | The mark is conceptually weak and lacks demonstrated commercial strength despite incontestability; strength factor favors UPS |
| Similarity/relatedness of services and other Frisch factors (actual confusion, channels, purchaser care, intent) | Progressive: overlap in internet marketing and identical words in the marks support confusion | UPS: services differ (paid full fulfillment v. free shipping tool), marks appear different in commerce (UPS house mark, colors), little actual confusion, different channels and sophisticated purchasers; intent ambiguous | Most factors (similarity in use as presented, actual confusion, channels, purchaser care) weigh against confusion; intent neutral; overall balance favors UPS |
Key Cases Cited
- Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623 (6th Cir. 2002) (sets out Frisch-factor likelihood-of-confusion analysis)
- Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 275 (6th Cir. 1997) (similarity analysis and evidentiary weight of actual confusion)
- Frisch’s Restaurants, Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642 (6th Cir. 1982) (establishes eight-factor test for likelihood of confusion)
- Homeowners Grp., Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100 (6th Cir. 1991) (likelihood-of-confusion ultimate question guidance)
- Mktg. Displays, Inc. v. TrafFix Devices, Inc., 200 F.3d 929 (6th Cir. 1999) (USPTO examining attorney opinion not dispositive when different evidence is before the court)
- Wynn Oil Co. v. Thomas, 839 F.2d 1183 (6th Cir. 1988) (evaluate marks as presented in marketplace)
- Maker’s Mark Distillery, Inc. v. Diageo N. Am., Inc., 679 F.3d 410 (6th Cir. 2012) (conceptual and commercial strength components)
- AutoZone, Inc. v. Tandy Corp., 373 F.3d 786 (6th Cir. 2004) (third-party use can rebut mark strength)
- Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985) (discusses incontestability under Lanham Act)
- A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198 (3d Cir. 2000) (discusses deference to PTO determinations and reverse‑confusion framework)
- Groeneveld Transp. Efficiency, Inc. v. Lubecore Int’l, Inc., 730 F.3d 494 (6th Cir. 2013) (actual confusion is powerful evidence but not required)