896 F.3d 752
6th Cir.2018Background
- Artistry, Ltd. is an Illinois-based jewelry wholesaler (since 1982) selling to independent and high-end retailers, not to end consumers.
- Sterling Jewelers (Kay/Jared) is a national retail chain; in 2012 Kay advertised an "Artistry Diamond Collection."
- Artistry, Ltd. claimed trademark rights in the name "Artistry" (unregistered) and sought cancellation of several Sterling federal registrations; Sterling sought declaratory judgment of noninfringement.
- The central dispute: whether Sterling's "Artistry Diamond Collection" would likely confuse consumers or Artistry, Ltd.'s retail customers as to source under the Lanham Act.
- District court granted summary judgment for Sterling, finding no likelihood of confusion; the PTO cancellation proceeding was held in abeyance.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Sterling's use of "Artistry" is likely to cause consumer confusion under the Lanham Act | Artistry, Ltd.: both use the word "Artistry" in connection with jewelry, so consumers/retailers will think the goods share a source or affiliation. | Sterling: "Artistry" is a weak/descriptive term widely used in the trade; markets, channels, purchasers, and uses differ, so confusion is unlikely. | No likelihood of confusion; summary judgment for Sterling affirmed. |
| Strength/distinctiveness of the mark | Artistry, Ltd.: asserts senior use since 1982 supports protectable mark strength. | Sterling: "artistry" is descriptive/common in jewelry and other trades, diminishing distinctiveness and protection. | Mark is weak/descriptive with many third-party uses; factor favors noninfringement. |
| Relevant consumers and marketing channels (risk of confusion among retailers vs. end consumers) | Artistry, Ltd.: worries both high-end retailers (its customers) and ultimate consumers might be confused or see dilution. | Sterling: Artistry, Ltd. sells wholesale to sophisticated retailers via trade shows/rep relationships; end consumers rarely know wholesaler identity. | Purchasers are sophisticated and marketing channels differ; any confusion is unlikely and likely short-lived. |
| Evidence of actual confusion and admissibility of survey/expert evidence | Artistry, Ltd.: pointed to inquiries after Kay's ads and an expert report documenting other uses of "artistry." | Sterling: inquiries were questions (not confusion showing) and Artistry forfeited hearsay objection to the unsworn expert report. | Questions to Artistry were not probative of actual confusion; hearsay objection to the report was forfeited. |
Key Cases Cited
- Zazú Designs v. L'Oréal, S.A., 979 F.2d 499 (7th Cir. 1992) (seniority of use matters even without registration)
- AutoZone, Inc. v. Tandy Corp., 373 F.3d 786 (6th Cir. 2004) (weak/descriptive marks lessen likelihood of confusion)
- Maker's Mark Distillery, Inc. v. Diageo N. Am., Inc., 679 F.3d 410 (6th Cir. 2012) (likelihood-of-confusion is ultimate legal question in Lanham Act cases)
- Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr., 109 F.3d 275 (6th Cir. 1997) (non-exhaustive multi-factor likelihood-of-confusion test)
- Bliss Salon Day Spa v. Bliss World LLC, 268 F.3d 494 (7th Cir. 2001) (common/descriptive terms unlikely to cause confusion)