Swatch AG v. Beehive Wholesale, LLC
739 F.3d 150
| 4th Cir. | 2014Background
- Swatch (owner of SWATCH mark) challenged Beehive’s PTO application to register SWAP for interchangeable watch faces and bands; TTAB dismissed Swatch’s opposition.
- Swatch filed a § 1071(b) civil action adding Lanham Act infringement, dilution, state-law claims, and unfair competition; parties submitted written evidence only.
- District court admitted and considered PTO record plus additional evidence, found SWAP suggestive (not merely descriptive), no likelihood of confusion, and no dilution by blurring; dismissed Swatch’s claims.
- Swatch appealed, arguing district court clearly erred on factual findings (strength/descriptiveness, likelihood of confusion, dilution); Beehive defended the registrations and use.
- Fourth Circuit reviews factual findings for clear error, legal conclusions de novo; held district court’s ultimate findings were supported and affirmed dismissal.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Registerability (descriptive vs. suggestive) | SWATCH: SWAP merely describes interchangeability of Beehive’s products and is unregistrable without secondary meaning | Beehive: SWAP is suggestive, requiring imagination to connect to product feature; thus inherently distinctive | SWAP is suggestive, not merely descriptive; registrable |
| Likelihood of confusion (DuPont/George factors) | SWATCH: SWAP is similar to SWATCH and goods overlap, causing consumer confusion about origin | Beehive: Marks differ in sight/sound/meaning; channels, advertising, and consumers differ; no actual confusion | No likelihood of confusion; factors (mark dissimilarity, different advertising/channels, lack of actual confusion) favor Beehive |
| Dilution by blurring under TDRA | SWATCH: SWAP will blur distinctiveness of famous SWATCH mark; alleges similarity and design copying | Beehive: No meaningful association or intent to copy; marks not similar in commerce; no impairment of distinctiveness | No likelihood of dilution by blurring; district court properly found fourth element unmet |
| Standard of review in §1071(b) actions | SWATCH: district court should independently weigh factual record de novo when new evidence admitted | PTO/district court practices urged deference to TTAB findings where supported | Court clarified district court must perform de novo factfinding when new evidence is presented per Kappos; any TTAB findings may be considered for weight but not controlling; affirmed on merits despite some district-court wording tension |
Key Cases Cited
- Petro Shopping Ctrs. v. James River Petroleum Inc., 130 F.3d 88 (4th Cir.) (likelihood of confusion is a factual inquiry reviewed for clear error)
- Pizzeria Uno Corp. v. Temple, 747 F.2d 1522 (Fed. Cir.) (mark strength and registrability are factual questions)
- Kappos v. Hyatt, 132 S. Ct. 1690 (Sup. Ct.) (district court must decide de novo in patent/trademark civil actions when new evidence is admitted)
- George & Co., LLC v. Imagination Entertainment Ltd., 575 F.3d 383 (4th Cir.) (nine-factor likelihood-of-confusion framework; distinctiveness categories)
- CareFirst of Maryland, Inc. v. First Care, P.C., 434 F.3d 263 (4th Cir.) (definition of likelihood of confusion; relevance of actual confusion)
- Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir.) (elements and factors for dilution-by-blurring)
- KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (Sup. Ct.) (purpose of trademark law and confusion standard)
- Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316 (4th Cir.) (importance of assessing marks as they appear in commerce)