Uncommon, LLC v. Spigen, Inc.
926 F.3d 409
| 7th Cir. | 2019Background
- Uncommon, LLC registered the mark "CAPSULE" (Trademark No. 4,338,254) in 2013 for cellphone cases; registration was contestable because less than five years had elapsed.
- Spigen, Inc. independently began selling "Capsule"-named phone cases in 2010 and used various "Capsule" family marks; some Spigen marks received limited registrations or disclaimers from the PTO.
- Litigation: Uncommon sued Spigen for trademark infringement and unfair competition; Spigen counterclaimed to cancel Uncommon’s registration.
- In discovery Spigen produced a consumer survey conducted by Kirk Martensen but designated Martensen as a non-testifying expert; Spigen later filed a Martensen declaration at summary judgment after relying on the survey in its expert Doug Bania’s report.
- The district court excused Spigen’s Rule 26(a) disclosure failure as harmless under Rule 37(c)(1), admitted the survey/declaration, found "capsule" descriptive and lacking secondary meaning, and alternatively found no likelihood of confusion, granting summary judgment to Spigen.
- The Seventh Circuit affirmed: (1) admitting the Martensen declaration was within the district court’s discretion; (2) "capsule" is descriptive and Uncommon failed to show secondary meaning; (3) no genuine issue of material fact existed on likelihood of confusion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Admissibility of Martensen survey/declaration (Rule 26/37) | Spigen failed to disclose Martensen as a testifying expert so his methodology/declaration is inadmissible and must be excluded. | Martensen’s survey and underlying data were timely produced; late declaration cured the gap and any nondisclosure was harmless. | District court did not abuse discretion: failure was harmless under Rule 37(c)(1); declaration admissible. |
| Whether "CAPSULE" is inherently distinctive (descriptive vs. suggestive) | "Capsule" is suggestive and thus inherently distinctive; PTO’s registration presumed validity. | Market use, dictionary definitions, and degree-of-imagination test show "capsule" describes cases (coverage/protection) and is descriptive. | "Capsule" is descriptive as a matter of law on this record; no reasonable factfinder could find it inherently distinctive. |
| Secondary meaning (acquired distinctiveness) | Uncommon contends secondary meaning or relies on presumption of validity. | Spigen relies on Martensen survey and lack of evidence of consumer association with Uncommon to show no secondary meaning. | Uncommon waived robust secondary-meaning argument and, on the record (including survey), cannot show secondary meaning; registration invalidated. |
| Likelihood of consumer confusion | Consumers will be confused by both parties’ use of "capsule" given similarity of marks and overlapping channels. | Marks are weak/descriptive, use and packaging differ, no evidence of actual confusion or intent to pass off. | No genuine issue of material fact: factors weigh against likelihood of confusion; summary judgment for Spigen affirmed. |
Key Cases Cited
- Cehovic-Dixneuf v. Wong, 895 F.3d 927 (7th Cir.) (summary-judgment evidence must be admissible)
- Muha v. Encore Receivable Mgmt., Inc., 558 F.3d 623 (7th Cir.) (surveys require expert testimony to explain methodology)
- Spraying Sys. Co. v. Delavan, Inc., 975 F.2d 387 (7th Cir.) (survey methodology decisions affect admissibility)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (U.S. 1992) (inherent distinctiveness doctrine)
- Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (U.S. 2000) (distinctiveness framework)
- Packman v. Chicago Tribune Co., 267 F.3d 628 (7th Cir.) (registration presumptions and infringement elements)
- Bliss Salon Day Spa v. Bliss World LLC, 268 F.3d 494 (7th Cir.) (market usage can render a mark descriptive)
- Tribble v. Evangelides, 670 F.3d 753 (7th Cir.) (factors for Rule 37 harmlessness analysis)