921 F.3d 1364
Fed. Cir.2019Background
- VersaTop and Georgia Expo are competitors in the "pipe and drape" trade-show systems market; VersaTop owns marks PIPE & DRAPE 2.0™ and 2.0™ (later federally registered) and a patented coupler.
- Georgia Expo circulated brochures and flyers (including at an October 2015 trade show) that displayed a picture of VersaTop’s coupler and referenced VersaTop’s product names. Georgia Expo admitted these facts.
- VersaTop sued asserting patent, copyright, and trademark claims; the district court decided only trademark issues on cross-motions for summary judgment.
- The district court held Georgia Expo did not “use in commerce” under 15 U.S.C. § 1127 because it had not “affixed” the marks to goods sold or transported in commerce, and granted summary judgment for Georgia Expo on trademark claims.
- The Federal Circuit concluded the district court misapplied the statutory §1127 definition (which governs registration), held Georgia Expo’s brochure/trade-show uses were actionable under Section 43(a) of the Lanham Act, and reversed, entering judgment for VersaTop on likelihood-of-confusion grounds and remanding.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Georgia Expo’s use of VersaTop’s marks in brochures/trade-show materials violates §1125(a) (Lanham Act) | VersaTop: use in advertising/brochures in the same market and channels creates likelihood of confusion and violates Section 43(a) | Georgia Expo: no "use in commerce" under §1127—marks were not affixed to goods sold/transported, so no Lanham Act violation | Court: Reversed district court; §1127 registration-use definition does not limit infringement liability; brochure/trade-show use supports liability for likelihood of confusion |
| Whether the district court should apply §1127’s "use in commerce" test to infringement claims | VersaTop: §1127 defines registration use only; infringement uses are broader and evaluated under Sleekcraft factors | Georgia Expo: §1127 should control and foreclose liability absent affixation to goods/containers | Court: §1127 governs registration/ownership but not the universe of infringing uses; district court erred in relying on §1127 to deny claim |
| Whether summary judgment for defendant was appropriate on likelihood-of-confusion without Sleekcraft analysis | VersaTop: admitted facts (identical goods, same channels, identical marks, trade-show distribution) make likelihood of confusion clear as a matter of law | Georgia Expo: pointed to lack of evidence of actual confusion and relied on §1127 defense; did not contest other Sleekcraft factors | Court: Given admitted overlap (marks, goods, channels), likelihood of confusion is clear as a matter of law; summary judgment for defendant reversed |
| Whether plaintiff required proof of actual confusion to prevail | VersaTop: not necessary; actual confusion is only one Sleekcraft factor and often hard to prove | Georgia Expo: emphasized absence of actual confusion evidence | Held: Absence of actual confusion is not dispositive; court found other factors sufficient to establish likelihood of confusion |
Key Cases Cited
- Playboy Enters. v. Netscape Comm’ns, 354 F.3d 1020 (9th Cir.) (definition of "use in commerce" in §1127 applies to registration/use for rights, not the sole test for infringement)
- Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137 (9th Cir.) (keyword/search-trigger uses can be "use in commerce" for infringement; §1127 not exclusive)
- Brookfield Commc’ns v. W. Coast Entm’t, 174 F.3d 1036 (9th Cir.) (likelihood of confusion is the core of trademark infringement analysis)
- Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062 (9th Cir.) (Sleekcraft factors and affirming summary judgment when evidence clearly favors likelihood of confusion)
- AMF v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.) (establishing multi-factor test for likelihood of confusion)
- Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir.) (affirming trademark owner’s summary judgment where marks identical and channels overlap)
- Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (U.S.) (explaining trademark law purpose: protecting producer’s goodwill and preventing consumer confusion)