Water Pik, Inc. v. Med-Systems, Inc.
726 F.3d 1136
| 10th Cir. | 2013Background
- Water Pik sought to register SINUSENSE for sinus-irrigation products; Med-Systems owns incontestable SINUCLEANSE family marks.
- Med-Systems opposed Water Pik’s SINUSENSE registration and Water Pik brought declaratory-judgment action challenging trademark infringement, trade dress, unfair competition, and dilution claims.
- Water Pik began selling SinuSense products in 2010 and packaged them with Water Pik house marks; Med-Systems asserted multiple counterclaims for infringement and unfair competition.
- District court granted Water Pik summary judgment on Med-Systems’ claims and dismissed Water Pik’s declaratory-judgment claim as moot.
- On appeal, the Tenth Circuit affirms, applying a six-factor likelihood-of-confusion test and reviewing de novo for summary judgment.
- The court found the Sinu Cleanse mark weak, Water Pik’s use not likely to cause confusion, and the district court’s summary judgment proper.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion under §32 and §43(a)? | Med-Systems argues Water Pik’s SINUSENSE causes confusion. | Water Pik argues no likelihood of confusion given weak Sinu Cleanse and differences with SinuSense. | No genuine issue; likelihood of confusion not shown. |
| Standard of review for summary judgment? | Med-Systems contends summary judgment was improper due to factual disputes. | Water Pik contends de novo review is appropriate. | Summary judgment affirmed on de novo review. |
| Six-factor test application for likelihood of confusion? | Med-Systems challenges factor application as favorable to Water Pik. | Water Pik argues factors largely favor it, with product similarity weaker due to mark strength. | Only the sixth factor favored Med-Systems; overall analysis supports Water Pik. |
| Intent behind Water Pik’s mark choice? | Water Pik copied Med-Systems’ mark to cause confusion. | Intent focused on source deception; Water Pik asserts neutral branding process and house mark use. | Evidence insufficient to show intent to confuse; factor deemed neutral. |
Key Cases Cited
- King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084 (10th Cir. 1999) (actual confusion as strongest evidence; factors inform likelihood of confusion)
- Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964 (10th Cir. 2002) (six-factor test; summary judgment appropriate when no genuine issue)
- Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482 (10th Cir. 1987) (comparison of marks as a whole; side-by-side surveys improper)
- Universal Money Centers, Inc. v. AT&T Co., 22 F.3d 1527 (D.C. Cir. 1994) (house mark presence affects similarity analysis)
- Scott Fetzer Co. v. House of Vacuums, Inc., 381 F.3d 477 (5th Cir. 2004) (leading questions can inflate confusion; non-dispositive)