ZW United States, Inc. v. PWD Sys., LLC
889 F.3d 441
8th Cir.2018Background
- ZW USA, Inc. ("ZW") registered the mark ONEPUL (and SINGLPUL) for wicket dog-waste bags; registration issued without requiring proof of acquired distinctiveness. ZW sold earlier and spent substantial advertising funds.
- PWD, LLC (BagSpot) entered later and described its wicket bags on its website using the phrase "one-pull." PWD also purchased the Google AdWord "zerowaste."
- ZW sued PWD for trademark infringement of ONEPUL and SINGLPUL; PWD counterclaimed that the marks are invalid. The district court granted summary judgment to PWD on infringement and to ZW on validity (ONEPUL).
- On appeal, the Eighth Circuit affirmed summary judgment for PWD on the infringement claim, finding no triable issue that consumers would likely be confused given PWD’s clear use of its trade name and separate websites, lack of actual confusion, and minimal evidence of bad intent.
- The court reversed the district court’s grant of summary judgment to ZW on ONEPUL’s validity because genuine fact disputes existed (e.g., use of "one-pull" by competitors) that precluded resolving genericness/descriptiveness at summary judgment. The SINGLPUL validity issue was not decided on appeal.
Issues
| Issue | Plaintiff's Argument (ZW) | Defendant's Argument (PWD) | Held |
|---|---|---|---|
| Whether PWD’s use of the phrase "one-pull" infringes ZW’s ONEPUL trademark | PWD’s "one-pull" phrase is similar to ONEPUL and likely to cause consumer confusion | PWD used "one-pull" descriptively on a site clearly labeled BagSpot; no confusion evidence; use was in commerce but not confusing | Affirmed: no likelihood of confusion; summary judgment for PWD on infringement affirmed |
| Whether ONEPUL is invalid (generic or merely descriptive without secondary meaning) | ONEPUL is inherently distinctive; PTO registration (without requiring secondary meaning) supports validity | Evidence that competitors use "one-pull" descriptively and ZW’s own descriptions show descriptiveness/genericness | Reversed: genuine disputes of material fact exist; summary judgment for ZW on validity vacated and remanded |
| Whether district court properly required expert or additional evidence on similarity | District court improperly suggested expert evidence was needed to show similarity | PWD contends expert testimony not required; similarity considered in context of prominent BagSpot branding | Court rejected claim of procedural error; no requirement for expert testimony; district court’s approach acceptable |
| Whether PWD’s webpages/third-party webpages were admissible at summary judgment | ZW argued webpages were unauthenticated hearsay and should not be considered | PWD relied on webpage printouts to show descriptive use by competitors and its own promotional use | Court held webpages were properly considered for their non-hearsay purpose (to show usage) or could be authenticated at trial; admissibility not dispositive here |
Key Cases Cited
- Frosty Treats Inc. v. Sony Computer Entm’t Am., Inc., 426 F.3d 1001 (8th Cir.) (standard of appellate review for trademark summary judgment)
- KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (U.S.) (plaintiff must show defendant’s practice likely to cause consumer confusion)
- Duluth News-Tribune v. Mesabi Publ’g Co., 84 F.3d 1093 (8th Cir.) (likelihood-of-confusion multi-factor analysis and summary judgment guidance)
- Lovely Skin, Inc. v. Ishtar Skin Care Prods., LLC, 745 F.3d 877 (8th Cir.) (discussing conceptual vs. commercial strength and presumption from PTO registration)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (U.S.) (distinctiveness categories for trademarks)
- Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863 (8th Cir.) (effect of PTO registering mark without requiring proof of secondary meaning)