*1 occurs, objection consent to the Esquivel,
search. United v. See States (8th Cir.2007). 1154, 1159 search,
Garcia consented ok, “ok,
saying, sure.” He was an adult
who English, understood was not under of drugs, prior influence had ar experience.
rest The whole encounter
lasted than 30 less minutes. Hanson made threats, promises,
no misrepresenta
tions, and Garcia was not under arrest.
They busy highway during were on
day. Hanson told they Perez that were go
free to and obtained her consent for the
search. silently Garcia watched during
the search. The properly district court
held that voluntary. Garcia’s consent was
III. judgment of the district court is
affirmed.
SENSIENT TECHNOLOGIES CORPO-
RATION; Flavors, LLC,
Plaintiffs-Appellants,
SENSORYEFFECTS FLAVOR COM-
PANY, formerly SensoryF- known Inc.;
lavors, Performance Chemicals Ingredients Co.;
& Ingre- Diehl Food
dients, Inc.; Highlander Partners,
L.P., Defendants-Appellees.
No. 09-2686.
United States Court Appeals,
Eighth Circuit.
Submitted: March 2010. July
Filed: 2010. Rehearing
Rehearing En Banc Aug.
Denied *4 erroneously
serts the district court held Flavor Company name likely was not to cause confusion to cus- Finally, argues tomers. Sensient Flavors holding erred its mark “relatively weak” and not entitled to protection under the Missouri dilution stat- grant ute. affirm the district We court’s summary judgment. I Technologies Corporation (“Sensient”) systems sells flavor delivery to its customers. Since Sensient has continuously used the trade name Sensient *5 Flavors, among its other trademarks. The mark on appears communications from Flavors, including advertising Sensient materials, cards, marketing and business and letterheads invoices. Nicolais, employee
Charles a former Sensient Flavors’ company sister Sensient Busch, Milwaukee, A. argued, WI, John Inc., Colors, company left the start his Linn, Riederer, Paul F. Monica M. Mil- own business called Performance Chemi- waukee, WI, Weaver, Thomas William M. (“PCI”). Ingredients, cals and LLC In Jr., Corrigan, Mayfield, Andrew B. St. 2006, May purchased substantially PCI all MO, Louis, brief, appellants. on the for of the assets of Ingredients, Diehl Food (“Diehl”). Inc. In November PCI Corwin, argued,
David S. L. Little, Vicki purchased substantially also all of the as- brief, Louis, MO, on the St. appellees. for sets, equipment, trademarks and trade ARNOLD, BYE, Before and SensoryEffects, names of en- business COLLOTON, Judges. Circuit gaged development, manufacture, and lipid-based delivery sales of flavor sys- BYE, Judge. Circuit prior SensoryEffects tems. owners of appeals Sensient Flavors the an application had for registration filed grant summary judgment SensoryEffects court’s1 of the name graphic SensoryEffects favor of Company, July Flavor which formally registered was formerly SensoryFlavors. by known as On Patent United States and Trade- (“PTO”) appeal, Sensient Flavors contends the mark July dis- Office 2007. PCI trict court in concluding operations erred the Senso- further expanded its in Febru- ryFlavors mark ary Flavors, was not “used com- acquiring Givaudan Act, Inc., merce” defined the Lanham dairy systems flavor business § U.S.C. within Sensient Flavors also as- Flavors Corporation. Givaudan As Webber, 1. The Honorable E. Richard United of Missouri. Judge District for the States Eastern District Moreover, instant suit. Sen- prior PCI purchase agreement, part soryFlavors contends no sales were made Flavors to use the Givaudan permitted mark, packages were under new no sixty days more after than trade name mark, with the new bearing sent labels purchase. transported under the new no were Flavors, After of Givaudan purchase SensoryFlavors mark. also constructed responsibility of Nicolais undertook www.sensoryflavors.com, al- the website for the choosing a new name brand though it the website was “under states Ultimately, company decid- business. all and was immedi- construction” at times Inc., SensoryFlavors, name to use the ed ately deactivated when Sensient filed the SensoryEffects trademark building on the instant suit. process, As of this already part in use. Shortly after Sensient filed instant existing Sen- SensoryFlavors modified 10, 2008, the district court suit on March design new Senso- soryEffects a temporary restraining entered order attorneys The company’s mark. ryFlavors SensoryFlavors of the against the use SensoryFlavors informed Nicolais SensoryFlavors subsequently name. registra- use and available for name was changed SensoryEffects name to Fla- a search of PTO records tion based on SensoryEffects Flavor Company, vor d/b/a However, parties names. corporate Systems (“SensoryEffects”), building on knowledge maintained dispute the Nicolais already name prior regarding the existence *6 company with the The has registered PTO. choosing at the time he was Flavors name operate and un- products continued to sell was Although previous- new he the name. change. the der this name since Colors, Nicolais ly employed by Sensient fla- never worked Sensient’s in- complaint asserts he amended its to Sensient was aware group and therefore he not Ac- vor clude the new name. mark Sensient, Flavors before cording companies of to two are Thus, he they lawsuit was filed. contends competitors because both sell direct not cross his systems Sensient Flavors name did food food delivery flavor to choosing SensoryFlavors mind while companies, although prod- their ingredient disputes Flavors Nico- name. Sensient The initial offerings slightly. uct differ assertion, that a noting primarily lais’s document arises contact with customers employees prior calls, one of drafted PCI’s which leads to through telephone unit purchase of the Givaudan business meetings where the appointments SensoryF- as one present lists Sensient Flavors company products is able primary competitors. sense, lavors’ In this the ultimate and services. ongoing of an sale of is result purchase day On Givaudan process. Sensient’s com- collaborative finalized, an- SensoryFlavors sent an counts, including contained six fed- plaint ingre- in the food nouncement contacts trademark unfair com- infringement, eral industry featuring SensoryFla- dients advertising, common law petition, false SensoryFlavors and mark. Givaudan vors infringement compe- and unfair trademark announcing sent media also release tition, infringement and di- trademark acquisition, SensoryF- included the which lution Missouri law. under SensoryFlavors lavors mark. asserts summary granted The district court only gave presentations two customers favor Feb- all counts in of Senso- acquiring judgment after Flavors on on Givaudan the case. The ryEffects both which occurred and dismissed ruary permanent injunction likely on ... held the which to cause confusion ... SensoryFlavors origin, approval mark was not as to the or sponsorship, warranted services, or goods, in commercial activi- because the had been “used 1125(a)(1)(A) § ties.” 15 (emphasis U.S.C. commerce.” The court also held the new added). Under section 45 likely Lanham SensoryEffects name was not Act, “use in commerce” is defined as fol- cause confusion to customers and Sensient lows: protection was not entitled to Mis- under
souri’s trademark dilution statute. Sen-
The term “use in commerce” means
timely appeals
sient
the district court’s
the bona fide use of a mark in the
trade,
order.
ordinary course of
and not made
merely to
right
reserve
a mark.
For
purposes
I
a mark
chapter,
shall
deemed to be in use in com-
grant
summary
district court’s
merce—
novo,
judgment
de
reviewed
and we
(1)
goods
on
when-—
apply the same standards as the district
(A)
any
it is
placed
manner on the
court.
Inc. v. Sony
Treats
Com-
goods or their
displays
containers or the
Inc.,
puter Ent. Am.
associated
tags
therewith or on the
or
(8th Cir.2005). Summary judgment
ap-
thereto,
labels affixed
or if the nature of
propriate “if
pleadings, depositions,
an-
goods
makes such placement
im-
interrogatories,
swers to
and admissions
practicable,
on
then
documents associat-
file, together
affidavits,
any,
with the
if
sale,
ed
goods
their
genuine
show that there is no
as to
issue
(B)
are
transported
sold or
fact
moving par-
material
and that the
commerce, and
ty is entitled to a judgment as a matter of
(2) on services when it is used or dis-
56(c).
law.” Fed.R.Civ.P.
A fact is mate-
played
or advertising
the sale
of ser-
rial
it might
when
affect the outcome of
*7
vices and the services are rendered in
the suit under governing law. Anderson
commerce, or the services are rendered
Inc.,
242, 248,
v. Liberty Lobby,
477 U.S.
in more than one State or in the United
2505,
(1986).
106 S.Ct.
States and a and the A. SensoryFlavors person rendering Whether the Name the services is en- in in gaged
Was Used Commerce commerce in connection with the services. First, parties dispute the whether § 15 U.S.C. 1127. section of 45 the Lanham Act applies to infringement brief, cases. The Lanham im Act In its Sensient argues press poses liability “any person release, announcement, civil on ... who presenta- and two without the registrant consent of the ... provided by SensoryFlavors, tions in addi- any reproduction in website, use[s] commerce ... to tion its were sufficient to estab- or of registered colorable imitation a question lish fact regarding in “use 1114(l)(a) mark.” § 15 U.S.C. (emphasis commerce” of under section 45. added). 43(a) of the im however, Section Act also At argument, oral Sensient con- poses liability who, for “[a]ny person on or argument by asserting tradicted its for in goods or-services, connection with any first time that apply section 45 does not in or any cases, goods, infringement container for uses com in and rather is limited in word, name, any term, merce symbol, or application registration its to the of trade- device, ... combination thereof marks. Sensient bases its contention
761 in any type will continue be considered by the Second provided on dicta largely (citing Rescuecom action.” Id. at 138 infringement in an Appeals Court Circuit Inc., Cong, 128-29 100th at 1988 Rep. S. 100-515 Corp. Google, (1988)) (inter- (2d Cir.2009), infringe- an which involved 5607-08 U.S.C.C.A.N. omitted). by a terms used over search nal marks dispute quotation ment engine. Rescue- Internet search popular lan- statutory amended Pursuant offer, and sale display, Google’s held com possible envisioned two guage, Rescuecom advertising cus- plaintiffs mark to infringe- 45 in interpretations of section “use in alleged as sufficiently tomers was interpretation ment cases. The first bars under Rule to avoid dismissal commerce” “use application of the entire definition of 12(b)(6) Pro- Rules of Civil of the Federal infringement in commerce” in the context F.3d at 130-31. cedure. 562 in new the first language as result conclusion, the Res- reaching its After use,” to “bona fide relating sentence appendix lengthy court attached cuecom second, Id. at 140. The discussed above. in analyzing applies whether section interpretation would contin- preferable first context. The court not- infringement in apply ue remainder of “use begins “guarded ed the statute relating definition commerce” that definitions limitation tentative” cases, simply in infringement services apply “unless under the statute provided fide in disregard language “bona use” plainly apparent from the contrary is cases, which would reserved for such (quoting at 15 U.S.C. context.” Id. registration in the con- application only 1127). analyzed court then § Ultimately, text.2 Id. the court noted providing that to the statute amendment was dicta that did not affect the discussion “bona fide “use commerce” means the case, urged Congress result in the and it course of ordinary a mark use of Id. 140- clarify to further the statute. at According to trade.” Id. 132-33. court, made clear sec- the amendment case, express In no view as to we “use in commerce” 45’s tion definition 45’s in commerce” whether section “use marks, registration only to applies properly apply continues to definition cases, it is infringement because McCarthy Compare infringement cases. that the statute could have “inconceivable Competition and Unfair Trademarks liabili- exempt infringers from intended to (4th ed.) (“The Act § Lanham 23:11.50 faith.” Id. ty they acted bad *8 because § 45 definition of what consti- narrowing reading of the stat- The court believed this just in relaxed tutes ‘use commerce’ by Congressional re- ute was confirmed once-hyper- remnant of trademark law’s amendment, 1988 accompanying the port This requirement. technical ‘affixation’ use in “explained that revised which certainly statutory anachronism was never apply to to is intended commerce definition that scope to limit the of ‘uses’ intended registration the trademark aspects all however, infringement”) Mar- use constitute clearly, that of would process, and below, case, we applies in this as discussed 2. The court believed second Rescuecom light prior previously approach preferable interpret- in Sec- has also note this circuit applied the second ond Circuit case law that requiring ed 45 “use in commerce” section definition the "use in commerce” sentence of liability. infringement prerequisite for as a infringement relating goods and services to 932, to Bloom, DaimlerChrysler v. 315 F.3d AG holding we While assume without cases. Cir.2003). (8th 936 similarly the definition second sentence of 762 Barrett, Digital through and market
greth goods Trademarks and vertise its two Net, release, Technologies: presentations, “Use” on the 13 No. 11 customer an press (“[T]he (2010) 1, announcement, L. 9 Lanham J. Internet and a website. legislative it clear that history Act’s makes argument Sensient’s the dis- conflates statutory definition Congress intended this pro- tinction between and services apply infringement in section [of 45] vided under section 45. Rescuecom carry context and to forward the 1905/1920 the in- upon other cases Sensient relies general Acts’ ‘affixation other close as- services, an alleged infringer’s volved not ”). requirement.’ sociation’ goods, and applied therefore courts Although Sensient cites the Rescuecom separate provided definition for de- above brief, in case its it confines opening termining whether the services “used were argument SensoryFlavors’ to whether lim- Rescuecom, in commerce.” 562 F.3d at ited uses of the mark meet the definition 129 (“According Complaint, Google in of “use commerce” under section 45. ‘in uses and sells Rescuecom’s mark argument, Prior to oral Sensient failed to Google’s advertising sale of services ren- develop any argument that section 45 did ”) added). (emphasis dered commerce.’ apply to an infringement case such as Even in cases applying services defini- the instant matter. See Cubillos Hold- tion, many courts have held mere advertis- er, (8th Cir.2009) n. 7 565 F.3d 1058 ing enough is not to constitute “use in (citation omitted) (deeming argument an commerce” because “a mark is used petitioner waived where the referenced an only accompanies commerce if services argument brief, opening his but failed to rendered commerce.” Bancorp, Int’l develop argument). contrary, To the LLC v. Societe des de Bains Mer et du explicitly concedes in its reply Monaco, Estrangers Cercle des 329 F.3d that applies infringe- brief the statute (4th Cir.2003). 359, 364 ment cases. See Appellant’s Reply Brief Sensient fails show evidence (“The parties that agree the Lanham transport sale or of any goods bearing the requires Act that a trademark be used in SensoryFlavors mark. While Sensient finding infringement commerce before a suggests did not Nicolais know for certain made.”). can be circum- Under these that no sales from the presen- resulted two stances, holding we assume without tations, this assertion is weak at best be- applies infringement section 45 cases companies cause the two which received we will proceed to determine whether presentations did not become custom- SensoryFlavors’ use of its mark meets the SensoryEffects subsequent ers of to the definition of “use in commerce.” See change. name Binkley Opera- v. Entergy Norris, Flowers v. 416 n. tions, Inc., (8th Cir.2010) (8th Cir.2009) (limiting review under a (“In order to survive a motion for sum- petitioner’s statute based on concessions in mary judgment, non-moving party *9 brief). reply his must be able to show probative sufficient Applying language the of the stat permit evidence that would a finding his ute, SensoryFlavors’ goods must have favor speculation, on more than mere con- (citation omitted). transported commerce,” jecture, been “sold or fantasy”) among requirements. other 15 U.S.C. Because there no is evidence demonstrat- § above, 1127. As noted ing any Sensient at sale or transport goods of under tempts satisfy to requirement by SensoryFlavors name, this the Sensient fails to pointing SensoryFlavors’ to efforts to ad- a establish triable issue of fact as to Co., Seven-TJp (citing SquirtCo. “used com- goods were whether the Cir.1980)). (8th F.2d Marks merce,” affirm the district court’s and we may categories: be characterized four the Senso- summary judgment on grant of descriptive, or arbi- generic, suggestive, mark. ryFlavors trary or fanciful. Id. at 1004. On SensoryEffects the Name B. Whether arbitrary or fanciful mark spectrum, an is to Confusion Likely Cause protection, of highest entitled to the level a mark is afforded no trade- generic while challenges next the dis Sensient News-Tribune, protection. Duluth a mark summary judgment grant trict court’s of Publ’n, Inc. v. Mesabi Pub. Div. Nw. of Systems SensoryEffects Flavor on the (8th Cir.1996). Co., 1093,1096 the The court held Senso mark. ryEffects likely mark not cause was case, In this the district court de to customers.3 confusion termined was a fanciful word Sensient function as a coined to trademark Eighth applies a six- Circuit result, As a company. acknowl a test to determine whether there is factor mark edged Sensient’s was entitled confusion, part of no of which likelihood However, protection. broadest the court standing alone: dispositive not also concluded Sensient could claim an mark; (1) strength of owner’s portion right exclusive to the “Flavors” of (2) owner’s “Fla Flavors name because Sensient mark; alleged infringer’s and the generic Accordingly, vors” a term. (3) degree to which only court determined the Sensient name (4) other; compete alleged each protection. appeal, was entitled to On ‘pass intent off its infringer’s agrees pro “Flavors” alone is not (5) owner; those the trademark as tectable, argues the Sensient Fla but (6) confusion; and, incidents of actual mark must construed as a whole. vors cost, type its and condi- product, SensoryEffects rou courts have asserts purchase. tions tinely protect generic portions refused Treats, 426 at 1008. do We of a trademark. in an- apply any not mathematical formula determination, making In the district “rather, factors; alyzing we use these object did court noted not stage summary judgment them at the as finding name to its that the Sensient guide to whether a reasonable determine we Generally, fanciful. do consider jury could find a likelihood of confusion.” for the first time on arguments raised sepa- each factors Id. We address of these may argu- appeal party and a not assert rately. presented to the district court. ments not Mark Strength 1. The Owner’s Union, Auto., Aero- v. Intern. United Cole Am., factor, analyzing space Agr. Implement In we & Workers first Cir.2008). (8th “strong light In recognized and distinctive 533 F.3d have before greater protection SensoryEffects’ concession trademark is entitled point, we need not commonplace one.” Id. district court on this than weak or competi infringement unfair of confu trademark 3. Sensient must show likelihood claim, (Count statutory trade part claims tion its Missouri of its Lanham Act sion *10 V). I, III), (Counts II, infringement IV and Capital mark claim Count Everest Count WSM, Hilton, 1320, (8th L.L.C., 724 1331 Mgmt., Inc. v. F.2d v. 393 F.3d Ltd. Everest Funds 417.056(1). 755, Cir.2005), 1984); (8th common law Cir. R.S.Mo. 759 its 764 arguments on appeal challeng- analyzed
consider its The district court the evidence submitted ing strength parties of Sensient Flavors’ related to the sophistication of the name. customer base and the process by prod- collaborative which the Similarly, argument question- Sensient’s industry ucts in the are sold. As a result of ing properly whether district court sophisticated long, customers and the analyzed largely its irrelevant be- interactive purchasing process, the court ultimately cause found in favor of buyers determined it highly unlikely was on the first factor. impor- Sensient More marks, would confuse the and thus the tantly, proceeded the district court to com- likelihood of confusion was diminished. pare the composite Sensient Flavors mark The court also noted was there a distinct SensoryEffects mark to the later its auditory difference between marks. See, analysis, e.g., as demonstrated below. rejected The court SensoryEffects Tech. v. Sensient’s “initial in- Corp. Sensient Co., terest F.Supp.2d argument, 636 confusion” in which it Flavor 900 (E.D.Mo.2009) SensoryEffects contended (“SensoryEffects able use Flavor Sensient’s Systems gain sounds name access to custom- different than Sensient Flavors.”). Thus, begin ers and process collaborative district court did not sales, leading err in even if concluding the first factor the customer’s favors companies’ initial confusion over Sensient. the two dissipates names during process. Similarity 2. The of the Owner’s Mark theory court noted has never been Alleged Infringer’s and the Mark adopted by Circuit, Eighth and even if was, it Sensient would still lose because step, Under the second we must failed to show evidence customers similarity consider the Sen experiencing phenomenon. such a Not SensoryEffects sient Flavors Flavor only Systems did Flavor Systems Treats, marks. auditory have a distinct difference from at 1008. “Rather than consider simi Flavors, held, the court but Sen- component parts larities between the sient failed to showing introduce evidence marks, we must evaluate the impres SensoryEffects attempted away to lure sion that each mark in its entirety likely Sensient’s customer base off passing to have on purchaser exercising the at products as Sensient’s. tention usually given by purchasers of such products.” News-Tribune, Duluth appeal, 84 On Sensient contends the district identical, at F.3d 1097. “The sound, use even court correctly recited the “sight, dominant, words common meaning” does auto test to the simi- determine matically marks, mean that two are larity id., marks simi between the see but it Mills, Co., lar.” Gen. Inc. Kellogg erroneously purchasing considered the (8th Cir.1987). F.2d may “We conditions and evidence of actual confusion visual, aural, consider the marks’ and defi in assessing the the marks. compare nitional attributes and the trade Sensient asserts the court indepen- must dress in determining dently ap- determine whether marks conveyed by whether the total pear effect and sound similar a similar and evoke two marks confusingly similar.” Luigi meaning, separately and then consider no’s, Inc. v. Corp., 170 F.3d whether the purchasing conditions make Stouffer (8th Cir.1999) Mills, (citing Gen. those similarities more less critical. 627). Sensient also urges formally this court to
765
promi-
and
as well as the
typefaces,
doc- colors
interest confusion”
the “initial
adopt
convey
marks
display
nent
of the house
trine.
prod-
between the
perceptible distinctions
sound,
sight,
first consider the
We
ucts.”).
have continu
argument. We
meaning
and
brief,
the
reply
In its
contends
identical dominant
ally
the use of
held
is
appearance
the marks
irrele-
visual
automatically
equate
words does
point
vant because the
of contact between
similarity
marks.
See
between
general-
companies
and the customers
(distin
Treats, Inc.,
at 1008-09
426 F.3d
telephone,
thus
audi-
ly occurs via
and
“frosty treats”
guishing the words
priority.
tory
given
should be
similarities
the plaintiffs
from
product
defendant’s
place particular
suggestion to
Sensient’s
the mark and
“Frosty
mark where
Treats”
marks
emphasis on the verbal effect of the
distinct); Luigi
visually
were
trade dress
n McCarthy
4
is not without merit. See
“Lean
no’s,
(concluding
at
170 F.3d
830-31
(4th ed.)
(“Similarity
§
of sound
23:22
con
Tasty”
‘N
are not
and “Lean
Cuisine”
may
particularly important
when
News-Tribune,
similar);
fusingly
Duluth
type frequently pur-
are
“Duluth
(determining
F.3d at 1097
84
order.”). However,
we
chased
verbal
“Saturday Daily News
and
News-Tribune”
agree
court that the com-
with the district
distinct,
the aural
despite
were
& Tribune”
auditory
posite marks maintain
distinct
marks);
similarity
the two
Gen.
between
News-Tribune, 84
Duluth
difference. See
Mills,
(holding
at
the district
824 F.2d
(“Although the
at 1097
[Duluth
F.3d
finding
confusing
no
court did not err
Saturday Daily
and
News
News-Tribune
Crisp”
Raisin
similarity
“Oatmeal
similar,
aurally
&
marks are
Tribune]
Crisp”
Raisin
because the
“Apple
entirety
their
pronounced
when
cus
enough
avoid
marks were different
in de-
confusion).
‘Saturday’
ampersand
word
and the
case,
each
In this
while
tomer
distinguish-
fendants’
make the two
paper
begins
“flavors” and
mark uses the word
able.”).
prefix,
these features are
“sens”
product names with
longer
components
correctly
pur-
notes the
While Sensient
auditory
depictions.
different
visual
conditions,
cus-
chasing
among
confusion
Ltd.,
at
Capital
See Everest
tomers,
marks
between the
(“Though each mark uses
dominant
separate
are
factors considered
three
‘Everest,’
longer
part
that word is
word
analysis,
precedent
our
court in its
employ
fonts
product names that
different
impression
clear that we evaluate the
graphics.”).
pur-
“on a
likely
entire mark is
to have
usually giv-
First,
exercising
visual differ
the attention
significant
are
chaser
there
Id.
by purchasers
products.”
the marks.
en
of such
ences between
Sensient’s
at
Luigino’s, 170 F.3d
830-31
lettering with a See also
capital
consists of blue
ordinary
lettering.
(analyzing
whether an
consumer
yellow
slightly
wave
above
mark,
likely
other
to be confused between
on the
would be
The
marks).
agree
two
the ordi-
hand,
lettering
parties
in differ
utilizes bold black
lines,
nary
sophisti-
customer of their
typeface on
with multicolor
ent
two
particular
result
the first line.
cated and
sale
symbol
swirl
to the left of
Taking
distinctions,
long,
process.
of a
collaborative
on these visual
Based
sophistication
into
sufficiently
consideration the
marks are
differentiated
Luigi
purchas-
and the nature of the
prevent
confusion. See
customers
customer
(“The
correctly
no’s,
ing
process,
use of different
*12
ordinary
3. The
of
Degree Competition
determined the
consumer would
Between
confusingly
not
the marks
similar un-
find
the Products
sound,
“sight,
meaning”
der
test.
The third
analyzes
factor
the de
argues
Sensient further
the dis gree
competition
products.
of
application
trict
erred in its
of the
court
Treats,
ence initial
resulting
in a
factor,
benefit
the alleged infringer.
considering
Id.
In
the dis
result,
296-97. As a
the district
trict
acknowledged
court first
the tempo
correctly rejected
application
rary
restraining
previously
order it
en
sum,
doctrine under
SensoryFlavors,
these facts. In
against
tered
in which it
district court did not
in concluding
err
noted
SensoryF
Nicolais’s selection
weighs
second factor
previously
favor
Senso
lavors name
he
after
em
ryEffects.
ployed by
strong
Sensient created
infer-
*13
it
the
public. Tasty”
wanted to avoid
word
confuse the
because
of his intent to
ence
“light,” it
the word “low-fat” was
the
believed
However,
evidence
the court concluded
overused,
agree
and because it did not
did not
discovery
additional
produced after
recommendation to
with the consultant’s
Nicolais
inference because
this
support
According
the word “lean.” Id.
to
avoid
he
separate
division while
for
worked
court,
the
the reference to “Lean Cuisine”
Sensient,
if he
employed by
and even
was
compete
evinced an
to
with the
only
intent
Fla-
knowledge of the Sensient
maintained
infringe
not an
to
on the
product,
intent
name,
equate
knowledge did not
vors
his
result,
mark.
Id.
the court held there
As
Rather,
an
to mislead.
the
with
intent
re-
genuine
no
issue of material fact
was
SensoryEffects selected
court determined
predatory intent.
Id.
garding
already-
to capitalize
in order
its
its name
goodwill
mark
the
estab-
established
Mills, Inc.,
Similarly, General
Givaudan Flavors name.
under the
lished
predatory
court
to find
intent on
declined
part
of the owner of the “Oatmeal
ignored
the court
evi-
Sensient asserts
mark,
Crisp”
despite
Raisin
the owner’s
demonstrating SensoryEffects was
dence
compete
intent to
“Apple
with the
Raisin
competitor
was a direct
aware Sensient
Crisp” mark.
6. that the mark creates likelihood consum- of Purchase Conditions ing confused as to who public will be Davis, Finally, the sixth factor exam at product.” what 430 F.3d makes purchase and the (citation ines the conditions of marks quotation and internal expected degree omitted). of care of customers. circumstances, Sen- Under Treats, “In con of its mark does not cre- soryEffects’s use *15 factor, in the sidering this we must stand sophisticated ate a likelihood that the cus- ordinary purchaser, buying shoes of will be confused as to who tomer base normally prevalent conditions of under result, a af- product. makes what As we such the attention giving market and summary grant firm the court’s of district usually buying in that purchasers give judgment. 170 F.3d at goods.” Luigino’s, of
class
important
“more
in
This factor is
831.
Anti-Dilution
Missouri’s
Statute
C.
where the de
cases
confusion-of-source
purchaser
that
exercises
gree of care
granted
The
court also
can eliminate the
purchasing
product
in
a
summary judgment
SensoryEf
favor of
might otherwise exist.”
confusion that
complaint
on
of
fects
Count Six
Sensient’s
Treats, Inc., 426
at 1010.
Frosty
F.3d
trademark dilution under Missouri
alleging
injunctive
provides
law. The statute
for
case,
con
In
the district court
this
a
of
relief where there exists
“[l]ikelihood
parties
cluded it was well-established
injury
reputation
or of dilution
business
sophisticated
custom
their
sell
...
quality
of the
of a mark
distinctive
process. As a
after a collaborative
ers
notwithstanding
competi
of
absence
this
the court held the
process,
result of
or
of
parties
tion between the
the absence
diminished,
likelihood of confusion
confusion as
the source of
SensoryEffects.
this factor favored
The
417.061(1).
§
services.” Mo.Rev.Stat.
parties
dispute
the conditions of
do
gravamen
complaint
is
“The
of
dilution
they
purchase
appeal,
on
as each concedes
continuing
that
use of
defendant’s
sophisticated custom
competitors
are
mark will
plaintiffs
mark similar to the
above,
analysis
this
noted
ers. As
upon the
inexorably have an adverse effect
in this
important
factor is
case because
mark,
plaintiffs
value of the
and that
mitigate any potential confusion.
tends to
plaintiffs
eventually
mark
deprived
will
be
parties’ agreement,
Id. As a result of the
Inc.,
Treats,
Frosty
of all distinctiveness.”
factor could not form the basis
this
(citation omitted). To
F.3d at 1011
Sensient,
of
and the dis
verdict
favor
statute,
prevail
Sensient “must
under the
in concluding
court
not err
this
trict
did
its
valid at
show mark or trademark was
SensoryEffects.
of
weighs
factor
in favor
distinctive,
law,
its mark
common
that
Judgment
Summary
of
Appropriateness
name creat
that defendants’ use of its
ed a likelihood of dilution of the distinctive
foregoing
factors
Our evaluation
mark.”
quality
plaintiffs
Cmty.
jury
no reasonable
leads us
conclude
v. Devon Park
Copyright Corp.
Christ
of confusion be-
could find
likelihood
Restoration, 683 F.Supp.2d
1017 concluded above.
fanciful mark.
court
The
mark dilution claim.
in a
Inherent
dilution
usage
consider evidence of third party
action under
showing
Missouri law a
similar marks
similar goods. Accord-
marks,
which re
court,
ing
to the
intro-
Treats,
sults
the dilution. See
showing
duced evidence
competi-
another
(“Plaintiffs’
Inc.,
pany.
telephone,
To be
we have said that
similarity
so
is the
sound
(not
“Knowledge
product
an
another’s
logo)
trade dress or
that is relevant.
compete
product”
intent
with that
not
is
argues
SensoryEffects
that
the same
intent to
cause consumer con
likely to
“initial
cause
interest confusion”
Mills,
Co.,
fusion,
Kellogg
Gen.
Inc. v.
824
when it
similar-sounding
uses
name to
(8th
622,
Cir.1987),
627
but this
market its
customers
“cold”
garden-variety
compete”
“intent to
case.
telephone calls. The doctrine of “initial
that
Sensient’s contention is
the defendant
“infringement
interest
based
confusion”—
knew of the “Sensient Flavors” mark and upon confusion that creates initial custom
intentionally
very
selected a
similar
interest,
er
though
even
no actual
sale
first, SensoryFlavors and then Sen
mark —
finally completed
aas
result of the confu
Company
sientEffects Flavor
order to
—in
widely accepted,
sion”—is
4see
J. McCar
benefit from confusion that
arise
would
thy,
Competition
Trademarks and Unfair
from
similarity
Particularly
names.
(4th ed.2010),
§
23:6
given
the initial effort
a former Sen
offers no convincing
why
reason
this court
sient executive to use
SensoryF
the name
adopt
context,
should not
In
it.
lavors, a jury reasonably could infer that
similarity
aural
of SENSient Flavors and
the defendant’s choice of the fallback name
(with
SENSoryEffects Flavor
“Company”
part by
was still
motivated
an intent to
add-on)
anas
immaterial
is sufficient for
Nuts,
confuse
See
consumers.
Beer
Inc. v.
jury
weigh
this factor in favor of the
Co.,
Clover Club Foods
805 F.2d
course,
plaintiff. Of
“the use of identical
(10th Cir.1986) (“[Djeliberate adoption of a dominant
automatically
words does not
may
similar mark
lead
an
inference of
equate
marks,” ante,
pass
intent to
off
as those
anoth
added),
(emphasis
but unlike the
er,” and “[t]he inference of intent is espe
court,
authorities cited by
cially strong
parties
when the
have had a Treats, Inc.,
1008-09;
426 F.3d at
Luigi
prior relationship.”).
permissible in
no’s,
Stoujfer
Inc. v.
Corp., 170 F.3d
ferences about
the defendant’s
intent
(8th Cir.1999);
Duluth News-Tribune
weigh strongly against summary judg
Co.,
Publ’g
Mesabi
*18
ment.
Lilly
See Eli
& Co. v. Natural
(8th Cir.1996);
Mills, Inc.,
Gen.
F.2d
824
Answers, Inc.,
(7th
456,
233 F.3d
465
Cir.
627,
at
visual distinctions in trade dress do
2000) (“The fact that one actively pursues
not
the harm
ameliorate
caused
confus
objective
an
greatly increases the chances
ingly
auditory
similar names where
simi
objective
achieved,”
that
will be
and
larity
key
ante,
is the
issue.
at 765
Cf.
reason,
“[f]or this
a defendant’s intent is
(“Sensient’s suggestion
place
particular
factor,
an important
can
weighed
and
be
emphasis on the verbal effect of the marks
factors.”) (internal
heavily
more
than other
merit.”).
not
without
quotations
omitted);
and citations
Mobil
Corp. Pegasus
Oil
v.
Corp.,
Petroleum
That
company’s
a
customers
sophis-
are
(2d Cir.1987)
(“Intentional
ticated does not establish as a matter of
copying gives rise to a presumption of a
law that there is no likelihood of confusion.
confusion.”).
likelihood of
sophisticated
If the
oil
traders Mobil Oil
question
Corp.,
On the
“might
of the
818 F.2d
listen
a
own-
to cold
mark,
alleged
phone
er’s mark
call
infringer’s
Pegasus
and
from
Petroleum ...
not,
a
jury
might
reasonable
also could
when
find
favor
otherwise he
because of
of Sensient
possibility
Pegasus
Flavors. The evidence
that
shows
Petroleum is
that
Mobil,”
at issue are marketed
related to
at
though
id.
even
Lilly,
See Eli
es deal.” reasons, I For these would reverse the Systems, Checkpoint grant summary judgment court relies on on Counts 1-5 Technologies, proceedings. v. Point remand for further Inc. Check Software (3d Cir.2001), Inc., for the sophisticated careful and proposition that confusion make initial interest
customers ante, 765-66, Checkpoint but likely,
less findings by a made
Systems considered trial, held that after finding of no likelihood
the district court’s clearly not erroneous. of confusion was HIRMAN, Appellant, Jeremiah Allen Systems Checkpoint did Id. at sophistication justified that customer hold against claims of initial
summary judgment America, UNITED STATES discussion confusion. The court’s interest Appellee. signif- that “[i]ts of initial interest resolved No. 09-3065. vary, must determined
icance will *19 case-by-case basis.” Id. at 297. Appeals, States United Court Eighth Circuit. sev- surrounding issues of fact Given the analysis, the absence eral elements May Submitted: rec- confusion on this of evidence of actual 21, 2010. July Filed: justify summary judgment. ord does not strength of the The other factors —the mark, high degree Flavors auditory competition,
direct in a market characterized
of the marks sales,
telephone evidence of intent and the support
to confuse—are sufficient likely that the mark is
finding defendant’s