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Marketquest Group, Inc. v. BIC Corp.

United States Court of Appeals, Ninth Circuit

July 7, 2017

Marketquest Group, Inc., DBA All-In-One, a California corporation, Plaintiff-Appellant,
BIC Corp., a Connecticut corporation; BIC USA, Inc., a Delaware corporation; Norwood Promotional Products, LLC, AKA Norwood Operating Company, LLC, DBA Norwood Promotional Products, a Delaware limited liability company, Defendants-Appellees.

          Argued and Submitted May 9, 2017 Pasadena, California

         Appeal from the United States District Court for the Southern District of California Cynthia A. Bashant, District Judge, Presiding D.C. No. 3:11-cv-00618-BAS-JLB

          Gregory Guillot (argued), Gregory H. Guillot P.C., Dallas, Texas; Michael T. Lane and Kent M. Walker, Lewis Kohn & Walker L.L.P., San Diego, California; for Plaintiff-Appellant.

          Richard Sybert (argued), Joni B. Flaherty, and Yuo-Fong C. Amato, Gordon & Rees LLP, San Diego, California, for Defendants-Appellees.

          Before: MILAN D. SMITH, JR. and JOHN B. OWENS, Circuit Judges, and EDWARD R. KORMAN, [*] District Judge.



         The panel reversed the district court's summary judgment in favor of the defendants in a trademark infringement suit.

         The panel held that the plaintiff adequately pleaded a cause of action for trademark infringement under a "reverse confusion" theory of likely confusion. The panel held that reverse confusion is not a separate claim that must be specifically pleaded, but instead is a theory of likely confusion that may be alleged by itself or in addition to forward confusion. Thus, when reverse confusion is compatible with the theory of infringement alleged in the complaint, a plaintiff need not specifically plead it.

         The panel held that consideration of the intent factor in the likelihood of confusion analysis varies with the type of confusion being considered, and no one type of evidence is required to establish intent in trademark infringement cases under either a forward or reverse theory of confusion.

         The panel held that genuine issues of material fact existed regarding whether defendants' uses of plaintiff's trademark "All-in-One" was protected by the fair use defense. To establish the defense, a defendant must show that its use is (1) other than as a trademark, (2) descriptive of the defendant's goods, and (3) in good faith. The degree of customer confusion is also a factor in evaluating fair use.

         As to plaintiff's trademark "The Write Choice, " the panel held that the district court erred by applying the fair use analysis after determining that the plaintiff presented no evidence of likely confusion. The panel remanded the case for further proceedings.


          SMITH, Circuit Judge.

         Marketquest Group, Inc. (Marketquest) appeals the district court's grant of summary judgment in favor of Norwood Promotional Products, LLC (Norwood), BIC Corp., and BIC USA, Inc. (collectively, Defendants) on Marketquest's trademark infringement claims. The district court held that Defendants' uses of Marketquest's trademarks "All-in-One" and "The Write Choice" were completely protected by the fair use defense. We reverse and remand.


         Marketquest produces and sells promotional products, and has used its United States Patent and Trademark Office registered trademarks "All-in-One" and "The Write Choice" since 1999 and 2000, respectively. In 2009, BIC Corp. and BIC USA, Inc. (collectively, BIC) acquired Norwood, a promotional products company, and in 2010 Norwood published a promotional products catalogue for 2011 that featured the phrase "All-in-One" on the cover of and in the catalogue. The 2011 catalogue consolidated all of Norwood's eight "hard goods" catalogues "in one" catalogue, whereas they were previously published in separate catalogues. In 2010, BIC also used the phrase "The WRITE Pen Choice for 30 Years" in advertising and packaging for its pens, in connection with its thirtieth anniversary promotion.

         Marketquest filed the operative First Amended Complaint (FAC) against Defendants on May 5, 2011, alleging infringement of Marketquest's "All-in-One" and "The Write Choice" trademarks. On August 26, 2011, Marketquest moved for a preliminary injunction. The arguments and evidence submitted by Marketquest in support of its motion pertained only to Defendants' use of "All-in-One, " and not "The Write Choice, " so the district court deemed Marketquest's request for a preliminary injunction as to Defendants' use of "The Write Choice" waived. The district court denied the requested injunction regarding Defendants' use of "All-in-One" after concluding that Marketquest was unlikely to succeed on the merits because Defendants were likely to succeed in asserting a fair use defense.

         Discovery proceeded and the parties filed cross-motions for summary judgment. The district court granted summary judgment for Defendants, holding that there was "some likelihood of confusion and therefore the potential for trademark infringement liability, " but that further analysis of likelihood of confusion was unnecessary because fair use provided Defendants a complete defense to allegations of infringement of both the "All-in-One" and "The Write Choice" trademarks. Marketquest timely appealed.

         STANDARD ...

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