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.
and Submitted May 9, 2017 Pasadena, California
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
Richard Sybert (argued), Joni B. Flaherty, and Yuo-Fong C.
Amato, Gordon & Rees LLP, San Diego, California, for
Before: MILAN D. SMITH, JR. and JOHN B. OWENS, Circuit
Judges, and EDWARD R. KORMAN, [*] District Judge.
panel reversed the district court's summary judgment in
favor of the defendants in a trademark infringement suit.
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.
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.
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.
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.
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
AND PRIOR PROCEEDINGS
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.
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.
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.