In Adidas America, Inc. v. Calmese, District of Oregon Magistrate Judge Janice Stewart recommended that the court grant Adidas’ motion for summary judgment that its use of “prove it” does not infringe defendant Michael Calmese’s PROVE IT! registered trademark but that the court deny Adidas’ motion that its use of “prove it” is not a false declaration of origin.
On Oct. 8, the district court adopted the first recommendation but declined to adopt the second recommendation as being inconsistent with the first.
The court found: “The test for whether trademark infringement has occurred is identical to the test for whether false designation of origin has occurred.
“Although the Magistrate Judge did not separately address Plaintiff’s claim for a declaration of non-false designation of origin, she did address whether a likelihood of confusion existed between the use of the phrase “prove it” on Plaintiff’s t-shirts and Defendant’s “prove it!” trademark. As noted, after considering each of the Sleekcraft factors, the Magistrate Judge found two were neutral, four weighed in favor of Plaintiff, and two weighed in favor of Defendant. The Magistrate Judge found the factors that were most important were the ones favoring Plaintiff; namely, lack of strength of Defendant’s mark, the lack of relatedness of the goods, the lack of similarity of the marks, and the lack of evidence of actual confusion. Accordingly, the Magistrate Judge concluded there was not any triable issue of fact as to the likelihood of confusion between the two marks.
“After reviewing the pertinent portions of the record de novo and Plaintiff’s Objections, the Court notes the Sleekcraft factors found by the Magistrate Judge to favor Plaintiff also are at the heart of the test for non-false designation of origin, and, therefore, the Court finds the Magistrate Judge erred when she denied summary judgment to Plaintiff on its claim for a declaration of non-false designation of origin.”
The case cite is Adidas America, Inc. v. Calmese, __ F.Supp.2d __, 2009 WL 3254348, No. 08-91 (D. Or. Oct. 8, 2009).