No likelihood of confusion:
O’Neal’s (left) and One Industries’ motocross logos
The Ninth Circuit decided a new likelihood of confusion case yesterday, One Industries, LLC v. Jim O’Neal Distributing, Inc. The case involves competing “O” logos used in connection with motocross equipment and apparel. The Southern District of California dismissed Jim O’Neal’s infringement claim on summary judgment, finding the differences in the parties’ logos precluded the likelihood of confusion.
The Ninth Circuit affirmed. After some interesting priority analysis on tacking, the court found that under the Sleekcraft factors, consumer confusion between the two marks was not likely.
“[Jim O’Neal’s] Rounded O’ mark is ‘fanciful,’ entitling it to strong protection. By itself, the mark neither describes nor ‘conveys an impression of a good.’ The Rounded O’ mark has ‘no intrinsic connection to the product with which the mark is used [i.e. a motocross helmet]’ and is a ‘wholly made up term[ ].’ The record, however, contains several examples of similar O marks used by different companies, including Oakley, OGIO, and Alloy MX. Such use of other ‘O’ symbols weakens the Rounded O’ mark. Based upon these offsetting considerations, we agree with the district court’s apparent view that the first Sleekcraft factor, at best, weighs slightly in favor of finding confusion.
“Although O’Neal and One Industries are direct competitors, we are persuaded that the marks do not look alike, that O’Neal has not produced evidence of actual confusion, and that no reasonable jury could infer that One Industries deliberately appropriated the goodwill associated with the O’ mark. The O’ mark, though conceptually strong, is weakened by the presence of other, similar marks. In the absence of evidence of actual confusion or intent to deceive, we decline to grant O’Neal a virtual monopoly on the use of the letter ‘O’ on motorcycle helmets. The mere fact that the two companies are direct competitors and happen to use the same letter on their products is not sufficient to show infringement. Accordingly, we conclude that there is no likelihood of confusion in this case, and that the district court properly granted summary judgment to One Industries.”
Additional blog coverage on the decision here and here.
The case cite is One Industries, LLC v. Jim O’Neal Distributing, Inc., __ F.3d __, 2009 WL 2581864, No. 08-55316 (9th Cir. Aug. 24, 2009).