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Differences in Goods Can Avoid Confusion Even When Trademarks are Identical

Think this is from Delta Airlines’ Web site? Me either.

We’ve got DELTA for an airline, and DELTA for faucets.

One of these guys has got to be infringing the other, right?

Nope. Even with exact trademarks, there’s no likelihood of consumer confusion if the products are sufficiently different. If the average consumer wouldn’t think an airline also makes bathroom fixtures, both companies can peacefully coexist even though they share identical trademarks.

Last week, the District of Oregon illustrated this principle when it found that parties with similar marks and similar goods can coexist in their respective markets without one infringing the other.

In Icebreaker Limited v. Gilmar S.P.A., plaintiff Icebreaker moved for summary judgment on its claim for a declaration that its ICEBREAKER trademark did not infringe Gilmar’s ICEBERG trademark, even though both parties use their marks with clothing. The court granted its motion.

“Here the record reflects even though Plaintiff makes some things like dresses and camisoles and workout and exercise apparel that people theoretically could wear anywhere as opposed to only for athletic activities, Plaintiff’s products are demonstrably different from Defendant’s products: Plaintiff designs, markets, and sells its clothing as performance active wear; Plaintiff’s website organizes apparel by activities such as biking, hiking, fishing, mountaineering, running, and skiing; Plaintiff’s stores are organized by activity, and both the website and the stores contain photos and advertisements of people engaged in athletic activities; and Plaintiff advertises its clothing in various sporting and outdoors magazines….

“In contrast,” the court found, “the record reflects Defendant is an Italian fashion company. Defendant’s advertising in various foreign fashion magazines features runway models wearing designer apparel. Defendant’s clothing appears on models in the Milan fashion show.”

In short, active wear just isn’t close enough to high fashion wear, to create a likelihood of confusion — even when both marks begin with the formative “ICE.”

The case cite is Icebreaker Limited v. Gilmar S.P.A., No. 11-309 (D. Or. Nov. 26, 2012) (Brown, J.).

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