Seattle Trademark Lawyer

The Ninth Circuit decided a trademark infringement lawsuit while I was in China. It came down on June 27, but here’s a quick summary. Sorry for the delay!

Rearden LLC sued Rearden Commerce, Inc., for trademark infringement in the U.S. District Court for the Northern District of California. Rearden LLC owns technology start-up incubators and artistic production companies. Rearden Commerce is a “concierge” company that links buyers and sellers of business and travel-related services. The beef, obviously, was over the parties’ competing uses of REARDEN.

The district court granted summary judgment for Rearden Commerce.

Citing the factual nature of trademark infringement claims, the Ninth Circuit vacated the order. It’s a pretty fact-specific decision, but the court concluded that genuine issues of material fact existed with respect to both “use in commerce” and likelihood of confusion. Therefore, it found the district court’s dismissal on summary judgment was a mistake.

The court held: “There, nevertheless, are genuine issues of material fact present in this case with respect to at least some of the factors as well as the overall Sleekcraft [v. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.1979)] inquiry itself. The District Court acknowledged that two factors — namely the ‘strength of the mark’ and ‘similarity of the marks’ factors — weigh ‘somewhat’ in favor of Appellants. Indeed, a reasonable jury could give great weight to these two factors, especially when viewed together. We also determine that there are genuine issues of material fact with respect to the ‘proximity of the goods,’ ‘evidence of actual confusion,’ ‘marketing channels used,’ and ‘likelihood of expansion of the product lines’ factors.”

The court remanded the case to the district court for further proceedings consistent with these findings.

The case cite is Rearden LLC v. Rearden Commerce, Inc., __ F.3d __, No. 10-16665, 2012 WL 2402012 (9th Cir. June 27, 2012).