Sorensen v. WD-40 Co., No. 14-3067 (7th Cir. 2015)
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Sorensen is the CEO of Inhibitor Technology, which produces rust-inhibiting products containing volatile corrosion inhibitor (VCI), branded with the federally registered trademark THE INHIBITOR. That word mark is owned by Sorensen; he also claims common law trademark rights in a design mark associated with his products, an orange-and-black crosshair. The WD-40 Company, maker of the spray lubricant, introduced the new WD-40 Specialist product line. Sorensen claimed that the branding for those products infringed upon his marks. WD-40 Specialist Long-Term Corrosion Inhibitor, which contains VCI and has a purpose similar to that of Sorensen’s products, contains on its packaging both the word “inhibitor” and an orange crosshair. The district court granted summary judgment, finding that WD-40’s use of the word “inhibitor” was a non-trademark descriptive fair use of the word. As to the crosshair mark, the court found that Sorensen had not presented sufficient evidence to demonstrate a genuine issue of material fact as to a likelihood of confusion. The Seventh Circuit affirmed. The most important factors: similarity of the marks, bad faith intent, and evidence of actual confusion, weigh in favor of WD-40. No consumer would think that the marks are similar. The court noted the” clear weakness of Sorensen’s marks,” which appear inconsistently on his products.
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In the United States Court of Appeals For the Seventh Circuit ____________________ No. 14 3067 JEFFREY SORENSEN, Plaintiff Appellant, v. WD 40 COMPANY, Defendant Appellee. ____________________ Appeal from the United States District Court for the Northern District of Illinois, Western Division. No. 12 cv 50417 — Frederick J. Kapala, Judge. ____________________ ARGUED FEBRUARY 25, 2015 — DECIDED JUNE 11, 2015 ____________________ Before BAUER, FLAUM, and MANION, Circuit Judges. FLAUM, Circuit Judge. Plaintiff Jeffrey Sorensen is the founder and CEO of Inhibitor Technology Corporation, which produces a line of rust inhibiting products containing a substance called volatile corrosion inhibitor (“VCI”). This line of products is branded with the federally registered trademark THE INHIBITOR. That word mark is owned by Sorensen; he also claims common law trademark rights in a 2 No. 14 3067 design mark associated with his products, an orange and black crosshair. In 2011, the WD 40 Company, the well known maker of spray lubricant, introduced a new sub brand of products known as the WD 40 Specialist product line. According to Sorensen, the branding for these products infringes upon his marks. In particular, one of the WD 40 products—WD 40 Specialist Long Term Corrosion Inhibitor, which contains VCI and has a purpose similar to that of Sorensen’s prod ucts—contains on its packaging both the word “inhibitor” and an orange crosshair. So, Sorensen filed suit against WD 40 in the Northern District of Illinois, alleging trademark in fringement and unfair competition under both federal and Illinois law. The district court granted summary judgment in favor of WD 40 on all counts. It found that WD 40’s use of the word “inhibitor” on the label of WD 40 Specialist Long Term Cor rosion Inhibitor was a non trademark descriptive fair use of the word. As to the crosshair mark, the district court found that Sorensen had not presented sufficient evidence to demonstrate a genuine issue of material fact as to a likeli hood of confusion. Sorensen appeals the grant of summary judgment. We affirm the judgment of the district court. I. Background In 1997, Jeffrey Sorensen founded a company called Van Patten Industries and began selling rust preventative prod ucts under the name THE INHIBITOR. That company exist ed until 2010. Now, Sorensen is the CEO of Inhibitor Tech nology Corporation, which he founded and which continues to sell THE INHIBITOR line of products. These products No. 14 3067 3 contain VCI, which prevents corrosion by creating a chemi cal barrier on materials that repels moisture and water. Sorensen claims to own two trademarks related to his line of products. First, he is the owner of the word mark THE INHIBITOR, which was registered on the United States Pa tent and Trademark Office’s Principal Register on August 6, 2002. See THE INHIBITOR, Registration No. 2,604,283. That mark attained incontestable status in August 2008. Second, Sorensen claims ownership of a common law (i.e., unregis tered) trademark in a crosshair design, which consists of a black crosshair symbol over an orange background, with a different black symbol in each quadrant of the crosshair (the “Sorensen crosshair”).1 The district court assumed without deciding that these marks were valid and protectable. Sorensen sells a variety of products using these marks, including “plugs,” “pro chips,” spray oil, oil wipes, grease, degreaser, covers, “poly bags,” “VCI paper,” and wiping cloths, all of which contain VCI. The words THE INHIBITOR appear consistently on all of these products. The crosshair design mark, however, appears on only some of his prod ucts, and its appearance is inconsistent. For example, on the VCI Pro Chips and the V80 VCI Wiping Cloth—among oth ers—there is no crosshair, but rather only an orange and black bull’s eye that replaces the “O” in a stylized THE INHIBITOR logo. But on the V80 VCI Oil Blend and the V80 1 Below, Sorensen also argued that he owned a third, unregistered, trademark in the “inhibitor design mark,” which is a stylized version of THE INHIBITOR in which the “O” has been replaced with the crosshair design mark. Sorensen’s briefs on appeal do not mention this mark, however, so we do not discuss it further. 4 No. 14 306 67 VCI Oil Wipe, the crossha mark ap O t air ppears both on its ow h wn and as the “O” in THE INH a HIBITOR. Items in TH INHIBI HE ITOR Line e So orensen gen nerally targ gets his sa ales at firea arm, fishin ng, and hunting ent h thusiasts, as well as m members of the militar ry. Until 2008, he pr romoted hi products in various hunting an is nd fishin print and online me ng d edia; since then, he ha used Fac as ce book and his we ebsite as his primary m methods of advertisin f ng. Soren nsen also promotes his products at trade sh hows and b by word of mouth. Since July 2012, his chips and plugs hav d y s d ve been sold in th tools, st he torage, and tool box sections of d x No. 14 3067 5 Mena ards retail stores in the Midw west. In his depositio s on, Soren nsen also st tated that he was wor h rking on ge etting his o oil produ into Menards, but has not ye done so. He also said ucts M et that his product are sold in other big box stores and small h ts i g s ler hardw ware stores across the country. s So orensen Cr rosshair W 40 Cross WD shair WD 40 is a well known producer of multipu W w n urpose lubr ri cant spray. Its primary pro s p oduct carrie a tradem es mark consis st ing of a yellow shield bea o w aring the n name “WD 40” in blu D ue chara acters. Acco ording to a survey cond s ducted by t compan the ny and submitted into the re s ecord, four out of fiv American ve ns have used WD 40 product In late 20 4 ts. 011, WD 40 introduce 0 ed a sub brand call the WD 40 Specia b led D alist produc line. The ct ere are ei ight produ ucts in this line. With one except tion, they a all come in metal aerosol spray bottles with the W 40 shield e a WD above the tradem e marked SPE ECIALIST mark. Belo that is th ow he specif product name, su as “Lo fic t’s uch ong Term C Corrosion In n hibito and below that is the crossh or,” s hair design that is at i is sue in this suit (t “WD 40 crosshair” n the 0 ”). WD 40 obtai W ined a reg gistered des sign mark in a simp ple black and white crosshair design. On the bottles though, th k e d s, he 6 No. 14 306 67 WD 40 crosshai appears differently on each p 4 ir y product. For exam mple, on the Long Ter Corrosio Inhibito the cros e rm on or, ss hair is made of a gray cross over a bur orange backgroun s rnt nd, with a black ci ircle perim meter and a different silver blac t ck symb in each quadrant of the cros bol sshair. The backgroun nd color and symb bols are di ifferent on each of th Speciali he ist produ ucts. Becau of its or use range cross shair and i name, th its he Long Term Corr rosion Inhi ibitor is of central im f mportance to this case. That product is also impo rtant becau of its in c p use n gredi ients and fu unction; it contains V and is meant to in VCI hibit rust for a long period of time. A l d According t WD 40, in to mark keting its Sp pecialist pr roducts, th company focuses o he y on tradesmen, indu ustrial cons sumers, aut consume constru to ers, uc tion workers, an mainten w nd nance work kers, with the greate est focus on the aut industry The Spec s to y. cialist produ ucts are pr ro moted in numer d rous print and online media, no of whic e one ch overlap with th media in which Sorensen’s pr he n roducts hav ve been advertised. WD 40 Specialis Line st No. 14 3067 7 WD 40 Specialist Lo Term C ong Corrosion I Inhibitor WD 40’s deci W ision to dev velop the Sp pecialist lin was led b ne by an ex xecutive na amed Graham Milner, who head r, ded a grou up called the Brand Extension Exploratio Project. At his depo d d n on sition Milner de n, enied that WD 40 eve considere forming a W er ed g partn nership with Sorensen’ company However, a document h ’s y. , produ uced for WD 40 by an outside c W n consulting g group, Inn no vation Edge, su n uggested the possibilit of WD 4 forming a ty 40 partn nership with one of fiv firms to produce a new corr h ve o ro sion inhibition product; on of the fiv firms me i p ne ve entioned was Van Patten Indu P ustries, Sor rensen’s fo ormer comp pany. Miln ner stated that his te d eam first be ecame awar of Van Pa re atten as a po tentia technolog provider when he received th document al gy r his in 200 or 2010. Milner als said tha he was a 09 . so at aware of Va an Patten before WD 40’s deci n W ision to use the name “Long Ter e rm Corro osion Inhib bitor,” but he denie any kn t ed nowledge of Soren nsen’s cross shair design mark. Acc n cording to Milner, WD D 40’s marketing for the Spe m f ecialist line focuses o mechani e on ics and other professional use but not the huntin or fishin o ers, t ng ng indus stry. 8 No. 14 3067 Milner also testified that WD 40 had considered using other names for this product, including “corrosion preventing spray,” “advanced corrosion preventer,” and “rust preventing spray.” According to Milner, the name Long Term Corrosion Inhibitor was chosen due to findings by an outside research agency. The district court found that there are multiple products on the market containing VCI and displaying the word “inhibitor” that are not manufac tured or sold by either party to this case. The WD 40 cross hair design was created by ECHO Brand Design, a London based firm. WD 40 adopted the design after testing it with consumers. Another WD 40 executive, Maria Mitchell, was also de posed. She testified that she had never heard of Sorensen, Van Patten, or THE INHIBITOR products prior to the filing of this suit. At her deposition, Mitchell identified a 10 page document generated by Innovation Edge entitled “Executive Summary,” which WD 40 had produced in discovery and which reads: “The resulting product [WD 40’s VCI spray] may have some characteristics related to, for example, … In hibitor® VCI technology from Van Patten Industries.” Mitchell admitted that the document indicated that WD 40 had knowledge of Van Patten and The Inhibitor line of products but she did not know when WD 40 came into pos session of the document. Cheryl Perkins, the founder of Innovation Edge, was also deposed. She described the making of that Executive Sum mary, and acknowledged an email sent by Innovation Edge to WD 40 that listed Van Patten as a prospective partner for VCI technology development. Another document, “Concep tual Ideas Presented to Innovationedge, LLC,” was created No. 14 3067 9 by Innovation Edge and sent to individuals at WD 40 in ear ly 2010. That document includes a reference to Van Patten as a possible partner, as does another document sent from In novation Edge to WD 40 called “WD 40 Brand Extension Exploration Project Business Case Corrosion Products.” Per kins stated that Innovation Edge never incorporated any of Sorensen’s products into any presentation or document pro vided to WD 40, and that she had never visited Sorensen’s website, though the website address was referred to in a document produced by Innovation Edge. Perkins explained that someone else at Innovation Edge had reviewed the web site prior to the preparation of that document. Innovation Edge did not participate in the design of the packaging or labels for the Specialist line and did not suggest the use of the word “inhibitor” or the crosshair design. Nicholas Dormon, the managing director and co owner of ECHO, the firm that designed the WD 40 crosshair, pro vided a declaration. He swore that he had never heard of Sorensen, Van Patten, the Inhibitor product line, or the crosshair mark, and that none of these were considered when ECHO designed the WD 40 crosshair. Additional testimony was given by WD 40’s Senior Vice President of North American Sales, Peter Andrew Dumiak. He testified that, prior to this litigation, he was not aware of Sorensen or his companies, products, or trademarks. He also testified that WD 40 products are sold through various channels, including big box stores such as Home Depot, Lowe’s, and Menards; “mass” stores such as Walmart and Target; “club” stores such as Costco and Sam’s; automotive stores such as Autozone and Pep Boys; hardware stores such as Ace and True Value; and through industrial distributors 10 No. 14 3067 such as Fastenal and Grainger. WD 40 also sells to govern ment agencies such as Armed Forces Information Services (“AFIS”) and the Defense Commissary Agency (“DeCA”), which provide the products through military commissaries. Dumiak also testified that WD 40 does not sell directly to fishing and hunting stores such as Bass Pro Shop and Cabela’s, but agreed that there could be WD 40 products in those stores if a distributor provided them to the stores. Brady Lamb, WD 40’s brand manager for the Specialist line, testified that an earlier WD 40 product, the “3 In One No Rust Shield” (since discontinued) was advertised in hunting and fishing magazines, and was promoted at the Shooting, Hunting, Outdoor Trade Show (“SHOT” show) in 2010. Sorensen also claims that WD 40 exhibited this product at the show in 2009, when Sorensen promoted his own products there, though WD 40 denies this. WD 40 says it no longer targets hunting and fishing enthusiasts. Eric Vander Weit testified that he worked for Sorensen in multiple capacities between approximately 1996 and 2001. He has maintained a personal relationship with Sorensen since then. On July 25, 2012, Sorensen called Vander Weit and asked him to go to Menards and see if Vander Weit could find WD 40 Specialist products. When asked if he thought the products were made by Sorensen the first time he saw them, Vander Weit said he thought that the presence of the crosshair indicated that Sorensen “was doing co branding with WD 40,” but he agreed that the products’ brand was clearly WD 40. Sorensen filed this lawsuit against WD 40, alleging trademark infringement of his THE INHIBITOR word mark; false designation of origin with respect to WD 40’s use of a No. 14 3067 11 crosshair mark, both standing alone and in combination with the word “inhibitor;” and related state claims under Il linois common law and the Illinois Uniform Deceptive Trade Practices Act, 815 Ill. Comp. Stat. 501/1 et seq. The district court granted summary judgment in favor of WD 40 on all counts. First, the court held that WD 40’s use of the word “inhibitor” on its Long Term Corrosion Inhibitor product is a descriptive fair use of the term. Second, it held that there were no genuine issues of material fact as to whether WD 40’s use of its crosshair mark is confusingly similar to Sorensen’s crosshair mark. Finally, because Sorensen’s state claims all require a likelihood of confusion, the district court granted summary judgment to WD 40 on those claims as well. II. Discussion We review a district court’s grant of summary judgment de novo. Tindle v. Pulte Home Corp., 607 F.3d 494, 495 (7th Cir. 2010). Summary judgment is appropriate when the plead ings, depositions, answers to interrogatories, and admissions on file, together with any affidavits, show that there is no genuine issue of material fact and the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). In reviewing the dis trict court’s summary judgment order, we view all facts and draw all inferences in the light most favorable to Sorensen. See Ball v. Kotter, 723 F.3d 813, 821 (7th Cir. 2013). Summary judgment was appropriate if, on the evidence presented, no reasonable juror could return a verdict in Sorensen’s favor. See id. 12 No. 14 3067 A. Descriptive fair use The district court found that no reasonable jury could conclude that WD 40 is liable for infringing Sorensen’s THE INHIBITOR word mark because WD 40’s use of the word “inhibitor” in the name of its Long Term Corrosion Inhibitor is a descriptive fair use of the word. Under 15 U.S.C. § 1115(b)(4), a defendant in a trademark infringement action may invoke the fair use defense by demonstrating that the alleged infringement “is a use, otherwise than as a mark … which is descriptive of and used fairly and in good faith only to describe the goods or services of such party.” This defense “is based on the principle that no one should be able to ap propriate descriptive language through trademark registra tion.” Packman v. Chi. Tribune Co., 267 F.3d 628, 639 (7th Cir. 2001). The hypothetical producer of “Crunchy” brand potato chips, for example, cannot block its competitors from de scribing their chips as crunchy. It may, though, be able to block its competitors from selling chips that are branded “Crunchy.” To prevail on a fair use defense, a defendant must show that: (1) it did not use the mark as a trademark; (2) the use is descriptive of its goods or services; and (3) it used the mark fairly and in good faith. Id. The fair use defense is available even against federally registered trademarks that are incon testable, such as Sorensen’s THE INHIBITOR mark. Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055, 1058 (7th Cir. 1995). i. Non trademark use “A word or phrase functions as a trademark when it is used by a source of a product to identify itself to the public No. 14 3067 13 as the source of its product and to create in the public con sciousness an awareness of the uniqueness of the source and of its products.” Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 953 (7th Cir. 1992) (internal quotation marks omitted). In finding that there was no genuine factual dispute that WD 40’s use of “inhibitor” was a non trademark use, the dis trict court reasoned that the word could not function as a source indicator because the Long Term Corrosion Inhibitor bottle also displays the famous WD 40 shield, and it is the shield that serves as the source indicator for customers. That reasoning is in some tension with our analysis in Sands, Tay lor & Wood Co. There, the defendant—the producer of Ga torade—argued that the words “Thirst Aid” could not func tion as a trademark because they were used in conjunction with the well known “Gatorade” mark. Id. We disagreed, noting that, in the related context of determining likelihood of confusion, “some courts have observed that the conjunc tion of defendant’s trademark and the allegedly infringed term ‘may actually increase the misappropriation by linking defendant’s name to plaintiff’s goodwill.’” Id. at 954 (quoting Banff, Ltd. v. Federated Dep’t Stores, Inc., 841 F.2d 486, 492 (2d Cir. 1988)). “Clearly, then,” we held, “the fact that the Ga torade trademark always appears in Quaker’s ‘Thirst Aid’ advertisements does not preclude a finding that those adver tisements also use ‘Thirst Aid’ as a trademark.” Id. Moreover, the district court’s reasoning rested on the premise that a given product can only contain one indicator of source. That, we know, is incorrect—WD 40’s Specialist products contain at least three registered trademarks: the WD 40 shield, the word mark “Specialist,” and the WD 40 14 No. 14 3067 crosshair mark. The fact that the WD 40 shield serves as a source indicator, therefore, does not mean that the word “inhibitor” does not also serve to indicate the product’s source. The district court supported its conclusion in three other ways that we think are worth mentioning. First, it pointed out that WD 40 did not use the words “the inhibitor” on its product, but rather just the word “inhibitor.” This fact, how ever, goes to whether Sorensen’s trademark was infringed, not whether WD 40 used the word as a mark. Had WD 40 called its product “Inhibitor” and placed that word in large, bold letters on its can, we think it probable that a jury would find that to be trademark use, despite the lack of the word “the.” Whether that trademark use infringed upon Sorensen’s mark would be a separate question. Next, the district court, citing to McCarthy on Trademarks, noted that there are com peting products on the market that also use the word “inhib itor” to describe their products. But, as McCarthy makes clear, the use of a term by other sellers of similar goods is an indicia of the descriptiveness of the term, not of its being used in a non trademark manner. See 2 McCarthy on Trademarks and Unfair Competition § 11:20 (4th ed.). In Sands, Taylor & Wood Co., we cautioned against conflating these two ele ments of the fair use defense. 978 F.2d at 954. Descriptive terms, after all, are protectable as a trademark if they have developed secondary meaning. See id. Finally, the district court said that the fact that WD 40 uses the word “inhibitor” on only one of its Specialist line of products, rather than on every product in the line, is an indicia that the word is not being used as a mark. That is partially correct: Sorensen’s ar gument would be much stronger if “inhibitor” appeared on all of the products in the Specialist line. However, a mark No. 14 3067 15 that is used on only one product within a larger line can nevertheless be a source indicator, not for the whole line, but for that product in particular. For example, Gatorade, which we mentioned above, has a line of “Gatorade Frost” energy drinks, in five different flavors. The names of two of those flavors—“Glacier Freeze” and “Glacier Cherry”—are regis tered as separate trademarks. See GLACIER FREEZE, Regis tration No. 2,098,324; GLACIER CHERRY, Registration No. 4,401,610. Nonetheless, we agree with the district court’s ultimate conclusion that WD 40’s use of the word “inhibitor” is a non trademark use. Simply put, we believe that no reasona ble juror looking at a bottle of Long Term Corrosion Inhibi tor could conclude that the word is used as an indicator of source. Compared to other features in the bottle’s design, the word “inhibitor” is much less prominent or noticeable. It is much smaller than the bright and eye catching WD 40 shield. It is also smaller than the stylized and colored word “Specialist” and the colorful crosshair mark. Finally, the word “inhibitor”—which is written in relatively small, white type—is less attention grabbing than even the word “Corro sion,” which is larger and colored in orange. Due to the word’s small size, plain color, and non privileged placement on the bottle, we find that “inhibitor” is not an “attention getting symbol,” and does not function as a source indicator. See Sands, Taylor & Wood Co., 978 F.2d at 954 (quoting 1 McCarthy, supra § 11:17, at 476 (1991 Supp.)). Sorensen argues in response that WD 40’s communica tions guide requires that employees and advertisements only refer to the product at issue as “WD 40 Specialist Long Term Corrosion Inhibitor;” no shorter name is acceptable. We do 16 No. 14 3067 not agree with Sorensen that this fact is relevant. He seems to suggest that, because the word “inhibitor” must be in cluded whenever WD 40 mentions the product, it must be a trademark. But though the guideline’s requirement that the full name be used may suggest that the name as a whole is an indicator of source, it does not mean that each individual word in the name serves as a mark. We doubt that Sorensen would argue that the word “term” is a trademark for WD 40’s product. ii. Descriptive of the product A descriptive term ordinarily names a characteristic of a product or service. H D Mich., Inc. v. Top Quality Serv., Inc., 496 F.3d 755, 759 (7th Cir. 2007). There can be no dispute here that the word “inhibitor,” following the word “corro sion,” describes a characteristic of WD 40’s product, which contains VCI and is meant to inhibit corrosion for a long pe riod of time. Multiple competing products made by third parties use the word “inhibitor” to describe their products, and WD 40 uses the word multiple times on its bottle in a manner that is clearly non source identifying. Sorensen offers little resistance to this aspect of the dis trict court’s opinion, though he does argue that the word “inhibitor” is suggestive rather than merely descriptive be cause it requires “some operation of the imagination” to make the connection between the term “inhibitor” and a rust preventative oil product. G. Heileman Brewing Co. v. An heuser Busch, Inc., 873 F.2d 985, 996 (7th Cir. 1989). We disa gree, but, regardless, this framing of the issue is incorrect. The WD 40 product is called a “Corrosion Inhibitor,” not just an “Inhibitor.” It takes no operation of the imagination to No. 14 3067 17 make a connection between the term “Corrosion Inhibitor” and a product that inhibits rust and other forms of corrosion. Sorensen points to the case Fortune Dynamic, Inc. v. Victo ria’s Secret, 618 F.3d 1025, 1035 (9th Cir. 2010), in which the Ninth Circuit held that a jury—and not a judge on summary judgment—should decide whether the trademarked term DELICIOUS was being used in a descriptive sense. “Deli cious,” of course—like “inhibitor”—seems like an inherently descriptive word, which would seem to make for an easy case for the judge on summary judgment. But the key to For tune Dynamic was that the word “Delicious” was a trade mark for women’s shoes, and not for a food or beverage. Id. at 1029. Whether or not a term is descriptive depends not on ly on the term itself, but also on the product for which it serves as a source indicator. “Corrosion Inhibitor,” for ex ample, is clearly descriptive of WD 40’s VCI spray; if it ap peared on a t shirt, though, our conclusion very well might be different. iii. Bad faith Finally, the proponent of a fair use defense must show that it used the plaintiff’s mark fairly and in good faith. Sorensen’s primary argument regarding this element is that the evidence shows that WD 40 had knowledge of Sorensen, his products, and his THE INHIBITOR word mark when it decided upon the name of its Long Term Corrosion Inhibi tor. Given that WD 40 had this knowledge, Sorensen argues, a jury could infer that WD 40 included the word “inhibitor” in a bad faith attempt to siphon off business from Sorensen. The district court concluded that there was no evidence that WD 40 had knowledge of Sorensen’s product and word 18 No. 14 3067 mark, but we disagree. There are multiple documents in the record which were in WD 40’s possession and which specifi cally reference Sorensen and his mark. The district court dis counted the relevance of these documents, finding that there is no evidence that WD 40’s marketing department, the entity that decided upon the name “Long Term Corrosion Inhibi tor,” was provided with these documents or had any aware ness of Sorensen’s mark. Many people at the company, though, clearly did have this information, and a jury could reasonably infer that the marketing department—or at least someone with final decision making authority—had this knowledge as well. WD 40’s mere knowledge of Sorensen’s mark, however, is insufficient to establish that WD 40 acted in bad faith. Pack man, 267 F.3d at 642. To survive summary judgment, a plain tiff must point to something more that suggests subjective bad faith; Sorensen has not done so here. See id. All Sorensen can point to is the fact that WD 40 conducted no trademark search prior to using the word “inhibitor” on its product. A failure to investigate can, in some circumstances, support an inference of bad faith. See Fortune Dynamic, 618 F.3d at 1043. In this case, however, this fact cannot help Sorensen survive summary judgment. First, if WD 40 believed—correctly, as we have concluded—that it was not using the word “inhibi tor” as a trademark, it had no reason to conduct a trademark search. Second, and more fundamentally, Sorensen’s com plaint that WD 40 failed to undertake a trademark search is inconsistent with his theory that WD 40 knew about his mark, and decided to copy it anyway. Because WD 40 al ready knew that Sorensen owned a trademark for THE INHIBITOR, a trademark search would have been useless. No. 14 3067 19 Other than pointing to WD 40’s mere knowledge of Sorensen’s mark, Sorensen has identified no evidence that it acted in subjective bad faith. Because WD 40’s use of the word “inhibitor” was also a non trademark, descriptive use, we therefore agree with the district court’s conclusion that WD 40 is entitled to summary judgment on its fair use de fense with regard to Sorensen’s word mark claims. B. Likelihood of confusion Having concluded that Sorensen’s claims regarding his word mark are barred by the descriptive fair use defense, we are left with his claim that WD 40’s use of a crosshair logo on its Specialist products infringes upon Sorensen’s common law crosshair trademark.2 The district court granted sum mary judgment to WD 40 on these claims, finding that no reasonable jury could find a likelihood of confusion. “The ‘keystone’ of trademark infringement is ‘likelihood of confusion’ as to source, affiliation, connection or sponsor ship of goods or services among the relevant class of cus tomers and potential customers.” Sands, Taylor & Wood Co., 978 F.2d at 957. “To decide whether there is a likelihood of confusion … a court must ask whether consumers, and spe cifically consumers who would use either product, would be likely to attribute them to a single source.” Bd. of Regents of Univ. of Wis. Sys. v. Phx. Int’l Software, Inc., 653 F.3d 448, 455 (7th Cir. 2011). Possible confusion is not enough; rather, con fusion must be “probable.” 4 McCarthy, supra § 23:3. Likeli hood of confusion is a question of fact, usually reserved for the jury. Bd. of Regents, 653 F.3d at 452. 2 For the purposes of this analysis, we assume without deciding that Sorensen’s crosshair mark is valid and protectable. 20 No. 14 3067 This circuit uses the following seven factors to determine the likelihood of confusion: (1) the similarity between the marks in appearance and suggestion; (2) the similarity of the products; (3) the area and manner of consistent use; (4) the degree of care likely to be exercised by consumers; (5) the strength of the plaintiff’s mark; (6) any evidence of actual confusion; and (7) the intent of the defendant to “palm off” his product as that of another. Id. at 454. No single factor is dispositive, but we have said that three are especially im portant: the similarity of the marks, the intent of the defend ant, and evidence of actual confusion. Ty, Inc. v. Jones Grp., Inc., 237 F.3d 891, 898 (7th Cir. 2001). A court may grant summary judgment even if there is a genuine issue of mate rial fact as to one or more of the seven factors, as long as no reasonable jury, looking at the seven factors as a whole, could conclude that there is a likelihood of confusion. AHP Subsidiary Holding Co. v. Stuart Hale Co., 1 F.3d 611, 616 (7th Cir. 1993). i. Similarity between the marks “To determine whether two marks are similar, we view the marks as a whole.” AutoZone, Inc. v. Strick, 543 F.3d 923, 929 (7th Cir. 2008). Important to this case, “[w]e must com pare the marks in light of what happens in the marketplace and not merely by looking at the two marks side by side.” Id. at 930 (internal quotation marks omitted). “The test is not whether the public would confuse the marks, but whether the viewer of an accused mark would be likely to associate the product or service with which it is connected with the source of products or services with which an earlier mark is connected.” Id. (quoting James Burrough Ltd. v. Sign of Beefeat er, Inc., 540 F.2d 266, 275 (7th Cir. 1976)). “[C]omparison of No. 14 3067 21 the labels rather than simply the trademarks is appropriate.” Henri’s Food Prods. Co., Inc. v. Kraft, Inc., 717 F.2d 352, 355 (7th Cir. 1983) (emphasis added). “The court should therefore consider whether the customer would believe that the trademark owner sponsored, endorsed, or was otherwise af filiated with the product.” AutoZone, 543 F.3d at 930 (citation and internal quotation marks omitted). The central dispute regarding this factor is demonstrated by the differing sets of pictures presented in the parties’ briefs. In Sorensen’s brief, he shows zoomed in side by side pictures of his crosshair and the burnt orange version of the WD 40 crosshair. From that perspective, there are some basic similarities between the marks—they are both orange with a black border and with various symbols in the quadrants of each crosshair. But the similarity of the marks analysis does not focus on the appearance of the trademarks in isolation; rather, it looks at the labelling as a whole. The pictures found in WD 40’s brief and the district court opinion, which show the entire labels of the products, are therefore much more relevant. We agree with the district court that consumers looking at the entirety of the WD 40 labels would not think that the Spe cialist products come from the same source as Sorensen’s THE INHIBITOR line of products. The WD 40 bottles are primarily black and silver, with a large yellow WD 40 shield and a bright yellow cap. The packaging of Sorensen’s prod ucts, in contrast, is primarily orange, yellow orange, and black. Even the appearance of the parties’ crosshairs is quite different. WD 40’s silver and burnt orange crosshair, with silver symbols shaded to show depth, creates a different im pression than Sorensen’s bright orange and black crosshair, 22 No. 14 3067 which features two dimensional symbols that are silhou ettes. The relative size of the crosshairs on the labels is dif ferent, as is their placement—on the few “The Inhibitor” products which contain Sorensen’s crosshair, it most com monly appears as the “O” in “Inhibitor,” not as a free standing mark near the bottom of the bottle, like on the Spe cialist products. Simply put, the overall commercial impres sion of the two bottles is quite distinct. We have also previously stated that the prominent dis play of a well known trademark—such as WD 40’s shield— along with an allegedly infringing mark is a strong indica tion that there is no likelihood of confusion. Packman, 267 F.3d at 645. Sorensen argues that such a presumption should not exist. First, he contends that this presumption essentially gives companies with strong marks carte blanche to infringe on weaker senior user’s marks.3 Trademark law, though, ex ists primarily to protect consumers, not only the holder of the trademark. See, e.g., Henri’s Food Prods., 717 F.2d at 365 (“In deed the underlying purpose of trademark law is to prevent confusion.”). If the holder of a strong mark such as WD 40 puts its mark on one of its products, consumers will not be confused—they will correctly surmise the source of the product. Moreover, there is a remedy for the evil that Sorensen identifies—a reverse confusion claim, which Sorensen has not made here. See Custom Vehicles, Inc. v. Forest River, Inc., 476 F.3d 481, 484 (7th Cir. 2007) (explaining the concept of reverse confusion, in which “a junior uses its size and market penetration to overwhelm the senior, but small 3 The “senior user” of a mark is the first entity to use the mark—here, Sorensen. The “junior user” is a subsequent user of the mark—here, al legedly, WD 40. No. 14 3067 23 er, user,” and which exists to “protect[] the senior user’s con trol of its mark and the goodwill created by the mark from a junior user’s employment of the mark, and protects the pub lic from being deceived into believing that the senior user’s product emanates from, is connected to, or is sponsored by the junior user”). Second, Sorensen argues that, even if consumers will know that WD 40 is a source of the Specialist products, WD 40’s use of Sorensen’s mark will confuse consumers into thinking that his company is also a source—in other words, that the companies worked together to co produce the prod uct. By fooling consumers in this way, WD 40 could improp erly benefit from Sorensen’s goodwill, and consumers may be harmed if they see Sorensen’s crosshair mark as an indica tor of quality but accidentally purchase a Specialist product instead. Sorensen points to our case International Kennel Club of Chicago., Inc. v. Mighty Star, Inc., in which we endorsed the proposition that the presence of a junior user’s house mark might not always prevent a consumer from “mistakenly as suming that [a senior user] is somehow associated with [a junior user] or has consented to the mark’s use.” 846 F.2d 1079, 1088 (7th Cir. 1988) (quoting Lois Sportswear U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 876 (2d Cir. 1986)). In that case, however, the senior user’s mark was much stronger than the junior user’s, lending credibility to the theory that the junior user was trying to feed off of the senior user’s goodwill. In contrast, we have considered multiple cases in which the presence of the junior user’s famous mark has been suffi cient to dispel confusion. In Packman, the presence of the Chicago Tribune mark on each page of a newspaper edition 24 No. 14 3067 which used plaintiff’s “Joy of Six” mark dispelled consumer confusion. 267 F.3d at 645. And, in G. Heileman Brewing Co., we held that the defendant’s use of the strong Anheuser Busch mark in juxtaposition with a “category descriptor” mark—“LA,” meaning “low alcohol”—dispelled any likeli hood of confusion. 873 F.2d at 1000. The lesson of these cases is that although the use of an especially strong house mark can greatly lessen the likeli hood of confusion, it may not wholly eliminate the possibil ity that consumers will believe a product to be cross branded. In determining the extent of this possible confu sion, we must make two comparisons. First, we must com pare the strength of the junior user’s house mark to the sen ior user’s mark that is allegedly being appropriated. A con sumer is more likely to think of cross branding where the senior mark is well known; after all, if the consumer has never heard of the senior user, cross branding will not come to mind. Here the WD 40 mark is very strong, while, as we detail below, Sorensen’s crosshair mark is quite weak. This makes it unlikely that a consumer will think that the WD 40 product is cross branded with Sorensen’s line. The second relevant comparison is between the senior user’s mark and the image that appears on the junior user’s product. If cross branding were indeed occurring, the junior user would like ly use an exact copy of the senior user’s mark, and probably the name of the senior user’s product as well. Here, though, as we concluded previously, the WD 40 crosshair is quite different from Sorensen’s. Moreover, if the product were cross branded, it would not just contain this crosshair, since that is a relatively weak source of Sorensen’s product. Ra ther, it would probably feature Sorensen’s stylized THE INHIBITOR logo, with either the crosshair or a bull’s eye in No. 14 3067 25 the place of the “O.” If cross branding were occurring, the junior user would seek to make it as clear as possible; it would not use a significantly different form of a seldom used logo. Altogether, we think that that no consumer would think that the Specialist products were co branded by Sorensen. ii. Similarity of the products The relevant inquiry with respect to the similarity of the products factor is not whether the products are interchange able, but whether the products are the kind the public might very well attribute to a single source. Autozone, 543 F.3d at 931. The district court found that this factor supports WD 40, but we disagree. Two of the products at issue—Sorensen’s V80 VCI blend and WD 40’s Long Term Corrosion Inhibi tor—are functionally identical. So, at the very least, this fac tor supports Sorensen with regard to whether WD 40 in fringes his trademark by using its crosshair logo on that product in particular. Looking at the parties’ product lines as a whole, the dis trict court concluded that the products in Sorensen’s line and the Specialist products are not the type that the public might attribute to a single source. Sorensen’s line of products in cludes oil, grease, poly bags, wiping clothes, plugs, paper, and pro chips, all of which contain VCI. The Specialist prod ucts, with one exception, are all sprays that come in aerosol cans; only one contains VCI. We think, however, that con sumers might very well expect Sorensen, as the producer of rust preventive products, to expand his product line into the types of sprays included in the Specialist line. See id. (“The rights of an owner of a registered trademark extend to any goods or services that, in the minds of consumers, might be 26 No. 14 3067 put out by a single producer.”). The fact that Sorensen’s cur rent products all contain VCI is minimally relevant; WD 40’s line demonstrates that the same producer sometimes manu factures both products that do and do not contain VCI. It al so seems eminently possible that WD 40 might expand its Specialist line into the products produced by Sorensen. WD 40 already makes a rust preventing spray containing VCI. It would not be surprising for the company to start producing other VCI containing rust preventive materials. Again, the contents of Sorensen’s product line demonstrate that compa nies sometimes produce both VCI spray and other VCI containing materials. WD 40 points to a case, Barbecue Marx, Inc. v. 551 Ogden, Inc., 235 F.3d 1041, 1045 (7th Cir. 2000), in which we said that, in considering this factor in the context of restaurants, courts should consider the restaurants’ “ambiances and themes.” In other words, we said that two restaurants are not necessarily similar products just because they are both restaurants. In the context of this case, WD 40 suggests that its Specialist products are different than Sorensen’s because they have a different “ambiance”—the “WD 40 ambiance”— due to the presence of the WD 40 shield. It further suggests that its products have different “themes”—essentially, col ors—than Sorensen’s. This argument misses the mark entirely. It is obvious that two restaurants can be so dissimilar as to be essentially dif ferent products. A Michelin starred French restaurant is wholly different from a Chinese take out restaurant.4 Con 4 The restaurants in Barbeque Marx were admittedly not as dissimilar as those in our hypothetical. Both were barbeque restaurants. The plaintiff’s restaurant, however, was small, decorated in a 1950s style, and focused No. 14 3067 27 sumers, moreover, would not expect the owner of one of these restaurants to branch into the other’s part of the mar ket. A restaurant’s ambiance and themes are part of its prod uct, because visiting a restaurant is a service experience. The products at issue in our case, in contrast, do not have themes or ambiance—they only have branding. The colors and de signs found on the outside of an aerosol can are not the product. It is circular to look at products’ branding—in other words, their trademarks—to consider, for trademark in fringement purposes, whether two products are similar. Products that come in spray bottles can of course be very dif ferent—window cleaner is not the same as spray paint. But that’s because of what is inside the bottle, not what is printed on the outside. We therefore find that this factor favors Sorensen. iii. Area and manner of concurrent use In considering this factor, courts look at “whether there is a relationship in use, promotion, distribution or sales be tween the goods or services of the parties.” CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660, 681 (7th Cir. 2001). We also look to whether the parties use the same channels of commerce, target the same general audience, or use similar marketing procedures. Id. at 681–82. This factor generally provides little support for Sorensen. He presents no concrete evidence that WD 40’s products and on blues music. The defendant’s, in contrast, “style[d] itself as an ‘irrev erent’ restaurant, using … sexually charged slogans,” and had a very different interior feel than plaintiff’s restaurant. But, as we note above, even these relatively minor differences had to do with the parties’ prod ucts, not merely with their branding. 28 No. 14 3067 his own products have ever been sold next to each other, that they target the same consumers, that they have ever been advertised through the same channels, or that the products were both shown at the same trade show in the same year. Sorensen does, however, provide some evidence from which a jury could make limited inferences in his favor. It is undisputed that Sorensen and WD 40 both sell products at Menards, though the products are currently sold in different sections and Sorensen’s VCI oils and sprays—the products most similar to WD 40’s—are not sold at Menards. So, while a consumer may encounter both parties’ products while in the same store, he will not see them both simultaneously. Though Sorensen’s products are not sold at big box or mass stores other than Menards, a jury could infer that both his and WD 40’s Specialist products are sold at smaller hard ware stores such as Ace. And, though there is no evidence that WD 40 specifically markets to Sorensen’s target audi ence—hunters and fishermen—that is somewhat beside the point, as WD 40 effectively targets all consumers. Sorensen also specifically targets members of the military. WD 40 ar gues that it does not, but a jury could infer that it does through its sale of its products to AFIS and DeCA, which in turn supply military commissaries. Even making all inferences in Sorensen’s favor, as we must at this stage, this factor only weakly supports Sorensen. iv. Degree of care exercised by consumers Generally, courts considering this factor assume that “[t]he more widely accessible and inexpensive the products and services, the more likely that consumers will exercise a lesser degree of care and discrimination in their purchases.” No. 14 3067 29 Id. at 683. When customers use a lesser degree of care, this supports a finding that there is a likelihood of confusion. Both Sorensen’s and WD 40’s products are quite inexpen sive (under $12), and could even be characterized as impulse purchases. The district court held that this factor tended to support Sorensen, and we agree. WD 40 argues that con sumers searching for its famous shield—which appears on its Specialist products—take much greater care in purchas ing to ensure that they are indeed choosing the correct product. That may be true, but it is irrelevant to this case, in which Sorensen alleges that WD 40 is infringing his trade mark. The consumers relevant to our likelihood of confusion inquiry are not those who go to the store seeking to buy WD 40 products. Rather we are interested in those custom ers who seek to buy Sorensen’s products (or are undecided about what to buy), and are potentially misled into buying a Specialist product. That fact that WD 40’s brand may be strong does not influence how careful these customers are likely to be. WD 40 points to a number of our cases in which we have stated that the existence of a well known mark can lead consumers to exercise a higher degree of care. See, e.g., Barbecue Marx, 235 F.3d at 1045. In each of those cases, how ever, the famous mark belonged to the plaintiff; the strength of the plaintiff’s mark meant that consumers searching for the plaintiff’s good or service were likely to take more care to ensure that they chose correctly. Here, though, the situation is reversed, and the relevant consumers are unlikely to exer cise a great deal of care. This factor, therefore, weighs in Sorensen’s favor. 30 No. 14 3067 v. Strength of Sorensen’s mark “The ‘strength’ of a trademark refers to the mark’s dis tinctiveness, meaning its propensity to identify the products or services sold as emanating from a particular source.” CAE, 267 F.3d at 684. “The stronger the mark, the more likely it is that encroachment on it will produce confusion.” Auto Zone, 543 F.3d at 933. A mark’s strength ordinarily corre sponds to its economic and marketing strength. Id. Sorensen has presented little evidence demonstrating the strength of his crosshair mark. Though there is evidence that Sorensen has included the crosshair mark in advertising since the late 1990s, he has offered no consumer surveys or testimony regarding the public’s awareness of the mark, or sales data showing that products bearing the mark are so widely sold that a jury could infer that many consumers are aware of the mark. Most damaging to Sorensen’s argument regarding this factor is his inconsistent use of the crosshair mark. Inconsistent use makes a symbol less helpful to con sumers as a source indicator, and therefore a weaker mark. Sorensen’s crosshair has been used since 1997, but inconsist ently—sometimes the crosshair has symbols in each quad rant, sometimes the quadrants are empty, and many times there is no crosshair at all, but rather a bull’s eye. This factor therefore squarely supports WD 40. vi. Evidence of actual confusion Sorensen admits that he does not have any evidence of actual confusion. As he correctly points out, however, evi dence of actual confusion is not required to prove that a like lihood of confusion exists. CAE, 267 F.3d at 686. No. 14 3067 31 vii. Bad faith intent This factor focuses on evidence that the defendant is at tempting to pass off its product as having come from the plaintiff. Packman, 267 F.3d at 644. Mere knowledge of some one else’s mark is insufficient to show intent to pass off. Barbeque Marx, 235 F.3d at 1046. We above concluded that there is enough evidence for a jury to infer that WD 40 knew about Sorensen’s products and his THE INHIBITOR word mark; we come to the same conclusion regarding his cross hair mark. Just as with the word mark, however, we find that Sorensen has presented no evidence that WD 40 attempted to pass off its products as Sorensen’s. There is no evidence that ECHO, the firm that first designed the WD 40 crosshair, had any knowledge of Sorensen’s mark. It seems highly un likely, therefore, that, after ECHO came up with the design on its own, WD 40 chose it because it hoped to siphon off sales from Sorensen. Furthermore, the fact that the WD 40 shield appears on the Specialist products tends to suggest a lack of bad faith—why include this well known mark if WD 40 was attempting to confuse consumers into thinking that the product was not produced by WD 40, but rather by Sorensen. Though a reasonable jury could find that WD 40 knew about Sorensen’s crosshair mark when it adopted its own crosshair design, it could not reasonably conclude that it copied the mark in bad faith. This factor therefore supports WD 40. * * * We agree with the district court that summary judgment was appropriate in this case. Although, as noted above, a 32 No. 14 3067 number of the likelihood of confusion factors provide sup port for Sorensen, that is not enough to create a material dis pute of fact that must be presented to a jury. AHP, 1 F.3d at 616. Rather, the relevant question is whether, looking at the seven factors collectively, a reasonable jury could find in Sorensen’s favor. The three most important factors— similarity of the marks, bad faith intent, and evidence of ac tual confusion—all point decisively in favor of WD 40. Par ticularly important is the dissimilarity of the marks; because we conclude that no consumer would think that the marks are similar, we cannot imagine any consumer being con fused. Also central to our conclusion is the clear weakness of Sorensen’s marks, which appear only rarely and inconsist ently on his products. Weighed together, the seven factors show no disputed issue of material fact that must be pre served for the jury. III. Conclusion We AFFIRM the judgment of the district court.
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