Marketquest Group, Inc. v. BIC Corp., No. 15-55755 (9th Cir. 2017)
Annotate this CaseThe Ninth Circuit reversed the grant of summary judgment for defendants in this trademark infringement suit regarding defendants' use of Marketquest's "All-in-One" and "The Write Choice" trademarks. The panel held that Marketquest's pleading was adequate to support a cause of action for trademark infringement under a reverse confusion theory of likely confusion; consideration of the intent factor in the likelihood of confusion analysis varies with the type of confusion being considered; the district court erred by granting summary judgment in favor of defendants based upon the fair use defense regarding their use of "All-in-One;" and the district court erred by applying the fair use analysis to defendants' use of "The Write Choice" after determining that Marketquest presented no evidence of likely confusion.
Court Description: Trademark The panel reversed the district court’s summary judgment in favor of the defendants in a trademark infringement suit. The panel held that the plaintiff adequately pleaded a cause of action for trademark infringement under a “reverse confusion” theory of likely confusion. The panel held that reverse confusion is not a separate claim that must be specifically pleaded, but instead is a theory of likely confusion that may be alleged by itself or in addition to forward confusion. Thus, when reverse confusion is compatible with the theory of infringement alleged in the complaint, a plaintiff need not specifically plead it. The panel held that consideration of the intent factor in the likelihood of confusion analysis varies with the type of confusion being considered, and no one type of evidence is MARKETQUEST GROUP V. BIC CORP. 3 required to establish intent in trademark infringement cases under either a forward or reverse theory of confusion. The panel held that genuine issues of material fact existed regarding whether defendants’ uses of plaintiff’s trademark “All-in-One” was protected by the fair use defense. To establish the defense, a defendant must show that its use is (1) other than as a trademark, (2) descriptive of the defendant’s goods, and (3) in good faith. The degree of customer confusion is also a factor in evaluating fair use. As to plaintiff’s trademark “The Write Choice,” the panel held that the district court erred by applying the fair use analysis after determining that the plaintiff presented no evidence of likely confusion. The panel remanded the case for further proceedings.
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