Likelihood of Confusion Inference is Derived from Intent to Copy a Competitor's Mark Not Product: Tenth Circuit | Practical Law

Likelihood of Confusion Inference is Derived from Intent to Copy a Competitor's Mark Not Product: Tenth Circuit | Practical Law

In Water Pik, Inc. v. Med-Systems, Inc., the US Court of Appeals for the Tenth Circuit clarified that the intent factor of the likelihood of confusion test turns on whether there is evidence of an intent to copy a competitor's mark, not a competitor's product.

Likelihood of Confusion Inference is Derived from Intent to Copy a Competitor's Mark Not Product: Tenth Circuit

by Practical Law Intellectual Property & Technology
Published on 15 Aug 2013 • USA (National/Federal)
In Water Pik, Inc. v. Med-Systems, Inc., the US Court of Appeals for the Tenth Circuit clarified that the intent factor of the likelihood of confusion test turns on whether there is evidence of an intent to copy a competitor's mark, not a competitor's product.
On August 12, 2013, the US Court of Appeals for the Tenth Circuit issued an opinion in Water Pik, Inc v. Med-Systems, Inc., affirming the US District Court for the District of Colorado's grant of summary judgment to Water Pik Inc. on the grounds that Water Pik's use of the mark SINUSENSE was not likely to cause consumer confusion.
Med-Systems Inc. sells products under the federally registered trademark SINUCLEANSE. Water Pik, which began selling sinus-irrigation devices under the brand name SINUSENSE, brought an action against Med-Systems, seeking a declaratory judgment that its use of the SINUSENSE brand name did not infringe any of Med-System's marks. Med-System counterclaimed for trademark infringement and unfair competition under the Lanham Act. Finding that the SINUSENSE brand was not likely to cause consumer confusion, the district court awarded summary judgment to Water Pik on the counterclaims and dismissed Water Pik's declaratory judgment action as moot.
The Tenth Circuit affirmed the district court's decision. However, in its review of the six-factor test used to evaluate likelihood of confusion, it noted that the district court erred in evaluating Water Pik's intent to cause confusion. The district court found that Water Pik's intent favored Med-Systems because Water Pik knew of the SINUCLEANSE mark before adopting SINUSENSE and it developed its SINUSENSE brand after it failed to acquire Med-Systems.
The Tenth Circuit agreed that intent should be a central factor in the likelihood of confusion analysis and evidence of intent to copy may justify an inference of confusion. However, it clarified that the analysis of the intent factor should focus on whether the alleged infringer intended to deceive customers about the source of its products by copying the competitor's trademark, rather than whether the alleged infringer intended to cause confusion by copying the competitor's products. The court remarked that this approach reflects the language of the Lanham Act and is in line with other circuit courts, namely the Court of Appeals for the Second Circuit (Streetwise Maps, Inc. v. VanDam, Inc.), Third Circuit (Streetwise Maps, Inc. v. VanDam, Inc.) and Eighth Circuit (Sensient Technologies Corp. v. SensoryEffects Flavor Co.).
Specifically, the Tenth Circuit found that Med-Systems failed to establish Water Pik's intent to copy Med-System's marks because:
  • Water Pik used two outside vendors to assist it in creating, testing and developing the SINUSENSE brand.
  • Water Pik prominently added the Water Pik trademark to all SINUSENSE packaging, which suggests an effort to avoid confusion.
  • Although Water Pik targeted the same distributors and retailers as Med-Systems and designed its bottles to resemble a hybrid of the Med-System's bottle and another brand, this evidence did not prove that Water Pik intended to confuse customers through its use of the SINUSENSE brand name.
  • Although there was one email from a Water Pik executive assistant expressing concern that people may confuse SINUSENSE with SINUCLEANSE, there was no evidence that the Water Pik decision makers knew there would be confusion and that the confusion would be helpful.
Court documents: