Opinion
Case No. 3:18CV547
06-14-2020
FLOWER MANUFACTURING, LLC, Plaintiff v. CARECO, LLC, Defendant
Andrew M. Pauwels, Honigman, Detroit, MI, J. Michael Huget, Mary Alexander Hyde, Honigman, Ann Arbor, MI, for Plaintiff. Amy Price, Akerman, West Palm Beach, FL, Caroline H. Mankey, Akerman, Los Angeles, CA, Jeffrey J. Mayer, Akerman, Chicago, IL, for Defendant.
Andrew M. Pauwels, Honigman, Detroit, MI, J. Michael Huget, Mary Alexander Hyde, Honigman, Ann Arbor, MI, for Plaintiff.
Amy Price, Akerman, West Palm Beach, FL, Caroline H. Mankey, Akerman, Los Angeles, CA, Jeffrey J. Mayer, Akerman, Chicago, IL, for Defendant.
ORDER
James G. Carr, Sr. U.S. District Judge
This is a trademark dispute between two companies that make air fresheners.
Plaintiff Flower Manufacturing, LLC, owns the registered trademark CHERRY BOMB for car air freshener cards as well as thirteen similar marks (e.g. , NILLA BOMB) for other "flavors" of freshener cards.
In 2017, while attending the annual Car Wash Show in Las Vegas, Flower's principal Ken Flower learned from a customer that another attendee, defendant CareCo, LLC, was producing air fresheners under a SCENT BOMB trademark that resembled the Flower BOMB marks. Flower demanded that CareCo cease and desist from its allegedly infringing use of the SCENT BOMB mark, but CareCo demurred, thereby precipitating this lawsuit for trademark infringement and related claims under the Lanham Act, 15 U.S.C. § 1051 et seq.
Flower has abandoned its claim for unjust enrichment. (Doc. 33, PageID 443 n.10).
Jurisdiction is proper under 28 U.S.C. § 1331.
Pending are the parties’ cross motions for summary judgment. (Docs. 28, 33). For the reasons that follow, I grant CareCo's motion and deny Flower's motion.
Background
A. Flower and the BOMB Marks
In 2002, Flower acquired the business and assets of a company called Auto Fresh, Inc., that made and sold air freshener products under the CHERRY BOMB trademark. Flower registered this mark, both words and design, on the U.S. Trademark Principal Register and listed the mark's first use as 2002.
The CHERRY BOMB mark features a round red bomb with a lit fuse against a yellow background; the words "CHERRY BOMB" in yellow font inside the bomb; and a number of stars above the lit bomb:
By 2005, Flower had created and registered thirteen variations of the "CHERRY BOMB" mark, including "NILLA BOMB," "COLADA BOMB," and "NUCAR BOMB":
Flower produces only a single product: scented, hanging paper air fresheners. (Doc. 28–2, PageID 234). Flower sells its fresheners primarily or entirely to distributors who then make the air fresheners available at car washes and other commercial establishments throughout the United States and internationally. (Id. , PageID 256–57; Doc. 33–9, PageID 524). It markets and sells its air fresheners under the "Family of Bomb" marks through its own website, the Amazon marketplace, and trade shows. Flower has spent $243,326.08 "in advertising and promoting [its] goods under the Flower Family of Bomb Marks." (Doc. 33–9, PageID 526).
Ninety to ninety-five percent of Flower's sales of air fresheners involve "pouch packs," which contain seventy-two or 1000 individual air fresheners that are intended to be sold to a purchaser in a vending machine. (Id. , PageID 259-60, 262; Doc. 28-7, PageID 330; Doc. 28-8, PageID 333).
A significant portion of Flower's sales involves "private label" air fresheners, which are fresheners that, instead of bearing the CHERRY BOMB or other BOMB mark, have the logo or name of the company that hired Flower to produce the fresheners. (Doc. 28-2, PageID 237-38).
Ken Flower testified at deposition that, while his company did not produce "any spray or gel air fresheners," it had "plans to expand into those markets in the future." (Doc. 28-2, PageID 234). Asked to describe these plans, Flower said that he had "[i]dentif[ied] suppliers" and "fragrances" and "done some hand sketching" for potential packages. (Id. , PageID 235-36). He also testified that he had plans (as of the time of his deposition) to sell part of his company to a friend who could help expand Flower products to big box stores, grocery stores, and auto parts stores, as well as "a lot of the Caribbean[.]" (Id. , PageID 263-64).
B. CareCo and the SCENT BOMB Mark
In 2005, Jeff Martin and Terry Roberts founded CareCo. The company initially sold shoe-care products at county fairs and flea markets. (Doc. 28-3, PageID 277). CareCo created its first air fresheners in 2008 and sold them at county fairs in Florida and California. (Doc. 28-3, PageID 279; Doc. 33-10, PageID 536). Martin and Roberts decided to call their air fresheners SCENT BOMB because "the slang term ‘THE BOMB’ was extremely popular" at the time and "had become synonymous with anything that was great, amazing, pleasing, appealing, attractive, and high quality." (Doc. 28-6, PageID 322).
The SCENT BOMB mark features the words "scent" and "bomb" in either gold or black letters against a black or metallic silver background. A red circular bomb replaces the letter "O" in the word "BOMB." In 2009, CareCo attempted to register the SCENT BOMB mark on the U.S. Patent and Trademark Office's Principal Register, but the Office denied the application because "the proposed mark merely describes a feature and characteristic of the goods/services." (Doc. 33-12, PageID 567). The next year, CareCo successfully registered the mark on the Supplemental Register. (Doc. 33-13, PageID 572).
CareCo currently makes and sells concentrated air fresheners and odor eliminators in spray bottles, scent cans, and gel disks under the SCENT BOMB mark. It also began, in 2017, selling hanging air-freshener cards. (Doc. 28-3, PageID 281, 285). "[T]he majority of CareCo's sales are of spray air freshener products." (Doc. 28-16, PageID 409 at ¶ 2).
CareCo described its customer base as "convenience stores, car washes, gas stations, auto parts stores, truck stops, large chain retailers, smoke shops, and third-party distributors who sell to other retail and online sales platforms and to end users." (Doc. 28-6, PageID 318). CareCo also offers most of its products for sale on its website, www.scentbomb.com.
C. Litigation
After failing to convince CareCo to cease and desist from using the SCENT BOMB mark, Flower filed this suit in March 2018.
It raises five claims under the Lanham Act: 1) trademark infringement under 15 U.S.C. § 1114(1)(a) ; 2) false designation of origin under id. § 1125(a)(1)(A); 3) unfair competition/false advertising under id. § 1125(a)(1)(B); 4) injunctive relief under id. § 1116; and 5) cancellation of CareCo's registration under id. § 1119. Flower also brings a claim under the Ohio Deceptive Trade Practices Act, O.R.C. § 4165.01, et seq.
Standard of Review
Summary judgment is appropriate under Fed. R. Civ. P. 56 where the opposing party fails to show the existence of an essential element for which that party bears the burden of proof. Celotex Corp. v. Catrett , 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).
The movant must initially show the absence of a genuine issue of material fact. Id. at 323, 106 S.Ct. 2548. Once the movant carries its burden, the burden shifts to the nonmoving party to "set forth specific facts showing that there is a genuine issue for trial." Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Rule 56 "requires the nonmoving party to go beyond the [unverified] pleadings" and submit admissible evidence supporting its position. Celotex, supra , 477 U.S. at 324, 106 S.Ct. 2548.
"Where, as here, parties have filed cross-motions for summary judgment, the Court grants or denies each motion for summary judgment on its own merit, applying the standards described in Fed. R. Civ. P. 56." Williams v. Ohio Dep't of Rehab. & Corrs. , 2018 WL 500167, *1 (S.D. Ohio 2018).
Discussion
Trademark infringement occurs when "any person ... without the consent of the registrant[,] use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive[.]" 15 U.S.C. § 1114(1).
To prevail on an infringement claim, a plaintiff must establish that: "1) it owns the registered trademark; 2) the defendant used the [allegedly infringing] mark in commerce; and 3) the use was likely to cause confusion." Hensley Mfg. v. ProPride, Inc. , 579 F.3d 603, 609 (6th Cir. 2009).
The parties agree that the only issue in dispute is whether a reasonable jury could find that a likelihood of confusion exists.
The parties agree that the likelihood of a confusion is an element of each of Flower's claims under the Lanham Act and its state-law claims. (See Doc. 28, PageID 208; Doc. 36, PageID 767 n.1).
The Sixth Circuit uses an eight-factor test to determine if a likelihood of confusion exists. These factors are: 1) the strength of the plaintiff's mark; 2) the relatedness of the goods; 3) the similarity of the marks; 4) evidence of actual confusion; 5) the marketing channels used by the parties; 6) the likely degree of purchaser care; 7) the defendant's intent in selecting the marks; and 8) the likelihood of expansion of the product lines. Frisch's Rests., Inc. v. Elby's Big Boy of Steubenville , 670 F.2d 642, 648 (6th Cir. 1982).
The plaintiff "need not establish each factor to prevail"; to the contrary, because "[e]ach case is unique," "not all of the factors will be helpful" in a given case. Kibler v. Hall , 843 F.3d 1068, 1073 (6th Cir. 2016). "The ultimate question remains whether relevant consumers are likely to believe that the products or services offered by the parties are affiliated in some way." Homeowners Grp., Inc. v. Home Marketing Specialists, Inc. , 931 F.2d 1100, 1107 (6th Cir. 1991). The burden to prove a likelihood of confusion, however, is on the plaintiff. See Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504, 512 (6th Cir. 2007) ; Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc. , 280 F.3d 619, 646 (6th Cir. 2002).
Whether a likelihood of confusion exists is a mixed question of law and fact. Progressive Distrib. Servs., Inc. v. United Parcel Serv., Inc. , 856 F.3d 416, 427 (6th Cir. 2017). "Any dispute about the evidence that pertains to the eight factors presents a factual issue." Id. In contrast, "the further determination of whether a given set of foundational facts establishes a likelihood of confusion is a legal conclusion." Id.
"To resist summary judgment in a case where the likelihood of confusion is the dispositive issue, a nonmoving party must establish, through pleadings, depositions, answers to interrogatories, admissions and affidavits in the record, that there are genuine factual disputes concerning those Frisch ’s factors which may be material in the context of the specific case." Progressive, supra , 856 F.3d at 427.
A. Strength of the Mark
"The strength of a mark is a determination of the mark's distinctiveness and degree of recognition in the marketplace." Homeowners Grp., supra , 931 F.2d at 1107.
"A mark is strong and distinctive when the public readily accepts it as the hallmark of a particular source; such acceptance can occur when the mark is unique, when it has received intensive advertisement, or both." Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr. , 109 F.3d 275, 280 (6th Cir. 1997) (internal quotation marks omitted). "The stronger the mark, all else equal, the greater the likelihood of confusion." Gray, supra , 295 F.3d at 646.
There are two components to a mark's strength: "(1) ‘conceptual strength’, or ‘placement of the mark on the spectrum of marks,’ which encapsulates the question of inherent distinctiveness; and (2) ‘commercial strength’ or ‘the marketplace recognition value of the mark.’ " Maker's Mark Distillery, Inc. v. Diageo N. Am., Inc. , 679 F.3d 410, 419 (6th Cir. 2012) (quoting 2 MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION § 11.83 (4th Ed. 1996))
"Conceptual strength is measured by the mark's distinctiveness: whether it is generic, descriptive, or inherently distinctive[.]" Detroit Coffee Company, LLC v. Soup for You, LLC , 396 F. Supp. 3d 754, 767 (E.D. Mich. 2019). "Commercial strength depends on the mark's recognition in the marketplace: the extent people associate the mark with the product." Id.
"Ultimately, the Court must weigh the mark's conceptual and commercial strength to deduce its overall strength." Id.
1. Parties’ Arguments
CareCo argues that Flower's BOMB marks are weak because the word "bomb" "commonly appears in trademarks registered in Class 5 for air freshener products that are currently in active use in commerce[.]" (Doc. 28, PageID 211).
According to a declaration from CareCo's counsel, there are "48 registered marks in International Class 005" that contain the word "bomb." (Doc. 28-1, PageID 229 at ¶ 11). CareCo has submitted exhibits showing that retailers currently offer several products using these marks, including – GEAR BOMB (to "blast smelly odors" in shoes), GERM BOMB ("the new way to easily disinfect an entire room within minutes"), ODOR BOMB ("total release odor eliminator"), and BOAT BOMB ("Eliminates · Controls · Prevents" odors and germs) – for sale online. (Doc. 28-12, PageID 355–70).
The company has also introduced evidence showing widespread commercial use of the terms "bomb," "cherry bomb," and "cherry" in connection with automotive cleaning products and air fresheners. (Doc. 28-15). This evidence shows, for example, products such as Odor Bomb Annihilator, Car Glo Cherry Bomb Shampoo (which is accompanied by a lit fuse in the shape of a cherry), Reflect Auto-Car's Cherry Bomb Shampoo, CornStar's Cherry Bomb Odor Eliminator, Malco's Cherry Scent Odor Eliminator, Flava Car Scents’ Cherry Bomb, and Star Brite's Mold/Mildew Odor Control Car Bomb. (Id. , PageID 386, 388, 392, 394, 395–96, 404).
CareCo also argues that the CHERRY BOMB mark is weak because it is merely descriptive, as opposed to being arbitrary or fanciful. (Doc. 28, PageID 212).
Flower responds that its BOMB marks are strong because the CHERRY BOMB mark has been in use since the 1970s, and Flower has used the other BOMB marks continuously since the early 2000s. (Doc. 33, PageID 446). Because of this continuous use, Flower emphasizes, the BOMB marks are deemed "incontestable" and presumed to be more than merely descriptive. (Id. ) (citing Lucky's Detroit, LLC v. Double L., Inc. , 533 F. App'x 553, 556–57 (6th Cir. 2013) ). Flower also maintains that its marks have achieved commercial strength because of the "substantial sales" of the BOMB-marked products throughout the country. (Id. ).
2. Conceptual Strength
a. Descriptive or Suggestive Mark
"A trademark's distinctiveness and resulting strength ... depend[ ] partly upon which of four categories it occupies: generic, descriptive, suggestive, and fanciful or arbitrary." Therma-Scan, Inc. v. Thermoscan, Inc. , 295 F.3d 623, 631 (6th Cir. 2002) (internal quotation marks omitted).
Viewing the evidence in the light most favorable to Flower, I find that the BOMB marks are suggestive, rather than descriptive. Flower's air fresheners are not actually bombs, of course. Rather, the company's use of the word "bomb" and a lit fuse suggests to the purchaser the product's "fallout" infusing an automobile's interior with a freshening scent.
Flower does not argue that its marks are arbitrary or fanciful.
CareCo's argument to the contrary rests on the Patent Office's finding that its own SCENT BOMB mark was descriptive. But this ignores the key differences between the companies’ products and the stated reason for the Patent Office's finding: CareCo's mark was descriptive because the company's principal product – the air-freshener spray bottle – ejects a freshening scent, much like a bomb ejects "a spray, foam, or gas under pressure." (Doc. 33-12, PageID 568).
For these reasons, I conclude that a reasonable jury could only find that Flower's marks are suggestive.
b. Third-Party Use
"Third-party use weakens a mark because the mark is not an identifier for a single source." Progressive, supra , 856 F.3d at 429.
"Third party registrations are relevant to prove that some segment of the composite marks [that] both contesting parties use has a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak." MCCARTHY , supra § 11:90.
"[M]erely showing the existence of marks in the records of the Patent and Trademark Office will not materially affect the distinctiveness of another's mark which is actively used in commerce." Homeowners Grp., supra , 931 F.2d at 1108. Rather, for a court to give weight to third-party use, the alleged infringer "must show what actually happens in the marketplace." Id.
CareCo's evidence, the accuracy or legitimacy of which Flower does not dispute, establishes that a key component of Flower's marks – the word "bomb" – "has a normally understood and well-recognized descriptive or suggestive meaning." MCCARTHY , supra , § 11.90.
The word "bomb" commonly appears in registered trademarks that companies use to market air-freshener products, including, inter alia , ODOR BOMB, GEAR BOMBS, and GERM BOMB. At least one of those trademarks, GEAR BOMBS, is registered for use as an automotive deodorizer. (Doc. 28–11, PageID 346). All of these marks, moreover, are two-word marks like Flower's CHERRY BOMB, NILLA BOMB, and other marks.
Furthermore, CareCo's uncontradicted evidence shows that these marks are currently in use in commerce: multiple websites offered the GEAR BOMBS, GERM BOMB, BOAT BOMB, and ODOR BOMB products for sale as of October 2019, when CareCo filed its motion for summary judgment. (Doc. 28–12).
Finally, CareCo's submissions show numerous third-party uses of "bomb" and "cherry bomb" in connection with air fresheners and automobile products. (Doc. 28–15, PageID 386, 388, 392, 394, 395–96, 404).
This uncontradicted evidence of third-party use and trademark registration establishes that two-word marks containing the word "bomb" have been extensively registered and used as a trademark for air freshener products, including the narrower field of automobile air fresheners in which Flower and CareCo do business. Accordingly, Flower's BOMB marks are entitled only to a narrow level of protection.
Flower urges me to reject this evidence because it supposedly fails to establish "what actually happens in the marketplace." (Doc. 33, PageID 447). A comparison of the Sixth Circuit's decision in Homeowners Group , supra , on which Flower's argument rests, with the court's decision in Daddy's Junky , supra , shows why Flower's argument lacks merit.
In Daddy's Junky, supra , 109 F.3d at 281, defense counsel had submitted an affidavit stating that counsel's "search of the records of the United States Patent and Trademark Office revealed fifteen registered marks which use the phrase ‘Daddy's,’ as well as three such marks pending for registration."
Discounting the significance of this evidence, the Sixth Circuit emphasized that the affidavit omitted crucial information: namely, "whether any of these registrations specifically relate to the retail sale of musical instruments," which was the field in which the parties competed. Id. The Circuit then reversed the district court's grant of summary judgment because there was "a genuine issue of fact whether the existence of fifteen other registered marks incorporating the word ‘Daddy's’ weaken[ed] plaintiff's marks for the specific purpose of retail sales of musical instruments." Id.
By contrast, the district court in Homeowners Group, supra , 931 F.2d at 1108, "failed to consider" a research report that "indicated numerous third-party registrations of the mark HMS," including by firms in the same market in which the parties competed (real-estate services). That was reversible error, the Circuit held, because the report "indicate[d] that many of the marks [we]re currently registered and believed to be currently in use." Id. The fact that "more detailed information regarding the nature and extent of use by third-party users of HMS marks may be more persuasive than the information provided" did not support the district court's refusal to consider the report. Id.
Here, contrary to Flower's argument, CareCo's evidence provides "what actually happens in the marketplace": many companies use similar trademarks to market and sell air freshener. This evidence therefore weighs in favor of finding Flower's mark to be weak.
c. Incontestable Marks
A trademark is "incontestable" if it is "not successfully challenged within five years of being registered." Rohn v. Viacom Int'l, Inc. , 706 F. App'x 319, 320 (6th Cir. 2017) (citing 15 U.S.C. § 1065 ).
Incontestable marks are "presumed to be strong marks," AutoZone, Inc. v. Tandy Corp. , 373 F.3d 786, 794 (6th Cir. 2004), but "the significance of its presumed strength will depend upon its recognition among members of the public." Therma-Scan, Inc. v. Thermoscan, Inc. , 295 F.3d 623, 632 (6th Cir. 2002). Moreover, the presumption can be rebutted with evidence of, inter alia , extensive third-party use, see Progressive, supra , 856 F.3d at 429, or commercial weakness, see Rohn, supra , 706 F. App'x at 320.
As seen above, the extensive third-party use of terms like bomb, cherry, and cherry bomb in connection with selling air fresheners rebuts the presumed strength of Flower's bomb marks and shows that the marks are relatively weak. As discussed below, the lack of evidence showing that the public broadly recognizes the BOMB marks as the source of air-freshener product further erodes their presumed strength.
3. Commercial Strength
As already noted, a mark's strength turns not only on its distinctiveness (or lack thereof), but also on "the scope of commercial recognition." Maker's Mark, supra , 679 F.3d at 420.
"Survey evidence is not a prerequisite for establishing public recognition, but it is the most persuasive evidence of it." Kibler, supra , 843 F.3d at 1074. "Proof of marketing may be sufficient to support a finding of ‘broad public recognition.’ " Progressive, supra , 856 F.3d at 430 (quoting Therma-Scan, supra , 295 F.3d at 632 ). "Conversely, proof that third parties have extensively used a trademark or similar trademarks in the relevant market may indicate that the trademark is commercially weak." Id.
Flower's case for proving commercial strength rests entirely on the company's sales figures. (Doc. 33, PageID 446). This evidence shows that Flower generated $1,916,127.12 in total sales from January 1, 2003 through June 10, 2019. (Id. , PageID 441).
Although such evidence would seem to have obvious relevance to a mark's commercial strength, Flower cites no authority for that proposition, let alone cases explaining how or the extent to which such sales translates to evidence of "widespread public recognition." Nor does Flower cite any evidence in the record tending to show the size of the national market for air fresheners, which might have yielded an inference that Flower's sales represent a significant or significant part of the market (which, in turn, might have supported a further inference that the public does or does not recognize Flower and its marks as the source of air fresheners).
Although the record shows that Flower spent more than $240,000 to promote its trademarked goods, Flower's briefs do not actually cite this evidence as a basis for a rational jury finding of broad public recognition. (Doc. 33, PageID 446–48; Doc. 36, PageID 767–69).
That omission is unsurprising, given the Circuit's statement in Homeowners Grp., supra , 931 F.2d at 1108, that advertising budgets bear only an "attenuated link to actual market recognition[.]" The court in Maker's Mark, supra , 679 F.3d at 420–21, recognized that advertising expenditures can have some limited relevance, provided that the evidence shows that "advertising efforts ... focus directly on" the trademark. Flower cites no such evidence, however.
Finally, Flower failed to produce (though of course it was not required to produce) the "best evidence" of public recognition: survey evidence.
Given the absence of any real evidence "to establish that [Flower's] trademark[s] [are] widely recognized among the general population," Therma-Scan, supra , 295 F.3d at 632, a reasonable jury could find only that the marks are commercially weak.
* * *
Viewed in the light most favorable to Flower, the evidence establishes that, while Flower's marks are suggestive and presumptively strong, the marks operate in a crowded field where multiple producers use similar registered trademarks to sell air fresheners and automobile specific fresheners and cleaning products. There is no evidence of commercial strength, moreover.
For these reasons, a reasonable jury could only find that this factor weighs against a likelihood of infringement.
B. Relatedness of the Goods
The Sixth Circuit instructs that courts should apply the following criteria in evaluating the "relatedness" element of the Frisch's test:
First, if the parties compete directly by offering their goods or services, confusion is likely if the marks are sufficiently similar; second, if the goods or services are somewhat related but not competitive, the likelihood of confusion will turn on other factors; third, if the goods or services are totally unrelated, confusion is unlikely.
Therma-Scan, supra, 295 F.3d at 632.
"In evaluating the relatedness of the goods, the court must bear in mind ‘that [it is] trying to determine whether consumers will be confused as to the origin [or sponsorship] of the product....’ " Wynn Oil Co. v. Am. Way Serv. Corp. , 943 F.2d 595, 600 (6th Cir. 1991) (quoting Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1187 (6th Cir. 1988) ). "Services and goods are related not because they coexist in the same broad industry, but are related if the services are marketed and consumed such that buyers are likely to believe that the services, similarly marked, come from the same source, or are somehow connected with or sponsored by a common company." Daddy's, supra, 109 F.3d at 283–84 (internal quotation marks omitted). "The question is, are the [goods or services] related so that they are likely to be connected in the mind of a prospective purchaser?" Homeowners Grp., supra, 931 F.2d at 1109.
Flower argues that its paper air-freshener cards are related to CareCo's spray, solid disk, can, and air-freshener cards because "one may choose to freshen the air in one's car with a spray (which CareCo directly manufactures for automotive use, see Exhibit J) or a paper air freshener." Doc. 33, PageID 448 (emphasis in original). Relying on a single case decided by one district court in this Circuit, Flower asserts that "courts have looked to antitrust law on this point to find goods competitive where they are ‘either identical or available substitutes for each other.’ " (Doc. 36, PageID 769) (emphasis in original) (quoting Worthington Foods, Inc. v. Kellogg Co. , 732 F. Supp. 1417, 1436-37 (S.D. Ohio 1990) ).
I disagree with that analysis. "The purpose of the Sherman Act is to prohibit monopolies, contracts and combinations which probably would unduly interfere with the free exercise of their rights by those engaged, or who wish to engage, in trade and commerce." Expert Masonry, Inc. v. Boone Cnty., Ky. , 440 F.3d 336, 346 (6th Cir. 2006) (quoting United States v. Colgate , 250 U.S. 300, 307, 39 S.Ct. 465, 63 L.Ed. 992 (1919) ). Thus, "[t]he antitrust laws ... were enacted for ‘the protection of competition not competitors.’ " Brunswick Corp. v. Pueblo Bowl-O-Mat, Inc. , 429 U.S. 477, 488, 97 S.Ct. 690, 50 L.Ed.2d 701, (1977) (quoting Brown Shoe Co. v. United States , 370 U.S. 294, 320, 82 S.Ct. 1502, 8 L.Ed.2d 510 (1962) ). In marked contrast, "[t]he purposes of the trademark statutes is to protect the trademark holder's quasi-property interest in the mark and prevent consumer confusion about the actual source of goods using the mark." Maker's Mark Distillery, Inc. v. Diageo N. Am., Inc., 703 F. Supp. 2d 671, 687 (W.D. Ky. 2010) (quoting Ameritech, Inc. v. American Information Techs. Corp., 811 F.2d 960, 964 (6th Cir. 1987) ).
Thus, the question here is not whether CareCo's conduct impairs competition in the marketplace but whether it has infringed Flower's protected interest in its trademark. It is fair to say that trademark laws were enacted for the protection of the competitor who owns a mark and not for protection of competition in the marketplace in general.
Flower also errs in failing to acknowledge the significance of the fact that only a small percentage of CareCo's products overlap its own products. Where only a small percentage of a trademark defendant's products overlap with the plaintiff's products, courts have considered the extent of the overlap in weighing the products’ relatedness. See, e.g. , AutoZone, supra , 373 F.3d at 798 (where 1% of plaintiff's products were also sold by defendant, while 40% of the products in defendant's "POWERZONE" area were also sold by plaintiff, the parties’ products "[we]re not related enough such that th[e relatedness] factor tilt[ed] in [the plaintiff's] direction"); Magna Int'l, Inc. v. Deco Plas, Inc. , No. 3:08CV427, 2010 WL 2044873, at *6 (N.D. Ohio May 21, 2010) (Carr, J.) (where plaintiff sold parts for the automobile industry and defendant sold parts that were for use in automobiles, consumer electronic devices and appliances, the overlap in customers made the products "somewhat related but not competitive"). "[T]he existence of a high percentage of overlap when considering an extremely small subset of products does not demonstrate a high degree of relatedness." AutoZone, supra , 373 F.3d at 798.
As I discuss in § C, infra , the parties’ marks have only a limited similarity to each other when they are used in the sale of hanging air-freshener cards. When placed on CareCo's spray bottle, can, and solid disc fresheners, that similarity becomes even more attenuated. CareCo's spray bottles and solid air fresheners may serve an overlapping purpose with Flower's paper hanging fresheners; Flower has not presented evidence to prove that its hanging fresheners are commonly used anywhere other than in cars. Nevertheless, when properly viewed "in their entirety [with] focus on their overall impressions," AutoZone, supra , 373 F.3d at 795, the risk of consumer confusion when CareCo's mark appears on spray bottles, gel, or can freshen the two marks is minimal. (Compare Doc. 28-4, PageID 299-302 with Doc. 33-4, PageID 495).
As the court noted in AutoZone in analyzing relatedness in a case involving automotive products, failure to consider the limited extent of the overlap in the parties’ products would mean that "if [the defendant] stocked only five types of batteries all of which were also sold by [the plaintiff], the overlap would be 100%, even though in reality [the defendant] and [the plaintiff] would share only five products of the approximately 55,000 offered by [the plaintiff]." Id.
Flower only manufactures paper hanging air fresheners and not spray bottles, gel fresheners, or scent cans. (Doc. 28-2, PageID 234). It sells ninety to ninety-five percent of its products in "pouch packs," which it advertises as coming in packs of either seventy-two or 1,000 hanging fresheners. (Id. , PageID 262; Doc. 28-8, PageID 333; see also Doc. 28-7, PageID 330) (advertising fresheners for sale in "vend packs"). The fresheners sold in pouch packs were specifically designed and intended for use in vending machines and are sold without being attached to a header card. (Doc. 28-2, PageID 257, 259-60). The remaining five to ten percent of Flower's sales are of hanging fresheners that are sold attached to header cards. (Id. PageID 259-60).
Ken Flower testified that he "struggled with identity for the company early on and found that private label business for us was something we wanted to kind of expand on," so Flower started producing hanging air fresheners with custom private labels featuring the customer's name or logo, which Flower sold under the name "Custom Fresheners." (Id. , PageID 245-46).
At his deposition, Ken Flower estimated that Flower had "thousands" of customers for its private-label fresheners. (Id., PageID 237-38). He also estimated that only about three out of 1000 customers included Flower's mark on the opposite side of the card from their own mark. (Id.) The remaining customers purchased hanging fresheners that only displayed their own mark. (Id.)
Although Ken Flower initially exhibited Flower’ BOMB-mark labelled fresheners and the Custom Fresheners’ private-label fresheners at trade shows in separate booths "one or two times," he ceased to do so in approximately 2010. (Id. , PageID 249-50; 267-268). Since that time, Flower has not exhibited its BOMB-trademarked fresheners at trade shows but instead has exhibited only examples of private-label freshers that it had sold to other customers and only in booths bearing the Custom Fresheners name and not the Flower name or BOMB mark. (Id.) CareCo sells its SCENT BOMB air fresheners in five forms: spray bottles, gel disks, circular hanging fresheners, scent cans, and a product called "odor eliminator" (also sold in spray-bottle form). (Doc. 28-3, PageID 281-82). CareCo alleges, and Flower does not contest, that most of its sales are of spray products. (Doc. 28-16, PageID 409; see also Doc. 34-2, PageID 692, 709) (CareCo's sales records (sealed)).
Flower continues to market its Bomb-marked fresheners through its own website, Amazon and in a newsletter published by one of its customers that heavily targets vending-machine operators. (See Doc 33, PageID 437; Doc. 28-6, PageID 330).
Thus, Flower has failed to present evidence that more than a small fraction of each party's sales is of directly competing products, while CareCo does not dispute that some of its products—hanging freshener cards—overlap with Flower's products. I therefore find that there is no genuine issue of material fact about the relatedness of the party's products; they are "somewhat related but not competitive." AutoZone, supra , 373 F.3d at 798 ; see Magna Int'l, supra, 2010 WL 2044873, at *7 (where defendant had shown evidence that, unlike plaintiff, it sold its products more broadly than to the automotive industry, the parties’ products were somewhat related but not competitive).
C. Similarity of the Marks
"The similarity of the senior and junior marks is ‘a factor of considerable weight.’ " AutoZone, supra , 373 F.3d at 795 (quoting Daddy's, supra , 109 F.3d at 283 ). "In assessing similarity, courts must determine whether a given mark would confuse the public when viewed alone, in order to account for the possibility that sufficiently similar marks may confuse consumers who do not have both marks before them but who may have a general, vague, or even hazy, impression or recollection of the other party's mark." Daddy's, supra , 109 F.3d at 283.
This assessment requires courts to "view marks in their entirety and focus on their overall impressions, not individual features." AutoZone, supra , 373 F.3d at 795. Nevertheless, to discuss a mark's overall impression, courts have found it necessary to discuss the most salient features that give rise to the overall impression. See, e.g. , id. at 795-96 ; Leelanau Wine Cellars, supra , 502 F.3d at 517.
I am to judge the marks’ similarity as they appear in their commercial context. Homeowners Grp., supra , 931 F.2d at 1106. The closest similarity between the parties’ marks appears when examining only the hanging paper cards themselves. The most obvious similarities are that both marks contain the word "BOMB" in capital letters and include a drawing of a bomb with a lit fuse. (See, Doc. 33-4, PageID 495). In addition, each of Flower's marks contain two-word names, with the first word being a scent and the second word being BOMB, e.g. , "NUCAR BOMB", while CareCo's mark bears the name "SCENT BOMB." Id. Even viewing the hanging cards alone without considering their packaging or the manner in which they are displayed, the marks have significant differences that produce a significantly different overall appearance.
Flower's CHERRY BOMB mark uses two colors: red lettering and images on a yellow background. (Doc. 33-4, PageID 495). The most prominent feature of Flower's mark is a large, round image of a bomb, which occupies most of the space on the rectangular label. In the space above the bomb, appears a long fuse comprised of twisted strands. Flower's mark gives the impression that the fuse is lit by showing an empty circle at its end that is surrounded by lines of color spiking out from the circle. Outside those spikes, the fuse is surrounded by stars.
Flower's hanging fresheners use different colors to represent each of its various scents; for example, Flower's COLADA BOMB uses white characters and images against a blue background. (Doc. 33, PageID 437). The name of the product appears inside the bomb with letters sized to cover virtually the entire bomb image. The lettering appears in a highly stylized font that is stretched and warped to fit within the bomb's circular outline. Ken Flower stated in his deposition that the mark has a "vintage look and feel." (Doc 28-2, PageID 252). CareCo fairly describes the font used by Flower as having a "cartoonish appearance." (Doc. 35, PageID 742).
CareCo's SCENT BOMB hanging fresheners are circular. (Doc. 33-11, PageID 564). Around the outside of the circle is a wide, round, solid red, circular border. Inside that border, is a circle of white background with the words "SCENT BOMB" appearing on it in large black capital letters. The letters are in a square bold print; they are not stylized but are ordinary block text. Inside the circle containing the words "SCENT BOMB" is another thin, black, circular border with the freshener's scent, e.g. , "Black Cherry," and CareCo's website address spelled out in small white letters.
Unlike Flower's mark, the bomb image in CareCo's mark is not the mark's dominant feature but is confined to the center of the circle, like a bull's-eye. CareCo's bomb is solid red without any internal markings or lettering. Attached to the top of the bomb image is a small fuse that ends in an image of a fire. Unlike the stray individual lines that poke out from the fuse in Flower's mark, CareCo's mark indicates fire with a solid, yellow, sun-shaped image at the end of the fuse within which is a solid red circle.
In contrast to the CHERRY BOMB mark's stylized lettering, all the lettering on CareCo's mark is solid block lettering using primary colors that CareCo fairly describes as giving its mark a "modern and somewhat industrial appearance." (Doc. 33-4, PageID 564).
When Ken Flower was asked at deposition whether there was anything about the two parties’ marks that he found similar "other than the use of the word bomb and the image of the bomb with a wick," he testified that there was not. (Doc. 28-2, PageID 252). The appearance of both the word "BOMB" and the bomb images, however, differ significantly. Thus, particularly in light of the widespread use of the words "bomb" and "cherry bomb" in car-care and other deodorizing products discussed above, the similarity factor weighs in CareCo's favor.
When the marks are considered properly in their commercial context, their differences magnify. The most similar context in which the parties’ market their products is when the hanging air fresheners are sold attached to header cards. (See Doc. 35, PageID 733). Flower's header card employs a similarly cartoonish font as its individual air fresheners. It uses a color scheme which starts with a pastel yellow at the top of the card that fades into a pastel blue without any intervening border. A large number 1 appears on the upper-left side of the card with the word BOMB spelled out in four separate colored circles to the right of it. Beneath the word BOMB, the words "air freshener" are spelled out in a ribbon of color shaped like a wave. The header card also contains the word "Aromatizante," and identifies the scent as "Cherry/Cereza."
CareCo's header card employs the same bold, primary colors and block lettering that appear on its hanging fresheners themselves and is written against a background that is primarily black. Id. A small image of CareCo's version of a bomb appears inside the letter O in BOMB. The upper left corner of CareCo's header card shows a picture of an American flag with the words "MADE IN USA" below it. The card identifies its scent flavor on the upper right corner in a triangular patch of red background with white lettering.
Below the SCENT BOMB name, appear the words "Air Freshener Ambientiador Desodorisant," with each word separated by a solid white circle. Below that line are the words "Auto Home Restroom Office RV Closets" written in block letters in white print with each word separated by a solid white circle. Below those words appears the legend "EXTRA LONG LASTING!" in black print against a rectangular block of yellow background.
In addition, CareCo's circular hanging fresheners are sold in display boxes that incorporate the hanging fresheners’ font and images and adds a white circle with serrated edges bearing the words "Lasts 48 Hours," (Doc. 35, PageID 745). The display box is black with a yellow panel across the front end bearing the words "48 HOURS OF FRESHNESS GUARANTEED!" in capital letters.
Although both parties sell hanging paper fresheners in boxes containing individual fresheners attached to header cards, see Doc. 35, PageID 745; Doc. 33-10, PageID 539, both parties have submitted only a sample image of a CareCo display box for its one-ounce spray bottles. Because of the strong similarity between CareCo's labels for hanging cards, spray bottles, and display boxes for spray bottles, it is reasonable to conclude that the display box labels for hanging cards also would be similar.
In contrast, for the small percentage of its air-freshener sales that are of hanging fresheners attached to header cards, Flower displays its products in a plain white display box with a label that bears a stylized version of the word "Bomb" spelled out in individual colored circles, the same pastel-shaded background as appears on its header cards, and the words "Air Fresheners" appearing in a colored, wave-shaped ribbon. (Id.).
Customers would be even less likely to be confused by the parties’ header card fresheners when displayed in this context. Of course, when CareCo's marks appear on spray bottles or scent cans, the similarity is even more attenuated.
D. Evidence of Actual Confusion
" ‘Evidence of actual confusion is undoubtedly the best evidence of likelihood of confusion.’ " Wynn Oil Co., supra , 839 F.2d at 1188. "[A] lack of such evidence is rarely significant, and the factor of actual confusion is weighted heavily only when there is evidence of past confusion, or perhaps, when the particular circumstances indicate such evidence should have been available." AutoZone, supra , 373 F.3d at 798-99 (quoting Daddy's, supra , 109 F.3d at 284 ).
Flower's evidence of confusion is weak. It consists solely of Ken Flower's testimony regarding a single conversation that he had at a 2017 trade show with two representatives of one of Flower's long-time, private-label customers. (Doc. 28-2, PageID 244-245, 247-48).
Although his memory was rather vague and lacking in detail, the gist of it was that these two representatives approached him and expressed confusion regarding whether a booth being operated by CareCo was connected with Flower's company. (See id.). The absence of any detail from Ken Flower's testimony and the fact that it describes only a single incident of alleged confusion reduce what weight it otherwise might have. See Leelanau Cellars, supra , 502 F.3d at 519 ("These stories lack the details necessary to establish actual confusion and are sufficiently few in number that they do little to support LWC's claim of actual confusion.") (citing Champions Golf Club, Inc. v. The Champions Golf Club, Inc. , 78 F.3d 1111, 1119 (6th Cir. 1996) ); Lucky's Detroit, supra , 533 F. App'x at 559 ("We do not require a sworn statement or affidavit from a customer who claims to be confused ...; however, a party must provide details about the confusion.").
In addition, the client representatives were purchasers only of Flower's private-label fresheners that displayed their employer's logo rather than Flower's mark. (Doc. 28-2, PageID 248). Flower was not exhibiting its own marked products--it stopped doing so in approximately 2010—but only examples of private-label products in a booth labelled with its Custom Fresheners name and not the Flower name. (See , id. PageID 249-51, 267-68).
Moreover, although they allegedly were sufficiently confused by the CareCo booth's marks to inquire of Ken Flower regarding them, they were not customers of Flower's BOMB-marked products. "Short-lived confusion or confusion of individuals casually acquainted with a business is worthy of little weight," ... while chronic mistakes and serious confusion of actual customers are worthy of greater weight. Homeowners Grp., supra, 931 F.2d at 1110. Flower's evidence is insufficient to establish a material instance of customer confusion. Thus, this factor does not alter the balance in Flower's favor.
CareCo argues that Ken Flower's testimony regarding his conversation with the client representatives is inadmissible hearsay. Doc. 35, PageID 746-47. The Sixth Circuit holds that such testimony regarding instance in which a potential customer expressed confusion is not inadmissible because it is offered as evidence of confusion rather than for the truth of the matter asserted. See, e.g. , CFE Racing Prods., Inc. v. BMF Wheels, Inc. , 793 F.3d 571, 589 (6th Cir. 2015) ; Standard Coffee Co. v. WM. B. Reily & Co. , No. 98-1468, 2000 WL 377358 (6th Cir. 2000).
E. Marketing Channels
The factor regarding the extent to which the parties use the same marketing channels "requires an analysis of the parties’ predominant customers and their marketing approaches." Therma-Scan, supra , 295 F.3d at 636. "The more channels and buyers overlap, the greater the likelihood that relevant consumers will confuse the sources of the parties’ products." Kibler, supra , 843 F.3d at 1079. Conversely, "[w]here the parties have different customers and market their goods or services in different ways, the likelihood of confusion decreases." Therma-Scan, supra , 295 F.3d at 636.
CareCo's and Flower's marketing channels overlap substantially. The bulk of Flower's sales are to distributors. (Doc. 33-2, PageID 483-84) (Flower's "main channels of distribution" are four national distributors). CareCo stated in its interrogatory responses that its channels of distribution "include convenience stores, car washes, gas stations, auto parts stores, truck stops, large chain retailers, smoke shops, and third-party distributors," (Doc. 33-14, PageID 580-81). During his deposition, however, CareCo's representative, Jeff Martin, estimated that eighty percent of CareCo's sales are made through a network of 200 large and small distributors. See (Doc. 33-10, PageID 544, 546-47). Thus, while the parties’ marketing channels are not identical, they do overlap to a significant extent. Accordingly, this factor weighs in favor of a finding of likelihood of confusion.
Although both parties maintain websites from which they sell some relatively small amount of products directly to consumers, internet sales are not a significant contributor to their overall sales. (See Doc. 33-2, PageID 483-84; Doc. 33-14).
CareCo argues that the parties’ marketing channel are distinct because ninety to ninety-five percent of Flower's sales are of "pouch packs" that contain individual freshener cards that are not attached to header cards and are designed for use in vending machines, while CareCo does sell its freshener cards attached to haeeder cards and does not market to the vending machine industry. Doc. 28, PageID 219. This fact further supports CareCo's argument regarding a lack of similarity, because CareCo's sells its hanging fresheners attached to header cards, and they are not designed for the vending machine industry. (Doc. 33-2, PageId 482-83; Doc 33-10, PageID 539; see Doc. 35, PageID 733). The distinction does not, however, alter the fact that the parties both market their products primarily through distributors who, in turn, sell to overlapping types of retailers.
F. Likely Degree of Purchaser Care
"With respect to an ordinary buyer, the standard for determining whether he or she would differentiate between products with similar trademarks is the exercise of ordinary caution. Therma-Scan, supra , 295 F.3d at 638. Consumers are more likely to exercise caution in purchasing items when they are particularly expensive. Kibler, supra , 843 F.3d at 1080. In contrast, "[c]ourts have adopted the general proposition that the average customer is likely not to exercise a high degree of care in purchasing relatively inexpensive and fungible products, such as snack food." Gray v. Meijer, Inc. , 295 F.3d 641, 649 (6th Cir. 2002) (citing Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 672 (Fed. Cir. 1984) ). The parties do not dispute that their hanging air-freshener cards are inexpensive. (See Doc. 33, PageID 452; see Doc. 28, PageID 219-20).
CareCo contends, however, that it sells its air fresheners primarily to distributors and that the law presumes that such sophisticated purchasers exercise greater care in making their purchases than do ordinary purchasers. (Doc. 28, PageID 219-20). CareCo is correct that "[c]ourts typically find businesses such as wholesalers, retailers and institutional customers to be ‘sophisticated’ purchasers and less likely to be confused." Jimdi, Inc. v. Twin Bay Docks and Prod., Inc. , 501 F. Supp. 2d 993, 1005 (W.D. Mich. 2007) (where predominant purchasers of the parties’ products where wholesalers, they were likely to exercise a greater degree of care than consumers); RGH Enterp., Inc. v. Soporex Respiratory, Inc. , No. 5:07 CV 3486, 2008 WL 11381818, at *8 (N.D. Ohio 2008) (Gallas, J.).
Moreover, the significance of the purchasers’ likely level of care "although relevant, will be less significant than, or largely dependent upon, the similarity of the marks at issue. If the District Court ultimately determines that the marks are not very similar, then even a high degree of purchaser care will decrease only slightly the already low likelihood of confusion." Daddy's, supra , 109 F.3d at 286. As I discuss in § C, supra, the parties’ air-freshener cards are not particularly similar.
In addition, the fact that the parties operate in a crowded field in which the words "cherry" and "bomb" are ubiquitous serves to reduce further the likelihood of confusion. Homeowners Grp., supra, 931 F.2d at 1108 ; Big Time Worldwide Concert & Sport Club at Town Center, LLC v. Marriott Intern'l, Inc. , 236 F. Supp. 2d 791, 799 n.1 (E.D. Mich. 2003) (collecting cases). In such a crowded field, " ‘customers will not likely be confused between any two of the crowd and may have learned to carefully pick out one from the other.’ " Big Time Worldwide Concert & Sport Club at Town Center, LLC v. Marriott Intern'l, Inc. , 236 F. Supp. 2d 791, 800 (E.D. Mich. 2003) (emphasis added) (quoting 2 McCarthy, supra , § 11:85).
Accordingly, I find that a reasonable jury could only conclude that this factor favors CareCo.
G. The Defendant's Intentions
The Sixth Circuit has summarized the law governing the factor of a defendant's intentions in selecting its mark:
the presence of intent can constitute strong evidence of confusion. See, e.g., Homeowners Group, 931 F.2d at 1111. The converse of this proposition, however, is not true: the lack of intent by a defendant is "largely irrelevant in determining if consumers likely will be confused as to source." Wynn Oil I, 839 F.2d at 1189 (quoting Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 875 (2d Cir. 1986) ); see also Champions Golf Club, 78 F.3d at 1121 (holding the same). Intent therefore is an issue whose resolution may benefit only the cause of a senior user, not of an alleged infringer.
Daddy's, supra , 109 F.3d at 287 (emphasis in original).
Flower "does not contest that CareCo did not act in bad faith" in selecting the SCENT-BOMB mark. Doc. 36, PageID 777. This factor, therefore, does not affect the likelihood-of-confusion analysis in this case.
H. Likelihood of Expansion
"[A] strong possibility that either party will expand [its] business to compete with the other or be marketed to the same consumers will weigh in favor of finding that the present use is infringing." Homeowners Grp., supra , 931 F.2d at 1112.
Flower contends that it has plans to expand its air-freshener product line to include spray and gel air fresheners. Doc. 33, PageID 454. The evidence it presents to support that claim consists solely of the deposition testimony of Ken Flower. He testified that he had begun development for a spray freshener product, begun identifying potential suppliers and fragrances, done some hand sketching for potential packaging design, developed a list of new equipment to purchase in order to manufacture the spray, and also begun developing new header-card designs. (Doc. 28-2, PageID 234-36). When asked to produce documents relating to plans for expansion, however, Ken Flower averred that Flower "had conducted a reasonable search for [responsive documents] and no such documents exist." (Doc. 28-10, PageID 343). The absence of any documentary evidence to support Ken Flower's self-serving testimony severely undermines its weight. Even when I view this testimony most strongly in his favor, Flower's testimony has the airy vacuity of a pipedream, rather than the mission, goals, milestones, and timetables of a "business plan." Though being in the hanging air-fresheners business since 2002, Flowers had not expanded his product line beyond hanging paper disks. (Doc. 28-2, Page ID 234).
Flower attempts to escape its document request response by pointing to the fact that it objected to CareCo's request. (Doc. 36, PageID 778-79). That argument is meritless. Flower's response stated boilerplate objections that documents relating to its alleged plans for expansion were irrelevant. Id. Given that expansion plans are one element of the Frisch test for likelihood of confusion and that Flower has argued in resisting summary judgment that it has presented adequate evidence of its expansion plans, its assertion that related documents were beyond the realm of relevant discovery was frivolous. Flower's other objection—that it should not have been required to produce confidential document without a protective order—could and should have been resolved by the entry of a confidentiality order. That CareCo did not pursue that route is not surprising because, rather than merely object to the document request, Ken Flower affirmatively represented that Flower had searched for responsive documents and that none existed. That response was misleading and represents the type of discovery gamesmanship that courts frown upon.
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On this record, Flower has not established a "strong possibility" that it will expand its product lines.
I. Balancing
Because the material facts in this case are not in dispute, the determination whether those facts create a likelihood of confusion is a legal conclusion. Magna Int'l, supra, 2010 WL 2044873, at *3.
The most significant factors in the Frisch's test are the strength of the senior mark and similarity. Maker's Mark, supra, 679 F.3d 410, 424 (6th Cir. 2012) (citing Gray v. Meijer, Inc. , 295 F.3d 641, 646 (6th Cir. 2002) ).
Here, Flower's mark is weak because it operates in a crowded field, and Flower has failed to prove that it has commercial strength. Weak marks are entitled only to narrow protection. DeGidio v. W. Grp. Corp., 191 F. Supp. 2d 904, 913 (N.D. Ohio 2002) (Katz J.) aff'd, 355 F.3d 506 (6th Cir. 2004) ; WLWC Centers, Inc. v. Winners Corp., 563 F. Supp. 717, 722 (M.D. Tenn. 1983) (citing 2 McCarthy, supra , § 11.71)
Thus, although the marks have some elements in common—the BOMB name and the image of a bomb—those elements are precisely the ones that CareCo's evidence establishes are ubiquitous in the car care and deodorizing product industries.
Moreover, when viewed as a whole, the marks have only attenuated similarity, especially because consumers would likely be aware of the fact the terms "bomb" and "cherry bomb" are so widely used that they would have learned to distinguish products employing them. Big Time, supra , 236 F. Supp. 2d at 800. While there is significant overlap in marketing channels—that both sell primarily to distributors—distributors would be even more likely to be aware that automobile-related products, and air fresheners in particular, frequently use the words "bomb" or "cherry bomb" in their product names. Nor has Flower presented evidence of more than a single instance of confusion, which, itself, did not involve a consumer of Flower's or CareCo's trademarked products. Taken in balance, I find that Flower has failed to meet its burden to establish a likelihood of consumer confusion. Because each of Flower's claims requires proof of that element, they cannot survive summary judgment.
Conclusion
For the reason discussed above, Flower has failed to raise any genuine issue of material fact and CareCo is entitled to judgment as a matter of law.
It is, therefore,
ORDERED THAT:
1. Defendant's Motion for Summary Judgment (Doc 28) be, and the same hereby is granted; and
2. Plaintiff's Cross-Motion for Summary Judgment (Doc. 33) be, and the same hereby is denied.
So ordered.