IP Law Daily, TRADEMARK—6th Cir.: Bella Bliss trademark dispute revived by divided Sixth Circuit panel, (Sep 22, 2023)

By George Basharis, J.D.

The court of appeals reversed the dismissal of trademark infringement claims by the maker of children’s clothing.

The U.S. Court of Appeals for the Sixth Circuit affirmed in part and reversed in part the decision of the district court in Kentucky dismissing claims of trademark and trade dress infringement brought by a children’s clothing manufacturer against a competitor. The Sixth Circuit ruled that the creator of “bella bliss” children’s clothing had plausibly alleged that a logo used by a rival company started by one of its co-founders was likely to cause confusion. As a result, the court reversed the dismissal of trademark infringement claims under both federal and Kentucky law. Circuit Judge Larsen, however, filed a separate dissenting-in-part opinion to express her view that the district court properly dismissed the trademark infringement claims. The full panel upheld the dismissal of the clothing manufacturer’s trade dress infringement claims, as the company was unable to demonstrate that its preppy designs were non-functional. The panel also ruled that attorney fees were not warranted, as the infringement claims were neither “exceptionally meritless” nor filed in bad faith, despite the contentious and litigious history between the parties (Bliss Collection, LLC v. Latham Co., LLC, September 21, 2023, Mathis, A.).

Bliss Collection, a company that sells preppy children’s clothing under the name “bella bliss,” uses distinctive designs and prints created in-house. The company’s logo is a stylized lowercase “b” that appears as if it were stitched with thread. Bliss has three registered trademarks for this logo, each pertaining to a different product line: children’s clothing, bed blankets, and carrying bags. Additionally, Bliss has an unregistered mark for the logo in the company’s signature blue color (“bliss Blue”), with the words “bella bliss” displayed underneath.

Latham Companies, founded by one of Bliss’s original founders, sells children’s clothing under the name “little english.” Latham’s word mark spells out “little english” in lowercase letters in bliss Blue. This word mark is positioned beneath Latham’s logo, “Le,” which bears a resemblance to Bliss’s “b” logo. Bliss alleges that Latham initially used a unique logo for its clothing brand but gradually altered it to mirror Bliss’s trademarks. Consequently, Bliss filed a lawsuit against Latham for federal copyright, trademark, and trade dress infringement under the Lanham Act, as well as trademark and trade dress infringement under Kentucky common law.

The district court dismissed these claims and later denied Latham’s request for attorney fees. The court stated that attorney fees under the Lanham Act are only warranted in “exceptional” cases. Because Bliss filed its lawsuit in good faith and its claims were not deemed “exceptionally meritless” under federal law, attorney fees were not justified. Both parties appealed; Bliss appealed the dismissal of its claims, while Latham challenged the denial of its request for attorney fees.

Trademark infringement. As a preliminary matter, the Sixth Circuit determined that Bliss’s unregistered mark was eligible for protection under the Lanham Act. This was due to Bliss’s continuous use of its bliss Blue color since 2001, which had become widely associated with bella bliss products. The court also concluded that Latham’s use of its “little english” mark served as a “trademark” to identify the source of its children’s clothing. Given that the contested mark was used in a trademark manner, the court aimed to determine whether the use of this mark could potentially cause confusion.

The Sixth Circuit assessed several factors related to confusion: the strength of the marks, the relatedness of the goods, the similarity of the marks, evidence of actual confusion, similarity of marketing channels, degree of purchaser care, Latham’s intent in selecting its “little english” logo, and the likelihood of product line expansion.

The court deemed Bliss’s registered logo marks and unregistered mark featuring a lowercase “b” in bliss Blue with the words “bella bliss” stitched underneath to be arbitrary and inherently distinctive. These marks had no inherent connection to children’s clothing and thus fell within the strongest category of marks. This factor favored Bliss. However, the court noted that Bliss’s protection for bliss Blue was only in conjunction with its stylized “b” and the words “bella bliss.” In other words, Bliss did not have blanket trademark protection for the shade of blue it referred to as bliss Blue, nor had bliss Blue acquired a protectible secondary meaning.

Both Bliss and Latham sold children’s clothing under their respective logos, so this factor also favored Bliss. The similarity of marketing channels also weighed in Bliss’s favor.

The similarity of the marks is given considerable weight and was a point of disagreement between the majority of the Sixth Circuit and the dissent. The majority found this factor to slightly favor Bliss because Latham’s logo “tracked” the shape of Bliss’s logo and Latham’s “little english” was underneath its logo as Bliss’s “bella bliss” was underneath its “b” logo.

The intent factor also favored Bliss, according to the majority. Bliss argued that Latham altered its logos to make them look more like Bliss’s. To illustrate this point, Bliss provided side-by-side comparisons of the logos. Although this evidence was circumstantial, the court explained that circumstantial evidence can be used to prove intent to infringe.

Two factors were neutral: actual consumer confusion and likelihood of product line expansion. Bliss’s complaint did not include any allegations regarding actual consumer confusion, although it did mention instances where consumers identified little english products as bella bliss products on social media. Bliss also failed to address purchaser care; as a result, the Sixth Circuit found this factor to weigh in Latham’s favor.

The Sixth Circuit determined that on balance these factors favored a finding that confusion was likely. Therefore, it reversed the district court’s dismissal of Bliss’s federal and state trademark infringement claims.

Trade dress infringement. A claim of trade dress infringement requires proof that the trade dress is nonfunctional. Bliss contended that its clothing trade dresses were inherently nonfunctional, as they were artistic features derived from creative choices. However, the Sixth Circuit found Bliss’s argument insufficient to meet the standards for assessing functionality. Bliss also failed to demonstrate how its use of bliss Blue in clothing was nonfunctional. Consequently, the Sixth Circuit upheld the lower court’s dismissal of Bliss’s federal and common law trade dress infringement claims.

Attorney fees. The Sixth Circuit also upheld the district court’s decision to deny Latham’s request for attorney fees, concurring with the lower court that attorney fees under the Lanham Act are only justified in exceptional cases. The lower court did not abuse its discretion in determining that Bliss’s trademark and trade dress infringement claims were neither “exceptionally meritless” nor filed in bad faith.

Dissent. In a dissenting opinion, Circuit Judge Joan Larsen indicated she would have upheld the district court’s dismissal of all claims. According to the Judge Larsen, Latham’s mark did not share any common elements with any protected aspects of Bliss’s marks. She also viewed the marks as being “clearly distinguishable.” While Judge Larsen agreed with the majority that Bliss’s marks were strong, it disagreed that Latham’s mark was similar enough to Bliss’s marks to cause confusion.

Bliss alleged that Latham’s word mark infringed because it used a similar lowercase lettering pattern in the “exact shade of bliss Blue.” However, Judge Larsen pointed out that Latham’s mark spelled out entirely different words in an entirely different font. Furthermore, Bliss only had protection for bliss Blue in connection with its stylized “b” and the words “bella bliss,” elements that were absent from Latham’s “bliss Blue” word mark.

Judge Larsen also disagreed with the majority’s finding on intent. According to Judge Larsen, Latham’s original mark used a different lettering pattern than that used in Bliss’s marks, and Latham’s new logos retained many of the prominent features, including lettering pattern, of its old logo. Thus, Judge Larsen argued that the marks never got close enough to be “even remotely similar.”

The Case is No. 21-5723 and 22-5361.

Attorneys: Jaci L. Overmann (Dinsmore & Shohl LLP) for Bliss Collection, LLC d/b/a Bella Bliss. Laurence J. Zielke (Zielke Law Firm, PLLC) for Latham Companies, LLC d/b/a Little English.

Companies: Bliss Collection, LLC d/b/a Bella Bliss; Latham Companies, LLC d/b/a Little English

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