IP Law Daily, TRADEMARK—9th Cir.: Roof ice melt vendor could not get injunction over ‘PRO’ trademark, (Oct 15, 2025)

By Thomas K. Lauletta, J.D.

On appeal, the district court holding that Summit Ice Melt Systems was unlikely to prevail in the lawsuit over a competitor was affirmed, given the sophistication of buyers for their pricy systems and the weakness of Summit’s mark.

The U.S. Court of Appeals for the Ninth Circuit declined to reverse the district court’s refusal to grant a preliminary injunction to Summit Ice Melt Systems barring competitor HotEdge from using branding with the term "PRO," a registered trademark owned by Summit in connection with ice melting systems. The appellate court held that the district court had not abused its discretion. Further, utilizing the eight-factor test of AMF Inc. v. Sleekcraft Boats, the appellate court found that consumer confusion was unlikely (Summit Ice Melt Systems, Inc. v. HotEdge, LLC, No. 25-914 (9th Cir. Oct. 14, 2025)).

Plaintiff Summit Ice Melt Systems (“Summit”) and defendant HotEdge, LLC, are both companies that sell systems to melt ice on roofs. These systems are costly and are marketed to roofing professionals. Summit applied for a trademark on the term "PRO" in 2017, which it had used since 2013, successfully convincing the U.S. Patent and Trademark Office that the term PRO was "suggestive and ambiguous." HotEdge claims to have used "PRO" in some of its own product names since 2015.

Summit sued HotEdge for trademark infringement and related federal and Nevada law claims. The federal district court in Las Vegas, Nevada, denied Summit’s motion for a preliminary injunction against HotEdge. The instant case relates to Summit’s appeal of the district court decision.

Abuse of discretion standard. Finding that the district court had not rested its decision on an erroneous legal standard or clearly erroneous findings of fact, the appellate court held that the district court had not abused its discretion.

Preliminary injunction. The appellate court stated that to grant a preliminary injunction, a court must determine whether: (a) plaintiffs have demonstrated a likelihood of success on the merits; (b) plaintiffs would suffer irreparable harm absent an injunction; (c) the balance of equities supports granting a preliminary injunction; and (d) the public interest would be served by enjoining the challenged activity.

Customer confusion. To demonstrate a likelihood of success on the merits for its trademark infringement claim, the appellate court stated that Summit must show that: (1) it has a “protected ownership interest” in the “PRO” mark, and that (2) HotEdge’s use of “PRO” will likely confuse consumers and infringe on Summit’s rights.

To demonstrate customer confusion, courts have relied upon the eight factors noted in AMF Inc. v. Sleekcraft Boats: (1) the strength the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product lines.

The district court had concluded that degree of care, weakness of Summit’s PRO trademark, and willful infringement all weighed against Summit. The court also held that the similarity of the marks and Summit and HotEdge’s being in direct competition weighed in favor of Summit. The district court found that three factors were not relevant to its analysis: actual confusion, the marketing channels used, and the likelihood of expansion.

The district court also found that the fifth Sleekcraft factor, “marketing channels used,” was not at issue because the Ninth Circuit has held that advertising online is so commonplace that the use of the internet for marketing is “properly accorded no weight.”

The appellate court found no legal or factual error in the district court’s Sleekcraft analysis. The district court’s legal analysis was appropriate, and its factual findings, including the parties’ different uses of the “PRO” trademark, the degree of care likely exercised by purchasers, and whether HotEdge willfully infringed on Summit’s mark, were supported by the record.

The Ninth Circuit affirmed the district court decision denying Summit’s motion for a preliminary injunction, holding that Summit had not shown a likelihood of success on the merits of its trademark infringement claim. Because of this holding, it was not necessary for the court to consider the other requirements for granting a preliminary injunction.

The Case is No. 25-914.

Judge: Per Curiam.

Attorneys: Robert C. Ryan (Holland & Hart, LLP) for Summit Ice Melt Systems, Inc. Scott Lachman (Akerman, LLP) for HotEdge, LLC.

Companies: Summit Ice Melt Systems, Inc.; HotEdge, LLC

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