IP Law Daily, TRADEMARK—D. Minn.: Air bed makers will again ‘go to the mattresses’ before jury, (Jul 27, 2022)

By Thomas Long, J.D.

Factual disputes preclude deciding on summary judgment whether ads using the phrase NUMBER BED caused likely confusion with the plaintiff’s SLEEP NUMBER mark.

A jury must decide whether advertisements using the phrase NUMBER BED infringed the mark SLEEP NUMBER and other marks, the federal district court in Minneapolis has decided. In the nearly decade-long trademark dispute between competing makers and sellers of adjustable air mattresses—which has already featured one jury trial and an appeal—both parties failed to convince the court that there were no genuine issues of material fact as to the likelihood of initial-interest confusion caused by the defending company’s ads. An appellate court determined last year that the district court erroneously limited analysis of the initial-interest question to the time of purchase, and that evidence of pre-sale confusion could support the complaining manufacturer’s trademark infringement claims. On remand, the district court declined to grant either party’s motion for summary judgment and set the stage for another jury trial with new instructions that permit the application of pre-sale, initial-interest confusion (Select Comfort Corp. v. Baxter, July 26, 2022, Frank, D.).

Plaintiff Select Comfort Corporation sold Select Comfort and Sleep Number brands of adjustable air mattresses online, over the telephone, and in company-owned stores. Select Comfort’s registered trademarks include SLEEP NUMBER, WHAT’S YOUR SLEEP NUMBER, SELECT COMFORT, and COMFORTAIRE.

Infringement dispute. Dires, LLC, doing business as Personal Touch Beds and Personal Comfort Beds, sold competing adjustable air mattresses primary online. Select Comfort filed suit in November 2012 against Dires, LLC, its principals, and affiliated companies in the federal district court in St. Paul, Minnesota, alleging trademark infringement, trademark dilution, unfair competition, and false advertising claims. Select Comfort alleged that Dires used Select Comfort’s trademarks or confusingly similar variations of them, including variations that included the phrase “Number Bed.”

According to Select Comfort, Dires used the marks in online advertising to “bait and switch” consumers by diverting consumers searching for Select Comfort’s products to Dires’s own website and phone lines. They also allegedly exploited consumers’ initial confusion by failing to dispel that confusion or by making false representations when customers contacted Dires’s call centers. Dires counterclaimed, seeking a declaration that Select Comfort did not have trademark rights in the phrase NUMBER BED. The parties filed cross-motions for summary judgment.

Initial-interest confusion ruling; jury trial. In a summary judgment ruling, the court rejected as a matter of law Select Comfort’s trademark infringement claim based on presale or initial-interest confusion. A jury trial was held. The jury was instructed that a likelihood of confusion must exist at the time of purchase to support a trademark infringement claim. After a lengthy trial, the jury returned a mixed verdict, determining that: (1) Dires did not infringe Select Comfort’s trademark rights; (2) although the SLEEP NUMBER mark is famous, Personal Touch did not dilute it; (3) Select Comfort did not have a trademark in NUMBER BED; (4) Personal Touch’s use of NUMBER BED did not constitute unfair competition; (5) seven of the 14 statements alleged by Select Comfort to be false were deemed to be false; and (6) three of the seven false statements were made with an intent to deceive consumers. As a result of the intentionally false statements, the jury awarded damages to Select Comfort in the amount of $155,721. The district court upheld the jury verdict; both Select Comfort and Dires appealed, primarily contesting the district court’s application of the initial-interest confusion doctrine.

Appeal; reversal; remand. The U.S. Court of Appeals in St. Louis reversed, holding that the district court erred in finding as a matter of law that the relevant consumers were sophisticated, and that a theory of initial-interest confusion on the trademark infringement claim could not apply. The Eighth Circuit also explained that the district court was wrong to limit consideration of the initial-interest confusion theory to the point of purchase. Because authority was mixed regarding consumer confusion in the context of Internet shopping and mattress purchases, it was appropriate for the jury to determine the level of consumer sophistication. The Eighth Circuit then remanded the trademark infringement claim, although it said that it had “no comment as to how a finding of confusion at times other than the moment of purchase might affect the analysis of remedies and the determination of damages.”

Current summary judgment motions. On remand, the parties again filed cross-motions for summary judgment. Select Comfort argued that no triable issues existed as to the validity and distinctiveness of the SLEEP NUMBER mark, or as to the issued of likelihood of confusion. Dires took the opposite position—that there was no genuine issue of material fact existed supporting the claim that Dires infringed any mark.

Trademark infringement. Select Comfort argued the use of its exact marks by Dires, as well as its use of NUMBER BED and other terms confusingly similar to SLEEP NUMBER, established infringement as a matter of law. According to Select Comfort, the likelihood of confusion factors—particularly evidence of actual confusion—overwhelmingly and conclusively established a likelihood of confusion. Other factors supporting an infringement determination, Select Comfort said, included the strength of the SLEEP NUMBER mark, the similarities between the parties’ marks, the competitive proximity of the parties’ products, and Dires’s intent to mislead consumers.

Dires responded that all of the evidence necessary for a factfinder to consider trademark infringement based on initial-interest confusion was before the jury in the first trial, and that the court should accept the jury’s verdict of noninfringement. Despite the Eighth Circuit’s remand for further proceedings on consumer sophistication, Dires argued, the jury instructions were carefully crafted so that the jury would consider the entire purchasing context, and the instructions did not require the jury to find that a sale was completed in order for confusion to be actionable.

The court denied both summary judgment motions. While Dires correctly pointed out that the jury was instructed to consider all of the likelihood of confusion factors, the Eighth Circuit had held that it was error to limit the infringement instruction to require confusion at the time of purchase. The appellate court also concluded that this limitation in the instructions was material to the jury’s rejection of the infringement claim.

“The evidence presented in the first trial and in the record on the present motions, does not entitle either party to summary judgment on Plaintiffs’ trademark infringement claim, as fact issues remain and it will be up to the jury to weigh the evidence with respect to all of the relevant factors with an instruction allowing for initial-interest confusion,” the court said. “This claim remains appropriately decided by a jury.

NUMBER BED rights. A factual question also existed regarding whether use by Dires of the phrase NUMBER BED in advertising infringed the SLEEP NUMBER mark and other Select Comfort marks. This was a different question from the one decided by the jury—the question of whether Select Comfort had trademark rights in NUMBER BED (which the jury answered in the negative). Although Dires’s counterclaim was resolved by the jury, Select Comfort’s infringement claim involved a different set of issues and had to be retried under the Eighth Circuit’s remand instructions. In particular, there was still an open question as to whether Dires created a likelihood of confusion.

“The new trial will task the jury with determining whether Defendants’ use of Plaintiffs’ trademarks—or phrases that are confusingly similar to such trademarks—is likely to cause confusion,” explained the court. “This determination will be made with the aid of jury instructions that permit the application of pre-sale, initial-interest confusion.”

Injunction request. Dires also asked the court to issue a permanent injunction declaring that Select Comfort did not own rights in the mark NUMBER BED and prohibiting Select Comfort from asserting that it owned rights in that phrase or that other parties’ use of that phrase infringed Select Comfort’s mark. The court declined this request because there was a jury question as to whether advertisements that used the words NUMBER BED caused a likelihood of confusion with Select Comfort’s SLEEP NUMBER mark. In addition, the court concluded that Dires did not demonstrate irreparable harm or that the balance of equities or public interest favored injunctive relief.

The Case is No. 0:12-cv-02899-DWF-TNL.

Attorneys: Andrew S. Hansen (Fox Rothschild LLP) for Select Comfort Corp. Barbara P. Berens (Berens & Miller, PA) for John Baxter. Cassandra B. Merrick (Madel PA) for Dires, LLC, d/b/a Personal Touch Beds and Personal Comfort Beds, Digi Craft Agency, LLC and Direct Commerce, LLC, d/b/a Personal Touch Beds.

Companies: Select Comfort Corp.; Select Comfort SC Corp.; Dires, LLC, d/b/a Personal Touch Beds and Personal Comfort Beds; Digi Craft Agency, LLC; Direct Commerce, LLC, d/b/a Personal Touch Beds

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