IP Law Daily, TRADEMARK—E.D. Mich.: Use of ‘Max’ was purely descriptive, not confusable with mark MACK’S, (Oct 2, 2023)

By Jonathan Anderson

The court’s ruling on trademark infringement necessitated dismissal of the complaint’s other federal and state claims, including allegations of unfair competition and trademark dilution.

The federal district court in Detroit has dismissed with prejudice a trademark-infringement complaint that a competitor’s alleged use of the word “Max” in connection with its SONIC DEFENDERS earplugs is confusable with McKeon’s Products’ MACK’S trademark for earplugs. Applying a Sixth Circuit threshold requirement, the court held that defendant does not use the word in a trademark way. Defendant’s use of the word is purely descriptive and not a source identifier, so it is implausible that a reasonable consumer would be confused. As a result of this finding, the court also disposed of federal and state claims for unfair competition, a claim alleging violation of state consumer protection law, and a claim for federal trademark dilution (McKeon Products, Inc. v. SureFire, LLC, September 29, 2023, Berg, T.).

Background. Plaintiff, McKeon Products, Inc., is a Michigan corporation that produces earplugs under the trademarks MACK’S and MACK’S PILLOW SOFT. McKeon registered the MACK’S mark in 1988 and claims first use in commerce as early as 1968. It has subsequently registered MACK’S SHUT-EYE SHADE, MACK’S PILLOW SOFT, and MACK’S AUDIBLES.

Defendant, California-based SureFire, LLC, produces tactical technology, including earplugs, under the trademark SONIC DEFENDERS, with a 2005 claim of first use. SureFire’s line of earplugs are named “the EP9 Sonic Defenders Cobalt Max,” “the EP5 Sonic Defenders Max,” and “the EP10 Sonic Defenders Ultra Max.”

Plaintiff’s claims. McKeon alleges that because MACK’S and “Max” are phonetic equivalents, SureFire’s use of the word “Max” in connection with the sale of its earplugs is likely to cause customer confusion and dilute the strength of the MACK’S mark. Specifically, McKeon filed suit raising five claims: (1) federal trademark infringement, 15 U.S.C. § 1114; (2) unfair competition and false designation of origin, 15 U.S.C. § 1125(a); (3) federal trademark dilution, 15 U.S.C. § 1125(c); (4) unfair trade practices, MCL § 445.901 et seq. and Michigan common law; and (5) violation of Michigan’s Consumer Protection Act, MCL § 445.903.

Defendant’s response. SureFire filed a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6), arguing that McKeon fails to meet the threshold requirement under Sixth Circuit law to plausibly allege that SureFire is using “Max” “in a trademark way” and that its use of the word is likely to cause consumer confusion with MACK’S. SureFire asserts that its use of the word is purely descriptive and not a source identifier.

Trademark infringement. The court concluded it is implausible that SureFire’s use of the word “Max” could confuse a reasonable consumer over the source of SONIC DEFENDERS earplugs. SureFire is not using the word “Max” in a trademark way, i.e., in a way that identifies the source of its products. Rather, SureFire is using the word “Max” as a modifier to describe the strength of the products, not their source. In support of this conclusion, the court observed that product listings for SureFire’s earplugs focus on the trademark SONIC DEFENDERS rather than “Max.” “Sonic Defenders is visually and textually the source of the earplugs,” the court wrote.

Unfair competition, consumer protection. The court disposed of the federal and state claims for unfair competition and the claim alleging violation of state consumer protection law. These claims require a showing that an alleged infringer’s actions create a likelihood of confusion, but because the court disposed of the likelihood-of-confusion claim, these latter claims must also fail.

Trademark dilution. Finally, the court dismissed the claim for federal trademark dilution. When a defendant uses a mark in a non-trademark way, the plaintiff cannot maintain a federal trademark dilution claim, the court said, citing the statutory language of 15 U.S.C. § 1125(c)(3).

The case is No. 2:22-cv-11771-TGB-JJCG.

Attorneys: Latifa H. Dabaja (Honigman LLP) for McKeon Products, Inc. Brian D. Wassom (Warner Norcross + Judd LLP) for SureFire, LLC.

Companies: McKeon Products, Inc.; SureFire, LLC

Cases: Trademark MichiganNews