IP Law Daily, TRADEMARK—N.D. Ala.: ‘Weigh to Live’ and ‘Weigh to Wellness’ marks not likely to be confused, (Jan 4, 2022)

By Deirdre Kennedy, J.D.

Lack of actual confusion of the marks “weighed” heavily in the determination.

Irwin Holdings, holder of the mark “Weight to Live” in connection with a medically supervised weight loss program, was unsuccessful in its trademark action against a competitor’s “Weigh to Wellness” mark because the court determined that there was little likelihood of confusion between the parties’ marks, despite being used on similar services in the same markets (Irwin Holdings, LLC v. Weigh to Wellness, LLC, December 29, 2021, Cornelius, S.).

Irwin Holdings LLC licensed the “Weight to Live” (WTL) mark to American Family Care, Inc., a national network of medical clinics that provides, among other things, a medically-supervised weight loss program. Weigh to Wellness LLC offers a medically-supervised weight loss program called “Weigh To Wellness” (WTW) from a single facility in the same Birmingham, Alabama market where several American Family Care clinics offering the WTL program are located. The name “Weigh to Wellness” was conceived in December 2013, the company was formed in January 2014. WTW’s founder had no awareness of the weight loss program offered by American Family Care until she received a cease-and-desist letter from the plaintiffs dated June 2, 2015, asserting the WTW mark infringed the WTL mark.

Irwin Holdings commenced this action against WTW asserting claims for trademark infringement under 15 U.S.C. § 1114(1)(a) and unfair competition under 15 U.S.C. § 1125(a)(1), both provisions of the Lanham Act. WTW filed a motion seeking summary judgment arguing that the claims were barred by the doctrine of laches and, alternatively, that it was entitled to summary judgment based on its status as a prior user under 15 U.S.C. §§ 1057(c)(1) and 1115(b)(5). By a memorandum opinion and order dated August 15, 2019, the court denied WTW’s motion, holding it had failed to establish either a laches defense or a statutory prior user defense. WTW then renewed its motion for summary judgment, filed after an unsuccessful attempt at mediation and a period of discovery. In the renewed motion, WTW reasserted its laches and statutory prior user defenses and additionally argued that Irwin Holdings could not demonstrate a likelihood of confusion between the marks at issue.

WTW produced evidence that the USPTO has registered on a nationwide basis at least 51 other marks for weight management services and products that substitute the homophone “weigh” for “way,” 11 of which additionally include the preposition “to” or its numeric homophone. Further, both parties testified they are not aware of any member of the relevant public ever having confused the WTL mark and the WTW mark.

The court applied a likelihood of confusion analysis.

Likelihood of confusion. Although the weight accorded to each factor in the seven-factor balancing test used to determine likelihood of confusion is determined on a case-by-case basis, the strength of the allegedly infringed mark (the first factor) and the existence and extent of actual confusion (the seventh factor) generally are regarded as the most important factors, in ascending order of importance. The protection afforded a mark increases with its strength. The dispute here was whether the WTL mark is descriptive or suggestive. The court readily concluded that the WTL mark was suggestive, as opposed to merely descriptive. The mark replaces a word in the phrase “way to live” with a homophone to convey the idea of a weight loss program that leads to a better life. Although the word “weigh” arguably describes an element of services offered by American Family and may be needed by competitors to describe their services, its clever-enough use in a phrase that requires some imaginative effort to be understood as descriptive of the services represented nudges the mark as a whole past the line of demarcation between descriptive and suggestive on the spectrum of distinctiveness.

The court agreed with WTW’s argument that even if the WTL mark was suggestive, its relative strength was diminished by the degree to which third parties providing weight management services have conceived of the same or a similar play on words to suggest those services. If the WTL mark was truly distinctive, it was unlikely so many other businesses offering weight management services independently would have thought of using the same or a similar play on words. Accordingly, the third-party evidence produced by WTW served to diminish the linguistic uniqueness and, consequently, conceptual strength of the WTL mark. Therefore, the court found that, on the whole, the WTL mark was relatively weak, and the first factor did not weigh in favor of Irwin Holdings.

Similarity of the marks. In assessing similarity, a court considers the overall impression created by the marks, and does not simply compare isolated features. Irwin Holdings argued the parties’ marks were confusingly similar because they employed the same play on words. WTW argued the parties’ marks were not confusingly similar because the terminal words of the marks differed. The terminal words, and consequently the marks in totality, are visually distinct to the extent the eye easily perceives that “wellness” contains more letters than “live.” The marks are also aurally distinct to the extent the WTW mark is alliterative while Irwin Holdings’ mark does not employ an auditory rhetorical device. Notwithstanding these visual and aural distinctions, the court could not conclude it would be impossible for a reasonable jury to find the parties’ marks create the same overall impression. Accordingly, the second factor weighed in favor of Irwin Holdings. However, the court gave this factor less weight in the overall analysis given the meaningful distinctions discussed above.

Similarity of services. The third factor asks whether the parties’ services “are the kind that the public attributes to a single source.” The test is not whether the products can be readily distinguished, but rather whether the goods are so related in the minds of consumers that they get the sense that a single producer is likely to put out both goods. Because the average consumer could reasonably attribute these services at issue to a single source, and the WTW did not argue otherwise, the court found that this third factor weighed in favor of Irwin Holdings.

Similarity of trade channels and customers. The fourth factor asks “where, how, and to whom the parties’ products are sold.” Both American Family and WTW offer weight loss services to Birmingham-area residents. However, American Family’s program was one of a number of services offered at their clinics, while WTW’s program is offered at its standalone facility identified by signage bearing its mark and dedicated to that program only. While the parties’ customers may be similar in a general sense, it was not likely that given the distinctions between the parties’ facilities those customers would walk into the WTW facility and mistake it as offering weight management services sponsored by American Family. On the whole, the fourth factor did not weigh in favor of Irwin Holdings.

Defendant’s intent. The sixth factor requires a court to determine whether a defendant had a conscious intent to capitalize on the plaintiff’s business reputation, was intentionally blind, or otherwise manifested improper intent in adopting its mark. Irwin Holdings offered no evidence that WTW had an improper intent in adopting its mark and conceded “the infringement does not appear to be intentional.” The testimony supported the existence of an “innocent origin” for the WTW mark.

Actual confusion. Actual confusion “is not necessary to a finding of likelihood of confusion,” but it is one of the most important factors because evidence of actual confusion is the best evidence of a likelihood of confusion. The WTL mark and the WTW mark co-existed in the same market for approximately seven years. During that time, WTW spent more than $600,000 to promote its weight loss program in that market. Yet there was no evidence a member of the relevant public ever confused the parties’ marks, and Irwin Holdings conceded this point. Accordingly, this factor decidedly did not weigh in favor of Irwin Holdings.

The balance of the factors, the court concluded, including the two generally regarded as the most important, did not favor a finding of likelihood of confusion. Therefore, WTW’s renewed motion for summary judgment was granted, and the action was dismissed with prejudice.

The case is No. 2:18-cv-00774-SGC.

Attorneys: Michael J. Douglas (Leak, Douglas & Morano, PC) for Irwin holdings LLC. Marcus R. Chatterton (Balch & Bingham LLP) for Weigh to Wellness LLC.

Companies: Irwin holdings LLC; Weigh to Wellness LLC

Cases: Trademark AlabamaNews GCNNews