IP Law Daily, TRADEMARK—W.D.N.C.: ‘Hair Shield 450°’ not confusable with ‘F450’ hair care products, (Nov 16, 2015)

By Cheryl Beise, J.D.

Grayson O Company—the owner of the registered mark “F450” for a line of hair care products—failed to establish that competing hair care products sold under the mark HAIR SHIELD 450° was likely to cause consumer confusion, the federal district court in Charlotte, North Carolina, has decided (Grayson O Company v. Agadir International LLC, November 13, 2015, Cogburn, M.). The court granted summary judgment to defendant Agadir International LLC on Grayson O’s trademark infringement and related claims.

Grayson O and Agadir compete in the hair care product industry. Grayson O owns a federal trademark registration for the mark “F 450” for use in connection with hair care products. Grayson contended that Agadir was infringing its F 450 mark by including the temperature “450°” as part of the name of Agadir’s product line. Grayson O asserted claims for trademark infringement and unfair competition the Lanham Act, common law trademark infringement and unfair competition under North Carolina law, and violation of the North Carolina Unfair and Deceptive Trade Practices Act. Before the court were both sides’ motions for summary judgment.

The court noted that all of Grayson O’s claims depended upon establishing that an appreciable number of ordinarily prudent purchasers were likely to be misled, or simply confused, as to the source of the goods in question. For purposes of the present motions, Agadir did not contest the validity of Grayson O’s registered mark.

The court considered the factors used by courts in the Fourth Circuit to determine likelihood of confusion: (1) the strength or distinctiveness of the plaintiff's mark as actually used in the marketplace; (2) the similarity of the two marks to consumers; (3) the similarity of the goods or services that the marks identify; (4) the similarity of the facilities used by the markholders; (5) the similarity of advertising used by the markholders; (6) the defendant's intent; (7) actual confusion; (8) the quality of the defendant's product; and (9) the sophistication of the consuming public. The parties conceded that the 8th factor was not applicable in this case.

The court found that factors 3, 4, and 5 weighed in favor of a finding of likelihood of confusion because the parties used similar advertising and marketing channels to sell identical goods though similar channels of trade. However, the remaining factors—the strength of Grayson O’s mark, the similarity of the parties’ marks, Agadir’s intent, actual confusion, and purchaser sophistication weighed against the likelihood of consumer confusion.

Strength of mark. Regarding strength of mark, the court found that Grayson O’s “F450” mark, though suggestive, lacked conceptual strength, because the evidence showed that third-parties frequently used “450” to indicate the maximum temperature used by hair appliances, such as blow dryers and straightening irons. The court also found that Grayson O’s mark was commercially weak. Grayson O’s advertising expenditures (around $200,000 from 2011 to present) and sales ($600,000 dollars in gross revenue) were minimal in the hair care industry. Grayson O had only used its mark for four years and not received any unsolicited media coverage of its F 450 product line.

Similarity of marks. Grayson O claimed that the dominant portion of both marks was “450,” and that they were therefore identical. Agadir argued that the marks were not similar because its entire mark was “Agadir Argan Oil Hair Shield 450º Plus.”

The court agreed with Agadir, finding that pairing “450º” with other terms of equal size font lessened any confusion. The parties also packaged their products in bottles with different shapes, designs, caps, and colors. The parties’ marks were not so similar as to create a likelihood of consumer confusion, according to the court.

Actual confusion. As evidence of actual confusion, Grayson O offered the testimony of it corporate representative that at least 24 people, including beauty supply customers and Grayson O’s own employees all noticed at the July 2011 and 2012 trade shows that Agadir was using “450.” However, there was no documentary evidence of any instance of confusion and Grayson O’s witness could not provide the name of any distributor or customer who allegedly was confused. The court found that this evidence was at best de minimis and did not weigh in favor of finding a likelihood of confusion.

Defendant’s intent. As evidence of Agadir’s willfulness, Grayson O pointed to Agadir’s failure to cease infringement after receiving its cease-and-desist letter in 2012. However, mere knowledge of a mark is insufficient to establish intent to infringe. There was no evidence that Agadir adopted or continued to use its “Agadir Argan Oil Hair Shield 450° Plus” mark in bad faith, for example, by trying to capitalize on Grayson O’s mark or otherwise mislead or confuse consumers.

Purchaser sophistication. Given that both parties marketed their hair care products to salons rather than directly to consumers at mass market retail locations, the court found that this factor weighed slightly against at finding of confusion.

Conclusion. The court determined that the parties applied their respective marks to similar goods that were sold through similar facilities via similar forms of advertising, and that these factors weighed in favor of a likelihood of confusion. However, because the F450 mark was not very strong or distinctive, the parties’ marks were not similar, there was only de minimis evidence of actual confusion, the consuming public was slightly more sophisticated than average hair care products purchasers, and there was no evidence of Agadir’s intent to confuse, the court concluded that “no reasonable jury could, based on the evidence presented, find that likelihood of confusion exists between the parties’ marks.”

The case is No. 3:13-cv-00687-MOC-DCK.

Attorneys: Kathryn Amy Gromlovits (Shumaker, Loop & Kendrick, LLP) for Grayson O Co. Adolfo E. Jimenez (Holland & Knight LLP) for Agadir International LLC.

Companies: Grayson O Co.; Agadir International LLC

Cases: Trademark NorthCarolinaNews