Titaness Light Shop v. Sunlight Supply

Summarized by:

  • Court: Intellectual Property Archives
  • Area(s) of Law: Trademarks, Infringement
  • Date Filed: 08-29-2013
  • Case #: 3:12-CV-0620-LRH-VPC
  • Judge(s)/Court Below: United States District Court for the District of Nevada
  • LexisNexis Citation: 2013 U.S. Dist. LEXIS 123837
  • Westlaw Citation: 2013 WL 4650413
  • Full Text Opinion

The eight-factor Sleekcraft test was used to determine confusion.

Opinion (Hicks): Sunlight Supply ("Sunlight") is a distributor of specialty gardening supplies. Sunlight, through an IP holding company IP Holdings, are the owners of the mark TITAN CONTROLS. Titaness Light Shop ("TLS") is a U.S.-based manufacturer specializing in designing, manufacturing, and selling sophisticated indoor grow lighting systems and lighting components. In September 2012, TLS began marketing its lighting products under the TITANESS service mark along with individual trademarks for each product. On October 16, 2012, TLS applied for a federal trademark for the TITANESS mark. In response, defendants submitted a letter of protest to the Commissioners for Trademarks at the United States Patent and Trademark Office. The court found that defendants are entitled to a presumption of trademark validity because TITAN CONTROLS is a federally registered mark. After finding a protectable mark, the court then determined whether there was a likelihood of confusion between Sunlight's TITAN CONTROLS mark and TLS's TITANESS mark. In determining likelihood of confusion, the court used eight Sleekcraft factors. The eight Sleekcraft factors are: "(1) the strength of the mark; (2) proximity or relatedness of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the marketing channels used; (6) the degree of care customers are likely to exercise in purchasing the goods; (7) the defendant's intent in selecting the mark; and (8) the likelihood of expansion into other markets." In regards to strength of the mark, even though TITAN CONTROLS is a descriptive mark, the court found that it has achieved sufficient secondary meaning to warrant trademark protection. In determining the proximity or relatedness of the goods, the court found that the public is likely to mistakenly assume there is an association between these goods, though no such association exists. Regarding similarity of the marks, the court found that these competing marks are sufficiently similar such that a reasonable consumer was likely to be confused by the competing marks. Evidence of actual confusion was scarce. Because TLS was new to the market and evidence of confusion is not readily available, the court found that this factor is neutral. The marketing channels used by the parties, namely trade shows and the two main industry publications - Maximum Yield Industry News and Maximum Yield USA - were identical and, therefore, this factor weighed in favor of defendants. Although their respective products were not exactly the same, they were complementary goods. Thus, even a sophisticated consumer would likely be confused into believing that the products are similar. When reviewing the intent in selecting the mark, there was no evidence of TLS's intent in choosing the TITANESS mark. Based on the lack of evidence of intent in this action, the court found that this factor weighed in favor of TLS. Finally, the last factor was relatively unimportant as the parties were already admittedly marketing their products in the same market. As a whole, the Sleekcraft factors favor the defendant. Accordingly, the ordered that defendants' motion for a preliminary injunction be GRANTED. Plaintiff TLS was ENJOINED from using any mark that indicates an association with defendants Sunlight.

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