Trademark infringement, the hallmark of which is the “likelihood of confusion” analysis, is determined in the Court of Appeals for the Ninth Circuit by applying the fluid, eight-factor balancing test of AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-349 (9th Cir. 1979). Rarely do all eight factors irrefutably fancy any one party. It seems there are usually at least some factors that leave room for divergent opinions as to whether a consumer is likely to be confused between the trademarks and products or services of the litigants. Because no single factor is supposed to be dispositive, trademark infringement cases are frequently and beautifully uncertain.

The standard test for summary judgment requires that no genuine issue of material fact exist. Thus, the initial crux of a trademark infringement case is determining when the inevitable disagreements regarding the application of the eight Sleekcraft factors are supported by admissible evidence significant enough to create a disputed issue of material fact, thereby overcoming a summary judgment motion. The recent decision in Surfvivor Media, Inc. et al. v. Survivor Productions et al., 406 F.3d 625 (9th Cir. 2005) provides one contextual example of the Ninth Circuit evaluating disagreements between trademark litigants and determining whether the case should “surfvive” summary judgment.

In Surfvivor Media, plaintiffs (“Surfvivor”) held three federal trademarks for the mark “Surfvivor,” a combination of the words “surf” and “survivor.” Surfvivor used its mark to identify and sell beach-themed products, including such things as sunscreen, t-shirts, and surf boards, primarily in Hawaii. Several years after the “Surfvivor” mark was first used in commerce, the widely-popular “Survivor” television program, in which contestants battle each other and the elements of nature to avoid being voted off the show, began broadcasting. An array of consumer merchandise bearing the “Survivor” mark followed, including t-shirts, sunscreen, lip balm, shorts, and hats. Surfvivor, as senior trademark holder, sued Survivor, the junior trademark holder, for reverse confusion, claiming that consumers of beach-related products would be confused as to whether Survivor was the source or sponsor of Surfvivor’s products.

Whether one trademark infringes another is a question of whether a “reasonably prudent consumer in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks.” Surfvivor Media, 406 F.3d at 630. In more common parlance, to prevail on a trademark infringement claim, a plaintiff must demonstrate there is a likelihood that consumers will be confused and purchase the defendant’s products believing they are purchasing plaintiff’s, or vice versa. See id.; KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 608 (9th Cir. 2005).

As mentioned above, likelihood of confusion is assessed by balancing the eight Sleekcraft factors. The Ninth Circuit discussed each factor in Surfvivor Media. It determined that four of the eight factors weighed in favor of Surfvivor and a finding of likely confusion. These included:

(a) the relative strength of the marks at issue,
(b) the similar marketing channels used by both parties (e.g., Hawaiian J.C. Penney stores),
(c) the low degree of consumer care in distinguishing between brands of inexpensive goods (like sunscreen), and
(d) Survivor’s constructively bad intent in adopting its mark with knowledge of Surfvivor’s mark.

However, the court’s analysis indicates it did not believe these factors favored Surfvivor in a particularly strong fashion.

The court found the Sleekcraft factor regarding similarity of the marks was a split, in that the different appearance and meaning of the marks favored Survivor, but the similar sound favored Surfvivor. The Ninth Circuit also chalked the three remaining factors up in Survivor’s column. Those factors were:

(a) the purported lack of relatedness between the products of the parties,
(b) the minimal evidence of any prior actual confusion in the public, and
(c) the lack of any competent basis for believing that Surfvivor planned to expand its product lines into other geographic regions.

Altogether, by the Ninth Circuit’s tally, four factors favored Surfvivor and a likelihood of confusion, while one factor was divided (but slightly favored Survivor) and three factors favored Survivor, weighing against a likelihood of confusion. With that balance of apparently conflicting evidence, it seems a case could have been made for the denial of summary judgment. Instead, the court concluded that “[t]he distribution of Sleekcraft factors does not raise a material issue of fact regarding likelihood of confusion,” and summary judgment was upheld against Surfvivor’s claim of infringement. Surfvivor Media, 406 F.3d at 634.

This result could seem odd given the split count of Sleekcraft factors, especially when one considers that summary judgment is “disfavored” in trademark infringement cases under Ninth Circuit precedent due to the highly fact-based nature of likelihood of confusion analysis. See id.; KP Permanent Make-Up, 408 F.3d at 608.

But ultimately, the Ninth Circuit (as well as the court below) appears to have viewed the totality of the evidence in Surfvivor Media as lacking in conflict significant enough to create a disputed issue of fact when considering how heavily the various factors favored the moving party.

The decision deserves dissection. Based on Surfvivor Media, it seems that the relative strength the Court assigns to each Sleekcraft factor, according to the particular circumstances, can be more important than the simple tally of how many factors generally favor one party over the other or conflict with each other.

The Ninth Circuit indicated its conclusion that the weakness of Surfvivor’s showing on the actual confusion factor in particular was, functionally, especially decisive in this case. The apparent emphasis on actual confusion in Surfvivor Media is consistent with other Ninth Circuit precedent establishing that a lack of evidence of actual confusion should be weighed heavily “when the particular circumstances indicate that such evidence should have been available” (Sleekcraft, 599 F.2d at 353; Cohn v. Petsmart, Inc., 281 F.3d 837, 842-843 (9th Cir. 2002) (emphasis added)), and that even proffered evidence of actual confusion can be trivial or de minimis (Nutri/System, Inc. v. Con-Stan Industries, Inc., 809 F.2d 601, 606-607 (9th Cir. 1987)). Under other circumstances, solid evidence of past actual confusion can, conversely, be a strong leading indicator of future likelihood of confusion. Surfvivor Media, 406 F.3d at 633; Rodeo Collection v. West Seventh, 812 F.2d 1215, 1219 (9th Cir. 1987). Thus, the strength or lack of actual confusion can have importance beyond the more generic issue of whether any actual confusion exists.

The relative importance of other Sleekcraft factors may predominate in different cases based on the facts and context. For instance, the Ninth Circuit apparently believes the factors regarding mark similarity, relatedness, and similar marketing channels can, depending on the circumstances, be peculiarly important in certain types of trademark infringement cases involving the Internet. See Interstellar Starship Services, Ltd. v. Epix, Inc., 304 F.3d, 936, 942-943 (9th Cir. 2002).

Thus, trademark litigants should be sure to assess whether the courts may give special weight to certain Sleekcraft factors depending upon the facts of their individual cases and relevant precedent. They should also examine whether it is possible to distinguish cases that may be used by an opposing party to suggest the importance of certain Sleekcraft factors.

Surfvivor Media also twice cited, for comparison purposes, an earlier Ninth Circuit decision in which a lawsuit was allowed to proceed past summary judgment when only three of the Sleekcraft factors favored the plaintiff opposing the motion. But in that case, the three factors favored the plaintiff in overwhelming fashion. In contrast, despite finding that four factors favored plaintiff Surfvivor somewhat meekly, summary judgment was still granted in the Surfvivor Media case – demonstrating again that, in each trademark infringement action, the relative weight assigned to the various factors can make all the difference in summary judgment analysis.

Surfvivor Media is a good example of how unpredictable trademark infringement analysis can be, and how important it is for trademark litigants to assess which factors may be deemed most important given the facts and circumstances of their particular cases.

Trademark litigants should also note the importance the Ninth Circuit placed on the issue of damages in Surfvivor Media. As in most affirmative claims for relief, a plaintiff must demonstrate damages to prevail on a claim of trademark infringement. Surfvivor had not shown any damages whatsoever from the alleged confusion between its products and Survivor’s. The Ninth Circuit explained in footnote 4 of its opinion that the lack of any damages evidence should have sunk Surfvivor’s case by itself, had it been raised below.

Accordingly, litigants should be careful not to be capsized by damages issues while attempting to ride even a tidal wave of liability. Trademark infringement plaintiffs should be prepared to demonstrate some concrete damage, and defendants should always consider how to attack the affirmative case as lacking any proof of actual harm.

Welcome to the beautiful uncertainty of trademark infringement litigation.

Reprinted with permission from The Los Angeles Daily Journal. 2006 Daily Journal Corporation. All rights reserved.