United States District Court, D. Utah
MEMORANDUM DECISION AND ORDER
A. KIMBALL, UNITED STATES DISTRICT JUDGE
matter is before the court on Defendant Utah Vap or Smoke,
LLC (Utah Vap's) Motion for Summary Judgment. On
September 5, 2018, the court held a hearing on the motion. At
the hearing, the Plaintiff Affliction Holdings (Affliction)
was represented Brent Blakely. Defendants were represented by
Mathew Orme and Clinton Duke. The court took the motion under
advisement. Based on the briefing filed by the parties and
the law and facts relevant to the pending motion, the court
issues the following Memorandum Decision and Order GRANTING
the Defendant's Motion for Summary Judgment.
is an apparel company that is headquartered in California.
Utah Vap is a vaping accessory company that is headquartered
in Utah. Affliction has been designing and selling apparel
and accessories since 2005. Affliction has traditionally been
associated with the Mixed Martial Arts community. Affliction
has a registered trademark in its name. Affliction alleges
that Utah Vap infringed on its trademark. Specifically,
Affliction argues that Utah Vap uses a mark that
misrepresents the origin of its goods as being produced by
Affliction when the goods were produced by Utah Vap.
Vap primarily sells vaping accessories; however, it also
sells a limited amount of promotional apparel which accounts
for .05% or 1/2000 (roughly $10, 000) of its overall sales.
The alleged infringing mark is attached below.
LF Fleur-de-Lis Defendant's Accused Marks (U.S. Reg.
No. 4, 700, 142)| Affliction argues that Utah Vap
infringed on its trademark and therefore brings claims for:
1) Trademark Infringement Under the Lanham Act; 2) False
Designation of Origin and False Descriptions; 3) Common Law
Trademark Infringement; 4) Common Law Unfair Competition; and
5) Unfair Competition in Violation of Utah Code Annotated
Sections 13-5a-101-103. The Defendant seeks summary judgment
on all of Plaintiff s claims.
judgment is appropriate “if the movant shows that there
is no genuine dispute as to any material fact and the movant
is entitled to judgment as a matter of law.”
Fed.R.Civ.P. 56(a). When considering a motion of summary
judgment, the court views “all facts [and evidence] in
the light most favorable to the party opposing summary
judgment.” S.E.C. v. Smart, 678 F.3d 850, 856
(10th Cir. 2012) (quoting Grynberg v. Total S.A.,
538 F.3d 1336, 1346 (10th Cir. 2008)). The movant must prove
that no genuine issue of material fact exists for trial.
See Fed. R. Civ. P. 56(a); Nahno-Lopez v.
Houser, 625 F.3d 1279, 1283 (10th Cir. 2010).
Accordingly, to survive summary judgment, “the
nonmoving party must come forward with specific facts showing
there is a genuine issue for trial.” Smart,
678 F.3d at 858 (quoting L & M Enters. v. BEI Sensors
& Sys. Co., 231 F.3d 1284, 1287 (10th Cir. 2000)).
Vap seeks summary judgment on all of Affliction's claims
on the basis that the parties' marks do not cause a
likelihood of confusion among consumers. Each of
Affliction's claims are premised on a finding of
trademark infringement. Specifically, the First, Second, and
Third Causes of Action are federal and common law trademark
infringement claims. Meanwhile, infringement is an element of
the Fourth and Fifth Causes of Action for common law
statutory unfair competition, as they are alleged in the
complaint. Therefore, Utah Vap contends that because
Affliction has insufficient evidence to prove infringement,
each of its claims fail.
Vap also argues that Affliction has not provided a
computation of damages or even disclosed an estimate of the
damages it seeks. Utah Vap argues that fact discovery is now
closed, and Affliction has failed to produce any evidence
establishing an estimation of damages.
Likelihood of Confusion
elements of an infringement claim under [15 U.S.C. §
1125(a)] are: 1) that the plaintiff has a protectable
interest in the mark; 2) that the defendant has used an
identical mark in commerce…; and 3) that the
defendant's use is likely to confuse consumers.”
1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d
1229, 1238 (10th Cir. 2013). “An infringement claim
under [15 U.S.C. § 1114] has nearly identical
elements… except that the registration of a mark
serves as prima facie evidence of both the mark's
validity and the registrant's exclusive right to use it
in commerce…” Id. The central question
in infringement actions is “whether the defendant's
use of the plaintiff's mark is likely to cause consumer
likelihood of confusion is a question of fact, the Tenth
Circuit has held that it is one “amenable to summary
judgment in certain cases… because courts retain an
important authority to monitor the outer limits of
substantial similarity within which a jury is permitted to
make the factual determination of whether there is a
likelihood of confusion.” Nutraceutical Corp. v.
Affordable Naturals, 2017 WL 4564739, *11 (D. Utah 2017)
(citing King of the Mountain Sports, Inc. v. Chrysler
Corp., 185 F.3d 1084, 1089 (10th Cir. 1999). In
determining whether there is a likelihood of confusion,
courts examine and weigh six factors: 1) the degree of
similarity between the marks; 2) the intent of the alleged
infringer in adopting its mark; 3) evidence of actual
confusion; 4) the similarity and the manner of marketing
between the goods or services marketed by the competing
parties; 5) the degree of care likely to be exercised by
purchasers; and 6) the strength or weakness of the marks.
King of the Mountain, 185 F.3d at 1089-90. The court
examines these factors holistically and no single ...