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Affliction Holdings, LLC v. Utah Vap Or Smoke, LLC

United States District Court, D. Utah

September 12, 2018




         This 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.


         Affliction 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.

         Utah 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.

         (Image Omitted)

         Affliction 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.


         Summary 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)).


         Utah 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.

         Utah 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.

         (i) Likelihood of Confusion

         “The 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., 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 confusion.” Id.

         Although 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 ...

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