from the United States District Court for the District of
Utah D.C. No. 1:17-CV-00124-DAK
H. Blakely (Jessica C. Covington with him on the briefs),
Blakely Law Group, Manhattan Beach, California, for
Matthew J. Orme (Clinton E. Duke, with him on the brief),
Durham Jones & Pinegar, Salt Lake City, Utah, for
LUCERO, BACHARACH, and EID, Circuit Judges.
LUCERO, CIRCUIT JUDGE.
Holdings, LLC ("Affliction") sued Utah Vap or
Smoke, LLC ("Utah Vap") alleging trademark
infringement. The district court granted Utah Vap's
motion for summary judgment, holding there was no likelihood
of confusion between the parties' marks. Exercising
jurisdiction under 28 U.S.C. § 1291, we reverse.
is an apparel company headquartered in California. It has
registered trademarks which include the AFFLICTION Word Mark,
and the "Affliction LF Fleur-de-Lis" (composed of a
decorative upside-down fleur-de-lis contained inside of a
circle, with the words "AFFLICTION LIVE FAST" in
Vap is an electronic nicotine delivery system (i.e.,
e-cigarette) accessory company headquartered in Utah. It
primarily sells vaping accessories but also sells some
promotional apparel. Utah Vap's marks incorporate a
right-side-up decorative fleur-de-lis within a circle, and
the words "VAPE AFFLICTION" in a font dissimilar to
the Gothic lettering on the Affliction LF Fleur-de-Lis mark.
alleged Utah Vap was selling products using marks that
misrepresent the products as being from Affliction. It filed
suit claiming: (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 a
Utah statute. Affliction sought damages, noting in its
initial discovery disclosures that it "currently
lack[ed] information sufficient to calculate either [Utah
Vap]'s profits or its actual damages." It later
claimed damages based on Utah Vap's revenue.
Vap moved for summary judgment, asserting that there was
insufficient evidence to create a triable issue as to a
likelihood of confusion between the marks, and that
Affliction failed to disclose a computation of damages during
the discovery period sufficient to introduce evidence of
damages at trial. The district court granted summary judgment
to Utah Vap. Affliction timely appealed.
review the grant of summary judgment de novo. Hobbs ex
rel. Hobbs v. Zenderman, 579 F.3d 1171, 1179 (10th Cir.
2009). A party is entitled to summary judgment if, viewing
the evidence in the light most favorable to the non-moving
party, there is no genuine issue as to any material fact and
the movant is entitled to judgment as a matter of law.
of trademark infringement require a party to establish that
it has a legal right to a mark and that the defendant's use
of a similar mark is likely to generate consumer confusion in
the marketplace. See 1-800 Contacts, Inc. v. Lens.com,
Inc., 722 F.3d 1229, 1238 (10th Cir. 2013). Consumer
confusion can arise prior to sale (in initial interest), at
the point-of-sale, or in post-sale contexts. See id.