The intro gets cute: “As difficult as it may be to imagine
any unpleasantness associated with a trip to the dentist, this case reminds us
that discord and painful friction may invade even society's most cheerful and
unsullied icon of good times and happy memories: the dentist’s chair.” But
seriously, folks: the parties provide crowns to dentists. In 2009, Glidewell began selling an
all-zirconia crown using the mark BruxZir, which was federally registered in
2010. In 2011, Keating began selling its
own all-zirconia crown using the mark KDZ Bruxer and an associated logo. When I first read this case, I thought the
court was making the case unnecessarily complicated, though on reflection I can
see where a district court in the 9th Circuit would have
understandable apprehension about what the heck might happen on appeal given
the circuit’s incoherence in trademark cases.
Anyway, important facts to know: (1) “bruxism” is a
well-known term of art in the dental community describing a condition in which
the patient grinds or gnashes her teeth; (2) “bruxers” are sufferers of
bruxism; and (3) “to brux” means “to grind one’s teeth.” A bruxer with a ground
down or cracked tooth may need a crown, and an all-zirconia crown “is
particularly suited for this use, since zirconia is strong enough to withstand
the wear-and-tear associated with inveterate bruxing.”
Glidewell sued for trademark infringement/false designation
of origin/unfair competition, except those all three have the same standards,
so we will speak only of trademark. Keating counterclaimed for unfair
competition/trademark misuse/cancellation.
Early in the case, Keating moved for summary judgment, a
motion that failed at that time because Keating didn’t meet its burden, but the
court commented that summary judgment for Keating could still be available;
Keating needed to cite relevant law—“cases analyzing an infringement claim
where plaintiff alleges that its composite mark is infringed by defendant's
composite mark and the marks share only a portion of letters”—to get summary
judgment. The court commented that it would give Keating a second chance because,
as a “straight-forward trademark infringement case, … it is highly unlikely
that there will be any genuine issues of material fact,” as long as Keating
could cite analogous cases. (I’m still not clear why case citations would be
required if the Sleekcraft factors otherwise
would dictate summary judgment.)
Marks are considered as a whole, as they appear in the
marketplace.
Keating argued that BruxZir was generic or descriptive,
while Glidewell argued that it was suggestive.
The court found BruxZir suggestive
because it suggests, but falls
short of explicitly describing, Plaintiff's zirconia crown product. It is a
zirconia product made for bruxers, or tooth-grinders, but “a mental leap is
required” to understand that the product is a dental crown. The mark does not
contain any unequivocally descriptive term, like “crown” or “cap,” but rather
combines the prefix “brux-”, from “bruxer” or “bruxism,” with the prefix “zir-”,
from “zirconia.”
Argh! Invited error,
yes, given the many things 9th Circuit courts have said over the
years, but the rule is not that descriptiveness is determined by seeing whether
you can guess the product just by knowing the mark. Compare “Red Apple” for lipstick. Any number of products could be apple red,
but the term is still descriptive; the question is whether any thought is
required to connect the mark and the goods/services knowing the latter. (See how
easily the rule applied by the court can be abused with the following:
“American” for airlines should be suggestive, since you can’t guess that the
product is an airline just from the term “American,” whereas “American
Airlines” with “Airlines” disclaimed would be descriptive.) Still, this isn’t as bad as some other
suggestiveness holdings, given the pun/double meaning the court noted in a
footnote, since BruxZir can be pronounced like “bruxer.”
The 9th Circuit takes away, and the 9th
Circuit gives: suggestive marks are “presumptively weak,” unlike arbitrary or
fanciful marks. Thus, Glidewell’s mark
was weak, “since it is a composite that includes two commonly-used terms
describing, respectively, the general malady the product is intended to treat
and the material used to manufacture it.”
It could only be protected against a mark that was quite similar for
closely related goods/services.
As to similarity, the court determined that Keating’s mark
was not “quite similar” but rather “substantially different,” considered in
their entirety. The marks shared “Brux,”
but “KDZ” was much bigger in the logo than “Bruxer,” and the whole thing was
surrounded by an oval. BruxZir was
presented very differently: no oval, with the capitalized Z overlapping the
Brux. As logos, there was almost no
visual similarity. While logos aren’t
always used, the marks look substantially different even without graphics and
fonts. The all-caps three-letter KDZ is
entirely absent from BruxZir, and Zir is different “xer.”
As for sound, while “bruxer” and “BruxZir” would be
pronounced the same or similarly, again Keating’s mark begins with three
letters with a very distinct sound.
And on meaning, KDZ again affected the meaning of the whole
(standing for Keating Dental Zirconia). “The fact that the commonly-used dental
term ‘brux’ is the predominant similarity between the two marks weighs against
a finding of a likelihood of similarity. When commonality comes from a descriptive
term, that decreases the likelihood of confusion.
After that, it was all downhill. Degree of care was likely to be high given
dentists’ expertise and status as repeat purchasers rather than casual buyers;
the prices of the products were also relatively high and distinctive (BruxZir
$99, KDZ Bruxer $139). “No matter
whether the dentists themselves, their patients, or their patients' insurance
might be covering the cost, the significant price differential and significant
cost further distinguishes the products and weighs against a likelihood of
confusion.” While it’s true that dentists aren’t immune from confusion in the
abstract/aren’t necessarily experts in choosing between two brands, here, the
similarity between the marks comes from “brux,” a term with which dentists are
quite familiar. A reasonably prudent
dentist “can be expected to exhibit a relatively high degree of care and
knowledge when purchasing dental crowns containing terms related to the
particular maladies that they are designed to treat.”
Glidewell argued that deceptive intent could be inferred
from Keating’s choice of its mark with knowledge of Glidewell’s. But since the marks weren’t similar, there
was no reason to infer bad faith. The
only direct evidence was Keating’s testimony that it began using the KDZ prefix
in 2006, expanded it to the KDZ Bruxer because an all-zirconia crown would be
appropriate for “bruxers,” and had counsel conduct a trademark search before
settling on the mark. Thus, even if
Keating knew about BruxZir, that failed to show an intent to deceive the
public.
Glidewell argued that there was evidence of actual
confusion, but the court agreed that most of the proffered evidence didn’t show
confusion, and any remaining confusion was de minimis. There was no survey, though Glidewell had the
resources to conduct one—it has an annual marketing budget of $8.2 million and
a substantial proportion of that goes to BruxZir—justifying an adverse
inference. Instead, Glidewell submitted evidence of an incident in which an
employee “randomly called” a dentist’s office to offer a discount on BruxZir,
and “was asked whether the discount could apply to a previous order that had
actually been submitted to Defendant for a KDZ Bruxer Crown.” But this
confusion appears to stem from the fact that the mark might sound identical
over the phone, and evidence that a customer asked about “her past purchase of
the phonetic equivalent of a ‘bruxer crown’” didn’t show actual confusion
between the marks. Even assuming that
the dentist was confused at the moment, that didn’t show likely confusion among
the buying public. General confusion is
not targeted by the Lanham Act, only confusion that affects purchasing
decisions; asking questions about relationships between the parties is too
ambiguous to prove confusion.
The other purported evidence of actual confusion came from
83 prescription forms from 57 different dentists submitted to Keating that
contain “BruxZir” or “Bruxzir” or “bruxzir” even though they were ordering KDZ
Bruxer crowns. These forms might support
an inference of confusion, were it not for the further evidence submitted by
Keating: declarations from 13 of the dentists stating that they weren’t
confused and that they intended to order KDZ products, but that they used
“bruxzir” or “BruxZir” generically to refer to an all-zirconia crown. (Ooh, that’s not good for Glidewell, though
the court lets Glidewell slide.)
Glidewell lacked declarations stating that any dentist was actually
confused.
Glidewell argued that the receipts were still evidence of
initial interest confusion, but Keating showed that the consumers who filled
out the receipts were neither confused about the marks nor originally seeking
to purchase Glidewell’s product; they were repeat consumers of Keating
products.
Thus, though the proximity of the goods/marketing channels
favored confusion, that didn’t matter. Taken together, the factors weighed
strongly against a finding of confusion, especially given the dissimilarity of
the marks. “Obviously, the factors [of
proximity/marketing channels] would weigh in favor of a finding of likelihood
of confusion for all similar products that compete for a similar type of
consumer, and yet all competing products do not involve instances of trademark
infringement.” No reasonable jury could
find in favor of Glidewell.
The court, however, declined to find that a cause of action
for trademark misuse existed, even though Keating argued that Glidewell had
been trying to destroy its competition in the market for all-zirconia crowns “by
using its trademark, its deep pockets and its legal resources to pressure
smaller competitors either to abandon using descriptive terms related to
‘bruxers’ and ‘bruxism’ or to buy Glidewell materials and become a licensee.”
Antitrust-related remedies would be available.
Glidewell’s UCL claim also failed. It argued that it had suffered economic
injury because of a sales decline after the lawsuit, furthered by scaled-back
advertising done to limit Glidewell’s potential liability and by lost sales
from dentists who learned about the lawsuit. But all these economic harms
weren’t cognizable because of the litigation privilege and the Noerr-Pennington doctrine. The only exception was for sham lawsuits, and
this wasn’t a sham because Glidewell had a federally registered mark and
Keating’s mark was “arguably” similar.
Keating couldn’t show that “no reasonable litigant” could expect success
on the merits. (This is where the
generic/phonetic qualities of the mark could’ve played a bigger role.)
The court characterized Keating’s cancellation counterclaim
“a lively display of pique.” But Keating
couldn’t overcome the presumption of validity because the court found that the
mark was, and always has been, suggestive and inherently distinctive. (So what of those affidavits from dentists
that they considered the term generic?)
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