Monday, March 04, 2013

Quasi-pun avoids genericity, doesn't allow plaintiff victory

James R. Glidewell Dental Ceramics, Inc. v. Keating Dental Arts, Inc., 2013 WL 655314 (C.D. Cal.)

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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