5th Circuit discounts confusion caused by overlap in commonly used arbitrary word

Rampart Resources, Inc. v. Rampart/Wurth Holding, Inc., No. 24-30111, 2025 WL 586820 (5^th Cir. Feb. 24, 2025)

District court’s denial of preliminary injunction discussed here. Rampart Resources provides real estate and property management services in Louisiana, Texas, Arkansas, Mississippi, Alabama, West Virginia, and Ohio. Its services relate to right-of-way acquisition, servitudes, real estate brokerage, permitting, and property management—across several industries, including utilities, oil and gas, renewable energy, and public works. It has a 2018 registration for those services for “the stylized wording ‘RAMPART RESOURCES’ to the right of a graphic image of a road going into the horizon, with a road curving off to the right and left of the main road.” “To be clear, Rampart Resources does not have a trademark for the word ‘Rampart’ or ‘Rampart Resources.’”

Rampart/Wurth offers commercial and residential property management services throughout Louisiana, Texas, Mississippi, and Alabama. Its services cover multifamily, single-family, office, retail, and receiver/keeper properties; it uses different logos to refer to Rampart Multifamily Management and Rampart Commercial Management.

Rampart Resources found out about Rampart/Wurth’s recent adoption of that name change in September 2023 when a FedEx driver told its president that “another Rampart” had just opened in Baton Rouge and that she had confused the two businesses.

Rampart Resources received at least seven telephone calls in September and October 2023 from individuals inquiring about rent collection, leasing units, Section 8 housing vouchers, lease payments, and refunding deposits. After being told they must have the wrong number, customers responded, “this is the home office of Rampart, correct?” and “this is the number I got for Rampart.”

On appeal, the standard was abuse of discretion. “As to each element of the district court’s preliminary-injunction analysis ... the district court’s findings of fact are subject to a clearly-erroneous standard of review, while conclusions of law are subject to broad review and will be reversed if incorrect.” Here, the appeal failed on likely success on the merits.

The district court found that the type of mark/mark strength, similarity of products/services, and evidence of actual confusion weighed in favor of likely confusion; similarity of marks, consumer overlap, and degree of care of potential purchasers weighed against; and advertising media/defendant’s intent were neutral.

Rampart Resources argued that mark strength should weigh heavily in its favor, not just slightly as the district court held. Although the mark was arbitrary, and although Rampart Resources had used it for 34 years, Rampart/Wurth provided evidence of widespread use of the key portion (Rampart). This was not clear error.

Mark similarity: “It is visually apparent that all aspects of the marks (font, color, design, etc.) are different except the use of the singular word ‘Rampart.’ The common use of the word ‘Rampart’ does not make the marks similar when considering ‘the total effect of designation.’”

Similarity of services: the district court found only a minor overlap and didn’t weigh it heavily in Rampart Resources’ favor. “The district court correctly concluded that while both parties operate broadly in the real estate industry, there is not substantial overlap between the services offered.”

But, when there isn’t direct competition, “the confusion at issue is one of sponsorship, affiliation, or connection.” The critical question, the court of appeals said, is “whether the consuming public would believe that the natural tendency of [Rampart Resources]” would be “to expand into the [property management industry].” “Here, the district court found that it would be reasonable for a customer of Rampart Resources to believe it was making a foray into property management, since they have offered property management services in the past and represent that they are still capable of doing so.” Weighing this factor in favor of a likelihood of confusion, but only somewhat, not heavily, was plausible based on the record.

Advertising media: “Both parties stated that word of mouth advertising is perhaps their strongest form of advertising…. Although both parties represented they use face-to-face communications and website advertising, the district court is correct that the evidence presented for this digit is scant.” Finding the factor neutral was not an abuse of discretion.

Actual confusion: While swayed purchases are not necessary, “more is required when the confusion did not or cannot sway purchases.”  “[N]ot all confusion counts: evidence of actual confusion must show ‘more than a fleeting mix-up of names’; rather it must show that ‘[t]he confusion was caused by the trademarks employed and it swayed consumer purchases.’ ” Here, seven misdirected phone calls and the FedEx driver’s confusion was not weighty when evaluated in light of “the high volume of business conducted by the parties and the fact that there was no evidence that any of Rampart Resources’ customers had erroneously contacted Rampart/Wurth.” The court of appeals agreed.

Interestingly, the court found it “[m]ost important[]” that

there is no evidence that any of the eight incidents of actual confusion were related to Rampart/Wurth’s logo or conduct. None of Rampart Resources’ anecdotal evidence shows that parties were confused by the trademarks at issue in this case. Rampart Resources does not have a trademark on the word “Rampart.” Our court has rejected strictly anecdotal evidence where “the proponent did not show that ‘a misleading representation by [the defendant], as opposed to some other source, caused a likelihood of confusion.’ ”

[This is a covert way of saying that, if the confusion was caused by the overlap in “Rampart,” too bad for plaintiff—a purely empirical vision of trademark would say that if the confusion was caused by the overlap, then plaintiff’s rights would extend past its registration to other uses. But there is never a purely empirical account of trademark, much as courts often pretend otherwise. Also: How insulted do you think the Fifth Circuit would be to hear that this is a very European way of looking at it?]

Still, it wasn’t abuse of discretion to weigh actual confusion slightly in the plaintiff’s favor, even though the only evidence showed a “fleeting mix-up of names,” and not that any party was “actual[ly] confus[ed] about the origin of the parties’ products.”

There was no clear error in weighing the factors.  The district court found that the dissimilarity of the marks, as well as the sophistication of the clients weighed most heavily against a finding of likelihood of confusion. Given that each digit “may weigh differently from case to case,” that wasn’t clear error.