InvisaSock, LLC v. Everythng Legwear, LLC

INVISASOX, LLC, Plaintiff, v. EVERYTHNG LEGWEAR, LLC and FRANNIE GIRL PRODUCTS, INC., Defendants.

Case No: 8:18-cv-2639-T-17GW

UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF FLORIDA TAMPA DIVISION

June 12, 2020

ORDER DENYING DEFENDANTS' MOTION FOR PARTIAL SUMMARY JUDGMENT

This matter is before the Court on the motion of Defendants Everything Legwear, LLC and Frannie Girl Products, Inc. (collectively, "Everything Legwear") for partial summary judgment. (Doc. 38). Plaintiff Invisasox, LLC responded in opposition to the motion. (Doc. 43). Everything Legwear filed a reply memorandum. (Docs. 57; 61). With the Court's permission, both sides filed certain materials under seal. (Docs. 54; 58-62). Upon review of the motion, response, reply, court file, and record, the Court finds as follows:

Background

This case presents a trademark dispute between sellers of "no-show" hosiery. In 2011, Defendant Frannie Girl obtained federal trademark registration for the mark "InvisaSock" for products identified as "[h]osiery; specifically, a stocking that cannot be observed in public when worn with women's dress shoes, in class 25 (U.S. CLS. 22 and 39)." (Docs. 38 at 2; 38 at 2). The registered mark consists only of the indicated letters with no particular font, style, size, or color. (Id.).¹ Frannie Girl licensed the InvisaSock mark to Everything Legwear, LLC. (Doc. 38-3 at ¶ 2). Invisasox attempted to register INVISASOX as a mark for its products, but the Patent and Trademark Office rejected its application on grounds of likelihood of confusion with Everything Legwear's mark. (Docs. 38-6; 39 at ¶¶ 4-6).

Invisasox nevertheless used INVISASOX to identify its line of no-show socks beginning in November 2016. (Doc. 39 at ¶ 4). After Everything Legwear demanded that Invisasox cease using the INVISASOX mark, Invisasox filed this action seeking a declaratory judgment that its mark does not infringe Everything Legwear's mark. (Id.; Doc. 38-4). Everything Legwear counterclaimed, asserting counts claims for (1) Trademark Infringement under 15 U.S.C. § 1114(1), (2) Unfair Competition: False Designations of Origin under 15 U.S.C. § 1125(a)(1)(A), and (3) Unfair Competition: Trademark Dilution under 15 U.S.C. § 1125(c). (Doc. 14 at 13-20). Everything Legwear has moved for partial summary judgment on the first and second counts of its counterclaim, seeking entry of a permanent injunction.

Legal Standard

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 amatter of law." Fed. R. Civ. P. 56(a). A properly supported motion for summary judgment is not defeated by the existence of a factual dispute. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986). Only the existence of a genuine issue of material fact will preclude summary judgment. Id.

The moving party bears the initial burden of showing that there are no genuine issues of material fact. Hickson Corp. v. N. Crossarm Co., 357 F.3d 1256, 1260 (11th Cir. 2004). When the moving party has discharged its burden, the nonmoving party must then designate specific facts showing the existence of genuine issues of material fact. Jeffery v. Sarasota White Sox, Inc., 64 F.3d 590, 593-94 (11th Cir. 1995). If there is a conflict between the parties' allegations and evidence, the nonmoving party's evidence is presumed to be true and all reasonable inferences must be drawn in the nonmoving party's favor. Shotz v. City of Plantation, Florida, 344 F.3d 1161, 1164 (11th Cir. 2003).

Where, as here, the moving party is a counterclaimant who will bear the burden of proof on an issue at trial, demonstrating the absence of a genuine issue of material fact requires the submission of credible evidence that, if not controverted at trial, would entitle the moving party to a directed verdict. Fitzpatrick v. City of Atlanta, 2 F.3d 1112, 1115 (11th Cir. 1993). Only if the moving party meets that burden is the non-moving party required to produce evidence in opposition. Chanel, Inc. v. Italian Activewear of Fla. Inc., 931 F.2d 1472, 1477 (11th Cir. 1991). Summary judgment should be denied unless, on the record evidence presented, areasonable jury could not return a verdict for the non-moving party. Id.; see also Fitzpatrick, 2 F.3d at 1115-16.

Analysis

Everything Legwear, as the party seeking to establish trademark infringement under 15 U.S.C. § 1114(1), must prove (1) a valid registered trademark in use prior to the alleged infringing use, and (2) a likelihood of confusion on the part of customers as to the source, affiliation or sponsorship of the parties' products. See Frehling Enters., Inc. v. Int'l Select Group, Inc., 192 F.3d 1330, 1335 (11th Cir. 1999); White v. Toscano, Inc., No. 8:04-CV-2438-T-26MSS, 2005 WL 8160219, at *2 (M.D. Fla. Oct. 11, 2005). To establish its claim for unfair competition under 15 U.S.C. § 1125(a)(1)(A), Everything Legwear must similarly prove that Invisasox adopted a mark that created a likelihood of confusion as to the source of the goods. See Tana v. Dantanna's, 611 F.3d 767, 773 (11th Cir. 2010). Thus, the analysis under both statutes is the same. See id. at 773 n.5.

Invisasox's Abandonment Defense

It is undisputed that Everything Legwear registered and used the InvisaSock mark in commerce prior to Invisasox's first use of INVISASOX and that Invisasox continues to use its mark. Before turning to the issue of likelihood of confusion, the Court must address Invisasox's argument that Everything Legwear has abandoned its mark, rendering it invalid and incapable of enforcement. (Doc. 43 at 4-6). A mark is deemed abandoned if the owner (1) has stopped using the mark in commerce and (2) does not intend to resume its use. Cumulus Media, Inc. v. ClearChannel Comm., Inc., 304 F.3d 1167, 1173-74 (11th Cir. 2002). Three years of consecutive non-use raises a rebuttable presumption of intent to abandon the mark. Id. at 1174 (citing 15 U.S.C. § 1127). Abandonment is an affirmative defense on which Invisasox bears the "strict" burden of proof. Id.

Everything Legwear has presented evidence that it has used the InvisaSock mark in commerce "without any break in time since April 1, 2001." (Doc. 38-3 at ¶ 3). Invisasock, on the other hand, has presented no contrary evidence. See (Doc. 43 at 5-6). Invisasox argues only that Everything Legwear's sales and its advertising expenses related to its InvisaSock mark since 2014 have been de minimis. (Id.). But Invisasox fails to cite evidence or authority showing that Everything Legwear's continuous use of the mark has not been a "bona fide use . . . made in the ordinary course of trade," or that its use was "merely to reserve a right in a mark." Cumulus Media, 304 F.3d at 1174. Accordingly, on the current record, Inivsasox's abandonment defense would not prevent entry of summary judgment for Everything Legwear if it were otherwise entitled to it.

Likelihood of Confusion

Overview

The Eleventh Circuit uses a seven-factor framework for analyzing whether the required likelihood of confusion exists. The factors are: (1) the type and strength of the allegedly infringed mark, (2) the similarity of the two marks, (3) the similarity of the goods at issue, (4) the similarity of the parties' retail outlets or "channels of trade" and their customers, (5) the similarity of advertising media usedby the parties, (6) the alleged infringer's intent, and (7) the existence of actual confusion on the part of the consuming public. See, e.g., Florida Int'l Univ. Bd. of Trustees v. Florida Nat'l Univ., Inc., 830 F.3d 1242, 1256-57 (11th Cir. 2016).

Evaluating these factors is not an arithmetical process in which each of them is decided for one side or the other, and the party with the most factors wins. See Custom Mfg. & Eng'g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 649-50 (11th Cir. 2007). Rather, the court must decide the weight to accord each factor, consider the unique facts of each case, and decide where the "overall balance" lies. Id. In other words, the factors are merely a guide to help inform the court's decision on the ultimate issue: whether it is likely (that is, probable, not merely possible) that an "appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question." Id. at 650-51 (quoting New Sensor Corp. v. CE Distribution LLC, 303 F. Supp. 2d 304, 310-11 (E.D.N.Y.2004)). In deciding that bottom line issue, evidence of actual confusion is the most important factor, and the strength of the mark is the second most important. Caliber Auto. Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 936, 938 (11th Cir. 2010).

The issue of likelihood of confusion presents a question of fact. E.g., Times Newspapers, Ltd. v. Times Pub. Co., No. 92-1435-CIV-T-15(A), 1993 WL 120614, at *6 n.6 (M.D. Fla. Feb. 16, 1993); see also Custom Mfg., 508 F.3d at 649 (noting that likelihood of confusion is a "fact-intensive inquiry"). Everything Legwear arguesthat it is entitled to summary judgment on the ground that every one of the relevant factors weighs "heavily and decidedly" in its favor. (Doc. 38 at 12).

Type and Strength of Mark

This factor assesses the mark's inherent or conceptual strength and its actual strength in the marketplace. Florida Int'l Univ, 830 F.3d at 1258-59. Inherent strength refers to the "relationship between the name and the service or good it describes," and is evaluated along a spectrum running from generic (the weakest) to arbitrary or fanciful (the strongest). Frehling Enters., 192 F.3d at 1335. As the court explained in White, 2005 WL 8160219, at *3:

The four categories of marks are: (1) generic, a term that refers to the nature of a product (e.g. APPLE for apples); (2) descriptive, a term that describes a characteristic or quality about the product (e.g. APPLE for apple-flavored drinks); (3) suggestive, a term that suggests some characteristic about a product, but

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