January, 18th, 2019 at 10:21 am
By Wesley W. Whitmyer, Jr. Read Part 1 I have been asked this question hundreds of times. You can probably guess that the person doing the asking has just been accused of patent infringement. [Read More…]
October, 17th, 2017
The Cardinals may be out of the running for the Fall Classic, but St. Louis—specifically U.S. District Court for the Eastern District of Missouri—is still deeply involved in autumn baseball.
Rawlings Sporting Goods Company, Inc (“Rawlings”) sued Easton Diamond Sports, LLC (“Easton”) alleging infringement of Rawlings’ 5150 trademark (US Registration No. 3,758,544) seeking a temporary restraining order, preliminary and permanent injunction, and damages.
Rawlings has been a baseball equipment manufacturer since 1887. Rawlings’ wood bats are used by about 2.5% of MLB players (according to whatproswear.com). In 2009, Rawlings introduced a series of aluminum bats (not permitted in MLB) under the “5150” brand which according to its website utilize “Rawlings most radically responsive aerospacegrade [sic] alloy built for performance and durability”. The Rawlings’ 5150 bats retail for up to $200.
Easton, in a quite different corporate trajectory, introduced “the first true aluminum bat” in 1972. No MLB players use Easton bats, but Easton amounts to 33% of all bat sales as of January 2015 (according to justbatreviews.com), besting Rawlings in market share by a factor of 3. Easton announced a plan to introduce its new line of aluminum bats bearing the brand “S150” for 2018. The Easton bat retails for $35.
Here is a picture from the Complaint, comparing the two companies’ bats:
Rawlings filed its trademark infringement complaint fearing that Easton’s announcement of a $35 bat with a virtually identical brand to its $200 bat was a significant competitive threat. Darren Heitner, a Forbes contributor analyzed the situation as follows: “…the Easton product as compared to the Rawlings product appears to be quite similar. The “S” in Easton’s bat strongly resembles that of the first “5” in Rawlings’ product. As such, this could be one of those trademark cases that is tough to defend.”
What makes sport and litigation interesting, though, is that it’s often difficult to predict the result. That’s why we play and also why we watch.
In his Memorandum and Order, US District Judge Ronnie L. White denied injunctive relief, holding among other things that “…there is little likelihood of confusion” and that “…visual comparison between the S150 and 5150 demonstrates the difference between the two designations”.
The Court’s decision seems to have turned on two main issues, both of which hold lessons for trademark litigants. First, as explained by Judge White, “…the predominance of the house brand on each of the baseball bats readily distinguishes the bats…”. In other words, use of a prominent house brand by Rawlings impaired its ability to enforce what most people would agree is a nearly identical copy of its secondary brand “5150”. For context, below are pictures depicting the house brands on the reverse side of the bats at issue:
These pictures were not in the complaint, but it seems from the Court’s Order that Judge White had an opportunity to inspect the actual bats. It’s unclear precisely what confusion argument Rawlings made, but based on the bat graphics the better argument is that consumers would be confused into thinking Easton’s S150 bats are made of the 5150 alloy. The harder argument based on prominence of the house brand is that consumers would be confused into thinking Easton’s S150 bats are made by Rawlings.
The second issue impacting the outcome of the case is differences among the federal circuit courts in the multifactor likelihood of confusion tests. The 8th circuit relies on the so-called SquirtCo factors enumerated in SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980). Among these factors is the alleged infringer’s intent to confuse the public. In this case, Judge White found no evidence of intent on behalf of Easton. Indeed, the Court found that Easton “has utilized the “S” series for years, and recently added the “50” this year to all of its lines of bats”.
Had this case been brought however in a circuit court in which defendant’s intent is not a factor in the likelihood of confusion analysis, eg the 2nd or Federal Circuits, the outcome may well have been different. The alleged infringer’s state of mind is not addressed at all in the Federal Circuit’s so-called DuPont test. See, E.I. Dupont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973). The 2nd Circuit Polaroid test does not eliminate the alleged infringers’ state of mind but essentially shifts the burden, allowing consideration of good faith adoption of the alleged infringing mark. See, Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2nd Cir.), cert denied, 368 U.S. 820 (1961).
Before initiating a trademark infringement claim, carefully analyze the venue’s likelihood of confusion test and use of any house marks on your client’s own products when formulating your likelihood of confusion argument.
WHIPgroup is leading counsel for U.S. and international technology companies. We specialize in patent and trademark law.
© 2017 Whitmyer IP Group, Stamford, Connecticut.