Eight Means Eight

When it comes to applying an eight-factor test, that is, as noted by the Ninth Circuit in Jada Toys v. Mattel, case no. 05-55627 (Filed Aug. 2, 2007, amended Feb. 21, 2008).

Its a trademark case. In granting summary judgment to Jada on Mattel’s trademark infringement claim, the district court found as a matter of law that there was no likelihood of confusion between the marks (HOT RIGZ and HOT WHEELS), citing the dissimilarity of the marks as the only basis for the finding.

The Ninth reverses because the district court failed to evaluate the facts under the venerable 8-factor Sleekcraft test for likelihood of confusion. Using the dissimilarity of the marks as the sole basis for finding as a matter of law that there is no likelihood of confusion impermissibly bypasses this test, the Ninth says, notwithstanding that it has repeatedly commented on the flexibility of the test and warned against applying it with “excessive rigidity.” The district court’s approach impermissibly elevates one factor above all others and increases the chance that a court’s subjective impressions of dissimilarity will rule despite possibly strong countervailing factors.

(FYI, the Sleekcraft factors are: “(1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product lines.”)

The Evidence Prof Blog Arrives


The Evidence Prof Blog is a new blog in the Law Professor Blogs Network. I only discovered them last Friday, though the blog has been up since October 2.

They recently posted regarding Rhoades v. Avon Products, Inc., case no. 05-56047 (9th Cir. Oct. 15, 2007), which applied Federal Rule of Evidence 408 in a trademark declaratory relief action. Issue: Whether a letter from counsel proposing settlement of a trademark dispute (and containing threats of litigation absent settlement) can be admitted to establish that a plaintiff seeking a declaratory judgment of non-infringement of the sender’s trademark has the requisite “real and reasonable apprehension that it would be subject to liability” if it continued to manufacture its product. Check ’em out.

By the way, I discovered Evidence Prof Blog by following one of the links in the feed in the right sidebar of this blog titled “Blogosphere Coverage of he Ninth Circuit.”  It pays to check some of those posts out once in a while.