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Ironhawk Techs., Inc. v. Dropbox, Inc.

Ironhawk Techs., Inc. v. Dropbox, Inc.

United States Court of Appeals for the Ninth Circuit

February 8, 2021, Argued and Submitted, Pasadena, California; July 6, 2021, Decided

No. 19-56347

Opinion

 [*1158]  AMENDED OPINION

M. SMITH, Circuit Judge:

Ironhawk Technologies, Inc. (Ironhawk) sued Dropbox, Inc. (Dropbox) for trademark infringement and unfair competition. The district court granted summary judgment, concluding that Ironhawk could not prevail because a reasonable trier of fact could not find a likelihood of consumer confusion. Ironhawk appeals based on a theory of reverse confusion. [**4]  Because genuine issues of material fact remain as to a likelihood of reverse confusion, we reverse, vacate the judgment, and remand for trial.

 [*1159]  FACTUAL AND PROCEDURAL BACKGROUND

Ironhawk developed computer software that uses compression and replication to transfer data efficiently in "bandwidth-challenged environments." Since 2004, Ironhawk has marketed this software under the name "SmartSync." Ironhawk obtained a trademark registration for SmartSync in 2007, which makes it the senior mark holder and user in this case.

Dropbox produces cloud storage software that millions of individuals and businesses use worldwide. "Smart Sync" is a feature of Dropbox's software suite that allows a user to see and access files in his or her Dropbox cloud account from a desktop computer without taking up the computer's hard drive space. Smart Sync is a feature of certain paid subscription plans, not a stand-alone Dropbox product. Dropbox launched Smart Sync in 2017, while it was aware of Ironhawk's senior SmartSync mark.

Ironhawk asserts claims against Dropbox for violations of the Lanham Act, 15 U.S.C. § 1051 et seq., and California's Unfair Competition Law, Cal. Bus. & Prof. Code § 17200 et seq. Ironhawk alleges that Dropbox's use of the name Smart Sync intentionally [**5]  infringes upon Ironhawk's SmartSync trademark and is likely to cause confusion among consumers as to the affiliation of Ironhawk's product with Dropbox.

The district court granted summary judgment to Dropbox, concluding that "[t]he overwhelming balance of the Sleekcraft factors weighs against a likelihood of confusion" such that "a reasonable trier of fact could not conclude that Dropbox's use of Smart Sync is likely to cause consumer confusion." The district court entered judgment, and Ironhawk appeals.

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2 F.4th 1150 *; 2021 U.S. App. LEXIS 19977 **

IRONHAWK TECHNOLOGIES, INC., a Delaware corporation, Plaintiff-Appellant, v. DROPBOX, INC., a Delaware corporation, Defendant-Appellee.

Prior History:  [**1] Appeal from the United States District Court for the Central District of California. D.C. No. 2:18-cv-01481-DDP-JEM. Dean D. Pregerson, District Judge, Presiding.

Disposition: REVERSED, VACATED, AND REMANDED.

CORE TERMS

SmartSync, Smart, Sync, user, customers, consumers, marks, marketing, products, likelihood of confusion, district court, senior, commercial customer, trademark, factors, summary judgment, reasonable jury, advertising, purchaser, sophisticated, buyer, trier of fact, house mark, military, argues, consumer confusion, assess, cloud, present evidence, channels

Civil Procedure, Summary Judgment, Burdens of Proof, Movant Persuasion & Proof, Trademark Law, Infringement Actions, Appropriateness, Standards, Burdens of Proof, Business & Corporate Compliance, Causes of Action Involving Trademarks, Determinations, Likelihood of Confusion, Factors for Determining Confusion, Similarity of Marks, Relationship of Goods, Consumer Confusion, Reverse Confusion, Circuit Court Factors, 9th Circuit Court, Subject Matter of Trademarks, Eligibility for Trademark Protection, Strength of Trademark, Intent of Defendant to Confuse, Inferred Intent, Consumer Confusion, Entitlement as Matter of Law, Terms Requiring Secondary Meaning, Descriptive & Laudatory Terms, Determinations of Protectability, Distinctiveness, Evidence of Distinctiveness, Registration Procedures, Federal Registration, Federal Registration as Evidence, Terms With Inherent Distinctiveness, Suggestive Terms, Definition of Descriptive Terms, Similarity of Marks, Commercial Impressions, Appearance, Meaning & Sound, Meaning, Supporting Materials, Affidavits, Judgments, Evidentiary Considerations, Comparison of Advertising