![if gte IE 9]><![endif]><![if gte IE 9]><![endif]><![if gte IE 9]><![endif]>
Thank You For Submiting Feedback!
The court has developed an eight-factor test intended to guide the court in assessing the basic question of likelihood of confusion. The Sleekcraft factors, are:(1) the strength of the trademark;(2) the similarity of the marks;(3) the proximity or relatedness of the goods or services;(4) defendant's intent in selecting the marks;(5) evidence of actual confusion;(6) the marketing channels used;(7) the likelihood of expansion of product lines; and (8) the degree of care consumers is likely to exercise. The ultimate question of likelihood of confusion is predominantly factual in nature, as is each factor within the Sleekcraft likelihood of confusion test. Although the Sleekcraft test plays an important role in the analysis of whether a likelihood of confusion exists, it is the totality of facts in a given case that is dispositive. On the other, actions pursuant to Cal. Bus. & Prof. Code § 17200 are substantially congruent to claims made under the Lanham Act.
Since 1978, appellee Entrepreneur Media Inc., (EMI) had published a magazine called Entrepreneur. It was a monthly publication geared towards small businesses and their owners. Appellee has a website which its visitors can view on-line versions of the magazine, subscribe to the publication, interact with other visitors, and learn about business opportunities. Appellee also used the website for marketing and advertising, it also advertised on radio, television, and in print. In 1987, appellee registered the term "ENTREPRENEUR "as a trademark on the federal Principal Register in International Class 16 for paper goods and printed matter; namely magazines, books and published reports pertaining to business opportunities and in International Class 9 for computer programs and programs/user manuals all sold as a unit. In 1995, appellee registered the term "ENTREPRENEUR" as a service mark for trade show exhibitions, seminars, and workshops. Appellee has also registered various other marks, including: "ENTREPRENEUR EXPO," "ENTREPRENEUR INTERNATIONAL," "ENTREPRENEURIAL WOMAN," and "EntrepreneurMag.com.” In 1995, appellant Scott Smith started a public relations company for small businesses called ICON Publications. It produced a publication entitled Yearbook of Small Business Icons that contained copyright-free articles about its clients, and distributed the Yearbook free of charge to various media contacts, with the goal of increasing the clients' media coverage. Thus, it also operated a website. When appellant decided to publish the Yearbook on a quarterly rather than yearly basis, he decided that name changes were in order. In 1997, appellant settled on "EntrepreneurPR" as the new name for his company, Entrepreneur Illustrated as the new name for the Yearbook, and entrepreneurpr.com as his new website address. In 1998, appellee filed this case alleging trademark infringement, unfair competition, and counterfeiting under the Lanham Act, 15 U.S.C. § 1125, and unfair competition under the California Business and Professions Code § 17200. Both parties moved for summary judgment. The district court granted appellee’s motion on the trademark infringement and unfair competition claims, but denied its motion on the counterfeiting claim. Appellant’s motion was denied in its entirety. Thereupon, appellee dismissed its claim for counterfeiting. After supplemental briefing, the court awarded appellee damages and enjoined appellant from using any marks confusingly similar to "Entrepreneur," including the names of its businesses. Appellant filed a timely notice of appeal.
Did the district court err in granted summary judgment to plaintiff on trademark infringement and unfair competition claims?
The court affirmed the decision in part, and reversed in part and remanded for trial. In addressing the trademark infringement claim, the court applied the Sleekcraft analysis and affirmed on the question of whether appellant infringed the trademark by his use of a mark on the cover of a publication. The court reasoned that because of the strong visual similarity of the marks and because of evidence that demonstrated appellant’s intent to deceive. As to all other allegations of trademark infringement, the court held that appellee had not demonstrated infringement of its trademark as a matter of law. Hence, the court reversed summary judgment on the unfair competition claim because actions pursuant to Cal. Bus. & Prof. Code § 17200 were substantially congruent to claims made under the Lanham Act. Thus, the injunction was reversed to the extent it enjoined uses as to which the district court was reversed. Damages were reversed and could, if appropriate, be considered after a trial.