Thank You For Submiting Feedback!
The Frisch's test for trademark infringement evaluates eight factors that imply no mathematical precision, but are simply a guide to help determine whether confusion is likely and not all of the factors may be particularly helpful in any given case. The factors are: (1) the strength of the plaintiff's mark; (2) the relatedness of the goods; (3) the similarity of the goods; (4) evidence of actual confusion; (5) the marketing channels used; (6) the likely degree of purchaser care; (7) the defendant's intent in selecting the mark; (8) the likelihood of expansion of the product lines.
Karen Billups formed K’Arsan Corporation, which marketed K’Arsan SUN Powder, as its flagship product. K'Arsan sought to obtain federal registration for the mark "K'Arsan SUN POWDER," and eventually received the same on October 21, 1986. In 1989, the French company Parfums Christian Dior S.A. (“Christian Dior”) began planning the introduction of a sunless tanning agent to the American market. Christian Dior planned to introduce its product as “Terra Bella Poudre de Soleil Sun Powder.” Christian Dior obtained registration for “Terra Bella” on January 8, 1991. Since Christian Dior launched its product in the market, American consumers seeking sunless tanning agents have encountered both K’Arsan and Christian Dior’s uses of “sun powder.” The two products shared some ingredients, and had comparable prices per ounce. Moreover, the words “SUN POWDER” both appeared in the respective packaging of each product - Christian Dior's Terra Bella powder appeared in the distinctive trade dress used on over thirty of Christian Dior's cosmetic products: a royal blue box banded with a navy blue stripe and a yellow oval containing text. The words "TERRA BELLA POUDRE DE SOLEIL SUN POWDER" appeared in the oval, as did the phrase "Christian Dior PARIS," while the K'Arsan box has a white background and a prominent display of the words "K'Arsan SUN POWDER. Confronted with another company's use of the words "sun powder," K'Arsan sued, alleging that it had rights in both "K'Arsan SUN POWDER" and in "SUN POWDER." K’Arsan sought relief under five theories: trademark infringement in violation of section 32 of the Lanham Act, 15 U.S.C. § 1114; federal unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); trademark dilution in violation of the Federal Trademark Dilution Act of 1995, 15 U.S.C. § 1125(c); unfair competition under Michigan law; and a claim for the infringement of the Michigan common-law trademark "SUN POWDER." Christian Dior filed a motion for summary judgment, which the district court granted. According to the district court, no genuine factual disputes existed concerning factors material to whether Christian Dior's packaging risked consumer confusion. To evaluate the federal claims, the judge applied the eight-factor balancing test from Frisch's Restaurants, Inc. v. Elby's Big Boy, Inc., 670 F.2d 642, 648 (6th Cir.), cert. denied, 459 U.S. 916, 74 L. Ed. 2d 182, 103 S. Ct. 231 (1982). The district court concluded that even if the issue was resolved in favor of the plaintiff, the balance of the eight factors to be considered weighed against a finding of a likelihood of confusion. K’Arsan appealed.
Did the district court err in granting summary judgment in favor of Christian Dior?
On appeal, the court affirmed the district court’s decision. Given the paucity of evidence offered by K’Arsan regarding marketing channels, the district court properly evaluated the factor as affording little strength to the claim. Given the undisputed portions of the facts of the case, the district court properly entered summary judgment for Christian Dior on the federal trademark infringement and unfair competition claims. While the "likelihood of confusion" test did not govern federal dilution claims, K’Arsan failed to advance that argument. Further, even had the district court conducted a separate dilution inquiry, K’Arsan offered no evidence to support the conclusion that its mark was "famous." The state claims had less merit than the federal claims.