Kemp v. Bumble Bee Seafoods, Inc. - 398 F.3d 1049 (8th Cir. 2005)

Rule:

The six-factor test used in assessing the likelihood of confusion in trademark infringement actions includes: (1) the strength of the owner's mark; (2) the similarity of the owner's mark and the alleged infringer's mark; (3) the degree to which the products compete with each other; (4) the alleged infringer's intent to pass off its goods as those of the trademark owner; (5) incidents of actual confusion; and (6) the type of product, its costs and conditions of purchase.

Facts:

Under the amended stock acquisition agreement, the owner granted the purchaser the right to use and register the marks LOUIS KEMP and LOUIS KEMP SEAFOOD CO for surimi-based products and other seafood accessory products within the natural zone of expansion. The amended agreement included a revised reservation of rights for the owner that provided that he could use a composite trademark consisting of the word KEMP or KEMP's and preceded or followed by one or more additional words that were approved by the purchaser. Through a series of transactions, the company came to own the trademarks. The company sent the corporations and the owner a cease-and-desist letter when the corporations began using the LOUIS KEMP marks on a line of precooked wild rice products without permission. Following a bench trial on the trademark issues of likelihood of confusion and dilution, the district court issued adverse rulings against the company. The decision was challenged. 

Issue:

Under the circumstances, was there a likelihood of confusion or actual dilution in the corporations’ use of the LOUIS KEMP marks on a line of precooked wild rice products without permission? 

Answer:

Yes.

Conclusion:

The judgment of the district court was reversed and the case was remanded for determination of an appropriate remedy. The appellate court found that the record contained undisputed testimony that there were instances of actual confusion, even if those instances were not "rampant." Moreover, evidence shown by the corporations' own salesman that even sophisticated professional buyers experienced actual confusion, supported a finding that confusion was likely, and thus, a finding of infringement due to a likelihood of confusion.