King of the Mountain Sport v. Chrysler Corp.

• Decision Date: 08 July 1999
• Docket Number: No. 97-1290,97-1290
• Citation: 185 F.3d 1084,51 USPQ2d 1349
• Parties: (10th Cir. 1999) KING OF THE MOUNTAIN SPORTS, INC., a Wyoming corporation, Plaintiff - Appellant, v. CHRYSLER CORPORATION, a Michigan corporation; ECLIPSE TELEVISION AND SPORTS MARKETING, LLC, a Colorado limited liability company; ECLIPSE TELEVISION AND SPORTS MARKETING, INC., a California corporation; HENRY SCHNEIDMAN, an individual, and MARK SCHELDE, an individual, Defendants - Appellees, and BOGNER OF AMERICA, INC., a Delaware corporation, Defendant
• Court: U.S. Court of Appeals — Tenth Circuit

Page 1084

185 F.3d 1084 (10th Cir. 1999)

KING OF THE MOUNTAIN SPORTS, INC., a Wyoming corporation, Plaintiff - Appellant, v. CHRYSLER CORPORATION, a Michigan corporation; ECLIPSE TELEVISION AND SPORTS MARKETING, LLC, a Colorado limited liability company; ECLIPSE TELEVISION AND SPORTS MARKETING, INC., a California corporation; HENRY SCHNEIDMAN, an individual, and MARK SCHELDE, an individual, Defendants - Appellees, and BOGNER OF AMERICA, INC., a Delaware corporation, Defendant.

No. 97-1290

UNITED STATES COURT OF APPEALS TENTH CIRCUIT

JULY 8, 1999

APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO (D. Ct. No. 96-B-250)

[Copyrighted Material Omitted]

[Copyrighted Material Omitted] Scott S. Havlick (Donald A. Degnan and Rita S. Heimes, with him on the briefs), Holland & Hart, LLP, Boulder, Colorado, appearing for Plaintiff-Appellant.

Richard P. Holme (Glenn K. Beaton and Bruce L. Plotkin, with him on the brief), Davis, Graham & Stubbs, LLP, Denver, Colorado, appearing for Defendants-Appellees.

Before TACHA, HENRY, and LUCERO, Circuit Judges.

TACHA, Circuit Judge.

Plaintiff King of the Mountain Sports, Inc. ("KOM") filed suit against defendants alleging that they infringed its trademark and violated the Federal Anti-Dilution Act and Colorado Consumer Protection Act. The district court granted defendants' motion for summary judgment on all claims. KOM appealed only the disposition of its trademark infringement claims. We exercise jurisdiction pursuant to 28 U.S.C. 1291 and affirm.

I. Background

Plaintiff sells camouflage-patterned, natural fiber, outdoor clothing and related mountaineering accessories. It obtained a federal registration for its first stylized trademark on June 4, 1991, and for a second stylized mark on September 28, 1993. "[Plaintiff's] first mark consisted of the words 'King of the Mountain Sports Inc.' in Gothic lettering superimposed on the outline of a mountain and enclosed by a thin, rectangular border." King of the Mountain Sports, Inc. v. Chrysler Corp., 968 F. Supp. 568, 570 (D. Colo. 1997).

King of the mountain Sports inc.

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Plaintiff's first mark.

The second mark consists of the words "King of the Mountain" in Gothic lettering with an outline of a mountain in the background. As used, plaintiff's marks employ dark lettering against drab background colors such as the blacks, browns, and greens found in camouflage. The Gothic lettering is horizontally oriented in one line and only the "K" of King and "M" of Mountain are capitalized.

King of the Mountain

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Plaintiff's second mark.

Plaintiff primarily markets its products to hunters, fishers, campers, and hikers but notes that its customers use its products for all cold weather outdoor activities. It also contends that the downhill skiing and snowboarding apparel markets are a logical expansion area for its product line.

In 1995, defendant Eclipse Television and Sports Marketing LLC ("Eclipse") purchased from defendant Eclipse Television and Sports Marketing, Inc. ("Eclipse California") the right to contract with defendant Chrysler to use the "Jeep KING OF THE MOUNTAIN DOWNHILL SERIES" logo. "Defendants' primary logo consists of the word 'Jeep' in largest, purple type above the words 'KING OF THE MOUNTAIN' in smaller, blue type, and the words 'DOWNHILL SERIES' in even smaller, red type at the bottom of the logo." King of the Mountain Sports, 968 F. Supp. at 570. Other than the word "Jeep," all words consist entirely of capital letters and "are superimposed over a blue outline of a mountain with a picture of a red ski racer in a tucked position and a series of red and orange straight lines stretched out behind him to suggest the speed with which he is racing." Id.

Jeep KING OF THE MOUNTAIN DOWNHILL SERIES

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Defendants' primary logo.

Defendants' logo, however, does not always conform to this description. For example, on banners and scoreboards, defendants have employed a bright blue background with the word "Jeep" on either side of "KING OF THE MOUNTAIN" in stark white, bold, capital letters. Also, television listings have simply referred to the event as "Skiing: King of the Mountain Downhill Series."

Defendants use the logo to identify and promote a series of televised downhill ski races. To this end, they have placed the logo, for example, on billboards, banners, clothing apparel, and in magazines. Defendants have given away several items of clothing featuring the logo to participants, television commentators, and spectators at the skiing events. Defendant Bogner manufactures the ski jackets upon which defendants' logo appears.

Plaintiff objects to defendants' use of the phrase "king of the mountain" in the name of its ski event. It argues that defendants' use of the phrase creates a likelihood of sponsorship confusion. Plaintiff fears that its consumers will believe that KOM sponsors, or is otherwise associated with, the downhill skiing event.

Defendants filed a summary judgment motion in district court arguing, as to the trademark infringement claims, that no likelihood of confusions exists. After thoroughly analyzing the appropriate factors, the district court agreed with defendants and entered summary judgment against KOM.

II. Discussion

We review the grant of summary judgment de novo, using the same standard applied by the district court. See, e.g., First Sav. Bank, F.S.B. v. First Bank Sys., Inc., 101 F.3d 645, 650 (10th Cir. 1996); Universal Money Ctrs., Inc. v. American Tel. & Tel. Co., 22 F.3d 1527, 1529 (10th Cir. 1994).¹ Summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c). "'When applying this standard, we examine the factual record and reasonable inferences therefrom in the light most favorable to the party opposing summary judgment.'" Universal Money Ctrs., 22 F.3d at 1529 (quoting Applied Genetics Int'l, Inc. v. First Affiliated Sec., Inc., 912 F.2d 1238, 1241 (10th Cir. 1990)).

Likelihood of confusion forms the gravamen for a trademark infringement action. See 15 U.S.C. 1114(1), 1125(a). Section 43(a) of the Lanham Act declares that any person who

uses in commerce any word, term, name, symbol, or device, . . . which . . . is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

Id. 1125(a). Although "likelihood of confusion is frequently a fairly disputed issue of fact on which reasonable minds may differ, the issue is amenable to summary judgment in appropriate cases." Universal Money Ctrs., 22 F.3d at 1530 n.2 (internal quotation marks and citation omitted); accord First Sav. Bank, 101 F.3d at 650. "[C]ourts retain an important authority to monitor the outer limits of substantial similarity within which a jury is permitted to make the factual determination whether there is a likelihood of confusion." Universal Money Ctrs., 22 F.3d at 1530 n.2 (internal quotation marks and citation omitted); accord First Sav. Bank, 101 F.3d at 650.

Thus, in order to prevail on appeal, plaintiff must show that a genuine issue of material fact exists regarding whether defendants' use of its logo would likely cause confusion about the sponsorship of the downhill ski race. The Tenth Circuit has identified six factors, derived from the Restatement of Torts 729 (1938), that aid in determining whether a likelihood of confusion exists between two marks:

(a) the degree of similarity between the marks;

(b) the intent of the alleged infringer in adopting its mark;

(c) evidence of actual confusion;

(d) the relation in use and the manner of marketing between the goods or services marketed by the competing parties;

(e) the degree of care likely to be exercised by purchasers; and (f) the strength or weakness of the marks.

First Savings Bank, 101 F.3d at 652; see also Universal Money Ctrs., 22 F.3d at 1530; Restatement (Third) of Unfair Competition 20-23 (1995). "This list is not exhaustive. All of the factors are interrelated, and no one factor is dispositive." Universal Money Ctrs., 22 F.3d at 1530. While we consider these factors to determine whether a likelihood of confusion exists regardless of whether the trademark infringement suit involves source or sponsorship confusion, see GTE Corp. v. Williams, 904 F.2d 536, 539-40 (10th Cir. 1990); Amoco Oil Co. v. Rainbow Snow, 748 F.2d 556, 558 (10th Cir. 1984), the weight afforded to some of the factors differs when applied in these separate contexts. In both confusion of source and confusion of sponsorship cases, the similarity of the marks factor constitutes the heart of our analysis. See Heartsprings v. Heartspring, 143 F.3d 550, 554 (10th Cir. 1998) (recognizing that the key inquiry in a source confusion case is "whether the consumer is likely to be deceived or confused by the similarity of the marks.'" (quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 780 (1992))); Wendt v. Host Int'l, Inc., 125 F.3d 806, 812 (9th Cir. 1998) (emphasizing the primacy of the similarity of mark factor in a confusion of endorsement analysis). However, in the rare, pure sponsorship action, other factors -- such as the relation in use and the manner of marketing between the goods or services and the degree of care likely to be exercised by purchasers -- have little importance. Bearing this in mind, if, as in any case, the examination of the various...