Progressive Distribution Servs., Inc. v. United Parcel Serv., Inc.

• Citation: 856 F.3d 416
• Decision Date: 03 May 2017
• Docket Number: No. 16-1830,16-1830
• Parties: PROGRESSIVE DISTRIBUTION SERVICES, INC., Plaintiff-Appellant, v. UNITED PARCEL SERVICE, INC.; United Parcel Service, Inc.; United Parcel Service of America, Inc., United Parcel Service Market Driver, Inc., Defendants-Appellees.
• Court: United States Courts of Appeals. United States Court of Appeals (6th Circuit)

856 F.3d 416

PROGRESSIVE DISTRIBUTION SERVICES, INC., Plaintiff-Appellant,

v.UNITED PARCEL SERVICE, INC.; United Parcel Service, Inc.; United Parcel Service of America, Inc., United Parcel Service Market Driver, Inc., Defendants-Appellees.

No. 16-1830

United States Court of Appeals, Sixth Circuit.

Argued: January 26, 2017

Decided and Filed: May 3, 2017

ARGUED: Jeffrey A. Sadowski, HOWARD & HOWARD ATTORNEYS PLLC, Royal Oak, Michigan, for Appellant. Tywanda Harris Lord, KILPATRICK, TOWNSEND & STOCKTON LLP, Atlanta, Georgia, for Appellees. ON BRIEF: Jeffrey A. Sadowski, Michael F. Wais, HOWARD & HOWARD ATTORNEYS PLLC, Royal Oak, Michigan, for Appellant. Tywanda Harris Lord, Laura C. Miller, Rhojonda D.C. Thomas, KILPATRICK, TOWNSEND & STOCKTON LLP, Atlanta, Georgia, for Appellees.

Before: GUY, CLAY, and GRIFFIN, Circuit Judges.

CLAY, J., delivered the opinion of the court in which GRIFFIN, J., joined, and GUY, J., joined in part. GUY, J. (pp. 436–37), delivered a separate opinion concurring in part and dissenting in part.

OPINION

CLAY, Circuit Judge.

Plaintiff, Progressive Distribution Services, Inc. ("Progressive") brought suit against Defendants, United Parcel Service, Inc., a Delaware corporation, United Parcel Service, Inc., an Ohio corporation, United Parcel Service of America, Inc., a Delaware corporation, and United Parcel Service Market Driver, a Georgia corporation (collectively referred to herein as "UPS"), alleging that UPS violated the Lanham Act, 15 U.S.C. § 1051, et seq ., the Michigan Consumer Protection Act, Mich. Comp. Laws § 455.091, et seq ., and the common law governing service marks, trademarks and unfair competition. The district court granted summary judgment in favor of UPS. For the reasons set forth below, we AFFIRM the district court's judgment.

BACKGROUND

I. Factual background

Founded in 1984, Progressive is a business located in Western Michigan that provides logistical services to companies in order to facilitate online businesses' shipping and handling of products. The company offers several different services under multiple trademarks, including "OrderLink," the trademark at issue in this appeal. OrderLink is a service under which Progressive develops a website on behalf of its clients and assumes the responsibility for ensuring that the clients' products are delivered to customers in an efficient manner. The OrderLink service typically requires a four-to-six week set-up period. Customers commit to a two year contract and the cost of signing up generally ranges from a few thousand dollars to twenty-five thousand dollars.

Progressive registered the OrderLink trademark September 21, 2004, but alleges that it has been using the mark for at least 19 years. The company spent approximately $2.5 million dollars advertising the OrderLink mark over the past twenty years, of which only $159,774.05 was spent between 2007 and 2013. Progressive's advertising for OrderLink included telephone calls, email communications, trade shows, mailers, the internet, word of mouth, and trade magazines.

UPS is one of the world's largest package shipping companies. Its brand is easily recognizable by its brown-and-gold color scheme and is otherwise well-known by most consumers. Certain of UPS's customers include small volume shippers who operate businesses on Amazon and eBay web marketplaces. In 2012, UPS's Customer Technology Marketing ("CTM") submitted a proposal to create a new interface in order to facilitate the shipping of orders from eBay and Amazon. The service afforded UPS's existing Amazon and eBay customers the ability to import their orders directly into UPS's shipping application. This allowed the aforementioned customers to create shipping labels and process requests more easily.

Consistent with its standard process, UPS's Brand Manager, Christine Allen, developed a list of potential names for the new service. Following Allen's initial search of proposed names on the U.S. Patent and Trademark Office ("USPTO") website, she concluded that the term "orderlink" was not available because it was used by Progressive and another unrelated shopping software company. Additional searches revealed that the terms "order" and "link" were commonly used together by other companies in the marketplace. Upon further review of Progressive's website, the CTM team concluded that Progressive's order fulfillment services differed substantially from the free shipping application UPS intended to offer its Amazon and eBay merchant customers. Accordingly, the CTM team settled on the name "UPS OrderLink" in August 2013.

UPS submitted an application to the USPTO to register "UPS OrderLink" as a mark, but this application was rejected on November 25, 2013 based on a likelihood of confusion with Progressive's mark. Nonetheless, UPS launched the UPS OrderLink software on December 28, 2013. It operated as a free service that enabled eBay and Amazon sellers to simplify their shipping and processing of orders. The service was accessible only through UPS's website by clicking on a link that brought customers to the application. UPS advertised the service primarily on its website by using internal banner ads.

On February 17, 2014, Progressive sent UPS a cease-and-desist letter demanding that UPS stop the use of the name "UPS OrderLink." In response, UPS approached Progressive about negotiating a co-existence agreement. While awaiting Progressive's response, UPS explored the possibility of changing the name of "UPS OrderLink." By mid-April, when no response was forthcoming, UPS began the process of changing the name of its service to "Ship Marketplace Orders." The transition was finalized on August 15, 2014 and UPS abandoned the name.

II. Procedural History

Progressive initiated the suit by filing a complaint on April 17, 2014 in the Western District of Michigan. Progressive alleged violations of the Lanham Act, 15 U.S.C. § 1051, et seq. , the Michigan Consumer Protection Act, Mich. Comp. Laws § 445.091, et seq. , and the common law governing service marks, trademarks and unfair competition. On November 23, 2015, UPS moved for summary judgment, claiming as a matter of law that Progressive could not establish likelihood of confusion. The district court agreed, and on May 16, 2016, granted summary judgment in favor of UPS. Progressive then filed a timely notice of appeal in the instant case.¹

DISCUSSION

I. Standard of Review

A district court's grant of summary judgment is reviewed de novo . V & M Star Steel v. Centimark Corp. , 678 F.3d 459, 465 (6th Cir. 2012). Summary judgment is appropriate only when the evidence, taken in the light most favorable to the nonmoving party, establishes that there is no genuine issue as to any material fact and the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a) ; Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The "mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact." Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 247–48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) (emphasis omitted).

II. Analysis

Progressive alleges a claim of trademark infringement and unfair competition under 15 U.S.C. §§ 1114 and 1125 of the Lanham Act. To prevail upon a trademark infringement and unfair competition claim, Progressive must establish that UPS's trademark creates a likelihood of confusion regarding the origin of goods or services offered by the respective parties. See Therma-Scan, Inc. v. Thermoscan, Inc. , 295 F.3d 623, 629 (6th Cir. 2002) ; see also Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr. , 109 F.3d 275, 280 (6th Cir. 1997) ("The touchstone of liability under § 1114 is whether the defendant's use of the disputed mark is likely to cause confusion among consumers regarding the origin of the goods offered by the parties."); Holiday Inns, Inc. v. 800 Reservation, Inc. , 86 F.3d 619, 622–23 (6th Cir. 1996) (explaining that a party seeking to avoid summary judgment in a case alleging trademark infringement and unfair competition, in violation of 15 U.S.C. §§ 1114 and 1125(a), "must establish that genuine factual disputes exist concerning those factors that are material to whether confusion is likely in the marketplace as a result of the alleged infringement").

This Court has set forth an eight-factor test in order evaluate whether there is a likelihood of confusion: (1) strength of the plaintiff's mark; (2) relatedness of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) likely degree of purchaser care; (7) defendant's intent in selecting the marks; and (8) likelihood of expansion of the product lines. Frisch's Restaurants, Inc. v. Elby's Big Boy of Steubenville, Inc. , 670 F.2d 642, 648 (6th Cir. 1982) ; see also Groeneveld Transp. Efficiency, Inc. v. Lubecore Int'l, Inc. , 730 F.3d 494, 509 (6th Cir. 2013). Not all of these factors will be relevant in every case, and in the course of applying them, "[t]he ultimate question remains whether relevant consumers are likely to believe that the products or services offered by the parties are affiliated in some way." Homeowners Grp., Inc. v. Home Mktg. Specialists, Inc. , 931 F.2d 1100, 1107 (6th Cir. 1991). In applying these factors, we recognize that they "imply no mathematical precision, but are simply a guide to help determine whether confusion is likely." Id. To create a triable issue of fact, the plaintiff's "burden is to identify a disputed factor or set of factors whose resolution would necessarily be dispositive on the likelihood of confusion issue." Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc. , 280 F.3d 619, 646 (6th Cir. 2002).

We have recognized four different types of trademark infringement: palming off, confusion of sponsorship (also known as "...