Flower Mfg., LLC v. Careco, LLC
| Citation | 466 F.Supp.3d 797 |
| Decision Date | 14 June 2020 |
| Docket Number | Case No. 3:18CV547 |
| Parties | FLOWER MANUFACTURING, LLC, Plaintiff v. CARECO, LLC, Defendant |
| Court | U.S. District Court — Northern District of Ohio |
Andrew M. Pauwels, Honigman, Detroit, MI, J. Michael Huget, Mary Alexander Hyde, Honigman, Ann Arbor, MI, for Plaintiff.
Amy Price, Akerman, West Palm Beach, FL, Caroline H. Mankey, Akerman, Los Angeles, CA, Jeffrey J. Mayer, Akerman, Chicago, IL, for Defendant.
This is a trademark dispute between two companies that make air fresheners.
Plaintiff Flower Manufacturing, LLC, owns the registered trademark CHERRY BOMB for car air freshener cards as well as thirteen similar marks (e.g. , NILLA BOMB) for other "flavors" of freshener cards.
In 2017, while attending the annual Car Wash Show in Las Vegas, Flower's principal Ken Flower learned from a customer that another attendee, defendant CareCo, LLC, was producing air fresheners under a SCENT BOMB trademark that resembled the Flower BOMB marks. Flower demanded that CareCo cease and desist from its allegedly infringing use of the SCENT BOMB mark, but CareCo demurred, thereby precipitating this lawsuit for trademark infringement and related claims under the Lanham Act, 15 U.S.C. § 1051 et seq.1
Jurisdiction is proper under 28 U.S.C. § 1331.
Pending are the parties’ cross motions for summary judgment. (Docs. 28, 33). For the reasons that follow, I grant CareCo's motion and deny Flower's motion.
In 2002, Flower acquired the business and assets of a company called Auto Fresh, Inc., that made and sold air freshener products under the CHERRY BOMB trademark. Flower registered this mark, both words and design, on the U.S. Trademark Principal Register and listed the mark's first use as 2002.
The CHERRY BOMB mark features a round red bomb with a lit fuse against a yellow background; the words "CHERRY BOMB" in yellow font inside the bomb; and a number of stars above the lit bomb:
By 2005, Flower had created and registered thirteen variations of the "CHERRY BOMB" mark, including "NILLA BOMB," "COLADA BOMB," and "NUCAR BOMB":
Flower produces only a single product: scented, hanging paper air fresheners. (Doc. 28–2, PageID 234).
Flower sells its fresheners primarily or entirely to distributors who then make the air fresheners available at car washes and other commercial establishments throughout the United States and internationally. (Id. , PageID 256–57; Doc. 33–9, PageID 524). It markets and sells its air fresheners under the "Family of Bomb" marks through its own website, the Amazon marketplace, and trade shows. Flower has spent $243,326.08 "in advertising and promoting [its] goods under the Flower Family of Bomb Marks." (Doc. 33–9, PageID 526).
Ninety to ninety-five percent of Flower's sales of air fresheners involve "pouch packs," which contain seventy-two or 1000 individual air fresheners that are intended to be sold to a purchaser in a vending machine. (Id. , PageID 259-60, 262; Doc. 28-7, PageID 330; Doc. 28-8, PageID 333).
A significant portion of Flower's sales involves "private label" air fresheners, which are fresheners that, instead of bearing the CHERRY BOMB or other BOMB mark, have the logo or name of the company that hired Flower to produce the fresheners. (Doc. 28-2, PageID 237-38).
Ken Flower testified at deposition that, while his company did not produce "any spray or gel air fresheners," it had "plans to expand into those markets in the future." (Doc. 28-2, PageID 234). Asked to describe these plans, Flower said that he had "[i]dentif[ied] suppliers" and "fragrances" and "done some hand sketching" for potential packages. (Id. , PageID 235-36). He also testified that he had plans (as of the time of his deposition) to sell part of his company to a friend who could help expand Flower products to big box stores, grocery stores, and auto parts stores, as well as "a lot of the Caribbean[.]" (Id. , PageID 263-64).
In 2005, Jeff Martin and Terry Roberts founded CareCo. The company initially sold shoe-care products at county fairs and flea markets. (Doc. 28-3, PageID 277). CareCo created its first air fresheners in 2008 and sold them at county fairs in Florida and California. (Doc. 28-3, PageID 279; Doc. 33-10, PageID 536). Martin and Roberts decided to call their air fresheners SCENT BOMB because "the slang term ‘THE BOMB’ was extremely popular" at the time and "had become synonymous with anything that was great, amazing, pleasing, appealing, attractive, and high quality." (Doc. 28-6, PageID 322).
The SCENT BOMB mark features the words "scent" and "bomb" in either gold or black letters against a black or metallic silver background. A red circular bomb replaces the letter "O" in the word "BOMB."
In 2009, CareCo attempted to register the SCENT BOMB mark on the U.S. Patent and Trademark Office's Principal Register, but the Office denied the application because "the proposed mark merely describes a feature and characteristic of the goods/services." (Doc. 33-12, PageID 567). The next year, CareCo successfully registered the mark on the Supplemental Register. (Doc. 33-13, PageID 572).
CareCo currently makes and sells concentrated air fresheners and odor eliminators in spray bottles, scent cans, and gel disks under the SCENT BOMB mark. It also began, in 2017, selling hanging air-freshener cards. (Doc. 28-3, PageID 281, 285). "[T]he majority of CareCo's sales are of spray air freshener products." (Doc. 28-16, PageID 409 at ¶ 2).
CareCo described its customer base as "convenience stores, car washes, gas stations, auto parts stores, truck stops, large chain retailers, smoke shops, and third-party distributors who sell to other retail and online sales platforms and to end users." (Doc. 28-6, PageID 318). CareCo also offers most of its products for sale on its website, www.scentbomb.com.
After failing to convince CareCo to cease and desist from using the SCENT BOMB mark, Flower filed this suit in March 2018.
It raises five claims under the Lanham Act: 1) trademark infringement under 15 U.S.C. § 1114(1)(a) ; 2) false designation of origin under id. § 1125(a)(1)(A); 3) unfair competition/false advertising under id. § 1125(a)(1)(B); 4) injunctive relief under id. § 1116; and 5) cancellation of CareCo's registration under id. § 1119. Flower also brings a claim under the Ohio Deceptive Trade Practices Act, O.R.C. § 4165.01, et seq.
Summary judgment is appropriate under Fed. R. Civ. P. 56 where the opposing party fails to show the existence of an essential element for which that party bears the burden of proof. Celotex Corp. v. Catrett , 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).
The movant must initially show the absence of a genuine issue of material fact. Id. at 323, 106 S.Ct. 2548. Once the movant carries its burden, the burden shifts to the nonmoving party to "set forth specific facts showing that there is a genuine issue for trial." Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Rule 56 "requires the nonmoving party to go beyond the [unverified] pleadings" and submit admissible evidence supporting its position. Celotex, supra , 477 U.S. at 324, 106 S.Ct. 2548.
"Where, as here, parties have filed cross-motions for summary judgment, the Court grants or denies each motion for summary judgment on its own merit, applying the standards described in Fed. R. Civ. P. 56." Williams v. Ohio Dep't of Rehab. & Corrs. , 2018 WL 500167, *1 (S.D. Ohio 2018).
Trademark infringement occurs when "any person ... without the consent of the registrant[,] use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive[.]" 15 U.S.C. § 1114(1).
To prevail on an infringement claim, a plaintiff must establish that: "1) it owns the registered trademark; 2) the defendant used the [allegedly infringing] mark in commerce; and 3) the use was likely to cause confusion."
Hensley Mfg. v. ProPride, Inc. , 579 F.3d 603, 609 (6th Cir. 2009).
The parties agree that the only issue in dispute is whether a reasonable jury could find that a likelihood of confusion exists.2
The Sixth Circuit uses an eight-factor test to determine if a likelihood of confusion exists. These factors are: 1) the strength of the plaintiff's mark; 2) the relatedness of the goods; 3) the similarity of the marks; 4) evidence of actual confusion; 5) the marketing channels used by the parties; 6) the likely degree of purchaser care; 7) the defendant's intent in selecting the marks; and 8) the likelihood of expansion of the product lines. Frisch's Rests., Inc. v. Elby's Big Boy of Steubenville , 670 F.2d 642, 648 (6th Cir. 1982).
The plaintiff "need not establish each factor to prevail"; to the contrary, because "[e]ach case is unique," "not all of the factors will be helpful" in a given case. Kibler v. Hall , 843 F.3d 1068, 1073 (6th Cir. 2016). "The 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 Marketing Specialists, Inc. , 931 F.2d 1100, 1107 (6th Cir. 1991). The burden to prove a likelihood of confusion, however, is on the plaintiff. See Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504, 512 (6th Cir. 2007) ; Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc. , 280 F.3d 619, 646 (6th Cir. 2002).
Whether a likelihood of confusion exists is a mixed question of law and fact. Progressive Distrib. Servs., Inc. v. United Parcel Serv., Inc. , 856 F.3d 416, 427 (6th Cir. 2017). "Any dispute about the evidence that pertains to the eight factors presents a factual issue." Id. In...
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