Identical product ruled as not infringing due to lack of evidence of confusion
On the 7 February 2022 a US district court rejected an infringement claim that arose after two room-mates began selling an identical eyelash-growth serum under the names BoostLash and WooLash respectively.
The US District Court for the Central District of California has granted the defendants’ motion for summary judgment that the use of their mark WOOLASH did not infringe upon the plaintiff’s mark BOOSTLASH, due to:
- the weakness of the plaintiff’s mark;
- lack of similarity between the respective marks;
- lack of evidence of confusion; and
- a high degree of consumer care with respect to cosmetic products.
The court cited the use of the plaintiff’s mark as a Google search term, due to the labelling and resulting targeted advertisements.
The dispute started when the principals from the plaintiff and defendants were room-mates. One of the plaintiff’s principals started Boost Beauty and made the defendant’s principal promise not to disclose or use any of his proprietary information, secrets or strategies for a successful business. However, there was never a written confidentiality agreement. While they were still living together, the plaintiff learned of his room-mate’s new business, WooLash, selling eyelash growth serum identical to his own, BoostLash.
BOOSTLASH is a registered trademark for “non-medicated eyelash growth serum”. Both products cost $49.95 per unit and are sold online. The court first rejected the defendant’s argument that BOOSTLASH was merely descriptive, finding that there was a genuine issue of material fact on “the meagre factual record before it” to meaningfully analyse the issue. The fact that the USPTO had granted a registration for BOOSTLASH also went against the argument that the mark was descriptive.
The court then turned to the precedents established in Sleekcraft: factors used in the Ninth Circuit to determine likelihood of confusion. The court analysed the mark’s conceptual and commercial strength by classifying it along a spectrum of generic, descriptive, suggestive, arbitrary or fanciful. Based on undisputed evidence consisting of 47 live trademarks using ‘boost’ in cosmetics, as well as 730 registered trademarks that use ‘lash’, and the plaintiff’s failure to provide any evidence of marketplace recognition, the court held that with respect to conceptual and commercial strength, the plaintiff’s mark was weak.
The court held that BoostLash and WooLash appear to be identical products. However, with respect to the similarity of the marks, other than a portion of the product names that refer to ‘lash’, the rest of the names are not similar. The court found that “[n]o reasonable consumer would mistake the term ‘woo’ for the term ‘boost’ in terms of ‘sight, sound, and meaning…because ‘boost’ and ‘woo’ look different, sound different and have different dictionary meanings”.
Continuing with the Sleekcraft factors, the court noted that in the internet context, a showing of actual confusion among significant numbers of consumers provides strong support for a likelihood of confusion. The plaintiff claimed that customers called and expressed confusion between BoostLash and WooLash but these calls were never memorialised, and no other evidence of actual confusion existed in the record. Here the court found that the testimony was inadmissible hearsay and that without any admissible evidence of actual confusion a likelihood of confusion could not be found.
With respect to the type of goods and degree of consumer care, the court noted that the Ninth Circuit expects consumers searching for expensive products online to be more sophisticated. This is particularly the case with cosmetic products that consumers must apply to sensitive parts of the body and that cost nearly $50. This also went against finding a likelihood of confusion. Given its analysis of the Sleekcraft factors, the court found that the case did not raise a material issue of act and that summary judgment for the defendant was appropriate.
The court also addressed the plaintiff’s contention that defendant’s use of ‘boost’ and ‘boostlash’ in Google-Adwords advertisements creates a likelihood of confusion. Citing the Ninth Circuit, it stated that in evaluating claims of trademark infringement involving internet search engines, an additional factor outside of the eight-factor Sleekcraft test is the labelling and appearance of the advertisements and the surrounding context on the screen displaying the results page. Here, the WooLash advertisement that appeared after the ‘boostlash’ search is labelled as such, and features a product clearly labelled as WooLash with no reference to the plaintiff’s product. The court held that it is highly unlikely that a consumer searching for BoostLash would confuse it for WooLash. Therefore summary judgment on the plaintiff’s keyword claim was appropriate, as the WooLash advertisement features clear labelling that is likely to prevent confusion.
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