Side-by-side comparison is not correct way to judge similarity, says court

In Xtreme Lashes LLC v Xtended Beauty Inc (Case 08-20578, July 15 2009), the US Court of Appeals for the Fifth Circuit has reversed the district court’s grant of summary judgment to defendant Xtended Beauty Inc on plaintiff Xtreme Lashes LLC's infringement claims, explaining that the district court’s focus on visual, side-by-side comparison of the features of the marks XTREME LASHES and XTENDED BEAUTY was not the correct way to judge similarity.

Both Xtreme and Xtended sell eyelash extension kits used by professional cosmetologists. Xtreme had used the marks XTREME LASHES and EXTEND YOUR BEAUTY since 2005, and Xtended had used its XTENDED BEAUTY mark since 2006. The district court held that there was no likelihood of confusion between the marks and found that EXTEND YOUR BEAUTY was descriptive as a matter of law. The district court thus ordered the cancellation of the EXTEND YOUR BEAUTY mark. Xtended appealed.

In evaluating the likelihood of confusion between XTREME LASHES and XTENDED BEAUTY, the Fifth Circuit applied eight non-exhaustive 'digits' of confusion. The court found that all of the digits either weighed in favour of Xtreme or were neutral. In evaluating the second digit of confusion (ie, the similarity of the marks), the court stated that it is improper to compare marks side-by-side in the courtroom and focus on the dissimilar visual elements. Rather, such comparison should be based on the marks as viewed in actual market conditions. Given that both marks contained a large stylized 'X' and appeared in nearly identical contexts on the companies’ kits, a consumer could believe that XTENDED BEAUTY was a product line offered by Xtreme. 

The court further noted that a finding of likelihood of confusion turns on confusion of origin, not confusion of marks. In addition, the fact that the companies sold nearly identical products to the same class of consumers and targeted their advertising to that same class of consumers weighed in favour of Xtreme. The Fifth Circuit also rebuked the district court for disregarding Xtreme’s evidence of actual confusion, stating that ignoring evidence of actual confusion as “anecdotal or irrational tramples upon the province of the trier of fact”.

With regard to the EXTEND YOUR BEAUTY mark, the court held that the mark was entitled to trademark protection because customers had to use “imagination, thought and perception” to conclude that EXTEND YOUR BEAUTY referred to eyelash extensions rather than another cosmetic product. The court further stated that the commonness of the constituent terms of a compound mark do not render the entire mark descriptive. As with the XTREME LASHES mark, in terms of the infringement issue, the court found that most of the digits of the confusion analysis weighed in Xtreme’s favour and, as such, there was a genuine issue of fact for the jury.

Sara E Coury, McDermott Will & Emery, Washington DC