The stronger trademark is, the better for its protection

Grayson O Company, a haircare product manufacturer and holder of a registered trademark, brought trademark and unfair competition action against Agadir International LLC, a competitor haircare product manufacturer. The district court granted summary judgment to Agadir, finding that Grayson O had failed to show the marks were likely to be confused. Appeal court affirmed.

Grayson O sells products designed to protect hair from heat during styling. The company owns a federal trademark registration for the mark “F 450”. The registered mark is not stylized and does not claim to protect “any particular font, style, size, or color”. Although the registered mark contains no degree symbol, the product labels on which the mark appears do contain a degree symbol; the labels also contain a lowercase “f,” a stylized “450,” and almost no space between the “f” and “450”. On its website, Grayson O refers to its products as “f450º” or the “fahrenheit 450° Line”.

Agadir sells a product called “Hair Shield 450º Plus” or “Agadir Argan Oil Hair Shield 450º Plus,” depending on how one reads the label. The “450” on Agadir’s label is not stylized. Both Grayson O and Agadir sell their products exclusively at salons, which means their direct customers are salon professionals who then sell the products to their clients.

On December 13, 2013, Grayson O initiated lawsuit, alleging that Agadir infringed on its trademark and engaged in unfair competition in violation of the Lanham Act and North Carolina law. The district court found that Grayson O had failed to show a likelihood of confusion between the marks. In particular, the court held that Grayson O’s mark was conceptually and commercially weak, that the marks were not similar, that there was no evidence of Agadir’s intent to infringe on Grayson O’s mark, and that there was only de minimis evidence of confusion.

If a mark lacks strength, a consumer is unlikely to associate the mark with a unique source and consequently will not confuse the allegedly infringing mark with the senior mark. A mark’s strength comprises both conceptual strength and commercial strength. “Measuring a mark’s conceptual or inherent strength focuses on the linguistic or graphical ‘peculiarity’ of the mark, considered in relation to the product, service, or collective organization to which the mark attaches.”

Grayson O asserts that its mark is suggestive, and Agadir does not argue to the contrary. But the court did not agree that the Grayson’s mark is conceptually strong. In this case, Agadir has presented numerous instances of other uses of “450” in the haircare industry, including some that were in use or registered prior to Grayson O’s registration of its mark. If Grayson O’s mark was “truly a distinctive term, it is unlikely that… many other businesses in the haircare industry would independently think of using the same mark or similar variants of it.” That so many have done so indicates that “450” and the variation “F 450” are not conceptually strong.

In determining the commercial strength of a mark, a court considers whether “a substantial number of present or prospective customers understand the designation when used in connection with a business to refer to a particular person or business enterprise”. The district court explained, Grayson O’s sales and advertising expenditures were “minimal” when compared to the “multi-billion dollar hair care industry”.

Furthermore, Grayson O offered no evidence of “unsolicited media coverage,” “attempts to plagiarize the mark,” or “consumer studies linking the F 450 mark or the ‘450’ term to Grayson O,” despite the fact that Grayson O has been using the mark for four years. The court found that Grayson O’s mark was both conceptually and commercially weak. The only textual similarity between Agadir’s label and Grayson O’s label is “450º,” and the only textual similarity between Agadir’s label and Grayson O’s registered mark is “450.”

In sum, Grayson O has failed to show a likelihood of confusion between its mark and Agadir’s mark because – despite the similar facilities, advertising, and quality of the products – Grayson O’s mark is weak and differs in appearance from Agadir’s mark. Grayson O presented no meaningful evidence of intent to infringe or actual confusion. Given such a record, the district court did not err in granting summary judgment to Agadir. The judgement of district court has been affirmed.