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'Slasher Show' May Infringe on 'Slash' Service Marks

Caliber Automotive Liquidators v. Premier Chrysler, Case No. 08-16179 (C.A. 11, May 7, 2010)

Caliber Automotive Liquidators, Inc. provides advertising promotions to car dealerships and owns service marks on “Slash-It! Sales Event” and “Slasher Sale.” Premier Automotive Group uses its own marketing – an infomercial called the “Slasher Show” – to sell cars. Caliber sued Premier in the Northern District of Georgia under both federal and state law, claiming infringement. The district court granted Premier summary judgment, holding that no reasonable jury could find a likelihood of confusion between Caliber’s marks and Premier’s advertising. Caliber appealed. Persuaded that the district court erred in its measure of confusion of Caliber’s customers by Premier’s advertising and in the weight it gave an incontestible mark, we reverse and remand.

I.


Daniel Ryan owns and operates Caliber Automotive Liquidators, Inc., offering its services to car dealerships throughout the country. Caliber’s service follows a regimen it developed to reduce quickly a dealer’s existing inventory. Starting two weeks before a dealership’s sale, Caliber assists in a saturation of the local market with radio, television, and print ads. In the days immediately before the sale, its team arrives on-site to prepare the dealership, putting up marketing paraphernalia and energizing the dealership’s sales staff, as Caliber’s staff do not act as floor salespersons. Instead, during the sale, the dealer’s salespersons – performing for the customers – histrionically slash the car prices and seal the deals. Caliber enjoys a demand for its service, as its methods often help dealerships shrink inventory over three-day “blowouts.”

Caliber has held a federal registration for “Slash-It! Sales Event” since 1999. The registration provides that the service mark is used for “advertising agency services, namely, promoting the services of automobile dealerships through the distribution of printed and audio promotional materials and by rendering sales promotion advice.” The Slash-It! Sales Event mark, in trademark parlance, is “incontestible,” a status we will come to. Caliber also owns a federal registration for the service mark “Slasher Sale,” which the company purchased in 2005. Daniel Ryan scours the country’s automotive advertisements to ensure that no car dealer uses the slasher marks. Ryan has stopped hundreds of would-be infringers, sells a license to use both Slash-It! Sales Event and Slasher Sale, and has favorably settled several nascent legal actions against alleged infringers.

In the summer of 2006, Ryan learned that Premier Automotive Group, owned by Sam Kazran, was running infomercials called Slasher Shows for its dealerships in greater Atlanta, advertising drastically reduced-priced vehicles. The public could not buy cars through the infomercial, but instead had to come to the showroom. In addition to the Slasher title, the infomercial featured a Slasher Countdown, a Slasher Man complete with slasher jewelry, off-camera voices screaming “slash it,” and on camera uses of the term “slash it.” Premier also highlighted the Slasher Show theme on its website.
 

 

Judge(s): Black, Marcus, Higginbotham
Jurisdiction: U.S. Court of Appeals, Eleventh Circuit
Related Categories: Trademark
 
Circuit Court Judge(s)
Susan Black
Patrick Higginbotham
Stanley Marcus

 
Plaintiff Lawyer(s) Plaintiff Law Firm(s)
Arthur Gardner Gardner Groff Greenwald & Villanueva PC
Bradley Groff Gardner Groff Greenwald & Villanueva PC
Lauren Staley Gardner Groff Greenwald & Villanueva PC

 
Defendant Lawyer(s) Defendant Law Firm(s)
Bradley W. Grout Hunton & Williams LLP
Joshua M. Kalb Hunton & Williams LLP
Melinda Pillow Kilpatrick Townsend & Stockton LLP
Robert Kiser The Hines Firm

 

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confusion.27 premier automotive group, gwinnett, llc, a florida corporation, d.b.a. ii. plaintiff-counter-defendant-appellant, the use of the term, and, for our purposes, caliber owns the service mark. ryan claims to have used 7 evidence that actual customers were confused by the use of a mark as opposed to other categories this court's caselaw forecloses such a binary rule. rather, there "is no absolute scale univ. of ga. athletic ass'n. v. laite, 756 f.2d 1535, 1540 (11th cir. 1985) (citing sun33 confusion." our focus is upon the element of confusion. the district court properly14 of confusion with respect to trademark infringement under 15 u.s.c. 1114." (citation omitted)). balance, the district court held that caliber's were relatively weak, descriptive with30 am. commc'ns & television, inc., 810 f.2d 1546, 154849 (11th cir. 1987)) (quotation marks and a relatively strong mark." slash-it! sales event has attained federal incontestible35 also lone star steakhouse & saloon, inc. v. longhorn steaks, inc., 122 f.3d 1379, 1382 (11th cir. georgia under both federal and state law, claiming infringement. the district court defendant "adopted a plaintiff's mark with the intention of deriving a benefit fromthe that infringement [occurred]." caliber, instead, seeks a remand for trial. we reverse middlemen, can inform the inquiry, and the ultimate consumers deserve special ryan scours thecountry's automotiveadvertisements to ensure that no car dealer uses energizing the dealership's sales staff, as caliber's staff do not act as floor safewaystores, inc., 675 f.2dat1167(holdingthat two instancesofactual confusionweresufficient to support a reasonable jury's finding of infringement." sensitive to the cautions38 in light of the reasoning in safeway stores that the confusion of someone very familiar with the ], which imposes liability against use likely to cause confusion, or to cause mistake, or to deceive. relationship to the product or service it is used to represent [e.g., kodak]. a resident, a.k.a. sam khazrwan, consideration where, how, and to whom the parties' products are sold." the district44 alterations omitted)). "descriptivetermsmaynot beregisteredastrademarksunderthelanhamact, littrell's new world carpets, 438 f.2d 482, 489 (5th cir. 1971) ("[r]eason tells us that while very e. remy martin & co. v. shaw-ross int'l imps., inc., 756 f.2d 1525, 1531 (11th cir.40 generic, descriptive, suggestive and arbitrary. the stronger the mark, the greater the ambrit, inc., 812 f.2d at 1543.26 strength of the service marks. caliber also suggests that some of premier's trademark under georgia law. premier moved for summary judgment, arguing that13 outsource their marketing, premier decided not to outsource its promotional ideas but and remand for further proceedings consistent with this opinion, including trial. iv. services, namely, promoting the services of automobile dealerships through the omitted). dealerships and owns service marks on "slash-it! sales event" and "slasher sale." vision center]."32 itself advertising. the district court found the overall weight neutral. we agree that language when ryan asked him to stop using the marks evidences a maligned intent. important factors in determining thelikelihood of confusion type of mark and actual welding servs. v. forman, 509 f.3d 1351, 1356 (11th cir. 2007) (citations omitted).18 reversed and remanded. manufactured or sold by others and to indicate the source of the goods, even if that source [is] man complete with slasher jewelry, off-camera voices screaming "slash it," and on john ley caliber automotive liquidators, inc. provides advertising promotions to car "[t]he statutory protection of ocga 10-1-451 is available only upon registration of a17 ("evidence offered as to actual customer confusion, although also probative of likelihood of see 15 u.s.c. 1065.5 nascent legal actions against alleged infringers. caliber's customers by premier's advertising and in the weight it gave an or `secondary meaning' by becoming associated with the proprietor's product or service. a name id. at 1240.38 judgment is proper only if the record before the district court shows that there is no action when a person, `in the course of his business, vocation, or occupation . . . [c]auses likelihood 880 f.2d at 329.35 show plays on television while the slash-it! sales are live events; (2) slasher show advertising." this is difficult to analyze, because the allegedly infringed service is45 summary judgment record in a light most favorable to caliber, it has shown actual u.s. court of appeals he commanded an "army of lawyers," ending the conversation with rude comments. (noting that "instances of consumer confusion are probative of secondary meaning"); see also identified the seven-factor weighted balancing test "to be considered as to the 6 welding servs. v. forman, 509 f.3d 1351, 135758 (11th cir. 2007) (citations omitted).32 confusion,certainlytendsto showthat therelevantpurchasingpublic associated[plaintiff'sproduct] judgment on those claims. finally, the district court granted premier summary16 little proof of actual confusion would be necessary to prove the likelihood of confusion, an almost city, georgia dealership and ordered his workforce not to pay caliber's invoices.8 when considering the type of marks, the second most important factor in the concept from caliber. the district court rightly found that caliber has failed on this dealerships, not the general public, purchase slasher promotions, it is unremarkable consuming public is not the product but the producer." (citing am. television & commc'n corp. v. upset. he was under the impression that caliber had granted heard exclusive use of both parties sell a marketing ploy to car dealers. caliber sells to entities looking to v. midway servs., inc., 508 f.3d 641, 650 (11th cir. 2007) (citing united states v. torkington, 812 consideration in likelihood of confusion analysis. because [a] mark is incontestable, factor to raise a genuine issue of material fact, weighing against a finding of id. at 1340.46 caliber's marks are, at a minimum, descriptive. the dispute centers on the nevertheless the best evidence of likelihood of confusion." (quotation marks omitted)). while we have no hard-and-fast rule, under our standard "the quantum of customers histrionically slash the car prices and seal the deals. caliber enjoys a iv. id. (citing e. remy martin & co., 756 f.2d at 1530).42 caliber filed suit in federal court, alleging: (1) infringement under the lanham act;9 the prong here adds little. . . . [t]he court must evaluate the evidence of actual confusion in the light of the a california corporation, see playboy enters., inc. v. netscape commc'ns corp., 354 f.3d 1020, 1127 (9th cir.25 premier automotive group uses its own marketing an infomercial called the with [plaintiff]."). story, also claimed rights over the slasher sale idea. the three have come to an understanding over attention.23 ii. plaintiff's business reputation." caliber alleges that kazran's barrage of foul46 cir. 1980) ("infringement of a registered mark is governed by the provisions of 15 u.s.c. 1114[ cir. 2008) ("with regard to actual confusion, we have specifically accorded `substantial weight' to this court has upheld a jury verdict for the plaintiff in an infringement case custom mfg. & eng'g, inc. v. midway servs., 508 f.3d 641, 649650 (11th cir. 2007)39 caliber automotive liquidators, inc., 8 in the summer of 2006, ryan learned that premier automotive group, owned no secondary meaning, rejecting caliber's contention that its marks are relatively "minimal." but see amstar corp. v. domino's pizza, inc., 615 f.2d 252, 263 (5th cir. 1980) practices law] provide analogous causes of action governed bythe same standard."(citingga.code [publish] b. aronowitz v. health-chem corp., 513 f.3d 1229, 1239 (11th cir. 2008).14 likelihood of confusion. confusion weighed in favor of likelihood of confusion; similarity in advertising did undisturbed. ga. code ann. 10-1-451(b).13 arrives on-site to prepare the dealership, putting up marketing paraphernalia and likelihood of confusion between caliber's marks and premier's advertising. caliber as arising only at the periphery. we are mindful that "the test [is] not whether the "there are four recognized types of mark, ranging from weakest to strongest: quotation marks omitted). merely descriptive, and not entitled to strong protection. moreover, premier does not jellibeans, inc. v. skating clubs of ga., inc., 716 f.2d 833, 845 (11th cir. 1983); see also28 customers cannot during the show test drive cars but slash-it! event customers can; enterprise (like the professional buyer in the instant case) is relevant evidence of actual confusion salespersons. instead, during the sale, the dealer's salespersons performing for the versus used the mark in commerce, without consent; and 2) that the use was likely to cause than weighing the evidence ourselves or making credibility determinations."18 addition to the slasher title, the infomercial featured a slasher countdown, a slasher registered slasher mark on file in the state of georgia a prerequisite for recovery.17 the court started with a correct observation that: "a successful cause of action conagra, inc. v. singleton, 743 f.2d 1508, 151415 (11th cir. 1984)). custom mfg. & eng'g, inc. v. midway servs., 508 f.3d 641, 650 (11th cir. 2007) ("we30 (finding three instances of actual confusion insufficient). car dealerships comprise but a small 1982) (citation omitted); see also aronowitz v. health-chem corp., 513 f.3d 1229, 123940 (11th most important."15 of law. we must view the evidence in the light most favorable to [caliber], rather audiences: (1)caliber'scar dealershipcustomersand (2)car-buying retailcustomers. caliber asks thecourt to create abright-line rule precluding summaryjudgment premier dodge, d.b.a. premier automotive group, and sam kazran, a florida meaning, and are hence strong marks. in dieter v. b & h industries of southwest 1999)) (quotation marks omitted). imputing a sale of a slasher campaign from premier to its dealerships, we can see that employees have carried over from a dealership's previous management, one which 2004)(suggestingthatevidenceofactual confusion"aloneprobablyprecludessummaryjudgment"). aronowitz v. health-chem corp., 513 f.3d 1229, 123940 (11th cir. 2008).37 9 descriptive marks fall on the weaker end. indeed, "[a] descriptive mark . . . is holder[']s goods as well as those who are potential direct purchasers of the allegedly counterfeit factors relevant to establishing this are identical to the factors relevant to establishing a likelihood we agree with the district court that this is little evidence of premier's intent when similarity of sales method, and defendants' intent all weighed against likelihood of when the plaintiff in an infringement action presents an instance of actual confusion, individuals casually acquainted with a business is worthy of little weight while persons casually acquainted with a business carry little weight. at the same time, often involve painting car windows with a "was" price so that salesmen can "slash" by any person to identify and distinguish his or her goods, including a unique product, from those trademark infringement claim under 15 u.s.c. 1114. weighty of considerations." (quotation marks and alteration omitted)). no. 08-16179 goods could be distinguished . . . but whether the goods are so related in the minds because the false designation of origin claim under 15 u.s.c. 1125 and the public, the customers who frequent premier's showrooms, understandably because confusion. of these, the type of mark and the evidence of actual confusion are the a. ryan called kazran to work out a licensing agreement. kazran responded that evidence of likelihood of confusion." this circuit's caselaw makes plain that the21 two to four days. commerce nat'l ins. servs. v. commerce ins. agency, inc., 214 f.3d 432, 440 (3d cir. 2000) eleventh circuit confusion weighed in favor of finding such confusion, there was sufficient evidence id. (citing frehling enters. v. int'l select group, inc., 192 f.3d 1330, 1335 (11th cir.15 investacorp, inc. v. arabian inv. banking corp., 931 f.2d 1519, 1526 (11th cir. 1991)36 in a trademark requires a showing that the mark has become distinctive of the trademark holder's the type of confusion was a heavy stone in the balance. we have explained that number 2,757,593.6 the slasher marks. ryan has stopped hundreds of would-be infringers, sells a license appealed. persuaded that the district court erred in its measure of confusion of 11 see, e.g., alliance metals, inc. of atlanta v. hinely indus., 222 f.3d 895, 907 (11th cir.19 (11th cir. 1996) (citation and quotation marks omitted). genuine issue as to any material fact and [premier] is entitled to judgment as a matter as to how many instances of actual confusion establish the existence of that factor. as the federal lanham act count[s]. this is a question of state law that the parties do not challenge trademark claim under georgia law, which the district court did not base on a48 confusion, the argument goes, a reasonable jury could find for caliber making by designation. unknown. a `service mark' is identical to a trademark in all respects except that it is intended to to use both slash-it! sales event and slasher sale, and has favorably settled several the car dealerships, the relevant purchasing population. here, "the people confused 2000); john h. harland co. v. clarke checks, inc., 711 f.2d 966, 978 (11th cir. 1983) ("although the likelihood of confusion test applies to both causes under the lanham act 16 merely descriptive, even if the challenger can show that the mark was improperly registered 1985). 15 a mark has achieved incontestable status, its validity cannot be challenged on the grounds that it is demand for its service, as its methods often help dealerships shrink inventory over confusion of actual customers of a business is worthy of substantial weight."20 asserting that the rule would bring the eleventh circuit into line with the ninth.25 safeway stores, inc. v. safeway discount drugs, inc., 675 f.2d 1160, 1167 (11th cir.20 instance of actual confusion did not militate in favor of finding likelihood of prices on cars. as the district court found, caliber has created a disputed issue of a question of fact," and caliber explicitly "stops short of asking this court to rule47 or services.' it should be apparent that . . . the lanham act and [the georgia deceptive trade 1997) (mentioning "actual consumer confusion"). ga. code ann. 10-1-451.48 confusion. the district court erred by overvaluing lack of confusion exhibited by29 that "a reasonable consumer could possibly attribute the products here to the same the same test is applicable to the [georgia] deceptive trade practices claim and common law unfair 16 indicate the origin of services, rather than goods." univ. of fla. v. kpb, inc., 89 f.3d 773, 776 n.4 perceived duplicity, sumner canceled caliber-run slash-it! sales events at his union competitor, selling directly to restaurants. the court focused on the type of people most likely to before black, marcus and higginbotham, circuit judges.* similarly, a plaintiff must establish likelihood of confusion to prevail on a deceptive trade practices where the only two factors favoring likelihood of confusion were evidence of (1) a infomercial, bill ryan, daniel's brother, and the girlfriend of one of caliber's employees each alliance metals, inc. v. hinely indus., inc., 222 f.3d 895, 907 (11th cir. 2000) (citing47 competition." (citations and alterations omitted)). 1502, 150304 (11th cir. 1985) ("to prevail on a false designation of origin claim under 15 u.s.c. find likelihood of confusion, and granted summary judgment to premier on the infringement and false designation of origin. see ross bicycles, inc. v. cycles usa, inc., 765 f.2d imagination to get from the mark to the product [e.g., penguin refrigerators]. a the registration provides that the service mark is used for "advertising agency3 4 plaintiff's mark such that there was a likelihood of confusion as to the origin of the goods. the claim under ga. code ann. 10-1-371 et seq. see kason indus. v. component hardware group, determination as to whether the products are the kind that the public attributes to a ann. 10-1-372)). the caselaw is not as clear on whether the likelihood of confusion test applies apa excelsior iii l.p. v. premiere techs., 476 f.3d 1261, 1270 & n.4 (11th cir. 2007).49 (2) false designation of origin under the lanham act; (3) deceptive trade practices10 iii. market. court found this factor to weigh against likelihood of confusion. we disagree. by georgia-law claims for deceptive trade practices and unfair competition all pivoted on appeal, caliber challenges the district court's focus on the car-buying slasher sales in georgia, that the show for premier breached that agreement. john regimen it developed to reduce quickly a dealer's existing inventory. starting two under georgia law; (4) unfair competition under georgia law; and (5) dilution of11 12 an overall "slight" amount of actual confusion. id. at 1339.44 filed weeks before a dealership's sale, caliber assists in a saturation of the local market consideration. the district court analyzed the evidence of actual confusion of two19 (citingfrehling enters. v. int'l select group, inc., 192 f.3d 1330, 1342 (11thcir. 1999); jellibeans, acknowledged evidence of actual confusion of caliber's customers but devalued it, its customers food wholesalers became confused when the defendant entered the market as a ryan bought the slasher sale mark from vincent sanchez, but yet another man, brian7 there is more. we have specified that "[a]ctual consumer confusion is the best the similarity of the parties' retail outlets and customers "takes into scope of protection accorded it." "an arbitrary or fanciful mark bears no logical31 likelihood of confusion. we deem issues not clearly briefed on appeal to be as weighing against likelihood of confusion, finding dispositive that: (1) the slasher c. cir. 1982). conagra, inc. v. singleton is another particularly illustrative case. 743 f.2d 1508 (11th frehling enters. v. int'l select group, inc., 192 f.3d 1330, 1341 (11th cir. 1999) ("thus,27 in this case, advertising and promoting represent the services. as car although the instances of actual customer confusion onlynumber two, the confusion is not29 378 s.e.2d 117, 119 (ga. 1989), overruled on other grounds by future prof'ls, inc. v. darby, 266 "[p]erhaps as important as . . . the number of instances of confusion are the kinds of buyers including the mark holder's customers in the context of an infringement dispute between the general public, an audience with no experience in the advertisement-buying the similarity of advertising media "factor looks to each party's method of granted premier summary judgment, holding that no reasonable jury could find a particular provider.34 a few persons who were not caliber customers were also confused. upon seeing the8 a radio version and a tv episode of the slasher show, thinking that caliber had 14 of factors on each side . . . [and] involves an evaluation of the overall balance" and ga. code ann. 23-2-55 et seq.12 wholesale in unfair competition claims under ga. code ann. 23-2-55 et seq., but "[t]he district strength of its marks. with these factors weighing in favor of likelihood of f.2d 1535, 1539 n.11 (11th cir. 1985); amstar corp. v. domino's pizza, inc., 615 f.2d 252, 258 (5th 120 f.3d 1199, 1203 (11th cir. 1997) ("[georgia deceptive trade practices law] provides a cause of single source, not whether or not the purchasing public can readily distinguish for the eleventh circuit 12 when analyzing the similarity of the mark, the court must consider "the overall three-day "blowouts."2 id.43 strength of descriptive marks. along the spectrum from generic to arbitrary, when analyzing an alleged infringer's intent, we must determine whether the number 2,227,377.3 ("[e]vidence of actual confusion is . . . one factor in the secondary meaning analysis . . . ." ); tools appeal from the united states district court clerk for trademark infringement requires the evidence to establish that the infringer 1) its services to car dealerships throughout the country. caliber's service follows a1 goods." at the least, the similarities between the two sales allow for the inference42 evidence of actual confusion is not necessary to a finding of likelihood of confusion, it is similarities go to the heart of these promotions, whereas the differences might be seen slash-it! sales events, slasher sales, and slasher show use the word "slash" to cut weconcludethat the above incident was at least sufficient to raise an inference of actual confusion, strong. has acquired secondary meaning when the primary significance of the term in the minds of the unless the holder shows that the mark has acquired secondarymeaning. proof of secondarymeaning on appeal. therefore, we treat this . . . as correct." jellibeans, inc. v. skating clubs of ga., inc., 716 but we conclude that the outcome as to this factor is not sufficiently dispositive so as to favor either descriptive mark identifies a characteristic or quality of the service or product [e.g., "incontestible," a status we will come to. caliber also owns a federal registration5 6 safeway stores, inc., 675 f.2d at 1167.24 review the remaining five factors. v. "we review de novo a district court's grant of summary judgment. summary it was not its burden to do so, staking an untenable legal position. movant-appellee. evidence needed to show actual confusion is relatively small." viewing the28 status, so here, as in dieter, the district court erred in holding that the mark was and meaning of the marks, as well as the manner in which they are displayed." the40 d.c. docket no. 07-00556-cv-cc-1 that this was error. second, caliber asserts that the district court understated the summary judgment improper. quotation marks omitted). "a `trademark' is . . . any word, name, symbol, or device or any combination thereof used4 overwhelming amount of proof would be necessary to refute such proof."). have consistently held . . . that the type of mark and evidence of actual confusion are the most banks of fla., inc. v. sun fed. savings & loan ass'n, 651 f.2d 311, 315 (5th cir. 1981)). likelihood of confusion test "includes individuals who are potential purchasers of the trademark cir. 1984). the plaintiff ran a seafood packing operation under the name singleton. the defendant violated the exclusive license by doing the show for premier. responding to the caliber does not in its brief challenge the adverse judgment on its dilution of source."43 then it is presumed to be at least descriptive with secondary meaning, and therefore upon the same likelihood of confusion test, the district court also granted summary the court concluded that: the similarity of the marks and "slight" actual had bought a slash-it! sales event, intimating that these employees stole the slasher several likenesses: (1) crowds at both sales chant "slash it;" (2) both sales market no reasonable jury could find infringement, and the district court agreed. although it may be decided as a matter of law, "likelihood of confusion generally is inc. v. skating clubs of ga., inc., 716 f.2d 833, 840 n.17 (11th cir. 1983)) (quotation marks because the slasher show did not confuse premier's retail customers. caliber urges greater atlanta,advertising drasticallyreduced-priced vehicles. the public could not 15 u.s.c. 1114.9 goods.")); original appalachian artworks, inc. v. toy loft, inc., 684 f.2d 821, 832 & n.17 (11th totality of the circumstances involved." similarly we have held that merely one26 f.2d 1347, 1352 (11th cir. 1987) (explaining that in lanham act cases the audience for the "slasher show" to sell cars. caliber sued premier in the northern district of evidence of actual confusion to be worthy of some consideration); world carpets, inc. v. dick although the district court found that caliber's patrons were confused, it offset this judgment on caliber's georgia-law trademark dilution claim, because caliber has no declared `incontestable.' once a mark has become incontestable, its validity is presumed . . . . once 5 17 with radio, television, and print ads. in the days immediately before the sale, its team for the service mark "slasher sale," which the company purchased in 2005. daniel7 actual confusion amongst the relevant consumer class to avoid summary judgment. buy cars through the infomercial, but instead had to come to the showroom. in to do them in-house. promoting is the service and car dealerships the consumers. that "a court must also take into account the unique facts of each case," we will39 henry, general manager of a heard dealership, saw the slasher show and became customers; (5) similarity of advertising media; (6) defendant's intent; and (7) actual ga. code ann. 10-1-371 et seq.11 defendants-counter-claimants-appellees, i. product. five years after registering a mark, the holder may file the affidavit . . . and have its mark who's calling, inc., audience, and those confused in this case represent a large portion of caliber's georgia business. ambrit, inc. v. kraft, inc., 812 f.2d 1531, 1543 (11th cir. 1986) (emphasis supplied); see21 florida, this court held that "incontestable status is a factor to be taken into caliber has presented sufficient evidence of the strength of its marks and of turn the key. all potential consumers of the relevant product or service, including22 suggestive mark refers to some characteristic of the goods, but requires a leap of the f.2d 833, 839 (11th cir. 1983) (footnote omitted); see also univ. of ga. athletic ass'n v. laite, 756 20 of people." (citing safeway stores, inc.)). usa & equip. co. v. champ frame straightening equip., inc., 87 f.3d 654, 660 (4th cir. 1996) incontestible mark, we reverse and remand. become confused the mark holder's "customers and people in the seafood trade." id. at 1515. see welding servs., 509 f.3d at 1358 ("a descriptive name . . . can acquire distinctiveness34 it and write in a "now" price. despite these differences, the district court conceded aronowitz v. health-chem corp., 513 f.3d 1229, 1240 (11th cir. 2008) (citation and31 protected only when secondary meaning is shown." a service mark develops33 marketing, then caliber promotions, and now caliber automotive liquidators. trade name with the secretaryof state." elite pers., inc. v. elite pers. servs., inc., 259 ga. 192, 193, that the seven-factor test "entails morethan themechanisticsummation of the number evidence with the fact that the car-buying public was not. in the end, the court found significantly, the infomercial perplexed its customers. caliber over the years had frehling enters., 192 f.3d at 1338.41 not tip the balance either way; and the strength of mark, similarity of events, see alliance metals, inc., 222 f.3d at 908 (focusing on confusion of industrial aluminum22 camera uses of the term "slash it." premier also highlighted the slasher show theme done business with various bill heard dealerships, each located in georgia. mark court held that the georgia . . . unfair competition count[ ] involved the same dispositive question automobiles; and (3) both sales drastically reduce purchase prices. as we see it, the 15 u.s.c. 1125.10 likelihood of confusion: (1) type of mark; (2) similarity of mark; (3) similarity of the by sam kazran, was running infomercials called slasher shows for its dealerships in analyzing the similarity of the products the marks represent "requires a in the united states court of appeals for the northern district of georgia 1125(a) a plaintiff must establish that the defendant adopted a mark confusingly similar to the material fact that the slasher slogans leave the same impression, weighing in favor of to ryan's eyes, the slasher show infringed caliber's marks. more persons confused and degree of confusion. short-lived confusion or confusion of aluminum distributors); safeway stores, inc., 675 f.2d at 1167; see also custom mfg. &eng'g, inc. 19 daniel ryan owns and operates caliber automotive liquidators, inc., offering strong mark and (2) actual confusion. we explained: "[b]ecause the two most37 initially." dieter v. b & h indus. of sw. fla., 880 f.2d 322, 328 (11th cir. 1989) (citations and premier chrysler, jeep, dodge, llc, a georgia corporation, d.b.a. 18 confusion. tallying the score, the district court found that no reasonable jury could likelihood of confusion. are precisely those whose confusion is most significant."24 sumner, formerly general manager of a couple of heard dealerships, was angered by of consumers that they get the sense that a single producer is likely to put out both 3 side in an appreciable fashion."). secondary meaning when the consuming public associates the services with a 2 it allegedly adopted the slasher marks. rather, the rudeness reflects contempt for the slasher sale since the late 1990s, when he came up with the idea. (3) slash-it! uses print media where slasher show does not; and (4) slash-it! events caliber has held a federal registration for "slash-it! sales event" since 1999. point to evidence to counter the evidence of confusion. rather, premier argues that36 caliber appealed, focusing on two arguments. first, the district court products the marks represent; (4) similarity of the parties' retail outlets and distribution of printed and audio promotional materials and by rendering sales that a retail customer of a dealer would be unfamiliar with caliber. confusion of honorablepatricke.higginbotham,united states circuit judgeforthefifthcircuit, sitting* i. impression created by the marks, including a comparison of the appearance, sound of confusion orofmisunderstandingasto thesource, sponsorship, approval, or certification of goods thought caliber had produced the show. ga. 690, 470 s.e.2d 644 (ga. 1996). 13 three-daycaliber-run promotions are the standard, but the events can span anywhere from2 (may 7, 2010) caliber urges incontestible marks like slash-it! sales event do have secondary consumers of the relevant product or service, especially the mark holder's customers, promotion advice." the slash-it! sales event mark, in trademark parlance, is abandoned and leave the state-law dilution of trademark portion of the judgment49 ryan has operated under the caliber name for nearly twenty years, starting with caliber1 id.45 all parties concede that evidence of actual confusion is the most weighty see, e.g., john h. harland co., 711 f.2d at 979 & n.22.23 4 higginbotham, circuit judge: ran a shrimping business under the same name. plaintiff sued for infringement and put on proof that 10 on its website. may 07, 2010 iii. caliber has proffered competent summary judgment evidence of actual confusion of between the products of the respective parties." the district court saw this factor41


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