he U.S. Court of Appeals for the Sixth Circuit recently affirmed a lower-court decision that Viacom’s use of the trademark “BUBBLE GUPPIES” for promotional merchandise for its show of the same name did not infringe on a children’s clothing brand that had registered the trademark “GUPPIES,” primarily because the “GUPPIES” mark – which had been used for many years before Viacom’s use– was relatively unknown to the public.
According to the lawsuit, Plaintiffs Debbie and Dean Rohn have operated Guppie Kids, Inc., a children’s apparel brand, since 1990. The couple registered two trademarks for apparel-related items: one for the word “GUPPIE,” an acronym for “Growing Up Playing Pursuing Individual Excellence,” and the other for a logo: the word “GUPPIE,” in which a fish in a necktie forms the letter G.
Since starting their business, the Rohns sold, at most, $12,000 in “GUPPIE” apparel. The majority of their sales occurred early on, with the Rohns only selling about $2,000 of their apparel since 2005, and mostly to friends and family. The Rohns’ marketing of “GUPPIE” products was limited to their website, a print advertisement in the early 1990’s, and their display and/or donation of “GUPPIE” products at various trade shows, charities, and other local events in or around Cadillac, Michigan.
Defendant Viacom International, Inc. owns, among other entities, Nickelodeon, a television network aimed primarily at children and adolescents, and Nick, Jr., a division aimed at children aged six years and younger. Between January 2011 and October 2016, Nick, Jr. aired “Bubble Guppies,” a children’s program about the underwater adventures of a group of merperson preschoolers.
In July of 2011, Viacom obtained a trademark registration for “BUBBLE GUPPIES” for its television series and related services. Viacom licensed its intellectual property to third-party manufacturers to incorporate in their creation of “Bubble Guppies”-branded apparel, which is sold at large retail outlets like Target and Sears.
The Rohns sued Viacom and various retailers for trademark infringement, false designation of origin, and unfair competition in the United States District Court for the Western District of Michigan, alleging that potential customers were likely to confuse “Guppie Kid” and “Bubble Guppies” apparel.
On cross-motions for summary judgment, the district court, applying an eight-factor “likelihood of confusion” test, concluded that the relevant consumers were not likely to believe that the guppie-branded products or services offered by the parties were affiliated in some way.
On appeal, the Sixth Circuit agreed, and focused the majority of its brief decision on the district court’s analysis regarding the “strength” of the Rohns’ “GUPPIES” mark; or, in this case, the “weakness” of the mark. The district court had agreed with Viacom that even where a mark is “incontestable” (by virtue of continuous use for five consecutive years following registration and continued use in commerce), its presumed strength would depend upon its recognition among members of the general public. Because the Rohns’ “GUPPIES” mark was not demonstrated to be well-known, and even though the mark was incontestable, this factor weighed against a finding that confusion was likely.
In affirming the district court’s decision, the Sixth Circuit agreed that the weakness of the “GUPPIES” mark foreclosed any of the Rohns’ asserted theories of liability, emphasizing that the value of the Rohns’ trademarks “is not only weak but practically nonexistent,” and few consumers were likely to know about the “GUPPIES” brand in the first place because of its limited sales and marketing, and therefore were not likely to confuse the Rohns’ brand with Viacom’s. The Sixth Circuit, like the district court below, rejected the Rohns’ argument that the fact that the mark was “incontestable” constituted conclusive proof of strength, and denied any claim that other “likelihood of confusion” factors could tip the scale without sufficient proof that consumers ever knew of the brand to begin with.
The Sixth’s Circuit’s decision solidifies the importance of the “strength of the mark” factor in the “likelihood of confusion” analysis. According to this precedent, the owner of a senior “incontestable” mark with negligible public recognition may be wholly unable to enforce its trademark rights against a junior mark, even against a similar name for similar goods. This decision illustrates how heavily a court might weigh the “strength” factor, to the point of being decisive, even in the context of a multifactor test. Undoubtedly, trademark holders will test the limits of enforcing their rights in weaker marks, and this decision could have the unintended consequence of leaving smaller businesses vulnerable to larger corporations with junior marks. At the same time, junior users – including companies both large and small – may be freer to adopt marks that suit their businesses with less apprehension of claims by senior mark owners who have sat on their rights or otherwise failed to successfully market their goods or services.