The intro gets cute: “As difficult as it may be to imagineany unpleasantness associated with a trip to the dentist, this case reminds usthat discord and painful friction may invade even society's most cheerful andunsullied icon of good times and happy memories: the dentist’s chair.” Butseriously, folks: the parties provide crowns to dentists. In 2009, Glidewell began selling anall-zirconia crown using the mark BruxZir, which was federally registered in2010. In 2011, Keating began selling itsown all-zirconia crown using the mark KDZ Bruxer and an associated logo. When I first read this case, I thought thecourt was making the case unnecessarily complicated, though on reflection I cansee where a district court in the 9th Circuit would haveunderstandable apprehension about what the heck might happen on appeal giventhe circuit’s incoherence in trademark cases.
Anyway, important facts to know: (1) “bruxism” is awell-known term of art in the dental community describing a condition in whichthe patient grinds or gnashes her teeth; (2) “bruxers” are sufferers ofbruxism; and (3) “to brux” means “to grind one’s teeth.” A bruxer with a grounddown or cracked tooth may need a crown, and an all-zirconia crown “isparticularly suited for this use, since zirconia is strong enough to withstandthe wear-and-tear associated with inveterate bruxing.”
Glidewell sued for trademark infringement/false designationof origin/unfair competition, except those all three have the same standards,so we will speak only of trademark. Keating counterclaimed for unfaircompetition/trademark misuse/cancellation.
Early in the case, Keating moved for summary judgment, amotion that failed at that time because Keating didn’t meet its burden, but thecourt commented that summary judgment for Keating could still be available;Keating needed to cite relevant law—“cases analyzing an infringement claimwhere plaintiff alleges that its composite mark is infringed by defendant'scomposite mark and the marks share only a portion of letters”—to get summaryjudgment. The court commented that it would give Keating a second chance because,as a “straight-forward trademark infringement case, … it is highly unlikelythat there will be any genuine issues of material fact,” as long as Keatingcould cite analogous cases. (I’m still not clear why case citations would berequired if the Sleekcraft factors otherwisewould dictate summary judgment.)
Marks are considered as a whole, as they appear in themarketplace.
Keating argued that BruxZir was generic or descriptive,while Glidewell argued that it was suggestive. The court found BruxZir suggestive
because it suggests, but fallsshort of explicitly describing, Plaintiff's zirconia crown product. It is azirconia product made for bruxers, or tooth-grinders, but “a mental leap isrequired” to understand that the product is a dental crown. The mark does notcontain any unequivocally descriptive term, like “crown” or “cap,” but rathercombines the prefix “brux-”, from “bruxer” or “bruxism,” with the prefix “zir-”,from “zirconia.”
Argh! Invited error,yes, given the many things 9th Circuit courts have said over theyears, but the rule is not that descriptiveness is determined by seeing whetheryou can guess the product just by knowing the mark. Compare “Red Apple” for lipstick. Any number of products could be apple red,but the term is still descriptive; the question is whether any thought isrequired to connect the mark and the goods/services knowing the latter. (See howeasily the rule applied by the court can be abused with the following:“American” for airlines should be suggestive, since you can’t guess that theproduct is an airline just from the term “American,” whereas “AmericanAirlines” with “Airlines” disclaimed would be descriptive.) Still, this isn’t as bad as some othersuggestiveness holdings, given the pun/double meaning the court noted in afootnote, since BruxZir can be pronounced like “bruxer.”
The 9th Circuit takes away, and the 9thCircuit gives: suggestive marks are “presumptively weak,” unlike arbitrary orfanciful marks. Thus, Glidewell’s markwas weak, “since it is a composite that includes two commonly-used termsdescribing, respectively, the general malady the product is intended to treatand the material used to manufacture it.” It could only be protected against a mark that was quite similar forclosely related goods/services.
As to similarity, the court determined that Keating’s markwas not “quite similar” but rather “substantially different,” considered intheir entirety. The marks shared “Brux,”but “KDZ” was much bigger in the logo than “Bruxer,” and the whole thing wassurrounded by an oval. BruxZir waspresented very differently: no oval, with the capitalized Z overlapping theBrux. As logos, there was almost novisual similarity. While logos aren’talways used, the marks look substantially different even without graphics andfonts. The all-caps three-letter KDZ isentirely absent from BruxZir, and Zir is different “xer.”
As for sound, while “bruxer” and “BruxZir” would bepronounced the same or similarly, again Keating’s mark begins with threeletters with a very distinct sound.
And on meaning, KDZ again affected the meaning of the whole(standing for Keating Dental Zirconia). “The fact that the commonly-used dentalterm ‘brux’ is the predominant similarity between the two marks weighs againsta finding of a likelihood of similarity. When commonality comes from a descriptiveterm, that decreases the likelihood of confusion.
After that, it was all downhill. Degree of care was likely to be high givendentists’ expertise and status as repeat purchasers rather than casual buyers;the prices of the products were also relatively high and distinctive (BruxZir$99, KDZ Bruxer $139). “No matterwhether the dentists themselves, their patients, or their patients' insurancemight be covering the cost, the significant price differential and significantcost further distinguishes the products and weighs against a likelihood ofconfusion.” While it’s true that dentists aren’t immune from confusion in theabstract/aren’t necessarily experts in choosing between two brands, here, thesimilarity between the marks comes from “brux,” a term with which dentists arequite familiar. A reasonably prudentdentist “can be expected to exhibit a relatively high degree of care andknowledge when purchasing dental crowns containing terms related to theparticular maladies that they are designed to treat.”
Glidewell argued that deceptive intent could be inferredfrom Keating’s choice of its mark with knowledge of Glidewell’s. But since the marks weren’t similar, therewas no reason to infer bad faith. Theonly direct evidence was Keating’s testimony that it began using the KDZ prefixin 2006, expanded it to the KDZ Bruxer because an all-zirconia crown would beappropriate for “bruxers,” and had counsel conduct a trademark search beforesettling on the mark. Thus, even ifKeating knew about BruxZir, that failed to show an intent to deceive thepublic.
Glidewell argued that there was evidence of actualconfusion, but the court agreed that most of the proffered evidence didn’t showconfusion, and any remaining confusion was de minimis. There was no survey, though Glidewell had theresources to conduct one—it has an annual marketing budget of $8.2 million anda substantial proportion of that goes to BruxZir—justifying an adverseinference. Instead, Glidewell submitted evidence of an incident in which anemployee “randomly called” a dentist’s office to offer a discount on BruxZir,and “was asked whether the discount could apply to a previous order that hadactually been submitted to Defendant for a KDZ Bruxer Crown.” But thisconfusion appears to stem from the fact that the mark might sound identicalover the phone, and evidence that a customer asked about “her past purchase ofthe phonetic equivalent of a ‘bruxer crown’” didn’t show actual confusionbetween the marks. Even assuming thatthe dentist was confused at the moment, that didn’t show likely confusion amongthe buying public. General confusion isnot targeted by the Lanham Act, only confusion that affects purchasingdecisions; asking questions about relationships between the parties is tooambiguous to prove confusion.
The other purported evidence of actual confusion came from83 prescription forms from 57 different dentists submitted to Keating thatcontain “BruxZir” or “Bruxzir” or “bruxzir” even though they were ordering KDZBruxer crowns. These forms might supportan inference of confusion, were it not for the further evidence submitted byKeating: declarations from 13 of the dentists stating that they weren’tconfused and that they intended to order KDZ products, but that they used“bruxzir” or “BruxZir” generically to refer to an all-zirconia crown. (Ooh, that’s not good for Glidewell, thoughthe court lets Glidewell slide.) Glidewell lacked declarations stating that any dentist was actuallyconfused.
Glidewell argued that the receipts were still evidence ofinitial interest confusion, but Keating showed that the consumers who filledout the receipts were neither confused about the marks nor originally seekingto purchase Glidewell’s product; they were repeat consumers of Keatingproducts.
Thus, though the proximity of the goods/marketing channelsfavored confusion, that didn’t matter. Taken together, the factors weighedstrongly against a finding of confusion, especially given the dissimilarity ofthe marks. “Obviously, the factors [ofproximity/marketing channels] would weigh in favor of a finding of likelihoodof confusion for all similar products that compete for a similar type ofconsumer, and yet all competing products do not involve instances of trademarkinfringement.” No reasonable jury couldfind in favor of Glidewell.
The court, however, declined to find that a cause of actionfor trademark misuse existed, even though Keating argued that Glidewell hadbeen trying to destroy its competition in the market for all-zirconia crowns “byusing its trademark, its deep pockets and its legal resources to pressuresmaller competitors either to abandon using descriptive terms related to‘bruxers’ and ‘bruxism’ or to buy Glidewell materials and become a licensee.”Antitrust-related remedies would be available.
Glidewell’s UCL claim also failed. It argued that it had suffered economicinjury because of a sales decline after the lawsuit, furthered by scaled-backadvertising done to limit Glidewell’s potential liability and by lost salesfrom dentists who learned about the lawsuit. But all these economic harmsweren’t cognizable because of the litigation privilege and the Noerr-Pennington doctrine. The only exception was for sham lawsuits, andthis wasn’t a sham because Glidewell had a federally registered mark andKeating’s mark was “arguably” similar. Keating couldn’t show that “no reasonable litigant” could expect successon the merits. (This is where thegeneric/phonetic qualities of the mark could’ve played a bigger role.)
The court characterized Keating’s cancellation counterclaim“a lively display of pique.” But Keatingcouldn’t overcome the presumption of validity because the court found that themark was, and always has been, suggestive and inherently distinctive. (So what of those affidavits from dentiststhat they considered the term generic?)
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