Plaintiffs were four entities, started by the same person and all having names incorporating the word “Rearden.” One company “provide[d] the resources and support for the ground-up development of new ventures.” Two of the other Plaintiffs were involved in movie production, and the fourth company was a “property management company” that rented real estate to the other three Plaintiffs. Defendant Rearden Commerce, Inc. was a “business concierge company.”
Plaintiffs owned a federal registration and multiple federal trademark applications for marks that included “Rearden,” as well as the domain names
Plaintiffs sued for false designation of origin under the Lanham Act, cybersquatting under the Anticybersquatting Consumer Protection Act (the “ACPA”), and common law trademark infringement, among other things. The parties filed cross-motions for summary judgment, and the district court granted Defendant’s motion and denied Plaintiffs’ motion. The district court held that a reasonable fact finder could not find in favor of Plaintiffs on their trademark-related claims or their cybersquatting claim. Plaintiffs appealed, and the Ninth Circuit vacated and remanded.
First, the Ninth Circuit held there was sufficient evidence of use in commerce for Plaintiffs’ trademark claims to survive a motion for summary judgment. The Circuit then held that Plaintiffs showed a genuine issue of material fact with respect to the similarity and strength of the marks, the proximity of the goods, and actual confusion. Plaintiffs presented evidence of non-consumer confusion, and the Circuit explained that evidence of non-consumer confusion was relevant “to the ‘likelihood of confusion’ inquiry in three specific and overlapping circumstances—namely where there is confusion on the part of: (1) potential consumers; (2) non-consumers whose confusion could create an inference that consumers are likely to be confused; and (3) non-consumers whose confusion could influence consumers.” Overall, the Ninth Circuit concluded that there were genuine issues of material fact with respect to both Plaintiffs’ use in commerce and the likelihood of consumer confusion.
With respect to Plaintiffs’ ACPA claims, the Ninth Circuit held that the district court erred in concluding that there was no genuine issue of material fact as to Defendant’s good or bad faith. For example, there was evidence on the record that Defendant “previously offered to maintain the non-directing nature of the domain names only on the condition that [Plaintiffs] abandon several trademark applications.” In essence, Plaintiffs presented enough evidence for their ACPA claims to survive a motion for summary judgment.