On defendant’s motion for summary judgment, the Northern District of Illinois found that the differences in the parties’ marks and the weakness of plaintiff’s mark were sufficient to render confusion between defendant’s FRIDGE FRESH and ARM & HAMMER FRIDGE FRESH & Design marks and plaintiff’s mark FOREVER FRESH FOR THE FRIDGE unlikely. The court also held that defendant did not commit fraud on the USPTO in registering its marks without disclosing to the USPTO that it knew of plaintiff’s mark.
Plaintiff World Wide Sales, Inc. (“World Wide”) sells odor-neutralizing products for a variety of uses under the umbrella name FOREVER FRESH, including a product for use in refrigerators sold under the mark FOREVER FRESH FOR THE FRIDGE. Sales of the product online and through a limited number of retail stores have been minimal, with World Wide reporting losses on sales of all of its products every year that it has sold the refrigerator product. During prosecution of World Wide’s application to federally register the mark FOREVER FRESH FOR THE FRIDGE in stylized form, World Wide complied with the USPTO’s requirement to disclaim any exclusive right to the words “fresh” and “for the fridge” apart from the overall mark. In March 2004, the USPTO issued the registration but omitted the disclaimer from the face of the registration.
Defendant Church & Dwight Co. (“Church”) has produced baking soda under the ARM & HAMMER brand name for at least 80 years. Recognizing that consumers have long used baking soda to absorb odors in refrigerators, in around 2004 or 2005, Church developed a baking-soda product especially for use in refrigerators. After conducting market research and at least three trademark searches, the product was launched in 2006 in grocery stores and mass-market retailers under the name FRIDGE FRESH. In January 2006, Church filed applications to federally register the mark FRIDGE FRESH in block letters and a stylized version of FRIDGE FRESH together with the well-known ARM & HAMMER logo.
In November 2006, World Wide sent Church a letter claiming that confusion between the marks was likely and demanding that Church discontinue using its FRIDGE FRESH mark. Church promptly responded, explaining why it believed confusion was unlikely and stating that it did not intend to discontinue its use of the FRIDGE FRESH mark. World Wide never responded to the letter, and in October 2007, the USPTO issued Church’s registration for the FRIDGE FRESH mark.
In February 2008, more than a year after first objecting to Church’s use, World Wide sued Church for trademark infringement, unfair competition, and fraud on the USPTO. In response, Church claimed that it was prejudiced by World Wide’s delay in bringing suit and, therefore, the suit was barred by laches. Church also asserted a counterclaim contending that World Wide’s registration for FOREVER FRESH FOR THE FRIDGE was erroneously issued without the intended disclaimer of “fresh” and “for the fridge.” Church moved for summary judgment on World Wide’s claims and its affirmative defense of laches.
The court noted that, to prevail on its claims of trademark infringement and unfair competition, World Wide must establish that its mark is protectable and that Church’s use of its mark is likely to cause confusion among consumers as to the source or sponsorship of the goods. World Wide relied on a theory of “reverse confusion,” which occurs when a large junior user saturates the market with a trademark that is confusingly similar to a smaller senior user, the potential result being the mistaken assumption that the senior user is the infringer. In analyzing World Wide’s reverse-confusion arguments, the court considered the same likelihood-of-confusion factors applicable in forward-confusion cases, namely: (1) the similarity of the marks; (2) the similarity of the goods; (3) the area and manner of concurrent use; (4) the degree of care likely exercised by consumers; (5) the strength of plaintiff’s mark; (6) any actual confusion; and (7) the intent of the defendant.
With Church conceding that World Wide’s mark is protectable, the court applied the relevant likelihood-of-confusion factors and found for Church. Regarding the similarity of the marks, the court noted that the appearance and placement of the common wording in the marks is sufficiently distinct that consumers would not associate one with the other. The court engaged in a detailed analysis of the way the marks appear on the parties’ respective packaging and explained that the appearance of the products is substantially different. The court also noted that Church’s product is packaged in a way that is consistent with its branding for other Arm & Hammer products, including its use of the yellow-orange color and the familiar Arm & Hammer logo, and focused on the appearance of Arm & Hammer’s well-known, famous house mark.
The court decided that Church’s intent was not a factor in this case because where “a large junior user saturates the market with a trademark similar or identical to that of a smaller, senior user . . . the junior user does not seek to profit from the good will associated with the senior user’s mark.”
As for the other likelihood-of-confusion factors, the court concluded that the products serve a similar purpose but are presented very differently (factor 2); the distribution and sales for the products diverge widely (factor 3); even a hurried, casual consumer would likely not mistake the products for one another given the differences in their appearances (factor 4); World Wide’s mark is weak due to its inherently descriptive nature, its small advertising budget, and its multiyear losses (factor 5); and there was no evidence of any actual confusion (factor 6). Balancing these factors, the court concluded that no reasonable fact-finder could conclude that there is a likelihood of confusion as to the source of the parties’ respective products, and that summary judgment in Church’s favor was therefore appropriate.
The court also held in Church’s favor on World Wide’s fraud claim. Noting that a fraud holding requires clear and convincing evidence of a deliberate attempt to deceive the USPTO, the court found that Church was not obligated to bring World Wide’s registration to the USPTO’s attention. Rather, it was reasonable for Church to believe that the terms common to both marks—“fridge” and “fresh”—were descriptive and unprotectable, and that confusion between the marks was therefore unlikely.
In view of the grant of summary judgment on the infringement, unfair-competition, and fraud claims, the court did not address Church’s claim that World Wide’s claims were barred by laches.
This case serves as a reminder of the limited scope of protection afforded to descriptive or otherwise weak marks. It also illustrates that, although courts will apply the same likelihood-of-confusion factors in a reverse-confusion case as in a forward-confusion case, some of the factors may implicate different considerations and levels of importance. For example, the court here found that in a typical reverse-confusion case, the defendant’s intent is irrelevant. It also found that the appearance of the defendant’s famous house mark on its product—a situation that may often arise in reverse-confusion cases where the junior user is the larger, more well-known company—lessened the likelihood of confusion. This is in contrast to several circuit court decisions that have found that a junior user’s use of its well-known house mark may actually aggravate, rather than mitigate, the likelihood of confusion in a reverse-confusion case, under the theory that “[t]he junior user’s use of a well-known national house mark along with the smaller senior user’s mark could strengthen a viewer’s link of the mark with the senior user.” 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:10 (4th ed. 2009).