The US Court of Appeals for the 10th Circuit reversed a grant of summary judgment in favor of a company selling vaping accessories under the mark AFFLICTION, holding that the district court had erred in holding as a matter of law that there was no likelihood of confusion between the company’s goods and those of an apparel company using the same mark. Affliction Holdings, LLC v. Utah Vap or Smoke, LLC, Case No. 18-4146 (10th Cir. Aug. 27, 2019) (Lucero, J).

Affliction is a California-based apparel company that owns a registered trademark for the word mark AFFLICTION, as well as a design mark incorporating that word. It sued Utah Vap claiming that the defendant’s use of the mark VAPE AFFLICTION and associated design mark for vaping accessories and promotional apparel was likely to cause confusion with its marks and goods. The parties’ marks are below:

The district court granted summary judgment to Utah Vap despite both parties’ use of the word AFFLICTION and undeniably similar design marks. The district court held that the addition of the word VAPE in Utah Vap’s mark, which related to the industry in which Utah Vap operated, sufficiently differentiated the marks to prevent confusion. To support its finding that no reasonable juror could find a likelihood of confusion between the marks, the district court heavily relied on the fact that the parties operated in different industries: Affliction sells apparel associated with the mixed martial arts community, while Utah Vap sells vaping accessories, with less than 0.05% of its revenue coming from “promotional” apparel. In addition, according to the court, there was no evidence that Utah Vap had any bad faith intent and no evidence of actual confusion, and the parties’ products were sold and promoted in distinct channels. Indeed, the sole factor that weighed in Affliction’s favor was that its mark was strong. According to the district court, this factor was not enough to outweigh the others. The district court also found that Affliction had put forth insufficient evidence for a jury to award damages, but refused to take up the issue of whether it should permit more discovery given its ruling on the merits. Affliction appealed.

The 10th Circuit reversed. Focusing on the “high” similarity of both the word marks and the design marks—both of which were circular and incorporated the word AFFLICTION and a stylized fleur-de-lis design—the Court found that “[p]articularly in initial interest or post-sale contexts, a consumer could plausibly be confused as to a product’s origin.” The Court also emphasized the undisputed conceptual and commercial strength of Affliction’s mark. The Court found that the remaining likelihood of confusion factors did not outweigh these factors, particularly as the record indicated that the parties used the marks for at least some similar products, marketed through some similar channels.

The 10th Circuit did not take up the issue of whether Affliction’s computation of damages was sufficient, instead remanding to the district court to “consider, in its discretion, whether to permit additional discovery in light of our holding above” and to determine in the first instance injunctive relief could be available.

Practice Note: Arguing that a good is merely sold in a “promotional” capacity may be ineffective to ward off an infringement claim. If a junior user sells “promotional” t-shirts to support an otherwise-unrelated business and those t-shirts infringe another’s mark for apparel, it may be found to be infringing.