Addressing the issue of likelihood of confusion between “Sensient Flavors” and “SensoryEffects Flavor Company,” the U.S. Court of Appeals for the Eighth Circuit upheld the grant of summary judgment in favor of SensoryEffects Flavor, holding that no reasonable jury could find a likelihood of confusion between the marks. Sensient Techs. Corp. et al. v. Sensory Effects Flavor Co. et al., Case No. 09-2686 (8th Cir., July 21, 2010) (Bye, J.) (Colloton, J., concurring-in-part, dissenting-in-part).

Both companies sell flavors through similar trade channels. The defendants’ president had a past affiliation with a sister company of plaintiff, Sensient Flavors. In the district court, Sensient Flavors alleged federal trademark infringement and sought temporary relief against consumer confusion. After Sensient Flavors obtained a temporary restraining order, SensoryFlavors—which had a federal trademark registration for SensoryEffects—changed its name to SensoryEffects Flavor Company. Sensient Flavors amended its compliant to add SensoryEffects Flavor Company. After trial, the district court granted summary judgment in favor of defendant, SensoryEffects Flavor Company, on all counts. Sensient Flavors appealed.

The first issue on appeal was whether Sensient Flavors had actually used its mark in commerce to qualify for relief under the Lanham Act. Sensient Flavors argued that the SensoryFlavors mark was used in commerce because the mark was incorporated into customer presentations, a press release, an announcement and a website. The Eighth Circuit rejected this proposition and affirmed summary judgment based on a lack of evidence of any sale or transport of goods bearing the SensoryFlavors mark.

Sensient Flavors also argued that the company name SensoryEffects Flavor Company was likely to cause confusion with the company name Sensient Flavors. The Eighth Circuit rejected this proposition after application of a six-factor test. More particularly, the court found two (of the six) factors weighed in favor of Sensient Flavors: the Sensient Flavors mark was strong, as indicated by the district court; the degree of competition between the products was high, as conceded by the parties. However, the court found that the other four factors weighed in favor of SensoryEffects Flavor Company: the marks were dissimilar, based on the “sight, sound, and meaning” test and the sophistication of customers; SensoryEffects Flavor Company did not intend to pass of its goods as Sensient Flavors goods, because the record did not support intent to confuse customers; Sensient Flavors failed to produce any evidence of actual confusion, because the arguably inadmissible incidents related only to use of SensoryFlavors, and not to use of SensoryEffects Flavor Company; and the likelihood of confusion was diminished based on the conditions of purchase and the degree of care expected of customers because the parties conceded that they were competitors with sophisticated customers. Weighing the factors and uncontested facts, the court concluded that summary judgment was proper because “no reasonable jury could find a likelihood of confusion.” The Eighth Circuit discounted, as not relevant, whether the defendant knew of the plaintiff’s name at the time it selected its own; a factor that seemed to heavily influence the district court.

Judge Colloton dissented, arguing that because a reasonable jury could find a likelihood of confusion, summary judgment was improper. More particularly, Judge Colloton noted that intent to deceive is proven by circumstantial evidence, which was presented and which could have lead to a reasonable jury to find in favor of Sensient Flavors on that factor; and a reasonable jury might have found initial interest confusion based on phone marketing of the products and “the aural similarity of SENSient Flavors and SENSoryEffects Flavor (with ‘Company’ as an immaterial add-on).”