The U.S. Court of Appeals for the Fifth Circuit reversed a district court’s grant of summary to defendant Xtended Beauty, Inc. (Xtended) on plaintiffs Xtreme Lashes, LLC (Xtreme) infringement claims, explaining that the district court’s focus on visual, side-by-side comparison of the features of the two marks (“Xtreme Lashes” and “Xtended Beauty”) was not the correct way to judge similarity. The Fifth Circuit also held that the district court erred by ordering the cancellation of Xtreme’s EXTEND YOUR BEAUTY mark. Xtreme Lashes, LLC v. Xtended Beauty, Inc., Case No. 08-20578 (5th Cir., July 15, 2009) (Barksdale; J., DeMoss; J., Stewart, J.).

Both Xtreme and Xtended sell eyelash extension kits used by professional cosmetologists. Xtreme had used the marks XTREME LASHES and EXTEND YOUR BEAUTY since 2005, and Xtended had been using its XTENDED BEAUTY mark since 2006. The district court held that there was no likelihood of confusion between the marks and found EXTEND YOUR BEAUTY was descriptive as a matter of law. Xtended Beauty appealed.

In evaluating the likelihood of confusion between XTREME LASHES and XTENDED BEAUTY, the Fifth Circuit applied eight non-exhaustive “digits” of confusion. The Court found that all of the digits either weighed in favor of Xtreme or were neutral. In evaluating the second digit of confusion, the similarity of the marks, the Court stated that it is improper to compare marks side-by-side in courtroom and focus on the dissimilar visual elements, rather than as the marks are viewed in actual market conditions. Given that both marks contain a large stylized “X” and appear in nearly identical contexts on the companies’ kits, a consumer could believe that XTENDED BEAUTY was a product line offered by Xtreme. The Court further noted that a finding of likelihood of confusion turns on confusion of origin, not confusion of marks. In addition, the fact that the companies sold nearly identical products to the same class of consumers and targeted their advertising to that same class of consumers weighed in favor of Xtreme. The Fifth Circuit also rebuked the district court for disregarding Xtreme’s evidence of actual confusion, stating that ignoring evidence of actual confusion as “anecdotal or irrational tramples upon the province of the trier of fact.”

With regard to the EXTEND YOUR BEAUTY mark, the Court held that the mark was entitled to trademark protection because customers had to use “imagination, thought and perception” to conclude that “extend your beauty” referred to eyelash extensions rather than another cosmetic product. The Court further stated that the commonness of the constituent terms of a compound mark do not render the entire mark descriptive. As with the XTREME LASHES mark, in terms of the infringement issue, the Court found that most of the digits of the confusion analysis weighed in Xtreme’s favor and as such there was genuine issue of fact for the jury.