Summary
The Ninth Circuit reviewed a trademark infringement dispute involving the allegedly reverse-confusing marks “Dreamwerks” and “DreamWorks.” The court held that the similarity of the marks and relatedness of the parties’ goods and services created a triable issue regarding likelihood of confusion, and it reversed and remanded the summary judgment ruling on the infringement and related state-law claims. The court affirmed summary judgment on the state-law dilution and tortious-interference claims.
Topics
Practice areas
Questions Presented
- Whether Dreamwerks presented a triable issue of fact on likelihood of confusion in its reverse-confusion trademark-infringement claim.
- Whether the relatedness of the parties' goods and services and the other Sleekcraft factors required summary judgment for SKG as a matter of law.
- Whether summary judgment should remain in effect on Dreamwerks's state-law trademark-dilution and tortious-interference claims.
Holdings
- Dreamwerks stated a claim sufficient to survive summary judgment because a reasonably prudent consumer could believe that Dreamwerks's conventions were sponsored by or affiliated with DreamWorks SKG.
- The court reversed and remanded Dreamwerks's common-law trademark-infringement and state-law unfair-competition claims because they turned on the same likelihood-of-confusion inquiry.
- The court affirmed summary judgment for SKG on Dreamwerks's trademark-dilution and tortious-interference claims.
Key quotations
“The factors should not be rigidly weighed; we do not count beans.” (¶ 7)
“A clever new trademark diversifies both the marketplace and the marketplace of ideas; a takeoff or copy of a mark, even if accidental, adds nothing but confusion.” (¶ 14)
Factual background
Dreamwerks Production Group had operated since 1984 as a small company organizing primarily Star Trek and other science-fiction conventions, and it registered the Dreamwerks mark with the USPTO in 1992. SKG Studio, formed in 1994 by Steven Spielberg, Jeffrey Katzenberg, and David Geffen, used the DreamWorks SKG mark for a major film and entertainment enterprise that also expanded into interactive entertainment, games, toys, and merchandising. Dreamwerks alleged that consumers might believe its conventions and related merchandise were sponsored by or affiliated with DreamWorks, while SKG argued that the businesses were too distinct for confusion.
Procedural history
Dreamwerks sued SKG Studio in the Central District of California, alleging trademark infringement and related state-law claims based on the similarity between the Dreamwerks and DreamWorks marks. The district court held that the businesses were sufficiently distinct that there was no likelihood of confusion as a matter of law and granted summary judgment for SKG. The Ninth Circuit reversed and remanded the trademark-infringement and state unfair-competition claims for trial, while affirming summary judgment on trademark dilution and tortious interference.
Remand instructions
Remand for further proceedings, including trial or other proceedings consistent with the opinion, on the federal trademark-infringement, common-law trademark-infringement, and state unfair-competition claims. Summary judgment remains affirmed on trademark dilution and tortious interference.