The panel reversed the district court’s summary judgment in favor of the defendants in a trademark infringement suit.
The panel held that the plaintiff adequately pleaded a cause of action for trademark infringement under a “reverse confusion” theory of likely confusion. The panel held that reverse confusion is not a separate claim that must be specifically pleaded, but instead is a theory of likely confusion that may be alleged by itself or in addition to forward confusion. Thus, when reverse confusion is compatible with the theory of infringement alleged in the complaint, a plaintiff need not specifically plead it.
The panel held that consideration of the intent factor in the likelihood of confusion analysis varies with the type of confusion being considered, and no one type of evidence is required to establish intent in trademark infringement cases under either a forward or reverse theory of confusion.
The panel held that genuine issues of material fact existed regarding whether defendants’ uses of plaintiff’s trademark “All-in-One” was protected by the fair use defense. To establish the defense, a defendant must show that its use is (1) other than as a trademark, (2) descriptive of the defendant’s goods, and (3) in good faith. The degree of customer confusion is also a factor in evaluating fair use.
As to plaintiff’s trademark “The Write Choice,” the panel held that the district court erred by applying the fair use analysis after determining that the plaintiff presented no evidence of likely confusion. The panel remanded the case for further proceedings.