United States District Court, N.D. Georgia, Atlanta Division
PLAYNATION PLAY SYSTEMS, INC. d/b/a GORILLA PLAYSETS, Plaintiff,
VELEX CORPORATION d/b/a GORILLA GYM, Defendant.
RICHARD W. STORY, District Judge.
This case comes before the Court on Plaintiff's Motion for Summary Judgment , Defendant's Motion for Summary Judgment , and Defendants' Motion for Leave to Sur-Reply .
Plaintiff PlayNation Play Systems, Inc. manufactures and sells children's outdoor playground equipment using the trademark "Gorilla Playsets." (Pl.'s Statement of Undisputed Facts in Supp. of Pl.'s Mot. for Partial Summ. J. ("Pl.'s SOMF"), Dkt. [36-2] ¶ 3.) Defendant Velex Corporation sells doorway pull-up bars for all ages, as well as attachable accessories for children, including swings, trapezes, and rings, using the trademark "Gorilla Gym." (Id. ¶¶ 25, 30-32.) Plaintiff brings this action, alleging that Defendant has infringed on Plaintiff's registered trademark by "using the nearly identical mark for nearly identical goods, which is likely to cause confusion, " and requesting a permanent injunction against Defendant. (Pl.'s Br. in Supp. of Mot. for Partial Summ. J. ("Pl.'s MSJ Br."), Dkt. [36-1] at 2, 23.) Plaintiff now moves for partial summary judgment . Defendant cross-moves for summary judgment on the trademark infringement claim. (Def.'s Br. in Opp'n to Pl.'s MSJ & in Supp. of Def.'s Mot. for Summ. J. ("Def.'s MSJ Br."), Dkt. .)
I. Legal Standard
Federal Rule of Civil Procedure 56 requires that summary judgment be granted "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." FED. R. CIV. P. 56(a). "The moving party bears the initial responsibility of informing the... court of the basis for its motion, and identifying those portions of the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, which it believes demonstrate the absence of a genuine issue of material fact.'" Hickson Corp. v. N. Crossarm Co., 357 F.3d 1256, 1259 (11th Cir. 2004) (quoting Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986) (internal quotations omitted)). Where the moving party makes such a showing, the burden shifts to the non-movant, who must go beyond the pleadings and present affirmative evidence to show that a genuine issue of material fact does exist. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 257 (1986). The applicable substantive law identifies which facts are material. Id. at 248. A fact is not material if a dispute over that fact will not affect the outcome of the suit under the governing law. Id . An issue is genuine when the evidence is such that a reasonable jury could return a verdict for the non-moving party. Id. at 249-50.
In resolving a motion for summary judgment, the court must view all evidence and draw all reasonable inferences in the light most favorable to the non-moving party. Patton v. Triad Guar. Ins. Corp., 277 F.3d 1294, 1296 (11th Cir. 2002). But, the court is bound only to draw those inferences that are reasonable. "Where the record taken as a whole could not lead a rational trier of fact to find for the non-moving party, there is no genuine issue for trial." Allen v. Tyson Foods, Inc., 121 F.3d 642, 646 (11th Cir. 1997) (quoting Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986)). "If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Anderson, 477 U.S. at 249-50 (internal citations omitted); see also Matsushita, 475 U.S. at 586 (once the moving party has met its burden under Rule 56(a), the nonmoving party "must do more than simply show there is some metaphysical doubt as to the material facts").
Liability for infringement under the Lanham Act requires proof that Defendant "use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark" in a way that "is likely to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1114(1). The Lanham Act protects the public from confusion in the marketplace by prohibiting the unauthorized use of registered trademarks or service marks. Id . "In order to prevail on a trademark infringement claim based on a federally registered mark, the registrant must show that (1) its mark was used in commerce by the defendant without the registrant's consent and (2) the unauthorized use was likely to cause confusion, or to cause mistake or to deceive." Optimum Techs., Inc. v. Henkel Consumer Adhesives, Inc., 496 F.3d 1231, 1241 (11th Cir. 2007) (internal citation omitted).
The parties do not dispute that Plaintiff's mark is valid and has priority over Defendant's mark. (Pl.'s SOMF, Dkt. [36-2] ¶ 8.) "Thus we must address: (1) whether [Plaintiff] presented sufficient evidence of an unauthorized "use" of the mark by [Defendant] at the retail level; and (2) if so, whether the evidence was sufficient to create a genuine issue of material fact as to a likelihood of confusion at the retail level." Optimum Techs., 496 F.3d at 1241-42.
When evaluating whether a likelihood of confusion exists in a trademark infringement action, the Eleventh Circuit has outlined factors for consideration:
(1) the strength of the plaintiff's mark; (2) the similarity between the plaintiff's mark and the allegedly infringing mark; (3) the similarity between the products and services offered by the plaintiff and defendant; (4) the similarity of the sales methods; (5) the similarity of advertising methods; (6) the defendant's intent, e.g., does the defendant hope to gain competitive advantage by associating his product with the plaintiff's established mark; and (7) actual confusion.
N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1220 (11th Cir. 2008). Of these factors, the type, or strength, of the mark and evidence of actual confusion are the most important. Frehlin Enters., Inc. v. ...