• Where Two Competing Products Are Very Similar, Trademark Infringement Can Be Found Even If Products' Marks Are Not Closely Similar
  • August 27, 2004 | Author: Laura M. Franco
  • Law Firm: Manatt, Phelps & Phillips, LLP - Palo Alto Office
  • Teaching that two trademarks do not have to look or sound precisely alike to be confusingly similar for infringement purposes, the U.S. Court of Appeals for the Federal Circuit recently enjoined a company from using the trademark CROSSBOW in connection with home exercise equipment, based on that mark's similarity to the rival BOWFLEX mark, also used in connection with home exercise equipment. The Nautilus Group, Inc. v. ICON Health and Fitness, Inc.

    The Nautilus Group ("Nautilus") and ICON Health and Fitness ("ICON") are direct competitors in the market for high-tech, high-performance home exercise equipment. Both companies make resistance training systems employing bendable rods to provide the resistance. Nautilus's machine, using vertically arranged rods, has been sold under the BOWFLEX trademark since 1984. Nautilus registered the BOWFLEX mark with the U.S. Patent and Trademark Office in 1986. Since then, Nautilus has expended hundreds of millions of dollars in promotional efforts for the "Bowflex" machine.

    In 2002, ICON introduced a similar, competing machine that employs horizontally arranged rods. ICON chose the trademark CROSSBOW for its machine, due to the machine's resemblance to a medieval crossbow weapon. ICON was marketing its "Crossbow" machine through many of the same advertising channels as are used for the Bowflex machine, including infomercials and the Internet.

    After the debut of the Crossbow machine, Nautilus filed a lawsuit for patent infringement against ICON in federal trial court in Seattle, WA. During the pendency of that action, Nautilus moved for a preliminary injunction to suspend ICON's use of the CROSSBOW trademark, on the grounds that the mark was confusingly similar to the BOWFLEX mark.

    The trial court granted Nautilus's motion for a preliminary injunction, finding that while the trademarks BOWFLEX and CROSSBOW are only "somewhat similar" and not "necessarily confusing" inherently, the Bowflex and Crossbow products are virtually interchangeable. Believing that the close similarity of the products was likely to create consumer confusion, the trial court reasoned that less similarity between the marks was necessary for an injunction to be appropriate.

    On ICON's appeal, the Federal Circuit upheld the preliminary injunction. In particular, the Federal Circuit affirmed the principle that where two competing products are very similar, the trial court is free to accept a lesser showing of similarity between the trademarks for those products in finding infringement.

    The Federal Circuit explained that the two factors of (1) similarity of the marks and (2) relatedness of the goods are often interdependent. Where consumers are likely to encounter related goods (of different manufacturers) within the same market, less similarity between the marks for those goods will be required for consumer confusion to be likely. On the other hand, even if two marks are identical, if the marks are encountered in different contexts, consumers can often easily distinguish between the products bearing the similar marks. Because the Bowflex and Crossbow machines, which are such similar products, are promoted through similar channels, the faint similarity of the marks was sufficient to support a finding of a likelihood of confusion.

    The ICON decision is an important reminder that when comparing the trademarks of closely related goods, courts will allow a lower level of similarity between the marks to support a finding of likelihood of confusion.