Frehling Enterprises, Inc. v. International Select Group, Inc.
192 F.3d 1330 (1999)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
To determine likelihood of confusion in a trademark infringement claim, courts analyze and balance seven factors, with the strength of the senior mark and evidence of actual confusion being the most important.
Facts:
- In 1975, Frehling Enterprises, Inc. ('Frehling') began using the mark 'OGGETTI' ('objects' in Italian) for its business selling high-end decorative accessories and furniture.
- Frehling registered 'OGGETTI' as a service mark in 1985, and the mark later became incontestable. Frehling's products are sold in high-end department stores like Macy’s and Bloomingdale’s.
- In 1989, International Select Group, Inc. ('ISG') began using the mark 'BELL' OGGETTI' ('beautiful objects' in Italian) for its line of ready-to-assemble furniture designed to house electronic equipment.
- ISG sells its furniture to mass-market retail outlets like Circuit City and HiFi Buys.
- In 1994, ISG obtained the toll-free telephone number '1-800-OGGETTI' and printed it on its product instruction sheets.
- In 1995, Frehling's president saw an advertisement for BELL' OGGETTI, contacted ISG, and sent a demand letter asking ISG to cease using the mark.
- ISG refused to cancel its registration or stop using the mark but did stop promoting the '1-800-OGGETTI' phone number, though it retained the number for use.
Procedural Posture:
- Frehling Enterprises, Inc. (Plaintiff) filed suit against International Select Group, Inc. (Defendant) in federal district court for service mark infringement under the Lanham Act and related state-law claims.
- The district court conducted a two-day bench trial.
- The district court entered judgment in favor of the Defendant, ISG, finding no likelihood of consumer confusion between the two marks.
- Plaintiff Frehling Enterprises, Inc. appealed the district court's judgment to the U.S. Court of Appeals for the Eleventh Circuit.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does International Select Group, Inc.’s use of the 'BELL' OGGETTI' mark create a likelihood of consumer confusion with Frehling Enterprises, Inc.’s senior registered 'OGGETTI' mark, thus constituting service mark infringement under the Lanham Act?
Opinions:
Majority - Anderson, Chief Judge
Yes, ISG's use of the 'BELL' OGGETTI' mark creates a likelihood of consumer confusion with Frehling's 'OGGETTI' mark. The district court’s conclusion to the contrary was clearly erroneous because it improperly analyzed and weighed the seven factors for determining likelihood of confusion. The court found that the factors for strength of the mark, similarity of the marks, and defendant's intent weighed strongly in Frehling's favor. 'OGGETTI' is a strong, suggestive, and incontestable mark with no third-party use. The marks are strikingly similar in sight, sound, and meaning, as 'BELL' OGGETTI' wholly incorporates Frehling's mark. ISG demonstrated 'intentional blindness' by failing to conduct a trademark search and later adopting the '1-800-OGGETTI' phone number despite being aware of Frehling’s mark. While other factors like similarity of goods and trade channels were closer, the district court gave them undue weight in ISG's favor, and the overall balance demonstrates a clear likelihood of consumer confusion.
Analysis:
This decision reinforces the Eleventh Circuit's seven-factor test for trademark infringement and demonstrates an appellate court's willingness to re-weigh the factors when a district court's analysis is flawed. It clarifies that mark strength is enhanced by incontestability and lack of third-party use. The ruling establishes that 'intentional blindness'—proceeding with a mark despite warnings of potential conflict—can be powerful evidence of improper intent. Finally, the case cautions against overly rigid market segmentation, recognizing that customer bases and advertising channels often overlap in ways that increase the likelihood of confusion.
Unlock the full brief for Frehling Enterprises, Inc. v. International Select Group, Inc.