George & Co. LLC v. Imagination Entertainment Ltd.
91 U.S.P.Q. 2d (BNA) 1786, 575 F.3d 383, 2009 U.S. App. LEXIS 16415 (2009)
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Rule of Law:
A trademark infringement claim will not succeed where the plaintiff's mark is commercially weak, the defendant's allegedly infringing mark is dissimilar in sight and sound, there is no evidence of predatory intent, and the evidence of actual consumer confusion is de minimis, even if the products and marketing channels are nearly identical. Furthermore, a party abandons a trademark when it ceases to use the mark as a source identifier, and subsequent descriptive use of the words within a tagline does not constitute continued use of the mark.
Facts:
- George and Company, LLC (George) markets and sells a generic dice game.
- Beginning in 1983, George sold the game under the names 'LCR' and 'LEFT CENTER RIGHT,' with the name hand-written on foil wrap.
- In 1992, George began marketing the game exclusively under the name 'LCR' and obtained a federal trademark registration for the 'LCR' mark, but never for 'LEFT CENTER RIGHT'.
- George's packaging for its 'LCR' game prominently features the 'LCR' mark and includes the tagline, 'Left, Center or Right — Don’t Lose Your Chips'.
- In 2006, Imagination Entertainment Limited (Imagination) began marketing its own version of the same dice game under the name 'LEFT CENTER RIGHT'.
- Imagination's packaging is bright red and visually distinct from George's predominantly white or blue packaging.
- In the four years leading up to the lawsuit, George sold an average of over 500,000 'LCR' games per year.
- During the period of competition, only four instances of potential consumer confusion between the two products were identified.
Procedural Posture:
- George and Company, LLC sued Imagination Entertainment Limited and its affiliates in federal district court for trademark infringement.
- Imagination moved for summary judgment.
- The district court granted summary judgment in favor of Imagination, ruling that George had no protected rights in 'LEFT CENTER RIGHT' and that there was no likelihood of confusion between Imagination's product and George's 'LCR' trademark.
- George, as the appellant, appealed the district court's grant of summary judgment to the United States Court of Appeals for the Fourth Circuit.
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Issue:
Does a competitor's use of the descriptive phrase 'LEFT CENTER RIGHT' for a dice game create a likelihood of confusion with a registered trademark 'LCR' for a nearly identical game, where the 'LCR' mark has low commercial strength and there is minimal evidence of actual confusion?
Opinions:
Majority - Hamilton, Senior Circuit Judge
No, a competitor's use of the descriptive phrase 'LEFT CENTER RIGHT' does not create a likelihood of confusion with the registered trademark 'LCR' under these circumstances. To establish trademark infringement, the plaintiff must prove ownership of a valid mark and that the defendant's use creates a likelihood of confusion. The court applied the nine-factor likelihood of confusion test from Pizzeria Uno. While the goods, facilities, and advertising were similar (factors 3, 4, 5), these were outweighed by other, more significant factors. The court found that George's 'LCR' mark, while conceptually suggestive, was commercially weak and had not acquired secondary meaning (factor 1). The marks 'LCR' and 'LEFT CENTER RIGHT' were dissimilar in sight and sound, and the packaging was distinct (factor 2). The court found no evidence of predatory intent by Imagination, which chose the name because it describes the game (factor 6). Most importantly, the evidence of actual confusion—four instances over millions of sales—was de minimis and weighed heavily against George (factor 7). The court concluded that the combination of a weak mark, dissimilar presentation, lack of intent, and negligible actual confusion meant there was no likelihood of confusion as a matter of law. The court also held that George had abandoned any rights to the 'LEFT CENTER RIGHT' mark through over a decade of non-use, as its subsequent use of the words in a tagline was merely descriptive and not use as a trademark.
Analysis:
This case illustrates the critical importance of commercial strength and actual confusion in a trademark infringement analysis. It establishes that even where products are identical and compete directly, a claim can fail at the summary judgment stage if the plaintiff's mark is weak and the evidence of actual confusion is negligible. The ruling sets a high bar for what constitutes legally significant 'actual confusion,' deeming a few isolated instances as de minimis in the context of high sales volume. This decision provides a clear example of how a trademark can be legally abandoned through non-use, clarifying that using the words of a former mark in a descriptive tagline does not count as the kind of source-identifying 'use' necessary to retain trademark rights.
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