Water Pik, Inc. v. Med-Systems, Inc.
107 U.S.P.Q. 2d (BNA) 2095, 726 F.3d 1136, 92 Fed. R. Serv. 136 (2013)
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Rule of Law:
To establish trademark infringement or unfair competition under the Lanham Act, a plaintiff must prove that the junior user's mark is likely to cause consumer confusion, applying a six-factor test where no single factor is dispositive and consumer surveys require methodological soundness to be probative evidence.
Facts:
- Med-Systems, Inc. (Med-Systems) was founded in 1997 and sells nasal-irrigation products, including neti pots, squeeze bottles, and saline refill packets, through pharmacies and retailers nationwide.
- Med-Systems obtained federal registration for three trademarks: the stylized SinuCleanse word mark in 1998, and the nonstylized SINUCLEANSE and SINUCLEANSE SQUEEZE word marks in 2008.
- Water Pik, Inc. (Water Pik), a company known for oral irrigators and showerheads, sought to enter the sinus-irrigation market in 2008 and attempted to acquire Med-Systems, but negotiations failed.
- Water Pik began developing its own nasal-irrigation product line and decided to market it under the name 'SinuSense.'
- In May 2009, Water Pik filed an intent-to-use application for federal registration of the nonstylized word mark SINUSENSE, which the United States Patent and Trademark Office (PTO) published for opposition in October 2009.
- In July 2010, SinuSense-branded products, including neti pots, squeeze bottles, electric nasal pulsators, and saline refill packets, began appearing in stores.
- The packaging for Water Pik's SinuSense products prominently features the word 'waterpik' in large white letters above 'SinuSense' in larger blue letters, with a distinctive 'i' in 'waterpik' modified with three vertical dots.
Procedural Posture:
- Water Pik, Inc. filed an action against Med-Systems, Inc. in the United States District Court for the District of Colorado, seeking a declaratory judgment that its use of the SINUSENSE mark did not infringe on any of Med-Systems’ registered trademarks.
- Med-Systems, Inc. counterclaimed for trademark infringement, trade-dress infringement, unfair competition, dilution, an injunction, and tortious interference under the Lanham Act.
- Med-Systems, Inc. later dismissed its sixth and seventh counterclaims (tortious interference) with prejudice.
- The district court awarded summary judgment to Water Pik, Inc. on Med-Systems, Inc.'s remaining counterclaims, ruling that the SinuSense brand was not likely to cause consumer confusion.
- The district court dismissed Water Pik, Inc.’s claims for declaratory judgment as moot.
- Med-Systems, Inc. filed a motion to reconsider the summary judgment, arguing, among other things, that the court had overlooked a report on likelihood of confusion by one of its experts, which the district court denied.
- Med-Systems, Inc. (Defendant - Appellant) appealed the district court’s grant of summary judgment on its claims of trademark infringement and unfair competition to the United States Court of Appeals for the Tenth Circuit.
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Issue:
Did the district court err in granting summary judgment to Water Pik, Inc., by finding that Med-Systems, Inc., failed to raise a genuine issue of material fact regarding the likelihood of consumer confusion between Water Pik's 'SinuSense' mark and Med-Systems' 'SinuCleanse' mark, thereby precluding Med-Systems' trademark infringement and unfair competition claims?
Opinions:
Majority - Hartz, Circuit Judge
No, the district court did not err in granting summary judgment because Med-Systems failed to present sufficient evidence to create a genuine issue of material fact concerning the likelihood of consumer confusion between Water Pik's 'SinuSense' mark and Med-Systems' 'SinuCleanse' mark. The central inquiry in trademark infringement and unfair competition claims is whether the junior user’s mark is likely to cause confusion with the senior user’s mark, which is evaluated using a six-factor test. First, Med-Systems' evidence of actual confusion was deemed insufficient; its expert's survey was methodologically flawed due to unrepresentative mark presentation, side-by-side comparisons that did not reflect marketplace conditions, and improperly leading questions, yielding insubstantial net confusion rates (less than 6.5% and negative 0.5%). The four anecdotal instances of confusion were de minimis. Second, the 'SinuCleanse' mark was found to be weak. Its 'Sinu' component is essentially generic due to widespread third-party use, and the term 'SinuCleanse' is descriptive, directly conveying the product's function (cleansing sinuses) rather than suggesting it. Med-Systems also failed to demonstrate significant commercial strength or consumer recognition. Third, despite some visual and phonetic similarities between 'SinuCleanse' and 'SinuSense,' significant distinctions exist in their appearance (e.g., italicization in 'SinuCleanse'), sound, and especially meaning ('SinuCleanse' is descriptive, 'SinuSense' is vague). The prominent 'waterpik' house mark accompanying 'SinuSense' further distinguishes the products, as conflicting marks must be compared in their entirety. Fourth, Water Pik's intent was neutral; evidence suggested an intent to compete, not to cause confusion by copying Med-Systems' mark. Water Pik used external vendors to create the 'SinuSense' name and actively sought to avoid confusion by using its 'waterpik' house mark. Fifth, Med-Systems waived its challenge to the district court's finding that consumers exercise a high degree of care when purchasing healthcare products, which reduces the likelihood of confusion. Sixth, the products and marketing channels are highly similar, favoring Med-Systems. However, considering all factors, particularly the strong evidence against actual confusion, the weakness of the 'SinuCleanse' mark, and the distinctions between the marks (including Water Pik's house mark), the overall likelihood of confusion was minimal. Thus, summary judgment for Water Pik was appropriate.
Analysis:
This case significantly clarifies the standards for establishing likelihood of confusion in trademark infringement, particularly the admissibility and weight of consumer survey evidence. It mandates that surveys must accurately replicate marketplace conditions and avoid leading questions to be considered probative, thereby raising the bar for proving actual confusion. The ruling also underscores that a senior mark's conceptual and commercial weakness, coupled with a junior user's distinctive house mark, can effectively mitigate perceived similarities between product names. This decision serves as a crucial precedent for future trademark litigation, emphasizing that mere similarity of product or marketing strategy is insufficient without robust, methodologically sound evidence that consumers are genuinely confused by the marks themselves.
