YKK CORP. v. Jungwoo Zipper Co., Ltd.
2002 WL 1629060, 64 U.S.P.Q. 2d (BNA) 1192, 213 F. Supp. 2d 1195 (2002)
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Rule of Law:
A defendant's use of a mark infringes on a senior, famous mark when, under the totality of the circumstances, it creates a likelihood of confusion, especially when the marks are similar, the goods directly compete, and there is evidence of intent to trade on the senior mark's goodwill. However, a trademark dilution claim is generally inappropriate for disputes between direct competitors.
Facts:
- YKK is a world-leading manufacturer of zippers and has used its 'YKK' trademark in the U.S. since approximately 1949.
- The YKK mark is an arbitrary arrangement of letters derived from the company's original name, has achieved incontestable status, and is widely recognized globally.
- Jungwoo Zipper Company, a Korean company, and its U.S. branch, YPP, began distributing and marketing competing zipper products in the United States under the 'YPP' mark.
- During its brand development process, Jungwoo hired a branding agency, Interbrand, to help select a name for its American zipper company.
- After rejecting initial name proposals that did not start with 'Y', Jungwoo sent a letter to Interbrand stating, 'In consideration of high recognition on YKK(overseas)... the word containing 'Y' is desired.'
- Following this instruction, Jungwoo ultimately selected and began using the 'YPP' mark for its zipper products.
Procedural Posture:
- YKK filed a complaint against Jungwoo Zipper Company and YPP in the U.S. District Court for the Central District of California.
- The complaint alleged federal and state claims for trademark infringement, trade name infringement, trademark dilution, and unfair competition.
- Plaintiff YKK filed a Motion for Summary Judgment, asking the court to rule in its favor without a full trial.
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Issue:
Does a junior user's mark (YPP) that is similar in sight and sound to a senior, famous mark (YKK) for directly competing goods create a likelihood of confusion sufficient to constitute trademark infringement, even if the buyers are sophisticated commercial purchasers?
Opinions:
Majority - Cooper, District Judge
Yes, Jungwoo's use of the 'YPP' mark creates a likelihood of confusion with YKK's trademark. Applying the eight-factor Sleekcraft test, the court found the factors weighed heavily in favor of YKK. The court emphasized the extreme strength and fame of the arbitrary YKK mark, the fact that the parties are direct competitors selling identical goods through the same marketing channels, and the high degree of similarity between the 'YKK' and 'YPP' marks. Most decisively, the court found compelling evidence of bad faith intent based on documents showing Jungwoo expressly considered YKK's 'high recognition' when requesting a brand name starting with 'Y'. This evidence of intent to trade on YKK's goodwill was so strong that it outweighed the factor favoring the defendants—the sophistication of commercial purchasers. The court therefore granted summary judgment to YKK on its trademark infringement and unfair competition claims, but denied summary judgment on the trademark dilution claim, reasoning that dilution law is the 'wrong tool for the job' in a dispute between direct competitors.
Analysis:
This decision underscores the critical weight of a defendant's intent in trademark infringement analysis. It demonstrates that clear, documented evidence of an intent to trade on a famous mark's goodwill can be dispositive, even when other factors, such as the sophistication of the consumer base, might suggest a lower likelihood of confusion. The case also provides important clarification on the scope of trademark dilution law, endorsing the scholarly view that its primary purpose is to protect famous marks from use on non-competing goods (e.g., 'Kodak' pianos) and should not be used as a 'super weapon' in standard infringement disputes between direct competitors. This reinforces the distinction between infringement's focus on preventing consumer confusion and dilution's focus on preventing the weakening of a famous mark's distinctiveness.
