Progressive Distribution v. UPS , 856 F.3d 416 ( 2017 )

RECOMMENDED FOR FULL-TEXT PUBLICATION
Pursuant to Sixth Circuit I.O.P. 32.1(b)
File Name: 17a0100p.06
UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT
PROGRESSIVE DISTRIBUTION SERVICES, INC., ┐
Plaintiff-Appellant, │
│
> No. 16-1830
v. │
│
│
UNITED PARCEL SERVICE, INC.; UNITED PARCEL │
SERVICE, INC.; UNITED PARCEL SERVICE OF AMERICA, │
INC., UNITED PARCEL SERVICE MARKET DRIVER, INC., │
Defendants-Appellees. │
┘
Appeal from the United States District Court
for the Western District of Michigan at Grand Rapids.
No. 1:14-cv-00430—Gordon J. Quist, District Judge.
Argued: January 26, 2017
Decided and Filed: May 3, 2017
Before: GUY, CLAY, and GRIFFIN, Circuit Judges.
_________________
COUNSEL
ARGUED: Jeffrey A. Sadowski, HOWARD & HOWARD ATTORNEYS PLLC, Royal Oak,
Michigan, for Appellant. Tywanda Harris Lord, KILPATRICK, TOWNSEND & STOCKTON
LLP, Atlanta, Georgia, for Appellees. ON BRIEF: Jeffrey A. Sadowski, Michael F. Wais,
HOWARD & HOWARD ATTORNEYS PLLC, Royal Oak, Michigan, for Appellant. Tywanda
Harris Lord, Laura C. Miller, Rhojonda D.C. Thomas, KILPATRICK, TOWNSEND
& STOCKTON LLP, Atlanta, Georgia, for Appellees.
CLAY, J., delivered the opinion of the court in which GRIFFIN, J., joined, and GUY, J.,
joined in part. GUY, J. (pp. 23–24), delivered a separate opinion concurring in part and
dissenting in part.
No. 16-1830 Progressive Distrib. Servs. v. United Parcel Serv., et al. Page 2
_________________
OPINION
_________________
CLAY, Circuit Judge. Plaintiff, Progressive Distribution Services, Inc. (“Progressive”)
brought suit against Defendants, United Parcel Service, Inc., a Delaware corporation, United
Parcel Service, Inc., an Ohio corporation, United Parcel Service of America, Inc., a Delaware
corporation, and United Parcel Service Market Driver, a Georgia corporation (collectively
referred to herein as “UPS”), alleging that UPS violated the Lanham Act, 15 U.S.C. § 1051, et
seq., the Michigan Consumer Protection Act, Mich. Comp. Laws § 455.091, et seq., and the
common law governing service marks, trademarks and unfair competition. The district court
granted summary judgment in favor of UPS. For the reasons set forth below, we AFFIRM the
district court’s judgment.
BACKGROUND
I. Factual background
Founded in 1984, Progressive is a business located in Western Michigan that provides
logistical services to companies in order to facilitate online businesses’ shipping and handling of
products. The company offers several different services under multiple trademarks, including
“OrderLink,” the trademark at issue in this appeal. OrderLink is a service under which
Progressive develops a website on behalf of its clients and assumes the responsibility for
ensuring that the clients’ products are delivered to customers in an efficient manner. The
OrderLink service typically requires a four-to-six week set-up period. Customers commit to a
two year contract and the cost of signing up generally ranges from a few thousand dollars to
twenty-five thousand dollars.
Progressive registered the OrderLink trademark September 21, 2004, but alleges that it
has been using the mark for at least 19 years. The company spent approximately $2.5 million
dollars advertising the OrderLink mark over the past twenty years, of which only $159,774.05
was spent between 2007 and 2013. Progressive’s advertising for OrderLink included telephone
No. 16-1830 Progressive Distrib. Servs. v. United Parcel Serv., et al. Page 3
calls, email communications, trade shows, mailers, the internet, word of mouth, and trade
magazines.
UPS is one of the world’s largest package shipping companies. Its brand is easily
recognizable by its brown-and-gold color scheme and is otherwise well-known by most
consumers. Certain of UPS’s customers include small volume shippers who operate businesses
on Amazon and eBay web marketplaces. In 2012, UPS’s Customer Technology Marketing
(“CTM”) submitted a proposal to create a new interface in order to facilitate the shipping of
orders from eBay and Amazon. The service afforded UPS’s existing Amazon and eBay
customers the ability to import their orders directly into UPS’s shipping application. This
allowed the aforementioned customers to create shipping labels and process requests more
easily.
Consistent with its standard process, UPS’s Brand Manager, Christine Allen, developed a
list of potential names for the new service. Following Allen’s initial search of proposed names on
the U.S. Patent and Trademark Office (“USPTO”) website, she concluded that the term
“orderlink” was not available because it was used by Progressive and another unrelated shopping
software company. Additional searches revealed that the terms “order” and “link” were
commonly used together by other companies in the marketplace. Upon further review of
Progressive’s website, the CTM team concluded that Progressive’s order fulfillment services
differed substantially from the free shipping application UPS intended to offer its Amazon and
eBay merchant customers. Accordingly, the CTM team settled on the name “UPS OrderLink” in
August 2013.
UPS submitted an application to the USPTO to register “UPS OrderLink” as a mark, but
this application was rejected on November 25, 2013 based on a likelihood of confusion with
Progressive’s mark. Nonetheless, UPS launched the UPS OrderLink software on December 28,
2013. It operated as a free service that enabled eBay and Amazon sellers to simplify their
shipping and processing of orders. The service was accessible only through UPS’s website by
clicking on a link that brought customers to the application. UPS advertised the service primarily
on its website by using internal banner ads.
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On February 17, 2014, Progressive sent UPS a cease-and-desist letter demanding that
UPS stop the use of the name “UPS OrderLink.” In response, UPS approached Progressive
about negotiating a co-existence agreement. While awaiting Progressive’s response, UPS
explored the possibility of changing the name of “UPS OrderLink.” By mid-April, when no
response was forthcoming, UPS began the process of changing the name of its service to “Ship
Marketplace Orders.” The transition was finalized on August 15, 2014 and UPS abandoned the
name.
II. Procedural History
Progressive initiated the suit by filing a complaint on April 17, 2014 in the Western
District of Michigan. Progressive alleged violations of the Lanham Act, 15 U.S.C. § 1051, et
seq., the Michigan Consumer Protection Act, Mich. Comp. Laws § 445.091, et seq., and the
common law governing service marks, trademarks and unfair competition. On November 23,
2015, UPS moved for summary judgment, claiming as a matter of law that Progressive could not
establish likelihood of confusion. The district court agreed, and on May 16, 2016, granted
summary judgment in favor of UPS. Progressive then filed a timely notice of appeal in the
instant case.1
DISCUSSION
I. Standard of Review
A district court’s grant of summary judgment is reviewed de novo. V & M Star Steel v.
Centimark Corp., 678 F.3d 459, 465 (6th Cir. 2012). Summary judgment is appropriate only
when the evidence, taken in the light most favorable to the nonmoving party, establishes that
there is no genuine issue as to any material fact and the movant is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(a); Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S.
574, 587 (1986). The “mere existence of some alleged factual dispute between the parties will
not defeat an otherwise properly supported motion for summary judgment; the requirement is
that there be no genuine issue of material fact.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
247–48 (1986) (emphasis omitted).
1
Progressive has waived its Michigan and common law claims while maintaining its Lanham Act claims.
No. 16-1830 Progressive Distrib. Servs. v. United Parcel Serv., et al. Page 5
II. Analysis
Progressive alleges a claim of trademark infringement and unfair competition under
15 U.S.C. §§ 1114 and 1125 of the Lanham Act. To prevail upon a trademark infringement and
unfair competition claim, Progressive must establish that UPS’s trademark creates a likelihood of
confusion regarding the origin of goods or services offered by the respective parties. See
Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623, 629 (6th Cir. 2002); see also Daddy’s
Junky Music Stores, Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 275, 280 (6th Cir. 1997)
(“The touchstone of liability under § 1114 is whether the defendant’s use of the disputed mark is
likely to cause confusion among consumers regarding the origin of the goods offered by the
parties.”); Holiday Inns, Inc. v. 800 Reservation, Inc., 86 F.3d 619, 622–23 (6th Cir. 1996)
(explaining that a party seeking to avoid summary judgment in a case alleging trademark
infringement and unfair competition, in violation of 15 U.S.C. §§ 1114 and 1125(a), “must
establish that genuine factual disputes exist concerning those factors that are material to whether
confusion is likely in the marketplace as a result of the alleged infringement”).
This Court has set forth an eight-factor test in order evaluate whether there is a likelihood
of confusion: (1) strength of the plaintiff’s mark; (2) relatedness of the goods; (3) similarity of
the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) likely degree of
purchaser care; (7) defendant’s intent in selecting the marks; and (8) likelihood of expansion of
the product lines. Frisch’s Restaurants, Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d
642, 648 (6th Cir. 1982); see also Groeneveld Transp. Efficiency, Inc. v. Lubecore Int’l, Inc., 730
F.3d 494, 509 (6th Cir. 2013). Not all of these factors will be relevant in every case, and in the
course of applying them, “[t]he ultimate question remains whether relevant consumers are likely
to believe that the products or services offered by the parties are affiliated in some way.”
Homeowners Grp., Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1107 (6th Cir. 1991).
In applying these factors, we recognize that they “imply no mathematical precision, but are
simply a guide to help determine whether confusion is likely.” Id. To create a triable issue of
fact, the plaintiff’s “burden is to identify a disputed factor or set of factors whose resolution
would necessarily be dispositive on the likelihood of confusion issue.” Abercrombie & Fitch
Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 646 (6th Cir. 2002).
No. 16-1830 Progressive Distrib. Servs. v. United Parcel Serv., et al. Page 6
We have recognized four different types of trademark infringement: palming off,
confusion of sponsorship (also known as “association”), reverse confusion of sponsorship, and
dilution. Ameritech, Inc. v. Am. Info. Techs. Corp., 811 F.2d 960, 964–65 (6th Cir. 1987).
Progressive’s claim rests upon a theory of reverse confusion. This Court has explained:
A reverse confusion claim differs from the stereotypical confusion of source or
sponsorship claim. Rather than seeking to profit from the goodwill captured in
the senior user’s trademark, the junior user saturates the market with a similar
trademark and overwhelms the senior user. The public comes to assume the
senior user’s products are really the junior user’s or that the former has become
somehow connected to the latter. The result is that the senior user loses the value
of the trademark—its product identity, corporate identity, control over its
goodwill and reputation, and ability to move into new markets.
Id. at 964. Regardless of the theory of infringement alleged, a plaintiff must show that there is a
likelihood of consumer confusion.2 See Therma-Scan, 295 F.3d at 630 (undertaking the same
eight-factor analysis even though plaintiff alleged infringement under theories of both palming
off and reverse confusion).
Prior to engaging in our analysis of the Frisch factors, we are called upon to decide what
level of deference is to be accorded an initial USPTO decision that denied UPS’s trademark of
“UPS OrderLink” on the basis of its finding that there was a likelihood of confusion with
Progressive’s mark.
A. Deference to USPTO Decision
UPS filed an application for the “UPS OrderLink” mark. When a new application is filed
before the USPTO, an examiner reviews the application and makes a preliminary determination
regarding whether the applied-for mark is entitled to registration. “A complete review includes a
search [of the USPTO database] for conflicting marks and an examination [of] the written
2
Despite Progressive’s assertions to the contrary, this Circuit has never held that the precise theory of
infringement impacts the touchstone of the analysis—likelihood of confusion. As Progressive concedes, this Court
looks to the eight-factor test to determine whether or not there is a likelihood of confusion. It is unclear what
Progressive means when it states that the district court “applied the wrong standard.” But regardless, at no point in
its brief does Progressive actually articulate an alternative standard for this Court to review. Moreover, this Court
has already stated that “[i]n every case, ‘the ultimate question remains whether relevant customers are likely to
believe that the products or services offered by the parties are affiliated in some way.’” Leelanau Wine Cellars, Ltd.
v. Black & Red, Inc, 502 F.3d 504, 515 (2007) (quoting Homeowners Grp., 931 F.2d at 1107) (emphasis added).
No. 16-1830 Progressive Distrib. Servs. v. United Parcel Serv., et al. Page 7
application, the drawing, and any specimen.” U.S. Patent and Trademark Office, Is a trademark
application right for you? (Nov. 10, 2014), https://www.uspto.gov/trademarks-getting-
started/trademark-process#step2. The principal factors considered by the examining attorney in
determining whether there would be a likelihood of confusion are: similarity of the marks; and
the commercial relationship between the goods and/or services listed in the application. This
notably excludes many of the factors that courts consider in a Lanham infringement action—
including a consideration of the manner in which the marks are actually used in the marketplace.
See Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1187 (6th Cir. 1988) (“Instead, a court must
determine, in the light of what occurs in the marketplace, whether the mark “will be confusing to
the public when singly presented.”) (internal citations omitted) (emphasis added). The examiner,
upon review of the limited information before her,3 issues a preliminary holding about whether
or not the future mark may be eligible for trademark protection or whether it is confusingly
similar to another mark. At this juncture, the applicant may present further arguments and
evidence in order to convince the examiner that its preliminary decision is incorrect. Upon this
showing, the examiner can withdraw the objection and pass the application to the next step in the
registration process, or maintain the objection. UPS declined to file additional evidence before
the examiner.
As a threshold matter, the parties dispute the amount of deference to which a USPTO
examiner’s decision is entitled before the district court. Progressive claims that the district court
erred by ignoring the USPTO’s “factual determination for rejecting the UPS [OrderLink] mark in
light of Progressive’s incontestable registration for [OrderLink] and its exclusive right for ‘order
fulfillment services.’” (Appellant Br., at pg. 21–22). Progressive advances no case law in
support of its theory that the USPTO’s factual findings must be afforded strong consideration
before the district court. Nor does Progressive elaborate upon the extent of deference a federal
court should grant to a USPTO’s preliminary finding that a mark cannot be trademarked. In turn,
we see no error in the fact that the district court decided not to defer to the USPTO examiner’s
preliminary findings concerning trademark eligibility.
3
UPS submitted a three page document containing the “OrderLink” electronic application for a trademark,
the mark in black and white block letters, UPS’s corporate information, and a short description of the applied for
services.
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This Court has already held that a trademark examining attorney’s opinion is not entitled
to a procedural presumption or a reasonable inference drawn in its favor in circumstances when
the USPTO fails to consider the same evidence that is subsequently placed in front of the district
court. See Mktg. Displays, Inc. v. TrafFix Devices, Inc., 200 F.3d 929, 934 (6th Cir. 1999), rev’d
on other grounds 532 U.S. 23 (2001). Similarly, the Ninth Circuit has held that a preliminary
determination by a low-level USPTO administrator should not be accorded much weight,
especially where the USPTO officer did not have access to the same type of information that
informs a likelihood of confusion analysis. See Carter–Wallace, Inc. v. Procter & Gamble Co.,
434 F.2d 794, 802 (9th Cir. 1970) (“Any such determination made by the Patent Office under the
circumstances just noted must be regarded as inconclusive since [it is] made at its lowest
administrative level.”). Finally, the Third Circuit has more recently endorsed the Ninth Circuit’s
decision, noting that while an “initial [US]PTO determination . . . may be considered, it need not
be given weight when the [US]PTO attorney did not review all the evidence available to the
District Court.” A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198, 220–21
(3d Cir. 2000).
We reaffirm our previous holding and expressly concur in our sister circuits’ decisions.
UPS presented no evidence to the examiner regarding the manner in which the two marks are
actually used in the marketplace. In a trademark infringement action, such a showing is integral
to any evaluation of the likelihood of confusion. Although Progressive asserts that the
examining attorney relied upon all available evidence submitted by UPS, and thus “evidence
UPS presumably considered to be the best they could provide in their favor” (Appellant Br., at
pg. 22 n.9), this argument misses the point. Regardless of whether the evidence presented to the
examiner was the best evidence or the only available evidence, what is clear is that the
examining attorney did not weigh all the relevant evidence normally considered by a court
in a trademark infringement action. Therefore, the examiner’s analysis was incomplete.
Furthermore, the decision of the examiner was a preliminary one. It did not even bind the
examiner, let alone speak with the full weight of the Trademark Trial and Appeal Board. In the
absence of any case law presented by Progressive to the contrary, we see no reason why such a
low-level determination should be entitled to any weight before a federal court. That is not to
say, of course, that a district court cannot look to the USPTO opinion to inform its conclusions
No. 16-1830 Progressive Distrib. Servs. v. United Parcel Serv., et al. Page 9
on trademark analysis; rather, we believe no obligation exists to do so. Accordingly, the district
court did not err when it accorded no deference to the USPTO’s decision. We now turn to the
Frisch factors to evaluate whether Progressive can avoid summary judgment on its trademark
infringement action.
B. Eight-factor Test for Infringement
This Court considers the question of whether there is a likelihood of confusion to be a
mixed question of fact and law. See Data Concepts, Inc. v. Digital Consulting, Inc., 150 F.3d
620, 624 (6th Cir. 1998) abrogated on other grounds by Hana Fin., Inc. v. Hana Bank, 135 S.
Ct. 907, (2015). Any dispute about the evidence that pertains to the eight factors presents a
factual issue. Id. at 624 (noting that “[i]f the facts relevant to the applicable factors are contested,
factual findings must be made with respect to each of these factors”). In contrast, “the further
determination of whether a given set of foundational facts establishes a likelihood of confusion is
a legal conclusion.” Homeowners Grp., 931 F.2d at 1107; Data Concepts, 150 F.3d at 624(explaining that “the balancing of [the factual] findings to determine the ultimate issue of
likelihood of confusion is a question of law”). To resist summary judgment in a case where the
likelihood of confusion is the dispositive issue, a nonmoving party must establish, through
pleadings, depositions, answers to interrogatories, admissions and affidavits in the record, that
there are genuine factual disputes concerning those Frisch’s factors which may be material in the
context of the specific case. Homeowners Grp., 931 F.2d at 1107. With this understanding in
mind, we review each factor to inform us whether or not there is a reasonable likelihood of
confusion.
1. Strength of the mark
The strength of the mark factor “focuses on the distinctiveness of a mark and its
recognition among the public.” Therma-Scan, 295 F.3d at 631; see also Homeowners Grp.,
931 F.2d at 1107 (“[a] mark is strong if it is highly distinctive, i.e., if the public readily accepts it
as the hallmark of a particular source”). “The more distinct a mark, the more likely is the
confusion resulting from its infringement, and therefore, the more protection it is due.” Daddy’s
Junky Music Stores, 109 F.3d at 280. Accordingly, a strong mark enjoys greater protection.
No. 16-1830 Progressive Distrib. Servs. v. United Parcel Serv., et al. Page 10
As this Court has explained, the strength evaluation encompasses two separate components:
“(1) ‘conceptual strength,’ or ‘placement of the mark on the spectrum of marks,’ which
encapsulates the question of inherent distinctiveness; and (2) ‘commercial strength’ or ‘the
marketplace recognition value of the mark.’” Maker’s Mark Distillery, Inc. v. Diageo N. Am.,
Inc., 679 F.3d 410, 419 (6th Cir. 2012) (quoting 2 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition § 11.83 (4th ed.)).
A mark’s distinctiveness and resulting conceptual strength “depends partly upon which of
four categories it occupies: generic, descriptive, suggestive, and fanciful or arbitrary.” Therma-
Scan, 295 F.3d at 631 (internal quotation marks omitted). A descriptive mark “specifically
describes a characteristic or ingredient of an article,” while an arbitrary mark “has a significance
recognized in everyday life, but the thing it normally signifies is unrelated to the product or
service to which the mark is attached, such as CAMEL cigarettes or APPLE computers.” Id.(internal quotation marks and brackets omitted). “A descriptive mark, by itself, is not
protectable.” Innovation Ventures, LLC v. N.V.E., Inc., 694 F.3d 723, 730 (6th Cir. 2012).
However, a “merely descriptive term can, by acquiring a secondary meaning, i.e., becoming
distinctive of the applicant’s goods, become a valid trademark.” Id. (internal quotation marks
and ellipses omitted); see Induct-O-Matic Corp. v. Inductotherm Corp., 747 F.2d 358, 364 (6th
Cir. 1984) (descriptive mark becomes distinctive through advertising and reputation).
The district court found that Progressive’s OrderLink mark was conceptually weak
because it described the function it serves—processing its clients’ orders through final
fulfillment. Neither party disputes that the mark was descriptive. Rather, Progressive believes
that the district court erred in finding OrderLink’s mark was weak because it has achieved
incontestable status. The district court rejected this argument finding that incontestable status
gives rise to a presumption of strength—a presumption which can be rebutted by a showing of
extensive third-party use. UPS presented evidence of third-party use and co-existence in the
order processing industry, which Progressive has not disputed. Furthermore, the district court
found that Progressive failed to establish commercial strength—recognition of the mark in the
marketplace—because the record was “devoid of any evidence that Progressive’s advertising
efforts have translated into marketplace recognition.” We review each conclusion below.
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a. Incontestable status and distinctiveness
Progressive argues that the district court erred by concluding that Progressive’s
OrderLink mark was weak. Relying upon Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S.
189, 205 (1985), Progressive contends that under the Lanham Act an incontestable4 mark is
“conclusive evidence of validity, ownership and exclusive right to use.” (Appellant Br., at pg.
27). It is not a mere presumption as stated by the district court. We disagree.
The doctrine of incontestability and its evidentiary value is outlined in both 15 U.S.C.
§§ 1065 and 1115(b). And while there is no dispute that incontestable status serves as
conclusive evidence of the registrant’s exclusive right to use the mark, Park ’N Fly, Inc.,
469 U.S. at 196, such use remains “subject to proof of infringement as defined in [§] 1114.”
15 U.S.C. § 1115(b). This Circuit has clearly noted that even where a trademark is incontestable:
[T]he significance of its presumed strength will depend upon its recognition
among members of the public. Treating a valid, incontestable mark as an
exceptionally strong mark for the purpose of determining whether confusion is
likely to occur, without examining whether the mark is distinctive and well-
known in the general population, would shift the focus away from the key
question of “whether relevant consumers are likely to believe that the products or
services offered by the parties are affiliated in some way” . . . . Although a
trademark may be “strong and worthy of full protection” because it is valid and
incontestable . . . that does not necessarily mean that its strength is particularly
relevant to the ultimate issue of whether confusion is likely to occur.
Therma-Scan, 295 F.3d at 632 (citations omitted); see also AutoZone, Inc. v. Tandy Corp.,
373 F.3d 786, 794 (6th Cir. 2004); Lucky’s Detroit, LLC v. Double L, Inc., 533 F. App’x 553,
557 (6th Cir. 2013) (“[defendant] correctly relies on [this Court’s] decision in Therma-Scan for
the proposition that a court must weigh the conceptual and commercial strength of a mark, even
where it determines that a mark is valid and incontestable.”).
To the extent that Progressive wishes to rely solely upon the incontestable status of the
mark, that by itself, is not sufficient when UPS has come forward with evidence of
descriptiveness, third-party use, and a lack of commercial strength. See Kibler v. Hall, 843 F.3d
4An incontestable mark is one that has not been successfully challenged within five years of registration.
See 15 U.S.C. § 1065. Neither party challenges the fact that Progressive’s mark is incontestable.
No. 16-1830 Progressive Distrib. Servs. v. United Parcel Serv., et al. Page 12
1068, 1074 (6th Cir. 2016) (holding that even in the face of a presumption of incontestability,
plaintiff’s mark may be weak if it is not commercially strong). Undoubtedly, Progressive’s
claim of incontestability is entitled to a presumption of strength. However, a party may rebut the
presumption of strength and show that a mark is not distinctive by presenting evidence of
“extensive third party use of similar marks.” AutoZone, Inc., 373 F.3d at 794 (emphasis
omitted); cf. Lucky’s Detroit, LLC, 533 F. App’x at 557 (finding that defendant failed to present
any evidence that businesses were actively using the marks). Third-party use weakens a mark
because the mark is not an identifier for a single source. Citizens Banking Corp. v. Citizens Fin.
Grp., Inc., 320 F. App’x 341, 347 (6th Cir. 2009). The presumption is that the third parties have
muddled the mark’s source. Kibler, 843 F.3d at 1074.
UPS has come forward with evidence that there was third-party use of nearly identical
marks for the same or similar services as Progressive’s. This included a list of ten uses of the
term “order link” and its phonetic equivalents that have been used in connection with order
fulfillment services and related services since as early as 1991. These terms appeared in use
along with Progressive’s OrderLink mark in internet search results. Progressive challenges
whether ten alleged uses are sufficient to show the weakness of Progressive’s mark and defeat
the presumption of strength it enjoys stemming from its incontestability. But there does not
appear to be a specific number of third-party uses that are sufficient; rather, context matters. See
Florida Int’ l Univ. Bd. of Trustees v. Florida Nat’l Univ., Inc., 830 F.3d 1242, 1258 (11th Cir.
2016) (twelve third-party uses can be sufficient to diminish the distinctiveness of a mark);
AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1539 (11th Cir. 1986) (finding that less protection was
available where eight third-party users in the same market employed a similar wrapper). In the
instant case, each of the third-party uses is virtually identical to the mark at issue, is in the same
relevant field, and is advertised primarily through the internet. The extensive third-party use
undermines any presumption of distinctiveness that Progressive’s mark may have enjoyed from
its incontestable status.
b. Commercial strength
“Because the strength of a trademark for purposes of the likelihood of confusion analysis
depends on the interplay between conceptual and commercial strength, the existence or non-
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existence of distinctiveness is not the end of the inquiry.” Maker’s Mark, 679 F.3d at 419.
A mark can be “conceptually strong without being commercially strong, and thus weak under
Frisch.” Kibler, 843 F.3d at 1074. So to properly evaluate the full strength of a mark, we must
analyze the extent of its commercial recognition. A mark’s commercial strength depends on
public recognition, or the extent to which people associate the mark with the product it
announces. Maker’s Mark, 679 F.3d at 419.
Survey evidence is the most persuasive evidence of commercial recognition. See, e.g., id.
at 421; Frisch’s Rest., Inc. v. Shoney’s Inc., 759 F.2d 1261, 1265 (6th Cir. 1985) (relying on
evidence that around thirty percent of respondents identify non-plaintiff restaurants with
plaintiff’s mark to conclude mark is commercially weak). However, it is by no means a
requirement. Proof of marketing may be sufficient to support a finding of “broad public
recognition.” Therma-Scan, 295 F.3d at 632. Conversely, proof that third parties have
extensively used a trademark or similar trademarks in the relevant market may indicate that the
trademark is commercially weak. Homeowners Grp., 931 F.2d at 1108.
Progressive argues that the district court erred because “there is no question that
Progressive ha[d] a commercial presence on the internet in e-commerce for [OrderLink] prior to
UPS saturating the marketplace.” (Appellant Br., at pg. 33). It further points to its efforts in
advertising of the mark and notes “most straightforward depiction of commercial strength is set
forth as search results on Google and Bing where UPS OrderLink pervades the search results and
. . . OrderLink is the only other result reported in the search.” (Id.). Despite its assertions of an
extensive internet presence, Progressive provides only minimal evidence to support its
statements. In fact, the only evidence in the record that exists which can speak to Progressive’s
commercial presence is the aggregate sum of Progressive’s advertising costs. But that by itself is
not enough to avoid summary judgment. The operative question remains whether Progressive
has provided evidence “that would permit a reasonable jury to determine that wide segments of
the public” previously recognized OrderLink as a mark associated with Progressive’s brand.
See Kibler, 843 F.3d at 1075 (rejecting the argument that merely showing that promotion of a
brand on social media was sufficient to avoid summary judgment when there was no specificity
as to the impact of the marketing). There is no evidence in the record showing the specific
No. 16-1830 Progressive Distrib. Servs. v. United Parcel Serv., et al. Page 14
impact of Progressive’s advertising campaign or the degree of consumer recognition of
Progressive’s mark. In fact, the evidence in the record indicates that Progressive has struggled to
secure any new clients for its OrderLink service even preceding UPS’s entry into the market.
In the alternative, Progressive argues that the district court erred in its analysis by failing
to recognize the distinction between a forward and reverse confusion claim. The dissent adopts a
similar line of reasoning and claims that “the proper focus in reverse confusion cases is whether
the senior user’s mark is commercially weaker than the junior user’s mark.” Notably, the dissent
relies exclusively upon out-of-circuit precedent for this conclusion. But while certain circuits
have adopted a different test for claims of forward and reverse confusion, the Sixth Circuit is not
one of them. See Therma-Scan, Inc., 295 F.3d at 640 (“the presence of a reverse confusion claim
does not alter this analysis.”). To the extent the dissent suggests this Court held to the contrary
in Ameritech, Inc., 811 F.2d at 960, it is mistaken. In Ameritech, this Court concluded that
reverse confusion claims were cognizable. But we never distinguished between reverse or
forward confusion claims in analyzing the strength of the mark factor. And we certainly never
held that a plaintiff’s showing that his mark is weak “is the very foundation of reverse
confusion.” Rather, this Court explicitly stated that “the stronger a trademark, the greater the
protection afforded.” Our basis for reversing the district court’s dismissal of plaintiff’s reverse
confusion claim in Ameritech was our recognition that a mark “might be weak in the national
market, but might still be strong in the senior user’s geographical and product area and thus
deserving of protection.” Ameritech, Inc, 811 F.2d at 966–67. Contrary to the dissent’s
assertion, this Court has never found that merely showing that a plaintiff’s mark is weaker than a
defendant’s is sufficient in order for a plaintiff to prevail on a claim of reverse confusion.
Progressive directs our attention to the fact that UPS “flooded the market” with its mark.
There is, of course, no surprise that UPS’s brand is stronger than Progressive’s. But this Court is
unsure how the rapidity with which Progressive may have been muscled out of the market—
perhaps within a few months—supports Progressive’s argument that it previously had a strong
commercial presence in the aforementioned market. If anything, this argument appears to cut the
other way, undermining any claim Progressive may have to broad commercial recognition.
While the district court is not permitted to weigh evidence on summary judgment, there is no
No. 16-1830 Progressive Distrib. Servs. v. United Parcel Serv., et al. Page 15
indication from the evidence put forward by Progressive that a reasonable juror might conclude
that its mark maintained a strong commercial presence in the market. This finding, coupled with
our previous discussion concerning the lack of distinctiveness of Progressive’s mark, indicates
that the strength of the mark factor favors UPS.
2. Relatedness of the services
This Court has established three benchmarks to consider when evaluating the relatedness
of the parties’ goods and services. “First, if the parties compete directly, confusion is likely if
the marks are sufficiently similar; second, if the goods and services are somewhat related, but not
competitive, then the likelihood of confusion will turn on other factors; finally, if the products
are unrelated, confusion is highly unlikely.” Kellogg Co. v. Toucan Golf, Inc., 337 F.3d 616, 624
(6th Cir. 2003). Goods and services are not necessarily related just because they “coexist in the
same broad industry.” Homeowners Grp., 931 F.2d at 1109. Instead, the relatedness inquiry
focuses on whether goods or services “that are similarly marketed and appeal to common
customers are likely to lead consumers to believe that they ‘come from the same source, or are
somehow connected with or sponsored by a common company.’” Therma-Scan, 295 F.3d at 633(quoting Homeowners Grp., 931 F.2d at 1109).
The district court found that the services are related but do not directly compete because
there is no evidence that “Progressive’s order fulfillment service and UPS’s shipping application,
which simply allows eBay and Amazon merchants to print shipping labels and manage
shipments of goods sold[,] . . . compete in performing the same functions for customers.”
(R. 157, Opinion, PageID # 3781). Nonetheless, the court found that because Progressive
“use[s] and incorporate[s] UPS’s services as part of Progressive’s total package of order
fulfilment services provided to its clients . . . this factor is neutral.” (Id.). Progressive contends
that the district court erred by not viewing the facts and inferences in the light most favorable to
Progressive. Instead, as Progressive argues, the services directly compete, are incorporated into
one another, and otherwise overlap.
Despite Progressive’s argument to the contrary, we agree with the district court’s
conclusion. While we recognize that both services operate in a similar broad industry—shipping
No. 16-1830 Progressive Distrib. Servs. v. United Parcel Serv., et al. Page 16
and order fulfillment—Progressive all but concedes that the services are not competitive.
Progressive claims that its OrderLink platform allows its customers to “completely outsource
their order fulfillment functions to Progressive.” This entails Progressive building websites,
taking orders, managing inventories, shipping orders and providing customer services.
This service costs a substantial amount of money and requires at least a two-year contract.
In contrast, UPS’s OrderLink is free of charges, does not come with a binding commitment, and
is only available to existing customers for the purposes of linking their orders from their eBay or
Amazon account. Just because there is some overlap between the two services, it does not
follow that the companies compete directly for the same base of customers. See Therma-Scan,
295 F.3d at 633 (goods and services that utilize similar technologies but function in different
ways are not necessarily related). There is no indication that the companies market their goods
and services to the same targeted individuals. See id. (discussing how the two companies market
their goods to different segments of the population). Regardless of how much one tries to draw
inferences in Progressive’s favor, it is difficult to see how a prospective customer could confuse
the “free” service offered by UPS exclusively to its existing customers with that of the expensive
and all-encompassing service marketed by Progressive. At best, this factor is neutral and does
not weigh in favor of either party.
3. Similarity of the marks
“Similarity of marks is a factor of considerable weight.” Daddy’s Junky Music Stores,
109 F.3d at 283. In evaluating whether the mark is similar, a court should not examine the marks
side by side but instead “must determine, in the light of what occurs in the marketplace, whether
the mark ‘will be confusing to the public when singly presented.’” Wynn Oil Co., 839 F.2d at
1187 (internal citations omitted). In assessing similarity, a court should consider the
“pronunciation, appearance, and verbal translation of conflicting marks.” Leelanau Wine
Cellars, 502 F.3d at 516–17 (quoting AutoZone, Inc., 373 F.3d at 795–96).
The district court conceded that both marks contained the word “ORDERLINK.”
It nonetheless concluded that the marks “are not very similar.” (R. 157, Opinion, PageID
# 3782). The inclusion of UPS’s house mark in the “UPS OrderLink,” as well as the UPS shield
and brown and gold colors “render the visual presentation and pronunciation of UPS’s mark
No. 16-1830 Progressive Distrib. Servs. v. United Parcel Serv., et al. Page 17
different from Progressive’s [OrderLink] mark.” (Id.) Progressive argues that the marks are
“exactly the same. They appear the same and sound the same.” (Appellant Br., at pg. 39).
Furthermore, Progressive points to the USPTO’s rejection of UPS’s trademark application on
grounds that the UPS mark “consists of the registered mark in its entirety . . . modified by the
addition of the term UPS.” Therefore, according to Progressive, this factor strongly supports a
finding that confusion is likely to occur, or at the very least creates a material issue of fact on the
question.
But even assuming the version of the facts as presented by Progressive, and making all
inferences in its favor, this Court disagrees with Progressive. Although the respective marks use
the same words, the focus of our inquiry is much broader inasmuch as we are obligated to
evaluate the marks as they appear in commerce—not just as they appear in black and white.
See Homeowners Grp., 931 F.2d at 1109. Furthermore, any findings made by the USPTO
examiner are devoid of appropriate marketplace context, and therefore, not entirely persuasive.
But more importantly, when we analyze the marks as they appear in the marketplace, we see
little basis for similarity. The respective marks are displayed in different colors and fonts and
depicted with distinct design elements. The “UPS OrderLink” mark contains the UPS shield
along with its recognizable brown and gold color scheme. In contrast, Progressive’s mark is
green and blue. As this Court has already stated in AutoZone, Inc., 373 F.3d at 797, the inclusion
of a house mark can “reduce[ ] the likelihood of confusion from any similarity that does exist.”5
This is especially true when one mark—namely that of UPS—is so easily recognizable and
associated with a strong and popular brand, whereas Progressive’s mark lacks comparable
recognition. In the instant case, we cannot imagine that any reasonable consumer, when looking
at the two marks as they appear in commercial context, would confuse the two marks.
Accordingly, this factor militates against a finding of any likelihood of confusion.
5
While it is true that some courts have recognized that the addition of a junior user’s house mark to a senior
user’s may create the potential for reverse confusion, see, e.g., Americana Trading Inc. v. Russ Berrie & Co.,
966 F.2d 1284, 1288 (9th Cir. 1992), there is no blanket rule for all cases of reverse confusion. As this Court has
stated, the only question that must be answered is whether there is a potential for confusion.
No. 16-1830 Progressive Distrib. Servs. v. United Parcel Serv., et al. Page 18
4. Evidence of actual confusion
“Nothing shows the likelihood of confusion more than the fact of actual confusion.”
Groeneveld Transp., 730 F.3d at 517. With that said, evidence of actual consumer confusion is
not necessary to show likelihood of confusion. See Frisch’s Restaurant, Inc., 759 F.2d at 1267.
Isolated instances of confusion are insufficient to support a finding of likely confusion.
Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270, 299 (3d Cir. 2001).
Progressive puts forward a single instance of confusion to support its showing of actual
confusion. The only example that Progressive cites involves a UPS call center employee who
mistakenly telephoned Progressive to inquire about the UPS “OrderLink” service.6 Nonetheless,
relying upon this Court’s decision in Daddy’s Junky Music Stores, Inc., 109 F.3d at 284,
Progressive argues that a single instance of confusion can support a finding of actual confusion.
We find Progressive’s reliance on Daddy’s Junky Music Stores, Inc., misplaced.
In Daddy’s Junky Music Stores, Inc., the one instance of confusion involved an actual customer,
not an employee. This distinguishes Daddy’s Junky Music Stores, Inc. from the instant case
because Progressive only points to an incident of confusion involving a UPS employee, and not
an actual or prospective customer of Progressive’s services. This is significant because in a
trademark infringement action, the focus rests upon the likelihood of a consumer being confused
by the two marks and not an employee. See Groeneveld Transp., 730 F.3d at 517 (noting that
testimony of employees and affiliates that two products looked the same was not sufficient, in
part, because none of the witness were consumers).
Additionally, we find Progressive’s reliance on Daddy’s Junky Music Stores, Inc.
inappropriate because the circumstances of the case made it unlikely for there to be more
instances of actual confusion beyond the one isolated incident that plaintiff pointed out. Daddy’s
Junky Music Stores, Inc., 109 F.3d at 284 (finding that there was no evidence that the same
6
Progressive also claims that it received web-based inquiries from UPS sourced internet domains.
However, Progressive never articulates—and certainly fails to provide any evidence to this effect—that these
inquiries arose in connection with the “OrderLink” mark. Nor is there any indication that these inquiries represented
instances of confusion. Accordingly, we do not credit this fact on summary judgment, where plaintiff must do more
than just introduce conclusory allegations.
No. 16-1830 Progressive Distrib. Servs. v. United Parcel Serv., et al. Page 19
individuals who “receive[d] plaintiff’s mailings also receive[d] defendant’s mailings”). As a
general matter, courts decline to credit isolated instances of actual confusion. See, e.g., Therma-
Scan, 295 F.3d at 635 (“[s]ix confused customers is legally insignificant”); George & Co. LLC v.
Imagination Entm’t Ltd., 575 F.3d 383, 399 (4th Cir. 2009) (four instances of consumer
confusion is at best de minimis); Packman v. Chicago Tribune Co., 267 F.3d 628, 645 (7th Cir.
2001) (discounting four callers as de minimis evidence of confusion).
In the present case, Progressive argues that UPS saturated the market with its mark,
overwhelming Progressive’s steady stream of advertising and strong commercial presence.
However, if this is true, presumably rampant opportunity existed for actual confusion to occur.
Instances of confusion should have been abundant. We believe that if there are a large volume of
contacts or transactions, which could give rise to confusion, and only limited instances of
confusion present themselves, then evidence of actual confusion should receive little weight.
McCarthy § 23:14; see also George & Co., 575 F.3d at 399 (“[T]he company’s failure to
uncover more than a few instances of actual confusion creates a presumption against likelihood
of confusion in the future” when there are so many opportunities for confusion to occur) (internal
citations omitted). Given the record before us, we conclude that this factor weighs in favor of
UPS.
5. Marketing channels
In considering this factor, courts must determine “how and to whom the respective goods
or services of the parties are sold.” Leelanau Wine Cellars, Ltd., 502 F.3d at 519 (quoting Gen.
Motors Corp. v. Keystone Auto. Indus., Inc., 453 F.3d 351, 357 (6th Cir. 2006)). There is less
likelihood of confusion where the goods are sold through different avenues. Id. “Where the
parties have different customers and market their goods or services in different ways, the
likelihood of confusion [also] decreases.” Therma-Scan, 295 F.3d at 636. Progressive contends
that “the overlap between the marketing and advertising is palpable.” (Appellant Br., at pg. 44).
It points to the fact that both parties market their services through the Internet, mailers, cold-
calls, and key word searches through Google and Bing. Progressive concedes that the marketing
channels are not exactly the same, but believes that they are sufficiently similar so as to merit a
finding in its favor.
No. 16-1830 Progressive Distrib. Servs. v. United Parcel Serv., et al. Page 20
But as the district court correctly noted, just because the two parties market their products
on the Internet does not “automatically lead to the conclusion that they use common marketing
channels.” See id. at 637. Most of UPS’s marketing occurred primarily on its website.
The customers it targeted were pre-existing UPS customers that sold goods on eBay and
Amazon. While Progressive’s website no doubt contains some promotional material for its
OrderLink service, the service cannot be purchased or used without first speaking to a
Progressive representative. The primary method that Progressive used to advertise its service
was through the use of paid search engines. Progressive also never targeted customers who were
exclusively Amazon or eBay merchants in their advertising. In sum, the evidence shows that
while some overlap in marketing may have occurred, the parties generally targeted entirely
different consumers, offered diverse services, and relied upon distinct channels. Accordingly,
this factor favors UPS.
6. Likely degree of purchaser care
Generally, the standard for determining whether a likelihood of confusion would arise is
predicated upon an ordinary buyer exercising ordinary caution. A “higher degree of care, in
contrast, is appropriate where the buyer in question has a particular expertise or sophistication.”
Homeowners Grp., 931 F.2d at 1111. “This expectation of greater attention, where appropriate,
diminishes the likelihood of confusion.” Therma-Scan, 295 F.3d at 638.
The district court found that Progressive markets its order fulfillment services to business
seeking “to completely outsource their order fulfilment operations . . . . In short, this is not an
impulsive purchase of an inexpensive item made at the checkout lane of a grocery store.”
(R. 157, Opinion, PageID # 3785–86). Given these circumstances, the court concluded that it
was likely that Progressive’s customers exercised a high degree of care in purchasing services. It
made a similar finding for UPS’s customers and concluded that this factor weighed substantially
in favor of finding of no confusion.
We see no error in this conclusion. Progressive attempts to muddy the issue by claiming
that an overlap exists between the merchants targeted by its service and by UPS. However, this
focus is not appropriate. The significant investment required in selecting Progressive’s services,
No. 16-1830 Progressive Distrib. Servs. v. United Parcel Serv., et al. Page 21
and the commercial aspect of UPS’s customer base suggests that the individuals who would be
utilizing either service would be unlikely to confuse the two parties. Accordingly, this finding
cuts against a likelihood of confusion.
7. UPS’s intent
Progressive next argues that the district court erred when it concluded that UPS had no
intent to benefit from Progressive’s mark. It also claims error when the district court rejected its
argument that UPS demonstrated bad intent by failing to discontinue its use of the mark. Courts
have held that “[i]f a party chooses a mark with the intention of creating confusion between its
products and those of another company, ‘that fact alone may be sufficient to justify an inference
of confusing similarity.’” Therma-Scan, 295 F.3d at 638 (quoting Daddy’s Junky Music Stores,
Inc., 109 F.3d at 286). Circumstantial evidence of copying, particularly the use of a contested
mark with knowledge that the mark is protected, may be sufficient to support an inference of
intentional infringement where direct evidence is not available. Id. at 638–39. However,
knowledge of a trademark, alone, will not support a finding of intent to confuse if other
circumstances show that the defendant believed there was no infringement. See AutoZone, Inc.,
373 F.3d at 800. Moreover, a finding of “bad-faith intent to infringe upon another mark may not
increase the likelihood of confusion if the other seven factors suggest that confusion is
improbable.” Id. at 799.
There is some dispute concerning whether or not UPS displayed bad faith. Certainly,
UPS was aware that Progressive had previously registered the “OrderLink” mark. From this
fact, an inference may be drawn that UPS was aware of the potential for confusion as a result of
Progressive’s prior use. Conversely, UPS has presented evidence undermining a finding of bad
intent. Specifically, UPS points to testimony in which its employees acknowledge Progressive’s
mark but also note that they did not believe such prior use would result in a likelihood of
confusion because many companies used similar marks and because the products appear
substantially different. We find the evidence put forward by Progressive on bad intent to be
equivocal, and accordingly, deem this factor to be neutral.
No. 16-1830 Progressive Distrib. Servs. v. United Parcel Serv., et al. Page 22
8. Expansion of product lines
There is no evidence in the record that either party intends to further expand its
operations or services with respect to the competing marks. Accordingly, the Court does not
consider this factor. 7
9. Summary of factors
As this Court has held, in the course of applying the Frisch factors, “[t]he ultimate
question remains whether relevant consumers are likely to believe that the products or services
offered by the parties are affiliated in some way.” Homeowners Grp., 931 F.2d at 1107. The
factors “imply no mathematical precision, but are simply a guide to help determine whether
confusion is likely.” Id. And a court may find “that at least one factor favors the nonmoving
party” while ultimately concluding that the disputed factor is not sufficient to preclude summary
judgment. Mktg. Displays, Inc., 200 F.3d at 934. The balance of the factors, including the most
significant ones—namely the strength of the mark and the similarity of the marks, see Maker’s
Mark, 679 F.3d at 424 (highlighting what the most important factors are in a likelihood of
confusion analysis)—favor UPS. Accordingly, summary judgment is appropriate.
CONCLUSION
For the foregoing reasons, we AFFIRM the district court’s decision to grant summary
judgment.
7
Progressive argues that the District Court “misunderstood Progressive’s argument and presentation
relating to this factor.” (Appellant Br., at pg. 56). However, it does not provide any evidence that either party
intends to further expand its operations or services. Conclusory allegations that “UPS expanded the quantity of
those services performed, the quantity of advertising and marketing of those services, and the linkage of UPS
ORDERLINK with UPS Marketplace Shipping,” id., are not persuasive.
No. 16-1830 Progressive Distrib. Servs. v. United Parcel Serv., et al. Page 23
____________________________________________________
CONCURRING IN PART AND DISSENTING IN PART
____________________________________________________
RALPH B. GUY, JR., Circuit Judge, concurring in part and dissenting in part. I concur
in the majority’s thorough and well-written opinion in all but one respect. The majority fails to
recognize the error made by the district court in conflating forward confusion and reverse
confusion. The distinction between forward and reverse confusion is important because in
applying the first Frisch factor, the strength of plaintiff’s mark, a conclusion that the mark is
weak supports a claim for reverse confusion. In fact, it is the very foundation of reverse
confusion.
As the Third Circuit observed in A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc.:
[I]n a direct confusion claim, a plaintiff with a commercially strong mark is more
likely to prevail than a plaintiff with a commercially weak mark. Conversely, in a
reverse confusion claim, a plaintiff with a commercially weak mark is more likely
to prevail than a plaintiff with a stronger mark, and this is particularly true when
the plaintiff’s weaker mark is pitted against a defendant with a far stronger mark.
237 F.3d 198, 231 (3d Cir. 2000); see also Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber
Co., 561 F.2d 1365, 1367-68, 1372 (10th Cir. 1977) (jury could find reverse confusion where
large junior user’s multi-million-dollar nationwide advertising campaign overpowered small
senior user’s mark). We suggested the propriety of this approach in Ameritech, which the
majority cites. Ameritech, Inc. v. Am. Info. Techs. Corp., 811 F.2d 960 (6th Cir. 1987). There,
we observed that the senior user in a reverse-confusion case “loses the value of the trademark –
its product identity, corporate identity, control over its goodwill and reputation, and ability to
move into new markets,” and relied on the junior user’s comparatively massive brand
recognition to rule that the senior user was entitled to consideration of its reverse-confusion
claim. Id. at 964-66.
Although it is true that plaintiff alternatively argued that its mark is strong, it premised
this argument on conceptual strength because the mark is registered and incontestable. The
majority correctly rejected this argument in light of the mark’s descriptiveness, third party use,
No. 16-1830 Progressive Distrib. Servs. v. United Parcel Serv., et al. Page 24
and lack of commercial strength. Opinion, supra, at 13. But, as discussed above, the proper
focus in reverse-confusion cases is whether the senior user’s mark is commercially weaker than
the junior user’s mark. See A&H Sportswear, 237 F.3d at 231. Plaintiff argued the comparative
commercial weakness of its mark when it cited “search results on Google and Bing where UPS
OrderLink pervades the search results” to show that UPS “overwhelmed Progressive on the
internet in e-commerce[.]”
Favoring a senior user’s comparatively weak mark preserves the distinction between
forward- and reverse-confusion claims. The district court instead applied the forward-confusion
analysis and concluded that Progressive’s weak mark weighed against a finding of likelihood of
confusion. It thereby erred.
One cannot predict whether the district court would have reached a different result
applying the correct analysis. The majority is right that certain factors weigh strongly in
defendant’s favor, namely the lack of evidence of actual confusion and the likely high degree of
purchaser care. But in this circuit, “the most important . . . factors are similarity and strength of
the mark[.]” Maker’s Mark Distillery, Inc. v. Diageo North America, Inc., 679 F.3d 410, 419
(6th Cir. 2012) (quotation omitted). I would remand to the district court to reconsider summary
judgment in light of the weakness of Progressive’s mark compared to the commercial strength of
UPS’s mark.