Versatop Support Systems v. Georgia Expo, Inc. , 921 F.3d 1364 ( 2019 )

United States Court of Appeals
for the Federal Circuit
______________________
VERSATOP SUPPORT SYSTEMS, LLC,
Plaintiff-Appellant
v.
GEORGIA EXPO, INC.,
Defendant-Appellee
______________________
2018-1208
______________________
Appeal from the United States District Court for the
District of Oregon in No. 3:15-cv-02030-JE, Magistrate
Judge John Jelderks.
______________________
Decided: April 19, 2019
______________________
DAVID PAUL COOPER, Kolisch Hartwell, P.C., Portland,
OR, argued for plaintiff-appellant. Also represented by
OWEN W. DUKELOW, DESMOND JOHN KIDNEY, II.
JOHN L. NORTH, Hill Kertscher & Wharton LLP, At-
lanta, GA, argued for defendant-appellee.
______________________
Before NEWMAN, LINN, and DYK, Circuit Judges.
NEWMAN, Circuit Judge.
2 VERSATOP SUPPORT SYSTEMS v. GEORGIA EXPO, INC.
The United States District Court for the District of Or-
egon held, on cross-motions for summary judgment, that
Georgia Expo, Inc. did not infringe VersaTop Support Sys-
tems’ patent, copyright, or trademark rights. 1 Only the
trademark issue is before us.
The district court held that Georgia Expo’s use of Ver-
saTop’s trademarks in advertising and brochures did not
violate the Trademark Act because Georgia Expo had not
“affixed” the VersaTop trademarks to goods that were “sold
or transported in commerce.” The court held that such “use
in commerce” was required for trademark infringement li-
ability, and therefore the relevant statutory provision con-
cerning likelihood of confusion was not applicable.
Summary judgment of noninfringement in favor of Georgia
Expo was granted on this ground.
We conclude that the district court erred in law. On
the correct law, violation of the Trademark Act was estab-
lished on the admitted facts. We reverse the district court’s
judgment, and remand for appropriate further proceed-
ings.
BACKGROUND
VersaTop and Georgia Expo are competitors in the
“drape and rod” industry. Both parties produce and sell
systems of modular rod and pole structures, for assembly
to form sectional spaces such as trade show booths and
other drape-separated structures, as well as temporary
barricades. VersaTop’s system for coupling structural com-
ponents is the subject of U.S. Patent No. 9,211,027 (“the
’027 patent”), and in the district court record is called the
1 VersaTop Support Sys., LLC v. Ga. Expo, Inc.,
No. 3:15-cv-02030-JE, 2017 WL 1364617 (D. Or. Feb. 16,
2017) (Findings and Recommendations) (“F&R”); 2017 WL
1393050 (D. Or. Apr. 13, 2017) (“Dist. Ct. Order”); (D. Or.
Apr. 17, 2017) (Final Judgment) (J.A. 94).
VERSATOP SUPPORT SYSTEMS v. GEORGIA EXPO, INC. 3
“‘ball and crown’ coupler.” F&R at *1. VersaTop states
that since 2011 it has sold these systems with the trade-
marks PIPE & DRAPE 2.0™ and 2.0™. 2 Am. Compl. ¶ 14
(J.A. 98).
The complaint states that Georgia Expo distributed ad-
vertising and brochures that contained these VersaTop
trademarks as well as pictures of the VersaTop coupler.
The complaint includes pictures of two of the flyers distrib-
uted by Georgia Expo:
Am. Compl. ¶ 19; Counts IV, V (J.A. 102–05); Exs. to Am.
Compl. H, I (J.A. 153, 156).
On October 28, 2015, VersaTop filed a complaint with
counts for trademark and copyright violations. On
2 These marks have since been federally registered
by VersaTop.
4 VERSATOP SUPPORT SYSTEMS v. GEORGIA EXPO, INC.
December 21, 2015, VersaTop filed an amended complaint
with an additional count for infringement of the ’027 pa-
tent, which had issued six days earlier. In response, Geor-
gia Expo denied any and all infringement. Following
discovery, the parties filed cross-motions for summary
judgment. The magistrate judge issued Findings and Rec-
ommendations, which were adopted in full by the district
court. See n.1.
The district court found that VersaTop owns the trade-
marks PIPE & DRAPE 2.0 and 2.0. F&R at *4. The court
also found that “Georgia Expo does not dispute that its Oc-
tober 2015 brochures included a picture of VersaTop’s cou-
pler product and references to VersaTop’s trademarked
product names.” Id. at *4. However, the district court
ruled that because Georgia Expo had not affixed the Ver-
saTop trademarks to goods sold or transported in com-
merce, Georgia Expo had not violated VersaTop’s
trademark rights. Id. at *4–5. The court stated:
Georgia Expo correctly notes, as applied to goods,
“‘use in commerce’ requires that the mark be
‘placed in any manner on the goods or their con-
tainers or the displays associated therewith or on
the tags or labels affixed thereto, or if the nature of
the goods makes such placement impracticable,
then on documents associated with the goods or
their sale, and (B) the goods are sold or transported
in commerce.’” 15 U.S.C. §1127 (“use in commerce”
definition (1)(A)-(B)).
Id. at *4–5. The court referred to VersaTop’s argument
that the Trademark Act at 15 U.S.C. § 1125(a) (Section
43(a) of the Lanham Act) prohibits false designation of
origin and creating a likelihood of confusion, but held that
the statute did not apply because “neither Georgia Expo’s
brochure nor its October 2015 tradeshow activities meet
the requirements for the applicable definition of ‘use in
commerce’ under the Lanham Act.” Id. at *5. On this
VERSATOP SUPPORT SYSTEMS v. GEORGIA EXPO, INC. 5
reasoning, the district court held that no remedy is availa-
ble for Georgia Expo’s uses of VersaTop’s trademarks, and
rejected VersaTop’s request for an injunction. Id. The
court granted Georgia Expo’s motion for summary judg-
ment and denied VersaTop’s cross-motion. Dist. Ct. Order
at *1.
On this appeal, Georgia Expo acknowledges that it “cir-
culated a flyer in late September 2015 indicating that it
had a ‘Pipe & Drape 2.0’ ‘in development,’ which could be
‘expected Q1 2016,’” Georgia Expo Br. 2, and does not con-
test that its “brochures included a picture of VersaTop’s
coupler product and a reference to VersaTop’s product
name.” F&R at *1, *4. Nor does Georgia Expo “dispute
VersaTop’s ownership of the trademarks at issue.” Id. at
*4. VersaTop states that Section 43(a) of the Lanham Act
establishes a statutory cause of action for likelihood of con-
fusion, as is plainly present in this case. Georgia Expo re-
sponds only that it has not used the VersaTop marks “in
commerce,” and that the district court correctly interpreted
the statute to hold that there had been no violation of fed-
eral trademark law.
DISCUSSION
Jurisdiction
VersaTop filed a notice of appeal to the U.S. Court of
Appeals for the Ninth Circuit. VersaTop then filed a “stip-
ulated motion” requesting transfer of the appeal to the Fed-
eral Circuit pursuant to 28 U.S.C. § 1631 (“Transfer to cure
want of jurisdiction”). The Ninth Circuit agreed that trans-
fer was appropriate. VersaTop Support Sys., Inc. v. Ga.
Expo, Inc., No. 17–35406, 2017 WL 9360849, at *1 (9th Cir.
Nov. 16, 2017) (citing Amity Rubberized Pen Co. v. Mkt.
Quest Grp. Inc., 793 F.3d 991 (9th Cir. 2015)).
Appellate jurisdiction is with the Federal Circuit, for
this is an “appeal from a final decision of a district court in
a civil action” that arises under an “Act of Congress
6 VERSATOP SUPPORT SYSTEMS v. GEORGIA EXPO, INC.
relating to patents.” 28 U.S.C. § 1295(a)(1) (2012). See
Atari, Inc. v. JS & A Grp., Inc., 747 F.2d 1422, 1427–30
(Fed. Cir. 1984) (en banc) (discussing assignment of appel-
late case jurisdiction exclusively to the Federal Circuit
when the complaint includes a claim arising under the pa-
tent law); see also Zenith Elecs. Corp. v. Exzec, Inc., 182
F.3d 1340, 1346 (Fed. Cir. 1999) (“Because the complaint
contained patent infringement claims, the district court’s
jurisdiction arose under 28 U.S.C. § 1338(a). This estab-
lished the path of appeal, giving exclusive jurisdiction in
this court pursuant to 28 U.S.C. §§ 1292(c)(1) and
1295(a)(1).”); Abbott Labs. v. Brennan, 952 F.2d 1346,
1349–50 (Fed. Cir. 1991) (“The path of appeal is deter-
mined by the basis of jurisdiction in the district court, and
is not controlled by the district court’s decision or the sub-
stance of the issues that are appealed.”); Amity Rubberized
Pen, 793 F.3d at 994 (“The existence of a single claim cre-
ated by federal patent law is sufficient to trigger the Fed-
eral Circuit’s exclusive appellate jurisdiction over the
entire case; the fact that a complaint also asserts non-pa-
tent claims, or that non-patent issues will predominate, is
immaterial.”).
Standards of Review
For review of non-patent law issues whose appeal
reaches the Federal Circuit on pendent jurisdiction, we ap-
ply the law of the regional circuit in which the district court
resides. See Nautilus Grp., Inc. v. ICON Health & Fitness,
Inc., 372 F.3d 1330, 1334 (Fed. Cir. 2004) (“In a trademark
case, we apply the law of the applicable regional circuit, in
this case, the Ninth Circuit.” (citing Payless Shoesource,
Inc. v. Reebok Int’l Ltd., 998 F.2d 985, 987–88 (Fed. Cir.
1993))).
Summary judgment is reviewed for correctness in law.
Bravo v. City of Santa Maria, 665 F.3d 1076, 1083 (9th Cir.
2011); see Playboy Enters., Inc. v. Netscape Comm’ns Corp.,
354 F.3d 1020, 1023–24 (9th Cir. 2004) (“Viewing the
VERSATOP SUPPORT SYSTEMS v. GEORGIA EXPO, INC. 7
evidence in the light most favorable to [the non-movant],
and drawing all reasonable inferences in [that party’s] fa-
vor, we must determine whether there are any genuine is-
sues of material fact and whether the district court
correctly applied the relevant substantive law.”).
The Trademark Statute
The purposes of trademark law are summarized in Ti-
tle 15, Chapter 22—Trademarks:
The intent of this chapter is to regulate commerce
within the control of Congress by making actiona-
ble the deceptive and misleading use of marks in
such commerce; to protect registered marks used in
such commerce from interference by State, or terri-
torial legislation; to protect persons engaged in
such commerce against unfair competition; to pre-
vent fraud and deception in such commerce by the
use of reproductions, copies, counterfeits, or color-
able imitations of registered marks; . . . .
15 U.S.C. § 1127 (Section 45 of the Lanham Act). The leg-
islative record reports that “when it is considered that the
protection of trademarks is merely protection to good will,
to prevent diversion of trade through misrepresentation,
and the protection of the public against deception, a sound
public policy requires that trademarks should receive na-
tionally the greatest protection that can be given them.”
S. Rep. No. 79–1333, at 5–6 (1946). Implementing these
purposes, the statute provides:
§ 1125 False designations of origin, false de-
scriptions, and dilution [Section 43]
(a)(1) Any person who, on or in connection with any
goods or services, or any container for goods, uses
in commerce any word, term, name, symbol, or de-
vice, or any combination thereof, or any false des-
ignation of origin, false or misleading description of
8 VERSATOP SUPPORT SYSTEMS v. GEORGIA EXPO, INC.
fact, or false or misleading representation of fact,
which—
(A) is likely to cause confusion, or to cause
mistake, or to deceive as to the affiliation,
connection, or association of such person
with another person, or as to the origin,
sponsorship, or approval of his or her
goods, services, or commercial activities by
another person, or
(B) in commercial advertising or promo-
tion, misrepresents the nature, character-
istics, qualities, or geographic origin of his
or her or another person’s goods, services,
or commercial activities,
shall be liable in a civil action by any person who
believes that he or she is or is likely to be damaged
by such act.
Title 15 also contains the statutory provisions for federal
registration of trademarks, administered by the Patent
and Trademark Office; the title includes a definitional sec-
tion, including a definition of “use in commerce”:
§ 1127 Construction and definitions, intent of
chapter [Section 45]
***
The term “use in commerce” means the bona fide
use of a mark in the ordinary course of trade, and
not made merely to reserve a right in a mark. For
purposes of this chapter, a mark shall be deemed to
be in use in commerce--
(1) on goods when--
(A) it is placed in any manner on the goods
or their containers or the displays associ-
ated therewith or on the tags or labels
VERSATOP SUPPORT SYSTEMS v. GEORGIA EXPO, INC. 9
affixed thereto, or if the nature of the goods
makes such placement impracticable, then
on documents associated with the goods or
their sale, and
(B) the goods are sold or transported in
commerce, and
(2) on services when it is used or displayed in the
sale or advertising of services and the services are
rendered in commerce, or the services are rendered
in more than one State or in the United States and
a foreign country and the person rendering the ser-
vices is engaged in commerce in connection with
the services.
When the Trademark Act was amended in 1988 to au-
thorize federal registration based on “intent to use,” as well
as actual use in commerce, the legislative reports explicitly
recognized that this statutory definition of “use in com-
merce” applies to the use of a trademark for purposes of
federal registration, and reaffirmed that an infringing use
may be “use of any type”:
[T]he revised definition [of use in commerce] is in-
tended to apply to all aspects of the trademark reg-
istration process, from applications to register,
whether they are based on use or on intent-to-use,
and statements of use filed under Section 13 of the
Act, to affidavits of use filed under Section 8, re-
newals and issues of abandonment. Clearly, how-
ever, use of any type will continue to be considered
in an infringement action.
S. Rep. No. 100–515, at 45 (1988). See also H.R. Rep. No.
100–1028, at 15 (1988) (“Section 29 also amends the defini-
tion of ‘use in commerce’ in Section 45, to require the bona
fide use of a mark in the ordinary course of trade. . . . The
definition of ‘use in commerce’ is consistent with the Com-
mittee’s intention to eliminate the practice of making a
10 VERSATOP SUPPORT SYSTEMS v. GEORGIA EXPO, INC.
single shipment—‘token use’ solely for the purpose of re-
serving a mark.”).
The Ninth Circuit has had occasion to refer to the dis-
tinction between “use in commerce” as a requirement for
federal trademark registration—as defined in Section
1127—and infringing uses of a mark. In Playboy Enter-
prises, 354 F.3d at 1023–24, the court applied the statute
to charges of likelihood of confusion and dilution based on
Netscape’s “keyed” internet advertising use of Playboy’s
marks, and explained:
In addition to defining “commerce,” 15 U.S.C.
§ 1127 also defines “use in commerce.” 15 U.S.C.
§ 1127. That latter definition applies to the re-
quired use a plaintiff must make in order to have
rights in a mark, as defined by 15 U.S.C. § 1051.
See Planetary Motion, Inc. v. Techsplosion, Inc.,
261 F.3d 1188, 1194–95 (11th Cir. 2001). It does
not enter into our jurisdictional analysis.
Id. at 1024 n.11. The court held that there were factual
issues as to whether Netscape’s use of Playboy’s marks was
an infringing use based on application of the circuit’s Sleek-
craft factors, unrelated to the “use in commerce” definition
of § 1127. Id. at 1031.
The Ninth Circuit revisited this issue in Network Auto-
mation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d
1137 (9th Cir. 2011). In answer to the question of “whether
the use of another’s trademark as a search engine keyword
to trigger one’s own product advertisement violates the
Lanham Act,” id. at 1148, the Ninth Circuit ruled that a
sufficient use of Network Automation’s mark had been
made by Advanced Systems, and that it “agree[d] with the
Second Circuit that such use is a ‘use in commerce’ under
the Lanham Act.” Id. at 1144–45 (citing Rescuecom Corp.
v. Google Inc., 562 F.3d 123, 127 (2d Cir. 2009)).
VERSATOP SUPPORT SYSTEMS v. GEORGIA EXPO, INC. 11
The treatise McCarthy on Trademarks and Unfair
Competition explains that the “use in commerce” definition
in § 1127—
was clearly drafted to define the types of “use” that
are needed to qualify a mark for federal registra-
tion—not as a candidate for infringement. It de-
fines the kinds of “use” needed to acquire
registerable trademark rights—not to infringe
them.
4 McCarthy § 23:11.50 (5th ed. 2018) (footnote omitted); see
id. (“This statutory anachronism certainly was never in-
tended to limit the scope of ‘uses’ that would constitute in-
fringement.”).
In Hasbro, Inc. v. Sweetpea Entertainment, Inc.,
No. 13-3406, 2014 WL 12586021 (C.D. Cal. Feb. 25, 2014),
the district court again stated the distinction between in-
fringing use and the “use in commerce” requirement for
federal registration:
Sweetpea’s statement of the law is incorrect. The
Ninth Circuit has explained that the definition of
“use in commerce” in Section 1127 “applies to the
required use a plaintiff must make in order to have
rights in a mark . . . .” Playboy Enterprises, Inc. v.
Netscape Commc’ns Corp., 354 F.3d 1020, 1024
n.11 (9th Cir. 2004). Section 1127 is not, however,
the legal standard for proving infringement.
Id. at *9 (omission in original).
Contrary to this precedent, the district court in this
case incorrectly applied the definition of “use in commerce”
that is included in the statute for purposes of trademark
registration. This definition does not apply to trademark
infringement. See Network Automation, 638 F.3d at 1144–
45; Playboy, 354 F.3d at 1024 n.11.
12 VERSATOP SUPPORT SYSTEMS v. GEORGIA EXPO, INC.
The cases that Georgia Expo cites on appeal do not sup-
port a contrary holding. Georgia Expo cites Karl Storz En-
doscopy-America, Inc. v. Surgical Technologies, Inc., 285
F.3d 848 (9th Cir. 2002), in which the defendant repaired
damaged endoscopes that continued to bear the original
manufacturer’s engraved name “Karl Storz”; the court rea-
soned that reasonable repair would not infringe the trade-
mark, stating that “‘use in commerce’ appears to
contemplate a trading upon the goodwill of or association
with the trademark holder.” Id. at 855. This case does not
support Georgia Expo’s use of VersaTop’s trademarks.
Georgia Expo also cites Freecycle Network, Inc. v. Oey,
505 F.3d 898 (9th Cir. 2007). Again, this case is factually
unrelated. In Freecycle, an infringement action, the de-
fendant Oey had urged public opposition to trademark reg-
istration of the word “freecycle.” The Ninth Circuit found
that “[a]s a threshold matter, Oey’s actions likely did not
constitute a ‘use in commerce,’ 15 U.S.C. § 1125(a)(1), as
the record in this case does not indicate they were made to
promote any competing service or reap any commercial
benefit whatsoever.” Id. at 903. In contrast, Georgia Expo
does not deny commercial purpose.
The district court in this case declined to consider the
factors relevant to likelihood of confusion. In Brookfield
Communications, Inc. v. West Coast Entertainment Corp.,
the Ninth Circuit explained:
The core element of trademark infringement is the
likelihood of confusion, i.e., whether the similarity
of the marks is likely to confuse customers about
the source of the products.
174 F.3d 1036, 1053 (9th Cir. 1999) (quoting Official Air-
line Guides, Inc. v. Goss, 6 F.3d 1385, 1391 (9th Cir. 1993));
see Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457
F.3d 1062, 1075–76 (9th Cir. 2006) (likelihood of confusion
arises “when customers viewing the mark would probably
assume that the product or service it represents is
VERSATOP SUPPORT SYSTEMS v. GEORGIA EXPO, INC. 13
associated with the source of a different product or service
identified by a similar mark” (quoting Fuddruckers, Inc. v.
Doc’s B.R. Others, Inc., 826 F.2d 837, 845 (9th Cir. 1987))).
Thus, the purposes of trademark law are implemented to
“help[] assure a producer that it (and not an imitating com-
petitor) will reap the financial, reputation-related rewards
associated with a desirable product.” Qualitex Co. v. Ja-
cobson Prods. Co., 514 U.S. 159, 164–65 (1995).
Pursuant to the statutory purposes, the Ninth Circuit
developed the Sleekcraft factors for determining likelihood
of confusion. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,
348–49 (9th Cir. 1979), abrogated on other grounds by Mat-
tel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 810
n.19 (9th Cir. 2003). These factors, as summarized in Au-
Tomotive Gold, are “(1) strength of the mark(s); (2) related-
ness of the goods; (3) similarity of the marks; (4) evidence
of actual confusion; (5) marketing channels; (6) degree of
consumer care; (7) defendant’s intent; (8) likelihood of ex-
pansion.” 547 F.3d at 1075–76. The Ninth Circuit has em-
phasized that “the eight factors [Sleekcraft] recited are not
exhaustive,” and should be applied “in a flexible manner.”
Network Automation, 638 F.3d at 1145.
The Ninth Circuit has also described the “trinity [that]
constitutes the most crucial body of the Sleekcraft analy-
sis,” viz., comparison of the marks, the similarity of the
goods or services, and the identity of the marketing and ad-
vertising channels. GoTo.Com, Inc. v. Walt Disney Co., 202
F.3d 1199, 1207 (9th Cir. 2000); see Network Automation,
638 F.3d at 1145 (discussing flexibility of the analysis and
stating that in certain cases, “only some of [the Sleekcraft
factors] are relevant to determining whether confusion is
likely in the case at hand”).
Georgia Expo admitted that it used VersaTop’s marks
in its advertising and brochures, and that the parties “com-
pete directly” in the drape and rod industry. F&R at *1,
*4; Georgia Expo Br. 1–2. The type of goods sold by both
14 VERSATOP SUPPORT SYSTEMS v. GEORGIA EXPO, INC.
companies—the pipe and drape systems—are identical.
See F&R at *1 (“[Georgia Expo] is a competitor to VersaTop
in the market for exhibition pipe and drape products.”). It
is undisputed that the parties operate in the same market-
ing channels—the flyers were distributed by Georgia Expo
for an industry trade show. See F&R at *1 (“VersaTop’s
Complaint included three photographs it asserts were
taken at an October 2015 trade show at which Georgia
Expo presented the coupler product that VersaTop alleged
Georgia Expo was offering for sale.”)
Georgia Expo, in both its own motion for summary
judgment, and in opposition to VersaTop’s cross-motion,
made no argument regarding these likelihood of confusion
factors, contending only that there was no evidence of ac-
tual confusion. See VersaTop Support Sys., Inc. v. Georgia
Expo, Inc., No. 3:15-cv-02030-JE (D. Or. Apr. 13, 2017),
ECF Nos. 34, 40; see also J.A. 334–35. However, “[t]he fail-
ure to prove instances of actual confusion is not dispositive
against a trademark plaintiff, because actual confusion is
hard to prove . . . .” Brookfield, 174 F.3d at 1050; see also
Au-Tomotive Gold, 457 F.3d at 1077 (same); Eclipse Assocs.
Ltd. v. Data Gen. Corp., 894 F.2d 1114, 1118–19 (9th Cir.
1990) (“Though the court found no evidence of actual con-
fusion, this is merely one factor to be considered . . . and it
is not determinative.” (omission in original) (quoting Park
‘N Fly, Inc. v. Dollar Park & Fly, Inc., 782 F.2d 1508, 1509
(9th Cir. 1986))).
The Ninth Circuit stated in Au-Tomotive Gold, 457
F.3d at 1075, “in cases where the evidence is clear and tilts
heavily in favor of a likelihood of confusion, we have not
hesitated to affirm summary judgment on this point.” And
in Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d
1002, 1019 (9th Cir. 2004), the court held that the trade-
mark owner was entitled to summary judgment on a claim
of likelihood of confusion where, inter alia, the marks were
identical, the goods were related, and the marketing chan-
nels overlapped. We therefore “conclude as a matter of law
VERSATOP SUPPORT SYSTEMS v. GEORGIA EXPO, INC. 15
that likelihood of infringement is clear cut here.” Au-To-
motive Gold, 457 F.3d at 1075. The district court’s judg-
ment in favor of Georgia Expo is reversed, and judgment is
entered in favor of VersaTop. We remand for any appro-
priate further proceedings.
REVERSED AND REMANDED