Easton v. Primal Wear, Inc., No. 17 C 6081, Slip Op. (N.D. Ill. Mar. 29, 2019) (Tharp, J.).

Judge Tharp denied the plaintiffs’ (collectively “Primal Mode”) Fed. R. Civ. P. 56 motion for summary judgment and defendant Primal Wear’s Fed. R. Civ. P. 12(b)(1) & (6) motion to dismiss in this Lanham Act trademark infringement and unfair competition case involving Primal Mode’s PRIMAL MODE marks and Primal Wear’s PRIMAL and PRIMAL WEAR marks.

Of particular note, the Court held as follows:

  • Primal Wear did not meet its burden of proving that Primal Mode abandoned its mark by not having sold shorts or pants for three or more years. The deposition testimony that Primal Wear relied upon was equivocal and Primal Mode’s deponent repeatedly said that his memory was imperfect and that the company’s business records were more reliable. And those business records did not establish a presumption of abandonment as they showed sales of shorts and pants during the prior three years.
  • Primal Wear did not sufficiently support its argument that restricting Primal Wear’s description of goods to exclude cycling wear would avoid likelihood of confusion. Conclusory statements were not sufficient.
  • Primal Wear’s admission before the Trademark Office that there was a likelihood of confusion between the parties’ marks was not case dispositive because: 1) the Court considers whether consumers are likely to be confused, not the parties’ respective belief as to likely confusion; and 2) because the Trademark Office never ruled upon the issue, so Primal Wear is not bound by the alleged admission.
  • Likelihood of confusion is a question of fact typically reserved for juries. As to the likelihood of confusion factors, the Court held as follows:
    1. The similarity of the marks “cut both ways,” but overall add some weight toward likelihood of confusion.
    2. The absence of actual confusion evidence ways in Primal Wear’s favor, but it is not absolute because, as the Seventh Circuit acknowledges, actual confusion is so difficult to identify that its absence only shows that the parties have not found any.
    3. While there are differences in the parties’ apparel bearing their respective marks, the clothing is similar enough to lean toward likelihood of confusion.
    4. Primal Wear’s marks were “quite strong.”
    5. The area and manner of concurrent use weighed against likelihood of confusion. Primal Wear advertised to large retailers and at major cycling events. Primal Mode advertised largely by word of mouth and internet.
  • Taken together, the likelihood of confusion factors were not so one-sided as to warrant summary judgment.
  • While Primal Wear may eventually be able to show that Primal Mode was aware of Primal Wear’s trademark use well before filing suit, warranting a laches finding, the facts were not there for summary judgment on laches.