Third Circuit Finds Ample Evidence of Likelihood of Confusion Between ForsLean and Forsthin Marks
The Third Circuit had little positive to say about a District Court's analysis of the likelihood of confusion question in this trademark battle between the owners of the marks ForsLean and Forsthin.
The plaintiff, Sabinsa Corporation, an ingredient supplier for "nutraceutical" manufacturers, markets a product derived from the plant Coleus forskohlii, which is apparently intended to promote lean body mass. Sabinsa marketed its ForsLean product to nutraceutical manufacturers and directly to the public.
The defendant, Creative Compounds, also supplies ingredients to the nutraceutical industry. In 2004, it began selling its forskohlin product under the name Forsthin, which prompted a cease-and-desist letter from Sabinsa.
The matter ultimately ended up in litigation in federal district court in New Jersey and, following a bench trial, the District Court found in favor of Creative Compounds, concluding that there was no likelihood of confusion.
The Third Circuit strongly disagreed with the District Court's assessment of the likelihood of confusion.
Near the beginning of its analysis, the Third Circuit noted that it had reversed the same district court judge's likelihood of confusion analysis in an earlier case for similar errors made here. The Third Circuit then proceeded to reject almost all of the District Court's conclusions on the likelihood of confusion factors, often making rather pointed remarks about the court's analysis.
On the similarity of the marks factor, the Third Circuit concluded that the District Court's reasoning contained "clear errors" in that the court focused on "minute differences" in the logos while "ignoring evidence" that the marks were often used in plain text without graphics. It also took issue with the court's finding that the words "lean" and "thin" would convey different mental impressions to consumers notwithstanding its recognition that the terms are interchangeable to consumers. In the end, the Third Circuit concluded that this factor favored Sabinsa.
The Third Circuit similarly took issue with the District Court's analysis of the strength of the mark factor, finding that the court had failed to analyze the conceptual or commercial strength of the ForsLean mark and had conflated the factors by referring to actual confusion and consumer sophistication in connection with the strength factor. Again, the Third Circuit concluded that this factor actually favored Sabinsa.
With respect to Creative Compounds' intent in adopting the Forsthin mark, the Third Circuit noted that the District Court "ignored whole swaths of evidence and failed to make any subordinate findings regarding intent" and therefore it was "impossible to determine whether it appropriately comprehended the standard." But, because this factor involved disputed factual issues, it could not conclude that the factor favored either party.
Ultimately, the Third Circuit concluded that six of the nine factors favored Sabinsa as a matter of law. Concluding that remand to re-weigh the factors under the "proper legal standards" would serve no useful purpose and would waste judicial resources, the Third Circuit reversed and remanded for entry of judgment in favor of Sabinsa.
The case cite is Sabinsa Corp. v. Creative Compounds, LLC, No. 08-3255 (3d Cir. July 9, 2010).
