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Under Armour, Inc. v. Body Armor Nutrition, LLC

United States District Court, Fourth Circuit

August 23, 2013

UNDER ARMOUR, INC., Plaintiff
v.
BODY ARMOR NUTRITION, LLC, Defendant

MEMORANDUM

James K. Bredar, United States District Judge

Under Armour, Inc. (“Plaintiff”) brought this suit against Body Armor Nutrition, LLC (“Defendant”) for trademark infringement, trademark dilution, unfair competition, cybersquatting, and cancellation of trademark registration. Now pending before the Court are Defendant’s motion for partial summary judgment (ECF No. 57), Plaintiff’s motion for partial summary judgment (ECF No. 61), Plaintiff’s motion to compel and for sanctions (ECF No. 82), and the parties’ motions to seal various documents (ECF Nos. 59, 65, 69, 74, 78, 86, 89, 92). The issues have been briefed and no hearing is required. Local Rule 105.6. For the reasons set forth below, Defendant’s motion for partial summary judgment will be DENIED, Plaintiff’s motion for partial summary judgment will be DENIED, Plaintiff’s motion to compel and for sanctions will be GRANTED IN PART and DENIED IN PART, and the parties’ various motions to seal documents will be DENIED WITHOUT PREJUDICE.

I. BACKGROUND

Plaintiff is a Maryland corporation and is “one of the world’s most successful, popular, and well-known providers of performance apparel, footwear, accessories, and sporting goods.” (Second Am. Compl. (“SAC”) ¶¶ 2, 8; ECF No. 67.) Plaintiff alleges that it began using and promoting the UNDER ARMOUR mark in connection with its apparel products in 1996. (Id. ¶ 9.) In addition, Plaintiff has applied for and received numerous federal registrations of UNDER ARMOUR and other related marks, including its interlocking logo, in connection with various products. (See Id . ¶ 47.) “Since at least as early as 2004, [Plaintiff] has used and promoted the tagline mark PROTECT THIS HOUSE in connection with its products.” (Id. ¶ 45.) Plaintiff alleges that it “began offering bottled water” as early as March 2005. (Id. ¶ 12.) Plaintiff also alleges that it owns pending applications for the UNDER ARMOUR mark and its logo for, among other beverage products, “carbonated waters; drinking water; drinking water with vitamins; energy drinks; flavored bottled water; fruit beverages; fruit drinks; fruit juices; herbal juices; isotonic beverages; isotonic drinks; smoothies; sports drinks.” (Id. ¶ 16.)

Plaintiff alleges that it “has sold billions of dollars worth of products under the UNDER ARMOUR name/mark” and related marks. (Id. ¶ 26.) “In 2011 alone, [Plaintiff] sold more than $1.4 billion worth of products.” (Id.) In addition, Plaintiff alleges that “[f]or many years, [Plaintiff] has spent tens of millions of dollars annually advertising, marketing, and promoting its ARMOUR marks.” (Id. ¶ 30.) “Since 2009, [Plaintiff] has spent over $100 million annually on marketing and promotional activities.” (Id.)

Defendant is a Delaware limited liability company that makes and sells sports beverages, including “BODYARMOR SUPERDRINK, a line of nutrient-enhanced juice beverages.” (SAC ¶ 3; Def. Summ. J. Br. at 3, ECF No. 57.) According to Defendant, the idea for this product “was conceived in 2006” by the father of Defendant’s CEO after he watched movies in which characters wore body armor. (Id.) In 2007, a company associated with the father of Defendant’s CEO “filed an intent-to-use application for the trademark BODY ARMOR with the United States Patent and Trademark Office.” (Id. at 4.) In 2010, the domain name WWW.DRINKBODYARMOR.COM was registered on behalf of Defendant, which now operates the website to promote its product. (Id.)

On April 26, 2012, Plaintiff filed this suit, alleging that Defendant’s mark, logo and “Protect Restore” tagline infringe on Plaintiff’s trademark rights. On May 15, 2013, Defendant moved for summary judgment on Plaintiff’s federal trademark dilution and cybersquatting claims. On the same day, Plaintiff moved for summary judgment on its trademark infringement and unfair competition claims. Plaintiff has also filed a motion to compel, and both parties have filed motions to seal various documents.

II. LEGAL STANDARD

A party seeking summary judgment must show “that there is no genuine dispute as to any material fact” and that he is “entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). If a party carries this burden, then the court will award summary judgment unless the opposing party can identify specific facts, beyond the allegations or denials in the pleadings, that show a genuine issue for trial. Fed.R.Civ.P. 56(e)(2). To carry these respective burdens, each party must support its assertions by citing specific evidence from the record. Fed.R.Civ.P. 56(c)(1)(A). The court will assess the merits of the motion, and any responses, viewing all facts and reasonable inferences in the light most favorable to the opposing party. Scott v. Harris, 550 U.S. 372, 378 (2007); Iko v. Shreve, 535 F.3d 225, 230 (4th Cir. 2008).

III. ANALYSIS

A. Plaintiff’s Motion for Partial Summary Judgment

Plaintiff moves for summary judgment in its favor in connection with its trademark infringement and unfair competition claims under federal and common law (Counts I, II, V, VII). The parties agree that the tests for all of these claims are the same. To prevail on these claims, Plaintiff must establish: (1) ownership of a valid, protectable trademark; and (2) a likelihood of confusion among consumers caused by Defendant’s use of its marks. Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 930 (4th Cir. 1995). Plaintiff has not met its burden of establishing that there is no genuine issue of material fact as to the likelihood of confusion caused by Defendant’s use of its marks.

In this circuit, the relevant inquiry is whether Defendant’s use of Plaintiff’s marks is likely to cause confusion or mistake, or to deceive an ordinary consumer “as to the source or sponsorship of the goods.” Lone Star, 43 F.3d at 933 (citing Anheuser-Busch, Inc. v. L. & L. Wings, Inc., 962 F.2d 316, 318 (4th Cir. 1992)) (internal quotation marks omitted). The Fourth Circuit has identified nine non-exhaustive, non-mandatory factors “that may be relevant in determining the ultimate statutory question of likelihood of confusion”: “(1) the strength or distinctiveness of the plaintiff’s mark as actually used in the marketplace; (2) the similarity of the two marks to consumers; (3) the similarity of the goods or services that the marks identify; (4) the similarity of the facilities used by the markholders; (5) the similarity of advertising used by the markholders; (6) the defendant’s intent; (7) actual confusion; (8) the quality of the defendant’s product; and (9) the sophistication of the consuming public.” George & Co. LLC v. Imagination Entm’t Ltd., 575 F.3d 383, 393 (4th Cir. 2009) (citing Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984)). The likelihood of confusion is an issue that is “particularly amenable to resolution by a jury.” Anheuser-Busch, 962 F.3d at 318. Not only is a jury likely to represent “a cross-section of consumers, ” but also “the likelihood of confusion is an inherently factual issue that depends on the unique facts and circumstances of each case.” Id. (internal citations and quotation marks omitted).

Although the parties’ submissions diligently address each of the above factors, it is not necessary for the Court to do so. Anheuser-Busch, 962 F.2d at 320 (the Pizzeria Uno factors are not a rigid formula). The factors fall into two categories, which correspond with two interrelated issues that underlie the likelihood of confusion analysis: (1) how similar are the parties’ marks, in light of the strength of Plaintiff’s marks; and (2) how similar are the parties’ products, in light of the ways that those products are presented to consumers. Through that lens, the parties’ submissions demonstrate that Plaintiff has not met its burden of establishing there is no genuine issue of material fact as to the likelihood of confusion.

Boiled down to its essence, Plaintiff’s theory addresses both of these underlying concerns: Plaintiff argues that Defendant “not only mimicked three of [Plaintiff’s] valuable trademarks, but displayed all three of them together on one product that goes hand in hand with sports apparel and equipment, thereby ensuring a connection and confusion with” Plaintiff. (Pl. Summ. J. Br. at 27, ECF No. 62.) Plaintiff argues that it “owns and extensively uses” valid and protectable rights in “UNDER ARMOUR, ARMOUR, and [its] family of ARMOUR-formulative marks.” (Id. at 3, 20 (capitalization in original).) Plaintiff further argues that the BODY ARMOR mark is similar to all three of these claimed marks. (Id. at 25.) For these reasons, Plaintiff argues, the BODY ARMOR mark is likely to “be perceived as a natural extension of Plaintiff’s family.” Id. Plaintiff also argues that Defendant’s logo is similar to Plaintiff’s logo; Plaintiff describes both as “interlocking logos.”[1] Plaintiff argues that the alleged similarities between the logos “exacerbate the similarity between UNDER ARMOUR and BODY ARMOR.” (Id. at 26.) Finally, Plaintiff argues that “[Defendant’s] tag-line ‘Protect Restore’ resembles [Plaintiff’s] famous tag-line ‘Protect This House, ’ further enhancing the likelihood of confusion.”

Defendant responds that the mutual use of a single word (armor/armour) is not sufficient to establish similarity. Defendant emphasizes that its packaging increases the dissimilarity of the products by using a different font, spelling the word “armor” without the “u, ” and utilizing bright colors and pictures of fruit. Defendant disputes that its logo is “interlocking, ” and characterizes it as a “stickman figure – an outline of a human body with a shield for a ‘head.’” It also describes its “Protect Restore” slogan as a “descriptive ...


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