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Grayson O Company v. Agadir International LLC

United States Court of Appeals, Fourth Circuit

May 5, 2017

GRAYSON O COMPANY, Plaintiff - Appellant,
v.
AGADIR INTERNATIONAL LLC, Defendant-Appellee.

          Argued: March 21, 2017

          Appeal from the United States District Court for the Western District of North Carolina, at Charlotte. Max O. Cogburn, Jr., District Judge. (3:13-cv-00687-MOC-DCK)

         ARGUED:

          Samuel Alexander Long, Jr., SHUMAKER, LOOP & KENDRICK, LLP, Charlotte, North Carolina, for Appellant.

          Jesus E. Cuza, HOLLAND & KNIGHT LLP, Miami, Florida, for Appellee.

         ON BRIEF:

          W. Thad Adams, III, Christina Davidson Trimmer, SHUMAKER, LOOP & KENDRICK, LLP, Charlotte, North Carolina, for Appellant.

          Monica Vila Castro, HOLLAND & KNIGHT LLP, Miami, Florida, for Appellee.

          Before MOTZ, TRAXLER, and AGEE, Circuit Judges.

          DIANA GRIBBON MOTZ, Circuit Judge

         Grayson O Company ("Grayson O"), a haircare product manufacturer and holder of a registered trademark, brought this trademark and unfair competition action against Agadir International LLC ("Agadir"), a competitor haircare product manufacturer. The district court granted summary judgment to Agadir, finding that Grayson O had failed to show the marks were likely to be confused. For the reasons that follow, we affirm.

         I.

         Grayson O sells products designed to protect hair from heat during styling. The company owns a federal trademark registration for the mark "F 450." F 450, Registration No. 4, 088, 857. The registered mark is not stylized and does not claim to protect "any particular font, style, size, or color." Id. Although the registered mark contains no degree symbol, the product labels on which the mark appears do contain a degree symbol; the labels also contain a lowercase "f, " a stylized "450, " and almost no space between the "f" and "450."[1] On its website, Grayson O refers to its products as "f450º"

         Image Omitted

or the "fahrenheit 450° Line." f450, Thermafuse, http://www.thermafuse.com/f450/ (last visited April 3, 2017).

         In the hair care industry, "450" often refers to the temperature to which one can heat hair before it melts or scorches. A number of products that reference 450º Fahrenheit have entered the market. Most relevant to this case, Agadir sells a product called "Hair Shield 450º Plus" or "Agadir Argan Oil Hair Shield 450º Plus, " depending on how one reads the label.[2] The "450" on Agadir's label is not stylized. Both Grayson O and Agadir sell their products exclusively at salons, which means their direct customers are salon professionals who then sell the products to their clients.

         In July 2012, Grayson O participated in a tradeshow in Las Vegas. At the show, Grayson O employees and customers approached Van Darren Stamey, the president of Grayson O, and told him that "someone is infringing on [your] mark." The alleged infringer was Agadir, which was marketing its products at the show and displaying a prominent "450" sign. On July 25, 2012, Grayson O sent Agadir a cease and desist letter regarding the "F 450" mark and another mark unrelated to this litigation. Agadir [Image Omitted] responded that it used "450º" on its label not as a mark, but as a "fair and good faith description of the good attached" to the label. Agadir explained that its products protect hair up to 450º Fahrenheit and that no likelihood of confusion existed between its use of the term and Grayson O's mark given the difference between the appearances of the product labels. At some point after receiving the letter, Agadir changed the name of its products from "Heat Shield 450º" to "Hair Shield 450º" and resized the phrase "Hair Shield 450º" on the label.[3]

         On December 13, 2013, Grayson O initiated this lawsuit, alleging that Agadir infringed on its trademark and engaged in unfair competition in violation of the Lanham Act and North Carolina law. Upon completion of discovery, Grayson O moved for partial summary judgment on the issue of liability for trademark infringement and unfair competition and sought to enjoin Agadir from using the mark. Agadir also moved for summary judgment.

         Image Omitted

          After examining the relevant factors, the district court found that Grayson O had failed to show a likelihood of confusion between the marks. Grayson O Co. v. Agadir Int'l LLC, No. 3:13-CV-00687-MOC-DCK, 2015 WL 7149935, at *11 (W.D. N.C. Nov. 13, 2015). In particular, the court held that Grayson O's mark was conceptually and commercially weak, that the marks were not similar, that there was no evidence of Agadir's intent to infringe on Grayson O's mark, and that there was only de minimis evidence of confusion. Id. The court denied Grayson O's motion for partial summary judgment and granted summary judgment to Agadir. Id. Grayson O timely noted this appeal.

         We review de novo the district court's grant of summary judgment to Agadir and its denial of summary judgment to Grayson O. See Synergistic Int'l, LLC v. Korman, 470 F.3d 162, 170 (4th Cir. 2006).

         II.

         "To demonstrate trademark infringement under the Lanham Act, a plaintiff must prove, first, that it owns a valid and protectable mark, and, second, that the defendant's use of a 'reproduction, counterfeit, copy, or colorable imitation' of that mark creates a likelihood of confusion." CareFirst of Md., Inc. v. First Care, P.C., 434 F.3d 263, 267 (4th Cir. 2006) (quoting 15 U.S.C. ยง 1114(1)(a) (2012)). Grayson O has registered its mark, and so we assume the registered mark is valid and ...


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