FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
LODESTAR ANSTALT, a Liechtenstein No. 19-55864
company,
Plaintiff/Counter-Defendant/ D.C. No.
Appellant, 2:16-cv-06411-
CAS-FFM
v.
BACARDI & COMPANY LIMITED, a OPINION
Liechtenstein company; BACARDI
U.S.A., INC., a Delaware
corporation; BACARDI LIMITED, a
Bermuda company,
Defendants/Counter-Claimants/
Appellees.
Appeal from the United States District Court
for the Central District of California
Christina A. Snyder, District Judge, Presiding
Argued and Submitted July 10, 2020
Pasadena, California
Filed April 21, 2022
2 LODESTAR ANSTALT V. BACARDI & CO.
Before: Bobby R. Baldock, * Marsha S. Berzon, and
Daniel P. Collins, Circuit Judges.
Opinion by Judge Collins
SUMMARY **
Trademark
The panel affirmed the district court’s summary
judgment in favor of Bacardi U.S.A., Inc., and two of its
affiliates in a trademark infringement action brought by
Lodestar Anstalt.
The Madrid Protocol, as implemented by amendments
contained in Title XII of the Lanham Act, provides that
applicants with trademark protection in other countries may
obtain an “extension of protection” in the United States,
generally equivalent to a trademark registration, without first
having used the mark in commerce in the United States.
Instead, an extension of protection may be granted under
Title XII based on the applicant’s declaration of a bona fide
intent to use its foreign-registered mark in the United States.
In 2011, Lodestar obtained an extension of protection for
its Liechtenstein-registered trademark in the use of the word
“Untamed” in connection with whiskey, rum, and other
*
The Honorable Bobby R. Baldock, United States Circuit Judge for
the U.S. Court of Appeals for the Tenth Circuit, sitting by designation.
**
This summary constitutes no part of the opinion of the court. It
has been prepared by court staff for the convenience of the reader.
LODESTAR ANSTALT V. BACARDI & CO. 3
distilled spirits. After Bacardi began an advertising
campaign in November 2013 using the phrase “Bacardi
Untameable” to promote its rum products, Lodestar filed suit
for trademark infringement and unfair competition.
The panel concluded that, even assuming that Lodestar’s
first use of its mark in United States commerce occurred
after Bacardi’s campaign began, under the distinctive regime
established for the Madrid Protocol, Lodestar’s subsequent
bona fide use of its registered mark on certain rum products
gave rise to a priority of right that it could seek to enforce
under the Lanham Act. Finding useful precedent and
commentary addressing a similar issue under the comparable
provision of § 44 of the Lanham Act, which addresses
registration of foreign marks under the provisions of any
applicable “convention or treaty relating to trademarks,” the
panel concluded that, under the Madrid Protocol, as under
§ 44, a foreign applicant who obtains a registration without
showing actual use in the United States has a right of
priority, as of the relevant “constructive use” date, over
another company who first uses the mark in the United
States. And once that registrant begins actually using the
mark in the United States (and does so even after the
competing user has begun using the mark) the registrant may
bring an infringement action (subject to any applicable
defense) based on that superior right of priority.
Nonetheless, Lodestar failed to satisfy the basic elements
of an action for trademark infringement because it failed to
show that Bacardi’s campaign involved a likelihood of
confusion with Lodestar’s bona fide use of its registered
mark in commerce. Lodestar claimed “reverse confusion,”
in which a person who knows only of a well-known junior
user comes into contact with a lesser-known senior user, and
because of the similarity of the marks, mistakenly thinks that
4 LODESTAR ANSTALT V. BACARDI & CO.
the senior user is the same as or is affiliated with the junior
user.
The panel concluded that, in deciding which of
Lodestar’s products should be considered, the district court
erred in applying a categorical temporal rule excluding any
consideration of a senior user’s post-infringement use of the
mark on additional products. Nonetheless, the panel agreed
that Lodestar’s Untamed Revolutionary Rum product should
be excluded from the likelihood-of-confusion analysis
because it did not reflect a bona fide use of the mark. A
reasonable jury, however, could find that Lodestar’s use of
the Untamed Work Mark on the back of its bottles of The
Wild Geese Soldiers & Heroes rums constituted bona fide
use in commerce.
Applying the Sleekcraft factors, the panel concluded that
Lodestar failed to carry its burden to show a likelihood of
confusion. The panel concluded that the district court erred
in certain respects in its consideration of the strength of the
mark and Bacardi’s intent, but those errors did not alter the
ultimate conclusion that no reasonable jury could find a
likelihood of confusion.
COUNSEL
G. Warren Bleeker (argued), Gary J. Nelson, and Drew
Wilson, Lewis Roca Rothgerber Christie LLP, Glendale,
California, for Plaintiff/Counter-Defendant/Appellant.
Michael C. Lynch Jr. (argued) and Andrea L. Calvaruso,
Kelley Drye & Warren LLP, New York, New York, for
Defendants/Counter-Claimants/Appellees.
LODESTAR ANSTALT V. BACARDI & CO. 5
OPINION
COLLINS, Circuit Judge:
This trademark dispute requires us to consider the scope
and priority of rights granted by an “extension of protection”
for a trademark under the “Protocol Relating to the Madrid
Agreement Concerning the International Registration of
Marks,” June 27, 1989, T.I.A.S. No. 03-1102, commonly
known as the “Madrid Protocol.” A key feature of the
Madrid Protocol, as implemented by amendments contained
in Title XII of the Lanham Act, is that applicants with
trademark protection in other countries may obtain an
“extension of protection” in the U.S.—which is generally
equivalent to a trademark registration—without first having
used the mark in commerce in the United States. Instead, an
extension of protection may be granted under Title XII based
on the applicant’s declaration of a bona fide intent to use its
foreign-registered mark in the U.S.
In this case, Lodestar Anstalt (“Lodestar”) obtained in
2011 an extension of protection for its Liechtenstein-
registered trademark in the use of the word “Untamed” in
connection with whiskey, rum, and other distilled spirits.
After Bacardi U.S.A., Inc. began an advertising campaign in
November 2013 using the phrase “Bacardi Untameable” to
promote its rum products, Lodestar brought this trademark-
infringement suit against Bacardi U.S.A., Inc. and two of its
affiliates (collectively, “Bacardi”). The district court entered
summary judgment against Lodestar. On appeal in this
court, the parties vigorously dispute whether Lodestar used
its “Untamed” mark in commerce in the U.S. before
Bacardi’s campaign, but we find it unnecessary to decide
that issue. Even assuming that Lodestar’s first use of its
mark in U.S. commerce occurred after Bacardi’s campaign
began, we conclude that, under the distinctive regime
6 LODESTAR ANSTALT V. BACARDI & CO.
established for the Madrid Protocol, Lodestar’s subsequent
bona fide use of its registered mark on certain rum products
gave rise to a priority of right that it could seek to enforce in
an action under the Lanham Act. But Lodestar is still
required to satisfy the basic elements of an action for
trademark infringement, including a showing that Bacardi’s
campaign involved a likelihood of confusion with Lodestar’s
bona fide use of its registered mark in commerce. Because
Lodestar failed to make that showing, we affirm the district
court’s grant of summary judgment.
I
Before turning to the facts of the parties’ dispute, we
begin with a brief overview of how registration of
trademarks under the Madrid Protocol differs from the
ordinary process of trademark registration under the Lanham
Act.
A
The basic principle underlying federal and state
trademark law is “that distinctive marks—words, names,
symbols, and the like—can help distinguish a particular
artisan’s goods from those of others” and that the “[o]ne who
first uses a distinct mark in commerce” thereby “acquires
rights to that mark.” B&B Hardware, Inc. v. Hargis Indus.,
Inc., 575 U.S. 138, 142 (2015) (emphasis added); see also
Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 419 (2015)
(“Rights in a trademark are determined by the date of the
mark’s first use in commerce.”); Brookfield Commc’ns, Inc.
v. West Coast Ent. Corp., 174 F.3d 1036, 1047 (9th Cir.
1999) (“[A] fundamental tenet of trademark law is that
ownership” of a trademark “is governed by priority of use.”).
Although “federal law does not create trademarks,” B&B
Hardware, 575 U.S. at 142, it does “provide a degree of
LODESTAR ANSTALT V. BACARDI & CO. 7
national uniformity,” Matal v. Tam, 137 S. Ct. 1744, 1751–
52 (2017). In particular, to “help[] to ensure that trademarks
are fully protected and [to] support[] the free flow of
commerce,” the federal Lanham Act establishes a system of
national trademark registration, managed by the U.S. Patent
and Trademark Office (“PTO”), to assist in establishing
priority of trademark rights. Id. at 1752. “Registration does
not create a mark or confer ownership,” however, because
“only use in the marketplace can establish a mark.” Miller
v. Glenn Miller Prods., Inc., 454 F.3d 975, 979 (9th Cir.
2006). Accordingly, the general rule remains that “[a]ll
common law and registration rights” rest on the use-based
rule of “first-in-time, first-in-right.” 2 MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 16:1 (5th ed.
2022 Update) (hereinafter “MCCARTHY ON TRADEMARKS”).
Because registration does not itself create trademarks, it
is not mandatory and the “owner of an unregistered mark
may still use [the mark] in commerce and enforce it against
infringers.” Iancu v. Brunetti, 139 S. Ct. 2294, 2297 (2019).
But trademark registration under the Lanham Act “confers
‘important legal rights and benefits’ on trademark owners
who register their marks.” B&B Hardware, 575 U.S. at 142
(citation omitted). “[R]egistration constitutes ‘prima facie
evidence’ of the mark’s validity,” Iancu, 139 S. Ct. at 2297
(quoting 15 U.S.C. § 1115(a)); it provides “‘constructive
notice of the registrant’s claim of ownership,’ which
forecloses some defenses in infringement actions,” id. at
2297–98 (quoting 15 U.S.C. § 1072); it “can make a mark
‘incontestable’ once a mark has been registered for five
years,” Matal, 137 S. Ct. at 1753 (quoting 15 U.S.C. § 1065,
1115(b)) (further citations and internal quotation marks
omitted); and it “enables the trademark holder ‘to stop the
importation into the United States of articles bearing an
infringing mark,’” id. (citation omitted). Obtaining
8 LODESTAR ANSTALT V. BACARDI & CO.
registration thus provides “significant” legal rights that assist
in protecting one’s trademarks. B&B Hardware, 575 U.S.
at 142.
Under the Lanham Act, the ability to secure registration
for a trademark typically depends, as trademark rights
generally do, upon actual use of the mark in commerce.
Thus, § 1 of the Act has long made registration available to
the “owner of a trademark used in commerce,” and it
requires an application by any such owner to attest that “the
mark is in use in commerce.” 15 U.S.C. § 1051(a)(1), (3)
(emphasis added); see also 15 U.S.C. § 1051(a)(1) (1946)
(similar). But in 1988, Congress amended § 1 to also allow
an application for registration to be filed based on the
applicant’s “bona fide intention . . . to use a trademark in
commerce.” 15 U.S.C. § 1051(b)(1) (emphasis added).
Such an intent-to-use application, however, cannot be
granted unless and until the applicant subsequently files a
“verified statement that the mark is in use in commerce.” Id.
§ 1051(d)(1). If that statement is filed within a specified
timeframe, 1 then, when registration is granted, the initial
date of the intent-to-use application becomes the applicant’s
“constructive-use date,” which “gives the applicant priority-
of-use over anyone who adopts the mark after [that] date.”
Zobmondo Ent., LLC v. Falls Media, LLC, 602 F.3d 1108,
1111 n.3 (9th Cir. 2010). Specifically, § 7(c) of the Act
states that, “[c]ontingent on the registration of a mark,” the
“filing of the application to register”—which, in the case of
an intent-to-use application, will not initially be
accompanied by actual use—“shall constitute constructive
use of the mark,” thereby conferring a general “right of
1
The verified statement must be filed within six months, absent
extension, of the issuance by the PTO of a “notice of allowance” of the
intent-to-use application. 15 U.S.C. §§ 1051(d)(1)–(2), 1063(b)(2).
LODESTAR ANSTALT V. BACARDI & CO. 9
priority, nationwide in effect,” as of the date of the
application. 15 U.S.C. § 1057(c) (emphasis added).
By giving priority of right based on constructive use
rather than actual use, the intent-to-use registration
mechanism reflects, to that limited extent, a departure from
trademark law’s traditional emphasis on priority of actual
use. As the D.C. Circuit has explained, one purpose of the
1988 amendments allowing priority based on such
constructive use was to avoid a situation in which a company
undertakes potentially costly preparations to develop and use
a mark, only to lose priority to others, including trademark
“pirates,” who outpace the company in making actual
commercial use of the mark. Aktieselskabet AF 21. Nov.
2001 v. Fame Jeans Inc., 525 F.3d 8, 19 (D.C. Cir. 2008)
(citation omitted).
The Madrid Protocol, as implemented in the 2002
amendments to the Lanham Act, reflects an additional
departure from the traditional emphasis on assigning priority
of rights based on actual use. The Protocol establishes an
international trademark registration system, and the United
States’ participation in that system became operative upon
the effective date of a new Title XII of the Lanham Act,
which added §§ 60–74 to the statute. See 15 U.S.C.
§§ 1141–1141n; see also Pub. L. No. 107-273, § 13403, 116
Stat. 1758, 1920 (2002), 15 U.S.C. § 1141 note (noting that
Title XII took effect on Nov. 2, 2003). The Protocol allows
holders of trademark rights in their respective countries to
“secure protection” for their marks in other contracting
parties by obtaining, through their home country’s
trademark office, an “international registration” in the
“register of the International Bureau of the World
Intellectual Property Organization.” See Protocol Relating
to the Madrid Agreement Concerning the International
10 LODESTAR ANSTALT V. BACARDI & CO.
Registration of Marks, art. 2, June 27, 1989, T.I.A.S. No. 03-
1102.
For foreign trademark owners who seek to extend
protection, under the Protocol, into the United States, Title
XII of the Lanham Act provides that any “request for
extension of protection of an international registration to the
United States that the International Bureau transmits” to the
PTO “shall be examined as an application for registration on
the Principal Register” under the Lanham Act. 15 U.S.C.
§§ 1141f(a), 1141h(a). If “it appears that the applicant is
entitled to extension of protection,” then the PTO “shall
cause the mark to be published” in its Official Gazette. Id.
§ 1141h(a). If there is no successful opposition and no
grounds for refusal of the request, then the PTO “shall issue
a certificate of extension of protection,” which “shall have
the same effect and validity as a registration on the Principal
Register.” Id. § 1141i(a), (b)(1).
Notably, § 68(a)(3) of the Lanham Act specifically states
that “[e]xtension of protection shall not be refused on the
ground that the mark has not been used in commerce.”
15 U.S.C. § 1141h(a)(3) (emphasis added). Rather, the PTO
may properly file, and subsequently grant, a request for
extension of protection so long as the request received from
the International Bureau shows that, when that Bureau
received it, the request had “attached to it a declaration of
bona fide intention to use the mark in commerce.” Id.
§ 1141f(a). The term “commerce,” as used in the Lanham
Act, including this section, “means all commerce which may
lawfully be regulated by Congress.” Id. § 1127. Thus, while
a request for an extension of protection under the Madrid
Protocol is similar to an intent-to-use application in that both
may be filed based on a declaration of a bona fide intent to
use the mark in U.S. commerce, a request under the Protocol
LODESTAR ANSTALT V. BACARDI & CO. 11
differs from an intent-to-use application in that it may also
be granted without first showing actual use in commerce.
However, under § 71(a) of the Act, a Madrid Protocol
registrant’s failure to file a statement of use in commerce
“[w]ithin the 1-year period immediately preceding the
expiration of 6 years following the date of issuance of the
certificate of extension of protection” will result in the
cancellation of the extension of protection. 15 U.S.C.
§ 1141k(a)(1), (b)(1)(A). And a Madrid Protocol registrant
remains subject to the general rule that “[n]onuse for 3
consecutive years shall be prima facie evidence of
abandonment.” 15 U.S.C. § 1127. What protection flows
from a grant of registration under the Madrid Protocol is one
of the disputed issues in this case and is addressed further
below.
B
Against this backdrop, we turn to the specific facts of this
case.
1
Lodestar is a Liechtenstein company founded in June
2000 by Andre Levy, who remains its chairman. Lodestar
describes itself as a “small, independent developer of
beverages,” whose business model is to “independently
create and develop innovative and unique brands of premium
products in areas of growth which can be monetized by
selling or licensing to a larger entity.” In 2000–2001, Levy
and his wife began developing a brand of Irish whiskey
called “The Wild Geese.” Levy explained that the brand was
intended to evoke the story of the “Wild Geese, the name
given to the Irish Diaspora who were forced to leave Ireland
in 1691.” However, when Lodestar sought to secure
protection of the “Wild Geese” mark in the U.S. in 2003, its
12 LODESTAR ANSTALT V. BACARDI & CO.
application drew objection from the holder of existing marks
for “Wild Turkey” liquor products. After Lodestar lost that
dispute, the brand name in the U.S. was changed to “The
Wild Geese Soldiers & Heroes” or “The Wild Geese Irish
Soldiers & Heroes.” According to Levy, the dispute over the
“Wild Geese” mark played out in “34 different countries
around the world,” and Lodestar lost only in the U.S. As an
outgrowth of that trademark dispute, in around 2008–2009,
Lodestar developed the idea for the “Untamed” mark, which
Levy said reflected Lodestar’s decision not to give its
trademark opponent the “impression” that Lodestar was “in
any way, shape, or form tamed by the fact that [it] had lost
the one action that they had won.”
On August 19, 2009, the PTO accepted for filing two
applications on behalf of Lodestar seeking extension of
protection under the Madrid Protocol for internationally
registered marks using the word “Untamed.” The two
marks, which the parties respectively refer to as the
“Untamed Design Mark” and the “Untamed Word Mark,”
were depicted as follows in Lodestar’s applications:
The PTO published the marks for opposition in July 2011
and granted the requested extensions of protection on
October 4, 2011. Because Lodestar’s applications rested on
the Madrid Protocol, it was able to obtain these extensions
LODESTAR ANSTALT V. BACARDI & CO. 13
of protection without having to demonstrate that it was using
the marks in commerce. See 15 U.S.C. §§ 1141f(a),
1141h(a)(3); see supra at 10–11.
Lodestar licensed the relevant trademarks for use by
another Levy-controlled entity, which is currently organized
under Panamanian law and is known as Avalon International
Management, Inc. (“Avalon”). Avalon was assisted in
promoting its products by Protégé International (“Protégé”),
a Cyprus-based sales agency established by Levy. In April
2009, before Lodestar’s applications concerning the
Untamed marks were filed under the Madrid Protocol,
Avalon imported 1,529 cases of various varieties of The
Wild Geese Irish Soldiers & Heroes whiskey into the U.S.,
listing itself as the buyer, “c/o MHW Ltd.” (its distributor).
In early 2010, while those applications were pending with
the PTO, Avalon imported into the U.S. another 1,848 such
cases of whiskey, together with an additional 312 cases of
smaller bottles of whiskey. As with the prior delivery,
Avalon listed itself as the buyer, c/o MHW Ltd. Levy
averred that these more than 3,600 cases of whiskey “have
been continuously for sale in the U.S. ever since,” but the
record does not disclose exactly how many bottles have been
sold to U.S. end consumers. An internal Protégé report in
July 2013 indicated that sales were “very small and
disappointing.” An internal Protégé email to Levy in August
2013 reported that more than 2,200 cases of the larger
bottles, which had been produced in 2008–2009, remained
in stock and that Protégé had “stopped all active sales efforts
for the whiskey.”
The packaging of Avalon’s bottles of The Wild Geese
Irish Soldiers & Heroes whiskey used the Untamed Design
14 LODESTAR ANSTALT V. BACARDI & CO.
Mark, as illustrated by these examples in the district court
record:
Lodestar’s Untamed Word Mark was also used in
advertising The Wild Geese Irish Soldiers & Heroes whiskey
as early as 2011. For example, the word “Untamed” was
used as a standalone mark in two YouTube advertisements
for The Wild Geese Irish Soldiers & Heroes whiskey that
were published in 2011. 2 Screenshots of these
advertisements are depicted here:
2
Lodestar presented evidence below that the Untamed Word Mark
was also used “internationally” in connection with the promotion of “The
Wild Geese” products. Lodestar asserts that the target audience for such
advertisements in international trade publications included U.S. persons,
LODESTAR ANSTALT V. BACARDI & CO. 15
2
By early 2013, Avalon began developing rum products
under The Wild Geese Soldiers & Heroes brand, naming
them “Premium Rum” and “Golden Rum.” Avalon’s
distributor, MHW Ltd., submitted proposed bottle labels for
these products to the U.S. Department of the Treasury’s
Alcohol and Tobacco Tax and Trade Bureau (“TTB”), in
accordance with regulations requiring TTB issuance of a
“certificate of label approval” prior to removing imported
distilled spirits “from Customs custody for consumption.”
See 27 C.F.R. § 5.51(a) (2013); see also 27 U.S.C. § 205(e).
TTB issued the respective certificates for the Premium Rum
and Golden Rum labels in February and March 2013.
The labeling for these new rum products distinctively
used Lodestar’s Untamed Word Mark. Specifically, on the
Premium Rum’s back label, the word “Untamed” appears in
larger text below 26 lines of brand-related smaller text. The
Golden Rum’s back label displays the word “Untamed”
even though the U.S. brand was known as “The Wild Geese Irish
Soldiers & Heroes.” See supra at 11–12.
16 LODESTAR ANSTALT V. BACARDI & CO.
beneath 18 lines of brand-related text and above a picture of
a ship at sea. The labels are shown in the record as follows:
Between June 2013 and December 2013, Avalon’s
distributor, MHW Ltd., sent four “sample” bottles each of
the Golden Rum and Premium Rum to certain “potential
customers” in the United States. Two of each were sent in
June, one of each in August, and the remainder in December.
In addition, in April 2013, Protégé promoted The Wild
Geese Soldiers & Heroes rum products at a booth at the 2013
Rum Renaissance Trade Show in Miami, Florida. Various
advertisements displayed in the booth used the word
“Untamed” together with “The Wild Geese” brand name that
was used outside the U.S. At the trade show, Protégé
displayed bottles that contained the Untamed Word Mark on
the back label, and individual consumers were in attendance
and sampled the rum. A print advertisement featuring the
Untamed Word Mark was also published in connection with
the trade show. Levy stated that the “purpose of going to the
Miami Rum Renaissance” was “to expose the products to the
consumer,” meaning both wholesalers and end consumers.
LODESTAR ANSTALT V. BACARDI & CO. 17
Lodestar’s booth at the Miami trade show, as well as the
associated print advertisement, are depicted here:
After the show, Levy received a detailed report about
potential distributors and a possible timeline for beginning
sales in the U.S., possibly as early as August 2013. But by
June 2013, a Protégé employee sent an email to Levy
informing him that they had “completed our strategic review
and for now decided to park the USA rum project as we are
getting better returns in other markets.”
3
Meanwhile, at some point in 2012, Bacardi began
developing what ultimately became a new advertising
campaign for its rum products that would use, in various
forms, the phrase “Bacardi Untameable.” An employee at a
London-based marketing firm stated that she came up with
the concept after being struck by the comment, on Bacardi’s
Wikipedia page, that the company had “‘tamed’ rum to be a
clear liquid during the distilling process.”
Prior to the launch of the campaign, Bacardi & Co. Ltd.,
the Liechtenstein-based Bacardi affiliate that holds the
ultimate rights in Bacardi trademarks, ran a trademark
clearance search in January 2013, and that search disclosed
Lodestar’s “Untamed” trademarks. In July 2013, Bacardi &
18 LODESTAR ANSTALT V. BACARDI & CO.
Co. Ltd. sought extension of protection in the U.S., under the
Madrid Protocol, for its Liechtenstein-registered trademark
in the phrase “Bacardi Untameable.” After the PTO
published this request for extension of protection in
December 2013, Lodestar filed an opposition before the
Trademark Trial and Appeal Board (“TTAB”) in April 2014,
and Bacardi & Co. Ltd. filed counterclaims seeking
cancellation of the Untamed Word and Untamed Design
Marks. Further proceedings before the TTAB have been
suspended pending the resolution of this suit.
Bacardi proceeded with the launch of the “Untameable”
advertising campaign in November 2013. Bacardi never
used the term “Untameable” on the labels of any of its
products, but only in various forms of advertisements in a
variety of media, including television, print publications,
outdoor billboards and signs, and digital formats. In these
advertisements, the phrase “Bacardi Untameable” was
typically coupled with Bacardi’s longstanding “bat” logo
and the words “Since 1862.” The following example in the
record is illustrative:
Bacardi has not used the “Untameable” mark in any capacity
since 2017.
LODESTAR ANSTALT V. BACARDI & CO. 19
4
Shortly after the start of Bacardi’s “Untameable”
campaign, Protégé announced on its website that “Untamed
Revolutionary Rum” would be “coming soon.” Lodestar
conceded below that no such product existed at the time the
Bacardi campaign was launched in November 2013, and
Levy admitted in a February 2014 email that Untamed
Revolutionary Rum was conceived “to complement the Wild
Geese Rum and also to combat Bacardi’s attempts to take
over our Untamed mark.”
Unlike The Wild Geese Soldiers & Heroes rum products,
the new “Untamed Revolutionary Rum” included Lodestar’s
Untamed Word Mark in the name of the product. MHW
submitted labels to TTB for approval in January 2014, and a
certificate approving the following labels was issued in
March 2014:
20 LODESTAR ANSTALT V. BACARDI & CO.
These labels for the first time featured the “Untamed” mark
on the front label, and they did so much more prominently
than with the earlier rum products.
In April 2014, Protégé first imported 2,000 cases of
Untamed Revolutionary Rum into the U.S., listing
“MHW/Avalon” as the buyer. In July 2014, Levy sent an
email to a Protégé employee telling him that he “need[ed] to
move this in the US in particular because of Bacardi and get
it into distribution.” Apart from three sample bottles
distributed in August 2014, MHW did not begin distributing
Untamed Revolutionary Rum to a wholesaler until late
December 2014. The first sales to U.S. retailers occurred in
January 2015.
During the same period, Protégé revived its previously
suspended plans to distribute The Wild Geese Soldiers &
LODESTAR ANSTALT V. BACARDI & CO. 21
Heroes rums in the U.S., importing the first cases of such
rums into the U.S. in April 2014. Avalon or Protégé was
listed as the seller, and “MHW/Avalon” as the buyer, on
import paperwork for 555 cases of The Wild Geese Soldiers
& Heroes Golden Rum in April 2014 and for 419 cases of
the Premium Rum in August 2014. MHW began selling
these products to a wholesaler in late December 2014, at the
same time it first began distributing Untamed Revolutionary
Rum. The products, in turn, were sold to retailers beginning
in January 2015.
C
In August 2016, Lodestar brought this suit against
Bacardi & Co. Ltd. (the holder of Bacardi’s trademarks),
Bacardi U.S.A., Inc. (the U.S. subsidiary that distributes and
sells Bacardi products in the U.S.), and Bacardi Ltd. (the
other two defendants’ ultimate parent company)
(collectively, “Bacardi”). The complaint asserts two federal
causes of action—a claim for trademark infringement under
§ 32 of the Lanham Act, 15 U.S.C. § 1114, and a claim for
unfair competition under § 43 of the Act, id. § 1125. The
complaint also asserts pendent state law claims for common
law unfair competition and for violation of California’s
Unfair Competition Law (“UCL”), CAL. CIVIL CODE
§ 17200 et seq. Although the complaint initially asserted
these claims based on both the Untamed Design Mark and
the Untamed Word Mark, Lodestar subsequently abandoned
any claims based on the former. Bacardi counterclaimed,
seeking cancellation of both trademarks.
Bacardi moved for summary judgment in May 2019. It
argued, as an initial matter, that Lodestar had abandoned its
Untamed Word Mark by failing to make any bona fide use
of it prior to Bacardi’s campaign. Specifically, Bacardi
argued that Lodestar had not offered for sale—as opposed to
22 LODESTAR ANSTALT V. BACARDI & CO.
advertising or offering sample bottles—any products
branded with the Untamed Word Mark prior to Bacardi’s
campaign. Bacardi also argued that no likelihood of
confusion existed as a matter of law, and that Lodestar’s
Lanham Act claims therefore failed. In making this
argument, Bacardi relied in part on an expert report that
compared “Bacardi Untameable” only with the Untamed
Word Mark as it appears on The Wild Geese Soldiers &
Heroes products—not on Untamed Revolutionary Rum.
Bacardi also argued that Lodestar was not entitled to any
monetary relief even if it could establish liability.
Lodestar filed a motion for partial summary judgment,
arguing that the undisputed evidence established a likelihood
of confusion between the parties’ respective trademarks.
Lodestar relied in part on an expert report that asserted a
likelihood of confusion based on a comparison of “Bacardi
Untameable” with the Untamed Work Mark as it was used
on Untamed Revolutionary Rum. Lodestar also argued that
its use of the Untamed Word Mark on the back label of its
rum products and in advertisements precluded a finding of
abandonment as a matter of law.
In ruling on the motions, the district court first held that
neither party was entitled to summary judgment on the issue
of abandonment. The court concluded that the evidence
presented at summary judgment was both “sufficient to
create a triable issue as to whether Lodestar intended to
abandon the UNTAMED word mark” and “insufficient to
establish that Lodestar had not abandoned the UNTAMED
word mark as a matter of law.”
Turning to the key issue of likelihood of confusion, the
district court granted summary judgment in favor of Bacardi.
On the threshold issue of whether Untamed Revolutionary
Rum should be considered in the likelihood-of-confusion
LODESTAR ANSTALT V. BACARDI & CO. 23
analysis, the court held that the relevant products included
only those that existed prior to the launch of Bacardi’s
campaign. Because it was undisputed that Untamed
Revolutionary Rum “did not exist” before Bacardi’s
campaign, the district court concluded that it was not “a fair
representation of Lodestar’s products and how the
UNTAMED word mark was used at the time of Bacardi’s
alleged infringement.” After evaluating the relevant factors
enumerated in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341
(9th Cir. 1979), the district court held that “there is no
evidence in the record that a reasonably prudent consumer in
the marketplace would have mistakenly affiliated The Wild
Geese Soldiers & Heroes rum with Bacardi.”
The district court alternatively granted partial summary
judgment in favor of Bacardi with respect to Lodestar’s
claims that it was entitled to a reasonable royalty and
corrective advertising damages as a result of the alleged
trademark infringement.
As to the state law claims, the court granted summary
judgment on the common law unfair competition claim on
the ground that there was no evidence in the record that
“Bacardi passed off its rum products as another or that it
acted fraudulently or with an intent to mislead consumers.”
And to the extent that any aspect of the UCL claim could
survive the dismissal of all other claims, the court further
held that Lodestar lacked any entitlement to monetary relief
as a matter of law.
Having dismissed all of Lodestar’s claims, the district
court dismissed Bacardi’s counterclaims without prejudice
for lack of subject matter jurisdiction and entered judgment.
Lodestar timely filed this appeal, and we have jurisdiction
pursuant to 28 U.S.C. § 1291.
24 LODESTAR ANSTALT V. BACARDI & CO.
II
We review de novo the district court’s grant of summary
judgment to Bacardi on Lodestar’s claims for trademark
infringement under § 32 of the Lanham Act and for unfair
competition under § 43 of the Act. See Surfvivor Media, Inc.
v. Survivor Prods., 406 F.3d 625, 630 (9th Cir. 2005).
Where, as here, a plaintiff’s § 43 unfair competition
claim is based on alleged infringement of a registered mark,
the legal analysis under the two sections is essentially
identical. See Brookfield, 174 F.3d at 1046 n.8.
Accordingly, we address, in turn, the two elements of
trademark infringement, which are (1) a “protectible
ownership interest in the mark”; and (2) a likelihood of
“consumer confusion” in the defendant’s use of its allegedly
infringing mark. Rearden LLC v. Rearden Com., Inc.,
683 F.3d 1190, 1202 (9th Cir. 2012) (citations omitted); see
also Wells Fargo & Co. v. ABD Ins. & Fin. Servs., Inc.,
758 F.3d 1069, 1072 (9th Cir. 2014). 3
3
Lodestar also asserted below a related California common law
claim for unfair competition as well as a claim that, by allegedly
infringing Lodestar’s trademark, Bacardi had violated California’s UCL.
See Cleary v. News Corp., 30 F.3d 1255, 1262–63 (9th Cir. 1994) (noting
that UCL and common law unfair competition claims based on
trademark infringement are “‘substantially congruent’ to claims made
under the Lanham Act”) (citation omitted). However, the district court
granted summary judgment to Bacardi on the common law claim, as well
as on the monetary portion of the UCL claim, based on additional claim-
specific grounds that Lodestar has not challenged on appeal. See supra
at 23. Accordingly, Lodestar has forfeited any challenge to those rulings.
See Collins v. City of San Diego, 841 F.2d 337, 339 (9th Cir. 1988). We
address the non-monetary portion of Lodestar’s UCL claim below. See
infra at 57.
LODESTAR ANSTALT V. BACARDI & CO. 25
III
As noted earlier, a foundational principle of trademark
law is that ownership of, and priority of rights in, a mark are
ordinarily determined by “priority of use.” Brookfield,
174 F.3d at 1047. Here, the parties vigorously dispute both
(1) who used the relevant marks first in U.S. commerce; and
(2) whether the Madrid Protocol alters the traditional rule
that priority of use determines priority of rights in
trademarks.
As our earlier factual summary makes clear, the only
evidence of Lodestar’s 4 use of the Untamed Word Mark (as
distinct from the Untamed Design Mark) in the U.S. prior to
the launch of the Bacardi Untameable campaign in
November 2013 consists of (1) a handful of ads for The Wild
Geese Irish Soldiers & Heroes whiskey on YouTube in 2011,
as well as advertisements for The Wild Geese whiskey in
international trade publications that may have been read by
U.S. industry insiders; (2) preparatory activities for the
development of The Wild Geese Soldiers & Heroes rums,
including presenting samples and advertising at a Miami
trade show; and (3) delivery of six sample bottles of that
rum. See supra at 13–17. Bacardi contends that, under our
decisions in Chance v. Pac-Tel Teletrac Inc., 242 F.3d 1151
(9th Cir. 2001), and Social Techs. LLC v. Apple Inc., 4 F.4th
811 (9th Cir. 2021), these activities are too minimal to
constitute the sort of “use in commerce” that is needed to
establish trademark rights, and it argues that Bacardi is
4
For purposes of our legal analysis, we will disregard the
distinctions between Lodestar and its affiliated licensees, viz., Avalon,
Protégé, and MHW. Under the Lanham Act, legitimate use of a
trademark “by related companies . . . inure[s] to the benefit of the
registrant.” 15 U.S.C. § 1055.
26 LODESTAR ANSTALT V. BACARDI & CO.
therefore the “prior user” who “would have the priority of
rights” and who “could seek to enjoin Lodestar’s later use.”
Lodestar asserts, by contrast, that these activities are
sufficient to constitute prior use in commerce and that it
therefore has priority of rights even under a first-to-use
standard. Lodestar also argues that, because the Untamed
Design Mark on Avalon’s The Wild Geese Irish Soldiers &
Heroes whiskey includes the word “Untamed,” the pre-
August 2013 sale of more than 1,000 cases of that whiskey
should count as use of the Untamed Word Mark.
We need not resolve these issues. Even assuming that
Lodestar did not actually use the Untamed Word Mark in
commerce before Bacardi launched its allegedly infringing
campaign, we conclude that the amendments to the Lanham
Act implementing the Madrid Protocol modify the priority
of trademark rights that might otherwise flow from the
parties’ various uses of their respective marks. Under those
amendments, Lodestar’s post-November 2013 bona fide use
of the Untamed Word Mark, coupled with the earlier
“constructive use” date afforded to Lodestar under the
Madrid Protocol, is sufficient to give it priority of rights.
A
In addressing the effect of the Madrid Protocol on rights
of priority in trademarks, we begin with the relevant
language of Title XII of the Lanham Act, which Congress
added to implement the Protocol. That title contains two key
provisions describing the rights that flow from a grant of
extension of protection in the U.S.
First, § 66(b) states that, unless extension of protection
is refused, “the proper filing of the request for extension of
protection” with the PTO “shall constitute constructive use
of the mark, conferring the same rights as those specified”
LODESTAR ANSTALT V. BACARDI & CO. 27
for intent-to-use applications under § 7(c), as of the earlier
of three possible dates. 15 U.S.C. § 1141f(b). 5 Section 7(c),
in turn, states that, “[c]ontingent on the registration of a
mark on the principal register” under the Lanham Act, “the
filing of the application to register such mark shall constitute
constructive use of the mark,” thereby conferring the
following “right of priority”:
a right of priority, nationwide in effect, on or
in connection with the goods or services
specified in the registration against any other
person except for a person whose mark has
not been abandoned and who, prior to such
filing—
(1) has used the mark;
(2) has filed an application to register the
mark which is pending or has resulted
in registration of the mark; or
(3) has filed a foreign application to
register the mark on the basis of
5
The three dates are (1) the date of the underlying international
registration, “if the request for extension of protection was filed in the
international application”; (2) the date of the PTO’s “recordal of the
request for extension of protection, if the request for extension of
protection was made after the international registration date”; or (3) a
claimed “date of priority,” not more than six months preceding the
international-registration or PTO-recordal dates, that is “based on a right
of priority within the meaning of Article 4 of the Paris Convention for
the Protection of Industrial Property.” 15 U.S.C. §§ 1141f(b)(1)–(3),
1141g. Lodestar apparently invoked the third option, because its
application for extension of protection reflects a claimed priority date of
July 16, 2009, which precedes the international-registration and PTO-
recordal dates (both of which are August 19, 2009).
28 LODESTAR ANSTALT V. BACARDI & CO.
which he or she has acquired a right
of priority, and timely files an
application under section 1126(d) of
this title [i.e., § 44(d) of the Lanham
Act] to register the mark which is
pending or has resulted in registration
of the mark.
15 U.S.C. § 1057(c) (emphasis added).
Second, § 69(b) states that, “[f]rom the date on which a
certificate of extension of protection is issued” by the PTO,
“(1) such extension of protection shall have the same effect
and validity as a registration on the Principal Register”; and
“(2) the holder of the international registration shall have the
same rights and remedies as the owner of a registration on
the Principal Register.” 15 U.S.C. § 1141i(b).
Under these provisions, the PTO’s issuance of an
extension of protection to the Untamed Word Mark had “the
same effect” as a “registration” on the Principal Register.
See id. § 1141i(b)(1). As a result, that issuance satisfied the
contingency on which the rights specified in § 7(c) depend,
viz., that there be a “registration of [the] mark on the
principal register,” id. § 1057(c). With the fulfillment of that
contingency, Lodestar thereby was granted the “right of
priority” described in § 7(c) as of the date specified in
§ 66(b), which in this case is July 21, 2009. See supra note
5. Moreover, because it is undisputed that Bacardi did not
use, or apply to register, the allegedly infringing “Bacardi
Untameable” mark before the filing of Lodestar’s request for
extension of protection on August 19, 2009, the plain
language of § 7(c) grants Lodestar “a right of priority,
nationwide in effect, on or in connection with the goods or
services specified in the registration against” Bacardi. Id.
§ 1057(c). Here, the relevant goods or services specified in
LODESTAR ANSTALT V. BACARDI & CO. 29
Lodestar’s certificate of extension of protection are “rum,
whiskey and distilled spirits.” Therefore, as of July 21,
2009, Lodestar had a “right of priority” against Bacardi with
respect to use of the Untamed Word Mark on or in
connection with rum.
Moreover, because an extension of protection is treated
as equivalent to a trademark registration, see id.
§ 1141i(b)(1), an extension of protection constitutes
prima facie evidence of the validity of the
registered mark and of the registration of the
mark, of the owner’s ownership of the mark,
and of the owner’s exclusive right to use the
registered mark in commerce on or in
connection with the goods or services
specified in the certificate, subject to any
conditions or limitations stated in the
certificate.
Id. § 1057(b) (emphasis added). Accordingly, the PTO’s
extension of protection to the Untamed Word Mark
constitutes “prima facie evidence” that Lodestar owns the
mark and has the “exclusive right” to use it “on or in
connection with” rum or whiskey. Id.
As noted earlier, Title XII of the Lanham Act grants
these registration-related rights without requiring the
registrant to first establish actual use of the mark in the U.S.
See supra at 10–11. That does not mean, however, that use
in commerce is therefore irrelevant to the exercise or
enforceability of these rights. In particular, nothing in the
text of the Lanham Act suggests that its liberalization of the
rules for obtaining registration of marks under the Madrid
Protocol operates to override the settled foundational
principle of trademark law that “only use in the marketplace
30 LODESTAR ANSTALT V. BACARDI & CO.
can establish a mark” and that registration alone “does not
create a mark or confer ownership” in a trademark. Miller,
454 F.3d at 979. On the contrary, by providing that a
recipient of an extension of protection under the Protocol has
“the same rights and remedies as the owner of a registration
on the Principal Register,” 15 U.S.C. § 1141i(b)(2)
(emphasis added), the Act confirms that, subject to the
alterations in priority of rights set forth in Title XII, such a
recipient must establish the same elements ordinarily
required to obtain remedies for trademark infringement
under § 32 or for unfair competition under § 43. Those
include actual use in commerce. See La Quinta Worldwide
LLC v. Q.R.T.M., S.A. de C.V., 762 F.3d 867, 873 (9th Cir.
2014) (noting that “use in commerce” is an “element of
Lanham Act claims under sections 32 and 43(a)”). Indeed,
Lodestar conceded in its reply brief that it “was required to
use the mark before suing for infringement.”
B
Against this backdrop, the key question here is who has
an enforceable priority of right in a trademark when (1) a
registration was obtained under the Madrid Protocol without
showing pre-registration use in commerce; and (2) the
registrant’s actual use in commerce did not begin until after
the allegedly infringing use began. We have found no
authority directly addressing this question, but there is
precedent and commentary addressing a similar issue under
the comparable provisions of § 44(d) of the Lanham Act, and
we find it instructive.
Unlike the provisions of Title XII, which are specific to
the Madrid Protocol, § 44 is a general provision that
addresses registration of foreign marks under the provisions
of any applicable “convention or treaty relating to
trademarks.” 15 U.S.C. § 1126(b). Like Title XII, however,
LODESTAR ANSTALT V. BACARDI & CO. 31
§ 44 “allows a foreign national to register a mark even
though the mark has never been used in U.S. commerce.”
Ocean Garden, Inc. v. Marktrade Co., 953 F.2d 500, 505–
06 (9th Cir. 1991); see also 15 U.S.C. § 1126(e) (stating that
an application under § 44 “must state the applicant’s bona
fide intention to use the mark in commerce, but use in
commerce shall not be required prior to registration”). In
accordance with a relevant treaty, a registration for an
eligible mark may be granted to a foreign applicant under
§ 44 based on a showing that the mark is “duly registered in
the country of origin of the foreign applicant” and that the
applicant has a “bona fide intention to use the mark in
commerce.” 15 U.S.C. § 1126(e). Such an application
“shall be accorded the same force and effect as would be
accorded to the same application if filed in the United States
on the same date on which the application was first filed in
such foreign country,” provided that, inter alia, the U.S.
application must be “filed within six months from the date
on which the application was first filed in the foreign
country.” Id. § 1126(d). A registration granted under § 44,
however, has no effect on “rights acquired by third parties
before the date of the filing of the first application in the
foreign country.” Id. § 1126(d)(3). As for remedies, § 44
makes clear that nothing in that subsection entitles “the
owner of a registration granted under this section to sue for
acts committed prior to the date on which his mark was
registered in this country unless the registration is based on
use in commerce.” Id. § 1126(d)(4) (emphasis added).
In SCM Corp. v. Langis Foods Ltd., 539 F.2d 196 (D.C.
Cir. 1976), the D.C. Circuit addressed a dispute over the
priority of trademark rights resulting from an application
32 LODESTAR ANSTALT V. BACARDI & CO.
under the then-applicable version of § 44. 6 Langis, a
Canadian company, and SCM, a U.S. company, both
claimed rights in the trademark “Lemon Tree,” as used in
fruit beverages. Id. at 197–98 & nn. 1 & 4. Langis filed a
trademark application in Canada on March 28, 1969, and it
began using the mark in Canada on May 15, 1969.
Coincidentally, SCM began using the “Lemon Tree” mark
in the U.S. on the latter date. Both companies filed
applications in the U.S., with SCM filing first on June 18,
1969, and Langis filing an application under § 44 on
September 19, 1969. Id. at 198. In October 1971, Langis’s
U.S. application was granted even though Langis had not yet
used the mark in the U.S. Id. SCM sought cancellation of
Langis’s registration, claiming (as Bacardi does here) that it
had priority of rights based on its first use of the mark in the
U.S. Id. The TTAB rejected this argument, but after SCM
filed suit, the district court agreed with SCM. Id.
6
The statute at the time was in all material respects similar to the
current version, except that § 44(e) did not contain the language, added
in 1988, providing that “[t]he application must state the applicant’s bona
fide intention to use the mark in commerce, but use in commerce shall
not be required prior to registration.” See Pub. L. No. 100-667, § 133,
102 Stat. 3935, 3946 (Nov. 16, 1988). Even in the absence of that
specific provision, however, the SCM court held that applicants under
§ 44 could obtain registration without showing use in commerce in the
U.S. The court noted, in particular, that the then-existing version of
§ 44(d)(2) of the Lanham Act specifically exempted § 44 applications
from § 1(a)’s requirement that applications must identify the first date on
which the mark was used in commerce. 539 F.2d at 199–200; see also
15 U.S.C. § 1126(d)(2) (1970) (stating that, in applications under § 44,
“use in commerce need not be alleged”). That exemption, together with
the other statutory features noted above, led the court to conclude that
the “clear implication is that section 44 recognizes registration based on
something other than ‘use in commerce,’ namely, a foreign registration.”
Id. at 200 (citation omitted). The 1988 amendment confirmed that same
conclusion more explicitly.
LODESTAR ANSTALT V. BACARDI & CO. 33
The D.C. Circuit reversed. The court agreed with Langis
that, by providing that a § 44 application “shall be accorded
the same force and effect as would be accorded to the same
application if filed in the United States on the same date on
which the application was first filed in the foreign country,”
§ 44(d) “grants a foreign applicant which has used the
trademark in its home country after the foreign filing but
prior to the actual United States filing a constructive use date
as of the date of the foreign filing.” 539 F.2d at 199. As a
result, Langis had “priority since its constructive use date of
March 28, 1969”—i.e., the date of its Canadian
application—“preceded SCM’s actual use date of May 15,
1969.” Id. The court also examined the particular treaty on
which Langis relied and concluded that it reinforced this
reading of § 44. Id. at 200–01. Accordingly, the court held
that Langis’s mark “must be protected in this country from
the date of the foreign application even as against an
intervening first use by another in the United States.” Id.
at 201.
Although SCM involved a registration dispute and not an
infringement claim, its reasoning necessarily leads to the
conclusion that, once a § 44 registrant begins use of the mark
in the U.S. (and can therefore invoke the remedy of an
infringement action), that registrant’s earlier constructive
use date gives it a priority of right over a then-competing
user who first actually used the mark in commerce after that
constructive use date. Indeed, the SCM court favorably cited
the decision in American Petrofina, Inc. v. Brown,
391 F. Supp. 757 (E.D.N.C. 1974), which addressed
precisely such an infringement suit. See 539 F.2d at 198 n.8.
In Brown, the plaintiffs’ foreign parent corporations
registered the “Fina” trademark in Canada prior to 1954, and
in January 1956 they obtained registration in the U.S. under
§ 44(d) “without prior use in commerce within the United
34 LODESTAR ANSTALT V. BACARDI & CO.
States.” 391 F. Supp. at 758. In August 1956, defendant
Brown began using the Fina mark in the U.S., and plaintiffs
subsequently began using the mark in the U.S. in October
1956. Id. Explicitly rejecting the district court decision that
was reversed by the D.C. Circuit in SCM, the Brown court
held that, under § 44, the plaintiffs were “entitled to
protection against the use of this mark by defendants
notwithstanding defendants may have started using the
registered mark after the registration had issued but before
plaintiffs had used the mark in United States commerce.” Id.
We find the reasoning of SCM and Brown to be
persuasive in the analogous context of the Madrid Protocol.
If anything, the reasoning of those cases fits the language of
Title XII of the Lanham Act even better than it did the pre-
1988 version of § 44 construed in those cases. Whereas the
version of § 44 construed in SCM did not explicitly include
a reference to “constructive use,” see supra at 32 n.6, Title
XII expressly cross-references the “constructive use”
concept that Congress added to § 7(c) in 1988 when it
authorized intent-to-use applications. 15 U.S.C. § 1057(c);
see also Zobmondo Ent., 602 F.3d at 1111 n.3 (noting that
§ 7(c) gives an intent-to-use applicant “priority-of-use over
anyone who adopts the mark after the constructive-use
date”) (emphasis added); Aktieselskabet, 525 F.3d at 18
(holding that, in a cancellation proceeding, “an intent-to-use
applicant prevails over any opposer who began using a
similar mark after the intent-to-use filing date”).
We therefore conclude that, under the Madrid Protocol,
as under § 44 in SCM, a foreign applicant who obtains a
registration without showing actual use in the U.S. has a
right of priority, as of the relevant “constructive use” date,
over another company who first uses the mark in the U.S.
See SCM, 539 F.2d at 199–200. And once that registrant
LODESTAR ANSTALT V. BACARDI & CO. 35
begins actually using the mark in the U.S.—and does so even
after the competing user has begun using the mark—the
registrant may bring an infringement action (subject to any
applicable defense) based on that superior right of priority.
See Brown, 391 F. Supp. at 758.
We find further support for this conclusion in Professor
McCarthy’s persuasive analogy between the type of
situation presented under § 44 in Brown and the so-called
“Dawn Donut rule.” See 5 MCCARTHY ON TRADEMARKS
§ 29:21 (citing Dawn Donut Co. v. Hart’s Food Stores, Inc.,
267 F.2d 358 (2d Cir. 1959)). Under that rule, where a
federal registrant and an alleged infringer are both “using the
respective marks in geographically separate and distinct
market areas, with no real competition between them, and
where there is no present likelihood that the federal
registrant will expand his use into the area of use of the
intrastate user, there is no cause shown for injunctive relief
based on infringement.” Mister Donut of Am., Inc. v.
Mr. Donut, Inc., 418 F.2d 838, 844 (9th Cir. 1969). But if
that federal registrant expands its business “to the point that
the use of the conflictingly similar marks by the registrant
and the unauthorized user are no longer confined to separate
and distinct market areas and there is established the
likelihood of public confusion, the federal registrant is
entitled under the authority of the Lanham Act to injunctive
relief.” Id. (citing Dawn Donut, 267 F.2d at 365).
According to Prof. McCarthy, that situation is analogous to
a foreign registrant who is using a mark abroad and who is
then granted a registration under § 44 without showing
actual use in the U.S. See 5 MCCARTHY ON TRADEMARKS
§ 29:21. As with the Dawn Donut rule, a § 44 registrant who
is using a mark elsewhere has a priority that extends into
additional geographic areas in which it may not yet be
actually using the mark, and when it later begins using the
36 LODESTAR ANSTALT V. BACARDI & CO.
mark in those additional areas, it may then sue for
infringement. This same analogy is equally applicable to
Title XII of the Lanham Act. It further supports the
conclusion that, once a registrant under the Madrid Protocol
actually begins using the registered mark within the U.S., it
is then entitled to assert an infringement claim, based on its
statutory priority of right, against those who may have used
the mark after the registrant’s constructive use date but
before the registrant’s actual use in the U.S.
C
Viewing the evidence in the light most favorable to
Lodestar, we agree that, at the very least, Lodestar used the
Untamed Word Mark in commerce when, beginning in 2014,
it began selling in the U.S. its previously developed The
Wild Geese Soldiers & Heroes rums (which used the mark
on the back of the bottles). See also infra at 47. 7 Even
assuming that these 2014 sales of The Wild Geese Soldiers
& Heroes rums were Lodestar’s first actual uses of the
Untamed Word Mark in the U.S.—and therefore occurred
after Bacardi began using “Bacardi Untameable” in
November 2013—we hold that Lodestar thereby acquired a
potentially enforceable priority of right against Bacardi
under Title XII. That is, having begun actual use in the U.S.,
Lodestar could then assert a claim for infringement or unfair
competition under the Lanham Act against Bacardi, so long
as (1) it demonstrates the requisite likelihood of confusion;
and (2) Bacardi fails to establish any applicable defense.
7
Bacardi does not appear to contest this specific point on appeal.
As we discuss in the next section, Bacardi instead argues that Lodestar’s
post-November 2013 development of an entirely new “Untamed
Revolutionary Rum” product should be disregarded in assessing
trademark infringement in this case.
LODESTAR ANSTALT V. BACARDI & CO. 37
Here, the only affirmative defense that Bacardi asserted
below on summary judgment was that Lodestar had
abandoned the Untamed Word Mark. The district court,
however, held that there was a disputed issue of material fact
as to abandonment, and neither party has challenged that
holding on appeal. We therefore assume for purposes of this
appeal that Lodestar did not abandon the mark.
Consequently, the only remaining question is whether
Lodestar presented sufficient evidence of a likelihood of
confusion to survive summary judgment. We turn to that
issue in the next section.
IV
Lodestar’s burden to show a likelihood of confusion is
“exactly the same” for its “unfair competition” claim under
§ 43 “as for [its] trademark infringement” claim under § 32.
See Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175,
1178 (9th Cir. 1988). The type of confusion more commonly
alleged in trademark cases is “forward confusion,” in which
“a look-alike, sound-alike, feel-alike unknown” tries “to
cash in on [a] famous mark’s goodwill,” Dreamwerks Prod.
Grp. v. SKG Studio, 142 F.3d 1127, 1128, 1130 n.5 (9th Cir.
1998), leading “consumers [to] believe that goods bearing
the junior mark came from, or were sponsored by, the senior
mark holder,” Surfvivor, 406 F.3d at 630. That is not
Lodestar’s claim here: it has not contended or shown that
Bacardi is trying to pass off its goods as those of Lodestar.
Instead, Lodestar’s claim is one of so-called “reverse
confusion,” in which “a person who knows only of [a] well-
known junior user comes into contact with [a] lesser-known
senior user, and because of the similarity of the marks,
mistakenly thinks that the senior user is the same as or is
affiliated with the junior user.” Ironhawk Techs., Inc. v.
Dropbox, Inc., 2 F.4th 1150, 1160 (9th Cir. 2021). The
38 LODESTAR ANSTALT V. BACARDI & CO.
concern with reverse confusion is not a “question of palming
off, since neither junior nor senior user wishes to siphon off
the other’s goodwill,” Dreamwerks, 142 F.3d at 1130, but
rather that the “small senior user [will lose] control over its
identity in ‘the rising tide of publicity associated with the
junior mark.’” Walter v. Mattel, Inc., 210 F.3d 1108, 1110
(9th Cir. 2000) (citation omitted); see also Cohn v. Petsmart,
Inc., 281 F.3d 837, 841 (9th Cir. 2002) (“[T]he smaller
senior user” in a reverse confusion case “seeks to protect its
business identity from being overwhelmed by a larger junior
user who has saturated the market with publicity.”).
In assessing the likelihood of confusion here, we
therefore ask “whether consumers doing business with
[Lodestar] might mistakenly believe that they are dealing
with [Bacardi].” Dreamwerks, 142 F.3d at 1130. “When
assessing reverse confusion on summary judgment, we ask
whether . . . a reasonable jury could conclude that consumers
would believe [Bacardi] is the source of, or a sponsor of,”
Lodestar’s products. Ironhawk Techs., 2 F.4th at 1160;
Dreamwerks, 142 F.3d at 1129 (the “test for likelihood of
confusion is whether a ‘reasonably prudent consumer’ in the
marketplace is likely to be confused as to the origin of the
good or service bearing one of the marks”). To make this
determination, we evaluate the eight so-called “Sleekcraft
factors”:
(1) strength of the mark; (2) proximity of the
goods; (3) similarity of the marks;
(4) evidence of actual confusion;
(5) marketing channels used; (6) type of
goods and the degree of care likely to be
exercised by the purchaser; (7) defendant’s
intent in selecting the mark; and
LODESTAR ANSTALT V. BACARDI & CO. 39
(8) likelihood of expansion of the product
lines.
Ironhawk Techs., 2 F.4th at 1160 (quoting M2 Software, Inc.
v. Madacy Ent., 421 F.3d 1073, 1080 (9th Cir. 2005)).
“These factors are neither exhaustive nor dispositive; it is the
totality of facts in a given case that is dispositive.” Id.
(citations and internal quotation marks omitted).
We agree with the district court’s conclusion that Lodestar
failed to carry its burden to show a likelihood of confusion
under the Sleekcraft factors, although our reasoning differs
in some respects from the district court’s.
A
In applying the Sleekcraft factors, we confront a
threshold question as to which of Lodestar’s products should
be considered in that analysis. The district court applied a
bright-line rule that “the relevant products for purposes of
determining likelihood of confusion are Lodestar’s products
as they existed prior to the ‘Bacardi Untameable Since 1862’
campaign” (emphasis added). The district court cited no
authority adopting such a hard-and-fast temporal rule,
relying instead on its view that “the goals of trademark law
would not be served by using a product that was developed
after a competitor’s alleged infringement for purposes of
determining a likelihood of confusion.” Because Lodestar’s
“Untamed Revolutionary Rum” product was indisputably
developed after Bacardi’s “Untameable” campaign began
and was motivated at least in part by Lodestar’s desire to
combat Bacardi’s perceived infringement, the district court
excluded it entirely from the likelihood-of-confusion
analysis. Instead, the district court considered only
Lodestar’s The Wild Geese Soldiers & Heroes rum products,
which had already been developed and marketed by the time
40 LODESTAR ANSTALT V. BACARDI & CO.
the Bacardi campaign began, even though they too were not
sold to U.S. consumers until later. Although we ultimately
agree that the Untamed Revolutionary Rum product should
be excluded from the likelihood-of-confusion analysis, we
reach that conclusion by a different route.
1
For several reasons, the district court committed legal
error by adopting a categorical temporal rule excluding any
consideration of a senior user’s post-infringement use of the
mark on additional products.
First, the district court’s bright-line rule is hard to square
with the Madrid Protocol regime and the comparable intent-
to-use framework on which that regime is partly modeled.
As we have explained, Title XII of the Lanham Act grants
registration, and rights of priority, to foreign registrants
based on a bona fide intent to use the mark in the U.S.,
without the need to first show actual use in the U.S. See
supra at 10–11. Although subsequent actual use of the mark
is required before an infringement claim can be asserted,
Title XII grants a right of priority to a Madrid Protocol
foreign registrant even if that registrant does not actually
begin using the mark in commerce until after an alleged
infringer has already first begun to do so. A central purpose
of the intent-to-use and Madrid Protocol frameworks is to
ensure that a company planning to use a mark does not lose
that right to a potential infringer who jumps ahead and
actually uses the mark first. See supra at 9. It would be
fundamentally inconsistent with that purpose to limit the
registrant to only those particular uses that it contemplated
at the time of its application. The district court’s categorical
rule would potentially incentivize so-called “pirates” to
make the first use of marks that they see in published intent-
to-use or Madrid Protocol applications, because doing so
LODESTAR ANSTALT V. BACARDI & CO. 41
would allow them to box in the applicant by limiting the
latter’s ability to reevaluate how it will actually use the mark
in the marketplace.
Nothing in the text of Title XII, or any other provision of
the Lanham Act, supports the district court’s per se rule.
Section 66(a) requires that, in order for an extension-of-
protection application to be properly filed with the PTO, it
must have “attached to it a declaration of bona fide intention
to use the mark in commerce that is verified by the applicant
for, or holder of, the international registration.” 15 U.S.C.
§ 1141f(a). 8 But the Act nowhere states that, if such an
application is subsequently granted, the registrant is then
limited to only those particular bona fide uses that it
contemplated at the time of the making or granting of the
application or in its subsequent initial use in the U.S.
Instead, the Act states only that, after publication of the mark
and resolution of any resulting objections, the PTO “shall
issue a certificate of extension of protection,” which then
confers the “same rights and remedies as the owner of a
registration on the Principal Register.” Id. § 1141i(a), (b)(2).
Second, the district court’s per se rule is difficult to
reconcile with the long-understood notion—expressly
incorporated into one of the eight Sleekcraft factors—that
trademark owners can expand their use of a mark, even in
the face of then-existing competing infringing uses.
Specifically, the eighth Sleekcraft factor addresses whether
there is a “[l]ikelihood of expansion” of competition
between the parties. Sleekcraft, 599 F.2d at 354. Because
“a trademark owner is afforded greater protection against
8
Bacardi has not contended on appeal that Lodestar did not satisfy
this requirement in connection with its application for extension of
protection.
42 LODESTAR ANSTALT V. BACARDI & CO.
competing goods, a ‘strong possibility’ that either party may
expand his business to compete with the other will weigh in
favor of finding that the present use is infringing.” Id.
(citation omitted.) And “[w]hen goods are closely related,
any expansion is likely to result in direct competition.” Id.
(emphasis added). This factor thus takes into account both
the possibility that the actions of the junior user may
“hinder[]” the senior user’s “expansion plans,” Surfvivor,
406 F.3d at 634, and that trademark holders may properly
choose to expand “both geographically and in the products
and services that they offer,” Cohn, 281 F.3d at 843; see also
Brookfield, 174 F.3d at 1047 (noting that a senior user “has
the right to enjoin ‘junior’ users from using confusingly
similar marks in the same industry and market or within the
senior user’s natural zone of expansion”). It reflects the
understanding that the senior user “possesses superior rights
in the mark,” regardless of “whether or not [it] has actually
expanded its use of its mark, after the commencement of the
subsequent user’s use, to goods or services which are the
same as or closely related to those of the subsequent user.”
Mason Eng’g & Design Corp. v. Mateson Chem. Corp.,
225 U.S.P.Q. 956, 1985 WL 72027, at *6 (T.T.A.B. 1985).
Our express acknowledgement that trademark holders
may change and expand their uses of their marks—and that
they need not be hindered by an infringer’s actions in doing
so—further underscores that the district court erred in
holding that a use of a mark that “was developed after a
competitor’s alleged infringement” should be categorically
excluded from the likelihood-of-confusion analysis. See
also Carnival Brand Seafood Co. v. Carnival Brands, Inc.,
187 F.3d 1307, 1312 (11th Cir. 1999) (noting that the “very
existence of the ‘related goods’ or ‘natural expansion’
doctrine contemplates that . . . the senior user may
reasonably expand into related goods”).
LODESTAR ANSTALT V. BACARDI & CO. 43
2
The fact that new, post-infringement uses are not
categorically excluded from the likelihood-of-confusion
analysis does not mean, however, that such post-
infringement uses necessarily stand on the same footing as
the senior user’s pre-infringement uses. For one thing, the
particular circumstances surrounding each of the senior
user’s uses of a mark may affect how the various Sleekcraft
factors apply in any given case. But more fundamentally,
the Lanham Act generally limits enforceable trademark
rights to bona fide uses that reflect genuine commercial
endeavors rather than merely efforts to retain rights in a
mark. See 15 U.S.C. § 1127. Seizing on that point, Bacardi
contends that the Untamed Revolutionary Rum product does
not reflect a bona fide use of the mark and should be
excluded from the likelihood-of-confusion analysis on that
alternative basis. We agree.
Section 45 of the Lanham Act defines “use in
commerce” to “mean[] the bona fide use of a mark in the
ordinary course of trade, and not made merely to reserve a
right in a mark.” 15 U.S.C. § 1127. That definition
expressly describes the uses that are ordinarily needed to
register a mark, see id. § 1051(a)(3)(C), and it analogously
delimits the relevant uses that may give rise to enforceable
trademark rights in the context of a regime, such as Title XII,
in which registration may be granted in advance of any such
use. The definition was amended by Congress in 1988 to
overrule then-existing caselaw holding that “‘token use’ was
sufficient to satisfy the use requirement and qualify a mark
for registration.” Aycock Eng’g, Inc. v. Airflite, Inc.,
560 F.3d 1350, 1357 (Fed. Cir. 2009) (citation omitted); see
also Chance, 242 F.3d at 1157 (pre-1988 caselaw held that
token use was sufficient “so long as it amounted to more than
44 LODESTAR ANSTALT V. BACARDI & CO.
a mere sham attempt to conform with statutory
requirements”) (citation omitted).
The text of the definition expressly distinguishes
between use that is “merely to reserve a right in a mark” and
a “bona fide use of a mark in the ordinary course of trade.”
15 U.S.C. § 1127. Several conclusions follow from this
statutory language. First, by specifying that the use must be
“in the ordinary course of trade,” the statute requires
“commercial use of the type common to the particular
industry in question.” Chance, 242 F.3d at 1156–57 (citation
omitted). Second, the requirement that the use be “bona
fide” means that it is done “for genuine commercial reasons”
and not “merely to reserve its rights for a lawsuit.” Social
Techs., 4 F.4th at 820–21 (emphasis added); see also id. at
817 n.8 (“bona fide” means “genuine, sincere and carried out
in good faith”). The use of the word “merely” confirms that
an otherwise genuine commercial use is “bona fide” even
though one of the purposes of the use is to “reserve a right in
a mark.” Every trademark holder presumably intends that
its commercial use will operate to protect its rights in its
marks, and the mere existence of such a purpose, without
more, is not itself sufficient to show that the use of the mark
is not “bona fide.” Third, and conversely, a purely ancillary
commercial aspect to the use of the mark does not establish
a “bona fide” use. Thus, for example, “token” or other
insubstantial uses of a mark that are merely undertaken to
reserve rights in a mark will not be “bona fide” even if they
generate some non-zero amount of sales revenue. Instead,
as noted, the use must involve activity of a scope and
character that reflects “the ordinary course of trade.”
15 U.S.C. § 1127.
Here, there can be no dispute that at least one of the
purposes for Lodestar’s sales of both The Wild Geese
LODESTAR ANSTALT V. BACARDI & CO. 45
Soldiers & Heroes rums and Untamed Revolutionary Rum
was to reserve Lodestar’s rights in the Untamed Word Mark.
Although Lodestar had made substantial efforts towards
developing and marketing The Wild Geese Soldiers &
Heroes rums well before Bacardi began its “Untameable”
campaign in November 2013, it had “decided to park th[at]
USA rum project” in June 2013 and did not reactivate those
efforts until after the Bacardi campaign started. See supra
at 17,, 20–21. Moreover, Lodestar admits that the Untamed
Revolutionary Rum product did not even exist in November
2013, and Levy acknowledged in a private email that the
product was developed in part “to combat Bacardi’s attempts
to take over our Untamed mark.” See supra at 19. The
question, then, is whether the record contains sufficient
evidence to allow a reasonable jury to find that Lodestar’s
post-November 2013 sales activities extend beyond merely
reserving rights in the mark and instead reflect ordinary
commercial use that is “common to the particular industry in
question.” Chance, 242 F.3d at 1157 (citation omitted).
In addressing this question, we note that § 45’s definition
of “use in commerce” contains further language explaining
when a mark “shall be deemed to be in use in commerce” in
the context of the sale of goods and the rendering of services.
15 U.S.C. § 1127. With respect to sales of goods, the
relevant language of § 45 states that a mark will be deemed
to be used in commerce on goods when (1) “it is placed in
any manner on the goods or their containers or the displays
associated therewith or on the tags or labels affixed thereto”;
and (2) “the goods are sold or transported in commerce.”
Id. 9 Consistent with this language, we have stated that a
9
Section 45’s definition of “use in commerce,” states, in full:
46 LODESTAR ANSTALT V. BACARDI & CO.
“single sale . . . may suffice” to establish use in commerce.
See Social Techs., 4 F.4th at 821 n.11 (emphasis added). But
to qualify as establishing “use in commerce,” and not merely
a token use to reserve rights in a mark, any such modest
initial sales must have been made in a “bona fide”
transaction, and they must be “accompanied or followed by
activities which would tend to indicate a continuing effort or
intent to continue such use and place the product on the
market on a commercial scale within a time demonstrated to
be reasonable in the particular trade.” Chance, 242 F.3d at
1157; see also 3 MCCARTHY ON TRADEMARKS § 19:109
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 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, 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 services is engaged in commerce in
connection with the services.
15 U.S.C. § 1127.
LODESTAR ANSTALT V. BACARDI & CO. 47
(stating that the question in such cases is whether modest
initial sales are “followed up within a reasonable time by a
continually increasing level of sales appropriate for this
business”).
Applying this standard, we first conclude that a
reasonable jury could find that Lodestar’s use of the
Untamed Word Mark on the back of The Wild Geese
Soldiers & Heroes Premium Rum and Golden Rum bottles
constituted bona fide “use in commerce.” Regardless of
whether Lodestar’s various pre-sales activities themselves
amounted to “use in commerce,” 10 Lodestar’s substantial
preparatory activities in developing and marketing The Wild
Geese Soldiers & Heroes rums support a reasonable
conclusion that Lodestar’s subsequent sales of those rum
products beginning in late 2014 was undertaken at least in
part for “genuine commercial reasons” and not “merely to
reserve a right” in the Untamed Word Mark. See Social
Techs., 4 F.4th at 821.
To be sure, Lodestar had paused its efforts to market this
product in the U.S. shortly before Bacardi’s campaign
began, and Lodestar then resumed those activities at least in
part in response to that campaign. Further, Lodestar’s
expert’s report indicates that, after an initial sale of 192 cases
(1152 bottles) to a single mid-west distributor in late 2014,
10
We have stated that certain promotional activities undertaken even
“prior to [the] first sale” may be sufficient, under the totality of the
circumstances, to establish use in commerce. See Chance, 242 F.3d
at 1158–59. But as explained earlier, given that Lodestar’s claimed
priority of right need not rest on actual use, we need not decide whether
Lodestar’s pre-sales activities that occurred before Bacardi’s campaign
themselves rose to the level of “use in commerce.” But those activities
nonetheless inform the understanding of the subsequent actual sales
activities that Lodestar undertook. See Social Techs., 4 F.4th at 820–21.
48 LODESTAR ANSTALT V. BACARDI & CO.
Lodestar did not sell any additional bottles over the five
years from 2014–2018. Over that time period, Lodestar’s
only other distribution consisted of the delivery of 16 sample
bottles. Although the question is close, a reasonable jury
viewing the totality of these circumstances could conclude
that, even if the immediate cause of Lodestar’s resumption
of its substantial efforts to develop and market The Wild
Geese Soldiers & Heroes was the November 2013 Bacardi
campaign, those efforts, despite their limited success, still
reflected a bona fide use of the Untamed Word Mark in
commerce.
The circumstances are different with respect to the
Untamed Revolutionary Rum product. In contrast to The
Wild Geese Soldiers & Heroes rum, the record contains no
evidence that the Untamed Revolutionary Rum had even
been conceived before the Bacardi campaign, much less that
any substantial steps had been taken towards marketing it.
The bottling and labeling were put together very quickly
within weeks of the start of the Bacardi campaign, and one
distributor reported to Lodestar that it would not carry the
product because the “current label isn’t good” and it will
“require a label change.” An internal report also stated that
the rum used for the Untamed Revolutionary Rum was the
same as for The Wild Geese Soldiers & Heroes Golden Rum.
Lodestar’s expert’s report revealed that only 96 cases
(576 bottles) were sold to a single mid-west distributor in
late 2014. No other sales were reflected for the entire five-
year period from 2014–2018; instead, the only additional
distribution reflected in that report consists of a total of
19 sample bottles delivered over that time period.
Moreover, Levy stated in an internal email that the Untamed
Revolutionary Rum product had been conceived “to
complement the Wild Geese Rum and also to combat
Bacardi’s attempts to take over our Untamed mark.”
LODESTAR ANSTALT V. BACARDI & CO. 49
Viewing the totality of these circumstances, the inference is
inescapable that Untamed Revolutionary Rum was not a
serious effort to develop a product “for genuine commercial
reasons,” but rather merely an attempt merely to reserve
Lodestar’s rights in the mark and “provide a basis” for an
eventual suit against Bacardi. Social Techs., 4 F.4th at 821.
This conclusion is confirmed by our recent decision in
Social Technologies. There, we held that the plaintiff’s
trademark registration for the “MEMOJI” mark for “mobile
phone application software,” which had been based on an
intent-to-use application, was not supported by a bona fide
“use in commerce” within the meaning of § 45. See 4 F.4th
at 814, 819–22. In the two years after filing its intent-to-use
application, the plaintiff “developed no code for its Memoji
application and had no sales,” and its limited preparatory
activities were “not sufficiently public to establish trademark
rights.” Id. at 819. After Apple released a “Memoji
application” in June 2018, the plaintiff “rushed to develop
the code for and release its Memoji application.” Id. at 820.
Internal documents reflected that its purpose in doing so was
“merely to reserve its rights for a lawsuit against Apple.” Id.
Although the plaintiff was able to point to “5,000 downloads
of its Memoji application,” we concluded that these limited
transactions amounted to “token use” that was ancillary to
the “purpose of reserving [the plaintiff’s] rights to the
MEMOJI mark and winning a lawsuit against Apple.” Id. at
821. Against this backdrop, these downloads did not support
an inference that the plaintiff had “developed its Memoji
application for genuine commercial reasons warranting
trademark protection.” Id.
In this case, Lodestar had taken no steps to produce an
“Untamed Revolutionary Rum” product, and when Bacaradi
began its “Untameable” campaign, Lodestar rushed to
50 LODESTAR ANSTALT V. BACARDI & CO.
develop such a product for the express purpose of combating
the Bacardi campaign. Although it made a modest set of
sales in late 2014 to a single distributor, Lodestar thereafter
made no further sales for the next four years. Coupled with
the lack of any preparatory activities or any serious product
development efforts, these limited sales do not reflect a
“continuing effort or intent to continue such use and place
the product on the market on a commercial scale” within a
reasonable period of time. Chance, 242 F.3d at 1157. On
the contrary, as with the limited downloads in Social
Technologies, the one-time set of sales to a single distributor
in five years constitutes a token use that is merely ancillary
to the effort to reserve rights in the mark and does not
establish sales activity reflecting “genuine commercial
purposes.” Social Techs., 4 F.4th at 821.
Accordingly, although we disagree with the district
court’s broader reasoning, we conclude that, under the
specific circumstances of this case, the development of the
Untamed Revolutionary Rum product did not reflect a bona
fide use in commerce and was properly excluded from the
likelihood-of-confusion analysis.
B
Lodestar also contends that, even if the district court
properly limited its analysis to The Wild Geese Soldiers &
Heroes rums, it nonetheless improperly assessed three of the
eight Sleekcraft factors: (1) strength of the mark;
(2) similarity of sight, sound, and meaning; and (3) the
defendant’s intent. We conclude that the district court erred
in certain respects in its consideration of two of these factors,
but those errors do not alter the ultimate conclusion that no
reasonable jury could find a likelihood of confusion here.
LODESTAR ANSTALT V. BACARDI & CO. 51
1
“The purpose of examining the strength of the plaintiff’s
mark is to determine the scope of trademark protection to
which the mark is entitled. The more unique the mark, the
greater the degree of protection.” Surfvivor, 406 F.3d at 631
(citation and footnote omitted). In reverse confusion cases,
we compare “the conceptual strength of [the plaintiff’s]
mark[] . . . to the commercial strength of [the defendant’s]
mark.” JL Beverage Co. v. Jim Beam Brands Co., 828 F.3d
1098, 1107 (9th Cir. 2016). Here, Lodestar does not dispute
the district court’s conclusion that the Bacardi Untameable
campaign was “commercially robust,” but it challenges the
court’s holding that Lodestar’s Untamed Word Mark was
conceptually weak.
“To determine a mark’s conceptual strength, we classify
a mark along a spectrum of five categories ranging from
strongest to weakest: arbitrary, fanciful, suggestive,
descriptive, and generic.” JL Beverage, 828 F.3d at 1107.
We have described the categories as follows:
Arbitrary and fanciful marks, which employ
words and phrases with no commonly
understood connection to the product, are the
two strongest categories, and “trigger the
highest degree of trademark protection.” In
the middle of the spectrum are suggestive
marks, which suggest a product’s features
and require consumers to exercise some
imagination to associate the suggestive mark
with the product. Descriptive and generic
marks, at the other end of the spectrum, are
the two weakest categories. Descriptive
marks define a particular characteristic of the
product in a way that does not require any
52 LODESTAR ANSTALT V. BACARDI & CO.
imagination, while generic marks describe
the product in its entirety and are not entitled
to trademark protection.
Id. (citations omitted). Here, the district court concluded that
the Untamed Word Mark was “more suggestive than
arbitrary,” a finding it based primarily on evidence that third
parties have often used “the word ‘untamed’ in connection
with alcohol.” We agree with the district court’s conclusion
that no reasonable jury could find that the Untamed Word
Mark is arbitrary.
“An arbitrary mark . . . uses common words in a
fictitious and arbitrary manner to create a distinctive mark
which identifies the source of the product.” Dreamwerks,
142 F.3d at 1130 n.7. Because such a mark “neither
describes nor suggests anything about the nature” of the
goods, 2 MCCARTHY ON TRADEMARKS § 11:11, “the
trademark holder must work hard to make consumers
associate the trademark with the product,” Dreamwerks,
142 F.3d at 1130 n.7. As a result, an arbitrary mark
“deserve[s] wide protection because the trademark holder
can properly expect to run into very little confusion from
honest competitors.” Id.; see also Stork Rest. v. Sahati,
166 F.2d 348, 355 (9th Cir. 1948) (holding that “The Stork
Club” was an arbitrary trade name because a stork was “in
no way descriptive of the appellant’s night club”). The
expert opinion evidence presented by Lodestar does not
support a finding that “Untamed” is an arbitrary mark under
these standards.
Lodestar’s expert rested his conclusion that the mark was
“arbitrary” on the fact that the term “Untamed” “clearly
do[es] not describe the product—namely rum” and, in
ordinary usage, is more commonly associated with the
LODESTAR ANSTALT V. BACARDI & CO. 53
category of “nature,” including animals and lands. We agree
that the Untamed Word Mark is not “descriptive,” but
Lodestar’s expert provided no adequate, non-conclusory
basis for concluding that the mark was arbitrary rather than
suggestive. By contrast, Bacardi submitted evidence of what
the district court described as “27 labels approved by the
Alcohol and Tobacco Tax and Trade Bureau between
December 2005 and January 2018 which feature the word
‘Untamed,’” as well as several pieces of promotional
material in which the word “untamed” is used to describe
alcohol. As the district court noted, the fact that numerous
other alcoholic beverage sellers, on dozens of other
occasions, chose to use a particular word in their marketing
materials weighs heavily against the notion that the
connection between that term and such products is
“arbitrary.” See M2 Software, 421 F.3d at 1088 (“Use of
similar marks by third-party companies in the relevant
industry weakens the mark at issue.”). 11 Consumers must
exercise some imagination (but not much) to associate the
term “Untamed” with the image of a hard liquor—reflecting,
perhaps, how its consumption might make one feel. We
therefore agree with the district court that the Untamed Word
11
We reject Lodestar’s arguments that the district court should not
have considered this evidence of third-party use. Evidence of third-party
use of a similar mark is relevant to the strength of the mark, see M2
Software, 421 F.3d at 1088, and the district court did not abuse its
discretion in concluding that the documents contain sufficient
“circumstantial indicia of authenticity” under Federal Rule of Evidence
901. And whether Bacardi presented sufficient evidence to show that
these third-party uses were associated with actual U.S. sales is irrelevant
to the admissibility of these documents for the more limited purpose of
showing that the word “untamed” has been repeatedly associated with
alcohol products.
54 LODESTAR ANSTALT V. BACARDI & CO.
Mark is more suggestive than arbitrary. See Surfvivor,
406 F.3d at 632.
The district court erred, however, in then concluding that
the strength-of-the-mark factor “weighs against confusion
because Lodestar’s UNTAMED word mark is conceptually
weak.” We have recognized that suggestive marks are
“inherently distinctive” and are entitled to “greater
protection,” see Ironhawk Techs., 2 F.4th at 1162 (citation
omitted), even though we have sometimes also described
them as “presumptively weak,” Brookfield, 174 F.3d at
1058. Given that the Untamed mark is properly considered
distinctive for purposes of summary judgment, the strength-
of-the-mark factor in this reverse confusion case focuses on
“whether the junior mark is so commercially strong as to
overtake the senior mark.” Ironhawk Techs., 2 F.4th at 1162
(simplified). Given the overwhelming commercial strength
of Bacardi’s “Untameable” mark, this factor weighs in favor
of a likelihood of confusion. See Surfvivor, 406 F.3d at 632.
2
“Similarity of the marks is tested on three levels: sight,
sound, and meaning,” and “[e]ach must be considered as
they are encountered in the marketplace.” Sleekcraft,
599 F.2d at 351; see also M2 Software, 421 F.3d at 1082
(stating that, in assessing this factor, the mark must be
viewed “as a whole, as it appears in the marketplace”)
(citation omitted). As the district court recognized,
Lodestar’s expert failed properly to address how consumers
would encounter the Untamed Word Mark in the
marketplace, because the expert only considered the
“Untamed Revolutionary Rum,” in which the mark appeared
prominently in the name of the product. As to The Wild
Geese Soldiers & Heroes rums, however, the “Untamed”
mark appeared only on the back label, below a considerable
LODESTAR ANSTALT V. BACARDI & CO. 55
amount of writing. See supra at 15–16. We have recognized
that, when (as here), two parties use the same or similar
marks “merely as a tagline to their distinctive business
names,” the subordinate position of that tagline mark to their
“housemarks” weighs against a likelihood of confusion.
Cohn, 281 F.3d at 842. On this record, the district court
properly concluded that “the manner in which consumers
actually encountered [the] marks weighs against any
likelihood of confusion.”
3
In a reverse confusion case such as this one, the
“defendant’s intent in selecting the mark” may weigh in
favor of confusion in a variety of different ways, depending
upon the nature of the potential for confusion shown by the
circumstances. Marketquest Grp. v. BIC Corp., 862 F.3d
927, 934 (9th Cir. 2017). A relevant intent may be shown
“by evidence that, for example, the defendant knew of the
mark, should have known of the mark, intended to copy the
plaintiff, failed to conduct a reasonably adequate trademark
search, or otherwise culpably disregarded the risk of reverse
confusion.” Id. at 934–35; see also Surfvivor, 406 F.3d
at 634 (“‘[W]here the alleged infringer adopted his mark
with knowledge, actual or constructive, that it was another’s
trademark,’ resolution of this factor favors [the plaintiff].”)
(citation omitted).
Because it is undisputed that Bacardi knew about the
Untamed Word Mark prior to its campaign, the district court
erred in concluding that the intent factor did not weigh, on
balance, in Lodestar’s favor. We recognize that, from the
time that Bacardi learned of Lodestar’s mark to the time that
Bacardi began its campaign, Lodestar had made little use (if
any) of the Untamed Word Mark in U.S. commerce. See
supra at 15–17. While that is a mitigating consideration to
56 LODESTAR ANSTALT V. BACARDI & CO.
be considered in the overall balance of the Sleekcraft factors,
the district court erred in concluding that this factor did not
weigh in favor of a likelihood of confusion. Ironhawk
Techs., 2 F.4th at 1167–68; Marketquest, 862 F.3d at 934–
35; Surfvivor, 406 F.3d at 634.
4
Lodestar does not challenge on appeal the district court’s
assessment of the other five Sleekcraft factors, which we
briefly summarize:
• Given that Lodestar and Bacardi both used their
respective marks in the marketing of rum, the factor
addressing proximity of the goods weighed in favor
of a likelihood of confusion.
• Because Lodestar’s The Wild Geese Soldiers &
Heroes rums were a previously developed product
line that would compete with Bacardi’s rum, there is
no issue here concerning a likelihood of expansion of
product lines.
• As to the evidence-of-confusion factor, the district
court concluded that, because Lodestar was unable to
identify “any U.S. consumers who were confused as
to the source of its products”—despite Bacardi’s
approximately three-and-a-half-year advertising
campaign—this factor weighed “slightly against any
likelihood of confusion.”
• Given that (1) Bacardi used the “Bacardi
Untameable” mark only in advertisements that were
displayed in a variety of media that Lodestar did not
use; and (2) Lodestar used the “Untamed” mark
predominantly on the back label of its The Wild
LODESTAR ANSTALT V. BACARDI & CO. 57
Geese Soldiers & Heroes rums, the district court held
that the marketing-channels factor also weighed
“slightly against a likelihood of confusion.”
• In view of the parties’ failure to present a “consumer
survey tailored to the products at issue in this case”
or other relevant evidence, the district court held that
the factor addressing the care with which consumers
make purchases of the relevant product was neutral.
Considering all of the Sleekcraft factors together, we
conclude that, despite the district court’s specific errors with
respect to two of those factors, the record nonetheless
confirms that no reasonable trier of fact could “find that
confusion is ‘probable,’ not merely ‘possible.’” M2
Software, 421 F.3d at 1085 (citation omitted). Although the
commercial strength of Bacardi’s campaign weighs in favor
of a likelihood of confusion with respect to Lodestar’s
competing rum, which bore a similar suggestive mark of
which Bacardi was culpably aware, these factors are
overwhelmingly offset by the fact that consumers would
“encounter the trademarks differently in the marketplace,”
the companies’ “marketing efforts [were] concentrated in
different media,” and Lodestar “presented no evidence of
actual confusion” among consumers of its products. Cohn,
281 F.3d at 842.
Accordingly, Lodestar’s claims under § 32 and § 43 of
the Lanham Act fail as a matter of law. Because Lodestar
has not contended that the non-monetary portion of its UCL
claim could survive in the absence of a likelihood of
confusion, that claim was properly dismissed as well. We
58 LODESTAR ANSTALT V. BACARDI & CO.
affirm the district court’s grant of summary judgment to
Bacardi. 12
AFFIRMED.
12
In view of our disposition, we need not reach the district court’s
alternative conclusion that Lodestar failed to substantiate its various
claims for damages.