IN THE UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT United States Court of Appeals
Fifth Circuit
FILED
July 15, 2009
No. 08-20578 Charles R. Fulbruge III
Clerk
XTREME LASHES, LLC; JOUMANA MOUSSELLI
Plaintiffs–Appellants
v.
XTENDED BEAUTY, INC.
Defendant–Appellee
Appeal from the United States District Court
for the Southern District of Texas
Before BARKSDALE, DeMOSS, and STEWART, Circuit Judges.
DeMOSS, Circuit Judge:
This dispute concerns trademarks for eyelash extensions. We hold that the
district court incorrectly granted summary judgment to Defendant-Appellee
Xtended Beauty, Inc. (“Xtended”) on infringement claims by Plaintiffs-
Appellants Xtreme Lashes, LLC and Joumana Mousselli (collectively “Xtreme”).
We also hold that the district court incorrectly stripped Xtreme’s mark EXTEND
YOUR BEAUTY of trademark protection. We reverse and remand for trial.
I.
Xtreme and Xtended sell kits used by professional cosmetologists to
lengthen and accent clients’ eyelashes. Xtreme has used the marks XTREME
LASHES and EXTEND YOUR BEAUTY since September 10, 2005. Xtreme
No. 08-20578
obtained federal registration of EXTEND YOUR BEAUTY on October 23, 2007,
and registration of XTREME LASHES on April 1, 2008. XTREME LASHES
appears on all or nearly all of Xtreme’s products. The mark features a large X,
half of which is formed by a stylized eyelash. The type-written mark EXTEND
YOUR BEAUTY appears on some products as well, but always in conjunction
with XTREME LASHES. Xtreme has spent $1.3 million to promote its products
via direct mail campaigns, trade shows, magazines (including American Spa,
Beauty Launchpad, and Skin, Inc.), and the Internet. Xtreme sells directly to
licensed health and beauty professionals (e.g., cosmetologists, doctors and
nurses), as well as to prominent but unlicensed professionals (e.g., make-up
artists). Xtreme holds training workshops, for which the participant normally
pays between $695 and $900. Only those who complete a workshop and receive
Xtreme’s certification may buy its products. Xtreme sells a “gold” and a
“platinum” kit, which cost $529 and $949, respectively. Each kit comes in a silver
carrying case which bears the XTREME LASHES mark.
Xtended has used XTENDED BEAUTY on its products since July 29, 2006.
The mark features a large, type-written X. Xtended mainly sells to distributors,
who then sell to beauty professionals. Xtended markets its products via trade
shows, trade publications (including The Green Book and American Beauty), and
the Internet. Xtended sells eyelash kits for $345; the kits come in a silver
carrying case which features the XTENDED BEAUTY mark. Beauticians must
receive training, either from Xtended or another company, before purchasing a
kit. Xtended’s training is normally free.
Xtreme alleged that Xtended has infringed and diluted its marks. 1
Xtended counterclaimed, seeking cancellation of EXTEND YOUR BEAUTY. Per
the district court’s order, the parties filed a joint trademark chart. Before the
1
Xtreme also alleged in the district court that Xtended infringed the mark XTREME
BEAUTY, which Xtreme has registered but never used. That issue is not before us.
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No. 08-20578
parties conducted discovery, Xtended moved for summary judgment on all
claims. In support of its motion, Xtended filed a declaration and report by Dr.
Robert Frank, a specialist in trademark searches. After conducting database
research, Dr. Frank found that “xtreme” (in its misspelled form) is a common
term in the beauty industry. Dr. Frank also found that “extend your beauty” was
used by at least thirty companies world-wide to describe or market personal
grooming products, including eyelash products and services. In response, Xtreme
demonstrated that many of the sellers of eyelash extensions in the United States
using the phrase “extend your beauty” were licensees of Xtreme.
After conducting a hearing, the court held that no reasonable person would
likely confuse either of Xtreme’s marks with XTENDED BEAUTY because the
marks were so dissimilar. Without a written statement of reasons, the court
entered summary judgment in favor of Xtended on trademark infringement and
dilution claims. At a later hearing, the court found EXTEND YOUR BEAUTY
descriptive as a matter of law. The court ordered the mark cancelled. The court
dismissed other claims as moot and entered final judgment. Xtreme appealed,
seeking reversal of the adverse judgments.
II.
We review a district court’s grant of summary judgment de novo. Bd. of
Supervisors for La. State Univ. Agric. & Mech. College v. Smack Apparel Co., 550
F.3d 465, 474 (5th Cir. 2008) (citation omitted). Summary judgment is proper “if
the pleadings, the discovery and disclosure materials on file, and any affidavits
show that there is no genuine issue as to any material fact and that the movant
is entitled to judgment as a matter of law.” F ED. R. C IV. P. 56(c). “[W]e are
obliged to construe all the evidence and reasonable inferences deduced therefrom
in a light most favorable to [Xtreme], the nonmoving party in the court below.”
Int’l Shortstop, Inc. v. Rally’s, Inc., 939 F.2d 1257, 1260 (5th Cir. 1991).
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No. 08-20578
In a trademark infringement action, the paramount question is whether
one mark is likely to cause confusion with another. Marathon Mfg. Co. v.
Enerlite Prods. Corp., 767 F.2d 214, 217 (5th Cir. 1985). “Likelihood of confusion”
means more than a mere possibility; the plaintiff must demonstrate a probability
of confusion. Smack Apparel, 550 F.3d at 478. We examine the following
nonexhaustive “digits of confusion” in evaluating likelihood of confusion: (1) the
type of trademark; (2) mark similarity; (3) product similarity; (4) outlet and
purchaser identity; (5) advertising media identity; (6) defendant’s intent; (7)
actual confusion; and (8) care exercised by potential purchasers. Id. No digit is
dispositive, and the digits may weigh differently from case to case, “depending
on the particular facts and circumstances involved.” Marathon, 767 F.2d at 218.
The court should consider all relevant evidence. Id. at 219. While likelihood of
confusion is typically a question of fact, summary judgment is proper if the
“record compels the conclusion that the movant is entitled to judgment as a
matter of law.” Smack Apparel, 550 F.3d at 474. We first consider likelihood of
confusion between XTENDED BEAUTY and XTREME LASHES. We then ask
whether EXTEND YOUR BEAUTY is a protectable mark, and if so, whether
confusion is likely between it and XTENDED BEAUTY.
A. XTREME LASHES
Type of trademark. “Type of trademark” refers to the strength of the senior
mark. Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188, 201 (5th Cir. 1998).
Stronger marks are entitled to greater protection. Amstar Corp. v. Domino’s
Pizza, Inc., 615 F.2d 252, 259 (5th Cir. 1980). Marks are normally assigned to
“categories of generally increasing distinctiveness”: (1) generic, (2) descriptive,
(3) suggestive, (4) arbitrary, or (5) fanciful. Two Pesos, Inc. v. Taco Cabana, Inc.,
505 U.S. 763, 768 (1992). “The latter three categories of marks, because their
intrinsic nature serves to identify a particular source of a product, are deemed
inherently distinctive and are entitled to protection.” Id. A generic term refers
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No. 08-20578
to the class of which a good is a member. Id. A descriptive term provides an
attribute or quality of a good. Id. at 769. Generic terms receive no trademark
protection, while descriptive terms merit protection only if they have secondary
meaning. Id. A suggestive terms suggests, but does not describe, an attribute of
the good; it requires the consumer to exercise his imagination to apply the
trademark to the good. Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d
786, 791 (5th Cir. 1983). More distinctiveness and less natural or literal content
correspond with increased mark strength. See Exxon Corp. v. Tex. Motor Exch.
of Houston, Inc., 628 F.2d 500, 504 (5th Cir. 1980). It is proper to give more
weight to distinctive portions of a mark and less weight to unremarkable or
generic portions. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407 (Fed. Cir.
1997). “Any given term’s correct classification is a factual issue.” Soweco, Inc. v.
Shell Oil Co., 617 F.2d 1178, 1183 n.12 (5th Cir. 1980) (citations omitted).
The district court did not determine whether the mark XTREME LASHES
is weak or strong. Xtreme does not contend that the mark has secondary
meaning; thus, it is protectable only if it is suggestive, fanciful, or arbitrary.
Plainly, the mark as a whole is not generic (e.g., “eyelash extensions”), despite
the inclusion of the term “lashes.” See In re Dixie Rests., 105 F.3d at 1407.
Viewing evidence in the light most favorable to Xtreme, we believe that
XTREME LASHES “arguably has many of the indicia of a suggestive mark and
is therefore entitled to protection.” See Sun-Fun Prods., Inc. v. Suntan Research
& Dev. Inc., 656 F.2d 186, 191 n.5 (5th Cir. Unit B Sept. 1981). The consumer
must exercise some imagination to associate “xtreme lashes” with “artificially
elongated eyelashes.” See Zatarains, 698 F.2d at 791. The mark uses a
misspelling of the word “extreme” and a stylized eyelash forms part of the “X.”
Cf. Soweco, 617 F.2d at 1186 n.24 (noting that a misspelling alone does not make
an otherwise generic term protectable). Xtended showed that the term “xtreme”
appears frequently on cosmetics and grooming products. Cf. Amstar, 615 F.2d
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No. 08-20578
at 259-60 (holding that widespread use of DOMINO across many industries
weighed against mark strength). However, this prevalence should be weighed
by a jury. There is no evidence that other sellers of eyelash products use the
term “xtreme.” We cannot say with certitude that XTREME LASHES is strong
or weak. For summary judgment purposes, the mark is entitled to protection.
Mark similarity. Mark similarity “is determined by comparing the marks’
appearance, sound, and meaning.” Capece, 141 F.3d at 201. “Similarity of
appearance is determined on the basis of the total effect of the designation,
rather than on a comparison of individual features.” Amstar, 615 F.2d at 260-61
(quotation omitted). Nevertheless, courts should give more attention to the
dominant features of a mark. See Capece, 141 F.3d at 202. Even if two marks are
distinguishable, we ask whether, under the circumstances of use, the marks are
similar enough that a reasonable person could believe the two products have a
common origin or association. See id. at 201. To determine the “meaning and
connotation” of the marks, we consider the context of use, such as labels,
packaging, and advertising. Id. (quotation omitted). “The two marks must bear
some threshold resemblance in order to trigger inquiry into extrinsic factors, but
this threshold is considerably lower than the degree of similarity required where
the plaintiff presents little or no evidence on extrinsic factors supporting
infringement.” Sun-Fun, 656 F.2d at 189.
XTREME LASHES and XTENDED BEAUTY have no common words and
use different typefaces. Each mark has two words, but there is minor aural
similarity when the marks are spoken aloud. Both marks suggest cosmetic
enhancement. Two color schemes are used for each mark (white lettering/black
background and black lettering/white background for XTREME LASHES, and
white lettering/black background and white lettering/azure background for
XTENDED BEAUTY). Thus, both marks have employed white lettering on a
black background. Both marks also use a large stylized ‘X’ as a prominent
6
No. 08-20578
feature of the mark. Xtreme’s letter X is formed in part by a golden eyelash,
while Xtended’s X uses regular typeface. Both marks use the X in an eye-
catching misspelling. Moreover, the marks appear in similar contexts. Each
appears upon a silver carrying case for the companies’ kits, as well as on the
products inside the kits. The companies use similar marketing channels to
promote the marks.
Focusing on the marks’ distinct terms and typefaces, the district court
concluded that no reasonable person could be confused. The court in essence held
that there was too little “threshold resemblance” to engender any likelihood of
confusion. See id. at 189. We disagree. A focus on the marks’ distinguishable
visual features, when viewed “side by side in the judicial solemnity of the
courtroom is by itself enough of a falsification of actual market conditions to defy
realistic appraisal.” Id. (quotation omitted). While a large X alone should not be
protectable, it is a visually striking common feature integrated into both marks.
See id. at 190 (holding that use of a sunburst in a similar format, despite
dissimilar brand names and stylistic features, created question of fact); cf.
Armstrong Cork Co. v. World Carpets, Inc., 597 F.2d 496, 504 (5th Cir. 1979) (no
likelihood of confusion where term WORLD was prominent feature of senior
mark but “diminutive” feature in junior mark).
Taking all inferences in favor of Xtreme, we believe that the marks are
similar enough to suggest a common origin or association—especially because
several other “digits” weigh towards confusion. See Sun-Fun, 656 F.2d at 189.
Even if a person recognized that the marks are not identical, she might believe
that XTENDED BEAUTY is a product line offered by the makers of XTREME
LASHES, such as a discount line. Confusion of origin, not the identity of marks,
is the gravamen of trademark infringement. KP Permanent Make-Up, Inc. v.
Lasting Impression I, Inc., 543 U.S. 111, 117 (2004). The marks also appear in
near-identical contexts on the companies’ kits. For this reason, we find Xtended’s
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No. 08-20578
assertion unpersuasive that reversing the district court would allow Xtreme “to
preclude anyone that uses a Big X to promote eyelash extension and related
products.” Ultimately, “[a] jury might well conclude that the marks are too
dissimilar to justify a finding of infringement. We merely hold that it was
improper for the district judge to weigh these similarities and differences instead
of the jury.” See Sun-Fun, 656 F.2d at 190.
Product similarity. “The greater the similarity between the products and
services, the greater the likelihood of confusion.” Exxon, 628 F.2d at 505. Xtreme
and Xtended peddle kits which include eyelash extensions, adhesive, special
scissors, and other accouterments needed to affix, touch up, or remove fake
eyelashes. Both kits come in a silver case bearing the respective mark. This
factor weighs in favor of likelihood of confusion.
Outlet and purchaser identity. Xtreme sells to health and beauty
professionals who meet in-house training and certification requirements.
Xtended sells to beauty distributors, which in turn sell to cosmetologists and
other professionals. Buyers cannot “compare the products side by side,” which
“may increase the likelihood of confusion.” See Sun-Fun, 656 F.2d at 192.
Ultimately, both companies seek to land their kits in the hands of trained
cosmetologists, and have their products affixed to customers’ lashes. This
supports an inference that Xtended and Xtreme compete directly for end-users
in the eyelash extension market. This factor favors Xtreme.
Advertising media identity. Both companies use print advertisements,
direct mailings, and Internet promotion. The parties do not advertise in identical
magazines, but they target the same class of buyers. This supports an inference
that the parties use similar advertising and marketing channels.
Defendant’s intent. A junior user must avoid choosing a mark which may
cause confusion with the senior user’s mark. See in re Shell Oil Co., 992 F.2d
8
No. 08-20578
1204, 1209 (Fed. Cir. 1993). However, with no evidence of Xtended’s intent, this
factor is neutral. See Capece, 141 F.3d at 203.
Actual confusion. Actual confusion need not be proven, but if consumers
have confused the junior mark for the senior mark, this is “the best evidence of
a likelihood of confusion.” Smack Apparel, 550 F.3d at 483. “Moreover, reason
tells us that while very little proof of actual confusion would be necessary to
prove the likelihood of confusion, an almost overwhelming amount of proof would
be necessary to refute such proof.” World Carpets, Inc. v. Dick Littrell’s New
World Carpets, 438 F.2d 482, 489 (5th Cir. 1971).
Xtreme showed several incidences of confusion. For instance, Lisa Flowe,
a cosmetologist licensed for 26 years, stated in an affidavit that in 2007 she tried
to buy Xtreme’s kit. Flowe knew of Xtreme but never purchased its products:
“When I saw a picture in the catalogue of an eyelash extension kit with a name
that begins with ‘X,’ I assumed it was the Xtreme Lashes product I was looking
for.” She ordered the kit and contacted a salon affiliated with Xtreme, seeking
to obtain training. Later she realized that she bought the wrong kit. Before the
entry of summary judgment, Xtreme presented evidence that two other
customers were confused, one of whom, like Flowe, actually purchased Xtended’s
kit but thought she had purchased Xtreme’s kit.2
Despite this evidence, the district court reasoned: “occasional confusion is
not the same thing as market confusion.” The court noted that some people
might say Bloomingdale’s when they mean Neiman Marcus, or Pepsi instead of
Coke. Because the court considered the marks so distinct, it reasoned that any
confusion was irrational. In this vein, Xtended argues that “isolated anecdotes
of purchaser confusion do not constitute actual confusion.” The only case from
2
After the district court’s grant of summary judgment, Xtreme moved for
reconsideration and presented evidence that three more people had experienced confusion.
Even without considering this evidence, we conclude that there is a genuine issue of fact.
9
No. 08-20578
this Court cited by Xtended is First Southern Federal Loan & Savings
Association of Mobile, Alabama v. First Southern Savings & Loan Association
of Jackson County, Mississippi (First Southern), 614 F.2d 71 (5th Cir. 1980).
Xtended misinterprets First Southern. There, we reviewed a bench trial in which
the court denied the senior user relief, despite actual confusion. Id. at 72-73. We
applied Mississippi law, not the Lanham Act, and found the senior mark
unprotectable. Id. at 74. We held that it was not clear error to find that the
marks “were not so similar as to be reasonably calculated to deceive the public
and injure the appellant.” Id. (citations omitted). First Southern applied a
different standard of review, body of law, and legal test. It contributes nothing
to this dispute.
The evidence of confusion in this case creates a genuine issue of material
fact. While summary judgment may be appropriate in outlier cases, see, e.g.,
Smack Apparel, 550 F.3d at 483, courts may not ignore competent evidence of
actual confusion, see Fuji Photo Film Co. v. Shinohara Shoji Kabushiki Kaisha,
754 F.2d 591, 597 (5th Cir. 1985) (“In no case have we sanctioned total disregard
of evidence of actual confusion; there is simply no precedent for such a view . .
. .”). The evidence shows more than a fleeting mix-up of names. It shows actual
confusion about the origin of the parties’ products. The confusion was caused by
the trademarks employed and it swayed consumer purchases. See Scott Fetzer
Co. v. House of Vacuums Inc., 381 F.3d 477, 487 (5th Cir. 2004) (“To prove
infringement, [plaintiff] must ultimately prove that a misleading representation
by [defendant], as opposed to some other source, caused a likelihood of
confusion.”). This evidence is highly probative of infringement. See World
Carpets, 438 F.2d at 489; Louisiana World Expo., Inc. v. Logue, 746 F.2d 1033,
1041 (5th Cir. 1984) (holding that single known incidence of confusion by
purchaser supported bench trial finding of likelihood of confusion). To ignore this
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No. 08-20578
evidence as anecdotal or irrational tramples upon the province of the trier of
fact.
Xtended does not persuade when it insinuates that confusion was due to
inattentiveness or similarity of trade dress. Nothing proves that Flowe and other
consumers haphazardly mixed up XTREME LASHES and XTENDED BEAUTY.
To so presume, in favor of Xtended, is verboten. Furthermore, if the marks’
appearance on similar silver kits confuses consumers, this shows that the marks
appear in confusingly similar contexts—weighing in Xtreme’s favor. Xtended has
it backwards to say otherwise. The evidence may not be overwhelming. A jury
could find that Flowe and the other confused consumers were careless. However,
it bears emphasizing that the evidence on record is only from those individuals
who conveyed their confusion to Xtreme. We cannot assume that these known
incidents of confusion prove a negative, namely, a paucity of confusion by all
others. Discovery and a survey should illuminate actual or potential confusion.
See Exxon, 628 F.2d at 506-07; Zatarains, 698 F.2d at 793 n.4. We reiterate that
Xtreme only needed to show a genuine issue as to likelihood of confusion. Xtreme
has gone beyond this requirement, and shown true confusion in the marketplace.
This factor weighs strongly in Xtreme’s favor.
Care exercised by potential purchasers. “Where items are relatively
inexpensive, a buyer may take less care in selecting the item, thereby increasing
the risk of confusion.” Smack Apparel, 550 F.3d at 483; see also Oreck Corp. v.
U.S. Floor Sys., Inc., 803 F.2d 166, 173-74 (5th Cir. 1986) (reasoning that
because purchasers were “buying for professional and institutional purposes at
a cost in the thousands of dollars, they are virtually certain to be informed,
deliberative buyers”) (citation omitted). However, a high price tag alone does not
negate other indicia of likelihood of confusion, especially if the goods or marks
are similar. See Fuji, 754 F.2d at 595-96.
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No. 08-20578
Xtreme presented an affidavit by Martin Dale, a co-owner and director of
Xtreme, who stated that in his experience, the purchasers of eyelash kits, while
experienced or licensed estheticians, are often young, “very impressionable,” and
impetuous in their purchasing behavior. Xtreme also points to the affidavit of
Lisa Flowe as evidence that buyers are not always informed or careful. Despite
decades of experience as a cosmetologist and an intent to buy Xtreme’s kit, Flowe
did not bat an eyelash before spending over $300 on Xtended’s kit. Flowe did not
realize her mistake until after she had called an Xtreme affiliate for customer
support and training. Xtended argues that the high price of Xtreme’s kits ($529
for the “gold” kit, $949 for the “platinum”), and the requirement that purchasers
be trained professionals, impel the conclusion that customers exercise great care
when buying the kits. After an esthetician undergoes training on Xtreme’s
products, it is logical to say that confusion is less likely. However, this does not
prevent confusion by untrained buyers, like Lisa Flowe, seeking to extend their
repertoire to this up-and-coming product. Whether Flowe’s case is aberrational
or indicative of typical market reaction cannot be adjudicated at this stage. We
therefore infer that this factor favors Xtreme.
Conclusion/weighing of digits. For summary judgment purposes, all digits
of confusion are either neutral or weigh in Xtreme’s favor. Actual confusion
weighs strongly in Xtreme’s favor. No factor favors Xtended. Considering the
record in the light most favorable to Xtreme, we cannot say that judgment for
Xtended is “preordained.” See Soc’y of Fin. Examiners v. Nat’l Ass’n of Certified
Fraud Examiners, Inc., 41 F.3d 223, 226 (5th Cir. 1995). We therefore reverse
the district court’s grant of summary judgment.
B. EXTEND YOUR BEAUTY
The district court held that, as a matter of law, there was no likelihood of
confusion between EXTEND YOUR BEAUTY and XTENDED BEAUTY. Later,
the court ordered the mark cancelled. We first ask if EXTEND YOUR BEAUTY
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No. 08-20578
is entitled to trademark protection. We hold that it is, and then ask if summary
judgment was appropriate on likelihood of confusion. We hold that it was not.
1. Trademark Protection
A trademark registration by the Patent and Trademark Office (PTO) is
“prima facie evidence of the validity of the registered mark . . . .” 15 U.S.C. §
1115(a). However, if the mark is found to be either generic or descriptive and
lacking secondary meaning, a court may cancel it. 15 U.S.C. § 1119; see Soweco,
617 F.2d at 1184 (holding that registration does not bar defenses to
infringement). Because categorization is a question of fact, summary judgment
is rarely appropriate. Soweco, 617 F.2d at 1183 n.12; see also Union Nat’l Bank
of Tex., Laredo, Tex. v. Union Nat’l Bank of Tex., Austin, Tex. (Union Nat’l), 909
F.2d 839, 845 n.13 (5th Cir. 1990) (“[I]t will be the exceptional case which may
be disposed of on these grounds.”). Xtreme does not argue that EXTEND YOUR
BEAUTY has secondary meaning. Consequently, the mark must be at least
suggestive to be protectable. See Two Pesos, 505 U.S. at 768-69.
Descriptiveness is construed broadly. See Zatarains, 698 F.2d at 792.
Indicia include: (1) the mark’s dictionary definition corresponds with its meaning
and context; (2) upon hearing the mark, one need not use “imagination, thought
and perception to reach a conclusion as to the nature of goods;” (3) “competitors
would be likely to need the terms used in the trademark in describing their
products;” and (4) others have used the term in marketing a similar service or
product. Id. at 792-93 (quotations and citations omitted). We examine the
context in which a term appears, and the audience to which it is directed, when
determining eligibility for protection. Union Nat’l, 909 F.2d at 846-47. We also
look at a multi-word mark as a unitary whole in its given arrangement, and do
not parse apart the constituent terms. Id. at 848 n.25. Because we are reviewing
a grant of summary judgment, we make all reasonable inferences in favor of
Xtreme, the non-moving party. See Int’l Shortstop, 939 F.2d at 1260.
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No. 08-20578
The district court held that EXTEND YOUR BEAUTY is descriptive as a
matter of law. Xtended’s expert, Dr. Frank, found that EXTEND YOUR
BEAUTY is not used as a company name, nor as product name or trademark. Dr.
Frank found that thirty companies had used the phrase in conjunction with hair
care, eyelash, or personal grooming products and services. Dr. Frank also found
that the phrase appears in non-trademark contexts. Xtreme insists that there
is a question of fact whether EXTEND YOUR BEAUTY is suggestive. The fact
that the PTO registered the mark, says Xtreme, alone precludes summary
judgment. Xtreme next argues that others’ use of “extend your beauty” in a
textual sense or in conjunction with non-eyelash related beauty products should
not weigh in favor of descriptiveness. Xtreme also says “nearly every seller
identified by Xtended in the eyelash extension industry is a client of Xtreme and
is using the EXTEND YOUR BEAUTY trademark with its permission.”
Xtreme has the better argument. The tests posited in Zatarains mainly
point to suggestiveness. See 698 F.2d at 792-93. “Extend” describes a function
of the product, but nothing in the dictionary definitions of “extend,” “your,” or
“beauty” relates to eyelash enhancements. Beauty is an abstract concept. One
cannot literally extend it. The district court observed that beauty serves as a
metaphor for eyelashes. We agree, but unlike the district court, we conclude that
metaphorical usage means the mark is arguably suggestive. The mark’s meaning
and context have little to do with the dictionary definitions of its parts. The
three-word mark, viewed as a whole, has no dictionary meaning or idiomatic
resonance. Additionally, consumers must use “imagination, thought and
perception” to conclude that an exhortation to “extend your beauty” markets
eyelash extensions, as opposed to another cosmetically enhanced feature. See id.
It is worth noting that EXTEND YOUR BEAUTY always appears in conjunction
with XTREME LASHES. Use in this context may explain the nature of the
product, weighing towards descriptiveness. However, this is a matter best
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No. 08-20578
weighed by a jury after a full presentment of the evidence. See Union Nat’l, 909
F.2d at 845 n.13.
As for other indicia of descriptiveness, nothing in the record shows that
makers of eyelash extensions need the phrase “extend your beauty” in order to
describe their products. See Zatarains, 698 F.2d at 792-93. Third-party use for
unrelated products is not relevant when evaluating descriptiveness. See Union
Nat’l, 909 F.2d at 848. Companies which have used EXTEND YOUR BEAUTY
for eyelash products have done so mainly as licensees of Xtreme. A non-affiliated
company called Luscious Lashes apparently has used the phrase to sell eyelash
products or services, but this evidence alone does not entitle Xtended to
judgment. A phrase is not descriptive merely because it is catchy.3 See Smack
Apparel, 550 F.3d at 488 (“[T]he fact that a trademark is desirable does not, and
should not, render it unprotectable.”) (quotation omitted); Union Nat’l, 909 F.2d
at 848 n.22 (“The need to use a term because it is generic or highly descriptive
should be distinguished from the desire to use it because it is attractive.”)
(emphasis in original). Finally, words such as “extend” and “beauty” may be
common in advertisements and trademarks. However, the ubiquity of
constituent terms does not relegate a compound mark to the realm of the
descriptive. “Just,” “do,” and “it” are very common, but Nike can still trademark
“Just Do It.” In sum, the evidence does not compel the conclusion that EXTEND
YOUR BEAUTY is descriptive and unprotectable. We reverse the district court’s
cancellation of the mark, and now consider likelihood of confusion with
XTENDED BEAUTY.
3
Because the evidence does not compel the conclusion that Xtreme’s mark is
descriptive, we need not consider whether the district court erred in sua sponte conducting an
Internet search for third-party use of the mark.
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2. Likelihood of Confusion
Applying the eight digits of confusion, see Smack Apparel, 550 F.3d at 478,
we conclude that there is an issue of fact of likelihood of confusion between
EXTEND YOUR BEAUTY and EXTENDED BEAUTY.
Type of trademark. As discussed above, EXTEND YOUR BEAUTY is
arguably suggestive. The mark hints at the genus to which the product belongs
(cosmetics), but does not indicate its species (eyelash extensions). Xtended
presented evidence that the phrase appears with some frequency in marketing
or text in conjunction with beauty products. Whether it is so common that
consumers will not associate it with a particular company is for a jury to decide.
For summary judgment purposes, this factor favors Xtreme.
Mark similarity. The marks EXTEND YOUR BEAUTY and XTENDED
BEAUTY have several common elements. Both contain the term beauty as well
as some form of the word extend—albeit Xtreme spells extend correctly, while
Xtended uses the past tense, a prominent misspelling and a large letter X. The
marks sound similar when spoken aloud. In meaning, the marks are also
similar. Xtreme’s mark is phrased as a suggestion or imperative, while Xtended’s
mark presents a fait accompli. Nevertheless, both marks evoke cosmetic
enhancement and some form of extension. Overall, the sight, sound, and
meaning of the marks are not identical, but taking inferences in favor of Xtreme,
we find them similar enough that this factor weighs towards confusion.
Product similarity; outlet and purchaser identity; advertising media
identity. As noted above, the products sold by Xtreme and Xtended are nearly
identical, and come in similar kits with silver carrying cases. The companies sell
to the same class of professional beauticians and their clients, and advertise
through similar media channels. These factors favor Xtreme.
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No. 08-20578
Defendant’s intent. As with the mark XTREME LASHES, there is no
record evidence that Xtended intended to capitalize on the success of EXTEND
YOUR BEAUTY. This factor is neutral.
Actual confusion. As discussed above, there is competent evidence that
consumers have mistaken Xtended’s products for Xtreme’s. It is unclear whether
this confusion occurred as a result of consumers mixing up the marks EXTEND
YOUR BEAUTY and XTENDED BEAUTY. The confusion in the record appears
to have resulted chiefly from confusion of the marks XTREME LASHES and
XTENDED BEAUTY, especially due to the two marks’ use of a large X. However,
EXTEND YOUR BEAUTY appears in conjunction with XTREME LASHES and
never alone. Therefore, one can reasonably infer that the consumer confusion
stems, at least in part, from the similarity of EXTEND YOUR BEAUTY and
XTENDED BEAUTY. This factor weighs in Xtreme’s favor.
Care exercised by potential purchasers. As discussed above, even licensed
cosmetologists have made mistakes and purchased the wrong kit. This factor
weighs in favor of Xtreme for summary judgment purposes.
Conclusion. As with XTREME LASHES, most factors weigh in Xtreme’s
favor on the likelihood of confusion between EXTEND YOUR BEAUTY and
XTENDED BEAUTY. The marks in this case are similar in sight, sound and
meaning, although evidence of confusion is more attenuated. On the whole, we
believe that the evidence on record creates a genuine issue of fact and the case
should be tried to a jury. We therefore reverse the district court’s grant of
summary judgment on likelihood of confusion.
III.
We hold that there is a genuine issue of fact whether: (1) there is a
likelihood of confusion between Xtreme’s mark XTREME LASHES and
Xtended’s mark XTENDED BEAUTY; (2) Xtreme’s mark EXTEND YOUR
BEAUTY is suggestive and protectable as a federal trademark; and (3) there is
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No. 08-20578
a likelihood of confusion between EXTEND YOUR BEAUTY and XTENDED
BEAUTY. We therefore reverse the district court’s grant of summary judgment
in favor of Xtended and remand for further proceedings.
REVERSED and REMANDED.
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