By Robert E. Freeman, of Proskauer
With Dikembe Mutombo-like force, Judge William Orrick of the United States District Court for the Northern District of California has blocked a trademark infringement claim filed against Kmart, Sears Holdings Management, and their partner brand, Risewear.
Rise Basketball Skill Development LLC (“Rise Basketball”) filed the suit last year alleging that Risewear’s logo is too similar to its own trademarked logo. The court, however, swatted away the claim by granting the defendants’ motion for summary judgment, finding that “the dissimilarity of the marks is striking.” (Rise Basketball Skill Dev., LLC v. K Mart Corp., No. 16-04895 (N.D. Cal. Oct. 27, 2017)).
Rise Basketball has offered basketball training and branded apparel since 2010. The company’s logo, which consists of a large winged basketball under the word “RISE,” was registered in 2015 (“Winged Basketball Logo”). The alleged infringer, Risewear, is a “lifestyle athleisure brand” whose apparel features a logo consisting of the word “RISE” with the letter “I” replaced by a silhouette of a dunking basketball player (“Dunking Basketball Logo”). In 2016, Kmart’s parent company, Sears Holdings, announced a partnership with Risewear that included Kmart’s sponsorship of the Rise Challenge parking lot dunk contest and began selling the brand’s footwear in stores and online. The partnership is part of Kmart’s larger initiative to target millennials.
In August 2016, Rise Basketball demanded that Risewear cease and desist the sale of Risewear shoes, alleging that Risewear’s Dunking Basketball Logo infringes Rise Basketball’s Winged Basketball Logo. When Risewear refused, Rise Basketball filed suit, bringing trademark infringement and related claims. In response, Risewear filed its own counterclaims including that Rise Basketball created new logos to market its apparel on its website to mimic Risewear’s Dunking Basketball Logo. In this latest round, Risewear moved for summary judgment, arguing that Rise Basketball failed to raise a material question of fact over consumer confusion from Risewear’s use of the Dunking Basketball logo on its apparel.
Generally speaking, to prevail on a trademark infringement claim, a party must show that it has a protectable interest in the mark and that the defendant’s use of the mark is likely to cause consumer confusion, with each circuit using a multifactor test (e.g., the Ninth Circuit’s Sleekcraft test) to measure consumer confusion in a particular dispute. After the opening tip, Risewear had the ball and never relinquished possession. The court granted summary judgment in its favor, ruling no reasonable jury could find consumer confusion in this case. Risewear established a big lead early, as the court stated that the similarity factor weighed “heavily in Risewear’s favor,” considering “the marks are decidedly distinct in terms of appearance” and “each mark uses substantially different typefaces with starkly different surrounding designs.” Later in the opinion when analyzing how potential buyers would approach the brands when purchasing apparel, the court noted that “a consumer using any degree of care would be able to differentiate the brands.”
Moreover, on the issue of convergent marketing channels, the court found the companies do not sell their products in the same outlets (i.e., Rise Basketball sells its goods on its website and training programs, while Risewear’s products are exclusively at Kmart and Sears), and thus such different marketing channels decreases the likelihood of confusion. Risewear maintained its lead, as the court ruled that Rise Basketball threw up a brick when pleading instances of actual consumer confusion, since the examples proffered by Rise Basketball were from clients of Rise Basketball or from family and friends of its founder. Following its analysis, the court offered a bit of post-game commentary on why Rise Basketball failed to make an adequate showing of consumer confusion: “An overall evaluation of the Sleekcraft factors demonstrates that a fact finder could not find a likelihood of confusion. The dissimilarity of the marks is striking. Rise Basketball’s mark is conceptually and commercially weak. The companies use different marketing channels and there is scant, at best, evidence of confusion.” Despite the clear rout under the Sleekcraft analysis, the district court’s decision to grant Risewear’s motion for summary judgment was not a slam dunk. The Ninth Circuit has advised district courts to “sparingly grant summary judgement in trademark cases because they are so fact-intensive.” However, Judge Orrick determined that this trademark case was one of the few that warrants summary judgement because Rise Basketball was unable to create any material question of fact of consumer confusion under any theory.
We will have to wait to see how the decision impacts the growth of both Risewear and Rise Basketball. In the meantime, it seems safe to say that the two brands will not be teaming up to create a basketball holiday jingle any time soon.
Freeman is the editor of Three Point Shot, the firm’s sports law newsletter.