Lodestar Anstalt v. Bacardi & Company Limited

31 F.4th 1228 (9th Cir. 2022)

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Nature of the Case

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Facts

In 2011, P obtained 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. Prior to the launch of the campaign, D ran a trademark clearance search in January 2013, and that search disclosed P's 'Untamed' trademarks. In July 2013, D sought an 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, P filed an opposition before the Trademark Trial and Appeal Board ('TTAB') in April 2014, and D 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. After D began an advertising campaign in November 2013 using the phrase 'Bacardi Untameable' to promote its rum products, P filed suit for trademark infringement and unfair competition. D moved for summary judgment in May 2019. It argued that P had abandoned its Untamed Word Mark by failing to make any bona fide use of it prior to D's campaign. D argued that P had not offered for sale-as opposed to advertising or offering sample bottles-any products branded with the Untamed Word Mark prior to D's campaign. D also argued that no likelihood of confusion existed as a matter of law and that P's Lanham Act claims failed. P filed a motion for partial summary judgment, arguing that the undisputed evidence established a likelihood of confusion between the parties' respective trademarks. The court concluded that the evidence presented at summary judgment was both 'sufficient to create a triable issue as to whether P intended to abandon the UNTAMED word mark' and 'insufficient to establish that P had not abandoned the UNTAMED word mark as a matter of law.' On the likelihood of confusion, the district court granted summary judgment in favor of D. It held that the relevant products included only those that existed prior to the launch of D's campaign. Because it was undisputed that Untamed Revolutionary Rum 'did not exist' before D's campaign, the district court concluded that it was not 'a fair representation of P's products and how the UNTAMED word mark was used at the time of D's alleged infringement.' 'There was no evidence in the record that a reasonably prudent consumer in the marketplace would have mistakenly affiliated The Wild Geese Soldiers & Heroes rum with D.' P appealed.