By Beverly A. Marsh, Partner, Standley Law Group LLP

The Sixth Circuit recently presided over a dispute between Artistry, Ltd. (“Artistry”), a jewelry wholesaler, and Sterling Jewelers (“Sterling”), the largest specialty jewelry retailer in the country, over the use of “Artistry.” See Sterling Jewelers, Inc. v. Artistry Ltd., Appeal No. 17-4132 (Decided July 24, 2018). Sterling owns roughly 1,300 jewelry stores, including Kay Jewelers and Jared. Artistry accused Sterling of trademark infringement when Kay Jewelers began marketing a line of jewelry under the name “Artistry Diamond Collection.” Artistry never registered a trademark for its name, whereas Sterling registered several of its “Artistry Diamond Collection” marks with the United States Patent and Trademark Office, including ARTISTRY DIAMONDS, ARTISTRY BLUE DIAMONDS, and ARTISTRY BLACK DIAMONDS. Artistry asked Sterling to stop using “Artistry” in Sterling’s marks and filed a petition to cancel Sterling’s trademark registrations.

Sterling responded by filing a suit in Federal district court seeking declaratory judgment of non-infringement. Artistry counterclaimed that Sterling infringed its trademark rights under the Lanham Act, 15 U.S.C. § 1051 et seq. The central question before the district court was whether consumers would be confused about the source of Sterling’s “Artistry Diamond Collection” marks, since Artistry was a wholesaler and Sterling was a retailer. The district court found no likelihood of confusion and Artistry appealed.

Whether a likelihood of confusion exists in the Sixth Circuit is analyzed under the “Frisch’s Factors”, which originated in the case Frisch’s Rests., Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642. These factors, which are deemed to be non-exclusive, require that a court consider:

  1. The strength of the mark;
  2. The relatedness of the good and services;
  3. The similarity of the marks;
  4. Any evidence of actual confusion;
  5. The marketing channels of each product;
  6. The likely degree of purchaser care;
  7. The alleged infringer’s intent; and
  8. The likelihood of expansion.

The factors are not meant to be weighed equally. Rather, each factor’s relevance and relative importance depends on the facts of each case. Frisch’s, 670 F.2d at 648.

In an opinion by Judge Sutton, the Sixth Circuit held that the word “artistry” was not very distinctive, and that other jewelry companies “used the word in some way, shape or form, including sixteen that use the word in their company name.” The prevalence of use of the mark in the jewelry industry diminished the likelihood that a consumer could confuse the two parties and their offerings with each other. But perhaps more importantly, the Court recognized the distinct nature of consumers targeted by each party. Unlike Sterling, Artistry did not sell to ultimate consumers. Sterling sold to retail customers and even discouraged its retail customers from marketing jewelry under its name. The ultimate consumers never knew that they were buying Artistry’s products. Also relevant to the Court’s analysis was that Artistry advertised in industry magazines and at industry trade shows. They also provided a highly personal touch to sales by assigning each customer a dedicated representative. Any potential confusion was likely to be short lived since a customer could simply ask their representative.

Evidence of actual confusion is often a strong factor in favor of a likelihood of confusion. Artistry provided evidence that existing and potential customers had asked whether Artistry and Kay were affiliated. However, the Court found that questions of this nature were not evidence of actual confusion, but rather demonstrated that the “sophisticated retailers discern a difference between the marks, or at least put themselves in a position to do so.” To the Court, questions about potential affiliation did not demonstrate confusion under the facts. Accordingly, the Court affirmed the finding of no likelihood of confusion.

The Sterling case demonstrates that application of the Frisch’s factors does truly depend on the unique circumstances of each case. Even though two companies may use the same or similar marks in the same general industry, material distinctions between consumers and marketing channels may nevertheless result in a finding of no likelihood of confusion.

If you have any questions about trademark protection and fair use, contact a trademark attorney for guidance.