Wreal, LLC v. Amazon.com, Inc. ( 2022 )

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[PUBLISH]
In the
United States Court of Appeals
For the Eleventh Circuit
____________________
No. 19-13285
____________________
WREAL, LLC,
a Florida limited liability company,
Plaintiff-Appellant,
versus
AMAZON.COM, INC.,
a Delaware corporation,
Defendant-Appellee.
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2 Opinion of the Court 19-13285
____________________
Appeal from the United States District Court
for the Southern District of Florida
D.C. Docket No. 1:14-cv-21385-JAL
____________________
Before WILSON, LAGOA, and BRASHER, Circuit Judges.
LAGOA, Circuit Judge:
This appeal asks us to address the doctrine of reverse-confu-
sion trademark infringement. Reverse confusion is not a
standalone claim in trademark law; rather, it is a theory of how
trademark infringement can occur. In reverse-confusion cases, the
plaintiff is usually a commercially smaller, but more senior, user of
the mark at issue. The defendant tends to be a commercially larger,
but more junior, user of the mark. The plaintiff thus does not ar-
gue that the defendant is using the mark to profit off plaintiff’s
goodwill; instead, the plaintiff brings suit because of the fear that
consumers are associating the plaintiff’s mark with the defendant’s
corporate identity. It is this false association and loss of product
control that constitutes the harm in reverse-confusion cases.
In this case, the plaintiff is Wreal, LLC, a Miami-based por-
nography company, which has been using the mark “FyreTV” in
commerce since 2008. The defendant is Amazon.com, Inc., the
largest online purveyor of goods and services in the United States,
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which has been using the mark “Fire TV” (or “fireTV”) in com-
merce since 2012. Wreal does not claim that Amazon, by using the
“Fire TV” mark, is attempting to profit off Wreal’s good name, as
would be typical in a forward-confusion case. Instead, Wreal con-
tends that Amazon’s allegedly similar mark is causing consumers
to associate its mark—“FyreTV”—with Amazon.
The resolution of this appeal turns on the likelihood of con-
fusing Amazon’s “Fire TV” with Wreal’s “FyreTV.” In forward-
confusion cases, we determine likelihood of confusion by applying
a well-established seven-factor test. See Welding Servs, Inc. v. For-
man, 509 F.3d 1351, 1360 (11th Cir. 2007). Applying those seven
factors, the district court found that consumers were unlikely to
confuse “Fire TV” with “FyreTV” and granted summary judgment
to Amazon on Wreal’s trademark infringement claims.
We have not had the opportunity to delineate how this
seven-factor test applies in reverse-confusion cases. As discussed
below, there are several important differences in how the seven
likelihood-of-confusion factors apply in reverse-confusion cases
versus forward-confusion cases. When applied specifically to the
issues presented here, we conclude that the district court erred in
granting summary judgment and should have allowed the case to
proceed to trial. We therefore reverse the district court’s order.
I. FACTUAL AND PROCEDURAL BACKGROUND
A. Wreal, LLC, and FyreTV
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Wreal is a “Miami-based technology company that was
formed in 2006 with the goal of developing a platform for stream-
ing [pornographic] video content over the internet.” Wreal, LLC,
v. Amazon.com, Inc. (Wreal I), 840 F.3d 1244, 1246 (11th Cir. 2016).
In 2007, Wreal launched “FyreTV,” an online streaming service
that Wreal markets as the “Netflix of Porn,” “The Ultimate Adult
Video On Demand Experience,” and a “porn pay per view service.”
That same year, Wreal began using in commerce the marks
“FyreTV” and “FyreTV.com” 1—the latter of which represents the
website where users can access the FyreTV service. See id. In or-
der to access the FyreTV service, potential consumers must first go
to FyreTV.com to sign up for an account. Once on the website,
potential consumers must first verify they are at least eighteen
years old and interested in viewing adult content before accessing
the homepage, which displays several rows of pornographic im-
ages.
In order to make accessing its FyreTV service easier, Wreal
also sells a set-top box, 2 called the FyreBoXXX, which allows con-
sumers to access FyreTV on their television sets. To purchase a
1 On October 14, 2008, Wreal registered both of its marks—“FyreTV” and
“FyreTV.com”—with the U.S. Patent and Trademark Office. Wreal I, 840
F.3d at 1246.
2 A “set-top box” is “a device that is connected to a television so that the tele-
vision can receive digital signals.” Set-top Box, Merriam-Webster Online Dic-
tionary, https://www.merriam-webster.com/dictionary/set-top%20box (last
visited June 19, 2022).
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FyreBoXXX, a potential consumer must first travel to the
FyreTV.com site and set up an account. In fact, the FyreBoXXX
has never been sold in any store or website save for the online store
at FyreTV.com. Between October 2012 and April 2014, Wreal sus-
pended sales of the FyreBoXXX on its website. Indeed, by the end
of 2012, Wreal had suspended all forms of print, radio, trade show,
and television advertising for either the FyreBoXXX or FyreTV—
Wreal’s only two products. As of today, Wreal advertises its prod-
ucts only on other adult websites.
Apart from the FyreBoXXX and FyreTV.com, Wreal’s cus-
tomers also have other methods available to access the FyreTV ser-
vice. For example, both Apple TV and Roku—two commercial set-
top boxes that offer a host of general interest channels and media—
support FyreTV. Thus, after signing up for an account at
FyreTV.com, Wreal’s customers can watch its content from their
television set through a computer, a smartphone, a FyreBoXXX, an
Apple TV, or a Roku.
B. Amazon and “fireTV”
Amazon is the largest online purveyor of goods in the
United States. In 2011, Amazon “started using the mark ‘Fire’ in
connection with its Kindle tablets . . . to highlight the new model’s
ability to stream video over the internet.” Id. at 1247. In late 2012
and early 2013, Amazon was gearing up to launch several new
products, including a phone, a new tablet, and a set-top box. Id. It
decided to use the “Fire” brand, as well as its housemark, “ama-
zon,” on these products, with the set-top box being called
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“fireTV.” 3 Id. During its branding discussions for the set-top box,
Amazon learned about Wreal and its FyreTV products, but it never
contacted Wreal about the set-top box’s name and decided to use
the “Fire” mark without Wreal’s knowledge. Id.
Amazon launched fireTV in April 2014 with a nationwide
advertising campaign covered by major magazines and television
networks. The fireTV is a streaming-only set-top box; it does not
contain a DVD tray and cannot play DVDs. Amazon markets the
product as a set-top box for general interest content, including “in-
stant access to Netflix, Prime Instant Video, WatchESPN,” and
more. It is not marketed as a device for streaming pornography.
Amazon advertises the device on amazon.com, as well as on tele-
vision, in print media, and using in-store displays at retailers like
Best Buy and Staples. When Amazon began its search-engine-op-
timization efforts (to help fireTV appear on the internet), it bought
ads for keywords related to fireTV, but not for FyreTV or anything
related to pornography. Often—but not always—Amazon will
market its “Fire” products with its housemark, “amazon.” In the
graphics and advertisements for the device, the device is
3 The record shows that Amazon has alternatively used “Fire TV” or “fireTV”
in its graphics and advertisements for its set-top box. For purposes of this
opinion, we use the stylization of “fireTV,” because Wreal highlighted the in-
consistency in its response disputing Amazon’s statement of undisputed facts.
However, we emphasize that we make no ultimate conclusion on whether
Amazon’s mark is stylized as “Amazon Fire TV” or “fireTV.”
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sometimes referred to as one word, i.e., “fireTV,” and sometimes
it appears as two words, i.e., “Fire TV.”
Amazon’s fireTV does not broadcast any hardcore porno-
graphic material. 4 But the fireTV does have apps for Showtime and
HBO GO, and both of those content providers broadcast softcore
pornography as part of their after-hours programming. It is un-
clear, however, whether those providers had any such material on
their apps that link to fireTV at the time of the lawsuit.
It is undisputed that Amazon’s policies for Amazon Prime
Instant Video, which is Amazon’s own streaming service and
streams on the fireTV, prohibit the sale and consumption of hard-
core pornography on the set-top box. However, the record evi-
dence suggests that hardcore pornographic DVDs are available for
purchase on amazon.com. The record evidence also suggests that
two films with highly suggestive names were available for stream-
ing on the fireTV through Amazon Prime Instant Video, though
the record does not establish whether those films would be catego-
rized as hardcore or softcore pornography.
4 Generally, hardcore pornography refers to “scenes of actual sex acts.” Hard-
core, Merriam-Webster Online Dictionary, https://www.merriam-web-
ster.com/dictionary/hard-core (last visited June 19, 2022). Softcore pornog-
raphy refers to “scenes of sex acts that are less explicit than hard-core mate-
rial.” Soft-core, Merriam-Webster Online Dictionary, https://www.mer-
riam-webster.com/dictionary/soft-core (last visited June 19, 2022).
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Moreover, Amazon does not advertise the fireTV on any
pornographic websites and, as such, there is no overlap between
the marketing schemes for FyreTV and fireTV. Nor does Amazon
sell the fireTV on any pornographic websites. Thus, there is no
overlap of the sales outlets utilized by Amazon and Wreal.
C. Evidence of Confusion
In order to prevail on its trademark claims, Wreal must
show a “likelihood of confusion.” Forman, 509 F.3d at 1360. We
therefore summarize the record evidence relevant to this issue, as
presented by Wreal at the preliminary injunction hearing5 and by
both parties as part of their summary judgment briefing. Below
are screenshots of the marks at issue as they appear in internet ad-
vertising for the set-top boxes:
5 Wreal argues that the magistrate judge (and, by its adoption of the report
and recommendation, the district court) erred when it considered, for pur-
poses of summary judgment, evidence that was introduced by Wreal during
the preliminary injunction hearing but that was not produced during subse-
quent discovery. This includes a consumer survey conducted by Wreal’s ex-
pert, Dr. Thomas Maronick. Wreal is incorrect in this assertion. Evidence
introduced at a preliminary injunction hearing becomes part of the record, and
it is properly before the district court and may be considered when ruling on
motions for summary judgment. See Clinkscales v. Chevron U.S.A., Inc., 831
F.2d 1565, 1570 (11th Cir. 1987) (“The affidavits appended to appellant’s mo-
tion for a preliminary injunction were, however, part of the written record
before the district judge at the time he ruled on the summary judgment mo-
tions. These affidavits were therefore properly before the district court.”).
And Federal Rule of Civil Procedure 56(c)(3) allows a district court to consider
any record evidence when ruling on summary judgment motions.
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As noted above, the two products are neither advertised nor
sold in the same outlets. A consumer cannot buy a fireTV at the
same place where he could buy a FyreTV, and vice versa. Thus,
no consumer will come across the products or marks in the same
location—whether over the internet or in person at a brick-and-
mortar location—save for an internet search engine like
google.com. Additionally, Wreal’s own evidence supports the
proposition that mine-run internet consumers would not confuse
Amazon’s amazon.com website with Wreal’s FyreTV.com web-
site.
Over the course of the litigation, both Wreal and Amazon
sought to present evidence relevant to the issue of actual consumer
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confusion. Amazon, for its part, produced in discovery “tens of
thousands” of customer service inquiries related to the fireTV. In
one of those inquiries, an Amazon customer asked whether he
could access adult content on the Amazon “fyreTV.” 6 Wreal
points to record evidence showing a number of customer service
inquiries it received in which customers asked Wreal if the FyreTV
streaming service would be available on Amazon’s fireTV set-top
box. Significantly, Wreal also produced in discovery a tweet di-
rected to Wreal’s Twitter account in which the sender asked, “Did
you guys just merge with Amazon?”
Both parties also presented expert testimony regarding the
level of confusion between the marks—Wreal at the preliminary
injunction hearing and Amazon at the summary judgment stage.
Amazon’s expert, Dr. Dan Sarel, conducted a consumer survey that
6 The district court adopted the magistrate judge’s determination that, while
this inquiry appears to show confusion, the sender was not confused. The
magistrate judge based its conclusion solely on the text of the inquiry itself,
and not on any other record evidence. In other words, the magistrate judge
(and, by adoption, the district court) did not believe that the sender was con-
fused. Credibility determinations like this, however, are inappropriate at the
summary judgment stage. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
255 (1986) (“Credibility determinations, the weighing of the evidence, and the
drawing of legitimate inferences from the facts are jury functions, not those of
a judge, whether he is ruling on a motion for summary judgment or for a di-
rected verdict.”). Here, for example, a reasonable juror could view the same
evidence and come to the opposite conclusion reached by the magistrate judge
and the district court. Because this credibility determination improperly in-
vaded the province of the jury, it must be disregarded.
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showed a “confusion rate of one percent,” which he described as
“statistically insignificant” and “nonexistent.” That conclusion was
bolstered by Wreal’s own expert—Dr. Thomas Maronick—who
conducted his own consumer surveys in April 2014 and testified at
the preliminary injunction hearing that he found “very low” levels
of consumer confusion. 7
D. Procedural History
Wreal filed this lawsuit against Amazon about two weeks
after the fireTV’s product launch. In its complaint, Wreal sought
treble damages and injunctive relief for reverse-confusion trade-
mark infringement under the Lanham Act, the Florida Deceptive
and Unfair Trade Practices Act, and Florida common law.8 Five
7 Wreal complains about both studies, arguing that the Amazon study was
conducted too early to be relevant to the issue of consumer confusion and that
its own study was conducted for a separate purpose altogether. Absence of
evidence for a proposition, however, is not affirmative evidence to the con-
trary. And the only survey evidence available to us is not in dispute—both
surveys show that there was no consumer confusion. Nevertheless, we accord
this evidence relatively little weight, as “[t]his Circuit . . . has moved away
from relying on survey evidence” in trademark cases. Frehling Enters., Inc. v.
Int’l Select Grp., Inc., 192 F.3d 1330, 1341 n.5 (11th Cir. 1999).
8As noted by the district court, the protection that these three bodies of law
provide is coextensive. See Gift of Learning Found., Inc. v. TGC, Inc., 329
F.3d 792, 802 (11th Cir. 2003) (“[T]he analysis of the Florida statutory and com-
mon law claims of trademark infringement and unfair competition is the same
as under the federal trademark infringement claim.”). Because reaching that
conclusion “is a question of state law that the parties do not challenge on ap-
peal, we treat the district court’s holding as correct and merely determine
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months after filing suit, Wreal moved for a preliminary injunction,
which the district court referred to the magistrate judge and ulti-
mately denied. We affirmed that denial. See Wreal I, 840 F.3d at
1246.
After the close of discovery, Amazon moved for summary
judgment. The district court again referred the motion to the mag-
istrate judge for a report and recommendation, and the magistrate
judge recommended granting the motion. Over Wreal’s objec-
tions, the district court adopted the report and recommendation
and granted summary judgment to Amazon. Wreal then timely
appealed.
II. STANDARDS OF REVIEW
“We review a district court’s grant of summary judgment de
novo and apply the same legal standards as the district court.” Cus-
tom Mfg. & Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 646
(11th Cir. 2007). Summary judgment is appropriate only when the
record shows that there is no genuine issue of material fact such
that the movant is entitled to judgment as a matter of law. Fed. R.
Civ. P. 56(a). In conducting this inquiry, we view the evidence and
reasonable inferences drawn therefrom in the light most favorable
whether the district court properly decided the Lanham Act count[s].” Tana
v. Dantanna’s, 611 F.3d 767, 772 (11th Cir. 2010); see also Jellibeans, Inc. v.
Skating Clubs of Ga., Inc., 716 F.2d 833, 839 (11th Cir. 1983) (“If we determine
that the district court decided the Lanham Act count[s] properly, we will also
affirm its decision on the [state] deceptive trade practices and [fraud] counts.”).
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to the nonmovant. Forman, 509 F.3d at 1356. After discovery,
summary judgment is appropriately entered “against a party who
fails to make a showing sufficient to establish the existence of an
element essential to that party’s case, and on which that party will
bear the burden of proof at trial.” Celotex Corp. v. Catrett, 477
U.S. 317, 322 (1986). 9
III. ANALYSIS
Wreal argues that Amazon’s use of the mark fireTV in-
fringed its trademark FyreTV under a reverse-confusion theory—
9 Amazon argues that Wreal has waived any challenge to the factual conclu-
sions reached by the magistrate judge and adopted, without review, by the
district court. In support, Amazon first directs our attention to Wreal’s state-
ment of facts submitted in opposition to Amazon’s motion for summary judg-
ment and the magistrate judge’s conclusion that Wreal did not present suffi-
cient evidence of a genuine dispute for many of the facts at issue. Second,
Amazon argues that Wreal failed to object to the magistrate judge’s recitation
of facts in the objections Wreal filed with the district court. Our review of the
record establishes that Wreal did, in fact, object to many of the conclusions
the magistrate judge reached regarding the parties’ competing statements of
facts. And, as a matter of law, we are obligated to review the district court’s
grant of summary judgment de novo, applying the same legal standards as the
district court. Custom Mfg. & Eng’g, 508 F.3d at 646. This means we place
ourselves in the shoes of the district court and apply whatever legal standard
governed the district court in resolving the summary judgment motion. Be-
cause Wreal did object to the many of the magistrate judge’s factual conclu-
sions and resolution of certain factual disputes, we review those portions of
the report and recommendation de novo. For factual conclusions in the report
that were not objected to, we review for plain error. See Todd v. Fayette
Cnty. Sch. Dist., 998 F.3d 1203, 1214 n.6 (11th Cir. 2021); 11th Cir. R. 3-1.
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the resolution of which boils down to the likelihood of confusion
between the two marks. To prevail on a claim of trademark in-
fringement, a plaintiff must show: (1) that its marks were entitled
to protection, and (2) that the defendant used marks that were ei-
ther identical with the plaintiff’s marks, or so similar that they were
likely to confuse consumers. See 15 U.S.C. § 1125(a); Forman, 509
F.3d at 1356. The first element—whether Wreal’s mark is entitled
to protection—is not in dispute; the district court did not rule on
that ground and the parties do not raise it in this appeal. Instead,
this case turns on the second element—likelihood of confusion.
“[L]ikelihood of confusion occurs when a later user uses a trade-
name in a manner which is likely to cause confusion among ordi-
narily prudent purchasers or prospective purchasers as to the
source of the product.” Cap. Films Corp. v. Charles Fries Prods.,
Inc., 628 F.2d 387, 393 (5th Cir. 1980). 10
In determining the likelihood of confusion, we consider the
following seven factors:
(1) distinctiveness of the mark alleged to have been
infringed;
(2) similarity of the infringed and infringing marks;
(3) similarity between the goods or services offered
under the two marks;
10 In Bonner v. City
of Prichard, 661 F.2d 1206, 1209 (11th Cir. 1981) (en banc),
we adopted as binding precedent all of the decisions of the former Fifth Circuit
handed down prior to October 1, 1981.
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(4) similarity of the actual sales methods used by the
two parties, such as their sales outlets and customer
base;
(5) similarity of advertising methods;
(6) intent of the alleged infringer to misappropriate
the proprietor’s good will; and
(7) existence and extent of actual confusion in the con-
suming public.
Forman, 509 F.3d at 1360. These factors should not be applied me-
chanically. “The issue of likelihood of confusion is not determined
by merely analyzing whether a majority of the subsidiary factors
indicates that such a likelihood exists. Rather, a court must evalu-
ate the weight to be accorded the individual factors and then make
its ultimate decision.” AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531,
1538 (11th Cir. 1986). “The appropriate weight to be given to each
of these factors varies with the circumstances of the case.” Id. A
court, however, is “required to consider each of the seven factors.”
Forman, 509 F.3d at 1361.
Although likelihood of confusion generally is a question of
fact, see Jellibeans, Inc. v. Skating Clubs of Ga., Inc., 716 F.2d 833,
840 n.16 (11th Cir. 1983), in limited circumstances it may be de-
cided as a matter of law via summary judgment, see Tana v. Dan-
tanna’s, 611 F.3d 767, 775 n.7. (11th Cir. 2010). In deciding whether
to grant summary judgment, each of the seven factors must be con-
sidered. But because the weight to be given to each factor will vary
depending on the circumstances of the case, summary judgment
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may still be appropriate even if some of the factors do not support
the movant. See id. at 782 (affirming summary judgment where
two factors supported nonmovant); Forman, 509 F.3d at 1361 (af-
firming summary judgment where three factors supported non-
movant).
In order to resolve this appeal, we must determine how
these seven likelihood-of-confusion factors apply in the context of
reverse-confusion trademark infringement. The “paradigm case
[of reverse confusion] is that of a knowing junior user with much
greater economic power who saturates the market with advertis-
ing of a confusingly similar mark, overwhelming the marketplace
power and value of the senior user’s mark.” 4 J. Thomas McCar-
thy, McCarthy on Trademarks and Unfair Competition § 23:10 (5th
ed.); see also Sands, Taylor & Wood Co. v. Quaker Oats Co., 978
F.2d 947, 957 (7th Cir. 1992) (“Reverse confusion occurs when a
large junior user saturates the market with a trademark similar or
identical to that of a smaller, senior user. In such a case, the junior
user does not seek to profit from the good will associated with the
senior user’s mark.”) Because both the harm and the theory of in-
fringement in a reverse-confusion case differ from what is claimed
in a forward-confusion case, the analysis and application of the
seven likelihood-of-confusion factors differ as well.
In a reverse-confusion case, the harms that can occur are var-
ied. For example, consumers may come to believe the smaller, sen-
ior user of the mark is itself a trademark infringer, see Banff, Ltd. v.
Federated Dep’t Stores, Inc., 841 F.2d 486, 490 (2d Cir. 1988), or
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that the defendant’s use of the mark diminishes the value of the
plaintiff’s mark as a source indicator, see Checkpoint Sys., Inc. v.
Check Point Software Techs., Inc., 269 F.3d 270, 301–02 (3d Cir.
2001). As our sister court, the Sixth Circuit has stated in a reverse
confusion case:
[t]he public comes to assume the senior user’s prod-
ucts are really the junior user’s or that the former has
become somehow connected to the latter. The result
is that the senior user loses the value of the trade-
mark—its product identity, corporate identity, con-
trol over its goodwill and reputation, and ability to
move into new markets.
Ameritech, Inc. v. Am. Info. Techs. Corp., 811 F.2d 960, 964 (6th
Cir. 1987). In this case, Wreal contends that “Amazon’s use of
Wreal’s mark creates a likelihood that consumers will believe that
Amazon is the source of Wreal’s FyreTV service.”
With these principles in mind, we turn to the seven-factor
test for likelihood of confusion and analyze each of the factors and
their application in a reverse-confusion case. As with all species of
trademark infringement, however, the “rule of reverse confusion
is highly fact-specific and depends for its application on the pres-
ence of a critical mass of key facts.” 4 McCarthy, supra, § 23:10.
The seven factors used to assess likelihood of confusion—regard-
less of what theory of infringement is implicated—should never be
applied mechanically.
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A. Distinctiveness of the Mark
In the typical forward-confusion case, this factor focuses
only on the conceptual strength of the plaintiff’s mark.11 See
Frehling Enters., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330, 1335
(11th Cir. 1999) (“Classifying the type of mark Plaintiff has deter-
mines whether it is strong or weak.”). This is because in a forward-
confusion case, the plaintiff’s theory is that the defendant—a newer
user of the mark at issue—is attempting to profit off the plaintiff’s
goodwill and reputation. And here, the district court did assess the
11 We have summarized the inquiry into the strength of the mark as follows:
There are four categories of marks: (1) generic, (2) descriptive,
(3) suggestive, and (4) arbitrary. The categories are based on
the relationship between the name and the service or good it
describes. Generic marks are the weakest and not entitled to
protection—they refer to a class of which an individual service
is a member (e.g., “liquor store” used in connection with the
sale of liquor). Descriptive marks describe a characteristic or
quality of an article or service (e.g., “vision center” denoting a
place where glasses are sold). “Suggestive terms suggest char-
acteristics of the goods and services and require an effort of the
imagination by the consumer in order to be understood as de-
scriptive.” For instance, “penguin” would be suggestive of re-
frigerators. An arbitrary mark is a word or phrase that bears
no relationship to the product (e.g., “Sun Bank” is arbitrary
when applied to banking services). Arbitrary marks are the
strongest of the four categories.
Frehling, 192 F.3d at 1335–36 (citations omitted).
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conceptual strength of Wreal’s “FyreTV” mark and found it dis-
tinctive and strong.
But in a reverse-confusion case, the plaintiff is not arguing
that the defendant is attempting to profit off the plaintiff’s good-
will. Rather, the plaintiff asserts that the defendant—the junior but
more powerful mark user—has been able to commercially over-
whelm the market and saturate the public conscience with its own
use of the mark, thereby weakening and diminishing the value of
the senior user’s mark. See, e.g., Checkpoint Sys., 269 F.3d at 302–
03. Thus, in this situation, the conceptual strength of the plaintiff’s
mark is necessarily less important to the analysis. See Com. Nat’l
Ins. Servs., Inc. v. Com. Ins. Agency, Inc., 214 F.3d 432, 444 (3d Cir.
2000) (noting that “it is the strength of the larger, junior user’s mark
which results in reverse confusion”). Accordingly, when assessing
the distinctiveness of the mark in a reverse-confusion case, the dis-
trict court should consider both the conceptual strength of the
plaintiff’s mark and the relative commercial strength of the defend-
ant’s mark. See Visible Sys. Corp. v. Unisys Corp., 551 F.3d 65, 74
(1st Cir. 2008) (“In a reverse confusion case, the focus is on the rel-
ative strengths of the marks so as to gauge the ability of the junior
user’s mark to overcome the senior user’s mark.”); Cohn v.
Petsmart, Inc., 281 F.3d 837, 841 (2d Cir. 2002) (noting that the de-
fendant’s “extensive advertising gives it the ability to overwhelm
any public recognition and goodwill that [the plaintiff] has devel-
oped in the mark”); Walter v. Mattel, Inc., 210 F.3d 1108, 1111 n.2
(9th Cir. 2000) (“In a reverse confusion cases . . . the inquiry focuses
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20 Opinion of the Court 19-13285
on the strength of the junior mark because the issue is whether the
junior mark is so strong as to overtake the senior mark.”); A & H
Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198, 231
(3d Cir. 2000) (noting that a plaintiff is more likely to succeed when
“pitted against a defendant with a far stronger mark” in reverse
confusion cases); Checkpoint Sys., 269 F.3d at 303 (“But in a reverse
confusion situation, the senior user’s claim may be strengthened by
a showing that the junior user’s mark is commercially relatively
strong. The greater relative strength of the junior mark allows the
junior user to ‘overwhelm’ the marketplace, diminishing the value
of the senior user’s mark.”); see also 4 McCarthy, supra, § 23:10 (“A
reverse confusion case is proven only if the evidence shows that
the junior user was able to swamp the reputation of the senior user
with a relatively much larger advertising campaign.”).
Here, the district court did not consider the commercial
strength of Amazon’s mark because it found that Wreal waived the
argument by failing to raise it in its response to Amazon’s motion
for summary judgment and instead raised it for the first time in its
objections to the magistrate judge’s report and recommendation.12
The district court erred in that finding. At the summary judgement
12 The district court also noted that the presence of Amazon’s “amazon”
housemark alongside “fireTV” in advertisements pushed the distinctiveness-
of-the-mark factor further in Amazon’s favor. As we discuss below, however,
the presence of a housemark should be assessed in reference to the second
factor in the analysis—the similarity of the marks. See A & H Sportswear, 237
F.3d at 229–30.
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19-13285 Opinion of the Court 21
stage, it was Amazon’s burden, as the movant, to show that it was
entitled to judgment as a matter of law, and the parties cannot
“waive the application of the correct law or stipulate to an incorrect
legal test.” Jefferson v. Sewon Am., Inc., 891 F.3d 911, 923 (11th
Cir. 2018).
The commercial strength of Amazon’s mark is manifest and
appears in the record. Amazon admitted in its answer that the
fireTV was launched with a major advertising campaign, was cov-
ered by major magazines and television networks, and that it was
a bestseller. Amazon also admits that it advertises the fireTV in
multiple brick-and-mortar locations, as well as on amazon.com,
one of the most visited online shopping sites in the United States.
In short, Amazon’s overwhelming commercial success with the
fireTV mark, coupled with the conceptual strength of Wreal’s
mark, pushes this factor firmly in Wreal’s favor.
B. Similarity of the Marks
The similarity-of-the-marks analysis is, with one exception
related to housemarks noted below, the same in both forward-con-
fusion and reverse-confusion cases. We compare “the marks and
consider[] the overall impressions that the marks create, including
the sound, appearance, and manner in which they are used.”
Frehling, 192 F.3d at 1337. In doing so, we determine similarity
based on “the total effect of the designation, rather than on a com-
parison of individual features.” Amstar Corp. v. Domino’s Pizza,
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22 Opinion of the Court 19-13285
Inc., 615 F.2d 252, 260–61 (5th Cir. 1980). 13 “In evaluating the sim-
ilarity of marks, we must consider the overall impression created
by the marks, including a comparison of the appearance, sound and
meaning of the marks, as well as the manner in which they are dis-
played.” E. Remy Martin & Co., S.A. v. Shaw-Ross Int’l Imps., Inc.,
756 F.2d 1525, 1531 (11th Cir. 1985). Similarity in any of these ele-
ments—appearance, sound, connotation, and commercial impres-
sion—may be sufficient to find the marks similar. See Stone Lion
Cap. Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 1321 (Fed.
Cir. 2014).
The district court concluded that the marks at issue—fireTV
and FyreTV—were not similar. It reached this conclusion mainly
by focusing on the fact that the marks were spelled differently and
used different fonts, as well as the fact that they were used differ-
ently in commerce. The district court also noted that one of
Wreal’s experts, Dr. Linda Williams, testified that visitors to
FyreTV.com would not confuse it with amazon.com. The inquiry
under this factor, however, is the similarity of the marks, not the
similarity of the services or the similarity of the sales methods—
each of which has their own factor and should thus be considered
separately.
When the focus is on the similarity of the marks themselves,
the result is clear—FyreTV and fireTV are nearly identical. “Fire”
13 See supra note 10.
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19-13285 Opinion of the Court 23
is the first and only dominant word in both marks, and it is pre-
sented in a phonetically and connotatively identical fashion. It is
also an abstract term, and thus the only term in either mark that
gives the mark meaning. See Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1372
(Fed. Cir. 2005) (finding similarity between “VEUVE ROYALE”
and “VEUVE CLICQUOT” because “VEUVE . . . remains a ‘prom-
inent feature’ as the first word in the mark and the first word to
appear on the label”); Century 21 Real Estate Corp. v. Century Life
of Am., 970 F.2d 874, 876 (Fed Cir. 1992) (finding similarity be-
tween “CENTURY 21” and “CENTURY LIFE OF AMERICA” in
part because “consumers must first notice th[e] identical lead
word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303
(Fed. Cir. 2018) (finding “the identity of the marks’ two initial
words is particularly significant because consumers typically notice
those words first”). By contrast, the secondary word in the
marks—“TV”—is merely descriptive of or generic for the goods
and services sold—i.e., streaming services. See Frehling, 192 F.3d
at 1337 (noting that “a mark may be surrounded by additional
words of lesser importance and not have its strength diluted”).
Moreover, the marks need not be identical, as the “purpose
in considering the similarity of marks as an indicator of likelihood
of confusion is that the closer the marks are, the more likely rea-
sonable consumers will mistake the source of the product that each
mark represents.” Id. Thus, while “Fyre” and “fire” are spelled
differently, and one is capitalized, the words have the same
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24 Opinion of the Court 19-13285
connotation and pronunciation, and the differences in font, color,
and capitalization are not dispositive.
The Ninth Circuit’s decision in Dreamwerks Production
Group, Inc. v. SKG Studio, 142 F.3d 1127, 1130 (9th Cir. 1998) is
instructive on this point. In that case, the court had to assess the
similarity of the marks “Dreamwerks” and “DreamWorks,” which,
like the marks at issue here, utilized different spellings and capital-
ization. Id. The Ninth Circuit concluded that the marks were sim-
ilar, noting the obvious “perfect similarity of sound” and “similarity
of meaning” while determining that even the similarity of sight also
weighed in favor of a finding of similarity, as consumers “might
shrug off the difference [in spelling and capitalization] as an inten-
tional modification.” Id. at 1131. Our decision in Frehling is also
instructive. There, we said that the marks “BELL’ OGGETTI” and
“Tavola Collection by OGGETTI” were similar because the pres-
ence of the dominant and protected “OGGETTI” in both was likely
to be confusing. Frehling, 192 F.3d at 1337. Each of these conclu-
sions applies here.
Amazon’s pervasive use of its “amazon” housemark along-
side “fireTV” in advertisements warrants separate discussion. In
forward-confusion cases—where a commercially superior plaintiff
with a strong conceptual mark sues a defendant for attempting to
profit off its goodwill—the presence of a housemark is indeed likely
to dispel confusion in ordinarily prudent consumers. See, e.g., Cus-
tom Mfg., 508 F.3d at 652 n.10. But in reverse-confusion cases, this
presumption is reversed; because the harm is false association of
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19-13285 Opinion of the Court 25
the plaintiff’s mark with the defendant’s corporate identity, the de-
fendant’s use of a housemark alongside the mark is more likely to
cause confusion. See, e.g., A & H Sportswear, 237 F.3d at 230 (not-
ing that there is a “possibility that the [housemark] will aggravate,
rather than mitigate, reverse confusion, by reinforcing the associa-
tion of the [trademark] exclusively with [the housemark]”) (empha-
sis added); Attrezzi, LLC v. Maytag Corp., 436 F.3d 32, 39 (1st Cir.
2006) (“Yet since the alleged harm is reverse confusion, to the ex-
tent [the defendant’s housemark] is itself the more recognized label
the linkage could actually aggravate the threat to [the plaintiff].”);
Sands, 978 F.2d at 954 (“Clearly, then, the fact that the Gatorade
trademark always appears in Quaker’s ‘Thirst Aid’ advertisements
does not preclude a finding that those advertisements also use
‘Thirst Aid’ as a trademark.”); Banff, 841 F.2d at 492 (finding that
use of a housemark “may actually increase the misappropriation by
linking defendant’s name to plaintiff’s goodwill” and company);
Int’l Kennel Club of Chi., Inc. v. Mighty Star, Inc., 846 F.2d 1079,
1088 (7th Cir. 1988) (“DCN and Mighty Star further invite us to
infer that the defendants’ use of its house mark ‘24K Polar Puff’ in
conjunction with the International Kennel Club name on its adver-
tising decreases the likelihood of confusion among consumers.
This argument is a smoke screen and a poor excuse for the defend-
ants’ blatant misappropriation of the plaintiff’s name . . . .”), abro-
gation recognized on other grounds, Ill. Republican Party v. Pritz-
ker, 973 F.3d 760, 762–63 (7th Cir. 2020); Americana Trading Inc.
v. Russ Berrie & Co., 966 F.2d 1284, 1288 (9th Cir. 1992) (“Indeed,
use by Russ of its housemark along with Amtra’s trademark may
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26 Opinion of the Court 19-13285
‘be an aggravation and not a justification, for it is openly trading in
the name of another upon the reputation acquired by the device of
the true proprietor.’” (quoting Menendez v. Holt, 128 U.S. 514, 521
(1888))).
Amazon’s use of its housemark alongside advertisements for
the “fireTV” does exactly what one might expect it to do: it causes
consumers to associate Amazon with fireTV. Because this is a re-
verse-confusion case asserting that Amazon’s use of fireTV causes
consumers to associate FyreTV with Amazon instead of Wreal,
Amazon’s use of the housemark supports Wreal’s theory of recov-
ery. The district court erred in concluding otherwise.
In short, the parties’ marks are nearly identical. Both use the
same words, are pronounced the same, and have the same mean-
ing. While they are spelled slightly differently and use different
fonts, this is not enough to conclude that the marks are dissimilar.
Moreover, Amazon’s pervasive use of its housemark alongside
“fireTV” pushes this factor even further in favor of Wreal, as it is
likely to confuse consumers into believing that Amazon is the
origin of the FyreTV mark. Thus, the similarity-of-the-marks fac-
tor weighs heavily in favor of Wreal.
C. Similarity of the Products
The analysis of this factor is the same regardless of the the-
ory of confusion, and “requires a determination as to whether the
products are the kind that the public attributes to a single source,
not whether or not the purchasing public can readily distinguish
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19-13285 Opinion of the Court 27
between the products of the respective parties.” Frehling, 192 F.3d
at 1338; accord E. Remy Martin, 756 F.2d at 1530 (“The question,
however, is not whether the purchasing public can readily distin-
guish [between the products,] but whether the products are the
kind the public attributes to a single source.”). The products at is-
sue need only be “related in some manner and/or if the circum-
stances surrounding their marketing are such that they could give
rise to the mistaken belief that [the goods and/or services] emanate
from the same source.” Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 1369 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v.
Wechsler, 83 U.S.P.Q.2d 1715, 1724 (T.T.A.B. 2007)). In reverse-
confusion cases, it also is relevant to ask whether consumers might
expect the defendant to “bridge the gap” and enter the plaintiff’s
market. See Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d
466, 480 (3d Cir. 1994).
Here, many pieces of record evidence are relevant to the
question of whether the fireTV set-top box is similar to the Fyre-
BoXXX. The record evidence presented in the district court estab-
lished that consumers were already able to stream softcore pornog-
raphy on Amazon’s fireTV through content providers like HBO
GO and Showtime. The record evidence also established that Am-
azon Prime Instant Video—Amazon’s own streaming service,
which, like HBO GO and Showtime, is available on the fireTV—
offered consumers softcore pornography. And the record evidence
also established that: (1) Amazon already offered the sale of hard-
core pornographic DVDs and magazines on its related consumer
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28 Opinion of the Court 19-13285
website, amazon.com; (2) the parties’ devices are visually similar—
both are plain black set-top boxes that come with a small remote;
and (3) Amazon’s direct competitors in the mainstream set-top box
market—Roku and Apple TV—already provided access to hard-
core pornography, including FyreTV.
The question therefore is whether this record evidence
would suggest to an ordinarily prudent consumer that a do-it-all
giant like Amazon—which already sells a set-top box that streams
softcore pornography and which competes against other set-top
boxes that stream hardcore pornography—would “bridge the gap”
to hardcore pornography streaming and release a set-top box that
streams exclusively pornographic content. We answer that ques-
tion in the affirmative. Amazon is a company that already sells
hardcore pornography on its website and offers softcore pornogra-
phy on its set-top box. And it competes in a market in which its
direct competitors offer hardcore pornography streaming directly
on their set-top boxes. Given this information, a reasonable juror
could conclude that Amazon decided to “bridge the gap” and offer
a standalone set-top box dedicated to streaming hardcore pornog-
raphy. See id. The two products at issue therefore “are the kind
the public attributes to a single source.” E. Remy Martin, 756 F.2d
at 1530.
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19-13285 Opinion of the Court 29
Our caselaw provides ample support for this conclusion.14
In E. Remy Martin, a trademark dispute between a wine company
and a liquor company, this Court concluded that cognac and
brandy—the products sold by the liquor company—were distilled
from wine and that, as a result, it was “quite likely that, even as-
suming a sophisticated consumer from the drinking world, such a
consumer could easily conclude that [the liquor company] had un-
dertaken the production and sale of wine and that its name and
goodwill therefore attached to [the wine company’s] product.” 756
F.2d at 1530. Similarly, in Frehling, we concluded that the district
14 In reaching the opposite result, the district court relied on our decisions in
Tana and Ross Bicycles, Inc. v. Cycles USA, Inc., 765 F.2d 1502 (11th Cir. 1985).
But both cases are readily distinguishable. In Tana, we held that ordinary con-
sumers would not confuse an “old-world-style Italian restaurant where mus-
tached waiters dressed in tuxedos serve classic Italian dishes” with “an upscale
sports restaurant, targeting sports enthusiasts and serving contemporary
American cuisine in a modern setting decorated with flat-screen televisions.”
611 F.3d at 778. And in Ross Bicycles, we stated that two bicycle companies—
which, critically, both sold only bicycles—did not sell similar products due to
the differences in the “size of the tubing, the style of wheels, pedals, seats,
kickstands, and the difference in the frame angles.” 765 F.2d at 1507. Both
cases were forward-confusion cases in which the parties at issue competed in
only one, identical market—restaurants in Tana and bicycles in Ross Bicycles.
And because the parties competed in precisely the same market, we focused
on granular differences between the products at issue to resolve the claim.
Here, by contrast, the claim is one of reverse-confusion, and one of the parties
(Amazon) offers products and services across a host of industries and media.
The question here is thus whether a reasonable juror could conclude that Am-
azon had “bridged the gap” into hardcore pornography streaming and attrib-
ute the fireTV and the FyreBoXXX to a single source.
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30 Opinion of the Court 19-13285
court erred in focusing only on the differences between two furni-
ture makers (e.g., metal vs. wood). 192 F.3d at 1338. We also con-
cluded that “[w]hile the compositional differences matter,” the fo-
cus is “on the reasonable belief of the average consumer as to what
the likely source of the goods was.” Id. In further explanation of
what a single source means for purposes of the similarity-of-the-
products analysis, we stated:
In this case, it is not unreasonable to fathom
that the goods emanate from the same source. Both
products are furniture pieces, designed for the home,
and both have the capability to house electronic
equipment. In addition, both products are marketed
as having an Italian design and thus a consumer
could, on this basis alone, given that both marks con-
note furniture, attribute the products to one source
given the shared Italian theme.
Therefore, although the products are some-
what dissimilar in composition, function, and design,
they are similar in that they are both home furnish-
ings sold under a very similar Italian label, and hence
it seems possible that a consumer could attribute both
products to a single source. While this possibility is
perhaps not strong enough to suggest a likelihood of
consumer confusion, neither is it so remote as to raise
the opposite inference—that a reasonable consumer
would likely not be confused. Thus, to the extent that
the district court found that this factor favored ISG
significantly, we find that the attribution of such
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19-13285 Opinion of the Court 31
weight to this factor in ISG’s favor was clearly erro-
neous.
Id.
Decisions from our sister circuits in reverse-confusion cases
lend further support to our conclusion here. In Attrezzi, the First
Circuit held that the products of two “small electric appliance”
manufacturers were similar even though one manufacturer also
used the mark on its gourmet foods and dinnerware. 436 F.3d at
39. In Dreamwerks, the Ninth Circuit concluded that a movie stu-
dio and a convention holder had similar products because it would
not be unreasonable for consumers to presume that the production
company behind Star Trek decided to bridge the gap to convention
holding and had begun to host Star Trek conventions. See 142 F.3d
at 1131 (“[M]ovies and sci-fi merchandise are now as complemen-
tary as baseball and hot dogs. The main products sold at Dream-
werks conventions are movie and TV collectibles and memora-
bilia; the lectures, previews and appearances by actors which at-
tract customers to Dreamwerks conventions are all dependent, in
one way or another, on the output of entertainment giants like
DreamWorks.”).
Here, as in E. Remy Martin and Dreamwerks, a reasonable
juror could conclude that Amazon was likely to market and sell a
product like Wreal’s. Indeed, to see a do-it-all giant like Amazon
enter the pornographic streaming industry requires no more of an
inferential leap than seeing a movie studio begin holding public
conventions (as in Dreamwerks) or a liquor company begin selling
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32 Opinion of the Court 19-13285
wine (as in E. Remy Martin). Amazon already offers at least some
softcore pornography on its streaming services and competes with
other general-interest set-top boxes that offer hardcore pornogra-
phy content on theirs, including the FyreTV streaming service at
issue here. Amazon also sells hardcore pornographic materials on
its website. It would not be unreasonable for a reasonable con-
sumer to see FyreTV and think Amazon was the source.
Finally, we note that “the more similar the marks are, the
less necessary it is that the products themselves be very similar to
create confusion.” Attrezzi, 436 F.3d at 39. Accordingly, we con-
clude that this factor favors Wreal.
D. Similarity of Sales Outlets and Customer Bases
As for the “similarity of sales outlets” factor, we have held:
This factor takes into consideration where, how, and
to whom the parties’ products are sold. Direct com-
petition between the parties is not required for this
factor to weigh in favor of a likelihood of confusion,
though evidence that the products are sold in the
same stores is certainly strong. The parties’ outlets
and customer bases need not be identical, but some
degree of overlap should be present.
Frehling, 192 F.3d at 1339 (citations omitted). The analysis of this
factor is the same in forward-confusion and reverse-confusion
cases.
Here, the district court concluded that the “similarity of
sales outlets” factor weighs in favor of Amazon. Amazon’s fireTV
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19-13285 Opinion of the Court 33
is available everywhere—on multiple internet sites and in brick-
and-mortar locations around the world. Wreal’s FyreTV, on the
other hand, is available in only one place and can only be purchased
one way—a consumer must make his way to FyreTV.com, navi-
gate through an eighteen-year-olds-only banner, certify that he is
interested in purchasing pornography, and find the product on the
website. And crucially, Amazon’s fireTV is unavailable on
FyreTV.com. Both where the products are sold and how the prod-
ucts are sold are thus different. Only to whom the products are sold
is arguably similar, as the record evidence shows that both compa-
nies target twenty- to fifty-year-old men with disposable income.
The difference, however, is that Wreal targets only individuals
who “are interested in purchasing pornography”—a uniquely iden-
tifiable subset of Amazon’s customer base. Cf. Amstar, 615 F.2d at
262 (noting that Domino Sugar and Domino’s Pizza had different
sales outlets and customer bases because they were distributed
through different outlets despite the fact both were “in the restau-
rant business”). We therefore conclude that this factor favors Am-
azon.
E. Similarity of Advertising
This similarity of advertising “factor looks to each party’s
method of advertising.” Frehling, 192 F.3d at 1339. “[T]he stand-
ard is whether there is likely to be significant enough overlap in the
readership of the publications in which the parties advertise that a
possibility of confusion could result.” Id. at 1340. This inquiry is
the same in both forward- and reverse-confusion cases.
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34 Opinion of the Court 19-13285
There is no dispute in this case that the parties advertise in
completely different media. Amazon advertises the fireTV on the
amazon.com homepage, on television, in print media, and on in-
store displays. Wreal stopped advertising on television and in print
in 2012, two years before Amazon launched the fireTV. In fact, at
all times relevant to the lawsuit, Wreal advertised the FyreTV and
FyreBoXXX only through pornographic websites, social media,
and newsletters—i.e., only on the internet or other media dedi-
cated to similarly prurient content.
Wreal nonetheless argues that this factor favors it because,
very broadly speaking, both the fireTV and the FyreBoXXX adver-
tise through search engines, word of mouth, and social media. But
Wreal presented no record evidence of audience overlap. Nor does
Wreal identify any website (outside of search engines like Google)
where both the fireTV and the FyreBoXXX are advertised. As we
explained in Tana, rejecting a similar argument: “[T]he only simi-
larity in the advertising channels used by the two parties is their
maintenance of websites on the World Wide Web. This similarity
would dispel rather than cause confusion, however, because the
websites are separate and distinct, suggesting two completely un-
related business entities.” 611 F.3d at 778; see also Therma-Scan,
Inc. v. Thermoscan, Inc., 295 F.3d 623, 637 (6th Cir. 2002) (noting
that the availability of information about the parties’ goods on the
internet does not lead to the conclusion that they use the same mar-
keting channels).
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19-13285 Opinion of the Court 35
We therefore conclude that this factor weighs heavily in
Amazon’s favor.
F. Amazon’s Intent
In the forward-confusion context, the intent factor asks
whether the “defendant adopted [the] plaintiff’s mark with the in-
tention of deriving a benefit from the plaintiff’s business reputa-
tion.” Frehling, 192 F.3d at 1340. This is because in forward-con-
fusion cases, “customers mistakenly think that the junior user’s
goods or services are from the same source as or are connected
with the senior user’s goods or services.” 4 McCarthy, supra,
§ 23:10. Without precedent pointing in any other direction, the
district court understandably applied this test for intent and found
that Amazon did not adopt the fireTV mark with any intent to de-
rive a benefit from Wreal’s FyreTV mark.
But reverse-confusion cases are different. In this context, the
concern is that customers will “purchase the senior user’s goods
under the mistaken impression that they are getting the goods of
the junior user.” Id. In other words, that “the junior user’s adver-
tising and promotion so swamps the senior user’s reputation in the
market that customers are likely to be confused into thinking that
the senior user’s goods are those of the junior user.” Id. In this
case, Wreal is not suggesting that Amazon chose the fireTV mark
with the intention of siphoning Wreal’s goodwill; instead, Wreal
claims that, by Amazon’s use of the fireTV mark, Wreal has lost
control over its own, more senior mark.
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36 Opinion of the Court 19-13285
Courts have responded to this problem in varying ways.
The Seventh Circuit, for example, has eliminated the intent ele-
ment from its likelihood-of-confusion test in reverse-confusion
cases. See Sands, 978 F.2d at 961. The Third Circuit has acknowl-
edged that evidence of intent to infringe is not expected in reverse-
confusion cases, but continues to consider such evidence if it exists.
See A & H Sportswear, 237 F.3d at 232. And the Tenth Circuit,
while similarly discounting the importance of the intent factor in
reverse-confusion cases, has continued to apply it in the same man-
ner in both forward- and reverse-confusion cases. See Universal
Money Ctrs., Inc. v. Am. Tel. & Tel. Co., 22 F.3d 1527, 1531–32
(10th Cir. 1994). Finally, the Ninth Circuit applies a modified ver-
sion of the intent factor in reverse-confusion cases, under which
indicia of intent may come from a variety of sources:
At one extreme, intent could be shown through evi-
dence that a defendant deliberately intended to push
the plaintiff out of the market by flooding the market
with advertising to create reverse confusion. Intent
could also 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. The tenor of the intent inquiry shifts
when considering reverse confusion due to the shift
in the theory of confusion, but no specific type of ev-
idence is necessary to establish intent, and the
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19-13285 Opinion of the Court 37
importance of intent and evidence presented will vary
by case.
Marketquest Grp., Inc. v. BIC Corp., 862 F.3d 927, 934–35 (9th Cir.
2017) (citations omitted).
We agree with and adopt the Ninth Circuit’s approach. Ev-
idence of a specific intent to deceive is not a prerequisite to estab-
lish intent in reverse-confusion cases, as it is in forward-confusion
cases. Indicia of intent can come from a wide variety of sources,
including a more generalized intent to obtain market saturation or
to proceed with the adoption of a mark in circumstances where the
defendant had constructive knowledge of the plaintiff’s mark. The
facts of each case will vary, and district courts should accord the
intent factor whatever weight it is due under the circumstances.
Here, applying this standard, the evidence of intent is strong.
First, Amazon has admitted that, before launching the fireTV, it
had actual knowledge of both the FyreBoXXX and Wreal’s FyreTV
trademark registration. Wreal I, 840 F.3d at 1247 (“Amazon was
aware of Wreal’s FyreTV mark when it launched Fire TV but did
not contact Wreal before launching Fire TV.”). Amazon’s Vice
President of Marketing further testified in his deposition that Ama-
zon not only chose to proceed with its usage of the fireTV mark
after becoming aware of the FyreTV registration, but that his “goal
was customers . . . if they search for Amazon Fire TV, if they search
for our product I did not want them to first come across a porn site
and have that experience.” The district court, upon reviewing that
testimony, concluded that no reasonable juror could view it and
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38 Opinion of the Court 19-13285
conclude that Amazon had any “bad faith (or other) intent to de-
ceive consumers or drive Wreal out of the market.” That conclu-
sion was erroneous. The record evidence established that when
Amazon launched the fireTV, it specifically tried to flood the mar-
ket with advertising in an attempt to lower awareness of Wreal’s
similarly named mark. We take Amazon at its word, and we there-
fore conclude that the intent factor weighs heavily in favor of
Wreal.
G. Actual Confusion
“[E]vidence of actual confusion is the best evidence of a like-
lihood of confusion.” Frehling 192 F.3d at 1340. But the presence
of such evidence is obviously not a prerequisite to a finding of like-
lihood of confusion, as it is one of seven factors considered in the
likelihood-of-confusion determination. Id. Indeed, “it is not nec-
essary to show actual confusion. One merely has to show that the
likelihood of confusion exists.” World Carpets, Inc. v. Dick Lit-
trell’s New World Carpets, 438 F.2d 482, 489 (5th Cir. 1971). 15 But
in assessing the quantum of actual confusion required for a finding
in the plaintiff’s favor, even a “very little” amount of actual confu-
sion is highly probative. See id.“The strength of such evidence depends on ‘the number of
instances of confusion,’ ‘the kinds of persons confused’ and the ‘de-
gree of confusion.’” Sovereign Mil. Hospitaller Order of Saint John
15 See supra note 10.
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19-13285 Opinion of the Court 39
of Jerusalem of Rhodes & of Malta v. Fla. Priory of the Knights
Hospitallers of the Sovereign Order of Saint John of Jerusalem,
Knights of Malta, the Ecumenical Order, 809 F.3d 1171, 1189 (11th
Cir. 2015) (quoting Safeway Stores, Inc. v. Safeway Discount
Drugs, Inc., 675 F.2d 1160, 1167 (11th Cir. 1982)). But even more
important than the number of persons confused is the type of per-
son confused; our “caselaw makes plain that the consumers of the
relevant product or service, especially the mark holder’s custom-
ers, turn the key.” Caliber Auto. Liquidators, Inc. v. Premier
Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 936 (11th Cir. 2010); see
also Frehling, 192 F.3d at 1341. Indeed, we have accorded “sub-
stantial weight” to any instances of “evidence that actual customers
were confused by the use of a mark as opposed to other categories
of people.” Aronowitz v. Health-Chem Corp., 513 F.3d 1229, 1240
(11th Cir. 2008) (quoting Safeway Stores, 675 F.2d at 1167).
In reverse-confusion cases, evidence of forward confusion
will usually be probative. See Freedom Card, Inc. v. JPMorgan
Chase & Co., 432 F.3d 463, 473 (3d Cir. 2005). But even more rel-
evant is direct evidence of reverse confusion—i.e., evidence that
consumers of the plaintiff’s more senior mark became confused as
to its source following the launch of the defendant’s more junior
mark. See Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 741 (2d Cir.
1994) (noting that, in a reverse-confusion claim, “the relevant issue
is whether consumers mistakenly believe that the senior user’s
products actually originate with the junior user” and that “it is ap-
propriate to survey the senior user’s customers”). Survey
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40 Opinion of the Court 19-13285
evidence—while perhaps more accurately described as circumstan-
tial evidence of confusion16 rather than direct evidence—is, of
course, admissible. But because the theory of reverse confusion
depends on market saturation by the defendant’s mark, a reliable
survey “cannot be run in a reverse confusion case prior to the jun-
ior user’s saturation of the market with its mark because, until that
time, consumers have not been exposed to the relatively large ad-
vertising and promotion of the junior user that is the hallmark of a
reverse confusion case.” 4 McCarthy, supra, § 23:10.
The record evidence here contains some evidence of actual
confusion. For example, Wreal introduced evidence that one of its
customers asked over Twitter, “Did you guys just merge with Am-
azon?” And one of Amazon’s customers communicated with Am-
azon to ask whether he could access “adult content” on his Ama-
zon “fyre” TV. Both instances directly suggest reverse confusion;
the first consumer believed Amazon had purchased Wreal’s trade-
mark, and the second consumer contacted Amazon to inquire
16 SeeHarvey S. Perlman, The Restatement of the Law of Unfair Competition:
A Work in Progress, 80 Trademark Rep. 461, 472 (1990) (“Most surveys do not
measure actual confusion. Surveys only give us information about a controlled
and artificial world from which we are asked to draw inferences about the real
world.”).
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19-13285 Opinion of the Court 41
about Wreal’s product. 17 But these are the only two true instances
of confusion present in the record. 18
Amazon and Wreal both also introduced survey evidence
regarding the rate of confusion. Dr. Thomas Maronick, who testi-
fied for Wreal at the preliminary injunction hearing, conducted a
preliminary survey in April 2014 and found “very low consumer
confusion” between FyreTV and fireTV. Dr. Maronick also testi-
fied that awareness of the FyreTV mark was “very low.” In a sim-
ilar vein, Dr. Dan Sarel, Amazon’s expert, conducted a consumer
survey and found a confusion rate of one percent, which he testi-
fied was “nonexistent” and “statistically insignificant.”
17 The magistrate judge (and, by its adoption, the district court) discounted
both pieces of evidence, concluding that neither consumer was actually con-
fused. As already discussed in footnote 5, supra, this amounted to an improper
credibility determination that invaded the province of the jury. See Mize v.
Jefferson City Bd. of Educ., 93 F.3d 739, 742 (11th Cir. 1996) (“Where the non-
movant presents direct evidence that, if believed by the jury, would be suffi-
cient to win at trial, summary judgment is not appropriate even where the
movant presents conflicting evidence. It is not the court’s role to weigh con-
flicting evidence or to make credibility determinations; the non-movant’s evi-
dence is to be accepted for purposes of summary judgment.”).
18 Wreal identified other pieces of evidence to the district court, but our review
of the record indicates that they do not represent direct evidence of actual
confusion. For example, one of Wreal’s customers said, “I plan to buy the new
Amazon FireTV box (I know it is NOT related to you guys—although confu-
sion over the name may bring Fyretv some more customers and maybe a do-
main name sale windfall—more power to you!) Will this new Amazon stream-
ing device have a private channel installation of FyreTV in the near future?”
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42 Opinion of the Court 19-13285
We hesitate to give significant weight to either the specifi-
cally identified instances of actual confusion or the surveys. Ama-
zon introduced evidence from an expert witness, Peter Lehman,
that tended to suggest that watching pornography is an inherently
shameful act, and that consumers of pornography are less likely to
report their consumption than consumers of other media. With
this testimony in mind, we turn first to the first two instances of
actual confusion.
Our caselaw is clear that the “the quantum of evidence
needed to show actual confusion is relatively small.” Jellibeans,
Inc., 716 F.2d at 845. But our caselaw imposes no hard-and-fast rule
regarding the number of instances required to prevail. See Caliber
Auto. Liquidators, 605 F.3d at 937. “Rather, the court must evalu-
ate the evidence of actual confusion in the light of the totality of
the circumstances involved.” AmBrit, 812 F.2d at 1543; accord
World Carpets, 438 F.2d at 489 (5th Cir. 1971) 19 (“[R]eason 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.”).
Our previous decisions serve as guides. In Safeway Stores,
when reviewing a district court’s findings following a bench trial,
we held that a mere two instances of confusion from relevant con-
sumers was worthy of consideration. 675 F.2d at 1166–67,
19 See supra note 10.
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19-13285 Opinion of the Court 43
abrogation recognized on other grounds, PlayNation Play Sys., Inc.
v. Velex Corp., 924 F.3d 1159, 1166 (11th Cir. 2019). Additionally,
in Caliber Automotive, we stated that two instances of confusion
among professional buyers weighed in the plaintiff’s favor at the
summary judgment stage. 605 F.3d at 937–38. In contrast, in
Frehling, when reversing the district court’s entry of judgment for
the defendant following a bench trial, we concluded that a single
instance of actual confusion from a “professional buyer” while “suf-
ficient to raise an inference of actual confusion” was “not suffi-
ciently dispositive so as to favor either side in an appreciable fash-
ion.” 192 F.3d at 1341.
Perhaps most analogous are our decisions in AmBrit and
PlayNation. In AmBrit as in this case, the relevant products (ice
cream novelties there and set-top boxes, here) were sold to the gen-
eral public, not professional buyers, and had a “high volume of
sales” (at least, such is the case for the fireTV here). See 812 F.2d
at 1544. The district court in AmBrit, after a bench trial, found that
four instances of actual confusion supported a finding of actual con-
fusion in favor of the plaintiff. See id. And we, reviewing for clear
error, affirmed. See id. at 1544–45. Similarly, in PlayNation, the
products at issue were playground equipment and pull-up bars
which, like ice cream novelties and set-top boxes, are sold to the
general public rather than to professional buyers. See 924 F.3d at
1164. Following a bench trial, the district court found that just two
instances of actual confusion—in which the plaintiff’s customers
contacted the defendant for customer support—were sufficient to
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44 Opinion of the Court 19-13285
support a finding of actual confusion. See id. at 1167. On appeal,
we affirmed the ruling. See id. at 1167–68.
As in AmBrit and PlayNation, the reported instances of con-
fusion in this case are relatively few. Even after years of litigation,
Wreal is able to identify only two instances of potential or actual
Wreal consumers being confused as to the source of its product.
But the record also contains expert testimony that consumers of
pornography are less likely to report their consumption than con-
sumers of other media. Given that we are obliged to “evaluate the
evidence of actual confusion in the light of the totality of the cir-
cumstances involved,” AmBrit, 812 F.2d at 1543, we find it appro-
priate here to take that expert testimony into account when con-
sidering the number of reported instances of actual confusion. Alt-
hough a close call, we conclude that the two reported instances of
actual confusion here are sufficient to make the issue one of triable
fact and thus weighs in Wreal’s favor.
Turning to the survey evidence, both parties advance a
number of arguments either for or against the consideration of the
surveys. But given that we conclude that the instances of actual
confusion present in the record are sufficient to push this factor in
Wreal’s favor, we conclude that it is unnecessary to also address
the issue of survey evidence especially as a plaintiff need not pre-
sent survey evidence in a trademark claim in order to escape sum-
mary judgment. See PlayNation, 924 F.3d at 1169 (“Lack of survey
evidence does not weigh against the plaintiff when determining
likelihood of confusion.”); Midwestern Pet Foods, Inc. v. Societe
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19-13285 Opinion of the Court 45
des Produits Nestle S.A., 685 F.3d 1046, 1054 (Fed. Cir. 2012)
(“[N]either the Board nor this court has required survey evidence
in order to show a likelihood of confusion.”); Badger Meter v. Grin-
nell Corp., 13 F.3d 1145, 1153 (7th Cir. 1994) (“[Defendant] argues
strenuously that [plaintiff’s] failure to introduce any market survey
evidence of likely consumer confusion militates against finding
such a likelihood; once again, however, this goes to the weight and
not to the sufficiency of the evidence.”). And, as already noted
above, at least in our circuit, survey evidence in trademark actions
has always been viewed with a skeptical eye. See Frehling, 192 F.3d
at 1341 n.5 (“This Circuit . . . has moved away from relying on sur-
vey evidence [in trademark cases].”); Safeway Stores, 675 F.2d at1167 n.10 (noting that our circuit has “followed the trend of cases
in the former Fifth Circuit, in which market surveys have not fared
well as evidence in trademark cases”).
IV. CONCLUSION
This case addresses the application of the seven likelihood-
of-confusion factors to a reverse-confusion trademark infringe-
ment case. Although some of those factors are analyzed and ap-
plied in the same way in both reverse-confusion cases and the more
familiar forward-confusion cases, there are important differences in
how other factors are analyzed and applied that stem from the fact
that the harm and the theory of infringement differ between for-
ward and reverse confusion.
Here, the record evidence establishes that Amazon acquired
actual knowledge of Wreal’s registered trademark and still
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46 Opinion of the Court 19-13285
launched a product line with a phonetically similar name. The two
marks at issue are nearly identical, the commercial strength of Am-
azon’s mark is consistent with Wreal’s theory of recovery, the par-
ties’ services are the kind that a reasonable consumer could attrib-
ute to a single source, and the record establishes that Amazon in-
tended to swamp the market with its advertising campaign. Fur-
thermore, Wreal has identified two consumers who a reasonable
juror could conclude were confused by Amazon’s chosen mark.
As noted throughout our decision, there is no mechanical
formula for applying the seven factors relating to likelihood of con-
fusion. But when considering all seven factors as they apply to a
theory of reverse confusion and taking all the circumstances of this
case into account on the record before us, we conclude that they
weigh heavily in favor of Wreal and that the district court erred
when it entered summary judgment in Amazon’s favor. We there-
fore reverse the district court’s order. This is not to say that Ama-
zon may not ultimately prevail on the merits; rather, it must do so
before a jury.
REVERSED AND REMANDED.