Debbie Rohn v. Viacom Int'l, Inc. , 706 F. App'x 319 ( 2017 )

NOT RECOMMENDED FOR FULL-TEXT PUBLICATION
File Name: 17a0692n.06
No. 17-1225
UNITED STATES COURT OF APPEALS
FILED
Dec 18, 2017
FOR THE SIXTH CIRCUIT
DEBORAH S. HUNT, Clerk
DEBBIE ROHN; DEAN ROHN, )
)
Plaintiffs-Appellants, )
)
v. ) ON APPEAL FROM THE
) UNITED STATES DISTRICT
VIACOM INTERNATIONAL INC., et al., ) COURT FOR THE WESTERN
) DISTRICT OF MICHIGAN
Defendants-Appellees. )
)
)
Before: SILER, KETHLEDGE, and THAPAR, Circuit Judges.
KETHLEDGE, Circuit Judge. Debbie and Dean Rohn argue that Viacom’s trademarked
television characters (the Bubble Guppies) have pushed their trademarked clothing line (Guppie
Kid) out of the market, and that Viacom has therefore infringed on their trademarks. But Guppie
Kid’s sales had largely dried up well before the Bubble Guppies came along. For this reason and
more, the district court granted summary judgment to Viacom. We affirm.
The Rohns own two trademarks. One is for the word GUPPIE, an acronym for “Growing
Up Playing Pursuing Individual Excellence.” The other is for a logo: the word GUPPIE, in
which a fish in a necktie forms the letter G. These marks give the Rohns the exclusive right to
put the word and logo on hats, shirts, and the like. They started doing so in 1990, and have since
sold (at most) $12,000 in “Guppie Kid” apparel. But most of those sales came in the first fifteen
years, and the Rohns have sold only about $2,000 of their apparel since 2005.
No. 17-1225
Rohn v. Viacom International Inc.
In 2011, a show called Bubble Guppies premiered on Nickelodeon, a television network
owned by Viacom. The show is pitched toward a young audience; it features cartoon children
with fish tails (the Bubble Guppies) learning how to count and read. In its logo, the end of the
letter G is shaped like a fish tail. Viacom licenses the characters and logo to large retailers like
Target and Sears, who make and sell Bubble Guppies apparel.
The Rohns sued Viacom and various retailers for trademark infringement, alleging that
potential customers were likely to confuse Guppie Kid and Bubble Guppies apparel. The district
court granted Viacom’s motion for summary judgment and entered judgment for all defendants.
This appeal followed.
We review the district court’s decision de novo. See Richmond v. Huq, 872 F.3d 355,
363 (6th Cir. 2017). To avoid summary judgment, the Rohns need evidence that would enable a
reasonable jury to find that Bubble Guppies apparel infringes on their Guppie Kid trademarks.
See Fed. R. Civ. P. 56(a).
Trademarks protect a business’s association with its own goods. To show infringement,
therefore, the Rohns must show confusion—i.e., that a consumer looking at a Guppie Kid shirt
likely would not be able to tell whether the Rohns or Viacom made it. See Progressive Distrib.
Servs., Inc. v. United Parcel Servs., Inc., 856 F.3d 416, 424 (6th Cir. 2017); see also 15 U.S.C.
§§ 1114, 1125. We determine whether confusion is likely based on many things, the first being
the “strength of the plaintiff’s mark.” Progressive, 856 F.3d at 424. The stronger the trademark,
the more likely consumers are to associate it with the trademark holder, and thus the more likely
they are to be confused if someone else uses a similar mark. This strength has two components:
conceptual strength (whether the mark is just a generic word or something more distinctive) and
commercial strength (whether the mark is recognized in the market). See id. at 427-31.
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No. 17-1225
Rohn v. Viacom International Inc.
Here, no one disputes that the GUPPIE word and logo are distinctive. As to commercial
strength, however, the Rohns have little evidence. They cite only Debbie Rohn’s own deposition
testimony that business was “very, very good” in the 1990s and then got “good” again in 2006
when the Rohns launched a website. Yet even she was careful to say that “I shouldn’t use the
word great.” Indeed, most Guppie Kid sales ($10,000 out of $12,000) occurred in western
Michigan before 2005. Those sales were confined to local shops and the Rohns’ home, since
larger stores declined the Rohns’ invitations to carry Guppie Kid. And the website has added
only about 50 sales—mostly to family and friends—in over 10 years. Even before the Bubble
Guppies arrived, then, Guppie Kid sightings were few. And they were already becoming fewer:
a number of stores that once carried Guppie Kid apparel had closed long ago, and the few stores
that still carried it rarely sold it. Thus, few consumers were likely to know about Guppie Kid in
the first place. Few if any consumers were therefore likely to confuse the Rohns’ brand with
Viacom’s. That would explain why the Rohns offer no evidence that any consumer has actually
confused the two brands, which is the best evidence that consumers are likely to confuse them.
See Progressive, 856 F.3d at 433. And without some proof that any consumers actually confused
or had a reason to confuse the brands, a reasonable jury could not find that Viacom infringed on
the Rohns’ trademarks.
The Rohns argue, however, that they have “conclusive” proof of Guppie Kid’s strength—
namely that the GUPPIE trademarks are “incontestable,” a status that trademarks achieve if they
are not successfully challenged within five years of being registered. See 15 U.S.C. § 1065. But
that status entitles trademarks only to a “presumption of strength.” Progressive, 856 F.3d at 429.
And a defendant can defeat that presumption with, among other things, proof that a trademark is
commercially weak. See id. Viacom has done that, so this argument fails.
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No. 17-1225
Rohn v. Viacom International Inc.
The Rohns alternatively argue that the weakness of their trademarks actually helps them,
because their claim is one of reverse confusion. In such cases, rather than exploit the reputation
of a trademark holder, the infringer “saturates the market” with a similar trademark; consumers
then start to think that the two brands are related. Ameritech, Inc. v. Am. Info. Tech. Corp.,
811 F.2d 960, 964 (6th Cir. 1987). According to the Rohns, a plaintiff with a weak trademark is
unlikely to prevent this saturation and thus more likely to show reverse confusion. But whatever
the merits of that argument in theory, it makes no practical difference here—since the value of
the Rohns’ trademarks is not only weak but practically nonexistent. Consumers are unaware of
brands like these to begin with, and thus the Rohns lack evidence of any kind of confusion.
Finally, the Rohns argue that a jury could find trademark infringement based on things
beyond the strength of their marks, e.g., the similarly piscine letter Gs in the Bubble Guppies and
Guppie Kid logos. But the “ultimate question” remains whether consumers are likely to think
that the two brands are related. Homeowners Grp., Inc. v. Home Mktg. Specialists, Inc., 931 F.2d
1100, 1107 (6th Cir. 1991). And nowhere do the Rohns show that consumers knew about their
brand to begin with—let alone confused Viacom’s brand with theirs. Thus, a jury could not find
that Bubble Guppies apparel infringes on their Guppie Kid trademarks.
The district court’s judgment is affirmed.
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