Autozone Inc v. Strick Inc

In the
United States Court of Appeals
For the Seventh Circuit
____________
No. 07-2136
A UTOZ ONE, INC. and A UTOZ ONE P ARTS, INC.,
Plaintiffs-Appellants,
v.
M ICHAEL S TRICK, et al.,
Defendants-Appellees.
____________
Appeal from the United States District Court
for the Northern District of Illinois, Eastern Division.
No. 03 C 8152—William T. Hart, Judge.
____________
A RGUED A PRIL 17, 2008—D ECIDED S EPTEMBER 11, 2008
____________
Before R IPPLE, M ANION, and T INDER, Circuit Judges.
M ANION, Circuit Judge. Plaintiffs AutoZone, Inc., and
AutoZone Parts, Inc. (collectively “AutoZone”), who
together comprise one of the largest retailers of automo-
tive parts in the United States, sued Michael Strick, Strick
Enterprises, Inc., and Strick, Inc. (collectively “Strick”)
alleging that Strick’s use of the trade names and service
marks “Oil Zone” and “Wash Zone” in his automotive
services businesses violated the Lanham Act, 15 U.S.C.
2 No. 07-2136
§ 1051 et seq., and Illinois statutory and common law. At
the summary judgment stage, the district court held that
AutoZone had failed to produce sufficient evidence to
show a likelihood of confusion between AutoZone’s
and Strick’s marks as a matter of law and dismissed
AutoZone’s suit. AutoZone appeals, and we reverse.
I.
AutoZone operates approximately 3,500 stores nation-
wide. Its primary business is the sale of a wide variety
of automotive products, though its stores also provide a
few services in conjunction with the sale of those products,
such as diagnostic advice, oil reclamation, and free battery
testing. AutoZone stores do not have any service bays
for car repairs, nor do they offer car washes or oil
changes. They do, however, sell products related to
washing cars and changing motor oil. AutoZone targets
its products and services to two segments of the popula-
tion: the general automotive-using public, and commercial
automotive establishments that buy parts to make repairs
for their customers. The vast bulk of AutoZone’s busi-
ness—90%—comes from the first category.
AutoZone operates under the federally registered
trademark AutoZone with the design depicted below:
No. 07-2136 3
AutoZone refers to this mark as its “Speedbar Design.” 1 In
color, the series of stripes preceding the “AutoZone” name
are depicted in orange, and the lettering is in red.
AutoZone first began using the speedbar mark in Novem-
ber 1987 and has used it in Illinois since the early 1990’s.
By 1996, AutoZone had approximately 100 stores in
the Chicago area operating under that mark.
AutoZone has extensively advertised the mark across
the country since 1987. AutoZone’s marketing in the
Chicago area began to take off in the early 1990’s. From
1994 to 2001, AutoZone paired national television advertis-
ing with sponsorships of local sports teams, such as
the Chicago Bulls and the Chicago White Sox. In 1996,
AutoZone labeled the Chicago area a growth market,
spending a disproportionate share of its advertising
funds there. Along with the sports sponsorships,
AutoZone’s Chicago-area advertising included television
advertising on Chicago stations and national cable televi-
sion, advertisements in magazines such as Sports Illus-
trated and Hot Rodder, weekly or biweekly ads in
Chicago newspapers, local radio advertising, commercial
sales calls to local automotive businesses near AutoZone
locations, direct mail advertising, outdoor advertising
on billboards and city buses, and ads in the yellow pages.
While AutoZone was established and advertising heavily
in the Chicago market, Strick, who had been working in
1
AutoZone also utilized the mark “Oilzone” internally in its
stores. That mark was the subject of several counterclaims in
the district court, but Strick voluntarily dismissed those
claims and they are not at issue in this appeal.
4 No. 07-2136
the automotive goods and services industry, opened two
businesses in the Chicago area, one in Wheaton 2 and the
other in Naperville. Those stores provide automotive
services such as car washes, 10-minute oil changes, trans-
mission services, rear differential services, and coolant
flushes. Strick’s primary customer base is members of the
general public that live within a one- to three-mile radius
of one of Strick’s two locations. Strick’s businesses use
the mark “Oil Zone,” the appearance of which is
depicted below:
A picture of Strick’s Naperville Oil Zone location is below
(along with two pictures in the record of an AutoZone
store for comparison):
2
Strick’s Wheaton store is within one mile of an AutoZone
store that opened in May 2000.
No. 07-2136 5
Strick also used the mark “Wash Zone” at his Naperville
location, which provided car washes in addition to the
other automotive services. That mark is very similar to
Strick’s Oil Zone mark, with the exception that when
depicted in color, the letters of the Wash Zone mark are
blue, as opposed to green for the Oil Zone mark. Strick
began using the mark Oil Zone in July 1996, and the mark
Wash Zone in 1998. At his deposition, Strick testified that
he was completely unaware of AutoZone and its stores
at the time he began using the Oil Zone mark. He also
testified that the only step he took to determine whether
he was legally entitled to use Oil Zone was to contact a
search firm called “Lexis documents.”
In December 1998, AutoZone became aware of Strick’s
businesses and directed Kirby & Associates, a private
investigation firm, to investigate them. The investigators
prepared their report on Strick’s operations and sub-
mitted it to AutoZone the same month. AutoZone did not
contact Strick about his use of the Oil Zone and Wash
Zone marks until February 18, 2003, when it sent him a
letter. It then filed this suit on November 14, 2003, alleging
that Strick engaged in service mark and trademark in-
fringement in violation of 15 U.S.C. § 1114(1), trade name
infringement in violation of Illinois common law, unfair
competition in violation of 15 U.S.C. § 1125(a) and Illinois
common law, and service mark and trademark dilution
in violation of 15 U.S.C. § 1125(c) and 765 ILCS 1036/65.
AutoZone sought a permanent injunction enjoining Strick
from using the Oil Zone and Wash Zone marks, as well as
attorneys’ fees and costs. After AutoZone amended its
complaint, Strick filed an answer asserting a few counter-
6 No. 07-2136
claims and affirmative defenses, none of which is relevant
to this appeal.
The parties then filed cross-motions for summary
judgment. AutoZone sought partial summary judgment
on some of Strick’s counterclaims and affirmative defenses.
Strick, on the other hand, moved for summary judgment
on all of AutoZone’s claims. Strick asserted that all of
AutoZone’s claims failed because the undisputed facts
showed that there was no likelihood of confusion be-
tween the AutoZone mark and the Oil Zone and Wash
Zone marks. Strick also maintained that it was entitled to
summary judgment on the issue of laches because of
AutoZone’s four-year delay in filing suit.
The district court, in a comprehensive opinion, granted
Strick’s motion for summary judgment and denied
AutoZone’s motion.3 The district court found that
AutoZone’s claims failed because the AutoZone mark and
the Oil Zone and Wash Zone marks were “not similar
enough for a reasonable finder of fact to find that there
is a likelihood of confusion.” 4 It did not reach the issue
of laches. The district court entered final judgment on
3
As was mentioned above, Strick later filed a motion to
voluntarily dismiss his counterclaims with prejudice, which
was granted.
4
Although the district court noted that, under the amended
version of 15 U.S.C. § 1125(c), AutoZone need not prove a
likelihood of confusion to prevail on its federal dilution claim,
the court found that AutoZone’s dilution claim still failed
because AutoZone made no attempt to show actual or likely
dilution of its mark.
No. 07-2136 7
May 2, 2007. AutoZone appeals.
II.
On appeal, AutoZone challenges the district court’s
ruling, at the summary judgment stage, that AutoZone’s
infringement and unfair competition claims failed as a
matter of law. Specifically, AutoZone claims that to
avoid summary judgment it presented sufficient evidence
that Strick’s use of the Oil Zone and Wash Zone marks
is likely to cause confusion with the AutoZone mark.
A. Summary Judgment Standard
We review de novo the district court’s decision to grant
summary judgment to Strick, viewing the facts in the light
most favorable to AutoZone, the nonmovant. Morton v.
Motel 6 Operating L.P., __ F.3d __, No. 07-2417, slip op. at 8
(7th Cir. July 7, 2008). According to Federal Rule of Civil
Procedure 56, summary judgment is proper “if the plead-
ings, the discovery and disclosure materials on file, and
any affidavits show that there is no genuine issue as to
any material fact and that the movant is entitled to judg-
ment as a matter of law.” Fed. R. Civ. P. 56(c). “[I]f there
is any genuine material issue of fact, we must remand.”
AHP Subsidiary Holding Co. v. Stuart Hale Co., 1 F.3d 611,
615 (7th Cir. 1993).
B. Likelihood of Confusion
A necessary element of AutoZone’s infringement and
unfair competition claims under both state and federal law
8 No. 07-2136
is that there be a likelihood of confusion between the
AutoZone mark and the Oil Zone and Wash Zone marks.
CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660, 673-74 (7th
Cir. 2001); see also Stuart Hale Co., 1 F.3d at 615. We analyze
seven factors to determine whether consumers are likely
to be confused:
(1) the similarity between the marks in appearance and
suggestion;
(2) the similarity of the products;
(3) the area and manner of concurrent use;
(4) the degree and care likely to be exercised by con-
sumers;
(5) the strength of the plaintiff’s mark;
(6) any actual confusion; and
(7) the intent of the defendant to “palm off” his prod-
uct as that of another.
Packman v. Chicago Tribune Co., 267 F.3d 628, 642 (7th Cir.
2001). No single factor is dispositive. Courts may assign
varying weight to each of the factors depending on the
facts presented, though usually the similarity of the
marks, the defendant’s intent, and actual confusion are
particularly important. Id.
Whether consumers are likely to be confused about the
origin of a defendant’s products or services is ultimately
a question of fact. McGraw-Edison Co. v. Walt Disney
Prods., 787 F.2d 1163, 1167 (7th Cir. 1986); see also Barbecue
Marx, Inc. v. 551 Ogden, Inc., 235 F.3d 1041, 1044 (7th Cir.
2000); Reed-Union Corp. v. Turtle Wax, Inc., 77 F.3d 909, 912
No. 07-2136 9
(7th Cir. 1996). That question of fact may be resolved on
summary judgment only “if the evidence is so one-sided
that there can be no doubt about how the question
should be answered.” Packman, 267 F.3d at 637 (quoting
Door Sys., Inc. v. Pro-Line Door Sys., Inc., 83 F.3d 169, 171
(7th Cir. 1996)); see also Stuart Hale Co., 1 F.3d at 616 (“[A]
motion for summary judgment in trademark infringe-
ment cases must be approached with great caution.”). As
we will demonstrate below in our analysis of the factors
bearing on the issue of likelihood of confusion, this is not
a case where the evidence is so one-sided that the issue
of likelihood of confusion can be properly determined at
the summary judgment stage.
1. Similarity of the marks.
To determine whether two marks are similar, we view
the marks as a whole. See Estate of Beckwith, Inc. v. Comm’r
of Patents, 252 U.S. 538, 545-546 (1920) (“The commercial
impression of a trade-mark is derived from it as a whole,
not from its elements separated and considered in detail.”);
see also Scandia Down Corp. v. Euroquilt, Inc., 772 F.2d 1423,
1431 (7th Cir. 1985). We must compare the marks “in light
of what happens in the marketplace and not merely by
looking at the two marks side-by-side.” Sullivan v. CBS
Corp., 385 F.3d 772, 777 (7th Cir. 2004) (quoting Ty, Inc. v.
The Jones Group, Inc., 237 F.3d 891, 898 (7th Cir. 2001)); see
also Meridian Mut. Ins. Co. v. Meridian Ins. Group, Inc., 128
F.3d 1111, 1115 (7th Cir. 1997) (noting that “it is inappropri-
ate to focus on minor stylistic differences to determine
if confusion is likely” when the marks are not usually
encountered together). “[T]he test is not whether the public
10 No. 07-2136
would confuse the marks, but whether the viewer of an
accused mark would be likely to associate the product or
service with which it is connected with the source of
products or services with which an earlier mark is con-
nected.” James Burrough Ltd. v. Sign of Beefeater, Inc., 540
F.2d 266, 275 (7th Cir. 1976). The court should therefore
“consider whether the customer would believe that the
trademark owner sponsored, endorsed or was otherwise
affiliated with the product.” Nike, Inc. v. “Just Did It”
Enters., 6 F.3d 1225, 1228-29 (7th Cir. 1993). Viewed from
that perspective, the marks in this case are similar enough
that a reasonable finder of fact could find that a con-
sumer would believe that the marks are connected to
the same source.
Here, both parties’ marks are comprised of two words.
All marks have “Zone” as the second word. The words are
in the same font. They are slanted in the same direction.
The first letter of both words is larger than the other
letters in all the marks. And all marks feature bar designs
that suggest movement or speed. (The similarity in archi-
tectural design between Strick’s Naperville Oil Zone
and Wash Zone and the pictures of an AutoZone store
in the record also did not escape our notice.)
There are dissimilarities between the marks too, of
course: they are usually portrayed in different colors, the
bar designs run in different directions, and the first words
are different. But viewing the facts in the light most
favorable to AutoZone, as we are required to do at this
stage of the litigation, the prominent similarities between
the marks may very well lead a consumer cruising down
No. 07-2136 11
the street to believe, after driving past both parties’ busi-
nesses, that Oil Zone and Wash Zone represented
AutoZone’s entry into the oil-change and car wash-services
market. See, e.g., James Burrough Ltd., 540 F.2d at 275 (noting
that marks “must be compared in the light of what occurs
in the marketplace, not in the courtroom”). Thus,
AutoZone has created a genuine factual dispute as to
the similarity of the marks.
In an effort to avoid that conclusion, Strick relies heavily
on the Sixth Circuit’s decision in AutoZone, Inc. v. Tandy
Corp., 373 F.3d 786 (6th Cir. 2004). In Tandy Corp., the
trademark dispute centered around the marks AutoZone
and PowerZone, a mark used by Tandy Corp. in its Radio
Shack stores. The Sixth Circuit held that the PowerZone
mark was not likely to cause confusion with the AutoZone
mark and affirmed the district court’s grant of summary
judgment in favor of Tandy Corp. In the course of pointing
out several dissimilarities between the physical appear-
ances of the marks, the Sixth Circuit remarked that “the
differences between the first syllables of POWERZONE
and AUTOZONE cannot be ignored, particularly given
the ubiquity of ZONE.” Id. at 796. Based on that comment,
Strick argues that our analysis should hinge on the non-
shared portions of the marks—Auto, Oil, and Wash—
rather than the shared common term Zone.
Such an argument ignores the context of that comment
by the Sixth Circuit in Tandy Corp. Just a few paragraphs
before, the Sixth Circuit had noted it could not consider
only the non-shared terms of Auto and Power because
to do so would violate the “anti-dissection rule” that
12 No. 07-2136
requires marks to be viewed in their entirety. Id. at 795
(citing 3 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition § 23:41, at 23-123 (2003) (herein-
after “McCarthy”)). The difference between the words
Auto and Power, while mentioned in the court’s analysis,
was therefore not crucial to the Sixth Circuit’s decision.
Rather, what did factor prominently into the Sixth Cir-
cuit’s decision was the visual dissimilarities between the
marks taken as a whole—the different fonts and visual
impressions—and the fact that the PowerZone mark was
always in close proximity to the Radio Shack mark, a
prominent mark in its own right. See id. at 796-97.
In contrast to Tandy Corp., Strick’s marks—viewed in
their entirety—are visually similar to the AutoZone mark.
There is also no well-known mark like Radio Shack accom-
panying Strick’s Oil Zone and Wash Zone marks that
would allow consumers to easily distinguish between
those marks and the AutoZone mark. Thus, Tandy Corp.
offers minimal support to Strick’s argument urging us to
focus on the words Auto, Wash, and Oil, instead of the
overall impression created by the marks.
2. The similarity of the products.
Like the previous factor comparing the similarity of
the marks, “[o]ur inquiry in comparing the two products
is not whether they are interchangeable, but whether ‘the
parties’ products are the kind the public might very well
attribute to a single source (the plaintiff).’ ” Eli Lilly & Co.
v. Natural Answers, Inc., 233 F.3d 456, 463 (7th Cir. 2000)
No. 07-2136 13
(quoting Int’l Kennel Club of Chicago, Inc. v. Mighty Star, Inc.,
846 F.2d 1079, 1089 (7th Cir. 1988)); see also McGraw-Edison
Co., 787 F.2d at 1169. The rights of an owner of a registered
trademark extend to any goods or services that, in the
minds of consumers, might be put out by a single pro-
ducer. Thus, “[a] likelihood of confusion may exist even
if the parties are not in direct competition, or their prod-
ucts and services are not identical.” CAE, Inc., 267 F.3d
at 679 (internal citation omitted).
No consumer would mistake an AutoZone store, which
mainly sells products, for a Wash Zone or an Oil Zone,
which primarily provides services. But, viewed in light of
the similarity of the marks, a reasonable consumer may
very well be led to believe that Oil Zone and Wash Zone
are AutoZone spinoffs. A retailer or manufacturer with a
strong mark venturing into a related service industry
would not be that surprising. And the automotive services
provided by Strick’s businesses are related to the automo-
tive products sold at AutoZone stores. Indeed, there is
even some direct overlap between AutoZone’s products
and the services provided by Strick’s businesses: Strick
provides car washes and oil changes while AutoZone
sells car-wash and oil-change products. A reasonable
consumer, taking into account the similarity of the marks,
could therefore conclude from the relatedness of the
goods and services provided by AutoZone, Oil Zone,
and Wash Zone that the marks are all attributable to a
single source. Thus, AutoZone has shown that a genuine
dispute exists here as well. Cf. CAE Inc., 267 F.3d at 680-81
(upholding district court’s finding that “the diverse
nature of CAE, Inc.’s businesses makes it likely that
14 No. 07-2136
consumers might reasonably expect CAE, Inc. to expand
its business to offer the same products and services
offered by Clean Air in the air pollution control business”)
(internal quotation marks omitted).
In an effort to avoid that conclusion, Strick again points
to Tandy Corp. But just as before, Tandy Corp. is not very
helpful to Strick here. In Tandy Corp., the record showed
that AutoZone and Radio Shack competed in almost
entirely different markets—there was a less than one
percent overlap between the automotive products sold
at AutoZone stores and the electronics equipment
retailed at Radio Shack stores. Tandy Corp., 373 F.3d at 789.
As the district judge in Tandy Corp. quipped, “What idiot
who wants to buy an automobile part is going to go to a
Radio Shack?” Id. at 798. In contrast, this is not a case
where the markets in which the parties compete are
almost entirely distinct. Rather, both parties here operate
automotive-oriented businesses that target segments of
the general automobile-using public. We therefore
remain unpersuaded by Strick’s repeated appeals to
Tandy Corp.
3. Area and manner of concurrent use.
“The third factor in the likelihood of confusion
analysis assesses ‘whether there is a relationship in use,
promotion, distribution, or sales between the goods or
services of the parties.’ ” CAE, Inc., 267 F.3d at 681 (quoting
Forum Corp. of N. Am. v. Forum, Ltd., 903 F.2d 434, 442 (7th
Cir.1990)). In this case, the evidence in the record shows
No. 07-2136 15
that both parties sell and promote their automotive goods
and services in the Chicago area. In response to that
evidence, Strick points out that AutoZone promotes
its goods and services on a national scale, while in con-
trast his business is limited to a one- to three-mile radius
around his Naperville and Wheaton locations. Strick
does not cite any authority, however, for conditioning
infringement on the scale of the parties’ respective opera-
tions, and for good reason: that proposition is undoubtedly
incorrect. Such a rule would run counter to the cases,
cited above, holding that infringement occurs when
consumers are confused over affiliation, and not merely
when businesses are identical. Moreover, accepting what
Strick advocates would allow local businesses a free ride
off of the advertising efforts and goodwill of larger na-
tional businesses. But trademark law makes no excep-
tion for the localized infringer.
Strick also argues that the customer bases for AutoZone
and his businesses are “completely different,” but a trier
of fact from the record before us could reasonably con-
clude otherwise. Both businesses court members of the
general automobile-using public. Of course there may be
subsets of that group that will only change their oil them-
selves, and thus can only be AutoZone customers, or
will not be bothered with changing their oil, thus making
them only potential Oil Zone customers. But the record
before us does not rule out the reasonable inference that
a substantial congruence exists between the potential
customer base in Naperville and Wheaton for AutoZone
and Strick’s businesses. AutoZone has therefore created
a genuine factual dispute for this factor as well.
16 No. 07-2136
4. Degree of care exercised by consumers.
Despite reaching the ultimate conclusion that there was
no likelihood of confusion as a matter of law, the district
court found that this factor supported a possibility of
confusion. AutoZone, Inc. v. Strick, 466 F. Supp. 2d 1034,
1043 (N.D. Ill. 2006). We agree. In assessing whether
this factor favors finding a likelihood of confusion, we
stated in CAE, Inc. v. Clean Air Engineering, Inc. that “[t]he
more widely accessible and inexpensive the products
and services, the more likely that consumers will exercise
a lesser degree of care and discrimination in their pur-
chases.” 267 F.3d at 683. That statement in CAE, Inc. also
applies in this case. AutoZone has presented evidence
that many of the products it sells are inexpensive. Further-
more, as the district court noted, there is no evidence in
the record that customers of Strick’s businesses “are
particularly sophisticated or deliberative.” AutoZone, Inc,
466 F. Supp. 2d at 1042. Keeping in mind, therefore, the
physical similarity of the marks and the danger of affilia-
tion confusion (as discussed above), a reasonable trier
of fact could also conclude from the evidence in the
record that the degree-of-care factor favors AutoZone.
5. Strength of the plaintiffs’ mark.
“The stronger the mark, the more likely it is that en-
croachment on it will produce confusion.” 2 McCarthy
§ 11.73, at 11-169 to 170 (2008) (quoting Champions Golf
Club v. Champions Golf Club, 78 F.3d 1111 (6th Cir. 1996)).
The strength of a mark usually corresponds to its econ-
omic and marketing strength. Sullivan, 385 F.3d at 777.
No. 07-2136 17
In this case, the evidence in the record is more than
sufficient to support the conclusion that the AutoZone
mark has plenty of economic and marketing strength. The
AutoZone mark is displayed prominently on more than
3,000 stores nationwide, and it has been the subject of
hundreds of millions of dollars’ worth of advertising
since 1987.
Despite the clear evidence of the economic and market-
ing strength of the AutoZone mark in the record, Strick
nevertheless maintains that AutoZone’s mark is weak. To
support that assertion, Strick points to evidence that the
word “Zone” is commonly found in other marks. That
argument fails for two reasons. First, as the district court
pointed out, Strick did not produce evidence to show
how extensively any of the marks that use “zone” have
been promoted or become recognized by consumers in
the marketplace. AutoZone, Inc., 466 F. Supp. 2d at 1042.
Thus, that evidence does little to cast doubt on the
strength of AutoZone’s mark. See CAE, Inc., 267 F.3d at 685
(noting that third-party trademark registrations can
negatively impact the strength of a plaintiff’s mark “only
to the extent that the similar marks are promoted by their
owners or recognized by the consuming public”). Second,
Strick’s focus on the term “Zone” misses the point. As we
discussed above, “[t]he commercial impression of a
trade-mark is derived from it as a whole, not from its
elements separated and considered in detail.” Estate of
Beckwith, 252 U.S. at 545-546; see also Tandy Corp., 373 F.3d
at 795 (“Conflicting composite marks are to be compared
by looking at them as a whole, rather than breaking the
marks up into their component parts for comparison . . . .
18 No. 07-2136
The rationale for the rule is that the commercial im-
pression of a composite trademark on an ordinary prospec-
tive buyer is created by the mark as a whole, not by its
component parts.” (quoting 3 McCarthy § 23:41, at 23-123
(2003))). “Zone” by itself might be generic and subject
to little protection, but the same is not true of the compos-
ite mark AutoZone. A trier of fact could reasonably
conclude that AutoZone’s mark is strong, thus making
confusion due to the similarity of Strick’s marks more
likely.
6. Intent to palm off.
Strick testified at his deposition that he was not aware
of the AutoZone mark when he created the Oil Zone
mark. Strick points to that testimony and argues that the
evidence is undisputed that he did not intend to mislead
the public into believing that his goods and services were
in some way related to AutoZone. That argument, how-
ever, fails to take into account all the evidence in the
record bearing on Strick’s knowledge of AutoZone’s mark
and his intent to create a mark confusingly similar to it.
AutoZone presented evidence that the AutoZone mark
was being extensively marketed in the Chicago area
(where there were over 100 AutoZone stores) at the time
that Strick chose to adopt the Oil Zone mark. The ad-
vertising AutoZone did was both national and local, so
someone like Strick would have had a hard time missing
it—especially since the record shows that Strick had been
working in the same industry as AutoZone before he
created Oil Zone.
No. 07-2136 19
In some circumstances, an intent to confuse may be
reasonably inferred from the similarity of the marks
where the senior mark has attained great notoriety. See
Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947,
963 (7th Cir. 1992). If the marketing and business
presence of the senior mark (in this case AutoZone) is
nearly ubiquitous in the geographic area where the junior
mark competes, a trier of fact can easily conclude that
the creator of a strikingly similar junior mark intended to
confuse. Here, a reasonable trier of fact could conclude
from Strick’s experience in the industry, AutoZone’s
extensive marketing of its mark in the area where Strick
did business, and the close similarity in design between
the marks that Strick designed the Oil Zone mark with
the intent to mislead consumers into believing that Oil
Zone was somehow affiliated with AutoZone. Whether
Strick was telling the truth when he testified that he
was not aware of the AutoZone mark when he created Oil
Zone is for the trier of fact to decide. See Stuart Hale Co.,
1 F.3d at 619 (“[T]he district court cannot weigh credibility
issues at the summary judgment stage.”).
In sum, we conclude from our analysis of the relevant
factors that a reasonable finder of fact could have
found that consumers might be led to believe that
AutoZone and Strick’s Oil Zone and Wash Zone are
affiliated with each other. AutoZone has therefore pre-
sented sufficient evidence to create a triable issue of fact
on the issue of likelihood of confusion. After its careful
and thorough examination, had the district court gone
on to resolve the factual issues that we have recited,
this case would be in a different posture on review. But
20 No. 07-2136
because there are unresolved genuine issues of material
fact, summary judgment was not appropriate. Since this
case will likely be tried to a judge rather than a jury,
nothing in this opinion should be read to foreclose the
new trier of fact from reaching the same ultimate con-
clusion—or an opposite holding—after the parties’ presen-
tation of the evidence at trial, provided that its decision
is supported by sufficient factual findings. This opinion
is not intended to project who should prevail at trial.
Nevertheless, to ensure a fresh analysis, Circuit Rule 36
shall apply on remand.
That brings us to the last issue: the application of the
doctrine of laches. In his brief, Strick asserts that the
district court’s judgment can still be affirmed, despite
erring on the likelihood-of-confusion issue, on the ground
that laches bars AutoZone’s suit. Although briefed in
Strick’s summary judgment motion, the district court
expressly declined to rule on that issue. Because a dis-
trict court’s decision to apply the doctrine of laches is
discretionary, see Hot Wax, Inc. v. Turtle Wax, Inc., 191 F.3d
813, 819 (7th Cir. 1999), we leave it to the district court
to determine, in the first instance, how it will exercise its
discretion.
III.
Viewing the facts in the light most favorable to
AutoZone, a reasonable trier of fact could find that con-
sumers are likely to be confused between the AutoZone
mark and the Oil Zone and Wash Zone marks. Accord-
ingly, the judgment of the district court is R EVERSED , and
No. 07-2136 21
the case is R EMANDED for further proceedings consistent
with this opinion.
9-11-08