Ironhawk Technologies, Inc. v. Dropbox, Inc.

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
IRONHAWK TECHNOLOGIES, INC., a No. 19-56347
Delaware corporation,
Plaintiff-Appellant, D.C. No.
2:18-cv-01481-
v. DDP-JEM
DROPBOX, INC., a Delaware
corporation, ORDER AND
Defendant-Appellee. AMENDED
OPINION
Appeal from the United States District Court
for the Central District of California
Dean D. Pregerson, District Judge, Presiding
Argued and Submitted February 8, 2021
Pasadena, California
Filed April 20, 2021
Amended July 6, 2021
Before: A. WALLACE TASHIMA, MILAN D. SMITH,
JR., and MARY H. MURGUIA, Circuit Judges.
Order;
Opinion by Judge Milan D. Smith, Jr.;
Dissent by Judge A. Wallace Tashima
2 IRONHAWK TECH. V. DROPBOX
SUMMARY *
Lanham Act
The panel filed (1) an order granting a petition for
rehearing, amending the panel’s opinion, and denying a
petition for rehearing en banc; and (2) an amended opinion
reversing the district court’s grant of summary judgment in
favor of defendant Dropbox, Inc., vacating the judgment,
and remanding for trial in an action brought under the
Lanham Act by Ironhawk Technologies, Inc.
Ironhawk developed computer software that uses
compression and replication to transfer data efficiently in
“bandwidth-challenged environments.” It markets this
software under the name “SmartSync,” and it obtained a
trademark registration for SmartSync in 2007. Dropbox’s
“Smart Sync,” launched in 2017, is a feature of Dropbox’s
software suite that allows users to see and access files in their
Dropbox cloud storage accounts from a desktop computer
without taking up the computer’s hard drive space.
Ironhawk sued Dropbox for trademark infringement.
The panel held that there was a genuine dispute of
material fact as to the likelihood of consumer confusion
under a reverse confusion theory of infringement, which
occurs when a person who knows only of the well-known
junior user comes into contact with the lesser-known senior
user, and because of the similarity of the marks, thinks that
the senior user is the same as or is affiliated with the junior
*
This summary constitutes no part of the opinion of the court. It
has been prepared by court staff for the convenience of the reader.
IRONHAWK TECH. V. DROPBOX 3
user. Specifically, a reasonable jury could conclude that
consumers would believe Dropbox is a source of, or a
sponsor of, Ironhawk’s Smart Sync. The panel concluded
that, based on competing evidence, a genuine dispute of fact
remained as to the relevant consuming public. Applying the
Sleekcraft factors, the panel concluded that a reasonable trier
of fact could find a likelihood of confusion.
Dissenting, Judge Tashima wrote that he agreed with the
general trademark principles articulated by the majority, but
he was not persuaded that a reasonable jury could find a
likelihood of consumer confusion. Judge Tashima agreed
with the majority’s conclusion that the relevant consumer
class included not only Ironhawk’s existing military
customers, but also potential commercial customers to
whom Ironhawk said it marketed its SmartSync software.
Judge Tashima wrote that the majority erred, however, in
failing to consider that these potential customers were large,
sophisticated commercial enterprises, and any sale would be
subject to a prolonged sales effort and careful customer
decision making.
COUNSEL
Keith J. Wesley (argued), Lori Sambol Brody, and Matthew
L. Venezia, Brown George Ross LLP, Los Angeles,
California; Alex Kozinski, Law Office of Alex Kozinski,
Rancho Palos Verdes, California; for Plaintiff-Appellant.
Beth S. Brinkmann (argued), Covington & Burling LLP,
Washington, D.C.; Clara J. Shin, Jeffrey M. Davidson,
Matthew Q. Verdin, and Amy S. Heath, Covington &
Burling LLP, San Francisco, California; for Defendant-
Appellee.
4 IRONHAWK TECH. V. DROPBOX
ORDER
Defendant-Appellee Dropbox, Inc.’s petition for
rehearing (Dkt. 65) is GRANTED. The Opinion filed on
April 20, 2021 is amended by the Opinion filed concurrently
with this Order.
The panel unanimously voted to deny the petition for
rehearing en banc. The full court has been advised of the
petition for rehearing en banc and no judge of the court has
requested a vote on it. Fed. R. App. P. 35. The petition for
rehearing en banc is DENIED. No further petitions for
rehearing or rehearing en banc may be filed.
OPINION
M. SMITH, Circuit Judge:
Ironhawk Technologies, Inc. (Ironhawk) sued Dropbox,
Inc. (Dropbox) for trademark infringement and unfair
competition. The district court granted summary judgment,
concluding that Ironhawk could not prevail because a
reasonable trier of fact could not find a likelihood of
consumer confusion. Ironhawk appeals based on a theory of
reverse confusion. Because genuine issues of material fact
remain as to a likelihood of reverse confusion, we reverse,
vacate the judgment, and remand for trial.
FACTUAL AND PROCEDURAL BACKGROUND
I.
Ironhawk developed computer software that uses
compression and replication to transfer data efficiently in
IRONHAWK TECH. V. DROPBOX 5
“bandwidth-challenged environments.” Since 2004,
Ironhawk has marketed this software under the name
“SmartSync.” Ironhawk obtained a trademark registration
for SmartSync in 2007, which makes it the senior mark
holder and user in this case.
Dropbox produces cloud storage software that millions
of individuals and businesses use worldwide. “Smart Sync”
is a feature of Dropbox’s software suite that allows a user to
see and access files in his or her Dropbox cloud account from
a desktop computer without taking up the computer’s hard
drive space. Smart Sync is a feature of certain paid
subscription plans, not a stand-alone Dropbox product.
Dropbox launched Smart Sync in 2017, while it was aware
of Ironhawk’s senior SmartSync mark.
II.
Ironhawk asserts claims against Dropbox for violations
of the Lanham Act, 15 U.S.C. § 1051 et seq., and
California’s Unfair Competition Law, Cal. Bus. & Prof.
Code § 17200 et seq. Ironhawk alleges that Dropbox’s use
of the name Smart Sync intentionally infringes upon
Ironhawk’s SmartSync trademark and is likely to cause
confusion among consumers as to the affiliation of
Ironhawk’s product with Dropbox.
The district court granted summary judgment to
Dropbox, concluding that “[t]he overwhelming balance of
the Sleekcraft factors weighs against a likelihood of
confusion” such that “a reasonable trier of fact could not
conclude that Dropbox’s use of Smart Sync is likely to cause
consumer confusion.” The district court entered judgment,
and Ironhawk appeals.
6 IRONHAWK TECH. V. DROPBOX
JURISDICTION AND STANDARD OF REVIEW
We have jurisdiction pursuant to 28 U.S.C. § 1291. “The
decision to grant summary judgment in a trademark
infringement claim is reviewed de novo, and all reasonable
inferences are to be drawn in favor of the non-moving
party.” Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d
625, 630 (9th Cir. 2005). “Although disfavored in trademark
infringement cases, summary judgment may be entered
when no genuine issue of material fact exists.” Id. “[O]n a
defendant’s motion for summary judgment, not only does
the movant carry the burden of establishing that no genuine
dispute of material fact exists, but the court also views the
evidence in the light most favorable to the non-moving
party.” JL Beverage Co., LLC v. Jim Beam Brands Co.,
828 F.3d 1098, 1105 (9th Cir. 2016). To prevail at summary
judgment, “[t]he defendant-movant must demonstrate that,
even viewing the evidence in the light most favorable to the
plaintiff, the plaintiff cannot satisfy its burden to prove its
claims.” Id.ANALYSIS
I.
“A successful trademark infringement claim under the
Lanham Act requires a showing that the claimant holds a
protectable mark, and that the alleged infringer’s imitating
mark is similar enough to ‘cause confusion, or to cause
mistake, or to deceive.’” Surfvivor, 406 F.3d at 630 (quoting
KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.,
543 U.S. 111, 117 (2004)).
This appeal primarily focuses on the issue of consumer
confusion. “We have recognized two distinct claims in the
trademark infringement context: forward confusion and
IRONHAWK TECH. V. DROPBOX 7
reverse confusion. Forward confusion occurs when
consumers believe that goods bearing the junior mark came
from, or were sponsored by, the senior mark holder.” Id.(citations omitted). “By contrast, reverse confusion occurs
when consumers dealing with the senior mark holder believe
that they are doing business with the junior one.” Id. On
appeal, Ironhawk relies exclusively on a reverse confusion
theory of infringement.
We have explained that reverse confusion occurs when a
person who knows only of the well-known junior user comes
into contact with the lesser-known senior user, and because
of the similarity of the marks, mistakenly thinks that the
senior user is the same as or is affiliated with the junior user.
See Dreamwerks Prod. Grp., Inc. v. SKG Studio, 142 F.3d
1127, 1130 (9th Cir. 1998). This can occur when “the junior
user’s advertising 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[.]” 4 McCarthy on Trademarks and
Unfair Competition § 23:10 (5th ed. 2020) (citations and
footnotes omitted); see Dreamwerks, 142 F.3d at 1130 n.5.
Affiliation with a popular well-known brand may seem
beneficial, but reverse confusion carries consequences.
Reverse confusion can foreclose the senior user from
expanding into related fields and could place the senior
company’s goodwill in the hands of the junior user.
Dreamwerks, 142 F.3d at 1129. As the Sixth Circuit
explained, the result of reverse confusion “is that the senior
user loses the value of the trademark—its product identity,
corporate identity, control 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);
see also Commerce Nat’l Ins. Servs., Inc. v. Commerce Ins.
8 IRONHAWK TECH. V. DROPBOX
Agency, Inc., 214 F.3d 432, 445 (3d Cir. 2000) (“[T]he
doctrine of reverse confusion is designed to prevent the
calamitous situation [where] a larger, more powerful
company usurp[s] the business identity of a smaller senior
user.”).
When assessing reverse confusion on summary
judgment, we ask whether a genuine dispute of material fact
exists as to the likelihood of confusion. Specifically, whether
a reasonable jury could conclude that consumers would
believe Dropbox is the source of, or a sponsor of, Ironhawk’s
Smart Sync. See Surfvivor, 406 F.3d at 630. To answer this
question, we consider the following “Sleekcraft factors”:
(1) strength of the mark; (2) proximity of the
goods; (3) similarity of the marks;
(4) evidence of actual confusion;
(5) marketing channels used; (6) type of
goods and the degree of care likely to be
exercised by the purchaser; (7) defendant’s
intent in selecting the mark; and
(8) likelihood of expansion of the product
lines.
M2 Software, Inc. v. Madacy Ent., 421 F.3d 1073, 1080 (9th
Cir. 2005) (citing AMF Inc. v. Sleekcraft Boats, 599 F.2d
341, 348–49 (9th Cir. 1979) abrogated in part on other
grounds by Mattel, Inc. v. Walking Mountain Prods.,
353 F.3d 792, 810 n.19 (9th Cir. 2003)). These factors are
neither exhaustive nor dispositive; “it is ‘the totality of facts
in a given case that is dispositive.’” Pom Wonderful LLC v.
Hubbard, 775 F.3d 1118, 1125 (9th Cir. 2014) (quoting
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1140 (9th
Cir. 2002)).
IRONHAWK TECH. V. DROPBOX 9
II.
Before addressing the Sleekcraft factors, we must define
the relevant consumer market because “a court conducting a
trademark analysis should focus its attention on the relevant
consuming public.” Rearden LLC v. Rearden Com., Inc.,
683 F.3d 1190, 1214 (9th Cir. 2012).
Dropbox argues that the relevant consuming public is
limited to the United States Navy because that is Ironhawk’s
only active customer. To support this contention, Dropbox
submits evidence showing that Ironhawk generated
significant revenue between 2009 and 2019, with only one
non-military client, a national pharmacy chain, which paid
Ironhawk $32,000 in 2013. In addition, Dropbox contends
that the United States Navy, and therefore the relevant
consumer, could never be confused as to the source or
affiliation of SmartSync because the Navy exercises
significant care when purchasing products through its
military procurement process.
Ironhawk responds that the relevant consumer class
includes potential business partners and customers in the
broader commercial, non-military marketplace. According
to Ironhawk, we cannot limit the analysis to customers that
previously purchased SmartSync—targeted and potential
customers are relevant too. In so arguing, Ironhawk submits
evidence that it had one commercial customer (a national
pharmacy chain), that it actively markets SmartSync to other
potential commercial customers, and that it actively pursues
partnership opportunities with other commercial businesses.
For example, Ironhawk proposed implementing SmartSync
into products offered by two leading cloud storage
companies that are two of Dropbox’s biggest competitors.
Ironhawk contends these discussions were unsuccessful and
any future negotiations are foreclosed because neither
10 IRONHAWK TECH. V. DROPBOX
Dropbox Smart Sync competitor would risk the customer
confusion resulting from announcing their products were
“powered by SmartSync.” Ironhawk also submits evidence
that Dropbox itself explored acquiring Ironhawk before it
launched its Smart Sync feature, which suggests to Ironhawk
that the two companies target similar or related customers.
Based on this competing evidence, a genuine dispute of
material fact remains as to the relevant consuming public.
“[I]t is well established that confusion on the part of potential
consumers may be relevant.” Id. at 1215. And while
Ironhawk’s attempts to acquire commercial customers have
been largely unsuccessful, we must view the evidence in the
light most favorable to Ironhawk and draw all reasonable
inferences in its favor on summary judgment. JL Beverage
Co., 828 F.3d at 1104–05; Dreamwerks, 142 F.3d at 1130
n.3. Ironhawk had one commercial customer in the past and
submitted evidence of its recent attempts to acquire more.
Therefore, a reasonable jury could find that Ironhawk’s
potential consumers include commercial customers.
III.
We now turn to the Sleekcraft factors, each of which
presents a highly factual inquiry. While we have described
this inquiry as exhausting, the list of factors is “neither
exhaustive nor exclusive.” E. & J. Gallo Winery v. Gallo
Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1992) (citation
omitted). Instead, “the factors are intended to guide the court
in assessing the basic question of likelihood of confusion.”
Id. (citing Eclipse Assocs. Ltd. v. Data Gen. Corp., 894 F.2d
1114, 1118 (9th Cir. 1990)). “The presence or absence of a
particular factor does not necessarily drive the determination
of a likelihood of confusion.” Id. The factors should be
considered together to determine, under the totality of the
circumstances, whether a likelihood of confusion exists. See
IRONHAWK TECH. V. DROPBOX 11
Pom Wonderful, 775 F.3d at 1125 (quoting Entrepreneur
Media, 279 F.3d at 1140). Where conflicting facts render it
unclear whether a likelihood of confusion exists, summary
judgment is inappropriate. See JL Beverage Co., 828 F.3d
at 1106.
A.
We first address the strength of the two marks. Because
the question in reverse confusion cases is “whether
consumers doing business with the senior user might
mistakenly believe that they are dealing with the junior user”
we evaluate the conceptual strength of Ironhawk’s mark and
compare it to the commercial strength of Dropbox’s mark.
See id. at 1107 (quoting Dreamwerks, 142 F.3d at 1130).
With respect to the conceptual strength of SmartSync,
“[t]rademark law offers greater protection to marks that are
‘strong,’ i.e., distinctive.” E. & J. Gallo Winery, 967 F.2d at
1291. Marks are “classified into one of five categories of
increasing distinctiveness” that warrant increasing
protection: (1) generic, (2) descriptive, (3) suggestive,
(4) arbitrary, and (5) fanciful. Zobmondo Ent., LLC v. Falls
Media, LLC, 602 F.3d 1108, 1113 (9th Cir. 2010). “Generic
marks are not eligible for trademark protection.” Id.Descriptive marks are not inherently distinctive and are not
entitled to trademark protection unless they have acquired
secondary meaning. Id. Where, as here, the Patent and
Trademark Office issued a registration without requiring
proof of secondary meaning, the federal registration
provides prima facie evidence that the SmartSync mark is
inherently distinctive (i.e., at least suggestive). Id. at 1111–
14. Dropbox, however, may rebut this presumption.
While Dropbox does not challenge the validity of the
mark, it contends that SmartSync is descriptive, which it
12 IRONHAWK TECH. V. DROPBOX
contends would lessen or eliminate any confusion. The
district court agreed, concluding that SmartSync is
descriptive because it “appears to describe at least some of
the characteristics of Ironhawk’s product, namely
synchronization and ‘intelligent’ transport, compression,
and synchronization.”
On summary judgment, however, the question is whether
a reasonable jury could find that Ironhawk’s SmartSync
mark is at least suggestive. Importantly, the line between
descriptive and suggestive marks is elusive, and “[w]hich
category a mark belongs in is a question of fact.” Zobmondo,
602 F.3d at 1113. “Descriptive marks define a particular
characteristic of the product in a way that does not require
any imagination[.]” JL Beverage, 828 F.3d at 1107.
Suggestive marks, by contrast, “suggest a product’s features
and require consumers to exercise some imagination to
associate the suggestive mark with the product.” Id. As we
explained in Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 1197
(9th Cir. 2009), “legions of trademark lawyers can stay busy
arguing about how marks in the middle, not so plainly
descriptive, nor so plainly distinctive, should be
categorized.”
While we agree with the district court that Ironhawk’s
mark could be considered descriptive, given the presumption
of distinctiveness established by SmartSync’s federal
registration, and the elusive nature of the inquiry, a
reasonable jury could conclude the mark is suggestive. The
jury, therefore, should determine whether SmartSync is
descriptive or suggestive. 1
1
Notably, Ironhawk submitted evidence under seal that Dropbox
may consider SmartSync to be more than descriptive.
IRONHAWK TECH. V. DROPBOX 13
Whether descriptive or suggestive, the important
question in a reverse confusion case is “whether the junior
mark is so [commercially] strong as to overtake the senior
mark.” Walter v. Mattel, Inc., 210 F.3d 1108, 1111 n.2 (9th
Cir. 2000). Accordingly, we assess the commercial strength
of Dropbox’s Smart Sync mark and ask whether it is able to
swamp the reputation of Ironhawk’s SmartSync with a much
larger advertising campaign. See Dreamwerks, 142 F.3d
at 1130 n.5.
The district court concluded that the commercial strength
of Dropbox’s mark was of “little import” because
“Ironhawk’s SmartSync mark is conceptually weak.” In so
concluding, the district court explained that “where a mark
is conceptually weak, it is less likely that consumers will
associate it with any source, even a commercially strong
junior user.” The district court erred for two reasons.
First, whether Dropbox rebutted the presumption of
distinctiveness established by SmartSync’s federal
registration is for the jury to decide. Second, given the
evidence Ironhawk presented of Smart Sync’s commercial
strength, it is for the jury to decide “whether [Dropbox’s]
junior mark is so [commercially] strong as to overtake
[Ironhawk’s] senior mark.” Walter, 210 F.3d at 1111 n.2.
As we noted in Cohn, “in a reverse confusion claim, a
plaintiff with a commercially weak mark is more likely to
prevail than a plaintiff with a stronger mark, and this is
particularly true when the plaintiff’s weaker mark is pitted
against a defendant with a far stronger mark.” Cohn v.
Petsmart, Inc., 281 F.3d 837, 841 (9th Cir. 2002) (per
curiam) (quoting A & H Sportswear, Inc. v. Victoria’s Secret
Stores, Inc., 237 F.3d 198, 231 (3d Cir. 2000)).
Ironhawk offers the following evidence of Smart Sync’s
commercial strength: (1) Dropbox spends $7,000 per month
14 IRONHAWK TECH. V. DROPBOX
on Google keyword advertising related to “Smart Sync”;
(2) Dropbox made significant marketing expenditures that
prominently promoted the launch of Smart Sync alongside
other features of Dropbox’s software suite; (3) Dropbox
made significant online advertising expenditures for Smart
Sync in 2018; (4) Google searches for “smartsync” or “smart
sync” yield results that prominently feature Dropbox’s
software; and (5) Dropbox is a widely recognized brand with
millions of users. Given the extensive efforts to associate
Smart Sync with Dropbox, Ironhawk contends that if
Dropbox’s Smart Sync makes a major misstep and stains its
reputation with the public, Ironhawk’s SmartSync could
suffer with it. See Dreamwerks, 142 F.3d at 1130.
Based on the evidence presented, a reasonable jury could
find that Dropbox’s Smart Sync is commercially strong, and
when considered against the conceptual strength of
Ironhawk’s SmartSync mark, is able to swamp Ironhawk’s
reputation with a much larger advertising campaign. See id.at 1130 n.5.
B.
We next turn to the relatedness of the goods and services.
Goods and services are related when they are
complementary, sold to the same class of purchasers, or
similar in use and function. Sleekcraft, 599 F.2d at 350.
Ironhawk “need not establish that the parties are direct
competitors to satisfy the proximity or relatedness factor.”
Rearden, 683 F.3d at 1212. Instead, “[r]elated goods (or
services) are those ‘which would be reasonably thought by
the buying public to come from the same source if sold under
the same mark.’” Id. (quoting Sleekcraft, 599 F.2d at 348
n.10).
IRONHAWK TECH. V. DROPBOX 15
The district court concluded that the products were
unrelated, holding that “[i]t is undisputed that the United
States Navy is the only user of Ironhawk’s product . . . [and]
[t]he mere fact that both products deal in some manner with
the transfer of electronic data is not enough to render the
products similar for purposes of a trademark analysis.”
Ironhawk disagrees and argues that the products are
similar because they perform the same function: they
“facilitate file sharing amongst teams.” Ironhawk also
suggests that “both products provide a solution to the same
problem: how to make files accessible to multiple remote
users.” Ironhawk further argues that both products occupy
the same data management field and involve transferring
large files. Finally, Ironhawk notes that Dropbox explored
acquiring Ironhawk before launching Smart Sync, which to
Ironhawk suggests the two companies offer complementary
products.
Dropbox responds that the products are unrelated.
Dropbox focuses on the principal purpose of Smart Sync—
to provide cloud storage and free up disk space—and the
principal purpose of SmartSync—to compress, transfer, and
replicate large files in limited bandwidth environments. In
Dropbox’s view, Smart Sync addresses limited disk space
while SmartSync addresses limited bandwidth. Dropbox
also contends that SmartSync does not offer cloud storage,
which is a central feature of Smart Sync. Dropbox further
emphasizes that Smart Sync is used by individuals and
businesses, while SmartSync’s only active user is the United
States military.
Based on this competing evidence, a reasonable jury
could find that Smart Sync and SmartSync are related, sold
to the same class of purchasers, or similar in use and
function.
16 IRONHAWK TECH. V. DROPBOX
C.
We next assess the similarity of the marks. To do so, we
rely on three general principles. “First, ‘[s]imilarity is best
adjudged by appearance, sound, and meaning.’” Fortune
Dynamic, Inc. v. Victoria’s Secret Stores Brand Mgmt., Inc.,
618 F.3d 1025, 1032 (9th Cir. 2010) (quoting Entrepreneur
Media, 279 F.3d at 1144). “Second, the ‘marks must be
considered in their entirety and as they appear in the
marketplace.’” Id. (quoting GoTo.com, Inc. v. Walt Disney
Co., 202 F.3d 1199, 1206 (9th Cir. 2000)). “Third,
‘similarities are weighed more heavily than differences.’” Id.(citation omitted). “Obviously, the greater the similarity
between the two marks at issue, the greater the likelihood of
confusion.” GoTo.com, Inc., 202 F.3d at 1206.
The district court acknowledged that SmartSync and
Smart Sync are virtually identical in sight, sound, and
meaning, but, relying on Cohn, 281 F.3d 837, concluded that
this factor weighed against the likelihood of confusion
because “each party consistently includes its business name
or house mark alongside its version of the disputed mark.”
While the district court correctly concluded that a
company’s consistent use of a house mark can reduce the
likelihood of confusion, in a reverse confusion case the
junior user’s use of a house mark can also aggravate
confusion by reinforcing the association between the mark
and the junior user. See Sleekcraft, 599 F.2d at 351; A & H
Sportswear, 237 F.3d at 230.
We addressed how a house mark can aggravate
confusion in Americana Trading Inc. v. Russ Berrie & Co.,
966 F.2d 1284 (9th Cir. 1992). In that case, a manufacturer
sold stuffed teddy bears using its “Wedding Bears”
trademark. Id. at 1286. A competitor later started selling a
IRONHAWK TECH. V. DROPBOX 17
line of teddy bears that included a permanent tag with
“Wedding Bear” on one side and its house mark on the other.
Id. We found that the competitor’s use of its house mark did
not negate the similarity of the marks because use of the
house mark “may serve to create reverse confusion that [the
competitor], and not [plaintiff], is the source of [plaintiff]’s
‘Wedding Bears.’” Id. at 1288.
Not only can using a house mark aggravate reverse
confusion, the district court also erred by relying on Cohn.
In Cohn, the senior user was a veterinary clinic, Critter
Clinic, that used the tagline “Where Pets Are Family” in its
advertising. Cohn, 281 F.3d at 839. The junior user was the
local Petsmart pet store, which offered in-store veterinary
services and displayed the same “Where Pets Are Family”
tagline in its advertising. Id. We concluded that the marks
were dissimilar when viewed in context because the parties
always used their house marks (Critter Clinic and Petsmart)
alongside the taglines and because the house marks, rather
than the taglines, were the dominant aspects of the overall
marks. Id. at 842.
Cohn’s reasoning does not apply here because
SmartSync is not a tagline or slogan, it is the product name,
which Ironhawk contends is also its dominant commercial
identity. For example, Ironhawk presents deposition
testimony from an IBM employee who explained some
people in the military are familiar with SmartSync but not
with Ironhawk. In addition, Ironhawk’s CEO declared that,
“oftentimes when I go into a customer’s briefing room, only
SmartSync will be up on the board,” not Ironhawk. Ironhawk
also presents evidence that the parties do not always use their
house marks alongside the Smart Sync and SmartSync
marks, which contradicts the district court’s finding. And,
when Dropbox does use its house mark, that can aggravate
18 IRONHAWK TECH. V. DROPBOX
reverse confusion. A & H Sportswear, 237 F.3d at 230;
Americana Trading, 966 F.2d at 1288.
Based on this evidence, a reasonable jury could find that
the marks are similar and that Dropbox’s use of its house
mark aggravates the likelihood of reverse confusion.
D.
We next address whether Ironhawk presented evidence
of actual confusion between Smart Sync and SmartSync.
“Evidence of actual confusion by consumers is strong
evidence of likelihood of confusion.” Surfvivor, 406 F.3d at
633. “Because of the difficulty in garnering such evidence,”
however, “the failure to prove instances of actual confusion
is not dispositive.” Sleekcraft, 599 F.2d at 353 (citing Drexel
Enters., Inc. v. Hermitage Cabinet Shop, Inc., 266 F. Supp.
532, 537 (N.D. Ga. 1967)). Therefore, “this factor is
weighed heavily only when there is evidence of past
confusion or, perhaps, when the particular circumstances
indicate such evidence should have been available.” Id.Ironhawk relies on testimony from two witnesses as
evidence of actual confusion. The first, Ironhawk’s CEO,
declares that “unknown third parties from the Navy at trade
shows have expressed concern about ‘double purchasing’
SmartSync”, and “at a recent trade show, during discussions
with . . . a big data analytics company, [he] was asked
whether Ironhawk was affiliated with Dropbox.” He further
states that, “in a 2018 meeting with [a leading cloud storage
company], Ironhawk was asked about the relationship
between its SmartSync[] and Dropbox[’s Smart Sync].”
Ironhawk’s other witness, an IBM employee who sells
Ironhawk products, testified in his deposition that consumers
to whom he pitched SmartSync believed they already owned
IRONHAWK TECH. V. DROPBOX 19
it, when they actually owned similarly named products from
Dropbox or Salesforce.
Dropbox responds that Ironhawk’s CEO’s declaration is
insufficient to show actual confusion because it does not
“identify any specific individuals who were confused; rather
he made uncorroborated statements that various unnamed
third parties or individuals had mixed up, or were concerned
that others would mix up, Ironhawk and Dropbox.” The
district court agreed by not crediting Ironhawk’s evidence
and finding no evidence of actual confusion.
However, while a “district court can disregard a self-
serving declaration that states only conclusions and not facts
that would be admissible evidence,” Ironhawk’s CEO’s
declaration is not devoid of specific facts. See Nigro v. Sears,
Roebuck & Co., 784 F.3d 495, 497–98 (9th Cir. 2015). The
lack of certain specific details goes to the weight of the
testimony, not its admissibility. See id. at 499. And “the
weight is to be assessed by the trier of fact at trial, not to be
the basis to disregard the evidence at the summary judgment
stage.” Id.Dropbox also challenges additional evidence submitted
by the IBM employee because it “consists of fabricated
emails, ghostwritten by Ironhawk’s CEO.” In response to
this allegation, Ironhawk submits deposition testimony from
the IBM employee who testified that his email, although
drafted by Ironhawk’s CEO, reflects his own views. What
weight to afford that testimony and the accompanying emails
is also a question for a jury.
Ultimately, Ironhawk offered evidence of actual
confusion among actual or potential customers. While we
have some doubt that the jury will find this factor to be in
Ironhawk’s favor, it is evidence a reasonable jury could rely
20 IRONHAWK TECH. V. DROPBOX
on to support a finding of actual confusion or when assessing
a likelihood of confusion under the totality of the
circumstances.
E.
We next address whether the parties’ marketing channels
overlap. “In assessing marketing channel convergence,
courts consider whether the parties’ customer bases overlap
and how the parties advertise and market their products.”
Pom Wonderful, 775 F.3d at 1130.
The district court concluded that the parties use different
marketing channels because “Dropbox markets via the
internet to customers who self-register on Dropbox’s
website, while Ironhawk attends military trade shows and
obtains contracts through military bidding processes.”
Ironhawk disagrees, arguing that the parties use similar
marketing channels because both products are advertised on
the General Services Administration (GSA) website, and
both companies employ salespeople to sell their products.
Dropbox counters that no substantial overlap exists
because Dropbox’s marketing activities are conducted
primarily on the internet, while Ironhawk focuses on military
trade shows. Dropbox also challenges Ironhawk’s evidence,
arguing that Dropbox does not advertise on the GSA
website, and even if other vendors or manufacturers offer
Dropbox products on that site, none of the Dropbox products
offered mention Smart Sync in the online product listing. 2
Dropbox also presents evidence that, unlike Ironhawk,
2
Ironhawk notes that while Smart Sync is not specifically listed on
the GSA website, each of the Dropbox plans listed include Smart Sync
as a feature.
IRONHAWK TECH. V. DROPBOX 21
Dropbox’s marketing does not specifically target the
military.
The evidence presented suggests very little overlap
between the parties’ marketing channels. Notably, both
companies employing salespeople is of little significance
without evidence those salespeople target the same class of
customers. Cf. Network Automation, Inc. v. Advanced Sys.
Concepts, Inc., 638 F.3d 1137, 1151 (9th Cir. 2011) (“[I]t
would be the rare commercial retailer that did not advertise
online, and the shared use of a ubiquitous marketing channel
does not shed much light on the likelihood of consumer
confusion.”). While this factor seems to weigh against a
finding of a likelihood of confusion, the trier of fact should
determine what weight to afford it when considering the
totality of the circumstances.
F.
Under the sixth Sleekcraft factor, we assess the
sophistication of the customers and ask “whether a
‘reasonably prudent consumer’ would take the time to
distinguish between the two product lines.” Surfvivor,
406 F.3d at 634. “When the buyer has expertise in the field,”
or “the goods are expensive, the buyer can be expected to
exercise greater care in his purchases.” Sleekcraft, 599 F.2d
at 353; see Walter, 210 F.3d at 1112.
The district court concluded that this factor favors
Dropbox and explained:
It is undisputed that the only user of
Ironhawk’s product is the United States
Navy, and that it takes years for the Navy to
approve Ironhawk’s proposals, and only then
after numerous meetings with technical
22 IRONHAWK TECH. V. DROPBOX
crews. It is also undisputed that some of
Ironhawk’s SmartSync licenses cost
thousands and tens of thousands of dollars.
Although the cost of Dropbox services is
much more modest, the high degree of care
exercised by the Navy, particularly for such
expensive products as Ironhawk SmartSync
licenses, weighs heavily against likelihood of
confusion.
Ironhawk acknowledges that the Unites States Navy is a
sophisticated consumer but argues that the likelihood of
confusion remains high because it also markets SmartSync
to commercial customers, even if those efforts have been
largely unsuccessful. Dropbox responds that this factor
looks at a party’s “typical buyer,” Sleekcraft, 599 F.2d
at 353, and here, the only typical buyer Ironhawk has is the
United States Navy.
As we concluded above, a reasonable jury could find that
Ironhawk’s relevant customer base extends beyond the
United States Navy. However, the dissent argues that we end
our analysis prematurely and err “by failing to consider the
type of commercial customers Ironhawk is targeting and the
kind of sales it is proposing.” In this regard, the dissent
contends that Ironhawk only targets “large, sophisticated
buyers” and “the sophistication of potential commercial
customers, the expense of the product, and the manner in
which Ironhawk markets its product—wholly eliminate any
realistic possibility of consumer confusion in this case.”
But as we noted above, Ironhawk offered evidence of
actual confusion among these same sophisticated potential
commercial customers. See discussion supra Section III.D.
Viewing this evidence in the light most favorable to
IRONHAWK TECH. V. DROPBOX 23
Ironhawk, together with the genuine disputes presented on
the remaining factors, demonstrates that a rational trier of
fact could find that confusion is probable. See JL Beverage,
828 F.3d at 1105; M2 Software, Inc., 421 F.3d at 1085(quoting Murray v. CNBC, 86 F.3d 858, 861 (9th Cir. 1996)).
Therefore, Dropbox’s sophisticated buyer argument fails at
the summary judgment stage, and the trier of fact should
consider this factor on remand.
G.
We next assess Dropbox’s intent to infringe. This factor
“favors the plaintiff ‘where the alleged infringer adopted his
mark with knowledge, actual or constructive, that it was
another’s trademark.’” JL Beverage, 828 F.3d at 1111–12
(quoting Brookfield Commc’ns, Inc. v. W. Coast Ent. Corp.,
174 F.3d 1036, 1059 (9th Cir. 1999)). In the reverse
confusion context, we “ask whether there is some evidence
that the junior user, when it knew of the senior user, was at
fault for not adequately respecting the rights of the senior
user.” 4 McCarthy on Trademarks and Unfair Competition
§ 23:10 (5th ed. 2020). Intent can be shown through
evidence that the junior user deliberately intended to push
the senior out of the market by flooding the market with
advertising to create reverse confusion, or “by evidence that,
for example, the [junior] knew of the mark, should have
known of the mark, intended to copy the [senior], failed to
conduct a reasonably adequate trademark search, or
otherwise culpably disregarded the risk of reverse
confusion.” Marketquest Grp., Inc. v. BIC Corp., 862 F.3d
927, 934–35 (9th Cir. 2017) (citing Freedom Card, Inc. v.
JPMorgan Chase & Co., 432 F.3d 463, 473 (3d Cir. 2005)).
While Dropbox argues it was not aware of Ironhawk
when it chose the name Smart Sync in 2015, there is no
dispute that Dropbox knew of Ironhawk’s SmartSync mark
24 IRONHAWK TECH. V. DROPBOX
before it launched Smart Sync to the public. 3 Therefore,
based on the evidence presented, a reasonable jury could find
that Dropbox “culpably disregarded the risk of reverse
confusion.” See id.; see also Dreamwerks, 142 F.3d at 1132(remanding for trial where “[c]ounsel for DreamWorks
conducted a diligent search and discovered the Dreamwerks
mark, yet failed to make accommodations or select a
different mark.”).
H.
The final Sleekcraft factor assesses the likelihood of
expansion of product lines. In the context of non-competing
goods, “a ‘strong possibility’ that either party may expand
his business to compete with the other will weigh in favor of
finding that the present use is infringing.” Sleekcraft,
599 F.2d at 354.
The district court concluded that Ironhawk did not
present “evidence of a ‘strong possibility’ of expansion into
the consumer market” due to Ironhawk’s failure to obtain
non-military clients and the limited detail about its recent
discussions with potential commercial clients.
Disagreeing with the district court’s determination,
Ironhawk argues this factor favors a likelihood of confusion
because Ironhawk is engaged in ongoing efforts to expand
into the commercial, non-military market. Ironhawk
acknowledges its limited success, but argues its efforts to
acquire additional commercial clients are sufficiently
concrete to establish a strong possibility of future expansion.
Ironhawk relies on Wendt v. Host International, Inc.,
3
The specifics facts surrounding this knowledge are part of the
record filed under seal.
IRONHAWK TECH. V. DROPBOX 25
125 F.3d 806 (9th Cir. 1997), where we held that a television
actor made the requisite showing by presenting “evidence
that he would like to appear in advertisements for beer and
ha[d] declined offers from small breweries in order to be
available to a large brewery.” Id. at 814. Ironhawk argues
that its plans and future prospects are at least as concrete and
plausible as those of the actor in Wendt.
Dropbox responds that Ironhawk’s efforts to attract
commercial customers are too speculative to show a “strong
possibility” of expansion. Dropbox relies on Surfvivor, 406
F.3d at 634, where we held that an “expressed interest in
expanding [a] product line” is insufficient to show a strong
possibility of expansion.
While Ironhawk frames its arguments as expansion,
Ironhawk already markets to commercial customers and a
reasonable jury could include those potential customers in
the relevant consumer base. Ironhawk also argues it intends
to expand into the cloud storage business, but the evidence
presented does not appear to meaningfully support that
contention. Therefore, this factor is neutral and the trier of
fact should determine what significance to afford it when
considering the totality of the circumstances on remand.
CONCLUSION
Each of the Sleekcraft factors presents a highly factual
inquiry that considers competing evidence. So too does
balancing these factors to determine, under the totality of the
circumstances, whether a likelihood of confusion exists.
Based on this highly factual inquiry, we conclude that
genuine issues of material fact remain.
In so holding, we do not conclude that the trier of fact
will find the Sleekcraft factors in Ironhawk’s favor, or that a
26 IRONHAWK TECH. V. DROPBOX
likelihood of confusion exists under the totality of the
circumstances. That is not our inquiry on summary
judgment. Instead, we view the evidence in the light most
favorable to Ironhawk, draw all reasonable inferences in
Ironhawk’s favor, and ask whether Dropbox carried its
burden to establish that no genuine disputes of material fact
exist as to the likelihood of confusion between Smart Sync
and SmartSync. We conclude that Dropbox has not met that
high burden. Accordingly, because a reasonable trier of fact
could find a likelihood of confusion, we reverse the grant of
summary judgment, vacate the judgment, and remand for
trial. 4
REVERSED, VACATED, AND REMANDED.
TASHIMA, Circuit Judge, dissenting:
While I agree with the general trademark principles
articulated by the majority, which should guide our decision
of this case, I part ways with the majority when it comes to
the application of those principles to the record facts of this
case. I am not persuaded that a reasonable jury could find a
likelihood of consumer confusion. I, therefore, respectfully
dissent.
This is a reverse confusion trademark infringement case.
In such a case, we apply the familiar eight-factor Sleekcraft
matrix. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49
(9th Cir. 1979). But, as our case law cautions, the Sleekcraft
4
Because Ironhawk’s claim under California’s Unfair Competition
Law is derivative of Ironhawk’s Lanham Act trademark infringement
claim, we reverse and remand that claim as well.
IRONHAWK TECH. V. DROPBOX 27
factors “must be applied in a flexible fashion,” not as “a rote
checklist,” because “[a] determination may rest on only
those factors that are most pertinent to the particular case
before the court.” Rearden LLC v. Rearden Com. Inc.,
683 F.3d 1190, 1209 (9th Cir. 2012). The majority,
unfortunately, has taken the rote-checklist approach.
To begin, I agree with the majority that we must first ask
whose confusion matters. “[A] court conducting a trademark
analysis should focus its attention on the relevant consuming
public.” Maj. Op. at 9 (quoting Rearden, 683 F.3d at 1214).
I also agree with the majority that the relevant consuming
public here includes not only the United States military—
Ironhawk’s only customer—but also potential customers in
the commercial marketplace. It is true that, to date,
Ironhawk has had very little success appealing to
commercial customers. Since 2009, Ironhawk has had only
a single non-military customer—a national pharmacy chain
that paid Ironhawk $32,000 in 2013. Ironhawk, however,
has presented evidence that its product has non-military
applications, that it markets to potential commercial
customers, and that it has had some—albeit quite limited—
success in attracting those customers in the past. Viewing
this evidence in the light most favorable to Ironhawk, as we
must on summary judgment, a reasonable jury could find
that Ironhawk’s relevant consumer class is not limited to the
United States military. As the majority points out, “it is well
established that confusion on the part of potential consumers
may be relevant.” Maj. Op. at 10 (quoting Rearden, 683
F.3d at 1215).
There is, however, no evidence that the relevant
consumer class includes ordinary consumers. In a
declaration, Ironhawk CEO David Gomes tells us that
Ironhawk has pursued commercial opportunities with two
28 IRONHAWK TECH. V. DROPBOX
leading cloud storage companies, a national pharmacy chain,
a leading energy technology company, and a leading data
analytics company. These are all large, sophisticated
buyers. 1
Ironhawk’s product catalog confirms that it is marketing
“enterprise software” and targeting sophisticated
enterprises. The catalog, for instance, offers for sale annual
licenses to SmartSync servers. These licenses sell for
between $5,854 and $20,000 per server, and the catalog
describes the product in the following, highly technical
language:
SmartSync DCS Server provides bandwidth-
efficient data distribution over HTTP and
HTTPS to and from remote SmartSync®
Client, Peer, and Server nodes. Standard
Edition features include the concurrent
sending and/or receiving of data from remote
nodes, has drop folders for easy and
automatic shipping of files to remote
destinations, and a web browser based user-
interface. Professional Edition features have
all Standard Edition features with the
addition of priority-based bandwidth
allocation for data transfers, bandwidth
scheduling, and the plugin compatibility with
SmartSync® SmartVideo™ Video
Compression. Enterprise Edition has all
Professional Edition Features with the
addition of custom enterprise data workflows
1
Because the record is sealed, I do not reveal the identities of these
companies. It cannot be disputed, however, that they are all
sophisticated enterprises.
IRONHAWK TECH. V. DROPBOX 29
integration, FIPS 140-2 compliant transport,
UDP multicast, and the plugin compatibility
of custom processing of customer specific
data. Cost is for annual license per CPU. See
full feature matrix for additional features.
Only an expert in the information technology field could
understand this product description. And such buyers would
be expected to exercise great care before purchasing annual
licenses costing as much as $20,000 per server.
The evidence further shows that Ironhawk’s marketing
efforts involve lengthy discussions and negotiations between
Ironhawk and its potential customers. Ironhawk CEO David
Gomes states further in his declaration that Ironhawk has
“discussed” SmartSync with its potential commercial
customers and emphasizes the “countless face-to-face
meetings” he has had with its customers. There is no “add
to cart” or “buy now” button on Ironhawk’s website.
All of these factors—the sophistication of potential
commercial customers, the expense of the product, and the
manner in which Ironhawk markets its product—wholly
eliminate any realistic possibility of consumer confusion in
this case. 2
● First, “[w]here the relevant buyer class is
composed only of professionals or commercial
2
I focus here on point of sale confusion rather than initial interest
confusion because, although Ironhawk briefly mentions initial interest
confusion on the penultimate page of its reply brief, it did not raise the
issue in its opening brief. The issue of initial interest confusion is
therefore waived. See Vasquez v. Rackauckas, 734 F.3d 1025, 1054 (9th
Cir. 2013) (noting that we ordinarily do not consider arguments raised
for the first time in reply).
30 IRONHAWK TECH. V. DROPBOX
buyers familiar with the field, they are usually
knowledgeable enough to be less likely to be
confused by trademarks that are similar.”
4 McCarthy on Trademarks and Unfair
Competition § 23:101 (5th ed. 2021).
● Second, “[i]f the goods are expensive, the
reasonably prudent buyer does not buy casually,
but only after careful consideration.” Id. § 23:96.
“[T]he average purchaser of an automobile,” for
example, “will no doubt devote more attention to
examining different products and determining
their manufacturer or source than will the
average purchaser of a ball of twine.”
McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d
1126, 1137 (2d Cir. 1979), superseded by rule on
other grounds as stated in Bristol-Myers Squibb
Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1044
(2d Cir. 1992).
● Third, confusion is less likely when the
prospective sales in question “are not impulse
purchases, but rather are subject to long sales
efforts and careful customer decision making,”
Checkpoint Sys., Inc. v. Check Point Software
Techs., Inc., 269 F.3d 270, 285 (3d Cir. 2001), or
follow “extensive negotiations and discussions,”
Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d
376, 381 (7th Cir. 1996).
Given the presence of all of these factors, this is plainly a
case in which Ironhawk’s potential commercial customers
“would take the time to distinguish between” Ironhawk’s
SmartSync and the cloud storage products offered by
Dropbox, obviating any plausible risk of confusion. See
IRONHAWK TECH. V. DROPBOX 31
Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 634
(9th Cir. 2005).
“To determine whether there is a likelihood of confusion
between the parties’ allegedly related goods and services,”
we ordinarily consider the eight-factor Sleekcraft test:
(1) strength of the mark; (2) proximity of the
goods; (3) similarity of the marks;
(4) evidence of actual confusion;
(5) marketing channels used; (6) type of
goods and the degree of care likely to be
exercised by the purchaser; (7) defendant’s
intent in selecting the mark; and
(8) likelihood of expansion of the product
lines.
M2 Software, Inc. v. Madacy Entm’t, 421 F.3d 1073, 1080
(9th Cir. 2005) (citing Sleekcraft, 599 F.2d at 348–49). But,
to repeat, these factors “must be applied in a flexible
fashion,” not as “a rote checklist.” Rearden, 683 F.3d
at 1209. And, if we follow Rearden’s admonition, we
discover that, here, that determination rests on a single
Sleekcraft factor: The type of goods and the degree of care
likely to be exercised by the purchaser. In this case, this
factor is highly probative, and none of the other factors, even
when viewed in the light most favorable to Ironhawk,
supports a finding of consumer confusion. Significantly,
Ironhawk “must show sufficient evidence to permit a
rational trier of fact to find that confusion is ‘probable,’ not
merely ‘possible.’” M2 Software, Inc., 421 F.3d at 1085(emphasis added) (quoting Murray v. CNBC, 86 F.3d 858,
861 (9th Cir. 1996)). Ironhawk has not made this showing.
The Majority insists that Ironhawk has adduced
“evidence of actual confusion among [its] sophisticated
32 IRONHAWK TECH. V. DROPBOX
potential commercial customers.” Maj. Op. at 22. But the
evidence of actual confusion that the Majority relies on,
citing Part III.D of its opinion, relates only to initial interest
confusion. And, as I have pointed out, see footnote 2, supra,
Ironhawk has waived that argument. Ironhawk did not raise
its initial interest confusion argument until the penultimate
page of its Reply Brief. Dropbox has had no opportunity to
address or counter it, and the district court did not address it.
The Majority offers no reason why, contrary to our clearly
established law, the key issue in this case should rest on an
argument that Ironhawk did not timely raise, Dropbox had
no opportunity to respond to, and the district court did not
address.
• ● •
As I stated at the beginning of this dissent, I agree with
the majority’s focus on the need to define the relevant
consumer class and its conclusion that such a class includes
not only Ironhawk’s existing military customers, but also
potential commercial customers to whom Ironhawk says it
markets its SmartSync software. The majority errs,
however, by ending its analysis there, and by failing to
consider the type of commercial customers Ironhawk is
targeting and the kind of sales it is proposing. These
customers are large, sophisticated commercial enterprises.
They are purchasing a highly technical and expensive
product. And any sale would be subject to a prolonged sales
effort and careful customer decision making.
These circumstances, disclosed by the record and
uncontroverted, simply do not support a finding of probable
consumer confusion, given the sophistication of the
customer class. Because I would affirm the judgment of the
district court on this basis, I respectfully dissent.