The U.S. Court of Appeals for the 10th Circuit affirmed a grant of summary judgment that the use of the mark SINUSENSE was not likely to cause consumer confusion with the mark SINUCLEANSE because “overall, there is more than enough distinction between the two marks to prevent any likelihood of confusion.”  Water Pik, Inc. v. Med-Systems, Inc., Case No. 12-1065 (10th Cir. Aug. 12, 2013) (Hartz, J.)

Med-System sells products for cleaning sinus cavities under its federally registered trademark SINUCLEANSE.  Med-System has offered its product under the SINUCLEANSE mark since 1997, and the mark has been federally registered since 1998.  In 2008, Water Pik sought to market a new line of products for cleaning sinus cavities under the brand name SINUSENSE.  Med-System already had the same type of products on the market but under different brand names.

Water Pik brought an action against Med-Systems seeking a declaratory judgment that its use of the SINUSCLEANSE mark did not infringe any of Med-System’s trademarks.  Med-Systems filed a counter claim, asserting that Water Pik’s use of the SINUSCLEANSE mark infringed its SINUSENSE mark and constituted unfair competition under the Lanham Act. 

The district court found that Water Pik’s SINUSENSE mark was not likely to cause consumer confusion and awarded summary judgment to Water Pik.  Med-Systems appealed.

The 10th Circuit affirmed the finding that the SINUSENSE mark was not likely to cause confusion among consumers.  The 10th Circuit applied its six-factor test to evaluate the likelihood of confusion, namely, (i) evidence of actual confusion, (ii) the strength of the contesting mark, (iii) the degree of similarity between the competing marks, (iv) the intent of the alleged infringer in adopting the contested mark, (v) the degree of care that consumers are likely to exercise in purchasing the parties’ products, and (vi) the similarity of the parties’ products and the manner in which they market them.  Although the 10th Circuit agreed with the district court that products marketed under the SINUSENSE mark were not likely to cause consumer confusion with Med-Systems SINUCLEANSE products, it nevertheless concluded that the district court had erred in its analysis of the “intent” factor.  The district court found that the “intent” factor favored Med-Systems because Water Pik knew of Med-Systems’ SINUCLEANSE mark when it developed and marketed its SINUSENSE product line, and had earlier tried and failed to acquire Med-Systems.  However, the 10th Circuit stated that the analysis of the intent factor should focus on whether the alleged infringer intended to deceive customers about the source if its products by using a trademark similar to the other party’s trademark, rather than focusing on whether the alleged infringer intended to cause confusion by copying the other party’s products.