United States District Court, D. Minnesota
EYEBOBS, LLC, a Delaware limited liability corporation, Plaintiff,
SNAP, INC., a Delaware corporation, Defendant.
R. Steffen, FAEGRE BAKER DANIELS LLP, for plaintiff Eyebobs,
L. Wilson and Christopher T. Varas, KILPATRICK TOWNSEND &
STOCKTON LLP, and Kristen G. Marttila, LOCKRIDGE GRINDAL
NAUEN P.L.L.P, for defendant Snap, Inc.
Patrick J. Schiltz United States District Judge
a trademark-infringement action brought by plaintiff Eyebobs,
LLC (“Eyebobs”) against defendant Snap, Inc.
(“Snap”). Eyebobs designs and sells reading
glasses, including reading sunglasses. Eyebobs owns an
incontestable registered trademark (Registration No. 3484578)
protecting a mark consisting of an oval, upward- looking,
black-and-white cartoon eyeball placed above the word
“Eyebobs.” The Court will refer to this mark as
the “Registered Mark.” The Registered Mark is
typically displayed against a golden-yellow background.
Eyebobs also claims that it has an unregistered, common-law
trademark protecting a mark consisting of the eyeball design
itself-that is, the eyeball logo unaccompanied by the word
“Eyebobs.” The Court will refer to this (claimed)
mark as the “Common-Law Mark.”
owns the popular Snapchat mobile application (or
“app”), which allows users to take photos and
videos and send them to other Snapchat users. Snap is in the
process of launching a new product called
“Spectacles.” Spectacles are sunglasses with a
built-in camera in the upper right corner (near where the
right temple connects to the right end piece). Photos and
video that are captured by the camera are wirelessly
transmitted to a smart phone on which the Snapchat app is
running. In marketing Spectacles, Snap uses a mark that
consists of a round, forward-looking, black-and-white cartoon
eyeball that is typically displayed against a vibrant-yellow
background and that is often placed near the word
“Spectacles.” The Court will refer to this mark
as the “Spectacles Mark.”
brought this action against Snap, alleging that Snap's
use of the Spectacles Mark infringes Eyebobs' Registered
Mark and Common-Law Mark. This matter is before the Court on
Eyebobs' motion for a preliminary injunction. For the
reasons that follow, Eyebobs' motion is denied.
was founded in 2001 with “the mission of offering
high-quality and fashionable reading glasses at a reasonable
price[.]” ECF No. 1 ¶ 7. Eyebobs' product line
has since expanded to include sunglasses and frames for
prescription lenses. Id. Eyebobs' products can
be purchased online, through a mail-order catalog, or at
eyewear boutiques and other stores. Shirley Decl. ¶ 24;
see Magerman Decl. ¶¶ 7-8. The
products generally sell for between $79 and $150. Shirley
Decl. ¶ 23. Eyebobs also operates its own retail store
in Minneapolis and plans to roll out additional retail stores
over the next year. Magerman Decl. ¶ 11; Shirley Decl.
¶ 15. In marketing its products, Eyebobs consistently
uses the Registered Mark or a similar combination of the
eyeball logo with the word “Eyebobs.” ECF No. 1
¶ 8. Snap contends-and Eyebobs does not seem to
dispute-that the Common-Law Mark is not in use. ECF No. 29 at
11; ECF No. 50 at 3:10-4:4. In other words, the parties seem
to agree that whenever the eyeball logo appears in commerce,
it is accompanied in some way by the word
“Eyebobs.” See Shirley Decl.
¶¶ 8-18, 20.
mission is to “develop products that harness the power
of cameras in ways that allow people to communicate, express
themselves, and share their life experiences.” Horowitz
Decl. ¶ 3. Snap's first product was the Snapchat
mobile app, which, as noted, allows users to record
photographs and videos (called “Snaps”) with
their smart phones and send them to other Snapchat users.
Id. ¶ 4. A Snap appears on the receiver's
screen for only a few moments before disappearing.
Id. Snapchat users can also send chat messages,
create visual “Stories” that remain on the
user's account for one day, and store Snaps indefinitely
as “Memories.” Id. ¶ 5.
September 2016, Snap began advertising its new Spectacles
product, which was described as “sunglasses that
Snap” and marketed as a camera made “Just for
Snapchat.” Id. ¶¶ 6, 10; ECF No. 1
¶ 14. A pair of Spectacles is essentially a hands-free
recording device that allows users to take a Snap with the
built-in camera and wirelessly add that Snap to the Snapchat
app. Horowitz Decl. ¶¶ 6-7. A Snap recorded by a
Spectacles camera may be viewed, edited, or shared only
through the Snapchat app. Id. ¶ 6. Spectacles
come with sun lenses that do not have vision-correcting
capabilities, but the sun lenses can be replaced with
prescription lenses. ECF No. 1 ¶ 17. Spectacles retail
for $129.99. Horowitz Decl. ¶ 9.
originally sold Spectacles through vending machines (called
“Snapbots”) located in various cities across the
United States. Id. ¶ 8; see also
Routhier Decl. Ex. O. Snap also sold Spectacles through a
temporary (and now closed) retail store in Manhattan.
Horowitz Decl. ¶ 8. At present, Snap sells Spectacles
online via the Spectacles.com website. Id. ¶ 9.
In marketing Spectacles, Snap has used the Spectacles Mark,
which Snap claims is a stylized depiction of the right lens
of a pair of Spectacles. Id. ¶ 11. The
Spectacles Mark is sometimes used by itself and sometimes
used in conjunction with the word “Spectacles.”
Id. ¶ 13.
contends that Snap's use of the Spectacles Mark infringes
its trademarks, and Eyebobs now seeks to preliminarily enjoin
Snap's continued use of the Spectacles Mark in its
marketing of Spectacles.
Standard of Review
Court considers four factors in deciding whether to grant a
motion for a preliminary injunction: (1) the movant's
likelihood of success on the merits; (2) the threat of
irreparable harm to the movant if the injunction is not
granted; (3) the balance between this harm and the harm that
the non-movant will suffer if the injunction is granted; and
(4) the public interest. Dataphase Sys., Inc. v. C L
Sys., Inc., 640 F.2d 109, 114 (8th Cir. 1981). “In
deciding whether to grant a preliminary injunction,
likelihood of success on the merits is most
significant.” Laclede Gas Co. v. St. Charles Cty.,
Mo., 713 F.3d 413, 419-20 (8th Cir. 2013) (citation and
internal quotations omitted). “A preliminary injunction
is an extraordinary remedy, ” and the party seeking a
preliminary injunction bears the burden of establishing its
entitlement to such relief under the Dataphase
factors. Watkins Inc. v. Lewis, 346 F.3d 841, 844
(8th Cir. 2003) (citations omitted).
Likelihood of Success on the Merits
brings three claims against Snap. First, Eyebobs sues Snap
under § 35 of the Lanham Act for infringing the
Registered Mark. 15 U.S.C. § 1114. Second, Eyebobs sues
Snap under § 43(a) of the Lanham Act for infringing the
Common-Law Mark. 15 U.S.C. § 1125(a). And third, Eyebobs
sues Snap under Minnesota law for engaging in deceptive trade
practices. Minn. Stat. § 325D.44. The Court will address
these claims in turn.
Infringement of a Registered Trademark
main claim is that Snap is infringing the Registered Mark in
violation of the Lanham Act. ECF No. 1 ¶¶ 22-30.
There is no dispute that Eyebobs has valid ownership rights
and a protectable interest in the Registered Mark.
See 15 U.S.C. §§ 1057(b), 1115(a);
Gen. Mills, Inc. v. Kellogg Co., 824 F.2d 622, 626
(8th Cir. 1987). Thus, whether Eyebobs is likely to succeed
on its claim turns on whether Eyebobs will be able to prove
that Snap's use of the Spectacles Mark creates “a
likelihood of confusion, deception, or mistake on the part of
an appreciable number of ordinary purchasers as to an
association between [Eyebobs] and [Snap] due to their common
use of the [trademarks].” Gen. Mills, Inc.,
824 F.2d at 626.
typical trademark-infringement action, the plaintiff alleges
that the defendant is causing forward confusion-that is, that
the defendant is causing consumers to mistakenly believe that
the defendant's products are somehow affiliated with the
plaintiff. In such a case, the (junior) defendant is trying
to take advantage of the goodwill associated with the
(senior) plaintiff. Imagine, for example, a startup shoe
company that brands its athletic footwear with a logo that is
deceptively similar to the Nike swoosh.
trademark-infringement action, however, Eyebobs alleges that
Snap's continued use of the Spectacles Mark will cause
reverse confusion. Such confusion “occurs when a large
junior user [here, Snap] saturates the market with a
trademark similar or identical to that of a smaller, senior
user [here, Eyebobs].” Minn. Pet Breeders, Inc. v.
Schell & Kampeter, Inc., 41 F.3d 1242, 1246 (8th
Cir. 1994) (quoting Sands, Taylor & Wood Co. v.
Quaker Oats Co., 978 F.2d 947, 957 (7th Cir. 1992)). The
harm flowing from reverse confusion is that “[t]he
public comes to assume the senior user's products are
really the junior user's or that the former has become
somehow connected to the latter. . . . [T]he 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). To receive preliminary relief, then, Eyebobs must
establish “that because of the similar marks,
[Eyebobs'] customers are likely to mistakenly think that
the more well known [Snap] is the source of, or is sponsoring
or backing, [Eyebobs'] goods or services.” 4 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 23:10 (4th ed. 2017).
forward- and reverse-confusion cases, this Court must weigh
the six “SquirtCo factors” in
determining whether there is a likelihood of confusion:
(1) the strength of the owner's mark; (2) the similarity
between the owner's mark and the alleged infringer's
mark; (3) the degree to which the products compete with each
other; (4) the alleged infringer's intent to pass off its
goods as those of the trademark owner; (5) incidents of
actual confusion; and (6) the type of product, its costs and
conditions of purchase.
Lovely Skin, Inc. v. Ishtar Skin Care Prods., LLC,
745 F.3d 877, 887 (8th Cir. 2014) (quotations omitted)
(quoting Co-Rect Prods., Inc. v. Marvy! Advert.
Photography, Inc., 780 F.2d 1324, 1330 (8th Cir. 1985));
see also A & H Sportswear, Inc. v. Victoria's
Secret Stores, Inc., 237 F.3d 198, 229, 234 (3d
Cir. 2000) (“As in a direct confusion claim, the
ultimate question in a reverse confusion claim is whether
there is a likelihood of consumer confusion as to the source
or sponsorship of a product.”). No one factor is
dispositive. Luigino's, Inc. v. Stouffer Corp.,
170 F.3d 827, 830 (8th Cir. 1999). But the first three
factors are considered “pivotal” in
reverse-confusion cases. Boldface Licensing Branding v.
By Lee Tillett, Inc., 940 F.Supp.2d 1178, 1187
(C.D. Cal. 2013) (quoting Dreamwerks Prod. Grp., Inc. v.
SKG Studio, 142 F.3d 1127, 1130 (9th Cir. 1998)).
The Strength of the Marks
first factor for the Court to analyze is the strength of the
marks. Luigino's, Inc., 170 F.3d at 830. A
mark's overall strength reflects both its conceptual
strength and its commercial strength. Roederer v. J.
Garcia Carrion, S.A., 732 F.Supp.2d 836, 864 (D. Minn.
2010). In a forward-confusion case-in which the defendant
(the junior user) is trying to take advantage of the
plaintiff's (the senior user's) goodwill-the
court's focus is on the conceptual and commercial
strength of the ...