`
`v.
`
`
`DROPBOX, INC., a Delaware
`corporation,
`
` No. 19-56347
`
`D.C. No.
`2:18-cv-01481-
`DDP-JEM
`
`
`OPINION
`
`FOR PUBLICATION
`
`UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`
`
`IRONHAWK TECHNOLOGIES, INC., a
`Delaware corporation,
`Plaintiff-Appellant,
`
`Defendant-Appellee.
`
`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
`
`Before: A. WALLACE TASHIMA, MILAN D. SMITH,
`JR., and MARY H. MURGUIA, Circuit Judges.
`
`Opinion by Judge Milan D. Smith, Jr.;
`Dissent by Judge A. Wallace Tashima
`
`
`
`
`
`
`2
`
`
`IRONHAWK TECH. V. DROPBOX
`
`SUMMARY*
`
`Lanham Act
`
`
`
`
`The panel reversed the district court’s grant of summary
`
`judgment in favor of defendant Dropbox, Inc., vacated the
`judgment, and remanded for trial in an action brought under
`the Lanham Act by Ironhawk Technologies, Inc.
`
`that uses
`Ironhawk developed computer software
`
`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
`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
`
`
`* This summary constitutes no part of the opinion of the court. It
`has been prepared by court staff for the convenience of the reader.
`
`
`
`3
`
`IRONHAWK TECH. V. DROPBOX
`
`
`
`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, and
`Matthew Q. Verdin, Covington & Burling LLP, San
`Francisco, California; for Defendant-Appellee.
`
`
`
`
`
`
`
`4
`
`
`IRONHAWK TECH. V. DROPBOX
`
`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.
`
`that uses
`Ironhawk developed computer software
`compression and replication to transfer data efficiently in
`“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.
`
`
`
`
`
`
`IRONHAWK TECH. V. DROPBOX
`
`5
`
`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.
`
`to
`judgment
`The district court granted summary
`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.
`
`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,
`
`
`
`IRONHAWK TECH. V. DROPBOX
`
`6
`
`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
`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
`
`
`
`IRONHAWK TECH. V. DROPBOX
`
`
`
`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.
`
`7
`
`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.
`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.”).
`
`reverse confusion on summary
`When assessing
`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
`
`
`
`8
`
`
`IRONHAWK TECH. V. DROPBOX
`
`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)).
`
`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
`
`
`
`IRONHAWK TECH. V. DROPBOX
`
`
`
`significant care when purchasing products through its
`military procurement process.
`
`9
`
`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
`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
`
`
`
`IRONHAWK TECH. V. DROPBOX
`
`10
`
`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
`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).
`
`
`
`
`
`
`IRONHAWK TECH. V. DROPBOX
`
`11
`
`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
`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.
`
`
`
`IRONHAWK TECH. V. DROPBOX
`
`12
`
`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
`
`important
`the
`Whether descriptive or suggestive,
`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
`
`1 Notably, Ironhawk submitted evidence under seal that Dropbox
`may consider SmartSync to be more than descriptive.
`
`
`
`IRONHAWK TECH. V. DROPBOX
`
`
`
`associate it with any source, even a commercially strong
`junior user.” The district court erred for two reasons.
`
`13
`
`First, whether Dropbox rebutted the presumption of
`distinctiveness
`established by SmartSync’s
`federal
`registration is for the jury to decide. Second, while
`conceptual weakness can weigh against a likelihood of
`confusion, conceptual weakness does not negate the
`significance of Dropbox’s commercial strength on that
`inquiry. Instead, any conceptual weakness of Ironhawk’s
`mark could increase the likelihood of confusion. 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
`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.
`
`
`
`14
`
`
`IRONHAWK TECH. V. DROPBOX
`
`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).
`
`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
`
`
`
`IRONHAWK TECH. V. DROPBOX
`
`
`
`acquiring Ironhawk before launching Smart Sync, which to
`Ironhawk suggests the two companies offer complementary
`products.
`
`15
`
`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.
`
`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
`
`
`
`IRONHAWK TECH. V. DROPBOX
`
`16
`
`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
`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
`
`
`
`17
`
`IRONHAWK TECH. V. DROPBOX
`
`
`
`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.
`
`reasoning does not apply here because
`Cohn’s
`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
`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,”
`
`
`
`IRONHAWK TECH. V. DROPBOX
`
`18
`
`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
`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
`
`
`
`19
`
`IRONHAWK TECH. V. DROPBOX
`
`
`
`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
`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
`
`
`
`IRONHAWK TECH. V. DROPBOX
`
`20
`
`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,
`Dropbox’s marketing doe
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