`United States Court of Appeals
`Tenth Circuit
`May 29, 2008
`Elisabeth A. Shumaker
`Clerk of Court
`UNITED STATES COURT OF APPEALS
`
`PUBLISH
`
`TENTH CIRCUIT
`
`UTAH LIGHTHOUSE MINISTRY, a
`Utah corporation,
`
`Plaintiff-Counter-Defendant -
`Appellant,
`
`v.
`
`FOUNDATION FOR APOLOGETIC
`INFORMATION AND RESEARCH,
`(FAIR), a New York corporation;
`SCOTT GORDON,
`
`Defendants - Appellees,
`
`DISCOVERY COMPUTING, an
`Arizona corporation; ALLEN L.
`WYATT, an individual,
`
`Defendants-Counter-
`Claimants - Appellees.
`
` No. 07-4095
`
`Appeal from the United States District Court
`for the District of Utah
`(D.C. No. 2:05-CV-00380-DAK)
`
`Paul C. Oestreich, Morriss, O’Bryant Compagni, P.C., Salt Lake City, Utah,
`appearing for Plaintiff-Appellant.
`
`Lance C. Starr, American Fork, Utah, appearing for Defendants-Appellees
`Discovery Computing, Inc. and Allen Wyatt. D. Miles Holman (Jeffrey N. Walker
`with him on the brief), Holman & Walker, L.C., Sandy, Utah, appearing for
`
`
`
`Defendants-Appellees Foundation for Apologetic Information & Research and
`Scott Gordon.
`
`Before TYMKOVICH and GORSUCH, Circuit Judges, and PARKER, District
`Judge.*
`
`PARKER, District Judge.
`
`Utah Lighthouse Ministry (UTLM) appeals from a decision of the district
`
`court granting Defendants’ motion for summary judgment on UTLM’s claims of
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`trademark infringement, unfair competition, and cybersquatting.
`
`I. BACKGROUND
`
`A. Facts
`
`Jerald and Sandra Tanner founded UTLM in 1982 to critique the Church of
`
`Jesus Christ of Latter-day Saints (LDS Church). In support of its mission, UTLM
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`sells books at both a brick-and-mortar bookstore in Utah and through an online
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`bookstore at the official UTLM website, www.utlm.org.
`
`The Foundation for Apologetic Information and Research (FAIR) is a
`
`volunteer organization that responds to criticisms of the LDS Church. FAIR’s
`
`* The Honorable James A. Parker, Senior District Judge, United States
`District Court for the District of New Mexico, sitting by designation.
`
`-2-
`
`
`
`website also has an online bookstore, and both FAIR and UTLM provide online
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`publications on the subject of the LDS Church. The publications in the two
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`bookstores overlap by thirty titles. Defendant-Appellee Allen Wyatt is the vice
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`president and webmaster for FAIR. In November 2003, Wyatt created a website
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`parodying the UTLM website—the Wyatt website is similar in appearance but has
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`different, though suggestively parallel, content.
`
`The district court’s Memorandum Decision and Order describes the design
`
`and content of the Wyatt and UTLM websites (Mem. Decision & Order at 3–4),
`
`and Appellant’s appendix includes screen shots of the websites. The design
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`elements are similar, including the image of a lighthouse with black and white
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`barbershop stripes. However, the words “Destroy, Mislead, and Deceive” are
`
`written across the stripes on the Wyatt website. Prominent text on the Wyatt
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`website consists of a slight modification of the language located in the same
`
`position on the UTLM website. For example, the UTLM website states:
`
`“Welcome to the Official Website of the Utah Lighthouse Ministry, founded by
`
`Jerald and Sandra Tanner.” In comparison, the Wyatt website states: “Welcome to
`
`an official website about the Utah Lighthouse Ministry, which was founded by
`
`Jerald and Sandra Tanner.” (emphasis added.) The Wyatt website does not have
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`any kind of disclaimer that it is not associated with UTLM.
`
`The Wyatt website contains no advertising and offers no goods or services
`
`for sale. The Wyatt website includes sixteen external hyperlinks. Eleven of these
`
`-3-
`
`
`
`hyperlinks point to the website of an organization at Brigham Young University.
`
`Three hyperlinks point to articles on the FAIR website that are critical of the
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`Tanners, and another takes viewers directly to the FAIR homepage. The other
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`external hyperlink is to the website of the LDS Church.
`
`Wyatt, through his company Discovery Computing, Inc., registered ten
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`domain names, each of which directed visitors to the Wyatt website. The domain
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`names are combinations of “Utah Lighthouse Ministry,” “Sandra Tanner,”
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`“Gerald Tanner,” “Jerald Tanner,” and “.com” and “.org.” Wyatt first publicized
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`the Wyatt website to FAIR members in April 2004. Defendants assert that prior to
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`April 2004 only Wyatt had any knowledge of or input into the website.
`
`Wyatt ceased operation of the website and began to transfer the domain
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`names to UTLM in April 2005.
`
`B. Procedural History
`
`UTLM’s complaint made six claims for relief: (1) trademark infringement,
`
`15 U.S.C. § 1125(a); (2) unfair competition, id.; (3) unfair competition under
`
`Utah law, Utah Code Ann. § 13-5a-101 to -103 (2008); (4) trademark dilution, 15
`
`U.S.C. § 1125(c); (5) cybersquatting, id. § 1125(d); and (6) trade dress
`
`infringement, id. § 1125(a). The parties filed cross-motions for summary
`
`judgment, and the district court judge denied Plaintiff’s motion and granted
`
`Defendants’ motion on all six counts. UTLM appeals only the district court’s
`
`-4-
`
`
`
`ruling on the trademark infringement, unfair competition, and cybersquatting
`
`claims.1 Furthermore, UTLM appeals with regard to only one of its trademarks,
`
`UTAH LIGHTHOUSE.
`
`II. DISCUSSION
`
`A. Standard of Review
`
`We review a district court’s grant of summary judgment de novo, and apply
`
`the same legal standard as the district court. MediaNews Group, Inc. v.
`
`McCarthey, 494 F.3d 1254, 1260 (10th Cir. 2007). Summary judgment is
`
`appropriate “if the pleadings, the discovery and disclosure materials on file, and
`
`any affidavits show that there is no genuine issue as to any material fact and that
`
`the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c). We
`
`consider the factual record, together with all reasonable inferences derived
`
`therefrom, in the light most favorable to the nonmoving party and we do not
`
`weigh the evidence or make credibility determinations. Jones v. Barnhart, 349
`
`F.3d 1260, 1265 (10th Cir. 2003).
`
`1Appellant’s statement of the case asserts that it is appealing all except the
`dilution claim, but Appellant’s opening brief does not present argument on the
`state unfair competition and trade dress infringement claims. Arguments
`inadequately briefed in the opening brief are waived. Adler v. Wal-Mart Stores,
`144 F.3d 664, 679 (10th Cir. 1998).
`
`-5-
`
`
`
`B. Trademark Infringement and Unfair Competition
`
`Trademark infringement is a type of unfair competition; the two claims
`
`have virtually identical elements and are properly addressed together as an action
`
`brought under 15 U.S.C. § 1125(a)(1)(B), commonly known as section 43 of the
`
`Lanham Act. See Donchez v. Coors Brewing Co., 392 F.3d 1211, 1219 (10th Cir.
`
`2004); cf. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992);
`
`Heaton Distrib. Co. v. Union Tank Car Co., 387 F.2d 477 (8th Cir. 1967)
`
`(“Trademark infringement is but part of broader law of unfair competition; and
`
`facts supporting suit for infringement and one for unfair competition are
`
`substantially identical.”).
`
`Because UTLM’s trademark, UTAH LIGHTHOUSE, was not registered at
`
`the time Allen Wyatt created the Wyatt website in November 2003,2 UTLM must
`
`show that the mark is protectable. See Two Pesos, 505 U.S. at 768; Donchez, 392
`
`F.3d at 1215. In addition, UTLM must demonstrate that Defendants used the
`
`trademark “in connection with any goods or services.” 15 U.S.C. § 1125(a)(1).
`
`Finally, UTLM must establish that Defendants’ use “is likely to cause confusion,
`
`or to cause mistake, or to deceive as to the affiliation, connection, or association
`
`of such person with another person, or as to the origin, sponsorship, or approval
`
`2UTLM registered the mark on July 25, 2006. (Appellant’s App. at 162.)
`
`-6-
`
`
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`of his or her goods, services, or commercial activities by another person.” Id. §
`
`1125(a)(1)(A).
`
`The district court found that the mark UTAH LIGHTHOUSE was not
`
`protectable, that the Defendants’ use of the mark was not commercial, and that
`
`there was no likelihood of confusion—in other words, that none of the three
`
`requirements for a trademark infringement claim were satisfied.
`
`1. Protectability
`
`UTLM argued to the district court that the mark UTAH LIGHTHOUSE was
`
`entitled to a presumption of protectability because it is a registered mark.
`
`(Appellees’ Suppl. App. at 25.) The district court rejected this argument on the
`
`ground that UTAH LIGHTHOUSE was not registered at the time the lawsuit was
`
`filed, and therefore is not entitled to a presumption of validity under 15 U.S.C. §
`
`1115(a).3 (Mem. Decision & Order at 14.) Second, the district court held that
`
`UTLM had failed to show that any of its trademarks had acquired secondary
`
`meaning. (Id.)
`
`UTLM contends that the district court should have applied the test for
`
`trademark distinctiveness stated in Donchez v. Coors Brewing Co., 392 F.3d 1211
`
`3It is not clear that a mark must be registered at the time the suit is filed to
`benefit from the statutory presumption, but it is not necessary to decide that issue
`on this appeal.
`
`-7-
`
`
`
`(10th Cir. 2004). Under the Donchez approach, there are five categories of marks:
`
`generic, descriptive, suggestive, arbitrary, and fanciful. Id. at 1216 (quoting Lane
`
`Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 344 (2d Cir.
`
`1999)). The category into which a mark falls determines both its “eligibility for
`
`protection and the degree of protection accorded.” Id. Generic and descriptive
`
`marks are not inherently distinctive and therefore require a showing of secondary
`
`meaning—that is, that the consuming public has come to view these marks as
`
`distinctive. UTLM argues on appeal that UTAH LIGHTHOUSE is distinctive
`
`because it is arbitrary and therefore no showing of secondary meaning is required.
`
`However, UTLM did not raise this argument below. Instead it relied on the post-
`
`complaint registration of UTAH LIGHTHOUSE to argue that it was entitled to a
`
`statutory presumption of protectability. Though the court of appeals has
`
`discretion to consider arguments raised for the first time on appeal, Singleton v.
`
`Wulff, 428 U.S. 106, 121 (1976), we decline to do so in this case. See Cummings
`
`v. Norton, 393 F.3d 1186, 1191 (10th Cir. 2005); Tele-Commc’ns, Inc. v. Comm’r,
`
`104 F.3d 1229, 1232–33 (10th Cir. 1997) (“an issue must be presented to,
`
`considered [and] decided by the trial court before it can be raised on appeal”).
`
`One could construe UTLM’s arguments to the district court as asserting
`
`that UTAH LIGHTHOUSE had acquired secondary meaning, based on the
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`evidence that UTLM presented on the prevalence of the UTAH LIGHTHOUSE
`
`trademark on the Internet. This evidence took the form of the number of “hits”
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`-8-
`
`
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`generated by searches for UTAH LIGHTHOUSE on the Yahoo and Google search
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`engines and on the websites of other organizations associated with the LDS
`
`Church. (See Appellant’s App. at 27–28.) A mark acquires a secondary meaning if
`
`the words “have been used so long and so exclusively by one producer with
`
`reference to his goods or articles that, in that trade and to that branch of the
`
`purchasing public, the word or phrase [has] come to mean that the article is his
`
`product.” Educ. Dev. Corp. v. Econ. Co., 562 F.2d 26, 29–30 (10th Cir. 1977)
`
`(internal quotation marks omitted) (modification in original). The number of
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`search engine hits, standing alone, is inadequate to demonstrate that consumers
`
`associate the mark with a particular product or producer, or perceive UTAH
`
`LIGHTHOUSE as a distinctive mark. In a recent decision, we noted that the mere
`
`fact that Ski Magazine had repeatedly ranked the Vail Ski Resort as a preeminent
`
`ski resort over the last twenty years was ineffective evidence of the secondary
`
`meaning of the descriptive term “Vail.” Vail Assocs. v. Vend-Tel-Co., Ltd., 516
`
`F.3d 853, 867 n.12 (10th Cir. 2008). Such evidence would have been more
`
`probative of consumer perceptions if the plaintiff had also presented “evidence as
`
`to the circulation of Ski Magazine, the regard in which likely consumers of [the
`
`plaintiff’s] services hold the magazine, or the percentage of those consumers that
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`read the magazine.” Id. Likewise, in this case the number of search engine “hits”
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`would support UTLM’s claim of secondary meaning only if accompanied by some
`
`kind of evidence that the relevant market of consumers has visited the websites
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`-9-
`
`
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`containing these hits. Therefore, we conclude that UTLM failed to present
`
`sufficient evidence to enable a reasonable jury to find that the UTAH
`
`LIGHTHOUSE mark had acquired a secondary meaning.
`
`2. Commercial Use
`
`To invoke the protections of the Lanham Act, a plaintiff must show that the
`
`alleged infringer used the plaintiff’s mark “in connection with any goods or
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`services.”4 15 U.S.C. § 1125(a)(1); cf. Bosley Med. Inst., Inc. v. Kremer, 403 F.3d
`
`672, 677 (9th Cir. 2005). This is commonly described as the commercial use
`
`requirement.
`
`UTLM asserts that Wyatt’s use was commercial on three grounds. First,
`
`that the Wyatt website hyperlinked to a website that sells goods—the FAIR
`
`website. Second, that the Wyatt website interferes with the ability of users to
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`reach the goods and services offered on the UTLM website. Third, that the overall
`
`commercial nature of the Internet renders the website itself a commercial use.
`
`4UTLM argues that it must show that Defendants’ use is “in commerce.”
`The Ninth Circuit has noted that the statutory phrase “use in commerce” is only a
`requirement for Congress to enact legislation concerning trademarks. See Bosley
`Med. Inst., Inc. v. Kremer, 403 F.3d 672, 677 (9th Cir. 2005). However, a
`defendant is liable under 15 U.S.C. § 1125(a) only for uses “in connection with
`any goods or services.” In a trademark infringement claim based on a registered
`trademark, under 15 U.S.C. § 1114, which was at issue in Bosley, the plaintiff
`must show that the use was “in connection with the sale, offering for sale,
`distribution, or advertising of any goods or services.”
`
`-10-
`
`
`
`UTLM’s first argument is that the Wyatt website became commercial
`
`because it hyperlinked to the FAIR website, which contains an online bookstore.
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`Several circuit courts of appeals, but not the Tenth Circuit, have confronted the
`
`issue of when hyperlinking renders an otherwise noncommercial website subject
`
`to the Lanham Act. See, e.g., Bosley Med. Inst., 403 F.3d 672 (finding a sequence
`
`of links to advertising too attenuated to constitute commercial use); Taubman Co.
`
`v. Webfeats, 319 F.3d 770, 775 (6th Cir. 2003) (concluding that a site was
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`commercial because it contained hyperlinks to two commercial websites, even
`
`though the links were “extremely minimal”); People for the Ethical Treatment of
`
`Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001) (holding that a website which
`
`linked to thirty commercial operators was itself commercial); see also OBH, Inc.
`
`v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176, 185–86 (W.D.N.Y. 2000).
`
`The most significant and analogous of these cases is the Ninth Circuit’s
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`decision in Bosley Medical Institute v. Kremer. In Bosley, the defendant was
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`dissatisfied with a hair implant procedure he had received from Bosley Medical
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`and created a website with the domain name “bosleymedical.com” to post
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`negative information about Bosley Medical. The website linked to another
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`website also maintained by the defendant, which in turn linked to a newsgroup,
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`alt.baldspot, which contained advertisements for Bosley Medical’s competitors.
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`The Ninth Circuit affirmed the district court’s ruling that the defendant’s use was
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`not in connection with the sale of goods or services because the link to Bosley
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`-11-
`
`
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`Medical’s competitors was too roundabout and attenuated. 403 F.3d at 677.
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`In this case, the district court held that the Wyatt website was not a
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`commercial use because it “provided no goods or services, earned no revenue, and
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`had no direct links to any commercial sites.” (Mem. Decision & Order at 11.) The
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`district court’s holding was consistent with the fact-sensitive, case-by-case
`
`assessment that the Ninth Circuit utilized in Bosley, and that we believe is
`
`appropriate.
`
`The Lanham Act is intended “to protect the ability of consumers to
`
`distinguish among competing producers,” Two Pesos, 505 U.S. at 774, not to
`
`prevent all unauthorized uses. The First and Ninth Circuits have emphasized that
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`trademark rights cannot be used “to quash an unauthorized use of the mark by
`
`another who is communicating ideas or expressing points of view.” L.L. Bean,
`
`Inc. v. Drake Publishers, Inc., 811 F.2d 26, 29 (1st Cir. 1987); Bosley, 403 F.3d
`
`at 675. Like in Bosley, Wyatt used UTLM’s trademark “not in connection with a
`
`sale of goods or services—[but] in connection with the expression of his opinion
`
`about [UTLM’s] goods and services.” Bosley, 403 F.3d at 679. In both Bosley and
`
`this case, the offending websites offered critical commentary about the trademark
`
`owner, and the use of the trademark was separated from any goods or services
`
`offered for sale. The Wyatt website links to three articles on the FAIR website
`
`and to the FAIR homepage, but not directly to the FAIR bookstore. The FAIR
`
`homepage is overwhelmingly noncommercial in nature, and contains only an
`
`-12-
`
`
`
`inconspicuous link to the FAIR online bookstore. (Appellant’s App. at 1.) In a
`
`situation like this, the “roundabout path” to the advertising or commercial use of
`
`others is simply “too attenuated.” Bosley, 403 F.3d at 679.
`
`UTLM’s second argument is that the Wyatt website prevents users from
`
`accessing both UTLM’s ideological services and the books for sale through the
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`online bookstore. The Fourth Circuit recognized this kind of competition in
`
`People for the Ethical Treatment of Animals (PETA) v. Doughney, 263 F.3d 359
`
`(4th Cir. 2001), in which the defendant had created a website with the domain
`
`name “peta.org” that promoted carnivorous behavior5—an idea antithetical to the
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`animal rights agenda promoted by PETA. The defendant’s website contained
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`hyperlinks to over thirty commercial operators. Id. at 366. The Fourth Circuit held
`
`that these links made the defendant’s use of PETA’s mark commercial. However,
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`the court also held that the defendant “need not have actually sold or advertised
`
`goods or services” but “need only have prevented users from obtaining or using
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`PETA’s goods or services.”6 Id. at 365.
`
`5On the defendant’s website, the acronym “PETA” stood for “People Eating
`Tasty Animals.” 263 F.3d at 362.
`
`6The Fourth Circuit cited two district court decisions that had taken a
`similar approach. OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176, 183
`(W.D.N.Y. 2000) (website parodying the Buffalo News under the domain name
`“thebuffalonews.com” was commercial because the website was “likely to prevent
`or hinder Internet users from accessing plaintiffs’ services on plaintiffs’ own web
`site”); Planned Parenthood Fed’n of Am., Inc. v. Bucci, 1997 WL 133313, at *3
`(S.D.N.Y. Mar. 24, 1997), aff’d, 152 F.3d 920 (2d Cir. 1998) (finding a website
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`-13-
`
`
`
`Likewise, UTLM argues that the use of a trademark is within the scope of
`
`the Lanham Act if the use is in connection with the trademark owner’s sale of
`
`goods or services. Such an interpretation eliminates the requirement of an
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`economic competitor and is therefore inconsistent with the purpose of the Lanham
`
`Act “to protect the ability of consumers to distinguish among competing
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`producers.” Two Pesos, 505 U.S. at 774 (quoting Park ‘n Fly v. Dollar Park &
`
`Fly, 469 U.S. 189, 198 (1985)). The “interference” theory has also been criticized
`
`on the ground that it would “place most critical, otherwise protected consumer
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`commentary under the restrictions of the Lanham Act.” See Bosley, 403 F.3d at
`
`679. In our view, the defendant in a trademark infringement and unfair
`
`competition case must use the mark in connection with the goods or services of a
`
`competing producer, not merely to make a comment on the trademark owner’s
`
`goods or services. The Lanham Act addresses the specific problem of consumer
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`confusion about the source of goods and services created by the unauthorized use
`
`of trademarks. See Prestonettes, Inc. v. Coty, 264 U.S. 359, 368 (1924) (“A
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`trademark only gives the right to prohibit the use of it so far as to protect the
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`owner’s good will against the sale of another’s product as his.”) Unless there is a
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`competing good or service labeled or associated with the plaintiff’s trademark, the
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`criticizing Planned Parenthood policies and using the domain name
`“plannedparenthood.com” was commercial because it would frustrate users and
`prevent them from reaching the Planned Parenthood website).
`
`-14-
`
`
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`concerns of the Lanham Act are not invoked. See Lang v. Ret. Living Publ’g Co.,
`
`Inc., 949 F.2d 576, 582–83 (2nd Cir. 1991) (“[T]he Lanham Act seeks to prevent
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`consumer confusion that enables a seller to pass off his goods as the goods of
`
`another . . . . [T]rademark infringement protects only against mistaken purchasing
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`decisions and not against confusion generally.”) (internal quotations and citations
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`omitted).
`
`UTLM’s third argument is that the “broad scope and wide commercial use
`
`of the Internet itself” makes Defendants’ use of UTLM’s trademark as a domain
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`name a commercial use for purposes of the Lanham Act. (Appellant’s Amended
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`Opening Brief at 24.) UTLM notes that several district courts have adopted this
`
`view, but mischaracterizes the holdings of these courts. (Id. (citing OBH, 86 F.
`
`Supp. 2d at 186; Planned Parenthood Fed’n of Am., 1997 WL 133313, at *3;
`
`Intermatic Inc. v. Toeppen, 947 F. Supp. 1227, 1239–40 (N.D. Ill. 1996)).) It is
`
`important to distinguish between the merely jurisdictional “in commerce”
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`requirement, see 15 U.S.C. § 1127, and the “in connection with any goods and
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`services” requirement that establishes a violation of section 43 of the Lanham
`
`Act. See Bosley, 403 F.3d at 677. All three of the district court decisions that
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`UTLM cites held that the use of a trademark on the Internet satisfies only the
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`jurisdictional requirement. These courts concluded that each defendant’s use of
`
`the trademark was in connection with goods and services, but based on facts other
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`than the mere use of the Internet. We agree that the Internet is generally an
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`-15-
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`
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`instrumentality of interstate commerce, see United States v. Schaefer, 501 F.3d
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`1197, 1201 & n.8 (10th Cir. 2007), and thus that the jurisdiction of the Lanham
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`Act constitutionally extends to unauthorized uses of trademarks on the Internet.7
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`However, this does not mean that any use of the Internet is necessarily
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`commercial for the purposes of the Lanham Act, as UTLM advocates. Moreover,
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`conflating these two “commerce” requirements would greatly expand the scope of
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`the Lanham Act to encompass objectively noncommercial speech. We therefore
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`decline to adopt UTLM’s proposed rule that any use of a trademark on the
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`Internet is a use “in connection with goods or services.”
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`Defendants’ use of UTLM’s trademark, UTAH LIGHTHOUSE, is not in
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`connection with any goods or services, and therefore the district court properly
`
`granted summary judgment on UTLM’s trademark infringement and unfair
`
`competition claims.
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`3. Likelihood of Confusion
`
`Even if Defendants’ use were determined to be commercial, it would only
`
`infringe upon UTLM’s trademark rights if the use created a likelihood of
`
`7Congress defined commerce for the purposes of the Lanham Act as “all
`commerce which may lawfully be regulated by Congress.” 15 U.S.C. § 1127. We
`recently noted that where Congress indicates that it intends to exercise its full
`Commerce Clause powers, we will be more inclined to find that use of the
`Internet involves interstate commerce. Schaefer, 501 F.3d at 1201–02; see also
`United States v. Vigil, Cr. No. 07-2060, at 15 (10th Cir. Apr. 29, 2008).
`
`-16-
`
`
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`confusion. 15 U.S.C. § 1125(a)(1)(A). The party alleging infringement has the
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`burden of proving likelihood of confusion. Australian Gold, Inc. v. Hatfield, 436
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`F.3d 1228, 1238–39 (10th Cir. 2006). Though likelihood of confusion is a
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`question of fact, it is amenable to summary judgment in that “[c]ourts retain an
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`important authority to monitor the outer limits of substantial similarity within
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`which a jury is permitted to make the factual determination whether there is a
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`likelihood of confusion.” Universal Money Ctrs. v. AT&T, 22 F.3d 1527, 1530 n.2
`
`(10th Cir. 1994) (quoting Warner Bros. v. Am. Broad. Cos., 720 F.2d 231, 246
`
`(2d Cir. 1983)).
`
`Likelihood of confusion is typically evaluated according to a six-factor test
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`in which the court considers: (1) the degree of similarity between the marks; (2)
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`the intent of the alleged infringer in using the mark; (3) evidence of actual
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`confusion; (4) similarity of products and manner of marketing; (5) the degree of
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`care likely to be exercised by purchasers; and (6) the strength or weakness of the
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`marks. Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964 (10th Cir. 2002). No
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`one factor is dispositive. The district court found that there was no likelihood of
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`confusion based on its analysis of these six factors and its determination that the
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`Wyatt website was a parody of the UTLM website. (Mem. Decision & Order at
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`21.) Parody is another factor to consider in determining the likelihood of
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`confusion, and casts several of the above-cited six factors in a different light. For
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`instance, Defendants do not dispute that the marks are similar, and Wyatt
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`admitted that he intentionally selected the Utah Lighthouse domain name on the
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`basis that it “seemed like a good name to use . . . [to] refute or provide criticisms
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`about the Tanners.” (Appellant’s App. at 20 (Wyatt Dep. at 15–16)). Evidence
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`that the alleged infringer chose a mark with the intent to copy, rather than
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`randomly or by accident, typically supports an inference of likelihood of
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`confusion. Sally Beauty Co., 304 F.3d at 973; see, e.g., Planned Parenthood
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`Fed’n of Am., Inc., 1997 WL 133313, at *3 (finding that defendant used
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`plaintiff’s trademark to intentionally divert Internet traffic to his own websites);
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`Jews for Jesus v. Brodsky, 993 F. Supp. 282, 304 (D.N.J. 1998) (same). Wyatt
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`counters that the inference arises only if the defendant intended to benefit from
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`the reputation or goodwill of the trademark owner, see Jordache Enters., Inc. v.
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`Hogg Wyld, Ltd., 828 F.2d 1482, 1485 (10th Cir. 1987), and that he could not be
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`intending to benefit from UTLM’s goodwill since he was criticizing UTLM. A
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`critical parody nevertheless “derive[s] benefit from the reputation of the owner of
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`the mark . . . [in that] no parody could be made without the initial mark.” Id. at
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`1486 (citations omitted). What is critical is that the benefit “arises from the
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`humorous association, not from public confusion as to the source of the marks,”
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`id., so no inference of confusion can be drawn from the intentional use simply as
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`a parody.
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`Evidence of actual confusion is not necessary to show a likelihood of
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`confusion, but it is the “best evidence of a likelihood of confusion in the
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`marketplace.” Standard Oil Co. v. Standard Oil Co., 252 F.2d 65, 74 (10th Cir.
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`1958). The district court found that there was no evidence of actual confusion.
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`(Mem. Decision & Opinion at 21.) While it appears that UTLM proffered some
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`weak evidence of actual confusion,8 the district court did not err in finding that
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`this factor weighs in favor of the Defendants.
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`The fourth factor, the similarity in goods and services offered and in the
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`manner of marketing, is difficult to apply in this case because of the attenuation
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`between the use of the trademark and the goods offered for sale. This illustrates
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`the problems with a more expansive interpretation of the commercial use
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`requirement urged by UTLM. It is true that UTLM and FAIR both operate online
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`bookstores and sell overlapping sets of book titles. However, any potential for
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`confusion created by the similarity in goods and manner of marketing is mitigated
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`by the lengthy path a consumer must take to reach the goods offered for sale. The
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`FAIR bookstore does not use UTLM’s trademark, and a searcher must click
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`through a website that does not resemble the UTLM website in order to reach
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`FAIR’s bookstore.
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`The fifth factor is the degree of care typically exercised by purchasers of
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`8When Wyatt sent a link to the Wyatt website to the FAIR listserve, one
`FAIR member, Michelle Carnohan, asked, “whose site is this?” UTLM contends
`that this shows actual confusion, while Defendants counter that it is obvious from
`the context that Ms. Carnohan knew the site was not UTLM’s, but wasn’t sure
`who had created it.
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`the products linked to the trademark. UTLM contends that its customers would
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`exercise a reduced degree of care because books sold online are low-cost impulse
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`purchases. However, one could also infer that potential customers of the UTLM
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`bookstore are discerning and sophisticated about where they purchase books on
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`controversial religious subjects. The district court concluded that the fifth factor
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`was irrelevant to the likelihood of confusion analysis based on the difference
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`between the Wyatt website and FAIR bookstore. As with the fourth factor, the
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`absence of the UTLM trademark on the FAIR website or the FAIR bookstore
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`lessens the chance that a consumer would be mislead into believing that she is
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`visiting the UTLM online bookstore. Therefore, this factor does not weigh in
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`favor of a finding of likelihood of confusion.
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`The final factor in determining likelihood of confusion is the strength of the
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`mark—“[t]he stronger the mark, the greater the likelihood that encroachment on
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`the mark will cause confusion.” Sally Beauty Co., 304 F.3d at 975. Strength
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`consists of both conceptual strength, which refers to the placement of the mark
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`along the distinctiveness spectrum, and commercial strength, which refers to the
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`marketplace recognition value of the mark. King of the Mt. Sports, Inc. v.
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`Chrysler Corp., 185 F.3d 1084, 1093 (10th Cir. 1999). UTLM did not submit any
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`evidence to the district court of conceptual strength, and the district court
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`determined that UTLM’s evidence of search engine hits did not demonstrate that
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`the mark had significant recognition value in the marketplace. The evidence
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`present in the record suggests that the commercial strength factor weighs against a
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`finding of confusion. Even if we consider the arguments for conceptual strength,
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`which were made for the first time on appeal, and thereby conclude that the mark
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`is strong, that alone is insufficient to find a likelihood of confusion. A parody, of
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`course, could not succeed if the trademark lacked any strength.
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`On balance, the six Sally Beauty Co. factors weigh against a finding of
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`likelihood of confusion. Although we conclude that there is no likelihood of
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`confusion based on this conventional analysis, the fact that the Wyatt website is a
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`parody provides an even more convincing explanation of why consumers are
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`unlikely to be confused.
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`The district court determined that the Wyatt website was a parody because
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`it would be immediately apparent to anyone visiting the Wyatt website that it was
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`not the UTLM website due to the differences in content.9 The district court did
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`not commit error in making this finding, as there are sufficient differences
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`between the content and style of the two websites to avoid the possibility of
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`confusion.
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`The fact that the Wyatt website is a successful parody weighs heavily
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`9Defendants did not raise the issue of parody in the district court except
`with reference to the cybersquatting claim. However, parody is not an affirmative
`defense that must be asserted by the defendant, but is simply a factor to be
`considered in determining the likelihood of confusion. See World Wrestling Fed’n
`Entm’t, Inc. v. Big Dog Holdings, Inc., 280 F. Supp. 2d 413, 431 (D. Pa. 2003).
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`against a finding of likelihood of confusion. A parody adopts some features of the
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`original mark, but relies upon a difference from the original mark to produce its
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`desired effect. See Jordache Enters., 828 F.2d at 1486 (“An intent to parody is
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`not an intent to confuse.”); Cardtoons, L.C. v. Major League Baseball Players
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`Ass’n, 95 F.3d 959, 967 (10th Cir. 1996). In contrast, an unsuccessful
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`parody—one that creates a likelihood of confusion—is not protected from an
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`infringement suit. See Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g Group,
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`886 F.2d 490, 494 (2nd Cir. 1989) (confusing parodies are “vulnerable under
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`trademark law”); L.L. Bean, 811 F.2d at 32 n.3 (confusing parodies “implicate[]
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`the legitimate commercial and consumer protection objectives of trademark law”).
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`In conclusion, UTLM failed to