PATRICK E. HIGGINBOTHAM, Circuit Judge:
Caliber Automotive Liquidators, Inc. provides advertising promotions to car dealerships and owns service marks on “Slash-It! Sales Event” and “Slasher Sale.” Premier Automotive Group uses its own marketing — an infomercial called the “Slasher Show” — to sell cars. Caliber sued Premier in the Northern District of Georgia under both federal and state law, claiming infringement. The district court granted Premier summary judgment, holding that no reasonable jury could find a likelihood of confusion between Caliber’s marks and Premier’s advertising. Caliber appealed. Persuaded that the district court erred in its measure of confusion of Caliber’s customers by Premier’s advertising and in the weight it gave an incontestible mark, we reverse and remand.
I.
Daniel Ryan owns and operates Caliber Automotive Liquidators, Inc., offering its services to car dealerships throughout the country.
Caliber’s service follows a regimen it developed to reduce quickly a dealer’s existing inventory. Starting two weeks before a dealership’s sale, Caliber assists in a saturation of the local market with radio, television, and print ads. In the days immediately before the sale, its team arrives on-site to prepare the dealership, putting up marketing paraphernalia and energizing the dealership’s sales staff, as Caliber’s staff do not act as floor salespersons. Instead, during the sale, the dealer’s salespersons — performing for the customers — histrionically slash the car prices and seal the deals. Caliber enjoys a demand for its service, as its methods often help dealerships shrink inventory over three-day “blowouts.”
Caliber has held a federal registration for “Slash-It! Sales Event” since 1999. The registration
provides that the service mark
is used for “advertising agency services, namely, promoting the services of automobile dealerships through the distribution of printed and audio promotional materials and by rendering sales promotion advice.” The Slash-It! Sales Event mark, in trademark parlance, is “incontestible,” a status we will come to.
Caliber also owns a federal registration
for the service mark “Slasher Sale,” which the company purchased in 2005.
Daniel
Ryan scours the country’s automotive advertisements to ensure that no car dealer uses the slasher marks. Ryan has stopped hundreds of would-be infringers, sells a license to use both Slash-It! Sales Event and Slasher Sale, and has favorably settled several nascent legal actions against alleged infringers.
In the summer of 2006, Ryan learned that Premier Automotive Group, owned by Sam Kazran, was running infomercials called Slasher Shows for its dealerships in greater Atlanta, advertising drastically reduced-priced vehicles. The public could not buy cars through the infomercial, but instead had to come to the showroom. In addition to the Slasher title, the infomercial featured a Slasher Countdown, a Slasher Man complete with slasher jewelry, off-camera voices screaming “slash it,” and on camera uses of the term “slash it.” Premier also highlighted the Slasher Show theme on its website.
To Ryan’s eyes, the Slasher Show infringed Caliber’s marks. More significantly, the infomercial perplexed its customers. Caliber over the years had done business with various Bill Heard Dealerships, each located in Georgia. Mark Henry, general manager of a Heard dealership, saw the Slasher Show and became upset. He was under the impression that Caliber had granted Heard exclusive use of slasher sales in Georgia, that the show for Premier breached that agreement. John Sumner, formerly general manager of a couple of Heard dealerships, was angered by a radio version and a TV episode of the Slasher Show, thinking that Caliber had violated the exclusive license by doing the show for Premier. Responding to the perceived duplicity, Sumner canceled Caliber-run Slash-It! Sales Events at his Union City, Georgia dealership and ordered his workforce not to pay Caliber’s invoices.
II.
Ryan called Kazran to work out a licensing agreement. Kazran responded that he commanded an “army of lawyers,” ending the conversation with rude comments. Caliber filed suit in federal court, alleging: (1) infringement under the Lanham Act;
(2) false designation of origin under the Lanham Act;
(3) deceptive trade practices under Georgia law;
(4) unfair competition under Georgia law;
and (5) dilution of trademark under Georgia law.
Premier moved for summary judgment, arguing that no reasonable jury could find infringement, and the district court agreed.
The court started with a correct observation that: “A successful cause of action for trademark infringement requires the evidence to establish that the infringer 1) used the mark in commerce, without consent; and 2) that the use was likely to cause confusion.”
Our focus is upon the element of confusion. The district court properly identified the seven-factor
weighted balancing test “to be considered as to the likelihood of confusion: (1) type of mark; (2) similarity of mark; (3) similarity of the products the marks represent; (4) similarity of the parties’ retail outlets and customers; (5) similarity of advertising media; (6) defendant’s intent; and (7) actual confusion. Of these, the type of mark and the evidence of actual confusion are the most important.”
The court concluded that: the similarity of the marks and “slight” actual confusion weighed in favor of likelihood of confusion; similarity in advertising did not tip the balance either way; and the strength of mark, similarity of events, similarity of sales method, and defendants’ intent all weighed against likelihood of confusion. Tallying the score, the district court found that no reasonable jury could find likelihood of confusion, and granted summary judgment to Premier on the trademark infringement claim under 15 U.S.C. § 1114.
Because the false designation of origin claim under 15 U.S.C. § 1125 and the Georgia-law claims for deceptive trade practices and unfair competition all pivoted upon the same likelihood of confusion test, the district court also granted summary judgment on those claims.
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PATRICK E. HIGGINBOTHAM, Circuit Judge:
Caliber Automotive Liquidators, Inc. provides advertising promotions to car dealerships and owns service marks on “Slash-It! Sales Event” and “Slasher Sale.” Premier Automotive Group uses its own marketing — an infomercial called the “Slasher Show” — to sell cars. Caliber sued Premier in the Northern District of Georgia under both federal and state law, claiming infringement. The district court granted Premier summary judgment, holding that no reasonable jury could find a likelihood of confusion between Caliber’s marks and Premier’s advertising. Caliber appealed. Persuaded that the district court erred in its measure of confusion of Caliber’s customers by Premier’s advertising and in the weight it gave an incontestible mark, we reverse and remand.
I.
Daniel Ryan owns and operates Caliber Automotive Liquidators, Inc., offering its services to car dealerships throughout the country.
Caliber’s service follows a regimen it developed to reduce quickly a dealer’s existing inventory. Starting two weeks before a dealership’s sale, Caliber assists in a saturation of the local market with radio, television, and print ads. In the days immediately before the sale, its team arrives on-site to prepare the dealership, putting up marketing paraphernalia and energizing the dealership’s sales staff, as Caliber’s staff do not act as floor salespersons. Instead, during the sale, the dealer’s salespersons — performing for the customers — histrionically slash the car prices and seal the deals. Caliber enjoys a demand for its service, as its methods often help dealerships shrink inventory over three-day “blowouts.”
Caliber has held a federal registration for “Slash-It! Sales Event” since 1999. The registration
provides that the service mark
is used for “advertising agency services, namely, promoting the services of automobile dealerships through the distribution of printed and audio promotional materials and by rendering sales promotion advice.” The Slash-It! Sales Event mark, in trademark parlance, is “incontestible,” a status we will come to.
Caliber also owns a federal registration
for the service mark “Slasher Sale,” which the company purchased in 2005.
Daniel
Ryan scours the country’s automotive advertisements to ensure that no car dealer uses the slasher marks. Ryan has stopped hundreds of would-be infringers, sells a license to use both Slash-It! Sales Event and Slasher Sale, and has favorably settled several nascent legal actions against alleged infringers.
In the summer of 2006, Ryan learned that Premier Automotive Group, owned by Sam Kazran, was running infomercials called Slasher Shows for its dealerships in greater Atlanta, advertising drastically reduced-priced vehicles. The public could not buy cars through the infomercial, but instead had to come to the showroom. In addition to the Slasher title, the infomercial featured a Slasher Countdown, a Slasher Man complete with slasher jewelry, off-camera voices screaming “slash it,” and on camera uses of the term “slash it.” Premier also highlighted the Slasher Show theme on its website.
To Ryan’s eyes, the Slasher Show infringed Caliber’s marks. More significantly, the infomercial perplexed its customers. Caliber over the years had done business with various Bill Heard Dealerships, each located in Georgia. Mark Henry, general manager of a Heard dealership, saw the Slasher Show and became upset. He was under the impression that Caliber had granted Heard exclusive use of slasher sales in Georgia, that the show for Premier breached that agreement. John Sumner, formerly general manager of a couple of Heard dealerships, was angered by a radio version and a TV episode of the Slasher Show, thinking that Caliber had violated the exclusive license by doing the show for Premier. Responding to the perceived duplicity, Sumner canceled Caliber-run Slash-It! Sales Events at his Union City, Georgia dealership and ordered his workforce not to pay Caliber’s invoices.
II.
Ryan called Kazran to work out a licensing agreement. Kazran responded that he commanded an “army of lawyers,” ending the conversation with rude comments. Caliber filed suit in federal court, alleging: (1) infringement under the Lanham Act;
(2) false designation of origin under the Lanham Act;
(3) deceptive trade practices under Georgia law;
(4) unfair competition under Georgia law;
and (5) dilution of trademark under Georgia law.
Premier moved for summary judgment, arguing that no reasonable jury could find infringement, and the district court agreed.
The court started with a correct observation that: “A successful cause of action for trademark infringement requires the evidence to establish that the infringer 1) used the mark in commerce, without consent; and 2) that the use was likely to cause confusion.”
Our focus is upon the element of confusion. The district court properly identified the seven-factor
weighted balancing test “to be considered as to the likelihood of confusion: (1) type of mark; (2) similarity of mark; (3) similarity of the products the marks represent; (4) similarity of the parties’ retail outlets and customers; (5) similarity of advertising media; (6) defendant’s intent; and (7) actual confusion. Of these, the type of mark and the evidence of actual confusion are the most important.”
The court concluded that: the similarity of the marks and “slight” actual confusion weighed in favor of likelihood of confusion; similarity in advertising did not tip the balance either way; and the strength of mark, similarity of events, similarity of sales method, and defendants’ intent all weighed against likelihood of confusion. Tallying the score, the district court found that no reasonable jury could find likelihood of confusion, and granted summary judgment to Premier on the trademark infringement claim under 15 U.S.C. § 1114.
Because the false designation of origin claim under 15 U.S.C. § 1125 and the Georgia-law claims for deceptive trade practices and unfair competition all pivoted upon the same likelihood of confusion test, the district court also granted summary judgment on those claims.
Finally, the district court granted Premier summary judgment on Caliber’s Georgia-law trademark dilution claim, because Caliber has no registered Slasher mark on file in the state of Georgia — a prerequisite for recovery.
Caliber appealed, focusing on two arguments. First, the district court acknowledged evidence of actual confusion of Caliber’s customers but devalued it, because the Slasher Show did not confuse Premier’s retail customers. Caliber urges that this was error. Second, Caliber asserts that the district court understated the strength of its marks. With these factors weighing in favor of likelihood of confusion, the argument goes, a reasonable jury could find for Caliber — making summary judgment improper.
III.
“We review de novo a district court’s grant of summary judgment. Summary judgment is proper only if the record before the district court shows that there is no genuine issue as to any material fact and [Premier] is entitled to judgment as a matter of law. We must view the evidence in the light most favorable to [Caliber], rather than weighing the evidence ourselves or making credibility determinations.”
A.
All parties concede that evidence of actual confusion is the most weighty consideration.
The district court analyzed the evidence of actual confusion of two audiences; (1) Caliber’s car dealership customers and (2) car-buying retail customers. Although the district court found that Caliber’s patrons were confused, it offset this evidence with the fact that the car-buying public was not. In the end, the court found an overall “slight” amount of actual confusion.
On appeal, Caliber challenges the district court’s focus on the car-buying public, the customers who frequent Premier’s showrooms, understandably because the type of confusion was a heavy stone in the balance. We have explained that “[perhaps as important as ... the number of instances of confusion are the kinds of persons confused and degree of confusion. Short-lived confusion or confusion of individuals casually acquainted with a business is worthy of little weight while confusion of actual customers of a business is worthy of substantial weight.”
There is more. We have specified that “[a]etual
consumer
confusion is the best evidence of likelihood of confusion.”
This circuit’s caselaw makes plain that the consumers of the relevant product or service, especially the mark holder’s customers, turn the key.
All potential consumers of
the relevant product or service, including middlemen, can inform the inquiry, and the ultimate consumers deserve special attention.
In this case, advertising and promoting represent the services. As car dealerships, not the general public, purchase slasher promotions, it is unremarkable that a retail customer of a dealer would be unfamiliar with Caliber. Confusion of persons casually acquainted with a business carry little weight. At the same time, Caliber has proffered competent summary judgment evidence of actual confusion of the car dealerships, the relevant purchasing population. Here, “the people confused are precisely those whose confusion is most significant.”
Caliber asks the court to create a bright-line rule precluding summary judgment when the plaintiff in an infringement action presents an instance of actual confusion, asserting that the rule would bring the Eleventh Circuit into line with the Ninth.
This court’s caselaw forecloses such a binary rule. Rather, there “is no absolute scale as to how many instances of actual confusion establish the existence of that factor .... [T]he court must evaluate the evidence of actual confusion in the light of the totality of the circumstances involved.”
Similarly we have held that merely one instance of actual confusion did not militate in favor of finding likelihood of confusion.
While we have no hard-and-fast rule, under our standard “the quantum
of
evidence needed to show actual confusion is relatively small.”
Viewing the summary
judgment record in a light most favorable to Caliber, it has shown actual confusion.
The district court erred by overvaluing lack of confusion exhibited by the general public, an audience with no experience in the advertisement-buying market.
33.
When considering the type of marks, the second most important factor in the balance,
the district court held that Caliber’s were relatively weak, descriptive with no secondary meaning, rejecting Caliber’s contention that its marks are relatively strong.
“There are four recognized types of mark, ranging from weakest to strongest: generic, descriptive, suggestive and arbitrary. The stronger the mark, the greater the scope of protection accorded it.”
“An arbitrary or fanciful mark bears no logical relationship to the product or service it is used to represent [e.g., Kodak]. A suggestive mark refers to some characteristic of the goods, but requires a leap of the imagination to get from the mark to the product [e.g., Penguin Refrigerators]. A descriptive mark identifies a characteristic or quality of the service or product [e.g., Vision Center].”
Caliber’s marks are, at a minimum, descriptive. The dispute centers on the strength of descriptive marks. Along the spectrum from generic to arbitrary, descriptive marks fall on the weaker end. Indeed, “[a] descriptive mark ... is protected only when secondary meaning is shown.”
A service mark develops secondary meaning when the consuming public associates the services with a particular provider.
Caliber urges incontestible marks like Slash-It! Sales Event do have secondary-meaning, and are hence strong marks. In
Dieter v. B & H Industries of Southwest Florida,
this court held that “incontestable status is a factor to be taken into consideration in likelihood of confusion analysis. Because [a] mark is incontestable, then it is presumed to be at least descriptive with secondary meaning, and therefore a relatively strong mark.”
Slash-It! Sales Event has attained federal incontestible status, so here, as in
Dieter,
the district court erred in holding that the mark was merely descriptive, and not entitled to strong protection. Moreover, Premier does not point to evidence to counter the evidence of confusion.
Rather, Premier argues that it was not its burden to do so, staking an untenable legal position.
C.
This court has upheld a jury verdict for the plaintiff in an infringement case where the only two factors favoring likelihood of confusion were evidence of (1) a strong mark and (2) actual confusion.
We explained: “[Bjecause the two most important factors in determining the likelihood of confusion — type of mark and actual confusion — weighed in favor of finding such confusion, there was sufficient evidence to support a reasonable jury’s finding of infringement.”
Sensitive to the cautions that the seven-factor test ■ “entails more than the mechanistic summation of the number of factors on each side ... [and] involves an evaluation of the overall balance” and that “a court must also take into account the unique facts of each case,”
we will review the remaining five factors.
When analyzing the similarity of the mark, the court must consider “the overall impression created by the marks, including a comparison of the appearance, sound and meaning of the marks, as well as the manner in which they are displayed.”
The Slash-It! Sales Events, Slasher Sales, and Slasher Show use the word “slash” to cut prices on cars. As the district court found, Caliber has created a disputed issue of material fact that the slasher slogans leave the same impression, weighing in favor of likelihood of confusion.
Analyzing the similarity of the products the marks represent “requires a determination as to whether the products
are the kind that the public attributes to a single source, not whether or not the purchasing public can readily distinguish between the products of the respective parties.”
The district court saw this factor as weighing against likelihood of confusion, finding dispositive that: (1) the Slasher Show plays on television while the Slash-It! sales are live events; (2) Slasher Show customers cannot during the show test drive cars but Slash-It! event customers can; (3) Slash-It! uses print media where Slasher Show does not; and (4) Slash-It! events often involve painting car windows with a “was” price so that salesmen can “slash” it and write in a “now” price. Despite these differences, the district court conceded several likenesses: (1) crowds at both sales chant “slash it;” (2) both sales market automobiles; and (3) both sales drastically reduce purchase prices. As we see it, the similarities go to the heart of these promotions, whereas the differences might be seen as arising only at the periphery. We are mindful that “the test [is] not whether the goods could be distinguished ... but whether the goods are so related in the minds of consumers that they get the sense that a single producer is likely to put out both goods.”
At the least, the similarities between the two sales allow for the inference that “a reasonable consumer could possibly attribute the products here to the same source.”
The similarity of the parties’ retail outlets and customers “takes into consideration where, how, and to whom the parties’ products are sold.”
The district court found this factor to weigh against likelihood of confusion. We disagree. By imputing a sale of a slasher campaign from Premier to its dealerships, we can see that both parties sell a marketing ploy to car dealers. Caliber sells to entities looking to outsource their marketing, Premier decided not to outsource its promotional ideas but to do them in-house. Promoting is the service and car dealerships the consumers.
iv.
The similarity of advertising media “factor looks to each party’s method of advertising.”
This is difficult to analyze, because the allegedly infringed service is itself advertising. The district court found the overall weight neutral. We agree that the prong here adds little.
v.
When analyzing an alleged infringer’s intent, we must determine whether the defendant “adopted a plaintiffs mark with the intention of deriving a benefit from the plaintiffs business reputation.”
Caliber alleges that Kazran’s barrage of foul language when Ryan asked him to stop using the marks evidences a maligned intent. We agree with the district court that this is little evidence of Premier’s intent when it allegedly adopted the Slasher marks. Rather, the rudeness reflects contempt for the strength of the service marks. Caliber also suggests that some of Premier’s employees have carried over from a dealership’s previous management, one which had bought a Slash-It! Sales Event, intimating that these employees stole the Slasher concept from Caliber. The district court rightly found that Cali
ber has failed on this factor to raise a genuine issue of material fact, weighing against a finding of likelihood of confusion.
Caliber has presented sufficient evidence of the strength of its marks and of actual confusion amongst the relevant consumer class to avoid summary judgment. Although it may be decided as a matter of law, “likelihood of confusion generally is a question of fact,”
and Caliber explicitly “stops short of asking this Court to rule that infringement [occurred].” Caliber, instead, seeks a remand for trial. We reverse and remand for further proceedings consistent with this opinion, including trial. Caliber does not in its brief challenge the adverse judgment on its dilution of trademark claim under Georgia law,
which the district court did not base on a likelihood of confusion. We deem issues not clearly briefed on appeal to be abandoned
and leave the state-law dilution of trademark portion of the judgment undisturbed.
REVERSED and REMANDED.