Earlier this month, the U.S. District Court for the Northern District of California ruled in favor of Marc Jacobs and its retailers, refusing to grant summary judgment to Korean luxury skin-care company Amarte USA Holdings, Inc. on its claim that Marc Jacobs’ EYE-CONIC eye shadow infringed Amarte’s rights to its trademarked EYECONIC eye cream. Ruling on cross-motions for summary judgment, U.S. District Judge Charles R. Breyer found that there was no likelihood of confusion between the products, so Marc Jacobs and the retailers were not liable for trademark infringement or other claims hinging on consumer confusion.

Judge Breyer relied on the Ninth Circuit’s Sleekcraft likelihood of confusion analysis, finding no likelihood of confusion.

The Sleekcraft factors include (1) the strength of the plaintiff’s mark; (2) the similarity of the parties’ goods (3) the similarity of the marks; (4) actual consumer confusion; (5) the relevant marketing channels; (6) how careful potential purchasers will be; (7) the defendant’s intentions in choosing the mark; and (8) the parties’ likelihood of expanding into additional markets.[1] Judge Breyer found that all of these factors were either neutral or favored Marc Jacobs. In particular, the decision notes that the EYECONIC eye cream mark is commercially weak given relatively low sales numbers over the past eleven years and lack of media coverage centered on this specific product. It also finds that the goods are not similar because eye cream is intended to reduce the effects of aging while bright colored eyeshadow enhances facial features. Further, the marks themselves are not similar due to the prominent presence of house marks and different shaped packaging, as shown below. Finally, the decision finds that the products are sold via different channels, with EYECONIC being sold at salons, spas, dermatology practices, and on Amazon, and EYE-CONIC being sold at luxury retail stores, and that consumers are likely to exercise care when purchasing both of these expensive products.

Brand owners should consider this ruling with an “eye” both to protecting their own trademarks and avoiding liability. First, this decision counsels that courts are likely to consider both the presence of a house mark and relevant packaging when comparing trademarks in the marketplace. This is particularly important for products, like cosmetics, that are often differentiated to consumers based on packaging shape and that remain in some part of their packaging throughout their use. Second, brand owners should consider the fact-intensive determination inherent in likelihood of confusion analyses, for which factors like the marketing of the products at issue (including the target consumer), the intended uses of the products (for example, makeup for daily wear vs. anti-aging), and the channels of sale (for example, luxury retailers vs. spas vs. e-commerce) will all come into play. Finally, brand owners should consider the exacting requirements for commercial strength and make sure to document marketplace recognition for products featuring valuable marks.

[1] AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 1979).