Dr. Mike Cohn appeals the district court's grant of summary judgment on his claim that Petsmart infringes his trademark "Where Pets are Family." He presents two issues: 1) whether the amount in controversy required for diversity jurisdiction was satisfied, and 2) whether there is a likelihood of confusion in Petsmart's use of Cohn's mark. We hold the amount in controversy requirement was met and that there is no likelihood of confusion between the two marks as a matter of law. Therefore, we affirm.
In 1993, Cohn opened his Boise veterinary clinic, the Critter Clinic, and began advertising it as a place "Where Pets are Family." In 1994, Petsmart began using the same slogan to promote its national chain of pet supplies stores, including its Boise store. Petsmart received a federal trademark registration for the phrase in 1996; Cohn received a state trademark registration for the same phrase in 1997.
Petsmart does not provide veterinary services. However, beginning in 1992, Dr. Deborah Barton provided pet vaccinations at the Boise Petsmart store on weekends, and since 1994, leased space within the Boise store for a full-service veterinary clinic. Petsmart has advertised that veterinary services are available at "our pet hospital."
Cohn sued Petsmart in Idaho state court for infringement of his Idaho trademark rights. His complaint did not claim a specific amount of damages, but asked for treble compensatory damages, treble the profits derived by Petsmart from the alleged infringement, attorney's fees, and an injunction. Petsmart removed the action to federal court based on diversity of citizenship and an amount in controversy over $75,000. The district court denied Cohn's motion to remand and granted Petsmart's motion for summary judgment, holding that there was no likelihood of confusion. Cohn appeals.
To support removal based on diversity jurisdiction, Petsmart has the burden of proving, by a preponderance of the evidence, that the amount in controversy exceeds $75,000. See Sanchez v. Monumental Life Ins. Co., 102 F.3d 398, 404 (9th Cir.1996); 28 U.S.C. § 1332. Petsmart relies on a single piece of evidence: a letter from Cohn to Petsmart offering to
A settlement letter is relevant evidence of the amount in controversy if it appears to reflect a reasonable estimate of the plaintiff's claim.
This evidence is sufficient to establish the amount in controversy. The heart of Cohn's suit is his request for injunctive and other equitable relief. "In actions seeking declaratory or injunctive relief, it is well established that the amount in controversy is measured by the value of the object of the litigation." Hunt v. Wash. State Apple Adver. Comm'n, 432 U.S. 333, 347, 97 S.Ct. 2434, 53 L.Ed.2d 383 (1977). The undisputed evidence shows that Cohn values his trademark rights — the object of the litigation — as worth more than $100,000. As the amount in controversy exceeded $75,000, the case was properly removed to federal court.
The district court did not err in granting summary judgment on Cohn's claim for trademark infringement.
Cohn asserts that Petsmart has used his mark so extensively that consumers are likely to mistake Cohn's clinic as being associated with Petsmart. This alleges a claim for reverse confusion. In such a case, the smaller senior user, such as Cohn, seeks to protect its business identity from being overwhelmed by a larger junior user who has saturated the market with publicity. See Dreamwerks Production Group, Inc. v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir.1998).
We examine the eight Sleekcraft factors to determine the likelihood of confusion.
Two of the Sleekcraft factors support Cohn's claim. First, the parties indisputably sell related goods and services: Cohn provides veterinary services and makes ancillary sales of pet supplies, while Petsmart sells pet supplies and offers ancillary veterinary services through Dr. Barton. See Dreamwerks, 142 F.3d at 1130.
Second, Petsmart's extensive advertising gives it the ability to overwhelm any public recognition and goodwill that Cohn has developed in the mark. See Walter v. Mattel, Inc., 210 F.3d 1108, 1111 n. 2 (9th Cir.2000) ("In a reverse confusion case ... the inquiry focuses on the strength of the junior mark because the issue is whether the junior mark is so strong as to overtake the senior mark.") (emphasis added); see also A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 231 (3d Cir.2000) ("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").
Although the mark "Where Pets Are Family" is a laudatory slogan that is not itself particularly distinctive, Petsmart has spent many millions of dollars to promote it through newspaper advertisements, television commercials, and its web site. In
Although these two factors raise the potential for confusion, Cohn's evidence fails to create a genuine issue that confusion is "probable, not simply a possibility." Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215, 1217(9th Cir.1987). Several other considerations, taken together, undercut Cohn's claim.
First, although the parties superficially use the identical slogan as a trademark, consumers will actually encounter the trademarks differently in the marketplace. A critical factor here is that both parties use the trademark merely as a tagline to their distinctive business names: as "Critter Clinic — Where Pets Are Family," and "Petsmart — Where Pets Are Family." The emphasis on these housemarks "has the potential to reduce or eliminate likelihood of confusion." 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:47 (4th ed.1997). See Norm Thompson Outfitters, Inc. v. General Motors Corp., 448 F.2d 1293, 1298 (9th Cir.1971) (likelihood of confusion mitigated where "the name of the company invariably accompanied the [trademarked] slogan"). The names "Petsmart" and "Critter Clinic" present the dominant commercial identity.
Similarly, although the parties share some overlapping marketing channels, their marketing efforts are concentrated in different media: Cohn obtains most of his customers through yellow pages listings, while Petsmart promotes itself through television advertising, newspaper inserts, and a Web site. More significantly, the advertisements themselves dispel confusion by emphasizing the names "Petsmart" and "Critter Clinic" in the largest, most prominent typefaces, while relegating the taglines to subordinate locations and sizes. See Walter, 210 F.3d at 1111(noting that different appearances of marks, when combined with housemark, "negates any similarity").
Third, Cohn presented no evidence of actual confusion.
Fourth, reasonably attentive pet owners should be particularly attentive in selecting a veterinarian for their family pets, and thus are likely to perceive the differences between Cohn's veterinary clinic and Petsmart.
Two other factors are relevant but essentially neutral. First, Cohn did not present evidence that Petsmart intended to copy Cohn's mark or that Petsmart should have known of Cohn's senior trademark rights. Cf. Commerce Nat'l Ins. Servs., 214 F.3d at 445; Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 480 (3d Cir.1994). Petsmart conducted a national trademark search before adopting the mark, and Cohn does not claim that the search was inadequate. Petsmart did not become aware of Cohn's use until 1997 when it received his demand letter. However, "absence of malice is no defense to trademark infringement." Dreamwerks, 142 F.3d at 1132 n. 12.
Second, the likelihood of expansion poses a negligible risk. The parties already compete closely, both geographically and in the products and services that they offer. There are no foreseeable circumstances that would significantly increase the potential for confusion. See Brookfield Communications, 174 F.3d at 1060(likelihood of expansion "is relatively unimportant where two companies already compete to a significant extent").
This is an unusual case where there is no likelihood of confusion even though the parties use the same mark for similar goods and services. Considering all the factors, there is no evidence that reasonably attentive pet owners would mistakenly affiliate Cohn's veterinary clinic with Petsmart. The parties present distinct commercial identities by placing their greatest emphasis on their unique business names. Cohn's customers will be particularly attentive, and thus more apt to recognize the differences between the businesses. Finally, despite six years of close coexistence, Cohn could offer no evidence that any customers had actually been confused.
We conclude that Cohn's evidence fails to raise a triable issue that confusion is likely, and thus AFFIRM the summary judgment entered in favor of Petsmart.