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ZW USA, Inc. v. PWD Systems, LLC

United States Court of Appeals, Eighth Circuit

April 26, 2018

ZW USA, Inc., a California Company Plaintiff- Appellant
v.
PWD Systems, LLC, a Missouri Limited Liability Company Defendant-Appellee ZW USA, Inc., a California Company Plaintiff- Appellee
v.
PWD Systems, LLC, a Missouri Limited Liability Company Defendant-Appellant

          Submitted: December 14, 2017

          Appeals from United States District Court for the Eastern District of Missouri - St. Louis

          Before SMITH, Chief Judge, KELLY and ERICKSON, Circuit Judges.

          KELLY, Circuit Judge.

         This case involves a trademark dispute between two companies that sell plastic bags for picking up and disposing of dog droppings. ZW USA, Inc. entered the dog-bag market first and registered the mark ONEPUL. PWD, LLC entered the market after ZW under the trade name BagSpot. On its website, PWD uses the phrase "one-pull" to describe some of its products. ZW sued PWD for infringement of its ONEPUL trademark, and PWD countersued claiming that the ONEPUL trademark is invalid. The district court granted summary judgment to PWD on the infringement claim, and to ZW on the validity claim. Both parties appealed.

         I. Background

         ZW and PWD sell plastic bags that customers use to pick up after their dogs. Both companies sell "wicket" bags (also called "header" bags). Like plastic grocery bags, wicket bags are sold stacked on top of one another and connected to some sort of header strip. Also like grocery bags, wicket bags are dispensed by tearing the bag off the header strip. Wicket bags are designed to be dispensed one at a time, with a single pull of the hand.

         ZW, a California company, began selling bags first. ZW stands for "zero waste." At some point, ZW began using the marks "ONEPUL" and "SINGLPUL" with its wicket bags. These marks, of course, are misspelled truncations of the phrases "one-pull" and "single-pull." In 2013, ZW applied for trademarks for ONEPUL and SINGLPUL, which the United States Patent and Trademark Office (PTO) granted in 2014. The PTO did not ask ZW for proof that the marks had acquired distinctiveness in the dog-bag marketplace. Since 2010, ZW has spent some $1.5 million on advertising for all of its products; it is unclear what portion of that sum was spent on advertising ONEPUL wicket bags.

         PWD is a Missouri company that began selling wicket bags in 2012. It markets its products under the trade name BagSpot, and competes with ZW for customers. PWD's website identifies its wicket bags using the phrases "one-pull" and "one pull." As part of its marketing strategy, PWD purchased the term "zerowaste" from Google Adwords. As a result, when a person uses Google to search for "zerowaste, " PWD's site appears near the top of the results page.

         ZW filed suit alleging infringement of its ONEPUL and SINGLPUL trademarks. PWD countersued, claiming that both trademarks were invalid. At summary judgment, the district court determined that, while PWD had not infringed on ZW's marks, PWD had not presented evidence sufficient to overcome the strong presumption that ZW's registered marks were valid. It therefore granted PWD summary judgment on the infringement claim, and granted ZW summary judgment on the validity claim. On appeal, the parties raise the same issues that were before the district court. We address each in turn.

          II. Trademark Infringement

         ZW contends that PWD's description of its wicket bags as "one-pull"[1] infringes on its ONEPUL trademark.[2] We review this claim de novo. Frosty Treats Inc. v. Sony Computer Entm't Am., Inc., 426 F.3d 1001, 1003 (8th Cir. 2005).

         Trademarks are "any word, name, symbol, or device . . . used by a person . . . to identify and distinguish his or her goods . . . from those manufactured or sold by others." 15 U.S.C. § 1127. The owner of "a registered mark . . . has a civil action against anyone employing an imitation of it in commerce when 'such use is likely to cause confusion, or to cause mistake, or to deceive.'" KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 117 (2004) (quoting 15 U.S.C. ยง 1114(1)(a)). The plaintiff mark owner has the burden of "showing that the defendant's actual practice ...


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