Submitted: December 14, 2017
Appeals from United States District Court for the Eastern
District of Missouri - St. Louis
SMITH, Chief Judge, KELLY and ERICKSON, Circuit Judges.
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
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.
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
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.
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
contends that PWD's description of its wicket bags as
"one-pull" infringes on its ONEPUL
trademark. We review this claim de novo. Frosty
Treats Inc. v. Sony Computer Entm't Am., Inc., 426
F.3d 1001, 1003 (8th Cir. 2005).
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. § 1114(1)(a)). The
plaintiff mark owner has the burden of "showing that the
defendant's actual practice ...