Different meaning of Fizzkids and Wizkids defeats infringement claim even for similar products

Wizkids/NECA, LLC v. TIII Ventures, LLC, No. 17-CV-2400 (RA),
2019 WL 1454666 (S.D.N.Y. Mar. 31, 2019)
TIII sells “soda-can-themed toys, specifically, vinyl
characters that are sold in packaging resembling a soda can.” The “Fizzkids” are
called “Cranked Cola,” “Bone Crusher Root Beer,” “Vicious Dog Sparkling Water,”
“Rummy Cola,” “Zombie Juice,” and “Alien Limeade.” NECA “is a leading provider
of collectible figures, games and game equipment in the United States and
abroad.” It has registered “WIZKIDS” for “game equipment, namely, miniature toy
figurines and role playing equipment in the nature of game book manuals;
collectible toy figurines for role playing games; and role playing games and
game pieces and accessories therefore.” Some NECA figurines are licensed characters
from well-known brands of comic books, television shows, movies, and video
sued TIII, staying its opposition to TIII’s pending application to register its

TIII’s survey showed consumers who’d bought a “collectible
toy figurine” costing more than $10 in the past six months, or expecting to
purchase one in the next six months, an image of the Rummy Cola figure and can
and asked: “What company makes or puts out this collectible toy figurine that
you just saw?” Those that named a company were then asked: “Why do you say
that?”  Then: “do you believe the company
that makes or puts out this product … IS sponsored or approved by another
company, IS NOT sponsored or approved by another company, or you don’t know or
have no opinion.” The “is sponsored” respondents got a follow-up.  One of 617 respondents identified WIZKIDS as
sponsoring or approving the FIZZKIDS product. NECA’s expert criticized the
survey, mainly for not being able to detect confusion given that Wizkids isn’t
a “top of mind” trademark.

Wizkids package with Guardians of the Galaxy
The court found that Wizkids was, at most, moderately
strong: it was suggestive (not arbitrary or fanciful) and it had some
marketplace success, but no direct evidence of secondary meaning.
Similarity was the real hurdle.  The marks sounded similar, but gave “notably
different commercial impressions.” 
Visually, they weren’t similar, with “distinctly different fonts and
color combinations.” They were in different places on the packaging, “undercut[ting]
the similarity of the sound of the marks.”
But the real killer was the meaning/context differences.  “Fizz” evoked a beverage, and obviously connected
to the soda can theme.  “Wiz” is short
for “wizard,” and has no soda theme. Further, Wizkids had a reverse house mark
problem: that mark was “used primarily with products that bear more famous
licensed brands.” The “Second Circuit has repeatedly found … the presence of
a distinct brand name … weigh[s] against a finding of confusing similarity.”
Even if some Wizkids products are sold in cylindrical packages, that didn’t
make them soda-themed.  And even if
Wizkids has just launched two product lines without licensed characters, there
was no evidence that “products bearing only the WIZKIDS mark present a similar
commercial impression to the soda-themed products bearing the FIZZKIDS mark.”  Sound similarity was “eclipsed by the
differences in their meaning, modes of presentation, and the overall impression
they convey.” Strongly favored TIII.
There was a factual issue on product relatedness/bridging
the gap, so that factor could favor NECA.
Where a defendant submits survey evidence “tending to rebut
charges of actual consumer confusion,” plaintiff’s “failure to present its own
consumer survey weighs against a finding of consumer confusion.” NECA argued
that actual confusion evidence was understandably lacking because only a few
hundred of FIZZKIDS’ products have been sold. Moreover, the court gave the
survey little weight (though didn’t deem it inadmissible, even though it lacked
a control and didn’t leave the image in front of the consumer when asking
questions, as would have been more accurate to replicate market conditions).
But even without the survey, lack of evidence of actual confusion weighed in
TIII’s favor.
There was no evidence of bad faith. Choosing a mark because
it “reflects the product’s characteristics,” as TIII did, supported a finding
of good faith, as did the evidence that TIII chose the FIZZKIDS mark before it
was aware of the WIZKIDS mark, and that TIII previously engaged in trademark
searches and sought the advice of counsel.
Quality, that Second Circuit makeweight, managed to favor
TIII as well (though deserved little weight) because the quality differences
between the parties’ products made confusion less likely.

Consumer sophistication: NECA’s predecessor-in-interest, responding to the
PTO’s initial rejection of its application to register the WIZKIDS mark based
on the registered third-party mark “WIX-KIDS” for toy vehicles, argued that the
“consumers of the goods offered under the [WIZKIDS] mark populate a community
of gaming enthusiasts … that are thus likely to be knowledgeable about the
goods they have chosen.” But that was sixteen years ago, and NECA argued that
it had expanded the product line greatly since then. This was enough to create
a factual issue, since there’s no trademark file wrapper estoppel.
On balance, the dissimilarity of the parties’ marks and the
lack of evidence of bad faith weighed strongly in TIII’s favor. The strength of
the mark weighed moderately in NECA’s favor, but even assuming the factors that
were factually disputed were resolved on NECA’s side, no reasonable jury could
find likely confusion. “[T]he maximum weight that can reasonably be assigned to
these factors cannot overcome the finding that ‘looking at the products in
their totality,’ consumers are not likely to be confused.”  Summary judgment for TIII.

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