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Ninth Circuit:
‘Align’-Brand Yoga Leggings Aren’t Apt to Be Confused With ‘Aliign’-Brand Yoga Leggings
Opinion Emphasizes That One Manufacturer Relies on Sales on Its Website and Its Stores, the Other Primarily on Its Website
By a MetNews Staff Writer
The Ninth U.S. Circuit Court of Appeals has affirmed a determination by the District Court for the Central District of California that consumers are not apt to confuse Align-brand yoga leggings with those sold under the Aliign label.
It relied heavily on the difference in how the competing manufacturers market their goods, noting that one does so through its website as well as its “brick-and-mortar” stores while the other does so primarily through its website.
Aliign Activation Wear, LLC (“AAW”), based in Los Angeles, commenced using the “ALIIGN” mark on jewelry in 2009, and in 2011, began applying that mark on yoga mats and yoga apparel and accessories. The U.S. Patent and Trademark Office granted it a trademark in 2017.
Lululemon undertook to sell Align yoga mats in 2008 and in 2015, started placing the “Align” label on yoga apparel, proceeding to market more than $1 billion worth of such apparel, and in particular, leggings.
Trademark Application Denied
On Feb. 8, 2016, Lululemon filed a trademark application for “Align” in connection with activeware and other products which the Patent and Trademark Office turned down on June 13, 2017, citing likelihood of confusion with AAW’s registered mark, “Aliign.” The office spurned two subsequent applications limiting use of “Align” to use in connection with “pant” or “crop.”
AAW on April 9, 2020, sued Lululemon Athletica Canada Inc. and Lululemon USA Inc. for trademark infringement, seeking, pursuant to 15 U.S.C. §1117, a trebling of its actual damages or Lululemon’s profits, whichever was greater, plus attorney fees. It also called for the destruction of “any and all labels, signs, prints, packages, wrappers, receptacles, and advertisements in the possession or under the control of defendants bearing the marks ALIIGN or ALIGN or any similar mark, and any and all plates, molds, matrices and other means of making the same.”
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Above is a depiction of Align-brand yoga leggings, in an ad, the Ninth U.S. Circuit Court of Appeals on Tuesday held that the manufacturer of the product does not infringe upon the registered trademark applied to “Aliign” yoga leggings. |
Summary Judgment Awarded
District Court Judge Stephen V. Wilson of the Central District of California on June 7, 2021, granted summary judgment in favor of Lululemon. Referencing tests for infringement of marks laid down in the Ninth Circuit’s 1979 opinion in AMF Inc. v. Sleekcraft Boats, he said:
“To analyze the likelihood of confusion, courts consider eight factors known as the Sleekcraft factors: (1) strength of the mark(s): (2) relatedness of the goods: (3) similarity of the marks: (4) evidence of actual confusion: (5) marketing channels: (6) degree of consumer care; (7) the defendants’ intent: and (8) the likelihood of expansion by the trademark holder.”
Wilson explained in a footnote that “[t]he parties agree that the likelihood of expansion factor is irrelevant here because both parties compete in the same marketplace.” Examining the other seven factors, he declared that only one of them—the second, “relateness of the goods”—weighed in favor of AAW, noting:
“Here, there is no doubt that the goods are related. The goods produced by each party are the same: high-end yoga apparel. And, because the goods are the same, they inherently are sold to the same class of purchasers.”
Looking at the overall picture, he concluded that no reasonable juror could discern a likelihood of confusion.
The Ninth Circuit, in affirming on Tuesday, agreed with Wilson’s analysis. In a memorandum opinion, Judges Michelle Friedland and Paul J. Watford, along with Senior Judge A. Wallace Tashima, said:
“The most significant factor in this case is the way the companies’ respective products are marketed to and encountered by consumers. The record reflects that Lululemou primarily sells its Align yoga pants through its own website and brick-and-mortar stores, with limited sales in select yoga studios. AAW, meanwhile, sells its products primarily through its own website, and had limited distribution in Urban Outfitters in 2014. The near absence of any overlap in marketing or distribution channels weighs heavily against a finding that reverse confusion is likely here.”
They added:
“The Align pants sold by lululemon are also typically accompanied by either the dominant and distinctive lululemon house mark or the company name, further diminishing any likelihood of confusion….What is relevant is how consumers actually encounter the goods in the marketplace and the circumstances surrounding their purchase. The stark difference between the companies’ marketing of their goods weighs heavily in lululemon’s favor.”
Google Searches
AAW argued that consumer confusion is shown from the fact that if a search is made on Google for an “Actiive” product, what comes up immediately are hits relevant to “Active” products.
The Ninth Circuit panel responded:
“The Google searches show that when consumers search for ‘aliign pants’ or ‘aliign yoga pants’ online, they are provided with results that clearly indicate the products on the page are lululemon products. Such unambiguous labeling significantly reduces any confusion for the prudent consumer….The page also informs consumers that it is providing results with the word ‘align,’ and allows consumers to search specifically for results with the word ‘aliign’ if they wish. It is highly unlikely that any consumer searching for AAW’s products would be confused as to the source of the goods he or she encounters in search results given these circumstances.”
The case is Aliign Activation Wear, LLC v. Lululemon Athletica Canada Inc., 21-55775.
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