To determine whether a likelihood of confusion exists for trademark infringement, the Ninth Circuit applies the multi-factor inquiry articulated in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979). But the application of those factors is flexible, and a party need not demonstrate that every factor supports its position to prevail. See Dreamwerks Prod. Grp., Inc. v. SKG Studio, 142 F.3d 1127, 1129–30 (9th Cir. 1998).

Lack of Marketing Overlap with ALIIGN

In Aliign Activation Wear, LLC v. Lululemon Athletica Canada, Inc., No. 21-55775 (9th Cir. Aug. 9, 2022), where Aliign alleged that lululemon's ALIGN yoga pants infringed its ALIIGN trademark, the Ninth Circuit found that the most significant factor in this case was “the way the companies' respective products are marketed to and encountered by consumers.”

Lululemon primarily sells its Align yoga pants through its own website and brick-and-mortar stores, with limited sales in select yoga studios; while Aliign sells its products primarily through its own website, and had limited distribution in Urban Outfitters in 2014.

The Court found there was a near absence of any overlap in marketing or distribution channels which weighed heavily against finding likelihood of confusion. See Ironhawk Tech., Inc. v. Dropbox, Inc., 2 F.4th 1150, 1166 (9th Cir. 2021); Lindy Pen Co. v. Bic Pen Corp., 725 F.2d 1240, 1245 (9th Cir. 1984).

Although both companies use the Internet generally as a marketing channel, this “does not shed much light on the likelihood of consumer confusion.” Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1151 (9th Cir. 2011).

Other Sleekcraft Factors

Furthermore, lululemon's Align pants also are typically accompanied by either the lululemon house mark or company name, which further diminishes any likelihood of confusion. See Cohn v. Petsmart, Inc., 281 F.3d 837, 842 (9th Cir. 2002).

The Court also found that there is no indication that lululemon intended to infringe the trademark where lululemon conducted a trademark search that did not reveal Aliign's ALIGN mark before launching the Align yoga apparel line.

In addition, despite both parties having used their mark respectively for years, there was no evidence of actual confusion.

Also, both companies' yoga products are far more expensive than other yoga products; so, the Court found that one would expect that consumers would exercise a high level of care before purchasing anything from Aliign or lululemon. A high level of care reduces any likelihood of confusion. See Ironhawk, 2 F.4th at 1167.

Initial Interest Confusion

Aliign also argued initial interest confusion based on Internet search results from Google. This required showing that “a reasonably prudent consumer accustomed to shopping online” would be confused by the Google search results. Multi Time Mach., Inc. v. Amazon.com, Inc., 804 F.3d 930, 937 (9th Cir. 2015) (quoting Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1176 (9thCir. 2010)).

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. See id. at 937–38. 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. See id. at 938–39.

Thus, the Ninth Circuit affirmed the district court's grant of summary judgment of no trademark infringement.

A more detailed discussion of the facts can be found in the district court's order granting summary judgment of no infringement, the appendix for which includes the Google search results discussed above.

The attorneys at Thomas P. Howard, LLC litigate trademark cases nationwide including in Colorado.