Two Slashers and an Advertising Company: In Likelihood of Confusion, Actual Confusion of Plaintiff’s Customers and Type of Mark are the Most Important Factors

Caliber Automotive Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 94 U.S.P.Q.2d 1866, 22 Fla. L. Weekly Fed. C 763 (11th Cir.(Ga.), May 07, 2010) (NO. 08-16179)




Caliber Automotive Liquidators, Inc. service mark owner of “Slash-It! Sales Event” provides advertising and promotions to car dealerships. Premier Automotive Group is a car dealership that makes its own promotional infomercial called the “Slasher Show”. Caliber sued Premier for trademark infringement based on it use of “Slasher” words in its promotion of car super sales. Caliber appealed a judgment for Premier in the North District of Georgia. The Appeals Court held that genuine issues of material fact existed as to strength of owner's “slasher” service marks, the actual confusion amongst the relevant consumer class, and likelihood of confusion. The Appeals court found that the actual confusion of actual customers of Caliber weighed very heavily in favor of finding an overall likelihood of confusion. Although the district court found that the Slash-It! Sales Event mark was descriptive, the district court erred in not recognizing that the marks also achieved federal incontestable status, and thus were entitled to strong protection. Moreover, Premier does not point to evidence to counter the evidence of confusion. The Appeals court stated, “the test [is] not whether the goods could be distinguished ... but whether the goods are so related in the minds of consumers that they get the sense that a single producer is likely to put out both goods Caliber has presented sufficient evidence of the strength of its marks and of actual confusion amongst the. The Appeals court reversed and remanded on the Federal issues.