Marketquest Group, Inc. v. Bic Corp.

                 FOR PUBLICATION

  UNITED STATES COURT OF APPEALS
       FOR THE NINTH CIRCUIT


MARKETQUEST GROUP, INC., DBA                No. 15-55755
All-In-One, a California corporation,
                  Plaintiff-Appellant,         D.C. No.
                                            3:11-cv-00618-
                  v.                           BAS-JLB

BIC CORP., a Connecticut
corporation; BIC USA, INC., a                 OPINION
Delaware corporation; NORWOOD
PROMOTIONAL PRODUCTS, LLC,
AKA Norwood Operating Company,
LLC, DBA Norwood Promotional
Products, a Delaware limited liability
company,
               Defendants-Appellees.



      Appeal from the United States District Court
         for the Southern District of California
      Cynthia A. Bashant, District Judge, Presiding

           Argued and Submitted May 9, 2017
                 Pasadena, California

                       Filed July 7, 2017
2            MARKETQUEST GROUP V. BIC CORP.

    Before: MILAN D. SMITH, JR. and JOHN B. OWENS,
     Circuit Judges, and EDWARD R. KORMAN, * District
                            Judge.

             Opinion by Judge Milan D. Smith, Jr.


                          SUMMARY **


                            Trademark

    The panel reversed the district court’s summary
judgment in favor of the defendants in a trademark
infringement suit.

    The panel held that the plaintiff adequately pleaded a
cause of action for trademark infringement under a “reverse
confusion” theory of likely confusion. The panel held that
reverse confusion is not a separate claim that must be
specifically pleaded, but instead is a theory of likely
confusion that may be alleged by itself or in addition to
forward confusion. Thus, when reverse confusion is
compatible with the theory of infringement alleged in the
complaint, a plaintiff need not specifically plead it.

    The panel held that consideration of the intent factor in
the likelihood of confusion analysis varies with the type of
confusion being considered, and no one type of evidence is

      The Honorable Edward R. Korman, United States District Judge
      *

for the Eastern District of New York, sitting by designation.
    **
       This summary constitutes no part of the opinion of the court. It
has been prepared by court staff for the convenience of the reader.
            MARKETQUEST GROUP V. BIC CORP.                     3

required to establish intent in trademark infringement cases
under either a forward or reverse theory of confusion.

    The panel held that genuine issues of material fact
existed regarding whether defendants’ uses of plaintiff’s
trademark “All-in-One” was protected by the fair use
defense. To establish the defense, a defendant must show
that its use is (1) other than as a trademark, (2) descriptive of
the defendant’s goods, and (3) in good faith. The degree of
customer confusion is also a factor in evaluating fair use.

    As to plaintiff’s trademark “The Write Choice,” the
panel held that the district court erred by applying the fair
use analysis after determining that the plaintiff presented no
evidence of likely confusion. The panel remanded the case
for further proceedings.


                         COUNSEL

Gregory Guillot (argued), Gregory H. Guillot P.C., Dallas,
Texas; Michael T. Lane and Kent M. Walker, Lewis Kohn
& Walker L.L.P., San Diego, California; for Plaintiff-
Appellant.

Richard Sybert (argued), Joni B. Flaherty, and Yuo-Fong C.
Amato, Gordon & Rees LLP, San Diego, California, for
Defendants-Appellees.
4          MARKETQUEST GROUP V. BIC CORP.

                         OPINION

M. SMITH, Circuit Judge:

    Marketquest Group, Inc. (Marketquest) appeals the
district court’s grant of summary judgment in favor of
Norwood Promotional Products, LLC (Norwood), BIC
Corp., and BIC USA, Inc. (collectively, Defendants) on
Marketquest’s trademark infringement claims. The district
court held that Defendants’ uses of Marketquest’s
trademarks “All-in-One” and “The Write Choice” were
completely protected by the fair use defense. We reverse
and remand.

          FACTS AND PRIOR PROCEEDINGS

    Marketquest produces and sells promotional products,
and has used its United States Patent and Trademark Office
registered trademarks “All-in-One” and “The Write Choice”
since 1999 and 2000, respectively. In 2009, BIC Corp. and
BIC USA, Inc. (collectively, BIC) acquired Norwood, a
promotional products company, and in 2010 Norwood
published a promotional products catalogue for 2011 that
featured the phrase “All-in-One” on the cover of and in the
catalogue.     The 2011 catalogue consolidated all of
Norwood’s eight “hard goods” catalogues “in one”
catalogue, whereas they were previously published in
separate catalogues. In 2010, BIC also used the phrase “The
WRITE Pen Choice for 30 Years” in advertising and
packaging for its pens, in connection with its thirtieth
anniversary promotion.

    Marketquest filed the operative First Amended
Complaint (FAC) against Defendants on May 5, 2011,
alleging infringement of Marketquest’s “All-in-One” and
“The Write Choice” trademarks. On August 26, 2011,
            MARKETQUEST GROUP V. BIC CORP.                   5

Marketquest moved for a preliminary injunction. The
arguments and evidence submitted by Marketquest in
support of its motion pertained only to Defendants’ use of
“All-in-One,” and not “The Write Choice,” so the district
court deemed Marketquest’s request for a preliminary
injunction as to Defendants’ use of “The Write Choice”
waived. The district court denied the requested injunction
regarding Defendants’ use of “All-in-One” after concluding
that Marketquest was unlikely to succeed on the merits
because Defendants were likely to succeed in asserting a fair
use defense.

    Discovery proceeded and the parties filed cross-motions
for summary judgment. The district court granted summary
judgment for Defendants, holding that there was “some
likelihood of confusion and therefore the potential for
trademark infringement liability,” but that further analysis of
likelihood of confusion was unnecessary because fair use
provided Defendants a complete defense to allegations of
infringement of both the “All-in-One” and “The Write
Choice” trademarks. Marketquest timely appealed.

                  STANDARD OF REVIEW

    We review the district court’s grant of summary
judgment de novo. KP Permanent Make-Up, Inc. v. Lasting
Impression I, Inc., 408 F.3d 596, 602 (9th Cir. 2005) (KP
Permanent II). We view the evidence in the light most
favorable to Marketquest and determine “whether there are
any genuine issues of material fact and whether the district
court correctly applied the relevant substantive law.” Id. We
are mindful that “summary judgment is generally disfavored
in the trademark arena” due to “the intensely factual nature
of trademark disputes.” Id. (quoting Entrepreneur Media,
Inc. v. Smith, 279 F.3d 1135, 1140 (9th Cir. 2002)).
6          MARKETQUEST GROUP V. BIC CORP.

                         ANALYSIS

    Marketquest’s pleading was adequate to support a
    cause of action for trademark infringement under a
    reverse confusion theory of likely confusion.

    The Lanham Act provides a cause of action for the owner
of a registered trademark against any person who, without
consent of the owner, uses the trademark in commerce in
connection with the sale or advertising of goods or services,
when such use is likely to cause confusion. 15 U.S.C.
§ 1114(1). The validity of Marketquest’s trademarks is not
disputed in this appeal. Thus, the question is whether there
is a likelihood of confusion; that is, whether Defendants’
“actual practice[s were] likely to produce confusion in the
minds of consumers about the origin of the goods . . . in
question.” KP Permanent Make-Up, Inc. v. Lasting
Impression I, Inc., 543 U.S. 111, 117 (2004) (KP Permanent
I).

    We have recognized two theories of consumer confusion
that support a claim of trademark infringement: forward
confusion and reverse confusion. Surfvivor Media, Inc. v.
Survivor Prods., 406 F.3d 625, 630 (9th Cir. 2005).
“Forward confusion occurs when consumers believe that
goods bearing the junior mark came from, or were sponsored
by, the senior mark holder.” Id. For example, consumers
would experience forward confusion if they believed that
Defendants’ 2011 catalogue came from Marketquest
because it featured the phrase “All-in-One.” “By contrast,
reverse confusion occurs when consumers dealing with the
senior mark holder believe that they are doing business with
the junior one.” Id. For example, consumers would
experience reverse confusion if they did business with
Marketquest, but believed that they were doing business
            MARKETQUEST GROUP V. BIC CORP.                   7

with Defendants, because they had come to associate the
words “All-in-One” with Defendants.

    Marketquest argues that this is a “reverse confusion
case,” while Defendants counter that Marketquest did not
adequately plead reverse confusion. Our circuit has not
previously addressed the pleading standard required to state
a cause of action for trademark infringement under a reverse
confusion theory. We now hold that reverse confusion is not
a separate claim that must be specifically pleaded, but
instead is a theory of likely confusion that may be alleged by
itself or in addition to forward confusion. Accord Dorpan,
S.L. v. Hotel Melia, Inc., 728 F.3d 55, 65 n.12 (1st Cir. 2013)
(“‘Reverse confusion’ is not a separate legal claim requiring
separate pleading. Rather, it is a descriptive term referring
to certain circumstances that can give rise to a likelihood of
confusion.”). Thus, when reverse confusion is compatible
with the theory of infringement alleged in the complaint, a
plaintiff need not specifically plead it.

    Defendants cite Surfvivor, 406 F.3d at 631–34, and
Murray v. Cable National Broadcasting Co., 86 F.3d 858,
861 (9th Cir. 1996), to support their contention that strict
pleading is required when someone sues for reverse
confusion, but these cases are distinguishable. In Surfvivor
we held that the plaintiff raised no cognizable forward
confusion claim because it failed to reference forward
confusion in its complaint. 406 F.3d at 631. Instead, the
plaintiff only raised a cognizable trademark infringement
claim under a reverse confusion theory. Id. Only reverse
confusion was plausible in that case; Surfvivor, a maker of
beach-themed products sold only in Hawaii, alleged that
consumers thought that its products were sponsored by the
well-known, national reality show Survivor. Id. at 629.
Facts indicating forward confusion (i.e., that consumers
8           MARKETQUEST GROUP V. BIC CORP.

would think the well-known, national show Survivor came
from the small, Hawaiian Surfvivor brand) were not alleged
and would be highly unlikely. Surfvivor therefore stands for
the proposition that when (1) a plaintiff’s trademark
infringement claim is based on a reverse confusion theory,
(2) the plaintiff did not plead examples of forward confusion,
and (3) only reverse confusion is plausible based on the
allegations in the complaint, a plaintiff does not allege a
cognizable trademark infringement claim based on forward
confusion.

    Defendants cite Murray for the proposition that to plead
reverse confusion, a plaintiff must allege that the defendant
“saturated the market with advertising,” or allege actual
reverse confusion from customers. See 86 F.3d at 861.
However, Murray was decided before we recognized reverse
confusion as a theory of trademark infringement, and we
concluded that such recognition was unnecessary because
Murray did not allege any cognizable trademark
infringement claim, whether under what we now refer to as
reverse or forward confusion theories. Id. Thus, Murray did
not set out a specific pleading standard for reverse
confusion; there was no likelihood of any type of confusion,
and we merely listed shortcomings in Murray’s allegations.
To advance a reverse confusion theory, a plaintiff may allege
that the defendant flooded the market with advertising, or
that actual instances of reverse confusion occurred.
However, the allegations will vary in individual cases.

     Applying these principles to Marketquest’s FAC, we
first note that Marketquest did not use the words “reverse
confusion,” allege that Defendants saturated the market, or
allege instances of actual reverse confusion. The FAC
generally alleged that customers were confused “as to
whether some affiliation, connection, or association
            MARKETQUEST GROUP V. BIC CORP.                   9

exist[ed]” among Defendants and Marketquest, and
specifically alleged that there were actual instances of
forward confusion (i.e., that consumers thought that
Defendants’ goods came from Marketquest). Marketquest
did not allege instances of actual reverse confusion until its
motion for a preliminary injunction. The district court’s
orders denying the preliminary injunction and granting
summary judgment recognized Marketquest’s reverse
confusion theory.

    We hold that reverse confusion is a theory of confusion
available to Marketquest, and it did not foreclose this theory
by failing to plead it with particularity in its FAC. This case
is distinguishable from Surfvivor because, in that case, the
theory of confusion not specifically pleaded in the complaint
was implausible. See 406 F.3d at 629. Here, BIC is clearly
the larger, more widely-known entity, and has acquired some
smaller promotional products companies, such as Norwood.
It is therefore plausible that consumers would associate
Marketquest’s marks with Defendants, or think that BIC had
acquired Marketquest. Marketquest’s general allegation that
there was confusion “as to whether some affiliation,
connection, or association exist[ed]” among the parties fairly
encompasses this possibility, and Marketquest should not
have been prevented from exploring possible instances of
reverse confusion during discovery. Thus, the district court
was correct to consider the possibility of reverse confusion
as the case proceeded.

   Consideration of the intent factor in the likelihood of
   confusion analysis varies with the type of confusion
   being considered.

   In trademark infringement cases we assess likelihood of
consumer confusion by considering the Sleekcraft factors.
Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand
10            MARKETQUEST GROUP V. BIC CORP.

Mgmt., Inc., 618 F.3d 1025, 1030 (9th Cir. 2010) (citing
AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir.
1979)). 1 The Sleekcraft “analysis is pliant, illustrative rather
than exhaustive, and best understood as simply providing
helpful guideposts.” Id. (internal quotation marks omitted).
“[T]he relative importance of each individual factor will be
case-specific.” Id. at 1031 (quoting Brookfield Commc’ns,
Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1054 (9th Cir.
1999)).

    Our assessment of the Sleekcraft intent factor (“the
defendant’s intent in selecting the mark”) is different when
we consider a forward confusion theory than it is when we
consider a reverse confusion theory, because the relevance
of intent varies with the underlying theory of confusion. See
Cohn v. Petsmart, Inc., 281 F.3d 837, 841 n.5 (9th Cir.
2002); see also Commerce Nat’l Ins. Servs., Inc. v.
Commerce Ins. Agency, Inc., 214 F.3d 432, 444 (3d Cir.
2000). When considering forward confusion, we ask
“whether defendant in adopting its mark intended to
capitalize on plaintiff’s good will.” Fortune Dynamic,
618 F.3d at 1043. However, in the case of reverse confusion,
typically “neither junior nor senior user wishes to siphon off
the other’s goodwill.” Dreamwerks Prod. Grp., Inc. v. SKG
Studio, 142 F.3d 1127, 1130 (9th Cir. 1998).

    Marketquest argues that mere knowledge of the senior
user’s mark establishes intent to confuse when considering
reverse confusion, while Defendants argue that only
     1
      “Those factors are: 1) the strength of the mark; 2) proximity or
relatedness of the goods; 3) the similarity of the marks; 4) evidence of
actual confusion; 5) the marketing channels used; 6) the degree of care
customers are likely to exercise in purchasing the goods; 7) the
defendant’s intent in selecting the mark; and 8) the likelihood of
expansion into other markets.” KP Permanent II, 408 F.3d at 608.
            MARKETQUEST GROUP V. BIC CORP.                   11

evidence of a deliberate intent to push the plaintiff out of the
market should suffice. However, no one type of evidence is
required to establish intent in trademark infringement cases
under either a forward or reverse theory of confusion.
Indeed, “an intent to confuse consumers is not required for a
finding of trademark infringement.” Brookfield Commc’ns,
174 F.3d at 1059. The Sleekcraft factors are to be applied
flexibly, knowing that “not all of the factors are of equal
importance or applicable in every case.” KP Permanent II,
408 F.3d at 608.

    Thus, when a court applies Sleekcraft in a case that
presents reverse confusion, and the intent factor is relevant,
it may consider several indicia of intent. At one extreme,
intent could be shown through evidence that a defendant
deliberately intended to push the plaintiff out of the market
by flooding the market with advertising to create reverse
confusion. See Freedom Card, Inc. v. JPMorgan Chase &
Co., 432 F.3d 463, 479 (3d Cir. 2005). Intent could also be
shown by evidence that, for example, the defendant knew of
the mark, should have known of the mark, intended to copy
the plaintiff, failed to conduct a reasonably adequate
trademark search, or otherwise culpably disregarded the risk
of reverse confusion. See, e.g., Surfvivor, 406 F.3d at 634;
Cohn, 281 F.3d at 843. The tenor of the intent inquiry shifts
when considering reverse confusion due to the shift in the
theory of confusion, but no specific type of evidence is
necessary to establish intent, and the importance of intent
and evidence presented will vary by case.
12          MARKETQUEST GROUP V. BIC CORP.

       The district court erred by granting summary
       judgment in favor of Defendants based upon on
       the fair use defense regarding their use of “All-in-
       One.”

     Applying the “classic fair use” defense, “[a] junior user
is always entitled to use a descriptive term in good faith in
its primary, descriptive sense other than as a trademark.”
Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150 (9th Cir.
2002). A defendant must show that its use is (1) other than
as a trademark, (2) descriptive of the defendant’s goods, and
(3) in good faith. 15 U.S.C. § 1115(b)(4). Additionally, “the
degree of customer confusion [is] a factor in evaluating fair
use.” KP Permanent II, 408 F.3d at 609.

    The district court considered the elements of the fair use
defense, and concluded that Defendants’ use of “All-in-One”
in connection with the 2011 catalogue was completely
protected by the fair use defense. As discussed below,
genuine issues of material fact exist regarding the elements
of fair use in this case, thereby precluding summary
judgment. While summary judgment on the fair use defense
in a trademark case is possible, we reiterate that “summary
judgment is generally disfavored” in trademark cases, due to
“the intensely factual nature of trademark disputes.”
Fortune Dynamic, 618 F.3d at 1031.



    Marketquest first argues that the district court erred by
not specifically analyzing all of the uses of “All-in-One”
employed by Defendants, since the fair use analysis often
varies when a defendant uses the same mark in different
ways.     The “other uses” of “All-in-One” included
(1) promotional materials that featured an image of the 2011
catalogue; (2) promotional materials that directed customers
            MARKETQUEST GROUP V. BIC CORP.                  13

to look for products or information in “the 2011 Norwood
All in ONE catalogue”; and (3) an online advertisement that
said “Put Your Drinkware Needs . . . in a Norwood ALL in
ONE Basket,” which included a photo of a basket containing
several different types of drinkware. Defendants respond
that there was no need to conduct a design-by-design review
because all of these uses connected to the 2011 catalogue,
and there is no basis for the claim that the district court did
not consider all the evidence, even if other uses were not
specifically referenced by the district court.

    It appears from its summary judgment order that the
district court focused on Defendants’ use of “All-in-One” on
the 2011 catalogue, and perhaps did not consider other uses.
While a design-by-design review of promotional materials
that merely included a picture of the 2011 catalogue was not
required, references to “the 2011 Norwood All in ONE
catalogue” and “a Norwood ALL in ONE Basket” are
sufficiently distinct to require analysis for fair use. These
uses are considered below, along with the 2011 catalogue
use.



    A fair use must be a use other than as a trademark.
15 U.S.C. § 1115(b)(4). A trademark is used “to identify
and distinguish . . . goods . . . from those manufactured or
sold by others and to indicate the source of the goods.” Id.
§ 1127. “To determine whether a term is being used as a
mark, we look for indications that the term is being used to
associate it with a manufacturer,” and “whether the term is
used as a symbol to attract public attention.” Fortune
Dynamic, 618 F.3d at 1040 (internal quotation marks
omitted).     We also consider “whether the allegedly
infringing user undertook precautionary measures . . . to
14          MARKETQUEST GROUP V. BIC CORP.

minimize the risk that the term will be understood in its
trademark sense.” Id. (internal quotation marks omitted).

    A genuine issue of fact exists regarding whether
Defendants used “All-in-One” as a trademark. Defendants
did take “precautionary measures” when featuring “All-in-
One” on the 2011 catalogue: Norwood was printed at the top
in large, bold, capital letters with a trademark symbol, while
“All-in-One” was located further down on the page, in
smaller letters, without a trademark symbol, and positioned
as a heading over a list of all the products consolidated “in
one” catalogue. This suggests that Norwood was used to
indicate the source of the goods, rather than “All-in-One”
(although it is possible for more than one trademark to
appear on a catalogue cover). However, when considering
all of Defendants’ uses of “All-in-One,” a jury could
potentially find trademark use.            The “precautionary
measures” listed above were not present when Defendants
referred to “the 2011 Norwood All in ONE catalogue” and
“a Norwood ALL in ONE Basket.” In these uses, there is no
obvious distinction between Norwood and “All-in-One,”
and both could reasonably be understood to indicate source.



    To prevail on fair use, a defendant must show that it used
the mark “in its primary, descriptive sense.” Fortune
Dynamic, 618 F.3d at 1041 (quoting Brother Records, Inc.
v. Jardine, 318 F.3d 900, 906 (9th Cir. 2003) (alteration
omitted)); see 15 U.S.C. § 1115(b)(4). While “we accept
some flexibility in what counts as descriptive,” Fortune
Dynamic, 618 F.3d at 1042, “the scope of the fair use defense
varies with . . . the descriptive purity of the defendant’s use
and whether there are other words available to do the
describing.” Id. at 1041. Even when “there [is] some
evidence of descriptive use, [a jury] could still reasonably
            MARKETQUEST GROUP V. BIC CORP.                    15

conclude that [a defendant’s] lack of ‘precautionary
measures’” outweighs such evidence. Id. at 1042.

      There is a strong argument that Defendants’ use of “All-
in-One” on the 2011 catalogue was descriptive, because it
was used as a heading for a list of the products consolidated
“all in one” catalogue. Moreover, as discussed above,
Defendants took “precautionary measures” on their
catalogue cover by using a design that indicated descriptive
use. However, Defendants’ other uses of “All-in-One” were
arguably not descriptive, and “precautionary measures”
were not taken with these uses. While Defendants’ use of
“All-in-One” as a heading on the 2011 catalogue strongly
indicates descriptive use, such use is not apparent in
decontextualized references to “the 2011 Norwood All in
ONE catalogue.” Additionally, “Put Your Drinkware Needs
. . . in a Norwood ALL in ONE Basket” does not fall under
the descriptive use explanation that Defendants advance
because it does not refer to a consolidated catalogue. It may
descriptively refer to consolidating drinkware in a basket,
but the “descriptive purity” of such use is questionable
because it is unclear if the basket is literal or suggestive. See
id. at 1041. Uses of “All-in-One” in ways that stripped it of
its possible descriptive meaning undermine Defendants’
descriptive use argument, such that a finder of fact could
determine that the use was not descriptive. Moreover, a
finder of fact could determine that Defendants “had at [their]
disposal a number of alternative words [or phrases] that
could adequately capture [their] goal,” limiting the scope of
the fair use defense in this case. Id. at 1042.



    A defendant asserting fair use must also show that it used
the mark in good faith. 15 U.S.C. § 1115(b)(4). When
considering forward confusion, this element “involves the
16          MARKETQUEST GROUP V. BIC CORP.

same issue as the intent factor in the likelihood of confusion
analysis”; that is, “whether defendant in adopting its mark
intended to capitalize on plaintiff’s good will.” Fortune
Dynamic, 618 F.3d at 1043. The shift in focus discussed in
Part II above for assessing intent when considering
likelihood of confusion under a reverse confusion theory
generally applies when considering good faith as part of the
fair use defense in a case that presents reverse confusion.
However, the good faith inquiry differs somewhat from the
Sleekcraft intent factor, regardless of the underlying theory
of confusion. In fair use, good faith is an element of the
defense, not merely a factor to consider when it is relevant
in a given case.

    As with intent in Sleekcraft, there is no bright-line rule
or required piece of evidence to establish good or bad faith.
While the focus may differ when considering forward or
reverse confusion, generally the same types of evidence will
be relevant to this inquiry. This includes evidence such as
whether the defendant intended to create confusion, whether
forward or reverse; intended to push the plaintiff out of the
market; remained ignorant of the plaintiff’s mark when it
reasonably should have known of the mark; knew of the
mark and showed bad faith in its disregard of the plaintiff’s
rights; or any other evidence relevant to whether the
defendant’s claimed “objectively fair” use of the mark was
done in good faith. See KP Permanent I, 543 U.S. at 123;
see also, e.g., Fortune Dynamic, 618 F.3d at 1043 (holding
that a material question of fact existed regarding defendant’s
good faith when the plaintiff introduced evidence that the
defendant carelessly failed to investigate the trademark at
issue, along with expert testimony that a trademark search
would have been standard practice in the relevant industry).
           MARKETQUEST GROUP V. BIC CORP.                 17

    Marketquest argues that because this case presents
reverse confusion, mere knowledge of Marketquest’s
ownership and use of the “All-in-One” mark establishes bad
faith on the part of Defendants, and fair use is thus
unavailable as a matter of law. That is incorrect. An
inference of bad faith does not arise from mere knowledge
of a mark when the use is otherwise objectively fair, even in
a case presenting reverse confusion. Marketquest also
argues that Defendants’ use of two of its marks in the same
year supports an inference of bad faith. This fact by itself,
coupled with Marketquest’s knowledge of the marks, is thin
evidence of bad faith. However, we cannot say on summary
judgment that no reasonable finder of fact could infer bad
faith from these facts.



    “The fair use defense only comes into play once the party
alleging infringement has shown by a preponderance of the
evidence that confusion is likely.” KP Permanent II,
408 F.3d at 608–09. This is because if there is no likelihood
of consumer confusion, then there is no trademark
infringement, making an affirmative defense to trademark
infringement irrelevant. KP Permanent I, 543 U.S. at 120.
After the plaintiff meets the threshold showing, in the fair
use analysis “the degree of customer confusion [is] a factor”
to consider. KP Permanent II, 408 F.3d at 609. However, a
defendant raising the defense does not have the burden to
negate any likelihood of consumer confusion.              KP
Permanent I, 543 U.S. at 114. Some consumer confusion is
compatible with fair use, and when a plaintiff chooses “to
identify its product with a mark that uses a well known
descriptive phrase” it assumes the risk of some confusion.
Id. at 121–22.
18             MARKETQUEST GROUP V. BIC CORP.

    The district court held that Marketquest met the
threshold requirement for fair use by showing that there is
some likelihood of confusion, relying upon its previous
Sleekcraft analysis in the order denying Marketquest’s
motion for a preliminary injunction. However, the district
court held that any further Sleekcraft analysis was
“unnecessary” because fair use provided Defendants a
complete defense.

    Marketquest argues that the district court’s holding was
incomplete because it did not conduct a full Sleekcraft
analysis, nor did it consider the additional factors that we
stated in KP Permanent II would be relevant to the jury’s
consideration of fair use in that case. 2 Defendants counter
that a court may grant summary judgment on the fair use
defense without deciding the likelihood of confusion
because confusion is not the focus of fair use; the focus is
objective fairness, and some confusion is accepted.

    We emphasize that the degree of consumer confusion is
a factor in the fair use analysis, not an element of fair use.
See KP Permanent I, 543 U.S. at 118 (“Congress said
nothing about likelihood of confusion in setting out the
elements of the fair use defense.”). This factor is useful in
considering whether, overall, the use was objectively fair. A
use that is likely to confuse consumers, or that has caused
actual confusion, is less likely to be objectively fair
(although some confusion is permissible).             Accord

     2
      These factors included “the degree of likely confusion, the strength
of the trademark, the descriptive nature of the term for the product or
service being offered by [the defendant] and the availability of alternate
descriptive terms, the extent of the use of the term prior to the registration
of the trademark, and any differences among the times and contexts in
which [the defendant] has used the term.” KP Permanent II, 408 F.3d at
609.
             MARKETQUEST GROUP V. BIC CORP.                     19

Shakespeare Co. v. Silstar Corp. of Am., 110 F.3d 234, 243
(4th Cir. 1997) (“While it is true that to the degree that
confusion is likely, a use is less likely to be found fair, it does
not follow that a determination of likely confusion precludes
considering the fairness of use.”). The Sleekcraft factors and
additional factors that we identified as relevant in KP
Permanent II may also be relevant in a given case where fair
use is at issue. A court is not required in every case to recite
and analyze all the factors identified in Sleekcraft and KP
Permanent II one-by-one for a fair use analysis to be
complete. A court may do so, but these are merely factors to
facilitate a court’s analysis, to the degree they are relevant in
a given case.

    In this case, the district court referenced its previous
Sleekcraft analysis at the preliminary injunction phase. The
district court was not required to conduct this analysis again
and determine all potential issues of fact as a matter of law
before considering summary judgment on fair use.
However, because we reverse summary judgment on fair use
for the reasons indicated above, we leave it to the district
court to determine on remand the relevance of the degree of
consumer confusion in this case.

        The district court erred by applying the fair use
        analysis to Defendants’ use of “The Write
        Choice” after determining that Marketquest
        presented no evidence of likely confusion.

    The district court found that there was “no evidence of
actual or potential confusion” resulting from Defendants’
use of “The Write Choice,” and then concluded that
Defendants had shown fair use. That fair use analysis was
in error because “[t]he fair use defense only comes into play
once the party alleging infringement has shown by a
preponderance of the evidence that confusion is likely.” KP
20         MARKETQUEST GROUP V. BIC CORP.

Permanent II, 408 F.3d at 608–09. The district court could
not properly find here that there was no evidence of
confusion, fail to conduct a Sleekcraft analysis, and still
conclude that the Defendants qualified for the fair use
defense. Thus, we remand for the district court to consider
Marketquest’s trademark infringement claim regarding
Defendants’ use of “The Write Choice.”

                       CONCLUSION

   We REVERSE and REMAND for proceedings
consistent with this opinion.