Automated Pet Care Products v. Brands

Background

Automated Pet Care Products, LLC, doing business as Whisker, and PurLife Brands, Inc., doing business as Smarty Pear, compete in the market for automated, self-cleaning litter boxes. Whisker alleged that Smarty Pear and its founder, Chris Madeiras, used confidential information to develop the Leo’s Loo and Leo’s Loo Too products. Whisker also alleged that Smarty Pear advertised those products on social media using hashtags including #litterrobot, #LitterRobot, and #litterrobot3.

Whisker sued for patent infringement, trademark infringement, false designation of origin, false advertising, and unfair competition. Smarty Pear moved to dismiss the complaint for failure to state claims on which relief could be granted. This order addressed the trademark infringement, false designation of origin, and unfair competition claims based on Smarty Pear’s use of the hashtags. The court stated that the remaining claims would be addressed in a separate order.

Trademark claims

To survive a motion to dismiss a trademark infringement claim, Whisker had to adequately allege that it owned a valid, protectable trademark and that Smarty Pear’s use was likely to confuse consumers about the goods’ origin or source. The court explained that Whisker’s four relevant marks—“Litter-Robot,” “Litter-Robot 3,” “Litter-Robot 3 Connect,” and “Litter-Robot Pinch Detect”—were registered on the federal Principal Register. The court treated those registrations as sufficient at this stage to allege protectable marks.

The court evaluated the alleged likelihood of confusion using the eight-factor Sleekcraft test: the strength of the mark; the proximity of the goods; similarity of the marks; actual confusion; marketing channels; the type of goods and consumer care; the defendant’s intent; and the likelihood of expanding product lines.

The court said three particularly important factors in an internet case strongly favored Whisker. Smarty Pear’s products were alleged to be virtually identical to Whisker’s products, both companies used social media to market them, and the hashtags were very similar to Whisker’s registered marks. The court specifically found that #litterrobot3 was closely similar to “Litter-Robot 3,” and that #LitterRobot and #litterrobot were closely similar to “Litter-Robot.” The missing hyphens did not defeat the claims because the marks did not need to be identical.

The court also found that several other factors favored Whisker. It said the alleged use of the number three and uppercase letters supported an inference that Smarty Pear intended to benefit from Whisker’s goodwill. The court found that the companies’ similar and expanding product lines supported Whisker as well. Whisker also alleged actual confusion: consumers seeking free accessories for the Leo’s Loo contacted Whisker, and Whisker’s employees had to explain that the Leo’s Loo was not Whisker’s product. The court considered the consumer-care factor too close to call, noting that the products sold for nearly $500.

Smarty Pear argued that Whisker could not claim rights in “Litter Robot” without a hyphen or in the hashtag “#litterrobot” because the Trademark Office had rejected or disclaimed those designations. The court agreed that those particular rejected or disclaimed designations were not the basis of Whisker’s claims. But the court held that the issue was whether Smarty Pear’s hashtags were confusingly similar to Whisker’s registered marks, not whether the hashtags were similar to words over which Whisker did not claim rights. The court said the possible weakness of Whisker’s registered marks could be considered under the strength-of-the-mark factor, but did not defeat the claims at the pleading stage.

Disposition

Smarty Pear’s motion to dismiss was DENIED as to Whisker’s trademark infringement, false designation of origin, and unfair competition claims based on Smarty Pear’s use of the hashtags. The order did not decide the remaining claims, which the court said would be addressed separately. Judge Vince Chhabria signed the order.