PHILADELPHIA—The U.S. Court of Appeals, Third Circuit, on July 9 overturned a New Jersey District Court ruling in a trademark infringement case filed by Sabinsa Corp. against Creative Compounds. In its original suit, Sabinsa alleged there was great likelihood of confusion between its mark ForsLean® and Creative Compounds’ ForsThin, both of which refer to Coleus forskohlii extract ingredients.
Sabinsa’s original complaint alleged five claims, all of which required that it prove both its ownership of a valid and legally protectable trademark and a likelihood of confusion caused by Creative Compounds’ use of the mark ForsThin. A great deal of both courts’ decisions rested on interpretation of Interpace Corp. v. Lapp, Inc. This 1983 ruling established what is known as the Lapp test, which looks at multiple factors, including similarity of the marks, strength of the product marks and product similarity, to establish the existence of a likelihood of confusion.
In its ruling (available online here), the Circuit Court stated, in part: “Because the District Court erred in its findings on the Lapp factors and its ultimate finding on likelihood of confusion, we will reverse the judgment. Further, because the undisputed facts weigh heavily in favor of Sabinsa so that any reasonable fact finder, weighing the Lapp factors properly, would find that Sabinsa had demonstrated a likelihood of confusion, we conclude that there is no need to remand for a re-weighing by the District Court of the Lapp factors. We therefore remand this case for entry of judgment in favor of Sabinsa.”
Muhammed Majeed, Ph.D., founder of Sabinsa, commented, “This is actually a victory for all companies which invest significant resources in science and innovation. Infringing on the intellectual property other companies have worked so hard to develop is illegal and immoral. The nutraceuticals industry runs on innovation and science, and without it growth would falter. If a company can’t benefit from their investment, there is no incentive to do so.”
Matt Rosenberg, general counsel for Scott City, Mo.-based Creative Compounds, told INSIDER the company is still reviewing the Circuit Court decision. He added, “Creative believes there are legal errors in the latest court decision, and still believes that U.S. District Judge Cavanaugh was correct in his finding that there is no likelihood of confusion between Sabinsa’s trademark and Creative’s. Creative is, therefore, contemplating a further appeal.”
