Addressing whether a jewelry wholesaler’s use of a common law mark was likely to cause confusion with a jewelry retailer’s use of a similar mark, the US Court of Appeals for the Sixth Circuit affirmed the district court’s summary judgment decision that such use would not cause confusion. Sterling Jewelers, Inc. v. Artistry Ltd., Case No. 17-4132 (6th Cir. July 24, 2018) (Sutton, J).

Since 1982, Artistry, Ltd., has sold jewelry to independent jewelry stores and high-end department stores. Artistry never federally registered its “Artistry” mark. In 2012, Sterling Jewelers, which operates Kay Jewelers and Jared, and is the largest jewelry retailer in the United States, began using the mark “Artistry Diamond Collection” for jewelry sold in its stores to end consumers. Viewing Sterling as a “mass market” jewelry retailer, Artistry grew concerned that high-end retailers and consumers would believe that Artistry supplied the “Artistry Diamond Collection” to Sterling stores and that it would lose control of the goodwill associated with its Artistry name. After Artistry demanded that Sterling stop use of the “Artistry Diamond Collection” mark, Sterling responded by seeking declaratory judgment that its use was not infringing. 

The district court granted summary judgment in favor of Sterling, and the Sixth Circuit affirmed. Critical to the Sixth Circuit’s opinion was the weak nature of Artistry’s “Artistry” mark. Concluding that the mark was not likely to distinguish Artistry products from others, the Court observed that the word “artistry” and similar marks—creative, crafted, artisan—were widely used in the jewelry business. As the Court asked, “How many jewelers and related types of craftsmen are not trying to associate their product with artistry and these other words?”

The Court also considered the differences in how the parties used their respective marks. Artistry sold to jewelry retailers, which do not use the “Artistry” name when selling Artistry’s jewelry to end consumers. Sterling, on the other hand, sold its “Artistry Diamond Collection” to end consumers. There was no evidence of actual confusion involving end consumers. Because jewelry retailers are experienced buyers, there also was no likelihood of confusion among retailers. While Artistry presented evidence of its retailers asking Artistry whether it sold products to Sterling stores, the Court found that this showed that retailers could discern a difference between Artistry and Sterling and thus was not evidence of actual confusion.

Practice Note: This case is yet another example of why forum selection is a crucial consideration in trademark cases. Artistry claimed “reverse confusion”—where consumers encounter the junior user’s goods (Sterling) and believe that they are the senior user’s goods (Artistry). Several circuits, such as the Third Circuit, use a different likelihood of confusion analysis when assessing reverse confusion claims. In those circuits, the strength of the junior user’s mark (here, Sterling’s), rather than the senior user’s mark, is most relevant. The Sixth Circuit, however, has not adopted a distinct test for reverse confusion, and thus the strength of the senior user’s mark (here, Artistry’s) was the salient consideration.