CINCINNATI (CN) – A clothing company tried Tuesday to persuade a Sixth Circuit panel that merchandise from Nickelodeon’s “Bubble Guppies” TV show infringes on its trademarks for Guppie Kid apparel.
Debbie and Dean Rohn, who operate the Guppie Kid clothing company out of their home in Cadillac, Mich., sued Nickelodeon’s parent company Viacom International in 2014, claiming “Bubble Guppies” merchandise infringes on several trademarks and causes confusion among consumers.
According to a prior ruling in the case, “Guppie apparel has been available for sale on plaintiffs’ website … since 2005,” although the company has generated just “$2,000 in income from 2005 to 2015.”
U.S. District Judge Janet T. Neff in the Western District of Michigan granted Viacom’s motion for summary judgment in January after she determined the Rohns’ trademarks “have little consumer recognition” and are not so closely related to Viacom’s as to cause confusion among consumers.
“Plaintiffs have produced no evidence that children have, or would, confuse Bubble Guppies apparel and Guppie clothing,” Neff wrote at the time. “The court determines that the record does not support a likelihood of confusion of sponsorship, affiliation or connection with [Viacom’s] Bubble Guppies mark based on the alleged relatedness of the goods.”
On Tuesday afternoon, attorney Thomas Blaske argued on behalf of the Rohns and addressed the Sixth Circuit judges in his opening remarks with the following analogy: “Today, you will decide when the leviathan devours the guppy, whether the guppy has anything to say about it.”
Blaske argued that his clients’ case is one of “reverse trademark confusion,” which involves a “junior” trademark user saturating the market and overwhelming the “senior” trademark holder. He claimed the lower court judge misunderstood the case.
The Sixth Circuit panel allowed Blaske to use a chart to illustrate the concept of reverse confusion, which the attorney explained involves no attempt by the junior user – in this case, Viacom – to profit from the holder’s trademarks.
U.S. Circuit Judge Amul R. Thapar told Blaske it was his belief that Judge Neff’s opinion didn’t misunderstand the case, but simply found the Guppie Kid marks lacked strength to support the Rohns’ claims.
The attorney responded that a mark’s lack of strength does not preclude a reverse-confusion claim.
U.S. Circuit Judge Raymond M. Kethledge interrupted, asking, “There has to be awareness before the possibility of confusion, right?”
“My concern … is an evidentiary one,” Kethledge continued. “It seems questionable … [whether] there was enough awareness to cause confusion.”
U.S. Circuit Judge Eugene Siler Jr. then asked the Rohns’ attorney to cite the best evidence about the strength and awareness of his clients’ trademarks.
“[Debbie Rohn] was known as the ‘guppy lady’ in her community,” Blaske replied.
Judge Thapar countered that she had “sold, like, two pieces of clothing” in the last several years.
“She was crushed by Viacom,” the attorney answered. “She was a big deal in her small pond.”
Michael Huget argued on behalf of Viacom and called the case “straightforward.”
He said the “plaintiffs had 20 years to establish a commercial presence” but failed to do so, and claimed the “Bubble Guppies” pilot episode was produced years before Viacom was even aware of the Rohns’ trademarks.
Huget focused his argument on the Rohns’ lack of sales or concrete evidence of the trademarks’ strength and recognition.
“If I say ‘Guppy’ in Cadillac, Michigan,” he asked the panel, “Where is the evidence that [people recognize it]?”
Blaske tried to counter Huget’s claims in his rebuttal, saying, “I’m very concerned the panel is confusing sales with strength of mark. I don’t claim there are abundant sales … [and that] makes us a candidate to be overwhelmed.”
No timetable has been set for the court’s decision.