(CN) – A newcomer to the motocross gear world won a trademark infringement dispute over the stylized “O” mark used by industry veteran Jim O’Neal Distributing.
Since 1970, O’Neal has equipped off-road motorcycle racers with boots, jerseys, helmets and other motocross paraphernalia. In 1991, it began using a stylized “O” followed by an apostrophe as its signature mark. Over time, the mark morphed from a round O’ to an angular one.
One Industries joined the motocross fray in 1997, selling stickers and decals. By 2003, it was selling helmets and clothing.
O’Neal claimed that One Industries’ icon – also an angular “O” – infringed on its trademarks and trade dress. The newcomer’s mark consisted of two interlacing number ones.
But One Industries pointed out that O’Neal didn’t adopt the angular O’ until 2003, while One Industries had registered its icon in 1999. It asked a federal judge in California to declare that its icons didn’t violate O’Neal’s trademarks.
The judge noted that two of O’Neal’s marks have been registered separately and “appear … to be more than just slightly different.”
O’Neal responded by narrowing its infringement counterclaim to the 1997 rounded O’ mark.
The lower court ruled for One Industries on all claims.
On appeal, O’Neal argued that the district court erred by refusing to “tack” the different versions of the O’ mark since 1991.
But the Pasadena-based appellate panel said O’Neal failed to clear the “exceedingly strict” standard for a tacking claim. It also found the marks of each company “visually dissimilar.”
“Although O’Neal and One Industries are direct competitors,” O’Scannlain wrote, “we are persuaded that the marks do not look alike, that O’Neal has not produced evidence of actual confusion, and that no reasonable jury could infer that One Industries deliberately appropriated the goodwill associated with the O’ mark.”