Event, lifestyle and apparel company Aliign Activation Wear, LLC (“AAW”) took athleisure giant lululemon “to the yoga mat” at the Ninth Circuit, alleging that lululemon’s use of the mark “Align” for its yoga pants infringed AAW’s “Aliign” trademark for athletic apparel. Lululemon prevailed. The Ninth Circuit affirmed, among others, the lower court’s summary judgement finding of no “reverse confusion.”
To establish trademark infringement based on reverse confusion, AAW (the senior first user of the mark) had to show that lululemon (the junior second user) extensively advertised and promoted goods under lululemon’s “Align” mark, such that consumers dealing with AAW believe they are instead doing business with lululemon.
The “most significant factor” supporting the Ninth Circuit’s finding of no reverse confusion concerned the way in which the products were “marketed to and encountered by consumers.” Lululemon and AAW sold their respective products primarily on their own internet and/or brick and mortar stores, and third-party distribution of either party’s products was limited. Little to no overlap existed in the “marketing or distribution channels” between the two product lines. Lululemon’s Align yoga products also carried the lululemon mark or company name and given the high price point of Lululemon and AAW goods, consumers were expected to exercise great care in making a purchase from either company, such that consumers would not be confused.
Since the Ninth Circuit decision did not “align” with AAW’s interests, it remains to be seen whether AAW will strike another yoga pose – a tree pose? – and request a rehearing or further appeal this decision.