9th Cir.;
15-55755

The court of appeals reversed a district court judgment and remanded. The court held that the district court erred in granting summary judgment based on defendants' claim that their use of the trademarked phase “All-in-One” constituted a “fair use.”

Marketquest produced and sold promotional products, using registered trademarks “All-in-One” since 1999 and “The Write Choice” since 2000. In 2009, BIC Corp. and BIC USA, Inc. acquired Norwood, a promotional products company. In 2010, BIC used the phrase “The WRITE Pen Choice for 30 Years” in advertising and packaging for its pens, in connection with its thirtieth anniversary promotion. In 2011, Norwood consolidated its eight “hard goods” catalogues in a single “All-in-One” catalogue that featured that phrase both on the cover of and in the catalogue. Norwood also used the “All-in-One” phrase in, among other things, an online advertisement that read “Put Your Drinkware Needs…in a Norwood ALL in ONE Basket,” and included a photo of a basket containing several different types of drinkware. Marketquest sued BIC and Norwood for trademark infringement.