Standard Of Review Makes A Difference: Likelihood Of Confusion Is A Question Of Fact In The Eighth Circuit

Everest Capital Limited v. Everest Funds Management, LLC, 04-1282 (8th Cir. 2005), the Eighth Circuit affirmed the determination that Everest Capital was not confusingly similar to Everest Funds. Everest Capital admitted that the potential market for its funds was a small proportion of the investment community, namely sophisticated and accredited investors such as universities and foundations. Defendant Everest Fund was a small fund (just $3 million), open to all investors, and requiring just a $2,000 initial investment. Despite being open to all investors, 98% of the assets belonged to member of the fund manager’s family, and each of the funds had less then 10 investors from outside the family. The Eighth Circuit considered the six non-exclusive SquirtCo or Luigino factors: (1) strength of the owner’s mark, (2) the similarity of the owner’s mark and the alleged infringer’s mark; (3) the degree of competition between the products; (4) the alleged infringer’s intent to ‘pass off’ its goods as the trademark owners; (5) incients of actual confusion; and (6) the type or product, its cost, and conditions of purchase. The jury found no infringement, and Everest Capital is entitled to a judgment as a matter of law only if there is no legally sufficient evidentiary basis for a reasonable jury to find no infringement. Everest Capital argued that the evidence it submitted on the SquirtCo factors weighed overwhelmingly in its favor. The Eighth Circuit observed that such an argument might be persuasive in the Second Circuit, where likelihood of confusion is a question of law reviewed de novo, but not in the Eighth Circuit where, as in the Fourth Circuit it is a question of fact. The Eighth Circuit said the only issue on appeal is whether the record as a whole, viewed in the light most favorable to the jury’s verdict, contains sufficient evidence supporting the verdict. Under this standard the Eighth Circuit said that it was clear that the district court properly denied Everest Capital’s motion for JMOL. The Eighth Circuit also affirmed the general verdict of no dilution, noting that it must stand if a reasonable jury could find either that EVEREST CAPITAL was not famous, or that defendants did not cause an actual lessening of the marks capacity to distinguish EVEREST CAPITAL’s.