One Industries, LLC v. Jim O’Neal Distributing, Inc. 578 F.3d 1154 (9th Cir. 2009)
The appellate court upheld a district court summary judgment in favor of plaintiff and ruled that defendant could not tack it’s earlier use of a rounded O’ mark onto it’s current O’ mark.
Defendant’s current mark
The Southern District granted summary judgment in favor of plaintiff ruling that plaintiff’s mark a stylized angular “O” made out of two interlaced numeral one’s, used since 1999, did not infringe on defendant’s stylized rounded O’ mark (Rounded O’) used since 1997. The district court did not allow Defendant to tack it’s use of the rounded O’ onto it’s current angular O’ (Angular O) used since 2003, ruling that the two marks were different.
The Court of Appeals in a de novo review agreed that the two marks did not meet the exceedingly strict standard for tacking.
The Court of Appeals also affirmed the district court’s finding that Plaintiff’s angular mark did not infringe on defendant’s Rounded Mark and that Plaintiff’s stylized “One” mark did not infringe on defendant’s O’Neal mark (defendant does not have a monopoly over the word “One” just because they use a mark that includes “O’Ne”).