## Facts

- Richard A. Dieter (doing business as “Shutterworld”) manufactured and sold primarily decorative, interior, pre-hung wooden shutter assemblies and other shutters in Florida.
- Dieter obtained a federal trademark registration for “Shutterworld” (a stylized design) claiming first use in 1970 and use in commerce in 1974.
- Dieter later filed a combined Lanham Act §§ 8 and 15 declaration, after which the registration attained incontestable status for the registered goods.
- Dieter used “Shutterworld” in multiple marketplace forms, including on product labeling and stickers, without obtaining Florida state registration.
- B & H Industries, located in southwest Florida, sold exterior, insulated roll-down security shutters and used “Shutterworld” in connection with those goods; it also obtained Florida registration of a “Shutterworld” mark.
- Although the parties’ shutters differed in function (interior decorative vs. exterior security), both were shutter products sold in overlapping geographic markets to similar purchaser groups (e.g., homeowners, builders, contractors).
- Dieter sued under federal trademark law, alleging B & H’s use of “Shutterworld” was likely to cause consumer confusion.

## Issues

1. Whether the district court erred by treating Dieter’s incontestable “Shutterworld” registration as merely descriptive and weak when evaluating likelihood of confusion.
2. Whether, under the likelihood-of-confusion factors, B & H’s use of “Shutterworld” for roll-down security shutters was likely to cause confusion with Dieter’s registered mark.
3. What effect incontestability has on (a) validity and exclusive rights and (b) the “strength of the mark” factor in the confusion analysis.

## Decision

- The Eleventh Circuit reversed the district court’s no-infringement judgment.
- The court held that Dieter’s mark, because it was incontestable, had conclusive presumptions of validity and exclusive right to use the mark for the registered goods.
- The court ruled that the district court improperly discounted the mark’s strength by recharacterizing it as merely descriptive despite incontestable status.
- Applying the likelihood-of-confusion factors with proper weight to incontestability, the court found a likelihood of confusion based on the identical word mark, related shutter products, and overlapping markets and channels.
- The case was remanded for relief consistent with a finding of trademark infringement.

## Legal Principles

- An incontestable federal registration confers conclusive presumptions of the mark’s validity, the registrant’s ownership, and the registrant’s exclusive right to use the mark for the registered goods, subject to statutory defenses.
- Incontestability must be considered in the likelihood-of-confusion analysis and supports treating the registered mark as presumptively strong; a court may not effectively nullify incontestability by deeming the mark merely descriptive and weak for confusion purposes.
- Likelihood of confusion may be found where identical or highly similar marks are used on related goods sold through overlapping channels to overlapping customer classes, even if the products are not identical.
- Evidence of actual confusion is not required; the confusion inquiry may be resolved on the totality of the factors.

## Conclusion

The Eleventh Circuit held that Dieter’s incontestable “Shutterworld” mark was presumptively strong and that B & H’s use of the identical word mark on related shutter products in overlapping Florida markets was likely to cause confusion, requiring reversal of the no-infringement judgment and remand for appropriate relief.


Dieter v. B & H Indus. of Sw. Fla., Inc., 880 F.2d 322 (11th Cir. 1989)