## Facts

- Lodestar Anstalt owned a foreign registration for the word mark **UNTAMED** covering distilled spirits and obtained a U.S. **extension of protection** in 2011 under the Madrid Protocol based on a bona fide intent to use.
- Bacardi entities developed and launched a U.S. advertising campaign in November 2013 using the phrase **“BACARDI UNTAMEABLE”** for rum; Bacardi had found Lodestar’s mark during a clearance search earlier in 2013.
- Lodestar’s U.S. commercial activity occurred later, including promotion beginning around 2014 and sales beginning in January 2015, with **UNTAMED** often appearing on back labels as part of longer phrases (e.g., “The Wild Geese Rum Collection Untamed”).
- Lodestar also offered an “Untamed Revolutionary Rum” product in 2016; the courts treated this offering as not reflecting bona fide commercial use for purposes of the confusion analysis.
- Lodestar sued under the Lanham Act for trademark infringement and unfair competition, asserting **reverse confusion** (consumers would assume Lodestar’s goods were affiliated with Bacardi).
- The district court granted summary judgment to Bacardi on **likelihood of confusion** and entered judgment for Bacardi; Lodestar appealed.

## Issues

1. Whether a Madrid Protocol U.S. extension of protection can provide **constructive-use priority** over a later user who began actual U.S. use first, once the registrant later makes bona fide U.S. use.
2. Whether Lodestar produced sufficient evidence to create a triable issue of **likelihood of confusion** under a reverse-confusion theory between **UNTAMED** and **BACARDI UNTAMEABLE**.

## Decision

- The Ninth Circuit held that a Madrid Protocol extension of protection can confer **priority as of a constructive-use date**, contingent on later **bona fide use** in U.S. commerce.
- The court affirmed summary judgment for Bacardi because Lodestar failed to raise a genuine dispute of material fact on **likelihood of confusion** under the **Sleekcraft** factors, even assuming Lodestar’s priority.
- The court excluded “Untamed Revolutionary Rum” from the confusion analysis as not reflecting bona fide commercial use.
- The judgment for Bacardi on Lodestar’s infringement and unfair competition claims was affirmed.

## Legal Principles

- A Madrid Protocol extension of protection may function like certain foreign-registration provisions of the Lanham Act by allowing **constructive-use priority** without initial U.S. use, provided the registrant later makes **bona fide** U.S. use.
- **Priority does not establish infringement**; the plaintiff must still prove a **likelihood of confusion**.
- In **reverse confusion** cases, courts apply the **Sleekcraft** factors with attention to the junior user’s commercial strength and marketplace context, but similarity and brand power alone do not substitute for evidence supporting confusion.
- Uses that appear primarily designed to preserve trademark rights, rather than to reflect genuine market activity, may be disregarded as not **bona fide** for infringement analysis.

## Conclusion

The Ninth Circuit recognized that Madrid Protocol extensions can yield constructive-use priority after bona fide U.S. use, but it affirmed summary judgment for Bacardi because the record—particularly the absence of meaningful actual confusion and the marketplace context of how the terms were presented—did not support a triable likelihood-of-confusion claim under a reverse-confusion theory.


Lodestar Anstalt v. Bacardi & Co. Ltd., 31 F.4th 1228 (9th Cir. 2022)