## Facts

- Marketquest Group, Inc., a California promotional-products company, used and owned federal registrations for the marks **ALL-IN-ONE** and **THE WRITE CHOICE** in connection with promotional products and catalogs.
- After BIC acquired Norwood Promotional Products, Norwood used “All-in-One” prominently in catalogs and in connection with its promotional-product offerings.
- BIC used the phrase “The WRITE Pen Choice for 30 Years” in advertising and packaging for BIC pens.
- Marketquest alleged that defendants’ uses created a likelihood of confusion, including **reverse confusion**, by which a larger junior user’s marketing causes consumers to believe the senior user’s goods originate with the junior user.
- The district court granted summary judgment for defendants on the infringement claims, concluding defendants’ uses were protected by **statutory (classic descriptive) fair use** as to both marks and treating reverse confusion as inadequately pleaded.

## Issues

1. Whether reverse confusion must be pleaded as a separate claim, or instead is a theory within the likelihood-of-confusion element of trademark infringement.
2. Whether summary judgment was proper on defendants’ classic descriptive fair use defense for “All-in-One,” including whether the use was other than as a mark, descriptive, and in good faith, and how consumer confusion bears on that analysis.
3. Whether the district court erred by applying fair use analysis to “The WRITE Pen Choice for 30 Years” after concluding there was no evidence of likely confusion regarding **THE WRITE CHOICE**.

## Decision

- The Ninth Circuit reversed summary judgment and remanded.
- The court held that **reverse confusion is not a separate claim**; it is a theory of likely confusion that need not be expressly pleaded if the complaint’s allegations support it.
- The court held that **genuine disputes of material fact** precluded summary judgment on fair use for “All-in-One,” including disputes about trademark use, descriptiveness, good faith, and the extent of consumer confusion.
- The court held the district court erred in its treatment of “The Write Choice” theory by performing a fair use analysis after finding no evidence of likely confusion, without conducting the required integrated analysis.

## Legal Principles

- Reverse confusion is a **likelihood-of-confusion theory**, not an independent cause of action; it may be pursued without being pleaded as a separate count if consistent with the infringement allegations.
- For classic descriptive fair use under the Lanham Act, the defendant must show use **other than as a mark**, **descriptive** use, and **good faith**.
- The **degree of consumer confusion** is relevant in evaluating fair use; fair use is assessed in conjunction with likelihood-of-confusion considerations rather than in isolation.
- Because trademark disputes often turn on fact-intensive questions (use, intent/good faith, confusion), summary judgment is frequently inappropriate where the record permits competing inferences.

## Conclusion

The Ninth Circuit reinstated Marketquest’s infringement claims by clarifying that reverse confusion is merely a theory of likely confusion and by holding that disputed facts prevented resolving the defendants’ fair use defenses on summary judgment, requiring further proceedings on remand.


Marketquest Grp., Inc. v. BIC Corp., 862 F.3d 927 (9th Cir. 2017)