Addressing for the first time the issue of whether remoteness is a requirement of innocent use under the Lanham Act, the U.S. Court of Appeals for the Ninth Circuit found that it was not. The court added that incorporating a remoteness requirement into the law was the job of Congress, not the courts. Quicksilver, Inc. v. Kymsta Corp., Case No. 04-55529, 2006 U.S. App. LEXIS 25029 (9th Cir., 2006) (Rawlinson, C.J.).
Quicksilver began applying the mark ROXY, along with its house mark QUICKSILVER, to a line of junior apparel in the early 1990s. At around the same time, Kymsta also began using the mark ROXYWEAR on clothes for juniors. Quicksilver registered the mark QUICKSILVER ROXY in 1996 and ROXY alone in 1998. It sued Kymsta for trademark infringement. Kymsta interposed affirmative defenses, including innocent use, and counterclaimed for trademark infringement. On cross-motions for judgment as a matter of law (JMOL), the district court ruled in Quicksilver's favor on validity and seniority of use and Kymsta's innocent use defense. Kymsta appealed.
After overturning the district court's grant of JMOL on Quicksilver's date of first use, tacking and inherent distinctiveness, and affirming on the issue of fraud in obtaining the registrations, the Ninth Circuit turned to Kymsta's innocent use defense. The court stated that to establish the defense, Kymsta had to prove that it adopted its mark without actual or constructive knowledge of Quicksilver's marks, that it used its mark prior to Quicksilver's trademark applications and that it continuously used its mark after Quicksilver filed its applications. Quicksilver argued that a fourth element should be added: remoteness. This element would require Kymsta to prove that Quicksilver's marks were not known in the geographical and trade area where Kymsta first used its marks. The Ninth Circuit declined to incorporate the remoteness requirement, because it said the text of 15 U.S.C. Section 1115(b)(5) did not contain a remoteness element. It noted that the Fourth Circuit had apparently reached the same conclusion in Emergency One and also used supporting cases in the First and Tenth Circuits.
The Ninth Circuit acknowledged that there were "persuasive reasons to incorporate a remoteness element into Section 1115(b)(5)," citing McCarthy on Trademarks and the Sixth Circuit's decision in Champions Golf Club. Nonetheless, the court said that doing so was up to Congress.
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