A Fox Rothschild Intellectual Property Litigation team, led by Mark Connot, Aaron Mills Scott, and Colleen McCarty, successfully represented Cirrus Aviation Services in a trademark infringement suit seeking over $20 million in damages, permanent injunctive relief, and attorney’s fees.

The six-year long case culminated in a four-day bench trial before the U.S. District Court for the District of Nevada.

The dispute stemmed from the use of the word Cirrus. In 2016, Cirrus Design, the largest manufacturer of small aircraft in the United States, accused Cirrus Aviation, a private jet charter company based in Las Vegas, of trademark infringement and unfair competition.

Cirrus Aviation sought a declaration of non-infringement in Nevada shortly before Cirrus Design filed suit in Minnesota. The Fox Team prevailed in having the Minnesota court dismiss that action so that litigation would proceed in Nevada, and also subsequently prevailed in a subpoena dispute in Minnesota, winning fees against Cirrus Design.

Cirrus Design contended that because it had the only federally registered trademark for the use of the term cirrus in the field of aviation, its use of the term cirrus for aircraft manufacturing and sales prevailed over all other uses of the term cirrus in the field of aviation, in particular the field of aircraft charter operations.

At trial, the Court considered the eight-factor Sleekcraft test followed in the Ninth Circuit, finding  that the weakness of the mark in light of the presence of multiple “Cirrus” businesses in aviation, the absence of evidence of actual confusion, the degree of care exercised by purchasers of the parties’ offerings, and the absence of intent on the part of Cirrus Aviation to exploit the goodwill of Cirrus Design all weighed in favor of finding no likelihood of confusion.

The Fox team was assisted by Michael J. Leonard, Kevin M. Sutehall, Colleen McGarry and Katherine Geneser.