5th Circuit discounts confusion caused by overlap in commonly used arbitrary word

Rampart Resources, Inc. v. Rampart/Wurth Holding, Inc., No.24-30111, 2025 WL 586820 (5^th Cir. Feb. 24, 2025)

District court’s denial of preliminary injunction discussedhere. Rampart Resources provides real estate and property managementservices in Louisiana, Texas, Arkansas, Mississippi, Alabama, West Virginia,and Ohio. Its services relate to right-of-way acquisition, servitudes, realestate brokerage, permitting, and property management—across severalindustries, including utilities, oil and gas, renewable energy, and publicworks. It has a 2018 registration for those services for “the stylized wording‘RAMPART RESOURCES’ to the right of a graphic image of a road going into thehorizon, with a road curving off to the right and left of the main road.” “Tobe clear, Rampart Resources does not have a trademark for the word ‘Rampart’ or‘Rampart Resources.’”

Rampart/Wurth offers commercial and residential propertymanagement services throughout Louisiana, Texas, Mississippi, and Alabama. Itsservices cover multifamily, single-family, office, retail, and receiver/keeperproperties; it uses different logos to refer to Rampart Multifamily Managementand Rampart Commercial Management.

Rampart Resources found out about Rampart/Wurth’s recentadoption of that name change in September 2023 when a FedEx driver told itspresident that “another Rampart” had just opened in Baton Rouge and that shehad confused the two businesses.

Rampart Resources received at leastseven telephone calls in September and October 2023 from individuals inquiringabout rent collection, leasing units, Section 8 housing vouchers, leasepayments, and refunding deposits. After being told they must have the wrongnumber, customers responded, “this is the home office of Rampart, correct?” and“this is the number I got for Rampart.”

On appeal, the standard was abuse of discretion. “As to eachelement of the district court’s preliminary-injunction analysis ... thedistrict court’s findings of fact are subject to a clearly-erroneous standardof review, while conclusions of law are subject to broad review and will bereversed if incorrect.” Here, the appeal failed on likely success on themerits.

The district court found that the type of mark/markstrength, similarity of products/services, and evidence of actual confusionweighed in favor of likely confusion; similarity of marks, consumer overlap,and degree of care of potential purchasers weighed against; and advertisingmedia/defendant’s intent were neutral.

Rampart Resources argued that mark strength should weighheavily in its favor, not just slightly as the district court held. Althoughthe mark was arbitrary, and although Rampart Resources had used it for 34years, Rampart/Wurth provided evidence of widespread use of the key portion(Rampart). This was not clear error.

Mark similarity: “It is visually apparent that all aspectsof the marks (font, color, design, etc.) are different except the use of thesingular word ‘Rampart.’ The common use of the word ‘Rampart’ does not make themarks similar when considering ‘the total effect of designation.’”

Similarity of services: the district court found only aminor overlap and didn’t weigh it heavily in Rampart Resources’ favor. “Thedistrict court correctly concluded that while both parties operate broadly inthe real estate industry, there is not substantial overlap between the servicesoffered.”

But, when there isn’t direct competition, “the confusion atissue is one of sponsorship, affiliation, or connection.” The critical question,the court of appeals said, is “whether the consuming public would believe thatthe natural tendency of [Rampart Resources]” would be “to expand into the[property management industry].” “Here, the district court found that it wouldbe reasonable for a customer of Rampart Resources to believe it was making aforay into property management, since they have offered property managementservices in the past and represent that they are still capable of doing so.” Weighingthis factor in favor of a likelihood of confusion, but only somewhat, notheavily, was plausible based on the record.

Advertising media: “Both parties stated that word of mouthadvertising is perhaps their strongest form of advertising…. Although bothparties represented they use face-to-face communications and websiteadvertising, the district court is correct that the evidence presented for thisdigit is scant.” Finding the factor neutral was not an abuse of discretion.

Actual confusion: While swayed purchases are not necessary,“more is required when the confusion did not or cannot sway purchases.”  “[N]ot all confusion counts: evidence ofactual confusion must show ‘more than a fleeting mix-up of names’; rather itmust show that ‘[t]he confusion was caused by the trademarks employed and itswayed consumer purchases.’ ” Here, seven misdirected phone calls and the FedExdriver’s confusion was not weighty when evaluated in light of “the high volumeof business conducted by the parties and the fact that there was no evidencethat any of Rampart Resources’ customers had erroneously contactedRampart/Wurth.” The court of appeals agreed.

Interestingly, the court found it “[m]ost important[]” that

there is no evidence that any ofthe eight incidents of actual confusion were related to Rampart/Wurth’s logo orconduct. None of Rampart Resources’ anecdotal evidence shows that parties wereconfused by the trademarks at issue in this case. Rampart Resources does nothave a trademark on the word “Rampart.” Our court has rejected strictlyanecdotal evidence where “the proponent did not show that ‘a misleadingrepresentation by [the defendant], as opposed to some other source, caused alikelihood of confusion.’ ”

[This is a covert way of saying that, if the confusion wascaused by the overlap in “Rampart,” too bad for plaintiff—a purely empiricalvision of trademark would say that if the confusion was caused by the overlap,then plaintiff’s rights would extend past its registration to other uses. Butthere is never a purely empirical account of trademark, much as courts oftenpretend otherwise. Also: How insulted do you think the Fifth Circuit would be to hear that this is a very European way of looking at it?]

Still, it wasn’t abuse of discretion to weigh actualconfusion slightly in the plaintiff’s favor, even though the onlyevidence showed a “fleeting mix-up of names,” and not that any party was“actual[ly] confus[ed] about the origin of the parties’ products.”

There was no clear error in weighing the factors.  The district court found that thedissimilarity of the marks, as well as the sophistication of the clientsweighed most heavily against a finding of likelihood of confusion. Given thateach digit “may weigh differently from case to case,” that wasn’t clear error.