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ORDER GRANTING MOTION FOR SUMMARY JUDGMENT

PAGE - 1

UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF WASHINGTON

AT SEATTLE

THE NAUTILUS GROUP, INC.,

 Plaintiff,

 v.

ICON HEALTH & FITNESS, INC.,

 Defendant.

CASE NO. C02-2420RSM

MEMORANDUM ORDER

GRANTING SUMMARY

JUDGMENT

I. INTRODUCTION

This matter comes before the Court on defendant’s Motion for Summary Judgment

asking that the Court dismiss plaintiff’s federal and state trademark dilution claims. (Dkt. #575). 

Specifically, defendant argues that, as a matter of law, its CrossBow mark is not identical or

nearly identical to plaintiff’s Bowflex trademark, and therefore plaintiff cannot establish dilution. 

Defendant also argues that plaintiff’s federal dilution claim must fail because plaintiff has not

shown actual dilution. Finally, defendant argues that plaintiff’s state law dilution claim must be

dismissed because its mark is federally registered which acts as a complete bar to a state dilution

claim.

Plaintiff responds that defendant’s motion should be denied because defendant has

actually used plaintiff’s trademark, so dilution is presumed, and that, in any event, defendant’s

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ORDER GRANTING MOTION FOR SUMMARY JUDGMENT

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trademark is essentially identical to its trademark. (Dkt. #589). Plaintiff further argues that

there is a genuine issue of material fact as to whether the CrossBow mark diluted the Bowflex

mark. Finally, plaintiff argues that the Court should not dismiss its state dilution claim because

defendant was able to register its mark only after filing a statement of use with the United States

Patent and Trademark Office (“USPTO”) that it would not seek to use the mark until this

litigation had been resolved.

For the reasons set forth below, the Court disagrees in part with plaintiff and GRANTS

defendant’s motion for summary judgment.

II. DISCUSSION

A. Background

The instant lawsuit has been pending in this Court since December of 2002. The original

Complaint, filed under Case No. C02-2420P and having since been assigned to the undersigned

District Judge, alleged claims for infringement of the patents for the BowFlexTM exercise

machine. The BowFlex machine employs cables attached to one end of a flexible rod or rods as

a resistence mechanism, self-contained in a compact home exercise machine. In October of

2002, defendant introduced the CrossBowTM (now CrossBarTM) exercise machine. The machine

uses a similar cable and flexible rod system of resistence. After extensive litigation in this Court

and the Federal Circuit Court of Appeals, the patent infringement claims involving these

machines have been resolved.

However, remaining before this Court are allegations of trademark infringement. On

April 4, 2003, plaintiff amended its Complaint to add claims for statutory trademark

infringement under 15 U.S.C. § 1114, false designation of origin under 15 U.S.C. § 1125(a),

federal and state trademark dilution under 15 U.S.C. § 1125(c) and RCW 19.77.160, violations

of the Washington Consumer Protection Act, and Washington State common law unfair

competition. Plaintiff then filed a motion for preliminary injunction, which this Court granted,

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1

 The Court will consider defendant’s Motion for Summary Judgment pertaining to the doctrine of

unclean hands (Dkt. #571) in a separate Order.

ORDER GRANTING MOTION FOR SUMMARY JUDGMENT

PAGE - 3

and the Federal Circuit Court of Appeals subsequently affirmed. This Court later bifurcated the

patent and trademark claims and stayed discovery and all other remaining pre-trial deadlines

with respect to the trademark claims, in order to first resolve the patent claims.

On January 3, 2006, at the request of the parties, the Court lifted its stay on plaintiff’s

trademark claims and set new discovery and pre-trial deadlines and a new trial date. Motions for

summary judgment followed. The parties then made several requests that the Court hold any

decisions on the pending motions for summary judgment in abeyance while the parties attempted

to settle this case. The last abeyance expired November 30, 2006, and the motions for summary

judgment were noted for consideration on December 1, 2006. Accordingly, this Court now

issues the following Order.1

B. Summary Judgment Standard

Summary judgment is proper where “the pleadings, depositions, answers to

interrogatories, and admissions on file, together with the affidavits, if any, show that there is no

genuine issue as to any material fact and that the moving party is entitled to judgment as a

matter of law.” Fed. R. Civ. P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247

(1986). The Court must draw all reasonable inferences in favor of the non-moving party. See

F.D.I.C. v. O’Melveny & Meyers, 969 F.2d 744, 747 (9th Cir. 1992), rev’d on other grounds,

512 U.S. 79 (1994). The moving party has the burden of demonstrating the absence of a

genuine issue of material fact for trial. See Anderson, 477 U.S. at 257. Mere disagreement, or

the bald assertion that a genuine issue of material fact exists, no longer precludes the use of

summary judgment. See California Architectural Bldg. Prods., Inc., v. Franciscan Ceramics,

Inc., 818 F.2d 1466, 1468 (9th Cir. 1987). 

Genuine factual issues are those for which the evidence is such that “a reasonable jury

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ORDER GRANTING MOTION FOR SUMMARY JUDGMENT

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could return a verdict for the non-moving party.” Anderson, 477 U.S. at 248. Material facts are

those which might affect the outcome of the suit under governing law. See id. In ruling on

summary judgment, a court does not weigh evidence to determine the truth of the matter, but

“only determine[s] whether there is a genuine issue for trial.” Crane v. Conoco, Inc., 41 F.3d

547, 549 (9th Cir. 1994) (citing O’Melveny & Meyers, 969 F.2d at 747). Furthermore,

conclusory or speculative testimony is insufficient to raise a genuine issue of fact to defeat

summary judgment. Anheuser-Busch, Inc. v. Natural Beverage Distributors, 60 F. 3d 337, 345

(9th Cir. 1995). Similarly, hearsay evidence may not be considered in deciding whether material

facts are at issue in summary judgment motions. Anheuser-Busch, Inc. v. Natural Beverage

Distribs., 69 F.3d 337, 345 (9th Cir. 1995); Blair Foods, Inc. v. Ranchers Cotton Oil, 610 F. 2d

665, 667 (9th Cir. 1980).

C. Federal Trademark Dilution

In the instant case, plaintiff alleges, inter alia, trademark dilution under the Federal

Trademark Dilution Act (“FTDA”), 15 U.S.C. § 1125(c)(1). The FTDA provides as follows:

The owner of a famous mark shall be entitled, subject to the principles of

equity and upon such terms as the court deems reasonable, to an injunction

against another person’s commercial use in commerce of a mark or trade

name, if such use begins after the mark has become famous and causes

dilution of the distinctive quality of the mark, and to obtain such other relief

as is provided in this subsection.

15 U.S.C. § 1125(c)(1). The statute defines “dilution” as “the lessening of the capacity of a

famous mark to identify and distinguish goods or services, regardless of the presence or absence

of (1) competition between the owner of the famous mark and other parties; or (2) likelihood of

confusion, mistake, or deception.” 15 U.S.C. § 1127; see Academy of Motion Picture Arts &

Sciences v. Creative House Promotions, Inc., 944 F.2d 1446, 1457 (9th Cir. 1991) (describing

dilution as “the gradual ‘whittling away’ of a trademark’s value” (citation omitted)).

Traditionally, courts have recognized two forms of dilution: blurring and tarnishment.

“Blurring occurs when another’s use of a mark creates ‘the possibility that the mark will lose its

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ORDER GRANTING MOTION FOR SUMMARY JUDGMENT

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ability to serve as a unique identifier of the plaintiff's product.’ Tarnishment, on the other hand,

occurs ‘when a famous mark is improperly associated with an inferior or offensive product or

service.’” Playboy Enters. v. Welles, 279 F.3d 796, 805 (9th Cir. 2002) (citations omitted). In

the instant case, plaintiff alleges both forms of dilution.

Under the FTDA, a plaintiff asserting a dilution claim must prove the following: (1) the

marks are identical or nearly identical; (2) plaintiff’s mark is famous and distinctive;

(3) defendant is making commercial use of the mark; (4) defendant’s use began after the

plaintiff's mark became famous; and (5) defendant’s use presents a likelihood of dilution of

distinctiveness. Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 905-12 (9th Cir. 2002). 

Defendant focuses its arguments on the first and fifth elements. Thus, the Court addresses each

of these arguments in turn.

1. Identity of the Marks

The Ninth Circuit Court of Appeals has adopted the Eighth Circuit’s expression of the

requirement that marks be identical or nearly identical. “For marks to be nearly identical to one

another, they must be similar enough that a significant segment of the target group of customers

sees the two marks as essentially the same.” Thane Int’l, 305 F.3d at 906 (citations and internal

quotations omitted). The Court of Appeals explained that this is a less stringent test than those

employed in the Second and Fourth Circuits, and noted that the Ninth Circuit test “incorporates

consideration of the likely perception of consumers as to whether the marks are ‘essentially the

same,’ and therefore may accommodate circumstances in which the senior mark is so highly

distinctive that consumers are likely to view a junior mark that is a bit different as ‘essentially the

same’ as the senior one.” Id. at 906-07 and n. 7.

Applying this standard, the Court concludes that the issue of identity cannot be

determined on summary judgment. Although the marks CrossBow and Bowflex are not

identical, a reasonable fact finder could find that CrossBow is using a mark nearly identical to

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ORDER GRANTING MOTION FOR SUMMARY JUDGMENT

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plaintiff’s mark. While the word “bow” is located at different places in the trademarks and the

marks are differently stylized, they look and sound somewhat the same given that both words

include “bow.” Furthermore, as plaintiff notes, the marks are close in meaning because both

marks call to mind a device having a curved resilient bow held in tension by a drawstring which

is opposed by resistance created in the bow. Indeed, both parties have submitted expert reports

on the topic of sight, sound and meaning of the two marks. Plaintiff’s expert opines about the

similarity between the words and that there is a high level of consumer confusion. Thus, a

reasonable trier of fact could determine that defendant “used” the Bowflex mark by

incorporating the same word “bow” into its own mark, “and that a significant segment of the

consuming public would likely focus on that element as an identifier essentially the same” as the

Bowflex mark. Thane Int’l, 305 F.3d at 907. At the same time, a reasonable fact finder could

also find that the CrossBow mark is not essentially the same as the Bowflex mark. For example,

the mark CrossBow is printed with cross-hairs in the letter “o” of the word Cross while the

mark Bowflex appears in simple, printed capital letters. In addition, the word “bow” appears at

different places in the mark. Defendant’s expert has also opined that these marks do not have

similar sight, sound and meaning. Accordingly, the Court finds that a genuine issue of material

fact exists as to the identity element of the claim, and, therefore, summary judgment is not

appropriate on this basis.

2. Actual Dilution

Defendant next argues that plaintiff’s claim must fail because it cannot demonstrate

actual dilution. On this basis, the Court agrees with defendant. In Mosely v. V Secret Catalog,

537 U.S. 418 (2003), the United States Supreme Court held for the first time that the text of the

FTDA “unambiguously requires a showing of actual dilution, rather than a likelihood of

dilution.” Mosely, 418 U.S. at 433. The court explained:

that does not mean that the consequences of dilution, such as an actual loss

of sales or profits, must also be proved. . . . [H]owever . . ., at least where the

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2

 Rather, the Court finds that there is a question of fact as to whether the marks are “nearly

identical.”

ORDER GRANTING MOTION FOR SUMMARY JUDGMENT

PAGE - 7

marks at issue are not identical, the mere fact that consumers mentally

associate the junior user’s mark with a famous mark is not sufficient to

establish actionable dilution. . . . [S]uch mental association will not necessarily

reduce the capacity of the famous mark to identify the goods of its owner, the

statutory requirement for dilution under the FTDA. . . . ‘Blurring’ is not a

necessary consequence of mental association. (Nor, for that matter, is

‘tarnishing.’)

Id. (citation omitted) (parenthetical in original). In the instant case, there is a complete absence

of any evidence that defendant’s CrossBow mark has lessened the capacity of the Bowflex mark

to identify and distinguish its products. Plaintiff produces no consumer surveys supporting its

actual dilution claim, and otherwise relies on specious arguments.

First, plaintiff asserts that there is a question of fact as to whether the marks at issue are

identical. However, this is not a case where defendant has used plaintiff’s Bowflex mark to

market a product such as shoes or beverages rather than the product with which it is actually

associated, an exercise machine. Indeed, as discussed above, this Court has already determined

that the marks are not identical.2

 Thus, plaintiff cannot defeat summary judgment on its

unsupported assertion that the marks are questionably identical.

Second, plaintiff has failed to evidence that defendant actually used the Bowflex

trademark. Plaintiff points to the fact that defendant used the Bowflex mark to advertise its

CrossBow products both through the purchase of internet keywords and by telling its customers

that it was BowFlex. The Court rejects both of these arguments. It is clear from defendant’s

evidence that it purchased the keyword Bowflex only in the context of comparative advertising. 

Defendant’s witness Amy Guymon, the person in charge of purchasing keywords, identified the

single term in which it used the word Bowflex – “Bowflex information” – and testified that the

term was purchased so that defendant could appear as a “sponsored link” on the search results

page of a search engine. The title of that sponsor link was “Compare CrossBow to Bowflex.” 

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3

 Plaintiff’s Yahoo documents showing additional Bowflex keywords are inadmissible because

they have not been properly authenticated, and therefore cannot be used to defeat summary judgment. 

Orr v. Bank of Am., 285 F.3d 764, 773 (9th Cir. 2002). 

ORDER GRANTING MOTION FOR SUMMARY JUDGMENT

PAGE - 8

The description that followed the title asked users to compare the two machines, and

summarized what the CrossBow machine had to offer. The URL was listed as

www.crossbow.com. It is well-settled in the Ninth Circuit that such use of a trademark is

excepted from the reach of the statute. Playboy Enters., 279 F.3d at 806 (explaining that such

uses do not create an improper association between a mark and a new product, but merely

identify the trademark holder’s products).3

Further, plaintiff has not demonstrated that defendant represented to customers that it

was Bowflex. Plaintiff relies on three phone calls during which defendant was attempting to

collect payment for the customer’s previous purchase of the CrossBow machine. In one

conversation the customer told defendant’s representative that she thought she had been paying

Nautilus, and the representative informed her that Nautilus made Bowflex, and that she had

actually been paying defendant all along. In another phone call the customer said he didn’t order

a CrossBow machine, but when defendant’s representative stated that it was like a Bowflex, he

remembered that he had purchased such a machine. The third phone call references an alleged

comment made by someone named Andrei from the National Account Recovery Service

(“NARS”), not defendant. The Court finds that none of these phone calls demonstrate the

actual use of the Bowflex mark by defendant.

Finally, plaintiff asserts that the phone calls “readily establish” that many people

purchased the CrossBow believing it was a model of the Bowflex, and therefore a genuine issue

of material fact has been raised with respect to actual dilution. The Court finds this argument

misguided. As noted above, the Supreme Court has already determined that the mere fact that

consumers mentally associate the junior user’s mark with the famous mark is not sufficient to

establish dilution.” Mosely, 537 U.S. at 433. Thus, plaintiff’s consumer confusion argument

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ORDER GRANTING MOTION FOR SUMMARY JUDGMENT

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cannot defeat summary judgment.

For all of these reasons, the Court finds that plaintiff has failed to demonstrate actual

dilution, and dismisses plaintiff’s federal dilution claim on that basis.

D. State Trademark Dilution

Defendant next asks the Court to dismiss plaintiff’s state dilution claim on the basis that

it is barred by the fact that defendant registered the mark CrossBow on the federal trademark

register. The FTDA provides that “ownership by a person of a valid registration . . . on the

principal register shall be a complete bar to an action against that person, with respect to that

mark, that is brought by another person under the common law or a statute of a State and that

seeks to prevent dilution of the distinctiveness of a mark, label or advertisement.” 15 U.S.C.

§ 1125(c)(3). Defendant argues that nothing in the language of the statue prevents it from

taking advantage of this protection, even though it acknowledges that it did not register its

trademark until after this law suit had been initiated. Plaintiff argues that defendant’s reading

and interpretation of the statute is too narrow, and defendant’s eleventh hour registration of its

mark should not bar the state dilution claim. This appears to be a question of first impression in

the Ninth Circuit.

The Court agrees with defendant that the plain language of the statute does not restrict

when a trademark owner must seek federal registration in order to avail itself of the protection. 

Further, the Court agrees with defendant that no exception exists in the plain language of the

statute for cases such as this one, where a preliminary injunction has been issued or where the

trademark applicant has stated that it will not use the mark until after resolution of the litigation. 

However, this Court need not definitively resolve the issue because plaintiff’s state dilution claim

fails for another reason. The Washington dilution statute is identical to the federal statute. See

RCW 19.77.160(1) and 19.77.010(6) (defining dilution). Thus, because the Court has already

determined that plaintiff cannot demonstrate actual dilution, plaintiff’s state dilution claim must

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ORDER GRANTING MOTION FOR SUMMARY JUDGMENT

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also fail. Accordingly, the Court finds summary judgment in favor of defendant appropriate.

III. CONCLUSION

For the reasons set forth above, the Court hereby ORDERS:

(1) Defendant’s Motion for Summary Judgment (Dkt. #575) is GRANTED, and the

Court hereby DISMISSES plaintiff’s federal and state trademark dilution claims.

(2) Plaintiff’s remaining claims will be addressed in this Court’s Order on defendant’s

pending motion for summary judgment regarding the doctrine of unclean hands.

(3) The Clerk shall forward a copy of this Memorandum Order to all counsel of record.

DATED this 21st day of December, 2006.

A

RICARDO S. MARTINEZ

UNITED STATES DISTRICT JUDGE 

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