In the

United States Court of Appeals

For the Seventh Circuit

____________

No. 07-2136

AUTOZONE, INC. and AUTOZONE PARTS, INC.,

Plaintiffs-Appellants,

v.

MICHAEL STRICK, et al.,

Defendants-Appellees.

____________

Appeal from the United States District Court

for the Northern District of Illinois, Eastern Division.

No. 03 C 8152—William T. Hart, Judge.

____________

ARGUED APRIL 17, 2008—DECIDED SEPTEMBER 11, 2008

____________

Before RIPPLE, MANION, and TINDER, Circuit Judges.

MANION, Circuit Judge. Plaintiffs AutoZone, Inc., and

AutoZone Parts, Inc. (collectively “AutoZone”), who

together comprise one of the largest retailers of automotive parts in the United States, sued Michael Strick, Strick

Enterprises, Inc., and Strick, Inc. (collectively “Strick”)

alleging that Strick’s use of the trade names and service

marks “Oil Zone” and “Wash Zone” in his automotive

services businesses violated the Lanham Act, 15 U.S.C.
2 No. 07-2136

§ 1051 et seq., and Illinois statutory and common law. At

the summary judgment stage, the district court held that

AutoZone had failed to produce sufficient evidence to

show a likelihood of confusion between AutoZone’s

and Strick’s marks as a matter of law and dismissed

AutoZone’s suit. AutoZone appeals, and we reverse.

I.

AutoZone operates approximately 3,500 stores nationwide. Its primary business is the sale of a wide variety

of automotive products, though its stores also provide a

few services in conjunction with the sale of those products,

such as diagnostic advice, oil reclamation, and free battery

testing. AutoZone stores do not have any service bays

for car repairs, nor do they offer car washes or oil

changes. They do, however, sell products related to

washing cars and changing motor oil. AutoZone targets

its products and services to two segments of the population: the general automotive-using public, and commercial

automotive establishments that buy parts to make repairs

for their customers. The vast bulk of AutoZone’s business—90%—comes from the first category.

AutoZone operates under the federally registered

trademark AutoZone with the design depicted below:
No. 07-2136 3

AutoZone also utilized the mark “Oilzone” internally in its 1

stores. That mark was the subject of several counterclaims in

the district court, but Strick voluntarily dismissed those

claims and they are not at issue in this appeal.

AutoZone refers to this mark as its “Speedbar Design.” In 1

color, the series of stripes preceding the “AutoZone” name

are depicted in orange, and the lettering is in red.

AutoZone first began using the speedbar mark in November 1987 and has used it in Illinois since the early 1990’s.

By 1996, AutoZone had approximately 100 stores in

the Chicago area operating under that mark.

AutoZone has extensively advertised the mark across

the country since 1987. AutoZone’s marketing in the

Chicago area began to take off in the early 1990’s. From

1994 to 2001, AutoZone paired national television advertising with sponsorships of local sports teams, such as

the Chicago Bulls and the Chicago White Sox. In 1996,

AutoZone labeled the Chicago area a growth market,

spending a disproportionate share of its advertising

funds there. Along with the sports sponsorships,

AutoZone’s Chicago-area advertising included television

advertising on Chicago stations and national cable television, advertisements in magazines such as Sports Illustrated and Hot Rodder, weekly or biweekly ads in

Chicago newspapers, local radio advertising, commercial

sales calls to local automotive businesses near AutoZone

locations, direct mail advertising, outdoor advertising

on billboards and city buses, and ads in the yellow pages.

While AutoZone was established and advertising heavily

in the Chicago market, Strick, who had been working in
4 No. 07-2136

Strick’s Wheaton store is within one mile of an AutoZone 2

store that opened in May 2000.

the automotive goods and services industry, opened two

businesses in the Chicago area, one in Wheaton and the 2

other in Naperville. Those stores provide automotive

services such as car washes, 10-minute oil changes, transmission services, rear differential services, and coolant

flushes. Strick’s primary customer base is members of the

general public that live within a one- to three-mile radius

of one of Strick’s two locations. Strick’s businesses use

the mark “Oil Zone,” the appearance of which is

depicted below:

A picture of Strick’s Naperville Oil Zone location is below

(along with two pictures in the record of an AutoZone

store for comparison):
No. 07-2136 5

Strick also used the mark “Wash Zone” at his Naperville

location, which provided car washes in addition to the

other automotive services. That mark is very similar to

Strick’s Oil Zone mark, with the exception that when

depicted in color, the letters of the Wash Zone mark are

blue, as opposed to green for the Oil Zone mark. Strick

began using the mark Oil Zone in July 1996, and the mark

Wash Zone in 1998. At his deposition, Strick testified that

he was completely unaware of AutoZone and its stores

at the time he began using the Oil Zone mark. He also

testified that the only step he took to determine whether

he was legally entitled to use Oil Zone was to contact a

search firm called “Lexis documents.”

In December 1998, AutoZone became aware of Strick’s

businesses and directed Kirby & Associates, a private

investigation firm, to investigate them. The investigators

prepared their report on Strick’s operations and submitted it to AutoZone the same month. AutoZone did not

contact Strick about his use of the Oil Zone and Wash

Zone marks until February 18, 2003, when it sent him a

letter. It then filed this suit on November 14, 2003, alleging

that Strick engaged in service mark and trademark infringement in violation of 15 U.S.C. § 1114(1), trade name

infringement in violation of Illinois common law, unfair

competition in violation of 15 U.S.C. § 1125(a) and Illinois

common law, and service mark and trademark dilution

in violation of 15 U.S.C. § 1125(c) and 765 ILCS 1036/65.

AutoZone sought a permanent injunction enjoining Strick

from using the Oil Zone and Wash Zone marks, as well as

attorneys’ fees and costs. After AutoZone amended its

complaint, Strick filed an answer asserting a few counter-
6 No. 07-2136

As was mentioned above, Strick later filed a motion to 3

voluntarily dismiss his counterclaims with prejudice, which

was granted.

Although the district court noted that, under the amended 4

version of 15 U.S.C. § 1125(c), AutoZone need not prove a

likelihood of confusion to prevail on its federal dilution claim,

the court found that AutoZone’s dilution claim still failed

because AutoZone made no attempt to show actual or likely

dilution of its mark. 

claims and affirmative defenses, none of which is relevant

to this appeal.

The parties then filed cross-motions for summary

judgment. AutoZone sought partial summary judgment

on some of Strick’s counterclaims and affirmative defenses.

Strick, on the other hand, moved for summary judgment

on all of AutoZone’s claims. Strick asserted that all of

AutoZone’s claims failed because the undisputed facts

showed that there was no likelihood of confusion between the AutoZone mark and the Oil Zone and Wash

Zone marks. Strick also maintained that it was entitled to

summary judgment on the issue of laches because of

AutoZone’s four-year delay in filing suit.

The district court, in a comprehensive opinion, granted

Strick’s motion for summary judgment and denied

AutoZone’s motion. The district court found that 3

AutoZone’s claims failed because the AutoZone mark and

the Oil Zone and Wash Zone marks were “not similar

enough for a reasonable finder of fact to find that there

is a likelihood of confusion.” It did not reach the issue 4

of laches. The district court entered final judgment on
No. 07-2136 7

May 2, 2007. AutoZone appeals.

II.

On appeal, AutoZone challenges the district court’s

ruling, at the summary judgment stage, that AutoZone’s

infringement and unfair competition claims failed as a

matter of law. Specifically, AutoZone claims that to

avoid summary judgment it presented sufficient evidence

that Strick’s use of the Oil Zone and Wash Zone marks

is likely to cause confusion with the AutoZone mark.

A. Summary Judgment Standard

We review de novo the district court’s decision to grant

summary judgment to Strick, viewing the facts in the light

most favorable to AutoZone, the nonmovant. Morton v.

Motel 6 Operating L.P., __ F.3d __, No. 07-2417, slip op. at 8

(7th Cir. July 7, 2008). According to Federal Rule of Civil

Procedure 56, summary judgment is proper “if the pleadings, the discovery and disclosure materials on file, and

any affidavits show that there is no genuine issue as to

any material fact and that the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c). “[I]f there

is any genuine material issue of fact, we must remand.”

AHP Subsidiary Holding Co. v. Stuart Hale Co., 1 F.3d 611,

615 (7th Cir. 1993).

B. Likelihood of Confusion

A necessary element of AutoZone’s infringement and

unfair competition claims under both state and federal law
8 No. 07-2136

is that there be a likelihood of confusion between the

AutoZone mark and the Oil Zone and Wash Zone marks.

CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660, 673-74 (7th

Cir. 2001); see also Stuart Hale Co., 1 F.3d at 615. We analyze

seven factors to determine whether consumers are likely

to be confused:

(1) the similarity between the marks in appearance and

suggestion;

(2) the similarity of the products;

(3) the area and manner of concurrent use;

(4) the degree and care likely to be exercised by consumers;

(5) the strength of the plaintiff’s mark;

(6) any actual confusion; and

(7) the intent of the defendant to “palm off” his product as that of another.

Packman v. Chicago Tribune Co., 267 F.3d 628, 642 (7th Cir.

2001). No single factor is dispositive. Courts may assign

varying weight to each of the factors depending on the

facts presented, though usually the similarity of the

marks, the defendant’s intent, and actual confusion are

particularly important. Id.

Whether consumers are likely to be confused about the

origin of a defendant’s products or services is ultimately

a question of fact. McGraw-Edison Co. v. Walt Disney

Prods., 787 F.2d 1163, 1167 (7th Cir. 1986); see also Barbecue

Marx, Inc. v. 551 Ogden, Inc., 235 F.3d 1041, 1044 (7th Cir.

2000); Reed-Union Corp. v. Turtle Wax, Inc., 77 F.3d 909, 912
No. 07-2136 9

(7th Cir. 1996). That question of fact may be resolved on

summary judgment only “if the evidence is so one-sided

that there can be no doubt about how the question

should be answered.” Packman, 267 F.3d at 637 (quoting

Door Sys., Inc. v. Pro-Line Door Sys., Inc., 83 F.3d 169, 171

(7th Cir. 1996)); see also Stuart Hale Co., 1 F.3d at 616 (“[A]

motion for summary judgment in trademark infringement cases must be approached with great caution.”). As

we will demonstrate below in our analysis of the factors

bearing on the issue of likelihood of confusion, this is not

a case where the evidence is so one-sided that the issue

of likelihood of confusion can be properly determined at

the summary judgment stage.

1. Similarity of the marks.

To determine whether two marks are similar, we view

the marks as a whole. See Estate of Beckwith, Inc. v. Comm’r

of Patents, 252 U.S. 538, 545-546 (1920) (“The commercial

impression of a trade-mark is derived from it as a whole,

not from its elements separated and considered in detail.”);

see also Scandia Down Corp. v. Euroquilt, Inc., 772 F.2d 1423,

1431 (7th Cir. 1985). We must compare the marks “in light

of what happens in the marketplace and not merely by

looking at the two marks side-by-side.” Sullivan v. CBS

Corp., 385 F.3d 772, 777 (7th Cir. 2004) (quoting Ty, Inc. v.

The Jones Group, Inc., 237 F.3d 891, 898 (7th Cir. 2001)); see

also Meridian Mut. Ins. Co. v. Meridian Ins. Group, Inc., 128

F.3d 1111, 1115 (7th Cir. 1997) (noting that “it is inappropriate to focus on minor stylistic differences to determine

if confusion is likely” when the marks are not usually

encountered together). “[T]he test is not whether the public
10 No. 07-2136

would confuse the marks, but whether the viewer of an

accused mark would be likely to associate the product or

service with which it is connected with the source of

products or services with which an earlier mark is connected.” James Burrough Ltd. v. Sign of Beefeater, Inc., 540

F.2d 266, 275 (7th Cir. 1976). The court should therefore

“consider whether the customer would believe that the

trademark owner sponsored, endorsed or was otherwise

affiliated with the product.” Nike, Inc. v. “Just Did It”

Enters., 6 F.3d 1225, 1228-29 (7th Cir. 1993). Viewed from

that perspective, the marks in this case are similar enough

that a reasonable finder of fact could find that a consumer would believe that the marks are connected to

the same source.

Here, both parties’ marks are comprised of two words.

All marks have “Zone” as the second word. The words are

in the same font. They are slanted in the same direction.

The first letter of both words is larger than the other

letters in all the marks. And all marks feature bar designs

that suggest movement or speed. (The similarity in architectural design between Strick’s Naperville Oil Zone

and Wash Zone and the pictures of an AutoZone store

in the record also did not escape our notice.)

There are dissimilarities between the marks too, of

course: they are usually portrayed in different colors, the

bar designs run in different directions, and the first words

are different. But viewing the facts in the light most

favorable to AutoZone, as we are required to do at this

stage of the litigation, the prominent similarities between

the marks may very well lead a consumer cruising down
No. 07-2136 11

the street to believe, after driving past both parties’ businesses, that Oil Zone and Wash Zone represented

AutoZone’s entry into the oil-change and car wash-services

market. See, e.g., James Burrough Ltd., 540 F.2d at 275 (noting

that marks “must be compared in the light of what occurs

in the marketplace, not in the courtroom”). Thus,

AutoZone has created a genuine factual dispute as to

the similarity of the marks.

In an effort to avoid that conclusion, Strick relies heavily

on the Sixth Circuit’s decision in AutoZone, Inc. v. Tandy

Corp., 373 F.3d 786 (6th Cir. 2004). In Tandy Corp., the

trademark dispute centered around the marks AutoZone

and PowerZone, a mark used by Tandy Corp. in its Radio

Shack stores. The Sixth Circuit held that the PowerZone

mark was not likely to cause confusion with the AutoZone

mark and affirmed the district court’s grant of summary

judgment in favor of Tandy Corp. In the course of pointing

out several dissimilarities between the physical appearances of the marks, the Sixth Circuit remarked that “the

differences between the first syllables of POWERZONE

and AUTOZONE cannot be ignored, particularly given

the ubiquity of ZONE.” Id. at 796. Based on that comment,

Strick argues that our analysis should hinge on the nonshared portions of the marks—Auto, Oil, and Wash—

rather than the shared common term Zone.

Such an argument ignores the context of that comment

by the Sixth Circuit in Tandy Corp. Just a few paragraphs

before, the Sixth Circuit had noted it could not consider

only the non-shared terms of Auto and Power because

to do so would violate the “anti-dissection rule” that
12 No. 07-2136

requires marks to be viewed in their entirety. Id. at 795

(citing 3 J. Thomas McCarthy, McCarthy on Trademarks

and Unfair Competition § 23:41, at 23-123 (2003) (hereinafter “McCarthy”)). The difference between the words

Auto and Power, while mentioned in the court’s analysis,

was therefore not crucial to the Sixth Circuit’s decision.

Rather, what did factor prominently into the Sixth Circuit’s decision was the visual dissimilarities between the

marks taken as a whole—the different fonts and visual

impressions—and the fact that the PowerZone mark was

always in close proximity to the Radio Shack mark, a

prominent mark in its own right. See id. at 796-97.

In contrast to Tandy Corp., Strick’s marks—viewed in

their entirety—are visually similar to the AutoZone mark.

There is also no well-known mark like Radio Shack accompanying Strick’s Oil Zone and Wash Zone marks that

would allow consumers to easily distinguish between

those marks and the AutoZone mark. Thus, Tandy Corp.

offers minimal support to Strick’s argument urging us to

focus on the words Auto, Wash, and Oil, instead of the

overall impression created by the marks.

2. The similarity of the products.

Like the previous factor comparing the similarity of

the marks, “[o]ur inquiry in comparing the two products

is not whether they are interchangeable, but whether ‘the

parties’ products are the kind the public might very well

attribute to a single source (the plaintiff).’ ” Eli Lilly & Co.

v. Natural Answers, Inc., 233 F.3d 456, 463 (7th Cir. 2000)
No. 07-2136 13

(quoting Int’l Kennel Club of Chicago, Inc. v. Mighty Star, Inc.,

846 F.2d 1079, 1089 (7th Cir. 1988)); see also McGraw-Edison

Co., 787 F.2d at 1169. The rights of an owner of a registered

trademark extend to any goods or services that, in the

minds of consumers, might be put out by a single producer. Thus, “[a] likelihood of confusion may exist even

if the parties are not in direct competition, or their products and services are not identical.” CAE, Inc., 267 F.3d

at 679 (internal citation omitted).

No consumer would mistake an AutoZone store, which

mainly sells products, for a Wash Zone or an Oil Zone,

which primarily provides services. But, viewed in light of

the similarity of the marks, a reasonable consumer may

very well be led to believe that Oil Zone and Wash Zone

are AutoZone spinoffs. A retailer or manufacturer with a

strong mark venturing into a related service industry

would not be that surprising. And the automotive services

provided by Strick’s businesses are related to the automotive products sold at AutoZone stores. Indeed, there is

even some direct overlap between AutoZone’s products

and the services provided by Strick’s businesses: Strick

provides car washes and oil changes while AutoZone

sells car-wash and oil-change products. A reasonable

consumer, taking into account the similarity of the marks,

could therefore conclude from the relatedness of the

goods and services provided by AutoZone, Oil Zone,

and Wash Zone that the marks are all attributable to a

single source. Thus, AutoZone has shown that a genuine

dispute exists here as well. Cf. CAE Inc., 267 F.3d at 680-81

(upholding district court’s finding that “the diverse

nature of CAE, Inc.’s businesses makes it likely that
14 No. 07-2136

consumers might reasonably expect CAE, Inc. to expand

its business to offer the same products and services

offered by Clean Air in the air pollution control business”)

(internal quotation marks omitted).

In an effort to avoid that conclusion, Strick again points

to Tandy Corp. But just as before, Tandy Corp. is not very

helpful to Strick here. In Tandy Corp., the record showed

that AutoZone and Radio Shack competed in almost

entirely different markets—there was a less than one

percent overlap between the automotive products sold

at AutoZone stores and the electronics equipment

retailed at Radio Shack stores. Tandy Corp., 373 F.3d at 789.

As the district judge in Tandy Corp. quipped, “What idiot

who wants to buy an automobile part is going to go to a

Radio Shack?” Id. at 798. In contrast, this is not a case

where the markets in which the parties compete are

almost entirely distinct. Rather, both parties here operate

automotive-oriented businesses that target segments of

the general automobile-using public. We therefore

remain unpersuaded by Strick’s repeated appeals to

Tandy Corp.

3. Area and manner of concurrent use.

“The third factor in the likelihood of confusion

analysis assesses ‘whether there is a relationship in use,

promotion, distribution, or sales between the goods or

services of the parties.’ ” CAE, Inc., 267 F.3d at 681 (quoting

Forum Corp. of N. Am. v. Forum, Ltd., 903 F.2d 434, 442 (7th

Cir.1990)). In this case, the evidence in the record shows
No. 07-2136 15

that both parties sell and promote their automotive goods

and services in the Chicago area. In response to that

evidence, Strick points out that AutoZone promotes

its goods and services on a national scale, while in contrast his business is limited to a one- to three-mile radius

around his Naperville and Wheaton locations. Strick

does not cite any authority, however, for conditioning

infringement on the scale of the parties’ respective operations, and for good reason: that proposition is undoubtedly

incorrect. Such a rule would run counter to the cases,

cited above, holding that infringement occurs when

consumers are confused over affiliation, and not merely

when businesses are identical. Moreover, accepting what

Strick advocates would allow local businesses a free ride

off of the advertising efforts and goodwill of larger national businesses. But trademark law makes no exception for the localized infringer.

Strick also argues that the customer bases for AutoZone

and his businesses are “completely different,” but a trier

of fact from the record before us could reasonably conclude otherwise. Both businesses court members of the

general automobile-using public. Of course there may be

subsets of that group that will only change their oil themselves, and thus can only be AutoZone customers, or

will not be bothered with changing their oil, thus making

them only potential Oil Zone customers. But the record

before us does not rule out the reasonable inference that

a substantial congruence exists between the potential

customer base in Naperville and Wheaton for AutoZone

and Strick’s businesses. AutoZone has therefore created

a genuine factual dispute for this factor as well.
16 No. 07-2136

4. Degree of care exercised by consumers.

Despite reaching the ultimate conclusion that there was

no likelihood of confusion as a matter of law, the district

court found that this factor supported a possibility of

confusion. AutoZone, Inc. v. Strick, 466 F. Supp. 2d 1034,

1043 (N.D. Ill. 2006). We agree. In assessing whether

this factor favors finding a likelihood of confusion, we

stated in CAE, Inc. v. Clean Air Engineering, Inc. that “[t]he

more widely accessible and inexpensive the products

and services, the more likely that consumers will exercise

a lesser degree of care and discrimination in their purchases.” 267 F.3d at 683. That statement in CAE, Inc. also

applies in this case. AutoZone has presented evidence

that many of the products it sells are inexpensive. Furthermore, as the district court noted, there is no evidence in

the record that customers of Strick’s businesses “are

particularly sophisticated or deliberative.” AutoZone, Inc,

466 F. Supp. 2d at 1042. Keeping in mind, therefore, the

physical similarity of the marks and the danger of affiliation confusion (as discussed above), a reasonable trier

of fact could also conclude from the evidence in the

record that the degree-of-care factor favors AutoZone.

5. Strength of the plaintiffs’ mark.

“The stronger the mark, the more likely it is that encroachment on it will produce confusion.” 2 McCarthy

§ 11.73, at 11-169 to 170 (2008) (quoting Champions Golf

Club v. Champions Golf Club, 78 F.3d 1111 (6th Cir. 1996)).

The strength of a mark usually corresponds to its economic and marketing strength. Sullivan, 385 F.3d at 777.
No. 07-2136 17

In this case, the evidence in the record is more than

sufficient to support the conclusion that the AutoZone

mark has plenty of economic and marketing strength. The

AutoZone mark is displayed prominently on more than

3,000 stores nationwide, and it has been the subject of

hundreds of millions of dollars’ worth of advertising

since 1987.

Despite the clear evidence of the economic and marketing strength of the AutoZone mark in the record, Strick

nevertheless maintains that AutoZone’s mark is weak. To

support that assertion, Strick points to evidence that the

word “Zone” is commonly found in other marks. That

argument fails for two reasons. First, as the district court

pointed out, Strick did not produce evidence to show

how extensively any of the marks that use “zone” have

been promoted or become recognized by consumers in

the marketplace. AutoZone, Inc., 466 F. Supp. 2d at 1042.

Thus, that evidence does little to cast doubt on the

strength of AutoZone’s mark. See CAE, Inc., 267 F.3d at 685

(noting that third-party trademark registrations can

negatively impact the strength of a plaintiff’s mark “only

to the extent that the similar marks are promoted by their

owners or recognized by the consuming public”). Second,

Strick’s focus on the term “Zone” misses the point. As we

discussed above, “[t]he commercial impression of a

trade-mark is derived from it as a whole, not from its

elements separated and considered in detail.” Estate of

Beckwith, 252 U.S. at 545-546; see also Tandy Corp., 373 F.3d

at 795 (“Conflicting composite marks are to be compared

by looking at them as a whole, rather than breaking the

marks up into their component parts for comparison . . . .
18 No. 07-2136

The rationale for the rule is that the commercial impression of a composite trademark on an ordinary prospective buyer is created by the mark as a whole, not by its

component parts.” (quoting 3 McCarthy § 23:41, at 23-123

(2003))). “Zone” by itself might be generic and subject

to little protection, but the same is not true of the composite mark AutoZone. A trier of fact could reasonably

conclude that AutoZone’s mark is strong, thus making

confusion due to the similarity of Strick’s marks more

likely.

6. Intent to palm off.

Strick testified at his deposition that he was not aware

of the AutoZone mark when he created the Oil Zone

mark. Strick points to that testimony and argues that the

evidence is undisputed that he did not intend to mislead

the public into believing that his goods and services were

in some way related to AutoZone. That argument, however, fails to take into account all the evidence in the

record bearing on Strick’s knowledge of AutoZone’s mark

and his intent to create a mark confusingly similar to it.

AutoZone presented evidence that the AutoZone mark

was being extensively marketed in the Chicago area

(where there were over 100 AutoZone stores) at the time

that Strick chose to adopt the Oil Zone mark. The advertising AutoZone did was both national and local, so

someone like Strick would have had a hard time missing

it—especially since the record shows that Strick had been

working in the same industry as AutoZone before he

created Oil Zone.
No. 07-2136 19

In some circumstances, an intent to confuse may be

reasonably inferred from the similarity of the marks

where the senior mark has attained great notoriety. See

Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947,

963 (7th Cir. 1992). If the marketing and business

presence of the senior mark (in this case AutoZone) is

nearly ubiquitous in the geographic area where the junior

mark competes, a trier of fact can easily conclude that

the creator of a strikingly similar junior mark intended to

confuse. Here, a reasonable trier of fact could conclude

from Strick’s experience in the industry, AutoZone’s

extensive marketing of its mark in the area where Strick

did business, and the close similarity in design between

the marks that Strick designed the Oil Zone mark with

the intent to mislead consumers into believing that Oil

Zone was somehow affiliated with AutoZone. Whether

Strick was telling the truth when he testified that he

was not aware of the AutoZone mark when he created Oil

Zone is for the trier of fact to decide. See Stuart Hale Co.,

1 F.3d at 619 (“[T]he district court cannot weigh credibility

issues at the summary judgment stage.”).

In sum, we conclude from our analysis of the relevant

factors that a reasonable finder of fact could have

found that consumers might be led to believe that

AutoZone and Strick’s Oil Zone and Wash Zone are

affiliated with each other. AutoZone has therefore presented sufficient evidence to create a triable issue of fact

on the issue of likelihood of confusion. After its careful

and thorough examination, had the district court gone

on to resolve the factual issues that we have recited,

this case would be in a different posture on review. But
20 No. 07-2136

because there are unresolved genuine issues of material

fact, summary judgment was not appropriate. Since this

case will likely be tried to a judge rather than a jury,

nothing in this opinion should be read to foreclose the

new trier of fact from reaching the same ultimate conclusion—or an opposite holding—afterthe parties’ presentation of the evidence at trial, provided that its decision

is supported by sufficient factual findings. This opinion

is not intended to project who should prevail at trial.

Nevertheless, to ensure a fresh analysis, Circuit Rule 36

shall apply on remand.

That brings us to the last issue: the application of the

doctrine of laches. In his brief, Strick asserts that the

district court’s judgment can still be affirmed, despite

erring on the likelihood-of-confusion issue, on the ground

that laches bars AutoZone’s suit. Although briefed in

Strick’s summary judgment motion, the district court

expressly declined to rule on that issue. Because a district court’s decision to apply the doctrine of laches is

discretionary, see Hot Wax, Inc. v. Turtle Wax, Inc., 191 F.3d

813, 819 (7th Cir. 1999), we leave it to the district court

to determine, in the first instance, how it will exercise its

discretion.

III.

Viewing the facts in the light most favorable to

AutoZone, a reasonable trier of fact could find that consumers are likely to be confused between the AutoZone

mark and the Oil Zone and Wash Zone marks. Accordingly, the judgment of the district court is REVERSED, and
No. 07-2136 21

the case is REMANDED for further proceedings consistent

with this opinion.

9-11-08