Chesebrough-Pond's, Inc. v. Faberge, Inc.

United States Court of Appeals for the Ninth Circuit · 1981 · Evidence

666 F.2d 393 (9th Cir.)

Updated August 22, 2026

EvidenceDeclaratory JudgmentTrademarkactual controversytrademark infringementlikelihood of confusionsummary judgmentexpert testimony

Facts

Chesebrough applied to register "Match" for a line of men's toiletries and cosmetics and invested substantially in developing and planning the product line. After acquiring the registered "Macho" mark for similar products, Faberge sent Chesebrough a letter stating the marks were confusingly similar and that it would oppose registration unless Chesebrough withdrew its application, and Faberge then filed an opposition proceeding in the Patent and Trademark Office. The PTO matter remained in discovery for three years while Chesebrough alleged the pending challenge chilled its marketing efforts. In the district court litigation, Faberge counterclaimed for infringement, and on summary judgment relied in part on an English professor's affidavit asserting similarity between the two words.

Issue

Whether an actual controversy existed sufficient to support declaratory judgment jurisdiction where Faberge had opposed registration and asserted confusing similarity, but had not expressly threatened an infringement suit. Whether summary judgment was proper on the likelihood-of-confusion issue, including whether the expert affidavit created a genuine issue of material fact.

Rule

Under the Declaratory Judgment Act, an actual controversy exists in a trademark dispute if the plaintiff has a real and reasonable apprehension that it will be subject to liability. In assessing that apprehension, the court takes a flexible approach focused on the plaintiff's reasonable perceptions rather than any rigid rule tied to specific acts by the defendant. On summary judgment, an expert affidavit does not create a genuine factual issue when it is merely conclusory on matters within common knowledge and the opinion would be unhelpful and excludable within the trial court's discretion under Fed. R. Evid. 702; affidavits under Rule 56(e) must set forth admissible facts.

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In Seattle, Alder Bay Grooming spent $900,000 developing a men's skin-care line under the mark "Forge." Ridgewell Personal Care owns the registered mark "Fiero" for similar goods, sent Alder Bay a letter asserting the marks were likely to cause confusion, and said it would oppose registration if Alder Bay did not withdraw its application; Ridgewell did not expressly threaten suit and never disclaimed one.

If Alder Bay files a declaratory judgment action seeking a ruling of noninfringement, is an actual controversy most likely present?

Explanation. An actual controversy exists if the plaintiff has a real and reasonable apprehension of liability. The inquiry is flexible and centered on the plaintiff's reasonable perceptions. A letter asserting ownership of a registered mark and likely confusion can reasonably imply a threat of infringement litigation even without explicit threat language. (Derived from Chesebrough-Pond's, Inc. v. Faberge, Inc. (n.d.).)