Stone Creek, Inc. v. Omnia Italian Design, Inc.

United States Court of Appeals for the Ninth Circuit · 2017 · Evidence

875 F.3d 426

Updated July 9, 2026

evidencetrademark infringementlikelihood of confusionTea Rose-Rectanus doctrinedisgorgement of profitssanctionsidentical marksidentical goods

Facts

Stone Creek, a retail furniture company based in the Phoenix area, adopted the STONE CREEK mark around 1990, obtained Arizona trademark protection in 1992, and federally registered the mark in 2012. Omnia, a leather furniture manufacturer that had previously made leather furniture for Stone Creek under the STONE CREEK mark, began in 2008 selling leather furniture to Bon-Ton branded with an identical STONE CREEK logo that Omnia directly recreated from Stone Creek’s materials. The STONE CREEK-labeled furniture was sold in Bon-Ton furniture galleries in parts of the Midwest, while Stone Creek also marketed online, advertised nationally, and made some sales in that region. Stone Creek learned of Omnia’s conduct after customers contacted Stone Creek about product options, store locations, and warranty issues for Bon-Ton furniture bearing the STONE CREEK mark, and Omnia admitted it had sold furniture under that mark.

Issue

Whether Omnia’s use of the identical STONE CREEK mark on identical furniture was likely to cause consumer confusion, whether Omnia could avoid liability under the Tea Rose-Rectanus doctrine despite knowing of Stone Creek’s prior use, and whether a plaintiff must prove willfulness to recover an infringer’s profits under 15 U.S.C. § 1117(a). The court also considered whether the district court properly sanctioned Stone Creek’s attorneys under 28 U.S.C. § 1927.

Rule

Use of an identical mark on identical goods creates an especially strong likelihood of confusion, particularly where the mark is conceptually strong and other Sleekcraft factors such as actual confusion, convergent marketing channels, and intentional copying reinforce confusion. The Tea Rose-Rectanus doctrine protects only a junior user who used the mark in good faith in a geographically remote area, and good faith is defeated by knowledge of the senior user’s prior use. In the Ninth Circuit, the 1999 amendment to § 1117(a) did not eliminate the existing requirement that a plaintiff prove willful infringement before obtaining disgorgement of the defendant’s profits.

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One of 10 multiple-choice questions for this case. Pick an answer to see why.

Mesa Ridge Home, a furniture retailer based in Denver, has long used the fanciful mark RAVEN HOLLOW for sofas. A former supplier, Alder Lane Upholstery, knowingly places the exact same RAVEN HOLLOW logo on the same sofa models and sells them through a department-store chain in Ohio and Michigan.

If Mesa Ridge sues for trademark infringement, which is the strongest conclusion under the governing rule?

Explanation. The majority opinion treated the combination of identical marks and identical goods as creating an especially powerful case for confusion, one that can be effectively dispositive. Different retail intermediaries do not negate that conclusion. Actual purchaser confusion and survey evidence are not required where the core Sleekcraft factors overwhelmingly favor confusion. (Derived from Stone Creek, Inc. v. Omnia Italian Design, Inc. (n.d.).)