I shall adhere to the rationale set forth in Nikon and conclude that “unless the junior’s product is inferior, the quality factor does not weigh in favor of the senior user.” Id. Moreover, I find that the “minor differences” in the defendant’s product do not render it inferior.
The evidence shows that the recipients of the computer disks were no more likely to exercise a high degree of care in retaining the defendant’s product than they were a low degree of care. The factor is therefore neutral.
vii. defendant’s intent
The plaintiff claims that “Maaherra’s admission that she used exact copies of the Foundation’s marks with knowledge of the Foundation’s use and registration creates a presumption of intentional infringement.” (Pl.’s Br. at 4.) The plaintiff’s claim, however, is an overstatement. More accurately stated, a presumption of intentional infringement arises when one party deliberately adopts another’s trademark “to obtain advantage from the other’s good will.” Academy of Motion Picture Arts & Sci. v. Creative House Promotions, Inc., 944 F.2d 1446, 1456 (9th Cir.1991) (citing Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 157–58 (9th Cir.), cert. denied, 374 U.S. 830, 83 S.Ct. 1870, 10 L.Ed.2d 1053 (1963)); accord Toho Co. v. Sears, Roebuck & Co., 645 F.2d 788, 791 n. 2 (9th Cir.1981) (explaining it would be error to recognize presumption absent a showing of defendant’s intent to “profit by confusing consumers”); Kelley Blue Book, 802 F.Supp. at 287 (raising presumption upon the showing of defendant’s intent to capitalize on plaintiff’s reputation); Pacific Telesis, 795 F.Supp. at 982 (finding defendant selected “TELESIS with the intent to benefit from the [plaintiff’s] goodwill and reputation”).
There is no evidence to suggest that the defendant reproduced the plaintiff’s marks with an intent to capitalize on the Foundation’s reputation. In the absence of showing such an intent, I find this factor to weigh heavily in the defendant’s favor.
viii. likelihood of expansion
“[A] ‘strong possibility’ that either party may expand [its] business to compete with the other will weigh in favor of finding that the present use is infringing.” AMF, 599 F.2d at 354 (citation omitted). The defendant does not refute the plaintiff’s contention that it “has devoted substantial money and effort to the preparation of an electronic text and concordance of The URANTIA Book.” (Second Aff. of Wharton Ex. A at 2, ¶4.) Moreover, the plaintiff admits she knew of the plaintiff’s plans. (Maaherra Dep. (3-10-91) at 77–78.) Therefore, I find this factor to weigh in favor of the plaintiff.
b. Balancing the Factors
The first three factors weigh in the plaintiff’s favor, as does the last. The defendant, however, has three factors that weigh in her favor. More important, the plaintiff does not prove a likelihood of confusion simply by garnering the benefit of a majority of the factors evaluated.
A trademark is, of course, a form of business property. But the ‘property right’ or protection accorded a trademark owner can only be understood in the context of trademark law and its purposes. A trademark owner has a property right only insofar as is necessary to prevent consumer confusion as to who produced the goods and to facilitate differentiation of the trademark owner’s goods.
International Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912, 919 (9th Cir.1980), cert. denied, 452 U.S. 941, 101 S.Ct. 3086, 69 L.Ed.2d 956 (1981). Ultimately, I am not convinced that a reasonable jury could not return a verdict in favor of the defendant based upon a finding of “no likelihood of confusion.”
IT IS THEREFORE ORDERED that the plaintiff’s motion for summary judgment, filing 197, is granted as to Count IV of the defendant’s counterclaim and as to the defense of genericness and otherwise is denied.
