Storage Cap Management LP v. Robarco, Inc.

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF OHIO

EASTERN DIVISION

STORAGE CAP MANAGEMENT LP,

Case No. 2:19-cv-4328

Plaintiff,

v. Judge Graham

SPARESPACE STORAGE, LLC, Magistrate Judge Jolson

Defendant.

OPINION AND ORDER

This matter is before the Court for consideration of Plaintiff’s motion for partial summary

judgment, Doc. 76. For the reasons that follow, Plaintiff’s motion is GRANTED.

I. Background

A. The Parties

This case arises from a trademark dispute between two players in the self-storage facility

business. Plaintiff Storage Cap Management LP (“Storage Cap”) is a self-storage property

management company that provides services to self-storage facilities. Consalvo Dep. 9:19-22.

These services include daily operation, marketing, and accounting. Id. at 12:6-10. Storage Cap

also licenses its brand Store Space to the self-storage facilities it manages. Id. at 30:25-31:3. It

provides branded signage, business cards, and brochures. See id. at 28:17-22.

Storage Cap began using the Store Space brand in February of 2018 with a self-storage

facility in Bonita Springs, Florida. Id. at 27:7-11, 24:1-4. It has since expanded its management

and branding to 61 self-storage facilities in 20 states across the United States. Id. at 30:12-21; Doc.

76-4.

Storage Cap uses its Store Space branding to market the self-storage facilities it manages

and itself. Web-based marketing, including social media, is its primary method of attracting

customers to the self-storage facilities it manages. Id. at 40:13-14, 54:11-18. It also uses some

forms of print advertisement, such as advertisements on pizza boxes and place mats. Id. at 55:6-

11. These forms of marketing are intended to reach local customers. Id. at 56:9-15. Storage Cap

also markets its management services to self-storage facilities through advertisements in industry

publications. Id. at 56:2-8.

Defendant SpareSpace Storage, LLC (“SpareSpace Storage”) is another player in the self-

storage business. It operates one facility in Maimi, Florida. Answer ¶ 3, Doc. 76-9. It owns the

rights to SpareSpace Storage intellectual property, which it permits self-storage facilities owned

by other companies to use. Pryor Dep. at 15:20-24. It acquired these rights in 2018 from a self-

storage facility that has been in operation in Grove City, Ohio since 1982. Id. at 15:1-8; Doc. 76-

9 at 6. SpareSpace Storage began operating its Miami Florida self-storage facility in 2020. Id. at

16:1-5. Its intention is to engage in the self-storage business using the SpareSpace Storage name

across the United States. Id. at 65:8-17. SpareSpace Storage primarily relies on web-based

marketing and sends postcard mailers to the geographic areas immediately around its facility. Doc.

76-9 at 5.

B. Trademark Applications and Dispute

Both parties have filed trademark applications for their respective word marks and logos.

These marks are reflected in the below table:

Storage Cap’s Marks SpareSpace Storage Marks

Word Mark Store Space SPARESPACE STORAGE

Storage Cap filed applications for its marks with the United States Patent & Trademark

Office (the “USPTO”) on May 30, 2018. Docs. 76-5, 76-6. The applications assert that the marks

were first used for the rental of storage units on April 23, 2018. Docs. 76-5 at 2, 76-6 at 2.

SpareSpace Storage filed a trademark application for its word mark on January 25, 2019, asserting

it was first used for retail store services for products associated with self-storage and moving on

July 24, 1984, and for rental of storage units on January 2, 1995. Doc. 53 at 4; United States Patent

and Trademark Office, Trademark Electronic Search System (TESS)

https://tmsearch.uspto.gov/bin/showfield?f=doc&state=4807:3peyeh.2.1 (last visited September

27, 2022). SpareSpace Storage filed a trademark application for its logo on November 1, 2017

and the trademark was registered on June 2, 2020. United States Patent and Trademark Office,

Trademark Electronic Search System (TESS)

https://tmsearch.uspto.gov/bin/showfield?f=doc&state=4801:816moi.2.2 (last visited September

27, 2022).

On June 13, 2019, SpareSpace Storage filed Notices of Opposition with the Trademark

Trial and Appeal Board (“TTAB”) of the USPTO, opposing registration of Storage Cap’s marks.

Answer 4 14. In its Notices of Opposition, SpareSpace Storage alleged that it uses its marks in

connection with the same or similar services as those provided by Storage Cap under its marks,

and that the parties offer and sell their products to a similar class of consumers and through the

same channels of trade. Id. at §] 15. SpareSpace Storage also alleged that Storage Cap’s marks are

confusingly similar to SpareSpace Storage’s marks in terms of appearance, sound, meaning,

connotation, and overall impression, and that Storage Cap’s marks are likely to cause confusion,

mistake, and deception as to an affiliation, connection, or association between SpareSpace Storage

and Storage Cap or as to the sponsorship or approval of Storage Cap’s services and other

commercial activities by SpareSpace Storage. SpareSpace Storage further alleged that potential

customers are likely to believe that Storage Cap’s services originate from, or are sponsored or

approved by, SpareSpace Storage, and will damage SpareSpace Storage. Id. at ¶ 16.

On July 25, 2019, Storage Cap filed a Notice of Opposition with the TTAB opposing

registration of the SpareSpace Storage word mark on the grounds that, among other things, (1)

SpareSpace Storage had not used the word mark in interstate commerce under Section 1(a) of the

Lanham Act, 15 U.S.C. § 1051(a) at the time it filed its use-based application; and (2) to the extent

there is a likelihood of confusion between Storage Cap’s marks and SpareSpace Storage’s word

mark, SpareSpace Storage’s trademark rights (if any) are limited to a small geographic area within

the State of Ohio. Id. at ¶¶ 25–26.

C. Instant Case

Storage Cap filed a complaint on September 27, 2019 asserting two causes of action: (1)

declaratory judgment on the issue of no likelihood of confusion and (2) declaratory judgment on

the issue of priority of trademark rights. See generally Doc. 1. SpareSpace Storage filed an answer

and counterclaim asserting causes of action for (1) declaratory relief and (2) trademark

infringement. See generally Doc. 53.

On October 29, 2021, Storage Cap filed a motion for partial summary judgment moving

this Court for an order granting summary judgment on its claim for a declaratory judgment of non-

infringement and against SpareSpace Storage’s counterclaim for a declaratory judgment of a

likelihood of confusion as well as its counterclaim for trademark infringement. Doc. 76. Storage

Cap’s motion is fully briefed and ripe for adjudication.

II. Standard of Review

Storage Cap moves for summary judgment under Federal Rule of Civil Procedure 56.

Under Rule 56, summary judgment is proper if the evidentiary materials in the record show that

there is “no genuine dispute as to any material fact and the movant is entitled to judgment as a

matter of law.” Fed. R. Civ. P. 56(a); see Longaberger Co. v. Kolt, 586 F.3d 459, 465 (6th Cir.

2009). The moving party “always bears the initial responsibility of informing the district court of

the basis for its motion, and identifying those portions” of the record, “which it believes

demonstrate the absence of a genuine issue of material fact.” Celotex Corp. v. Catrett, 477 U.S.

317, 323 (1986).

A district court considering a motion for summary judgment “must construe the evidence

and draw all reasonable inferences in favor of the nonmoving party.” Revis v. Meldrum, 489 F.3d

273, 279 (6th Cir. 2007) (citing Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574,

587 (1986)). However, “[t]he mere existence of a scintilla of evidence in support of the plaintiff’s

position will be insufficient; there must be evidence on which the jury could reasonably find for

the plaintiff.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986); see Dominguez v. Corr.

Med. Servs., 555 F.3d 543, 549 (6th Cir. 2009). “The central issue is ‘whether the evidence

presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that

one party must prevail as a matter of law.’” Revis, 489 F.3d at 279–80 (quoting Anderson, 477

U.S. at 251–52).

III. Discussion

Storage Cap moves this Court for summary judgment arguing that the undisputed facts

demonstrate there is no likelihood of confusion and that Defendant’s trademark infringement

counterclaim fails as matter of law.

“A trademark is a design used to identify and distinguish the goods of a person.” Audi AG

v. D’Amato, 469 F.3d 534, 542 (6th Cir. 2006) (internal quotation marks and citation omitted).

The test for trademark infringement is the likelihood of confusion between the two marks. Id.

(citing Two Pesos v. Taco Cabana, 505 U.S. 763, 780 (1992)).

The Sixth Circuit has adopted eight factors that are to be considered in determining the

likelihood of confusion: (1) the strength of plaintiff’s mark; (2) relatedness of the goods; (3)

similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) degree

of purchaser care; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion in

using the mark. Id. at 542-43. Not all factors are relevant in every case, nor do the factors modify

the ultimate question of the likelihood of confusion. Progressive Distribution Servs., Inc. v. United

Parcel Serv., Inc., 856 F.3d 416, 424 (6th Cir. 2017) (citation omitted). The factors are simply a

guide to determine whether confusion is likely. Id. at 436 (citation omitted)

A. Strength of SpareSpace Storage’s Marks

The first factor is the strength of the mark upon which infringement is claimed. “The

strength of a mark is a factual determination of the mark’s distinctiveness. The more distinct a

mark, the more likely is the confusion resulting from infringement, and, therefore, the more

protection it is due.” Frisch's Rest., Inc. v. Shoney's Inc., 759 F.2d 1261, 1264 (6th Cir. 1985).

There are two components to the strength of a mark – conceptual strength and commercial

strength. Progressive, 856 F.3d at 428 (citing Maker's Mark Distillery, Inc. v. Diageo N. Am., Inc.,

679 F.3d 410, 419 (6th Cir. 2012)). The conceptual strength of a mark signifies the “placement of

the mark on the spectrum of marks . . . .” Id. The spectrum of marks ranges from generic to

descriptive to suggestive to fanciful. Id. (citing Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d

623, 631 (6th Cir. 2002)). A generic mark is “one which is commonly used as the name or

description of a kind of goods.” Induct-O-Matic Corp. v. Inductotherm Corp., 747 F.2d 358, 362

(6th Cir. 1984). It cannot become a trademark. Id. A descriptive mark “specifically describes a

characteristic or ingredient of an article.” Id. It can become a valid trademark only if it acquires a

secondary meaning by becoming distinctive of the applicant’s goods. Id. A suggestive mark

“suggests rather than describes an ingredient or characteristic of the goods and requires the

observer or listener to use imagination and perception to determine the nature of the goods.” Id. at

362-63. Suggestive marks can be trademarks without proof of a secondary meaning. Id. An

arbitrary mark is “far enough removed from the merely descriptive not to be vulnerable to possible

attack . . . .’ Id. at 363.

The Court finds that SpareSpace Storage’s marks are descriptive and, therefore,

conceptually weak. The phrase “SpareSpace Storage” describes the service offered – storage in

spare space. Indeed, this is the very reason the company was named SpareSpace Storage. Howard

Pryer, an owner of SpareSpace Storage, explained in a deposition:

Q: And what appealed to you about the name SpareSpace Storage?

A: It’s great.

Q: What about it’s great?

A: It’s short and simple and describes what our service is.

Pryer Dep. 38:14-19.

SpareSpace Storage argues that its marks are suggestive. It asserts that the phrase “spare

space” “does not immediately evoke the idea of self-storage facilities.” Doc. 80 at 6. But this

ignores the fact that the word “storage” immediately follows “SpareSpace” in the word mark. This

argument fails because SpareSpace Storage’s marks use the phrase “SpareSpace Storage,” not

“Spare Space.” See AutoZone, Inc. v. Tandy Corp., 373 F.3d 786, 795 (6th Cir. 2004) (“The unit

of analysis in considering the strength of the mark is the entire mark, not just a portion of the

mark.”).

Commercial strength “depends on public recognition, or the extent to which people

associate the mark with the product it announces.” Progressive Distribution Servs., Inc., 856 F.3d

416 at 430. The most persuasive evidence of commercial recognition is survey evidence. Id.

(citation omitted). Short of a survey, proof of marketing can be sufficient to establish broad public

recognition. Id. (citation omitted). “Conversely, proof that third parties have extensively used a

trademark or similar trademarks in the relevant market may indicate that the trademark is

commercially weak.” Id. (citation omitted).

Storage Cap asserts that the SpareSpace Storage mark is commercially weak because third

parties have used “identical ‘SPARE SPACE’ marks.” Doc. 76 at 20. It asserts that there is a

facility operating under the name and mark Spare Space Self Storage a mere 60 miles away from

SpareSpace Storage’s licensee’s Grove City, Ohio facility. Doc. 76 at 20. Further, two other

facilities operate under similar names – a Spare Space Self Storage in Oshkosh, Wisconsin and a

Spare Space in Valparaiso, Indiana. Doc. 76 at 21. But Storage Cap leaves unaddressed whether

these facilities are within “the relevant market.” 1

SpareSpace Storage has presented no evidence to suggest that its marketing has established

broad public recognition or that it retains public recognition despite other self-storage facilities

using similar names and marks. As there is no evidence that SpareSpace Storage’s marks carry

public recognition, the Court concludes the marks are commercially weak. See AGS Holdings, Inc.

1 Storage Cap’s argument is in apparent conflict with its position, discussed later, that the market

for self-storage facilities is purely local. Assuming arguendo that Storage Cap is correct and self-

storage facilities do cater only to the local community, it is irrelevant that a few facilities well

beyond the bounds of the community go by the same name.

v. Custom Personalized Lawn Care Corp., No. 20-10873, 2022 WL 830607, at *9 (E.D. Mich.

Mar. 18, 2022) (finding the nonmovant’s inadequate evidence of the public’s recognition of its

mark supports the conclusion that the mark is commercially weak). The first factor favors finding

no likelihood of confusion.

B. Relatedness of Goods

Confusion of similar marks is more likely when the parties offer the same goods or services.

Audi AG, 469 F.3d at 543 (citing Daddy's Junky Music Stores, Inc. v. Big Daddy's Fam. Music

Ctr., 109 F.3d 275, 282 (6th Cir. 1997)). The parties agree that they offer related services. Docs.

76 at 22; 80 at 7. Therefore, the second factor favors finding a likelihood of confusion.

C. Similarity of Marks

“Similarity of marks is a factor of considerable weight.” Daddy's Junky Music Stores, Inc.,

109 F.3d at 283. Courts examining the similarity of marks consider pronunciation, appearance,

and verbal translation. Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1188 (6th Cir. 1988). The

similarity of marks must be gauged by their overall impressions, not individual features. Daddy’s

Junky Music Store, 709 F.3d at 283. Courts are to consider whether either mark would confuse a

consumer who did not have both marks before her and had only a vague impression of the other

mark. /d. (citation omitted).

The logo marks STORED SPACE and porns are dissimilar. They are entirely

different in appearance. The Store Space logo uses one line of text, an illustration of a common

place lock, and no specific colors whereas the SpareSpace Storage logo uses two lines of text, a

unique geometric figure somewhat suggestive of a lock, and an orange and blue color design. The

overall impressions left by these logos do not lead to confusion. Indeed, the only similarity is that

both marks use the word “space.” The great number of differences reduces the likelihood that a

consumer would confuse the marks.

The word marks “Store Space” and “SpareSpace Storage” are also dissimilar. They differ

in pronunciation, appearance, and verbal translation. Store Space is a noticeably shorter mark,

consisting of two words instead of three, and is comprised of half the numbers of syllables. See

Little Caesar Enterprises, Inc. v. Pizza Caesar, Inc., 834 F.2d 568, 572 (6th Cir. 1987) (holding

the marks “Little Caser” and “Pizza Caesar USA” are dissimilar because “the addition of the

acronym ‘USA’ to the latter mark almost doubles the number of syllables and heightens the

distinction.”). The third factor favors finding no likelihood of confusion.

D. Evidence of Actual Confusion

Evidence of actual confusion is the strongest proof of likely confusion. Kibler v. Hall, 843

F.3d 1068, 1078 (6th Cir. 2016) (citing Frisch's Rest., Inc., 759 F.2d at 1267).

1. The Lack of Evidence of Actual Confusion

Neither party presents real-world evidence of actual confusion. Storage Cap asserts that

“where there is no evidence of actual confusion, the factor weighs in favor of summary judgment

on no likelihood of confusion.” Doc. 76 at 28. It is well established that due to its difficulty to

obtain, the lack of evidence of actual confusion does not generally weigh in favor or against the

likelihood of confusion. See, e.g., Daddy’s Junky Music Store, Inc., 109 F.3d at 284; Audi AG, 469

F.3d at 543. The lack of evidence of actual confusion is only “perhaps” probative “when the

particular circumstances indicate such evidence should have been available.” Id.

Storage Cap believes that the Sixth Circuit changed course in Gray v. Meijer Inc., 295 F.3d

641, 648 (6th Cir. 2002). In Gray, the Sixth Circuit reviewed a district court’s conclusion that the

absence of evidence of actual confusion favors the movant. Id. at 648. The Sixth Circuit explained

that “whether the Court says that this factor favors [the movant] or neither party is of no import . .

.” because the nonmovant has the burden to “identify a disputed factor or set of factors whose

resolution would necessarily be dispositive on the likelihood of confusion issue.” Id. (quoting

Mktg. Displays, Inc. v. TrafFix Devices, Inc., 200 F.3d 929, 934 (6th Cir. 1999)). Plainly, Gray

addressed an issue of burdens which rendered the district court’s balancing of the factor of actual

confusion inconsequential. It did not find that the lack of evidence of actual confusion supports a

finding in favor or against the likelihood of confusion.

2. Evidence of No Confusion

Storage Cap offers a consumer survey conducted by marketing expert Sarah Butler,

managing director of NERA Economic Consulting, to support the proposition that there is an

“extremely low likelihood of confusion.” Doc. 76 at 29.

Butler conducted a survey of 413 consumers who have rented a self-storage facility in the

last 12 months or who plan to in the next 12 months. Butler Report at ¶ 8. The respondents were

adults 18 years and older who reside in the United States. Id. at ¶ 23. To include a greater number

of consumers located near SpareSpace Storage’s facilities, Butler intentionally oversampled adults

who lived within 50 miles from Miami, Florida and Grove City, Ohio. Id. The survey was

conducted in a double-blind fashion, with neither the staff nor the respondents aware of the

survey’s sponsor or purpose. Id. at ¶ 27(a).

Respondents were provided a list of features and asked to choose which were reasons they

rented a storage unit from a facility. Id. at ¶ 30. The list included location of facility, cleanliness

of facility, facility security, size of storage space offered, price of rental, the lack of a required

long-term rental commitment, name or brand of facility, familiarity of facility, a discount or special

offer, color of storage unit doors, and climate-controlled storage units. Id. If respondents selected

multiple features, they were asked which feature was most important when selecting a facility. Jd.

at 31.

The respondents answered that they select a facility for the following reasons:

Current Renters Future Renters

Count Percent Count Percent

Price of rental 196 72.9% 135 86.8%

Location of facility 195 72.5% 109 75.7%

Size of storage space offered 183 68.0% 103 71.5%

Cleanliness of facility 152 56.5% 105 72.9%

Facility security 140 32.0% o7 67.4%

Climate controlled storage units 107 39.8% TT 33.5%

No long-term commitment required 4 34.9% 67 46.5%

A discount or special offer 67 24.9% 58 40.3%

Famuliarity of facility 64 23.8% 24 16.7%

Name or brand of facility 38 14.1% 19 13.2%

Color of storage unit doors 18 6.7% 7 4.9%

None of these 0 0.0% l 0.7%

Don’t know / unsure 0 0.0% 0 0.0%

Number of Respondents 269 144

Id. at 55.

The respondents were then randomly assigned to either Study 1 or Study 2. Jd. at □□ 34.

Study 1 focused on SpareSpace Storage while Study 2 focused on SpareSpare Storage’s licensee.

Id. The respondents of each study were randomly assigned into either the Test Group or the Control

Group. Jd. at | 35. The respondents assigned to the Test Group viewed the website homepages for

SpareSpace Storage (Either the main or licensee’s page depending on the study), Store Space,

Public Storage, CubeSmart, and SpareFoot. Jd. at 45. The respondents assigned to the Control

Group viewed the same homepages, except that the Store Space homepage was edited to have the

marks “Store Space” and replaced with “More Space” and Er: Id. at 9] 48, 49.

> Storage Cap’s trademark application does not include a particular color pattern. The colors se-

lected for the Control Group logo reflects the colors of the logo on Storage Cap’s website.

12

The respondents were asked three questions about the webpages: (1) whether they thought

any of the webpages were from the same company or brand of storage facility shown in SpareSpace

Storage’s webpage, (2) whether any of the webpages were associated or affiliated with the

company or brand of storage facility shown in SpareSpace Storage’s webpage, and (3) whether

any of the webpages were licensed or received approval from the company or brand of storage

facility shown in SpareSpace Storage’s webpage. Id. at ¶¶ 38, 40, and 42. If a respondent answered

affirmatively, they were asked to elaborate. Id. at ¶¶ 39, 41, and 43.

The purpose of the Control Group test was to account for respondents correlating

companies for reasons other than their trademarks, such as webpage layout, font, pictures, and

colors. Butler explained:

A survey designed to measure whether the use of a particular mark causes

consumers to be confused as to the source of, affiliation or association, or

permissions associated with a brand or company may also inadvertently include the

perceptions of respondents that are unrelated to the specific stimuli being tested.

Responses that are unrelated to the specific words or marks being tested threaten

the validity of the confusion estimates and should be eliminated from the final

calculation. To measure the extent to which such responses are affecting the desired

estimate, survey researchers typically also measure the perceptions of respondents

using a Control stimulus with a separate group of individuals.”

Id. at ¶ 48 (footnote omitted). She believes that the respondents who answered that the More Space

webpage is associated with the SpareSpace webpage must have reached that conclusion for reasons

other than the marks.

Butler estimated the overall confusion by tabulating the number of times a respondent

answered “yes” to each storage facility for any of the three questions presented. Id. at ¶ 63. If a

respondent responded “yes” with regard to the same storage facility for multiple questions, it was

counted as one affirmative response. Id. Butler then calculated net confusion by subtracting the

Test Group’s percentage (those who found Store Space to be associated with SpareSpace Storage)

from the Control Group’s percentage (those who found More Space to be associated with

SpareSpace Storage) and came to the following results:

STUDY 1 STUDY 2

Test ‘Control Test ‘Contral

Response Option Count Percent. Count Percent Net Count Percent Count Percent Net

STORE SPACE 25 22.7% 15 15.3% 26 26.5% 28 26.2% 4%

PUBLIC STORAGE 4 30.9% 26 26.5% 2 224% 19 17.8%

CUBESMART a5 31.8% 23 23.5% 21 214% 17 15.7%

SPAREFOOT 20 18.2% 27 27.6% 21 214% 24 22.4%

Total Respondents Lo oR oR 107

Id. at 4] 63. She concluded that:

My survey demonstrates that there is no likelihood of confusion — the net estimated

confusion is less than 10% and the rates are not statistically significant; i.e.

respondents in the Control Group who are shown the Store Space website without

the mark are just as likely to guess that there is some association with SpareSpace.

Moreover, only four respondents make any reference to a similarity in names when

describing why they associated SpareSpace and Store Space. Additionally,

respondents are more likely to believe there is a connection between SpareSpace

and Public Storage than they are to associate SpareSpace and Store Space. Finally,

my results demonstrate that less than 15% of current and future self-storage renters

indicate that the name of a storage facility is important to them when selecting a

storage company. Taken together, the survey results demonstrate that consumers

will not confuse Store Space and SpareSpace storage facilities.

Id. at 65.

The Court finds that this methodology is flawed. First, the Control Group testing is

imperfect. Butler believes the Control Group respondents who found More Space to be related to

SpareSpace Storage must have done so for reasons other than the marks. However, it is possible

that the respondents simply found the More Space mark and modified logo themselves to be

confusingly similar to the SpareSpace Storage mark and logo. Considering the similarity between

Store Space and More Space, it is unsurprising that the number of respondents who believed Store

Space is associated with SpareSpace Storage is nearly identical to the number who believed More

Space is associated with SpareSpace Storage.

14

Second, the survey did not separately test each of the marks at issue. This case involves

four marks – two word marks and two logos. The webpages each contained one set of word marks

and logos. Respondents to the survey could have based their answers on the word marks, the logos,

or both. The survey does not provide a way to extrapolate which, if any, of the marks caused or

prevented confusion.

Finally, the survey was an unrealistic side-by-side study. The purpose of the likelihood to

cause confusion analysis is to determine whether the marks may confuse consumers in real-world

situations. See Daddy’s Junky Music Store, Inc., 109 F.3d at 283. While it is possible that

consumers may compare self-storage websites side-by-side, it is more likely that they judge their

familiarity with a self-storage facility based on their recollection of previous encounters.

Therefore, having respondents compare the details of multiple websites in determining whether

companies are related does not accurately demonstrate whether any of the marks at issue in this

case are likely to confuse consumers in real-world situations.

Storage Cap argues that a side-by-side survey is permissible in situations where, as here,

the marks are not well known by the average person. It cites in support a district court opinion out

of the Middle District of Florida -- Superior Consulting Servs., Inc. v. Shaklee Corp., No.

616CV2001ORL31GJK, 2019 WL 913374 (M.D. Fla. Feb. 25, 2019), aff'd, No. 19-10771, 2021

WL 4438518 (11th Cir. Sept. 28, 2021). In addition to not being binding authority, Superior

Consulting Servs., Inc. is distinguishable. There is no indication that the survey in Superior

Consulting Servs., Inc. had other methodological errors. Here, on the other hand, the Court is

presented with a survey that employed a faulty control test and failed to separate and individually

test each of the marks at issue. Given these other methodological errors, the fact that the survey

was done in a way that speaks little to how consumers would interact with the marks in the real

world compounds the unreliability of the survey results.

As Butler’s survey is replete with methodological errors, the Court finds that it is not

probative of the likelihood of confusion. See Leelanau Wine Cellars, Ltd. v. Black & Red, Inc.,

502 F.3d 504, 518 (6th Cir. 2007) (“Where a survey presented on the issue of actual confusion

reflects methodological errors, a court may choose to limit the importance it accords the study in

its likelihood of confusion analysis.”) (citation omitted). In sum, as there is no evidence of actual

confusion, the fourth factor is neutral.

E. Marketing Channels Used

Whether the marketing channels used increases the likelihood of confusion depends on

“the similarities or differences between the predominate customers of the parties’ respective goods

or services and whether the marketing approaches employed by each party resemble each other.”

Audi AG, 469 F.3d at 543 (cleaned up). Simultaneous use of online marketing supports a finding

of likely confusion if: (1) the parties use the internet as a substantial marketing channel; (2) the

parties use their mark with web-based projects; and (3) the parties marketing channels overlap in

other ways. Kibler, 843 F.3d at 1079.

Here, there is overlap in the type of customers both parties are soliciting. Both companies

desire to attract customers looking for a self-storage facility. Despite this, Storage Cap argues that

there is no overlap in customer base. It asserts that self-service storage facilities market only to

their surrounding communities. As Storage Cap does not run a facility near SpareSpace Storage’s

facility, it asserts there is no overlap is customer base. This argument fails for two reasons. First,

Storage Cap presents no evidence that SpareSpace Storage’s customer base consists only of

individuals near its facility. Rather, an interrogatory suggests that SpareSpace Storage limits only

its print advertisements to the surrounding areas:

[SpareSpace Storage] markets its products and services to all persons, including

individuals and business, who need or may consider using self-storage, purchasing

storage insurance, and/or purchasing products associated with self-storage and

moving. The majority of customers who rent from SpareSpace Storage find the

business through various online channels including but not limited to: the company

website, listing location pages on Google, Yelp, Bing, as well as map applications.

Additionally, third party aggregator websites deliver some customers. Postcard

mailers are used for the immediate geographic areas.

Doc. 76-9 at 5. Second, Storage Cap has two self-storage facilities around 20 miles from

SpareSpace Storage’s licensee’s Grove City, Ohio location – one in Columbus, Ohio and one in

Hilliard, Ohio. Doc. 76-4.

The parties do not address whether their marketing approaches resemble each other’s, and

the record contains inadequate information for the Court to make this determination. Storage Cap

engages primarily in web-based marketing including pay-per-click, search engine optimization,

search engine marketing, and social media.” Consalvo Dep. 54:11-18. SpareSpace Storage utilizes

its website; listings on Google, Yelp, Bing, and map applications; and third-party aggregator

websites. Doc. 76-9 at 5. Questions of fact remain which preclude the Court from comparing these

marketing approaches. For example, the record is silent on how frequently each marketing tool is

used, the details of how they are used, and whether they utilize the party’s marks. Therefore, the

Court cannot weigh the factor of the marketing channels used.

F. Degree of Customer Care

The purchase of some goods and services, especially those which are expensive or unusual,

prompt customers to exercise a greater degree of care. See Daddy’s Junky Music Store, Inc., 109

F.3d at 285. For example, home buyers exercise greater care when selecting their real estate

brokers than customers do in selecting their fast-food meal. Id. (citations omitted). A customer

exercising a higher degree of care is often less likely to confuse trademarks. Id. However, if the

trademarks are very similar, even a high degree of care will only slightly decrease the likelihood

of confusion. Id. at 286.

The parties do not dispute that customers of self-storage services exercise a high degree of

care. See Docs. 76 at 32; 80 at 13. Thus, the sixth factor weighs against finding a likelihood of

confusion.

G. Intent in Selecting the Mark

Evidence that the purported infringer chose its mark to confuse consumers about the source

of the party’s products creates an inference of a likelihood of confusion. Kibler, 843 F.3d at 1081

(citing Therma-Scan, 295 F.3d at 638). Circumstantial evidence of intent is sufficient, including

evidence that the purported infringer knew of the other trademark while using its mark. Id.

The parties agree that there is no evidence that Storage Cap chose its marks to confuse

consumers about the source of its services. Therefore, this factor is neutral. See id. (finding that

the factor of intent in selecting the mark is neutral where “the record prevents a reasonable jury

from inferring intent.”).

H. Likelihood of Expansion

“A strong possibility that either party will expand his business to compete with the other

or be marketed to the same consumers will weigh in favor of finding that the present use is

infringing.” Daddy’s Junky Music Store, Inc., 109 F.3d at 287 (cleaned up).

SpareSpace Storage argues that both it and Storage Cap will continue to expand, creating

a strong possibility that direct competition and marketing will arise. Storage Cap currently has 65

facilities in 20 states. Consalvo Dep. 30:12-21; Doc. 76-4. SpareSpace Storage currently has only

one facility in Miami, Florida and one licensee in Grove City, Ohio, though it intends to expand

throughout the United States. Pryor Dep. 65:8-17. However, the likelihood of expansion causing

direct competition is merely speculative. SpareSpace Storage offers no evidence to support that its

ambitions to expand will become a reality. Without evidence to support SpareSpace Storage’s

expansion plans, this factor is neutral as to the likelihood of confusion. See Maker’s Mark

Distillery, Inc., 679 F.3d at 424 (“a finding of little evidence of expansion plans is accorded little

to no weight . . . .”).

I. Balance of Factors

On balance, the factors compel the conclusion that there is no likelihood of confusion

among the parties’ marks. The two most important factors are the strength of the mark and the

similarity of the marks. Maker's Mark Distillery, Inc., 679 F.3d at 424. These factors strongly

indicate that there is no likelihood of confusion. The remaining factors are neutral or insignificant

here.3

IV. Conclusion

For the reasons stated above, the Court finds that there is no likelihood of confusion among

the parties’ marks. Storage Cap’s Motion for partial summary judgment, Doc. 76, is GRANTED.

IT IS SO ORDERED.

s/ James L. Graham

JAMES L. GRAHAM

United States District Judge

DATE: October 7, 2022

3 The Court acknowledges the questions of fact remain regarding the factor of marketing channels

used. Summary judgment is still appropriate because SpareSpace Storage, the nonmovant, has not

met its burden in showing that this issue of fact is material. Mktg. Displays, Inc., 200 F.3d at 934

(“the nonmoving party’s burden is to identify a disputed factor or set of factors whose resolution

would necessarily be dispositive to the likelihood of confusion issue.”). Even if the marketing

channels overlap, Store Space’s marks’ commercial weakness and lack of similarity to Store Cap’s

marks merit the conclusion that there is no likelihood of confusion.