June 8, 2023

On May 31, the U.S. Court of Appeals for the Tenth Circuit ruled in favor of Willkie client Edwell, Inc. in a case alleging that Edwell infringed on the trademark of M Welles and Associates, Inc. in violation of the Lanham Trademark Act of 1946. After reviewing the parties’ briefs and hearing oral argument in March, a Tenth Circuit panel ruled in favor of Edwell and held that the district court properly denied the appellant’s request for a preliminary injunction and that Edwell, Inc. could continue using its desired moniker.

Edwell, Inc. is a nonprofit organization, formed during the COVID-19 pandemic, that provides resources and coaching to primary and secondary school educators to improve their mental health and wellbeing. Edwell, Inc. adopted the mark “Edwell” to market its services, which comes from the concept of education wellness. Appellant M Welles and Associates, Inc., a company specializing in project management, alleged that Edwell, Inc. violated federal trademark law by infringing on its trademark “Edwel.” M Welles and Associates, Inc. originally requested a preliminary injunction to prevent Edwell from continuing to use its mark. After a bench trial, the district court denied the request for preliminary injunction and held that consumers were unlikely to be confused by the two companies and their product offerings.

On appeal, the appellant argued that the district court used the wrong legal standard in assessing whether there was a likelihood of confusion between the two marks, and that the district court wrongfully concluded that were was no likelihood of confusion based on several factors. On behalf of Edwell, Inc., Willkie argued that the district court applied the correct legal standard for assessing the likelihood of confusion between two marks and properly weighed the evidence to find that several factors led to a finding of no likelihood of confusion, including the differences between the companies and their products, the degree of care exercised by potential consumers, and a lack of evidence of actual confusion. A majority of the three-judge panel sided with Edwell and upheld the district court decision. Further, the panel also held that the court would not adopt a presumption of likelihood of confusion in cases like this one, as suggested by the appellant.

The appeal was argued by New York partner Matthew Freimuth. Washington, D.C. associate Amy Orlov was also part of the team that helped with the appeal.