Trilink Saw Chain, LLC v. Blount, Inc. (583 F. Supp. 2d 1293, 2008)

ORDER

CHARLES A. PANNELL, JR., District Judge.

This matter is before the court on the plaintiffs’ motion for summary judgment [Doc. No. 149]; the defendants’ motion for partial summary judgment [Doc. No. 157]; the defendants’ motion to exclude the plaintiffs’ technical expert [Doc. No. 160]; the plaintiffs’ motion to unseal documents [Doc. No. 210]; the plaintiffs’ request for immediate scheduling of trial [Doc. No. 216]; and the defendants’ motion for leave to file a surreply to the plaintiffs’ request for immediate scheduling of trial [Doc. No. 220].

Case Overview

Defendant Oregon Cutting Systems Group, a division of defendant Blount, Inc., (collectively, “Oregon”), is one of the world’s leading manufacturers and marketers of saw chain, guide bars, and chain drive sprockets for chain saws. It designed and manufactured its first saw chain in the 1940s, the basic design of which is still widely used today.

Plaintiffs Trilink Saw Chain, LLC and Trilink Global, LLC (collectively, “Trilink”) are companies that are also involved in the business of marketing, distributing, and selling chain saw components and accessories. Trilink was founded and began selling saw chain in or around 2005. It entered the consumer saw chain market in competition with Oregon because Trilink’s principals saw an opportunity in an industry where there were principally two United States players, Oregon and non-party Carlton Company.

In 2005, Oregon had an estimated 57% market share for saw chain sales. However, Oregon considered Trilink a threat. Thus, in March 2006, Oregon prepared a memorandum comparing the Oregon chain and Trilink chain. This memorandum summarized the results of internal tests conducted by Oregon on Oregon and Trilink chain. Oregon pulled the highlights from this memorandum and placed them in a one-page abstract (“the Oregon Abstract”). Oregon discussed the contents of the Oregon Abstract with several customers and provided them with a copy of it at various times between March and November 2006.

In the summer of 2006, Oregon contracted third-parties Cincinnati Testing Laboratories (“CTL”) and Svensk Maskin-provning (“SMP”) to conduct additional tests on the Oregon and Trilink chain. After receiving CTL and SMP’s test reports, Oregon prepared a comparative, six-page memorandum (“the Oregon Memo”). Oregon disseminated the Oregon Memo to customers throughout October and November 2006.

In 2006, Oregon also prepared a brochure (“the Oregon Brochure”) entitled “Eight Important Considerations In Choosing Your Partner for Saw Chain,” which it disseminated to its customers. [Doc. No. 126, Composite Ex. B]. This brochure purports to set forth a list of criteria that should be considered when choosing a saw chain provider.

Trilink alleges that Oregon’s Abstract, Memo, and Brochure, along with other documents, (collectively, “the marketing materials”) contain literally false or misleading statements intending to deceive or having the capacity to deceive potential buyers as to the strength, performance, and safety of the Trilink chain. Thus, Trilink filed this case on February 16, 2007, alleging that Oregon violated Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and the Georgia Uniform Deceptive Trade Practices Act, O.C.G.A. § 10-1-370 [Doc. No. 1]. In addition, Trilink alleges that Oregon, by way of its deceptive advertisements, tortiously interfered with Trilink’s business relations with third-parties in contravention of Georgia common law.

Oregon has largely denied Trilink’s allegations and has filed counterclaims against Trilink alleging trademark infringement in violation of Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), and unfair competition under both Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and O.C.G.A. § 10-1-393 et seq. Specifically, Oregon contends that Trilink’s use of the term “PROLINE” in connection with the sale of chain saw accessories unlawfully infringed upon Oregon’s “PRO-LITE” trademark that it uses on and in connection with chain saw guide bars.

On November 2, 2007, Trilink filed for summary judgment on Oregon’s counterclaims [Doc. No. 149]. Three days later, Oregon filed for summary judgment on Trilink’s claim for monetary relief under its false advertising claim and on Trilink’s tortious interference with business relations claim [Doc. No. 157]. Subsequently, Oregon moved to exclude Trilink’s technical expert [Doc. No. 160], Trilink moved to unseal documents [Doc. No. 210] and for immediate scheduling of trial [Doc. No. 216], and Oregon moved for leave to file a surreply to Trilink’s motion for immediate scheduling of trial [Doc. No. 220].

Pending Motions

I. Oregon’s Motion to Exclude Trilink’s Technical Expert [Doc. No. 160]

To show that Oregon’s advertisements contain false and misleading claims, Trilink hired Hal I. Dunham as a technical expert. Dunham is a mechanical engineer who professes to have over 19 years of product testing experience. Trilink hopes to use Dunham’s testimony to demonstrate that Oregon’s marketing materials make claims that are unsupported by the testing data on the Oregon and Trilink chain. Trilink claims that Dunham will offer significant testimony which addresses: (1) how product testing generally is conducted, including the product design process; (2) how the Oregon testing diverged from normal product testing practices; and (3) how the Oregon test materials do not support the claims made therein. Trilink’s Resp. Br., p. 8 [Doc. No. 181].

Dunham has already set forth much of his proposed testimony in an expert report [Doc. No. 160, Ex. A]. In this report, Dun-ham makes 19 conclusions, allegedly on the basis of his “education, experience, training and on the evidence currently obtained by and reported to him.” Id. at pp. 1-2. In support of these conclusions, Dunham makes 18 “findings and observations” regarding the testing that was conducted. Id. at pp. 5-12.

Oregon has moved to exclude Dunham as a witness. Oregon claims that Dunham is not qualified to testify regarding the matters in this case because he has no professional and limited personal experience with saw chain and no experience with consumer surveys or consumer marketing research. Moreover, Oregon contends that the testimony that Dunham will offer does not constitute “expert” testimony and thus will not assist the trier of fact.

Both parties had an opportunity to develop their arguments on this matter at a hearing held on July 30, 2008. Accordingly, this order will take into consideration the issues discussed at that hearing as well as the issues presented in the briefs.

A. Legal Standard for Excluding Expert Testimong

Federal Rule of Evidence 702 governs the admissibility of expert testimony. This rule states,

If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case.

The district court is obligated to act as a gatekeeper to the admission of expert testimony. Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 597, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993). Thus, the district court generally engages in a three-part inquiry derived from Rule 702 to determine the admissibility of expert testimony. Quiet Technology DC-8, Inc. v. Hurel-Dubois UK Ltd., 326 F.3d 1333, 1340-41 (11th Cir.2003). Specifically, the district court must consider whether:

(1) the expert is qualified to testify competently regarding the matters he intends to address; (2) the methodology by which the expert reaches his conclusions is sufficiently reliable as determined by the sort of inquiry mandated in Daubert; and (3) the testimony assists the trier of fact, through the application of scientific, technical, or specialized expertise, to understand the evidence or to determine a fact in issue.

Id. (citing City of Tuscaloosa v. Harcros Chemicals, Inc., 158 F.3d 548, 562 (11th Cir.1998)). The same standard applies to all expert testimony, including testimony regarding scientific, technical, and other specialized matters. Kumho Tire Co. v. Carmichael, 526 U.S. 137, 147, 119 S.Ct. 1167, 143 L.Ed.2d 238 (1999).

As noted above, Oregon contends (1) that Dunham is unqualified to testify to the issues in this case and (2) that Dun-ham’s testimony, which allegedly does not utilize a technical, scientific, or other specialized methodology, will be unhelpful to the trier of fact. Each of these arguments will be addressed below.

B. Is Dunham Qualiñed to Testify?

1. Legal Standard for Expert Witness Qualiñcation

“Rule 702 takes a liberal view of expert witness qualifications.” Leathers v. Pfizer, Inc., 233 F.R.D. 687, 692 (N.D.Ga.2006) (citations omitted). It does not mandate that an expert be recognized as a leading authority in the field in question; instead, it simply requires that he or she be “competent and qualified by knowledge, skill, experience, training, or education to render the opinion.” Id. (citing Siharath v. Sandoz Pharmaceuticals Corp., 131 F.Supp.2d 1347, 1351 (N.D.Ga.2001), aff'd sub nom. Rider v. Sandoz Pharmaceuticals Corp., 295 F.3d 1194 (11th Cir.2002)). Thus, if there are “[g]aps in an expert witness’s qualifications or knowledge^ they] generally go to the weight of the witness’s testimony not its admissibility.” Id.

Often, as in this case, courts are faced with determining whether an expert’s testimony exceeds his qualifications. As noted above, Rule 702 takes a liberal view of expert witness qualifications; thus, “an expert’s training does not always need to be narrowly tailored to match the exact point of dispute in a case.” McGee v. Evenflo Co., No. 5:02-cv-259-4 (CAR), 2003 WL 23350439, at *3, 2003 U.S. Dist. LEXIS 25039, at *7-8, 2003 WL 23350439 (M.D.Ga. Dec. 11, 2003) (finding that a mechanical engineer with some experience involving accident reconstruction and safety restraints was minimally qualified to testify about the performance of a car seat in an accident). Indeed, an expert with “the education or background to permit him to analyze a given set of circumstances ... can through reading, calculations, and reasoning from known scientific principles make himself very much an expert in [regard to] the particular product even though he has not had actual experience” with the product. Santoro v. Donnelly, 340 F.Supp.2d 464, 473 (S.D.N.Y.2004). However, a witness may not qualify— through reading and preparation — as an expert in “an entirely different field or discipline.” Lappe v. American Honda Motor Co., Inc., 857 F.Supp. 222, 227 (N.D.N.Y.1994). Instead, he must “stay within the reasonable confines of his subject area.” Id. Thus, many courts have excluded testimony when they determine that the witness is testifying to an area outside of — but related to — his expertise. See, e.g., Wheeling Pittsburgh Steel Corp. v. Beelman River Terminals, Inc., 254 F.3d 706, 715 (8th Cir.2001) (concluding that a hydrologist specializing in flood risk management was not qualified to testify to safe warehousing practices in an action in which a warehouse was flooded); Redman v. John D. Brush & Co., 111 F.3d 1174, 1179 (4th Cir.1997) (finding that a metallurgy engineer, who was undoubtedly qualified to testify about the properties and characteristics of metal, was not qualified to testify about industry standards for a safe because he had never before analyzed a safe, engaged in the manufacture or design of safes, or received any training regarding safes). Similarly, courts have excluded expert testimony that might implicate the expert’s field or discipline if the expert has no specific experience or background with the topic in dispute and has not satisfied the court that he has obtained expertise in regard to the topic in preparation for litigation. See, e.g., United States v. Brown, 415 F.3d 1257, 1269 (11th Cir.2005) (upholding district court’s refusal to qualify a chemistry consultant as an expert in controlled substances because he did not have a chemistry degree and had only worked with the chemical substance at issue in the case on “isolated projects”); Wright v. Case Corp., No. 03-cv-1618-JEC, 2006 WL 278384, at *3, 2006 U.S. Dist. LEXIS 7683, at *9-10 (N.D.Ga. Feb. 1, 2006) (finding that a mechanical engineer was not qualified to testify that the product at issue was defective or to offer alternative designs because he “had very little experience with the machinery at issue,” and had not “made a serious effort to gain expertise since [being] retained as an expert.”).

2. Application of Legal Standard

As noted above, Dunham seeks to testify regarding: (1) general product testing procedures; (2) how Oregon’s product testing procedures diverge from normal product testing procedures; and (3) how Oregon’s marketing materials do not support the testing claims therein. Dunham’s curriculum vitae and deposition testimony reveal that he is qualified to testify to all three of these topics. Dunham is a mechanical engineer at CTL Engineering, Inc., where his professed responsibilities include “the development of testing methods specifying the test apparatus to be used, and procedures to be followed in technical investigational projects.” Dun-ham Curriculum Vitae, attached as exhibit to Dunhan Report [Doc. No. 160, Ex. A], His projects at CTL include “product reliability investigations, vehicular accident reconstructions, failure analysis, product testing, and engineering consultations.” Id. Dunham testified that he has spent the last 19 years conducting product tests, and further testified that he has reviewed multiple test reports. Thus, he is clearly competent to testify to general product testing procedures, to comment on how Oregon’s testing procedures conform with or diverge from general product testing procedures, and to generally comment on whether Oregon’s tests resulted in the findings advertised by Oregon.

However, Dunham’s actual testimony, as articulated in his expert report and at the hearing on this matter, goes beyond the three topics set forth by Oregon. For example, Dunham testifies authoritatively in regard to how the average consumer would interpret Oregon’s language in the advertisements. In addition, Dunham attempts at various points to interpret consumer research data. Despite Dunham’s testimony, Dunham admitted at the Daubert hearing that he was neither a consumer survey expert nor a market research expert, and his counsel informed the court that he was not being offered for his testimony in those areas. Thus, Dun-ham is clearly unqualified to render such testimony.

Similarly, in his expert report and in his testimony at the Daubert hearing, Dunham makes many conclusions regarding saw chain, typical saw chain practices and uses, and saw chain industry standards. However, the record reflects that Dunham is not an expert in regard to chain saws or saw chain. He has received no education or training specific to chain saws or saw chain. He has not attended any seminars regarding saw chain, and he has not had any experience with chain saws, saw chain, or the testing of these items during his time as a professional engineer. Moreover, he has not been involved in any litigation (other than the present case) dealing with the properties or design of saw chain or the testing of this product. In fact, Dunham’s only experience with chain saws or saw chain prior to this litigation comes from his personal use of a chain saw he received as a gift roughly ten years ago. While Dunham did undertake some activities to familiarize himself with the chain saw industry in preparation for this case, these preparations gave him background — not expertise — with regard to saw chain. Thus, Dunham is not qualified to testify as an expert in this regard, either.

Some examples of the conclusions that Dunham is not qualified to testify to include:

Expert Report Conclusion E

Conclusion E of Dunham’s expert report states, “Oregon’s claim that chain breakage is the most important attribute for durability is without basis and ignores more common saw chain durability characteristics.” [Doc. No. 160, Ex. A, p. 1]. This testimony is inadmissible because Dunham has no expertise — through education, experience, or preparation for this case — in regard to saw chain and, thus, is not qualified to make statements or conclusions regarding common saw chain durability characteristics.

In addition, in his findings and observations, Dunham further states that chain breakage is a “rare occurrence.” However, at the Daubert hearing, Dunham admitted that he does not know what the rate of saw chain breakage is and thus implicitly conceded that he was merely speculating that it was rare. Accordingly, Dunham is not qualified to make this statement.

Expert Report Conclusion F

In Conclusion F, Dunham refutes Oregon’s statement that “durability issues will plague the Linbo products as well as pose a potential safety hazard,” by concluding that “[t]he durability issues concerning saw chain breakage and injury with Trilink saw chain is [sic] unfounded and unsupported since no known incidents exist.” Id. at pp. 2, 8. In his findings and observations, Dunham explains this conclusion further, noting that “[n]ot one case of a Trilink saw chain breaking and causing an injury is known.” Id. at p. 8.

Although Dunham is qualified to look at Oregon’s tests to determine whether they tested for and found “durability issues” and injuries resulting therefrom, he may not testify to or refute whether substantiated durability issues will cause a potential safety threat. At the Daubert hearing, Dunham admitted that he does not know if chain breakage leads to injury of chain saw users. Accordingly, it is impermissible for him to opine on the potential safety hazard of Trilink’s product if there are any durability issues.

Expert Report Conclusion G

In Conclusion G, Dunham states, “The Oregon test methods for tensile, fatigue, and NCB [nose clear bucking] are not industry standard.” Id. at p. 2. Dunham is not qualified to make this statement. At the Daubert hearing, he testified that the only industry standards that he could find for saw chain testing were the American National Standards Institute (“ANSI”) standards for kickback testing. He also testified that he does not know exactly who the competitors are in the saw chain industry, and indicated that he does not know how they test their products. In other words, he does not know how the industry conducts tensile, fatigue, and NCB testing and thus cannot testify in regard to what the industry standard is for these tests.

Expert Report Conclusion H

Conclusion H states, “The Oregon fatigue testing does not simulate the stress cycles that a saw chain would experience in actual service cutting of wood.” Id. at p. 2. First, Dunham, who is not an expert in saw chain or consumer use of saw chain, is not qualified to testify regarding what constitutes the “actual service cutting of wood.” Secondly, Dunham, who never tested the accelerated test that Oregon conducted and never conducted his own accelerated test, did not use a reliable methodology to opine on whether the Oregon fatigue testing simulated, albeit in an accelerated fashion, the experiences that a saw chain user would experience in real life. Accordingly, this testimony should not be admitted.

Expert Report Conclusion J

Dunham’s Conclusion J states, “Oregon assumes that “what matters to a novice chain saw user is how much wood he can cut in a given period of time’ when the joint Trilink and MTD consumer research indicates otherwise.” Id. at p. 2. As noted above, Dunham is not a consumer research expert; thus, nothing in his background qualifies him to interpret consumer research data. Accordingly, this testimony is inadmissible.

Expert Report Conclusion K

Conclusion K states, “The NCB test method has no direct relation to typical consumer use.” Id. at p. 2. As noted above, Dunham does not have expertise in regard to what constitutes typical consumer use of saw chain; accordingly, he is not qualified to make this statement.

Expert Report Conclusion S

Conclusion S states, “The Oregon implication that Trilink saw chain should be recalled is not substantiated by any industry standards, government standards, or public safety testing body.” Id. at p. 2. As discussed above, with the exception of kickback testing, Dunham is not aware of any publicized standards regarding saw chain testing. In addition, Dunham is not aware of how the other companies in the saw chain industry perform tests. Consequently, he is not qualified to testify to saw chain industry standards outside of those used in kickback testing.

C. Is Dunham’s Testimony “Helpful” to the Trier of Fact?

In addition to contending that Dunham is unqualified as an expert, Oregon also contends that his testimony is unhelpful to the trier of fact. The court will address Oregon’s argument below.

1. Legal Standard for Assessing the “Helpfulness” of Proposed Testimony

“One of the fundamental requirements of Rule 702 is that the proposed testimony ‘assist the trier of fact to understand the evidence or to determine a fact in issue.’ ” In re Rezulin Products Liability Litigation, 309 F.Supp.2d 531, 540 (S.D.N.Y.2004) (citation omitted). Thus, multiple courts have concluded that expert testimony

may properly be excluded in the discretion of the trial judge if all the primary facts can be accurately and intelligibly described to the jury, and if they, as men of common understanding, are as capable of comprehending the primary facts and of drawing correct conclusions from them as are witnesses possessed of special or peculiar training, experience, or observation in respect of the subject under investigation.

Salem v. United States Lines Co., 370 U.S. 31, 35, 82 S.Ct. 1119, 8 L.Ed.2d 313 (1962) (internal citations omitted); see also In re Rezuliw Products Liability Litigation, 309 F.Supp.2d at 541 (“Rule 702 ensures that expert witnesses will not testify about lay matters which a jury is capable of understanding and deciding without the expert’s help.... [EJxperts should not be permitted to supplant the role of counsel in making arguments at trial, and the role of the jury in interpreting the evidence.”). Indeed, the Eleventh Circuit has concluded that an expert’s testimony is inadmissible if the “trier of fact is entirely capable of determining whether or not to draw [the expert’s] conclusions without any technical assistance” from the expert. Harcros Chemicals, Inc., 158 F.Sd at 565; United States v. Rouco, 765 F.2d 983, 995-96 (11th Cir.1985) (characterizing as “valueless” expert testimony that offers “nothing beyond the understanding and experience of the average citizen.”).

2. Application of Legal Standard

Oregon complains that much of Dunham’s testimony is inadmissible because he does not provide opinions relating to any technical aspect of the saw chain tests and instead makes conclusions that the trier of fact could have easily made without his assistance. For example, Dun-ham concluded that “Oregon did not perform ‘many’ of their own comparative tests of the Trilink Y and Oregon 91P saw chain.” Dunham Report, Conclusion D [Doc. No. 160, Ex. A]. When asked in deposition how he arrived at this conclusion, he testified that “in [his] review of the test documents, [he] did not find many tests.” Dunham Dep. 27:6-11 [Doc. No. 175]. Because the trier of fact could read the same documents and count the number of tests, Oregon contends that such testimony should not be admitted.

Although Rule 702 requires experts to provide evidence that assists the trier of fact, the court does not interpret it to prohibit all conclusions that the trier of fact might be able to make without the expert’s help. The expert’s role is to interpret the evidence in the case; to do so in a logical fashion, he or she must frequently begin with obvious conclusions from the evidence. For example, Dunham states in his expert report that “Oregon wrongly identifies the Trilink Y saw chain as Linbo and attributes Linbo test results as Trilink test results.” Dunham Report, Conclusion A [Doc. No. 160, Ex. A]. This statement, which required nothing more than a review of the documents, did not necessarily require Dunham’s expertise. At the hearing, however, Dunham used this statement as the basis for his conclusion that Oregon deviated from an important component of product testing: proper sample identification. This conclusion, which ultimately bears upon the reliability of Oregon’s testing procedures, clearly implicates Dunham’s expertise and assists the trier of fact in interpreting the evidence. However, if Dunham were prohibited from stating that Oregon misidentified the Trilink and Linbo chain simply because the trier of fact could reach the same conclusion, he would have no basis to make his ultimate expert conclusion. Obviously, Rule 702 does not contemplate such a scenario.

Because obvious conclusions are frequently a foundation for expert opinion, the court will not comb through Dunham’s testimony and reject non-prejudicial statements simply because they are obvious. Dunham’s proposed testimony appears to be related to his ultimate goal of evaluating the product testing and results; accordingly, the court will not exclude any of Dunham’s proposed testimony on the grounds of unhelpfulness at this time.

D. Conclusion

As described above, Dunham is qualified to testify to those matters within his expertise as a product tester, but is not qualified to testify to matters beyond that expertise, such as matters regarding consumer interpretation and perception of advertisements, consumer research data, and matters regarding saw chain usage and industry standards (other than those used for kickback testing). Moreover, Dunham is permitted to make statements and conclusions that the trier of fact could make so long as those statements and conclusions are used in the development of his expert opinions. If the parties have any questions regarding the admissibility of Dunham’s proposed testimony, the court will entertain such questions and concerns at a time closer to the date of trial.

II. The Parties’ Motions for Summary Judgment [Doc. Nos. 149 and 157]

A. Summary Judgment Standard

Summary judgment is proper where “the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and the moving party is entitled to a judgment as a matter of law.” Fed. R.Civ.P. 56(c). The moving party bears the initial burden of showing that there is no genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). This may be accomplished by showing that the nonmoving party will be unable to “establish the existence of an element essential to [the nonmoving] party’s case, and on which [the nonmoving] party will bear the burden of proof at trial.” Id. at 322, 106 S.Ct. 2548.

Once the moving party has met its burden, the burden shifts to the nonmoving party to “designate specific facts showing that there is a genuine issue for trial.” Id. at 324, 106 S.Ct. 2548 (internal quotation marks omitted). There is a genuine issue if the combined body of evidence, viewed in the light most favorable to the nonmov-ing party, would allow a reasonable jury to find in favor of the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). In other words, the relevant inquiry 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.” Id. at 251-52, 106 S.Ct. 2505.

B. Trilink’s Motion for Summary Judgment [Doc. No. 149]

On July 29, 2005, Trilink filed for registration of its trademark, PROLINE, for use in connection with “chain saw parts and accessories, namely saw chain, guide bars, sprockets, files, file guides, and blades in International Class 7.” Trilink’s Statement of Facts, ¶ 11 [Doc. No. 149, Ex. 2] (internal punctuation omitted). Trilink chose PROLINE because the name provided flexibility to be used later with products beyond chain saw accessories.

On February 26, 2006, the United States Patent & Trademark Office (“PTO”) examiner reviewed marks in Trilink’s class. The PTO found no marks that it considered likely to cause confusion. On or about April 5, 2006, the PTO published the PROLINE mark for opposition.

Oregon is the owner of PRO-LITE, an incontestable trademark that it uses for chain saw guide bars. On August 23, 2006, Oregon opposed Trilink’s PROLINE registration to protect the PRO-LITE mark.

Trilink was unaware of Oregon’s PRO-LITE mark until it received Oregon’s opposition to Trilink’s registration. However, upon receipt of Oregon’s opposition in or around September 2006, Trilink elected to abandon PROLINE and select another brand name for future use. It immediately ceased obtaining new business under the PROLINE brand but continued to ship PROLINE products to Ammars, its only United States PROLINE customer, until April 2007. On February 5, 2007, Trilink abandoned its PROLINE trademark application.

As noted above, Oregon has filed its counterclaims to recover for Trilink’s allegedly infringing use of the PROLINE mark. Specifically, Oregon has alleged trademark infringement in violation of Section 32(1) of the Lanham Act and unfair competition under federal and state law. Trilink has moved for summary judgment on all of Oregon’s counterclaims.

1. Oregon’s Claim for Trademark Infringement

A trademark is “any word, name, symbol or device, or any combination thereof used to identify and distinguish one’s goods from those manufactured or sold by others and to indicate the source of the goods.” Leigh v. Warner Brothers, Inc., 212 F.3d 1210, 1216 (11th Cir.2000) (citing 15 U.S.C. § 1127) (internal punctuation omitted). “In a trademark infringement action, the plaintiff must show, first, that its mark is valid and, second, that the defendant’s use of the contested mark is likely to cause confusion.” Dieter v. B & H Industries of Southwest Florida, Inc., 880 F.2d 322, 326 (11th Cir.1989) (citations omitted). Because Oregon’s PRO-LITE mark is the subject of an incontestable federal registration, its validity is presumed. Id. Indeed, Trilink does not dispute the validity of Oregon’s mark, but instead focuses its brief on the likelihood of confusion element.

To determine whether there is a likelihood of confusion between two marks, the Eleventh Circuit has developed a seven-factor inquiry. Under this inquiry, the court must assess:

(1) the strength of the plaintiffs mark;

(2) the similarity between the plaintiffs mark and the allegedly infringing mark;

(3) the similarity between the products and services offered by the plaintiff and the defendant; (4) the similarity of the sales methods; (5) the similarity of advertising methods; (6) the defendant’s intent, e.g., does the defendant hope to gain competitive advantage by associating his product with the plaintiffs established mark; and (7) actual confusion.

North American Medical Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1220 (11th Cir.2008) (citing Alliance Metals, Inc. v. Hinely Industries, Inc., 222 F.3d 895, 907 (11th Cir.2000)). “Of these, the type of mark [i.e., the strength] and the evidence of actual confusion are the most important.” Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1201 n. 22 (11th Cir.2001) (citing Dieter, 880 F.2d at 326).

a. The Strength of Oregon’s PRO-LITE Mark

“The strength of a trademark is essentially a consideration of distinctiveness.” BellSouth Corp. v. Internet Classifieds of Ohio, 1:96-cv-0769-CC, 1997 WL 33107251, at *14 (N.D.Ga. Nov. 12, 1997) (citations omitted). The stronger (i.e., the more distinctive) the mark, “the greater the scope of protection accorded it, [and] the weaker the mark, the less trademark protection it receives.” Frehling Enterprises, Inc. v. International Select Group, Inc., 192 F.3d 1330, 1335 (11th Cir.1999); see also Jellibeans, Inc. v. Skating Clubs of Georgia, Inc., 716 F.2d 833, 840 (11th Cir.1983) (“[T]he more distinct the plaintiffs mark, the stronger it is considered, and the more protection it is accorded from confusingly similar marks.”) {questioned, on other grounds by Hi Limited Partnership v. Winghouse of Florida, Inc., No. 6:03-cv-116-ORL-22JGG, 2004 WL 5486964, at *8, 2004 U.S. Dist. LEXIS 30687, at *25 (M.D.Fla. Oct. 5, 2004)).

In this circuit, the factors generally considered when determining the strength of a trademark include (1) the type of mark; (2) the amount of use of the term by others in the same product and geographical area, and (3) the extent of a mark’s use, taking into consideration the amount of advertising and promotion done under the mark. Gold Kist, Inc. v. ConAgra, Inc., 708 F.Supp. 1291, 1297 (N.D.Ga. 1989) (citing John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 973-75 (11th Cir.1983)); BellSouth Corp., 1997 WL 33107251, at *14 (citing John H. Harland Co., 711 F.2d at 973-75 and Safeway Stores, Inc. v. Safeway Discount Drugs, Inc., 675 F.2d 1160, 1164 (11th Cir.1982)).

(1) Type of Trademark

“Terms which may be registered as trademarks fall into four categories of strength: (1) generic, (2) descriptive, (3) suggestive, or (4) arbitrary.” Dieter, 880 F.2d at 327.

The categories are based on the relationship between the name and the service or good it describes. Generic marks are the weakest and not entitled to protection — they refer to a class of which an individual service is a member (e.g., “liquor store” used in connection with the sale of liquor). Descriptive marks describe a characteristic or quality of an article or service (e.g., “vision center” denoting a place where glasses are sold). Suggestive terms suggest characteristics of the goods or services and require an effort of the imagination by the consumer in order to be understood as descriptive. For instance, “penguin” would be suggestive of refrigerators. An arbitrary mark is a word or phrase that bears no relationship to the product (e.g., “Sun Bank” is arbitrary when applied to banking services). Arbitrary marks are the strongest of the four categories.

Frehling Enterprises v. International Select Group, Inc., 192 F.3d 1330, 1335 (11th Cir.1999) (internal citations omitted). While suggestive and arbitrary marks are presumed entitled to protection, descriptive marks will be protected only when secondary meaning is shown. Sun Banks of Florida, Inc. v. Sun Federal Savings and Loan Association, 651 F.2d 311, 315 (5th Cir.1981).

In this case, neither party attempts to categorize the PRO-LITE mark as generic, descriptive, suggestive, or arbitrary. Instead, both agree that PRO-LITE, as an incontestable mark, “is presumed to be at least descriptive with secondary meaning.” Dieter, 880 F.2d at 329; see also Frehling, 192 F.3d at 1336 (noting that a mark’s incontestability serves to enhance its strength). The Eleventh Circuit has previously stated that such marks are “relatively strong.” Dieter, 880 F.2d at 329. However, the Eleventh Circuit affirmed without opinion a ruling from the Middle District of Florida that clarified that incontestable status “does not mean that a mark’s strength cannot be attacked.” HBP, Inc. v. American Marine Holdings, Inc., 290 F.Supp.2d 1320, 1329 (M.D.Fla.2003), aff'd, 129 Fed. Appx. 601 (11th Cir.2005). Instead, the court described incontestability as “simply one piece of the overall determination of a mark’s strength.” Id. Accordingly, the court will begin the strength analysis with the presumption that Oregon’s incontestable mark is relatively strong, but will consider whether other factors negate this presumption.

(2) Third-Party Use

“[important in gauging the strength of the mark is the degree to which third parties make use of the mark.” Frehling, 192 F.3d at 1336. “The less that third parties use the mark, the stronger it is, and the more protection it deserves.” Id. A consideration relevant in determining the significance of third-party use of a mark is the entire name a third-party uses, as well as the kind of business in which the user is engaged. Safeway Stores, Inc., 675 F.2d at 1165 (“Third-party users that incorporate the word Safeway along with distinctive additional words, or engage in a business different from that of Safeway Stores, may not diminish the strength of the Safeway mark.”); Board of Regents of the University System of Georgia v. Buzas Baseball, Inc., 176 F.Supp.2d 1338, 1351 (N.D.Ga.2001) (“Third party users that incorporate the word “Buzz” or a bee-like design with distinctive additional words, or are engaged in distinctly different businesses, may not significantly diminish the strength of the mark.”). “Use of the same or similar marks by third parties in unrelated businesses does not diminish the distinctiveness of a mark in a particular field.” Gold Kist, Inc. v. ConAgra, Inc., 708 F.Supp. 1291, 1298 (N.D.Ga.1989). Thus, “unauthorized use of a mark does not necessarily render a mark weak. The proper inquiry is whether the third party use significantly diminishes the public’s perception that the mark identifies services connected with the owner.” Breakers of Palm Beach, Inc., v. International Beach Hotel Development, Inc., 824 F.Supp. 1576, 1583 (S.D.Fla.1993) (finding that twelve uses within the state of Florida of “the Breakers” as part of properties’ business names did not diminish the plaintiffs trademark “The Breakers”). “The significance of third party use is evaluated based on the entire name and symbol, the type of business in which it is used, and geographic location.” Id.

In this case, Trilink argues that Oregon’s mark is weak because the three-letter “PRO” combination in the PRO-LITE trademark has been registered 40 times. Four of these trademarks, Poulan PRO, PRO MAC, Pro-Series, and PRO-TEC TIP, are used in relation to chain saws and saw chain, and thirteen of these registered marks are in use for other types of handheld saws and saw blade. These trademarks include: Quantum Pro, All Pro, KCPROAM, Dualpro, Ampro, Professional Woodworker, Durapro, Slimpro, Lapro, Jack-Pro, Pro’Skit, Steel-Pro, and Protool.

The court is not persuaded that use of the “PRO” combination in other registered marks, even in marks used within the saw chain industry, significantly diminishes the PRO-LITE mark. As noted above, the significance of third-party use is evaluated based on the entire name and symbol. Here, none of the other marks incorporate the entire “PRO-LITE” name. Moreover, there is no indication that these other marks are displayed in a format or in conjunction with symbols confusingly similar to Oregon’s use and display of the PRO-LITE mark. In addition, the fact that four other entities in the saw chain industry use “PRO” in their product names does not necessarily constitute the “extensive third-party use” needed to diminish the plaintiffs mark. See Breakers, 824 F.Supp. at 1583 (finding that extensive third-party use required more than 12 unauthorized uses). Accordingly, the court finds that the PRO-LITE mark is relatively strong, even when third-party use of the “PRO” combination is considered.

(3) Extent of Use of Mark

The third measure of a mark’s strength is the extent of its use, as gauged by the duration of its use and the amount of advertising and promotion done under the mark. The theory behind this criterion is that the more that a mark has been promoted and the longer that it has been in use, the stronger the mark is likely to be. Gold Kist, Inc., 708 F.Supp. at 1297.

Oregon has provided evidence that it and its predecessors-in-interest have used the PRO-LITE mark in connection with chain saws and saw chain since 1981. In addition, Oregon has provided evidence that it has expended significant resources advertising its products under the PRO-LITE mark. Moreover, Oregon claims that it has sold millions of dollars of products in the United States under the PRO-LITE mark. This evidence is indicative of strength.

Nevertheless, Trilink argues that Oregon’s mark is weak. In support of this argument, Trilink contends that Oregon only promotes its products in its cata-logues, at trade shows, and on Oregon’s web sites. Moreover, it contends that recognition of the trade name “Oregon,” is low; thus, consumer recognition of the PRO-LITE mark must, by inference, also be low.

The court finds Trilink’s argument regarding the strength of the Oregon mark less than compelling. To determine that the Oregon brand had low consumer recognition, Trilink relied on a consumer survey. This survey did not test or even mention the PRO-LITE mark. The court concludes that it is an impermissible leap to infer that the PRO-LITE mark does not enjoy consumer recognition because only 21% percent of survey respondents recognized its parent brand.

On the other hand, the court concludes that the strength of the PRO-LITE mark is undermined by the fact that it has not been widely advertised. See Current Communications Group, LLC v. Current Media, LLC, No. L05-CV-385, 2005 WL 1847215, *2-3, 2005 U.S. Dist. LEXIS 40733, at *7-8, (S.D.Ohio Aug. 2, 2005) (“Even though Plaintiffs marks are presumptively strong, their strength is undermined by the fact that Plaintiff has not widely advertised them.”). Though Oregon may have spent substantial resources advertising the PRO-LITE mark, its relatively narrow advertising campaign does not lend PRO-LITE the strength that it might have if advertised in a widespread manner.

However, the fact that Oregon did not engage in a widespread advertising campaign is not fatal. Although a less targeted campaign would undoubtedly render the PRO-LITE mark stronger, the court cannot conclude that the mark is weak because Oregon failed to undertake such efforts. Thus, the court concludes that Oregon’s mark is relatively strong and entitled to protection.

b. The Similarity of the Marks

The next factor to consider in evaluating the likelihood of confusion between a set of trademarks is the degree to which they are similar. In undertaking such an evaluation,

the court compares the marks at issue and considers the overall impressions that the marks create, including the sound, appearance, and manner in which they are used. [T]he more similar the marks are in their sound, appearance, and manner, the more likely it is that a reasonable consumer will be confused as to the source of the product that each mark represents.

Board of Regents, 176 F.Supp.2d at 1352 (citing Frehling, 192 F.3d at 1337). As a general rule, “where the goods and services are directly competitive, the degree of similarity required to prove a likelihood of confusion is less than in the ease of dissimilar products.” SunAmerica Corp. v. Sun Life Assurance Co. of Canada, 890 F.Supp. 1559, 1575 (N.D.Ga.1994) (citation omitted) (finding that the marks Sun Life of America and Sun Life (U.S.) were indistinguishable and that the marks Sun Life of America and Sun Life of Canada were closely similar).

In this case, Oregon and Trilink’s goods are directly competitive and thus require a lower degree of similarity to prove a likelihood of confusion. The two marks differ by only one letter — Oregon’s PRO-LITE mark includes a “t” and Trilink’s PRO-LINE mark includes an “n”. Thus, they sound similar and look similar. In addition, the marks are used in a similar manner in that they are both used in marketing to denote chain saw accessories.

While the products are indisputably similar in key ways, the confusion that their similarity might otherwise cause a consumer is diminished by the manner in which the marks are portrayed. The evidence shows that the PRO-LITE mark is generally found immediately following the word OREGON as part of a design featuring pine trees and a mountain, as follows:

The PROLINE mark, on the other hand, appeared in large block letters with no design. [Doc. No. 149, Attachment 3, Ex. A]. Moreover, the font used for the PRO-LINE mark does not match the PRO-LITE font.

Courts in this circuit have repeatedly found that marks otherwise confusingly similar in the abstract are rendered distinct by their presentation. See, e.g., HBP, Inc., 290 F.Supp.2d at 1332-33 (finding that marks encompassing the term “Daytona” were not similar in light of their presentation); Corbitt Manufacturing Co. v. GSO America, Inc., 197 F.Supp.2d 1368, 1377 (S.D.Ga.2002) (finding that a party faded to show likelihood of confusion, in part, because the “marked differences in the parties’ packaging ... create an overall impression of distinct manufacturers.”); Tommy Hilfiger Licensing, Inc. v. Goody’s Family Clothing, No. 1:00-cv-1934-BBM, 2003 WL 22331254, at *34, 2003 U.S. Dist. LEXIS 8788, at *87 (N.D.Ga. May 9, 2003) (finding that the dissimilarities between packaging affected the similarity of the parties’ marks). Thus, similar marks placed on directly competitive goods may not result in confusion where the appearance and usage of the marks is dissimilar. HBP, Inc., 290 F.Supp.3d at 1332. This is particularly true where one of the noticeably different marks is always or almost always presented in association with its company name. See Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 969 (6th Cir.1981) (“When similar marks are always presented in association with company names, the likelihood of confusion is reduced.”).

Such is the case here. Although the PROLINE and PRO-LITE marks share undeniable similarities, when compared as they appear in the marketplace, they are markedly different. See Munters Corp. v. Matsui America, Inc., 730 F.Supp. 790, 795 (N.D.Ill.1989) (citations omitted) (“In considering the similarities and differences between marks, the marks in their entire-ties must be compared in light of what occurs in the marketplace, not the courtroom .... Prominent display of different names on the marks reduces the likelihood of confusion even where the marks are otherwise similar.”). The PRO-LITE mark is consistently depicted along with the Oregon mark, making confusion between the PROLINE and PRO-LITE marks less likely than it might otherwise be. Indeed, even the PTO did not cite the PRO-LITE trademark against Trilink when Trilink sought to register its PRO-LINE mark.

Because the portrayal of the PROLINE and PRO-LITE marks is so different, the court cannot conclude that the marks are confusingly similar. This factor cuts in favor of Trilink.

c. The Similarity of the Parties’ Products and Services

The third factor that the court must consider in the likelihood of confusion analysis is the similarity between Trilink and Oregon’s products. “This factor requires a determination as to whether the products are the kind that the public attributes to a single source.” Frehling, 192 F.3d at 1338. “The issue is not whether the purchasing public can readily distinguish between the products of the respective parties, but rather whether the products are so related in the minds of consumers that they get the sense that a single producer is likely to produce both.” Western Union Holdings, Inc. v. Eastern Union Inc., No. 1:06-cv-01408, 2007 WL 2683714, at *8, 2007 U.S. Dist. LEXIS 66281, at *23 (N.D.Ga. Sept. 7, 2007) (citing Frehling, 192 F.3d at 1338).

In this case, Oregon uses its mark on guide bars for chain saws. When in use, Trilink used its mark on chain saw parts and accessories, namely saw chain, guide bars, sprockets, files, file guides, and blades. There can be no dispute that the parties used their marks on similar, and sometimes identical, products; indeed, Trilink does not even argue this point. Accordingly, this factor cuts strongly in favor of Oregon.

d. The Similarity of the Parties’ Retail Outlets and Customers

The fourth factor “takes into consideration where, how, and to whom the parties’ products are sold.” Western Union Holdings, 2007 WL 2683714, at *9, 2007 U.S. Dist. LEXIS 66281, at *26 (citing Frehling, 192 F.3d at 1339). Although “the parties’ outlets and customer bases need not be identical” to support a likelihood of confusion, “some degree of overlap should be present.” Frehling, 192 F.3d at 1339.

As noted at the outset, Trilink and Oregon are competitors in a relatively small industry. They generally sell their products to the same outlets: namely, large retailers and original equipment manufacturers. In fact, Oregon and Trilink both attended the same line review on at least one occasion. For purposes of this motion, Trilink does not even attempt to argue that its retail outlets and customers are dissimilar from Oregon’s. Accordingly, this factor weighs in favor of Oregon.

e. The Similarity of Advertising Media Used

The “similarity of advertising” factor focuses on the methods the companies use to advertise their products, “not necessarily on the precise newspapers or magazines which are used.” Gold Kist, 708 F.Supp. at 1301. “The greater the similarity in the campaigns, the greater the likelihood of confusion.” Ross Bicycles, Inc. v. Cycles USA, Inc., 765 F.2d 1502, 1508 (11th Cir.1985).

Oregon has presented evidence that both parties advertise(d) their respective marks through similar channels of media, such as through web sites and trade shows. Trilink has not presented any evidence pointing to dissimilarities in the parties’ marketing strategies or even argued that they were dissimilar; accordingly, the court will construe this factor in favor of Oregon.

f. The Existence of Actual Confusion

“It is undisputed that evidence of actual confusion is the best evidence of likelihood of confusion.” Frehling, 192 F.3d at 1340 (citing John H. Harland Co., 711 F.2d at 978). “However, such evidence is not a prerequisite, and thus it is up to individual courts to assess this factor in light of the particular facts of each case.” Id. (citing Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 263 (5th Cir.1980)).

Oregon has conceded that it has no evidence of actual confusion and has also stated that this factor weighs in Trilink’s favor. Though important, the absence of actual confusion is not dispositive of the issue of likelihood of confusion; thus, the court will return to this issue when balancing the seven factors.

g. Trilink’s Intent

The last factor that the court must consider in the likelihood of confusion analysis is whether Trilink acted in bad faith in using the PROLINE mark. To prove that Trilink acted in bad faith, Oregon must show that Trilink adopted the PROLINE mark with the intention of deriving a benefit from Oregon’s business reputation or that Trilink was intentionally blind to confusion between the parties’ marks. Frehling, 192 F.3d at 1340 (citing John H. Harland Co., 711 F.2d at 977); Board of Regents, 176 F.Supp.2d at 1353. Trilink argues that Oregon cannot meet this burden, and presents evidence demonstrating that Trilink was unaware of Oregon’s PRO-LITE mark when it adopted the PROLINE mark, that it chose the PROLINE mark because of its versatility in describing Trilink’s products other than saw chain, that it engaged in online trademark searches, that it engaged counsel to file on the mark, that Oregon’s mark was not raised as an issue in the pre-filing procedures, that Trilink submitted its mark for registration, and that the PTO examiner did not identify Oregon’s mark as confusingly similar to the PROLITE mark. In addition, Trilink has presented evidence that it stopped using the PROLINE mark and elected not to pursue registration of it after it learned of Oregon’s opposition.

Oregon admits that it has no direct evidence that Trilink acted in bad faith; however, it argues that Trilink may have conducted a deficient trademark search and therefore may have been intentionally blind to possible confusion between the PROLINE and PRO-LITE marks. In addition, Oregon argues that this dispute, coupled with two other, similar disputes that the parties have had indicates Trilink’s general disregard for Oregon’s intellectual property rights.

The court finds Oregon’s arguments unavailing. First, Oregon’s evidence of other disputes between the parties regarding intellectual property rights proves nothing other than the litigious nature of the parties’ relationship and is irrelevant to the case at hand. Thus, it does not support an allegation of bad faith in this case.

Second, Oregon’s speculation that Trilink conducted deficient trademark clearance procedures does not provide a reasonable jury with a basis to find in favor of Oregon on this issue. Oregon’s argument that Trilink was willfully blind is based on Trilink’s failure to produce documents or identify documents in its privilege log related to trademark clearance procedures, Trilink’s alleged failure to conduct a reasonable trademark search for the PROLINE mark in regard to lawn equipment, and the following excerpt of Trilink’s president’s deposition testimony:

Q: Were there any clearance activities undertaken to approve [the PRO-LINE] mark prior to Trilink’s adoption of it?

A: We always, when we apply for a trademark or — or any of that kind of thing, do a — -I think it’s test, search online, and then we sent it to our trademark attorneys, Kilpatrick Stockton, here in Atlanta, for them to file on the — on the mark.

Q: And did Kilpatrick do any independent testing or — strike that question. Did Kilpatrick Stockton undertake any additional clearance procedures, other than those that Trilink had conducted?

A: I would not be — I don’t know. I don’t know.

Q: Did you request—

A: I didn’t do the request. I would certainly have thought so, but like I said, I did not do the request, so I’m not sure.

Lacy Dep. 162:25-163:18 [Doc No. 174].

Oregon’s evidence is not sufficient to permit a finding of willful blindness. First, the testimony of Trilink’s president does not prove that Trilink did not perform satisfactory trademark clearance searches; instead, it simply establishes that Trilink performed some trademark searches before turning the matter over to their attorneys, who may or may not have undertaken additional searches. Similarly, the bare assertion that Trilink did not produce any documents related to clearance searches establishes nothing absent accompanying evidence that Oregon asked Trilink for such documents. Finally, the evidence that the PTO cited trademarks against Trilink’s PROLINE mark in regard to lawn equipment application is irrelevant as to whether Trilink conducted adequate searches for its PROLINE mark in regard to chain saw accessories.

In short, Oregon has failed to demonstrate any evidence that Trilink was willfully blind or otherwise acted in bad faith; instead, it merely offers unsupported speculation. The court concludes that no reasonable jury could find that Trilink acted in bad faith on the basis of such speculation; accordingly, this factor cuts in favor of Trilink.

h. Balancing the Seven Factors in the Likelihood of Confusion Analysis

The Eleventh Circuit has recently discussed how the seven factors discussed above should be weighed, and has noted that it “entails more than the mechanistic summation of the number of factors on each side.” Custom Manufacturing and Engineering, Inc. v. Midway Services, 508 F.3d 641, 649 (11th Cir.2007).

These factors imply no mathematical precision, but are simply a guide to help determine whether confusion is likely. They are also interrelated in effect. Each case presents its own complex set of circumstances and not all of these factors may be particularly helpful in any given case.... The ultimate question remains whether relevant consumers are likely to believe that the products or services offered by the parties are affiliated in some way.

Id. at 650 (internal citations omitted).

In this case, the above analysis demonstrates that Oregon’s mark is relatively strong. Moreover, it indicates that the PROLINE and PRO-LITE marks are used in relation to similar products, are marketed through the same advertising mediums to similar customers, and, indeed, are in competition. All of these factors cut in favor of Oregon.

On the other hand, the court notes that Oregon has no evidence that anyone has actually been confused by the two marks, and notes that Trilink did not engage in bad faith when picking the mark. Moreover, the court notes that despite the similarity of the marks in the abstract, they are strikingly dissimilar when they appear in the manner in which they are/were marketed.

When all of the circumstances of this case are considered, the court concludes that the competing trademarks are not likely to cause confusion among consumers in the marketplace. As discussed above, the marks are not similar to the point of confusion, and the court cannot conclude, without evidence of actual confusion, that they are likely to lead to consumer confusion. Accordingly, summary judgment is granted in favor of Trilink on Oregon’s claim for trademark infringement.

2.Oregon’s Claim of Unfair Competition under 15 U.S.C. § 1125(a)(1)

Oregon asserts a claim for unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1). This section “forbids unfair trade practices involving infringement of trade dress, service marks, or trademarks, even in the absence of federal trademark registration.” Planetary Motion, Inc., 261 F.3d at 1193 (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992)). To prevail under this section, Oregon must show “(1) that it had prior rights in the mark at issue; and (2) that [Trilink] had adopted a mark or name that was the same, or confusingly similar to [Oregon’s] mark, such that consumers were likely to confuse the two.” Id. (citations omitted).

The parties agree that the seven factors used to determine whether likelihood of confusion exists for a trademark infringement claim are also used to determine whether there is likelihood of confusion for a Lanham Act unfair competition claim. Fila U.S.A. v. Kim, 884 F.Supp. 491, 495 (S.D.Fla.1995) (“Courts apply the same test of likelihood of confusion in determining violations of 15 U.S.C. § 1125(a)(1) as in determining whether there has been trademark infringement in contravention of 15 U.S.C. § 1114.”) (citing Ross Bicycles, Inc., 765 F.2d at 1503-04). Because Oregon relies on the same facts for both claims, the finding that there is no likelihood of confusion for purposes of trademark infringement is determinative here. Accordingly, Trilink is entitled to summary judgment on Oregon’s claim for federal unfair competition.

3. Oregon’s Claim of Unfair Competition under O.C.G.A. § 10-1-393 et seq.

Trilink has moved for summary judgment on Oregon’s claim for unfair competition under O.C.G.A. § 10-1-393 et seq. Oregon has admitted that it has no cause of action under this section. Accordingly, the court grants Trilink’s motion for summary judgment in regard to this claim.

4. Summary of Trilink’s Motion for Summary Judgment

As described in detail above, Trilink is entitled to summary judgment on all of Oregon’s counterclaims. No further consideration of these issues is warranted.

C. Oregon’s Motion for Partial Summary Judgment [Doc. No. 157]

Oregon has moved for partial summary judgment in relation to Trilink’s request for monetary damages. Oregon claims that Trilink has failed to present sufficient evidence that it has suffered any injury as a result of Oregon’s alleged false advertís-ing; accordingly, it claims that Trilink cannot succeed on a claim for actual damages. For the same reason, Oregon also contends that Trilink cannot succeed on its claim for tortious i