Pendent Appellate Jurisdiction to Review Trademark Cancellation When “Inextricably Intertwined” with an Interlocutory Lanham Act Injunction

Precedents Cited

The opinion is heavily anchored in established Eleventh Circuit trademark doctrine—especially on likelihood of confusion and the probative value of actual confusion—while also clarifying appellate jurisdiction to reach trademark cancellation orders alongside interlocutory injunction appeals.

Standards of Review and Appellate Posture

• FCOA LLC v. Foremost Title & Escrow Servs. LLC, 57 F.4th 939 (11th Cir. 2023): Cited for de novo review of summary judgment, the two-element infringement test (valid mark with priority + likelihood of confusion), and the structured approach to the likelihood-of-confusion factors—evaluating each factor and then weighing them together.
• Barrett v. Walker Cnty. Sch. Dist., 872 F.3d 1209 (11th Cir. 2017): Used for the mixed standard in injunction appeals—abuse of discretion for the injunction decision, but de novo review of underlying legal determinations and summary judgment propriety.
• PlayNation Play Sys., Inc. v. Velex Corp., 924 F.3d 1159 (11th Cir. 2019): Cited both for the abuse-of-discretion standard for trademark cancellation and for the elements of cancellation (standing/likely damage + valid grounds), including that infringement can supply the basis for cancellation.
• Waldman v. Conway, 871 F.3d 1283 (11th Cir. 2017): Supports the principle that the appellate court may affirm on any record-supported ground, even if not relied on below.

Permanent Injunction Framework

• Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200 (11th Cir. 2008) and eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006): Provide the four-factor test for permanent injunctive relief (irreparable injury, inadequacy of legal remedies, balance of hardships, public interest). The opinion emphasizes that the disputed issue was irreparable harm.
• Hard Candy, LLC v. Anastasia Beverly Hills, Inc., 921 F.3d 1343 (11th Cir. 2019) and SunAmerica Corp. v. Sun Life Assurance Co. of Can., 77 F.3d 1325 (11th Cir. 1996): Support the remedial norm in “ordinary trademark infringement actions” that complete injunctions are typically appropriate.

Likelihood of Confusion and the Eight-Factor Analysis

• Wreal, LLC v. Amazon.com, Inc., 38 F.4th 114 (11th Cir. 2022) and Cap. Films Corp. v. Charles Fries Prods., Inc., 628 F.2d 387 (5th Cir. 1980): Define likelihood of confusion as confusion among ordinarily prudent purchasers as to source.
• Tana v. Dantanna's, 611 F.3d 767 (11th Cir. 2010); Savannah Coll. of Art & Design, Inc. v. Sportswear, Inc., 983 F.3d 1273 (11th Cir. 2020); Alliance Metals, Inc., of Atlanta v. Hinely Indus., Inc., 222 F.3d 895 (11th Cir. 2000): Confirm that likelihood of confusion is generally factual but can be decided as a matter of law on an appropriate record.
• Jellibeans, Inc. v. Skating Clubs of Ga., Inc., 716 F.2d 833 (11th Cir. 1983): Supports the non-mechanical weighting of factors; courts do not tally factors but assign weight according to context.

Strength of Mark (Conceptual vs Commercial)

• Frehling Enters., Inc. v. Int'l Select Grp., Inc., 192 F.3d 1330 (11th Cir. 1999) and Freedom Sav. & Loan Ass'n v. Way, 757 F.2d 1176 (11th Cir. 1985): Define arbitrary marks as those bearing no relationship to the product (conceptually strong).
• Fla. Int'l Univ. Bd. of Trs. v. Fla. Nat'l Univ., Inc. (FIU), 830 F.3d 1242 (11th Cir. 2016): Establishes that promotion evidence alone is insufficient to show commercial strength without evidence of effectiveness (e.g., consumer recognition).

Similarity of Marks / Products / Channels / Advertising

• FIU and Frehling Enters., Inc. v. Int'l Select Grp., Inc.: Used to evaluate mark similarity by appearance, sound, meaning, and manner of use, and to caution that adding words around a recognizable mark often does little to reduce confusion risk.
• Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012): Quoted (through Wreal, LLC v. Amazon.com, Inc.) for the rule that products need only be “related” enough to create a mistaken belief of common source.
• E. Remy Martin & Co., S.A. v. Shaw-Ross Int'l Imports, Inc., 756 F.2d 1525 (11th Cir. 1985): Supports that the inquiry is not whether consumers can distinguish, but whether products are of the kind attributed to a single source.
• Sovereign Mil. Ord. v. Knights Hospitallers, 809 F.3d 1171 (11th Cir. 2015): Cited on how differences in outlets/consumers can lessen confusion, but here overlap in distribution methods supported Hammer.

Intent

• Custom Mfg. & Eng'g, Inc. v. Midway Servs., Inc., 508 F.3d 641 (11th Cir. 2007) (quoted through FIU): Frames intent as conscious capitalization on goodwill, intentional blindness, or improper intent; if proven, intent can itself justify an inference of confusing similarity.

Actual Confusion (Most Important Factor)

• FIU: Actual confusion is “the best evidence” of likelihood of confusion; courts consider who was confused and how.
• World Carpets, Inc. v. Dick Littrell's New World Carpets, 438 F.2d 482 (5th Cir. 1971) (quoted through Wreal, LLC v. Amazon.com, Inc.): Even “very little” actual confusion is highly probative.
• Caliber Auto. Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931 (11th Cir. 2010) and Jellibeans, Inc. v. Skating Clubs of Ga., Inc.: The quantum of evidence needed to show actual confusion is relatively small.
• Safeway Stores, Inc. v. Safeway Disc. Drugs, Inc., 675 F.2d 1160 (11th Cir. 1982): Even two instances may be “worthy of some consideration” if the “right people” are confused in the “right way,” but short-lived/casual confusion is less weighty.

Evidence and Hearsay at Summary Judgment

• United States v. Rivera, 780 F.3d 1084 (11th Cir. 2015): Supports the conclusion that non-assertive statements incapable of being true or false are not hearsay. The court used this to treat consumer inquiries (questions) as non-hearsay.
• Macuba v. Deboer, 193 F.3d 1316 (11th Cir. 1999): Allows consideration of hearsay at summary judgment if reducible to admissible evidence at trial.

Summary Judgment Despite Some Factors Favoring Nonmovant

• Welding Servs., Inc. v. Forman, 509 F.3d 1351 (11th Cir. 2007) and Tana v. Dantanna's: Support that summary judgment can be appropriate even if several confusion factors favor the nonmovant.

Finality, Interlocutory Appeals, and Pendent Appellate Jurisdiction

• Scott v. Advanced Pharm. Consultants, Inc., 84 F.4th 952 (11th Cir. 2023): Reiterates the general rule that orders adjudicating fewer than all claims are not “final decisions” appealable under 28 U.S.C. § 1291.
• Hamrick v. Partsfleet, LLC, 1 F.4th 1337 (11th Cir. 2021): Provides the Eleventh Circuit’s test for pendent appellate jurisdiction—available only in rare circumstances when a nonappealable decision is “inextricably intertwined” with an appealable one or necessary for meaningful review.
• Marshak v. Treadwell, 240 F.3d 184 (3d Cir. 2001) and Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902 (9th Cir. 1995): Sister-circuit support for pendent appellate jurisdiction to review trademark cancellation orders in conjunction with injunction appeals.

Legal Reasoning

1) Infringement as the Gateway to Irreparable Harm

The court treated infringement as the hinge point for the permanent injunction because 15 U.S.C. § 1116(a) supplies “a rebuttable presumption of irreparable harm” upon a showing of trademark infringement. Since Kaabo challenged only irreparable harm, and irreparable harm followed presumptively from infringement, the appeal effectively turned into whether Hammer had established likelihood of confusion as a matter of law.

2) Likelihood of Confusion: Factor-by-Factor, Then Holistic Weighting

Applying the eight factors, the court agreed with the district court that six favored Hammer: similarity of marks, similarity of products, similarity of trade channels/customers, similarity of advertising, actual confusion, and consumer sophistication. Two favored Kaabo: strength (commercial strength lacking) and intent (Kaabo’s president testified he believed the marks sufficiently different).

Critically, the opinion emphasized that the analysis is not a mechanical tally. Actual confusion was given heavy weight as “the best evidence,” and the record contained multiple instances where real-world consumers contacted Hammer or its dealers seeking Kaabo “Wolf King” models based on the “Wolf” identifier. The court viewed the stylistic similarity of the marks and their use on similar products (motorized scooters) as making that confusion predictable.

3) Treatment of “Model Name” Structure Increased Confusion Risk

The panel’s reasoning on mark similarity went beyond visual comparison. It recognized a market reality: “Wolf” functioned as a brand name that often takes an appended model descriptor (e.g., Hammer’s “Wolf RX-50,” “Wolf Blaze”). In that context, “Wolf Warrior” could naturally read as another “Wolf” model line, not as a separate source identifier—making the additional words (“Warrior,” “King”) potentially confusion-enhancing rather than confusion-reducing.

4) Actual Confusion Evidence Was Admissible (or Reducible to Admissible Form)

The court rejected Kaabo’s hearsay objection on two independent grounds:

1. Many statements were not hearsay because they were non-assertive inquiries (questions), not offered for their truth but to show confusion (why callers reached out).
2. Even if some statements were hearsay, under Macuba v. Deboer they could be considered at summary judgment if reducible to admissible form at trial, such as through direct testimony from the confused consumers.

5) Jurisdiction to Review Cancellation: “Inextricably Intertwined” with Injunction

The opinion’s most structurally significant move is jurisdictional. Although cancellation was not a final order appealable under 28 U.S.C. § 1291 due to the pending fraudulent-registration claim, the injunction was appealable under 28 U.S.C. § 1292(a)(1). The court held cancellation review was available via pendent appellate jurisdiction because cancellation and injunction shared the same essential predicate—trademark infringement. Reviewing the injunction necessarily required deciding infringement; and infringement, in turn, supplied the “valid grounds” for cancellation under PlayNation Play Sys., Inc. v. Velex Corp.. Therefore, the issues were “inextricably intertwined” within the meaning of Hamrick v. Partsfleet, LLC.

Impact

• Practical expansion of review in interlocutory trademark appeals: Even though the opinion cautions pendent appellate jurisdiction is “rare,” it provides a clear template for when cancellation orders may be reviewed alongside injunction appeals: when both turn on the same infringement determination. This can accelerate resolution of registration status in cases where other claims remain pending.
• Reinforcement of actual confusion’s centrality—especially low “quantum” thresholds: The decision reiterates that a small number of confusion instances can be highly probative, and that confusion evidence is evaluated by who is confused and how. Businesses should treat misdirected service/support inquiries as litigation-relevant confusion indicators, not mere noise.
• Guidance on evidentiary handling of confusion inquiries at summary judgment: By characterizing consumer inquiries as non-hearsay (or reducible to admissible form), the opinion lowers procedural barriers that defendants sometimes use to keep real-world confusion evidence out at the summary judgment stage.
• Sharper distinction between conceptual and commercial strength: The opinion underscores that a mark can be conceptually strong (arbitrary/fanciful) yet commercially weak without evidence of marketplace recognition. Plaintiffs seeking to maximize the “strength” factor should consider survey evidence, sales/market share data, or recognition metrics—not just proof of promotion.
• Model-name ecosystems can heighten confusion risk: The court’s reasoning suggests that when a senior user’s mark commonly appears with product-model descriptors, a junior user’s adoption of the senior mark plus a descriptor (even if different) may be particularly risky.