Survivor Media v. Survivor Productions

I. FACTUAL & PROCEDURAL BACKGROUND

A. Factual Background

1. Plaintiffs-Appellants and the Surfvivor Mark

Deptula holds three federal trademarks for the mark “Surfvivor,” an amalgamation of the words “surf” and “survi- vor.” Deptula has adorned the majority of his Hawaiian beach-themed products, ranging from sunscreen, to t-shirts, to surfboards, with that mark. Of these products, approximately thirty to fifty percent of Plaintiff’s wares are emblazoned with the Surfvivor mark alone. The remaining wares sport a tiny Surfvivor mark along with a third-party logo, such as a col- lege insignia.

Visually, the Surfvivor mark consists of the term “Surfvi- vor” in block or cursive writing, often accompanied by a styl- ized graphic, such as a sun or a surfer. Deptala has been using this mark for several years and has advertised his wares on local television and radio shows, on his website, and at local trade shows. Surfvivor goods are primarily sold to Hawaiian consumers through the local university, a chain of drugstores, military exchanges, and Hawaiian branches of major retailers. Deptula would like to expand Surfvivor’s out-of-state pres- ence, but has not made any firm…