This action might not be possible to undo. Are you sure you want to continue?
21, Docket 74-2540.
United States Court of Appeals, Second Circuit.
Argued Sept. 18, 1975. Decided Jan. 16, 1976. Opinion on Limited Rehearing Feb. 26, 1976. Richard H. Wels, New York City (Moss, Wels & Marcus, New York City, of counsel), for defendantappellee. Roy C. Hopgood, New York City (Paul H. Blaustein, and Hopgood, Calimafde, Kalil, Blaustein & Lieberman, New York City, of counsel), for plaintiff-appellant. Before FRIENDLY, TIMBERS and GURFEIN, Circuit Judges. FRIENDLY, Circuit Judge: 1 This action in the District Court for the Southern District of New York by Abercrombie & Fitch Company (A&F), owner of well-known stores at Madison Avenue and 45th Street in New York City and seven places in other states.1 against Hunting World, Incorporated (HW), operator of a competing store on East 53rd Street, is for infringement of some of A&F's registered trademarks using the word 'Safari'. It has had a long and, for A&F, an unhappy history. On this appeal from a judgment which not only dismissed the complaint but canceled all of A&F's 'Safari' registrations, including several that were not in suit, we relieve A&F of some of its unhappiness but not of all. I. 2 The complaint, filed in January, 1970, after describing the general nature of A&F's business, reflecting its motto, "The Greatest Sporting Goods Store in the World," alleged as follows: For many years A&F has used the mark 'Safari' on articles "exclusively offered and sold by it." Since 1936 it has used the mark on a variety of men's and women's outer garments. Its United States trademark registrations include: 3
358,781 7/26/38 Men's and Women's outer
garments, including hats.
Safari Mills2 125,531 5/20/19 Cotton Piece goods. Safari 652,098 9/24/57 Men's and Women's outer garments, including shoes. Safari 703,279 8/23/60 Woven cloth, sporting goods, apparel, etc.
4 A&F has spent large sums of money in advertising and promoting products identified with its mark 'Safari' and in policing its right in the mark, including the successful conduct of trademark infringement suits. HW, the complaint continued, has engaged in the retail marketing of sporting apparel including hats and shoes, some identified by use of 'Safari' alone or by expressions such as 'Minisafari' and 'Safariland'. Continuation of HW's acts would confuse and deceive the public and impair "the distinct and unique quality of the plaintiff's trademark." A&F sought an injunction against infringement and an accounting for damages and profits. 5 HW filed an answer and counterclaim. This alleged, inter alia, that "the word 'safari' is an ordinary, common, descriptive, geographic, and generic word" which "is commonly used and understood by the public to mean and refer to a journey or expedition, especially for hunting or exploring in East Africa, and to the hunters, guides, men, animals, and equipment forming such an expedition" and is not subject to exclusive appropriation as a trademark. HW sought cancellation of all of A&F's registrations using the word 'Safari' on the ground that A&F had fraudulently failed to disclose the true nature of the term to the Patent Office. 6 HW having moved for summary judgment, Judge Lasker granted this only in part, 327 F.Supp. 657 (S.D.N.Y.1971). He held, 327 F.Supp. at 662, that:Although "safari" is a generic word, a genuine issue of fact exists as to whether the plaintiff has created a secondary meaning in its use of the word "identifying the source" and showing that "purchasers are moved to buy it because of its source." 7 On the other hand, he concluded that A&F had no right to prevent HW from using the word 'Safari' to describe its business as distinguished from use in the sale of a particular product3 a conclusion we do not understand to be disputed; that HW had not infringed A&F's registered mark using the word
'Safari' under its brand name on a "classical safari hat" or in advertising this as "The Hat for Safari" since such use was purely descriptive, 327 F.Supp. at 664; that HW had also not infringed by using the term 'Minisafari' as a name for its narrower brimmed safari hats, and that HW was entitled to use the word 'Safariland' as the description of an area within its shop and as the name of a corporation engaged in the wholesale distribution of products imported from East Africa by an affiliate, Lee Expeditions, Ltd., and in the "Safariland News," a newsletter issued by HW and Lee Expeditions, 327 F.Supp. at 664-65. With respect to shoes he concluded that both parties had used the word 'Safari' in a fanciful rather than a descriptive sense and hence that plaintiff might have a valid infringement claim it it could establish a secondary meaning, 327 F.Supp. at 665. 8 On A&F's appeal this court reversed and remanded for trial, 461 F.2d 1040 (2 Cir. 1972). Most of Judge Thomsen's opinion for the court concerned the issue of appealability, as did most of Judge Timbers' concurring opinion and all of Judge Feinberg's dissent. Intimating no opinion on the ultimate merits, this court concluded "that genuine issues of fact exist which made it improper to enter a summary judgment finally denying even in part the injunctive relief sought by plaintiff." Id. at 1042. 9 Judge Ryan, before whom the action was tried on remand, ruled broadly in HW's favor. He found there was frequent use of the word 'Safari' in connection with wearing apparel, that A&F's policing efforts thus had evidently been unsuccessful, and that A&F had itself used the term in a descriptive sense not covered by its registration, e. g., in urging customers to make a "Christmas Gift Safari" to the A&F store. After referring to statements by Judge Lasker that 'Safari' was a "weak" mark, 327 F.Supp. at 663, the judge found the mark to be invalid. 'Safari,' the court held, "is merely descriptive and does not serve to distinguish plaintiff's goods as listed on the registration from anybody else's"; while such terms are afforded protection by the Lanham Act if they come to identify the company merchandising the product, rather than the product itself, A&F had failed to establish that this had become the situation with respect to 'Safari'.4 The opinion did not discuss A&F's assertion that some of its marks had become incontestable under § 15 of the Lanham Act, 15 U.S.C. § 1065. The court entered a judgment which dismissed the complaint and canceled not only the four registered trademarks in suit but all A&F's other registered 'Safari' trademarks.5 A&F has appealed.II. 10 It will be useful at the outset to restate some basic principles of trademark law, which, although they should be familiar, tend to become lost in a welter of adjectives. 11 The cases, and in some instances the Lanham Act, identify four different categories of terms with respect to trademark protection. Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. The lines of demarcation, however, are not always bright. Moreover, the difficulties are compounded because a term that is in one category for a particular product may be in quite a different one for another,6 because a term may shift from one category to another in light of differences in usage through time,7 because a term may have one
meaning to one group of users and a different one to others,8 and because the same term may be put to different uses with respect to a single product.9 In various ways, all of these complications are involved in the instant case. 12 A generic term is one that refers, or has come to be understood as referring, to the genus of which the particular product is a species. At common law neither those terms which were generic nor those which were merely descriptive could become valid trademarks, see Delaware & Hudson Canal Co. v. Clark, 80 U.S. (13 Wall.) 311, 323, 20 L.Ed. 581 (1872) ("Nor can a generic name, or a name merely descriptive of an article or its qualities, ingredients, or characteristics, be employed as a trademark and the exclusive use of it be entitled to legal protection"). The same was true under the Trademark Act of 1905, Standard Paint Co. v. Trinidad Asphalt Mfg. Co.,220 U.S. 446, 31 S.Ct. 456, 55 L.Ed. 536 (1911), except for marks which had been the subject of exclusive use for ten years prior to its enactment, 33 Stat. 726.10 While, as we shall see, p. ---- infra, the Lanham Act makes an important exception with respect to those merely descriptive terms which have acquired secondary meaning, see § 2(f), 15 U.S.C. § 1052(f), it offers no such exception for generic marks. The Act provides for the cancellation of a registered mark if at any time it "becomes the common descriptive name of an article or substance," § 14(c). This means that even proof of secondary meaning, by virtue of which some "merely descriptive" marks may be registered, cannot transform a generic term into a subject for trademark. As explained in J. Kohnstam, Ltd. v. Louis Marx and Company, 280 F.2d 437, 440, 47 CCPA 1080 (1960), no matter how much money and effort the user of a generic term has poured into promoting the sale of its merchandise and what success it has achieved in securing public identification, it cannot deprive competing manufacturers of the product of the right to call an article by its name. See, accord, Application of Preformed Line Products Co., 323 F.2d 1007, 51 CCPA 775 (1963); Weiss Noodle Co. v. Golden Cracknel and Specialty Co., 290 F.2d 845, 48 CCPA 1004 (1961); Application of Searle & Co., 360 F.2d 650, 53 CCPA 1192 (1966). We have recently had occasion to apply this doctrine of the impossibility of achieving trademark protection for a generic term, CES Publishing Corp. v. St. Regis Publications, Inc., 531 F.2d 11 (1975). The pervasiveness of the principle is illustrated by a series of well known cases holding that when a suggestive or fanciful term has become generic as a result of a manufacturer's own advertising efforts, trademark protection will be denied save for those markets where the term still has not become generic and a secondary meaning has been shown to continue. Bayer Co. v. United Drug Co., 272 F. 505 (2 Cir. 1921) (L. Hand, D. J. ); DuPont Cellophane Co. v. Waxed Products Co., 85 F.2d 75 (2 Cir.) (A. N. Hand, C. J. ), cert. denied, 299 U.S. 601, 57 S.Ct. 194, 81 L.Ed. 443 (1936); King-Seeley Thermos Co. v. Aladdin Industries, 1958). 13 Cir. 1963). A term may thus be generic in one market and descriptive or suggestive or fanciful in another. 14 The term which is descriptive but not generic11 stands on a better basis. Although § 2(e) of the Lanham Act, 15 U.S.C. § 1052, forbids the registration of a mark which, when applied to the goods of the applicant, is "merely descriptive," § 2(f) removes a considerable part of the sting by providing that
"except as expressly excluded in paragraphs (a)-(d) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce" and that the Commissioner may accept, as prima facie evidence that the mark has become distinctive, proof of substantially exclusive and continuous use of the mark applied to the applicant's goods for five years preceding the application. As indicated in the cases cited in the discussion of the unregistrability of generic terms, "common descriptive name," as used in §§ 14(c) and 15(4), refers to generic terms applied to products and not to terms that are "merely descriptive." In the former case any claim to an exclusive right must be denied since this in effect would confer a monopoly not only of the mark but of the product by rendering a competitor unable effectively to name what it was endeavoring to sell. In the latter case the law strikes the balance, with respect to registration, between the hardships to a competitor in hampering the use of an appropriate word and those to the owner who, having invested money and energy to endow a word with the good will adhering to his enterprise, would be deprived of the fruits of his efforts. 15 The category of "suggestive" marks was spawned by the felt need to accord protection to marks that were neither exactly descriptive on the one hand nor truly fanciful on the other a need that was particularly acute because of the bar in the Trademark Act of 1905, 33 Stat. 724, 726, (with an exceedingly limited exception noted above) on the registration of merely descriptive marks regardless of proof of secondary meaning. See Orange Crush Co. v. California Crushed Fruit Co., 54 U.S.App.D.C. 313, 297 F. 892 (1924). Having created the category the courts have had great difficulty in defining it. Judge Learned Hand made the not very helpful statement: 16 It is quite impossible to get any rule out of the cases beyond this: That the validity of the mark ends where suggestion ends and description begins. 17 Franklin Knitting Mills, Inc. v. Fashionit Sweater Mills, Inc., 297 F. 247, 248 (2 Cir. 1923), aff'd per curiam, 4 F.2d 1018 (2 Cir. 1925) a statement amply confirmed by comparing the list of terms held suggestive with those held merely descriptive in 3 Callmann, Unfair Competition, Trademarks and Monopolies § 71.2 (3d ed.). Another court has observed, somewhat more usefully, that: 18 A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods. 19 Stix Products, Inc. v. United Merchants & Manufacturers Inc., 295 F.Supp. 479, 488 (S.D.N.Y.1968) a formulation deriving from General Shoe Corp. v. Rosen, 111 F.2d 95, 98 (4 Cir. 1940). Also useful is
(2) 'safari' has not. as Judge Lumbard wrote. 1958). This would be a clear example of the use of 'Safari' as a generic term. Season-All Window Corp. Moreover.2d at 317: 20 The English language has a wealth of synonyms and related words with which to describe the qualities which manufacturers may wish to claim for their products and the ingenuity of the public relations profession supplies new words and slogans as they are needed.' 'Hippo Safari' and 'Safari Chukka' were devoted by HW to a purely descriptive use on its boots. that the reason for restricting the protection accorded descriptive terms. 23 In the light of these principles we must proceed to a decision of this case. however.the approach taken by this court in Aluminum Fabricating Co.2d 314 (2 Cir. but (3) in light of the justified finding below that 'Camel Safari. 259 F. it is either "suggestive" or "merely descriptive" and is a valid trademark even if " merely descriptive" since it has become incontestable under the Lanham Act. as held in the Season-All case. We have reached the following conclusions: (1) applied to specific types of clothing 'safari' has become a generic term and 'minisafari' may be used for a smaller brim hat. become a generic term for boots or shoes. it is entitled to registration without proof of secondary meaning. 24 We turn first to an analysis of A&F's trademarks to determine the scope of protection to which they are entitled." We now discuss how we have reached these conclusions. III. What is perhaps less obvious is that a word may have more than one generic use. 25 It is common ground that A&F could not apply 'Safari' as a trademark for an expedition into the African wilderness. 22 It need hardly be added that fanciful or arbitrary terms12 enjoy all the rights accorded to suggestive terms as marks without the need of debating whether the term is "merely descriptive" and with ease of establishing infringement. namely the undesirability of preventing an entrant from using a descriptive term for his product. 21 If a term is suggestive.. the decision of the Patent Office to register a mark without requiring proof of secondary meaning affords a rebuttable presumption that the mark is suggestive or arbitrary or fanciful rather than merely descriptive. 259 F. The word 'Safari' has . HW has a defense against a charge of infringement with respect to these on the basis of "fair use. is much less forceful when the trademark is a suggestive word since. of Pittsburgh v.
supra. and its components. And if HW may advertise a hat of the kind worn on safaris as a safari hat. 26 This outfit. it is entitled to the defense of "fair use" within § 33(b)(4) of the Lanham Act. 15 U. that even if 'Safari' is a valid trademark for boots. Typically these items are khaki-colored. as will appear.. the combination is called the 'Safari suit'. it may also advertise a similar hat with a smaller brim as a minisafari. it is immaterial (save for HW's contention of fraud which is later rejected) whether A&F's use of 'Safari' for boots was suggestive or "merely descriptive. a broad flat-brimmed hat with a single. 'Hippo Safari' and Chukka 'Safari' as names for boots imported from Africa. A&F also was not entitled to an injunction against HW's use of the word in advertising goods of the kind included in the safari outfit as described above. St. § 1115(b)(4). but as terms within the language referring to contemporary American fashion apparel. Regis Publications. were doubtless what Judge Ryan had in mind when he found that "the word 'safari' in connection with wearing apparel is widely used by the general public and people in the trade. the 'Safari jacket'. Since. In contrast. a search of the voluminous exhibits fails to disclose a single example of the use of 'Safari'. A&F's registration of 'Safari' for use on its shoes has become incontestable. on merchandise for which A&F has registered 'Safari' except for the safari outfit and its components as described above. there is no evidence that 'Safari' has become a generic term for boots. see CES Publishing Co. have come to be understood not as having to do with hunting in Africa. a belted bush jacket with patch pockets and a buttoned shoulder loop. large band.C.S. 28 A&F stands on stronger ground with respect to HW's use of 'Camel Safari'. however. although deriving no doubt from the original use of the word and reminiscent of its milieu. the principle against giving trademark protection to a generic term also sustains the denial of an injunction against HW's use of 'Safariland' as a name of a portion of its store devoted at least in part to the sale of clothing as to which the term 'Safari' has become generic. Describing a publication as a "Safariland Newsletter". These terms name the components of the safari outfit well-known to the clothing industry and its customers: the 'Safari hat'. containing bulletins as to safari activity in Africa.become part of a family of generic terms which. v. 27 What has been thus far established suffices to support the dismissal of the complaint with respect to many of the uses of 'Safari' by HW. when the jacket is accompanied by pants. Inc." 29 HW contends. by anyone other than A&F and HW." The record abundantly supports the conclusion that many stores have advertised these items despite A&F's attempts to police its mark. As already indicated. That section offers such a defense even as against marks that have become incontestable when the term charged to be . Although the issue may be somewhat closer. was clearly a generic use which is nonenjoinable.
S. that defendant's use of 'Safari' with respect to boots was made in the context of hunting and traveling expeditions and not as an attempt to garner A&F's good will. and Feathercombs. by focusing on the "use of words. Kiki Undies Corp. The relevant registrations of that sort are Nos. 15 U. absent a contrary showing. is the author of a book published in 1959 entitled "Safari Today The Modern Safari Handbook" and has. v. § 1065(3). 411 F.781 and 703. and No. in both of which we rejected "fair use" defenses. 90 S. 1969).S.2d 698 (1970)." The court properly followed the course sanctioned by this court in Venetianaire Corp. The whole of Registration No. We do not have here a situation similar to those in Venetianaire.751 dates back to July 20. IV. A&P Import Co. 31 We thus hold that the district court was correct in dismissing the complaint. 1960.C. the president of both companies.Ct. With respect to Registration No. cert..2d 1079." 30 Here. Inc. 'Hippo Safari'.S. These facts suffice to establish.279 only a part has become generic14 and cancellation on that ground should be correspondingly limited. § 85. booked persons on safaris as well as purchased safari clothing in Africa for resale in America. or their geographic origin.2d 604 (2 Cir. the parent company of HW.279.2d 1097 (2 Cir. supra. Solo Products Corp. Inc. 1968). v.2d 251 (2 Cir. cancellation may be decreed at any time if the registered mark has become "the common descriptive name of an article or substance.Ed.279 was registered on August 23. 396 U. contrast Kiki Undies Corp.. wherein an assertedly descriptive use was found to have been in a trademark sense. 24 L. 1081-82 (1970).781 thus was properly canceled. 1962). see also § 15(4). since 1961.1." § 14(c). 15 U. Ltd. grounds for cancellation exist. 1054. 1965. p.15 Such partial .C. 15 U. 358. 703.C. ----. 358. Section 37 of the Lanham Act. and an affidavit under § 15(3).S. see 3 Callmann. Although No. 32 We find much greater difficulty in the court's broad invalidation of A&F's trademark registrations. The district court here found the HW's use of 'Camel Safari'. 306 F. 1938. establish that when a term becomes the generic name of the product to which it is applied. §§ 1064(c) and 1065(4). Lee Expeditions. Alexander's Dep't Stores. 429 F. he cannot altogether exclude some kinds of competing uses even when the mark is properly on the register. supra. When a plaintiff has chosen a mark with some descriptive qualities. was filed on October 13. 390 F.. provides authority for the court to cancel those registrations of any party to an action involving a registered mark. v. not on their nature or meaning in the abstract" (emphasis in original). 358. 703.. has been primarily engaged in arranging safaris to Africa since 1959.. Inc. and 'Safari Chukka' as names for various boots imported from Africa constituted "a purely descriptive use to apprise the public of the type of product by referring to its origin and use. 707. Robert Lee.an infringement is not used as a trademark "and is used fairly and in good faith only to describe to users the goods and services of such party. dismissed. as it would doubtless have done if confusion had been intended.13 The cases cited above. Promenade Hosiery Mills. of America v. It is significant that HW did not use 'Safari' alone on its shoes. § 1119.
coupled with an attractive foreign allusion. 768. is 'Bermuda shorts'. portable grills. 703.. included in these registrations. 36 . v. The generic term for A&F's 'safari cloth Bermuda shorts'.C. 352 (E. 652. Cf.S. Three of these registrations. indeed one would suppose this garment to be almost ideally unsuited for the forest or the jungle and there is no evidence that it has entered into the family for which 'Safari' has become a generic adjective. of what a hair brush should be. As such. F. except the uses described above with respect to 703. without supporting proof. axes.279 are the common descriptive names of either current fashion styles or African expeditions.332 and 770. Nos. to "rectify" the register by conforming it to court judgments which often must be framed in something less than an all-or-nothing way.Supp. or association.N.16 There is nothing to suggest that the uses included in these registrations. 703. a claim which. and the rest of the suburban paraphernalia. mental conception. Bart Schwartz Int'l Textiles. firm.. The scheme of the Lanham Act forbids a denial of incontestability to a "merely descriptive" mark which would otherwise have become incontestable under § 14 on the basis of a mere allegation of fraud in obtaining registration.336. § 1064(c)." see § 1(a)(1). Inc. of five years continuous use. 15 U. for example. would deny incontestability to A&F's marks. assuming that the person filing the applications made the required allegation that "no other person. we regard these terms as suggestive rather than "merely descriptive. tents and smoking tobacco does not describe such items.279 appear to have become incontestable by virtue of the filing of affidavits under § 15(3). has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as might be calculated to deceive. 33 There remain eight other registrations and those terms not pared from No. Trailway Van Lines.T.D.2d 665. even if they were the latter.1965). specifically recognized by § 37. Ltd. from swimtrunks and raincoats to belts and scarves. if successful.S. 15 U. except as we arbitrarily apply it. see § 14(c). there is nothing to show that such statements were knowingly false when made. Rather it is a way of conveying to affluent patrons of A&F a romantic notion of high style.C. and the non-generic portions of No. However. these uses fit what was said many years ago in upholding 'Ideal' as a mark for hair brushes: 35 The word "Ideal" has no application to hair brushes. 269 F.Y. 34 We hold also that the registrations which have not become incontestable should not have been canceled. 289 F. 48 CCPA 933 (1961). viz. corporation. § 1051(a)(1). 'Safari' as applied to ice chests. and the word is in no sense indicative or descriptive of the qualities or characteristics or merits of the brush except that it meets the very highest ideal. National Trailways Bus System v.cancellation.C. The same analysis holds for luggage. accords with the rationale by which a court is authorized to cancel a registration. But these allegations seem to have meant no more than that HW believed the terms to be merely descriptive and hence unregistrable. HW alleged that these registrations were procured by fraud.279. to the best of his knowledge and belief. not 'safari'. and that the Patent Office must have been duped into registering them in the first place without proof of secondary meaning." Moreover.098.
per curiam.S. ---. requested us to alter our opinion filed January 16.2d 314. and of (the) registrant's exclusive right to use the mark in commerce. in two respects: one was that footnote 14. Abercrombie & Fitch Company (A& F). describing the scope of cancellation of Trademark Registration No. pp.Y. § 1115(b). indeed. aff'd. that. . Inc. No costs. 302." Aluminum Fabricating Co. it is of no moment. We need not now decide how valuable they may prove to be. The other was that we should not uphold the "fair use" defense.----. 38 So much of the judgment as dismissed the complaint is affirmed. Such uses fit into the category of suggestive marks. In the case of registrations that have become incontestable A&F will have the further benefit accorded by § 33(a). Whether all this will suffice for a victory will depend on the facts in each case.S. 37 (2 Cir.. 703. as HW urges. While HW asserts that "the . 703. 209 F.N..781 and portions of No. 15 U. . PER CURIAM: On Petition of Appellant for Rehearing 39 By petition for rehearing plaintiff-appellant. subject to the limitations contained therein and in § 33(b). 37 In sum. as to Hippo Safari and Camel Safari shoes.S. 316 (2 Cir.). 40 We agree with A&F that footnote 14 was in error in indicating that Safari had become generic with respect to shirts.279 and the New York registration. With respect to the remaining registrations A&F will have the benefits accorded by § 7(b) that registration shall be "prima facie evidence of the validity of the registration . § 1115(a).C. 259 F. p. We called upon defendant-appellee Hunting World.C. Season-All Window Corp. of Pittsburgh v.. (HW) to answer." pp. 358.Hughes v. 1958). This means "not only that the burden of going forward is upon the contestant of the registration but that there is a strong presumption of validity so that the party claiming invalidity has the burden of proof (and) must put something more into the scales than the registrant. and the cause is remanded for the entry of a new judgment consistent with this opinion. Smith Co.. be modified by omitting the word "shirts". 1913). It is even wider of the mark to say that 'Safari Mills' "describes" cotton piece goods.----. 309 (S.D.C. HW admits never having advertised its own shirts as such. 1976. ---. Since the mark has become incontestable.279. HW's answer adduces nothing to show that Safari has become the "common descriptive name" for this type of shirt. on the issue of cancellation. § 1057(b). Alfred H. the mark may now be "merely descriptive. 15 U. 205 F. it suffices here that they should not have been canceled. so much of the judgment as directed cancellation of the registrations is affirmed in part and reversed in part." 15 U. ----. we conclude that cancellation should have been directed only with respect to No.
803. supra.record is clear that the upper garment of the safari suit is referred to interchangeably as a safari bush jacket and as a safari shirt. indeed. Robert Suffern 3 He noted that HW had grown "from the operation of a company which actually organizes safaris and has common officers with that company.Supp.394 (camping tents).' after the terms 'Minisafari Hat' and 'Safariland' a ruling from which HW has not appealed.336 (portable grills). v. and 703. R-8008 (for 'Safari' applied to sporting goods apparel) and the following United States Registrations for 'Safari' not relied on by A&F in its complaint: 768. or at the very least suggestive. Seeberger.S. 358. 777." 327 F. was held to have become generic .' and 'R. 80 (1950). 42 The petition for rehearing is granted to the extent of striking the word "shirts" from fn.036 (axes). Haughton Elevator Co. ---and is otherwise denied.781. e.P. 1 A&F also conducts a substantial mail order business 2 The mark 'Safari Mills' was acquired by assignment from the original registrant.332 (luggage). 770. 41 On the other hand we see no force in A&F's criticisms of the portion of our opinion relating to the fair use defense with respect to Hippo Safari and Camel Safari shoes sufficient to lead us to change the views previously expressed or.. 652. g.279. in addition to Nos. 14 on p. 85 U." the cited pages do not bear this out. 856.180 (insulated ice chests).889 (smoking tobacco) The judgment also enjoined HW from using the letters 'T. at 663 4 This finding that A&F did not establish "secondary meaning" for its marks is not here disputed 5 There were. in which the coined word 'Escalator'.098.Q.531. originally fanciful. 779.M. also plaintiff's New York Registration No. 125. 6 To take a familiar example "Ivory" would be generic when used to describe a product made from the tusks of elephants but arbitrary as applied to soap 7 See. to require further discussion.
jackets. because it informs one that they are deep in the bowl portion . Bassett Co. 505 (S. Miller. 1970). shirts. however. Inc. 376-77 (2 Cir. . coats and hats 15 Similar partial cancellation is the proper remedy with respect to the New York registration 16 .8 See. as a classifying concept. e. When the same legal consequences attach to a common word. see Armstrong Paint & Varnish Works v. 195 (1938) 11 See. . since a coined word cannot first be put to a bizarre use. 252. is usually applied to words invented solely for their use as trademarks.. § 1115(b)(4) 10 Some protection to descriptive marks which had acquired a secondary meaning was given by the law of unfair competition. "Spoon" is not merely descriptive of the article it identifies the article (and therefore) the term is generic. i.S. 59 S. . . v. indeed one might say that only a common word can be so used. 12 As terms of art. e. Revlon. . g. Fletcher.1921) 9 See 15 U. 1948) 14 To wit. United Drug Co. § 37 of the Lanham Act permits cancellation on a counterclaim by a defendant who does not own a registered mark. the use is called "arbitrary. a common word may be used in a fanciful sense. Friedman. On the other hand.D. E. the distinctions between suggestive terms and fanciful or arbitrary terms may seem needlessly artificial.2d 653. Nevertheless. The Trademark Act of 1920 permitted registration of certain descriptive marks which had acquired secondary meaning. 305 U. 83 L.. . 654 (2 Cir. 435 F. v. 191. 260 (1974). It is not. Bayer Co.N. see Drittel v.Ed. 315. See Best & Co. A commentator has illuminated the distinction with an example of the "Deep Bowl Spoon": "Deep Bowl" identifies a significant characteristic of the article. the term "fanciful". "the common descriptive name" of the article (since) the implement is not a deep bowl. pants. It is "merely descriptive" of the goods. W. g. Of course. 154 F." 13 In contrast to the rule under the Trademark Act of 1905.. it is a spoon . 272 F.C. 167 F.S. when it is applied in an unfamiliar way. Nu-Enamel Corp.2d 374. v. e. Actual Confusion as to Incontestability of Descriptive Marks.Ct.. "Deep Bowl" would be generic as to a deep bowl.2d 656 (2 Cir.Y... 1946). 64 Trademark Rep.
Seidel. Chief Judge.... Meyers. Court of Appeals. 211 B............ Civ. Seidel. 209 III........ OPINION OF THE COURT I..In limiting ourselves to these four registrations we are proceeding solely on the basis of the certified copies of trademark registrations filed as exhibits..... A&F may not have been alerted to the desirability of informing the court of the filing of § 15(3) affidavits.... Robert Fiebach........ 2000 Filed December 01...... INC.... Barry and Bright....... VICTORIA'S SECRET STORES.. Esquire Michael F..S. Esquire Cozen & O'Connor The Atrium 1900 Market Street Philadelphia.... Since HW's answer challenged incontestability only on the ground of fraud.......... Esquire (argued) Stephen J........3d 198 (3rd Cir... No.... Gonda.. MAINSTREAM SWIMSUITS.......... In view of our holding that the other five registrations should not have been canceled. 94-cv-07408) District Judge: Honorable Franklin S........ Colucci. The Direct Confusion Claim .. Esquire Seidel.. Nos.. INC... 208 II.... Van Antwerpen Arthur H.. PA 18042 Counsel for Appellants Frank J.. 2000 On Appeal From the United States District Court For the Eastern District of Pennsylvania (D............. Lavorgna & Monaco 1800 Two Penn Center Plaza Philadelphia..* Circuit Judges. Bldg.... Cohen & Hof Eastern Dollar Savings & Trust Co. PA 19102 Norman Seidel.........C.......... VICTORIA'S SECRET CATALOGUE.. 2000) A&H SPORTSWEAR. APPELLANTS V... PA 19103 Counsel for Appellees Before: Becker. INC.... 99-1734 and 99-1735 U. Esquire Colucci & Umans 101 East 52nd Street Manhattan Tower New York.. The Test for Directly Competing Goods .... The Lapp Test and the District Court's Opinion .. this is immaterial 237 F.. INC. Procedural History .... Esquire (argued) Richard P...... NY 10022 H. Facts . Snyder.. Third Circuit Argued: April 26...... Esquire Laub.. 210 A.... Jacobson...... 212 . 8 Centre Square Easton..
........................... The Reverse Confusion Claim ................ 221 2. Sound................. Product Similarity .......... 226 H...... 224 D................ 227 ..................... 224 3.. 217 2................................................. The PTO's Rejection of Victoria's Secret's Application ............. Actual Confusion . The Intent of the Defendant .... Sight....... Review of the District Court's Analysis ...................................................... 225 E............... 218 3.... Meaning .... 225 G. 224 C...C.... 216 1...... 225 F............................. Strength of the Marks ........................... Commercial Strength of the Mark .. 227 V...................... 227 A... Summary ................................. 220 4.......... 216 A.............................................. Combining the Factors ....... 215 IV................................................................................. Distinctiveness or Conceptual Strength ............... Similarity of the Marks ........ The Housemarks and the Disclaimer ............. Introduction .... Marketing and Advertising Channels ............................... Sophistication of Consumers ... 221 1.............. Summary ...... The District Court's Methodology ... 221 B.....................
........... 230 a......................................................................... Factors Relating to Actual Confusion .......... The Intent of the Defendant ............................................................... Summary of the Test for Reverse Confusion .................. 229 2............................... 236 3............ ........... 234 C. 234 7.... Introduction ............... 236 1........... 229 3................................................ 237 E.......... Strength of the Marks ..... 237 VI......B............. 233 6.... Similarity of the Marks ................ 238 Becker........................................ 230 b....... Conclusion................ Other Relevant Facts .................... The Factors that are the Same ...... 236 2......... 234 D. 231 4...... 236 4...... Intent ............ Strength of the Marks ............................... Guidance for Remand ............... Chief Judge.................... Distinctiveness or Conceptual Strength ........ 232 5.. Summary ................................. The District Court's Opinion. Similarity of the Marks ................................... The Test for Reverse Confusion ......... 229 1....... Commercial Strength ......
In employing its test. while the competitive proximity of the products and the strength of the Miraclesuit mark weighed in favor of A&H. before us for the second time. but we have never decided what factors should be considered in the case of directly competing goods. A&H argued that Victoria's Secret should be enjoined from using The Miracle Bra mark for swimwear. the District Court concluded that A&H had failed to show by a preponderance of the evidence that Victoria's Secret's The Miracle Bra swimwear mark created a likelihood of either direct or reverse confusion with the Miraclesuit product. and that Victoria's Secret uses a disclaimer with its mark that explicitly states that The Miracle Bra swimwear is unrelated to Miraclesuit or A& H. this Court established a tenfactor test (the "Lapp" test) to determine the likelihood of confusion for direct confusion claims between goods that do not directly compete in the same market. which A&H registered first. denied injunctive relief.2d 460. A&H filed suit in the District Court for the Eastern District of Pennsylvania claiming that The Miracle Bra swimwear mark violates the Lanham Act because it is confusingly similar to the Miraclesuit swimwear mark. Notwithstanding that likelihood of confusion is an issue of fact subject to deferential review. The court also concluded that Victoria's Secret's intent. on the assumption that the disclaimer would continue to be used in an effective manner. 463 (3d Cir. Following an appeal to this Court that clarified that likelihood of confusion (instead of possibility of confusion) was the correct standard. is whether a typical consumer is likely to confuse MIRACLESUIT swimwear with THE MIRACLE BRA swimwear. (2) consumers are likely to think that Miraclesuit is a product of Victoria's Secret (the reverse confusion claim). Taking all this into account. which manufactures ten percent of all swimsuits made in the United States. and the sophistication of the consumers weighed in favor of Victoria's Secret. the paucity of credible incidents of actual confusion. in the alternative. the lingerie leviathan that recently entered the swimwear market.. The District Court therefore fashioned its own multi-factored test that approximates. v.1 The former is a product of Plaintiff A&H Sportswear Company ("A&H"). A&H contends that: (1) consumers are likely to wrongly associate The Miracle Bra with A&H (the direct confusion claim2). 1983). Finding a "possibility of confusion. and. Inc. the District Court acknowledged that the most important factor was the similarity of the marks. or. Lapp." the District Court granted relief to A&H. 2 During an extensive bench trial. . the Lapp test. 4 The District Court placed particular emphasis on the fact that the The Miracle Bra mark typically appears alongside Victoria's Secret's housemark (the mark of the manufacturer). The latter is a product of Defendant Victoria's Secret. the District Court found no likelihood of direct confusion between the marks.1 The critical question in this trademark infringement case. and determined that their overall commercial impressions were not similar. the District Court's disposition of the direct confusion claim has given rise to a number of important issues in this appeal. 3 In Interpace Corp. but does not completely match. rejected A&H's direct confusion claim. 721 F.
Fisons Horticulture. we conclude that the factors we have developed in the noncompeting goods context are helpful tools and should be used to aid in the determination of the likelihood of confusion in other cases. regardless of the test to be used. 6 Alternatively.5 A&H first contends that multi-factored tests. the District Court clearly erred in resting its finding that there was no likelihood of confusion on Victoria Secret's disclaimer. Therefore. We disagree. Vigoro Industries. and inconsistent with the method laid out in our leading reverse confusion case. the District Court properly weighed the disclaimer. 1994). A&H challenges the District Court's treatment as inadequate.3d 466 (3d Cir. A&H asserts that it constitutes legal error even to consider such a disclaimer. seeing no reason to forbid courts from considering this kind of distinguishing feature.finding nor its balancing of factors warrants reversal.. and used the Lapp factors to assess the likelihood of such confusion. In fact. 30 F. 8 As for the reverse confusion claim. and the District Court did not err in taking other considerations into account. as here. although the District Court arguably used a creative test. 7 A&H also argues that. one legal error that we do find weighs in Victoria's Secret's favor: The District Court erred by relying almost entirely on its classification of A&H's mark as "suggestive to arbitrary" in its determination that Miraclesuit was a conceptually strong mark deserving of a high degree of protection. Though a court need not look beyond the marks when goods are directly competing and the marks virtually identical. Inc. the PTO examining attorney did not consider all the relevant factors. we have developed the ten-factor Lapp test only as a guide. his determination need not be given weight. and hence we will affirm its judgment on the direct confusion claim. Although all of the factors can be useful. First. the Lanham Act does not require that they be followed precisely so long as the relevant comparisons suggested by the test are made. In this case. v. are inapplicable to competing goods. We reject this argument for two reasons. we conclude that neither the District Court's fact. Our jurisprudence does not preclude this result. Fisons adopted the doctrine of reverse confusion. in one way or another. Where. like the one used by the District Court. A&H could not show prejudice. Inc. It argues that by not considering certain factors that would clearly have weighed in favor of A&H. but we disagree. even if the Lapp test were mandatory. with a few minor . the District Court distorted the likelihood of confusion standard. A&H submits that the District Court erred as a matter of law by not following precisely the ten-factor Lapp test that we have previously developed to determine likelihood of confusion. and lacked significant information that was available to the District Court. into the court's analysis. and that with directly competing goods a court should examine only the similarity of the marks. More importantly. In sum. We also reject A&H's assertion that the District Court erred in failing to give weight to the refusal of a Patent and Trademark Office ("PTO") examining attorney to register The Miracle Bra mark for swimwear because of its similarity to Miraclesuit. all of the Lapp factors are integrated.
step inquiry. Victoria's Secret released The Miracle Bra. and has received the equivalent of $1. Its material purportedly smooths out middle body bulges and works with a flattering design to confuse the eye such that the wearer is advised.. shaping or underwire bras. come in both single pieces and bikinis. Victoria's Secret filed an application to register it's the Miracle Bra trademark. the nation's premier lingerie seller. on two occasions.5 million of advertising in "free publicity. ultimately spending over $13 million on The Miracle Bra products.modifications. Facts3 10 The Miraclesuit bathing suit is made by A&H. 11 Miraclesuits.4 In 1993. on the record before us. that she will "[l]ook ten pounds lighter in 10 seconds[:] The ten seconds it takes to slip it on. 13 . a division of Mainstream Swimsuits. I." i. we are persuaded that the District Court erred in fashioning a two. 9 After reviewing Fisons and our precedent.up bra. 12 While A&H is busy selling skinny waists and midriffs. The Miraclesuit is distributed by Swim Shaper. in advertising and in tags that generally accompany the product. The District Court found that A&H has spent over $1. unshaped bras. Victoria's Secret. has focused on instant enlargements of the bust. The Miraclesuit is advertised as having a slimming effect on the wearer without using uncomfortable girdle-like binds. engaging the Lapp factors only after an initial assessment that the disparity in commercial strength reached a high threshold. and the general press." Miraclesuits also include tags indicating that they are Swim Shaper products. We will demonstrate that the application of some of the factors changes in the reverse confusion context. which manufactures ten percent of all swimwear in the United States. and unleashed an avalanche of advertising and publicity.e. publicity in trade magazines. and sales of The Miracle Bra products have topped $140 million since they were first introduced. or simple. The advertising and publicity campaign has been a success.2 million to advertise the Miraclesuit in magazines and trade papers. the judgment must be vacated with respect to the reverse confusion claim and the case remanded for further proceedings. and in failing to consider the Lapp factors as they apply to reverse confusion claims. and. Because the threshold degree of commercial disparity that the court believed was required was not met. which sell for between $50 and $100. and Miraclesuits constitute approximately ten percent of all of A&H's sales. the court did not even examine whether there existed a likelihood of confusion. The District Court interpreted our precedents to require a two-step inquiry. They are typically sold to trade buyers for department store sales and national mail-order catalogues. The campaign succeeded. A&H received a trademark registration for the mark Miraclesuit in the fall of 1992. Many are equipped with push-up bras. they were featured in the Victoria's Secret catalogue. consumer columns. a padded push. and we conclude that.
Although the District Court granted a stay of its order pending appeal. Based upon this finding. Victoria's Secret Stores. . and The Miracle Bra and Victoria's Secret tags are prominently featured on all swimwear.D. Supp. 926 F. Supp. Victoria's Secret has continued to use the disclaimer voluntarily and has represented to us at oral argument that it will continue to do so regardless of the outcome of this litigation. the District Court found a "possibility of confusion" with A&H's Miraclesuit swimwear. Victoria's Secret moved The Miracle Bra mark into swimwear.. and (2) the product lines overlap. See id. which had led it to the conclusion that The Miracle Bra did not threaten to infringe on other trademarks. v. The cost of The Miracle Bra swimwear varies. advertising. and sales of The Miracle Bra: "The Miracle Bra Swimwear Collection is exclusive to Victoria's Secret and is not associated with Miraclesuit by Swimshaper.. and bikinis. Procedural History 15 In December 1994. bathing suits. Victoria's Secret's trademark application for The Miracle Bra mark on lingerie was approved.In 1994. as a result of this litigation. Victoria's Secret applied to the PTO for a trademark for The Miracle Bra for swimsuits. Because it had previously conducted a search for The Miracle Bra as applied to lingerie. Inc. the PTO examining attorney denied Victoria's Secret's application due to its similarity to Miraclesuit because he determined that: (1)"Miracle" was the dominant feature of each mark. See id. 1457. The court found that Victoria's Secret's use of The Miracle Bra on its lingerie created no likelihood of confusion with A&H's Miraclesuit. and unjust enrichment. II. 1482 (E.D. alleging direct and reverse trademark infringement. Victoria's Secret has committed itself to using the following disclaimer with all promotion. it ordered Victoria's Secret not to use The Miracle Bra tag with swimwear unless it was accompanied by the disclaimer: "The Miracle Bra (TM) swimwear collection is exclusive to Victoria's Secret and not associated with Miraclesuit (R) by Swim Shaper (R). Later that year. Victoria's Secret had not conducted a separate trademark search of The Miracle Bra trademark as it applied to swimwear. This product also succeeded: The total sales of The Miracle Bra swimsuits reached $28 million by summer 1997. However. 1996) ("A&H I"). unfair competition. but it is typically in the neighborhood of $70. The last critical fact regarding this swimwear is that. However. 1997) ("A&H II"). The District Court also ordered that royalties on past and future sales of The Miracle Bra swimsuits be paid to A&H. and The Miracle Bra swimsuit and The Miracle Bra bikini started appearing in Victoria's Secret catalogues. Both parties appealed. (The Miracle Bra lingerie and swimwear are sold only in Victoria's Secret stores and catalogues. The District Court held a bench trial on liability in the fall of 1995. after this litigation began. at 1269. Pa. Inc. 1264 (E.). The denial was not appealed." A&H Sportswear Co. 967 F. 1233." 14 In 1995. Victoria's Secret Stores. and a damages and relief trial in 1996. Pa. See A&H Sportswear Co. A&H filed a complaint against Victoria's Secret. dilution. at 1483. with regard to Victoria's Secret's use of The Miracle Bra mark on swimwear. v.
[v. 166 F. at 202 (quoting Interpace Corp. Inc. Likelihood of confusion is a factual question. the phenomenon typifying reverse confusion. 89 n. we have said that "where the trademark owner and the alleged infringer deal in competing goods or services. Scott's Liquid Gold. See Warner-Lambert Co. or must. whether the likelihood of confusion analysis differs for competing.. 57 F. and also what standards apply to its determination. 1983)). The ten. 18 Id. as is the situation with [Miraclesuit and The Miracle Bra swimwear]. on remand. Inc.. Inc. v. We rejected that standard. is different than that applied when the goods are not competing. or senior. user (A&H).3d at 202-03.. See A&H Sportswear Co. 589 F.. namely. Inc.16 During the prior appeal. Victoria's Secret Stores. 2d 155. Supp. We also suggested that the District Court should. 204 F. Victoria's Secret Stores. Lapp. be considered by the District Court in reaching that conclusion. derived from Scott Paper Co. The bulk of the en banc opinion is devoted to explaining the rejection of the "possibility of confusion" standard. v.] 1229 [(3d Cir. Breathasure. See A&H Sportswear Inc. See A&H III. However. 2000). 1999) ("A&H III"). 462 (3d Cir. but legal principles govern what evidence may. consider whether this case implicated the reverse confusion doctrine. but we give plenary review to its legal conclusions. 19 Following our mandate.factor test for likelihood of confusion between marks that are not competing. III. as opposed to noncompeting. We review the District Court's factual determinations for clear error. noting the possibility that the later-entering mark of the junior user-. we also commented on what has become a central question in the current appeal. v.D. more powerful company (Victoria's Secret)--might be overwhelming the mark of the prior..2d[1225. 1978)]. A&H appeals. 1999) ("A&H IV").2d 460. is not required when the goods directly compete. 206 (3d Cir. Inc. and remanded the case to the District Court to apply the traditional "likelihood of confusion" standard to the swimsuits' marks.]. the District Court applied the "likelihood of confusion" test and found that there was no likelihood of direct confusion and no grounds for consideration of reverse confusion. 166 F. Pa. The Direct Confusion Claim 20 .in this case the larger. v. It therefore denied the request for injunctive relief.3d 87.3d 197. the court need rarely look beyond the mark itself. In fact.1 (3d Cir. we heard the case en banc to consider the viability of the "possibility of confusion" standard originally used by the District Court. see id. 721 F. We review the denial of the request for injunctive relief for abuse of discretion. goods: 17 [T]he standard to be applied when goods that are the subject of a trademark infringement claim are directly competing. 178-79 (E.
Inc. 834 F. 1992) (quotation marks omitted). 26 (5) the intent of the defendant in adopting the mark. the questions in this case involve the delineation and application of standards for the evaluation of likelihood of confusion. 166 F. and that it is a valid and legally protectable mark.S.C.. and (3) the defendant's use of the mark to identify goods or services causes a likelihood of confusion. For noncompeting goods. we stated that when the goods involved in a trademark infringement action directly compete with each other.C. See A&H III. The Lapp Test and the District Court's Opinion 22 A likelihood of confusion exists when "consumers viewing the mark would probably assume that the product or service it represents is associated with the source of a different product or service identified by a similar mark. v. at 462. Inc. 721 F. 2000). Servs. (2) it owns the mark. S 1125(a)(1)(A). Commerce Ins. See Commerce Nat'l Ins. 27 (6) the evidence of actual confusion. The plaintiff bears the burden of proof.5 To prove either form of Lanham Act violation. 15 U. 28 . 1983)." Dranoff-Perlstein Assocs. and federal unfair competition. It is undisputed that A&H owns Miraclesuit. Corp.2d 368.3d at 202. Sklar. v. Id. Inc.. Barr Labs. 214 F. 15 U. a plaintiff must demonstrate that (1) it has a valid and legally protectable mark. Lapp.S. See American Home Prods. S 1114. 24 (2) the strength of the owner's mark..3d 432.. a court "need rarely look beyond the mark itself " to determine the likelihood of confusion. 862 (3d Cir. 1987). we developed a nonexhaustive list of factors to consider in determining whether there is a likelihood of confusion between marks: 23 (1) the degree of similarity between the owner's mark and the alleged infringing mark. 21 A. (4) the length of time the defendant has used the mark without evidence of actual confusion arising. 25 (3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase. In Interpace Corp..We measure federal trademark infringement.2d 460 (3d Cir. by identical standards. Agency. 371 (3d Cir. 437 (3d Cir.2d 852. v. Therefore. 967 F. v. Inc.
. 38 (5) sophistication of consumers. though not competing." A&H IV. but instead developed its own test. 1229 (3d Cir. Scott's Liquid Gold. at 463 (citing Scott Paper Co. Inc. 31 (10) other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant's market. 36 (3) similarity of the products and the degree to which they directly compete with each other. Supp. drawing on many of the same factors: 34 (1) strength of the plaintiff's mark. 35 (2) similarity between the marks. Throughout the opinion we will refer to these factors as the "Lapp" factors. 2d at 163. or that he is likely to expand into that market. 589 F. 29 (8) the extent to which the targets of the parties' sales efforts are the same. 57 F.(7) whether the goods. v. It chose not to use the Lapp test.2d 1225. are marketed through the same channels of trade and advertised through the same media. 39 . 37 (4) marketing or advertising channels used. 1978)). 30 (9) the relationship of the goods in the minds of consumers because of the similarity of function. 32 Id. 33 The District Court recognized that we have not "explicitly elucidated what kind of factors should be considered in the case of directly competing goods.
counsels that we clarify this area of law. may be an exercise in unjustified optimism. the goods are competing. District courts within this circuit. First. and the senior and junior user are already in each other's markets.g. 1995).. Barr e-National.. The Test for Directly Competing Goods 42 We have not previously settled upon a method that district courts should use to examine whether there exists a likelihood of confusion between directly competing goods. v. This genesis is apparent in the substance of the test: factor (7) directs a court to look at the markets of the goods "though not competing". Second. Third. Uncertainty on this point in the district courts within the circuit.2d 460. Inc." Interpace Corp. the court "need rarely look beyond the mark itself. and 40 (7) incidents of actual confusion.6 43 The multi-factored test rescribed above was developed to determine likelihood of confusion for noncompeting goods. factor (9) directs that the court examine the "similarity of function". See Versa Prods. B. a district court need only examine the similarity of the marks. 1983). or that he is likely to expand into that market. as demonstrated in the margin.3d 189. 202 (3d Cir. 721 F.) Ltd. Co. 462 (3d Cir. the Lapp factors it omitted would have tipped the balance in favor of finding a likelihood of confusion. A&H contends that the District Court erred in three ways in applying these factors. Lapp. it submits that inasmuch as the District Court fashioned its own test.(6) defendant's intent in selecting the mark. Bifold Co. despite the test's etiology.. 44 Nonetheless. cases are often not easy. their function is the same. as well as other appellate courts. 50 F. Inc. and factor (10) directs that the court look at "other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant's market. (Mfg.. v." These factors are not apposite for directly competing goods: By definition. 41 Id. e. See. and courts will frequently need help in sorting out the likelihood of confusion. for competing goods. the raison d'etre of the Lapp factors and the purpose of their development was to aid in the navigation of the difficult course of determining a "likelihood of confusion. it argues that when goods are directly competing. . it contends that on any test the similarity of the marks creates a likelihood of confusion. Lapp's suggestion that. whether or not they directly compete. have found that consideration of the Lapp factors (or their analogs from other circuits) can be quite useful for determining likelihood of confusion even when the goods compete directly." A district court should not be foreclosed from using any factors that it deems helpful in analyzing whether a likelihood of confusion exists between given products.
2d 358 (6th Cir. and compare it against the challenged mark. which look to the different functions of the products and the different target customers.. 599 F. applying Lapp factors to make this initial determination-. 1988). Inc. See id. see id. Inc. at 926-27.. in Lapp we stated that 48 [w]here the trademark owner and the alleged infringer deal in competing goods or services. 742 (D.N.factors (7). 735. v. Ltd. and (10) of the Lapp test must be adapted to make them applicable whether the products directly compete or not. 747 F. v. 841 F. at 1266.7 46 The above observations lead us to conclude that the Lapp factors should be used both for competing and for noncompeting goods. Federated Dep't Stores.J. rather than force courts first to inquire as to whether or not the goods are directly competitive simply for the purpose of determining if those factors apply--and. and (9). 45 Further. we acknowledge that we have at times suggested that the method for comparing competing goods is different from that for noncompeting goods. For instance. whether goods are or are not directly competing. in A&H I. determine whether it is inherently distinctive or has acquired sufficient secondary meaning to make it distinctive. for example. As for those factors that specifically refer to noncompeting goods.Inc. Furthermore. in the first instance. 251 F. we did not look beyond the marks themselves in upholding a trial court's determination that the marks "Dickie Davis" and "Dickie's" for boys' clothing were confusingly similar. and then observed that much of the same analysis could be used to determine whether The Miracle Bra swimsuit and the Miraclesuit shared the same market. (8). in Induct-O-Matic Corp. See id. Sleekcraft Boats. See id. 1979). Similarly. This inquiry approximates Lapp factors (8) and (9).2d 924 (3d Cir. at 348. This makes the plaintiff's proposed prohibition on the examination of evidence beyond the marks themselves somewhat illusory. In those cases the court will generally examine the registered mark.. In Williamson-Dickie Manufacturing Co. the court need rarely look beyond the mark itself. the Court of Appeals for the Ninth Circuit concluded that two lines of recreational boats were not directly competitive because they were marketed to different consumers and were designed for different uses. we recognize that many of the Lapp factors that are specifically applicable only to noncompeting goods are often used by courts to determine. and products. factors which approximate Lapp factors (7). in AMF Inc. Inductotherm Corp. v.2d 341 (9th Cir. 1991). 47 In holding that the Lapp test is to be employed when examining both competing and noncompeting goods.2d 486. the District Court first applied the Lapp test in analyzing A&H's infringement claim regarding the use of The Miracle Bra mark on lingerie. 1958).. v. (9). . presumably. Barr Labs. at 362. 490 (2d Cir. Supp. 773 F. Davis Manufacturing Co. the court affirmed a district court's conclusion that the parties were direct competitors based on an examination of the similarity of the parties' customer base. v. Indeed. geographical trading area. Banff.. 1984). we believe that.
In each of these cases.3d at 202 (holding that in directly competing goods cases. to impose the restrictive rule proposed by A&H. are directly competing . the factor regarding the similarity of marks may increase in importance.e. See. the multifactored test "is not required"). any implication in our prior cases that courts are foreclosed from looking beyond mark similarity for competing goods would have been dictum. 51 30 F. . Lapp.. 54 We think that this inference is a sound one. for there appears to be no reason. At all events. . This proposition is not only unremarkable.2d at 462.. Indeed. .g.3d at 202. 53 A&H urges us to take the quoted statement from A&H III to mean that a district court should not consider any factors at all beyond the similarity of the marks themselves.49 721 F. but it does not eliminate the other factors entirely. Finally. if it so chooses. statutory or otherwise. . is different than that applied when the goods are not competing. Additionally. we stated that "the standard to be applied when goods . in Fisons.2d at 462 (emphasis added). rescribed in our prior opinion in this case ("the court need rarely look beyond the mark itself ") presumes that a court might sometimes need to look beyond the mark. we noted that the 50 showing of proof plaintiff must make for [likelihood of confusion] depends on whether the goods or services offered by the trademark owner and the alleged infringer are in direct competition . . it flows naturally from the Lapp test. We have certainly never held that a court may not look beyond the marks themselves to determine likelihood of confusion. the similarity of the marks is only one of a number of factors the court must examine to determine likelihood of confusion. the cases relied upon by A&H do no more than suggest that the Lapp inquiry may be unnecessary in some directly competing goods cases. 721 F. A&H III." 166 F. However. we arguably implied that when the goods are competing. we read our prior opinions on this subject to counsel only that a district court may. Where the goods or services are not competing. The quote from Lapp itself. 166 F. the similarity of the marks is the only relevant factor. . . we believe that the word "standard" is different from the word "test. . in A&H III. which considers the competition and potential competition of the products in the marketplace. because we have never before been confronted with this question. e. examine only mark similarity for directly competing goods.3d at 472-73. 52 Nonetheless. i." The better reading of this statement is the literal one: The "standard" for determining when marks are likely to be confused is different when the marks directly compete.
61 (4) the length of time the defendant has used the mark without evidence of actual confusion arising. Eighth. developed for noncompetitive goods. likelihood of confusion for both competing and noncompeting goods should be tested with reference to the following: 58 (1) the degree of similarity between the owner's mark and the alleged infringing mark. not hurdles. in the competitive goods arena. v. 1988). Jet. 773 F. the court often need not apply each and every factor. Dr. and the marks are clearly very similar. Here. the degree of confusing similarity of the marks is not clear. the factors are meant to be tools.2d 187. when goods are directly competing. Inc.3d 419.S. 421-22 (6th Cir.3d 1394. In fact our precedents suggest the opposite. Moreover.2d 486... L. 1999). accords with the approaches of the Second.3d 1093. Supp. v. 59 (2) the strength of the owner's mark. .8 At all events. v.A. See Banff.. Duluth News-Tribune v. 56 As explained above. 57 To summarize. the Lapp factors should be employed to test for likelihood of confusion. On the other hand.. 490 (2d Cir. both precedent and common sense counsel that the similarity of the marks takes on great prominence. 109 F. Inc. Federated Dep't Stores. 84 F. Inc. 1996). 1096 (8th Cir. 841 F. 195 (3d Cir. 1990) ("[v]ery little analysis" was necessary in a case where a splinter group of a larger organization continued to use the organization's collective mark). 1997). which also have approved using multi-factored tests. Sewage Aeration Sys.. Sixth.. 165 F. we do not hold that a District Court must use the factors.. Ltd. when. a district judge should feel free to consider only the similarity of the marks themselves. Therefore.55 Our conclusion that the Lapp factors may be used to determine the likelihood of confusion in cases of directly competing goods.920 F. and Ninth Circuits. see Barre-National. we hold that whether or not the goods directly compete. as in this case. e. 1404 (9th Cir. Penguin Books U. at 742. at least when the marks are not identical. Independent Opticians of Am.g. Opticians Ass'n of Am. the District Court did not err in choosing to look beyond the marks themselves. Mesabi Publ'g Co. 60 (3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase. If products are directly competing. Inc. v. a court can turn to the other factors. Seuss Enters..P. See..
C. the test used by the District Court is functionally the same as the Lapp test. 64 (7) whether the goods. the similarity of function. the different factors may properly be accorded different weights depending on the particular factual setting. A district court should utilize the factors that seem appropriate to a given situation. or other factors." and Lapp factor (8). A comparison of these factor lists reveals that the ostensibly missing Lapp factors appear to be incorporated into the District Court's test. competing or not competing. Not all factors will be relevant in all cases. the Lapp test is a qualitative inquiry. whether because of the near-identity of the products. and that the "missing" factors would have favored A&H. 67 (10) other facts suggesting that the consuming public might expect the prior owner to manufacture both products. which considers the "similarity of the . 68 As we stress further below. further. However. "the relationship of the goods in the minds of the consumers because of the similarity of function. 65 (8) the extent to which the targets of the parties' sales efforts are the same. 66 (9) the relationship of the goods in the minds of consumers. 63 (6) the evidence of actual confusion.62 (5) the intent of the defendant in adopting the mark. It therefore contends that the court erred as a matter of law in fashioning its own test. are marketed through the same channels of trade and advertised through the same media. Lapp factor (9). or expect the prior owner to manufacture a product in the defendant's market. it should have considered all of the Lapp factors." are subsumed in the court's factor (3). "the extent to which the targets of the parties' sales efforts are the same. The District Court's Methodology 69 A&H argues in the alternative that inasmuch as the District Court used a multi-factored test. or expect that the prior owner is likely to expand into the defendant's market.
" within the District Court's factor (7). However. 70 A&H essentially argues that. 30 F. but also unnecessary. a court is free to consider other relevant factors in determining whether a likelihood of confusion exists. the court did not err in its use of the factors." Lapp factor (4).specific basis. but accurately understood the role of the factors: 72 No single factor is dispositive. we will review the court's decision on its own terms. they are simply a guide to help determine whether confusion would be likely between the use of two contested trademarks on competing products. for the sake of consistency. 73 A&H IV. would have been divided into at least two factors. Review of the District Court's Analysis 74 Because we hold that the District Court's methodology was functionally similar to the Lapp test. See Fisons. Instead. the court's factor (3). the District Court covered all the ground covered by the Lapp factors and did so with care. thus leading to a different outcome. IV. but rather that they are tools to guide a qualitative decision. i. "evidence of actual confusion. B. In the future.. "other facts suggesting that the consuming public might expect the prior owner to manufacture both products. ." Lapp factor (10). because the similarity of the goods and their competitive relationship was accounted for in the court's factor (3)." is unmentioned. and a finding of a likelihood of confusion does not require a positive finding on a majority of these factors. we have repeatedly insisted that the Lapp factors are not to be mechanically tallied. had the Lapp test been applied as written."). rather than counting in its favor a single time. or expect that the prior owner is likely to expand into the defendant's market.11 ("The weight given to each factor in the overall picture. 57 F.e. "incidents of actual confusion. supra. using the multi-factored test that the District Court created. 2d at 164 (citations omitted). In addition to the listed factors. Therefore. however.products and the degree to which they directly compete with each other. district courts should employ the formulation of the test for confusion as set forth in Lapp and in Part III. must be done on an individual fact.3d at 476 n. Supp. as well as its weighing for plaintiff or defendant. "the length of time the defendant has used the mark without evidence of actual confusion" is subsumed along with factor (6). for instance. a greater absolute number of factors would have been decided in its favor. 71 The District Court did not engage in a simplistic quantitative comparison. Although it might promote clarity always to use the same factors in the same order. or expect the prior owner to manufacture a product in the defendant's market. each of which would have weighed in its favor. we conclude.
57 F. It is the overall physical appearance of defendant's trade dress which is critical"). v. Marks "are confusingly similar if ordinary consumers would likely conclude that [the two products] share a common source. The test for such similarity is" `whether the labels create the same overall impression when viewed separately. 76 The District Court acknowledged this principle. Sight. Inc. v.2d 486. The court also properly noted that in previous cases."). affiliation. and meaning of the competing marks and concluded that. 841 F. 3 J. 17 U. it noted that although they share the term MIRACLE. connection or sponsorship. purely on the aesthetic level. 851 (3d Cir. Considering the sound of the marks. Supp. Miraclesuit bleeds two words together while The Miracle Bra consists of three discrete words. 1. a closer phonetic similarity was often present. in the trade dress context. (citing Bell Publ'g Corp. and the other aspects less weight." Id. Trademarks and Unfair Competition S 23:59. the court looked at the sight. Co. Meaning 77 The District Court closely examined the sight. However. confusion is likely. Supp. v. Applying these principles.. Similarity of the Marks 75 The single most important factor in determining likelihood of confusion is mark similarity... 1637 (E.2d 446. 2000) ("The law does not require that the reasonably prudent purchaser keep a handy file of photographs and labels which he or she must pull out to compare with the label of every product purchased. 57 F. the marks alone are "somewhat distinct. In short. Moreover. 1065 (3d Cir. Bantam Doubleday Dell Publ'g Group. the general rule that marks should be viewed in their entirety does not undermine the common-sense precept that the more forceful and distinctive aspects of a mark should be given more weight. J. (quoting Banff.2d 1634. Bolar Pharm.. there are different numbers of syllables. and meaning of the marks. v. Inc.A. We agree. 1990) ("Dell" and "Bell")."). 2d at 167-68. Pa. 492 (2d Cir. Sound. Inc. and considered the effect of the housemarks and Victoria's Secret's disclaimer.P. 2d at 167. sound.Q. the District Court concluded that the two marks sound different. See id. 1988)). 1935) ("swavelle" and "swavel")). recognizing that "side-by-side comparison of the conflicting marks is improper if that is not the way buyers see the products in the market. and the last syllable of each is different. Federated Dep't Stores. v.S. 747 F.D. 1991) ("When the dominant portions of the two marks are the same. Inc. 1984) (affirming a district court's conclusion that." A&H IV.A. Pocono Rubber Cloth Co. 930 F. Livingston. Side-by-side comparison of the two marks is not the proper method for analysis when the products are not usually sold in such a fashion. McCarthy." A&H IV.3d at 476. sound. Ltd. "[r]ealistically.2d 844. 448 (3d Cir. an effort must be made to move into the mind of the roving consumer. 79 F. where courts had found a likelihood of confusion based on sound. the likelihood of confusion cannot be assessed by a side-by-side comparison of the plaintiff's and defendant's products.2d 1056. .' " Id. 30 F. at 23-162 (4th ed. See Fisons. See Ciba-Geigy Corp. See Country Floors. Instead. Partnership of Gepner and Ford.
less similar-sounding marks had been found to be confusingly similar. The court also determined that the meaning of the two marks was slightly different.2d 924. Davis Manufacturing Co. See A&H III. Comparing "Country Tiles" and "Country Floors. Supp."). 2d at 167.A.M. It grounds this analysis on Country Floors. sound and meaning. 81 A&H IV. while the Miraclesuit has sometimes been advertised with the initial letter M capitalized and the rest of the mark in lower-case letters in italicized script or as one word with both the M and S capitalized. in which we noted that it was relevant for purposes of comparison whether.. as in Williamson-Dickie Manufacturing Co. Partnership of Gepner and Ford." A&H IV.78 The District Court recognized that other. 251 F.3d at 195 ("[D]escriptive terms (such as `bra' and `suit') must be considered in assessing infringement. because the dominant portion of each mark is the word "Miracle. the PTO required certain descriptive elements of the mark to be disclaimed. Supp. "the Miraclesuit mark and The Miracle Bra mark are somewhat distinct in sight. 57 F. the). 1991). It begins by asserting that. Supp. 57 F.B alone in upper capital letters. the marks must be deemed confusingly similar. 1958). 930 F. which was upheld by the en banc court. 79 Turning to the visual difference. the District Court concluded that. This conclusion accords with the District Court's finding in A&H I.2. 2d at 168. v. where the court upheld the trial court's determination that the marks "Dickie Davis" and "Dickie's" were confusingly similar.2d 1056 (3d Cir. 926-27 (3d Cir. suit. it concluded that these cases could be distinguished because the presentations of the Miraclesuit and The Miracle Bra marks were sufficiently different to create an overall impression that was not confusingly similar. A&H challenges this analysis.67 (stating that the term "bra" distinguishes the Victoria's Secret product because it "identifies the particular feature of the garment where the `miracle' is manifested"). 166 F. 82 Taking all of these elements into account." and the other words in each mark are generic (bra. without consideration of the role of the housemark and the disclaimer. "the use of the word `Country' by the . rather than on the entire suit. especially in light of Victoria's Secret's disclaimer and the use of the housemarks. Inc. as the descriptive word "bra" focused attention on the brassiere portion of the Victoria's Secret product. T. as discussed infra Section IV. the court noted that Miraclesuit is often accompanied by the "Look ten pounds lighter in ten seconds!" slogan. See A&H IV. swimwear. Moreover. v. 57 F. However." we held that because "floors" and "tiles" were discounted as generic in the application to the PTO. the court observed that: 80 The Miracle Bra is presented in either all capital block letters or in small capital letters with the letters. in registering two marks. in various incarnations. 2d at 166.
Not only is the dominant portion of each mark "MIRACLE. 1205 (1st Cir. 718 F.9 2. we noted the relevance of the fact that both The Miracle Bra and Miraclesuit were sold with housemarks. The Housemarks and the Disclaimer 85 Having found the marks only "somewhat distinct. Trademarks and Unfair Competition S 23:15. A&H notes that in Fisons.3d at 195." the District Court further concluded that Victoria's Secret's use of its housemark and disclaimer renders the marks dissimilar. Prods. There. 1983) ("[O]therwise similar marks are not likely to be confused where used in conjunction with the clearly displayed name and/or . see also W. v. 1991). Furthermore. Supp." Four Seasons Hotels Ltd. Pharm.2d 1201. the court did not err. 83 According to A&H. In our previous decision. consideration on the Corporation's claim that `Country Tiles' logo directly infringed on the Corporation's federal trademark. much less clearly err. Inc. W.. Although the District Court might well have been more emphatic in stating its ultimate conclusions on this score. ultimately. 86 Although A&H contends that Victoria's Secret's housemark should not have been a part of the similarity of marks analysis. See A&H IV." Id. We have previously acknowledged the importance of housemarks in comparing the "overall impression" of two marks.. in which "Fairway" and "Fairway Green" were up against each other. at 23-102 (3d ed.. the consideration of the effect of such marks has wide support in the case law. A&H III. 984 F. we held that "a subsequent user may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-descriptive matter to it. Inc. we took the district court to task for focusing too heavily on the differences between the marks instead of analyzing the overall impression. in finding that the sight and sound were distinct. although not necessarily a controlling. 1993) ("[W]hen a similar mark is used in conjunction with a company name. v. 247 (E. 1992)). 776 F. but none of our cases has suggested a per se rule about the impact of generic terms within a nongeneric trademark. in our view." Id. Beckman Instruments.Partnership is a material. at 477 (quoting 2 J. See id. 240. Inc." but the PTO examining attorney discounted the word "bra" in Victoria's Secret's PTO application to use The Miracle Bra for swimwear. 166 F. despite the fact that the differences involve generic elements.2d 567. at 1065. 57 F. v. affixing a well-known housemark like that of Victoria's Secret can help diminish the likelihood of confusion. Supp. 84 We agree with A&H that the words "the" and "bra" and "suit" are not particularly potent. Co.C. "Use of a strong. A&H III. at 195. Koury Corp.. Astra Pharm. the weight to be given each word is a judgment call. best suited to the factfinder. McCarthy.D.N. the likelihood of confusion may be lessened. 573 (2d Cir. 2d at 168. Gillette Co."). the same logic dictates that these marks are likely to be confused. well-known mark as a part of a composite name reduces the likelihood that the remainder of the composite name will create a commercial impression distinct from that mark.10 As the District Court recognized. W.
and most importantly. v.2d 134. but rather is between two different names. whereas in this case."). black type against a light background at the lower left corner of the actual page on which The Miracle Bra Swimwear Collection was featured in the catalog. Kraft.11 90 A&H argues that disclaimers cannot be considered when determining likelihood of confusion. for the use of another's trademark constitutes infringement with or without the use of the infringer's housemark. v. 717 F. tips the balance and makes it unlikely that consumers will be confused by the marks themselves. Jaycees does not control for two reasons. aff'd. 192 F. The President of VS Catalogue stated that since there are only a few seconds in which to capture a consumer's attention. 87 Furthermore. the District Court concluded that the disclaimer used by Victoria's Secret "create[d] a distinction" between the two marks. we analyze the disclaimer and housemark to determine whether there was any violation at all. 612 F.D. unlike the use of a housemark. one of which has a prominent disclaimer highlighting the difference. just above the telephone number for placing an order. 1983) ("Yet even Kraft agrees that a prominent housemark may also tend to lessen confusion. In this case. Inc. 57 F.2d 352. Therefore. the court concluded. is unlikely to vitiate confusion. our decision in Jaycees addressed the propriety of a remedy." A&H IV. (citations omitted). But see Frehling Enters. 1081. 1091 (N. Philadelphia Jaycees. the disclaimer often appeared in dark.2d 903 (7th Cir. 1985) ("Vess's use of its own VESS housemark in conjunction with Chocolate Fudge is not a defense to Canfield's infringement claim. 91 . The disclaimer. 2d at 169. 89 Id. Ill. 1337-38 (11th Cir.3d 1330. 355-56 (7th Cir. However. Vess Beverages. A. 1986). Supp.. 1981). Canfield Co. International Select Group. relying heavily on United States Jaycees v.. v. First. 1999) (adding brand name did not lessen likelihood of confusion for marks of otherwise "striking similarity")."). Inc. in which we held that an injunction requiring an infringing organization to add the word "Philadelphia" to its use of the word "Jaycees" was too narrow a remedy for a Lanham Act violation. Supp. the contest is not between Miraclesuit and Philadelphia Miraclesuit. Inc. Inc.."). as one could easily conclude that the Philadelphia Jaycees was a subgroup of the larger national organization.. 639 F. a situation that would probably cause confusion. Inc. the addition of a geographical term.logo of the manufacturer. Henri's Food Prods Co. 796 F.J. placement near the telephone number is particularly appropriate. and was premised on a finding of a Lanham Act violation. The court grounded its finding on the fact that 88 [a]lthough the positioning varied. it held that there was no similarity "solely based on the presumption that Defendants will continue to use the disclaimer when marketing The Miracle Bra swimwear. Second. 142 (3d Cir..
v.. See. v. 509. The PTO's Rejection of Victoria's Secret's Application 93 Finally. Moreover. 1980) (same). suggesting that a PTO determination that marks are likely to be confused should be given weight as a matter of law. Inc.g.g. Co. the Ninth Circuit has held that a preliminary determination by a low-level PTO administrator should not be accorded much weight. 1996) ("While not dispositive of the issue of likelihood of confusion. See Carter-Wallace. e.. Inc. .2d 566. We are also satisfied that the District Court committed no factual error in concluding that Victoria's Secret's disclaimer helped to dispel potential consumer confusion between the Miraclesuit and The Miracle Bra swimwear.. v. 97 Id. .. of Am. American Guardian Life Assur. although not in Third Circuit case law. v.13 94 There is some jurisprudence. 437 F. 1999).D."). Traffix Devices. Pa.3d 929. but rather that it is important evidence that should be given considerable weight.12 A&H does not argue that a PTO determination is controlling. 1970). Pa. Inc. Supp.2d 794. the PTO's refusal to register Defendant's marks is entitled to substantial consideration by this Court. Co. Co. 802 (9th Cir. the District Court committed no legal error in considering the disclaimer.In sum. 498 F. 523 (E. (citation omitted). 1971) (refusal of Patent Office to register a mark is "entitled to great weight"). Inc. bathing suits and bikinis" on the ground that there was a likelihood of confusion between its mark and Miraclesuit. especially where the PTO officer did not have access to the full panoply of information that might inform a likelihood-of-confusion analysis. other courts have held that a court need not defer to the patent office when there is relevant evidence not considered by the office that informs the analysis. The court explained: 96 Any such determination made by the Patent Office under the circumstances just noted must be regarded as inconclusive since made at its lowest administrative level. Guardian Life Ins. Driving Force. 95 On the other hand. e. 92 3. Procter & Gamble Co. 434 F. The determination by the Patent Office is rendered less persuasive still by the fact that the Patent Office did not have before it the great mass of evidence which the parties have since presented to both the District Court and this court in support of their claims... 934 (6th Cir. Supp. Syntex Labs. Norwich Pharm. 569 (2d Cir. . 200 F. A&H argues that the District Court erred in failing to give weight to the fact that the PTO attorney rejected Victoria's Secret's application to register The Miracle Bra for "swimsuits.. See. v. Inc. 25 (E. . 943 F. 21. Inc. Marketing Displays. Manpower..D.
which measures mark strength by "(1) the distinctiveness or conceptual strength of the mark. and that evidence of A&H's advertising expenditures demonstrated that Miraclesuit had commercial strength. and did not make an error of law in choosing to consider Victoria's Secret's housemark and the disclaimer. Strength of the Marks 100 With respect to Lapp factor (2). The first prong of this test looks to the inherent features of the mark." the District Court applied the Fisons test. Summit Motor Prods. at 1255. matters apparently not considered by the examining attorney. and (2) the commercial strength or marketplace recognition of the mark. In A&H I. It was not clear error to refuse to do so.. Furthermore.18 (3d Cir. Summary 99 In sum. although an initial PTO determination by an examining attorney may be considered. supra. the PTO in this case was making a low-level preliminary determination.2d 277."the strength of the owner's mark. 57 F. (2) descriptive (such as "SECURITY CENTER"). 1. Level of distinctiveness and mark strength are factual determinations that we review for clear error. the second looks to factual evidence of "marketplace recognition.Supp. not searching or analytical. the District Court concluded that even a preliminary PTO determination should be given "substantial weight. Distinctiveness or Conceptual Strength 101 In order to determine whether a mark is protectable as a trademark. or in refusing to give weight to the decision of the PTO attorney. where the District Court's conclusion that the marks were not confusingly similar relied upon the housemarks and Victoria's Secret's disclaimer.98 We find Carter-Wallace and Marketing Displays persuasive. we do not think that such a decision needed to receive deference here. and (4) arbitrary or fanciful (such as . we conclude that the District Court did not clearly err in concluding that the marks themselves were not confusingly similar. and conclude that. considering their overall commercial impression. 292 n. 2d at 164. 926 F. 1991). Although we prefer to avoid conflicts with the PTO. Inc. (3) suggestive (such as "COPPERTONE"). see Ford Motor Co.3d at 479. 4. v. the PTO attorney's decision was conclusory." See Fisons. it need not be given weight when the PTO attorney did not review all the evidence available to the District Court. 930 F. but our review of legal conclusions is plenary. See note 9. and did not have the benefit of the complete record before the District Court." but it gave no weight to the PTO's decision in its most recent opinion." A&H IV.Supp. As in Carter-Wallace.. marks are divided into four classifications: (1) generic (such as "DIET CHOCOLATE FUDGE SODA"). B. 30 F. The District Court concluded that the mark Miraclesuit ranged "conceptually" from suggestive to arbitrary. as well.
3d 183. Although the conceptual strength of a mark is often associated with the particular category of "distinctiveness" into which a mark falls (i."). The classification of a mark as arbitrary. .. "Super Duper.. 627 F. in this case.2d 999. a mark must either be suggestive. at 11-146 to 147. 722 F. Flickinger Co. 174 U. Lubovsky.. Inc. Id.Y. a "weak" mark. 103 Suggestive or arbitrary marks may. to determine whether consumers are likely to perceive the mark as a signifier of origin. at 297. Inc. See Express Servs. Plus Discount Foods..T. See id. . supra. arbitrary.. v. . at 487. v.N. the classification of a mark as "descriptive" or "arbitrary" for the purpose of determining whether it receives trademark protection at all--though a useful guide in assessing the strength or weakness of a mark--is not dispositive. v. qualities or characteristics of the goods.S. Inc. 51." though certainly not particularly descriptive of the underlying product.." see S. v. Inc. Inc. 483 (S. v. or fanciful. Supp. 351 (4th Cir. it is not determinative .. or perception" to determine what the product is. 1988). See id. 1005 (2d Cir.2d at 296. For instance.2d at 1005. was.B. In order to qualify for Lanham Act protection. These two inquiries--whether a mark is. Inc. suggestive. Canfield.e. v.J. See 2 McCarthy. Careers Express Staffing Servs. or must be descriptive with a demonstration of secondary meaning. Generic marks are those that "function as the common descriptive name of a product class. Supp. 1986). have been held to be "weak" marks." Id. (Mfg. v. in H. .15 Thus." are generally held to be weak marks. 102 Under the Lanham Act. but they do not have to be. common marks like "Arrow. the court concluded that the mark "Esprit. "Miracle." A. indeed.. in fact.3d 189. Esprit de Corp. and that therefore a similar mark is more likely to cause confusion)." though suggestive.laudatory" marks like "Sure. 1983) ("Although this classification system is a helpful tool [for determining strength] .J. 1980). 50 F. 1995) (observing that stronger marks carry greater recognition.M. 56 (T. 808 F.P. e. versus how much protection the mark should receive--are often identical.. v.. Versa Prods. at 297. 808 F." see Procter & Gamble Co. in fact. Inc. 176 F. Inc.D. 203 (3d Cir.14 Arbitrary or fanciful marks use terms that neither describe nor suggest anything about the product. S11:81. This is because the classification system's primary purpose is to determine whether the mark is protectable as a trademark in the first place--that is. they "bear no logical or suggestive relation to the actual characteristics of the goods.. See Two Pesos. Descriptive terms "forthwith convey[ ] an immediate idea of the ingredients.g. 1941).2d 486. 1185. stronger marks receive greater protection. Johnson & Johnson. See id. See. Federated Dep't Stores. 489 (2d Cir.. Bifold Co. . 1196 (S. particularly if they are used in connection with a number of different products. Globe Brewing Co. Inc. . a trademark. Generic marks receive no protection.N.2d 347. See A. Beatrice Foods Co. rather than as a mere identification of the type of product. Inc. 768 (1992). 1972). "Self. that is not the only measure of conceptual strength." see Plus Prods.S. v. Canfield. 117 F. Similarly. thought. in fact. 763. at 305. suggestive." Id. Taco Cabana. See Plus Prods. Banff. 505 U.. Ltd. arbitrary.) Ltd.2d at 296 (citation omitted). at 296. "Plus. or.Y.D. See Arrow Distilleries. Co.. 186 (3d Cir. 722 F. 841 F. Suggestive marks require consumer "imagination. or descriptive is only secondarily used to determine the degree of protection a mark should receive once protectability has been established. be "weak" marks.. they are not "trademarks" at all. or descriptive). 485 F.Q.A."KODAK").
of course. 57 F. 106 The District Court concluded that the Miraclesuit mark ranged from "suggestive to arbitrary" because it believed that the word MIRACLE did not reveal anything about the product. 57 F. 104 The District Court originally determined that the MIRACLE part of Miraclesuit was fanciful because it does not describe or reveal anything about the product. and that the term m Miraclesuit does not rise to the arbitrary level but is. we conclude that the District Court's categorization of the Miraclesuit mark was clearly erroneous. Just as a "miracle worker" is a person who works miracles. the court concluded that Miraclesuit "ranges from suggestive to arbitrary" because it requires some consumer imagination to determine its meaning. thus dismissing efforts by Victoria's Secret to show that the Miraclesuit mark is conceptually weaker because MIRACLE has been used by several other companies. 107 We also believe that the District Court committed an error of law in its automatic conclusion that. 2d at 165 n. To the contrary. merely suggestive. unlike." it therefore should receive the highest level of protection. 105 For reasons we will presently explain. The word MIRACLE. Because both of these conclusions were relevant to the District Court's determination that the mark was entitled to a high level of protection. and maternity wear. Supp. taking the mark's parts together.. but. . say. see Fisons. However. MIRACLE is used in other apparel markets. protected.1999) (observing that classification of distinctiveness is "useful" in determining conceptual strength (citing Banff. Whether the slimming effect is literally miraculous may be subject to debate. 841 F.2d at 491)). at best. and is ultimately merely a declaration of praise. indicates the effect that the product is supposed to have on the user or wearer. and therefore that the mark should receive the highest level of protection. they may receive lesser protection than arbitrary marks. we believe that the Court erred as a matter of law in holding that its categorization of the mark was dispositive of the inquiry into the mark's strength. but the mark itself communicates something about the product. The court held that these other uses were irrelevant because the term MIRACLE was not used specifically in conjunction with swimwear.16. children's wear. A&H IV. 2d at 165. the court believed that the SUIT part was generic because it merely describes the qualities of the product. Supp. Ltd. ready-to-wear. Although the wide use of a term within the market at issue is more probative than the wide use of a term in other markets. but "bathing suit" is a frequent and familiar one. In sum. a "miraclesuit" is a suit that works miracles. depending on surrounding circumstances (discussed below). See A&H IV. we believe that both parts of the mark describe or suggest something about the product: The word "suit" has many meanings. the extensive use of the term in other markets may also have a weakening effect on the strength of the mark. Further. 30 F. we review each separately. Suggestive or descriptive marks are.3d at 479. XEROX. such as hosiery. because the Miraclesuit mark "range[d] from suggestive to arbitrary.
The court also noted that A&H's swimwear sales have steadily increased. v. . Johnson. 1940) ("When all is said. 1479 (T. Commercial Strength of the Mark 110 Turning to the second part of the test. Although evidence of money spent does not automatically translate into consumer recognition. Sun Federal Savings & Loan Association. . The Sun Banks court thus clearly considered extensive use in other markets in its assessment of the weakness of the contested term m. and that "their efforts undoubtedly resulted in increased public recognition. the District Court determined that the Miraclesuit mark has a high level of commercial strength. 116 F. i. Supp. Inc.e."). . The short of it is that. and . in Sun Banks of Florida."). as a per se rule against considering the use of the mark in different markets and for unrelated products.3d at 479. See also Triumph Hosiery Mills. . the District Court concluded that the commercial strength inquiry weighed in favor of A&H. both with the mark "Triumph." 30 F. it is clearly relevant.A. The relevance of such other uses of similar marks is apparent. 430 (2d Cir. cf. 1962) ("The mark `Triumph' is a so. It based its finding on the fact that A&H had spent so much money on advertising. .2d 311. Inc. it is fair to impose upon him some of the risk that another Johnson may wish to sell goods not very far afield. it has been used many times to identify many types of products and services." A&H IV. 2d at 165. v. Steve's Famous Hot Dogs. 57 F. their use in different markets and for products and services that are not closely related does not necessarily undermine Fisons' claim of strength. 3 U. is able to distinguish between these businesses based on small distinctions among the marks.2d 196. v.Q. if a man allows the good will of his business to become identified with a surname so common as Johnson.P.108 For example.8 (5th Cir. like "Triumph" or "Ace. . 2. but also noted that over 4. whatever category of distinctiveness into which the mark falls. 308 F. 1981).2d 427. S.2d 1477. . the multiple uses of MIRACLE in other markets is relevant to a determination of A&H's mark's strength.S.T. . two individual products. . See Steve's Ice Cream v. Triumph Int'l Corp. use the term . and hence the District Court's methodology and conclusion does not appear to be in error or to involve a misapplication of the law. Taking these two indications of commercial strength into account.called weak mark. if a consumer is aware that a particular mark.2 (2d Cir. the court gave special weight to the fact that 25 competing financial institutions used the word "sun" in their titles." is often used to designate a variety of products made by a variety of manufacturers. as A&H urges. that consumer will be less likely to assume that in a particular case. Inc. 316-17 & n.. 1987) ("[T]he numerous third-party uses [of Steve's] demonstrate that the purchasing public has become conditioned to recognize that many businesses ." come from the same source. We read this sentence to mean no more than it says.400 Florida businesses used the term."). and not.B. 199 n. . Johnson & Son.C. 109 A&H notes that in Fisons we stated that"[w]hile other registrations and uses of Fairway for related products and services would make the mark less strong if they were in the same market. 651 F.
while the products are not identical. the District Court's error does not affect our affirmance of the District Court's conclusion that there was no likelihood of direct confusion between Miraclesuit and The Miracle Bra. magazines. and that "[s]uch fine distinctions between the channels in which the . Furthermore. we do not think that the District Court clearly erred in making this finding. 2d at 170. C. the product similarity factor favored A&H. and although the means of improvement are different and the products have different foci. It observed that the Miraclesuit has been advertised in in-store promotions. Supp. department store bill enclosures. in that Miraclesuit is sold to department stores and catalogues that compete with Victoria's Secret Stores and Victoria's Secret Catalogue. although both products may have a primary bust or midriff focus. there was evidence that both products pitch themselves as "improving" female shapeliness through swimwear. However. Although the court noted that The Miracle Bra suits are never sold outside of the Victoria's Secret store or catalogue. the two suits are similar. and in concluding that the mark Miraclesuit was conceptually strong solely on the basis of its categorization. both products also have attributes that enhance both aspects of the female figure. The court held that the channels of trade were similar. editors. and that The Miracle Bra suits have been marketed in point-of-sale promotions in Victoria's Secret stores. the court committed no error of law here. 57 F. whereas The Miracle Bra suit is designed and advertised to enhance cleavage. and its conclusion on product similarity is supported by the record. the court also noted that most Miraclesuits have bras--some even have cleavage enhancing bras--and that a few Miracle Bra suits have lower body control. the District Court's error weighed in A&H's favor by leading the court to reject evidence that the Miraclesuit mark was weaker than A&H claimed. the District Court first noted that although the products were both swimsuits. 113 Given the evidence that. A review of these facts led the District Court to conclude that the Miraclesuit and Miracle Bra suits were "somewhat interchangeable. Therefore. Product Similarity 112 In discussing product similarity. they have slightly different functions: The Miraclesuit is designed and advertised to make the figure appear slim. However. if anything. Therefore. and through press kits and print and television advertising. It noted that both the price range for the suits and their means of sale are similar. Summary 111 The District Court erred in concluding that the Miraclesuit mark contained an arbitrary component. and press kits to buyers." A&H IV. In sum. it concluded. and publishers. D.3. Marketing and Advertising Channels 114 The District Court concluded that the channels of sale and advertising of the products overlap.
However. is not sufficiently probative of the defendant's success in causing confusion to weigh such a finding in the plaintiff's favor." A&H IV. rather. at 1466. It points to Victoria's Secret's admission during this litigation that the attention of consumers must be captured within a few seconds. v.. 115 Although there are significant differences in trade channels--notably. "the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase. Supp. Thus. and weighed this factor in favor of A&H. (Mfg. without more. Sophistication of Consumers 116 The District Court next considered the "sophistication of consumers. F. 967 F. 117 A&H submits that the District Court erred in reaching this conclusion. The court relied on cases holding that buyers of women's apparel are sophisticated purchasers." The court concluded that the products' consumers were likely to be sophisticated. 57 F. it concluded that the "conditions of purchase" were similar." which is the functional equivalent of Lapp factor (3)." A&H IV.. and on the fact that A&H had presented no evidence that its consumers were not sophisticated. and the celerity with which one makes a decision does not correlate exactly with the extent of one's discrimination in matters of taste. it is important to reiterate the purpose of the "intent" inquiry in the Lapp analysis. 205-06 (3d Cir. 2d at 171.3d 189. E.products are sold may weigh in favor of diminishing a likelihood of confusion. We have held that a defendant's mere intent to copy. 2d at 172. The court also noted that the "entire success" of each brand "relies on the premise that consumers will discern the slimming effect and cleavage enhancement features of their respective swimsuits. rings especially true. there are no hard and fast rules for this determination. The District Court's conclusion that consumers will be discriminating in their selection of swimwear. 50 F. Bifold Co. Supp. the District Court did not clearly err in its factual conclusion that channels of marketing and advertising weigh in favor of A&H. We find no error in the District Court's conclusion that this factor weighs in favor of Victoria's Secret. whether one-piece or bikinis. Furthermore. defendant's intent will indicate a likelihood of confusion only if an intent to confuse consumers is demonstrated via purposeful manipulation of the junior mark to resemble the senior's. Co. See Versa Prods. and weighed this factor in favor of the defendants. See A&H II. 57 F. 1995). that Victoria's Secret sells its product only in its own stores and catalogues--perfect parallelism will rarely be found. Supp. the Miraclesuit has twice been sold in Victoria's Secret catalogues. Intent is relevant to the extent that it bears on the likelihood of confusion.16 Courts' willingness to .) Ltd. Three considerations drove this decision. Inc. The Intent of the Defendant 118 Before discussing this factor.
120 A&H argues that the court should have weighed the intent factor in its favor because when The Miracle Bra was registered for lingerie. An A&H sales agent testified that a professional swimwear buyer asked him if A&H carried The Miracle Bra swimsuit. therefore." Id. the court found that Victoria's Secret Catalogue had chosen to expand the mark into swimwear for "legitimate reasons. 2d at 174. due in part to a willingness to believe that a closer nexus exists between an intent to deceive and success in that effort than exists between an intent to copy and success in causing confusion. that a buyer stated that she had heard of the . that a professional swimwear representative asked if the two were related." A&H IV. bathing suits and bikinis. at 205-07. However. the court credited evidence that in 1994. 57 F.Supp. when Victoria's Secret attempted to register The Miracle Bra for "swimsuits. A&H also presented testimony that one of its own public relations agents thought that A&H made both Miraclesuit and The Miracle Bra.infer the efficacy of an intent to confuse is thus somewhat punitive. Some degree of bad faith is also relevant to the selection of an appropriate remedy. The court also credited the evidence that no one at Victoria's Secret Stores responsible for the expansion of The Miracle Bra to swimwear had ever heard of the Miraclesuit or knew that Victoria's Secret Catalogue had ever sold Miraclesuits. We discern no clear error or misapplication of law in these findings. 57 F. that a former buyer asked if the Miraclesuit had that push-up element she had heard so much about. 119 The District Court found that Victoria's Secret had not intended to confuse customers when it began using The Miracle Bra in conjunction with its swimwear line. although there was some evidence of actual confusion. Victoria's Secret's counsel learned that there were several preexisting MIRACLE marks. 2d at 173. See id. See A&H III. The PTO attorney's denial of registration occurred after this suit had been filed. Actual Confusion 121 The District Court found that. G. at 173-74. that evidence was insufficient to permit weighing this factor in A&H's favor. See id. Further. 166 F. Supp. The District Court held. See id. The court thus properly found that Victoria's Secret had not expanded The Miracle Bra into swimwear in an effort to ride on A&H's good name. this lack of communication was a result of bureaucratic carelessness and was not intentionally done for the purpose of profiting from the notoriety of Plaintiffs' Miraclesuit mark. or in the District Court's weighing of the intent factor in Victoria's Secret's favor.3d at 208-09. A&H produced an article in Women's Wear Daily mentioning "the introduction of the Miracle Swimsuit in the upcoming Victoria's Secret Catalog. See A&H IV." Id. including A&H's Miraclesuit. and that a buyer asked him for an appointment to see The Miracle Bra line. The record supports the conclusion that Victoria's Secret brought the mark into swimwear because of its success in lingerie." Victoria's Secret Stores assumed that its original trademark search had uncovered no confusingly similar registrations. that it was "entirely credible" that no one at Victoria's Secret Stores knew about Miraclesuit and that "[a]t best.
and weigh them... See id. This factor was essential to the District Court's ultimate finding of fact. 124 . it found that "solely" on the assumption that the disclaimer would continue to be used. This decision is supported by the case law. the similarity of the marks themselves. given the interested sources and the inability to cross-examine the supposedly confused individuals.. See id. the District Court's conclusion as to the absence of actual confusion was supported by the record. Inc. although the overall commercial impressions of the marks are only "somewhat distinct" if one looks just to sight.g. Selection of a mark with a common surname naturally entails a risk of some uncertainty and the law will not assure absolute protection. and (2) the channels of marketing were sufficiently similar to weigh those factors in favor of A&H. the fact that Victoria's Secret uses a housemark and a disclaimer tips the balance and makes this factor. In our view. and weighed this factor in favor of A&H. Combining the Factors 123 As the foregoing discussion demonstrates. Inc. even if it credited all the submissions. e. at 175. see. 1980). Most importantly. Scott's Liquid Gold. Although some cases hold that. the court determined that.2d 252. As to the other factors. v. the marks were not similar.Miraclesuit as a suit that enhanced the bust. the evidence of actual confusion was isolated and idiosyncratic. (4) Victoria's Secret exhibited no culpable intent in selecting its mark. while not explicitly discrediting this evidence. 615 F. Though we believe that the District Court could have been more emphatic in its finding that the marks were dissimilar. Domino's Pizza. all of which weighed in favor of Victoria's Secret. Finally. 1231 (3d Cir. 1971). 489 (5th Cir.2d 1225. viewed it with great skepticism. the court found that: (1) the products.17 Furthermore. the District Court carefully considered the relevant factors weighing for and against a finding of likelihood of confusion. sound. the court also concluded that the mark Miraclesuit merited a high level of protection. and hence we will not disturb its decision to weigh this factor in favor of Victoria's Secret. weigh in favor of Victoria's Secret. e. given the difficulty of proving actual confusion. 1978). 122 The District Court. 438 F. It is within the District Court's discretion to consider the facts. these factors only support our affirmance of the ultimate conclusion that the marks are not likely to be directly confused. We find no reason to disturb any of these findings. but that: (3) the consumers were sophisticated. H. and (5) there was insufficient credible evidence of instances of actual confusion.. "Ownership of a trademark does not guarantee total absence of confusion in the marketplace. 263 (5th Cir.2d 482. and that an A&H receptionist had received two inquiries concerning The Miracle Bra. see. Dick Littrell's New World Carpets. World Carpets." Scott Paper Co. it concluded that. v. and meaning. Inc. v. other cases warn against using isolated instances of confusion to buttress a claim. and may also have overrated the strength of the Miraclesuit mark. relatively little showing on the part of the plaintiffs is required.g. Amstar Corp. 589 F.
Taylor & Wood Co.. their own marks. and ability to move into new markets. See Weiner King.2d 387. Inc. Inc.. 978 F. more e powerful companies who want to use identical or confusingly similar trademarks. Banff.2d 512.. an overly-vigorous use of the doctrine of reverse confusion could . will suddenly find their use of the mark blocked by plaintiffs who have not invested in. v. reverse confusion occurs when "the junior user saturates the market with a similar trademark and overwhelms the senior user. In sum.3d at 475. corporate identity. we find no error in the District Court's careful consideration and weighing of the factors. While the essence of a direct confusion claim is that a junior user of a mark is said to free-ride on the "reputation and good will of the senior user by adopting a similar or identical mark. See Fisons.." id. 621-24 (2000). 964 (6th Cir. Ltd. 1372 (10th Cir. 1987)). or promoted. 30 F. 628 F. at least. 561 F.2d 947. Domenico. Absent reverse confusion.g. 613-14. against larger. Rev.2d at 964. see also Fisons. 3d at 479. 615 F.3d at 475. 1.. Reverse Confusion: Fundamentals and Limits. e. v. v. v.. See.18 The chief danger inherent in recognizing reverse confusion claims is that innovative junior users. V.2d 960.A. 811 F. L. Big O Tire Dealers. .Although a number of factors favored A&H." 30 F. American Info. We therefore will affirm the judgment with respect to the direct confusion claim. v. 2-3 (1994). Techs. control over its goodwill and reputation. 1980). Capital Films Corp. reverse confusion protects "smaller senior users . Federated Dep't Stores. 127 Ameritech. 1988). 1977). Daniel D. Sands. and its use of them as tools in reaching its ultimate finding of fact. 393 (5th Cir.. 522 (C. [T]he senior user loses the value of the trademark--its product identity. The doctrine of reverse confusion--or. Marks.2d 486. 84 Trademark Rep. 811 F. 957 (7th Cir. v. Inc.. Wiener King Corp. (quoting Ameritech. who have invested heavily in promoting a particular mark. Corp. Inc. 490-91 (2d Cir. Inc. 561 F.C. "a company with a well established trade name and with the economic power to advertise extensively [would be immunized from suit] for a product name taken from a competitor. Introduction 125 We recently recognized the doctrine of "reverse confusion" as a distinct basis for a claim under S 43(a) of the Lanham Act. some of its applications--is not without its critics. 1992). . 30 F. Long & Alfred M..2d 1365. . 86 Va.P.. Goodyear Tire & Rubber Co. Quaker Oats Co. . Thad G. Inc.2d at 1372 (citation omitted). 597.. these do not upset the balance. Charles Fries Prods. Further. Note. 1980). As we explained in Fisons. 841 F." Id." Big O Tire Dealers.. Inc. Mark Madness: How Brent Musburger and the Miracle Bra May Have Led to a More Equitable and Efficient Understanding of the Reverse Confusion Doctrine in Trademark Law. The Reverse Confusion Claim A. The harm flowing from reverse confusion is that 126 [t]he public comes to assume the senior user's products are really the junior user's or that the former has become somehow connected to the latter.
. However. 464 (3d Cir. Inc. it might have chosen not to enter the swimsuit market at all.2d 460. Lapp. the ultimate question in a reverse confusion claim is whether there is a likelihood of consumer confusion as to the source or sponsorship of a product. 1980) ("[P]ermitting piracy of . 1983).. or purchase hastily with only a limited impression. See Fisons. it is precisely to allow a certain amount of "space" for companies to expand their product lines under established marks that we allow infringement suits against suppliers of noncompeting goods. Co. v. at the outset. 721 F. for fear the mark could be usurped at will by a larger competitor. smaller business owners might not have any incentive to invest in their marks at all. identifying trade dress can only discourage other manufacturers from making a similar individual promotional effort. . See id. Lapp factors (8) and (9).19 there are differences between the two situations that bear mentioning.. had Victoria's Secret thought. these concerns do sensitize us to the potential untoward effects of an overenthusiastic enforcement of reverse confusion claims. Premo Pharm. 1. 30 F. although they cannot supersede our judicial recognition of the doctrine. the question is whether this is the kind of product that consumers will care enough about to notice the differences. and similarly. See id. Finally. v. Inc. See Fisons. without the existence of such a claim. in both direct and reverse confusion. 625 F. Although it would seem somewhat counterintuitive to posit that the likelihood of confusion analysis changes from the direct confusion to the reverse confusion context. See Interpace Corp. 128 This would be an undesirable result. This is not to say that the reverse confusion doctrine does not have its proper place.potentially inhibit larger companies with established marks from expanding their product lines --for instance. The Test for Reverse Confusion 129 As in a direct confusion claim.. the degree to which the channels of trade and advertisement overlap (factor (7)) should be analyzed in the same fashion.3d at 476 n. at 475-76 (analyzing the channels of trade in the same manner). that it would not be permitted carry over its popular The Miracle Bra mark from lingerie to swimwear. Labs. . 1067 (3d Cir.20 First."). to clarify the test for reverse confusion that has developed in our jurisprudence. Second.3d at 475. are also analyzed no differently in the reverse confusion context. we will walk through the factors that a district court should consider (where relevant) in assessing a such a claim.12 (considering this factor in the same manner as it would for direct confusion). 30 F. considering the similarity of the targets of the parties' sales efforts and the similarity of products. at 475. there are several factors that should generally be analyzed in the same way for a reverse confusion claim as they are for a direct confusion claim. Therefore. The Factors that are the Same 130 As an initial matter. B. as has been recognized. the attentiveness of consumers does not change (factor (3)). 481 (treating these factors in the same way for reverse confusion as they would have been treated for direct confusion). See SK&F.2d 1055. in fact.
we do not suggest that this actually occurred in this particular case.. they will confuse it with The Miracle Bra and think that it is a Victoria's Secret product. v. 132 On the other hand.. alleviated any confusion that might otherwise result. mitigate confusion in some cases. they are less likely to forget that Miraclesuit is unrelated to The Miracle Bra swimwear. Of course. Therefore. the consumer considering a purchase of the Miraclesuit will not have the same handy reminder that Miraclesuit is not associated with The Miracle Bra or Victoria's Secret. we merely highlight the questions raised by the use of the . Instead. Quaker Oats Co. 1288 (9th Cir. sound. reverse confusion. Supp. see id. when consumers come across the Miraclesuit in the stream of commerce.g. not only is there the possibility that consumers will fail to remember the mark when encountering A&H's swimwear. 1992). the District Court observed that A&H typically includes its own housemark on Miraclesuits. 133 As to the presence of the housemark on the Victoria's Secret product. 978 F.2. 2d at 160. 134 Clearly. Because A&H puts no disclaimer on its product to distinguish it from The Miracle Bra. Sands. 30 F. and compares whether these elements combine to create a general commercial impression that is the same for the two marks. 960 (7th Cir. it only briefly addressed the significance of the A&H housemark. 2d at 16869. See. the similarity of the marks themselves is necessarily analyzed in the same way in direct and reverse confusion claims. e. the presence of housemarks or disclaimers must obviously be treated differently than in the direct confusion context.2d 947. Taylor & Wood Co. by reinforcing the association of the word "miracle" exclusively with Victoria's Secret. Similarity of the Marks 131 Generally speaking. Americana Trading Inc. rather than mitigate.. Russ Berrie & Co. e. 57 F..g.2d 1284. the court looks to sight. after all.17. 966 F. Therefore. This is not to say that such a disclaimer may not. See. see A&H IV.3d at 478-79 (analyzing the commercial impression of the marks in light of direct confusion principles). 1992). but. v. because the court only conducted a likelihood of confusion analysis for the direct confusion claim. coupled with the disclaimer. Supp. Fisons. the proper significance to be accorded these facts is a matter best suited for the determination of the trial court. 57 F. if consumers are faced with the disclaimer every time they flip through the Victoria's Secret catalogue. the direct confusion claim in this case was rejected by the District Court in considerable measure because the court felt that the Victoria's Secret housemark. at 168 n. a district court would not need to examine these in a different manner than it would in a direct confusion claim. Yet in the reverse confusion context. in fact. the weight of a disclaimer on the Victoria's Secret product is necessarily lessened. and meaning. It is the essence of the reverse confusion claim that. See A&H IV. but there is also the possibility that the mark will aggravate.
136 a. As we explained supra. a plaintiff with a commercially weak mark is more likely to prevail than a plaintiff with a stronger mark. Commerce Ins. Where the greater advertising originates from the senior user. in a reverse confusion claim.2d 486. 841 F. 444 (3d Cir. cf. Inc. at 23-32. Federated Dep't Stores. supra. That is. Inc. Fisons. then. The greater the commercial disparity between the manufacturers. Conversely. 30 F. consumers will be more likely to encounter the heavily advertised mark first. the more likely it is that a consumer's first experience with a mark will be with one particular manufacturer. See Banff. . . at 5. S23:10. 214 F. and whether any subsequent confusion is "direct" or "reverse" will depend on whether the consumer's first experience was with the junior or the senior user of the mark. in a direct confusion claim. 3. reverse confusion is more likely. is the hallmark of a reverse confusion case. Strength of the Marks 135 An important difference between reverse and direct confusion manifests in the analysis of the strength of the marks. Servs.. if one manufacturer--junior or senior--expends tremendous sums in advertising while the other does not. McCarthy has written that "the relatively large advertising and promotion of the junior user . See 3 McCarthy. and the treatment of conceptual strength second. supra. "the evidence of commercial strength is different from what we expect in a ."[T]he lack of commercial strength of the smaller senior user's mark is to be given less weight in the analysis because it is the strength of the larger. alter its examination accordingly." Commerce Nat'l Ins. Agency. a plaintiff with a commercially strong mark is more likely to prevail than a plaintiff with a commercially weak mark.. For ease of understanding. Long & Marks. at 23-37. v. we are more likely to see a case of direct confusion. v. S23:10. 1988) (acknowledging such a possibility). 2000). we will explain the appropriate treatment of commercial strength first. and this is particularly true when the plaintiff's weaker mark is pitted against a defendant with a far stronger mark.3d at 479 (observing that direct confusion involves a junior user "trad[ing] on" a senior user's name and thus expending less on advertising. 490 (2d Cir. if the greater advertising originates from the junior user.3d 432.housemarks and disclaimers in order to emphasize that a district court must separately examine the similarity factor to determine whether there are any aspects of the analysis that should be different for a reverse confusion claim. Commercial Strength 137 It has been observed that a consumer first encountering a mark with one set of goods is likely to continue to associate the mark with those goods. if so. supra. whereas reverse confusion involves the opposite pattern).. Inc. and." 3 McCarthy. Ltd. junior user's mark which results in reverse confusion. 138 Logically. As we explained in Fisons. this factor requires consideration both of the mark's commercial and conceptual strength.
Worthington Foods. See Fisons. the court explained that conceptual distinctiveness was relevant in the same way for a reverse confusion claim because "if a customer saw a doll in a toy store bearing a strong familiar trademark like `Exxon. Ohio 1990). distinctiveness as well as [the mark's] commercial strength" for the reverse confusion claim. When it comes to conceptual strength." 30 F.. the senior user has a commercially weak mark when compared with the junior user's commercially strong mark. Fisons. in the paradigmatic reverse confusion case.. a court should analyze the "commercial strength" factor in terms of (1) the commercial strength of the junior user as compared to the senior user. 140 b. v. without reference to "conceptual strength. where the junior user tries to palm off his goods as those of the senior user.' he might well assume that the oil company had gone into the toy business. Nor did we clarify this aspect of our jurisprudence in Commerce National Insurance Services.3d 432 (3d Cir. see also Long & Marks. v. See. Kellogg Co. Esprit de Corp. e." 142 As stated above. Supp. if. Inc. at 22." in a reverse confusion context. Inc. or conceptual strength. Our decision is supported by the fact that those courts that have clearly distinguished conceptual from commercial strength in the reverse confusion context have weighed a conceptually strong mark in the senior user's favor. 214 F. just as in direct confusion cases. where we referred to the different test for "commercial strength. in the same manner as they would in direct confusion cases..g. we believe that.3d at 474. he saw a doll bearing a familiar but weak laudatory trademark like Merit.3d at 479. in a reverse confusion claim. Commerce Insurance Agency. 30 F. Although we explained that the evaluation of commercial strength would have to be altered for reverse confusion claims. 483 (S.case of forward confusion. v. at 487.Y. supra.D. 30 F. however. on the other hand.3d at 479. should be reweighed in light of our adoption of the reverse confusion doctrine. Inc. 627 F. Inc. 1417. 1456 (S. we did not discuss how distinctiveness. Lubovsky.. 479. he would be unlikely to assume that it is connected with the similarly named gasoline or cigarettes. Distinctiveness or Conceptual Strength 141 In Fisons we remanded the case for the district court to "reevaluate[ ] . a strong mark should weigh in favor of a senior user. . Supp. 732 F. and (2) any advertising or marketing campaign by the junior user that has resulted in a saturation in the public awareness of the junior user's mark.N. . 139 Therefore. 143 In H." Id. . 1986).D. 2000).
works in the plaintiff's favor. Commerce Insurance Agency. In holding that the smaller company could maintain its claim against the larger for reverse confusion.. Bifold Co.3d at 480. the intent of the defendant is relevant to the extent that it bears on the likelihood of confusion analysis. the larger company expanded into the smaller company's line of business. 148 When reverse.3d 189. Inc. unlike commercial strength. since there is little basis in fact or logic for supposing from a defendant's intent to copy without more that the defendant's actions will in fact result in confusion. what we have held is that a defendant's intent to confuse or deceive consumers as to the product's source may be highly probative of likelihood of confusion. substantially identical to a plaintiff's mark . .) Ltd. Inc. Inc. Co..e. coupled with the relative similarity of the plaintiff's and defendant's marks. Lubovsky logic resonates. each fully aware of the other and with no incidents of actual confusion. we specifically highlighted the possibility that the larger company had adopted the mark with the deliberate intent of pushing its rival out of the market. For instance. "intent to confuse.. We therefore hold that. (Mfg. . the defendant. .144 The H. 30 F. 1995) (emphasis omitted). for it makes more sense to hold that conceptual strength. The Intent of the Defendant 145 In the direct confusion context. a district court should weigh a conceptually strong mark in the plaintiff's favor. 147 Versa Prods. confusion is alleged. should an intent to confuse exist. Thus. . That is. 205 (3d Cir. . . we would bring about the perverse result that less imaginative marks would be more likely to win reverse confusion claims than arbitrary or fanciful ones. however.. However. 4. a consumer viewing the plaintiff's product is likely to assume that such a mark would only have been adopted by a single source--i.3d 432 (3d Cir. v." is unlikely to be present. we do not focus on a defendant's bare intent to adopt a mark . i. deliberately choosing to promote its services under an almost identical mark. rather than direct. particularly when the mark is of such a distinctive character that. and that it was this . 214 F. though perhaps unusual.e. weighing weakness in the plaintiff's favor. Cf. v. Eventually. 50 F. in Commerce National Insurance Services. we were confronted with a situation in which the litigants had used very similar marks in noncompetitive industries for a number of years. if we were to apply the rule stated above for commercial strength.. 2000). Fisons. it would be relevant to the likelihood of confusion analysis in the same manner as it would for a direct confusion claim.. As we have said: 146 In the likelihood of confusion inquiry . as in direct confusion claims.
at 445. does not shed any light on this inquiry.2d 340. 1981). though the nature of the confusion that would be probative would be quite different. 150 Although we recognize that our opinion in Fisons perhaps implied that mere carelessness. 949 F. W. it should weigh against the defendant in the same manner as it would in a direct confusion case. for example. to the extent that the intent inquiry in the likelihood of confusion analysis carries with it the attribution of fault. Conversely. 1991) (holding that evidence of "actual confusion" in which the public thought the senior user was the origin of the junior user's products was irrelevant for a reverse confusion claim). W. Factors Relating to Actual Confusion 151 As a matter of intuition.. Cf. 149 As we have noted in our two prior cases on this issue. rather than reverse. If such an intent to confuse does. 575 (2d Cir. confusion. but not a direct confusion claim. mere carelessness. evidence that consumers thought that Miraclesuit was a Victoria's Secret product would support a reverse confusion claim. 2d at 178 n. As applied to this case. Cf. Ferro Corp. Further. W. it did observe that most of the evidence A&H had put forth with regard to "actual confusion" related to direct. This was apparently the District Court's intuition. rather than direct. there is no reason to ascribe higher penalties to a lower degree of fault because a particular case involves reverse. we are reluctant to adopt such an interpretation. exist in a reverse confusion case. Retirement Living Publ'g Co. Hommel Co. in fact. confusion. but not on a reverse confusion claim.. 57 F. it would be troubling indeed to hold that a lesser degree of culpability would weigh in the plaintiff's favor for a reverse confusion claim than it would for a direct confusion claim. 5. evidence that consumers thought that The Miracle Bra was an A&H product would be probative on a direct confusion claim.2d 567. 30 F. as opposed to deliberate intent to confuse. Supp. one would expect that in a reverse confusion claim. 984 F. 583 (2d Cir.32. v. Gilette Co. See id. and whether the defendant considered that its adoption of the mark might result in confusion. Pharm. would weigh in a plaintiff's favor in a reverse confusion case. although it declined to consider A&H's reverse confusion claim. 659 F. Inc.2d 576. Finally. v. See A&H IV. 354 (3d Cir.3d at 480. See Lang v. as it would be manifestly out of step with our prior holdings regarding the relevance of "intent" in trademark infringement claims. Fisons. evidence of actual confusion would be as important as in a direct confusion claim. in light of the policy concerns implicated by the reverse confusion doctrine. O. at 444.sort of usurpation of business identity that the reverse confusion doctrine was designed to prevent. . Ultimately. See id. Co.. 1993) (weighing the "intent" factor in a reverse confusion case in the defendant's favor because the plaintiff had not demonstrated an intent to confuse). all of the Lapp factors are meant only to determine whether confusion is likely. like deliberate copying. the defendant's intent may be discovered through such inquiries as whether the defendant was aware of the senior user's mark when it adopted its own mark..
See. we decline to create a strict bar to the use of "direct" confusion evidence in a "reverse" confusion case.2d 5. v. we might conclude that the plaintiff did not have enough evidence of either type to succeed on either of its claims. at 5. Inc. Liquid Glass Enters. Porsche AG. See Long & Marks. and "misfitting" evidence must be treated carefully.. h. for large amounts of one type of confusion in a claim for a different type may in fact work against the plaintiff. See Fisons. in most instances. In our view. 6. or expect that the prior owner is likely to expand into the defendant's market. supra. should be approached similarly. Dr. Inc. even though.. Though we might expect that. 1977). For example. we would run the risk of denying recovery to meritorious plaintiffs. v. 1998). Isolated instances of "direct" confusion may occur in a reverse confusion case. See Jefferson Home Furniture Co. Other Relevant Facts 155 The final factor of the Lapp test directs courts to look at "other facts suggesting that the consuming public might expect the prior owner to manufacture both products. taken together. marshalling evidence of actual confusion is often difficult. examining the time the mark has been used without evidence of actual confusion.F.152 However. Inc. or expect the larger company to manufacture a product in the plaintiff's market. 8 (Ala. then.3.B. Lapp factor (4)..g. 8 F. or vice versa. the manifestation of consumer confusion as "direct" or "reverse" may merely be a function of the context in which the consumer first encountered the mark. or expect the prior owner to manufacture a product in the defendant's market. evidence working in the same direction as the claim is preferred. and viceversa." This factor is necessarily transformed in the reverse confusion context to an examination of other facts suggesting that the consuming public might expect the larger. Ing. more powerful company to manufacture both products. the existence of reverse confusion might disprove a plaintiff's claim that its descriptive mark has secondary meaning. if we were to create a rigid division between "direct" and "reverse" confusion evidence. 154 It follows that the other factor relating to actual confusion.J. all of the evidence of actual confusion would be probative of a real problem. or expect that the larger company is likely to expand into the plaintiff's market.3d at 480 (directing the district court to examine facts suggesting that the public might think that the junior user would expand into the senior user's market). the consumer's first encounter will be with the mark that has greater commercial strength. this will not invariably be the case. For instance. Jefferson Furniture Co. Supp.. if a plaintiff alleged theories of both direct and reverse confusion and was able to prove a few instances of "actual" confusion in each direction. e. thus resulting in no recovery at all. 403 (D. 349 So. As we explained in Part V. 30 F.N. However. 2d 398. supra.c. . 153 Given the problems litigants typically encounter in locating evidence of actual confusion.
164 (7) whether the goods. 161 (4) the length of time the defendant has used the mark without evidence of actual confusion arising. 163 (6) the evidence of actual confusion. in the typical case in which there is a claim of reverse confusion. 166 (9) the relationship of the goods in the minds of consumers. 160 (3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase.156 7. Summary of the Test for Reverse Confusion 157 In sum. 159 (2) the strength of the two marks. . whether because of the near-identity of the products. weighing both a commercially strong junior user's mark and a conceptually strong senior user's mark in the senior user's favor. or other factors. the similarity of function. are marketed through the same channels of trade and advertised through the same media. 162 (5) the intent of the defendant in adopting the mark. competing or not competing. a court should examine the following factors as aids in its determination whether or not there is a likelihood of such confusion: 158 (1) the degree of similarity between the owner's mark and the alleged infringing mark. 165 (8) the extent to which the targets of the parties' sales efforts are the same.
we began our discussion of reverse confusion with an explanation of the phenomenon: "Reverse confusion occurs when a larger more powerful company uses the trademark of a smaller. that Victoria's Secret "used their economic power to overwhelm the market with advertising" of their product.Supp.3d at 207 (quoting Fisons.3d at 475. A&H needed to demonstrate. 57 F. at 178. we find that. and received $1.3d at 476 n.167 (10) other facts suggesting that the consuming public might expect the larger. It then compared Victoria's Secret's effort to A&H's effort to promote Miraclesuit swimwear. more powerful companies. The District Court found that Victoria's Secret had saturated the market with $13 million in The Miracle Bra advertising." Fisons. senior users" against "larger. i. the District Court concluded that the doctrine of reverse confusion was not even implicated.5 million in free publicity." Id. It held that before engaging the reverse confusion factors. While these are accurate statements about the doctrine of reverse confusion.2 million on advertising. in comparison. In Fisons. and "decline[d] to examine whether a likelihood of reverse confusion exists.. as a threshold matter. or expect the larger company to manufacture a product in the plaintiff's market. The opinion therefore focused only on a comparison between the commercial strengths of the Miraclesuit and The Miracle Bra. 2d at 178. as well as its weighing for plaintiff or defendant. Defendants did not saturate the marketplace with its advertising to promote The Miracle Bra swimwear. less powerful senior owner and thereby causes likely confusion as to the source of the senior user's goods or services. must be done on an individual fact-specific basis.3d at 474. 30 F.11. A&H spent over $1. "The weight given to each factor in the overall picture. and in individual cases." 166 F. at 177. no one factor is dispositive. only on one aspect of the "mark strength" inquiry." 30 F. Therefore. The District Court's Opinion 169 The District Court approached the reverse confusion claim in a different manner from that described in the foregoing section. or expect that the larger company is likely to expand into the plaintiff's market.e. 168 As with the test for direct confusion. 30 F. C. and that a "meaningful portion" of the advertising went towards promoting The Miracle Bra swimwear.). A&H IV.21 170 The court noted that A&H did not dispute--even heralded --the fact that its campaign was widely successful. we stated that it would be necessary to recognize the reverse confusion doctrine to provide protection to "smaller." Id. the District Court appears to have interpreted . it found that "[p]laintiffs' [sic] are not entirely without market power in the swimwear industry" and that "[i]n light of Plaintiffs' advertising campaign. particular factors may not be probative on the issue of likelihood of confusion. 171 In A&H III. Consequently. more powerful company to manufacture both products.
and. 30 F.2d 591 (5th Cir. 172 The quoted statements are understandably confusing. and the method of applying the doctrine of reverse confusion is admittedly still developing.3d at 479 (emphasis added). The District Court was correct to note that commercial disparity is. see also Fuji Photo Film v. more powerful company who can overwhelm the market with advertising. 1985) (finding a viable reverse confusion claim where the plaintiff had spent millions of dollars). from which the quotes hail. This suggests that a company need not be all that weak within its market in order to bring a viable reverse confusion claim. Shinohara Shoji Kabushiki. the District Court legally erred in fashioning a threshold "economic disparity" requirement before a reverse confusion claim will even be considered. to use one. in effect making this sole factor determinative and treating the reverse confusion inquiry as requiring a two-step process. . Supp.3d at 479. concluded that A&H's power to advertise extensively precluded it from bringing a reverse confusion claim. we must vacate the judgment with respect to that claim and remand to the District Court for a redetermination of those factors that receive different treatment under direct and reverse confusion theories. The difficulty with this conclusion is that in Fisons itself. although economic disparity between the companies and the marks is an important consideration in the evaluation of the marks' commercial strength. on remand. greater than A&H's 10% of the swimwear market.them as establishing a separate." 30 F. a factor to consider (factor (2). in fact. and do not establish an initial inquiry that a court needs to make in order to apply the reverse confusion analysis. 754 F. Fisons had fully 25% of the peat moss market. the junior user is typically a wealthier. Because the District Court failed to undertake the Lapp analysis with respect to A&H's reverse confusion claim. in which we found a viable reverse confusion claim. threshold step that must be examined prior to engaging the Lapp test. and for a reweighing of all of the factors once those redeterminations have been made. a close examination of Fisons. 2d at 178. reveals that they are nothing more than descriptions of the phenomenon of reverse confusion. however. nor did we direct the District Court. we hold that. However. we implied that there might be the rare case in which reverse confusion exists where the junior company overwhelms the senior user with advertisements although it is not wealthier and more powerful. See Fisons. it cited these cases and concluded that the same degree of economic disparity was non-existent in this case. In fact. 57 F. 173 The District Court further explained its choice not to apply the reverse confusion factors by reference to the fact that several reverse confusion cases involve enormous junior companies pitted against tiny senior companies. In Fisons we held that the Lapp factors constitute the method courts should use in order to determine if a likelihood of reverse confusion exists. finding the threshold not met. to be specific). in stating that "[i]n reverse confusion. See A&H IV. it erred in applying a threshold commercial disparity requirement. 174 In short. We made no mention of a threshold requirement.
. sales. the District Court should reconsider the similarity of the marks in light of A&H's reverse confusion claims. as we explained supra. but need not." Because these incidents. we do not so conclude. and hence vacatur and remand is necessary. we would be bound to explicate our reasoning and affirm the judgment of the District Court. on remand. with the only exception being the Women's Wear Daily article mentioning "the introduction of the Miracle Swimsuit in the upcoming Victoria's Secret catalog. Introduction 175 If the record suggested that.D. but it functionally did as much in its "threshold" determination that A&H lacked sufficient "economic disparity" relative to Victoria's Secret to advance a reverse confusion claim. confusion. However. (8) & (9)) need not be reexamined for the reverse confusion claim because the District Court has already discussed them in connection with direct confusion and there is typically no difference in the analysis of these factors for reverse and direct confusion claims. it will be useful to the District Court if we comment on the extent to which it needs to revisit the various issues. the factors concerning the market. 57 F. However. A&H could not succeed as a matter of law in a reverse confusion claim. the District Court essentially demonstrated that it weighed this factor in favor of . Supp. Strength of the Marks 178 The District Court did not consider the commercial strength of the marks within the ambit of the reverse confusion Fisons analysis. the District Court did not credit the evidence proffered by A&H and. regarded it as de minimis. As for the "actual confusion" factors ((4) & (6)). although such embellishments of the junior user's mark may still have relevance in the reverse confusion context. Inasmuch as we have clarified the law of reverse confusion in this circuit by filling the gaps left in Fisons. rather than reverse. their weight must necessarily be reevaluated. 2d at 168-69. under the test we have set forth. Guidance for Remand 1. A&H's evidence of actual confusion primarily supported its claim for direct. see supra Section IV. (7). 176 As explained supra. re-examine this factor on remand. and function similarity (factors (3). the District Court placed great weight on the presence of Victoria's Secret's housemark and disclaimer when it concluded that the marks were not confusingly similar. Similarity of the Marks 177 When addressing the direct confusion claim. in its best light. the court may. See A&H IV. Therefore. 2. 3. though relevant to reverse confusion. are more probative of direct confusion but the District Court felt that they were too weak to support even that claim. G. Therefore.
when considered simultaneously with the court's determination as to their similarities. rather than intending to "free ride" on A&H's goodwill. at 178. or whether further examination of this issue is warranted.3. consumers with a general awareness of The Miracle Bra swimsuit are likely to assume that the Miraclesuit is a Victoria's Secret product. rather than out of bad faith. the District Court focused on whether Victoria's Secret had intended to "profit[ ] from the notoriety of Plaintiffs' Miraclesuit mark. Of course." id. E. Summary 181 Although we believe that the District Court's evaluation of individual factors relating to market. This led to an inaccurate comparison of their relative commercial vitality. it might have determined that the Miraclesuit had less commercial strength relative to The Miracle Bra.Victoria's Secret." A&H IV. according to the standards for conceptual strength set forth in Sections IV. Intent 180 In its evaluation of A&H's direct confusion claim. However. we simply do not know how it would have treated the commercial strength and mark similarity factors had it considered the free advertising The Miracle Bra received. B and V. Had the court used the same calipers to measure the commercial strength of each. Supp. The court did not specifically address the question whether Victoria's Secret. the court should have also considered the conceptual strength of the Miraclesuit mark. the District Court committed clear error: Although it considered the free publicity received by A&H in determining its commercial strength. and functionality would have remained unchanged had it examined A&H's reverse confusion claim in light of the Lapp factors." A&H IV. In so doing. the District Court should consider whether its previous finding of Victoria's Secret's good faith is dispositive of the reverse confusion intent analysis. but we cannot say that either Victoria's Secret or A&H should have this factor weighed in its favor as a matter of law.B. it did not consider the free publicity received by Victoria's Secret. the court must gauge the strength of the Miraclesuit mark and must consider whether--as with the example set forth supra involving a doll with the mark "Exxon"--the Miracle Bra/Miraclesuit marks are so distinctive that. However. We also cannot predict what the result would have been had the District Court examined the "intent" factor in light of A&H's . 2d at 173-74. 57 F. Supp. in comparing the relative commercial strengths of the products. 2d at 172. On remand. 179 Furthermore. the District Court concluded that Victoria's Secret's "choice to extend The Miracle Bra mark to swimwear was for legitimate reasons. or the effect of the housemark and disclaimer in the reverse confusion context. 4. the court might well deem the difference unimportant. because it "decline[d] to examine whether a likelihood of reverse confusion exists. instead intended to usurp it by deliberately undertaking to cause consumer confusion (and thereby destroy A&H's business identity). supra. sales. 57 F.
Bright. . 30 F. v. 1996). 479 (3d Cir. Victoria's Secret Stores. Victoria's Secret Stores. 1233 (E. Conclusion 183 We will affirm the District Court's judgment for Victoria's Secret on the direct confusion claim..D. As we have explained. 926 F." A&H IV. Products are not "forwardly confused" but "directly confused. VI. Supp. Inc. 1999). thus necessitating a remand. Victoria's Secret Stores.. A&H Sportswear Co. See A&H Sportswear Co. we believe that Victoria's Secret's disclaimer has a lessened significance for reverse confusion. 1997) (as amended). Inc. However. sitting by designation. In its balancing on the direct confusion claim.D.D. 1 We will refer to the marks in lower case throughout the remainder of the opinion. 182 The question of likelihood of confusion is ultimately one of fact. the District Court found that the case was close. Inc. we will vacate the judgment with respect to the reverse confusion claim. 2d 155 (E." 3 The facts are set forth more fully in the District Court's three opinions in this case. We also believe that the conceptual strength of the Miraclesuit mark must be reevaluated. Inc. Pa. we cannot say as a matter of law that a different weighing of the factors could not have influenced the District Court to make a different finding of ultimate fact. Vigoro Industries. 2d at 169. The District Court may wish to hear and consider additional evidence from the parties on reverse confusion. we think that the term "direct confusion" is more sonorous and accurate. 57 F.reverse confusion claim. and we cannot roll up our sleeves and engage in the balancing ourselves. 1994). or how the District Court would have weighed the various factors had it not determined that there was a threshold commercial disparity requirement. 57 F. Inc. Pa. United States Circuit Judge for the Eighth Circuit. 1457 (E. The parties shall bear their own costs. holding that no likelihood of confusion existed "solely based on the presumption that Defendants will continue to use the disclaimer when marketing The Miracle Bra swimwear. Supp.3d 466. Pa. Notes: * Honorable Myron H. and remand to the District Court for further proceedings consistent with this opinion.. Under these circumstances. v. v. Supp. 967 F. Supp.. v. 2 Although we described this phenomenon as "forward confusion" in Fisons Horticulture. A&H Sportswear Co.
see id. ." Id. That section provides. 6 In Capital Bonding Corp. at *13. IKON Office Solutions. noting that the Lapp factors can be used in directly competing cases although developed for noncompeting goods. Ohio. . . Inc.. name. or to cause mistake. a Delaware corporation with headquarters in Columbus. . .. the court used all of the Lapp factors for competing goods without a discussion of whether such a use was appropriate. without the consent of the registrant-(a) use in commerce any reproduction. at *6-*7. 1457-60 (D.C. Inc. we need only compare the Capital image with the ABC image and determine whether the marks are confusingly similar. the origin. the court cited Lapp in support of its conclusion that "[b]ecause Capital and ABC deal in competing services. . See id. 882 F. Supp. or any false designation of origin . or to deceive as to . Supp. ABC Bail Bonds. 5 Section 32(1) of the Lanham Act provides: Any person who shall. See A&H Sportswear Inc. 90-7759. but held that the Lapp factors could be used when relevant and helpful. in pertinent part: Any person who. . sponsorship. . Inc. . The same standard is embodied in section 43(a) of the Lanham Act. v.D. Inc. Gore & Assocs. v. v. No. shall be liable in a civil action by the registrant . see id. uses in commerce any word.. Both companies are independent subsidiaries of Intimate Brands. in Icon Solutions. v. 793 F. 15 U. . Victoria's Secret Stores. v. Supp. Inc. . at *9. however. 1992). No. 1992 WL 46854 (E. June 15. Inc.D. 166 F. offering for sale. Johnson & Johnson. 9. S 1114(1). . distribution.. 97-4178. which is based in London. shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. copy. Victoria's Secret Catalogue. 1992). or approval of his or her goods. In Barnes Group. 1998). or advertising of any goods or services on or in connection with which such use is likely to cause confusion. see also W. has over 650 stores nationwide. on or in connection with any goods or services. services. or commercial activities by another person . 15 U. the court followed the statement in Lapp that the court need not look beyond the marks in determining likelihood of confusion if they are directly competing. 1995) (using some Lapp factors in determining that a preliminary injunction was not required). 1454. . Del. symbol. ..C. Connell Ltd.4 Victoria's Secret Stores. v. term. which-(A) is likely to cause confusion. 1277. In New York Style Bagel Chip Co. 1998 WL 314672 (E. or device. .S. Likewise. Inc. .D. Pa. Mar... 200 (3d Cir. S 1125(a)(1). 69 F. Pa. owned by The Limited.S.3d 197. or to cause mistake. or colorable imitation of a registered mark in connection with the sale. . which governs unfair competition claims. the court used four Lapp factors. a Delaware corporation with headquarters in New York City. 1999). 1300 (D. Inc. counterfeit. distributes over 300 million catalogues annually. Del. 1999). at 696. Partnership. or to deceive. That's Entertainment. Pa. Inc.L. . 2d 691 (E. .
It would be well advised to continue to place the disclaimer near to the telephone number in the catalogue. 13 .1. Sara Lee Corp. United States. This is incorrect. 1994). we do counsel that. Kayser-Roth Corp. in its discussion of Victoria's Secret's intent.. Ohio 1990).Supp. A&H I.S.S.C. Supp. See A&H IV. v. 11 We consider Victoria's Secret legally bound to continue the disclaimer practice. Oct. See.. These factors for discovering the presence of competition in the antitrust realm also track Lapp factors (7) through (10). e. the court acknowledged that the PTO had rejected Victoria's Secret's application. Dist. 9 A&H also argues that all the cases cited by the District Court concern generic or descriptive marks. and it is debatable whether A&H's mark even qualifies for a "high" degree of protection conceptually. 1436 (S. the functions of the products. the court explain its choice not to employ those factors.26. 57 F. at 325. the Supreme Court explained that products may belong to distinct "submarkets. the disclaimer was not so near the telephone number. 12 A&H also argues that the District Court did not even consider the effect of the PTO attorney's denial." Id. at 1267 (citing to an antitrust case in its inquiry as to whether The Miracle Bra swimwear and Miraclesuit competed in the same market). LEXIS 19198.g. A&H has presented no support for its contention that the analysis of mark similarity in a case involving generic marks is not relevant precedent for the similarity of marks analysis in a case involving highly protected marks.N. 13. but concluded that such a rejection was not dispositive. inter alia. in one recent catalogue. a lapse that is potentially problematic. 2d at 173 n. the level of protectability is a factor discrete from mark strength in "likelihood of confusion" analysis. at *98 (M. and not the "highly protectable" mark of Miraclesuit.D. 732 F.. Kellogg Co. We judicially notice the fact that. 8 Although a district court may reasonably decide that certain of the Lapp factors are inapplicable or unhelpful in a particular case.B. whether the products are marketed to different consumers via different vendors. 10 The court also observed in a footnote that A&H's use of its own housemark helps render the marks dissimilar. Worthington Foods. to facilitate review. 294 (1962). Inc.. 2d at 168 n. 1994 U. Inc. Supp. v. as counsel for Victoria's Secret stated in oral argument that it intends to do. Supp. In Brown Shoe Co. cf. However. Further. as we discuss below in Part IV. 370 U. 57 F.17. and whether the public understands the submarkets to be "separate economic entit[ies]. See A&H IV. v." which may be determined by reference to.7 Courts have also occasionally borrowed from antitrust law's definition of "relevant market" and "submarket" to determine whether goods are directly competitive for the purpose of unfair competition claims. 1417. 926 F.D.
Disclaimed matter is typically less significant or less dominant. 15 In fact. 14 The examples are culled from A.3d 1556. Such copying might thus serve a valuable communicative function. B. 46 F. one feature of a mark may be more significant in creating a commercial impression.. v. Canfield Co.J. swimsuits.2d 291 (3d Cir. 750 F. [sic] applicant's mark would cause consumer confusion as to the source of goods. 16 In fact. v. Similarity of the Goods If the marks of the respective parties are identical or highly similar. The applicant seeks to register its mark for goods in international class 25 for "swimsuits. 808 F.The application denial reads in relevant part (with several citations omitted): A. the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion. The dominant part of the applicant's mark is MIRACLE. might do no more e than signal to potential consumers that the junior user's product is in direct competition with the senior user's product. The registrant's mark is Miraclesuit. 1986). The dominant part of the registered mark is MIRACLE. v. See McCarthy. See Conopco. a decision that has not been challenged.2d 1295 (5th Cir." Registrant's goods are also under international class 25 for "swimwear.. Samara Bros. S 11:17. The SUIT portion of the mark is descriptive of the type of clothing. Ltd. These dominant parts are identical. Honickman.. 1339 (2000). copying. First National Security Centers. 1565 (Fed. 210 F. swimsuits. bathing suits and bikinis are types of swimwear. 17 The court also chose not to credit the surveys conducted by either side. May Dep't Stores Co. McCarthy observes that courts often hold self-laudatory marks to be descriptive. as has been recognized in the trade dress context.. and Wal-Mart Stores. 1985). Douglas Labs. Inc. Cir.2d 453 (2d Cir. Because of the confusing similarity between the registrant's mark Miraclesuit and the applicant's mark The Miracle Bra and the identical class and nature of the goods the.. supra. Ct. When the applicant's mark is compared to a registered mark. "the points of similarity are of greater importance than the points of difference. Corp. 1994). bathing suits and bikinis. 1954). in this case. The addition of generic wording such as BRA does not make the mark less similar to the registered mark (see below for disclaimer requirement)." The applicant's goods include the same goods as the registrants. Copper Tan. 120 S. Similarity of the Marks . v. at 11-22 to 24. Inc. Security Center. v. Inc. . absent an intent to confuse." While the examining attorney cannot ignore a disclaimed portion of a mark and must view marks in their entireties.
but not considering whether Victoria's Secret received the same. See Americana Trading Inc.3.. .D. some courts have simply inquired whether there exists a likelihood of confusion between the marks. 21 This finding is significant because A&H contends that the court erred in considering A&H's free publicity. as is discussed in Part V.18 The Domenico note analyzes. Russ Berrie & Co. on the ground that plaintiffs had put forth enough evidence of "confusion"--some direct. some reverse--to create a genuine issue of material fact). infra. temporarily putting aside the distinction between "direct" or "reverse" confusion until after such a likelihood has been demonstrated. 966 F. inter alia. v. 1290 (9th Cir. 1992) (reversing district court grant of summary judgment to defendants. the propriety of the remedy awarded by the District Court in A&H II. 19 Indeed. 20 We say "generally" only because we recognize that there may be unforeseen circumstances in which these factors actually do apply differently in the reverse confusion context.2d 1284.
This action might not be possible to undo. Are you sure you want to continue?
We've moved you to where you read on your other device.
Get the full title to continue listening from where you left off, or restart the preview.