Filed: Jul. 22, 1994
Latest Update: Mar. 02, 2020
Summary: Opinions of the United 1994 Decisions States Court of Appeals for the Third Circuit 7-22-1994 Fison Horticulture, Inc. v. Vigoro Industries, Inc. Precedential or Non-Precedential: Docket 93-7224 Follow this and additional works at: http://digitalcommons.law.villanova.edu/thirdcircuit_1994 Recommended Citation "Fison Horticulture, Inc. v. Vigoro Industries, Inc." (1994). 1994 Decisions. Paper 93. http://digitalcommons.law.villanova.edu/thirdcircuit_1994/93 This decision is brought to you for free
Summary: Opinions of the United 1994 Decisions States Court of Appeals for the Third Circuit 7-22-1994 Fison Horticulture, Inc. v. Vigoro Industries, Inc. Precedential or Non-Precedential: Docket 93-7224 Follow this and additional works at: http://digitalcommons.law.villanova.edu/thirdcircuit_1994 Recommended Citation "Fison Horticulture, Inc. v. Vigoro Industries, Inc." (1994). 1994 Decisions. Paper 93. http://digitalcommons.law.villanova.edu/thirdcircuit_1994/93 This decision is brought to you for free ..
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Opinions of the United
1994 Decisions States Court of Appeals
for the Third Circuit
7-22-1994
Fison Horticulture, Inc. v. Vigoro Industries, Inc.
Precedential or Non-Precedential:
Docket 93-7224
Follow this and additional works at: http://digitalcommons.law.villanova.edu/thirdcircuit_1994
Recommended Citation
"Fison Horticulture, Inc. v. Vigoro Industries, Inc." (1994). 1994 Decisions. Paper 93.
http://digitalcommons.law.villanova.edu/thirdcircuit_1994/93
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UNITED STATES COURT OF APPEALS
FOR THE THIRD CIRCUIT
________________
Nos. 93-7224 & 93-7287
________________
FISONS HORTICULTURE, INC.,
Appellant in No. 93-7224
v.
VIGORO INDUSTRIES, INC.,
Appellant in No. 93-7287
_______________________________________________
On Appeal from the United States District Court
for the District of Delaware
(D.C. Civil Action No. 92-00066)
___________________
Argued January 20, 1994
Before: SCIRICA, LEWIS and GARTH, Circuit Judges
(Filed July 22, 1994)
JACK R. PIROZZOLO, ESQUIRE (Argued)
Willcox, Pirozzolo & McCarthy
50 Federal Street
Boston, Massachusetts 02110
DONALD F. PARSONS, JR., ESQUIRE
Morris, Nichols, Arsht & Tunnell
1201 North Market Street
P.O. Box 1347
Wilmington, Delaware 19899
Attorneys for Appellant/Cross-Appellee
Fisons Horticulture, Inc.
1
BYRON L. GREGORY, ESQUIRE (Argued)
MICHELLE C. BURKE, ESQUIRE
McDermott, Will & Emery
227 West Monroe Street
Chicago, Illinois 60606
Attorneys for Appellee/Cross-Appellant
Vigoro Industries, Inc.
__________________
OPINION OF THE COURT
__________________
SCIRICA, Circuit Judge.
This is a trademark infringement case concerning
products in the home lawn and garden market. The owner of the
trademark "Fairway" for peat moss alleges another company
infringed its right to the mark and competed unfairly by selling
fertilizer under the name "Fairway Green."
Fisons Horticulture, Inc. ("Fisons"), a Canadian
corporation with its principal place of business in Bellvue,
Washington, brought this suit against Vigoro Industries, Inc.,
("Vigoro"), a Delaware corporation with its principal place of
business in Fairview Heights, Illinois. Fisons, which markets
peat moss under the registered trademark "Fairway", claims
Vigoro's use of the brand name "Fairway Green" for fertilizer
constitutes trademark infringement0 and unfair competition0under
0
Section 32 of the Lanham Act, 15 U.S.C. § 1114 (1988 & Supp. IV
1992) protects registered trademarks and provides in part:
(1) Any person who shall, without the consent of the
registrant --
(a) use in commerce any reproduction, counterfeit,
copy, or colorable imitation of a registered mark
2
the Lanham Act, 15 U.S.C. §§ 1051-1127 (1988 and Supp. IV 1992),
infringement of a common law trademark, common law unfair
competition, and violates the Delaware Deceptive Trade Practices
Act, Del. Code Ann. tit. 6, §§ 2531-33 (1993).
After a bench trial, the district court entered
judgment for Vigoro on Fisons' claims and for Fisons on Vigoro's
cross-claim for attorneys' fees under 15 U.S.C. § 1114(1), as
provided by 15 U.S.C. § 1117. Both parties appealed. For
reasons that follow, we will reverse the district court's
judgment for Vigoro on Fisons' Lanham Act claims, affirm its
in connection with the sale, offering for sale,
distribution, or advertising of any goods or
services on or in connection with which such use
is likely to cause confusion, . . .
. . .
shall be liable in a civil action by the registrant for
the remedies hereinafter provided.
0
Section 43(a) of the Lanham Act, 15 U.S.C. § 1125 (1988 & Supp.
IV 1992), which provides protection for both registered and
unregistered marks, states in part:
(a)(1) Any person who, on or in connection with any
goods or services, or any container for goods, uses in
commerce any word, term, name, symbol, or device, or
any combination thereof, or any false designation of
origin, false or misleading description of fact, or
false or misleading representation of fact, which --
(A) is likely to cause confusion, or to cause
mistake, or to deceive as to the affiliation,
connection, or association of such person with
another person, or as to the origin, sponsorship,
or approval of his or her goods, services, or
commercial activities by another person, . . .
. . .
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.
3
judgment for Fisons on attorneys' fees, and remand for a new
trial.
I.
A. Fisons Horticulture, Inc. and Fairway Peat Moss
Fisons is a subsidiary of a British-owned company,
Fisons, PLC, which has three divisions: pharmaceuticals,
scientific equipment, and horticultural products. Its
horticulture division has companies in the United Kingdom,
France, and the Benelux Countries, as well as in North America.
Fisons markets Canadian sphagnum peat moss, a natural
organic product used to improve soil texture and protect plants
from temperature extremes, under the registered trademark
"Fairway" in the United States. Fisons acquired the Fairway
trademark in 1980 from the original owner, Western Peat Company,
Ltd., which first used the trade name in 1959 and registered it
in 1960.
Fairway is not the only name under which Fisons sells
peat moss; it also uses the names "Sunshine" and "Parkland."
Sunshine and Parkland together account for over 95% of its sales
in the United States and Fairway accounts for the remainder.0
Fisons' three brands of peat moss account for about 25% of the
U.S. peat moss market. From 1987 through 1991, Fisons sold over
0
It is not uncommon for one business to use multiple brand names
for what is essentially the same product; the use of different
brand names allows Fisons to sell peat moss to a lawn and garden
store under a brand name not sold by a nearby competing discount
outlet.
4
$500,000 of Fairway peat moss each year. Fisons sells Fairway
peat moss primarily to homeowners for lawn and garden care
through the traditional channels -- lawn and garden stores,
hardware stores, home improvement centers, supermarkets, drug
stores, and discount stores. Fisons does not advertise Fairway
peat moss directly to consumers. Instead, it promotes its
product to retailers, makes advertising copy available to them,
and reimburses them for their advertising expenses.0
Besides selling peat moss, Fisons sells to the U.S.
greenhouse market potting mixes; analyses of soil, water and
tissue samples; and professional fertilizer. It also offers an
extensive line of lawn and garden products in Canada. Fisons has
been considering expanding its product line in the United States
by acquiring regional fertilizer brands and unifying them as a
national brand for the consumer fertilizer market. One of the
proposed trademarks for the national fertilizer brand is Fairway.
Fairway peat moss is sold in a white plastic bag with
the mark "Fairway" in large script in green letters above the
words "peat moss" in block red letters. The bag has a central
design of a golf course green surrounded by roses. A pin with a
red triangular flag appears in the center of the green, and the
word "sphagnum" is printed in white on the flag. On the back of
the package, recommended uses are listed as "preparing new
lawns," "top dressing old lawns," and "garden soil mix or mulch."
0
But in 1990, a year in which Fisons had retail sales of Fairway
peat moss in 17 states for a total of $684,316, only one retailer
published an advertisement for Fairway; it sought reimbursement
for $1,232.57.
5
The package notes that peat moss is used with fertilizer and that
it "saves fertilizer".
B. Vigoro Industries, Inc. and Fairway Green Fertilizer
Vigoro Industries has been in the fertilizer business
in the United States since 1890, and the Vigoro name has been
used on products since 1924. It is a prominent name in the
industry and it plans to compete with the market leader, O.M.
Scott & Sons Co., across the full range of Scott products. Vigoro
sells its products to consumers through garden centers, discount
stores, hardware stores, seed and feed stores, home improvement
centers and supermarkets and drug stores.
Before 1991, Vigoro offered standard quality fertilizer
to consumers, but in 1991, it decided to offer to the upscale
consumer market a new line of premium-quality fertilizers,
containing the patented slow-release nitrogen ingredient it used
in its premium golf course fertilizer. Vigoro hired an
advertising agency to help select a name and promotional program
for the new product. After a search disclosed that many proposed
names were registered as trademarks by other companies, the
agency recommended "Fairway Green."0
0
One of the names explored for Vigoro's new line of fertilizers
was "Golf Course Green," but the advertising agency's trademark
attorney found that a subsidiary of Sandoz Pharmaceutical
Corporation owned the named "Golf" for fertilizers and
herbicides. The trademark appeared to be inactive, so Vigoro
requested a royalty-free license to use "Golf Course Green." When
it was refused, Vigoro decided not to use the name. Vigoro made
no similar request of Fisons or any other owners of a "Fairway"
trademark.
6
The agency's trademark counsel stated in her
recommendation that "Fairway" was registered as a trademark by
several companies:
As we discussed, there is a possibility
that one or more of the owners of "fairway"
marks might contest Vigoro's right to use
FAIRWAY GREEN. However, since there is no
history of any of the prior users opposing
each other's uses of "fairway," the risk
should be acceptabl[y] low.
There is also a risk that the
application will be assigned to an examiner
who will take a strict position and site
[sic] one or more of the prior "fairway"
registrations as grounds for refusing to
register your mark. Because so many
"fairway" marks have been registered in the
past I believe this risk is also low.
Fisons Horticulture, Inc., v. Vigoro Indus., No. 92-66, slip op.
at 3 (D. Del. Mar. 3, 1993).
There were several other registrations and applications
including the word "Fairway," but few of them were in the same
trademark category as Fisons' Fairway, that is, U.S. class 10,
"Fertilizers." In that class, Western Peat, Fisons' predecessor,
had registered "Fairway" for peat moss in 1960 and O.M. Scott had
registered "Super Fairway" for agricultural and horticultural
fertilizers in 1988. O. M. Scott marketed Super Fairway for
commercial but not consumer use. After Vigoro applied for
registration of "Fairway Green" for its fertilizers in May, 1991,
Fisons contested both that application and O. M. Scott's prior
registration and applied for its own registration of "Fairway"
for fertilizer.
7
In addition to these trademark registrations and
applications in U.S. trademark class 10, approximately six
companies had registered or were trying to register "Fairway" for
one or more other products and services related to lawns and
gardens: grass seed, lawn and garden machinery and equipment, and
lawn services; but only three such registrations were completed
and active at the time the survey was made. Others were pending
or had been abandoned. Finally, there were unregistered uses of
the name "Fairway" for goods and services relating to lawns and
gardens, as shown by surveys of telephone books.
In May, 1991, Vigoro decided on the Fairway Green name.
It filed its trademark application on May 20, 1991 and introduced
the new product line at the National Hardware Show in August,
1991. The Hardware Show was the first notice Fisons had of
Vigoro's use of the name "Fairway Green." By June, 1992, Vigoro
had spent over $500,000 on advertising and promotion and had sold
approximately $1.3 million of Fairway Green products in 33
states. Fisons protested Vigoro's attempt to register the
trademark on September 26, 1991 and filed a suit in Delaware
Chancery Court on January 10, 1992; Vigoro removed it to United
States District Court.
Fairway Green fertilizer is sold in a heavy paper bag.
The background color of the bag is green, red, purple or magenta,
depending on which of four varieties of the fertilizer it
contains. On the front of the bag is a large yellow rectangle
that has in white on purple the words "Vigoro" at the top and
"Premium Lawn Fertilizer" just below the middle. Between these
8
two, in larger green letters with yellow highlighting borders,
are the words "Fairway Green." The word "Fairway" arches over
the word "Green," and in the arch is a golf course green
containing a golf ball, cup, and a pin with a red triangular
flag. Behind the golf course green is a yellow setting sun with
blue rays. On the package is the statement: "Keeps grass green
longer with fewer clippings when compared with soluble
fertilizers. Contains the controlled-release nitrogen used on 70
of America's top 100 golf courses. Environmentally-oriented,
formulated without nitrates."
C. Purchase and Use of the Products
Fairway peat moss and Fairway Green fertilizer occupy
the same segment of the lawn and garden products market, the
"fertilizer/soil conditioner" segment. They are frequently used
together to prepare the soil for planting, but the use of peat
moss may cut down on the use of fertilizer, as noted on the
Fairway peat moss package. The two products are both low-cost
items,0 and there was testimony that consumers who use these
products typically spend very little time deciding which product
to buy. Peat moss and lawn and garden fertilizers are often
displayed in the same area of stores, and both target homeowners
who do their own lawn and garden work. A number of other
companies selling lawn and garden products, including the market
0
A 4 cubic foot bag of Fairway peat moss has a retail price of
approximately $8.00 - $15.00; a 20-25 pound bag of Fairway Green
fertilizer has a retail price of approximately $8.00 - $15.00,
with discounts and rebates.
9
leader, O.M. Scott, sell both peat moss and fertilizer; Vigoro
sells bark mulch as well as fertilizer.
II.
"The law of trademark protects trademark owners in the
exclusive use of their marks when use by another would be likely
to cause confusion." Interpace Corp. v. Lapp, Inc., 721 F.2d
460, 462 (3d Cir. 1983); see, Ford Motor Co. v. Summit Motor
Products, Inc.,
930 F.2d 277, 291-93 (3d Cir.), cert. denied,
112
S. Ct. 373 (1991), and authorities cited therein; Scott Paper Co.
v. Scott's Liquid Gold, Inc.,
589 F.2d 1225, 1228-29 (3d Cir.
1978). To prove trademark infringement, a plaintiff must show
that: (1) the mark is valid and legally protectable; (2) the mark
is owned by the plaintiff; and (3) the defendant's use of the
mark to identify goods or services is likely to create confusion
concerning the origin of the goods or services. Ford Motor
Co.,
930 F.2d at 291 (citing Opticians Ass'n of America v. Independent
Opticians of America,
920 F.2d 187, 192 (3d Cir. 1990)).
The first two requirements, validity and legal
protectability, are proven where, as here, a mark was federally
registered and has become "incontestible" under the Lanham Act,
15 U.S.C. §§ 1058 and 1065.0 Ford Motor Co., 930 F.2d at 291
(citing Opticians
Ass'n, 920 F.2d at 194). If the mark has not
0
A trademark becomes incontestable after the owner files
affidavits stating that the mark has been registered, that it has
been in continuous use for five consecutive years, and that there
is no pending proceeding and there has been no adverse decision
concerning the registrant's ownership or right to registration.
10
been federally registered or, if registered, has not achieved
incontestability, validity depends on proof of secondary meaning,
unless the unregistered mark is inherently distinctive. Ford
Motor Co., 930 F.2d at 291 (citing A.J. Canfield Co. v.
Honickman,
808 F.2d 291, 296 (3d Cir. 1986)). The mark in this
case is both registered and incontestible.
A plaintiff must also prove the third requirement, the
likelihood of confusion, which exists "when the 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." Dranoff-Perlstein
Assoc. v. Sklar, 967 F.2d 852, 862 (3d Cir. 1992) (internal
quotations omitted). "Proof of actual confusion is not
necessary; likelihood of confusion is all that need be shown."
Ford Motor
Co., 930 F.2d at 292 (internal citations omitted).0
The showing of proof plaintiff must make for this requirement
depends on whether the goods or services offered by the trademark
0
Some actions brought under the Lanham Act require proof of
actual confusion and others do not. In an action brought under
sections 32 and 43(a) of the Lanham Act for trademark
infringement, 15 U.S.C. §§ 1114(1) and 1125(a)(1)(A), plaintiff
need not provide proof of actual confusion; he need only show
likelihood of confusion. Ford Motor
Co., 930 F.2d at 292. In an
action brought under another part of section 43(a) of the Lanham
Act for false advertising, 15 U.S.C. § 1125(a)(1)(B), plaintiff
need not prove the challenged advertising misled the public if he
can show it was literally false. However, if his claim is not
that the advertising was false but that it was misleading, he
must prove the public was actually misled or confused by it.
Johnson & Johnson-Merck Consumer Pharmaceuticals Co. v. Rhone-
Poulenc Rorer Pharmaceuticals,
19 F.3d 125, 129-30 (3d Cir.
1994); Sandoz Pharmaceuticals Corp. v. Richardson-Vicks, Inc.,
902 F.2d 222, 228-29 (3d Cir. 1990).
11
owner and the alleged infringer are in direct competition. "Where
the trademark owner and the alleged infringer deal in competing
goods or services, the court need rarely look beyond the mark
itself." Lapp, 721 F.2d at 462 (citations omitted). The court
focuses on the marks to determine whether they are "confusingly
similar." Country Floors, Inc. v. Gepner,
930 F.2d 1056, 1063
(3d Cir. 1991). Where the goods or services are not competing,
the similarity of the marks is only one of a number of factors
the court must examine to determine likelihood of confusion.
To determine likelihood of confusion where
the plaintiff and defendant deal in non-
competing goods or services, the court must
look beyond the trademark to the nature of
the products themselves, and to the context
in which they are marketed and sold. The
closer the relationship between the products,
and the more similar their sales contexts,
the greater the likelihood of confusion. Once
a trademark owner demonstrates the likelihood
of confusion, it is entitled to injunctive
relief.
Lapp, 721 F.2d at 462 (citations omitted).
Likelihood of confusion is also the test for actions
brought under section 43(a) of the Lanham Act, 15 U.S.C.
§1125(a)(1)(A) for unfair competition to prevent false
representations as to the source or origin of goods or services
by a mark confusingly similar to one already in use. See, e.g.,
Sun-Fun Products, Inc. v. Suntan Research & Development Inc., 656
F.2d 186, 192 (5th Cir. Unit A Sept. 1981) (factors relevant to
unfair competition claim under 15 U.S.C. § 1125 "essentially the
same" as those relevant to trademark infringement claim under 15
U.S.C. § 1114).
12
A. Likelihood of Confusion Under the Lanham Act.
We have adopted a ten-factor test to determine
likelihood of confusion in the market place as to a product's
source in cases of alleged trademark infringement and unfair
competition by a producer of a non-competing product. Dranoff-
Perlstein, 967 F.2d at 862-63 (3d Cir. 1992); Ford Motor
Co., 930
F.2d at 293;
Lapp, 721 F.2d at 463; Scott
Paper, 589 F.2d at
1229. They are:
(1) degree of similarity between the owner's mark and
the alleged infringing mark;
(2) the strength of the owner's mark;
(3) the price of the goods and other factors indicative
of the care and attention expected of consumers when making a
purchase;
(4) the length of time the defendant has used the mark
without evidence of actual confusion arising;
(5) the intent of the defendant in adopting the mark;
(6) the evidence of actual confusion;
(7) whether the goods, though not competing, are
marketed through the same channels of trade and advertised
through the same media;
(8) the extent to which the targets of the parties'
sales efforts are the same;
(9) the relationship of the goods in the minds of
consumers because of the similarity of function; and
13
(10) other facts suggesting that the consuming public
might expect the prior owner to manufacture a product in the
defendant's market, or that he is likely to expand into that
market.
In Lapp, we applied these factors to decide an issue of
trademark protection where two parties used the same trademark on
non-competing products. The Lapp Division of plaintiff Interpace
Corporation ("Lapp-Interpace") made and sold ceramic insulators
under the "Lapp" trademark. The trademark was registered in
1953. Defendant, Lapp, Inc., the U.S. marketing arm of a German
corporation, had distributed wire, cable and related electrical
hardware in the U.S. under the names "Lapp" and "Lapp Cable"
since 1977 but had never applied for federal registration of its
mark. Lapp-Interpace sued under the Lanham Act to enjoin Lapp,
Inc., from using the "Lapp" name on its products. The district
court had dismissed the complaint because of its reading of Scott
Paper. We reversed, holding that Scott Paper mandated judgment
for the plaintiff. Lapp, 721 F.2d at 462.
The district court made factual findings in every
relevant area of inquiry, but it did not formally apply the Scott
Paper factors. Lapp, 721 F.2d at 463. We applied them and found
they weighed in favor of the plaintiff. While the parties'
sales efforts at that time were not directed to the same targets,
there was evidence that they would likely clash in the future;
defendant, which had previously sold wire and cable for use in
electrical components shipped to Europe and conforming to
European specifications, had begun to manufacture wire and cable
14
that met United Stated specifications. We noted "[t]his
development considerably increase[d] the overlap in the parties'
actual and potential customer pool," id. at 464, and determined
plaintiff's ceramic insulators and defendant's wire and cable
were closely related functionally. Both were basic electrical
components and were often used together.
We concluded customers would find it natural for the
manufacturer of Lapp ceramic insulators and pole hardware to
expand into wire and cable, and Lapp-Interpace introduced
evidence it planned to do just that. We noted:
The likelihood-of-expansion factor is pivotal
in non-competing products cases such as this.
One of the chief reasons for granting a
trademark owner protection in a market not
his own is to protect his right someday to
enter that market. When it appears extremely
likely, as it does here, that the trademark
owner will soon enter the defendant's field,
this final factor weighs heavily in favor of
injunctive relief.
Id. (citation omitted). We noted the purpose of the ten-factor
analysis was to determine likelihood of confusion in those cases
where the trademark owner had not yet entered the defendant's
market. The factors are of importance here, where the markets
for peat moss and fertilizer overlap slightly, but are not in
direct competition. The two products are often used together.
Fisons has not yet entered the consumer fertilizer market, but
claims it has plans to do so and introduced evidence to that
effect.
B. Reverse Confusion
15
Plaintiffs under the Lanham Act also rely on "reverse
confusion" or "dilution" of trademark theories that have been
adopted by a number of other courts of appeal.0 Ordinarily, one
expects that the new or junior user of the mark will use to its
advantage the reputation and good will of the senior user by
adopting a similar or identical mark. Reverse confusion occurs
when a larger, more powerful company uses the trademark of a
smaller, less powerful senior owner and thereby causes likely
confusion as to the source of the senior user's goods or
services. See Sands, Taylor & Wood Co. v. Quaker Oats Co., 978
F.2d 947 (7th Cir. 1992) (Quaker Oats Co.'s use of "Thirst-Aid"
in advertising for Gatorade was trademark infringement of
"Thirst-Aid" registered trademark owned and formerly used by
small Vermont company); Banff, Ltd. v. Federated Dep't Stores,
Inc.,
841 F.2d 486 (2d Cir. 1988) (marketer of women's clothing
with unregistered trademark "Bee Wear" could enjoin Bloomingdales
from using term "B-Wear" in its stores and on its clothes);
Ameritech, Inc. v. American Information Technologies Corp.,
811
F.2d 960 (6th Cir. 1987) (use by defendant holding company for
five midwestern Bell telephone companies of unregistered trade
name and mark of plaintiff, a small Ohio corporation that
reclaimed industrial oils, might cause consumers to assume
plaintiff was subsidiary of defendant); Capital Films Corp. v.
Charles Fries Productions, Inc.,
628 F.2d 387 (5th Cir. 1980)
0
While we have not previously adopted these theories, in Lapp, we
spoke of protecting the market for expansion by a senior user of
a trademark, one of the considerations in reverse confusion. See
Lapp, 721 F.2d at 464.
16
(reverse confusion doctrine could be applied where defendants,
including American Broadcasting Company, planned to produce movie
on Lee Harvey Oswald bearing same title as movie produced by
small production company); Big O Tire Dealers, Inc., v. Goodyear
Tire & Rubber Co., 561 F.2d 1365 (10th Cir. 1977) (reverse
confusion occurs where "infringer's use of plaintiff's mark
results in confusion as to origin of plaintiff's product"). In
reverse confusion,
the junior user saturates the market with a
similar trademark and overwhelms the senior
user. The 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. The result is that
the senior user loses the value of the
trademark -- its product identity, corporate
identity, control over its goodwill and
reputation, and ability to move into new
markets.
Ameritech, 811 F.2d at 964.
Without the recognition of reverse confusion, smaller
senior users would have little protection against larger, more
powerful companies who want to use identical or confusingly
similar trademarks.
The logical consequence of [failing to
recognize reverse confusion] would be the
immunization from unfair competition
liability of a company with a well
established trade name and with the economic
power to advertise extensively for a product
name taken from a competitor. If the law is
to limit recovery to passing off, anyone with
adequate size and resources can adopt any
trademark and develop a new meaning for that
trademark as identification of the second
user's products.
17
Big O Tire Dealers, 561 F.2d at 1372 (quoting Big O Tire Dealers
v. Goodyear Tire & Rubber Co.,
408 F. Supp. 1219, 1236 (D. Colo.
1976)).
Although we have not yet adopted the doctrine of
reverse confusion in a trademark case, we do so here and endorse
the statement of the United States Court of Appeals for the
Second Circuit:
The objectives of [the Lanham] Act -- to
protect an owner's interest in its trademark
by keeping the public free from confusion as
to the source of goods and ensuring fair
competition -- are as important in a case of
reverse confusion as in typical trademark
infringement. Were reverse confusion not a
sufficient basis to obtain Lanham Act
protection, a larger company could with
impunity infringe the senior mark of a
smaller one. Consequently, we hold that
reverse confusion . . . is actionable under
§43(a) of the Lanham Act.
Banff, 841 F.2d at 490-91 (citation omitted).
III.
On appeal, Fisons contends the district court
misapplied the relevant law in finding there was little
likelihood of confusion.0 We have jurisdiction under 28 U.S.C. §
1291.
0
We review the district court's findings of fact for clear error,
Sheet Metal Workers Int'l Assn., Local 19 v. 2300 Group, Inc.,
949 F.2d 1274, 1278 (3d Cir. 1991), and exercise plenary review
over its interpretation, application and conclusions of law.
Tudor Dev. Group v. United States Fidelity & Gaur. Co.,
968 F.2d
357, 359 (3d Cir. 1992). We review the cross-appeal of a denial
of attorneys' fees under the Lanham Act for abuse of discretion.
Standard Terry Mills, Inc. v. Shen Mfg. Co.,
803 F.2d 778, 782
(3d Cir. 1986).
18
In this case, the mark is registered and incontestible,
so plaintiff had to show only likelihood of confusion to be
entitled to relief. Because the goods in question are not in
direct competition, the district court applied the ten-factor
test of Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir.
1983). The district court found "purchasers of ordinary
intelligence" were unlikely to confuse the Fisons' Fairway
trademark with Vigoro's Fairway Green mark. On appeal, Fisons
contends the court misapplied the Lapp factors and should have
applied the law of reverse confusion.
In its analysis of the likelihood of confusion, the
district court combined some of the ten factors set out in Ford
Motor Co. v. Summit Motor Products, Inc., 930 F.2d 277, 293 (3d
Cir. 1991) and Lapp and omitted others. We follow its outline
and note the corresponding Lapp factors in parentheses.
A. Channels of Trade and Evidence of Actual Confusion (Lapp
factors (6), (4), (7), (8) and (3)).
The district court stated:
These two products, fertilizer and peat
moss, are sold in similar channels of trade,
including retail home and garden supply
stores, and they are directed to the same or
similar purchasers, homeowners who do their
own lawn and garden care. With Vigoro
placing its product in the market in August
of 1992, and having implemented an extensive
plan for promotion and advertising in that
market, one would have expected that, if
there were a substantial risk of actual
confusion in the market place, the plaintiff
would have come forward at the trial in July
19
of 1991 with some evidence of that actual
confusion. It did not.
Fisons Horticulture, slip op. at 8. Although acknowledging the
channels of trade (Lapp factor (7)) and the target audience (Lapp
factor (8)) were the same or similar, the district court did not
weigh these similarities in Fisons' favor. Instead, it appeared
to assume that because of these similarities, plaintiff should
have been able to collect and present evidence of actual
confusion (Lapp factor 6)) if there had been any risk or
likelihood of confusion. Because plaintiff did not present such
evidence, the court apparently failed to count the similarities
in channels of trade and target audience in Fisons' favor. The
district court misapplied the law here. In Lapp, we did not
discount the strength of plaintiff's case in one area because of
weakness in another; we weighed each factor separately.0 More
importantly, while evidence of actual confusion would strengthen
plaintiff's case, it is not essential. As we stated in Lapp,
"Once a trademark owner demonstrates likelihood of confusion, it
is entitled to injunctive relief." Lapp, 721 F.2d at 462.
Furthermore, the district court's conclusion that any
evidence of actual confusion (Lapp factor (6)) would have
appeared in the time the two products were on the market (Lapp
0
This is not to say that all factors must be given equal weight.
The weight given to each factor in the overall picture, as well
as its weighing for plaintiff or defendant, must be done on an
individual fact-specific basis. Not all of the factors are
present in every case. We have emphasized the importance of
similarity of the marks in likelihood of confusion, Ford Motor
Co., 930 F.2d at 293, but we have not ranked the factors
otherwise.
20
factor (4)) may not be warranted in this case. The district
court stated that Vigoro had placed its product in the market in
August, 1991, a year before the start of the trial, but that
finding was in error. August, 1991 was the date of the trade
show when Vigoro first displayed its new product, not the date of
distribution to retail outlets or even to distributors. The
fertilizer was not shipped to distributors until January 1992 and
probably was not offered to consumers until a month or more after
that. The test is the likelihood of confusion from the
perspective of ordinary consumers, not from the perspective of
people in the trade. See Ford Motor Co., 930 F.2d at 297. By
the start of trial, the product had been available to consumers
for less than six months.
When parties have used similar marks for a sufficient
period of time without evidence of consumer confusion about the
source of the products, there is an inference that future
consumers will not be confused either. See e.g. Scott Paper, 589
F.2d at 1230 (finding no likelihood of confusion in part because
"defendant's mark had been utilized . . . for over forty years
without any evidence of actual confusion."). In this case, the
district court will have to reevaluate Lapp factor (4) in light
of the fact that Vigoro's produce was not available to consumers
until the winter or spring of 1992. In addition, the court
should take into account that the products were ones consumers
21
spend little time and care in selecting; in the case of such
products, confusion as to their origin may pass unnoticed.0
B. Similarity of the Two Marks (Lapp factor (1)).
As we have said, degree of similarity of the marks may
be the most important of the ten factors in Lapp. Ford Motor
Co., 930 F.2d at 293. In considering this factor, the district
court noted the obvious similarities in Fisons' and Vigoro's
marks. "Both include the word fairway. Both attempt to
associate the product with golf, and both do so by using a
package design that has a golf course green, a pin on the green
and a red triangular flag on the pin [as opposed to the
rectangular flag generally found on golf courses]." Fisons
Horticulture, slip op. at 8. The court, however, declined to
find these similarities confusing. It stated:
0
Because the products at issue represent a small investment for
the consumer, this may not be a case in which actual confusion
would readily manifest itself to a manufacturer. The products
are not likely to malfunction. If the consumer thinks Fairway
peat moss and Fairway Green fertilizer are produced by the same
company, the manufacturers may not know. "Purchasers are unlikely
to bother to inform the trademark owner when they are confused
about an inexpensive product." Beer Nuts v. Clover Club Foods
Co.,
805 F.2d 920, 928 (10th Cir. 1986); see also Union Carbide
Corp. v. Ever-Ready, Inc.,
531 F.2d 366, 383 (7th Cir.), cert.
denied,
429 U.S. 830 (1976).
The court did not discuss Lapp factor (3), the price of
the goods and other factors indicative of the care and attention
expected of ordinary consumers when making a purchase. The
greater the care and attention, the less the likelihood of
confusion. Although the district court made no finding on this
factor, there was uncontested evidence in the record that
consumers spend little time and attention deciding which of the
low-cost products to buy in this market.
22
[W]hile the two marks incorporate the word
[fairway]0, they do so in ways that suggest
somewhat different things. Fairway suggests
a thing or a place, a golf course fairway.
Fairway Green suggests a color, the color of
a golf course fairway (although including a
drawing of a golf course green on the package
may lead one to associate Fairway Green with
the green on a golf course). The names alone
do not, therefore suggest a risk of
confusion.
Id. at 8-9 (footnote added). The court went on to note that
while there were some similarities in the packaging, the
differences in design, color, and materials were so substantial
they tended to differentiate the products and sellers.0
Id. at
9.
The fact that there may be some differences in what the
two names suggest is not alone enough to conclude the names are
not confusingly similar. Vigoro's use of Fisons' entire
trademark, "Fairway," in an arc over a descriptive word, "green,"
suggests a likelihood of confusing similarity. "[A] subsequent
user may not avoid likely confusion by appropriating another's
entire mark and adding descriptive or non-descriptive matter to
it." J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair
Competition, § 23:15[8] at 23-102 (3d ed. 1992). Vigoro contends
that courts have not recognized such a rule explicitly, but this
court and others have recognized it implicitly. In Lapp, we
0
The district court's opinion used the word "green" here, but it
must have meant "fairway," because both marks contain only one
common word, "fairway."
0
Fisons pointed out the similarities in the pictures of golf
course greens on the packages, but made no claim for trade dress
infringement. However, similarity in trade dress is "highly
probative" of likelihood of confusion. Ford Motor Co., 930 F.2d
at 297.
23
found the trademarks "Lapp" and "Lapp Cable" identical for all
practical purposes. 721 F.2d at 463. See also Tree Tavern
Products, Inc. v. Conagra, Inc.,
640 F. Supp. 1263, 1270 (D. Del.
1986) ("[S]imilarity between the marks 'Side Dish' and 'Banquet
Side Dish for One' is obvious"); Country Floors, Inc. v. Gepner,
930 F.2d 1056 (3d Cir. 1991) (where dominant portions of two
marks, "Country Floors" and "Country Tiles," are the same,
confusion is likely). Here, the similarity of marks resembles
that in Lapp. As Fisons correctly noted, trademark infringement
does not require exact copying of the trademark as the owner uses
it. "The marks need not be identical, only confusingly similar."
Merchant & Evans, Inc. v. Roosevelt Bldg. Products Co.,
963 F.2d
628, 636 (3d Cir. 1992) (quoting Country
Floors, 930 F.2d at
1063). They are confusingly similar if ordinary consumers would
likely conclude that Fairway peat moss and Fairway Green
fertilizer share a common source, affiliation, connection or
sponsorship. Sands, Taylor & Wood Co. v. Quaker Oats Co.,
978
F.2d 947, 957 (7th Cir. 1992); see also International Kennel
Club, Inc. v. Mighty Star, Inc.,
846 F.2d 1079, 1089 (7th Cir.
1988); M. Kramer Mfg. Co. v. Andrews,
783 F.2d 421, 449 (4th Cir.
1986).
In analyzing the appearance of the products, as in
analyzing their names, the district court did not seem to focus
on the overall impression. As the United States Court of Appeals
for the Second Circuit stated, the test for determining the
similarity of the marks is "whether the labels create the 'same
overall impression' when viewed separately." Banff, Ltd. v.
24
Federated Dep't Stores, Inc., 841 F.2d 486, 492 (2d Cir. 1988)
(citations omitted). See American Auto. Ass'n. v. AAA Ins.
Agency, Inc.,
618 F. Supp. 787, 792 (W.D.Tex. 1985) (In
determining whether two marks are confusingly similar,
appropriate test is not side-by-side comparison of marks, the
emphasizing differences in detail, but whether average consumer,
on encountering one mark in isolated circumstances of marketplace
and having only general recollection of the other, would likely
confuse or associate the two.) In Ford Motor
Co., 930 F.2d at
293, we stated:
Perhaps the most important of these [10]
factors is the first on the Scott Paper list:
the degree of similarity between the two
marks. We recently held that "if the overall
impression created by marks is essentially
the same, 'it is very probable that the marks
are confusingly similar.'"
Id. at 293.
We conclude the district court misapprehended the legal
standard when it undertook a detailed analysis of the differences
in the marks rather than focusing on the overall impression
created by them.
25
C. Strength of the Fairway Mark (Lapp factor (2)).
The district court credited Fisons' evidence of
strength of its mark: that the mark was incontestible within the
meaning of the Lanham Act, 15 U.S.C. §§ 1058, 1065,0 that it was
a strongly suggestive mark bordering on being arbitrary, and that
it had been in use for thirty years. However, the court
concluded:
This list of examples of the strength of
the Fisons mark is not particularly
compelling evidence of risk of confusion.
Fisons has not, for example, shown that its
FAIRWAY mark is uncommon, or contains an
unusual use of the word; nor has it shown
that it has built up the strength of the mark
over the years with a substantial economic
investment that can be confirmed by evidence
of a depth of consumer awareness of the mark
and its product. Fisons' failure to offer
this evidence undermines its argument that
FAIRWAY is, in fact, a strong mark.
Fisons Horticulture, slip op. at 10. Fisons contends the
district court applied incorrect standards in ignoring its
evidence of strength and using other tests for the strength of
its mark. Fisons argues its mark qualifies for protection
because of its distinctiveness. Trademark law recognizes
categories of marks based on their levels of inherent
distinctiveness. From least to most distinctive, they are: (1)
generic; (2) descriptive; (3) suggestive; (4) arbitrary; and (5)
fanciful.0 Two Pesos, Inc. v. Taco Cabana, Inc., 112 S. Ct. 2753,
0
For the meaning of "incontestible" under the Lanham Act, see,
supra, n. 7.
0
Sometimes, only four categories are used, with arbitrary and
fanciful grouped together. See e.g. Dranoff-Perlstein Assoc. v.
Sklar,
967 F.2d 852, 855 (3d Cir. 1992).
26
2757 (1992). The latter three categories are deemed "inherently
distinctive" and are entitled to protection. Id. The word
"green" is so common that it has no trademark significance when
applied to lawn and garden products, but there was expert
testimony, which the district court accepted, that the term
"Fairway" was either suggestive or arbitrary.0 It could
therefore qualify for protection.
The district court focused on Fisons' failure to show
that its mark, "Fairway," was uncommon or contained an unusual
use of the word. The fact that a word is common does not
necessarily make it weak or unworthy of protection as a
trademark; the district court's focus on an unusual use of the
word is closer to mark. As the United States Court of Appeals
for the Sixth Circuit stated, "The significant factor is not
whether the word itself is common, but whether the way the word
is used in a particular context is unique enough to warrant
trademark protection." Wynn Oil Co. v. Thomas, 839 F.2d 1183,
1190 n.4 (6th Cir. 1988). The words "shell," "camel" and "apple"
are not uncommon, but they are arbitrary when applied to
gasoline, cigarettes and computers. 1 McCarthy on Trademarks,
0
Arbitrary trademarks are ones that do not describe any quality
or characteristic of the goods or services for which they are
used. The mark "V-8" on juice made from eight different
vegetables was held to be arbitrary. Standard Brands, Inc. v.
Smidler,
151 F.2d 34 (2d Cir. 1945). As a result of advertising,
consumers came to associate the mark with such a drink, but
without advertising, no one could have reasonably expected
consumers to associate V-8 with a vegetable juice cocktail. Id.;
see also 1 McCarthy on Trademarks § 11.04[1].
27
§11:26[3].0 Similarly, the term "Fairway," is not uncommon, but
when applied to peat moss, Fisons' expert stated it ranked
between arbitrary and suggestive on the scale of distinctiveness.
Fisons therefore presented evidence that its use of the common
term was unusual enough that it could qualify for trademark
protection.
Distinctiveness on the scale of trademarks is one
measure of a mark's strength. See, e.g., Nutri/System Inc. v.
Con-Stan Industries, Inc., 809 F.2d 601, 605 (9th Cir. 1987).
Commercial strength, or marketplace recognition of the mark, is
another. See e.g. Ford Motor
Co., 930 F.2d at 297. Vigoro
contends the registration and use of "Fairway" as a trademark by
third parties for related products and services undermines
Fisons' claim of the strength of its mark. O.M. Scott registered
a trademark, "Super Fairway," for commercial fertilizer in 1989,
and six other companies have active or pending registrations of
marks using the term "Fairway" for grass seed, lawn and garden
machinery and equipment, and lawn services. While other
registrations and uses of Fairway for related products and
services would make the mark less strong if they were in the same
market, their use in different markets and for products and
services that are not closely related does not necessarily
undermine Fisons' claim of strength.
0
McCarthy refers to the conclusion that a common word is
automatically "weak" as a trademark as the 'Common Word' fallacy.
1 McCarthy on Trademarks § 11.26[3].
28
The district court found Fisons had not demonstrated it
had built up consumer awareness of the mark and its product
through substantial investment and concluded Fisons' failure to
offer evidence of commercial strength "undermines its argument
that FAIRWAY is, in fact, a strong mark." Fisons Horticulture,
slip op. at 10. If this were a case of forward confusion, rather
than reverse confusion, the district court would be correct in
giving considerable weight to evidence of commercial strength, or
its absence.
But in a case of reverse confusion, the evidence of
commercial strength is different from what we expect in a case of
forward confusion, where the junior user tries to palm off his
goods as those of the senior user. In forward confusion, the
junior user trades on the senior user's good name; it is
therefore saved much of the expense of advertising to create
market recognition of its mark. In reverse confusion, the junior
user is typically a wealthier, more powerful company who can
overwhelm the market with advertising. An aggressive junior user
may thereby achieve greater commercial strength in a short period
of time than the senior user has after years of marketing its
product. See, e.g., Big O Tire Dealers, Inc. v. Goodyear Tire &
Rubber Co., 561 F.2d 1365, 1367-68 (10th Cir. 1977) (in one year,
defendant Goodyear spent over $9,690,000 in massive, nationwide
promotional campaign using "Bigfoot" trademark of plaintiff, a
small tire-buying organization with total net worth of $200,000).
"The result is that the senior user loses the value of the
trademark -- its product identity, corporate identity, control
29
over its goodwill and reputation, and ability to move into new
markets." Ameritech, Inc. v. American Information Technologies
Corp., 811 F.2d 960, 964 (6th Cir. 1987). In one year, Vigoro
spent over $500,000 on advertising its new product, Fairway
Green. That is approximately the amount of Fisons' total yearly
sales of Fairway peat moss.
Fisons' Fairway mark was strong on the scale of
trademarks and in active use when Vigoro started using the
Fairway Green mark, but it was commercially weak. The district
court, in treating this case like one of forward confusion, put
great emphasis on the lack of commercial strength of Fisons' mark
and virtually none on its distinctiveness. In reverse confusion,
the mark of the senior user is typically weaker commercially than
that of the junior user. On remand, the strength of Fisons' mark
will have to be reevaluated in light of our adoption of reverse
confusion and its distinctiveness as well as its commercial
strength will have to be considered.
D. Vigoro's Intent in Adopting the Mark (Lapp factor (5)).
The district court had the following to say about
Vigoro's intent:
The relevant intent inquiry in a likelihood
of confusion case is "whether the defendant
adopted a mark with the intent of promoting
confusion and appropriating the prior user's
good will." W.W.W. Pharmaceutical Co., Inc.
v. The Gillette Co., 23 U.S.P.Q.2d 1609, 1619
(S.D.N.Y. 1992), aff'd, 1993 U.S. App. LEXIS
1051 (2d Cir. 1993). There is no proof that
Vigoro adopted the name Fairway green in an
attempt to benefit from the general good will
developed by Fisons in its FAIRWAY mark.
30
Fisons Horticulture, slip op. at 10.
While the inquiry the district court identifies as the
"relevant intent inquiry" is important, it is appropriate to
cases of forward confusion, not reverse confusion. In the latter
type of case, the junior user does not seek to trade on the good
will and name of the senior user; instead he overwhelms it.
The intent inquiry appropriate to this case is more
like one we identified in Lapp in relying on the district court's
finding that Lapp, "while it may have acted innocently, was
careless in not conducting a thorough name search for American
uses of the name." Lapp, 721 F.2d at 463. The questions the
district court should consider here are whether Vigoro conducted
an adequate name search for other companies marketing similar
goods under trademarks including the name "Fairway," and whether
it followed through with its investigation when it found there
were such companies. Did Vigoro consider the likelihood of
confusion with other companies' marks and products (as opposed to
considering the likelihood that someone would contest its new
mark)? Did it attempt to contact companies using a similar mark,
such as Fisons? Was Vigoro careless in its evaluation of the
likelihood of confusion?
31
E. Fisons' Plans to Enter the Market (Lapp factor (10)).
The district court found:
Fisons currently sells fertilizer in
Canada. At the trial it offered some
evidence that it had plans to expand that
business into the United States. There was
not sufficient evidence on this point to
suggest that this possibility should be a
factor in an analysis of a risk of possible
likelihood of confusion.
Fisons Horticulture, slip op. at 10. As this factor appears in
Lapp, it includes "other facts suggesting that the consuming
public might expect the prior owner to manufacture a product in
the defendant's market, or that it is likely to expand into that
market." 721 F.2d at 463-64. The district court considered only
evidence of planned expansion, the second part of the test. Such
a narrow view is not warranted.
Under Lapp, the court looks not only at the likelihood
of expansion, but also at facts "suggesting the consuming public
might expect the prior owner to manufacture a product in the
defendant's market." 721 F.2d at 463. In a case of reverse
confusion, it may also consider facts suggesting the consuming
public might expect the junior owner to manufacture a product in
the senior user's market. One fact suggesting this possibility
is that other companies market both products. Fisons presented
evidence that the market leader, O.M. Scott, sold both peat moss
and fertilizer under the same brand name, Hyponex. In addition,
three other lawn and garden companies in this country, Kellog,
Gandini and Fertiloam sell both peat moss and fertilizer under
the same brand name. Therefore, the public is used to seeing
32
both fertilizer and peat moss marketed under the same name by the
same company.
Second, the products are closely related and are used
together in preparing lawns and gardens. Even if other companies
did not market both products, the consuming public might find it
natural for one company to do so. See, e.g., International
Kennel Club, 846 F.2d at 1089 (fact that parties' products are
the kind the public might very well attribute to the same source
provides additional evidence of likelihood of confusion).
Finally, there is Fisons' evidence of planned
expansion. In Lapp, we stated:
One of the chief reasons for granting a
trademark owner protection in a market not
his own is to protect his right someday to
enter that market. 2 J.T. McCarthy,
Trademarks and Unfair Competition § 24:5
(1973). When it appears extremely likely, as
it does here, that the trademark owner will
soon enter the defendant's field, this . . .
factor weighs heavily in favor of injunctive
relief.
Lapp, 721 F.2d at 464. In Lapp, where the evidence showed
expansion to be extremely likely, the factor weighed heavily in
plaintiff's favor. If there is evidence of expansion, but it is
less strong, it will weigh less heavily in plaintiff's favor.
F. Relationship of the Goods (Lapp factor (9)).
The district court did not consider this factor, "the
relationship of the goods in the minds of consumers because of
the similarity of function." Fisons' peat moss and Vigoro's
fertilizer are both sold as soil conditioners and meant to be
33
used for the same purpose: to improve the soil for planting. The
question is whether the consumer might therefore reasonably
conclude that one company would offer both of these related
products. In Scott Paper, 589 F.2d at 1230, we noted other cases
in which the relationship of the products was close enough to
lead to the likelihood of confusion and the relationship of those
products: Scarves by Vera, Inc. v. Todo Imports Ltd.,
544 F.2d
1167, 1173 (2d Cir. 1976) (women's scarves and apparel with
women's cosmetics and fragrances); James Burrough Ltd. v. Sign of
Beefeater, Inc.,
540 F.2d 266, 275 (7th cir. 1976) (liquor with
restaurant selling liquor); Union Carbide Corp. v. Ever-Ready,
Inc.,
531 F.2d 366, 381-82 (7th Cir.), cert. denied,
429 U.S. 830
(1976) (batteries and lamps with light bulbs and lamps); Alfred
Dunhill of London, Inc. v. Kasser Distillers Products Corp.,
350
F. Supp. 1341 (E.D. Pa. 1972), aff'd without opinion,
480 F.2d
917 (3d cir. 1973) (pipe tobacco and bar accessories with scotch
whisky). See Scott
Paper, 589 F.2d at 1230.
In Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1187 (6th
Cir. 1988), the court analyzed this factor under the category,
"Relatedness of the Goods." It assessed the relatedness of the
car care products one company sold to consumers and the bulk car
wax for use in car washes and the car washing service another
company sold under an essentially similar trademark. The court
noted the test was whether the goods were similar enough that a
consumer could assume they were offered by the same source. The
court concluded, "A consumer who was used to buying CLASSIC
products to wash his or her car could easily assume that the
34
makers of CLASSIC products had expanded into the car wash
business." 839 F.2d at 1187.
In this case, the question is whether a consumer who
bought Fisons' peat moss could reasonably assume that the company
had expanded its offerings to include fertilizer or, as would be
more likely in this case of reverse confusion, whether a consumer
who bought or saw the advertising for Fairway Green fertilizer
could reasonably assume that the same source also offered the
Fairway peat moss it saw in the stores.
G. Weighing the Factors
Of the ten factors set out in Ford Motor Co. and Lapp
for determining the likelihood of confusion, the district court
misapplied some and did not consider others. On remand, it
should consider each of the factors and weigh each in a manner
consistent with this opinion and with the other case law.
H. State Law Claims
The district court concluded that Fisons' Lanham Act
claims failed because there was no likelihood of confusion and,
therefore, its state law claims failed as well. Because the
court will reconsider the likelihood of confusion on remand, it
should also reconsider Fisons' state law claims.
IV.
For reasons stated above, we will reverse the judgment
of the district court as to Fisons' claims under the Lanham Act
and remand for a new trial on those claims and the state law
35
claims.0 We will affirm the judgment of the district court
denying Vigoro's claim for attorneys' fees as a prevailing party
under the Lanham Act.
Fisons Horticulture v. Vigoro Industries
No. 93-7224 and 93-7287
GARTH, Circuit Judge, concurring in part and dissenting in part:
The majority opinion has convincingly analyzed this
appeal under Scott Paper Co. v. Scott's Liquid Gold, Inc., 589
F.2d 1225 (3d Cir. 1978) and Interpace Corp. v. Lapp,
721 F.2d
460 (3d Cir. 1983). While I am in wholehearted agreement with
the majority that we must reverse the district court's ruling on
the merits,0 I can see no purpose in remanding for retrial of
Fisons' Lanham Act claims when it is so evident that the marks at
issue here are confusingly similar.
Accordingly, I would reverse the decision of the
district court, enter judgment in favor of Fisons on its Lanham
Act claims, and remand with instructions that the district court
fashion the appropriate relief, and consider Fisons' state
claims.
0
We recognize that an extensive record has already been developed
in this case. We will leave it to the sound discretion of the
district court to determine whether any additional evidence is
appropriate.
0
I also agree with the majority that we must affirm the
district court's denial of Vigoro's request for attorneys' fees
inasmuch as Vigoro is no longer the prevailing party under 15
U.S.C. § 1117.
36
I
The majority's able opinion not only details the
analysis required in Lanham Act cases, but also applies that
analysis to the record before us on appeal. Typically, having
found error in the district court's application of the Lapp
analysis, we would reverse and remand to the district court with
instructions to take actions consistent with the foregoing
opinion.
Nevertheless, I see little need to do so in the present
case. Judge Scirica's majority opinion already has performed the
Scott Paper/Lapp analysis and the requisite balancing. That
analysis can lead to only one conclusion: that the district court
erred in ruling for Vigoro on the merits of Fisons' Lanham Act
claims.
Although we have held that a district court's finding
of similarity does not necessarily compel a conclusion that two
marks are confusingly similar, Merchant & Evans, Inc. v.
Roosevelt Building Products Co., Inc., 963 F.2d 628, 636 (3d Cir.
1992); Country Floors, Inc. v. Gepner,
930 F.2d 1056, 1065 (3d
Cir. 1991), we also have held that "[p]erhaps the most important
of [the] factors is the first on the Scott Paper list: the degree
of similarity between the two marks." Ford Motor Co. v. Summit
Motor Products, Inc.,
930 F.2d 277, 293 (3d Cir. 1991). In
Opticians Ass'n of Am. v. Independent Opticians of Am.,
920 F.2d
187, 195 (3d Cir. 1990), we held that, "if the overall impression
created by the marks is essentially the same, 'it is very
37
probable that the marks are confusingly similar.'" (Citation
omitted).
As the majority recognizes, in analyzing the appearance
of the products at issue here, the district court failed to focus
on their overall impression. Maj. Op. typescript at 25. One
need only look at the marks themselves to conclude that they are
so similar that one can only wonder how an ordinary consumer of
the goods could be anything but confused by the parties'
indistinguishable use of the FAIRWAY mark. The packaging of the
products, the prominent use of the word "Fairway," and the
inclusion of a triangular flag rising from a tee centered on a
golfing green, are, for all intents and purposes, virtually
identical as to both products. Under Ford Motor Co. and
Opticians Association of America, this similarity all but creates
a presumption of the requisite likelihood of confusion.
Consequently, I see no point in ordering the district
court to revisit this trademark controversy in its entirety, and
compelling the parties to spend additional time, money, and
efforts on re-litigating the Scott Paper/Lapp factors, when the
conclusion to which the district court must come has been
outlined so effectively in the majority's opinion.
II
Accordingly, I would reverse the district court's order
and remand with the direction that the district court enter
judgment for Fisons on its Lanham Act claims. On remand, then,
the district court would have to do no more than fashion the
38
appropriate relief (i.e., frame an injunction, assess damages,
impose or not impose attorneys' fees, costs, interest, etc.) and
resolve Fisons' state law claims, which the district court failed
to address adequately in its initial decision. Because the
majority would dispose of this appeal in a manner which I believe
is wasteful of judicial resources, I dissent from so much of the
majority's opinion as would remand to the district court for
retrial of Fisons' Lanham Act claims.
39
