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On Appeal from the United States District Court
*Judge Nora Barry Fischer, United States District
Judge for the Western District of Pennsylvania, sitting bydesignation.
James H. Hulme, Esquire (Argued)
Arent, Fox, Kintner, Plotkin & Kahn, LLP
1050 Connecticut Avenue, N.W., Suite 500
Washington, DC 20036
Counsel for Appellant Sabinsa Corporation
Sean R. Kelly, EsquireSaiber, LLCOne Gateway Center, 13th FloorSuite 300Newark, NJ 07102-5311
Counsel for Appellant Sabinsa Corporation
Brian J. McMahon, Esquire
Kevin McNulty, Esquire (Argued)
Gibbons, P. C.
One Gateway Center
Newark, NJ 07102-5310
Counsel for Appellee Creative Compounds, LLC
, Circuit Judge:
Sabinsa Corporation appeals the District Court’s
judgment in favor of Creative Compounds, LLC, on Sabinsa’strademark infringement and unfair competition claims. TheDistrict Court found that there was no likelihood of confusionbetween Sabinsa’s mark, ForsLean, and Creative Compounds’smark, Forsthin, both of which refer to Coleus forskohlii
extract,an ingredient used in weight management products. Because theDistrict Court erred in its findings on the Lapp
factors and itsultimate finding on likelihood of confusion, we will reverse thejudgment. Further, because the undisputed facts weigh heavilyin favor of Sabinsa so that any reasonable fact finder, weighingthe Lapp
factors properly, would find that Sabinsa haddemonstrated a likelihood of confusion, we conclude that thereis no need to remand for a re-weighing by the District Court ofthe Lapp
factors. We therefore remand this case for entry ofjudgment in favor of Sabinsa.
Forskohlin is an extract derived from the roots of the
plant Coleus forskohlii
, a member of the mint family, foundprimarily in India. It is manufactured by harvesting and dryingthe Coleus forskohlii
root and then extracting the forskohlin intoa highly-concentrated slurry. The slurry is then combined withinactive ingredients to make various concentrations, which aresold in powder form.
Sabinsa, an ingredient supplier for nutraceutical1
manufacturers, was founded in 1988 by Dr. Muhammed Majeed,a scientist with experience in the pharmaceutical industry. In1996, Dr. Majeed began research into the potential use offorskohlin to promote lean body mass. After completing aclinical trial, Sabinsa filed an intent-to-use application for thetrademark, ForsLean, formed by combining “Fors” fromforskohlin with “Lean” for lean body mass. Sabinsa firstmarketed ForsLean to nutraceutical manufacturers in 2000.
Sabinsa has also created pamphlets marketing ForsLean directlyto the public. ForsLean was Sabinsa’s highest revenue-generating product for at least five years preceding the trial inthe District Court.
In 2003, a severe drought struck India and affected
Sabinsa’s supply of forskohlin. As a result, Sabinsa bothworked to keep its customers interested in ForsLean and spentsignificant resources helping farmers in India cultivate Coleusforskohlii
to ensure a continued supply in the future. Forskohlinwas available again in the spring of 2004, in part due toSabinsa’s efforts. Sabinsa thereafter created the “ForsLean
promise,” a commitment to its customers to ensure the supply offorskohlin in the future.
Creative Compounds is also an ingredient supplier to the
nutraceutical industry although it operates with only seven
1The nutraceutical industry provides ingredients for suppliers,manufacturers, and marketers of nutritional supplements.
employees, none of whom is a scientist or Ph.D., and it conductsno research and development. Creative Compounds beganselling forskohlin at the end of 2002. It did not, however, adoptthe trade name Forsthin for its product until the spring of 2004– just as Sabinsa’s supply problems were coming to an end.
Though there is no indication that Creative Compounds ever hada problem with supply associated with the drought in India, itheavily promoted “The Return of Coleus” as it introduced itsnew Forsthin brand: “Not long ago, Coleus was one of the mostpowerful options in stimulant-free weight loss. That was untilraw material shortages and low-quality extracts mademaintaining a Coleus formula a nightmare. Those days areover.” Creative Compounds made very few sales of forskohlinin 2002, 2003, and 2004, but sold more than 1000 kilograms in2005, nearly 600 kilograms in 2006, and nearly 700 kilogramsin 2007.
Sabinsa sent a cease-and-desist letter to Creative
Compounds in the summer of 2004, soon after the latter beganusing the name Forsthin. Within a week and without contactingSabinsa, Creative Compounds filed a declaratory judgmentaction in the United States District Court for the District ofMissouri. Sabinsa then filed this suit, and the Missouri suit wasdismissed in favor of this one.
Sabinsa’s Complaint alleged five claims, all of which
required that it prove both its ownership of a valid and legallyprotectable trademark and a likelihood of confusion caused byCreative Compounds’s use of the mark Forsthin. E.T. BrowneDrug Co. v. Cococare Prods., Inc.
, 538 F.3d 185, 191 (3d Cir.
2008). Creative Compounds has conceded that Sabinsa ownsthe ForsLean mark and that the mark is valid and legallyprotectable. Therefore, the only issue for trial was “whether ornot Defendant’s use of the mark Forsthin is likely to createconfusion in the marketplace when compared to Plaintiff’s markFors[L]ean.”
On June 16, 2008, after a bench trial, the District Court
read into the record an oral decision in favor of CreativeCompounds. Sabinsa appealed. We have jurisdiction pursuantto 28 U.S.C. § 1291.
II. Standard of Review
We exercise plenary review over the District Court’s
legal conclusions regarding the Lanham Act. See CheckpointSys., Inc. v. Check Point Software Techs., Inc.
, 269 F.3d 270,279 (3d Cir. 2001). Factual findings concerning the likelihoodof confusion are reviewed for clear error. See A & HSportswear, Inc. v. Victoria’s Secret Stores, Inc.
, 237 F.3d 198,210 (3d Cir. 2000). “Clear error exists when, giving alldeference to the opportunity of the trial judge to evaluate thecredibility of witnesses and to weigh the evidence, we are leftwith a definite and firm conviction that a mistake has beencommitted.” Id.
at 194 (quotation marks and citation omitted).
Though “[l]ikelihood of confusion is a factual question[,] . . .
legal principles govern what evidence may, or must, beconsidered by the District Court in reaching that conclusion, andalso what standards apply to its determination.” Id.
Pursuant to Federal Rule of Civil Procedure 52, a trial
court must make clear factual findings to support itsconclusions. 9 Wright & Miller, Federal Practice & Procedure§ 2574, at 690. Rule 52 is not satisfied “by the statement of theultimate fact without the subordinate factual foundations for itwhich also must be the subject of specific findings.” O'Neill v.
, 411 F.2d 139, 146 (3d Cir. 1969). “If[subordinate findings] did not enter into the process by whichthe ultimate factual finding was made, then it was without anysupporting foundation.” H. Prang Trucking Co., Inc. v. LocalUnion No. 469
, 613 F.2d 1235, 1238 (3d Cir. 1980)(citationomitted).
III. The District Court’s Likelihood of Confusion Analysis
“To prove likelihood of confusion, plaintiffs must show
that consumers viewing the mark would probably assume theproduct or service it represents is associated with the source ofa different product or service identified by a similar mark.”Checkpoint Sys.
, 269 F.3d at 280 (internal quotation marksremoved). In Interpace Corp. v. Lapp, Inc.,
we set forth thefactors which may indicate a likelihood of confusion:
(1) the degree of similarity between the owner's mark andthe alleged infringing mark; (2) the strength of the owner’s mark; (3) the price of the goods and other factors indicative ofthe care and attention expected of consumers whenmaking a purchase; (4) the length of time the defendant has used the markwithout 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, aremarketed through the same channels of trade andadvertised through the same media; (8) the extent to which the targets of the parties’ salesefforts are the same; (9) the relationship of the goods in the minds ofconsumers because of similarity of functions; and (10) other factors suggesting the consuming public mightexpect the prior owner to manufacture a product in thedefendant’s market or that he is likely to expand into thatmarket.
721 F.2d at 463. “None of these factors is determinative in thelikelihood of confusion analysis and each factor must beweighed and balanced one against the other.” Checkpoint Sys.
,269 F.3d at 280. In reviewing a district court’s analysis of theLapp
factors, we can reverse the court’s conclusions if therelevant factors are not properly set forth and not properlyweighed. See Kos Pharmaceuticals v. Andrx Corporation
, 369F. 3d 700, 711-12 (3d Cir. 2004).
, a trademark case involving the marks
“ADVICOR” and “ALTOCOR,” we reversed a district court’slikelihood of confusion decision because it had erred in itsanalysis of mark similarity, overemphasized customersophistication, applied the wrong standards regarding intent, andignored several other relevant Lapp
at 711–12. Thesame district judge made similar errors here. In finding thatthere was no likelihood of confusion between ForsLean andForsthin, the District Court engaged in detailed analysis of only
three of the relevant Lapp
factors and failed to discuss much ofthe evidence presented by Sabinsa. The District Court thenasserted, “This Court is not going to comment on all of thetestimony offered at trial. Suffice it to say, I am satisfied thatthe testimony taken as a whole amply supports the Court’sdecision.” However, while it is true that a district court mayfind that “certain of the Lapp
factors are inapplicable orunhelpful in a particular case,” the court must still “explain itschoice not to employ those factors.” See A & H Sportswear
, 237F3d at 214 n.8. Here, the District Court failed to explainwhether it viewed these remaining factors as neutral orirrelevant or how it weighed and balanced the combined factors.
Further, its reasoning concerning the three factors it chose toanalyze is flawed.
Typically, when a district court fails adequately to
support its findings, we merely remand for a re-weighing of theapplicable factors. Where the facts are largely undisputed,however, “‘we need not remand’ if application of the correctstandard could support only one conclusion.” Kos
, 369 F.3d at712 (quoting Duraco Prods., Inc. v. Joy Plastic Enters., Ltd.
, 40F.3d 1431, 1451 (3d Cir. 1994)); see also Lapp
, 721 F.2d at 460(reversing and directing entry of judgment). Such a remandwould be a waste of judicial resources. In Kos
, for example, weobserved, “Regardless of how the factual disputes might beresolved, any reasonable factfinder weighing the Lapp
factors inaccordance with the correct legal standards would hold [in favorof Kos].” Kos
, 369 F.3d at 725. Accordingly, as we did in thatcase, we will review the findings of the District Court, alongwith the evidence presented by the parties, to determinewhether, in light of the controlling legal principles, the facts
and/or the failures in the District Court’s analysis compel aresult as a matter of law.
IV. The Individual Lapp Factors
A. Similarity of Marks (Lapp Factor One)
“The single most important factor in determining
likelihood of confusion is mark similarity.” A & H Sportswear
,237 F.3d at 216. Marks are confusingly similar “if ordinaryconsumers would likely conclude that [the two products] sharea common source, affiliation, connection or sponsorship.”Fisons Horticulture, Inc. v. Vigoro Indus., Inc.
, 30 F.3d 466, 477(3d Cir. 1994). The proper test is not a side-by-side comparisonbut, rather, “whether the labels create the same overallimpression when viewed separately.” Kos
, 369 F.3d at 713.
Overall impression is created by the sight, sound, and meaningof the mark. See A & H Sportswear
, 237 F.3d at 217. “‘Thedegree of similarity . . . needed to prove likely confusion willvary with the difference in the goods . . . Where the goods . . .
are directly competitive, the degree of similarity required toprove a likelihood of confusion is less than in the case ofdissimilar products.’” Kos
, 369 F.3d at 713 (quoting 3 J.
Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIRCOMPETITION § 23:20.1 (4th ed. 2003)).
The District Court found that this factor favors Creative
Compounds, asserting that, beyond the shared letters “fors,”ForsLean and Forsthin have “no other similarity.” The court’sreasoning, however, contains clear errors. First, for its visualanalysis, the District Court focused on minute differences in the
products’ logos while ignoring evidence that both marks areoften used in plain text without the surrounding graphics.2 TheDistrict Court devoted only one sentence to a visual comparisonof the words ForsLean and Forsthin apart from their logos andthat sentence only contrasted the words “thin” and “lean” ratherthan the “overall impression.” However, looked at as a whole,ForsLean and Forsthin share all but three letters, have the samedominant syllable and end letter, and have the same number ofsyllables. Under these circumstances, the District Court clearlyerred in finding that the words are not visually similar. See Kos
,369 F.3d at 713 (because ADVICOR and ALTOCOR are“[b]oth . . . seven-letter, three-syllable words that begin and endwith the same letters and the same sounds . . . the district courtclearly erred in failing to recognize that this factor weighs in[the senior user’s] favor”).
Likewise, in analyzing the “connotative differences”
between ForsLean and Forsthin, the District Court ignoredevidence and failed to make sufficient subordinate findings.
The court stated that it “accepts Defendant’s arguments that a
2Even the District Court’s comparison of the logos appearsmisguided. The “ordinary customer” is supposed to have “onlygeneral recollection” of one mark when encountering thesecond. See Fisons Horticulture
, 30 F.3d at 477–78. By thatstandard, the two logos seem strikingly similar: Each containsthe respective product name, with the second syllable set off,placed in front of foliage to symbolize the Coleus forskohlii
plant. Alone, however, this likely would not merit vacatur,given the deference owed to the District Court’s findings.
different commercial impression is made by the word ‘lean’versus ‘thin’” and that “[t]hin would convey to the consumer .
. . weight loss, whereas lean would convey a lean body type.”As an initial matter, again the District Court erred by comparing“lean” and “thin” rather than ForsLean and Forsthin. See FisonsHorticulture
, 30 F.3d at 477–78. More centrally, the DistrictCourt’s finding is contrary to undisputed evidence at trial, noneof which was cited in its opinion: Creative Compounds uses“thin” and “lean” interchangeably in its other weight lossproducts, Creative Compounds’s sales manager and one of itscustomers conceded at trial that “lean” invokes “weight loss”and that Sabinsa promotes ForsLean to end users as a “weightmanagement” product. Indeed, during the trial, the DistrictCourt took “judicial notice that there are products out there,when they use the word ‘lean,’ that are weight loss products.”Its ultimate finding that the words “thin” and “lean” “wouldconvey” different mental impressions to consumers isimpossible to reconcile with this earlier recognition that theterms are interchangeable to consumers.
In sum, the District Court clearly erred in failing to find
B. Strength of Mark (Lapp Factor Two)
To determine the strength of the mark, courts look to (1)
the inherent features of the mark contributing to itsdistinctiveness or conceptual strength and (2) the factualevidence of the mark’s commercial strength or of marketplacerecognition of the mark. See A & H Sportswear
, 237 F.3d at221.
Courts classify the distinctiveness or conceptual strength
of a mark as either (1) generic, like “Diet Chocolate FudgeSoda”; (2) descriptive, like “Security Center”; (3) suggestive,like “Coppertone”; or (4) arbitrary or fanciful, like “Kodak.” Id
Arbitrary or fanciful marks use terms that neither describe norsuggest anything about the product. Id
. Suggestive marksrequire consumer “imagination, thought, or perception” todetermine what the product is. Id.
Descriptive marks “forthwithconvey an immediate idea of the ingredients, qualities orcharacteristics of the goods.” Id.
Generic marks “function asthe common descriptive name of a product class.” Id.
The District Court acknowledged that the “Fors” in
ForsLean and Forsthin “is apparently an abbreviation of thegeneric term of the product, Coleus forskohlii.” It thenconcluded that “[fors] is not a mere arbitrary term, but, rather,a prefix used by each party combined with either the word ‘lean’or ‘thin.’” Never, however, did the court assign a classificationfor the ForsLean mark; rather, in evaluating the mark’s strength,the court merely stated:
Defendant argues that Plaintiff’s mark is
conceptually weak because it is highly suggestive.
Sabinsa argues that its mark is commerciallystrong based on its advertising efforts, pressmentions and its receipt of two industry awardsregarding its product. However, testimony at trialreflected the parties’ sophisticated targetcustomers were aware of both parties’ marks andthat there is no confusion. This factor does notsupport Plaintiff’s position.
This analysis amounts to legal error, and it culminated in aclearly erroneous finding.
First, it does not follow that because Sabinsa and then
Creative Compounds used “fors” as an abbreviation for Coleusforskohlii
, the term is conceptually weak. As Sabinsa points out,the “V” in V-8 stands for “vegetable” and the “8” stands for thefact that the juice has eight vegetables, but V-8 is still anarbitrary term. See Fisons Horticulture
, 30 F.3d at 478 n.17(citing Standard Brands, Inc. v. Smidler
, 151 F.2d 34, 36 (2dCir. 1945) (“The letter V by itself no more signifies ‘vegetable’than it does any other word of which it is the initial letter . . . .
As much is true of the figure 8 . . . .”)). There was no evidencepresented that “fors” is a generic
term for forskohlin.
Accordingly, to the extent that the District Court meant to implythat the parties’ use of “fors” as an abbreviation makes ForsLeana generic or descriptive term, this is not the law.
Second, beyond its brief discussion of the abbreviation
“fors,” the District Court did not analyze either the conceptualor commercial strength of ForsLean. Instead, as set forth above,it described the parties’ arguments and then reiterated its findingthat there had been no confusion between the two companiesamong its “sophisticated customers.” Actual confusion and thesophistication of a party’s customers, however, are differentprongs of the Lapp
test and were “impermissibly conflated” bythe District Court. See Kos
, 369 F.3d at 722. CreativeCompounds argues that the District Court merely found that thelack of confusion among the parties’ customers “trump[ed]” theparties’ arguments concerning the conceptual and commercialstrength of ForsLean and that the “strength of the mark is a less
significant ‘confusion’ factor when the buyers know
source of each product.” This argument mischaracterizes thecourt’s analysis. If the court had meant to find that the strengthfactor was in Sabinsa’s favor but less important than otherfactors, it could have said so. Instead, the District Court foundthat the strength of the ForsLean mark “does not supportPlaintiff’s position.” This was clear error.
Once again, because the facts underlying the strength
analysis are manifest and undisputed, we will review the factsand law to determine whether they compel a particular result.
Sabinsa argues that ForsLean is arbitrary or suggestive, whileCreative Compounds argues that it is a descriptive mark becauseit combines a description of the product (“fors”) with itsintended application (“lean”). While “lean” is certainly ageneric term, “fors” is not yet one. The parties to this case arethe only two that use “fors” as an abbreviation for forskohlin,and while ForsLean is not a term that was created completelyout of whole cloth, it certainly requires consumer “imagination,thought, or perception” to determine the nature of the product. See A & H Sportswear
, 237 F.3d at 222. It would, thus, appearthat ForsLean is a suggestive mark. Moreover, it wasundisputed that the ForsLean mark is commercially strong.
Accordingly, this factor favors Sabinsa as a matter of law.
C. Purchasers’ Care and Sophistication (Lapp Factor
“When consumers exercise heightened care in evaluating
the relevant products before making purchasing decisions,courts have found there is not a strong likelihood of confusion.
Where the relevant products are expensive, or the buyer classconsists of sophisticated or professional purchasers, courts havegenerally not found Lanham Act violations.” Checkpoint Sys.
,269 F.3d at 284. However, where the group of buyers is acombination of professionals and ordinary consumers, the classas a whole is not held to the higher standard of care. Id.
Under the heading “[p]rice and customer sophistication,”
the District Court found that “the product is expensive and thecustomers are sophisticated purchasers who purchase theproduct after careful thought and analysis. . . . Usually, thecustomers are repeat customers. These customers exercise ahigh level of care, and, therefore, eliminates [sic] the likelihoodof confusion.” The District Court also noted that “theseproducts are not sold over the counter” and that “both parties’customers regularly ask technical questions about the scientificand safety merits of the product prior to purchase.” The courtthus concluded that this factor favors Creative Compounds. Thecourt further weighed this factor heavily in its ultimateconclusion that there is no likelihood of confusion.
The District Court’s reasoning inappropriately treats the
products’ direct buyers— here, the manufacturers ofnutraceuticals—as the only relevant consumers. In Kos
, wecriticized the parties and the district court for treating medicalprofessionals as the only relevant consumers of pharmaceuticals,noting that “drugs are increasingly marketed directly to potentialpatients through, for example, ‘ask-your-doctor-about-Brand-X’style advertising.” See Kos
, 369 F.3d at 715–16. Here, Sabinsapresented evidence—completely disregarded by the DistrictCourt—that it directly markets ForsLean through just this type
of advertising, distributing pamphlets to retail outlets fordistribution to the public. The appropriate “standard of care tobe exercised,” therefore, should have been “equal to that of theleast sophisticated consumer in the class”—the generalconsumer reading a ForsLean pamphlet who then chooses anutraceutical containing forskohlin. See Checkpoint Sys.
, 269F.3d at 285 (quoting Ford Motor Co. v. Summit Motor Prods.,Inc.
, 930 F.3d 277, 293 (3d Cir. 1991)); cf. Morgenstern Chem.
Co. v. G. D. Searle & Co.
, 253 F.2d 390, 392 (3d Cir. 1958)(recognizing that “physicians and pharmacists . . . are carefullytrained to detect differences in the characteristics ofpharmaceutical products,” but holding that this “does not openthe door to the adoption by manufacturers of medicines of trade-marks or names which would be confusingly similar to anyonenot exercising such great care”). The District Court thuscommitted legal error when it concluded that this factor weighsheavily in favor of Creative Compounds.
Once again, the facts are undisputed. Though the price
of forskohlin to suppliers is relatively high, the neutraceuticalsthat contain forskohlin are clearly affordable to most interestedconsumers. Further, the sales process is as quick as a trip to thecheck-out counter. In addition, nutraceuticals, unlikepharmaceuticals, require no consultation with a professional andmay often be impulse purchases. Moreover, there was noshowing that consumers of nutraceuticals are highlysophisticated. Accordingly, this factor weighs in favor ofSabinsa.
D. Length of Time Without Confusion (Lapp Factor
Four)/Evidence of Actual Confusion (Lapp Factor Six)
Evidence of actual confusion is frequently difficult to
find. See Checkpoint Sys.
, 269 F.3d at 291. As a result, wehave determined that actual confusion is not necessary todemonstrate a likelihood of success. See Fisons Horticulture
,30 F.3d at 472. Evidence of actual confusion is neverthelesshighly probative of a likelihood of confusion. See CheckpointSys.
, 269 F.3d at 291. It was undisputed that ForsLean andForsthin had co-existed for approximately three-and-a-half yearsat the time of trial without any evidence of actual confusion.
Moreover, Sabinsa failed to submit survey evidence concerningactual confusion. Accordingly, the District Court did not err inconcluding that these factors favor Creative Compounds.
E. Intent of the Defendant in Adopting the M ark
(Lapp Factor Five)
Evidence of a defendant’s intent is not a prerequisite for
finding a Lanham Act violation; such evidence, however,weighs heavily in favor of finding a likelihood of confusion.See Id.
at 286. In evaluating this factor, courts must look atwhether the defendant chose the mark to intentionally confuseconsumers, and thereby capitalize on the senior user’s goodwill,and whether the defendant gave adequate care to investigatingits proposed mark. See Kos.
, 369 F.3d at 721. “[A] defendant’smere intent to copy, without more, is not sufficiently probativeof the defendant’s success
in causing confusion to weigh sucha finding in the plaintiff’s favor; rather, defendant’s intent willindicate a likelihood of confusion only if an intent to confuse
consumers is demonstrated via purposeful manipulation of thejunior mark to resemble the senior’s.” A & H Sportswear
, 237F.3d at 225–26.
The District Court did not mention specific evidence
regarding Creative Compounds’s good or bad intent; rather, thecourt found that “there is nothing in the record to suggest thatCreative Compounds attempted to pass off its goods asSabinsa’s. In fact, the evidence is to the contrary: CreativeCompounds has made efforts to distinguish itself and itsForsthin product from Sabinsa.” The record belies theseconclusions. In fact, far from there being “nothing in the recordto suggest” bad intent, there was ample evidence that CreativeCompounds attempted to pass off its product as Sabinsa’s.
Creative Compounds’ personnel offered inconsistent testimonyconcerning their trademark searches prior to the company’sadopting the Forsthin mark. There was also evidence thatCreative Compounds’s President and CEO falsely claimed tohave conducted research that expanded on Sabinsa’s discoveriesregarding forskohlin. In addition, the timing of CreativeCompounds’s adoption of the Forsthin mark and its pamphlettouting the “return of Coleus”—both of which coincided withForsLean renewing its supply of forskohlin following thedrought in India and issuing a “ForsLean promise” to itscustomers regarding continued supply—would support aninference that Creative Compounds intended to trade onSabinsa’s goodwill and confuse customers as to the source of itsproduct. Indeed, the fact that Creative Compounds chose “fors,”not “coleus,” or “cole,” or “col,” as the first syllable of its brandname, while also promoting the “return of Coleus,” would suggest that the adoption of the “Forsthin” brand name wasaimed at “ForsLean.”
The District Court was, of course, permitted to credit or
discredit certain pieces of testimony and weigh them
accordingly. But in stating that there was “nothing in the recordto suggest” Creative Compounds’s bad intent, the District Courtfailed even to acknowledge the existence of contradictoryevidence. Accordingly, its conclusory finding that this factorfavors Creative Compounds is clearly erroneous.
Sabinsa argues that the District Court failed to apply the
proper standards governing intent and that CreativeCompounds’s behavior in choosing a mark so similar toForsLean should at least be considered reckless, rendering itsufficient to weigh this factor in Sabinsa’s favor. In Kos
, weheld that the defendant’s adoption of the ALTOCOR mark, afterKos had successfully used the ADVICOR mark for similargoods and with notice of its objections, was sufficient to weighthis factor in favor of Kos. See
369 F.3d at 721–22. Becausethe District Court in the instant case ignored whole swaths ofevidence and failed to make any subordinate findings regardingintent, however, it is impossible to determine whether itappropriately comprehended the standard. Moreover, in contrastto the ADVICOR mark, both “ForsLean” and “Forsthin” bearsome relationship to the underlying product; CreativeCompounds’s adoption of its mark, alone, therefore cannot beconsidered enough to weigh the intent factor for Sabinsa.
Accordingly, unlike the other factors, the intent factor involvesdisputed factual issues, and we are unable to hold that it favorseither party as a matter of law.
F. Whether the Goods are Marketed Through the
Same Channels of Trade and Advertised in the Same Media
(Lapp Factor Seven)/Extent to Which Targets of the Parties’
Sales Efforts are the Same (Lapp Factor Eight)
“The greater the similarity in advertising and marketing
campaigns, the greater the likelihood of confusion.” CheckpointSys.
, 269 F.3d at 288-89 (citation omitted). A court shouldconsider the trade exhibitions, publications, and other media theparties use in marketing their products. See id
Similarly,when the parties target their sales efforts to the same group ofconsumers, there is a greater likelihood of confusion betweenthe two marks. See id
The District Court did not key its oral findings to these
factors, but nonetheless noted that the parties were“competitors.” In any event, it is undisputed that the parties sellthe same product through the same channels of trade and thesame forms of advertising to the same target group of customers.
Accordingly, these factors weigh in favor of Sabinsa as a matterof law.
G. Relationship of the Goods in the Minds of
Consumers (Lapp Factor Nine)
When ruling on this factor, a court should look at “how
similar, or closely related, the products are.” Kos.
, 369 F.3d at723. If the products “fall under the same general productcategory but operate in distinct niches,” they will probably notbe closely related. Checkpoint Sys.
, 269 F.3d at 288 (holdingthat the District Court did not clearly err in finding that parties’products were unrelated even though both fell under the broadercategory of “corporate security” where the plaintiff focused onphysical security and the defendant focused on information andcomputer security). “The question is whether the consumermight . . . reasonably conclude that one company would offer
both of these related products.” Fisons Horticulture
, 30 F.3d at481.
The District Court made no findings as to this factor, but
it is undisputed that the products are physically identical.
Creative Compounds argues, as it did with respect to marksimilarity, that Forsthin is a “weight loss” product whileForsLean is a “lean body mass” product. This argument ismisplaced because the products are physically identical and bothare marketed as weight management products. CreativeCompounds further argues that buyers purchase the productsdirectly from their sources and that “they are necessarily aware”that ForsLean and Forsthin are sold by separate companies.
Customer sophistication, however, is Lapp
factor three. Lapp
factor nine focuses not on consumer sophistication but on theproducts themselves, since the determination is whetherconsumers may
see them as related. See Kos
, 369 F.3d at 723.
Using that standard, this factor clearly weighs in favor ofSabinsa. See Fisons
, 30 F.3d at 481 (citing cases where therelationship of goods was close enough to find likelihood ofconfusion, including: women’s scarves and apparel withwomen’s cosmetics and fragrances; liquor with restaurantselling liquor; batteries and lamps with light bulbs and lamps;and pipe tobacco and bar accessories with scotch whisky).
H. Other Facts Suggesting the Public Might Expect
the Prior Owner to Manufacture Both Products (Lapp
In making this final determination under the Lapp
courts should “look at the nature of the products or the relevant
market, the practices of other companies in the relevant fields,any other circumstances that bear on whether consumers mightreasonably expect both products to have the same source.” Kos
,369 F.3d at 724. The District Court made no findings notencompassed by the other factors, and neither party argues thatany relevant evidence exists. Accordingly, this factor is neutral.
V. Weighing the Lapp Factors
The most important factors, mark similarity and mark
strength, favor Sabinsa. ForsLean and Forsthin are similar inappearance and meaning, and ForsLean is entitled to broadprotection because it is a strong mark both conceptually andcommercially. Moreover, ForsLean and Forsthin are physicallyidentical, they are marketed to the same customers in the sameways, and the products’ ultimate consumers do not exercise aparticularly high level of care and sophistication whenpurchasing nutraceuticals. Accordingly, factors one, two, three,seven, eight, and nine favor Sabinsa as a matter of law. Incontrast, since the District Court’s findings regarding lack ofactual confusion are supported by the record, factors four andsix favor Creative Compounds.
There is a factual dispute concerning Creative
Compounds’s intent in creating its mark. Even assuming thatthe District Court would completely discredit the evidence ofbad intent, however, it would be clear error to allow the factorsin favor of Creative Compounds to outweigh Sabinsa’s strongshowing on mark similarity and the remaining factors. We haverepeatedly held that neither intent nor actual confusion areprerequisites to a finding of likelihood of confusion. See
, 269 F.3d at 286, 291. As the Court of Appealsfor the Second Circuit has observed, “intent is largely irrelevantin determining if consumers likely will be confused as to source.
The history of advertising suggests that consumer reactionsusually are unrelated to manufacturer intentions.” LoisSportswear, U.S.A., Inc. v. Levi Strauss & Co.
, 799 F.2d 867,875 (2d Cir. 1986). Likewise, we have recognized that evidenceof actual confusion is often difficult to find because manyinstances go unreported. Checkpoint Sys.
, 269 F.3d at 291.
As we did in Kos
, we have carefully considered whether
to direct the District Court on remand to re-weigh theLapp
factors in light of the proper legal standards. We concludeonce again “that doing so would serve no useful purpose . . .
[and] waste judicial resources.” See Kos
, 369 F.3d at 725. Theundisputed facts weigh heavily in favor of Sabinsa as a matterof law, and any reasonable factfinder weighing the Lapp
factorsin accordance with the correct legal standards would hold thatSabinsa had demonstrated a likelihood of confusion. See id.
, 30 F.3d at 482 (Garth concurring) (“I can see no purposein remanding for retrial of Fisons’ Lanham Act claims when itis so evident that the marks at issue here are confusingly
similar.”). Accordingly, we see no reason to remand for furtheranalysis on likelihood of confusion.
For the foregoing reasons, we will reverse the judgment
in favor of Creative Compounds and remand this case for entry
of judgment in favor of Sabinsa and for other proceedings notinconsistent with this opinion.
I join Judge Roth’s excellent opinion in full, and write separately only to
emphasize two unusual features of this case. First, Sabinsa offered no evidence of actual
confusion, a factor that we have previously described as “highly probative” in this
context. Checkpoint Sys. v. Check Point Software Techs., Inc.
, 269 F.3d 270, 291 (3d Cir.
2001). This is especially concerning here, where Sabinsa could have easily conducted a
survey of customers to assess actual confusion in the relevant market. Given this, we
could reasonably infer that Sabinsa expected that any survey results would undermine its
case. Nonetheless, “[e]vidence of actual confusion is not required,” and Judge Roth’s
analysis convinces me that, “while evidence of actual confusion would strengthen
plaintiff’s case, it is not essential.” Fisons Horticulture, Inc. v. Vigoro Indus., Inc.
Second, the District Court concluded that the “consumers who purchase[d] these
products [we]re sophisticated users in the business of marketing and/or manufacturing
dietary supplements.” Indeed, the record suggests that the parties’ primary targets were
the manufacturers of retail items and not either retailers or retail consumers. Because
manufacturing requires a base level of expertise and attention to ingredients, in the mine-
run case such purchasers are expected to be sophisticated enough to distinguish between
brands—even when the relevant brands have names as similar as “Forsthin” and
“ForsLean.” As we have previously explained, “[w]hen consumers exercise heightened
care in evaluating the relevant products before making purchasing decisions, courts have
found there is not a strong likelihood of confusion.” Checkpoint
, 269 F.3d at 284. Yet
Judge Roth’s opinion again persuades me that other factors in the Lapp
including mark strength and mark similarity, outweigh concerns about the sophistication
and care of the target audience. Furthermore, there is evidence in the record that weakens
the District Court’s analysis (or at least the weight it attributed to this factor), including
evidence that manufacturers in this specific industry vary considerably in overall
M.M. Van Benschoten, O.M.D, CA, Inc. Joe McSweyn, O.M.D, C.A. Pari Vokshori, L.Ac, D.O.M. Alan Sher, L.Ac Gila Varis, L.Ac, R.N. Steven Jarsky, L.Ac, D.A.O.M. Jordan Hoffman, L,Ac, Dipl. O.M. Tina VanBenschoten, R.N. 21201 Victory Blvd, Suite 135, Canoga Park, CA 91303 818-348-9973 phone 818-348-9974 fax www.MMVanBenschotenOMD.com Fro
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