Unpublished Disposition, 914 F.2d 1496 (9th Cir. 1974)

PREMIER ELECTRONICS LABORATORY, INC., Plaintiff-Appellant,v.Donald L. ASTON, dba Aston's Adventures, Defendant-Appellee.

Nos. 87-6466, 87-6666.

United States Court of Appeals, Ninth Circuit.

Argued and Submitted Aug. 9, 1990.Decided Sept. 27, 1990.

Before POOLE and DAVID R. THOMPSON, Circuit Judges, and PRO,^*  District Judge.

MEMORANDUM^** 

INTRODUCTION

Premier Electronics Laboratory, Inc. ("Premier") appeals from a judgment entered after a bench trial. The district court found that Donald L. Aston ("Aston") had not infringed Premier's trademark. Premier contends that the district court's findings are clearly erroneous, or at least insufficient, and that the district court erred in its application of the law to the facts. We have jurisdiction under 15 U.S.C. § 1121 and 28 U.S.C. § 1291. We vacate the judgment of the district court and remand for further findings.

FACTS

Premier produces, sells, and distributes sound recordings of old radio programs under the trademark "Radio Yesteryear." Premier registered this mark in the United States Patent and Trademark Office. A trademark registration was issued to Premier on September 24, 1974. Premier claims continuing use of the mark "Radio Yesteryear" since as early as 1968.

Aston advertises and sells competing sound recordings from old radio programs. Aston uses the terms "Yesterday's Radio," "Yesterday's Radio On Tape," and "Yesterday's Radio Programs On Tape." Aston began using these phrases as early as 1973.

The district court found that Premier's infringement and unfair competition claims, as well as Aston's counterclaims for cancellation of Premier's mark and for unfair competition, were without evidentiary or legal support. Judgment was entered accordingly. Premier appeals. Aston does not.

ANALYSIS

Injunctive relief and damages may be awarded when any person, without the consent of the registrant of a trademark or servicemark "use [s] in commerce any reproduction, counterfeit, copy, or colorable imitation of [the] registered mark 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, or to cause mistake, or to deceive...." 15 U.S.C. § 1114(1) (a). The term "colorable imitation" is defined as including "any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive." 15 U.S.C. § 1127. "In an action for trademark infringement the test is that of confusing similarity [usually expressed as 'likelihood of confusion'] as to the source of the products involved." Carter-Wallace, Inc. v. Proctor & Gamble Co., 434 F.2d 794, 799-800 (9th Cir. 1970); see Nutri/System, Inc. v. Con-Stan Indus., Inc., 809 F.2d 601, 604 (9th Cir. 1987).

"Likelihood of confusion requires that confusion be probable, not simply a possibility." Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215, 1217 (9th Cir. 1987). "It is the totality of facts in a given case that is dispositive." Id. In resolving the question whether there is a likelihood of confusion between two marks, a court must consider, at least impliedly, a five-factor test. Lindy Pen Co., Inc. v. Bick Pen Corp., 796 F.2d 254, 255 (9th Cir. 1986). The factors to be considered are are:

(1) The strength of the registered service¹  mark;

(2) the relationship between the services identified by the competing service marks; (3) the similarity of the competing service marks; (4) the evidence of actual confusion; and (5) the junior user's intent in adopting its service mark.

Miss World (UK) Ltd. v. Mrs. America Pageants, Inc., 856 F.2d 1445, 1448 (9th Cir. 1988); see Nutri/System, 809 F.2d at 604; Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 782 F.2d 1508, 1509 (9th Cir. 1986).

The district court found "no likelihood of confusion between Aston's use of its phrases 'Yesterday's Radio,' 'Yesterday's Radio On Tape' and/or 'Yesterday's Radio Programs On Tape' " and Premier's registered mark "Radio Yesteryear." However, the district court failed to apply the appropriate five-factor test and to make findings thereunder. We therefore remand the case for the district court to make findings as to the likelihood of confusion using the five-factor test, and to make additional findings, if applicable, as hereafter set forth.

To assist the district court, and the parties, in considering the five-factor test and in applying the law to the facts of this case, we offer the following guidance.

A. Attributes of the Marks

In evaluating Premier's claim, the district court should note that " [f]ederal registration of a trademark endows it with a strong presumption of validity." Coca-Cola Co. v. Overland, Inc., 692 F.2d 1250, 1254 (9th Cir. 1982); 15 U.S.C. § 1057(b). Further, 15 U.S.C. § 1065 provides a means for registered marks in continuous use for five years to become "incontestable." "To the extent that the right to use the registered mark has become incontestable under section 1065 of this title, the registration shall be conclusive evidence of the validity of the registered mark ... and of the registrant's exclusive right to use the registered mark...." 15 U.S.C. § 1115(b).

Assuming that Premier's mark is incontestable, Aston cannot argue that the mark is merely descriptive. Park 'N Fly, 469 U.S. at 205; Park 'N Fly, 782 F.2d at 1509. "Incontestable marks are conclusively presumed to have secondary meaning.... Secondary meaning refers to the consumer's mental association of the mark with the source of the product." Miss World, 856 F.2d at 1448-49 n. 4; cf. Carter-Wallace, 434 F.2d at 802 (test for secondary meaning). "This does not establish, however, that it is a particularly strong mark." Miss World, 856 F.2d at 1449. Even where a mark is incontestable, the competing use must be examined to determine whether it creates a sufficient likelihood of confusion to support an infringement claim. See, e.g., Park 'N Fly, Inc., 782 F.2d at 1509; Lindy, 796 F.2d at 254.

Composite marks must be examined in their entirety, not piece-by-piece. See Miss World, 856 F.2d at 1450; Rodeo, 812 F.2d at 1218. " [T]he validity of a trademark is to be determined by viewing the trademark as a whole." California Cooler, Inc. v. Loretto Winery, Ltd., 774 F.2d 1451, 1455 (9th Cir. 1985). For example, a generic suffix is not ignored, because the mark as a whole is examined even if part of the mark is not protectable. See AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 351 (9th Cir. 1979). We have held that " [d]isclaimed material forming part of a registered trade-mark cannot be ignored. It is still part of the composite trade-mark which must be considered in its entirety." Sleeper Lounge Co. v. Bell Mfg. Co., 253 F.2d 720, 722 n. 1 (9th Cir. 1958).

B. Five-Factor Test

1. Strength of the Mark

"The strength of a given mark rests on its distinctiveness. The scope of protection afforded a strong mark is greater than that afforded a weak one. In determining the distinctiveness of the mark one looks to the degree to which the public associates the mark with a particular source." Miss World, 856 F.2d at 1448. "A mark's strength can be measured in terms of its location along a continuum stretching from arbitrary, inherently strong marks, to suggestive marks, to descriptive marks, to generic, inherently weak marks." Rodeo, 812 F.2d at 1218.

The court applies the "imagination test" and the "need test" to determine the strength of the mark. Miss World, 856 F.2d at 1449. "The imagination test asks how much imagination a consumer must use to associate a given mark with the goods or services it identifies.... The more imagination required, the stronger the mark is." Id. "The 'need test' approaches the problem from the opposite end. It asks to what extent a mark is actually needed by competitors to identify their goods or services." Id.

[If] the suggestion made by the mark [is] so remote and subtle that it is really not likely to be needed by competitive sellers to describe their goods [or services].... [sic] this tends to indicate that the mark is merely suggestive, not descriptive. If, however, the message conveyed by the mark about the goods or services is so direct and clear that competing sellers would be likely to [need to] use the term in describing or advertising their goods [or services], then this indicates that the mark is descriptive.

Rodeo, 812 F.2d at 1218 (quoting 1 J. McCarthy, Trademarks and Unfair Competition, Sec. 11:21 at 493 (2d ed. 1984)).

2. Relationship Between the Services or Goods

"The competing services need not be identical to entitle the holder of the registered mark to protection." Id. at 1219. "For related goods, the danger presented is that the public will mistakenly assume there is an association between the producers of the related goods, though no such association exists." AMF, 599 F.2d at 350. "The more likely the public is to make such an association, the less similarity in the mark is requisite to a finding of likelihood of confusion." Id. "Convergent marketing channels increase the likelihood of confusion." Id. at 353; see Nutri/System, 804 F.2d at 606. "Therefore, the courts examine the proximity of the marketing channels to one another and whether direct competition exists. The court will consider the similarity in advertising as one factor in this examination." Nutri/System, 804 F.2d at 606 (citations omitted). The price of the relevant goods is also considered. See AMF, 599 F.2d 353.

3. Similarity of the Marks

The similarity of marks is assessed in terms of their sight, sound, and meaning as encountered in the marketplace. See Miss World, 856 F.2d at 1450; AMF, 599 F.2d at 351. " [T]he ordinary purchaser has only general impressions with respect to an original product or its name." Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 156 (9th Cir.), cert. denied, 374 U.S. 830 (1963). Although similarity is measured by the marks as entities, similarities weigh more heavily than the differences. AMF, 599 F.2d at 351. This factor is of substantial importance and may even be determinative in some instances. See Golden Door, Inc. v. Odisho, 646 F.2d 347, 351 (9th Cir. 1980).

4. Actual Confusion

Although " [e]vidence of actual confusion is strong evidence of likelihood of confusion, [ ] it is not determinative." Rodeo, 812 F.2d at 1219. "Because of the difficulty in garnering such evidence, ... this factor is weighed heavily only when there is evidence of past confusion or, perhaps, when the particular circumstances indicate such evidence should have been available." AMF, 599 F.2d at 353.

5. Intent

"Evidence of wrongful intent, when present, has some bearing on the likelihood of confusion." Rodeo, 812 F.2d at 1219. The absence of such evidence, however, is not determinative. Nor is "a showing of good faith [ ] very probative as to the likelihood of confusion." Golden Door, 646 F.2d at 351.

C. Defenses to Incontestable Marks

If the district court finds that there is a likelihood of confusion and that Premier's mark is incontestable, it must then consider Aston's prior use defense and make findings specifying the extent of any defense. 15 U.S.C. § 1115(b) (5) "creates a narrow exception to the conclusive presumption of a registrant's right to use its incontestable mark. The prior innocent use exception applies when the mark has been used by a party or those in privity with it since a date prior to registration of the mark." Park 'N Fly, 782 F.2d at 1509.

This defense affects "the evidentiary status of registration where the owner claims the benefit of a mark's incontestable status. If one of the defenses is established, registration constitutes only prima facie and not conclusive evidence of the owner's right to exclusive use of the mark." Park 'N Fly, 469 U.S. at 199 n. 6.

If it becomes necessary to consider the prior use defense, the district court will have to make findings as to the area in which such continuous prior use, if any, was proven. "It is important to note ... that the quoted language of the Act contains a limitation of the application of the defense to the area in which the prior continuous use is proved." Mister Donut of Am., Inc. v. Mr. Donut, Inc., 418 F.2d 838, 843 (9th Cir. 1969); see 15 U.S.C. § 1115(b) (5).

CONCLUSION

In light of the district court's failure to apply the proper test for infringement claims and its failure to consider the extent of Aston's prior use defense, if that defense becomes relevant, we vacate the district court's judgment and remand the case to the district court for further findings consistent with this memorandum disposition.

VACATED and REMANDED.