Trademark Law: An Open-Access Casebook

Trademark Law: An Open-Access Casebook (Version 13, 2026 and earlier eds.)

*Trademark Law: An Open-Access Casebook* (Version 13, 2026 and earlier eds.)

Barton Beebe, Trademark Law: An Open-Access Casebook (Version 13, 2026 and earlier eds.)

Qualitex Co. v. Jacobson Products Co., Inc.

Wal-Mart Stores, Inc. v. Samara Brothers, Inc.

TrafFix Devices, Inc. v. Marketing Displays, Inc.

Inwood Laboratories, Inc. v. Ives Laboratories, Inc.

Comedy III Productions, Inc. v. Gary Saderup, Inc.

Starbucks Corp. v. Wolfe's Borough Coffee, Inc.

Barcamerica Int' USA Trust v. Tyfield Importers, Inc.

Network Automation, Inc. v. Advanced Systems Concepts, Inc.

Frehling Enters., Inc. v. Int'l Select Grp., Inc.

"Tea Rose"),  United Drug Co. v. Theodore Rectanus Co.

Ethical Treatment  Animals, Inc. v. Doughney

Hard Rock Cafe Licensing Corp. v. Concession Servs., Inc.

Leatherman Tool Grp., Inc. v. Cooper Indus., Inc.

District, Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC

Rosenberger v. Rector and Visitors of Univ. of Va.

Mc-Neil-P.C.C., Inc. v. Bristol-Myers Squibb Co.

Goodyear' India Rubber Glove Mfg. Co. v. Goodyear Rubber Co.

Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharmaceuticals Co.

Jack Daniel' Properties, Inc. v. VIP Products LLC

Pernod Ricard USA, LLC v. Bacardi U.S.A., Inc.

Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc.

Twentieth Century Fox Television v. Empire Distrib., Inc.

Seabrook Foods, Inc. v. Bar-Well Foods, Ltd.

Volkswagenwerk Aktiengesellschaft v. Church

Brookfield Communications, Inc. v. West Coast Entertainment Corp.

Mattel, Inc. v. Walking Mountain Productions

Athletics, Inc. v. United States Olympic Comm.

KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.

Coca-Cola Co. v. Tropicana Products, Inc.

Genesee Brewing Co. v. Stroh Brewing Co.

On-Line Careline, Inc. v. America Online, Inc.

Dastar Corp. v. Twentieth Century Fox Film Corp.

Lexmark International, Inc. v. Static Control Components, Inc.

Fabrication Enterprises, Inc. v. Hygenic Corp.

Hormel Foods Corp. v. Jim Henson Prods., Inc.

Wallace Int' Silversmiths, Inc. v. Godinger Silver Art Co.

Dreamwerks Production Group, Inc. v. SKG Studio

H Sportswear, Inc. v. Victoria's Secret Stores, Inc.

CareFirst  Md., Inc. v. First Care, P.C.

Electric Corp. v. Public Service Comm'n of New York

Bonito Boats, Inc. v. Thunder Craft Boats, Inc.

Toyota Motor Sales, U.S.A., Inc. v. Tabari

Jordache Enterprises, Inc. v. Hogg Wyld, Ltd.

Wal-Mart Stores, Inc. v. Samara Brothers, Inc.

Radio Co. v. Vacheron & Constantin-LeCoultre Watches, Inc.

Pizza Hut, Inc. v. Papa John's Int'l, Inc.

TCPIP Holding Co. v. Haar Communications Inc.

King-Seeley Thermos Co. v. Aladdin Industries, Inc.

Playboy Enters., Inc. v. Netscape Commc'ns Corp.

Zacchini v. Scripps-Howard Broadcasting Co.

Cornelius v. NAACP Legal Defense & Ed. Fund, Inc.

CES Publishing Corp. v. St. Regis Publications, Inc.

Carson v. Here's Johnny Portable Toilets, Inc.

Weight Watchers Int', Inc. v. Stouffer Corp.

Induct-O-Matic Corp. v. Inductotherm Corp.

Am. Greetings Corp. v. Dan-Dee Imports, Inc.

PlayNation Play Sys., Inc. v. Velex Corp.

Coach Leatherware Co., Inc. v. AnnTaylor, Inc.

Lockheed Martin Corp. v. Network Solutions, Inc.

Ironhawk Technologies, Inc. v. Dropbox, Inc.

Westchester Media v. PRL USA Holdings, Inc.

Gen. Motors Corp. v. Cadillac Marine & Boat Co.

Virtual Works, Inc. v. Volkswagen of Am., Inc.

Comedy III Productions, Inc. v. Gary Saderup, Inc.

Nora Beverages, Inc. v. Perrier Group of America, Inc.

Talking Rain Beverage Co. v. S. Beach Beverage

Duraco Products, Inc. v. Joy Plastic Enterprises, Ltd.

Louis Vuitton Malletier S. A. v. Haute Diggity Dog, LLC

Aycock Engineering, Inc. v. Airflite, Inc.

Keene Corp. v. Paraflex Industries, Inc.

Avis Rent A Car Sys., Inc. v. Hertz Corp.

Louis Vuitton Mallatier S. A. v. Warner Bros. Entertainment Inc.

Blinded Veterans Assn. v. Blinded Am. Veterans Foundation

Taco Cabana Int', Inc. v. Two Pesos, Inc.

Academy  Motion Picture Arts v. Creative House

Cosmetically Sealed Indus., Inc. v. Chesebrough-Pond's USA Co.

Westmont Living, Inc. v. Ret. Unlimited, Inc.

B). In Lexmark International, Inc. v. Static Components, Inc.

Curtin v. United Trademark Holdings Inc.

Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc.

Federal Express Corp. v. Federal Espresso, Inc.

American Thermos Products Co. v. Aladdin Industries, Inc.

EMI Catalogue P' v. Hill, Holliday, Connors, Cosmopulos Inc.

Estate  P. D. Beckwith, Inc. v. Commissioner of Patents

Dawn Donut Co. v. Hart's Food Stores, Inc.

Checkpoint Sys., Inc. v. Check Point Software Techs., Inc.

Polaroid Corp. v. Polarad Electronics Corp.

New York Stock Exchange, Inc. v. New York, New York Hotel, LLC

Stix Products, Inc. v. United Merchants & Manufacturers, Inc.

Flexitized, Inc. v. National Flexitized Corp.

What-A-Burger  Virginia, Inc. v. Whataburger, Inc. of Corpus Christi, Texas

World Carpets, Inc. v. Dick Littrell's New World Carpets

Motschenbacher v. R. J. Reynolds Tobacco Co.

Woman' World Shops, Inc. v. Lane Bryant, Inc.

B&B Hardware, Inc. v. Hargis Industries, Inc.

City  Austin v. Reagan Nat. Advertising of Austin, LLC

Abitron Austria Gmbh v. Hetronic International, Inc.

Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd.

Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC

Universal Furniture Int', Inc. v. Collezione Europa USA, Inc.

Diageo North America, Inc. v. W.J. Deutsch & Sons Ltd.

Secalt S.A. v. Wuxi Shenxi Const. Mach. Co.

Safeway Stores, Inc. v. Safeway Discount Drugs, Inc.

Zatarains, Inc. v. Oak Grove Smokehouse, Inc.

Car-Freshner Corp. v. S.C. Johnson & Son, Inc.

Lanham Act. Kwik-Site Corp. v. Clear View Mfg. Co.

Natural Footwear Ltd. v. Hart, Schaffner & Marx

Marvin Ginn Corp. v. International Assn. of Fire Chiefs, Inc.

Yankee Publ', Inc. v. News Am. Publ'g, Inc.

L.L. Bean, Inc. v. Drake Publishers, Inc.

Original Appalachian Artworks, Inc. v. Granada Electronics, Inc.

Sports Auth., Inc. v. Prime Hospitality Corp.

Zacchini v. Scripps-Howard Broadcasting Co.

Athletics, Inc. v. United States Olympic Comm.

Martin' Herend Imports, Inc. v. Diamond & Gem Trading USA, Co.

KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.

Wal-Mart Stores, Inc. v. Samara Brothers, Inc.

Platinum Home Mortgage Corp. v. Platinum Financial Group, Inc.

TrafFix Devices, Inc. v. Marketing Displays, Inc.

Dastar Corp. v. Twentieth Century Fox Film Corp.

John Paul Mitchell Systems v. Randalls Food Markets, Inc.

Otokoyama Co. Ltd. v. Wine of Japan Import, Inc.

Ashley Furniture Industries, Inc. v. Sangiacomo N. A., Ltd.

Johnny Blastoff, Inc. v. Los Angeles Rams Football Co.

De Beers LV Trademark Ltd. v. DeBeers Diamond Syndicate, Inc.

Commerce Nat' Ins. Servs., Inc. v. Commerce Ins. Agency, Inc.

Clorox Co. P.R. v. Proctor & Gamble Commercial Co.

Hunt Masters, Inc. v. Landry's Seafood Restaurant, Inc.

Federal Trade Commission v. Winsted Hosiery Co.

Aluminum Fabricating Co.  Pittsburgh v. Season-All Window Corp.

Yankee Candle Co. v. Bridgewater Candle Co.

Anheuser-Busch, Inc. v. Balducci Publications

Polaroid Corp. v. Polarad Electronics Corp.

Franklin Knitting Mills, Inc. v. Fashionit Sweater Mills, Inc.

Fisons Horticulture, Inc. v. Vigoro Indus., Inc.

Cumulus Media, Inc. v. Clear Channel Commcn's, Inc.

PACCAR Inc. v. TeleScan Technologies, L.L.C.

Nissan Motor Co. v. Nissan Computer Corp.

Playtex Products, Inc. v. Georgia-Pacific Corp.

Surfvivor Media, Inc. v. Survivor Productions

Allied Maintenance Corp. v. Allied Mech. Trades

Weight Watchers International, Inc. v. Luigino's, Inc.

Freedom Card, Inc. v. JPMorgan Chase & Co.

Starbucks Corp. v. Wolfe's Borough Coffee, Inc.

Time Warner Cable, Inc. v. DIRECTV, Inc.

Feist Publications, Inc. v. Rural Telephone Service Co.

Wal-Mart Stores, Inc. v. Samara Brothers, Inc.

National Institute  Family  Life Advocates v. Becerra

Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc.

Consumer Financial Protection Bureau v. Community Financial Services Assn. of America, Ltd.

Exxon Corp. v. Texas Motor Exchange of Houston, Inc.

Nobelle., LLC v. Qwest Commc'ns Int'l, Inc.

University  Ala. Bd.  Trustees v. New Life Art, Inc.

Anti-Monopoly, Inc. v. General Mills Fun Group, Inc.

Landscape Forms, Inc. v. Colum. Cascade Co.

Jellibeans, Inc. v. Skating Clubs of Ga., Inc.

Universal City Studios, Inc. v. Nintendo Co.

Transgo, Inc. v. Ajac Transmission Parts Corp.

Star Class Yacht Racing Ass' v. Tommy Hilfiger, U.S.A., Inc.

Multi Time Mach., Inc. v. Amazon.com, Inc.

Major League Baseball Props., Inc. v. Sed Non Olet Denarius, Ltd.

Fourth Circuit, Belmora LLC v. Bayer Consumer Care AG

DuPont Cellophane Co. v. Waxed Products Co.

Tools USA  Equipment Co. v. Champ Frame Straightening Equipment Inc.

Eclipse Associates Ltd. v. Data General Corp.

Graham Webb International Ltd. Partnership v. Emporium Drug Mart, Inc.

Homeowners Group, Inc. v. Home Marketing Specialists, Inc.

Nat' Cable Television Assoc. v. Am. Cinema Editors, Inc.

Anheuser-Busch, Inc. v. L & L Wings, Inc.

Athletics, Inc. v. United States Olympic Comm.

Twin Peaks Productions v. Publications Intern.

WarnerVision Entm' Inc. v. Empire of Carolina, Inc.

Corporacion Habanos, S.A. v. Guantanamera Cigars Co.

American Washboard Co. v. Saginaw Mfg. Co.

Feist Publ', Inc. v. Rural Tel. Serv. Co.

Fourth Circuit  Blackhorse v. Pro-Football, Inc.

Dastar Corp. v. Twentieth Century Fox Film Corp.

Forschner Grp., Inc. v. Arrow Trading Co.

Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC

Stephen W. Boney, Inc. v. Boney Servs., Inc.

Hamilton International Ltd. v. Vortic LLC

B&B Hardware, Inc. v. Hargis Industries, Inc.

Viacom, Inc. v. Ingram Enterprises, Inc.

Ashe v. PNC Financial Services Group, Inc.

Bailey Combined Shows, Inc. v. Utah Division of Travel Development

Institutional Wholesalers, Inc. v. Saxons Sandwich Shoppes, Inc.

Time, Inc. v. Petersen Publ'g Co. L.L.C.

Morningside Group Ltd. v. Morningside Capital Group L.L.C.

Dick' Sporting Goods, Inc. v. Dick's Clothing & Sporting Goods, Inc.

Bleistein v. Donaldson Lithographing Co.

Mattel, Inc. v. Walking Mountain Productions

Nightlight Sys., Inc. v. Nitelites Franchise Sys., Inc.

Borden Ice Cream Co. v. Borden's Condensed Milk Co.

B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi

Fourth Circuit  Blackhorse v. Pro-Football, Inc.

Ale House Mgmt., Inc. v. Raleigh Ale House

Martin v. Carter Hawley Hale Stores, Inc.

Herring-Hall-Marvin Safe Co. v. Hall's Safe Co.

Emmpresa Cubana Del Tabaco v. Culbro Corp.

Carson v. Here's Johnny Portable Toilets, Inc.

Universal Money Ctrs., Inc. v. Am. Tel. & Tel. Co.

All England Lawn Tennis Club, Ltd. v. Creations Aromatiques

Crocker National Bank v. Canadian Imperial Bank of Commerce

Emergency One, Inc. v. American FireEagle, Ltd.

Dowagiac Mfg. Co. v. Minnesota Moline Plow Co.

C.P. Interests, Inc. v. Cal. Pools, Inc.

Viacom Int' Inc. v. IJR Capital Invs., LLC

Epic Sys. Corp. v. YourCareUniverse, Inc.

Allard Enterprises v. Advanced Programming Res., Inc.

Clorox Chemical Co. v. Chlorit Mfg. Corp.

Herman Miller, Inc. v. Palazzetti Imports and Exports, Inc.

Norwich Pharmacal Co. v. Sterling Drug, Inc.

Fitch Stores, Inc. v. American Eagle Outfitters, Inc.

Blisscraft  Hollywood v. United Plastics Co.

American Century Proprietary Holdings, Inc. v. American Century Casualty Co.

Orange Crush Co. v. California Crushed Fruit Co.

Old Dearborn Distributing Co. v. Seagram-Distillers Corp.

Omega Engineering, Inc. v. Eastman Kodak Co.

Harrods Ltd. v. Sixty Internet Domain Names

Nartron Corp. v. STMicroelectronics, Inc.

Supreme Wine Co. v. American Distilling Co.

Celluloid Mfg. Co. v. Cellonite Mfg. Co.

Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A.

Jacob Siegel Co. v. Federal Trade Commission

Land O'Lakes Creameries, Inc. v. Oconomowoc Canning Co.

Emergency One, Inc. v. American Fire Eagle Engine Co.

Indianapolis Colts, Inc. v. Metropolitan Baltimore Football Club Ltd.

Duncan F.Duncan, Inc. v. Royal Tops Mfg. Co.

Am. Dairy Queen Corp. v. New Line Prods., Inc.

Terrific Promotions, Inc. v. Vanlex, Inc.

Brennan', Inc. v. Brennan's Rest., L.L.C.

Spangler Candy Co. v. Tootsie Roll Indus., LLC

Brennan' Inc. v. Dickie Brennan & Co. Inc.

Combe Inc. v. Dr. August Wolff GmBH & Co. KG Arzneimittel

Citizens Fin. Group, Inc. v. Citizens Nat'l Bank

Team Tires Plus, Ltd. v. Tires Plus, Inc.

Nor-Am Chemical v. O.M. Scott & Sons Co.

Estate  P.D. Beckwith v. Comm'r of Patents

Bretford Mfg., Inc. v. Smith System Mfg. Corp.

Yellow Cab Co.  Sacramento v. Yellow Cab of Elk Grove, Inc.

Ventures, LLC v. Phoenix Hotel Assocs., Ltd.

Coffee, Inc. v. Hills Supermarkets, Inc.

Borinquen Biscuit Corp. v. M.V. Trading Corp.

Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc.

Nercessian v. Homasian Carpet Enter., Inc.

P Imports LLC v. Johnson Enterprises, LLC

General Motors Corp. v. Lanard Toys, Inc.

Bleistein v. Donaldson Lithographing Co.

Platinum Home Mortgage Corp. v. Platinum Financial Group, Inc.

Institut Nat' Des Appellations D'Origine v. Brown-Forman Corp.

A.T. Cross Co. v. Jonathan Bradley Pens, Inc.

Zauderer v. Office of Disciplinary Counsel

Onassis v. Christian Dior-New York, Inc.

Custom Vehicles, Inc. v. Forest River, Inc.

Universal Commc' Sys., Inc. v. Lycos, Inc.

Philip Morris Inc. v. Allen Distribs., Inc.

American Heritage Life Insurance Co. v. Heritage Life Insurance Co.

Mktg., Inc. v. Major League Baseball Advanced Media, L.P.

Horlick' Malted Milk Corp. v. Horluck's, Inc.

Warner-Jenkinson Co. v. Hilton Davis Chemical Co.

Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons

Ashcroft v. American Civil Liberties Union

Social  Health Servs. v. Guardianship Estate of Keffeler

Gilliam v. American Broadcasting Companies, Inc.

E.T. Browne Drug Co. v. Cococare Products, Inc.

Orange Crush Co. v. California Crushed Fruit Co.

Lance, Inc. v. Frito-Lay North America, Inc.

Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.

Miller Brewing Co. v. G. Heileman Brewing Co.

Atrium Group De Ediciones Y Publicaciones, S.L. v. Harry N. Abrams, Inc.

Hunt Masters, Inc. v. Landry's Seafood Restaurant, Inc.

Xtreme Lashes, LLC v. Xtended Beauty, Inc.

Vornado Air Circulation Sys., Inc. v. Duracraft Corp.

Guru Teg Holding, Inc. v. Maharaja Farmers Mkt., Inc.

Schering-Plough Healthcare Products, Inc. v. Schwarz Pharma, Inc.

United States Patent  Trademark Office v. Booking.com B.V.

Nercessian v. Homasian Carpet Enter., Inc.

Ives Laboratories, Inc. v. Darby Drug Co., Inc.

Anti-Monopoly, Inc. v. General Mills Fun Group

Specialized Seating, Inc. v. Greenwich Industries, L.P.

Zin-Plas Corp. v. Plumbing Quality AGF Co.

Eagle Snacks, Inc. v. Nabisco Brands, Inc.

Fisher Stoves Inc. v. All Nighter StoveWorks, Inc.

Int' Order  Job' Daughters v. Lindeburg & Co.

Sunmark, Inc. v. Ocean Spray Cranberries, Inc.

Estate  P.D. Beckwith v. Comm'r of Patents

Harlequin Enterprises, Ltd. v. Gulf & Western Corp.

Teamsters v. Western Penn. Motor Carriers Ass'n

Coach, Inc. v. We Care Trading Co., Inc.

Frisch' Restaurants, Inc. v. Elby's Big Boy, Inc.

Maker' Mark Distillery, Inc. v. Diageo N. Am., Inc.

Playboy Enters., Inc. v. Chuckleberry Pub., Inc.

New York Stock Exch., Inc. v. New York, New York Hotel, LLC

Prudential Ins. Co.  Am. v. Gibraltar Fin. Corp. of Cal.

Innovation Ventures, LLC v. N.V.E., Inc.

Visa, U.S.A., Inc. v. Birmingham Tr. Nat'l Bank

Paramount Pictures Corp. v. Romulan Invasions

John H. Harland Co. v. Clarke Checks, Inc.

Brooks Shoe Mfg. Co. v. Suave Shoe Corp.

Gucci America, Inc. v. Frontline Processing Corp.

Pregnancy Concerns, Inc. v. Mayor of Balt.

v. NCAA Student-Athlete Name & Likeness Licensing Litigation

Industria Arredamenti Fratelli Saporiti v. Charles Craig, Ltd.

Efficiency, Inc. v. Lubecore Int'l, Inc.

Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc.

Lotus Dev. Corp. v. Paperback Software Int'l

Sweetheart Plastics, Inc. v. Detroit Forming, Inc.

Stone Lion Cap. Partners, L.P. v. Lion Capital LLP

Fuji Photo Film Co., Inc. v. Shinohara Shoji Kabushiki Kaisha

Frisch' Restaurants, Inc. v. Shoney's, Inc.

Hearst Bus. Pub. Inc. v. W.G. Nichols Inc.

Eveready Battery Co. v. Adolph Coors Co.

Ferring Pharms., Inc. v. Watson Pharms., Inc.

Groupe SEB USA, Inc. v. Euro-Pro Operating LLC

Fifty-Six Hope Rd. Music, Ltd. v. A.V.E.L.A., Inc.

Juice Generation, Inc. v. GS Enters. LLC

Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co.

Nutri/System, Inc. v. Con-Stan Indus., Inc.

Sovereign Mil. Hospitaller v. Fla. Priory of the Knights

Scottish Heritable Trust v. Peat Marwick Main & Co.

Mobil Oil Corp. v. Pegasus Petroleum Corp.

PPX Enters., Inc. v. Audiofidelity Enters., Inc.

Car-Freshner Corp. v. Getty Images, Inc.

Guthrie Healthcare Sys. v. ContextMedia, Inc.

Quantum Fitness Corp. v. Quantum Lifestyle Ctrs.

Door Systems, Inc. v. Pro-Line Door Systems, Inc.

Bd.  Trustees v. Florida Nat'l Univ., Inc.

Forney Indus., Inc. v. Daco of Mo., Inc.

Dial-A-Mattress Operating Corp. v. Mattress Madness, Inc.

Banff, Ltd. v. Federated Dep't Stores, Inc.

Div.  Sterling Winthrop, Inc. v. Procter & Gamble Co.

J&B Wholesale Distributing, Inc. v. Redux Beverages, LLC

Warner-Lambert Co. v. Northside Dev. Corp.

John Paul Mitchell Systems v. Pete-N-Larry's Inc.

E.T. Browne Drug Co. v. Cococare Products, Inc.

Echo Travel, Inc. v. Travel Assocs., Inc.

Murphy Door Bed Co. v. Interior Sleep Sys., Inc.

Mead Data Cent., Inc. v. Toyota Motor Sales, U.S.A., Inc.

Stone Creek, Inc. v. Omnia Italian Design, Inc.

Variety Stores, Inc. v. Wal-Mart Stores, Inc.

SunAmerica Corp. v. Sun Life Assurance Co. of Canada

Cerveceria Centroamericana, S.A. v. Cerveceria India, Inc.

U.S. Healthcare, Inc. v. Blue Cross of Greater Philadelphia

Imperial Tobacco, Ltd. v. Philip Morris, Inc.

Boston Beer Co. Ltd. Partnership v. Slesar Bros. Brewing Co.

Web Printing Controls Co., Inc. v. Oxy-Dry Corp.

Bear U. S.A., Inc. v. A.J. Sheepskin & Leather Outerwear, Inc.

Hard Candy, LLC v. Anastasia Beverly Hills, Inc.

Bodum USA, Inc. v. A Top New Casting Inc.

Gaia Techs., Inc. v. Reconversion Techs., Inc.

Sci. Info., Inc. v. Gordon & Breach, Sci. Publishers, Inc.

Pillar Dynasty LLC v. New York & Co., Inc.

Nat' Fed'   Blind, Inc. v. Loompanics Enterprises, Inc.

Cranbury Brick Yard, LLC v. United States

A.C. Aukerman Co. v. R.L. Chaides Constr. Co.

Blumenthal Distrib., Inc. v. Herman Miller, Inc.

Real Estate Corp. v. Century Life of Am.

White v. Samsung Electronics America, Inc.

Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc.

Human Servs. v. Fed. Labor Relations Auth.

Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp.

Matrix Essentials, Inc. v. Emporium Drug Mart, Inc.

B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi

Paddington Corp. v. Attiki Imps. & Distribs., Inc.

Boch Keramische Werke K.G. v. THC Sys., Inc.

vi Select Comfort Wreal, LLC v. Amazon.com, Inc. ...................................................................................... Coach Servs., Inc. v. Triumph Learning LLC ............................................................. Nike, Inc. v. Nikepal Intern., Inc. ..................................................................................... Starbucks Corp. v. Wolfe's Borough Coffee, Inc. ..................................................... Catalogue, Inc. v. Moseley ............................................................................. Blair v. Automobili Lamborghini SpA .......................................................................... Lamparello v. Falwell ........................................................................................................ Facebook Inc. v. Radoslav ................................................................................................ Inc. v. eBay Inc. ............................................................................................. Gucci America, Inc. v. Frontline Processing Corp. ................................................ I should say a word or two about the court opinions included in this casebook. As with any casebook, students should ask themselves as they come upon each particular opinion: Why is this opinion being presented to me? What is it doing here? This casebook includes some opinions because they are leading opinions that continue to have a significant influence on the course of American trademark doctrine. Other opinions are included because they are simple, straightforward examples of the doctrine being applied. Still other opinions are included because they are problematic and almost certainly wrong. Finally, some opinions are included because they are all of the above. Though the casebook does sometimes point out which opinions have proven to be highly influential, you are nevertheless invited, as you proceed through the casebook, to decide for yourself how each opinion should otherwise be characterized. The opinions are sometimes lightly edited and may retain many of the citations included in the original opinion. They may also retain paragraphs that review doctrine previously covered. This may be frustrating to students accustomed to reading aggressively editeddown opinions. But sometimes more is ultimately less. I use curly brackets-{ }-to distinguish edits I have made in the opinions from the original opinion's use of square brackets. If you would prefer a different format for the casebook, one more easily readable on screen, a .docx version of the casebook is available at tmcasebook.org. The casebook remains a work in progress. I update it every summer. I'm grateful to the many professors who have adopted the book for use in their classrooms and who have written to me with corrections and suggestions. I'm also grateful to the many students who have done the same. This is a free casebook. My hope is that this casebook shows that it is possible to produce a reasonably useful American law school casebook on standard word-processing software without the need for the traditional publishers-and their exploitative prices per copy. My further hope is that, being free and online, the casebook is more accessible to students around the world. The downside is that the book is not professionally proofread, formatted, or bluebooked. Please forgive any errors. Finally, the book is free largely due to the support of NYU Law's students and alumni, most notably, John M. Desmarais (NYU Law '88) of Desmarais LLP, who established the professorship I hold at NYU Law. I thank all of them for their support. Trademark lawyers often tell the story in one form or another of the Coca-Cola lawyer who spoke in 1986 of the value of the company's goodwill as symbolized by its brand: "The production plants and inventories of The Coca-Cola Company could go up in flames overnight. Yet, on the following morning there is not a bank in Atlanta, New York, or anywhere else, that would not lend this Company the funds necessary for rebuilding, accepting as security only the inherent good will in its trademarks 'Coca-Cola' and 'Coke."' 1 The story was and remains no exaggeration. In 2024, Interbrand estimated the value of the Coca-Cola brand to be $58.0 billionfoot_1 -as against Coca-Cola's fixed assets in 2024 of $9.2 billion. 3APPLE, GOOGLE, COKE, MICROSOFT, SAMSUNG, TOYOTA, MCDONALDS, LOUIS VUITTON, NIKE, PEPSI, FACEBOOK, VISA, CITI, STARBUCKS. Instantly recognizable by a very large proportion of humanity, these are among the most valuable and influential signs in the world, rivaling in significance many religious and national symbols. They are only the most notorious of the millions of brand names that populate the modern marketplace. Trademark law regulates these brand names, from the multi-billion dollar global brands to the name of the local shop down the street. Without trademark protection, many would cease to exist. In this introductory chapter, we first review the early history of trademarks and trademark law, including the first great Supreme Court trademark case, the so-called Trade-Mark Cases. We then critically consider the varied policy justifications for trademark protection. We conclude by briefly situating trademark law within the larger scheme of intellectual property law. In the excerpt that follows, Professor Mark McKenna surveys the origins of American trademark law from seventeenth-century English case law up through nineteenth-century American case law. Some of the cases he mentions may seem far removed in their facts and reasoning from the present-day world of the global internet and multi-billion dollar brands. But as you will see, the early history of trademark law implicates questions that continue to concern courts and trademark law policymakers. What is the proper rationale for trademark protection? Are trademark rights simply a form of pernicious monopoly rights? Is trademark law intellectual property law or is it unfair competition law? What should qualify for trademark protection? What role should intent or "bad faith" play in the determination of liability for trademark infringement? Should consumers have standing to sue when they are confused by one company's use of a mark similar to another company's mark? II. A SECOND LOOK AT EARLY TRADEMARK PROTECTION [1] Use of markings to identify and distinguish one's property dates to antiquity, and regulations regarding use of those marks almost as long . . . . Because nineteenth-century American courts explicitly drew on English law . . . , a full account necessarily begins in England. A. Medieval Marks as Liabilities [2] Scholars have identified a number of ways in which individuals and producers historically used distinguishing marks. Most basically, merchants used marks to demonstrate ownership of physical goods, much in the way that ranchers use cattle brands to identify their cattle. Use of marks to indicate ownership of goods was particularly important for owners whose goods moved in transit, as those marks often allowed owners to claim goods that were lost. Producers relied on identifying marks, for example, to demonstrate ownership of goods recovered at sea.foot_3 [3] Marks also were quite important to the operation of the guild system in medieval England. Local guilds often developed reputations for the quality of their products. When they did, the names of the towns or regions in which those guilds operated became repositories of goodwill. To maintain that goodwill, guilds needed to be able to restrict membership and identify and punish members who produced defective products. Guilds therefore required their members to affix distinguishing marks to their products so they could police their ranks effectively. 26[4] Importantly, guilds required members to display their marks for the purpose of developing and maintaining the collective goodwill of the guild; marks were not used for the purpose of establishing individual producer goodwill. Indeed, intraguild competition was strictly forbidden. Moreover, guild regulations were not motivated primarily by a concern for consumers. Even in the cutlers' trade, where marks seem to have been viewed most analogously to modern trademarks, 28 regulation was intended not for the protection of purchasers, but for "guidance of those exercising control or working in rivalry." 29 In fact, though it is not clear how often mark owners sought enforcement of their marks during this period, whatever enforcement mark owners did pursue seems to have been motivated by their concern about being held responsible for products they did not make. . . . . 1. Trademarks in Courts of Law and Equity [5] The first reported English decision clearly involving a claim based on use of a party's trademark was the court of equity's 1742 decision in Blanchard v. Hill, 39 {in which Lord Chancellor Hardwicke declined to issue an injunction}. The plaintiff in that case, a maker of playing cards, sought an injunction to restrain the defendant from making use of the Great Mogul as a stamp upon his cards, to the prejudice of the plaintiff, upon a suggestion, that the plaintiff had the sole right to this stamp, having appropriated it to himself, conformable to the charter granted to the cardmakers' company by King Charles the First. 40 [6] The factual context of Blanchard is particularly noteworthy; the plaintiff was seeking protection of a mark for playing cards pursuant to a royal charter, and charters granting exclusive rights to cardmakers had been at the center of a long political struggle between Parliament and the Crown. Marks played an important role in the contested charter scheme because cardmakers were required to use their seals so that exclusivity could be enforced, 42 a fact that clearly colored the court's view of the case. . . . [7] The Blanchard decision, however, should not be read as a categorical condemnation of claims based on use of a competitor's mark. Rather, Lord Hardwicke was focused on cases in which the plaintiff's claim of exclusive rights emanated from a monopoly granted by royal charter. In fact, his decision in Blanchard specifically distinguished the plaintiff's claim in that case from the clothier's claim referenced in Popham's report of Southern {v. How, which was probably the case J. G. v. Samford (C.P. 1584) in which one clothier used the mark of another with the intent to deceive consumers}. Unlike the plaintiff in Blanchard, who claimed the exclusive right to use his Mogul mark without qualification, the clothier in Southern based his case on the defendant's "fraudulent design, to put off bad cloths by this means, or to draw away customers from the other clothier." 45 When the defendant intended to pass off its goods as those of the plaintiff, Lord Hardwicke implied, an injunction might well be appropriate. 29 Id. at 120 (quoting Robert Eadon Leader, History of the Cutlers of Hallamshire 110 (1906)). 39 (1742) 2 Atk. 484 (Ch.), 26 Eng. Rep. 692 40 Id. at 484, 26 Eng. Rep. at 692-93. 42 See The Case of Monopolies, (1603) 11 Co. Rep. 84b, 88b, 77 Eng. Rep. 1260, 1266 (K.B.) (calling the playing card monopoly granted by Queen Elizabeth under her royal prerogative an "odious monopoly"). [8] Despite the initial reluctance of courts of equity to recognize exclusive rights in trademarks and Lord Hardwicke's clear suggestion that claimants pursue such claims at law, the first reported trademark decision by an English common law court was the 1824 decision in Sykes v. Sykes. 46 In that case, the court upheld a verdict for the plaintiff against defendants who marked their shot-belts and powder-flasks with the words "Sykes Patent" in imitation of the plaintiff's use of the same mark for its shot-belts and powder-flasks. 47 After specifically noting that the plaintiff's sales had decreased after the defendants began selling their identically labeled products, the court concluded that the defendants had violated the plaintiff's rights by marking their goods so as "to denote that they were of the genuine manufacture of the plaintiff" and "[selling] them to retail dealers, for the express purpose of being resold, as goods of the plaintiff's manufacture." 48 [9] A number of common law cases following the Sykes decision recognized claims in similar circumstances, imposing liability when a producer sought to pass off its goods as those of a competitor. 49 Those cases generally were brought as actions on the case, in the nature of deceit. Yet one must be careful not to read those cases through modern lensesdespite the form of action, courts in these early cases invariably described the defendant as having practiced fraud against the plaintiff. 51 [10] Like their counterparts in courts of law, courts of equity became more solicitous of trademark claims in the first part of the nineteenth century. Of particular significance, courts very early on concluded that, where a claimant could demonstrate an exclusive right to use a particular mark, equity would intervene to protect a property interest and evidence of fraudulent intent was not necessary. . . . [11] As Lord Westbury said in Leather Cloth Co. v. American Leather Cloth Co. 57 rejecting any contention that courts of equity based their jurisdiction on fraud, The true principle, therefore, would seem to be, that the jurisdiction of the Court in the protection given to trade marks rests upon property, and that the Court interferes by injunction, because that is the only mode by which property of this description can be effectually protected. 59 Significantly, Lord Westbury reached this conclusion after noting that, even when a party held out his goods as those of another, the other had no right to complain unless the act caused 46 (1824) 3 B. & C. 541,107 Eng. Rep. 834 (K.B.). 47 Sykes, 3 B. & C. at 543, 107 Eng. Rep. at 835. 48 Id. 49 See, e.g., Blofeld v. Payne, (1833) 4 B. & Ad. 410, 411-12, 110 Eng. Rep. 509, 510 (K.B.). 51 See Blofeld,4 B. & Ad. at 412,110 Eng. Rep. at 510 (upholding the verdict for the plaintiff and holding that the defendant's use of envelopes resembling those of plaintiff's, and containing the same words, was a "fraud against the plaintiff"). 57 (1863) 4 De G.J. & S. 137,141,46 Eng. Rep. 868 (Ch). 59 Id. at 142,46 Eng. Rep. at 870. him some pecuniary loss or damage. 60 "Imposition on the public, occasioned by one man selling his goods as the goods of another, cannot be the ground of private right of action or suit." 61 The court in Levy v. Walker 62 was even more explicit that the protection of trademarks was intended to protect producers and not primarily for the benefit of consumers: "The Court interferes solely for the purpose of protecting the owner of a trade or business from a fraudulent invasion of that business by somebody else. It does not interfere to prevent the world outside from being misled into anything." 63 . . . . 1. Trademark Law Targets Dishonest Trade Diversion [12] As noted above, I read the decisions of the English common law courts and courts of equity as reflecting the same fundamental concern. In both types of cases, courts were singularly focused on the harm to a producer from improper diversion of its trade, and they worked with existing forms of action to remedy that harm. American courts had the same focus when they began deciding trademark cases, and they repeatedly made clear that the purpose of trademark law was to protect a party from illegitimate attempts to divert its trade. 82 [13] In Coats v. Holbrook, 83 for example, the court said that a person is not allowed to imitate the product of another and "thereby attract to himself the patronage that without such deceptive use of such names . . . would have inured to the benefit of that other person." 84 60 Id. at 140, 46 Eng. Rep. at 870. 61 Id. at 141, 46 Eng. Rep. at 870. 62 (1878) 10 Ch.D. 436. 63 Id. at 448. 82 Like its English predecessor, American trademark law was predominantly a product of judicial decision. Prior to the Act of July 8, 1870, ch. 230, 16 Stat. 198, 210, statutory protection, to the extent it existed, was at the state level and highly trade-specific. Massachusetts, for example, specifically regulated the use of marks on sailcloth. See Schechter, supra note 23, at 130-32. The Supreme Court declared the first two attempts at federal trademark legislation unconstitutional. See The Trade-Mark Cases, 100 U.S. 82, 99 (1879) (invalidating the trademark legislation of 1870 and the Act of Aug. 14, 1876, ch. 274, 19 Stat. 141 (which imposed criminal sanctions against one who fraudulently used, sold or counterfeited trademarks)). Even after Congress began legislating again in this area, however, trademark law remained fundamentally a creature of common law. Indeed, the Lanham Act, ch. 540, 60 Stat. 427 (1946), is widely noted to have generally codified common law. 83 7 N.Y. Ch. Ann. 713 (1845). [14] . . . Moreover, . . . American courts concluded very early on that this protection in many cases was based on a property right, 91 following essentially the approach of English courts of equity. [15] Because the purpose of trademark protection traditionally was to prevent trade diversion by competitors, it has long been regarded as a species of the broader law of unfair competition, and even more broadly, as part of the law governing other fraudulent (and unfair) business practices. This view of trademark protection as a species of unfair competition was not, as some have suggested, a post hoc conflation of two branches of the law. From the very beginning, trademark cases and those only "analogous" to trademark cases were grounded in the same fundamental principle-that no person has the right to pass off his goods as those of another. . . . [16] At some point in the late nineteenth century, American courts began to use the term "unfair competition" slightly differently. Those courts divided the universe of distinguishing marks into "technical trademarks," which were protected in actions for trademark infringement, and "trade names," which could only be protected in actions for unfair competition. Arbitrary or fanciful terms applied to particular products were considered technical trademarks, 99 while surnames, geographic terms, descriptive terms were considered trade names. 100 . . . . [17] In practice, cases of trademark infringement and those of unfair competition differed primarily in terms of what the plaintiff had to prove. Use of another's technical trademark was unlikely to have a legitimate explanation and could be condemned categorically. Trademark infringement plaintiffs therefore did not have to prove intent. Use of another's trade name, on the other hand, may have had an innocent purpose, such as description of the product's characteristics or its geographic origin. As a result, in contrast to trademark infringement plaintiffs, unfair competition claimants had to prove that the defendant intended to pass off its products as those of the plaintiff. . . . . 91 See, e.g., The Trade-Mark Cases, 100 U.S. 82, 92 (1879); Blackwell v. Armistead, 3 F. Cas. 546, 548 (C.C.W.D. Va. 1872) (No. 1474);Derringer v. Plate, 29 Cal. 292, 294-95 (1865); Avery & Sons v. Meikle & Co., 4 Ky. L. Rptr. 759, 764-65 (1883); 99 See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 9 (1995); see also 1 MCCARTHY § 4:4, (defining technical trademarks as marks that were "fanciful, arbitrary, distinctive, non-descriptive in any sense and not a personal name"). 100 Trade names then cumulatively can be thought to comprise what we now think of as indicators which lack inherent distinctiveness and are protectable only with evidence of secondary meaning. Comments and Questions 1. "Technical trademarks", "trade names", and intent. In addressing the role of intent in late nineteenth century American unfair competition law, McKenna cites The Restatement (Third) of Unfair Competition. The Restatement explains: In both England and the United States {in the late nineteenth century}, the property conception of trademark rights extended only to certain designations. When the defendant imitated a designation that was clearly distinctive of the plaintiff's goods, the natural inference that the defendant intended to deceive prospective purchasers eventually led to a conclusive presumption of fraud. Thus, in the case of words or other symbols invented by the plaintiff or arbitrary designations that had no apparent relation to the plaintiff's goods except as an indication of source, the courts began to protect the plaintiff's "property" interest in the mark without regard to the presence of any fraudulent intent. Such marks were characterized as "trademarks," and cases involving the unauthorized use of these marks were designated as actions for "trademark infringement." The focus of the inquiry thus shifted from an analysis of the defendant's conduct to a consideration of the nature of the plaintiff's right. Less distinctive marks that had nevertheless come to be recognized by prospective consumers as indications of source were called "trade names." Although not recognized as "property" in the same sense as technical "trademarks," protection for "trade names" remained available through the action for "unfair competition," with its historical emphasis on the fraudulent character of the defendant's conduct. . . . The initial emphasis on fraud and property rights has generally given way to a more explicit analysis of the propriety of the defendant's conduct as a means of competition, and the technical distinctions between the actions for trademark infringement and unfair competition have now been abandoned. RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 9, cmt. d (1995). 2. Production marks. As the McKenna excerpt explains, local guilds required production marks not just to aid in asserting their monopoly but also to fix liability for poorlymade goods that might tarnish the reputation of the guild. An early example of quality enforcement-and of trademark adjudication-comes to us in the remarkable story of the fourteenth-century bladesmith John Odinsay. Odinsay was accused of making a sword that broke during combat when one Sir Peter Harpdon used it to defend himself from highway brigands while travelling through Bordeaux in 1345. Sir Peter recovered from his wounds in that skirmish and went on to fight next to the Black Prince in the Battle of Crecy in 1346. But upon his return to London, he pursued the matter of the broken sword. The hallmark suggested that Odinsay had made it (and the penalties for such faulty craftsmanship would have ruined Odinsay and his family), but the mark turned out to be a forgery. The London bladesmiths' guild discovered that several of its members' marks were being forged, perhaps by smiths in nearby cities. See Thomas D. Drescher, The Transformation and Evolution of Trademarks-From Signals to Symbols to Myth, 82 TRADEMARK REPORTER 301, 313-18 (1992). The Supreme Court's 1879 opinion in the Trade-Mark Cases is the first great Supreme Court opinion on trademarks (often written at the time as "trade-marks" or "trade marks", which latter usage British English still prefers to this day). It arose out of three criminal cases in which the defendants challenged the constitutionality of the federal trademark law in effect at the time. As you will see, it was not an auspicious start for federal trademark law. Trade-Mark Cases 100 U.S. 82 (1879) MR. JUSTICE MILLER delivered the opinion of the court. [1] The three cases whose titles stand at the head of this opinion are criminal prosecutions for violations of what is known as the trade-mark legislation of Congress. The first two are indictments in the southern district of New York, and the last is an information in the southern district of Ohio. In all of them the judges of the circuit courts in which they are pending have certified to a difference of opinion on what is substantially the same question; namely, are the acts of Congress on the subject of trade-marks founded on any rightful authority in the Constitution of the United States? [2] The entire legislation of Congress in regard to trade-marks is of very recent origin. It is first seen in sects. 77 to 84, inclusive, of the act of July 8, 1870, entitled 'An Act to revise, consolidate, and amend the statutes relating to patents and copyrights. ' 16 Stat. 198. The part of this act relating to trade-marks is embodied in chap. 2, tit. 60, sects. 4937 to 4947, of the Revised Statutes. [3] It is sufficient at present to say that they provide for the registration in the Patent Office of any device in the nature of a trade-mark to which any person has by usage established an exclusive right, or which the person so registering intends to appropriate by that act to his exclusive use; and they make the wrongful use of a trade-mark, so registered, by any other person, without the owner's permission, a cause of action in a civil suit for damages. Six years later we have the act of Aug. 14, 1876 (19 Stat. 141), punishing by fine and imprisonment the fraudulent use, sale, and counterfeiting of trade-marks registered in pursuance of the statutes of the United States, on which the informations and indictments are founded in the cases before us. [4] The right to adopt and use a symbol or a device to distinguish the goods or property made or sold by the person whose mark it is, to the exclusion of use by all other persons, has been long recognized by the common law and the chancery courts of England and of this country, and by the statutes of some of the States. It is a property right for the violation of which damages may be recovered in an action at law, and the continued violation of it will be enjoined by a court of equity, with compensation for past infringement. This exclusive right was not created by the act of Congress, and does not now depend upon it for its enforcement. The whole system of trade-mark property and the civil remedies for its protection existed long anterior to that act, and have remained in full force since its passage. [5] These propositions are so well understood as to require neither the citation of authorities nor an elaborate argument to prove them. [6] As the property in trade-marks and the right to their exclusive use rest on the laws of the States, and, like the great body of the rights of person and of property, depend on them for security and protection, the power of Congress to legislate on the subject, to establish the conditions on which these rights shall be enjoyed and exercised, the period of their duration, and the legal remedies for their enforcement, if such power exist at all, must be found in the Constitution of the United States, which is the source of all powers that Congress can lawfully exercise. [7] In the argument of these cases this seems to be conceded, and the advocates for the validity of the acts of Congress on this subject point to two clauses of the Constitution, in one or in both of which, as they assert, sufficient warrant may be found for this legislation. [8] The first of these is the eighth clause of sect. 8 of the first article. That section, manifestly intended to be an enumeration of the powers expressly granted to Congress, and closing with the declaration of a rule for the ascertainment of such powers as are necessary by way of implication to carry into efficient operation those expressly given, authorizes Congress, by the clause referred to, 'to promote the progress of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries.'  [9] As the first and only attempt by Congress to regulate the right of trade-marks is to be found in the act of July 8, 1870, to which we have referred, entitled 'An Act to revise, consolidate, and amend the statutes relating to patents and copyrights,' terms which have long since become technical, as referring, the one to inventions and the other to the writings of authors, it is a reasonable inference that this part of the statute also was, in the opinion of Congress, an exercise of the power found in that clause of the Constitution. It may also be safely assumed that until a critical examination of the subject in the courts became necessary, it was mainly if not wholly to this clause that the advocates of the law looked for its support. [10] Any attempt, however, to identify the essential characteristics of a trade-mark with inventions and discoveries in the arts and sciences, or with the writings of authors, will show that the effort is surrounded with insurmountable difficulties. [11] The ordinary trade-mark has no necessary relation to invention or discovery. The trade-mark recognized by the common law is generally the growth of a considerable period of use, rather than a sudden invention. It is often the result of accident rather than design, and when under the act of Congress it is sought to establish it by registration, neither originality, invention, discovery, science, nor art is in any way essential to the right conferred by that act. If we should endeavor to classify it under the head of writings of authors, the objections are equally strong. In this, as in regard to inventions, originality is required. And while the word writings may be liberally construed, as it has been, to include original designs  {Note that the Supreme Court misquoted the Constitution here. There is no comma after "limited times" or "authors and inventors."} for engravings, prints, &c., it is only such as are original, and are founded in the creative powers of the mind. The writings which are to be protected are the fruits of intellectual labor, embodied in the form of books, prints, engravings, and the like. The trade-mark may be, and generally is, the adoption of something already in existence as the distinctive symbol of the party using it. At common law the exclusive right to it grows out of its use, and not its mere adoption. By the act of Congress this exclusive right attaches upon registration. But in neither case does it depend upon novelty, invention, discovery, or any work of the brain. It requires no fancy or imagination, no genius, no laborious thought. It is simply founded on priority of appropriation. We look in vain in the statute for any other qualification or condition. If the symbol, however plain, simple, old, or well-known, has been first appropriated by the claimant as his distinctive trade-mark, he may by registration secure the right to its exclusive use. While such legislation may be a judicious aid to the common law on the subject of trademarks, and may be within the competency of legislatures whose general powers embrace that class of subjects, we are unable to see any such power in the constitutional provision concerning authors and inventors, and their writings and discoveries. [12] The other clause of the Constitution supposed to confer the requisite authority on Congress is the third of the same section, which, read in connection with the granting clause, is as follows: 'The Congress shall have power to regulate commerce with foreign nations, and among the several States, and with the Indian tribes.' . . . . [13] If {a law's} main purpose be to establish a regulation applicable to all trade, to commerce at all points, especially if it be apparent that it is designed to govern the commerce wholly between citizens of the same State, it is obviously the exercise of a power not confided to Congress. [14] We find no recognition of this principle in the chapter on trade-marks in the Revised Statutes. We would naturally look for this in the description of the class of persons who are entitled to register a trade-mark, or in reference to the goods to which it should be applied. . . . But no such idea is found or suggested in this statute. Its language is: 'Any person or firm domiciled in the United States, and any corporation created by the United States, or of any State or Territory thereof,' or any person residing in a foreign country which by treaty or convention affords similar privileges to our citizens, may be registration obtain protection for his trade-mark. Here is no requirement that such person shall be engaged in the kind of commerce which Congress is authorized to regulate. It is a general declaration that anybody in the United States, and anybody in any other country which permits us to do the like, may, by registering a trade-mark, have it fully protected. . . . The remedies provided by the act when the right of the owner of the registered trade-mark is infringed, are not confined to the case of a trade-mark used in foreign or inter-state commerce. [15] It is therefore manifest that no such distinction is found in the act, but that its broad purpose was to establish a universal system of trade-mark registration, for the benefit of all who had already used a trade-mark, or who wished to adopt one in the future, without regard to the character of the trade to which it was to be applied or the residence of the owner, with the solitary exception that those who resided in foreign countries which extended no such privileges to us were excluded from them here. . . . . [16] While we have, in our references in this opinion to the trade-mark legislation of Congress, had mainly in view the act of 1870, and the civil remedy which that act provides, it was because the criminal offences described in the act of 1876 are, by their express terms, solely referable to frauds, counterfeits, and unlawful use of trade-marks which were registered under the provisions of the former act. If that act is unconstitutional, so that the registration under it confers no lawful right, then the criminal enactment intended to protect that right falls with it. [17] The questions in each of these cases being an inquiry whether these statutes can be upheld in whole or in part as valid and constitutional, must be answered in the negative; and it will be [18] So certified to the proper circuit courts. . Fritz Lanham, 1880-1965(D-Texas, 1919-1947) Excerpt from Restatement (Third) of Unfair Competition § 9 (1995) [1] e. Trademark legislation. The federal government and each of the states have enacted legislation protecting trademarks. The statutes generally provide a mechanism for the registration of trademarks, describe the types of marks that may be registered, and specify the procedural and substantive advantages afforded to the owner of a trademark registration. The statutes, however, do not ordinarily preempt the protection of trademarks at common law. [2] Although several states had earlier enacted legislation to prevent the fraudulent use of trademarks, the first federal trademark statute was not enacted until 1870. This initial attempt at federal protection proved short-lived, however, when in 1879 the Supreme Court in the Trade-Mark Cases, 100 U.S. (10 Otto) 82 ( 1879), held that the statute had been unconstitutionally grounded on the patent and copyright clause of the Constitution. A second federal statute was enacted in 1881, but in reaction to the Trade-Mark Cases, registration under the act was limited to marks used in commerce with foreign nations and the Indian tribes. The first modern federal trademark registration statute was the Trademark Act of 1905, grounded on the commerce clause. In a continuation of the distinction that had developed at common law between technical "trademarks" and "trade names," the Act of 1905 limited registration to fanciful and arbitrary marks, except for marks that had been in actual use for 10 years preceding passage of the statute. [3] To clarify and strengthen the rights of trademark owners, the Act of 1905 was replaced by the Trademark Act of 1946 (effective July 5, 1947), 15 U.S.C.A. § § 1051-1127, commonly known as the Lanham Act. The Lanham Act is generally declarative of existing law, incorporating the principal features of common law trademark protection. However, among the major innovations of the Lanham Act were the adoption of a constructive notice rule that effectively expanded the geographic scope of trademark rights, and an attempt to provide a measure of security to trademark owners in the form of "incontestable" rights in certain trademarks. The Lanham Act in § 43(a) also added a general proscription against false designations and representations that has come to serve as a federal law of deceptive marketing. [4] Statutes in every state also provide for the registration of trademarks. In 1949 the United States (now International) Trademark Association prepared a Model State Trademark Bill patterned after the federal registration system. The Model Bill, revised in 1964 and1992, provides the basis for much of the current state legislation. . . . . [1] The prospect of getting anything through Congress in 1937 was not encouraging. Our committee{, the Trade Mark Committee of the Patent Section of the American Bar Association,} kept notes and I had a scrapbook in which I stuck ideas that came in from all sorts of places. More as a matter of convenience than anything else, I cast those notes and ideas in the form of a draft statute. [2] In the winter of 1937 the Commissioner of Patents asked me to come to Washington to see him. He said he had had a conference with Fritz Lanham, who was chairman of the subcommittee of the House Patent Committee dealing with trademarks, and asked me to see Mr. Lanham, which I did. Mr. Lanham said that a large number of piecemeal amendments to the 1905 Act had been proposed and that he had been studying the Act and couldn't make head or tail of it; that if it were amended piecemeal it would make incomprehensible what had hitherto been merely obscure. So he asked if anywhere around there was a skeleton draft of a new act that could be used as a sort of clotheshorse to hang things on. I told him I had such a draft and he asked me to leave it with him, which I, of course, was glad to do. [3] I supposed that Mr. Lanham was just going to study this memorandum and skeleton-it was hardly more than that-and begin to hold hearings. I was surprised when, on January 19, 1938, he introduced it as H.R. 9041. [4] Immediately bar associations appointed committees which did thoughtful and conscientious work, with the result that we now have a new Trade-Mark Act. Since the last Act was passed in 1905 and the new Act in 1946-forty-one years later-I suspect we are going to have to live with the Lanham Act for a long time. . . . . [5] Whenever there was a hearing before any committee on the trade-mark bill, sooner or later there appeared zealous men from the Department of Justice who raised all manner of objections. They asserted that trade-marks are monopolistic and any statutory protection of them plays into the hands of big business and should be discouraged. In vain it was pointed out that what is now big business started as little business-that trade-marks are not, like patents and copyrights, a government grant of an exclusive right, that trade-marks are visible reputation and symbols of good will, that trade-marks are the antithesis of monopoly, and that to protect them is to insure the one whose goods or services they distinguish against fraud and misrepresentation. [6] No progress seemed to be made with the Department's representatives, who were against not only the protection of trade-marks but trade-marks as an institution. . . . 1. The long road to the Lanham Act. In his influential treatise, J. Thomas McCarthy records the fate of legislative efforts through the war years leading to the Lanham Act of 1946: Hearings on the bill and the various forms in which it was reintroduced were held in March 1938, March 1939, June 1939, and passed the House and Senate in 1939and 1940. However, the Senate moved to reconsider the bill on June 23, 1940 and it was returned to the calendar and died. In the 77th Congress a reintroduced bill passed the Senate in 1941 and the House in 1942, but the bill died upon being referred back to Committee in 1942. Hearings were held in the 78th Congress in 1943 and 1944, but the bill was not passed. Finally, the 1945 version of the bill (H.R. 1654) was passed by the 79th Congress. MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 5.4 (2018). If we date the Lanham Act from its first draft in 1937 (or indeed back to the so-called Vestal Bill of 1931), then the Act is almost 90 years old. This may help to explain the existence of certain especially abstruse statutory sections that the student will confront through the course of studying U.S. trademark law. The Lanham Act has been amended numerous times since its July 5, 1947 effective date. Listed here are some of the more important amendments, many of which we will refer to through the course of this casebook. The limiting phrase "purchasers as to the source of origin of such goods or services" was deleted from Lanham Act § 32. 1962 Pub. L. No. 87-772, 76 Stat. 769. This arguably significantly broadened the scope of antiinfringement protection under the Act. The following sentence was added to Lanham Act § 35: "The court in exceptional cases may award reasonable attorney fees to the prevailing party. " 1975Pub. L. No. 93-600, 88 Stat. 1955. Congress finally changed the name of the "Patent Office" to the "Patent and Trademark Office." 1975Pub. L. No. 93-596, 88 Stat. 1949. The Court of Customs and Patent Appeals became the Court of Appeals for the Federal Circuit. Pub. L. 97-164, 96 Stat. 25. The Trademark Counterfeiting Act of 1984was enacted, 1984Pub. L. No. 98-473, 98 Stat. 1837, amending Lanham § § 34, 35, and 36, and establishing criminal trademark anti-counterfeiting penalties in 18 U.S.C. § 2320. The Trademark Law Revision Act of 1988 (TLRA) was enacted, effective November 16, 1989. Pub. L. No. 100-667, 102 Stat. 3935. The TLRA established the "intent-to-use" basis for registration and federal statutory "constructive use" for purposes of priority. It also significantly rewrote Lanham Act § 43(a). The Federal Trademark Dilution Act (FTDA), enacted and effective January 16, 1996, established a federal cause of action for anti-dilution protection in Lanham Act § 43 (c) 1. "The Last Best Place." One of the stranger moments in the history of U.S. trademark legislation involves the phrase "The Last Best Place." Between 2001 and 2004, a Nevada business named Last Best Beef, LLC filed eight applications at the PTO to register the phrase "The Last Best Place" in connection with various goods and services. In 2005, Congress passed and the President signed into law an appropriations bill with a rider that consisted of the following language: "Notwithstanding any other provision of this Act, no funds appropriated under this Act shall be used to register, issue, transfer, or enforce any trademark of the phrase 'The Last Best Place.' " See Pub.L. No. 109-108, 119 Stat. 2290. Upon learning of this statutory command in an appropriations bill that covered the PTO, the PTO suspended all consideration of Last Best Beef's trademark applications and no further applications for the phrase have since been filed. What? In 1988, a Montana writer had entitled an anthology of Montana-oriented poetry and prose "The Last Best Place." The phrase was soon taken up by Montana businesses and state government. In 2005, Montana Senator Conrad Burns attached the rider to the appropriations bill on the ground that the phrase "belongs to the State of Montana." See John L. Welch, Montana Senator Again Blocks "LAST BEST PLACE" Registrations, The TTABlog, Feb. 27, 2009. See also The Last Best Beef, LLC v. Dudas, 506 F.3d 333 (4th Cir. 2007) (not seeing a problem with any of this). Probably the most oft-quoted passage from the Trade-Mark Cases is the paragraph in which the Supreme Court compared trademarks to the two other most significant forms of intellectual property, copyrights and patents (paragraph 11 in the excerpt above). Consider again that paragraph. Is what Justice Miller wrote in 1879 about the development of trademarks still accurate today, that "[t]he ordinary trade-mark has no necessary relation to invention or discovery," that "[i]t is often the result of accident rather than design," that it does not "depend upon novelty, invention, discovery, or any work of the brain," that "[i]t requires no fancy or imagination, no genius, no laborious thought," and that "[t]he trade-mark may be, and generally is, the adoption of something already in existence as the distinctive symbol of the party using it"? By 1942, the Court was describing trademarks and the role of trademark law in different terms. In Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203 (1942), Justice Frankfurter explained: The protection of trade-marks is the law's recognition of the psychological function of symbols. If it is true that we live by symbols, it is no less true that we purchase goods by them. A trade-mark is a merchandising short-cut which induces a purchaser to select what he wants, or what he has been led to believe he wants. The owner of a mark exploits this human propensity by making every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol. Whatever the means employed, the aim is the same-to convey through the mark, in the minds of potential customers, the desirability of the commodity upon which it appears. Once this is attained, the trade-mark owner has something of value. If another poaches upon the commercial magnetism of the symbol he has created, the owner can obtain legal redress. Id. at 205. By the 1980s, American courts were describing trademarks and trademark law in yet different terms, terms which still resonate today. Reflecting the rise of the Chicago School economic analysis of law, Judge Easterbrook described the economic benefits of trademarks and trademark protection in Scandia Down Corp. v. Euroquilt, Inc., 772 F.2d. 1423(7th Cir. 1985): Trademarks help consumers to select goods. By identifying the source of the goods, they convey valuable information to consumers at lower costs. Easily identified trademarks reduce the costs consumers incur in searching for what they desire, and the lower the costs of search the more competitive the market. A trademark also may induce the supplier of goods to make higher quality products and to adhere to a consistent level of quality. The trademark is a valuable asset, part of the "goodwill" of a business. If the seller provides an inconsistent level of quality, or reduces quality below what consumers expect from earlier experience, that reduces the value of the trademark. The value of a trademark is in a sense a "hostage" of consumers; if the seller disappoints the consumers, they respond by devaluing the trademark. The existence of this hostage gives the seller another incentive to afford consumers the quality of goods they prefer and expect. Which description of trademarks most accurately reflects their characteristics in the present day? Are they often adopted, in the terms of the Trade-Mark Cases, as "the result of accident rather than design"? Can we say of the development of trademarks, as of the legal conditions leading to their protection, that "no fancy of imagination, no genius, no laborious thought" is required? Or is it rather that, through the development of a brand name, "[t]he owner of a mark . . . mak[es] every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol"? Is the consumer in some sense a victim of these machinations of the trademark owner, who through the "commercial magnetism" of the trademark "induces the purchaser to select what he wants, or what he has been led to believe he wants"? Or is it finally not consumers who are victims of the trademark, but the trademark who is a "hostage" of consumers, whom it serves by enabling them to find what they desire and to insist on "the quality of goods they prefer and expect"? These differing accounts of trademarks and trademark law are probably all more or less true, depending on the trademark, product, and consumer at issue. But it is well-accepted that the last account, based on the economic analysis of law, is currently by far the dominant account of trademark law. In Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995), Justice Breyer set forth the purposes of trademark law in economic terms: {T}rademark law, by preventing others from copying a source-identifying mark, reduces the customer's costs of shopping and making purchasing decisions, for it quickly and easily assures a potential customer that this item-the item with this mark-is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past. At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product. The law thereby encourages the production of quality products, and simultaneously discourages those who hope to sell inferior products by capitalizing on a consumer's inability quickly to evaluate the quality of an item offered for sale. . . . William Landes & Richard Posner, The Economics of Trademark Law, 78 TRADEMARK REP. 267, 271-272 (1988). Qualitex, 514 U.S. at 163-64 (some citations omitted). The current orthodox view of trademarks, then, is that they (1) minimize consumer search costs, and ( 2) provide incentives to producers to produce consistent levels of product quality. This latter benefit of trademarks is especially important for certain types of products. In general, products may be understood to possess three types of characteristics: "search" characteristics, such as color or price, which can be inspected prior to purchase; "experience" characteristics, such as taste, which can only be verified through use of the product; and "credence" characteristics, such as durability, which can only be confirmed over time. See Phillip Nelson, Advertising as Information, 82 J. POL. ECON. 729 (1974). For products such as medicine, automobiles or high-technology goods, the "search" characteristics of which say little about the quality of the product, consumers may rely heavily on the trademark attached to the product in making their purchasing decision. It follows that in a market without reliable source-identification for such products, producers would have little incentive to invest in the production of products of high quality. This is because they would likely be undercut by competitors who would offer cheaper products of lower quality under the same mark. See George A. Akerlof, The Market for "Lemons": Quality Uncertainty and the Market Mechanism, 84 Q.J. ECON. 488 (1970). As indications of quality, trademarks signify and allow firms to develop commercial goodwill, which for many firms may be by far their most valuable asset. The concept of goodwill encompasses the reputation of the firm and its products and the probability, based on this reputation, that consumers will continue to patronize the firm in the future. A nineteenth-century court described goodwill in these terms: When an individual or a firm or a corporation has gone on for an unbroken series of years conducting a particular business, and has been so scrupulous in fulfilling every obligation, so careful in maintaining the standard of goods dealt in, so absolutely honest and fair in all business dealings that customers of the concern have become convinced that their experience in the future will be as satisfactory as it has been in the past, while such customers' good report of their own experience tends continually to bring new customers to the same concern, there has been produced an element of value quite as important-in some cases, perhaps far more important-than the plant or machinery with which the business is carried on. Wall-Paper Co., 81 F. 17, 20 (2d Cir. 1897). The example of Coca-Cola and brands like it may lead many readers to doubt the sufficiency of the economic account of trademark law, focused as it is on search costs and incentives to produce quality goods. After all, many trademarks, such as COKE, do more than merely indicate the source of the goods to which they are affixed, and strictly speaking, some trademarks don't even do that. A t-shirt bearing the trademark ARSENAL is not intended to indicate and is not read by consumers to indicate that Arsenal soccer players knitted the shirt themselves. The trademark primarily functions instead as a "badge of support for or loyalty or affiliation to the trademark proprietor. " Arsenal Football Club Plc v. Matthew Reed, Case C-206/01, [2003] ETMR 19, ¶ 15. This same function may be attributed to many trademarks, and not simply to high-fashion marks such as POLO or PRADA, but also to more mundane marks such as PEPSI or FORD, whose owners have quite consciously sought to build "consumption communities"foot_5 around these brands. See Int'l Order of Job's Daughters v. Lindeburg & Co., 633 F.2d 912, 918 (9th Cir. 1980) (recognizing that "[w]e commonly identify ourselves by displaying emblems expressing allegiances. Our jewelry, clothing, and cars are emblazoned with inscriptions showing the organizations we belong to, the schools we attend, the landmarks we have visited, the sports teams we support, the beverages we imbibe"). In such situations, the mark itself is often the primary product characteristic that the consumer wishes to acquire, and the underlying material good, if any, is merely a means of conveying that characteristic and an alibi for the consumption of that characteristic. 5 We typically think of a trademark as supplementary in relation to the goods to which it is affixed, as something added to preexisting goods. But certain doctrines in trademark law may make sense only if one appreciates that for certain brands, this relation is reversed. The brand is prior and the physical goods are supplementary to it, supporting and enhancing the brand's value, so that a firm (for example, a fashion house) may first design a brand and then produce or license tangible or intangible goods consistent with that brand. Even when the consumer is interested in the quality of the material good, the trademark may contribute to deleterious "artificial product differentiation," as when consumers pay a premium for branded versions of pharmaceuticals when lower-cost generic versions are required by government regulation to meet exactly the same quality standards as the more expensive branded versions. This argument, which associates trademarks with the purported evils of some forms of advertising, first gained significant influence with the publication in 1933 of the economist Edward Chamberlin's book The Theory of Monopolistic Competition, which systematically formulated the artificial product differentiation view. 6 Chamberlin's work proved to be especially influential in mid-twentieth century trademark commentary 7 and is reflected to some degree in Justice Frankfurter's discussion of trademarks in Mishawaka Rubber. Other courts sometimes picked up on Chamberlin's ideas. See, e.g., Smith v. Chanel, Inc., 402 F.2d 562, 567 (2d Cir. 1968) (proposing that, through the trademark, "economically irrational elements are introduced into consumer choices; and the trademark owner is insulated from the normal pressures of price and quality competition. In consequence the competitive system fails to perform its function of allocating available resources efficiently."). Since the 1980s, however, mainstream economic thought has grown increasingly hostile toward, even dismissive of, the argument that, as Landes and Posner characterize it, trademarks "promote social waste and consumer deception" through "the power of brand advertising to bamboozle the public and thereby promote monopoly." 8 Instead, economists have generally come to view trademarks and advertising in a much more positive light. See 5 For further discussion of the trademark "merchandising right," see Stacey L. Dogan & Mark A. Lemley, The Merchandising Right: Fragile Theory or Fait Accompli?, 54 EMORY L.J. 461 (2005). 6 See also Joan Robinson, The Economics of Imperfect Competition 89 (1933). 7 See generally Glynn S. Lunney, Trademark Monopolies, 48 EMORY L.J. 367, 367-69 (1999) (discussing the influence of Chamberlin's work on trademark commentary). See also Sherwin Rosen, Advertising, Information, and Product Differentiation, in ISSUES IN ADVERTISING: THE ECONOMICS OF PERSUASION 161-91 (David G. Tuerck ed., 1978) (summarizing the artificial product differentiation view). See generally Beverly W. Pattishall, Trademarks and the Monopoly Phobia, 50 MICH. L. REV. 967 (1952) (criticizing the artificial product differentiation view). 8 Landes & Posner, supra, at 276-77. George Stigler, The Economics of Information, 69 J. POL. ECON. 213 (1961). The orthodox view now is that advertising cheaply conveys information to consumers, particularly with respect to "experience goods." See Phillip Nelson, Advertising as Information, 82 J. POL. ECON. 729 (1974). Advertising also signals that the advertiser believes its goods to be of sufficiently high quality to benefit from advertising. "The higher quality brand will, other things being equal, have a comparative advantage in acquiring more customers by advertising-since it will retain a larger fraction of them on repeat sales." See Jack Hirshleifer, Where Are We in the Theory of Information?, 63 AM. ECON. REV. PROC. 31, 38 (1973). 9 Finally, consumers may greatly benefit even from supposedly "artificial" product differentiation and may enjoy-and willingly pay for-the consumption of high-performance and high-status goods. See Jake Linford, Placebo Marks, 47 PEPP. L. REV. 45 (2020). Despite the current consensus in economic and legal thought that advertising serves important informational functions in markets, criticisms of branding and advertising remain influential in popular thought. See, e.g., NAOMI KLEIN, NO LOGO: TAKING AIM AT BRAND BULLIES (2000); JULIET B. SCHOR, BORN TO BUY: THE COMMERCIALIZED CHILD AND THE NEW CONSUMER CULTURE (2005). For readers sympathetic to these criticisms, two questions arise with respect to trademarks and trademark law. First, is it fair to apply general criticisms of advertising to trademarks specifically? Though trademarks are usually central to most forms of advertising, aren't trademarks themselves mere informational devices? Second and related, how, if at all, can trademark law be modified to limit such alleged harms as artificial product differentiation or the "bamboozl[ing]" of the public? Stated differently, how can trademark law continue to promote the ability of marks to inform consumers without also promoting the ability of marks to persuade? How practically speaking can trademark law minimize persuasion but still preserve information? 10 Any serious criticism of the role that trademark law plays in perpetuating status consumption or introducing "economically irrational elements" into purchasing decisions should be able to answer these questions. Perhaps limiting the scope of trademark rights or the kinds of commercial signifiers that can be protected as trademarks would lessen the persuasive impact of strong brands. But it may be that minor modifications to trademark law will not help to ameliorate the effects of deeply-engrained consumption practices, and efforts to reform these practices will be more effective if undertaken elsewhere. 11 Opponents of overly expansive trademark rights (and defendants in trademark cases) may find more traction by appealing to what is arguably the true overarching goal of 9 See also Mark Lemley, The Modern Lanham Act and the Death of Common Sense, 108 YALE L.J. 1687, 1690 (1999) (paraphrasing, though not necessarily endorsing, this theory as "In effect, 'we advertise, and therefore we must sell a good of sufficiently high quality that we can afford this highcost expenditure.'"). 10 See Barton Beebe, Search and Persuasion in Trademark Law, 103 MICH. L. REV. 2020 (2005). 11 For the seminal discussion that anticipates nearly all of trademark commentary on these issues since, see Ralph S. Brown, Jr., Advertising andthe Public Interest: Legal Protection of Trade Symbols, 57 YALE L.J. 1165 (1948). trademark law, one which subsumes the goals of lowering consumer search costs and incentivizing consistent levels of product quality. Trademark law's overarching goal is to foster competition, primarily by enabling the efficient communication of information in the marketplace. When trademark law overprotects, it impedes the optimal flow of information to consumers, tends to give undue market power to incumbents, and can significantly disrupt the efficient operation of the patent and copyright systems (a possibility which we will address in a moment). The argument from competition speaks the language of mainstream economics but often does so in favor of limiting rather than expanding trademark property rights. 1. Trademark law and "property." Critics of the expansion in the subject matter and scope of trademark protection often accuse the law of having lost its purportedly traditional focus on consumer protection and having instead embraced a property-rights rationale for trademark protection. Elsewhere in the article excerpted above in Part A, McKenna directly challenges this view: {T}rademark law was not traditionally intended to protect consumers. Instead, trademark law, like all unfair competition law, sought to protect producers from illegitimate diversions of their trade by competitors. Courts did focus on consumer deception in these cases, but only because deception distinguished actionable unfair competition from mere competition, which was encouraged. In fact, courts denied relief in many early trademark cases despite clear evidence that consumers were likely to be confused by the defendant's use. Invariably they did so because the plaintiff could not show that the defendant's actions were likely to divert customers who otherwise would have gone to the plaintiff. Moreover, American courts protected producers from illegitimately diverted trade by recognizing property rights. This property-based system of trademark protection was largely derived from the natural rights theory of property that predominately influenced courts during the time American trademark law developed in the nineteenth century . . . . Critics cannot continue simply to claim that modern law is illegitimate because it does not seek to protect consumers. Because it never really did. Mark P. McKenna, The Normative Foundations of Trademark Law, 82 NOTRE DAME L. REV. 1839, 1841, 1916(2007). For an alternative reading of the history of American trademark law, see Robert G. Bone, Hunting Goodwill: A History of the Concept of Goodwill in Trademark Law, 86 B.U. L. REV. 547 (2006). For an authoritative history of the impact of the concept of "goodwill" on American trademark law, see Barbara Lauriat, Borrowing Goodwill: The True History of American Trademark Law (working paper). 2. Beware of the term "consumer." Trademark talk habitually uses the term "consumer" and only that term to describe members of the public. Dustin Marlan criticizes the term for "(1) its connotation of humans as reductive market-based objects; (2) its anti-ecological bent; and (3) its nonsensical nature." Dustin Marlan, Is "Consumer" Biasing Trademark Law?, 8 TEX. A&M L. REV. 367, 377 (2021). He argues that "the biasing effects of consumer may be contributing to trademark law defining the public in a manner that is patronizing, biased, insulting, and indulgent of likelihood-of-confusion claims." Id. at 373. He advocates "one of two approaches: (1) take active steps to phase out use of consumer and replace it with more respectful and appropriate terminology such as citizen; or (2) simply maintain the status quo in using consumer, but each time be conscious of the biasing effects that the consumer construct may have for the law and us as its subjects." Id. at 373-74. As the excerpt above from the Trade-Mark Cases suggests, when seen from the perspective of trademark law, copyright law and patent law can appear to be closely similar to each other and quite different from trademark law-so much so that it is not unreasonable to ask why trademark is grouped with patent and copyright under the rubric of "intellectual property law" rather than separated out as some hybrid of competition law and intellectual property law. As the table at the conclusion of this section summarizes, both copyright and patent are based on the Intellectual Property Clause of the Constitution, which empowers Congress "{t}o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." U.S. Const. art. I, § 8, cl. 8. The Constitution thus requires copyright and patent to promote innovation, human creativity, or more generally, human "Progress," with patent focusing primarily on incentivizing the invention of new technologies, such as new pharmaceuticals, better machines, or more efficient methods of manufacture, and copyright focusing on incentivizing the production of "works of authorship," such as novels, music, and motion pictures (and this textbook). Inventions and works of authorship share important characteristics (akin to "public goods") 12 that make intellectual property protections useful. Both tend to be expensive to develop, but once developed, they are relatively inexpensive to reproduce in copies. It can cost $1 billion to develop a successful pharmaceutical and bring it to market and potentially only a few dollars or less per copy to manufacture it. The consumption of inventions and works of authorship also tends to be "non-rivalrous." A potentially unlimited number of people can benefit equally from the same idea or listen each to their own copy of the same recording of the same musical work. Finally, without recourse to prohibitions established by law, it is often exceedingly difficult to exclude people from and thus charge a price for the benefit of an invention or work of authorship. This condition has only intensified with improvements in reproduction and distribution technologies, whether they take the form of ever more flexible assembly lines, automated manufacture, 3D printing, or the reproduction of digital files on a home computer or the internet. To address these problems, patent law and copyright law provide limited terms of protection to qualifying works, with patent's term significantly shorter in duration than copyright's. In essence, the public makes a bargain with inventors and authors. To incentivize them, we give them exclusive rights in their innovations so that they can recoup the costs of and perhaps profit from their innovating activity, but in exchange, we eventually claim their innovations for the public domain, where these innovations become free for all, including subsequent inventors and authors, to use. 12 See Wendy J. Gordon, Fair Use As Market Failure: A Structural and Economic Analysis of the Betamax Case and Its Predecessors, 82 COLUM. L. REV. 1600REV. (1982)). Gordon describes "public goods" as follows: A public good is often described as having two defining traits. First, it is virtually inexhaustible once produced, in the sense that supplying additional access to new users would not deplete the supply available to others. Second, and more important for the instant purposes, persons who have not paid for access cannot readily be prevented from using a public good. Because it is difficult or expensive to prevent "free riders" from using such goods, public goods usually will be under-produced if left to the private market. A familiar example of a public good is national defense. Since it is not possible to use a radar early-warning network in a way that discriminates between one person who has paid for defense and his neighbor who has not, a less than optimal amount of national defense will be produced if its purchase is left to the usual consensual market mechanisms of voluntary purchase. Some sort of compulsory payment, such as taxation, and central decision-making may be necessary to eliminate free riders and obtain the socially desirable amount of defense. Id. at 1610-11 (footnotes omitted). In contrast to copyright and patent law, trademark law is based not on the Intellectual Property Clause, but on the Commerce Clause. Its goal is not to promote the progress of "Science and useful Arts" but rather to promote fair and efficient competition. Its term of protection is unlimited in time provided that the trademark owner continues to use the trademark in commerce. And the utilization of trademarks is arguably rivalrous. If two firms share the same trademark for the same type of product in the same marketplace, the utility of both trademarks will be severely diminished. For all of the differences among copyright, patent, and trademark law, note that these separate regimes of intellectual property law can simultaneously protect the same thing. For example, a logo might qualify for both copyright and trademark protection. A particular product feature, such as the shape of a mobile phone, might qualify for trademark protection and design patent protection. A particular furniture design might qualify for trademark protection, design patent protection, and copyright protection as well. These overlapping regimes of exclusive rights can create significant problems in intellectual property law, some of which we will engage later in this casebook. For example, what should happen when the term of copyright protection in a particular work of authorship expires, but that expression also functions as a trademark? Should trademark law allow the Walt Disney Company to continue to assert exclusive rights in images of Mickey Mouse after its copyright in those images has expired? More significantly, should companies be able to assert trademark rights in product features that also qualify for utility patent protection, or at least that perform some mechanical function in addition to serving as designations of source? 1. Do we want to incentivize more trademarks? We generally seek through patent and copyright law to incentivize the production of more patentable inventions and more copyrightable works of authorship. Should we similarly design trademark law to incentivize the production of more trademarks? Is there anything intrinsically valuable about trademarks? Do more trademarks indicate or themselves constitute "Progress"? Could there be situations (or market sectors) in which there are too many trademarks? In order to qualify for trademark protection under U.S. federal law, a trademark must meet three basic requirements: (1) the trademark must be "distinctive" of the source of the goods or services to which it is affixed, (2) the trademark must not be disqualified from protection by various statutory bars to protection, the most significant of which is that the trademark not be "functional," and (3) the trademark must be used in commerce. Note what is missing from this list of basic requirements for trademark protection. First, in order to qualify for protection under the Lanham Act, a trademark does not need to be registered at the PTO (though, as we will discuss in Part I.D, there are significant benefits to registration). Lanham Act § 32, 15 U.S.C. § 1114, protects registered marks from unauthorized uses that are likely to cause consumer confusion as to the true source of the unauthorized user's goods. Lanham Act § 43(a), 15 U.S.C. § 1125(a), does the same for unregistered marks. (And Section 43(c), 15 U.S.C. § 1125 (c), protects both registered and unregistered marks from trademark dilution). As a matter of tradition, trademark lawyers sometimes refer to unregistered mark protection under § 43(a) as "common law" protection of trademarks even though this protection is based on statutory federal law. Second, a protectable trademark need not manifest itself in any particular form. 1Consider the extraordinary variety of forms that trademarks (here, all registered) may take: • Words: APPLE for computers (U.S. Reg. No. 1,078,312, Nov. 29, 1977); AMAZON for online retailing services (U.S. Reg. No. 2,832,943, April 13, 2004); NIKE for athletic shoes (U.S. Reg. No. 978,952, Feb. 19, 1974); THE for clothing (U.S. Reg. No. 6,763,118, June 21, 2022). • Phrases: JUST DO IT for clothing (U.S. Reg. No. 1,875,307, Jan. 24, 1995). • Two-dimensional still images: a "'wing' design" for sports bags (U.S. Reg. No. 1145473, Jan. 6, 1981) • Two-dimensional moving images: for online entertainment services, "[t]he mark consists of a moving image of a flash of light from which rays of light are emitted against a background of sky and clouds. The scene then pans downward to a torch being held by a lady on a pedestal. The word "COLUMBIA" appears across the top running through the torch and then a circular rainbow appears in the sky encircling the lady." (U.S. Reg. No. 1,975,999, May 28, 1996). • Colors: the color canary yellow for adhesive stationary notes (U.S. Reg. No. 2,390,667, Oct. 3, 2000); the color brown for parcel delivery services (U.S. Reg. No. • Colors as used on apparel: for promotional services relating to sports events, where "[t]he mark consists of the colors green and gold where the color green is applied to the jacket and the color gold is applied to the three waist buttons and the two sleeve buttons on each arm of the jacket." (U.S. Reg. No. 6,000,045, March 3, 2020). • Sounds: Tarzan's yell for toy action figures (U.S. Reg. No. 2,210,506, Dec. 15, 1998); for canned and frozen vegetables where the mark consists of "the sound of a deep, male, human-like voice saying 'Ho-Ho-Ho' in even intervals with each 'Ho' dropping in pitch" (U.S. Reg. No. 2,519,203, Dec. 18, 2001). • Scents: for toy modeling compounds, where "[t]he mark is a scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough" (U.S. Reg. No. 5,467,089, May 15, 2018); for crayons, where "[t]he mark consists of a scent reminiscent of a slightly earthy soap with pungent, leather-like clay undertones" (U.S. Reg. No. 7,431,203, July 2, 2024). • Textures: for wines where "[t]he mark consists of a velvet textured covering on the surface of a bottle of wine" (U.S. Reg. No. 3,155,702, Oct. 17, 2006).foot_7 • Motions: for automobiles where "[t]he mark consists of the unique motion in which the door of a vehicle is opened. The doors move parallel to the body of the vehicle but are gradually raised above the vehicle to a parallel position." (U.S. Reg. No. 2,793,439, Dec. 16, 2003). • Building exteriors: the design of a building for restaurant services (U.S. Reg. No. 1,045,615, Aug. 3, 1976). • Building interiors: for retail consumer electronics services, "the mark consists of the design and layout of a retail store. The store features a clear glass storefront surrounded by a paneled facade consisting of large, rectangular horizontal panels over the top of the glass front, and two narrower panels stacked on either side of the storefront. Within the store, rectangular recessed lighting units traverse the length of the store's ceiling. There are cantilevered shelves below recessed display spaces along the side walls, and rectangular tables arranged in a line in the middle of the store parallel to the walls and extending from the storefront to the back of the store. There is multi-tiered shelving along the side walls, and a oblong table with stools located at the back of the store, set below video screens flush mounted on the back wall. The walls, floors, lighting, and other fixtures appear in dotted lines and are not claimed as individual features of the mark; however, the placement of the various items are considered to be part of the overall mark." (U.S. Reg. No. 4,277,914, Jan. 22, 2013). • Product shapes: for mobile phones, where "the mark consists of the configuration of a rectangular handheld mobile digital electronic device with rounded corners" (U.S. Reg. No. 3,457,218, July 1, 2008); for uncooked hamburger patties, where "the mark consists of the configuration of a hamburger patty" (U.S. Reg. No. 5,742,743, May 7, 2019); for footwear, where "the mark consists of [sic] three-dimensional configuration of a zip tie with a substantially rectangular end, all in the color red" (U.S. Reg. No. 6,681,777, Mar. 29, 2022). • Product packaging: for soft drinks, "[t]he mark consists of a three dimensional configuration of a version of the Coca Cola Contour Bottle, rendered as a two-liter bottle, having a distinctive curved shape with an inward curve or pinch in the bottom portion of the bottle and vertical flutes above and below a central flat panel portion." (U.S. Reg. No. 4,242,307, Nov. 13, 2012). The reader may be surprised to see that trademark rights can cover such a wide array of subject matter. This Part covers how these various marks have managed to qualify for trademark protection and why various other marks have failed to qualify. Section I.A devotes a great deal of attention to what is by far the most important requirement for trademark protection: that the trademark be "distinctive." Section I.B then turns to the various statutory bars to protection, including the functionality bar, which disqualify marks from protection under the Lanham Act. Section I.C seeks to make sense of the "use in commerce" requirement for trademark protection. Section I.D reviews why it is worthwhile to register a mark at the PTO and how the registration process works. Section I.E addresses the geographic scope of the protection of registered and unregistered marks. The term "trademark" includes any word, name, symbol, or device, or any combination thereof . . . used by a person . . . to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. The § 45 definition of the term "trademark" emphasizes that a protectable trademark must be distinctive of source -it must "identify and distinguish . . . goods . . . and . . . indicate the source of the goods." Note that in order to qualify for protection, a trademark need not indicate the precise manufacturing source of the goods or the corporate name of the producer of the goods. For example, the trademark TIDE for laundry detergent need not indicate in exactly which factory the particular bottle of laundry detergent was made or that Proctor & Gamble ultimately owns the TIDE brand. Instead, consumers need only know that all products bearing the same trademark originate in or are sponsored by the same source, even if that source is "anonymous" to consumers. 3 This is sometimes known as the "anonymous source" theory of trademark protection. A trademark will qualify as distinctive if either (1) it is "inherently distinctive" of source or ( 2) it has developed "acquired distinctiveness" of source. A mark is inherently distinctive if "its intrinsic nature serves to identify a particular source." Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 210 (2000) (alterations omitted). The underlying assumption is that as a matter of consumer literacy, consumers will almost instantly recognize that an inherently distinctive mark is a designation of source, even when they encounter the mark for the first time. After all, how else would a modern consumer make sense of the word "apple" as used in the sale of electronics that have nothing to do with apples? Inherently distinctive marks "almost automatically tell a customer that they refer to a brand," Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 162-63 (1995) (emphasis in original), and "immediately . . . signal a brand or a product 'source.'" Id. at 163. Marks that lack inherent distinctiveness may nevertheless qualify as distinctive if they have developed "acquired distinctiveness," otherwise known as "secondary meaning," through advertising or use in the marketplace. Over time, consumers may come to identify what might have seemed merely a description of the good or service (e.g., "American Airlines") or merely a decoration on a product (e.g., three stripes on the side of an athletic shoe) as a designation of the source of that product. Indeed, consumers may come to identify the configuration of the product itself as a signifier of its source. Here in Section I.A, we will spend considerable time reviewing how courts determine if a commercial sign qualifies as inherently distinctive or as possessing acquired distinctiveness. Before proceeding, two things should be kept in mind. First, some of the opinions below address the registrability of the marks at issue at the PTO while other opinions address the protectability under § 43(a) of marks that have never been registered. Recall that registration is not a prerequisite for trademark protection under the Lanham Act. Many significant trademark cases over past decades have involved unregistered marks. The important point for our purposes in this subsection is that the basic doctrine relating to the registrability of a mark is essentially the same as the doctrine relating to whether it may be protected regardless of its registration status. We may use opinions from either context to understand the distinctiveness requirement in trademark law. Second, this subsection will first consider distinctiveness doctrine as it relates to verbal marks. It will then proceed to the more difficult area of distinctiveness doctrine that covers 3 See McCarthy § 3.9 ("[T]he 'source' identified by a trademark need not be known by name to the buyer. It may be anonymous in the sense that the buyer does not know, or care about, the name of the corporation that made the product or the name of the corporation which distributes it. But the buyer is entitled to assume that all products carrying the same trademark are somehow linked with or sponsored by that single, anonymous source."). See also P & P Imports LLC v. Johnson Enterprises, LLC, 46 F.4th 953, 960-61 (9th Cir. 2022). non-verbal marks, such as logos, colors, product packaging, and product configuration (i.e., the shape of the product itself). The excerpt below, from Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976), analyzes some of the most fundamental terms and concepts in trademark law. Though Abercrombie is now a relatively old opinion, its influence on U.S. and even foreign trademark law cannot be overstated. It is the origin of the "Abercrombie spectrum" of trademark distinctiveness, a classification scheme that is used in a wide variety of areas of trademark doctrine. The essential facts underlying the opinion are as follows. Plaintiff Abercrombie & Fitch Company ("A&F") operated various sporting goods stores in New York City and elsewhere. It had multiple PTO registrations for its trademark SAFARI. Among these was a registration for SAFARI for cotton clothing, a registration for SAFARI for hats, and a registration for SAFARI for shoes. Defendant Hunting World, Incorporated ("HW") began to sell at its New York City store sporting apparel, including hats and shoes, bearing the terms "Safari," "Minisafari," and "Safariland." A&F sued on the ground that HW's conduct would confuse consumers as to the true source of HW's goods. At the core of the case was the question of whether A&F's SAFARI trademark possessed distinctiveness of source on certain of A&F's goods. As you read the excerpt, consider the following questions: • To the extent that a mark's categorization somewhere along the Abercrombie spectrum bears directly on whether the mark will qualify for trademark protection, which borders between categories do you suspect are especially disputed? • Where would you classify the trademark "safari" for clothing? for boots? for hats? Abercrombie & Fitch Co. v. Hunting World, Inc. 537 F.2d 4, 9-11 (2d Cir. 1976) FRIENDLY, Circuit Judge: . . . . [1] It will be useful at the outset to restate some basic principles of trademark law, which, although they should be familiar, tend to become lost in a welter of adjectives. [2] The cases, and in some instances the Lanham Act, identify four different categories of terms with respect to trademark protection. Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and ( 4) arbitrary or fanciful. The lines of demarcation, however, are not always bright. Moreover, the difficulties are compounded because a term that is in one category for a particular product may be in quite a different one for another,foot_8 because a term may shift from one category to another in light of differences in usage through time,foot_9 because a term may have one meaning to one group of users and a different one to others, and because the same term may be put to different uses with respect to a single product. [3] A generic term is one that refers, or has come to be understood as referring, to the genus of which the particular product is a species. At common law neither those terms which were generic nor those which were merely descriptive could become valid trademarks, see Delaware & Hudson Canal Co. v. Clark, 80 U.S. (13 Wall.) 311, 323, 20 L.Ed. 581 (1872) ("Nor can a generic name, or a name merely descriptive of an article or its qualities, ingredients, or characteristics, be employed as a trademark and the exclusive use of it be entitled to legal protection"). . . . While, as we shall see, the Lanham Act makes an important exception with respect to those merely descriptive terms which have acquired secondary meaning, see § 2(f), 15 U.S.C. § 1052(f), it offers no such exception for generic marks. The Act provides for the cancellation of a registered mark if at any time it "becomes the common descriptive name of an article or substance," § 14 (c). This means that even proof of secondary meaning, by virtue of which some "merely descriptive" marks may be registered, cannot transform a generic term into a subject for trademark. As explained in J. Kohnstam, Ltd. v. Louis Marx andCompany, 280 F.2d 437, 440, 47 CCPA 1080 (1960), no matter how much money and effort the user of a generic term has poured into promoting the sale of its merchandise and what success it has achieved in securing public identification, it cannot deprive competing manufacturers of the product of the right to call an article by its name. We have recently had occasion to apply this doctrine of the impossibility of achieving trademark protection for a generic term, CES Publishing Corp. v. St. Regis Publications, Inc., 531 F.2d 11 (1975). The pervasiveness of the principle is illustrated by a series of well known cases holding that when a suggestive or fanciful term has become generic as a result of a manufacturer's own advertising efforts, trademark protection will be denied save for those markets where the term still has not become generic and a secondary meaning has been shown to continue. Bayer Co. v. United Drug Co., 272 F. 505 (2d Cir. 1921) (L. Hand, D. J. ) {finding "aspirin" generic}; DuPont Cellophane Co. v. Waxed Products Co., 85 F.2d 75 (2d Cir.) (A. N. Hand, C. J. ), cert. denied, 299 U. S. 601 (1936) {finding "cellophane" generic}; King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577 (2d Cir. 1963) {finding "thermos" generic}. A term may thus be generic in one market and descriptive or suggestive or fanciful in another. [4] The term which is descriptive but not generic 11 stands on a better basis. Although § 2(e) of the Lanham Act, 15 U.S.C. § 1052, forbids the registration of a mark which, when applied to the goods of the applicant, is "merely descriptive," § 2(f) removes a considerable part of the sting by providing that "except as expressly excluded in paragraphs (a)-(d) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce" and that the Commissioner may accept, as prima facie evidence that the mark has become distinctive, proof of substantially exclusive and continuous use of the mark applied to the applicant's goods for five years preceding the application. As indicated in the cases cited in the discussion of the unregistrability of generic terms, "common descriptive name," as used in § § 14 (c) and 15(4), refers to generic terms applied to products and not to terms that are "merely descriptive." In the former case any claim to an exclusive right must be denied since this in effect would confer a monopoly not only of the mark but of the product by rendering a competitor unable effectively to name what it was endeavoring to sell. In the latter case the law strikes the balance, with respect to registration, between the hardships to a competitor in hampering the use of an appropriate word and those to the owner who, having invested money and energy to endow a word with the good will adhering to his enterprise, would be deprived of the fruits of his efforts. [5] The category of "suggestive" marks was spawned by the felt need to accord protection to marks that were neither exactly descriptive on the one hand nor truly fanciful on the other, a need that was particularly acute because of the bar in the Trademark Act of 1905, 33 Stat. 724, 726, (with an exceedingly limited exception noted above) on the registration of merely descriptive marks regardless of proof of secondary meaning. See 11 See, e. g., W. E. Bassett Co. v. Revlon, Inc., 435 F.2d 656 (2d Cir. 1970). A Commentator has illuminated the distinction with an example of the "Deep Bowl Spoon": "Deep Bowl" identifies a significant characteristic of the article. It is "merely descriptive" of the goods, because it informs one that they are deep in the bowl portion . . . . It is not, however, "the common descriptive name" of the article (since) the implement is not a deep bowl, it is a spoon . . . . "Spoon" is not merely descriptive of the article it identifies the article (and therefore) the term is generic. Fletcher, Actual Confusion as to Incontestability of Descriptive Marks, 64 Trademark Rep. 252, 260 (1974). On the other hand, "Deep Bowl" would be generic as to a deep bowl. Orange Crush Co. v. California Crushed Fruit Co., 54 U.S.App.D.C. 313, 297 F. 892 (1924). Having created the category the courts have had great difficulty in defining it. Judge Learned Hand made the not very helpful statement: It is quite impossible to get any rule out of the cases beyond this: That the validity of the mark ends where suggestion ends and description begins. Franklin Knitting Mills, Inc. v. Fashionit Sweater Mills, Inc., 297 F. 247, 248 (S.D.N.Y. 1923), aff'd per curiam, 4 F.2d 1018(2d Cir. 1925), a statement amply confirmed by comparing the list of terms held suggestive with those held merely descriptive in 3 Callmann, Unfair Competition, Trademarks and Monopolies s 71.2 (3d ed.). Another court has observed, somewhat more usefully, that: A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods. Stix Products, Inc. v. United Merchants & Manufacturers Inc., 295 F.Supp. 479, 488 (S.D.N.Y. 1968). Also useful is the approach taken by this court in Aluminum Fabricating Co. of Pittsburgh v. Season-All Window Corp., 259 F.2d 314 (2d Cir. 1958), that the reason for restricting the protection accorded descriptive terms, namely the undesirability of preventing an entrant from using a descriptive term for his product, is much less forceful when the trademark is a suggestive word since, as Judge Lumbard wrote, 259 F.2d at 317: The English language has a wealth of synonyms and related words with which to describe the qualities which manufacturers may wish to claim for their products and the ingenuity of the public relations profession supplies new words and slogans as they are needed. If a term is suggestive, it is entitled to registration without proof of secondary meaning. Moreover, as held in the Season-All case, the decision of the Patent Office to register a mark without requiring proof of secondary meaning affords a rebuttable presumption that the mark is suggestive or arbitrary or fanciful rather than merely descriptive. [6] It need hardly be added that fanciful or arbitrary terms 12 enjoy all the rights accorded to suggestive terms as marks without the need of debating whether the term is "merely descriptive" and with ease of establishing infringement. In the light of these principles we must proceed to a decision of this case. 12 As terms of art, the distinctions between suggestive terms and fanciful or arbitrary terms may seem needlessly artificial. Of course, a common word may be used in a fanciful sense; indeed one might say that only a common word can be so used, since a coined word cannot first be put to a bizarre use. Nevertheless, the term "fanciful", as a classifying concept, is usually applied to words invented solely for their use as trademarks. When the same legal consequences attach to a common word, i. e., when it is applied in an unfamiliar way, the use is called "arbitrary." Comments and Questions 1. Is "SAFARI" generic as to clothing, hats, and boots? Judge Friendly found that safari was a generic term when used in connection with certain items of clothing and hats. Here is part of his reasoning: It is common ground that A&F could not apply 'Safari' as a trademark for an expedition into the African wilderness. This would be a clear example of the use of 'Safari' as a generic term. What is perhaps less obvious is that a word may have more than one generic use. The word 'Safari' has become part of a family of generic terms which, although deriving no doubt from the original use of the word and reminiscent of its milieu, have come to be understood not as having to do with hunting in Africa, but as terms within the language referring to contemporary American fashion apparel. These terms name the components of the safari outfit well-known to the clothing industry and its customers: the 'Safari hat', a broad flat-brimmed hat with a single, large band; the 'Safari jacket', a belted bush jacket with patch pockets and a buttoned shoulder loop; when the jacket is accompanied by pants, the combination is called the 'Safari suit'. Abercrombie, 537 F.2d at 11-12. Judge Friendly determined that the term "safari" was not generic, however, when used in connection with boots; it was either suggestive or merely descriptive, and because the registration of SAFARI for boots had become "incontestable" (a concept we will discuss below), the mark was found in either case to be protected. Id. at 12. Nevertheless, HW was deemed to be making a "fair use" (another concept we will address below) of the term safari in connection with its boots and was thus found not to be infringing. Id. at 12-13. We will devote much more attention to the question of genericism in Part I.A.1.c below. Abercrombie borderlines are the most disputed? Under the Abercrombie spectrum, suggestive, arbitrary, and fanciful marks qualify as inherently distinctive and may be protected without a showing that the mark has developed secondary meaning as a designation of source. Descriptive marks do not qualify as inherently distinctive and require a showing of secondary meaning to be protected. Generic marks may not be protected regardless of any showing of secondary meaning. Thus, there are two significantly disputed borders in the Abercrombie spectrum, the border between generic and descriptive marks (addressed in Part I.A. 1.c) and the border between descriptive and suggestive marks (addressed in the next subsection). 3. Coined terms that are not fanciful, but rather suggestive. Not all coined terms qualify as fanciful. In Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625 (9th Cir. 2005), the court analyzed the Abercrombie classification of the trademark SURFVIVOR for beach-themed products: Because "Surfvivor" is a coined term, [plaintiff] Deptula contends that it should be treated as a fanciful mark. However, the mere fact that a mark consists of a coined term does not automatically render that mark fanciful. See Interstellar Starship Servs. Ltd. v. Epix, Inc., 184 F.3d 1107, 1111(9th Cir. 1999) (determining that the coined phrase "EPIX" for electronic pictures should not automatically be considered an arbitrary [or fanciful] mark). Fanciful marks have no commonly known connotation to the product at hand. By contrast, the term "Surfvivor" is highly evocative of the company's beach-related products. Id. at 632. The court ultimately determined that the SURFVIVOR mark was suggestive. See id. Why choose a non-inherently distinctive descriptive mark? Lawyers may advise their clients always to choose inherently distinctive marks (and ideally only fanciful marks) because such marks do not require any showing of secondary meaning to qualify for protection. Yet clients often prefer -and the marketplace is full of -descriptive marks, particularly marks that are descriptive in a laudatory sense (e.g., BEST BUY). Why should this be the case? In an opinion involving the trademark FASHIONKNIT, Judge Learned Hand offered one persuasive explanation: I have always been at a loss to know why so many marks are adopted which have an aura, or more, of description about them. With the whole field of possible coinage before them, it is strange that merchants insist upon adopting marks that are so nearly descriptive. Probably they wish to interject into the name of their goods some intimation of excellence, and are willing to incur the risk. Franklin Knitting Mills, Inc. v. Fashionit Sweater Mills, Inc., 297 F. 247 (S.D.N.Y. 1923). See also Aloe Creme Labs., Inc. v. Milsan, Inc., 423 F.2d 845, 165 U.S.P.Q. 37 (9th Cir. 1970) ("Apparently entrepreneurs cannot resist the temptation to tie the name of their product to some disabling quality of description, geography, or vanity."). The Gilson treatise discusses this issue thoroughly at JEROME GILSON & ANNE GILSON LALONDE, GILSON ON TRADEMARKS § 2.01 (2022). In short, no. See Restatement (Third) of Unfair Competition (1995) § 14, cmt. a ("The misspelling or corruption of an otherwise descriptive word will not ordinarily alter the descriptive character of the designation."); Spex, Inc. v. Joy of Spex, Inc., 847 F. Supp. 567 (N.D. Ill. 1994) (SPEX for eyeglasses merely descriptive); In re Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 U.S.P.Q. 505 (C.C.P.A. 1980) (QUIK-PRINT for photocopy services merely descriptive). See also Flexitized, Inc. v. National Flexitized Corp., 335 F.2d 774, 780, 142 U.S.P.Q 334 (2d Cir. 1964) ("That the terms used to comprise a trademark are misspelled, or represent the combination of several words or parts of words, or are otherwise so formed or malformed that the mark does not appear in any standard dictionary, will not preclude a finding of invalidity based on descriptiveness if the terms which are used, interpreted according to the basic rules of the English language, do sufficiently describe."). 6. Beyond Abercrombie. Students with a background in linguistics, semiotics, or literature may find the Abercrombie spectrum to be disappointingly primitive. For a far more sophisticated classification of trademarks by the poetic and rhetorical devices they employ, see Alexandra J. Roberts, A Poetics of Trademark Law, 38 BERKELEY TECH. L.J. 51 (2023). There are a number of reasons why a trademark owner would want to show that a mark on the border between descriptiveness and suggestiveness is in fact suggestive and thus inherently distinctive. First, as we will see in Part I.A.1.b, it can be difficult and costly to show that a mark deemed descriptive has developed secondary meaning as a designation of source. Second, as we will see in Part I.D, only inherently distinctive marks may be registered on an intent-to-use basis. Where a mark falls along the continuum between suggestiveness and descriptiveness can be difficult to determine, and a court's determination of the issue difficult to predict. See Jake Linford, The False Dichotomy Between Suggestive and Descriptive Trademarks, 76 OHIO ST. L.J. 1367, 1371 (2015) (characterizing the distinction between descriptive and suggestive marks as "illusory at best" and urging reforms in trademark law's treatment of suggestive marks). Courts' approaches vary, but all emphasize, as did Judge Friendly in Abercrombie, the question of the degree of "imagination" a consumer must use to connect the meaning of the mark to the characteristics of the goods. See, e.g., Platinum Home Mortgage Corp. v. Platinum Financial Group, Inc., 149 F.3d 722, 47 U.S.P.Q.2d 1587(7th Cir. 1998) (stating the Seventh Circuit's "degree of imagination" test as "[I]f a mark imparts information directly it is descriptive. If it stands for an idea which requires some operation of the imagination to connect it with the goods, it is suggestive", and quoting approvingly the district court's reasoning that PLATINUM MORTGAGE is descriptive because "the mental leap . . . is nearly instantaneous and . . . requires little imagination to associate 'platinum' with superiority and quality service"). Because the borderline between descriptive and suggestive marks is so important, two representative analyses are provided here for your consideration. To give you a sense of the relative importance of various opinions in the trademark law canon, it is worth noting that neither of the opinions excerpted here has been nearly as influential as Abercrombie. They are provided instead as everyday examples from various circuits of how courts draw (sometimes unpredictably, sometimes wrongly) the border between suggestiveness and descriptiveness. In reading these cases, consider the following questions: • Which factors should be the most important to a court's determination of whether a mark is either descriptive or suggestive? • How might you design a consumer survey to aid a court in determining whether a mark is either descriptive or suggestive? • Has the court in Innovation Ventures (the second opinion below) adopted a sensible approach to analyzing descriptiveness versus suggestiveness? If you were the plaintiff (i.e., the asserter of trademark rights), would you prefer the Zatarains or the Innovation Ventures approach? Zatarains, Inc. v. Oak Grove Smokehouse, Inc. 698 F.2d 786, 792-93 (5th Cir. 1983) {Plaintiff Zatarain's, Inc. ("Zatarain's") used two registered trademarks: FISH-FRI for friedfish batter and CHICK-FRI for fried chicken batter. Competitors, including Oak Grove Smokehouse, Inc. ("Oak Grove") and Visko's Fish Fry, Inc. ("Visco's"), used phrases like "FISH FRY" or "CHICKEN FRY" on the packaging of competing products to describe the contents of those products. Both sides of the dispute cross-appealed the outcome of the district court's bench trial.} Goldberg, Circuit Judge: . . . . [1] Throughout this litigation, Zatarain's has maintained that the term "Fish-Fri" is a suggestive mark automatically protected from infringing uses by virtue of its registration in 1962. Oak Grove and Visko's assert that "fish fry" is a generic term identifying a class of foodstuffs used to fry fish; alternatively, Oak Grove and Visko's argue that "fish fry" is merely descriptive of the characteristics of the product. The district court found that "Fish-Fri" was a descriptive term identifying a function of the product being sold. Having reviewed this finding under the appropriate "clearly erroneous" standard, we affirm. [2] We are mindful that "[t]he concept of descriptiveness must be construed rather broadly." Callman § 70.2. Whenever a word or phrase conveys an immediate idea of the qualities, characteristics, effect, purpose, or ingredients of a product or service, it is classified as descriptive and cannot be claimed as an exclusive trademark. Id. § 71.1; see Stix Products, Inc. v. United Merchants & Manufacturers, Inc., 295 F.Supp. 479, 488 (S.D.N.Y. 1968). Courts and commentators have formulated a number of tests to be used in classifying a mark as descriptive. [3] A suitable starting place is the dictionary, for "[t]he dictionary definition of the word is an appropriate and relevant indication 'of the ordinary significance and meaning of words' to the public." American Heritage Life Insurance Co. v. Heritage Life Insurance Co., 494 F.2d 3, 11 n.5 (5th Cir. 1974). Webster's Third New International Dictionary 858 (1966) lists the following definitions for the term "fish fry": "1. a picnic at which fish are caught, fried, and eaten; . . . . 2. fried fish." Thus, the basic dictionary definitions of the term refer to the preparation and consumption of fried fish. This is at least preliminary evidence that the term "Fish-Fri" is descriptive of Zatarain's product in the sense that the words naturally direct attention to the purpose or function of the product. [4] The "imagination test" is a second standard used by the courts to identify descriptive terms. This test seeks to measure the relationship between the actual words of the mark and the product to which they are applied. If a term "requires imagination, thought and perception to reach a conclusion as to the nature of goods," Stix Products, 295 F.Supp. at 488, it is considered a suggestive term. Alternatively, a term is descriptive if standing alone it conveys information as to the characteristics of the product. In this case, mere observation compels the conclusion that a product branded "Fish-Fri" is a prepackaged coating or batter mix applied to fish prior to cooking. The connection between this merchandise and its identifying terminology is so close and direct that even a consumer unfamiliar with the product would doubtless have an idea of its purpose or function. It simply does not require an exercise of the imagination to deduce that "Fish-Fri" is used to fry fish. Accordingly, the term "Fish-Fri" must be considered descriptive when examined under the "imagination test." [5] A third test used by courts and commentators to classify descriptive marks is "whether competitors would be likely to need the terms used in the trademark in describing their products." Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 379 (7th Cir. 1976). A descriptive term generally relates so closely and directly to a product or service that other merchants marketing similar goods would find the term useful in identifying their own goods. Common sense indicates that in this case merchants other than Zatarain's might find the term "fish fry" useful in describing their own particular batter mixes. While Zatarain's has argued strenuously that Visko's and Oak Grove could have chosen from dozens of other possible terms in naming their coating mix, we find this position to be without merit. As this court has held, the fact that a term is not the only or even the most common name for a product is not determinative, for there is no legal foundation that a product can be described in only one fashion. There are many edible fish in the sea, and as many ways to prepare them as there are varieties to be prepared. Even piscatorial gastronomes would agree, however, that frying is a form of preparation accepted virtually around the world, at restaurants starred and unstarred. The paucity of synonyms for the words "fish" and "fry" suggests that a merchant whose batter mix is specially spiced for frying fish is likely to find "fish fry" a useful term for describing his product. [6] A final barometer of the descriptiveness of a particular term examines the extent to which a term actually has been used by others marketing a similar service or product. This final test is closely related to the question whether competitors are likely to find a mark useful in describing their products. As noted above, a number of companies other than Zatarain's have chosen the word combination "fish fry" to identify their batter mixes. Arnaud's product, "Oyster Shrimp and Fish Fry," has been in competition with Zatarain's "Fish-Fri" for some ten to twenty years. When companies from A to Z, from Arnaud to Zatarain's, select the same term to describe their similar products, the term in question is most likely a descriptive one. [7] The correct categorization of a given term is a factual issue; consequently, we review the district court's findings under the "clearly erroneous" standard of Fed.R.Civ.P. 52. The district court in this case found that Zatarain's trademark "Fish-Fri" was descriptive of the function of the product being sold. Having applied the four prevailing tests of descriptiveness to the term "Fish-Fri," we are convinced that the district court's judgment in this matter is not only not clearly erroneous, but clearly correct. {In a footnote, the court considered and rejected the argument that FISH-FRI was generic as to fish-frying batter. The court also affirmed the district court's finding that CHICK-FRI was descriptive.} [1] NVE claims that the term "5-hour ENERGY" is not a distinctive mark, but is a descriptive mark. 1 A descriptive mark, by itself, is not protectable. However, "[a] merely descriptive term . . . can, by acquiring a secondary meaning, i.e., becoming distinctive of the applicant's goods . . . , become a valid trademark." Induct-O-Matic Corp. v. Inductotherm Corp., 747 F.2d 358, 362 (6th Cir. 1984). LE counters that the "5-hour ENERGY" mark is not descriptive, but rather is distinctive, due to the mark's suggestiveness. Such a mark "suggests rather than describes an ingredient or characteristic of the goods and requires the observer or listener to use imagination and perception to determine the nature of the goods." Id. at 362. [2] The "5-hour ENERGY" mark could be characterized as merely descriptive, in the sense that it simply describes a product that will give someone five hours of energy. But that is not the end of such an inquiry. The first question one would ask is how would the energy be transferred? Through food? Through drink? Through injections? Through pills? Through exercise? Also, one would ask what kind of energy is the mark referring to? Food energy (measured in Calories)? Electrical energy? Nuclear energy? With some thought, one could arrive at the conclusion that the mark refers to an energy shot. But it is not as straightforward as NVE suggests. Such cognitive inferences are indicative of "suggestive" rather than descriptive marks. [3] The nature of the "5-hour ENERGY" mark "shares a closer kinship with those marks previously designated as suggestive than those labeled merely descriptive because of the degree of inferential reasoning necessary for a consumer to discern" that the "5-hour ENERGY" mark relates to an energy shot. Tumblebus v. Cranmer, 399 F.3d 754, 763 (6th Cir. 2005). The connection between "5-hour" and "ENERGY" is "not so obvious that a consumer seeing in isolation would know that the term refers to" an energy shot rather than, for example, a battery for electronics, an exercise program, a backup generator, or a snack for endurance sports. Ibid. Connecting the mark "5-hour ENERGY" with the energy-shot product requires "imagination and perception to determine the nature of the goods." Induct-O-Matic, 747 F.2d at 362. [4] "The line between merely descriptive and suggestive marks is admittedly hazy and can be difficult to discern." Tumblebus, 399 F.3d at 763. However, we disagree with NVE's contention that the mark is not distinctive and thus not protectable. The "5-hour ENERGY" mark is "suggestive." {The Sixth Circuit found other fact issues and remanded.} 1. The PTO's conflicting analysis of the 5-HOUR ENERGY mark. Innovation Ventures originally applied to register 5-HOUR ENERGY at the PTO in 2004, but the PTO denied registration on the ground that the mark was merely descriptive and lacked acquired distinctiveness. In 2005, Innovation Ventures resorted to registration of the mark on the Supplemental Register (U.S. Reg. No. 3,003,077, Sept. 27, 2005). In 2011, after showing the mark had developed acquired distinctiveness, Innovation Ventures finally managed to register the mark on the Principal Register. (U.S. Reg. No. 4,004,225, Aug. 2, 2011). (For a discussion of the difference between the Supplemental Register and the Principal Register, see Part I.D.1 below). In a subsequent case, Innovation Ventures, LLC v. N2G Distrib., Inc., 763 F.3d 524 (6th Cir. 2014), the Sixth Circuit noted this history and simply stated in a footnote: "By contrast, we have held that the '5-hour ENERGY' mark was 'suggestive and thus protectable' by at least March 2006. Innovation Ventures, LLC v. N.V.E., Inc., 694 F.3d 723, 730 (6th Cir. 2012)." Innovation Ventures, LLC v. N2G Distrib., Inc., 763 F.3d at 530 n.1. With whose determination do you agree, the PTO's or the Sixth Circuit's? Here are a few further examples of marks classified either as descriptive or suggestive. You are strongly encouraged to decide for yourself how you would predict the court ruled before consulting the actual outcome (and keep in mind that the court may simply have gotten it wrong): • COASTAL WINE for wine made near a coast. See Callaway Vineyard & Winery v. Endsley Capital Group, Inc., 63 U.S.P.Q.2d 1919(TTAB 2002) (finding the mark to be descriptive since the mark describes "a significant feature of applicant's goods, namely the place or establishment where applicant produces its wine"). • 24 HOUR FITNESS for fitness facilities. The combination of the terms into a single unique word places the mark in the 'suggestive' category, requiring a leap of the imagination to get from the mark to the product. The CROSSFIT® mark is not an arbitrary term such as KODAK." (citation omitted)). • XTREME LASHES for artificial eyelashes. See Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221 (5th Cir. 2009) (finding the mark to be suggestive; "The consumer must exercise some imagination to associate 'xtreme lashes' with 'artificially elongated eyelashes.'"). • 100% and 100% TIME RELEASE MOISTURIZER for skin moisturizer. See Estee Lauder, Inc. v. The Gap, Inc., 108 F.3d 1503(2d Cir. 1997) (affirming the district court's finding the mark to be suggestive; "The phrase '100% Time Release Moisturizer' could be read to indicate the purity of the moisturizing content of Lauder's product, or to imply an enduring effect. Or, as the district court found, it could be read as indicating that the bottle contains nothing but time-release moisturizer or that the product moisturizes continuously until removed or worn off. All of these interpretations require some stretch of the imagination. And of course, as the court found, if the term '100%' is simply viewed as the brand of time-release moisturizer, it plainly is suggestive."). • LITTLE MERMAID for a doll taking the form of a mermaid. See In re United Trademark Holdings, Inc., 122 U.S.P.Q.2d 1796 (TTAB 2017) (finding the mark to be descriptive for a doll taking the form of a mermaid because consumers will "understand the mark to describe the public domain character in the Hans Christian Andersen fairy tale, as well as a young or little mermaid"; by contrast, " [c]onsumers reasonably expect goods and services bearing the name or image of {Superman} to emanate from, or be produced or marketed under license from, the entity which created the character and therefore owns the right to profit from commercialization of it."). • The app icon shown to the right for a mobile game consisting of block puzzles. See Hangzhou Mengku Technology Co., Ltd v. Shanghai Zhenglang Technology Co., Ltd, Opposition No. 91272143 (TTAB Dec. 30, 2024) (finding the asserted mark to be descriptive: "Considering the context in which Applicant's proposed mark is used and the average purchaser of the goods, we find that Opposers have shown that Applicant's proposed mark conveys an immediate idea of a feature of the goods, namely that Applicant's product is a block puzzle game, as described in the identification of goods."). 1. Surveying for suggestiveness versus descriptiveness. In Rise-N-Shine, LLC v. Duner-Fenter, No. 14 Civ. 1305, 2015WL 876470 (S.D.N.Y. Feb. 28, 2015), the plaintiff produced a dietary supplement under the mark GO AWAY GRAY that purportedly prevents the growth of gray hair. The defendant produced a competing dietary supplement under the mark GET AWAY GREY. The defendant asserted that the plaintiff's mark was descriptive (and both parties agreed that the plaintiff's mark lacked secondary meaning). The plaintiff presented survey evidence of the mark's suggestiveness. The methodology of the survey was essentially as follows: First, the pool of respondents was limited-through screening questions at the beginning of the survey-to adults between the ages of 35 and 55, residing in the United States, who had purchased vitamins or supplements in the previous six months, and who reported that they would "definitely" or "probably" consider buying vitamins or supplements "to promote healthy hair" in the next six months. In all, 208 participants qualified after these screening mechanisms. Next, respondents were informed of the difference between a brand name and a product description, and given two test phrases ("ONE A DAY" and "IMMUNITY BOOSTER") to evaluate whether they understood that distinction. Respondents were then asked whether they believed the Disputed Mark-as well as two other marks, "SLIM-FAST" and "MUSCLE BUILDER," which were included to minimize potential bias-refers to a product's brand name or describes a product's function or purpose, or whether the respondent did not know. Respondents were also asked, at the conclusion of the survey, whether they had gray hair, and 176 of the 208 respondents answered affirmatively. Ultimately, 49% of survey respondents-and 51% of respondents with gray hair-answered that they believed the Disputed Mark was a brand name. {The survey expert} then excluded all those respondents who incorrectly identified either SLIM-FAST or MUSCLE BUILDER as a brand name or product description, which left 160 respondents. Of those respondents, 56% in total, and 59% of those with gray hair, answered that they believed the Disputed Mark was a brand name. Id. at *1. Judge Sullivan rejected the defendant's motion in limine to exclude the survey expert's testimony and allowed the survey results to be presented to the jury. Id. at *4. Does this survey methodology for distinguishing between descriptive and suggestive marks appear valid? 2. Is the protection of descriptive marks constitutionally sound? See Lisa Ramsey, Descriptive Trademarks and the First Amendment, 70 TENN. L. REV. 1095REV. (2003) ) (arguing that the protection of descriptive marks violates the free speech clause of the First Amendment because it does not directly advance the government's interest in protecting consumers from confusion and is in any case more extensive than necessary). There are many special rules that guide the Abercrombie classification of certain kinds of trademarks. Nearly all of them are detailed in the PTO's Trademark Manual of Examining Procedure ("TMEP"), tmep.uspto.gov, which is an excellent resource for the trademark lawyer, particularly one who specializes in trademark "prosecution," i.e., the process of registering trademarks at the PTO. Among the most important of these special rules are the following: As we will see through the course of this Part, Lanham Act § 2, 15 U.S.C. § 1052, has several provisions giving special treatment to geographic terms. Consider for the moment § 2(e) (2), which provides: "No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (e) Consists of a mark which . . . ( 2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title." Such "primarily geographically descriptive" marks may be registered or otherwise protected only upon a showing of secondary meaning (with one important exception relating to geographic certification or collective marks that we will address in a moment for apparel to be not primarily geographically descriptive where consumers would not perceive the primary significance of the mark as a whole as designating a particular geographic location). The third prong of the PGD test calls for evidence that consumers would make a "goods/place association" (or "service/place association") between (a) the geographic location referred to by the mark and (b) the goods sold under the mark. Importantly, if the geographic location is "neither obscure nor remote," TMEP § 1210.04, and the goods actually originate from that location, then this goods/place association may ordinarily be presumed. The result is that the goods/place association is almost always found. See, e.g., In re Spirits of New Merced, LLC, 85 U.S.P.Q.2d 1614 (TTAB 2007) (finding YOSEMITE BEER to be primarily geographically descriptive where the registration applicant's beer was brewed near Yosemite National Park and applicant failed to overcome presumption of goods/place association; "{s}ince the goods originate at or near {Yosemite National Park}, we can presume an association of applicant's beer with the park."). But see In re Mankovitz, 90 USPQ2d 1246 (TTAB 2009) (finding THE MONTECITO DIET for a diet system to be not primarily geographically descriptive where evidence of goods/place association consisted only of the fact that the registration applicant lived in Montecito, California; "it would be speculation on our part to reach the conclusion that the goods or services originate there or that the public would understand that there is a goods/place relationship"). "Certification marks" and "collective marks" are special forms of trademarks in the Lanham Act. Lanham Act § 45 defines a certification mark as follows: The term "certification mark" means any word, name, symbol, or device, or any combination thereof-(1) used by a person other than its owner, or (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this Act, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services or that the work or labor on the goods or services was performed by members of a union or other organization. As the § 45 definition suggests, certification marks may take a variety of forms, including: • certifications of a good's quality, e.g., SCOTCH 2023) (in refusing registration of GRUYERE as a certification mark on the ground that the term is generic, finding that "the pervasive sales of non-Swiss and non-French cheese labeled as gruyere in the United States{} and the common usage of gruyere establish that when purchasers walk into retail stores and ask for gruyere, they regularly mean a type of cheese, and not a cheese that was produced in the Gruyère region of Switzerland and France" (cleaned up)); • certifications that a product was union-made e.g., the International Union of Painters and Allied Trades mark indicating that the designated services were performed by union members, Reg. No. 2,749,294 (Aug. 12, 2003). Various specific rules apply to certification marks. First, certifying organizations may not themselves produce goods or services to which the certification mark is applied. See Lanham Act § 14( 5 In contrast to certification marks, collective marks are used by members of the collective to identify their goods and services as made by collective members. The "anti-use-by-owner" rule that applies to certification marks-i.e., the rule that the owner of the certification mark may not itself sell goods or services bearing the certification mark-does not apply to collective marks. 4 Lanham Act § 45 defines collective marks as follows: The term "collective mark" means a trademark or service mark- When certification or collective marks take the form of geographic designations, the distinctiveness analysis of them is unique in the statutory scheme. Lanham Act § 2(e) (2) establishes that proprietors of certification or collective marks that take the form of "indications of regional origin" need not establish that the indication of regional origin has secondary meaning in order to register the indication as trademark. A mark's ability to qualify as a regional certification or collective mark turns on "whether the public understands that goods bearing the mark come only from the region named in the mark, not whether the public is expressly aware of the certification function of the mark per se." TMEP § 1306.05(a). See also Institut Nat'l Des Appellations D'Origine v. Brown-Forman Corp., 47 USPQ2d 1875(TTAB 1998). Just as it does with geographic marks, § 2 of the Lanham Act, 15 U.S.C. § 1052, also explicitly addresses the protectability of surnames and classifies them essentially as descriptive marks. It states: "No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (e) Consists of a mark which . . . ( 4) is primarily merely a surname." Surnames may be registered only upon a showing of acquired distinctiveness under § 2(f), 15 U.S.C. § 1052(f). As the TMEP explains, § 2(e)(4) "reflects the common law that exclusive rights in a surname per se cannot be established without evidence of long and exclusive use that changes its significance to the public from that of a surname to that of a mark for particular goods or services. The common law also recognizes that surnames are shared by more than one individual, each of whom may have an interest in using his surname in business; and, by the requirement for evidence of distinctiveness, the law, in effect, delays appropriation of exclusive rights in the name." TMEP § 1211. But what qualifies as "primarily merely a surname"? "Fiore," "Hackler," and "Bird" are used as surnames, but each has been deemed not "primarily merely a surname" under trademark law. See In re Isabella Fiore LLC, 75 USPQ2d 1564 (TTAB 2005); In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000); Fisher Radio Corp. v. Bird Elec. Corp., 162 USPQ 265 (TTAB 1969). The TTAB has established a five factor balancing test to determine whether the relevant purchasing public perceives the primary significance of a term to be that of a surname: (1) whether the surname is rare; (2) whether the term is the surname of anyone connected with the applicant; (3) whether the term has any recognized meaning other than as a surname; (4) whether it has the "look and feel" of a surname; (5) in cases of stylized, rather than standard character marks, whether the stylization of lettering is distinctive enough to create a separate commercial impression. In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-1334(TTAB 1995) (finding that the mark BENTHIN in stylized lettering inside an oval design would not be perceived as primarily merely a surname). If it is determined that the relevant purchasing public does not perceive a term as a surname, then the term would likely be classified as either arbitrary or suggestive, or possibly even as fanciful. In any case, the term would qualify as inherently distinctive of source. 5 5 As for full names, the common law has long treated full names the same as it treats surnames: both require a showing of secondary meaning to merit protection. But importantly, the PTO treats full names differently from surnames for purposes of registration. It will allow the registration of a full name without any showing that the name carries secondary meaning (or is famous), provided that the applicant can show that the name is being used as an indication of commercial origin rather than as simply the applicant's own name. See Brooks v. Calloway, 93 U.S.P.Q.2d 18232010 WL 595585, at *8 (T.T.A.B. 2010) ("A personal name mark, unless it is primarily merely a surname, is registrable on the Principal Register without a showing of secondary meaning, and thus is deemed to be inherently distinctive under the Lanham Act if the record shows that it is used in a manner that would be perceived by purchasers as identifying the services in addition to the person."). The divergence What about historic surnames? "A term with surname significance may not be primarily merely a surname if that term also identifies a historical place or person." TMEP § 1211.01(a)(iv). (d) Non-English Words: The Doctrine of "Foreign Equivalents" Under the "doctrine of foreign equivalents," the distinctiveness analysis of non-English words is based on the English translation of those words if (1) the non-English words originate from "common, modern languages, which encompasses all but dead, obscure, or unusual languages," TMEP § 1207.01(b)(vi)(B), and ( 2) "it is likely that the ordinary American purchaser would stop and translate the foreign wording into its English equivalent." TMEP § 1209.03(g). Thus, "leche," "lait," and "Milch" as brand names for milk would be deemed generic, and "fresca," "frais," and "frisch" as brand names for milk would likely be deemed descriptive and require secondary meaning to be protected. See, e.g., In re Tokutake Indus. Co., 87 USPQ2d 1697 (TTAB 2008) (finding AYUMI, meaning "walking," and its Japanese character equivalent to be merely descriptive for footwear); In re Oriental Daily News, Inc., 230 USPQ 637 (TTAB 1986) (finding Chinese characters meaning "Oriental Daily News" to be merely descriptive of newspapers). between the common law and the registration regime with respect to full names can lead to strange outcomes. See, e.g., Zinner v. Olenych, 108 F. Supp. 3d 369, 381-86 (E.D. Va. 2015) (explaining the difference between the USPTO's "more lenient standard" and the common law doctrine and finding that plaintiff's mark, ED ZINNER, was a personal name, unprotectable under the common law, yet awarding it a presumption of validity, because the USPTO had granted it registration). The doctrine of foreign equivalents has long been riddled with inconsistencies, limitations, and exceptions, however, and is arguably incoherent. See, e.g., In re Bayou Grande Coffee Roasting Co., 160 F.4th 1370, 1374(Fed. Cir. 2025) (reversing the TTAB's determination that KAHWA, which in Arabic means "coffee," is generic for cafés and coffee shops, reasoning that the doctrine of foreign equivalents does not apply because the English term "kahwa" refers to a type of Kashmiri green tea). In In re Vetements Grp. AG, 137 F.4th 1317(Fed. Cir. 2025), the Federal Circuit sought to rationalize the doctrine. In the case, a fashion house applied to register the term "vetements" (which means "clothing" in French) for various items of apparel. The Federal Circuit found the term to be generic based on the following "guiding principles": First, the burden is on the party opposing translation to show that it is unlikely the ordinary American purchaser would stop and translate the word into its English equivalent. Placing the burden on a party opposing translation takes into account the well-recognized tenet that words from modern languages are generally translated into English. . . . Second, we consider the capability of the U.S. population to translate the word. . . . As long as an appreciable number of Americans, from the U.S. population as a whole, are capable of translating the word, the word likely will be translated. This principle does not require an absolute majority of the population being capable of translation because it takes into account that words from modern languages are generally translated into English. Third, we consider whether in context, the mark would ordinarily be translated by a purchaser (from the U.S. population as a whole) with ordinary sensibilities. . . . Because the second principle considers language capability, this third principle does not depend on linguistic capabilities. Instead, it assumes linguistic ability but asks whether a purchaser with ordinary sensibilities would translate the word given the context in which the mark is used. This follows from cases that have articulated sometimes even a native speaker would not perform a literal translation because it would be irrelevant in the context of the specific goods, services, or market. What is an "appreciable number of Americans"? In Vetements, the record established that "approximately 2.1 million Americans over the age of five spoke a dialect of French at home. French is also the second most widely taught non-English language in schools in the United States." Id. at 1327. See also In re Hag Aktiengesellschaft, 155 U.S.P.Q. 598 (TTAB 1967) (finding KABA, meaning coffee in Serbian and Ukrainian, to be descriptive for coffee). But see Palm Bay Imports v. Veuve Clicquot, 396 F.3d 1369(Fed. Cir. 2005) (finding that VEUVE CLICQUOT is not confusingly similar to THE WIDOW, since most American consumers won't know that ''veuve'' means ''widow'' in French). 6 The general rule is that an acronym will be classified as descriptive or generic if (1) the wording it stands for is merely descriptive of or generic as to the goods or services, and ( 2) relevant purchasers will recognize the acronym as an acronym of the merely descriptive or generic wording it represents (rather than as, say, a fanciful sequence of letters A descriptive, and thus non-inherently distinctive, mark may qualify for protection if it is shown to have developed "acquired distinctiveness" or "secondary meaning" (the two terms mean the same thing) as a designation of source. For example, though the term "American Airlines" is highly descriptive of an airline service based in the U.S., the term has developed enormous secondary meaning as a designation of source through use and advertising. As the Supreme Court commented in Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000), the term "secondary meaning" is not as clear as it could be: The phrase "secondary meaning" originally arose in the context of word marks, where it served to distinguish the source-identifying meaning from the ordinary, or "primary," meaning of the word. "Secondary meaning" has since come to refer to the acquired, source-identifying meaning of a nonword mark as well. It is often a misnomer in that context, since nonword marks ordinarily have no "primary" meaning. Clarity might well be served by using the term "acquired meaning" in both the word-mark and the nonword-mark contexts-but in this opinion we follow what has become the conventional terminology. Id. at 211 fn. Indeed, most trademark practitioners still continue as a matter of tradition to use the term "secondary meaning" rather than "acquired distinctiveness." Each circuit typically uses its own multifactor test to determine if a mark has developed secondary meaning. They are generally quite similar. Here are some examples of these tests: 6 A common objection to the doctrine of foreign equivalents is that Americans don't speak "foreign" languages. In fact, according to U.S. Census Bureau data, 1 in 5 Americans speak a language other than English at home. See https://www.census.gov/acs/www/about/why-we-ask-each-question/language/. • Second Circuit: "(1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, ( 5) attempts to plagiarize the mark, and (6) length and exclusivity of the mark's use." Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 143 n.4 (2d Cir. 1997). • Third Circuit: "We have identified an eleven-item, non-exhaustive list of factors relevant to the factual determination whether a term has acquired secondary meaning: (1) 1) whether actual purchasers of the product bearing the claimed trademark associate the trademark with the producer, ( 2) the degree and manner of advertising under the claimed trademark, (3) the length and manner of use of the claimed trademark, and ( 4) whether use of the claimed trademark has been exclusive."). The three opinion excerpts that follow offer examples of courts' analyses of whether a non-inherently distinctive mark has developed sufficient secondary meaning to qualify for protection. Each of these opinions addresses facts involving non-verbal marks, but they are included here because the secondary meaning analysis of verbal and non-verbal marks operates in essentially the same way. In reading these excerpts, consider the following questions: • What proportion of consumers in the relevant population should courts require to perceive the mark as possessing secondary meaning for the mark to qualify for protection? 25%? 50? 75%? Relatedly, how should courts determine what constitutes the relevant population of consumers? • How would you devise a survey to test for secondary meaning? • Why should "length and exclusivity of use" matter for purposes of establishing secondary meaning? • Imagine a situation in which Company David, after a great deal of market research, adopts an especially good descriptive mark and initiates a small-scale launch of the descriptive mark in the marketplace. Company Goliath then becomes aware of Company David's mark, adopts the mark as its own, and immediately spends enormous resources building up secondary meaning in the mark, so that when consumers see the mark, they think of Company Goliath. Which company should be granted rights in the mark? And is this in your view an equitable or efficient outcome? The following case involved two main questions. The first was whether a combination of design elements incorporated into the design of boots had acquired distinctiveness. The case is included here because of the court's rich analysis of this issue. But the case also involved the question of whether the combination of design elements was functional. Because we will address the issue of functionality in more detail in section I.B.1, the court's discussion of that issue has been largely edited out of the opinion excerpt below. In any event, as you will see, the court ultimately determined that it did not need to decide the issue of functionality because of how it ruled on the issue of acquired distinctiveness. TBL Licensing, LLC v. Vidal 98 F.4th 500 (4th Cir. 2024) QUATTLEBAUM, Circuit Judge: [1] TBL Licensing, LLC, more commonly known as Timberland, tried to register certain features from the design of its popular boot under the Lanham Act as trade dress. But the law prohibits the registration of product designs that have not acquired a distinctive meaning identifying the product with its maker in the minds of the consuming public. See TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 28-29 (2001). It also bars the registration of product designs that are functional since protection of functionality is reserved for patent law. Id. at 29. Concluding the boot design is not distinctive, the United States Patent and Trademark Office ("USPTO") refused to register it. TBL turned to federal district court, which agreed with the USPTO that the boot design is not distinctive and added that it is impermissibly functional. On either independent ground, the district court granted the USPTO's motion for summary judgment. On distinctiveness, the issue we face is not whether the public recognizes the entire product as Timberland's perhaps iconic boot; rather, we must decide whether the district court reversibly erred in concluding that the subset of design features that TBL selectively sought to register lacks distinctiveness in the public's view. We hold that the district court did not reversibly err. So, without deciding functionality, we affirm the district court's grant of summary judgment for the USPTO. I. . . . . [2] For decades, TBL has sold the following boot in several colors: [3] In May 2015, TBL applied to register aspects of the boot's design as protected trade dress with the USPTO. As required by law, see 37 C.F.R. § 2.37, TBL included a written description{, block-quoted below,} "specify[ing] which elements ... constitute the mark and are claimed as part of the mark and which are not." Trademark Manual of Examining Procedure § 1202.02(c)(ii). The mark consists of a three-dimensional configuration of a lace-up boot having an overall shape and silhouette as depicted in the drawings, with a visibly bulbous toe box and the following individual features: (1) the external appearance of a tube-shaped ankle collar on the outside surface of the product running from one eyelet panel to the other eyelet panel around the sides and rear of the boot and protruding over the upper side and rear panels of the boot (material on the inside of the ankle collar not being claimed); (2) outsoles having two color tones divided horizontally and extending around the circumference of the boot, and visibly showing inverted tooth shaped cuts on each side of the heel of the outsole and around the sides and front of the forward portion of the outsole; (3) an hourglass-shaped rear heel panel, defined by four vertical stitching lines from the top of the outsole to the rear collar; (4) quad-stitching forming an inverted "U" shape around the vamp line in front of the boot at the bottom of the tongue and curving around to the left and right sides and ending at the cinched portion of the hourglass stitching of the rear heel panel; and (5) eyelets shaped hexagonally on the exterior-facing outside surface. The double row stitching around the rear and side ankle collar, the single stitching around the upper two eyelets on each side, the single stitching along the upper perimeter of the shaft in front of the eyelets and the boot tongue, the appearance of the eyelets on the boot interior, the top of the ankle collar, the bottom, outer most surface of the outsole, and the uppermost surface of the outsole connecting to the boot around the perimeter, all of which are depicted in broken or dotted lines, are not being claimed as part of the mark and serve only to show the position or placement of the mark. [4] Also as required by law, see 15 U.S.C. § 1051(a)(2); 37 C.F.R. § 2.51, TBL included this drawing of the design features it sought to register: [5] For clarity, we have added the numbers on the drawing, which correspond to the design features described in the application. [6] Importantly, TBL did not try to register every aspect of the boot. In its registration application, TBL asserted-or, to use the legal term, "claimed"-intellectual property rights in some, but not all, of the features of its boot design. For instance, as a part of the design it sought to register, TBL claimed "the external appearance of a tube-shaped ankle collar on the outside surface of the product" but not "material on the inside of the ankle collar." Likewise, it claimed two-colored outsoles "visibly showing inverted tooth shaped cuts" along the soles' sides, but not "the bottom, outer most surface of the outsole." Also, the application claimed no particular color as a part of the boot's design, such as the popular wheat-yellow color depicted above. Nor did it include TBL's already-registered tree logo or TIMBERLAND word mark. 4 [7] The USPTO's examining attorney refused to register the design, finding it overall functional and not distinctive. TBL appealed to TTAB, which affirmed the examining attorney's refusal to register the design, finding the design lacks distinctiveness and declining to reach whether it is functional. [8] As allowed by the Lanham Act, TBL challenged TTAB's decision in federal district court, naming as defendants the USPTO and its then-acting director (collectively "USPTO"). After discovery, the parties agreed to allow the district court to "resolve any factual disputes 4 TBL's decision to limit the design features of the boot in its application was quite possibly strategic. Had it included, for instance, the inner ankle collar or the lug sole, the overall risk of a functionality finding likely would have increased. But having omitted these features in its application, TBL must prove that, without resorting to these unclaimed features, the public associates the features TBL did claim exclusively with Timberland. without the need for a trial." Having so agreed, TBL and the USPTO then cross-moved for summary judgment. So, in effect, the district court conducted a bench trial. . . . . [9] Here, we must affirm the district court unless it reversibly erred in finding both that the design TBL claimed is functional and that the same design is not distinctive. In assessing both issues, we focus on the design drawn and described in TBL's application. See 37 C.F.R. § 2.37 ("A description of the mark must be included if the mark is not in standard characters."); id. § 2.52 ("A drawing depicts the mark sought to be registered."); . . . 1 McCarthy § 8:7 ("To be registerable as a trademark or service mark, the elements of the trade dress must be listed and defined so that the public will know the exact parameters of the claimed exclusive right covered by the registration."). Crucial to this appeal, that means we consider only the outer ankle collar, the two-tone color and etching on the side of the boot's sole, the hourglass rear heel panel, the quad stitching along the boot's side and tongue area, the hexagonal eyelets for the boot's laces and the boot's bulbous toe box. Other design features of the boot-such as the popular wheat-yellow color, the tree logo, the lug soles and the inner ankle collar-cannot be used to prove distinctiveness, as they are not design features that TBL claimed in its application. [10] To be registerable, a mark must cause the public to identify the product bearing it as coming from a specific source. Wal-Mart Stores, 529 U.S. at 210. That is, the mark must be distinctive. Id. A mark generally acquires distinctiveness "if it has developed secondary meaning, which occurs when, 'in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.'" Id. at 211 (quoting Inwood Labs., 456 U.S. at 851 n.11). . . . While the public "need not be able to identify the name of the manufacturer that produces the product," it must perceive "that the product emanates from a single source." Tools USA & Equip. Co. v. Champ Frame Straightening Equip. Inc., 87 F.3d 654, 660 (4th Cir. 1996) . . . . That public perception must rely on the features claimed, as drawn and described in TBL's application. [11] This point is critical. Some consumers might recognize the whole boot, unclaimed features and all, as a Timberland. But TBL did not undertake to register the entire boot. Instead, TBL sought to register only the select attributes described in its application-for instance, two-colored outsoles "visibly showing inverted tooth shaped cuts" along the soles' sides, but not "the bottom, outer most surface of the outsole." Just as TBL effectively narrowed the functionality inquiry by tailoring its application to select elements of its boot design, so too must we limit our secondary meaning analysis to those applied-for features. Thus, the question is whether the design features claimed in TBL's application have acquired secondary meaning. And those features have not if consumers associate them with sources other than just Timberland. See Two Pesos, 505 U.S. at 766 n.4. [12] A party seeking to establish secondary meaning in a product design bears a "formidable burden of proof." 1 McCarthy § 8:8.50; see also U.S. Search, Reflecting that "rigorous evidentiary standard," our circuit assesses secondary meaning through many factors: (1) advertising expenditures; (2) consumer studies linking the mark to a source; (3) record of sales success; (4) unsolicited media coverage of the product; (5) attempts to plagiarize the mark; and (6) the length and exclusivity of the mark's use. U.S. Search, 300 F.3d at 525. "[N]o single factor is determinative." Id. [13] Applying these factors, the district court found that TBL failed to carry its formidable burden of proving that the design features of the boot that it sought to register have acquired secondary meaning. And, as described below, the district court did not clearly err in reaching that finding. [14] We start with consumer studies, or surveys, due to their importance in the secondary meaning analysis. "Survey evidence is generally thought to be the most direct and persuasive way of establishing secondary meaning." Id. at 526 n.13. Indeed, TBL hired a survey expert in its effort to show that consumers associate the claimed features of its boot's design with Timberland. But the district court pointed out several flaws with the survey. [15] First, the survey, according to the district court, improperly suggested an outcome. The uncolored and unshaded drawing in TBL's application "depicts the mark sought to be registered." 37 C.F.R. § 2.52. But, instead of using that drawing, the survey used grayscale photographs of the boots. While those photographs depicted boots that were light in color, the grayscale photographs of the non-Timberland boots used as control images appeared darker. [16] The district court concluded that the grayscale photographs of the light-colored boots suggested to the survey respondents that the boot presented to them was a Timberland boot depicted in its best-selling wheat-yellow color. While the boot is now offered in multiple colors, the boot has been sold in a wheat-yellow color from the beginning. In fact, TBL previously applied to register that color but was ultimately unsuccessful. In its present application, the one on which our present analysis must focus, TBL has not claimed the wheat-yellow color or any other. So, the district court found that the survey used features of the boot's design that were not part of the application to improperly suggest the boot was a Timberland. [17] Second, the district court determined that the survey used a problematic progression. The survey began by asking, "Do you associate this boot design with any company or companies?" Then, it asked, "What company?" The district court worried that this progression may have nudged respondents to name only a single company, even if the respondents associated the boot with several. Such a nudge would matter because if the public associated the claimed design features with more than just Timberland, the design did not acquire a distinctive secondary meaning. [18] TBL has not challenged the district court's critique. In fact, it affirmatively waived any challenge to the district court's findings regarding the weight, or lack thereof, of the survey TBL proffered. Without "this most direct and persuasive" evidence of secondary meaning from consumers, TBL must resort to circumstantial evidence. U.S. Search, 300 F.3d at 526 n.13. [19] TBL did, however, challenge the district court's ruling on advertising expenditures, arguing it clearly erred in not giving such expenditures more weight. No doubt, TBL has spent vast sums on advertising. According to the declaration of a senior Timberland manager, TBL has spent over $81 million marketing the boot in the U.S. across various media over the past six years. But the district court declined to infer secondary meaning from advertisements merely picturing Timberland boots. It emphasized TBL's failure to point to advertisements encouraging consumers to identify the boots as Timberlands by looking for the specific design features TBL sought to register. [20] Expenditures themselves do not, from a legal standpoint, establish secondary meaning without a showing that they translated into what counts-consumers associating the claimed design features with a single source. See, e.g., B & J Enters., Ltd. v. Giordano, 329 F. App'x 411, 419 (4th Cir. 2009) (argued but unpublished) ("Absent a showing that such expenditures 'were effective in causing the relevant group of consumers to associate the mark with itself,' secondary meaning cannot be established." (quoting FM 103. 1, Inc. v. Universal Broad. of N.Y., Inc., 929 F. Supp. 187, 196 (D.N.J. 1996))); Dick's Sporting Goods, Inc. v. Dick's Clothing & Sporting Goods, Inc., 188 F.3d 501, *7 (4th Cir. 1999) (unpublished table decision) (discounting advertising expenditures since the company alleging trade name infringement "failed to show that its expenditures were effective in causing consumers in the . . . geographic area to associate the trade name . . . with [its] business"); see also 2 McCarthy § 15:51 ("[T]he mere expenditure of money is not, in itself, determinative of the actual result in buyers' minds."). [21] Accordingly, not all advertisements are equally probative of secondary meaning. Advertisements that direct consumers to "look for" features claimed as trade dress to identify the advertiser's product provide particularly powerful evidence that those features have acquired secondary meaning. See 1 McCarthy § 8:8.50 (stating that sometimes look-for advertising is "the only practical way to develop secondary meaning in trade dress") . . . ; see also Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654, 662 (7th Cir. 1995) ("Advertising that touts a product feature for its desirable qualities and not primarily as a way to distinguish the producer's brand is not only not evidence that the feature has acquired secondary meaning, it directly undermines such a finding."). The Maker's Mark red wax seal illustrates this principle. In Maker's Mark, the Sixth Circuit affirmed the district court's finding that "Maker's Mark usually focus[ed] directly on the red dripping wax seal." Maker's Mark, 679 F.3d at 421. It explained that "the district court had before it, and considered, an abundance of Maker's Mark advertisements that specifically feature the red dripping wax seal." Id. [22] On the other hand, advertising proves less if it does not somehow spotlight the claimed design features over other unclaimed attributes. See Forney Indus., Inc. v. Daco of Mo., Inc., 835 F.3d 1238, 1254(10th Cir. 2016) ("[A]dvertising alone is typically unhelpful to prove secondary meaning when it is not directed at highlighting the trade dress."); Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863, 871 (8th Cir. 1994) ("The advertisements submitted with the application cannot establish secondary meaning because they do not separate the claimed dress of the products from the other marks that serve to identify the products as those of Aromatique."). [23] This makes sense. If advertising calls no special attention to the features of the product's design claimed to have secondary meaning, such evidence generally carries less weight. Even so, less talk may be required to showcase to consumers a product's more prominent features, which to an extent speak for themselves. See, e.g., Nabisco, 50 F. Supp. 2d at 200 ("The Goldfish shape, the most salient feature of the product design, dominates these advertisements."); id. at 204 ("The print advertisements call attention to the product configuration, prominently displaying the Goldfish form."). [24] The district court followed these principles. Looking beyond the mere expenditures, it explained that the advertisements TBL introduced depicted the entire boot. Those pictures, for example, included the wheat-yellow color and Timberland's tree logo, even though those features are not claimed in its current trade dress application. 7 Compared to those unclaimed, but perhaps more conspicuous, features of the boot, the advertisements did not call attention to the design features in the application-like the hexagonal shape of the eyelets or the fourth row of stitching, to name two examples. As a result, the district court did not clearly err in its analysis of this factor. [25] TBL similarly argues that the district court's analysis of the boot's sales success was clearly erroneous. Without a doubt, the Timberland boot has enjoyed commercial success. According to the same declaration setting forth TBL's advertising expenditures, the boot has brought in over a billion dollars in sales from 2013 through 2021, averaging well over $100 million per year. However, the district court did not lend these sales much weight without any evidence showing why customers bought the boots. The district court reasoned that sales would suggest secondary meaning only if customers bought the boots because they associated the claimed design features with Timberland. But, the district court emphasized, TBL had not produced evidence that customers bought its boots because they attributed to Timberland the features TBL sought to register-the outer ankle collar, the two-tone color and etching on the side of the boot's sole, the hourglass rear heel panel, the quad stitching on the boot's side and tongue area, the hexagonal eyelets for the boot's laces and the bulbous toe box. As the district court observed, customers could just as well have bought the boots because they liked how those features look or work. Liking those features is, of course, good for sales, but it does not establish that the design features in the application acquired secondary meaning, which focuses on source identification.foot_15 [26] Are sales numbers themselves ever indicative of secondary meaning in product design cases? Other circuits have deduced that they typically are not "since the product's market success may well be attributable to the desirability of the product configuration rather than the source-designating capacity of the supposedly distinguishing features or combination of features." Duraco Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1452(3d Cir. 1994);see, e.g., Savant Homes, Inc. v. Collins, 809 F.3d 1133, 1148(10th Cir. 2016) ("Standing alone, sales volume may not be indicative of secondary meaning because it could be related to factors other than source identification." (quoting Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964, 978 (10th Cir. 2002))); In re Bongrain Int'l (Am.) Corp., 894 F.2d 1316, 1318(Fed. Cir. 1990) (determining that "[g]rowth in sales" did not prove acquired distinctiveness where it "may indicate the popularity of the product itself rather than recognition of the mark") . . . . Although our court has long listed sales success as one of the relevant factors for assessing secondary meaning of trademarks in general, U.S. Search, 300 F.3d at 525, when it comes to product designs, we agree with our sister circuits that a product's sales success, considered in a vacuum, typically is less helpful to showing whether the product's design has acquired secondary meaning. That is not to say that sales success should be ignored in product design cases, only that the sales numbers by themselves-without evidence linking them to a product's source designation as opposed to its design-will rarely, if ever, signal the presence or absence of secondary meaning. [27] Therefore, while the Timberland boot boasts impressive sales, we see no clear error in the district court's determination that the numbers themselves did little to indicate that the claimed features of the boot's design have acquired secondary meaning. [28] TBL's challenge to the district court's analysis concerning media coverage follows the same pattern. The Timberland boot has appeared in various media. As one senior Timberland manager has catalogued, the boots have appeared in television, movies, music and publications. The record also contains reams of Instagram posts of individuals, mostly celebrities, wearing boots that user comments identify as "Timberlands," "Tims" or the like. [29] Even so, the district court found that these references did little to show that the design features TBL specifically sought to register had acquired secondary meaning. Rather, the district court stressed that these images from media coverage, like the advertisements, included features of the Timberland boot that were not part of its trade dress application. Some images include TBL's registered tree logo burned onto the boot's side. Also, as the district court observed, most of the images present the boot in its best-selling wheat-yellow color, a feature TBL does not claim in its current application. The district court considered these unclaimed design features to be more distinctive than the design that TBL now wishes to register as trade dress. [30] True, as TBL argues, the presence of other identifiers is not always fatal to showing a product design's distinctiveness. But their presence can suggest that a producer relies on that other branding rather than just the claimed design to identify itself as the product's maker. See Aromatique, 28 F.3d at 872 (concluding that articles were insufficient to support a showing of secondary meaning since they "do not distinguish between the trade dress and Aromatique's other marks"); see also Gen. Shoe Corp. v. Rosen, 111 F.2d 95, 99 (4th Cir. 1940) ("It is of course possible that marks may be so completely associated with one another in the minds of the public as not to indicate separately the origin of the goods."). So, the district court did not legally err by considering the role of the unclaimed design features. [31] In finding the unclaimed design features played a predominant role in identifying the boot, the district court did not need to look far since TBL had already admitted that they do. When previously TBL sought to register the wheat-yellow color as trade dress, TBL officers stated under oath that it was only the boots' color that allowed for their identification as Timberlands. TBL objects that the statements it made in that prior trade dress application "do not give rise to estoppel in subsequent proceedings." Reply Br. at 29 (quoting Institutional Wholesalers, Inc. v. Saxons Sandwich Shoppes, Inc., 170 U.S.P.Q. 107, 1971WL 16746, at *2 (TTAB Mar. 29, 1971)). But the district court did not conclude that these prior declarations estopped TBL from asserting in this case that the design it now claims has enjoyed unsolicited media coverage; rather, the district court determined only that the prior sworn statements "undercut" TBL's current position that its boot is identifiable based on features other than its color. TBL Licensing, 644 F. Supp. 3d at 201-02. TBL's prior inconsistent declarations to the USPTO are certainly relevant evidence. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1340(Fed. Cir. 2015);Freedom Card, Inc. v. JPMorgan Chase & Co., 432 F.3d 463, 476 (3d Cir. 2005). [32] As with TBL's advertising, the media coverage of the Timberland boot does not highlight the aspects of the boot design claimed in TBL's current application. To the contrary, many of the design features TBL described in its application are imperceptible in many of the images contained in the record. [33] In weighing the media portrayals of the boot, the district court did not legally or clearly err. TBL also argues that attempts by others to plagiarize its boot show secondary meaning. And true, attempts to plagiarize a design can evince its distinctiveness. U.S. Search, 300 F.3d at 525. But, under the law of secondary meaning, it matters why one imitates. Imitation of design features only to profit from the design's functionality does not establish secondary meaning. Imitation suggests secondary meaning only if it is intended to deceive consumers about the product's source. See Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 45 (1st Cir. 2001) ("[T]he relevant intent is not just the intent to copy, but to 'pass off' one's goods as those of another."); Duraco, 40 F.3d at 1453 ("[A]ttempts to copy a product configuration [may] not be probative [because] the copier may very well be exploiting a particularly desirable feature, rather than seeking to confuse consumers as to the source."); Groeneveld Transp. Efficiency, Inc. v. Lubecore Int'l, Inc., 730 F.3d 494, 514 (6th Cir. 2013) ("[T]he appropriate 'intent' to focus on is not the intent to copy but rather the intent to deceive or confuse.") . . . ; Aromatique, 28 F.3d at 871 (holding that it was clearly erroneous to infer secondary meaning from the copying of a product when the copier conspicuously used its own trademarks to distinguish its products) . . . . [34] Here, the district court declined to infer distinctiveness from the existence of boots resembling Timberlands. It concluded that TBL has not provided any evidence showing that its competitors sell similar looking boots intending to trick consumers into thinking their boots are Timberlands. In support of that conclusion, the court noted that TBL has not identified any ruling that competitors have infringed its alleged trade dress. [35] TBL responds that it persuaded two of its competitors to stop selling similar looking boots. But it never provided written documentation of those supposed enforcement efforts, even after the USPTO requested it. Though TBL asserts that it resolved those matters over the phone without documentation, TBL has not demonstrated that any of its competitors crossed the fine line that distinguishes emulating desirable product features from plagiarizing protected designs to confuse consumers about their source. Since TBL failed to produce evidence of intentional plagiarism, the district court did not clearly err in declining to infer distinctiveness from the mere existence of similar looking boots. [36] Instead, the district court found that the presence of similar looking boots from other manufacturers actually undermined TBL's argument that its claimed design features are distinctive. The last factor suggests secondary meaning only if the continuous use of the design in commerce is also substantially exclusive. See U.S. Search, 300 F.3d at 526 n.12 ("Even assuming [plaintiff] has used 'U.S. Search' continuously since 1982 ..., length of time alone is insufficient to establish secondary meaning."); B & J Enters., 329 F. App'x at 419 ("[E]vidence of length of use, absent a showing of exclusivity, is inadequate to satisfy the sixth Perini factor."). "The saturation of the market with look-alike boots," to the district court, undercut TBL's assertion of secondary meaning. TBL Licensing, 644 F. Supp. 3d at 200. TBL argues that the district court lent too much weight to those lookalikes. [37] TBL contends that the district court erred by considering competing designs without scrutinizing on a more granular level each design and its relative share of the U.S. boot market. It is true that courts sometimes have considered competitors' minimal market shares to find that their competing marks did not weaken the commercial strength of a senior mark. See, e.g., Combe Inc. v. Dr. August Wolff GmBH & Co. KG Arzneimittel, 382 F. Supp. 3d 429, 452-53 (E.D. Va. 2019) (considering the limited sales and marketing of third-party marks in determining that they did not materially weaken the commercial strength of the plaintiff's mark), aff 'd, 851 F. App'x 357 (4th Cir. 2021) (per curiam); Select Auto Imps. Inc. v. Yates Select Auto Sales, LLC, 195 F. Supp. 3d 818, 833 (E.D. Va. 2016) ("Without evidence as to the extent of actual day-to-day use of [third-party] marks, the probative value of such evidence is minimal."). But we have never required a deep dive into those details. See, e.g., CareFirst of Md., Inc. v. First Care, P.C., 434 F.3d 263, 269-71 (4th Cir. 2006) (reasoning that third-party use of similar marks undermined commercial strength, without analyzing market share); Variety Stores, Inc. v. Wal-Mart Stores, Inc., 888 F.3d 651, 663-64 (4th Cir. 2018) (same). Nor have other circuit courts when there is evidence of significant third-party use. . . . Even when the record "does not establish the exact extent," widespread third-party use of substantially similar designs suggests the at-issue design lacks secondary meaning. Echo Travel, Inc. v. Travel Assocs., Inc., 870 F.2d 1264, 1269(7th Cir. 1989). [38] So, while TBL had every right to argue that the lookalike boots were not substantially similar and that their minimal sales did not preclude exclusivity, the district court was entitled to consider the countervailing evidence. And based on our review, the record is replete with pictures of boots marketed and sold in the United States that appear "substantially similar" to the design TBL sought to register, which suffices to prevent TBL from proving it exclusively used that design. See Sweetheart Plastics, Inc. v. Detroit Forming, Inc., 743 F.2d 1039, 1045(4th Cir. 1984) (approving of the admission of evidence of "substantially identical" and "substantially similar" designs as "probative of the extent and nature of exclusivity of use"); Converse, Inc. v. Int'l Trade Comm'n, 909 F.3d 1110, 1122(Fed. Cir. 2018) (ruling that evidence of the use of "substantially similar" but not identical trade dress may inform a secondary meaning analysis). [39] As the party seeking registration, TBL bore the "rigorous" burden of showing secondary meaning, including continuous and exclusive use. U.S. Search, 300 F.3d at 525. To find TBL failed to discharge its burden, the district court was not required to assess the market shares of the myriad of lookalike boots. Nor was the district court obligated to run through each boot one-by-one and discuss how it resembled the applied-for TBL design. As a result, the district court did not clearly err in finding that TBL came up short of showing its use of the design was substantially exclusive. [40] To sum up our secondary meaning analysis, TBL had to show that the design features described in its application encourage consumers to buy the boot not because those features make the boot a solid product but because, to the public, those features make the boot a Timberland product. Since this distinctiveness concept is "intuitive" and "heavily factdependent," "when a factfinder does make findings on this question . . . , an appellate court will naturally be exceedingly reluctant to rule such findings clearly erroneous." Ashley Furniture Indus., Inc. v. SanGiacomo N.A. Ltd., 187 F.3d 363, 377 (4th Cir. 1999). Without a viable consumer survey, TBL lacks direct evidence of secondary meaning. Resorting to circumstantial evidence, TBL has not shown that its sales or advertising expenditures have translated into consumer recognition of the design elements it sought to register. Indeed, portrayals of TBL's boot in marketing materials and the media tend to highlight features not claimed in TBL's current application. The many similar looking products in the boot market do not show that competitors copied TBL's design intending to confuse consumers. Rather, those lookalikes undermine TBL's attempt to show that the design it sought to register has come to be "uniquely associated" with Timberland. Two Pesos, 505 U.S. at 766 n.4. Assessing these various factors, the district court found that TBL failed to show that the combination of features it specified in its registration application-the outer ankle collar, the two-tone color and etching on the side of the boot's sole, the hourglass rear heel panel, the quad stitching along the boot's side and tongue area, the hexagonal eyelets for the boot's laces and the boot's bulbous toe box-leads consumers to associate the boot with Timberland alone. Since our review of the record does not leave us with "a definite and firm conviction that a mistake has been made," we conclude that the district court did not clearly err in finding that the design TBL sought to register has not acquired secondary meaning. Pizzeria Uno Corp., 747 F.2d at 1526. [41] In conclusion, the district court did not clearly err in finding that TBL failed to carry its burden of proving that the boot design it sought to register has acquired a distinctive meaning. For that reason alone, TBL could not register the design described in its application, regardless of whether or not that design, as a whole, is functional. Accordingly, without deciding the functionality issue, the district court's judgment is [1] Defendants and Plaintiff both conducted surveys to test the secondary meaning of the four families of Cartier watches at issue. Simply stated, the parties retained experts to poll the public as to whether they associated the Panthere, Pasha, Tank Americaine, and Tank Francaise, or more specifically, their watch designs, with Cartier. a. Defendants' Expert: Mr. Harry O'Neill [2] Defendants retained Mr. Harry O'Neill, Vice Chairman of Roper ASW. Mr. O'Neill's report is hereinafter referenced as the "Roper Report." [3] The Roper Report was created by intercepting shoppers at six shopping malls throughout the country: Atlanta, Boston, Chicago, Dallas, Los Angeles and San Francisco. O'Neill attempted to pick malls with "relatively upscale stores" in order to maximize the likelihood of identifying survey participants who represented the appropriate population. O'Neill concluded that a mall that was anchored by Sears or Kmart, for example, would be unlikely to be frequented by consumers in the luxury watch market. [4] At the malls, shoppers were intercepted and screened to determine their eligibility to participate. Shoppers who were under 18, did not have their glasses or contact lenses available but relied on them, or who worked for an advertising company, market research company, or watch retailer or manufacturer were ineligible to be surveyed. Id. Shoppers were further asked whether or not they owned a watch worth at least $2,500. If so, they were qualified to answer the survey's questions. If not, they were asked: "How likely is it that you would consider buying a fine watch-one that would cost at least $2,500-in the next couple of years-very likely, fairly likely, not very likely or not at all likely?" Those who responded indicated that they were "very likely" or "fairly likely" qualified to participate. [5] Eligible participants were then shown pictures of a Cartier Tank Francaise, a Cartier Tank Americaine, a Cartier Panthere, and five other watches made by other manufacturers, namely, Chopard, Rolex, Tag Heuer, Movado and Bvlgari. With each picture, a participant was asked: "Do you associate this style or design with the watches of one or more than one company?" If so, although unnecessary to establish secondary meaning, as an "added extra attraction," participants were asked a second, follow-up question as to whether they recognized to which particular company the watch belonged. [6] The results of the Roper study are as follows: 38% of the respondents associated the style or design of the Tank Americaine with one company (with 13% correctly identifying Cartier as that company); 34% of the respondents said that they associated the style or design of the Tank Francaise with one company (with 13% correctly identifying Cartier as that company); 31% associated the Panthere style or design with one company (with 13% correctly identifying Cartier as that company). Based on these figures in the Roper Report, O'Neill concludes that a significant portion of the purchasing public does not associate the style or design of the watches at issue with Cartier. [7] What is noteworthy to the Court, however, is the considerable discrepancy in findings at the Atlanta mall vis a vis the results obtained in surveying shoppers at the other five malls. Of the six malls involved in creating the Roper Report, only the Atlanta mall was anchored by upscale retail establishments. Whereas the Atlanta Mall was anchored by Neiman Marcus and Bloomingdales, the Boston mall was not anchored by any high-end stores, although there was one within five minutes' walking distance, the Chicago mall was anchored by Marshall Fields and Carson Pirie Scott and the Dallas mall was anchored by a Dillar Folis and a Mervins. Further, in Atlanta, 69% of survey respondents owned a watch worth at least $2,500, compared to the 41% of respondents at the other locales. For those who did not already own a fine watch, 55% of the participants were "very likely" to purchase one in the near future, compared to 15% of the participants who answered in similar fashion at the other malls. Accordingly, the court concludes that the population of survey respondents at the Atlanta mall was the most representative of the Cartier consumer population. Here, 63% of the participants associated the style and design of the Tank Francaise with one company, 60% of respondents associated the Tank Americaine with one company, and 60% associated the style or design of the Panthere with one company. [8] Dr. Lirtzman criticized the Roper Report on the grounds that it surveyed the wrong population insofar as it failed to distinguish between those "very likely" to purchase an expensive, luxury timepiece in the near future, and those who were "fairly likely" to make such a purchase. He testified that the survey results from Atlanta indicate that if the Roper Report had been conducted exclusively at "high end malls" and included only those persons more resolute about their intentions of buying a fine watch, the numbers of participants identifying the style or design of the three Cartier watches with one company would have been higher. [9] To support this conclusion, Lirtzman conducted his own survey designed to parallel O'Neill's, with the exception of two important differences: Lirtzman only interviewed individuals who either already owned a luxury watch or were "very likely" to purchase a watch in the next year, whereas the Roper Report includes respondents who were "very likely" to purchase a watch "in the near future" and persons who were "fairly likely" to purchase such a luxury watch "in the next couple of years." Further, Lirtzman intercepted individuals while they were shopping not in shopping malls, but in Tourneau Watch Company stores, two in Manhattan and one in the Roosevelt Field Mall on Long Island, NY, one in Costa Mesa, CA, and one in Century City in Los Angeles, CA. Tourneau is an authorized dealer of Cartier watches. In light of this relationship, the Tourneau stores feature prominent posters of Cartier watches as well as display cases with Cartier watches. [10] The Lirtzman study also included a few less significant alterations from O'Neill's study. Lirtzman asked if the participants associated the watch's design with a particular source, as opposed to asking about whether the participant associated the "design or style" with a particular source. Because it is irrelevant to establishing secondary meaning, Lirtzman also did not ask O'Neill's second question as to whether the participant could identify which company she or he associated with the watch's design. The Lirtzman study was also limited to the Tank Francaise and the Panthere because these watches were the least recognized according to the Roper Report. Lirtzman showed participants pictures of the Tag Heuer and Movado watches, like the Roper Report, achieving the same percentages for recognition of these watches among participants, but excluded the other controls. Finally, the photographs shown to survey participants in Lirtzman's study are increasingly clear and more uniform than those shown to participants in the Roper study. [11] The results of Lirtzman's study are as follows: 61% of the survey respondents associated the Tank Francaise's design with a particular source and 63% of the survey respondents associated the Panthere with a particular source. Lirtzman concludes from this result and the Atlanta results in the Roper Report that surveying individuals who either own or are very likely to purchase a luxury watch establishes consumer recognition of the Cartier watch families at issue in the range of 50 to 60%. [12] Defendants' principal objection to Lirtzman's report is that in light of the Cartier posters at Tourneau and the fact that its watches are among those displayed in Tourneau's cases, the result of the study are biased. The court, however, disagrees. There are a panoply of luxury watches prominently featured at Tourneau, both in the display cases and on the walls as posters and murals; Tourneau changes its displays every few months; and there are 110 brands sold at Tourneau, all of which have multiple lines or models within them. The Cartier case, for example, contains six to a dozen watch models, including the watches at issue. As such, while Cartier is sold at Tourneau and is displayed among the many images a consumer perceives while shopping there, the likelihood that a survey participant's reaction to the Tank Francaise and Panthere would have been so influenced is so minimal as to have little to no effect on the probative value of Lirtzman's report. [13] Moreover, the court credits the testimony of Dr. Lirtzman that valid market research does not require a secondary meaning survey to be conducted in a vacuum given the nature of the questions posed to the survey participants. At Tourneau, consumers were asked questions in an environment in which one would actually purchase a luxury timepiece. Images of the products to be sold are customary in such an environment. Had the Lirtzman's pollsters asked about particular brands of the watches shown to participants surrounded by promotional images, this would raise the specter of potential bias; but here, where the question was simply whether a participant associated the watch with a particular company, without asking which one, no such concern arises. [14] Therefore, in light of a) the results obtained by defendants' expert in Atlanta, where the survey was undoubtedly taken in a mall where higher-end merchandise is sold, meaning, an environment more consistent with Cartier's consumer population, and where the respondents were increasingly likely to either own or purchase a luxury time piece in the immediate future; b) plaintiffs' survey showing that the Atlanta results are more likely to be accurate than those obtained in other fora; and c) the Court's concerns about the absence of persons within the age group 18-34 or mistakes in tabulating their survey results in the Roper Report, the court adopts the testimony of Dr. Sidney Lirtzman, finding that the results obtained in Atlanta and in the Lirtzman Report are representative of the secondary meaning of the watches at issue. {The court ultimately found secondary meaning in all four Cartier watch designs and infringement by defendant of those designs.} ______________________________________________________________________________ In the following case, Board of Supervisors for Louisiana State University Agricultural & Mechanical College v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008), the plaintiffs Louisiana State University, the University of Oklahoma, Ohio State University, the University of Southern California, and Collegiate Licensing Company (the official licensing agent for the universities) brought suit against defendant Smack Apparel for its unauthorized sale of apparel bearing the universities' colors and various printed messages associated with the universities (but not bearing the universities' names or mascots). The Eastern District of Louisiana granted the plaintiffs' motion for summary judgment on the issue of trademark infringement. Excerpted below is the Fifth Circuit's discussion of whether the universities' colors carry secondary meaning as designations of source. Note that we will soon return to the protectability of colors as trademarks in Part I.A.2.a when we consider Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995). . . . . [1] The parties correctly agree that a color scheme can be protected as a trademark when it has acquired secondary meaning and is non-functional. Qualitex Co. v. Jacobson Prods. Co. 22Although the parties discuss color at length in their briefs, the Universities do not claim that every instance in which their team colors appear violates their respective trademarks. Instead, the claimed trademark is in the colors on merchandise that combines other identifying indicia referring to the Universities. It is appropriate therefore to consider not only the color but also the entire context in which the color and other indicia are presented on the t-shirts at issue here. [2] Smack contends that the claimed marks are too broad to encompass a trademark because the concept of color along with other identifying indicia is not distinctive. We disagree. As noted, the statute contemplates that a trademark may include any word, name, or symbol "or any combination thereof." 23 The Supreme Court has recognized that the Lanham Act describes the universe of permissible marks "in the broadest of terms." 24 Because the Court recognizes that trademarks may include color, we see no reason to exclude color plus other identifying indicia from the realm of protectible marks provided the remaining requirements for protection are met. Thus, the first step here is to ask whether the Universities' claimed marks have acquired secondary meaning. [3] Secondary meaning "occurs when, 'in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.'" Wal-Mart Stores, Inc. v. Samara Bros., Inc. 25 The inquiry is one of the public's mental association between the mark and the alleged mark holder. Sno-Wizard Mfg., Inc. v. Eisemann Prods. Co. 26 A mark has acquired secondary meaning when it "has come through use to be uniquely associated with a specific source." Pebble Beach Co. v. Tour 18 I Ltd. 27 We have applied a multi-factor test for determining secondary meaning. The factors include: "(1) length and manner of use of the mark or trade dress, (2) volume of sales, (3) amount and manner of advertising, (4) nature of use of the mark or trade dress in newspapers and magazines, ( 5) consumer-survey evidence, (6) direct consumer testimony, and (7) the defendant's intent in copying the trade dress." 28 These factors in combination may show that consumers consider a mark to be an indicator of source even if each factor alone would not prove secondary meaning. 29 [4] There is no dispute in this case that for a significant period of time the Universities have been using their color schemes along with other indicia to identify and distinguish themselves from others. Smack admits in its brief that the Universities' colors are well known among fans "as a shorthand nonverbal visual means of identifying the universities." But according to Smack, the longstanding use of the school colors to adorn licensed products is not the same as public recognition that the school colors identify the Universities as a unique source of goods. We think, however, that the factors for determining secondary meaning and an examination of the context in which the school colors are used and presented in this case support the conclusion that the secondary meaning of the marks is inescapable. each university features the color schemes on merchandise, especially apparel connected with school sports teams, and such prominent display supports a finding of secondary meaning. 31 The record also shows that sales of licensed products combining the color schemes with other references to the Universities annually exceed the tens of millions of dollars. 32 As for advertising, the district court held that the Universities "advertise items with their school colors in almost every conceivable manner . . . ." 33 It is not clear from the summary judgment evidence where and how the Universities advertise their merchandise, but they certainly do use their color schemes and indicia in numerous promotional materials aimed at students, faculty, alumni, and the public in general, which strengthens the conclusion that the color schemes and indicia viewed in context of wearing apparel also serves as an indicator of the Universities as the source or sponsor of the apparel. Furthermore, the district court correctly observed that the school color schemes have been referenced multiple times in newspapers and magazines and that the schools also frequently refer to themselves using the colors. 34 The district court did not specifically refer to any consumer-survey evidence or direct consumer testimony, but it noted that Smack admitted it had incorporated the Universities' color schemes into its shirts to refer to the Universities and call them to the mind of the consumer. Thus, Smack itself believed that the Universities' color schemes had secondary meaning that could influence consumers, which further supports the conclusion that there is secondary meaning here. 35 Given the longstanding use of the color scheme marks and their prominent display on merchandise, in addition to the well-known nature of the colors as shorthand for the schools themselves and Smack's intentional use of the colors and other references, there is no genuine issue of fact that when viewed in the context of t-shirts or other apparel, the marks at issue here have acquired the secondary meaning of identifying the Universities in the minds of consumers as the source or sponsor of the products rather than identifying the products themselves. 31 See Pebble Beach, 155 F.3d at 541-52 (prominent display of golf hole's trade dress in advertising supported finding of secondary meaning as a designator of source). 32 For example, LSU sells between $10 and $20 million worth of goods each year, while the annual sales volume for the other schools is approximately $13 million for USC, $20 million for OU, and $50 million for OSU. 33 Bd. of Supervisors, 438 F.Supp.2d at 658. 34 For example, LSU and third parties have referred to that university as the "Purple and Gold." 35 See also Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654, 663 (7th Cir. 1995). We also note that the record does contain survey evidence compiled by the Universities indicating that approximately thirty percent of consumers interviewed believed two of Smack's t-shirts were produced or sponsored by the Universities. We have indicated that survey evidence often may be the most direct and persuasive evidence of secondary meaning. Sugar Busters LLC v. Brennan, 177 F.3d 258, 269 (5th Cir. 1999). Nevertheless, Smack moved in limine to exclude the Universities' survey evidence, and the district court found it unnecessary to rule on the motion because of the other evidence in the record. Because no party has raised the issue, we express no opinion on the correctness of the district court's belief and merely note the presence of the survey evidence in the record. [6] We think this conclusion is consistent with the importance generally placed on sports team logos and colors by the public. We have previously noted, although not in the context of secondary meaning, that team emblems and symbols are sold because they serve to identify particular teams, organizations, or entities with which people wish to identify. See Boston Prof'l Hockey Ass 'n v. Dallas Cap & Emblem Mfg., Inc. 36 We think this desire by consumers to associate with a particular university supports the conclusion that team colors and logos are, in the minds of the fans and other consumers, source indicators of team-related apparel. By associating the color and other indicia with the university, the fans perceive the university as the source or sponsor of the goods because they want to associate with that source. [7] Smack argues that because photographs of businesses near the campuses of the Universities show use of school colors by those businesses, consumers in college towns merely associate school colors with "support of the home team." Smack cites no authority or supporting evidence for its contention, however. Moreover, the fact that other businesses in college towns may use the same colors as a local university does not create an issue of fact as to the secondary meaning of the colors used in merchandise that the Universities indisputably produce, especially given Smack's admission of intentional use of the colors to influence consumers. [8] Smack also argues that because the Universities grant licenses to many licensees, a consumer may not identify a university as the single source of the product. The fact that the Universities may grant licenses to many licensees to sell authorized products does not negate the fact that the schools are still the sources of the marks. 37 We conclude that the record establishes secondary meaning in the marks here. {The Fifth Circuit went on to affirm the E.D.La.'s disposition of the case in all respects.} Comments and Questions Courts generally require that a "substantial" proportion of the relevant consumer population perceive the descriptive mark as a designation of source for that mark to qualify for protection. See, e.g., Coach Leatherware Co. v. AnnTaylor, Inc., 933 F.2d 162, 168 (2d Cir. 1991) ("The plaintiff is not required to establish that all consumers relate the product to its producer; it need only show that a substantial segment of the relevant consumer group makes this connection."). But what proportion is substantial? If survey evidence is presented, courts have generally been satisfied, as in the Cartier case above, with a proportion at or above 50%. See, e.g., Harlequin Enterprises, Ltd. v. Gulf & Western Corp., 644 F.2d 946 (2d Cir. 1981) (finding 50% association to be probative of secondary meaning in book cover design); Spraying Systems Co. v. Delavan, 975 F.2d 387, 394 (7th Cir. 1992) ("While a 50-percent figure 36 510 F.2d 1004, 1011 (5th Cir. 1975). 37 Cf. Taco Cabana Int'l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1121(5th Cir. 1991) ("An owner may license its trademark or trade dress and retain proprietary rights if the owner maintains adequate control over the quality of goods and services that the licensee sells with the mark or dress."). is regarded as clearly sufficient to establish secondary meaning, a figure in the thirties can only be considered marginal."); Boston Beer Co. Ltd. Partnership v. Slesar Bros. Brewing Co., 9 F.3d 175, 183 n.5 (1st Cir. 1993) (characterizing a 36% showing of association as "hardly overwhelming"). See also Zatarain's Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 795 (5th Cir. 1983) (affirming district court's finding that FISH-FRI possessed secondary meaning on the basis of survey showing 28% consumer association and other, circumstantial evidence, but calling the issue "close" and suggesting that "[w]ere we considering the question of secondary meaning de novo, we might reach a different conclusion than did the district court"). More generally, courts may require more compelling evidence of secondary meaning for marks that are highly descriptive. See MCCARTHY § 15:28 ("[A]s a general rule of thumb, the more descriptive the term, the greater the evidentiary burden to establish secondary meaning. That is, the less distinctive the term, the greater the quantity and quality of evidence of secondary meaning needed to prove the requisite degree of distinctiveness."). No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e) (3), and (e) (5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. In the registration context, Lanham Act § 2(f), 15 U.S.C. § 1052(f), establishes that "The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made." Courts have emphasized the "may" in "may accept. " See Heritage All. v. Am. Pol'y Roundtable, 133 F.4th 1063, 1070(Fed. Cir. 2025) (affirming the TTAB's finding that the asserted marks "iVoterGuide" and "iVoterGuide.com" had not acquired distinctiveness after five years of continuous use and noting that § 2(f) "indicates that the Board has discretion not to accept such evidence as prima facie evidence, much less as ultimately persuasive evidence, on a case-by-case basis."). Trademarks may be deemed generic either (1) The following are examples of marks that have not (yet?) been held to be generic and remain registered trademarks at the PTO: • BAND-AID for "protective surgical dressing in the form of a bandage" (U.S. Reg. No. 194,123, Jan. 13, 1925); • REALTOR for real estate brokerage services (U.S. Reg. No. 519,789, Jan. 15,1950); • STYROFOAM for "multicellular expanded synthetic resinous material" (U.S. Reg. No. 539,147, March 13, 1951). A leading test for genericism is the Marvin Ginn test: "Determining whether a mark is generic . . . involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services?" H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986). Though the Marvin Ginn test is formulated here in terms of registrability, its approach works well enough in determining if unregistered marks are generic. There are a variety of simple rules of thumb that inform courts' determination of whether a mark is generic or descriptive. Abercrombie outlined a genus/species distinction akin to that implied in Marvin Ginn: "A generic term is one that refers, or has come to be understood as referring, to the genus of which the particular product is a species." Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). There is also the "who-are-you/what-are-you" distinction: In determining whether a term is generic, we have often relied upon the "whoare-you/what-are-you" test: "A mark answers the buyer's questions 'Who are you?' 'Where do you come from?' 'Who vouches for you?' But the [generic] name of the product answers the question 'What are you?'" Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1391(9th Cir. 1993) (quoting 1 J. Thomas McCarthy, Trademarks and Unfair Competition § 12.01 (3d ed. 1992)). Under this test, "[i]f the primary significance of the trademark is to describe the type of product rather than the producer, the trademark [is] a generic term and [cannot be] a valid trademark." Anti-Monopoly, Inc. v. General Mills Fun Group, 611 F.2d 296, 304 (9th Cir. 1979) (emphases added) Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc., 198 F.3d 1143, 1147(9th Cir. 1999). Courts will also rely on the proposition that a mark is generic if it is the "common descriptive name" of the good or service to which it is affixed. See, e.g., San Francisco Arts & Athletics, Inc. v. U.S. Olympic Committee, 483 U.S. 522, 532 n. 7 (1987) ("A common descriptive name of a product or service is generic. Because a generic name by definition does not distinguish the identity of a particular product, it cannot be registered as a trademark under the Lanham Act." (emphasis in original)). But while the basic principles underlying the genericness analysis are straightforward, distinguishing between a highly descriptive mark and a generic mark can be exceedingly difficult in close cases, and the stakes in such cases can be exceedingly high. 7 Recall that even a "highly descriptive" mark will qualify for protection upon a showing of secondary meaning. A generic mark, by contrast, is unredeemable; it will never receive protection under any circumstances. Genericness doctrine, meanwhile, can be quite malleable. The following three cases offer different views of trademark genericism. The first is the Supreme Court case United States Patent and Trademark Office v. Booking.com B.V., 591 U.S. 549 (2020). In analyzing whether the mark BOOKING.COM is generic, the three opinions in the case engage a variety of overarching questions in genericism doctrine, such as whether the facts of consumer perception or the goals of competition policy should drive the genericism analysis. The second case emerged out of a dispute between the giant snack food maker Frito-Lay North America, Inc. and an upstart competitor, Princeton Vanguard LLC (subsequently purchased by Snyder's Lance, Inc.), who introduced "pretzel crisps" into the market and sought to trademark the term. The Snyder's Lance opinion is quite lengthy but useful for our purposes because it shows the wide variety of evidence that parties may present in a hardfought genericism dispute. It will be of special interest to students interested in the nuts-andbolts of frontline genericism litigation. The third opinion, Elliott v. Google, Inc., engages the question of whether the mark GOOGLE has fallen victim to genericide. Remarkably, the court reasons that even if the public uses the verb "google" in a generic sense to describe the act of "searching on the internet without regard to the search engine used," that would not support a finding that GOOGLE has become generic for internet search services. Justice GINSBURG delivered the opinion of the Court. [1] This case concerns eligibility for federal trademark registration. Respondent Booking.com, an enterprise that maintains a travel-reservation website by the same name, sought to register the mark "Booking.com." Concluding that "Booking.com" is a generic name for online hotel-reservation services, the U.S. Patent and Trademark Office (PTO) refused registration. [2] A generic name-the name of a class of products or services-is ineligible for federal trademark registration. The word "booking," the parties do not dispute, is generic for hotelreservation services. "Booking.com" must also be generic, the PTO maintains, under an encompassing rule the PTO currently urges us to adopt: The combination of a generic word and ".com" is generic. [3] In accord with the first-and second-instance judgments in this case, we reject the PTO's sweeping rule. A term styled "generic.com" is a generic name for a class of goods or services only if the term has that meaning to consumers. Consumers, according to lower court determinations uncontested here by the PTO, do not perceive the term "Booking.com" to signify online hotel-reservation services as a class. In circumstances like those this case presents, a "generic.com" term is not generic and can be eligible for federal trademark registration. I A . . . . [4] The Lanham Act not only arms trademark owners with federal claims for relief; importantly, it establishes a system of federal trademark registration. The owner of a mark on the principal register enjoys "valuable benefits," including a presumption that the mark is valid. Iancu v. Brunetti, 588 U.S. --, --(2019) (slip op., at 2); see § § 1051, 1052. The supplemental register contains other product and service designations, some of which could one day gain eligibility for the principal register. See § 1091. The supplemental register accords more modest benefits; notably, a listing on that register announces one's use of the designation to others considering a similar mark. See 3 J. McCarthy, Trademarks and Unfair Competition § 19:37 (5th ed. 2019) (hereinafter McCarthy). Even without federal registration, a mark may be eligible for protection against infringement under both the Lanham Act and other sources of law. See Matal, 582 U.S., at -----(slip op., at 4-5). [5] Prime among the conditions for registration, the mark must be one "by which the goods of the applicant may be distinguished from the goods of others." § 1052; see § 1091(a) (supplemental register contains "marks capable of distinguishing . . . goods or services"). Distinctiveness is often expressed on an increasing scale: Word marks "may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful." Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). . . . . [6] At the lowest end of the distinctiveness scale is "the generic name for the goods or services." § § 1127, 1064(3), 1065 (4). The name of the good itself (e.g., "wine") is incapable of "distinguish[ing] [one producer's goods] from the goods of others" and is therefore ineligible for registration. § 1052; see § 1091(a). Indeed, generic terms are ordinarily ineligible for protection as trademarks at all. See Restatement (Third) of Unfair Competition § 15, p. 142 (1993);Otokoyama Co. v. Wine of Japan Import, Inc., 175 F.3d 266, 270 (CA2 1999) ("[E]veryone may use [generic terms] to refer to the goods they designate."). [7] Booking.com is a digital travel company that provides hotel reservations and other services under the brand "Booking.com," which is also the domain name of its website. 1Booking.com filed applications to register four marks in connection with travel-related services, each with different visual features but all containing the term "Booking.com." 2[8] Both a PTO examining attorney and the PTO's Trademark Trial and Appeal Board concluded that the term "Booking.com" is generic for the services at issue and is therefore unregistrable. "Booking," the Board observed, means making travel reservations, and ".com" signifies a commercial website. The Board then ruled that "customers would understand the term BOOKING.COM primarily to refer to an online reservation service for travel, tours, and lodgings." Alternatively, the Board held that even if "Booking.com" is descriptive, not generic, it is unregistrable because it lacks secondary meaning. [9] Booking.com sought review in the U. S. District Court for the Eastern District of Virginia, invoking a mode of review that allows Booking.com to introduce evidence not presented to the agency. See § 1071 (b). Relying in significant part on Booking.com's new evidence of consumer perception, the District Court concluded that "Booking.com"-unlike "booking"-is not generic. The "consuming public," the court found, "primarily understands that BOOKING.COM does not refer to a genus, rather it is descriptive of services involving 'booking' available at that domain name." Booking.com B.V. v. Matal, 278 F.Supp.3d 891, 918 (2017). Having determined that "Booking.com" is descriptive, the District Court additionally found that the term has acquired secondary meaning as to hotel-reservation services. For those services, the District Court therefore concluded, Booking.com's marks meet the distinctiveness requirement for registration. [10] The PTO appealed only the District Court's determination that "Booking.com" is not generic. Finding no error in the District Court's assessment of how consumers perceive the term "Booking.com," the Court of Appeals for the Fourth Circuit affirmed the court of first instance's judgment. In so ruling, the appeals court rejected the PTO's contention that the combination of ".com" with a generic term like "booking" "is necessarily generic." 915 F. 3d 171, 184 (2019). Dissenting in relevant part, Judge Wynn concluded that the District Court mistakenly presumed that "generic.com" terms are usually descriptive, not generic. [11] We granted certiorari, 589 U. S. --, 140 S. Ct. 489 (2019), and now affirm the Fourth Circuit's decision. II [12] Although the parties here disagree about the circumstances in which terms like "Booking.com" rank as generic, several guiding principles are common ground. First, a "generic" term names a "class" of goods or services, rather than any particular feature or exemplification of the class. {S}ee § § 1127, 1064(3), 1065(4) (referring to "the generic name for the goods or services"); Park 'N Fly, 469 U.S. at 194 ("A generic term is one that refers to the genus of which the particular product is a species."). Second, for a compound term, the distinctiveness inquiry trains on the term's meaning as a whole, not its parts in isolation. {S}ee Estate of P. D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 545-546 (1920). Third, the relevant meaning of a term is its meaning to consumers. {S}ee Bayer Co. v. United Drug Co., 272 F. 505, 509 (SDNY 1921) (Hand, J.) ("What do the buyers understand by the word for whose use the parties are contending?"). Eligibility for registration, all agree, turns on the mark's capacity to "distinguis[h]" goods "in commerce." § 1052. Evidencing the Lanham Act's focus on consumer perception, the section governing cancellation of registration provides that "[t]he primary significance of the registered mark to the relevant public . . . shall be the test for determining whether the registered mark has become the generic name of goods or services." § 1064(3). 3[13] Under these principles, whether "Booking.com" is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services. Thus, if "Booking.com" were generic, we might expect consumers to understand Travelocity-another such service-to be a "Booking.com." We might similarly expect that a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite "Booking.com" provider. [14] Consumers do not in fact perceive the term "Booking.com" that way, the courts below determined. The PTO no longer disputes that determination. See Pet. for Cert. I; Brief for Petitioners 17-18 (contending only that a consumer-perception inquiry was unnecessary, not that the lower courts' consumer-perception determination was wrong). That should resolve this case: Because "Booking.com" is not a generic name to consumers, it is not generic. III [15] Opposing that conclusion, the PTO urges a nearly per se rule that would render "Booking.com" ineligible for registration regardless of specific evidence of consumer perception. In the PTO's view, which the dissent embraces, when a generic term is combined with a generic top-level domain like ".com," the resulting combination is generic. In other words, every "generic.com" term is generic according to the PTO, absent exceptional circumstances. 4[16] The PTO's own past practice appears to reflect no such comprehensive rule. See,e.g.,Trademark Registration No. 3,601,346 ("ART.COM" on principal register for, inter alia, "[o]nline retail store services" offering "art prints, original art, [and] art reproductions"); Trademark Registration No. 2,580,467 ("DATING.COM" on supplemental register for "dating services"). Existing registrations inconsistent with the rule the PTO now advances would be at risk of cancellation if the PTO's current view were to prevail. See § 1064(3). We decline to adopt a rule essentially excluding registration of "generic.com" marks. As explained below, we discern no support for the PTO's current view in trademark law or policy. [17] The PTO urges that the exclusionary rule it advocates follows from a common-law principle, applied in Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888), that a generic corporate designation added to a generic term does not confer trademark eligibility. In Goodyear, a decision predating the Lanham Act, this Court held that "Goodyear Rubber Company" was not "capable of exclusive appropriation. " Id., at 602. Brewing Co., 124 F.3d 137, 144 (CA2 1997); Trademark Manual of Examining Procedure § 1209.01 (c)(i), p. 1200(c)(i), p. -267 (Oct. 2018)), http://tmep.uspto.gov. We need not address today the scope of the primary-significance test's application, for our analysis does not depend on whether one meaning among several is "primary." Sufficient to resolve this case is the undisputed principle that consumer perception demarcates a term's meaning. Standing alone, the term "Goodyear Rubber" could not serve as a trademark because it referred, in those days, to "well-known classes of goods produced by the process known as Goodyear's invention." Ibid. "[A]ddition of the word 'Company'" supplied no protectable meaning, the Court concluded, because adding "Company" "only indicates that parties have formed an association or partnership to deal in such goods." Ibid. Permitting exclusive rights in "Goodyear Rubber Company" (or "Wine Company, Cotton Company, or Grain Company"), the Court explained, would tread on the right of all persons "to deal in such articles, and to publish the fact to the world." Id., at 602-603. [18] "Generic.com," the PTO maintains, is like "Generic Company" and is therefore ineligible for trademark protection, let alone federal registration. According to the PTO, adding ".com" to a generic term-like adding "Company"-"conveys no additional meaning that would distinguish [one provider's] services from those of other providers." Brief for Petitioners 44. The dissent endorses that proposition: "Generic.com" conveys that the generic good or service is offered online "and nothing more." Post, at --. [19] That premise is faulty. A "generic.com" term might also convey to consumers a source-identifying characteristic: an association with a particular website. As the PTO and the dissent elsewhere acknowledge, only one entity can occupy a particular Internet domain name at a time, so "[a] consumer who is familiar with that aspect of the domain-name system can infer that BOOKING.COM refers to some specific entity." Brief for Petitioners 40. See also Tr. of Oral Arg. 5 ("Because domain names are one of a kind, a significant portion of the public will always understand a generic '.com' term to refer to a specific business. . . ."); post, at 2312-2313 (the "exclusivity" of "generic.com" terms sets them apart from terms like "Wine, Inc." and "The Wine Company"). Thus, consumers could understand a given "generic.com" term to describe the corresponding website or to identify the website's proprietor. We therefore resist the PTO's position that "generic.com" terms are capable of signifying only an entire class of online goods or services and, hence, are categorically incapable of identifying a source. 5 5 In passing, the PTO urges us to disregard that a domain name is assigned to only one entity at a time. That fact, the PTO suggests, stems from "a functional characteristic of the Internet and the domain-name system," and functional features cannot receive trademark protection. Brief for Petitioners 32. "[A] product feature is functional, and cannot serve as a trademark," we have held, "if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. " TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001) (internal quotation marks omitted); see § 1052(e) (barring from the principal registrar "any matter that, as a whole, is functional"). This case, however, does not concern trademark protection for a feature of the Internet or the domain-name system; Booking.com lays no claim to the use of unique domain names generally. Nor does the PTO contend that the particular domain name "Booking.com" is essential to the use or purpose of online hotel-reservation services, affects these services' cost or quality, or is otherwise necessary for competitors to use. In any event, we have no occasion to decide the applicability of § 1052(e)'s functionality bar, for the sole ground on which the PTO refused registration, and the sole claim before us, is that "Booking.com" is generic. usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term's meaning. Surveys can be helpful evidence of consumer perception but require care in their design and interpretation. See Brief for Trademark Scholars as Amici Curiae 18-20 (urging that survey respondents may conflate the fact that domain names are exclusive with a conclusion that a given "generic.com" term has achieved secondary meaning). Moreover, difficult questions may be presented when a term has multiple concurrent meanings to consumers or a meaning that has changed over time. See, e.g., 2 J. McCarthy, Trademarks and Unfair Competition § 12:51 (5th ed. 2019) (discussing terms that are "a generic name to some, a trademark to others"); id., § 12:49 ("Determining the distinction between generic and trademark usage of a word . . . when there are no other sellers of [the good or service] is one of the most difficult areas of trademark law."). Such issues are not here entailed, for the PTO does not contest the lower courts' assessment of consumer perception in this case. See Pet. for Cert. I; Brief for Petitioners 17-18. For the same reason, while the dissent questions the evidence on which the lower courts relied, post, at 2312-2313, 2313-2314, we have no occasion to reweigh that evidence. Cf. post, at 2309 (SOTOMAYOR, J., concurring). [24] The PTO's principal concern is that trademark protection for a term like "Booking.com" would hinder competitors. But the PTO does not assert that others seeking to offer online hotel-reservation services need to call their services "Booking.com." Rather, the PTO fears that trademark protection for "Booking.com" could exclude or inhibit competitors from using the term "booking" or adopting domain names like "ebooking.com" or "hotelbooking.com." Brief for Petitioners 27-28. The PTO's objection, therefore, is not to exclusive use of "Booking.com" as a mark, but to undue control over similar language, i.e., "booking," that others should remain free to use. [25] That concern attends any descriptive mark. Responsive to it, trademark law hems in the scope of such marks short of denying trademark protection altogether. Notably, a competitor's use does not infringe a mark unless it is likely to confuse consumers. See § § 1114 (1), 1125(a)(1)(A); 4 McCarthy § 23:1.50 (collecting state law). In assessing the likelihood of confusion, courts consider the mark's distinctiveness: "The weaker a mark, the fewer are the junior uses that will trigger a likelihood of consumer confusion." 2 id., § 11:76. When a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark's owner. Ibid. Similarly, "[i]n a 'crowded' field of look-alike marks" (e.g., hotel names including the word "grand"), consumers "may have learned to carefully pick out" one mark from another. Id., § 11:85. And even where some consumer confusion exists, the doctrine known as classic fair use, see id., § 11:45, protects from liability anyone who uses a descriptive term, "fairly and in good faith" and "otherwise than as a mark," merely to describe her own goods. 15 U.S.C. § 1115(b)(4); see KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122-123 (2004). [26] These doctrines guard against the anticompetitive effects the PTO identifies, ensuring that registration of "Booking.com" would not yield its holder a monopoly on the term "booking." Booking.com concedes that "Booking.com" would be a "weak" mark. Tr. of Oral Arg. 66. See also id., at 42-43, 55. The mark is descriptive, Booking.com recognizes, making it "harder . . . to show a likelihood of confusion." Id., at 43. Furthermore, because its mark is one of many "similarly worded marks," Booking.com accepts that close variations are unlikely to infringe. Id., at 66. And Booking.com acknowledges that federal registration of "Booking.com" would not prevent competitors from using the word "booking" to describe their own services. Id., at 55. [27] The PTO also doubts that owners of "generic.com" brands need trademark protection in addition to existing competitive advantages. Booking.com, the PTO argues, has already seized a domain name that no other website can use and is easy for consumers to find. Consumers might enter "the word 'booking' in a search engine," the PTO observes, or "proceed directly to 'booking.com' in the expectation that [online hotel-booking] services will be offered at that address." Brief for Petitioners 32. Those competitive advantages, however, do not inevitably disqualify a mark from federal registration. All descriptive marks are intuitively linked to the product or service and thus might be easy for consumers to find using a search engine or telephone directory. The Lanham Act permits registration nonetheless. See § 1052(e), (f). And the PTO fails to explain how the exclusive connection between a domain name and its owner makes the domain name a generic term all should be free to use. That connection makes trademark protection more appropriate, not less. See supra, at 2305-2306. [28] Finally, even if "Booking.com" is generic, the PTO urges, unfair-competition law could prevent others from passing off their services as Booking.com's. Cf. Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 149 (CA2 1997);Blinded Veterans Assn. v. Blinded Am. Veterans Foundation, 872 F.2d 1035, 1042-1048(CADC 1989). But federal trademark registration would offer Booking.com greater protection. See,e.g.,Genesee Brewing,124 F.3d at 151 (unfair-competition law would oblige competitor at most to "make more of an effort" to reduce confusion, not to cease marketing its product using the disputed term); Matal, 582 U. S., at --(slip op., at 5) (federal registration confers valuable benefits); Brief for Respondent 26 (expressing intention to seek protections available to trademark owners under the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d)); Brief for Coalition of .Com Brand Owners as Amici Curiae 14-19 (trademark rights allow mark owners to stop domainname abuse through private dispute resolution without resorting to litigation). We have no cause to deny Booking.com the same benefits Congress accorded other marks qualifying as nongeneric. * * * [29] The PTO challenges the judgment below on a sole ground: It urges that, as a rule, combining a generic term with ".com" yields a generic composite. For the above-stated reasons, we decline a rule of that order, one that would largely disallow registration of "generic.com" terms and open the door to cancellation of scores of currently registered marks. Accordingly, the judgment of the Court of Appeals for the Fourth Circuit regarding eligibility for trademark registration is Affirmed. [30] The question before the Court here is simple: whether there is a nearly per se rule against trademark protection for a "generic.com" term. See ante, at 2304See ante, at -2305;;post, at 2314 (BREYER, J., dissenting). I agree with the Court that there is no such rule, a holding that accords with how the U. S. Patent and Trademark Office (PTO) has treated such terms in the past. See ante, at 2305 (noting that the "PTO's own past practice appears to reflect no such comprehensive rule"). I add two observations. [31] First, the dissent wisely observes that consumer-survey evidence "may be an unreliable indicator of genericness." Post, at 2314. Flaws in a specific survey design, or weaknesses inherent in consumer surveys generally, may limit the probative value of surveys in determining whether a particular mark is descriptive or generic in this context. But I do not read the Court's opinion to suggest that surveys are the be-all and end-all. As the Court notes, sources such as "dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term's meaning" may also inform whether a mark is generic or descriptive. Ante, at 2307, n. 6. [32] Second, the PTO may well have properly concluded, based on such dictionary and usage evidence, that Booking.com is in fact generic for the class of services at issue here, and the District Court may have erred in concluding to the contrary. But that question is not before the Court. With these understandings, I concur in the Court's opinion. [33] What is Booking.com? To answer this question, one need only consult the term itself. Respondent provides an online booking service. The company's name informs the consumer of the basic nature of its business and nothing more. Therein lies the root of my disagreement with the majority. [34] Trademark law does not protect generic terms, meaning terms that do no more than name the product or service itself. This principle preserves the linguistic commons by preventing one producer from appropriating to its own exclusive use a term needed by others to describe their goods or services. Today, the Court holds that the addition of ".com" to an otherwise generic term, such as "booking," can yield a protectable trademark. Because I believe this result is inconsistent with trademark principles and sound trademark policy, I respectfully dissent. I A . . . . [35] By preventing others from copying a distinctive mark, trademark law "protect[s] the ability of consumers to distinguish among competing producers" and "secure[s] to the owner of the mark the goodwill of his business." Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985). Ultimately, the purpose of trademark law is to "foster competition" and "suppor[t] the free flow of commerce." Matal, 582 U. S., at --(slip op., at 3) (internal quotation marks omitted). [36] There are also "generic" terms, such as "wine" or "haircuts." They do nothing more than inform the consumer of the kind of product that the firm sells. We have called generic terms "descriptive of a class of goods." Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602 (1888). And we have said that they simply convey the "genus of which the particular product is a species." Park 'N Fly, 469 U.S. at 196. A generic term is not eligible for use as a trademark. That principle applies even if a particular generic term "ha[s] become identified with a first user" in the minds of the consuming public. CES Publishing Corp. v. St. Regis Publications, Inc., 531 F.2d 11, 13 (CA2 1975) (Friendly, J.). The reason is simple. To hold otherwise "would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are." Ibid. [37] In Goodyear, 128 U.S. 598, we held that appending the word "'Company'" to the generic name for a class of goods does not yield a protectable compound term. Id., at 602-603. The addition of a corporate designation, we explained, "only indicates that parties have formed an association or partnership to deal in such goods." Id., at 602. For instance, "parties united to produce or sell wine, or to raise cotton or grain," may well "style themselves Wine Company, Cotton Company, or Grain Company." Ibid. But they would not thereby gain the right to exclude others from the use of those terms "for the obvious reason that all persons have a right to deal in such articles, and to publish the fact to the world. " Id.,at 603. "[I]ncorporation of a company in the name of an article of commerce, without other specification," we concluded, does not "create any exclusive right to the use of the name." Ibid. [38] I cannot agree with respondent that the 1946 Lanham Act "repudiate[d] Goodyear and its ilk." Brief for Respondent 39. It is true that the Lanham Act altered the common law in certain important respects. Most significantly, it extended trademark protection to descriptive marks that have acquired secondary meaning. See Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 171 (1995). But it did not disturb the basic principle that generic terms are ineligible for trademark protection, and nothing in the Act suggests that Congress intended to overturn Goodyear. We normally assume that Congress did not overturn a common-law principle absent some indication to the contrary. See Astoria Fed. Sav. & Loan Assn. v. Solimino, 501 U.S. 104, 108 (1991). I can find no such indication here. Perhaps that is why the lower courts, the Trademark Trial and Appeal Board (TTAB), the U. S. Patent and Trademark Office's (PTO) Trademark Manual of Examining Procedure (TMEP), and leading treatises all recognize Goodyear's continued validity. . . . [39] More fundamentally, the Goodyear principle is sound as a matter of law and logic. Goodyear recognized that designations such as "Company," "Corp.," and "Inc." merely indicate corporate form and therefore do nothing to distinguish one firm's goods or services from all others'. 128 U.S. at 602. It follows that the addition of such a corporate designation does not "magically transform a generic name for a product or service into a trademark, thereby giving a right to exclude others." 2 McCarthy § 12:39. In other words, where a compound term consists simply of a generic term plus a corporate designation, the whole is necessarily no greater than the sum of its parts. [40] This case requires us to apply these principles in the novel context of internet domain names. Respondent seeks to register a term, "Booking.com," that consists of a generic term, "booking" (known as the second-level domain) plus ".com" (known as the top-level domain). The question at issue here is whether a term that takes the form "generic.com" is generic in the ordinary course. In my view, appending ".com" to a generic term ordinarily yields no meaning beyond that of its constituent parts. Because the term "Booking.com" is just such an ordinary "generic.com" term, in my view, it is not eligible for trademark registration. [41] Like the corporate designations at issue in Goodyear, a top-level domain such as ".com" has no capacity to identify and distinguish the source of goods or services. It is merely a necessary component of any web address. See 1 McCarthy § 7:17.50. When combined with the generic name of a class of goods or services, ".com" conveys only that the owner operates a website related to such items. Just as "Wine Company" expresses the generic concept of a company that deals in wine, "wine.com" connotes only a website that does the same. The same is true of "Booking.com." The combination of "booking" and ".com" does not serve to "identify a particular characteristic or quality of some thing; it connotes the basic nature of that thing"-the hallmark of a generic term. Blinded Veterans Assn. v. Blinded Am. Veterans Foundation, 872 F.2d 1035, 1039(CADC 1989) (Ginsburg, J. for the court) (emphasis added; internal quotation marks omitted). . . . . [42] Generic second-level domains are no different. The meaning conveyed by "Booking.com" is no more and no less than a website associated with its generic second-level domain, "booking." This will ordinarily be true of any generic term plus ".com" combination. The term as a whole is just as generic as its constituent parts. See 1 McCarthy § 7:17.50;2 id.,§ 12:39.50. [43] There may be exceptions to this rule in rare cases where the top-level domain interacts with the generic second-level domain in such a way as to produce meaning distinct from that of the terms taken individually. See ante, at 2305, n. 4. Likewise, the principles discussed above may apply differently to the newly expanded universe of top-level domains, such as ".guru," ".club," or ".vip," which may "conve[y] information concerning a feature, quality, or characteristic" of the website at issue. In re North Carolina Lottery, 866 F.3d at 1367; see also Brief for International Trademark Association as Amicus Curiae 10-11; TMEP § 1209.03(m). These scenarios are not presented here, as "Booking.com" conveys only a website associated with booking. [44] The majority believes that Goodyear is inapposite because of the nature of the domain name system. Because only one entity can hold the contractual rights to a particular domain name at a time, it contends, consumers may infer that a "generic.com" domain name refers to some specific entity. . . . [45] That fact does not distinguish Goodyear. A generic term may suggest that it is associated with a specific entity. That does not render it nongeneric. For example, "Wine, Inc." implies the existence of a specific legal entity incorporated under the laws of some State. Likewise, consumers may perceive "The Wine Company" to refer to some specific company rather than a genus of companies. But the addition of the definite article "the" obviously does not transform the generic nature of that term. See In re The Computer Store, Inc., 211 U.S.P.Q. 72, 74-75 (TTAB 1981). True, these terms do not carry the exclusivity of a domain name. But that functional exclusivity does not negate the principle animating Goodyear: Terms that merely convey the nature of the producer's business should remain free for all to use. See 128 U.S. at 603. [46] This case illustrates the difficulties inherent in the majority's fact-specific approach. The lower courts determined (as the majority highlights), that consumers do not use the term "Booking.com" to refer to the class of hotel reservation websites in ordinary speech. 915 F. 3d 171, 181-183 (CA4 2019). True, few would call Travelocity a "Booking.com." Ibid. But literal use is not dispositive. See 915 F. 3d, at 182;H. Marvin Ginn Corp. v. International Assn. of Fire Chiefs, Inc., 782 F.2d 987, 989-990 (CA Fed. 1986). Consumers do not use the term "Wine, Incs." to refer to purveyors of wine. Still, the term "Wine, Inc." is generic because it signifies only a company incorporated for that purpose. See Goodyear, 128 U.S. at 602-603. Similarly, "Booking, Inc." may not be trademarked because it signifies only a booking company. The result should be no different for "Booking.com," which signifies only a booking website. [47] More than that, many of the facts that the Court supposes may distinguish some "generic.com" marks as descriptive and some as generic are unlikely to vary from case to case. There will never be evidence that consumers literally refer to the relevant class of online merchants as "generic.coms." Nor are "generic.com" terms likely to appear in dictionaries. And the key fact that, in the majority's view, distinguishes this case from Goodyear-that only one entity can own the rights to a particular domain name at a time-is present in every "generic.com" case. See ante, at 2305-2306. [48] What, then, stands in the way of automatic trademark eligibility for every "generic.com" domain? Much of the time, that determination will turn primarily on survey evidence, just as it did in this case. See 915 F. 3d,[183][184] [49] However, survey evidence has limited probative value in this context. Consumer surveys often test whether consumers associate a term with a single source. (describing types of consumer surveys). But it is possible for a generic term to achieve such an association-either because that producer has enjoyed a period of exclusivity in the marketplace, e.g., Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118-119 (1938), or because it has invested money and effort in securing the public's identification, e.g., Abercrombie, 537 F.2d at 9. Evidence of such an association, no matter how strong, does not negate the generic nature of the term. Ibid. For that reason, some courts and the TTAB have concluded that survey evidence is generally of little value in separating generic from descriptive terms. . . . Although this is the minority viewpoint, see 2 McCarthy § 12:17.25, I nonetheless find it to be the more persuasive one. [50] Consider the survey evidence that respondent introduced below. Respondent's survey showed that 74.8% of participants thought that "Booking.com" is a brand name, whereas 23.8% believed it was a generic name. At the same time, 33% believed that "Washingmachine.com"-which does not correspond to any company-is a brand, and 60.8% thought it was generic. [51] What could possibly account for that difference? "Booking.com" is not inherently more descriptive than "Washingmachine.com" or any other "generic.com." The survey participants who identified "Booking.com" as a brand likely did so because they had heard of it, through advertising or otherwise. If someone were to start a company called "Washingmachine.com," it could likely secure a similar level of consumer identification by investing heavily in advertising. Would that somehow transform the nature of the term itself? Surely not. This hypothetical shows that respondent's survey tested consumers' association of "Booking.com" with a particular company, not anything about the term itself. But such association does not establish that a term is nongeneric. See Kellogg, 305 U.S. at 118-119; Abercrombie, 537 F.2d at 9. [52] Under the majority's approach, a "generic.com" mark's eligibility for trademark protection turns primarily on survey data, which, as I have explained, may be an unreliable indicator of genericness. As the leading treatise writer in this field has observed, this approach "[d]iscard[s] the predictable and clear line rule of the [PTO] and the Federal Circuit" in favor of "a nebulous and unpredictable zone of generic name and top level domain combinations that somehow become protectable marks when accompanied by favorable survey results. " 1 McCarthy § 7:17.50. I would heed this criticism. In my view, a term that takes the form "generic.com" is not eligible for federal trademark registration, at least not ordinarily. There being no special circumstance here, I believe that "Booking.com" is a generic term not eligible for federal registration as a trademark. [53] In addition to the doctrinal concerns discussed above, granting trademark protection to "generic.com" marks threatens serious anticompetitive consequences in the online marketplace. [54] The owners of short, generic domain names enjoy all the advantages of doing business under a generic name. These advantages exist irrespective of the trademark laws. Generic names are easy to remember. Because they immediately convey the nature of the business, the owner needs to expend less effort and expense educating consumers. . . . And a generic business name may create the impression that it is the most authoritative and trustworthy source of the particular good or service. . . . These advantages make it harder for distinctively named businesses to compete. [55] Owners of generic domain names enjoy additional competitive advantages unique to the internet-again, regardless of trademark protection. Most importantly, domain name ownership confers automatic exclusivity. Multiple brick-and-mortar companies could style themselves "The Wine Company," but there can be only one "wine.com." And unlike the trademark system, that exclusivity is world-wide. [56] Generic domains are also easier for consumers to find. A consumer who wants to buy wine online may perform a keyword search and be directed to "wine.com." Or he may simply type "wine.com" into his browser's address bar, expecting to find a website selling wine. . . . The owner of a generic domain name enjoys these benefits not because of the quality of her products or the goodwill of her business, but because she was fortunate (or savvy) enough to be the first to appropriate a particularly valuable piece of online real estate. [57] Granting trademark protection to "generic.com" marks confers additional competitive benefits on their owners by allowing them to exclude others from using similar domain names. Federal registration would allow respondent to threaten trademark lawsuits against competitors using domains such as "Bookings.com," "eBooking.com," "Booker.com," or "Bookit.com." Respondent says that it would not do so. See Tr. of Oral Arg. 55-56. But other firms may prove less restrained. [58] Indeed, why would a firm want to register its domain name as a trademark unless it wished to extend its area of exclusivity beyond the domain name itself? The domain name system, after all, already ensures that competitors cannot appropriate a business's actual domain name. And unfair-competition law will often separately protect businesses from passing off and false advertising. See Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 149 (CA2 1997);2 McCarthy § 12:2. [59] Under the majority's reasoning, many businesses could obtain a trademark by adding ".com" to the generic name of their product (e.g., pizza.com, flowers.com, and so forth). As the internet grows larger, as more and more firms use it to sell their products, the risk of anticompetitive consequences grows. Those consequences can nudge the economy in an anticompetitive direction. At the extreme, that direction points towards one firm per product, the opposite of the competitive multifirm marketplace that our basic economic laws seek to achieve. [60] Not to worry, the Court responds, infringement doctrines such as likelihood of confusion and fair use will restrict the scope of protection afforded to "generic.com" marks. Ante, at 2307-2308. This response will be cold comfort to competitors of "generic.com" brands. Owners of such marks may seek to extend the boundaries of their marks through litigation, and may, at times succeed. See, e.g., Advertise.com v. AOL, LLC, 2010 WL 11507594 (CD Cal.) (owner of "Advertising.com" obtained preliminary injunction against competitor's use of "Advertise.com"), vacated in part, 616 F.3d 974 (CA9 2010). Even if ultimately unsuccessful, the threat of costly litigation will no doubt chill others from using variants on the registered mark and privilege established firms over new entrants to the market. See Brief for Electronic Frontier Foundation as Amicus Curiae 19-20. [61] In sum, the term "Booking.com" refers to an internet booking service, which is the generic product that respondent and its competitors sell. No more and no less. The same is true of "generic.com" terms more generally. By making such terms eligible for trademark protection, I fear that today's decision will lead to a proliferation of "generic.com" marks, granting their owners a monopoly over a zone of useful, easy-to-remember domains. This result would tend to inhibit, rather than to promote, free competition in online commerce. I respectfully dissent. ______________________________________________________________________________ [4] In reviewing the Parties' extensive supporting, opposition and reply briefs (together with thousands of pages of exhibits and the underlying record at the TTAB), it is obvious that the issue of genericness is genuinely disputed such that entry of summary judgment for any party would be inappropriate. . . . [5] Upon the denial of summary judgment, this matter would normally proceed to a bench trial on the merits. However, as they did before the TTAB, the Parties have waived their right to present live testimony at trial and stipulated that the Court may fully consider and rule on all the issues presented based on the written record. The Court has agreed to do so, and this Order and Judgment thus reflects the Court's final determination of the facts and resulting ruling and judgment on the merits. [6] While the Parties agree that the Court may rule on the merits based on the existing record without hearing further evidence at trial, the Parties sharply disagree on the Court's standard of review of the TTAB's decision and the applicable burden of proof. . . . [7] {W}hile the Court will consider all the evidence de novo, it will also consider the TTAB's findings in weighing the evidentiary value that will be afforded the new evidence presented by the Parties. . . . [8] The burden of proof is more easily addressed. In the Federal Circuit decision in this matter, the court expressly held that Frito-Lay bears the burden to prove genericness by a preponderance of the evidence. Princeton Vanguard, 786 F.3d at 965, n.2. . . . This unambiguous ruling is binding on this Court, see Snyder's-Lance, 991 F.3d at 522, as Frito-Lay acknowledged at oral argument. Therefore, Frito-Lay must prove that PRETZEL CRISPS is generic by a preponderance of the evidence. [9] The pretzel, a simple mixture of water, flour and salt, is a well-known snack food with a long and colorful history dating back to the Middle Ages, when Catholic priests rewarded young children who learned their prayers with soft strips of baked bread dough folded to resemble arms crossed in prayer. 6 German immigrants in the 1700's brought their "bretzels" (from the Old German "brezitella" which is derived from the Latin for "arm" (bracchiatus)) to the United States and by 1861 a commercial pretzel bakery was making "hard" pretzels -a brittle, glazed and salted cracker-like version of the original soft pretzel -that could be shipped and stored in airtight containers. Over the ensuing years, pretzels became increasingly popular and have been baked and sold as snacks in many sizes, forms and names, including sticks, thins, crackers, chips, rods, rounds and, as at issue here, crisps. Over $500 million worth of pretzels are now sold annually in the United States, with the average American consuming about two pounds of pretzels a year. (https://positivelypa.com/pretzel-facts/ (accessed May 14, 2021)). [10] The use of the term "pretzel crisps" dates from, at the latest, the late 1990's. For example, in April 1998, an article in Men's Health suggested a recipe for a low-calorie snack mix consisting of "flat pretzel crisps and crunchy pretzel sticks." In 1999, The San Francisco Chronicle included "Honey-mustard pretzel crisps" on its list of "Hot" grocery items. In 2001, the Charleston Gazette recommended serving a dip recipe "at room temperature with pretzel crisps or crackers." [11] Princeton-Vanguard developed their pretzel snack product in 2004. Warren and Sara Wilson, experienced entrepreneurs who had launched several successful snack food brands, created a snack food product that took the middle slice of a pretzel and produced it in a flat, cracker form. Princeton-Vanguard named the product PRETZEL CRISPS and began marketing and selling their pretzels in the "deli snacks" section of the grocery stores and food markets. PRETZEL CRISPS have been a major commercial success and are a market leader among pretzel products, having enjoyed sales growth almost every year since the brand's launch. [12] Since 2004, Plaintiffs have sold more than $1.25 billion dollars of Pretzel Crips to wholesalers and retailers (which translates into more than $2.5 billion in retail revenue). These sales are driven by an extensive marketing and advertising campaign. Snyder's-Lance has spent more than $50 million on advertising, marketing, and promoting the PRETZEL CRISPS brand through traditional marketing and advertising channels, as well as through social media, in-store demonstrations, and "seeding" events and contests. For example, in 2016 and 2017, Snyder's-Lance estimates it had 225 million consumer impressions from its print and online advertising of PRETZEL CRISPS, and its field marketing teams travelled the country to promote PRETZEL CRISPS, distributing some 600,000 product samples at various events. 8 {In 2005, Princeton Vanguard obtained a registration for PRETZEL CRISPS on the Supplemental Register as a descriptive mark that had not yet developed acquired distinctiveness. In late 2009, Princeton Vanguard filed to register PRETZEL CRISPS for "pretzel crackers" on the Principal Register. Frito-Lay opposed the registration on the grounds that the mark was generic for pretzel crackers and in the alternative that even if the mark was descriptive rather than generic, it lacked acquired distinctiveness. In 2014, the Trademark Trial and Appeal Board (TTAB) ruled that the mark was generic. Princeton-Vanguard appealed that ruling to the Federal Circuit, which remanded the case back to the TTAB for application of the correct legal test. In 2017, the TTAB again ruled that the mark was generic. Princeton-Vanguard then appealed this ruling to the W.D.N.C. In 2021, after a skirmish before the Fourth Circuit involving whether the W.D.N.C. had subject matter jurisdiction over a case that had previously been appealed directly to the Federal Circuit, the Fourth Circuit remanded the case back to the W.D.N.C.} III. DISCUSSION [13] Trademark law protects the goodwill represented by particular marks and serves the twin objectives of preventing consumer confusion between products and the sources of those products, on the one hand, and protecting the "linguistic commons" by preventing exclusive use of terms that represent their common meaning, on the other. Booking.com B.V., 915 F.3d at 175 (citing OBX-Stock, Inc. v. Bicast, Inc., 558 F.3d 334, 339-40 (4th Cir. 2009)). In order to be protectable, marks must be "distinctive." To determine whether a proposed mark is protectable, courts ascertain the strength of the mark by placing it into one of four categories of distinctiveness, in ascending order: (1) generic, (2) descriptive, (3) suggestive, or (4) arbitrary or fanciful. . . . [14] Generic terms do not contain source-identifying significance-they do not distinguish the particular product or service from other products or services on the market. Accordingly, generic terms can never obtain trademark protection, as trademarking a generic term effectively grants the owner a monopoly over a common term. Registration must be refused if a mark "is the generic name of any of the goods or services for which registration is sought." McCarthy § 12:57. If protection were allowed, a competitor could not describe his goods or services as what they are. Booking.com B.V., 915 F.3d at 177 (citing CES Publ'g Corp. v. St. Regis Publ'ns, Inc., 531 F.2d 11, 13 (2d Cir. 1975)). Once a term is deemed generic, it cannot subsequently become non-generic. Id. at 180. [15] Especially significant here, the law forbids trademarking generic terms, even when a putative mark holder engages in successful efforts to establish consumer recognition of an otherwise generic term. o matter how much money and effort the user of a generic term has poured into promoting the sale of its merchandise and what success it has achieved in securing public identification, it cannot deprive competing manufacturers of the product of the right to call an article by its name." Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).foot_29 Therefore, even advertising, repeated use, and consumer association will not warrant affording trademark protection to a generic term. See Am. Online, Inc. v. AT&T Corp., 243 F.3d 812, 821 (4th Cir. 2001) ("[T]he repeated use of ordinary words . . . cannot give [a single company] a proprietary right over those words, even if an association develops between the words and [that company]."). In sum, courts have long sought to foreclose companies from monopolizing common terms, holding that no single competitor has the right to "corner the market" on ordinary words and phrases. See Booking.com B.V.,915 F.3d at 193. [16] According to the test adopted long ago by the Supreme Court in Kellogg Co. v. Nat'l Biscuit Co., a plaintiff seeking to establish a valid trademark as compared to a generic mark "must show that the primary significance of the term in the minds of the consuming public is not the product but the producer." 305 U. S. 111, 118 (1938). A mark is not generic simply because it plays some role in denoting to the public what the product or service is; rather, a mark may serve a dual function-that of identifying a product [or service] while at the same time indicating its source. Thus, "the critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question. " Princeton Vanguard, 786 F.3d at 965 (citing, H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 989-90 (Fed. Cir. 1986)). In other words, would the mark be perceived by the purchasing public as merely a common name for the goods rather than a mark identifying the good's source? Id. at 766. [17] According to the Federal Circuit, 10 determining a mark's genericness requires "a two-step inquiry: First, what is the genus (or class) of goods or services at issue? Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services?" Id. at 990. The Parties do not dispute either the genus of goods or the relevant public. The genus of goods at issue is "pretzel crackers" and the relevant public are "ordinary consumers who purchase and eat pretzel crackers." See Princeton-Vanguard, 786 F.3d at 965. [18] Booking.com, the most recent Supreme Court opinion on the question of whether a trademark is generic, provides the Court clear guidance on the process for making the factual finding on how the relevant public perceives the mark. Evidence of the public's understanding of the mark as either a common name or a mark identifying the good's source may be obtained from dictionaries; usage by the mark holder, consumers and others; consumer surveys; 11 publications and any other source of evidence bearing on how 10 The Fourth Circuit follows a functionally similar three-step test: (1) identify the class of product or service to which use of the mark is relevant; (2) identify the relevant consuming public; and (3) determine whether the primary significance of the mark to the relevant public is as an indication of the nature of the class of the product or services to which the mark relates, which suggests that it is generic, or an indication of the source or brand, which suggests that it is not generic. Booking.com B.V., 915 F.3d at 180. 11 With respect to consumer surveys, the Supreme Court has specifically cautioned: "surveys can be helpful evidence of consumer perception but require care in their design and interpretation. See Brief for Trademark Scholars as Amici Curiae 18-20 (urging that survey respondents may conflate the fact that domain names are exclusive with a conclusion that a given "generic.com" term has achieved consumers perceive a term's meaning. See Booking.com B. V., 140 S. Ct. at 2306-07;Princeton Vanguard, 786 F.3d at 965. Also, the public's primary understanding of a mark "is derived from it as a whole, not from its elements separated and considered in detail;" therefore, "it should be considered in its entirety." Estate of P.D. Beckwith, Inc. v. Comm'r of Patents, 252 U.S. 538, 545-46 (1920). Although "a mark must be considered as a whole," this "does not preclude courts from considering the meaning of individual words in determining the meaning of the entire mark." Hunt Masters, Inc. v. Landry's Seafood Rest., Inc., 240 F.3d 251, 254 (4th Cir. 2001). [19] Further, for an asserted trademark such as PRETZEL CRISPS that is a "compound of generic elements" ("pretzel" and "crisps"), 12 the mark "is generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or services." Booking.com B. V., 140 S. Ct. at 2306. (emphasis in original). This principle is not inconsistent with consideration of a mark in its entirety. "An inquiry into the public's understanding of a mark requires consideration of the mark as a whole. Even if each of the constituent words in a combination mark is generic, the combination is not generic unless the entire formulation does not add any meaning to the otherwise generic mark." In re Steelbuilding.com, 415 F.3d 1293, 1297(Fed. Cir. 2005). [20] To find if the combination of generic terms in an asserted trademark has "additional" meaning to consumers, the Court logically must first determine what meaning the generic elements would have to the relevant public. See Booking.com, 915 F.3d at 184-85 ("when confronted with a compound term like PRETZEL CRISPS, courts may consider as a first step the meaning of each of the term's component marks . . ."). The TTAB analyzed the constituent terms "PRETZEL" and "CRISPS" at length in its two decisions. See TTAB Decision 2, 124 U.S.P.Q.2d at 1201-04. [21] The Board evaluated the "meaning of each to the consuming public as indicated by dictionary definitions and other competent sources." Id. at 1188. Princeton-Vanguard submitted a definition of "pretzel" as "[a] glazed brittle biscuit that is salted on the outside and usually baked in the form of a loose knot or a stick." Id. Warren Wilson, Princeton-Vanguard's Manager and co-founder, defined the "PRETZEL CRISPS" product as being a form of pretzel: "PRETZEL CRISPS crackers possess a unique shape, based on removing the middle slice from a traditional pretzel design." Id. Finally, Defendant's original identification of goods for Application Serial No. 78405596, as filed on April 21, 2004, stated simply "pretzels." After receiving an office action refusing its applied-for mark as generic, Defendant submitted an amendment to the identification re-characterizing the goods as "pretzel crackers." The Trademark Rules state that an "applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services . . ." Trademark Rule 2.71; 37 CFR secondary meaning) . . . . [McCarthy], § 12:49 ("Determining the distinction between generic and trademark usage of a word . . . when there are no other sellers of [the good or service] is one of the most difficult areas of trademark law.")." Booking.com B. V., 140 S. Ct. at 2307. § 2.71. Because the amendment to its identification was found to be acceptable, Princeton-Vanguard's identified "pretzel crackers" is by rule a subcategory of the broader product category "pretzel." [22] As to the term "CRISPS," the Parties submitted to the Board dictionary definitions of the term as meaning, in relevant part, "(noun) Something crisp or brittle;" and "(noun) Something crisp or easily crumpled." Frito-Lay's witness Pam Forbus testified that the "generic term 'crisp' or 'crisps'" had been used by Frito-Lay and others to identify their snack food items "since at least as early as 1959." Such products include Munchos potato crisps, Baked Lay's and Baked Ruffles potato crisps, Stacy's soy crisps, TRUENORTH nut crisps and FLAT EARTH fruit crisps and veggie crisps. Id. Moreover, Princeton-Vanguard previously used the term "CRISPS" in the nutrition facts labels displayed on its "PRETZEL CRISPS" product, referring to the number of "crisps" in a serving size. Also, in responding to requests for admission, Princeton-Vanguard admitted that "'crisps' can be used as a term for the product that is the subject of the Application." Id. Finally, the definition of the word "cracker," in pertinent part, is "a dry thin crispy baked bread product that may be leavened or unleavened." "Cracker," Merriam-Webster.com; https://www.merriamwebster.com/ dictionary/cracker. (Accessed 11 May. 2021). "Crisps" may therefore also be "crackers." [23] Accordingly, based on the separate meanings of the two words, the term "pretzel" "crisps" would be perceived by a consumer to refer to a pretzel in the form of a crisp or cracker (or, alternatively, a cracker or crisp that tastes like a pretzel). So, the question is what additional meaning can consumers find in the combination of the two generic words "pretzel" and "crisps" that can serve as an indication that the combined term may refer to a single source? Unlike booking.com (the combined mark identifies a specific company at that internet address) and American Airlines (consumers understand that there are numerous separately named airlines in the United States and don't refer to them collectively as "American Airlines"), there is no additional meaning that results from the combination of the generic terms that make up PRETZEL CRISPS in the minds of consumers. "Pretzel" "crisps" are pretzels in the shape or form of a cracker and "pretzel crisps," viewed together, would be perceived as the same thing. See Convenient Food Mart, Inc. v. 6-Twelve Convenient Mart, Inc., 690 F. Supp. 1457, 1464(D. Md. 1988), aff'd, 870 F.2d 654 (4th Cir. 1989) (acknowledging that mark must be considered as a whole, but also finding "arrangement of the words 'Convenient Food Mart' obvious and meaning nothing more than a convenient food mart"). 14 In sum, the Court finds that the combined term PRETZEL CRISPS adds no additional meaning to consumers that suggests the mark is not primarily a generic name. [24] The analysis of whether a combination of generic terms adds any meaning to the separate meaning of the generic words that make up the mark can also be considered from 14 When asked at oral argument to identify any additional meaning or source identification that the combined term adds to its generic components, Plaintiffs' counsel simply reiterated their position that the Court should not consider the meaning of the component terms in any way (notwithstanding the clear recent direction from the Supreme Court in Boooking.com). another angle, which is whether the disputed combined term can satisfy the basic elements of a "descriptive" term, which is the trademark category just beyond generic terms (and how Plaintiffs argue PRETZEL CRIPS should be categorized). "Descriptive" terms "immediately convey information concerning a feature, quality, or characteristic" of the producer's goods or services, not simply the good or service itself. See In re North Carolina Lottery, 866 F.3d 1363, 1367(Fed. Cir. 2017) However, PRETZEL CRISPS does not convey any "feature, quality or characteristic" of "pretzel crackers" (the agreed genus of goods). 15 Instead, it is simply another name for the goods being sold. Accordingly, the failure of the combined term to convey any additional meaning that allows it to function as a "descriptive" term further supports a finding that the combined term is merely "a common name for the goods" which is appropriately placed in the lower category of generic goods. [25] Although the Court concludes that the combination of the generic elements "pretzel" and "crisps" does not create any additional meaning for consumers from which they can distinguish Plaintiffs' product and thus indicates that PRETZEL CRISPS is generic, the Court does not rest its finding of genericness on that finding. Rather, after considering de novo all the evidence offered by the Parties which bears on consumers' perception of the mark, the Court finds that, on balance, a preponderance of the evidence supports the conclusion that the mark, considered only in its entirety, is generic. [26] Before reviewing the evidence in detail, the Court notes two points relevant to its overall analysis. First, exercising its discretion, the Court views the more recent purported evidence of consumer perception (from both sides) as less probative than evidence closer to Princeton-Vanguard's registration applications and Frito-Lay's opposition. As discussed above, the law does not permit a generic mark to evolve into a descriptive mark or other type of non-generic mark based on the association of the product with a particular company (driven by the mark holder's marketing success). And, Plaintiffs themselves acknowledge that it "accords with [ ] common-sense reasoning that, as more consumers are exposed to PRETZEL CRISPS crackers' packaging prominently displaying the PRETZEL CRISPS mark and encounter the mark in advertisements and on social media, they will naturally come to view it as [a] brand name . . ." So, the farther in time the evidence is from Plaintiffs' trademark applications, the more likely it is that the cumulative effect of Plaintiffs' sales efforts will limit the ability of the evidence to establish consumer perceptions of genericness as distinguished from secondary meaning resulting from Plaintiffs' successful marketing. . . . . [27] Second, in making its factual determination of genericness, the Court has considered not just the "quantity" of evidence (the number of times the mark is allegedly used in some "trademark" sense) but also the "quality" of the evidence presented. In other words, the Court finds that not all bare mentions of the mark are equal. For example, many (indeed most) of the cited references to PRETZEL CRISPS appear in otherwise irrelevant financial documents or simply reflect the fact that Plaintiffs are marketing and selling the product (i.e., term appearing in the reporting of results for Snyder's-Lance's second quarter of 2013, and article noting that "media sponsors include . . . Startup Digest, Pretzel Crisps, Modern Oats,"), rather than more direct evidence of consumer perceptions (i.e., an article suggesting that a baked potato dip be served with "your favorite potato chips or pretzel crisps"). Thus, the Court has, as it must, not only "counted" the evidence but "weighed" it to reach the final conclusion that PRETZEL CRISPS is, on balance, a generic term for the goods sold by Plaintiffs. [28] The Court evaluates each type of supporting evidence offered by the Parties as follows: Dictionaries [29] As noted above, the Court may look to the dictionary for evidence of common usage to support a finding of genericness. See McCarthy, § 11:51 While the Parties have provided definitions of the words "pretzel" and "crisps" as discussed above, it appears that there are no dictionary definitions of the mark as a whole. Plaintiffs contend that the absence of dictionary definitions of "pretzel crisps" is "powerful evidence that the mark is not generic." The Court disagrees. First, the authority offered by Plaintiffs in support of their position, JFJ Toys, Inc. v. Sears Holdings Corp., 237 F. Supp. 3d 311, 332-33 (D. Md. 2017), 20 notes that "[d]ictionary definitions are particularly helpful where a composite mark which was 'invented' by its holder is listed in the dictionary as the accepted designator for a unique product," citing Nat'l Fed'n of the Blind, Inc. v. Loompanics Enterprises, Inc., 936 F. Supp. 1232, 1248(D. Md. 1996). . . . Here, although the Court does not find that Princeton-Vanguard invented the PRETZEL CRISPS name as discussed above, Plaintiffs contend they did. Thus, by their own version of the facts, the absence of a dictionary definition would appear to cut against rather than support their arguments. [30] More significant to the Court, while there is no dictionary definition of "pretzel crisps," there is also no dictionary definition of "pretzel crackers," "pretzel chips," or "pretzel thins," all of which Plaintiffs agree are generic terms. And, similarly, a reasonable search by the Court finds no dictionary definition of other non-pretzel generic snack food names such as "pita chips." In other words, names of particular food products, whether brand specific or generic, are unlikely to be in the dictionary, presumably because dictionary editors do not find the term noteworthy enough to warrant an entry of any type. See TTAB Decision 2, 124 U.S.P.Q.2d at 1193. Therefore, in the specific context of the facts presented here, dictionary definitions are not particularly helpful to either party beyond the meaning of the words that make up the mark as discussed above (as part of the question of whether the compound mark adds additional meaning to consumers). [31] The Parties have also proffered examples of the Plaintiffs' use of the mark for the Court to consider on genericness. While the vast majority of Plaintiffs' uses of the mark refer to PRETZEL CRISPS as a brand, three references from high ranking executives have been cited to the Court as evidence supporting generic use. In 2010, Maureen Phelan, VP of Sales for Snack Factory, told a major potential customer (Starbucks): "I have seen your new line of healthy snack foods in the stores & think Pretzel Crisps would be a great addition. We are the original pretzel crisp company about to introduce a new package which is much more appealing to your demographic than our current deli line." (emphasis added). And, in 2009, Snack Factory's Vice President of Marketing Perry Abbenante asked a marketing firm for help coming up with a new name for an "umbrella brand" for the product, explaining that "Pretzel Crisps" consists of "two pretty generic words" and could be vulnerable to a challenge. ("Per our conversation, I was hoping you and PGW braintrust could mull over some creative names we might be able to use as an umbrella brand for Pretzel Crisps. Currently, we do have a copyright on the name Pretzel Crisps, but because it's a two pretty generic words [sic], there could be a challenge to it."). Finally, the founder Mr. Wilson also used the term generically in a published interview, noting, "We have been able to take the middle out of pretzel making the pretzel crisp a thin crunchy cracker-like snack." [32] While evidence of the mark owner's generic use may be "strong evidence of genericness," McCarthy, § 12.13, there must be "repeated and consistent instances of such usage," JFJ Toys, Inc. v. Sears Holdings Corp., 237 F. Supp. 3d at 331, for that use to have a significant effect. Accordingly, although these statements by Plaintiffs' executives are generally consistent with the other evidence discussed below which supports a finding of genericness and have been considered, the Court does not view these apparently isolated instances as indicative of general usage of the mark generically by Plaintiffs. Therefore, the Court does not find Plaintiffs' use of the mark generically to be "strong evidence" and gives it relatively little weight in the balance of evidence. [33] More significant to the Court than Plaintiffs' limited generic use, the record reflects use of pretzel crisps generically by competitors and food vendors. In 2010, Kraft introduced pretzel crackers under its RITZ MUNCHABLES mark, using "pretzel crisps" as the generic descriptor. 21 The generic nature of this use is evident from the way "pretzel crisps" was set off from Kraft Food's RITZ MUNCHABLES mark in different typeface and color. Princeton-Vanguard complained to Kraft and threatened litigation. 21 All food items are required to list a "statement of identity" or "generic descriptor" to describe the food. The name established by law or regulation, or in the absence thereof, the common or usual name of the food, if the food has one, should be used as the statement of identity. If there is none, then an appropriate descriptive name, that is not misleading, should be used. Brand names are not considered to be statements of identity and should not be unduly prominent compared to the statement of identity. See 21 CFR 101.3(b) & (d). [34] Plainly choosing to avoid a lengthy battle with an aggressive and similarly deep pocketed competitor (a decision which now may seem particularly prescient to Kraft in light of the decade long history of this case), Kraft entered into an Agreement and Mutual Release with Princeton-Vanguard in which Kraft was allowed to continue to use the mark generically for several monthsfoot_33 but thereafter agreed not to use "pretzel crisps" "as a product descriptor" or a "trademark." Kraft made no concession, admission of liability or acknowledgement that Princeton-Vanguard was entitled to a registration for "pretzel crisps" or of "any fact" (but agreed that Princeton owns a registration on the Supplemental Register, which of course was true at the time). [35] Significantly, Kraft was careful to both note Frito-Lay's already pending opposition to Princeton-Vanguard's efforts to obtain a principal registration and include a provision allowing Kraft to resume generic use of the term should a court or trademark office find the term to be generic. Following the settlement, Kraft changed the generic descriptor "pretzel crisps" on its packaging to "pretzel thins" and "pretzel rounds" (two terms that Plaintiffs agree are not used as trademarks), demonstrating that Kraft considers all of these terms to be generic. See Doc. No. 33 at 17 ("Kraft subsequently adopted the terms 'pretzel thins' and 'pretzel rounds' to describe its products"; see also Opp'n No. 91195552 at A1543 (declaration from Warren Wilson testifying that "pretzel thins" and "pretzel rounds" are "generic descriptors"). . . . . [36] More recently, Plaintiffs have continued to object to other companies' ongoing generic use of the mark (even after the TTAB ruled the mark was generic and ordered the registration cancelled). For example, in 2018 Wish Farms posted a recipe on its website for "Blueberry Pretzel Crisps." The recipe did not feature Plaintiffs' product, and the term "Pretzel Crisps" was used generically to refer to the recipe itself. Claiming that PRETZEL CRISPS was at that time a "registered trademark" (ignoring the TTAB's decision that the registration should be cancelled), Snyder's-Lance demanded that the small company cease using "pretzel crisps" (unless it changed the recipe to include Plaintiffs' product). Wish Farms agreed to change the recipe name but declined to "alter the recipe" to include Plaintiffs' product, noting that "the photos were done with a different product and the quickest way that we could address your concern was to simply change the name." . . . . [37] All of these examples show that the third parties involved believed "pretzel crisps" was a commonly understood generic term, without any intent by the third parties to copy or trade on Plaintiffs' purported mark or goodwill. In response, Plaintiffs argue that their successful policing efforts "support the conclusion that others in the industry recognize PRETZEL CRISPS as a brand name." The Court disagrees. In the Court's view, after reviewing the particular circumstances and communications described above, the various agreements not to use "pretzel crisps" do not reflect any "recognition" that PRETZEL CRISPS is a brand name. Rather, the agreements represent the considered practical judgment of the accused companies (which in all cases but one were significantly smaller enterprises) that it wasn't worth the cost to resist Plaintiffs' threats. On the contrary, the Court finds the generic use by these unrelated companies to be a clear indication of public perception that "pretzel crisps" is a name for a type of pretzel snack rather than a brand name. Indeed, Plaintiffs' ability to successfully use its trademark registration (even after the TTAB ruling that it should be cancelled) to deny others the ability to use a common product name only emphasizes the power Plaintiffs have wielded to clear the marketplace of similarly named products and the importance of not allowing generic terms to become registered trademarks. . . . . [38] In the TTAB and this Court, Plaintiffs have offered in total approximately 1800 "media references" from 2004 to 2018 in support of their position that PRETZEL CRISPS is not generic. The Court has separately reviewed every one of these proffered references. For the reasons discussed below, after considering not only the number but also the probative nature and quality of the references (as well as some illustrative current advertisements), the Court finds that, on balance, the cited media references favor a finding that consumers primarily perceive "pretzel crisps" as a term that identifies a common name for the goods rather than a mark identifying the good's source. . . . . [39] After reviewing all the references individually, the Court finds that they can be grouped into several categories for analysis (in addition to duplicates which represented over 36% of the references reviewed): [40] A majority of the articles (close to 60%), reflect Plaintiffs' business affairs, financial results and executive employment changes. . . . See,e.g.,p. 51 (stating that the team for First Aid Shot Therapy, a healthcare company, is comprised of executives that were responsible for the launch and success of Pretzel Crisps, as well as other products). . . . . . . . [41] The list of media references that Mr. Lauzau counts as equal "trademark" references also includes a number of articles (approximately 4%) that discuss the court decisions related to this dispute. . . . . . . . [42] Approximately 3% of the articles were "false positives" that did not include the terms that were searched in any relevant context and, similarly, approximately 3% of the articles could not be classified by the Court for lack of information or context about the article or other reasons. [43] Accordingly, the Court finds that adding together the business articles, lawsuit articles, false positives and indeterminate articles approximately 70% of the articles offered by {Plaintiffs} have little or no probative value with respect to the question of genericness. [44] The Court finds that approximately 13% of the articles reflect generic use of "pretzel crisps. " See,e.g.,p. 32 (describing a school lunch idea that includes "[h]ummus with carrots, red peppers, green peppers, pretzel crisps and dried fruit"); 42-3, p. 121 (explaining how Skinnygirl creator Bethenny Frankel plans on offering pretzel crisps and pita chips as products); . . .;foot_34 see also TTAB Decision 2, 124 U.S.P.Q at 1190-91 (quoting numerous other generic references). In these articles, "pretzel crisps" are used without any particular reference to the term as a brand or to Plaintiffs. Many reference "homemade" or "my own" "pretzel crisps." And, in a number of the articles, including several of those cited above, "pretzel crisps" are listed in a parallel manner with other food items such as "popcorn" or "chips," further emphasizing that the term is being used generically. [45] Further, other media articles cited by Frito-Lay reflect strong evidence of generic use, including the use of "Pretzel Crisps" as a category for the taste test among several different brands of pretzel crackers. See Doc. No. 28-13 at 17-18 (January 2009 San Francisco Chronicle article determining that Snack Factory came in third in a taste test comparing Pepperidge Farm, Trader Joe's other brands which are generically referenced as "pretzel chips," "pretzel crackers" and "pretzel crisps" in the article). . . . In sum, the Court finds that the articles in which "pretzel crisps" is used generically provide clear affirmative evidence that consumers primarily view the term "pretzel crisps" as a type of goods rather than a brand name. [46] The remaining articles (approximately 20%) can be generously described as articles in which PRETZEL CRISPS may be referred to as a brand or the use of the term appears to refer specifically to Plaintiffs' product. However, for the reasons discussed below, the Court finds, in the exercise of its judgment, that a substantial percentage of those references should be given only a limited weight. [47] While a number of the articles use Pretzel Crisps in a way that indicates it is viewed as a brand, see, e.g., 41-2, p. 11, #13 (comparing the ingredients in Tostitos and Pretzel Crisps to discover the better snack); . . . many more articles are similar to the "business" articles discussed above in that they only describe or reflect Plaintiffs' sales efforts. [48] That is, the articles simply reflect the fact that Plaintiffs are active participants in the marketplace rather than more direct evidence of consumer perceptions. See,e.g.,p. 2,#2 (listing exhibitors,including Pretzel Crisps,at an Earth Day Fair);p. 3,#3 (advertising Pretzel Crisps and mentioning the nutrition facts, flavors, and store placement). . . . [49] Again, evidence that a product has become a success and associated with a particular company cannot change a generic term into a non-generic brand. Thus, the Court's judgment, considering all aspects of these articles, is that they are entitled to relatively less weight than the generic articles discussed above, even though they are more numerous. [50] Moreover, as noted above in the Court's review of both the business and the "brand identification" articles, many of the cited articles refer to Plaintiffs' product as "Snack Factory Pretzel Crisps" rather than simply "Pretzel Crisps." The Court finds this is significant and undercuts Plaintiffs' argument that the term PRETZEL CRISPS is, standing alone, perceived as a brand. 31 The wide prevalence of using Snack Factory as a clear brand identifier preceding "Pretzel Crisps" makes it more likely that consumers perceive pretzel crisps as a product name rather than a second brand name. 32 Recent advertisements easily found by the Court on the internet vividly demonstrate this point. 31 Indeed, in some of Plaintiff's purchasing contracts, the Product Description is "Pretzel Crips" and the "Extended product desc." is "Thin, flat pretzel crisps," while the "Trademark" is listed only as "Snack Factory." 32 Plaintiffs' argue that "Snack Factory Pretzel Crisps" is no different than saying "Frito-Lay's cool ranch DORITOS." The Court disagrees. Beyond the absence of any evidence that DORITOS are often referred to as "Frito-Lay Doritos" in communications describing the brand, DORITOS is not even arguably the name of a class or type of food. [51] The Costco ad pictured above is contained in an advertising circular for the period May 19, 2021 to June 13, 2021. See https://www.costcoinsider.com/costco-may-and-june-2021-coupon-book/ (accessed May 21, 2021). In the top two panels, Costco is offering a special price on both Snack Factory Pretzel Crisps and Stacy's Pita Chips. The ad uses both Snack Factory and Stacy's as the brand names and then "Organic," "Pretzel Crisps" and "Pita Chips" as generic product descriptors for the snacks. The Court also notes the difference in how "Cheerios" and "Sunny D" are both referred to only by their brand names in the bottom two panels. Thus, this ad is a striking example of how Snack Factory (brand name) and "pretzel crisps" (product name) are often viewed differently when used together. . . . . [52] In summary, for all the reasons discussed above, the Court finds, after a careful de novo review, that the media references offered into evidence and discussed above on balance support a finding that Frito-Lay has established by a preponderance of evidence that PRETZEL CRISPS is a generic term. [53] Pursuant to the Supreme Court's directive in Booking.com and the Federal Circuit decision in this matter, 34 the Court also considers -cautiously -the survey evidence presented by the Parties. At the TTAB, Plaintiffs submitted two surveys and related expert declarations, one from Dr. E. Deborah Jay (the "Jay Survey") on genericness and the other from George Mantis (the "Mantis Survey") on secondary meaning. Frito-Lay submitted one survey and a related declaration from Dr. Alex Simonson on genericness. In this Court, Plaintiffs have filed additional declarations from both their experts and Frito-Lay has submitted an Expert Report and Declaration from Professor Isabella Cunningham on secondary meaning. None of the Parties have challenged the credentials of any of the experts, and the Court finds that all of them are well qualified to express their opinions. Accordingly, all of the expert reports and declarations have been considered de novo, although for the reasons discussed below the Court finds the Jay Survey and the Mantis Survey most instructive. [54] Dr. Jay, founder and President of Field Research Corp., conducted what is commonly known as a "Teflon" survey in an attempt to test how consumers perceive the term PRETZEL CRISPS. Named after a survey performed to determine if "Teflon" was a valid trademark, a 34 Prior to Booking.com, in the Fourth Circuit and elsewhere consumer survey evidence was not considered in cases where, as here, the mark was not a coined term. See, e.g., Hunt Masters, Inc. v. Landry's Seafood Restaurant, Inc. 240 F.3d 251, 255, 57 USPQ2d 1884, 1886(4th Cir. 2001) ("Hunt does not claim to have first coined the term 'crab house.' Therefore, it is not necessary to determine whether the term has become generic through common use, rendering Hunt's consumer survey irrelevant."); TTAB Decision 2, 124 U.S.P.Q. at 1202-04 (collecting cases). However, as discussed above, such evidence was considered by the Supreme Court in Booking.com and the Federal Circuit instructed the TTAB to consider survey evidence in this matter. Accordingly, the Court has considered the evidence, with due regard for the limitations of such evidence cited by the Supreme Court (which had led many courts to not consider the evidence in these circumstances as noted). interviews have a maximum sampling error of approximately +/-7 percentage points at the 95% confidence level." She also admitted that "there are other potential sources of error in surveys besides sampling error," but expressed her opinion that "the overall design and execution of the survey minimized the potential for other sources of error." [61] The "margin of error" in surveys should be considered in whether and how much to rely on their results. See vonRosenberg v. Lawrence, 413 F.Supp.3d 437, 449 n.9 (D.S.C. 2019) (finding that a 5.6% error rate was a "wide margin of error" relevant to the weight that should be given to a trademark survey on genericness where, considering the error rate, the "rate of [survey respondents] who responded "category" rather than "trademark" would fall below 50%, thus arguably negating its ability to show that a "majority" of individuals consider the mark generic. See 2 McCarthy on Trademarks and Unfair Competition § 12:6 (5th ed.) (for genericness, "majority use controls")"); Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 120 n. 6 (1st Cir. 2006) (concluding that an expert report's "small sample size and large margin of error [10%] combined to cast considerable doubt on its statistical integrity"). . . . This seems especially important in circumstances like here in which the answers of only 222 survey respondents are purported to fairly represent the consumer perceptions of over 100 million adults in the United States. [62] Using a 7% margin of error, the range of those who view PRETZEL CRISPS as a brand within the margin of error is 48% to 63%. In other words, without discounting the results of the Jay Survey in any manner (even for the other sources of error Dr. Jay references), a finding that fewer than a majority of respondents perceived PRETZEL CRISPS as a brand is within the survey's margin of error. Indeed, if the percentages of those who believed that the term is a brand or common name are fully adjusted up or down for the margin of error then the difference between them could be very small, 48% to 43%. [63] However, beyond consideration of the margin of error (which still leaves a small relative but not absolute majority identifying the mark as a brand), the Court finds there are a number of reasons that suggest the survey results should be discounted in addition to considering the margin of error. First, as mentioned above, Dr. Jay acknowledges that the survey population is not representative of the relevant population, either by age or geography. However, the amount and direction of the survey error or uncertainty as a consequence of these disparities is not quantified or estimated. [64] Moreover, the answers of the survey respondents with respect to a number of the "control" terms do not inspire confidence in the survey results and appear to reflect that the survey respondents' choices may have been driven, in significant part, by commercial success or notoriety rather than a valid assessment of the distinction between generic and trademark names. While over 90% of respondents correctly identified "macadamia nuts" and "onion rings" as generic names, 25% incorrectly identified "gourmet popcorn" as a brand. More significantly, less than half of respondents correctly identified FLAVOR TWISTS (which are twisted corn chips) as a brand. The Court finds that this failure indicates that the bulk of survey respondents did not fully understand the distinction between common names and brands. The mark FLAVOR TWISTS is plainly not a common name (TWISTS is certainly not a common name for corn chips, if it has any "common" meaning at all). [65] So, what accounts for the vast difference in correct answers for CHEESE NIPS and SUN CHIPS, which are also brands? Simply put, the difference likely lies in marketing and commercial success. CHEESE NIPS and SUN CHIPS are more well-known and successful than FLAVOR TWISTS as a name standing alone (indeed if the survey had included the full product name FRITOS FLAVOR TWISTS the Court expects the results may have been markedly different). Thus, the failure of respondents to correctly identify FLAVOR TWISTS as a brand suggests that a substantial portion of the survey results reflect secondary meaning (the association of a product with a particular source) rather than a recognition of genericness. 35[66] Accordingly, it is the Court's judgment -based on the fact that less than a majority of respondents may have believed PRETZEL CRISPS is a brand name (taking into account the survey's margin of error), the other limitations and concerns about the survey results discussed above and the Supreme Court's warning to be cautious in relying on consumer surveys purporting to measure genericness -that the results of the Jay Survey are, at best, inconclusive. Thus, the Court does not agree that the survey indicates that consumers "primarily" perceive PRETZEL CRISPS as a brand.foot_36 . . . . [67] In sum, considering all the available evidence, the Court, finds that, on balance, the survey evidence slightly favors 39 an affirmative finding that consumers primarily perceive PRETZEL CRISPS as a common or generic name. [68] Plaintiffs also offered evidence of Google searches and social media mentions on Twitter to support their position that PRETZEL CRISPS is not generic. . . . [69] However, the Court does not find either the Google search or the Twitter analysis persuasive on the issue of genericness. First, as discussed above, these searches have only a limited usefulness in establishing whether PRETZEL CRISPS is generic due to the more than a decade (and $50 million in advertising and marketing expenditures) that has passed since the challenged registration of the mark in 2005. Again, the repeated use of ordinary words cannot give a single company a proprietary right over those words, even if an association develops between the words and that company. Am. Online, 243 F.3d at 821. [70] Second, for the Google search, the same concerns that the Court expressed {in connection with media references} apply here as well. . . . Indeed, the vast bulk of the Google search results simply identify websites of large companies offering PRETZEL CRISPS for sale. (See Id. at 2 (Amazon.com,Walmart.com,etc.)). Again, there is no dispute that Plaintiffs have developed a very large business selling their pretzel product; however, the typical commercial sales efforts associated with that business-including the websites featured in the Plaintiffs' Google search, do not reflect consumer perceptions of genericness. Instead, to the extent they have relevance to this action at all, they may be mostly evidence of secondary meaning, an issue that the Court does not reach. Accordingly, the Court gives the Google results little weight. [71] Similarly, it is undisputed that Plaintiffs have developed a large social media presence as part of their marketing efforts. As of October 2018, the PRETZEL CRISPS brand had over 47,800 followers on Twitter. . . . [72] {M]erely referencing Plaintiffs or their hashtag does not necessarily make the use of "pretzel crisps" in a tweet a brand reference. As with the Google search results discussed above, use of the disputed product name in the normal course of business communications, here on Twitter, does not reveal whether or not a consumer understands the product name primarily as a brand or a type of goods. Instead, it just reflects consumer engagement with the product,foot_37 which, again, may be relevant to secondary meaning but not necessarily genericness. Simply put, it is unremarkable and unconvincing that communication about a product mentions the product name. And, because consumer perception of a term may be "mixed," that is, reflecting both generic use and brand awareness, see Booking.com,278 F.3d at 902, a bare reference to the product name does not answer the more difficult question before the Court of how consumers primarily perceive the term. So, after a de novo review of the evidence, the Court finds, for all the reasons discussed above, that Plaintiffs' evidence of Twitter communications is unpersuasive. [73] Finally, Plaintiffs argue that the availability of other product names for "pretzel cracker" snacks supports their claim that PRETZEL CRISPS is not generic. First, regardless of the availability of similar names for a product, a generic name cannot be registered as a trademark thereby granting exclusive use of the name of a product to a single company. See Ale House Mgmt., Inc. v. Raleigh Ale House, 205 F.3d 137, 141 (4th Cir. 2000) (affirming summary judgment finding term ALE HOUSE generic, while also noting alternative generic names like "bar," "lounge," "pub," "saloon," and "tavern"). . . . [74] Second, the Court does not find that the names suggested, while generic, are necessarily "equally acceptable" alternatives. For example, Plaintiffs claim that "pretzel thins" and "pretzel rounds" are equivalent generic names. However, "pretzel thins" is also a name used for regularly shaped thin pretzels and "pretzel rounds" is used for small, rounded pretzel pieces as well as snacks that look more like Plaintiff's "pretzel crisps" product. Therefore, a company could reasonably conclude that "pretzel crisps" is a better description for a small, rounded pretzel product. [75] Moreover, the absence of other companies using the name "pretzel crisps" to describe their products is neither "compelling evidence" as urged by Plaintiffs nor even surprising. As discussed above, Plaintiffs have aggressively "policed" the mark. Thus, the obvious reason no one else uses the name is they will be threatened with legal action. In such circumstances, the relative absence of competitive use of the name simply reflects a practical business judgment rather than any acknowledgement that "pretzel crisps" is not generic. [76] In conclusion, there is no dispute that Snack Factory Pretzel Crisps is a hugely successful product, due in no small part to Plaintiffs' extensive marketing efforts and the PRETZEL CRISPS trademark registration they received and have enforced to clear the field of similarly named products. However, no matter how much commercial success the product enjoys, Plaintiffs are not entitled to monopolize the common name of the product being sold. Summarizing the evidence on the genericness of the mark, considered as a whole, the Court finds that the combination of the acknowledged generic elements of the compound mark "yields no additional meaning to consumers capable of distinguishing the goods" and, independently, usage by competitors, media references and consumer surveys (as well as some use by Plaintiffs) reflects that, on balance, consumers primarily perceive "pretzel crisps" to be a common / generic name. Therefore, for all the reasons discussed above, the Court finds that Frito-Lay has carried its burden to prove by a preponderance of the evidence that PRETZEL CRISPS is a generic mark, and this Court will affirm the TTAB and order the cancellation of the registration of the mark. [1] Between February 29, 2012, andMarch 10, 2012, Chris Gillespie used a domain name registrar to acquire 763 domain names that included the word "google." Each of these domain names paired the word "google" with some other term identifying a specific brand, person, or product-for example, "googledisney.com," "googlebarackobama.net," and "googlenewtvs.com." [2] Google, Inc. ("Google") objected to these registrations and promptly filed a complaint with the National Arbitration Forum ("NAF"), which has authority to decide certain domain name disputes under the registrar's terms of use. Google argued that the registrations violate the Uniform Domain Name Dispute Resolution Policy, which is included in the registrar's terms of use, and amount to domain name infringement, colloquially known as "cybersquatting." Specifically, Google argued that the domain names are confusingly similar to the GOOGLE trademark and were registered in bad faith. The NAF agreed, and transferred the domain names to Google on May 10, 2012. [3] Shortly thereafter, David Elliott filed, and Gillespie later joined,foot_38 an action in the Arizona District Court. Elliott petitioned for cancellation of the GOOGLE trademark under the Lanham Act, which allows cancellation of a registered trademark if it is primarily understood as a "generic name for the goods or services, or a portion thereof, for which it is registered." 15 U.S.C. § 1064 (3). Elliott petitioned for cancellation on the ground that the word "google" is primarily understood as "a generic term universally used to describe the act[ ] of internet searching." [4] On September 23, 2013, the parties filed cross-motions for summary judgment on the issue of genericness. Elliott requested summary judgment because (1) it is an indisputable fact that a majority of the relevant public uses the word "google" as a verb-i.e., by saying "I googled it," and ( 2) verb use constitutes generic use as a matter of law. Google maintained that verb use does not automatically constitute generic use, and that Elliott failed to create even a triable issue of fact as to whether the GOOGLE trademark is generic. Specifically, Google argued that Elliott failed to present sufficient evidence to support a jury finding that the relevant public primarily understands the word "google" as a generic name for internet search engines. The district court agreed with Google and its framing of the relevant inquiry, and granted summary judgment in its favor. [5] Elliott raises two arguments on appeal. First, he argues that the district court misapplied the primary significance test and failed to recognize the importance of verb use. Second, he argues that the district court impermissibly weighed the evidence when it granted summary judgment for Google. We review the district court's grant of summary judgment de novo . . . . For the reasons described below, we reject both of Elliott's arguments and affirm summary judgment for Google. II. . . . . [6] Over time, the holder of a valid trademark may become a "victim of 'genericide. '" Freecycle Network, Inc. v. Oey, 505 F.3d 898, 905 (9th Cir. 2007) (quoting J. Thomas McCarthy, McCarthy on Trademarks andUnfair Competition § 12:1 (4th ed. 1998) [hereinafter McCarthy] ). Genericide occurs when the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source. For example, ASPIRIN, CELLOPHANE, and ESCALATOR were once protectable as arbitrary or fanciful marks because they were primarily understood as identifying the source of certain goods. But the public appropriated those marks and now primarily understands aspirin, cellophane, and escalator as generic names for those same goods. See Bayer Co. v. United Drug Co., 272 F. 505, 510 (S.D.N.Y. 1921);DuPont Cellophane Co. v. Waxed Prods. Co., 85 F.2d 75, 82 (2d Cir. 1936); Freecycle Network, Inc., 505 F.3d at 905. The original holders of the ASPIRIN, CELLOPHANE, and ESCALATOR marks are thus victims of genericide. [7] The question in any case alleging genericide is whether a trademark has taken the "fateful step" along the path to genericness. Ty Inc. v. Softbelly's Inc., 353 F.3d 528, 531 (7th Cir. 2003). The mere fact that the public sometimes uses a trademark as the name for a unique product does not immediately render the mark generic. See 15 U.S.C. § 1064 (3). Instead, a trademark only becomes generic when the "primary significance of the registered mark to the relevant public" is as the name for a particular type of good or service irrespective of its source. Id. [8] We have often described this as a "who-are-you/what-are-you" test. See Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 929 (9th Cir. 2005) (quoting Filipino Yellow Pages, Inc., 198 F.3d at 1147). . . . [9] On appeal, Elliott claims that he has presented sufficient evidence to create a triable issue of fact as to whether the GOOGLE trademark is generic, and that the district court erred when it granted summary judgment for Google. First, he argues that the district court erred because it misapplied the primary significance test and failed to recognize the importance of verb use. Specifically, he argues that the district court erroneously framed the inquiry as whether the primary significance of the word "google" to the relevant public is as a generic name for internet search engines, or as a mark identifying the Google search engine in particular. Instead, Elliott argues that the court should have framed the inquiry as whether the relevant public primarily uses the word "google" as a verb. [10] We conclude that Elliott's proposed inquiry is fundamentally flawed for two reasons. First, Elliott fails to recognize that a claim of genericide must always relate to a particular type of good or service. Second, he erroneously assumes that verb use automatically constitutes generic use. For similar reasons, we conclude that the district court did not err in its formulation of the relevant inquiry under the primary significance test. [11] First, we take this opportunity to clarify that a claim of genericide or genericness must be made with regard to a particular type of good or service. We have not yet had occasion to articulate this requirement because parties usually present their claims in this manner sua sponte. See,e.g.,Inc.,408 F.3d at 605 (claiming that "micro colors" is generic for micropigmentation services); Filipino Yellow Pages,Inc.,198 F.3d at 1146 (claiming that "Filipino Yellow Pages" is generic for "telephone directories targeted at the Filipino-American community"); Park 'N Fly, Inc., 718 F.2d at 330 (claiming that "Park 'N Fly" is generic for airport parking lots). But here, Elliott claims that the word "google" has become a generic name for "the act" of searching the internet, and argues that the district court erred when it focused on internet search engines. We reject Elliott's criticism and conclude that the district court properly recognized the necessary and inherent link between a claim of genericide and a particular type of good or service. [12] This requirement is clear from the text of the Lanham Act, which allows a party to apply for cancellation of a trademark when it "becomes the generic name for the goods or services . . . for which it is registered." 15 U.S.C. § 1064(3) (emphasis added). The Lanham Act further provides that "[i]f the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. " Id. (emphasis added). Finally, the Lanham Act specifies that the relevant question under the primary significance test is "whether the registered mark has become the generic name of [certain] goods or services. " Id. (emphasis added). In this way, the Lanham Act plainly requires that a claim of genericide relate to a particular type of good or service. [13] We also note that such a requirement is necessary to maintain the viability of arbitrary marks as a protectable trademark category. By definition, an arbitrary mark is an existing word that is used to identify the source of a good with which the word otherwise has no logical connection. See JL Beverage Co., 828 F.3d at 1107. If there were no requirement that a claim of genericide relate to a particular type of good, then a mark like IVORY, which is "arbitrary as applied to soap," could be cancelled outright because it is "generic when used to describe a product made from the tusks of elephants." Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 n.6 (2d Cir. 1976). This is not how trademark law operates: Trademark law recognizes that a term may be unprotectable with regard to one type of good, and protectable with regard to another type of good. In this way, the very existence of arbitrary marks as a valid trademark category supports our conclusion that a claim of genericide must relate to a particular type of good or service. [14] Second, Elliott's alternative inquiry fails because verb use does not automatically constitute generic use. Elliott claims that a word can only be used in a trademark sense when it is used as an adjective. He supports this claim by comparing the definitions of adjectives and trademarks, noting that both adjectives and trademarks serve descriptive functions. [15] Once again, Elliott's semantic argument contradicts fundamental principles underlying the protectability of trademarks. When Congress amended the Lanham Act to specify that the primary significance test applies to claims of genericide, it specifically acknowledged that a speaker might use a trademark as the name for a product, i.e., as a noun, and yet use the mark with a particular source in mind, i.e., as a trademark. It further explained that: A trademark can serve a dual function-that of [naming] a product while at the same time indicating its source. Admittedly, if a product is unique, it is more likely that the trademark adopted and used to identify that product will be used as if it were the identifying name of that product. But this is not conclusive of whether the mark is generic. S. Rep. No. 98-627, at 5 (1984). In this way, Congress has instructed us that a speaker might use a trademark as a noun and still use the term in a source-identifying trademark sense. [16] Moreover, we have already implicitly rejected Elliott's theory that only adjective use constitutes trademark use. In Coca-Cola Co. v. Overland, Inc., 692 F.2d 1250(9th Cir. 1982), the Coca-Cola Company sued a local restaurant for trademark infringement because its servers regularly and surreptitiously replaced customer orders for "a coke" with a non-Coca-Cola beverage. Id. at 1252. The restaurant defended on the basis of genericide, arguing that the COKE trademark had become a generic name for all cola beverages. Id. at 1254. To support its claim, the restaurant presented employee affidavits stating that the employees believed that customers who ordered "a coke" were using the term in a generic sense. Id. We rejected these affidavits because they were not based on personal knowledge. More significant to the issue at hand, we also noted that the mere fact that customers ordered "a coke," i.e., used the mark as a noun, failed to show "what . . . customers [were] thinking," or whether they had a particular source in mind. Id. at 1255. [17] If Elliott were correct that a trademark can only perform its source-identifying function when it is used as an adjective, then we would not have cited a need for evidence regarding the customers' inner thought processes. Instead, the fact that the customers used the trademark as a noun and asked for "a coke" would prove that they had no particular source in mind. In this way, we have implicitly rejected Elliott's theory that a trademark can only serve a source-identifying function when it is used as an adjective. [18] For these reasons, the district court correctly rejected Elliott's theory that verb use automatically constitutes generic use. 3 Moreover, the district court aptly coined the terms "discriminate verb" and "indiscriminate verb" in order to evaluate Elliott's proffered examples of verb use and determine whether they were also examples of generic use. Although novel, these terms properly frame the relevant inquiry as whether a speaker has a particular source in mind. We have already acknowledged that a customer might use the noun "coke" in an indiscriminate sense, with no particular cola beverage in mind; or in a discriminate sense, with a Coca-Cola beverage in mind. In the same way, we now recognize that an internet user might use the verb "google" in an indiscriminate sense, with no particular search engine in mind; or in a discriminate sense, with the Google search engine in mind. [19] Because a claim of genericide must relate to a particular type of good or service and because verb use does not necessarily constitute generic use, the district court did not err when it refused to frame its inquiry as whether the relevant public primarily uses the word "google" as a verb. Moreover, the district court correctly framed its inquiry as whether the primary significance of the word "google" to the relevant public is as a generic name for 3 We acknowledge that if a trademark is used as an adjective, it will typically be easier to prove that the trademark is performing a source-identifying function. If a speaker asks for "a Kleenex tissue," it is quite clear that the speaker has a particular brand in mind. But we will not assume that a speaker has no brand in mind simply because he or she uses the trademark as a noun and asks for "a Kleenex." Instead, the party bearing the burden of proof must offer evidence to support a finding of generic use. See McCarthy § 12:8 ("The fact that buyers or users often call for or order a product by a [trademark] term does not necessarily prove that that term is being used as a 'generic name.' "). internet search engines or as a mark identifying the Google search engine in particular. We therefore evaluate Elliott's claim of genericide and the sufficiency of his proffered evidence under the proper inquiry. B. [20] Elliott next argues that the district court must have impermissibly weighed the evidence when it granted summary judgment for Google in light of the "sheer quantity" of evidence that Elliott produced to support his claim of genericide. See Jesinger v. Nev. Fed. Credit Union, 24 F.3d 1127, 1131(9th Cir. 1994) (noting that a court "must not weigh the evidence" at summary judgment). We disagree. Instead, we conclude that Elliott's admissible evidence is largely inapposite to the relevant inquiry under the primary significance test because Elliott ignores the fact that a claim of genericide must relate to a particular type of good or service. [21] A party applying for cancellation of a registered trademark bears the burden of proving genericide by a preponderance of the evidence. Anti-Monopoly, Inc. v. Gen. Mills Fun Grp., 684 F.2d 1316, 1319(9th Cir. 1982). Moreover, the holder of a registered trademark benefits from a presumption of validity and has "met its [initial] burden of demonstrating" the lack of "a genuine issue of material fact" regarding genericide. Coca-Cola Co., 692 F.2d at 1254. Therefore, in light of the relevant inquiry under the primary significance test, Elliott was required to identify sufficient evidence to support a jury finding that the primary significance of the word "google" to the relevant public is as a name for internet search engines generally and not as a mark identifying the Google search engine in particular. [22] At summary judgment, the district court assumed that a majority of the public uses the verb "google" to refer to the act of "searching on the internet without regard to [the] search engine used." 4 In other words, it assumed that a majority of the public uses the verb "google" in a generic and indiscriminate sense. The district court then concluded that this fact, on its own, cannot support a jury finding of genericide under the primary significance test. We agree. [23] As explained above, a claim of genericide must relate to a particular type of good. Even if we assume that the public uses the verb "google" in a generic and indiscriminate sense, this tells us nothing about how the public primarily understands the word itself, irrespective of its grammatical function, with regard to internet search engines. As explained below, we also agree that Elliott's admissible evidence only supports the favorable but insufficient inference already drawn by the district court-that a majority of the public uses the verb "google" in a generic sense. Standing in isolation, 5 this fact is insufficient to support a jury finding of genericide. The district court therefore properly granted summary judgment for Google. [24] We begin with Elliott's three consumer surveys. . . . Here, the district court properly excluded two of Elliott's consumer surveys because they were not conducted according to accepted principles. Specifically, these surveys were designed and conducted by Elliott's counsel, who is not qualified to design or interpret surveys. . . . [25] The district court properly considered only Elliott's third survey, which was conducted by James Berger-a qualified survey expert. Elliott's third survey is a "Thermos" survey, which generally "puts the respondent in an imaginary situation . . . and asks how the respondent would ask" for the type of good for which the trademark is alleged to be generic. McCarthy § 12:15 (citing Am. Thermos Prods. Co. v. Aladdin Indus., 207 F.Supp. 9, 21-22 (D. Conn. 1962), aff'd, 321 F.2d 577 (2d Cir. 1963)). Here, Berger asked 251 respondents: "If you were going to ask a friend to search for something on the Internet, what word or phrase would you use to tell him/her what you want him/her to do?" Over half of the 251 respondents answered this question by using the word "google" as a verb. [26] Although verb use does not automatically constitute generic use, the district court allowed Berger to rely on the third survey to offer his expert "opinion that a majority of the public uses the word google as a [generic and indiscriminate] verb to mean search on the internet." In this way, Elliott's admissible consumer survey evidence goes no further than supporting the favorable inference already drawn by the district court. 7 [27] We next consider Elliott's examples of alleged generic use by the media and by consumers. Documented examples of generic use might support a claim of genericide if they reveal a prevailing public consensus regarding the primary significance of a registered trademark. . . . However, if the parties offer competing examples of both generic and trademark use, this source of evidence is typically insufficient to prove genericide. See id. [28] Initially, we note that Elliott's admissible examples are only examples of verb use. To repeat, verb use does not automatically constitute generic use. For instance, Elliott purports to offer an example of generic use by T-Pain, a popular rap music artist. But we will support a finding of genericide when it is unaccompanied by evidence regarding the primary significance of the mark as a whole. 7 The district court also considered a fourth survey. Although Google already benefits from a presumption against genericide, see Coca-Cola Co., 692 F.2d at 1254, Google offered a "Teflon" survey to prove that the GOOGLE mark is not generic. A Teflon survey begins with a brief lesson explaining the difference between brand names and common names. It then asks respondents to classify a series of words, including the trademark at issue, as either brand names or common names. E. I. DuPont de Nemours & Co. v. Yoshida Int'l, Inc., 393 F.Supp. 502, 526-27 (E.D.N.Y. 1975). In response to Google's Teflon survey, a little over 93% of respondents classified "Google" as a brand name. Most respondents also classified "Coke," "Jello," "Amazon," and "Yahoo!" as brand names, and classified "Refrigerator," "Margarine," "Browser," and "Website" as common names. Unlike Elliott's Thermos survey, Google's Teflon survey offers comparative evidence as to how consumers primarily understand the word "google" irrespective of its grammatical function. not assume that T-Pain is using the word "google" in a generic sense simply because he tells listeners to "google [his] name." T-Pain, Bottlez, on rEVOLVEr (RCA Records 2011). Without further evidence regarding T-Pain's inner thought process, we cannot tell whether he is using "google" in a discriminate or indiscriminate sense. In this way, many of Elliott's admissible examples do not even support the favorable inference that a majority of the relevant public uses the verb "google" in a generic sense. [29] Elliott also attempted to offer clear examples of indiscriminate verb use by the media and by consumers. For example, in response to Google's motion for summary judgment, he produced a transcript from an episode of a German television show in which a character claims to have "googled at Wikipedia." Elliott also produced examples in which the media uses phrases like "googled on ebay," "googled on facebook," and "googled on pinterest." Finally, Elliott produced evidence suggesting that certain consumers claimed that they accessed a website by "googling" it, even though those consumers actually accessed the website through a non-Google search engine. [30] The district court properly excluded these examples of indiscriminate verb use because they were not disclosed during discovery and because Elliott failed to show that his delay was "substantially justified or . . . harmless." Fed. R. Civ. P. 37(c) (1). Moreover, even if these examples had been timely disclosed, they are largely irrelevant because they only support the favorable inference already drawn by the district court. {The court then considered Elliott's proferred expert testimony and dictionary evidence and concluded that each only supports favorable inference already drawn by the district court.} [31] Next, we consider Elliott's claim that Google has used its own trademark in a generic sense. Generic use of a mark by the holder of that mark can support a finding of genericide. See McCarthy § 12:13. However, Elliott has not presented an example of generic use by Google. Instead, Elliott has presented an email from Google cofounder Larry Page, which encourages recipients to "[h]ave fun and keep googling!" Once again, Elliott relies on an example of verb use. Elliott has not shown, nor is it likely that he could show, that the cofounder of Google had no particular search engine in mind when he told recipients of the "Google Friends Newsletter" to "keep googling."foot_41 [32] Finally, we consider Elliott's claim that there is no efficient alternative for the word "google" as a name for "the act" of searching the internet regardless of the search engine used. Once again, a claim of genericide must relate to a particular type of good or service. In order to show that there is no efficient alternative for the word "google" as a generic term, Elliott must show that there is no way to describe "internet search engines" without calling them "googles." Because not a single competitor calls its search engine "a google," and because members of the consuming public recognize and refer to different "internet search engines," Elliott has not shown that there is no available substitute for the word "google" as a generic term. Compare, e.g., Q-Tips, Inc. v. Johnson & Johnson, 108 F.Supp. 845, 863 (D.N.J. 1952) (concluding that "medical swab" and "cotton-tipped applicator" are efficient alternatives for Q-Tips); with Bayer Co., 272 F. at 505 (concluding that there is no efficient substitute for the generic term "aspirin" because consumers do not know the term "acetyl salicylic acid"); see also Softbelly's Inc.,353 F.3d at 531 (explaining that genericide does not typically occur "until the trademark has gone so far toward becoming the exclusive descriptor of the product that sellers of competing brands cannot compete effectively without using the name"). [33] Elliott cannot survive summary judgment based on "sheer quantity" of irrelevant evidence. We agree with the district court that, at best, Elliott has presented admissible evidence to support the inference that a majority of the relevant public uses the verb "google" in a generic sense. Because this fact alone cannot support a claim of genericide, the district court properly granted summary judgment for Google. . . . . WATFORD, Circuit Judge, concurring: [34] I join the court's well-reasoned opinion with one caveat. To resolve this appeal, we need not decide whether evidence of a trademark's "indiscriminate" verb use could ever tell us something about whether the public primarily thinks of the mark as the generic name for a type of good or service. Maj. op. at 1159-60. To the extent the court's opinion can be read as taking a position on that question, I decline to join that aspect of its reasoning. [35] We don't need to resolve whether evidence of indiscriminate verb use is categorically irrelevant in an action alleging that a trademark has become generic because, on this record, no rational jury could find in the plaintiffs' favor even taking into account the flimsy evidence of indiscriminate verb use they produced. In support of its motion for summary judgment, Google produced overwhelming evidence that the public primarily understands the word "Google" as a trademark for its own search engine, not the name for search engines generally. In Google's consumer survey, 93% of respondents identified "Google" as a brand name, rather than a common name for search engines. In every dictionary in the record, the first entry for "Google" or "google" refers to Google's search engine. Google extracted concessions from the plaintiffs' expert linguists that Google functions as a trademark for Google's search engine. Google also submitted evidence showing that it uses its trademark to refer only to its own search engine, that it polices infringement by others, and that its competitors refrain from using the trademark to refer to their own search engines. Finally, Google offered evidence showing that major media outlets use "Google" to refer exclusively to Google's search engine. [36] In response, the plaintiffs produced thousands of pages of largely irrelevant evidence showing merely that "google" is sometimes used as a verb. The sliver of potentially relevant evidence purporting to show that the public uses the verb "google" to refer to searching the Internet with any search engine (as opposed to Google's search engine in particular) is too insubstantial to save the plaintiffs' case. For example, the plaintiffs point to their Thermos survey, in which respondents were asked what word or phrase they would use to ask a friend to search for something on the Internet. Most respondents answered either "google," "google it," "google something," "google this," "google search," or "bring up google." However, those answers share the same problem that the court identifies with almost all of the plaintiffs' evidence, such as the rapper T-Pain's lyric telling his listeners to "google my name." That is, without more context, we simply can't tell whether the survey respondents were referring to searching the Internet with Google's search engine or with any search engine generally. [37] At most, with respect to evidence that the public employs the verb "google" without regard to the search engine used, the plaintiffs have mustered secondary definitions from a few dictionaries and expert testimony from their linguists. Whatever this evidence might suggest about the use of "google" as a verb, no rational jury could rely on it to find, on this record, that the word has become the generic name for Internet search engines. As already mentioned, these dictionaries' primary definitions of the word uniformly refer to Google's own search engine. And the expert linguists conceded in their depositions that, despite their opinion that "google" is used in verb form without regard to a specific search engine, the term has not become a generic name for search engines. [38] There may never be a case that turns on evidence that a trademark is commonly used as a verb to refer to use of a type of good or service, as opposed to use of the particular product for which the trademark is registered. But if such a case were to arise, it's not obvious to me that a jury should be foreclosed from relying on the way the public uses the word as a verb to decide whether the public also thinks of the mark as the generic name for the type of good or service. The way we use words as verbs is often related to how we use those words as adjectives or nouns, such that evidence of indiscriminate verb use could potentially be relevant in deciding whether a trademark has become the generic name for a type of good or service. To the extent the court's opinion can be read to foreclose the consideration of such evidence as a matter of law, I decline to join it. What is the appropriate level of abstraction? With respect to the genus/species distinction, how does one establish the appropriate level of abstraction at which one defines the genus, the species, and even the subspecies (or, for that matter, the family above the genus)? What prevents a plaintiff from claiming that the genus is, for example, beer, and the plaintiff merely wants rights in the name of a species of beer, which is "light beer" ? See Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75 (7th Cir. 1977) (finding LIGHT and LITE for beer to be generic). In a thoughtful opinion, Magistrate Judge Steve Kim of the Central District of California cited approvingly an additional way of thinking about generic versus non-generic designations: Because ''conceptually'' consumers do an ''aisle search'' for ''the type of good they want'' in the market and a ''shelf search'' for ''the particular brand of that good,'' the ''genericism inquiry is therefore about assessing terms to determine whether they are related to an aisle search or a shelf search.' ' Laura A. Heymann, Trademarks in Conversation: Assessing Genericism After Booking.com, 39 Cardozo Arts & Ent. L.J. 955, 958 (2021). ''Competitors, for their part, need to be able to use the term that will allow them to be grouped with comparable goods in the aisle search and to use trademarks as one method of winning the competition in the shelf search.' ' Id.> Snap Inc. v. Vidal, 750 F.Supp.3d 1120, 1139-40 n. 12 (C.D. Cal. 2024). 3. Surveying for genericism: the "Thermos" survey method. In American Thermos Products Co. v. Aladdin Industries, Inc., 207 F. Supp. 9 (D. Conn. 1962), aff'd, 321 F.2d 577 (2d Cir. 1963), the defendant argued that the term "thermos" had lost its significance as a designation of source and become a generic term for vacuum-insulated containers. To support this argument, the defendant submitted a survey whose method has been copied in many subsequent genericism cases. See, e.g., E.T. Browne Drug Co. v. Cococare Products, Inc., 538 F.3d 185, 87 U.S.P.Q.2d 1655(3d Cir. 2008) (evaluating Thermos-type survey). See also MCCARTHY § 12:15. In essence, a Thermos survey (1) asks the survey respondent whether they are familiar with the general product at issue (e.g., "the type of container that is used to keep liquids, like soup, coffee, tea and lemonade, hot or cold for a period of time"), ( 2) asks the respondent to imagine him/herself walking into a store and asking for that product, and then (3) inquires "What would you ask for-that is, what would you tell the clerk you wanted?" The survey will then typically ask some form of the question "Can you think of any other words that you would use to ask for the product?" In American Thermos Products, 75% of the 3,300 respondents answered "Thermos" to the "what would you ask for" question. American Thermos Products, 207 F. Supp. at 21-22. The court found that the term "thermos" had become generic for vacuum-insulated bottles. The Thermos survey method has been criticized on the ground that "for a very strong trademark, respondents with brand loyalty may answer with the trademark and drop what they consider to be a generic name, because it's so obvious to them." MCCARTHY § 12:15. Imagine you walk into a fast food restaurant in order to purchase a carbonated cola-flavored beverage. What would you ask for? What do you think the results of such a survey of 100 respondents would be, and do they support McCarthy's criticism? 4. Surveying for genericism: the "Teflon" survey method. In E. I. DuPont de Nemours & Co. v. Yoshida International, Inc., 393 F. Supp. 502 (E.D.N.Y. 1975), Dupont, producer of TEFLON resins, brought a trademark action against the defendant Yoshida, producer of EFLON zippers. In response to Yoshida's argument that TEFLON had become generic, DuPont submitted two surveys, one of which was a telephone survey in which respondents were first given what was essentially a mini-course in the difference between "brand names" and "common names" and then asked if "teflon" was a brand name or a common name. Now, would you say ---is a brand name or a common name? MCCARTHY § 12:16. In one evening, 514 men and 517 women were surveyed in 20 cities. The survey results were as follows: Interestingly, Yoshida submitted a Thermos survey to support its claim that TEFLON had become generic. As the court explained, this survey was conducted among adult women, 90.6% of whom expressed awareness of 'kitchen pots and pans that have their inside surfaces coated by chemical substances to keep grease or food from sticking to them.' Of the aware respondents, 86.1% apparently mentioned only 'TEFLON' or 'TEFLON II' [DuPont's mark for an improved means of applying its resin to metal surfaces] as their sole answer when asked, 'What is the name . . . or names of these pots and pans . . .?' Further, 71.7% of the aware women gave only 'TEFLON' or 'TEFLON II' as the name they would use to describe the pots and pans to a store clerk or friend. Nemours & Co.,393 F.Supp. at 525. The court ultimately found DuPont's brand name vs. common name survey to be the more persuasive. In Yoshida's Thermos survey (as in other surveys in the case not discussed here), the court found, "respondents were, by the design of the questions, more often than not focusing on supplying the inquirer a 'name', without regard to whether the principal significance of the name supplied was 'its indication of the nature or class of an article, rather than an indication of its origin.'" Id. at 527 (quoting King-Seeley Thermos Co., 321 F.2d at 580). Only DuPont's brand name vs. common name survey really gets down to the critical element of the case. . . . {T}he responses of the survey reveal that the public is quite good at sorting out brand names from common names, and, for TEFLON, answers the critical question left unanswered by the ambiguities inherent in {the other surveys]-that of the principal significance of the TEFLON mark to the public. Not only have defendants failed to show that TEFLON's principal significance is as a common noun, plaintiff has succeeded in showing it to be a 'brand name'-an indicator, in the words of DuPont's questionnaire, of a product 'made by one company.'" E. I. DuPont de Nemours & Co., 393 F.Supp. at 527. Do you agree that the Teflon survey method is superior to the Thermos survey method for assessing whether a mark is generic? 5. What proportion of relevant consumers is sufficient to qualify the asserted mark as nongeneric? In keeping with the statutory language that "[t]he primary significance of the registered mark to the relevant public . . . shall be the test for determining whether the registered mark has become the generic name of goods or services," 15 U.S.C. § 1064(3), courts generally require that survey evidence show that a majority of consumers, i.e., above 50%, recognize the asserted mark as a designation of source rather than a generic term. See MCCARTHY § 12:6. Interprofession du Gruyere v. U. S. Dairy Exp. Council, 61 F.4th 407, 416 n. 4 (4th Cir. 2023);Freecycle Network, Inc. v. Oey, 505 F.3d 898, 905 (9th Cir. 2007). Cf. Murphy Door Bed Co. v. Interior Sleep Sys., Inc., 874 F.2d 95, 101 (2d Cir. 1989) ("substantial majority"). 6. Surveying for genericism: secondary meaning surveys? In a portion of the Snyder's Lance opinion not excerpted above, the district court quoted and endorsed the TTAB's analysis of a secondary meaning survey that Princeton Vanguard had submitted in an effort to prove that PRETZEL CRISPS had acquired secondary meaning. The TTAB interpreted the survey evidence rather differently. As quoted by the Snyder's Lance district court, the TTAB explained: The {Mantis Survey} was conducted via online participation, between August 26 and August 30, 2011. There were 400 survey participants. Respondents were invited by email to participate in the survey and were told it was about "salty snack foods." Individuals were then asked prescreening questions. To be included in the survey, individuals had to, among other things, be the "primary grocery shopper," be "between the ages of 24 and 39," and "have purchased crackers and pretzels in the past month and will purchase crackers and pretzels in the next month." Survey respondents were informed during the screening process about the difference between "brand" and "common" names and then allowed to proceed with the survey only if they correctly associated BAKED TOSTITOS with "only one company" and TORTILLA CHIPS with "more than one company." For those who proceeded with the study, two control names were given, and the same questions were asked. The results are shown as follows: Based on the survey, Mr. Mantis found that 38.7% of the respondents associated the name "PRETZEL CRISPS" with only one company. On that basis, he stated: "It is my opinion that the name 'PRETZEL CRISPS,' used in conjunction with a salty snack food product, has acquired secondary meaning." Plaintiff retained Dr. Ivan Ross to rebut the findings of Mr. Mantis. Keeping in mind that the rebuttal was as to a survey offered to show acquired distinctiveness, Dr. Ross' main objection to the Mantis survey is that although Mr. Mantis said that he conducted the survey for the purpose of establishing secondary meaning, Mr. Mantis's methodology actually analyzes genericness. Plaintiff specifically argues that the Mantis survey was conducted in the manner of a Teflon-style survey, in that participants were asked whether they associate each term with one company or with more than one company. In this regard, during the initial mini-course, participants were specifically instructed as to the differences between "brand" and "common" names: Some names are brand names. A brand name refers to a product associated with one particular company. Other names are common names. A common name refers to a type of product associated with more than one company. As such, participants were told that if they associated a term with "one particular company" then it is a "brand name," and vice-versa. With this instruction given to all participants in the survey, we find it logical to consider all those who said they associated the term "PRETZEL CRISPS" with "one particular company" thus also found the term "PRETZEL CRISPS" to be a "brand name" rather than a "common name," and that all those who said they associated the term "PRETZEL CRISPS" with "more than one company" thus also found the term "PRETZEL CRISPS" to be a "common name" rather than a "brand name." In this regard, only 38.7% of participants, which is rather less than 50%, found the term to be a brand name. Accordingly, we find that although the Mantis survey was conducted and offered for the purpose of showing secondary meaning, if we had considered the other two surveys on the question of genericness, the Mantis survey should also have been considered on the issue of genericness. Since substantially less than half of the Mantis survey respondents associated the term "PRETZEL CRISPS" with a single source, this survey weighs in favor of finding genericness. We note, in this regard, that even if we were to split the 13.5% percent of "don't know" responses, as suggested by Defendant with regard to the Simonson survey, then adding 6.75% to each of the "only one company" and "more than one company" tallies, we still have less than a majority who associate the term with one company, and more than half who associate the term with more than one company, and so we have the same result. Snyder 's Lance, Inc. v. Frito-Lay North America, Inc., 542 F.Supp.3d 371, 402-03 (2021) (quoting Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 124 U.S.P.Q.2d 1184, 1191-1201(TTAB 2017)). The edited-down version of Synder's Lance appearing above does not include the court's detailed review of the plaintiff's own attempts to read and classify each of the thousands of media, Google, and social media references to "pretzel crisps." In essence, the plaintiff had attempted to develop "corpus linguistics evidence" (empirical data derived from very large, systematic collections of human-authored texts, or corpora) to show non-genericness. But the plaintiff used non-attorney, administrative employees of its law firm to develop this evidence. The court was highly critical of this effort on the ground, among others, that the law firm employees did not explain how they reached their decisions and often failed to record how they classified particular uses. An emerging mode of genericism evidence seeks to overcome these kinds of objections to corpus linguistics evidence by employing credentialed linguists to prepare reports that classify all relevant uses of a term in a corpus. See James A. Heilpern et al., Going Generic: A Linguistics Approach to Genericide in Trademark Law, 50 BYU L. REV. 81 (2024). For an example of the use of machine-learning methods to classify corpus usages, see Barton Beebe, Sibo Ma, & Julian Nyarko, "Benchmarking Trademark Genericide" (working paper, June 14, 2026). 8. Is WINDOWS for a computer operating system generic? On December 20, 2011, Microsoft filed suit against Lindows.com ("Lindows") alleging that Lindows' mark LINDOWS for a Linuxbased operating system infringed Microsoft's WINDOWS mark. Lindows argued that WINDOWS was generic at the time that Microsoft first began to use it in 1985. In Microsoft Corp. v. Lindows.com, Inc., No. 01 Civ. 2115C, 2002WL 31499324 (W.D.Wash., Mar. 15, 2002), the district court denied Microsoft's motion for a preliminary injunction, finding that there were "serious questions regarding whether Windows is a non-generic name and thus eligible for the protections of federal trademark law." Id. at *18. The case eventually settled-with Microsoft agreeing to pay Lindows $20 million to change its name (to Linspire) and cease using the LINDOWS mark on any of its products. After Booking.com, would a secondary meaning survey showing that an otherwise generic term has substantial secondary meaning be enough to justify a finding that the mark is not generic? For example, if a litigant can produce a survey showing that 60% of consumers believe the term WINDOWS for computer operating systems is used by only one company, should that justify a finding of distinctiveness? 9. Usage policies. Owners of very well-known marks are especially wary of their marks' falling prey to genericide through widespread generic usage. They typically develop and seek to enforce strict policies on how their marks are used. See, e.g., Google, Rules for proper usage, http://www.google.com/permissions/trademark/rules.html ("Use a generic term following the trademark, for example: GOOGLE search engine, Google search, GOOGLE web search"; "Use the trademark only as an adjective, never as a noun or verb, and never in the plural or possessive form."; "If you do not capitalize the entire mark, always spell and capitalize the trademark exactly as they are shown in the Google Trademarks and Suggested Accepted Generic Terms."). 10. Source-denotative in American English, but generic elsewhere? Sheepskin boots with a tanned outer surface, fleece interior, and synthetic soles are generically known as "ugg boots" or "uggs" in Australia and New Zealand, where they were originally developed and where a variety of companies use the term "ugg" to describe the boots they manufacture. In the United States, by contrast, UGG is a registered trademark for such boots, owned by Deckers Outdoor Corp. (U. S. Trademark Reg. No. 4,234,396, Oct. 30, 2012). When an Australian company sought to sell what it called "ugg boots" in the United States, Deckers sued. The Australian company argued that the term was generic. It lost. In granting summary judgment to Deckers on the issue, the court explained: Australian Leather has evidence that ugg is generic in Australia, but there is no evidence that Americans familiar with Australian usage (or Australian visitors to the United States) would be misled into thinking that there is only one brand of ugg-style sheepskin boots available in this country. Australian Leather needed to come forward with some evidence that would allow a jury to conclude that the term ugg has a generic meaning to buyers in the United States; its Australian and surf-shop evidence does not suffice. Corp. v. Australian Leather Pty. Ltd., 340 F. Supp. 3d 706, 716 (N.D. Ill. 2018). For an interesting comparison, the Swiss and French associations representing the makers of Gruyère cheese filed in 2015 an application at the PTO to register the term GRUYERE (without the accent) as a certification mark. GRUYÈRE is a protected geographic indication in the European Union and Switzerland. Various American dairy interests opposed the registration. The TTAB refused registration on the ground that the term was generic. It found that American consumers "understand the term 'gruyere' as a designation that primarily refers to a category within the genus of cheese that can come from anywhere." Int'l Dairy Foods Ass'n v. Interprofession Du Gruyere, 2020 TTAB LEXIS 268, *82, 2020 U.S.P.Q.2D 10892 (TTAB August 5, 2020). What about "Coke" in the American South? See Valerie Fraser Luesse, Why Southerners Refer to All Soft Drinks as 'Coke,' SOUTHERN LIVING, June 22, 2025 ("Native Texans (like most native Southerners) call all soft drinks 'coke'-a generic use of Coke.") Should regional genericness make any difference? 11. Can a color be generic? In Milwaukee Electric Tool Corp. v. Freud America, Inc., Cancellation Nos. 92,059,634 & 92,059,637 (TTAB Dec. 2, 2019) [precedential], the TTAB found that the color red was generic when covering the surface of saw blades: This evidence overwhelmingly demonstrates that the color red on saw blades is so common in the industry that it cannot identify a single source for saw blades for power woodworking machines or saw blades for reciprocating power saws. What is more, because the evidence establishes that the color red was widely used by others at the time Freud filed the underlying applications for each of its subject registrations and third-party use continues to the present day, the color red was generic for power saw blades when Freud applied for both of its marks and remains so now. Id. at *67. See also In re PT Medisafe Techs., 134 F.4th 1368(Fed. Cir. 2025) (finding the color dark green to be generic for medical gloves). Most commentators would likely agree with the proposition that "[g]enericness seems . . . to be the wrong pigeonhole for a proposed color mark." John L. Welch, Precedential No. 37: TTAB Rules that the Color Red is Generic for Saw Blades, THE TTABLOG, Dec. 9, 2019. But what other options are available in trademark doctrine to deny protection to such marks? 12. Can a product shape be generic? In In re Jasmin Larian, LLC, 2022 TTAB LEXIS 99 (TTAB Jan. 19, 2022) [precedential], the applicant sought to register as a trademark the configuration of its "Ark" handbag, shown below. The TTAB held that the configuration had long since become a commonplace design originating from multiple sources and was thus generic. It reasoned: "In the context of product design, genericness may be found where the design is so common in the industry that it cannot be said to identify a particular source. " Id. at *8. See also Deckers Outdoor Corp. v. Last Brand, Inc., No. 23 Civ. 04850, 2025WL 2822685, at *4 (N.D. Cal. Oct. 2, 2025) (finding certain Ugg boot designs to be generic). In recent years, trademark applicants have increasingly sought to register cultural memes or other commonplace slogans as trademarks for various merchandise. The PTO has rejected such applications on the ground that the applied-for marks are not perceived by consumers as designations of source. See, e.g., In re Texas With Love, LLC, Serial No. 87793802 (TTAB October 29, 2020) [precedential] (refusing to register TEXAS LOVE for "hats, shirts" on ground that because the phrase "only serves as an expression of a concept or sentiment, and is widely used by third parties, it would not be perceived as an indicator of source in the context of Applicant's identified goods."); In re Gillard, Serial No. 87469115 (TTAB Jan. 11, 2019) (not citable as precedent) (refusing application of one John Gillard to register #COVFEFE on ground that "because hashtags are commonly employed to facilitate categorization and searching of topics of public discussion, and the record makes it clear that #COVFEFE has served that purpose in promoting discussion of the mystery word in the President's tweet, the public will not understand #COVFEFE to identify one, and only one, source of clothing, and to recognize Applicant as that source, when it appears on Applicant's goods"); PTO Office Action, U.S. Application Serial No. 86,506,015, Mar. 25, 2015 (refusing registration of JE SUIS CHARLIE for various goods on ground that " [b]ecause consumers are accustomed to seeing this slogan or motto commonly used in everyday speech by many different sources, the public will not perceive the motto or slogan as a trademark that identifies the source of applicant's goods but rather only as conveying an informational message"); PTO Office Action, U.S. Application No. 88579771, Sept. 11, 2019 (refusing basketball player LeBron James's application to register TACO TUESDAY in connection with podcasting and other related goods and services); PTO Office Action, U.S. Application No. 86,479,784, Mar. 4, 2015 (refusing registration of I CAN'T BREATHE for clothing). In the opinion below, the Federal Circuit affirmed the TTAB's refusal to register the mark EVERYBODY VS RACISM. In failure to function analysis, are courts essentially engaging in a secondary meaning analysis or are their concerns broader? In re GO & Associates, LLC 90 F.4th 1354 (Fed. Cir. 2024) Lourie, Circuit Judge. [1] GO & Associates, LLC ("GO") appeals from a decision of the United States Trademark Trial and Appeal Board ("the Board") affirming the examining attorney's final refusal to register GO's applied-for mark: "EVERYBODY VS RACISM." In re GO & Assocs., LLC, No. 88944728, 2022WL 1421542 (T.T.A.B. Apr. 20, 2022) ("Decision"). Because substantial evidence supports the Board's conclusion, we affirm. BACKGROUND [2] On June 2, 2020, GO filed an application seeking registration on the principal register of "EVERYBODY VS RACISM" in standard characters. It identified the goods and services as: T-shirts, hoodies as clothing, tops as clothing, bottoms as clothing, and head wear; and Promoting public interest and awareness of the need for racial reconciliation and encouraging people to know their neighbor and then affect change in their own sphere of influence. [3] In a non-final office action, the examining attorney refused to register the mark because it failed to function as a source identifier for GO's goods and services. Rather, the examining attorney observed, the mark was "an informational social, political, religious, or similar kind of message that merely conveys support of, admiration for, or affiliation with the ideals conveyed by the message." As support for the refusal, the examiner cited dozens of examples of the mark being used in informational (rather than source-identifying) ways. For example, the examiner provided evidence that the mark had been used by referees in the National Basketball Association; in titles of rap songs, podcasts, church sermons, and YouTube videos; and on various articles of clothing. See J.A. at 43-96 (cited evidence). [4] GO responded by arguing that its uses of the mark were source-identifying, while those relied upon by the examining attorney were "merely ornamental third party uses of EVERYBODY VS RACISM on clothing," which could not function as a trademark. Id. at 106. It also argued that the third-party uses of the mark in speech, rap songs, podcasts, church sermons, and the like did not render the mark incapable of functioning as a trademark. To support its position, GO submitted search engine optimization evidence, allegedly showing that the mark was "almost never used or searched" before GO began using it in May 2020, and that GO's successful policing of the mark throughout the summer of 2020 led to "a significant drop in searches." Id. at 106-08. [5] But the examining attorney was not persuaded and concluded that competitors' ornamental uses of the mark only reinforced the fact that consumers would likely view the mark "as a sentiment rather than a source." Id. at 183 ("The evidence showing the wearing of shirts with 'EVERYBODY VS RACISM' by NBA referees during their protest walk out shows that they wore the shirts to convey meaning, and that meaning was understood by those who saw the referees."). The examining attorney also observed that GO's search engine evidence showed that public use of the mark aligned with the general timeline of the "heated antiracism protests throughout the nation in the wake of the George Floyd killing." Id. That evidence therefore did little to show that the public perceived the mark as a source identifier. Because granting GO the right to exclude others from using the mark to promote racial reconciliation "would seriously impede the heartfelt need of citizens of the country to express that everybody should be against racism," the examining attorney finally refused registrability of the mark. Id. [6] GO appealed to the Board. Finding that the record as a whole "show[ed] wide use of the proposed mark in a non-trademark manner to consistently convey an informational, antiracist message to the public," as opposed to a source identifier of GO's goods and services, the Board affirmed the examiner's refusal to register the mark. Decision at *7, *10. [7] GO appeals from the Board's decision. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(B) and 15 U.S.C. § 1071(a). [8] The Lanham Act conditions the registrability of any mark on its ability to distinguish an applicant's goods and services from those of others. See 15 U.S.C. § § 1052, 1053. In other words, it is a threshold requirement of registrability that the mark "identify and distinguish" the goods and services of the applicant from those of others, as well as "indicate the source" of those goods and services. Id. § 1127;Jack Daniel's Props., Inc. v. VIP Prods. LLC, 599 U.S. 140, 146 (2023) ("[A] trademark is not a trademark unless it identifies a product's source (this is a Nike) and distinguishes that source from others (not any other sneaker brand)."); Abitron Austria GmbH v. Hetronic Int'l, Inc., 600 U.S. 412, 429 (2023) (Jackson, J., concurring) ("It is clear beyond cavil that what makes a trademark a trademark under the Lanham Act is its source-identifying function."). [9] As we recently observed, "whether a proposed mark is a source identifier typically arises before us in the context of whether the proposed mark is descriptive under 15 U.S.C. § 1052(e)." In re Vox Populi Registry Ltd., 25 F.4th 1348, 1351(Fed. Cir. 2022) (collecting cases). But "the source identifier requirement is broader than just whether a proposed mark is generic or descriptive," and typically focuses on how the mark is used in the marketplace and how it is perceived by consumers. See id.; see also In re Light, 662 F. App'x 929, 934-35 (Fed. Cir. 2016) (affirming Board's refusal to register a mark containing over 570 words arranged in column format because the "sheer number and visual display" of the words made it "significantly more difficult" for the public to perceive the mark as a unitary trademark (internal quotation marks and citation omitted)); D.C. One Wholesaler, Inc. v. Chien, 120 U.S.P.Q.2d 1710 (T.T.A.B. 2016) (refusing to register "I ♥ DC" for use on apparel and souvenirs because it "would be perceived by purchasers and prospective purchasers as an expression of enthusiasm for the city of Washington, DC," as opposed to an indicator of the source of the goods on which it appeared). If the nature of a proposed mark would not be perceived by consumers as identifying the source of a good or service, it is not registrable. See Jack Daniel's, 599 U.S. at 145. As relevant here, the PTO enforces the source-identifying statutory requirement, in part, by prohibiting the registrability of what it calls "informational matter." See TMEP § 1202.04(b) (precluding from trademark protection "informational matter," such as slogans, terms, and phrases used by the public to convey familiar sentiments, because consumers are unlikely to "perceive the matter as a trademark or service mark for any goods and services."). [10] Whether or not a mark functions as a source identifier is a question of fact that we review for substantial evidence. Vox Populi, 25 F.4th at 1351-52. A finding is supported by substantial evidence if a reasonable mind might accept the evidence as adequate to support the finding. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229, 59 S.Ct. 206, 83 L.Ed. 126 (1938). Applying that standard to the case before us, we conclude that the Board's determination that "EVERYBODY VS RACISM" does not function as a source identifier for GO's products (i.e., tote bags and apparel) or services (i.e., promoting awareness of the need for racial reconciliation) was supported by substantial evidence. [11] In reaching its conclusion, the Board properly considered the evidence of record, which included not only the third-party evidence identified by the examining attorney, but also GO's specimens and other evidence of its own use of the mark. See Decision at *3-4. Based on the totality of evidence, the Board agreed with the examining attorney that the third-party uses of the mark "show[ ] that 'everybody vs racism' is commonly used in an informational and ornamental manner on clothing items, tote bags, and other retail items sold by thirdparties to convey an anti-racist sentiment." Id. at *6. The Board also found that the evidence showed that the mark frequently appeared "in opinion pieces, in music, podcasts, and YouTube videos, and by organizations (websites) that support efforts to eradicate racism." Id. Considering the diversity and breadth of third-party uses, the Board found that GO's own specimens and uses were insufficient to render the mark source-identifying. Id. at *7 ("As to [GO's] services, consumers would perceive EVERYBODY VS RACISM as merely an informational statement against racism rather than a service mark."). And significantly, as the Board observed, GO did not argue that any of the dozens of third-party uses of "EVERYBODY VS RACISM" were trademark uses attributable to GO-a finding GO does not challenge on appeal. Id.;cf. In re Nat'l Ass'n to Advance Black Birth, No. 90581377, 2022WL 4385036, at *6 (T.T.A.B. Aug. 23, 2022) ("The record indicates that the mark, as used on the specimens, would be associated with Applicant, the National Association to Advance Black Birth, by itself, even though it may also be used by third parties." (emphasis added)). unlikely to associate the mark "EVERYBODY VS RACISM" as a source identifier of GO's goods and services, we affirm. [17] For the foregoing reasons, we affirm the Board's refusal to register "EVERYBODY VS RACISM." In In re Lizzo, LLC, Serial Nos. 88466264 and88466281, 2023 TTAB LEXIS 22 (TTAB Feb. 2, 2023), the trademark registration applicant is the trademark holding company owned by the famous artist known as Lizzo. It sought to register the mark 100% THAT BITCH, which is a lyrical phrase in one of Lizzo's songs entitled "Truth Hurts." The applicant's submitted specimen of use is shown below. The Examining Attorney refused registration on failure to function grounds, determining that the asserted mark "is a commonplace expression widely used by a variety of sources to convey an ordinary, familiar, well-recognized sentiment." Id. at *2. On appeal, the Trademark Trial and Appeal Board reversed. Its opinion is lengthy with numerous images and will reward a full reading. Excerpted here is the core of the Board's reasoning: {T}he evidence here does not demonstrate that Applicant's proposed mark is used in general parlance or that it conveys a common social, political, patriotic, religious or other informational message such as DRIVE SAFELY, THINK GREEN or WATCH THAT CHILD. Applicant and the Examining Attorney agree that the proposed mark conveys a feeling of female strength, empowerment and independence. But more importantly, considering the entirety of the record, we find that most consumers would perceive 100% THAT BITCH used on the goods in the application as associated with Lizzo rather than as a commonplace expression. {T}he evidence in these appeals establishes that in 2017, the musical artist Lizzo encountered "I just took a DNA test, turns out I'm 100% that bitch" as a Twitter meme from the same year. The message in the meme resonated with her, and she used the meme as a lyric in her 2017 song "Truth Hurts," which went on to become a Billboard Number 1 hit single. Lizzo did not originate the expression she encountered as a Twitter meme, and subsequently granted a writing credit for her song "Truth Hurts" to its originator. See Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, at *9 (TTAB 2020) ("[T]rademark rights are not gained by creating a mark, but through use of the mark."). Nonetheless, lyrics from songs are more likely to be attributed to the artists who sing, rap or otherwise utter them, rather than the songwriters, who may be different individuals receiving varying degrees of writing credit. The evidence of record here indicates that Lizzo and her hit song "Truth Hurts" popularized the lyric and elevated 100% THAT BITCH from what may have been a lesser known phrase (the evidence of record only points to use of that phrase from the 2017 meme onward) to more memorable status. All of the evidence of record regarding third-party use of 100% THAT BITCH is from 2017 or later. The Urban Dictionary entry for the term is dated June 12, 2019. Thus, the evidence is contemporaneous with or subsequent to the release of Lizzo's hit single "Truth Hurts." There is no evidence of use of the term 100% THAT BITCH prior to 2017, so we have no indication that the proposed mark already was "widely used, over a long period of time and by a large number of merchandisers" before Lizzo popularized it. See D.C. One Wholesaler, Inc., 120 USPQ2d at 1716. And, as noted above, much of the evidence of third-party use specifically seeks to associate the goods emblazoned with 100% THAT BITCH with Lizzo, her music and the lyrics from "Truth Hurts." In addition, evidence of record indicates that third-party retailers responding to takedown notices from Applicant's counsel recognize that 100% THAT BITCH is associated with Lizzo and her music. 29 . . . . 29 . . . . The third parties seeking to associate their use of the phrase 100% THAT BITCH with Lizzo suggests that, for purposes of this failure to function refusal, the phrase currently is associated with Lizzo. We observe, nonetheless, that proliferation of unauthorized third-party use risks the mark's loss of strength as an exclusive source indicator, or even abandonment. See, e.g., Nobelle.com, LLC v. Qwest Commc'ns Int'l, Inc., 66 USPQ2d 1300, 1306-07 (TTAB 2003). The record as a whole does not establish that the proposed mark is a common expression in such widespread use that it fails to function as a mark for the goods identified in this application. In re Lizzo, LLC, Serial Nos. 88466264 and88466281, 2023 TTAB LEXIS 22, at *22-25 (TTAB Feb. 2, 2023). 1. For more on the "failure to function as a mark" bar to protectability, see Alexandra J. Roberts, Trademark Failure to Function, 104 IOWA L. REV. 1977(2019). See also Lucas Daniel Cuatrecasas, Failure to Function and Trademark Law's Outermost Bound, 96 N.Y.U. L. REV. 1312 (2021) (describing numerous inconsistencies in TTAB failure to function case law and urging that failure to function doctrine be replaced by aesthetic functionality doctrine to focus not on consumer perception, but on whether exclusive rights in the asserted mark "would significant hinder competition in the relevant market"); Lisa P. Ramsey, Using Failure to Function Doctrine to Protect Free Speech and Competition in Trademark Law, 104 IOWA L. REV. ONLINE 70, 89 (2020) ("Allowing trademark registration and protection of puns, political and social messages, culturally important terms or images, and other common words or designs for expressive merchandise can chill and suppress the speech of competing manufacturers, print-on-demand companies, and others who want to display this language on products sold to people who desire these goods because of the ideas they convey."). 2. Can survey evidence overcome a failure to function refusal? What survey format would be appropriate? See R. Charles Henn Jr., Survey Methodologies to Overcome "Failure to Function" Refusals in the U.S. Patent and Trademark Office, 114 TRADEMARK REP. 560 (2024). Provided here are numerous examples of courts' classification of trademarks' distinctiveness along the Abercrombie spectrum. You are very strongly encouraged to determine your own view on the appropriate classification before you consult how the court ruled. Do any of the following classifications strike you as incorrect? • TIDE for laundry detergent. See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 210 (2000) (giving TIDE for laundry detergent as an example of a suggestive mark). • SERIAL for "entertainment in the nature of ongoing audio program featuring investigative reporting, interviews, and documentary storytelling." See In re Serial Podcast, LLC, 126 U.S.P.Q.2d 1061 (TTAB 2018) (finding the applied-for standard character mark to be generic but finding the applied-for logos incorporating the term to possess acquired distinctiveness and qualify for protection) • THE STORK CLUB for a restaurant. See Stork Restaurant v. Sahati, 166 F.2d 348, 355 (9th Cir. 1948) (finding the stork club to be arbitrary as to a restaurant and reasoning that "[i]t is in no way descriptive of the appellant's night club, for in its primary significance it would denote a club for storks. Nor is it likely that the sophisticates who are its most publicized customers are particularly interested in the stork."). • GOOGLE for internet search service. See GILSON § 2.04 (giving GOOGLE for search engine as an example of a fanciful mark). • SNAKELIGHT for a light with a flexible neck. See Black & Decker Corp. v. Dunsford, 944 F. Supp. 220 (S.D.N.Y. 1996) (finding the mark to be descriptive and reasoning that "Snakelight' is just what it says: a 'snake-like' light. In this context, the word 'snake' functions as an adjective, modifying the principal term, the generic noun 'light.' Taken as a whole, the name conveys the 'immediate idea' of the 'characteristics' of the product [citing Abercrombie]). • CLOROX for bleach . See Clorox Chemical Co. v. Chlorit Mfg. Corp., 25 F. Supp. 702, 705 (D.N.Y. 1938) ("'Clorox' is a fanciful word, arbitrarily selected in no wise describes its ingredients."). • STREETWISE for street maps. See Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 744 (2d Cir. 1998) ("The district court ranked the Streetwise mark as suggestive, meaning that the term 'suggested' the features of the product and required the purchaser to use his or her imagination to figure out the nature of the product. We agree."). • SUPREME for vodka. See Supreme Wine Co. v. American Distilling Co., 310 F.2d 888, 889 (2d Cir. 1962) (finding SUPREME for vodka to be descriptive on the ground that "[m]erely laudatory words, such as 'best', 'outstanding', or 'supreme' cannot of their own force indicate the source or origin of the labeled goods"). • PLAYBOY for a men's magazine. See Playboy Enters., Inc. v. Chuckleberry Pub., Inc., 687 F.2d 563, 566-67 (2d. Cir. 1982) (finding the mark to be suggestive and reasoning that "Playboy is defined in the Random House Dictionary of the English Language (unabridged ed. 1966) as 'a wealthy, carefree man who devotes most of his time to leisure, self-amusement, and hedonistic pleasures, conventionally frequenting parties and night clubs, romancing a rapid succession of attractive young women, and racing speedboats and sports cars.' Although the word may signify the aspirations of PLAYBOY's readership, it does not describe the product or its contents."). • NO NAME for meat and other food products. See J&B Wholesale Distributing, Inc. v. Redux Beverages, LLC, 85 U.S.P.Q.2d 1623, 1626 (D. Minn. 2007) ("[S]tanding alone, 'No Name' does not bear any relation to the product-that is it does not tell the consumer anything about the product. The Court thus finds that 'No Name' is an arbitrary mark that is entitled to protection."). • BAIKALSKAYA for vodka produced in the Lake Baikal region of Russia, where "Baikalskaya" means "from Baikal" in Russian. See In re Joint-Stock Co. "Baik," 80 USPQ2d 1305 (TTAB 2006) (finding BAIKALSKAYA for vodka to be primarily geographically descriptive). • KODAK for photographic film. See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 210 (2000) (giving Kodak for film as an example of a fanciful mark). • GLOW for fragrance, shower gel, and body lotion products. See Glow Indus., Inc. v. Lopez, 252 F. Supp. 2d 962, 978 (C.D. Cal. 2002) (finding GLOW suggestive as to perfume and reasoning that "[t]he mark does not directly describe the attributes of Glow, Inc.'s perfume. Indeed, words other than the GLOW mark are used on the packaging to convey the fact that the perfume is a sandalwood scent. The mark thus appears to refer suggestively to the positive feeling one will achieve by using the product."); id. at 979 (finding GLOW suggestive as to shower gel and body lotion and reasoning that "'Glow' is not descriptive of the qualities or characteristics of shower gels or body lotions. Indeed, one who hears the word does not immediately think of such products. Rather, some amount of association is required to link the concept of glowing skin to use of a particular gel or lotion."). • BRICK OVEN PIZZA for frozen pizza. See Schwan's IP, LLC v. Kraft Pizza Co., 460 F.3d 971 (8th Cir. 2006) (citing industry usage, media usage, and PTO rulings to find the term generic for pizza that is or appears to be baked in a brick oven). • CITIBANK for banking services. See Citibank, N.A. v. Citibanc Group, Inc., 724 F.2d 1540, 222 U.S.P.Q. 292 (11th Cir. 1984) (approving of the district court's finding that CITIBANK is suggestive for banking services). • ODOL for mouthwash. See In re Odol Chemical Corp., 150 U.S.P.Q. 827 (TTAB 1966) (finding ODOL for mouthwash to be fanciful). • MORNINGSIDE for financial services. See Morningside Group Ltd. v. Morningside Capital Group L.L.C., 182 F.3d 133 (2d Cir. 1999) (finding MORNINGSIDE to be arbitrary as to financial services). • EAST END for vodka distilled in the East End of Houston, Texas. See In re Buffalo Bayou Distilleries, LLC, Serial No. 86,583,137 (TTAB July 30, 2018) (not citable as precedent) ("In this case, the record reflects that 'East End' can refer to numerous geographic locations, suggesting that its primary significance is not referring to the area in Houston, Texas. Also, the quantity and nature of the evidence regarding the East End of Houston does not establish that it is generally known to U.S. consumers. . . . The first prong of the inquiry under Section 2(e) (2), that the primary significance of the term in the mark sought to be registered is the name of a place generally known to the public, is not satisfied."). • L.L.C. v. Netfire, Inc., 310 F. Supp. 2d 786 (N.D. Tex. 2003) (finding without analysis the mark MARCH MADNESS to be descriptive of an annual basketball tournament). • SPEEDY for bail bond services. See Lederman Bonding Co. v. Sweetalia, 83 U.S.P.Q.2d 1660, 2006WL 2949290, at *3 (D. Colo. 2006) (finding SPEEDY for bail bond services to be descriptive "because it describes the quality of the bail bond services offered"). • BEAR for cold-weather outerwear. See Bear U. S.A., Inc. v. A.J. Sheepskin & Leather Outerwear, Inc., 909 F.Supp. 896, 904 (S.D.N.Y. 1995) ("The word 'bear, especially in conjunction with the image of a polar bear, is connected with the concept of cold weather and protection from the elements. It suggests that the type of outerwear and boots sold by plaintiff offer the sort of protection afforded by bears' skins. The imagination and thought process involved in this mental association supports the conclusion that plaintiff's bear marks are suggestive, particularly as used in connection with boots and cold weather outwear."). • QUANTUM for a health club. See Quantum Fitness Corp. v. Quantum Lifestyle Ctrs., 83 F. Supp. 2d 810, 820 (S.D. Tex. 1999) (finding QUANTUM to be arbitrary for health club and reasoning, in part, that "[t]he absence of a connection between the term 'quantum' and the plaintiff's products is evidenced by the frequent use of the word by third parties in a variety of different, unrelated lines of business"). • VIAGRA for an erectile dysfunction drug. See Pfizer Inc. v. Sachs, 652 F. Supp. 2d 512, 520 (S.D.N.Y. 2009) ("The Viagra mark is fanciful, because the word 'Viagra' was coined specifically for purposes of this trademark and has no meaning outside this context."). • Each of 928, 924, 944, 911, 911S, and 911SC for automobiles. See Porsche Cars N. Am., Inc. v. Lloyd Design Corp., 2002U.S. Dist. LEXIS 9612 (N.D. Ga. Mar. 26, 2002) ("[M]ost courts have held that model numbers, whether numbers or alphanumeric designations, are generally considered descriptive for the purposes of trademark protection. Although they may be 'arbitrary' in the sense ' that they do not refer directly to a characteristic of the products, model numbers are generally intended merely to distinguish one specific product from another by a particular source, and are not intended to distinguish products from totally different sources."). We have focused so far on the analysis of the distinctiveness of word marks. But as we saw at the beginning of this Part, contemporary trademark law offers protection to far more than words and phrases. It protects image marks, sound marks, scent marks, and perhaps someday it will protect flavor or taste marks. See In re N.V. Organon, 79 U.S.P.Q.2d 1639, 2006WL 1723556 (TTAB 2006) (denying registration to a mark consisting of "an orange flavor" for "pharmaceuticals for human use, namely, antidepressants in quick-dissolving tablets and pills" on the grounds that the mark lacked distinctiveness and was functional). Trademark law also protects "trade dress," which may consist of a product's packaging or configuration as well as nearly any other aspect of the product or service. Over the past two decades, courts have struggled with how to analyze the distinctiveness of nonverbal marks, none more so than the Supreme Court. We first consider here the relevant Supreme Court case law on the issue. We then turn to lower court attempts to apply the doctrine developed in that case law. The Supreme Court has engaged the distinctiveness analysis of nonverbal marks in a series of three opinions: • Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (analyzing the sourcedistinctiveness of a restaurant interior), • Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995) (analyzing the sourcedistinctiveness of a single color), and • Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) (analyzing the sourcedistinctiveness of an apparel design). In Two Pesos, the Court held that inherently distinctive trade dress could be protected without a showing of secondary meaning. In other words, and contrary to lower court case law primarily from the Second Circuit, the Court held that there was no special rule requiring that trade dress always show secondary meaning. In Qualitex, the Court held that a single color could qualify for trademark protection (provided that it possessed acquired distinctiveness of source). Finally, in Wal-Mart, the Court arguably rewrote Two Pesos. It described the universe of trade dress as consisting of at least two categories: product packaging trade dress and product configuration trade dress. Product packaging trade dress was deemed capable of being inherently distinctive and when it was, it did not require a showing of secondary meaning to receive protection. Product configuration trade dress, however, could never be inherently distinctive and must always be shown to have acquired distinctiveness in order to qualify for protection. One area of distinctiveness doctrine that the Court has not explicitly addressed is how to analyze the inherent distinctiveness of product packaging. Should courts use the Abercrombie spectrum or some other scheme of classification? As we will see below, there appears to be a circuit split on this issue. ______________________________________________________________________________ exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors. The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme. " 932 F.2d 1113" 932 F.2d , 1117" 932 F.2d (CA5 1991)). Two Pesos, 505 U.S. at 765. The Court apparently accepted Taco Cabana's broad definition of its trade dress. In a footnote, Justice White's opinion for the Court explained: The District Court instructed the jury: "'[T]rade dress' is the total image of the business. Taco Cabana's trade dress may include the shape and general appearance of the exterior of the restaurant, the identifying sign, the interior kitchen floor plan, the decor, the menu, the equipment used to serve food, the servers' uniforms and other features reflecting on the total image of the restaurant." 1 App. 83-84. The Court of Appeals accepted this definition and quoted from Blue Bell Bio-Medical v. Cin-Bad, Inc., 864 F.2d 1253, 1256(CA5 1989): "The 'trade dress' of a product is essentially its total image and overall appearance." See 932 F.2d 1113, 1118(CA5 1991). It "involves the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques." John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (CA11 1983). Restatement (Third) of Unfair Competition § 16, Comment a (Tent.Draft No. 2, Mar. 23, 1990). Two Pesos substantially copied Taco Cabana's restaurant design, though with different colors. Taco Cabana sued under Lanham Act § 43(a) and the case went to a jury. The Texas jury found that Taco Cabana's trade dress was inherently distinctive but that it "has not acquired a secondary meaning in the Texas market." Id. at 766 (footnote omitted). These jury findings presented something of a paradox (or were simply nonsensical): how could a trademark that has for several years been used in the marketplace possess inherent distinctiveness of source but not yet have developed any additional acquired distinctiveness of source? The very fact that the mark over the years had not developed any additional acquired distinctiveness could be understood to indicate instead that the mark was not inherently distinctive in the first place. On appeal to the Fifth Circuit, Two Pesos argued that "a finding of no secondary meaning contradicted a finding of inherent distinctiveness." Id. at 767. The Fifth Circuit disagreed and affirmed the jury findings. Two Pesos then sought certiorari to reverse the Fifth Circuit and adopt instead Second Circuit doctrine of the time that 43(a) protects unregistered trade dress only if secondary meaning is shown. Id. Recognizing a circuit split on the issue, the Court "granted certiorari to resolve the conflict among the Courts of Appeals on the question whether trade dress that is inherently distinctive is protectible under § 43(a) without a showing that it has acquired secondary meaning." Id. In ruling in favor of Taco Cabana and the protectability of its trade dress, the Court stated that "[t]here is no persuasive reason to apply to trade dress a general requirement of Quoted in Thomas D. Drescher, The Transformation and Evolution of Trademarks-From Signals to Symbols toMyth, 82 TRADEMARK REP. 301, 301-02 (1992). See Interbrand, Best Global Brands, https://interbrand.com/best-global-brands/. The Coca-Cola Company, Balance Sheet, https://investors.coca-colacompany.com/financialinformation. Owners also carved identifying marks into the beaks of swans they were allowed to own by royal privilege. See FRANK I. SCHECHTER, THE HISTORICAL FOUNDATIONS OF THE LAW RELATING TOTRADE- MARKS 35-37 (1925). Not coincidentally, these mandatory marks also made it possible for the Crown to regulate conduct, particularly in the printing industry, where the Crown policed heresy and piracy. See id. at 63-77.28 There are some examples in the cutlers' trade of the government treating marks as property that could be passed by will and of owners advertising to suppress piracy. DANIEL J. BOORSTIN, AMERICANS: THEDEMOCRATIC EXPERIENCE 145 (1974). See Jerome Gilson & Anne Gilson LaLonde, Cinnamon Buns, Marching Ducks, and Cherry-Scented Racecar Exhaust: Protecting Nontraditional Trademarks, 95 TRADEMARK REP. 773 (2005). See Christina S. Monteiro, A Nontraditional Per-Spectrum: The Touch of Trademarks, INTA BULL.,June 15, 2010, at 4. To take a familiar example "Ivory" would be generic when used to describe a product made from the tusks of elephants but arbitrary as applied to soap. See, e.g., Haughton Elevator Co. v. Seeberger, U.S.P.Q.80 (1950), in which the coined word 'Escalator', originally fanciful, or at the very least suggestive, was held to have become generic. We note that, in contrast with its position in this case, in other litigation NVE has asserted that its own mark, "6 Hour POWER," is an "inherently distinctive" mark. See Complaint at ¶ 12, N.V.E.,Inc. v. N2G Distrib., Inc. & Alpha Performance Labs, No. 2:08-cv-01824 (D.N.J. Apr.14, 2008) ("The 6 HOUR POWER mark distinguishes NVE as the source of these products, is inherently distinctive, and has also become distinctive through the acquisition of secondary meaning." (emphasis added)). The distinction between certification and collective marks is sometimes very fine, leading McCarthy to lament that "[t]he problem with collective trademarks and service marks is that they are almost indistinguishable from certification marks." MCCARTHY § 19:99. McCarthy suggests that one advantage (or disadvantage) of collective marks is that they offer a way to avoid the strict requirements for the operation of certification marks established in Lanham Act § 14(5). To be fair, recall that, in a previous application, TBL tried and failed to register the wheat-yellow color. But we must focus on the separate application before us, which did not claim the color. In addition, customers may have bought the boots because they liked other features that were not part of TBL's application, such as the wheat-yellow color, the tree logo or the lug sole. Or customers may have attributed those unclaimed features to Timberland. Regardless, customer perceptions of the unclaimed aspects of the boot cannot demonstrate that the claimed portions of the boot have acquired secondary meaning. 514 U.S. 159, 163-64 (1995). 15 U.S.C. § 1127 (emphasis added). Is "App Store" a generic term for an online platform selling apps? See Apple, Inc. v. Amazon.com Inc., No. 11 Civ. 1327, 2011 WL 2638191, at *7 (N.D. Cal. July 6, 2011) ("The court assumes without deciding that the 'App Store' mark is protectable as a descriptive mark that has arguably acquired secondary meaning." But the court found, on Apple's preliminary injunction motion, that Amazon's use of "App Store" to describe its app store did not create a likelihood of confusion.). A domain name identifies an address on the Internet. The rightmost component of a domain name-".com" in "Booking.com"-is known as the top-level domain. Domain names are unique; that is, a given domain name is assigned to only one entity at a time. For simplicity, this opinion uses the term "trademark" to encompass the marks whose registration Booking.com seeks. Although Booking.com uses the marks in connection with services, not goods, rendering the marks "service marks" rather than "trademarks" under 15 U.S.C. § 1127, that distinction is immaterial to the issue before us. The U. S. Patent and Trademark Office (PTO) suggests that the primary-significance test might not govern outside the context of § 1064(3), which subjects to cancellation marks previously registered that have "become" generic. See Reply Brief 11; Tr. of Oral Arg. 19. To so confine the primary-significance test, however, would upset the understanding, shared by Courts of Appeals and the PTO's own manual for trademark examiners, that the same test governs whether a mark is registrable in the first place.See, e.g., In re Cordua Restaurants, Inc., 823 F.3d 594, 599 (CA Fed. 2016); Nartron Corp. v. STMicroelectronics, Inc., 305 F.3d 397, (CA6 2002); Genesee BrewingCo. v. Stroh The PTO notes only one possible exception: Sometimes adding a generic term to a generic toplevel domain results in wordplay (for example, "tennis.net"). That special case, the PTO acknowledges, is not presented here and does not affect our analysis. Evidence informing that inquiry can include not only consumer surveys, but also dictionaries, Princeton Vanguard's co-Plaintiff is Snyder's-Lance, Inc. ("Snyder's-Lance"), which is its parent company. Having determined that the mark is generic, the Court need not and does not decide the further issue of whether if the mark were found to be descriptive it has acquired distinctiveness (secondary meaning) with respect to its association with the Plaintiffs. In medieval Europe, monks gave away pretzels as religious symbols to the poor to provide spiritual as well as literal sustenance. Thus, the pretzel became a sign of fulfillment, good fortune and prosperity. In 1529, pretzel bakers saved Vienna from ransacking by Ottoman Turks when they heard the invaders tunneling under the city during their early morning work and alerted the city leadership (thereby earning their own coat of arms which includes angry lions holding a pretzel). By the 17th Century, the interlocking loops of the pretzel had also come to symbolize undying love when couples in Switzerland began eating a pretzel in their wedding ceremonies to seal the bond of matrimony, which is reputed to be the origin of the phrase "tying the knot." See foodandwine.com/lifestyle/religious-history-pretzels (Updated April 17, 2019, accessed May 5, 2021); The Pretzel: A Twisted History(History. com Jan. 30, 2020). In 2018, Campbell's Soup Co. bought Snyder's-Lance, combining the company with Campbell's existing Pepperidge Farm business and other brands to create Campbell Snacks, an even larger company unit with additional marketing reach and resources. The Supreme Court recently confirmed this principle in United StatesPat. & Trademark Off. v. Booking.com B. V., 140 S. Ct. 2298, 2306-07 (2020), emphasizing that it "presupposes that a generic term is at issue." Id. In other words, the determination of whether a mark is generic must be made separately and independently of the mark's commercial success and association with a particular company that results from extensive advertising and marketing (which would, of course, still be relevant to a determination of whether a descriptive mark had acquired secondary meaning). At oral argument, Plaintiffs' counsel agreed that both "pretzels" and "crisps" are generic terms. As with "additional meaning," when asked at oral argument why "pretzel crisps" is a descriptive term, Plaintiffs' counsel did not identify any "feature, quality or characteristic" of the goods that is reflected in the mark. In JFT Toys, the Court agreed with the USPTO that a suggestive term, "Stomp Rocket," was not generic, finding that because of the lack of any dictionary reference to a rocket in the definition of "stomp" and no definition at all for "stomp rocket" that "the dictionary is unhelpful to Defendants." JFJ Toys, 237 F. Supp. 3d at 333. Kraft's distributors were allowed to continue to distribute and sell the Ritz Munchables pretzel crisps indefinitely so long as they were sold and distributed by Kraft as permitted in the agreement. Also, Plaintiffs excluded from their generic results references to other companies providing "pretzel crisps." See, e.g., at 253 (referring to "Stacy's Pretzel Crisps"); [Doc. 42-6] at 131 (using the term "Pretzel Crisps" to refer to "Stacy's Bake Shop crisps.").] While genericness and secondary meaning are different concepts, they are not easily disentangled, particularly for successful products. Indeed, a product may have a leading market share with a generic name. See Kellogg, 305 U.S. at 118 (shredded wheat). Compare, for example, the consumer survey results reported in the District Court decision in Booking.com, in which the plaintiff produced a Teflon survey which revealed that 74.8 percent of respondents identified BOOKING.COM as a brand name.Booking.com B.V. v. Matal, 278 F. Supp. 3d 891, 915 (E.D. Va. 2017).39 Even if the Court were to find that all the survey evidence was on balance inconclusive that would not affect the Court's ultimate factual determination that there is sufficient affirmative evidence to conclude that PRETZEL CRISPS is a generic mark. The Court also is concerned that a focus on those relative few consumers who are most engaged with the product through Twitter would be a misleading sample in determining how the "relevant public," i.e., average or typical consumers perceive the product name. For the remainder of this opinion, we collectively refer to Appellants as "Elliott." In making this assumption, the district court drew a favorable (and generous) inference for Elliott. As discussed above, verb use does not necessarily constitute generic use, yet most of Elliott's proffered evidence relies on that theory. Contrary to our colleague's suggestion, we do not hold that generic verb use is "categorically irrelevant." However, evidence that a mark is used in a generic sense in one particular setting cannot Elliott also argues that the email shows generic use because "googling" is not capitalized. As we explained with regard to verb use and noun use, we cannot rely on grammatical formalism to determine what a speaker has in mind when using a registered trademark. SeeCoca-Cola Co., 692 F.2d at 1255. a. The Uniform Dispute Resolution Policy ................................................................................. WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP) ........................................................................................................................................................ Pinterest, Inc. v. Pinerest.com c/o Whois Privacy Svcs Pty Ltd/Ian Townsend ........................................................................................................................................................ b. The Uniform Rapid Suspension System ................................................................................. .. 2. Landlord-Tenant Secondary Liability............................................................................................ ix White v. a. Willful Intent and Profits .............................................................................................................Romag Fasteners, Inc. v. Fossil, Inc. ........................................................................... b. Actual Confusion and Profits ..................................................................................................... • CROSSFIT for "fitness training and consulting." See Crossfit, Inc. v. Quinnie, 232 F. Supp. 3d 1295, 1306 (N.D. Ga. 2017) ("The Court finds that the CROSSFIT® mark is a suggestive mark. The mark CROSSFIT® is a combination of the terms, 'cross' and "fit," which are both commonly associated with exercise and fitness. The term 'cross' has been used in sports and fitness as in cross-training to refer to combining different sports or types of exercises in order to improve a person's fitness and performance. 48 USPQ2d 1542 (TTAB 1998) (finding CAROLINA APPAREL for clothing stores in North Carolina to be primarily geographically descriptive); In re Brouwerij Nacional Balashi NV, 80 U.S.P.Q.2d 1820 (TTAB 2006) (finding BALASHI BEER and BALASHI for beer made in the Balashi neighborhood of the Santa Cruz district of Aruba to be not primarily geographically descriptive where the WHISKY "to certify that the goods/services provided originate in Scotland and have met the Standards as set forth in The Scotch Whisky Regulations 2009 and The Scotch Whisky technical file", Reg.No. 6,763,223 (30, 1956);• certifications of the regional origin of a product, e.g., the "Grown in Idaho" mark of theState of Idaho Potato Commission, Reg. No. 4,221,403 (July 24, 2012); the ROQUEFORT mark of the Community of Roquefort, France, Reg.No. 0571798 (Mar. 10, 1953); but see Interprofessionel du Gruyere v. U.S. DairyExp. Council, 61 F.4th 407, 425 (4th Cir. The following are examples of marks that have fallen to genericide:• Haughton ElevatorCo. v. Seeberger, 85 U.S.P.Q. 80 (Comm'r Pat. 1950) (cancelling registration of ESCALATOR for moving staircases);• Duncan F.Duncan, Inc. v. Royal Tops Mfg. Co., 343 F.2d 655, 662 (7th Cir. 1965) (finding that the term "yo-yo" had long since become generic despite plaintiff's "herculean efforts to fasten upon the toy the generic term, 'return top'");•Bayer Co. v. United Drug Co., 272 F. 505, 510 (D.N.Y. 1921) (finding as to the mark ASPIRIN for acetylsalicylic acid that "[a]mong consumers generally the name has gone into the public domain"). for the product's source."); Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d 619, 635 (6th Cir. 2002) (stating that a plaintiff is "expected to list the elements of the designs and the unique combinations it [seeks] to protect . . . ."). Cf. General Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 415 (6th Cir. 2006) (finding sufficient plaintiff's definition of the trade dress of its hummer and humvee vehicles as "the exterior appearance and styling of the vehicle design which includes the grille, slanted and raised hood, split windshield, rectangular doors, squared edges, etc."). What strategic considerations may come into play in how a plaintiff defines its trade dress? What are the costs and benefits of defining it too broadly or too narrowly? ______________________________________________________________________________ In reading Qualitex, consider the following questions: • It is often remarked that the Court's holding in Qualitex is in significant tension with its previous holding in Two Pesos. Do you detect any tension between the holdings of the two cases? • Does Justice Breyer's analysis apply as well to a combination of two or more colors? • In light of Qualitex, how do you predict courts will treat smells, textures, and tastes? Are such marks capable of inherent distinctiveness? Justice BREYER delivered the opinion of the Court. [1] The question in this case is whether the Trademark Act of 1946 (Lanham Act), 15 U.S.C. § § 1051-1127 (1988 ed. and Supp. V), permits the registration of a trademark that consists, purely and simply, of a color. We conclude that, sometimes, a color will meet ordinary legal trademark requirements. And, when it does so, no special legal rule prevents color alone from serving as a trademark. [2] The case before us grows out of petitioner Qualitex Company's use (since the 1950's) of a special shade of green-gold color on the pads that it makes and sells to dry cleaning firms for use on dry cleaning presses. In 1989, respondent Jacobson Products (a Qualitex rival) began to sell its own press pads to dry cleaning firms; and it colored those pads a similar green gold. In 1991, Qualitex registered the special green-gold color on press pads with the Patent and Trademark Office as a trademark. Registration No. 1,633,711 (Feb. 5, 1991). Qualitex subsequently added a trademark infringement count, 15 U.S.C. § 1114(1), to an unfair competition claim, § 1125(a), in a lawsuit it had already filed challenging Jacobson's use of the green-gold color. [3] Qualitex won the lawsuit in the District Court. 1991 WL 318798 (CD Cal. 1991). But, the Court of Appeals for the Ninth Circuit set aside the judgment in Qualitex's favor on the trademark infringement claim because, in that Circuit's view, the Lanham Act does not permit Qualitex, or anyone else, to register "color alone" as a trademark. 13 F.3d 1297, 1300, 1302 (1994). [4] The Courts of Appeals have differed as to whether or not the law recognizes the use of color alone as a trademark. Compare NutraSweet Co. v. Stadt Corp., 917 F.2d 1024, 1028 (CA7 1990) (absolute prohibition against protection of color alone), with In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1128 (CA Fed. 1985) (allowing registration of color pink for fiberglass insulation), and Master Distributors, Inc. v. Pako Corp., 986 F.2d 219, 224 (CA8 1993) (declining to establish per se prohibition against protecting color alone as a trademark). Therefore, this Court granted certiorari. 512 U.S. 1287 (1994). We now hold that there is no rule absolutely barring the use of color alone, and we reverse the judgment of the Ninth Circuit. [5] The Lanham Act gives a seller or producer the exclusive right to "register" a trademark, 15 U.S.C. § 1052 (1988 ed. and Supp. V), and to prevent his or her competitors from using that trademark, § 1114(1). Both the language of the Act and the basic underlying principles of trademark law would seem to include color within the universe of things that can qualify as a trademark. The language of the Lanham Act describes that universe in the broadest of terms. It says that trademarks "includ[e] any word, name, symbol, or device, or any combination thereof." § 1127. Since human beings might use as a "symbol" or "device" almost anything at all that is capable of carrying meaning, this language, read literally, is not restrictive. The courts and the Patent and Trademark Office have authorized for use as a mark a particular shape (of a Coca-Cola bottle), a particular sound (of NBC's three chimes), and even a particular scent (of plumeria blossoms on sewing thread). See, e.g., Registration No. 696,147 (Apr. 12, 1960); Registration Nos. 523,616 (Apr. 4, 1950) and 916,522 (July 13,1971); In re Clarke, 17 U.S.P.Q.2d 1238, 1240 (TTAB 1990). If a shape, a sound, and a fragrance can act as symbols why, one might ask, can a color not do the same? [6] A color is also capable of satisfying the more important part of the statutory definition of a trademark, which requires that a person "us[e]" or "inten [d] to use" the mark "to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." 15 U.S.C. § 1127. True, a product's color is unlike "fanciful," "arbitrary," or "suggestive" words or designs, which almost automatically tell a customer that they refer to a brand. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9-10 (CA2 1976) (Friendly, J.); see Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). The imaginary word "Suntost," or the words "Suntost Marmalade," on a jar of orange jam immediately would signal a brand or a product "source"; the jam's orange color does not do so. But, over time, customers may come to treat a particular color on a product or its packaging (say, a color that in context seems unusual, such as pink on a firm's insulating material or red on the head of a large industrial bolt) as signifying a brand. And, if so, that color would have come to identify and distinguish the goods-i.e., "to indicate" their "source"-much in the way that descriptive words on a product (say, "Trim" on nail clippers or "Car-Freshner" on deodorizer) can come to indicate a product's origin. See, e.g., J. Wiss & Sons Co. v. W.E. Bassett Co., 59 C.C.P.A. 1269, 1271 (Pat.), 462 F.2d 567, 569 (1972); Car-Freshner Corp. v. Turtle Wax, Inc., 268 F.Supp. 162, 164 (SDNY 1967). In this circumstance, trademark law says that the word (e.g., "Trim"), although not inherently distinctive, has developed "secondary meaning." See Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851, n. 11, (1982) ("[S]econdary meaning" is acquired when "in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself"). Again, one might ask, if trademark law permits a descriptive word with secondary meaning to act as a mark, why would it not permit a color, under similar circumstances, to do the same? [7] We cannot find in the basic objectives of trademark law any obvious theoretical objection to the use of color alone as a trademark, where that color has attained "secondary meaning" and therefore identifies and distinguishes a particular brand (and thus indicates its "source"). In principle, trademark law, by preventing others from copying a sourceidentifying mark, "reduce[s] the customer's costs of shopping and making purchasing decisions," 1 J. McCarthy, McCarthy on Trademarks and Unfair Competition § 2.01[2], p. 2-3 (3d ed. 1994) (hereinafter McCarthy), for it quickly and easily assures a potential customer that this item-the item with this mark-is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past. At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputationrelated rewards associated with a desirable product. The law thereby "encourage[s] the production of quality products," ibid., and simultaneously discourages those who hope to sell inferior products by capitalizing on a consumer's inability quickly to evaluate the quality of an item offered for sale. See, e.g., 3 L. Altman It is the source-distinguishing ability of a mark-not its ontological status as color, shape, fragrance, word, or sign-that permits it to serve these basic purposes. See Landes & Posner, Trademark Law: An Economic Perspective, 30 J. Law & Econ. 265, 290 (1987). And, for that reason, it is difficult to find, in basic trademark objectives, a reason to disqualify absolutely the use of a color as a mark. [8] Neither can we find a principled objection to the use of color as a mark in the important "functionality" doctrine of trademark law. The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm's reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, 35 U.S.C. § § 154, 173, after which competitors are free to use the innovation. If a product's functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity). See Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 119-120 (1938) (Brandeis, J.); Inwood Laboratories, Inc., supra, 456 U.S., at 863 (White, J., concurring in result) ("A functional characteristic is 'an important ingredient in the commercial success of the product,' and, after expiration of a patent, it is no more the property of the originator than the product itself") (citation omitted). Functionality doctrine therefore would require, to take an imaginary example, that even if customers have come to identify the special illumination-enhancing shape of a new patented light bulb with a particular manufacturer, the manufacturer may not use that shape as a trademark, for doing so, after the patent had expired, would impede competition-not by protecting the reputation of the original bulb maker, but by frustrating competitors' legitimate efforts to produce an equivalent illumination-enhancing bulb. See, e.g., Kellogg Co., supra, 305 U.S., at 119-120 (trademark law cannot be used to extend monopoly over "pillow" shape of shredded wheat biscuit after the patent for that shape had expired). This Court consequently has explained that, "[i]n general terms, a product feature is functional," and cannot serve as a trademark, "if it is essential to the use or purpose of the article or if it affects the cost or quality of the article," that is, if exclusive use of the feature would put competitors at a significant non-reputationrelated disadvantage. Inwood Laboratories, Inc., supra, 456 U.S., at 850, n. 10. Although sometimes color plays an important role (unrelated to source identification) in making a product more desirable, sometimes it does not. And, this latter fact-the fact that sometimes color is not essential to a product's use or purpose and does not affect cost or qualityindicates that the doctrine of "functionality" does not create an absolute bar to the use of color alone as a mark. See Owens-Corning, 774 F.2d, at 1123 (pink color of insulation in wall "performs no nontrademark function"). [9] It would seem, then, that color alone, at least sometimes, can meet the basic legal requirements for use as a trademark. It can act as a symbol that distinguishes a firm's goods and identifies their source, without serving any other significant function. See U.S. Dept. of Commerce, Patent and Trademark Office, Trademark Manual of Examining Procedure § 1202.04(e), p. 1202-13 (2d ed. May, 1993) (hereinafter PTO Manual) (approving trademark registration of color alone where it "has become distinctive of the applicant's goods in commerce," provided that "there is [no] competitive need for colors to remain available in the industry" and the color is not "functional"); see also 1 McCarthy § § 3.01[1], 7.26, pp. 3-2, 7-113 ("requirements for qualification of a word or symbol as a trademark" are that it be (1) a "symbol," (2) "use [d] . . . as a mark," (3) "to identify and distinguish the seller's goods from goods made or sold by others," but that it not be "functional"). Indeed, the District Court, in this case, entered findings (accepted by the Ninth Circuit) that show Qualitex's green-gold press pad color has met these requirements. The green-gold color acts as a symbol. Having developed secondary meaning (for customers identified the green-gold color as Qualitex's), it identifies the press pads' source. And, the green-gold color serves no other function. (Although it is important to use some color on press pads to avoid noticeable stains, the court found "no competitive need in the press pad industry for the green-gold color, since other colors are equally usable." 21 U.S.P.Q.2d, at 1460.) Accordingly, unless there is some special reason that convincingly militates against the use of color alone as a trademark, trademark law would protect Qualitex's use of the green-gold color on its press pads. of a particular product, only some colors are usable. By the time one discards colors that, say, for reasons of customer appeal, are not usable, and adds the shades that competitors cannot use lest they risk infringing a similar, registered shade, then one is left with only a handful of possible colors. And, under these circumstances, to permit one, or a few, producers to use colors as trademarks will "deplete" the supply of usable colors to the point where a competitor's inability to find a suitable color will put that competitor at a significant disadvantage. [14] This argument is unpersuasive, however, largely because it relies on an occasional problem to justify a blanket prohibition. When a color serves as a mark, normally alternative colors will likely be available for similar use by others. See, e.g., Owens-Corning, 774 F.2d, at 1121 (pink insulation). Moreover, if that is not so-if a "color depletion" or "color scarcity" problem does arise-the trademark doctrine of "functionality" normally would seem available to prevent the anticompetitive consequences that Jacobson's argument posits, thereby minimizing that argument's practical force. [15] The functionality doctrine, as we have said, forbids the use of a product's feature as a trademark where doing so will put a competitor at a significant disadvantage because the feature is "essential to the use or purpose of the article" or "affects [its] cost or quality." Inwood Laboratories, Inc., 456 U.S., at 850, n. 10. The functionality doctrine thus protects competitors against a disadvantage (unrelated to recognition or reputation) that trademark protection might otherwise impose, namely, their inability reasonably to replicate important non-reputation-related product features. For example, this Court has written that competitors might be free to copy the color of a medical pill where that color serves to identify the kind of medication (e.g., a type of blood medicine) in addition to its source. See id., at 853, 858, n. 20 ("[S]ome patients commingle medications in a container and rely on color to differentiate one from another"); see also J. Ginsburg, D. Goldberg, & A. Greenbaum, Trademark and Unfair Competition Law 194-195 (1991) (noting that drug color cases "have more to do with public health policy" regarding generic drug substitution "than with trademark law"). And, the federal courts have demonstrated that they can apply this doctrine in a careful and reasoned manner, with sensitivity to the effect on competition. Although we need not comment on the merits of specific cases, we note that lower courts have permitted competitors to copy the green color of farm machinery (because customers wanted their farm equipment to match) and have barred the use of black as a trademark on outboard boat motors (because black has the special functional attributes of decreasing the apparent size of the motor and ensuring compatibility with many different boat colors). See Deere & Co. v. Farmhand, Inc., 560 F.Supp. 85, 98 (SD Iowa 1982), aff'd, 721 F.2d 253 (CA8 1983); Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1532 (CA Fed. 1994), cert. pending, No. 94-1075; see also Nor-Am Chemical v. O.M. Scott & Sons Co., 4 U.S.P.Q.2d 1316, 1320 (ED Pa. 1987) (blue color of fertilizer held functional because it indicated the presence of nitrogen). The Restatement (Third) of Unfair Competition adds that, if a design's "aesthetic value" lies in its ability to "confe[r] a significant benefit that cannot practically be duplicated by the use of alternative designs," then the design is "functional." Restatement (Third) of Unfair Competition § 17, Comment c, pp. 175-176 (1993). The "ultimate test of aesthetic functionality," it explains, "is whether the recognition of trademark rights would significantly hinder competition." Id., at 176. [16] The upshot is that, where a color serves a significant nontrademark functionwhether to distinguish a heart pill from a digestive medicine or to satisfy the "noble instinct for giving the right touch of beauty to common and necessary things," G. Chesterton, Simplicity and Tolstoy 61 (1912)-courts will examine whether its use as a mark would permit one competitor (or a group) to interfere with legitimate (nontrademark-related) competition through actual or potential exclusive use of an important product ingredient. That examination should not discourage firms from creating esthetically pleasing mark designs, for it is open to their competitors to do the same. See, e.g., W.T. Rogers Co. v. Keene, 778 F.2d 334, 343 (CA7 1985) (Posner, J.). But, ordinarily, it should prevent the anticompetitive consequences of Jacobson's hypothetical "color depletion" argument, when, and if, the circumstances of a particular case threaten "color depletion." . . . . IV [17] Having determined that a color may sometimes meet the basic legal requirements for use as a trademark and that respondent Jacobson's arguments do not justify a special legal rule preventing color alone from serving as a trademark (and, in light of the District Court's here undisputed findings that Qualitex's use of the green-gold color on its press pads meets the basic trademark requirements), we conclude that the Ninth Circuit erred in barring Qualitex's use of color as a trademark. For these reasons, the judgment of the Ninth Circuit is Reversed. 1. Why did Qualitex bother seeking certiorari review of its single-color claim if it had already won its case against Jacobsen on its broader trade dress claim? Both the district court and the Ninth Circuit ruled that Jacobsen had infringed Qualitex's overall trade dress, consisting of "[t]he total impression of the Qualitex green-gold pad and its 'Sun Glow' name . . . or overall appearance[ ] of the Qualitex product." Qualitex Co. v. Jacobson Prod. Co., 13 F.3d 129713 F.3d , 130413 F.3d (9th Cir. 1994)). But this judgment would likely not have enabled Qualitex to prevent competitors, including Jacobsen, from selling press pads in a green-gold color that prominently carried a different brand name or other distinguishing feature. Qualitex sought at the Supreme Court a more abstract and much more powerful property right: the exclusive right to use the green-gold color on press pads regardless of brand name or any other distinguishing feature. 2. Color Marks and Non-English-Speaking and Illiterate Consumers. Perhaps it makes sense that a company like Tiffany & Co. would assert exclusive rights in the distinctive robin's-egg blue color of its packaging, see U.S. Reg. No. 2,359,351 (June 20, 2000) ("The mark consists of a shade of blue often referred to as robin's-egg blue which is used on boxes."), or even that 3M Corp. would assert exclusive rights in the canary yellow color of its Post-It Pads, see U.S. Reg. No. 2,390,667 (Oct. 3, 2000) ("The mark consists of the color canary yellow used over the entire surface of the goods."), but why would a manufacturer of dry cleaning press pad covers claim rights in the color of its press pad covers? Professor Laura Heymann points to one possible explanation. See Laura A. Heymann, The Reasonable Person in Trademark Law, 52 ST. LOUIS. L.J. 781, 792 (2008). Though the Supreme Court opinion makes no mention of the issue, the Qualitex district court opinion noted that "many [dry cleaning business owners] are foreign speaking with limited skills in reading or speaking English." Qualitex Co. v. Jacobson Prods. Co., Inc., No. 90 Civ. 1183, 1991 WL 318798, at *1 (C.D. Cal. Sep. 5,1991), aff'd in part and rev'd in part, 13 F.3d 1297 (9th Cir. 1994), rev'd, 514 U.S. 159 (1995). Between Two Pesos in 1992 and Samara Bros. in 2000, lower courts struggled to establish a workable test by which to determine whether a particular instance of trade dress was inherently distinctive. Courts had particular difficulty establishing a test to determine whether trade dress in the form of product configuration-i.e., in the form of design features of the product itself-was inherently distinctive. As we will see, in Samara Bros. the Supreme Court solved this problem of product configuration rather abruptly. In reading through Samara Bros., consider the following questions: • In Samara Bros., the Supreme Court accepted certiorari on the following question: "What must be shown to establish that a product's design is inherently distinctive for purposes of Lanham Act trade-dress protection?" Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 528 U.S. 808 (1999). How did the Court answer this question? • Is the court's holding in Samara Bros. consistent with its holding in Two Pesos? An example of the apparel at issue in Samara Bros. Justice SCALIA delivered the opinion of the Court. Respondent Samara Brothers, Inc., designs and manufactures children's clothing. Its primary product is a line of spring/summer one-piece seersucker outfits decorated with appliques of hearts, flowers, fruits, and the like. A number of chain stores, including JCPenney, sell this line of clothing under contract with Samara. [2] Petitioner Wal-Mart Stores, Inc., is one of the Nation's best known retailers, selling among other things children's clothing. In 1995, Wal-Mart contracted with one of its suppliers, Judy-Philippine, Inc., to manufacture a line of children's outfits for sale in the 1996 spring/summer season. Wal-Mart sent Judy-Philippine photographs of a number of garments from Samara's line, on which Judy-Philippine's garments were to be based; Judy-Philippine duly copied, with only minor modifications, 16 of Samara's garments, many of which contained copyrighted elements. In 1996, Wal-Mart briskly sold the so-called knockoffs, generating more than $1.15 million in gross profits. [3] In June 1996, a buyer for JCPenney called a representative at Samara to complain that she had seen Samara garments on sale at Wal-Mart for a lower price than JCPenney was allowed to charge under its contract with Samara. The Samara representative told the buyer that Samara did not supply its clothing to Wal-Mart. Their suspicions aroused, however, Samara officials launched an investigation, which disclosed that Wal-Mart and several other major retailers-Kmart, Caldor, Hills, and Goody's-were selling the knockoffs of Samara's outfits produced by Judy-Philippine. [4] After sending cease-and-desist letters, Samara brought this action in the United States District Court for the Southern District of New York against Wal-Mart, Judy-Philippine, Kmart, Caldor, Hills, and Goody's for copyright infringement under federal law, consumer fraud and unfair competition under New York law, and-most relevant for our purposesinfringement of unregistered trade dress under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). All of the defendants except Wal-Mart settled before trial. [5] After a weeklong trial, the jury found in favor of Samara on all of its claims. Wal-Mart then renewed a motion for judgment as a matter of law, claiming, inter alia, that there was insufficient evidence to support a conclusion that Samara's clothing designs could be legally protected as distinctive trade dress for purposes of § 43(a). The District Court denied the motion, 969 F.Supp. 895 (S.D.N.Y. 1997), and awarded Samara damages, interest, costs, and fees totaling almost $1.6 million, together with injunctive relief, see App. to Pet. for Cert. 56-58. The Second Circuit affirmed the denial of the motion for judgment as a matter of law, 165 F.3d 120 (1998), and we granted certiorari, 528 U.S. 808, 120 S.Ct. 308, 145 L.Ed.2d 35 (1999). [6] The Lanham Act provides for the registration of trademarks, which it defines in § 45 to include "any word, name, symbol, or device, or any combination thereof [used or intended to be used] to identify and distinguish [a producer's] goods . . . from those manufactured or sold by others and to indicate the source of the goods . . . ." 15 U.S.C. § 1127. Registration of a mark under § 2 of the Lanham Act, 15 U.S.C. § 1052, enables the owner to sue an infringer under § 32, 15 U.S.C. § 1114; it also entitles the owner to a presumption that its mark is valid, see § 7(b), 15 U.S.C. § 1057(b), and ordinarily renders the registered mark incontestable after five years of continuous use, see § 15, 15 U.S.C. § 1065. In addition to protecting registered marks, the Lanham Act, in § 43(a), gives a producer a cause of action for the use by any person of "any word, term, name, symbol, or device, or any combination thereof . . . which . . . is likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her goods . . . ." 15 U.S.C. § 1125(a). It is the latter provision that is at issue in this case. [7] The breadth of the definition of marks registrable under § 2, and of the confusionproducing elements recited as actionable by § 43(a), has been held to embrace not just word marks, such as "Nike," and symbol marks, such as Nike's "swoosh" symbol, but also "trade dress"-a category that originally included only the packaging, or "dressing," of a product, but in recent years has been expanded by many Courts of Appeals to encompass the design of a product. See, e.g., Ashley Furniture Industries, Inc. v. Sangiacomo N. A., Ltd., 187 F.3d 363 (C.A.4 1999) (bedroom furniture); Knitwaves, Inc. v. Lollytogs, Ltd., 71 F.3d 996 (C.A.2 1995) (sweaters); Stuart Hall Co., Inc. v. Ampad Corp., 51 F.3d 780 (C.A.8 1995) (notebooks). These courts have assumed, often without discussion, that trade dress constitutes a "symbol" or "device" for purposes of the relevant sections, and we conclude likewise. "Since human beings might use as a 'symbol' or 'device' almost anything at all that is capable of carrying meaning, this language, read literally, is not restrictive." Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162 (1995). This reading of § 2 and § 43(a) is buttressed by a recently added subsection of § 43(a), § 43(a)(3), which refers specifically to "civil action[s] for trade dress infringement under this chapter for trade dress not registered on the principal register." 15 U.S.C. [8] The text of § 43(a) provides little guidance as to the circumstances under which unregistered trade dress may be protected. It does require that a producer show that the allegedly infringing feature is not "functional," see § 43(a)(3), and is likely to cause confusion with the product for which protection is sought, see § 43(a)(1)(A), 15 U.S.C. § 1125(a)(1)(A). Nothing in § 43(a) explicitly requires a producer to show that its trade dress is distinctive, but courts have universally imposed that requirement, since without distinctiveness the trade dress would not "cause confusion . . . as to the origin, sponsorship, or approval of [the] goods," as the section requires. Distinctiveness is, moreover, an explicit prerequisite for registration of trade dress under § 2, and "the general principles qualifying a mark for registration under § 2 of the Lanham Act are for the most part applicable in determining whether an unregistered mark is entitled to protection under § 43(a)." Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992) (citations omitted). [9] In evaluating the distinctiveness of a mark under § 2 (and therefore, by analogy, under § 43(a)), courts have held that a mark can be distinctive in one of two ways. First, a mark is inherently distinctive if "[its] intrinsic nature serves to identify a particular source." Ibid. In the context of word marks, courts have applied the now-classic test originally formulated by Judge Friendly, in which word marks that are "arbitrary" ("Camel" cigarettes), "fanciful" ("Kodak" film), or "suggestive" ("Tide" laundry detergent) are held to be inherently distinctive. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 10-11 (C.A.2 1976). Second, a mark has acquired distinctiveness, even if it is not inherently distinctive, if it has developed secondary meaning, which occurs when, "in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself." Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851, n. 11 (1982). * [10] The judicial differentiation between marks that are inherently distinctive and those that have developed secondary meaning has solid foundation in the statute itself. Section 2 requires that registration be granted to any trademark "by which the goods of the applicant may be distinguished from the goods of others"-subject to various limited exceptions. 15 U.S.C. § 1052. It also provides, again with limited exceptions, that "nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce"-that is, which is not inherently distinctive but has become so only through secondary meaning. § 2(f), 15 U.S.C. § 1052(f). Nothing in § 2, however, demands the conclusion that every category of mark necessarily includes some marks "by which the goods of the applicant may be distinguished from the goods of others" without secondary meaning-that in every category some marks are inherently distinctive. [11] Indeed, with respect to at least one category of mark-colors-we have held that no mark can ever be inherently distinctive. See Qualitex, supra, at 162-163,. In Qualitex, petitioner manufactured and sold green-gold dry-cleaning press pads. After respondent began selling pads of a similar color, petitioner brought suit under § 43(a), then added a claim under § 32 after obtaining registration for the color of its pads. We held that a color could be protected as a trademark, but only upon a showing of secondary meaning. Reasoning by analogy to the Abercrombie & Fitch test developed for word marks, we noted that a product's color is unlike a "fanciful," "arbitrary," or "suggestive" mark, since it does not "almost automatically tell a customer that [it] refer[s] to a brand," 514 U.S., at 162-163, and does not "immediately . . . signal a brand or a product 'source,'" id., at 163. However, we noted that, "over time, customers may come to treat a particular color on a product or its packaging . . . as signifying a brand." Ibid. Because a color, like a "descriptive" word mark, could eventually "come to indicate a product's origin," we concluded that it could be protected upon a showing of secondary meaning. Ibid. [12] It seems to us that design, like color, is not inherently distinctive. The attribution of inherent distinctiveness to certain categories of word marks and product packaging derives from the fact that the very purpose of attaching a particular word to a product, or encasing it in a distinctive packaging, is most often to identify the source of the product. Although the words and packaging can serve subsidiary functions-a suggestive word mark (such as "Tide" for laundry detergent), for instance, may invoke positive connotations in the consumer's mind, and a garish form of packaging (such as Tide's squat, brightly decorated plastic bottles for its liquid laundry detergent) may attract an otherwise indifferent consumer's attention on a crowded store shelf-their predominant function remains source identification. Consumers are therefore predisposed to regard those symbols as indication of the producer, which is why such symbols "almost automatically tell a customer that they refer to a brand," id., at 162-163, and "immediately . . . signal a brand or a product 'source,'" id., at 163. And where it is not reasonable to assume consumer predisposition to take an affixed word or packaging as indication of source-where, for example, the affixed word is descriptive of the product ("Tasty" bread) or of a geographic origin ("Georgia" peaches)inherent distinctiveness will not be found. That is why the statute generally excludes, from those word marks that can be registered as inherently distinctive, words that are "merely descriptive" of the goods, § 2(e)(1), 15 U.S.C. § 1052(e)(1), or "primarily geographically descriptive of them," see § 2(e)(2), 15 U.S.C. § 1052(e)(2). In the case of product design, as in the case of color, we think consumer predisposition to equate the feature with the source does not exist. Consumers are aware of the reality that, almost invariably, even the most unusual of product designs-such as a cocktail shaker shaped like a penguin-is intended not to identify the source, but to render the product itself more useful or more appealing. [13] The fact that product design almost invariably serves purposes other than source identification not only renders inherent distinctiveness problematic; it also renders application of an inherent-distinctiveness principle more harmful to other consumer interests. Consumers should not be deprived of the benefits of competition with regard to the utilitarian and esthetic purposes that product design ordinarily serves by a rule of law that facilitates plausible threats of suit against new entrants based upon alleged inherent distinctiveness. How easy it is to mount a plausible suit depends, of course, upon the clarity of the test for inherent distinctiveness, and where product design is concerned we have little confidence that a reasonably clear test can be devised. Respondent and the United States as amicus curiae urge us to adopt for product design relevant portions of the test formulated by the Court of Customs and Patent Appeals for product packaging in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342(1977). That opinion, in determining the inherent distinctiveness of a product's packaging, considered, among other things, "whether it was a 'common' basic shape or design, whether it was unique or unusual in a particular field, [and] whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods." Id., at 1344 (footnotes omitted). Such a test would rarely provide the basis for summary disposition of an anticompetitive strike suit. Indeed, at oral argument, counsel for the United States quite understandably would not give a definitive answer as to whether the test was met in this very case, saying only that "[t]his is a very difficult case for that purpose." Tr. of Oral Arg. 19. [14] It is true, of course, that the person seeking to exclude new entrants would have to establish the nonfunctionality of the design feature, see § 43(a)(3), 15 U.S.C. § 1125(a)(3) (1994 ed., Supp. V)-a showing that may involve consideration of its esthetic appeal, see Qualitex, supra, at 170, 115 S.Ct. 1300. Competition is deterred, however, not merely by successful suit but by the plausible threat of successful suit, and given the unlikelihood of inherently source-identifying design, the game of allowing suit based upon alleged inherent distinctiveness seems to us not worth the candle. That is especially so since the producer can ordinarily obtain protection for a design that is inherently source identifying (if any such exists), but that does not yet have secondary meaning, by securing a design patent or a copyright for the design-as, indeed, respondent did for certain elements of the designs in this case. The availability of these other protections greatly reduces any harm to the producer that might ensue from our conclusion that a product design cannot be protected under § 43(a) without a showing of secondary meaning. [15] Respondent contends that our decision in Two Pesos forecloses a conclusion that product-design trade dress can never be inherently distinctive. In that case, we held that the trade dress of a chain of Mexican restaurants, which the plaintiff described as "a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals," 505 U.S., at 765 (internal quotation marks and citation omitted), could be protected under § 43(a) without a showing of secondary meaning, see id., at 776. Two Pesos unquestionably establishes the legal principle that trade dress can be inherently distinctive, see, e.g., id., at 773, 112 S.Ct. 2753, but it does not establish that product-design trade dress can be. Two Pesos is inapposite to our holding here because the trade dress at issue, the decor of a restaurant, seems to us not to constitute product design. It was either product packaging-which, as we have discussed, normally is taken by the consumer to indicate origin-or else some tertium quid that is akin to product packaging and has no bearing on the present case. [16] Respondent replies that this manner of distinguishing Two Pesos will force courts to draw difficult lines between product-design and product-packaging trade dress. There will indeed be some hard cases at the margin: a classic glass Coca-Cola bottle, for instance, may constitute packaging for those consumers who drink the Coke and then discard the bottle, but may constitute the product itself for those consumers who are bottle collectors, or part of the product itself for those consumers who buy Coke in the classic glass bottle, rather than a can, because they think it more stylish to drink from the former. We believe, however, that the frequency and the difficulty of having to distinguish between product design and product packaging will be much less than the frequency and the difficulty of having to decide when a product design is inherently distinctive. To the extent there are close cases, we believe that courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning. The very closeness will suggest the existence of relatively small utility in adopting an inherent-distinctiveness principle, and relatively great consumer benefit in requiring a demonstration of secondary meaning. [17] We hold that, in an action for infringement of unregistered trade dress under § 43(a) of the Lanham Act, a product's design is distinctive, and therefore protectible, only upon a showing of secondary meaning. The judgment of the Second Circuit is reversed, and the case is remanded for further proceedings consistent with this opinion. 1. What about copyright infringement in Samara Bros.? At the district court, "[t]he jury found that Wal-Mart had willfully infringed Samara's rights, awarding Samara $912,856.77 on the copyright claims, $240,458.53 for the Lanham Act violation and $50 for the state law violations." Samara Bros. v. Wal-Mart Stores, Inc., 165 F.3d 120, 123 (2d Cir. 1998). Decades later, Judge Denny Chin, who was the district court judge in Samara Bros. (and is now on the Second Circuit), reflected on the case: Ironically, the Supreme Court latched on to a very small part of the case. This was principally a copyright case-the copying of Samara's copyrighted designs. But Samara had included a trade dress claim, and the jury awarded some damages for the trade dress claim, although far less than for the copyright claims. The jury's award on the copyright claims remained intact, and, ultimately, the Supreme Court's reversal had little practical impact on the case, even as it made new law. Apparently, the Supreme Court saw this case as an opportunity to clarify the law in the trade dress area, and it did so. The Supreme Court's holding in Samara Bros. eliminated one problem-how to analyze the inherent distinctiveness of product configuration trade dress-but created another: how to determine whether a particular product feature or combination of product features qualifies as product packaging trade dress, product configuration trade dress, or perhaps some other kind of trade dress. The opinion excerpts that follow offer examples of how courts have sought to determine where along the packaging/configuration divide particular forms of trade dress fall. In reading the opinions, consider the following questions: How should a court treat various forms of decoration applied to the surface of the product (e.g., stripes on the side of an athletic shoe)? Is such decoration product packaging, production configuration, or something else? In re Slokevage 441 F.3d 957 (Fed. Cir. 2006) LOURIE, Circuit Judge. [1] Joanne Slokevage ("Slokevage") appeals from the decision of the United States Patent and Trademark Office, Trademark Trial and Appeal Board ("Board") sustaining the refusal of the examiner to register her trade dress mark for clothing. In re Joanne Slokevage, Serial No. 75602873 (TTAB Nov. 10, 2004) ("Final Decision"). Because the Board's finding that Slokevage's trade dress was product design and thus could not be inherently distinctive . . . we affirm. [2] Slokevage filed an application to register a mark on the Principal Register for "pants, overalls, shorts, culottes, dresses, skirts." Slokevage described the mark in her application as a "configuration" that consists of a label with the words "FLASH DARE!" in a V-shaped background, and cut-out areas located on each side of the label. The cut-out areas consist of a hole in a garment and a flap attached to the garment with a closure device. This trade dress configuration, which is located on the rear of various garments, is depicted below: [3] Although Slokevage currently seeks to register a mark for the overall configuration of her design, she has already received protection for various aspects of the trade dress configuration. For example, she received a design patent for the cut-out area design. She also registered on the Supplemental Register 1 a design mark for the cut-out area. In addition, she registered the word mark "FLASH DARE!" on the Principal Register. [4] The trademark examiner initially refused registration of the proposed mark on the ground that it constituted a clothing configuration that is not inherently distinctive. The examiner afforded Slokevage the opportunity to submit evidence of acquired distinctiveness or to disclaim the design elements of the configuration, but Slokevage chose not to submit evidence of acquired distinctiveness or to disclaim the design elements. Rather, she argued that the trade dress was inherently distinctive. The examiner, relying on section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), made final his refusal to register the mark on the ground that the clothing configuration constitutes "product design/configuration," and pursuant to the decision of the U.S. Supreme Court in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000), "product design" cannot be inherently distinctive. The examiner noted that Slokevage's reference in her application to the trade dress as a "cut-away flap design" supported a determination that the configuration constitutes product design . . . . [5] Slokevage appealed the refusal of the examiner to register the trade dress configuration, and the Board affirmed the examiner's decision. The Board found that the cutout areas, consisting of the holes and flaps, constituted product design. Relying on Wal-Mart, the Board observed that a product design "will not be regarded as a source indicator at the time of its introduction." According to the Board, Slokevage's trade dress, as product design, could not be inherently distinctive, and therefore could not be registered absent a showing of acquired distinctiveness. . . . . 1 Pursuant to section 23 of the Lanham Act, the United States Patent and Trademark Office ("PTO") maintains a Supplemental Register for marks "capable of distinguishing applicant's goods or services and not registrable on the principal register." 15 U.S.C. § 1091(a). DISCUSSION . . . . [6] As a preliminary matter, Slokevage argues that whether trade dress is product design or not is a legal determination, whereas the government asserts that it is a factual issue. The resolution of that question is an issue of first impression for this court. We conclude that the determination whether trade dress is product design is a factual finding because it is akin to determining whether a trademark is inherently distinctive or whether a mark is descriptive, which are questions of fact. . . . Inherent distinctiveness or descriptiveness involves consumer perception and whether consumers are predisposed towards equating a symbol with a source. See In re MBNA Am. Bank, N.A., 340 F.3d 1328, 1332 (Fed. Cir. 2003). Such issues are determined based on testimony, surveys, and other evidence as questions of fact. Determining whether trade dress is product design or product packaging involves a similar inquiry. Wal-Mart, 529 U.S. at 213 (discussing product packaging and design in the context of consumers ability to equate the product with the source). We therefore will defer to the Board's finding on product design, affirming the Board if its decision is supported by substantial evidence . . . . [7] On appeal, Slokevage argues that the Board erred in determining that the trade dressfoot_0 for which she seeks protection is product design and thus that it cannot be inherently distinctive. She asserts that the Board's reliance on the Supreme Court's decision in Wal-Mart to support its position that Slokevage's trade dress is product design is misplaced. In particular, she contends that Wal-Mart does not provide guidance on how to determine whether trade dress is product design. Moreover, she maintains that the trade dress at issue in Wal-Mart, which was classified as product design without explanation, is different from Slokevage's trade dress because the Wal-Mart trade dress implicated the overall appearance of the product and was a theme made up of many unique elements. Slokevage argues that her trade dress, in contrast, involves one component of a product design, which can be used with a variety of types of clothing. Slokevage further asserts that her trade dress is located on the rear hips of garments, which is a location that consumers frequently recognize as identifying the source of the garment. [8] The PTO responds that the Board correctly concluded that Slokevage's trade dress is product design and that it properly relied on Wal-Mart for support of its determination. According to the PTO, in the Wal-Mart decision the Supreme Court determined that a design of clothing is product design. The PTO further asserts that the trade dress at issue in Wal-Mart, which was classified as product design, is similar to Slokevage's trade dress. The trade dress in Wal-Mart consists of design elements on a line of garments, and Slokevage's trade dress similarly consists of a design component common to the overall design of a variety of garments. The PTO notes that Slokevage's trade dress application refers to her trade dress as a "configuration" including a "clothing feature," and that "product configuration" is synonymous with "product design." The PTO also argues that under Wal-Mart product design cannot be inherently distinctive, the rationale being that consumers perceive product design as making the product more useful or desirable, rather than indicating source. According to the PTO, the trade dress at issue here makes the product more desirable to consumers, rather than indicates source. Finally, the PTO notes that even if it were a close case as to whether Slokevage's trade dress constitutes product design, the Court's opinion in Wal-Mart states that in "close cases," trade dress should be categorized as product design, thereby requiring proof of acquired distinctiveness for protection. 529 U.S. at 215. [9] We agree with the Board that Slokevage's trade dress constitutes product design and therefore cannot be inherently distinctive. . . . [10] Directly relevant to our discussion of product design is the Court's discussion in Wal-Mart. . . . {T}he {Wal-Mart} Court established a bright-line rule-product design cannot be inherently distinctive, and always requires proof of acquired distinctiveness to be protected. The Court did not recite the factors that distinguish between product packaging and product design trade dress, but stated that in "close cases" courts should classify the trade dress as product design. Id. at 215. [11] Both parties agree that if we determine that the trade dress at issue is product design, then it cannot be inherently distinctive under the decision in Wal-Mart. The issue pertinent to this appeal, however, is whether Slokevage's proposed trade dress is product design. Although the decision in Wal-Mart does not expressly address the issue of what constitutes product design, it is informative to this case because it provides examples of trade dress that are product design. The Court observed that a "cocktail shaker shaped like a penguin" is product design and that the trade dress at issue in that case, "a line of spring/summer one-piece seersucker outfits decorated with appliques of hearts, flowers, fruits, and the like" is product design. Wal-Mart, 529 U.S. at 207. These examples demonstrate that product design can consist of design features incorporated into a product. Slokevage urges that her trade dress is not product design because it does not alter the entire product but is more akin to a label being placed on a garment. We do not agree. The holes and flaps portion are part of the design of the clothing-the cut-out area is not merely a design placed on top of a garment, but is a design incorporated into the garment itself. Moreover, while Slokevage urges that product design trade dress must implicate the entire product, we do not find support for that proposition. Just as the product design in Wal-Mart consisted of certain design features featured on clothing, Slokevage's trade dress similarly consists of design features, holes and flaps, featured in clothing, revealing the similarity between the two types of design. [12] In addition, the reasoning behind the Supreme Court's determination that product design cannot be inherently distinctive is also instructive to our case. The Court reasoned that, unlike a trademark whose "predominant function" remains source identification, product design often serves other functions, such as rendering the "product itself more useful or more appealing." Wal-Mart, 529 U.S. at 212, 213. The design at issue here can serve such utilitarian and aesthetic functions. For example, consumers may purchase Slokevage's clothing for the utilitarian purpose of wearing a garment or because they find the appearance of the garment particularly desirable. Consistent with the Supreme Court's analysis in Wal-Mart, in such cases when the purchase implicates a utilitarian or aesthetic purpose, rather than a source-identifying function, it is appropriate to require proof of acquired distinctiveness. [13] Finally, the Court in Wal-Mart provided guidance on how to address trade dress cases that may be difficult to classify: "To the extent that there are close cases, we believe that courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning." 529 U.S. at 215. Even if this were a close case, therefore, we must follow that precedent and classify the trade dress as product design. We thus agree with the Board that Slokevage's trade dress is product design and therefore that she must prove acquired distinctiveness in order for her trade dress mark to be registered. In LVL XIII Brands, the plaintiff produced "'luxury' men's sneakers" featuring "a rectangular metal toe plate with a 'LVL XIII inscription' secured to the front outsole of the sneaker by metal screws." Id. at 628. (See the above image on the left). The defendant produced luxury sneakers also featuring a metal toe plate (above, right). The parties filed cross-motions for summary judgment. The district court analyzed whether the plaintiff's toe plate design was product packaging or product configuration: This is not a close case. Even a cursory examination of the TP {metal toe plate} discloses that it does not qualify as a trademark or product packaging. . . . {P}roduct packaging is generally limited to "the appearance of labels, wrappers, boxes, envelopes, and other containers used in packaging a product as well as displays and other materials used in presenting the product to prospective purchasers." Restatement (Third) of Unfair Competition § 16 cmt.a (1995). Tellingly, LVL XIII has not offered any admissible evidence to support its claim that the TP falls within either of these categories. And the record evidence is decidedly to the contrary. First, the "packag[ing]" described in LVL XIII's business plan consists solely of "distinctive branded shoe boxes" and "black cotton dust bags"-it does not include the TP. Second, in declining to register {LVL XIII's trademark} Application, the PTO stated that "the rectangular shape of the shoe toe plate . . . is a configuration of a feature of the shoe design," which "can never be inherently distinctive as a matter of law." Although the PTO's determination is not dispositive, the Court is to "accord weight" to it. Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 148 n. 11 (2d Cir. 1997). Such deference is particularly appropriate where, as here, the PTO's determination is consistent with the registrant's own characterization of the claimed mark: As noted, the '102 Application sought registration for a "shoe toe design" (emphasis added); see In re Slokevage, 441 F.3d at 959 ("Slokevage's reference in her application to the trade dress as a 'cut-away flap design' supported a determination that the configuration constitutes product design."). And LVL XIII used dotted lines to identify unclaimed portions of the mark, a procedure required only for "trade dress marks." See U.S. Patent & Trademark Office, Trademark Manual of Examining Procedures ("TMEP") § 1202.02(c)(i) (Apr. 2016 ed.). Despite this evidence, LVL XIII argues that the TP is an inherently distinctive trademark because its uniform size and placement on LVL XIII's line of sneakers renders it "arbitrary" and "fanciful," and thus apt to be an automatic indicator of source. That argument is not persuasive. . . . Despite LVL XIII's efforts to shoehorn the TP into the trademark category, it does not fit. Rather, like the configuration in Slokevage, the TP serves a primarily aesthetic function: making LVL XIII's sneakers appear more enticing. Accordingly, the TP can be classified only as a product design feature which is not inherently distinctive. To prevail on its Lanham Act claims, LVL XIII must therefore show that the TP acquired secondary meaning. In McKernan, the plaintiff McKernan sold a novelty bumper sticker that purported to be a "Cape Cod Canal Tunnel Permit." (This was meant to be hilarious. There is no tunnel to Cape Cod.) He brought a trademark infringement suit against Burek and others who were producing similar bumper stickers. McKernan conceded that his bumper sticker design had no secondary meaning. The parties filed cross-motions for summary judgment. Judge Lasker analyzed whether the bumper sticker was product packaging or product configuration as follows: The Tunnel Permit presents one of the "hard cases at the margin" referred to by the Supreme Court {in Wal-Mart}. It is particularly difficult to try to distinguish between the packaging and the product when discussing an ornamental bumper sticker. The packaging and the product are so intertwined that distinguishing between them may be regarded as a scholastic endeavor. Nevertheless, the Supreme Court's opinion in Wal-Mart provides some guidance. The example given in Wal-Mart, of the classic Coca-Cola bottle is instructive: an item is the product if it is the essential commodity being purchased and consumed rather than the dress which presents the product. Here, the essential commodity being purchased is a joke on a bumper sticker. All of the visual elements contained in the Tunnel Permit are a part of this joke and indispensable to it. What is being purchased and consumed is the novelty sticker, not dress identifying the prestige or standing of its source. Unlike more traditional trade dress cases that concern product packaging (like water bottles, see Nora Beverages, Inc. v. Perrier Group of America, Inc., 269 F.3d 9 From Rockwell Group, http://www.rockwellgroup.com/projects/entry/best-cellars. 114 (2d Cir. 2001)) or product designs (like children's clothing, see Samara Bros., 529 U.S. at 213), this case concerns the interior decor of a retail establishment where customers purchase other products. In this, the case is similar to Two Pesos, which concerned the interior decor of Mexican-themed restaurants. See Two Pesos, 505 U.S. at 764-65 n. 1 (noting that trade dress "may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques" (citations and internal quotation marks omitted)). As the Supreme Court explained, the interior decor category fits awkwardly into the classifications of trade dress law, constituting either product packaging or a "tertium quid" akin to product packaging. Samara Bros., 529 U.S. at 215. Interior decor is thus clearly not product design. Accordingly, it is appropriate to analyze the Best Cellars' interior decor trade dress under the product packaging standard for inherent distinctiveness . . . . In Fedders, the plaintiff, a manufacturer of single room air conditioners claimed as its trade dress the "undulating curve on the left or right of the faceplate separating the portion of the faceplate on which the controls are positioned from the air intake louvers." Judge Gilbert analyzed the question of product packaging / product configuration as follows: In this case, the key question is whether the subject trade dress-the undulating curve on the decorative front-is part of the product design or packaging. The defendants argue that the curve is part of the product design, and that, therefore, evidence of secondary meaning is required. On the other hand, Fedders notes that the curve is not functional, but rather, purely esthetic. Moreover, Fedders argues that the curve is a unique design that is associated with its Chassis line of air conditioners. Therefore, according to Fedders, the curve is "inherently distinctive," and no evidence of secondary meaning is necessary . . . . In this case, the Court believes that Fedders's undulating curve is not "packaging", but rather product design. The curve serves a purpose other than to identify the maker. It serves the purpose of making the air conditioners more esthetically appealing. The applicant sought to register the mark shown below for goods it identified as consisting of a "Concession trailer for snowball vendors to operate a viable snowball business." Id. at 1001. The applicant described the mark as follows: "The mark consists of a three-dimensional configuration of a snowcapped roof with the word "SNOBALLS", a snowball and associated beverage container positioned on top of a concession trailer for snowball vendors. The matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark." Id. at 1001-02. The applicant presented the photograph shown below as its specimen of use: The TTAB found: "Clearly, the product at issue in this case is the concession trailer; that is the product offered for sale, purchased by, and used by snowball vendors. It is not a container for flavored shaved ice or snowballs sold to consumers, as suggested by Applicant. Accordingly, Applicant's applied-for mark is properly characterized as a product design. Specifically, it is the design of the roof of a concession trailer. It therefore requires a showing of acquired distinctiveness in order to be registered on the Principal Register." Id. In In Re Frankish Enterprises Ltd., the applicant sought to register the above-pictured three-dimensional mark for "[e]ntertainment services, namely, performing and competing in motor sports events in the nature of monster truck exhibitions." The applicant described the mark as follows: "The mark consists of a truck cab body in the design of a fanciful, prehistoric animal. The matter shown by dotted lines is not part of the mark, but serves only to show the position of the mark." The TTAB concluded that the mark was capable of inherent distinctiveness: Applicant does not seek registration of its design for a product, it seeks registration of its "fanciful, prehistoric animal" design for its monster truck exhibition services, and under Two Pesos, trade dress for services may be inherently distinctive. Indeed, Applicant's service is exhibiting its monster truck in action, such as doing wheelies, jumping over and crushing smaller vehicles and otherwise entertaining fans with the truck's size, power and sheer awesomeness, which could be performed with or without the "fanciful, prehistoric animal" design on the outside of the truck, just as Taco Cabana's service of offering Mexican food to restaurant customers could be performed without the particular interior design found to be inherently distinctive in Two Pesos. {T}he "fanciful, prehistoric animal" design is akin to the packaging of what is being sold, in this case Applicant's monster truck services. In Re Frankish Enterprises Ltd., 113 U.S.P.Q.2d 1964, 2015 WL 1227728, at *4 (TTAB 2015). (For the Board's determination of whether in fact the mark was inherently distinctive, see below in Part I.A.2.c). 1. Is the three stripes design for the surface of athletic shoes shown in the registration below product configuration, product packaging, or some "tertium quid"? (The dotted lines do not constitute part of the claimed mark. The registration includes them only to show placement of the mark). Product configuration trade dress and single colors (whether applied to the packaging of the product or the product itself) are per se incapable of inherent distinctiveness, and it is likely that courts would also find smells, tastes, and textures also to be incapable of inherent distinctiveness. But this leaves a wide array of nonverbal marks, including product packaging trade dress, that remain capable of inherent distinctiveness. The question, then, is how to determine whether a particular mark that falls into one of these categories is in fact inherently distinctive. While the Abercrombie spectrum works reasonably well for verbal marks, it is not well suited to the inherent distinctiveness analysis of nonverbal marks. Instead, as we will see below, most courts outside of the Second Circuit have adopted the socalled Seabrook factors, from Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342(CCPA 1977), to analyze the inherent distinctiveness of nonverbal marks. We first consider an example of the Second Circuit's attempt to adapt its Abercombie spectrum to the question of whether a product packaging feature is inherently distinctive. We then turn to an example of the (probably far more sensible) Seabrook factors approach to the question. {Plaintiff Fun-Damental Too, Ltd. ("Fun-Damental") brought suit for trademark infringement against defendants alleging that defendants had copied the trade dress of Fun-Damental's "Toilet Bank" (see photo below) in the sale of their own "Currency Can." Judge Mukasey of the S.D.N.Y. granted a preliminary injunction in favor of Fun-Damental. Defendants appealed. Excerpted here are the court's description of the Toilet Bank's trade dress and the court's analysis of the inherent distinctiveness, if any, of that trade dress.} CARDAMONE, Circuit Judge . . . . [1] Plaintiff's product is displayed in stores in a royal blue triangular-shaped box. The Toilet Bank itself is visible within the open-style box, which allows a consumer access to the toilet handle so that the flushing sound may be tested. The toy's bowl is covered with a clear plastic cover that includes a raised three-dimensional circle to which is affixed a gray sticker depicting a coin. The bank is held in place in its box by a 1/4 inch strap running up one side of the toilet bowl, through the plastic cover, and down the other side. [2] The product name "TOILET BANK" appears in yellow letters on the royal blue box's lower front panel. The four inch-high upper rear panel is decorated with the product name and two pictures demonstrating how to use the product. The top picture shows a hand holding a coin over the toilet bowl, and the bottom one shows an index finger depressing the handle with the message "REAL FLUSHING SOUND" in white letters on a red bubble. In the upper right hand corner of this panel is a yellow starburst with the words "REAL FLUSHING SOUND" in red letters. Below it is a yellow arrow pointing down toward the handle with the legend in red: "TRY ME" and in smaller letters: "PRESS HANDLE." The same message appears on a red arrow sticker, affixed to the toilet tank, pointing diagonally towards the silver handle. [5] Yet trade dress protection has limits. A trade dress that consists of the shape of a product that conforms to a well-established industry custom is generic and hence unprotected. For example, the cosmetics industry's common use of black, rectangular-shaped compacts renders that packaging generic. Mana, 65 F.3d at 1070; see also Paddington, 996 F.2d at 583 (soda industry practice would render green cans generic for the purpose of packaging lime-flavored soda). In short, despite the broad opportunity to design an arbitrary or fanciful trade dress, a specific trade dress must still be evaluated to determine whether it is so distinctive as to point to a single source of origin and thereby be entitled to Lanham Act protection. [6] Defendants urge us to adopt a more stringent standard of distinctiveness than that used by the trial court. Recently we declined to use the Abercrombie spectrum of distinctiveness in a trade dress case that involved features of the product itself. Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996 (2d Cir. 1995). In an attempt to extend that rationale, defendants suggest we adopt an alternative test for inherent distinctiveness of trade dress set forth in Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 1344 (C.C.P. A. 1977). Under Seabrook, the inquiry is whether the design or shape of a package is a common, basic one, or whether it is unique or unusual in a particular field; whether the design is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a trade dress or ornamentation for such goods, or whether it is one capable of creating a commercial impression separate from the accompanying words. Id. [7] We see no reason to abandon the Abercrombie distinctiveness spectrum in this case. Several reasons lead us to decline. First, we have expressly ruled that the Abercrombie classifications apply to packaging. Paddington, 996 F.2d at 583. Second, Knitwaves is a pure product configuration case, separate from product packaging, the category of trade dress at issue in this case. In Knitwaves, the trade dress lay in the product itself, rather than in a symbol-a trademark or packaging-associated with the product. It was therefore difficult to define some aspect or feature of the trade dress as "descriptive" or "arbitrary" in relation to the product. See Knitwaves, 71 F.3d at 1007-08 (quoting Duraco Prods. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1440-41 (3d Cir. 1994)). In contrast, a store display of a product's packaging style creates an image of the product more readily separated from the product itself. Moreover, although there may be a finite set of ways to configure a product, the variety of packaging available for a given product is limited only by the bounds of imagination. These factors render packaging more suitable than product configuration for classification under the Abercrombie system as arbitrary or fanciful, suggestive, descriptive, or generic. [8] Third, use of the Abercrombie test tracks the purpose of the Lanham Act to identify source. That is, it is consistent with the Supreme Court's emphasis on a trade dress' capacity to "identify a particular source of the product." Two Pesos, 505 U.S. at 771. While a more stringent test is necessary in the product configuration context, applying Abercrombie to product packaging serves the aims of the Lanham Act because consumers are more likely to rely on the packaging of a product than on the product's design as an indication of source. Restatement (Third) of Unfair Competition § 16 cmt. b (1995). In contrast, over-inclusive protection of the product design risks conferring benefits beyond the intended scope of the Lanham Act and entering what is properly the realm of patent law. See Fabrication Enters., Inc. v. Hygenic Corp., 64 F.3d 53, 59 n. 4 (2d Cir. 1995). Thus, though the Abercrombie classifications were originally developed for analysis of word marks, we conclude that because of the endless number of product packaging options the Abercrombie test is appropriately applied in this trade dress case. B. Distinctiveness in the Instant Case [9] Defendants insist that the Toilet Bank's trade dress is not inherently distinctive, principally because the elements identified as part of that characterization are generic. Classification under the Abercrombie spectrum of distinctiveness is a question of fact reviewed under the clearly erroneous standard. See Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1039-40 (2d Cir. 1992) (classification of trademarks). We evaluate trade dress distinctiveness by looking at all its elements and considering the total impression the trade dress gives to the observer. Paddington, 996 F.2d at 584. Concededly, a number of individual features of the Toilet Bank's trade dress are common in the toy industry; for example, the triangular shape of the box and its open styling are found everywhere on toy store shelves. The red arrows stating "Try Me," the starburst (separate from the notation "flushing sound"), and the raised blister are similarly quite usual legends in the toy business. Although some of the individual elements of a trade dress are generic or descriptive, the impression given by all of them in combination may be inherently distinctive. Such was what the district court found here; and we cannot say that this finding is clearly erroneous. [10] Gemmy maintains that the trial court improperly considered the similarities between its product and Fun-Damental's when making the inherently distinctive determination regarding the Toilet Bank's trade dress. We disagree. Although Fun-Damental makes no claim regarding the copying of its product, it was appropriate to consider the packaging in conjunction with the product, rather than simply the empty box. "[T]rade dress today encompasses a broad concept of how a product presented to the public looks, including its color, design, container, and all the elements that make up its total appearance." Mana, 65 F.3d at 1069. [11] This "total look" approach is the only workable way to consider such elements of the trade dress as the arrow sticker that is affixed to the Toilet Bank's tank. Because the box is open in order to display the product, it was proper to analyze Fun-Damental's trade dress as seen by consumers-including the Toilet Bank product. Further, there is no risk of "spillover" protection for the Toilet Bank as a product here since the injunction is limited to the sale of a similar product in a particular package, rather than an absolute ban on the sale of the Currency Can in an open-style box. In sum, we conclude that looking at the product itself in the context of its packaging is a proper method of analyzing open-style packaging for trade dress protection. In Seabrook, the plaintiff Seabrook had registered, for frozen vegetables, a mark consisting in part of a pointed loop (or "stylized leaf design", as Seabrook called it) as shown below. Seabrook opposed the registration of Bar-Well's mark, also for frozen foods, that incorporated a similar pointed loop design on the ground that Bar-Well's use of the mark would confuse consumers. The Court of Customs & Patent Appeals (the predecessor court to the Court of Appeals for the Federal Circuit) set forth various factors relevant to the question of whether consumers would perceive the pointed loop design (absent the words and image of a farm) as inherently distinctive of source: In determining whether a design is arbitrary or distinctive this court has looked to whether it was a 'common' basic shape or design, whether it was unique or unusual in a particular field, whether it was a mere refinement of a commonlyadopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods, or whether it was capable of creating a commercial impression distinct from the accompanying words. Id. at 1344. The CCPA ultimately determined that the pointed loop design on its own would be perceived merely as decoration. Id. These factors soon came to inform most courts' analysis of the inherent distinctiveness of all nonverbal trademarks (including, before Samara Bros., product configuration trade dress). Note that the two leading treatises on trademark law disagree on whether the Abercrombie spectrum or the Seabrook factors work better for assessing the inherent distinctiveness of product packaging trade dress. McCarthy strongly endorses Seabrook: In the author's view, the Seabrook test is by far the preferable test to classify inherently distinctive trade dress in packaging and containers. Necessarily focusing upon the probable reaction of the ordinary consumer, it focuses upon the key issue in these cases: is the design so different in this market that it will immediately be perceived as a source identifier, not merely or solely as an attractive decoration or embellishment. The Abercrombie spectrum was developed specifically for word marks and does not translate into the world of shapes and designs. MCCARTHY § 8:13. The Gilson treatise remains loyal to Abercrombie: The Abercrombie classifications are not an ideal fit for product packaging trade dress cases; is a squeeze bottle with a top that squirts liquid suggestive of dish soap or spring water or is it generic for those products because it is so widely used? Nevertheless, pending further clarification from the Supreme Court, lower courts should continue to use the Abercrombie spectrum in classifying product packaging trade dress. Note further that if a court finds a feature of product packaging to lack both inherent and acquired distinctiveness or a feature of product configuration to lack acquired distinctiveness, then the court will often (but not always) deem the feature to be "mere ornamentation." As you read through the following opinion, consider the following questions: {The relevant facts are as follows: Plaintiff Amazing Spaces, Inc. ("Amazing Spaces") and defendant Metro Mini Storage ("Metro") were rival self-storage businesses in Houston, Texas. Amazing Spaces claimed a star design as its service mark, which it registered at the PTO in 2004 (see the registration certificate below). Metro used a similar design on its storage buildings. In response to Amazing Spaces' suit for trademark infringement, Metro argued that Amazing Spaces' star design mark lacked both inherent and acquired distinctiveness and was improperly registered. The district court agreed and granted Metro's motion for summary judgment on the issue. On appeal, after considering, among other things, the weight to be accorded to the PTO registration (an issue we will discuss in Part I.D below), the Fifth Circuit turned to the question of whether the star design was inherently distinctive.} KING, Circuit Judge . . . . [1] As mentioned above, "a mark is inherently distinctive if 'its intrinsic nature serves to identify a particular source.'" Wal-Mart Stores, 529 U.S. at 210 (quoting Two Pesos, 505 U.S. at 768). Inherent distinctiveness is attributable to a mark when the mark "almost automatically tells a customer that it refers to a brand and . . . immediately signal[s] a brand or a product source." Id. at 212 (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162-63 (1995)). The parties disagree over not only the answer to whether the Star Symbol is inherently distinctive but also over the proper method for conducting the inquiry. Metro urges that the familiar Abercrombie test cannot be used to categorize the Star Symbol and instead asks that we apply the Seabrook Foods test to determine that the Star Symbol is not inherently distinctive. Amazing Spaces, by contrast, presses the application of the Abercrombie test, under which it claims the Star Symbol is inherently distinctive, and it argues alternatively that the Star Symbol is inherently distinctive under the Seabrook Foods test. [2] In Abercrombie, Judge Friendly sought to arrange the universe of marks into a spectrum of distinctiveness. See 537 F.2d at 9. . . . [3] We agree with Metro that the Star Symbol resists categorization under the Abercrombie test, and we consequently do not rely on a rote application of its categories in determining whether the Star Symbol is inherently distinctive. The Supreme Court's most recent recitation of the Abercrombie categories noted its use only in the context of marks consisting of words. See Wal-Mart Stores, 529 U.S. at 210 ("In the context of word marks, courts have applied the now-classic test originally formulated by Judge Friendly . . . ." (emphasis added) (citing Abercrombie, 537 F.2d at 10-11)). The Court's precedent also supports the proposition that some marks, although deserving of legal protection, do not fit within the Abercrombie spectrum. In Qualitex, the Court declined to apply the Abercrombie test to a mark consisting purely of a shade of color used in a product's trade dress, holding that the mark could constitute a legally protectable mark only through a showing of secondary meaning. 514 U.S. at 162-63. The Court further extended that logic when, in Wal-Mart Stores, it stated that "[i]t seems to us that [product] design, like color, is not inherently distinctive" and held that marks consisting of a product's design were protectable only upon proof of secondary meaning-a conclusion it could not have reached had it applied the Abercrombie test. Wal-Mart Stores, 529 U.S. at 212. Professor McCarthy, a luminary in the field of trademark law, has likewise suggested that the Abercrombie test may not apply to all marks, stating that "[u]se of the spectrum of descriptive, suggestive, arbitrary and fanciful is largely confined to word marks. It is usually not suitable for nonword designations such as shapes and images . . . [, which] must be judged by other guidelines." 2 MCCARTHY ON TRADEMARKS § 11:2, at 11-7. . . . [4] As the district court discovered, the challenge of placing the Star Symbol into Abercrombie's constellation of categories is a futile endeavor. We have described the Abercrombie categories as follows . . . . [5] The district court briefly probed the utility of applying the Abercrombie test and concluded that the Star Symbol did not fit as a generic, descriptive, or suggestive mark. See Amazing Spaces, 665 F.Supp.2d at 737. The district court first rejected the notion that the Star Symbol was generic because "[a] five-pointed star within a circle does not refer to a product or service provided by a self-storage company" and "[t]he evidence of widespread use of a five-point star or a five-point star set within a circle by many diverse businesses and government offices supports the conclusion that the star mark is not related to or a generic symbol for self-storage goods or services." Id. It next determined that the Star Symbol was not descriptive because "[i]t does not identify a characteristic or quality of self-storage service, such as its function or quality." Id. Nor was the Star Symbol suggestive, according to the district court, because "[t]here is no basis to conclude that a five-pointed star set within a circle suggests an attribute of self-storage services." Id. We discern no flaws in the district court's analysis with respect to these three categories. However, the logical extension of the district court's analysis is the conclusion that the Star Symbol is arbitrary or fanciful, which under the Abercrombie test would render it inherently distinctive and thus entitled to protection. Yet the district court refused to so conclude, stating that "the star mark cannot be classified as arbitrary or fanciful unless it is inherently distinctive so as to serve as a source identifier for Amazing Spaces." Id. It then turned to the Seabrook Foods test in conducting its inquiry into the Star Symbol's inherent distinctiveness. See id. [6] We agree that the Star Symbol-indeed, any mark-lacks inherent distinctiveness if its intrinsic nature does not serve to identify its source. See Wal-Mart Stores, 529 U.S. at 210 ("[A] mark is inherently distinctive if 'its intrinsic nature serves to identify a particular source.'" (quoting Two Pesos, 505 U.S. at 768)). Furthermore, as we have already indicated, we approve the district court's decision to apply a test other than Abercrombie in this case. However, we disagree somewhat with the district court's reasoning that a mark cannot be categorized as arbitrary or fanciful unless it is inherently distinctive. Under the Abercrombie test, it is the categorization of a mark that dictates its inherent distinctiveness, not the other way around. A rote application of the Abercrombie test yields the conclusion that the Star Symbol is an arbitrary or fanciful mark because it "'bear[s] no relationship to the products or services to which [it is] applied.'" Pebble Beach, 155 F.3d at 540 (quoting Zatarains, 698 F.2d at 791). Were we to apply the Abercrombie test mechanically to the Star Symbol, without an eye to the question the test seeks to answer, we would be left with the conclusion that the Star Symbol is inherently distinctive. The district court, aware of that result, proceeded to apply the Seabrook Foods test. See Amazing Spaces, 665 F.Supp.2d at 737. [7] Both the Supreme Court and scholars have questioned the applicability of the Abercrombie test to marks other than words. See Wal-Mart Stores, 529 U.S. at 210-13, (noting that the Abercrombie test was developed and applied "[i]n the context of word marks" and declining to apply it to a mark consisting of product design); Qualitex, 514 U.S. at 162-63 (referring to the Abercrombie test but not applying it to a mark consisting of a shade of color); . . . . 1 MCCARTHY ON TRADEMARKS § 8:13, at 8-58.1 ("Only in some cases does [Abercrombie] classification make sense [for trade dress] . . . . The word spectrum of marks simply does not translate into the world of shapes and images."); . . . . We do not go so far as to hold that the Abercrombie test is eclipsed every time a mark other than a word is at issue. Instead, we hold that the Abercrombie test fails to illuminate the fundamental inquiry in this case: whether the Star Symbol's "'intrinsic nature serves to identify'" Amazing Spaces and its storage services. Wal-Mart Stores, 529 U.S. at 210 (quoting Two Pesos, 505 U.S. at 768, 112 S.Ct. 2753). For the answer to that question, we now turn to the Seabrook Foods test employed by the district court. b. Seabrook Foods [8] In contrast to the Abercrombie test, the Seabrook Foods test, articulated by the U.S. Court of Customs and Patent Appeals in 1977, applies expressly to marks consisting of symbols and designs: In determining whether a design is arbitrary or distinctive this court has looked to [1] whether it was a "common" basic shape or design, [2] whether it was unique or unusual in a particular field, [3] whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods, or [4] whether it was capable of creating a commercial impression distinct from the accompanying words. Seabrook Foods, 568 F.2d at 1344 (footnotes omitted). 14 The first three of the Seabrook Foods "'questions are merely different ways to ask whether the design, shape or combination of elements is so unique, unusual or unexpected in this market that one can assume without proof that it will automatically be perceived by customers as an indicator of origin-a trademark.'" I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 40 (1st Cir. 1998) (quoting 1 MCCARTHY ON TRADEMARKS § 8:13, at 8-58.5). As is true of the Abercrombie test, the Seabrook Foods test seeks an answer to the question whether a mark's "'intrinsic nature serves to identify a particular source.'" Wal-Mart Stores, 529 U.S. at 210 (quoting Two Pesos, 505 U.S. at 768, 112 S.Ct. 2753) . . . . 16 14 As noted above, the district court omitted discussion of the fourth factor, which by its terms applies only when a party seeks trademark protection for a background design typically accompanied by words. See Amazing Spaces, 665 F.Supp.2d at 736. Similarly, we will not consider the fourth Seabrook Foods factor. 16 We note, of course, that the Wal-Mart Court was urged by the respondent in that case and by the United States as amicus curiae to adopt the Seabrook Foods test writ large for product design but declined to do so. Id. at 213-14, 120 S.Ct. 1339. The Court's concern was that "[s]uch a test would rarely provide the basis for summary disposition of an anticompetitive strike suit." Id. at 214, 120 S.Ct. 1339. However, as discussed below, we are of the opinion that the relevant portions of the Seabrook Foods test do provide a basis for summary disposition in this case. Because we conclude that the Star Symbol [9] We agree with the assessment of . . . Professor McCarthy that the Seabrook Foods factors are variations on a theme rather than discrete inquiries. In Star Industries v. Bacardi & Co., the Second Circuit noted that "'[c]ommon basic shapes' or letters are, as a matter of law, not inherently distinctive . . . , [but] stylized shapes or letters may qualify, provided the design is not commonplace but rather unique or unusual in the relevant market." 412 F.3d 373, 382 (2d Cir. 2005) (citing Seabrook Foods, 568 F.2d at 1344; Permatex Co. v. Cal. Tube Prods., Inc., 175 U.S.P.Q. 764, 766 (TTAB1972)). This statement, turning on whether the symbol or design is "common," comprises, essentially, the first two Seabrook Foods factors. However, the third Seabrook Foods factor similarly asks whether a symbol or design is "common" in the sense that it is likely to be perceived by the public as ornamentation rather than a mark. See Wiley v. Am. Greetings Corp., 762 F.2d 139, 142 (1st Cir. 1985) (equating a red heart shape on a teddy bear to "an ordinary geometric shape" because it "carrie [d] no distinctive message of origin to the consumer, . . . given the heart shape's widespread use as decoration for any number of products put out by many different companies").foot_2 A "common" symbol or design-lacking inherent distinctiveness-is the antithesis of a symbol or design that "'is so unique, unusual or unexpected in this market that one can assume without proof that it will automatically be perceived by customers as an indicator of origin-a trademark.'" I.P. Lund Trading, 163 F.3d at 40 (quoting 1 MCCARTHY ON TRADEMARKS § 8:13, at 8-58.5); accord RESTATEMENT § 13 cmt. d, at 107 ("Commonplace symbols and designs are not inherently distinctive since their appearance on numerous products makes it unlikely that consumers will view them as distinctive of the goods or services of a particular seller."). [10] The district court determined that the Star Symbol was "not a plain five-pointed star" but was instead "shaded and set within a circle," rendering it "sufficient[ly] styliz[ed]" to be "more than a common geometric shape." Amazing Spaces, 665 F.Supp.2d at 737. It then proceeded to conclude that the Star Symbol "[wa]s not inherently distinctive and d[id] not act as an indicator of origin for any self-storage business, including Amazing Spaces." Id. at 738. It supported this assertion with a discussion of "[t]he ubiquitous nature of the fiveis not inherently distinctive under the Seabrook Foods test, we do not address whether it constitutes a "reasonably clear test," id. at 213, such that it would be preferable to the Abercrombie test in the ordinary trademark or service mark dispute. pointed star set within a circle" in Texas, specifically its "use[ ] as a decoration or ornamentation on innumerable buildings, signs, roads, and products." Id. The court concluded that this ubiquity-including use of the same or a similar star design in 63 businesses and 28 other self-storage locations-"preclude[d] a finding that [the Star Symbol wa]s inherently distinctive or that it c[ould] serve as an indicator of origin for a particular business." Id. [11] Undoubtedly, the Star Symbol is stylized relative to an unshaded five-pointed star design not set within a circle. However, we disagree that the issue of stylization revolves around comparing a design's actual appearance to its corresponding platonic form. Instead, as discussed above, asking whether a shape is stylized is merely another way of asking whether the design is "commonplace" or "unique or unusual in the relevant market," Star Indus., 412 F.3d at 382 (citing Permatex, 175 U.S.P.Q. at 766), or whether it is "a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation," Seabrook Foods, 568 F.2d at 1344. 18 The stylization inquiry is properly conceived of as asking whether a particular 18 The parties dispute the scope of the "relevant market"-specifically, whether the district court correctly considered use of a similar or identical star design beyond the self-storage service industry. Amazing Spaces contends that we should limit our analysis to the self-storage services industry, while Metro argues that we may take into account uses of star designs in a larger context. The second Seabrook Foods factor refers to uniqueness or unusualness "in a particular field," 568 F.2d at 1344, and the Second Circuit has stated that a stylized design may be protectable when it "is not commonplace but rather unique or unusual in the relevant market," Star Indus., 412 F.3d at 382. Similarly, the third factor refers to whether a mark is commonly used as ornamentation for a "particular class of goods." Seabrook Foods, 568 F.2d at 1344. In contrast, the First Circuit, in considering whether a red heart on the chest of a teddy bear was inherently distinctive, appeared to consider the broader use of red hearts in determining whether the use at issue was unique or unusual. See Wiley, 762 F.2d at 142 ("[T]he record contains so many examples of use of a red heart motif on teddy bears and other stuffed animals, not to mention all manner of other toys and paraphernalia, that no reasonable argument on this point can be made." (emphasis added)). The rule in the RESTATEMENT asks whether, "because of the nature of the designation and the context in which it is used, prospective purchasers are likely to perceive it as a designation that . . . identifies goods or services produced or sponsored by a particular person." RESTATEMENT § 13(a), at 104 (emphasis added). It further explains that [c]ommonplace symbols and designs are not inherently distinctive since their appearance on numerous products makes it unlikely that consumers will view them as distinctive of the goods or services of a particular seller. Thus, unless the symbol or design is striking, unusual, or otherwise likely to differentiate the products of a particular producer, the designation is not inherently distinctive. Id. § 13 cmt. d, at 107. Finally, and most importantly, the Lanham Act defines "service mark" as a mark used "to identify and distinguish the services of one person . . . from the services of others and to indicate the source of the services." Lanham Act § 45, 15 U.S.C. § 1127. Because a mark must distinguish one person's services from another, we agree that our inquiry is whether the Star Symbol identifies and distinguishes Amazing Spaces's self-storage services from others' self-storage services. This does symbol or design is stylized such that prospective purchasers of goods or services are likely to differentiate it from other, similar symbols or designs. 19 See Wiley, 762 F.2d at 142 (holding that a red heart on a teddy bear "carrie [d] no distinctive message of origin to the consumer . . . given the heart shape's widespread use as decoration for any number of products put out by many different companies"); Brooks Shoe Mfg. Co. v. Suave Shoe Corp., 716 F.2d 854, 858 (11th Cir. 1983) (holding that a design consisting of a "V," "7," or arrow on athletic shoes was common ornamentation such that it was not inherently distinctive); RESTATEMENT § 13 cmt. d, at 107 ("The manner in which a symbol or design is used is also relevant to the likelihood that it will be perceived as an indication of source. In some instances a design is likely to be viewed as mere ornamentation rather than as a symbol of identification."). The record evidence is replete with similar or identical five-pointed stars, both raised and set in circles, and used in similar manners, such that-notwithstanding the residual evidence of the presumption of validity-no reasonable jury could find that the Star Symbol is even a mere refinement of this commonly adopted and well-known form of ornamentation. 20 The Star Symbol is thus not "'so unique, unusual or unexpected in this market that one can assume without proof that it will automatically be perceived by customers as an indicator of origina trademark,'" I.P. Lund Trading, 163 F.3d at 40 (quoting 1 MCCARTHY ON TRADEMARKS § 8:13, at 8-58.5), and it "does not almost automatically tell a customer that it refers to a not mean, however, that we must blind ourselves to uses beyond the self-storage services industry: the fact that the same or a similar star is used in countless other ways certainly bears on whether it is "likely that prospective purchasers will perceive [a given star design] as an indication of source" within a particular industry because a "[c]ommonplace symbol[']s . . . appearance on numerous products makes it unlikely that consumers will view [it] as distinctive of the goods or services of a particular seller." RESTATEMENT § 13 cmt. d, at 107. 19 Under this analysis, use by third parties of a design bears on whether the design is inherently distinctive, not merely whether the design "is a 'strong' or a 'weak' [ ]mark." Exxon Corp. v. Tex. Motor Exchange of Houston, Inc., 628 F.2d 500, 504 (5th Cir. 1980); cf. Union Nat'l Bank of Tex., Laredo, Tex., 909 F.2d at 848 n. 25 (noting that widespread industry use can render a mark not inherently distinctive, but third-party use otherwise typically affects the issue of whether there is a likelihood of confusion between marks). 20 This is what differentiates the Star Symbol from the examples of registered marks containing stars that Amazing Spaces cites to support the protectability of five-pointed stars. The Dallas Cowboys star is stylized through the inclusion of a white border. The star in the Wal-Mart registration is a plain, five-pointed star, but the registered mark consists of more than just the star-the mark is the words "Wal" and "Mart" on either side of the star. The LanChile Airlines star is set against a circle that is 50% filled in, and it is adjacent to the words "LanChile Airlines." Finally, the USA Truck mark is a complex design consisting of a white star within a blue circle, set against a white rectangle with blue borders and a red stripe running across the middle. Each of these marks contains elements distinguishing it from the commonplace stars in the record. See Union Nat'l Bank of Tex., Laredo, Tex., 909 F.2d at 848 n. 25 (noting that the appropriate inquiry is whether the mark as a whole is protectable, not whether its component parts are individually protectable (citing Estate of P.D. Beckwith v. Comm'r of Patents, 252 U.S. 538, 40 S.Ct. 414, 64 L.Ed. 705 (1919))). brand . . . [or] immediately signal a brand or a product source," Wal-Mart Stores, 529 U.S. at 212, 120 S.Ct. 1339 (alterations and internal quotation marks omitted). Because the Star Symbol does not, by "'its intrinsic nature [,] serve[ ] to identify a particular source,'" id. at 210, it is not inherently distinctive, and it can be protected only upon a showing of secondary meaning. {The court ultimately found that the star design lacked secondary meaning. It remanded the case, however, on the question, among others, of whether the overall appearance of Amazing Spaces' facilities, rather than simply the star design alone, was protectable trade dress.} [1] FIJI also alleges that the VITI product infringes the FIJI trade dress, which includes the following elements: the use of a bottle with a dominantly square shape, with a recessed central body portion defined by the protruding shoulders and base portions of the bottle, a blue bottle cap, a transparent outer front label with a pink accent in the lower right hand corner, a depiction of a blue background and palm tree fronds on the inside of the back label, a three-dimensional effect created by having a transparent label on the front panel of the bottle revealing the inner side of the back label, a rainwater drop on the front label, a statement on the front label stating "From the islands of Fiji/Natural Artesian Water," and prominent use of the four-letter, two-syllable word FIJI, in block white lettering with a metallic outline around the letters. . . . . [2] The second element that FIJI must establish to succeed on the merits for its trade dress infringement claim is that its trade dress is inherently distinctive or has acquired secondary meaning. Packaging such as the FIJI bottle shape and label design is inherently distinctive if "[its] intrinsic nature serves to identify a particular source. [3] Although the square bottle and blue cap elements may be fairly common in the bottled water industry, the stylized hibiscus, the palm fronds and the three-dimensional effect of the transparent front label with palm fronds on the inside back label are not a common design. Contra Paddington Corp. v. Attiki Imps. & Distribs., Inc., 996 F.2d 577 (2d Cir. 1993) (giving examples of designs that are not inherently distinctive in certain markets, such as packaging lime soda in green cans or showing a shining car on a bottle of car wax). The stylized white block letters with metallic outline for the word "FIJI," together with the tropical foliage using hues of blue and green and the raindrop invites consumers to imagine fresh, clear water from a remote tropical island. Reviewing the 2008 Bottled Water Guide that FIJI submitted reveals no other brands that combine the elements of the square bottle, threedimensional labeling effect, and tropical motif. FIJI has won international awards for print and packaging excellence and design innovation in the food packaging industry, which is strong evidence that its packaging is unique or unusual in the field and not simply a variation on existing bottled water designs. Finally, the transparent three-dimensional label distinguishes FIJI from the other brands, and makes the trade dress recognizable even apart from the block-letter word mark FIJI, as evidenced by some of the open-ended responses consumers gave in FIJI's consumer confusion survey. Based on this evidence, the Court concludes that FIJI's trade dress is inherently distinctive. {You will recall that the applicant sought to register the above-pictured threedimensional mark for "[e]ntertainment services, namely, performing and competing in motor sports events in the nature of monster truck exhibitions." Having concluded that the mark was capable of inherent distinctiveness as "akin to the packaging of" the applicant's monster truck services, the TTAB applied the Seabrook factors as follows to find that the mark was inherently distinctive:} Here, the evidence made of record by the Examining Attorney fails to show that Applicant's "fanciful, prehistoric animal" design is either a common or a basic shape or design. Rather, it is unique among the more than 100 monster trucks depicted in the Examining Attorney's image search results. To the extent that two of the monster trucks among those results have certain characteristics in common with Applicant's mark, they are nevertheless readily distinguishable from Applicant's unique design which includes peculiar horns, scales, a protective shield and other features which neither Swamp Thing nor the "Raptors" monster trucks share. Indeed, Applicant's monster truck is "unique" and "unusual" in the monster truck field. The Examining Attorney provided scant, if any, evidence that Applicant's truck is a "mere refinement" of anything, let alone a "commonly-adopted" and "well-known form" in the monster truck field. To the contrary, the totality of the record makes clear that Applicant's truck stands alone in the quality and quantity of its distinctive traits which set it apart from the other monster trucks about which the Examining Attorney submitted evidence, as the body of Applicant's truck is cut and molded to convey the body of a dinosaur and adorned with other dinosaur elements, including horns, a protective shield and eyes bordered by scales. These elements are unique and make Applicant's truck unlike any of those included in the Examining Attorney's search results. [1] In June 1996, inspired by the success of flavored vodkas introduced by leading international companies such as Stolichnaya, Star's president decided to develop an orangeflavored Georgi vodka. A new label was designed, consisting of the traditional Georgi label, which contains a coat of arms and a logo consisting of stylized capital letters spelling 'Georgi' on a white background, together with three new elements: an orange slice, the words "orange flavored," and a large elliptical letter "O" appearing below the "Georgi" logo and surrounding all of the other elements. The "O" was rendered as a vertical oval, with the outline of the "O" slightly wider along the sides (about one quarter inch thick) and narrowing at the top and bottom (about one eighth inch thick); the outline of the "O" is colored orange and decorated with two thin gold lines, one bordering the inside and one bordering the outside of the outline. Star was apparently the first company to distribute an orange-flavored alcoholic beverage packaged in a bottle bearing a large elliptical orange letter "O." . . . . [2] The district court erred when it described the Star "O" as a basic geometric shape or letter, and therefore rejected inherent distinctiveness and required a showing of secondary meaning. The Star "O" is not a "common basic shape" or letter, and the district court's holding to the contrary was premised on a misunderstanding of this trademark law concept. Unshaded linear representations of common shapes or letters are referred to as "basic." They are not protectable as inherently distinctive, because to protect them as trademarks would be to deprive competitors of fundamental communicative devices essential to the dissemination of information to consumers. However, stylized letters or shapes are not "basic," and are protectable when original within the relevant market. (noting that applicant conceded that unshaded line oval was not inherently distinctive). Star's "O" is sufficiently stylized to be inherently distinctive and therefore protectable as a trademark. It is stylized with respect to shading, border, and thickness, and each of these design elements distinguishes it from the simple or basic shapes and letters that have been held unprotectable. [3] The Star "O" design had sufficient shape and color stylization to render it slightly more than a simply linear representation of an ellipse or the letter "O." It was, furthermore, a unique design in the alcoholic beverage industry at the time it was introduced. This suffices to establish its inherent distinctiveness and thus its protectability. Furthermore, the Star "O" design is protectable separately from the other design elements on the Georgi orangeflavored vodka label precisely because the "O" design is itself inherently distinctive. See In re E.J. Brach & Sons, 45 C.C.P.A. 998, 256 F.2d 325, 327 (1958); W.B. Roddenbery, 135 U.S.P.Q. at 216. However, the extent of stylization was marginal at best. The outline of the "O," though not uniform, is ordinary in its slightly varying width, and the interior and exterior borders are also ordinary. The result is a "thin" or weak mark, which will be entitled to only limited protection. See Libman Co. v. Vining Indus., 69 F.3d 1360, 1363 (7th Cir. 1995). {The court went on to find no likelihood of confusion.} The secondary meaning analysis of nonverbal marks is largely the same as that of verbal marks. Courts tend to use essentially the same factors and considerations for both. See, e.g., Herman Miller, Inc. v. Palazzetti Imports and Exports, Inc., 270 F.3d 298 (6th Cir. 2001) (reviewing seven factors to determine that Herman Miller had raised an issue of fact as to the secondary meaning of the design of its Eames chair); Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 43-45, (1st Cir. 2001) (finding insufficient evidence of secondary meaning in plaintiff's label designs for scented candles). Courts may treat one factor differently, however, in the context of product configuration. Evidence that the defendant deliberately copied from the plaintiff may not carry as much weight when the defendant copied product configuration. See, e.g., Kaufman & Fisher Wish Co. v. F.A.O. Schwarz, 184 F. Supp. 2d 311, 319 (S.D.N.Y. 2001) (in case involving defendant's alleged trademark infringement of plaintiff's toy doll and packaging, stating that "[t]he probative value of evidence of intentional copying is particularly limited in cases involving product design, since 'the copier may very well be exploiting a particularly desirable feature, rather than seeking to confuse consumers as to the source of the product.' Duraco Products, Inc. v. Joy Plastic Enterprises, Ltd., 40 F.3d 1431, 1453 (3d Cir. 1994)"). The concept of "limping trademarks" is also relevant to determining whether nonverbal marks (and indeed some verbal marks) have developed sufficient acquired distinctiveness to merit protection. This concept comes to American trademark law from English trademark law, and in particular from the opinion of Mr. Justice Jacobs (as he then was, before becoming a Lord Justice) in Philips Elecs. BV v. Remington Consumer Prods., [1998] RPC 283 (U.K.). There, Philips had claimed trademark rights in the mark PHILISHAVE and separate trademark rights in the particular configuration of the three rotating heads on its electric shaver. As to the latter, product configuration mark, Jacobs memorably explained that the three-headed configuration "has never been used by Philips as the sole means of identification of trade source. It has never been trusted by Philips to do this job on its own, a matter plainly relevant in considering acquired distinctiveness. It is at best a 'limping trade mark', needing the crutch of 'Philishave' in use." Id. at 290. In other words, standing on its own, the three-headed configuration fails to indicate source; it only does so when appearing with the PHILISHAVE mark. For more on the concept of limping marks, see Rebecca Tushnet, Registering Disagreement: Registration in Modern American Trademark Law, 130 HARV. L. REV. 867, 922-25 (2017) (urging American trademark law to recognize the phenomenon of limping marks). Even if a trademark is distinctive of source, it will still be denied protection if it falls within one of the statutory bars established under Lanham Act § 2, 15 U.S.C. § 1052. We review the most important of these statutory bars here. It is important to note that, strictly speaking, the § 2 statutory bars are bars only to the registration of a mark at the PTO. Recall however that the Lanham Act will protect both registered marks under § 32, 15 U.S.C. § 1114, and unregistered marks under § 43(a), 15 U.S.C. § 1125(a). This framework raises a question that the law has not yet definitively answered: if a mark is refused registration or its registration is cancelled under one of the statutory bars established in § 2, can the user of the mark nevertheless seek protection of the mark under § 43(a)? For example, if a mark consists of the flag of a foreign nation and thus is barred from registration under Lanham Act § 2(b), could the user of the mark nevertheless claim exclusive rights in the mark under § 43(a)? Though scholarly opinion remains divided, the better view would appear to be that a mark unregistrable under § 2 should be unprotectable under § 43(a). See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992) ("[I]t is common ground that § 43(a) protects qualifying unregistered trademarks and that the general principles qualifying a mark for registration under § 2 of the Lanham Act are for the most part applicable in determining whether an unregistered mark is entitled to protection under § 43(a)."); Renna v. Cnty. of Union, N.J., 88 F.Supp.3d 310, 319 (D.N.J. 2014) ("It follows that such unregistrable marks, not actionable as registered marks under Section 32, are not actionable under Section 43, either."). Cf. Matal v. Tam, 582 U.S. 218, 226 n. 1 (2017) ("We need not decide today whether respondent could bring suit under § 43(a) if his application for federal registration had been lawfully denied under the disparagement clause."). We will not review the specifics of the registration process until Section II.D. However, in order to complete our picture of what marks qualify for protection, be they registered or unregistered, we will necessarily review opinions in this section that involve questions of registration. Thus, the reader will need to tolerate references to certain aspects of the registration process that will not become clear until Section II.D. No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it-(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage 10 or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501 (9) (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons. (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993. A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title. Even when a product (or packaging) feature is distinctive of source, trademark law will not protect that product feature if it is "functional." See Lanham Act § 2(e)(5), 15 U.S.C. § 1052(e)(5) (prohibiting the registration of any mark that "comprises any matter that, as a whole, is functional"). Of course, all source-distinctive product features are functional in the lay sense that they function to indicate the source of the product to which they are attached or of which they form a part. In trademark law, however, functionality is a term of art denoting a legal conclusion about the particular nature or degree of the product feature's technical or competitive importance. The opinions excerpted in this subsection cover both categories of functionality in U.S. trademark law: "utilitarian functionality" (or as some call it, "mechanical functionality") and "aesthetic functionality." The name of the first category may sound like a redundancy, and the name of the second an oxymoron, yet the underlying policy goals that inform utilitarian and aesthetic functionality doctrine show that the two categories have much in common. We turn first to utilitarian functionality. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001), excerpted below, is the leading utilitarian functionality case in U.S. trademark law. But before turning to TrafFix, it is worthwhile briefly to review three cases that preceded it, which may help to explain what was at stake in TrafFix as well as what followed in the wake of TrafFix. The first is In re Morton-Norwich Products, Inc., 671 F.2d 1332 (C.C.P. A. 1982). Morton-Norwich sought to register as a trademark the configuration of its spray bottle, shown to the right. It claimed that it had sold some 132 million products in the spray bottle under brands such as FANTASTIK, GLASS PLUS, GREASE RELIEF, and MIRAKILL, and that the bottle had developed substantial secondary meaning as a designation of source. The examiner refused registration on the grounds that the bottle was functional and lacked secondary meaning. On appeal, the Trademark Trial and Appeal Board addressed only the functionality issue. It affirmed the finding of functionality and on that basis the refusal to register. The Court of Customs and Patent Appeals, which was the predecessor court to the current Court of Appeals for the Federal Circuit, reversed the TTAB's functionality refusal and remanded for further consideration of the secondary meaning issue. In a lengthy opinion, the CCPA distinguished between "de facto functionality" and "de jure functionality," with de facto functionality indicating "the use of 'functional' in the lay sense, indicating that although the design of a product, a container, or a feature of either is directed to performance of a function, it may be legally recognized as an indication of source," and de jure functionality "used to indicate the opposite-such a design may not be protected as a trademark." Id. at 1337. To determine if an asserted product configuration rose to the level of de jure functionality and thus could not qualify for trademark protection, the Morton-Norwich court set out four factors that should be considered. The TMEP has summarized these so-called "Morton-Norwich factors" as follows: (1) the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered; (2) advertising by the applicant that touts the utilitarian advantages of the design; (3) facts pertaining to the availability of alternative designs; and (4) facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture. The third Morton-Norwich factor, going to the "availability of alternative designs," has proven to be controversial. In practice, it tends to weigh strongly in favor of non-functionality and thus of protectability. This is because creative lawyers and engineers can likely cite to or dream up a wide variety of alternative designs that carry just as much de facto functionalitythat is, that are just as useful-as the asserted design. This is exactly what happened in Morton-Norwich: The PTO has not produced one iota of evidence to show that the shape of appellant's bottle was required to be as it is for any de facto functional reason, which might lead to an affirmative determination of de jure functionality. The evidence, consisting of competitor's molded plastic bottles for similar products, demonstrates that the same functions can be performed by a variety of other shapes with no sacrifice of any functional advantage. There is no necessity to copy appellant's trade dress to enjoy any of the functions of a spray-top container. The second important predecessor to TrafFix is Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982). Inwood is important for our purposes here mainly because of its brief, onesentence footnote 10, which has had an enormous impact on functionality doctrine. The facts are that Ives Laboratories, Inc. manufactured and marketed the patented prescription drug cyclandelate, a vasodilator, under the registered trademark CYCLOSPASMOL. After Ives' patent expired in 1972, several generic drug manufacturers, including Inwood Laboratories, Inc., began manufacturing and marketing cyclandelate capsules that copied the appearance, including the color, of Ives' capsules. Pharmacists then began placing capsules produced by the generic manufacturers into bottles labeled with Ives' CYCLOSPASMOL mark. Ives brought an action for trademark infringement against the manufacturers, alleging that the manufacturers were vicariously liable for the infringement of Ives' CYCLOSPASMOL mark by the pharmacists. The Supreme Court ultimately found that the generic manufacturers were not liable. In the course of her opinion for the Court, Justice O'Connor noted: "Ives argued that the colors of its capsules were not functional." She appended to this statement footnote number 10: In general terms, a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. Stiffel, but the Kellogg court had stated that the pillow shape of Nabisco's shredded wheat was functional: "The evidence is persuasive that this form is functional-that the cost of the biscuit would be increased and its high quality lessened if some other form were substituted for the pillow-shape" Id. at 122. Now nearly forgotten is that Inwood contained further discussion of the concept of functionality in trademark law. In a subsequent footnote, Justice O'Connor criticized the Inwood appellate court for failing to respond to the district court's determination that the color of Ives' capsules was functional. Id. at 857 n. 20. In his concurrence joined by Justice Marshall, Justice White also took the appellate court to task for failing to respond to the district court's functionality determination. In doing so, he quoted the appellate court's definition of functionality apparently with approval: "A functional characteristic is 'an important ingredient in the commercial success of the product.'" Id. at 863 (White, J., concurring) (quoting Ives Laboratories, Inc. v. Darby Drug Co., Inc., 601 F.2d 631 (2nd Cir. . As we will see below, this language, going to whether a product feature is "an important ingredient in the commercial success of the product," would come back to haunt functionality doctrine and aesthetic functionality doctrine in particular. The third important predecessor to TrafFix is Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995), the case we considered above focusing on whether a single color without more could qualify for trademark protection. The reader may recall this passage from Qualitex: This Court consequently has explained that, "[i]n general terms, a product feature is functional," and cannot serve as a trademark, "if it is essential to the use or purpose of the article or if it affects the cost or quality of the article," that is, if exclusive use of the feature would put competitors at a significant nonreputation-related disadvantage. Inwood Laboratories, Inc., 456 U. S., at 850, n. 10. Qualitex, 514 U.S. at 165. Before reading TrafFix, consider this question: does this passage from Qualitex suggest that Inwood's test ("essential to the use or purpose . . . ") is interchangeable with and the equivalent of the test asking if "exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage"? Would appellate courts have been justified in assuming the equivalence between these two statements of the test for functionality? Between Morton-Norwich (1982) and TrafFix (2001), functionality doctrine appeared to many to have lost its moorings. Perhaps influenced by Morton-Norwich, especially its third factor, courts increasingly relied on various forms of a "competitive necessity" test to determine if a particular product feature was functional, and because alternative designs could often be found or hypothesized, the "competitive necessity" test tended greatly, perhaps overwhelmingly, to benefit plaintiffs. Enter TrafFix. • How do we determine if a product feature is "essential to the use or purpose" of the product? What do we mean by "essential"? That the product feature is a competitive necessity? An engineering necessity? How could a product feature be "essential to the use or purpose" of the product if there are alternative designs that competitors could use and still compete effectively? • Are there any product features that do not in some way "affect[] the cost or quality of the product"? • Why not apply the Inwood Laboratories test to aesthetic product features as well? • Does TrafFix in any sense overrule Morton-Norwich? Justice KENNEDY delivered the opinion of the Court. [1] Temporary road signs with warnings like "Road Work Ahead" or "Left Shoulder Closed" must withstand strong gusts of wind. An inventor named Robert Sarkisian obtained two utility patents for a mechanism built upon two springs (the dual-spring design) to keep these and other outdoor signs upright despite adverse wind conditions. The holder of the now-expired Sarkisian patents, respondent Marketing Displays, Inc. (MDI), established a successful business in the manufacture and sale of sign stands incorporating the patented feature. MDI's stands for road signs were recognizable to buyers and users (it says) because the dual-spring design was visible near the base of the sign. [2] This litigation followed after the patents expired and a competitor, TrafFix Devices, Inc., sold sign stands with a visible spring mechanism that looked like MDI's. MDI and TrafFix products looked alike because they were. When TrafFix started in business, it sent an MDI product abroad to have it reverse engineered, that is to say copied. Complicating matters, TrafFix marketed its sign stands under a name similar to MDI's. MDI used the name "WindMaster," while TrafFix, its new competitor, used "WindBuster." [3] MDI brought suit under the Trademark Act of 1946 (Lanham Act), 60 Stat. 427, as amended, 15 U.S.C. § 1051 et seq., against TrafFix for trademark infringement (based on the similar names), trade dress infringement (based on the copied dual-spring design), and unfair competition. TrafFix counterclaimed on antitrust theories. After the United States District Court for the Eastern District of Michigan considered cross-motions for summary judgment, MDI prevailed on its trademark claim for the confusing similarity of names and was held not liable on the antitrust counterclaim; and those two rulings, affirmed by the Court of Appeals, are not before us. [4] We are concerned with the trade dress question. The District Court ruled against MDI on its trade dress claim. 971 F.Supp. 262 (E.D.Mich. 1997). After determining that the one element of MDI's trade dress at issue was the dual-spring design, id., at 265, it held that "no reasonable trier of fact could determine that MDI has established secondary meaning" in its alleged trade dress, id., at 269. In other words, consumers did not associate the look of the dual-spring design with MDI. As a second, independent reason to grant summary judgment in favor of TrafFix, the District Court determined the dual-spring design was functional. On this rationale secondary meaning is irrelevant because there can be no trade dress protection in any event. In ruling on the functional aspect of the design, the District Court noted that Sixth Circuit precedent indicated that the burden was on MDI to prove that its trade dress was nonfunctional, and not on TrafFix to show that it was functional (a rule since adopted by Congress, see 15 U.S.C. § 1125(a)(3) (1994 ed., Supp. V)), and then went on to consider MDI's arguments that the dual-spring design was subject to trade dress protection. Finding none of MDI's contentions persuasive, the District Court concluded MDI had not "proffered sufficient evidence which would enable a reasonable trier of fact to find that MDI's vertical dual-spring design is non-functional." 971 F.Supp., at 276. Summary judgment was entered against MDI on its trade dress claims. [5] The Court of Appeals for the Sixth Circuit reversed the trade dress ruling. 200 F.3d 929 (1999). The Court of Appeals held the District Court had erred in ruling MDI failed to show a genuine issue of material fact regarding whether it had secondary meaning in its alleged trade dress, id., at 938, and had erred further in determining that MDI could not prevail in any event because the alleged trade dress was in fact a functional product configuration, id., at 940. The Court of Appeals suggested the District Court committed legal error by looking only to the dual-spring design when evaluating MDI's trade dress. Basic to its reasoning was the Court of Appeals' observation that it took "little imagination to conceive of a hidden dual-spring mechanism or a tri or quad-spring mechanism that might avoid infringing [MDI's] trade dress." Ibid. The Court of Appeals explained that "[i]f TrafFix or another competitor chooses to use [MDI's] dual-spring design, then it will have to find some other way to set its sign apart to avoid infringing [MDI's] trade dress." Ibid. It was not sufficient, according to the Court of Appeals, that allowing exclusive use of a particular feature such as the dual-spring design in the guise of trade dress would "hinde [ 1498, 1500 (C.A.10 1995) ("Where a product configuration is a significant inventive component of an invention covered by a utility patent . . . it cannot receive trade dress protection"). To resolve the conflict, we granted certiorari. 530 U.S. 1260 (2000). [6] It is well established that trade dress can be protected under federal law. The design or packaging of a product may acquire a distinctiveness which serves to identify the product with its manufacturer or source; and a design or package which acquires this secondary meaning, assuming other requisites are met, is a trade dress which may not be used in a manner likely to cause confusion as to the origin, sponsorship, or approval of the goods. In these respects protection for trade dress exists to promote competition. As we explained just last Term, see Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000), various Courts of Appeals have allowed claims of trade dress infringement relying on the general provision of the Lanham Act which provides a cause of action to one who is injured when a person uses "any word, term name, symbol, or device, or any combination thereof . . . which is likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her goods." 15 U.S.C. § 1125(a)(1)(A). Congress confirmed this statutory protection for trade dress by amending the Lanham Act to recognize the concept. Title 15 U.S.C. § 1125(a)(3) (1994 ed., Supp. V) provides: "In a civil action for trade dress infringement under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional." This burden of proof gives force to the well-established rule that trade dress protection may not be claimed for product features that are functional. Qualitex, supra, at 164-165; Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 775 (1992). And in Wal-Mart, supra, we were careful to caution against misuse or overextension of trade dress. We noted that "product design almost invariably serves purposes other than source identification." Id., at 213. [7] Trade dress protection must subsist with the recognition that in many instances there is no prohibition against copying goods and products. In general, unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying. As the Court has explained, copying is not always discouraged or disfavored by the laws which preserve our competitive economy. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 160 (1989). Allowing competitors to copy will have salutary effects in many instances. "Reverse engineering of chemical and mechanical articles in the public domain often leads to significant advances in technology." Ibid. [8] The principal question in this case is the effect of an expired patent on a claim of trade dress infringement. A prior patent, we conclude, has vital significance in resolving the trade dress claim. A utility patent is strong evidence that the features therein claimed are functional. If trade dress protection is sought for those features the strong evidence of functionality based on the previous patent adds great weight to the statutory presumption that features are deemed functional until proved otherwise by the party seeking trade dress protection. Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device. [9] In the case before us, the central advance claimed in the expired utility patents (the Sarkisian patents) is the dual-spring design; and the dual-spring design is the essential feature of the trade dress MDI now seeks to establish and to protect. The rule we have explained bars the trade dress claim, for MDI did not, and cannot, carry the burden of overcoming the strong evidentiary inference of functionality based on the disclosure of the dual-spring design in the claims of the expired patents. [10] The dual springs shown in the Sarkisian patents were well apart (at either end of a frame for holding a rectangular sign when one full side is the base) while the dual springs at issue here are close together (in a frame designed to hold a sign by one of its corners). As the District Court recognized, this makes little difference. The point is that the springs are necessary to the operation of the device. The fact that the springs in this very differentlooking device fall within the claims of the patents is illustrated by MDI's own position in earlier litigation. In the late 1970's, MDI engaged in a long-running intellectual property battle with a company known as Winn-Proof. Although the precise claims of the Sarkisian patents cover sign stands with springs "spaced apart," U.S. Patent No. 3,646,696, col. 4; U.S. Patent No. 3,662,482, col. 4, the Winn-Proof sign stands (with springs much like the sign stands at issue here) were found to infringe the patents by the United States District Court for the District of Oregon, and the Court of Appeals for the Ninth Circuit affirmed the judgment. Sarkisian v. Winn-Proof Corp., 697 F.2d 1313 (1983). Although the Winn-Proof traffic sign stand (with dual springs close together) did not appear, then, to infringe the literal terms of the patent claims (which called for "spaced apart" springs), the Winn-Proof sign stand was found to infringe the patents under the doctrine of equivalents, which allows a finding of patent infringement even when the accused product does not fall within the literal terms of the claims. Id., at 1321-1322; see generally Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997). In light of this past ruling-a ruling procured at MDI's own insistence-it must be concluded the products here at issue would have been covered by the claims of the expired patents. [11] The rationale for the rule that the disclosure of a feature in the claims of a utility patent constitutes strong evidence of functionality is well illustrated in this case. The dualspring design serves the important purpose of keeping the sign upright even in heavy wind conditions; and, as confirmed by the statements in the expired patents, it does so in a unique and useful manner. As the specification of one of the patents recites, prior art "devices, in practice, will topple under the force of a strong wind." U.S. Patent No. 3,662,482, col. 1. The dual-spring design allows sign stands to resist toppling in strong winds. Using a dual-spring design rather than a single spring achieves important operational advantages. For example, the specifications of the patents note that the "use of a pair of springs . . . as opposed to the use of a single spring to support the frame structure prevents canting or twisting of the sign around a vertical axis," and that, if not prevented, twisting "may cause damage to the spring structure and may result in tipping of the device." U.S. Patent No. 3,646,696, col. 3. In the course of patent prosecution, it was said that "[t]he use of a pair of spring connections as opposed to a single spring connection . . . forms an important part of this combination" because it "forc[es] the sign frame to tip along the longitudinal axis of the elongated groundengaging members." App. 218. The dual-spring design affects the cost of the device as well; it was acknowledged that the device "could use three springs but this would unnecessarily increase the cost of the device." Id., at 217. These statements made in the patent applications and in the course of procuring the patents demonstrate the functionality of the design. MDI does not assert that any of these representations are mistaken or inaccurate, and this is further strong evidence of the functionality of the dual-spring design. [12] In finding for MDI on the trade dress issue the Court of Appeals gave insufficient recognition to the importance of the expired utility patents, and their evidentiary significance, in establishing the functionality of the device. The error likely was caused by its misinterpretation of trade dress principles in other respects. As we have noted, even if there has been no previous utility patent the party asserting trade dress has the burden to establish the nonfunctionality of alleged trade dress features. MDI could not meet this burden. Discussing trademarks, we have said "'[i]n general terms, a product feature is functional,' and cannot serve as a trademark, 'if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.'" Qualitex, 514 U.S., at 165 (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, n. 10 (1982)). Expanding upon the meaning of this phrase, we have observed that a functional feature is one the "exclusive use of [which] would put competitors at a significant non-reputation-related disadvantage." 514 U.S., at 165. The Court of Appeals in the instant case seemed to interpret this language to mean that a necessary test for functionality is "whether the particular product configuration is a competitive necessity." 200 F.3d, at 940. See also Vornado, 58 F.3d, at 1507 ("Functionality, by contrast, has been defined both by our circuit, and more recently by the Supreme Court, in terms of competitive need"). This was incorrect as a comprehensive definition. As explained in Qualitex, supra, and Inwood, supra, a feature is also functional when it is essential to the use or purpose of the device or when it affects the cost or quality of the device. The Qualitex decision did not purport to displace this traditional rule. Instead, it quoted the rule as Inwood had set it forth. It is proper to inquire into a "significant non-reputation-related disadvantage" in cases of esthetic functionality, the question involved in Qualitex. Where the design is functional under the Inwood formulation there is no need to proceed further to consider if there is a competitive necessity for the feature. In Qualitex, by contrast, esthetic functionality was the central question, there having been no indication that the green-gold color of the laundry press pad had any bearing on the use or purpose of the product or its cost or quality. [13] The Court has allowed trade dress protection to certain product features that are inherently distinctive. Two Pesos, 505 U.S., at 774. In Two Pesos, however, the Court at the outset made the explicit analytic assumption that the trade dress features in question (decorations and other features to evoke a Mexican theme in a restaurant) were not functional. Id., at 767, n. 6. The trade dress in those cases did not bar competitors from copying functional product design features. In the instant case, beyond serving the purpose of informing consumers that the sign stands are made by MDI (assuming it does so), the dualspring design provides a unique and useful mechanism to resist the force of the wind. Functionality having been established, whether MDI's dual-spring design has acquired secondary meaning need not be considered. [14] There is no need, furthermore, to engage, as did the Court of Appeals, in speculation about other design possibilities, such as using three or four springs which might serve the same purpose. 200 F.3d, at 940. Here, the functionality of the spring design means that competitors need not explore whether other spring juxtapositions might be used. The dualspring design is not an arbitrary flourish in the configuration of MDI's product; it is the reason the device works. Other designs need not be attempted. [15] Because the dual-spring design is functional, it is unnecessary for competitors to explore designs to hide the springs, say, by using a box or framework to cover them, as suggested by the Court of Appeals. Ibid. The dual-spring design assures the user the device will work. If buyers are assured the product serves its purpose by seeing the operative mechanism that in itself serves an important market need. It would be at cross-purposes to those objectives, and something of a paradox, were we to require the manufacturer to conceal the very item the user seeks. [16] In a case where a manufacturer seeks to protect arbitrary, incidental, or ornamental aspects of features of a product found in the patent claims, such as arbitrary curves in the legs or an ornamental pattern painted on the springs, a different result might obtain. There the manufacturer could perhaps prove that those aspects do not serve a purpose within the terms of the utility patent. The inquiry into whether such features, asserted to be trade dress, are functional by reason of their inclusion in the claims of an expired utility patent could be aided by going beyond the claims and examining the patent and its prosecution history to see if the feature in question is shown as a useful part of the invention. No such claim is made here, however. MDI in essence seeks protection for the dual-spring design alone. The asserted trade dress consists simply of the dual-spring design, four legs, a base, an upright, and a sign. MDI has pointed to nothing arbitrary about the components of its device or the way they are assembled. The Lanham Act does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity. The Lanham Act, furthermore, does not protect trade dress in a functional design simply because an investment has been made to encourage the public to associate a particular functional feature with a single manufacturer or seller. The Court of Appeals erred in viewing MDI as possessing the right to exclude competitors from using a design identical to MDI's and to require those competitors to adopt a different design simply to avoid copying it. MDI cannot gain the exclusive right to produce sign stands using the dual-spring design by asserting that consumers associate it with the look of the invention itself. Whether a utility patent has expired or there has been no utility patent at all, a product design which has a particular appearance may be functional because it is "essential to the use or purpose of the article" or "affects the cost or quality of the article." Inwood, 456 U.S., at 850, n. 10, 102 S.Ct. 2182. [17] TrafFix and some of its amici argue that the Patent Clause of the Constitution, Art. I, § 8, cl. 8, of its own force, prohibits the holder of an expired utility patent from claiming trade dress protection. Brief for Petitioner 33-36; Brief for Panduit Corp. as Amicus Curiae 3; Brief for Malla Pollack as Amicus Curiae 2. We need not resolve this question. If, despite the rule that functional features may not be the subject of trade dress protection, a case arises in which trade dress becomes the practical equivalent of an expired utility patent, that will be time enough to consider the matter. The judgment of the Court of Appeals is reversed, and the case is remanded for further proceedings consistent with this opinion. 1. What product feature does not affect the cost or quality of the product? The TrafFix Court held that "a feature is also functional when it is essential to the use or purpose of the device or when it affects the cost or quality of the device." Going to the second part of the TrafFix test ("affects the cost or quality of the device"), is there any product feature that would not affect in some way the cost or quality of the product? See In re Morton-Norwich Prod., Inc., 671 F.2d 1332, 1340 (C.C.P.A. 1982) ("[I]t appears to us that 'affects' and 'contributes to' are both so broad as to be meaningless, for every design 'affects' or 'contributes to' the utility of the article in which it is embodied."). Isn't any product feature therefore functional under TrafFix? Would it be reasonable instead to read the second part of the TrafFix test as implicitly requiring that, to be functional, the product feature must significantly affect the cost or quality of the product-i.e., affect the cost in such a way that granting exclusive rights in the product feature would put competitors at a "significant non-reputation related disadvantage"? But if we read the second part of the TrafFix test in this way, then how is it different from the "competitive necessity" test? (To be clear, the word "significantly" does not appear in the second part of the TrafFix test and at least in theory the overall test means what it says: any product feature that is either (a) "essential to the use or purpose of the device" or (b) "affects the cost or quality of the device" should be held to be functional). 2. Functionality and food flavors. Under TrafFix, are flavors of food protectable as trademarks? In a case in which a restaurant franchisor sued a knock-off restaurant, the court found that food flavors are functional. See New York Pizzeria, Inc. v. Syal, 56 F. Supp. 3d 875, 882 (S.D. Tex. 2014) ("The flavor of food undoubtedly affects its quality, and is therefore a functional element of the product."). After the Supreme Court issued its opinion in TrafFix, the lower courts applied the teachings of the opinion in a variety of ways. Presented here are excerpts from certain of the leading lower court functionality opinions after TrafFix. In reading these opinions, consider the following questions: • Which opinion represents the best interpretation of TrafFix? • Which opinions' approaches to functionality are more pro-plaintiff (i.e., less likely to find a product feature to be functional) or more pro-defendant (i.e., more likely to find a product feature to be functional) in orientation? • For each opinion, how close does the opinion's definition of de jure functionality come to a simple de facto functionality standard? {Plaintiff Eppendorf-Netheler-Hinz GMBH ("Eppendorf") manufactured disposable pipette tips and dispenser syringes to which the pipette tips can be attached for use in laboratories. Defendant Ritter GMBH ("Ritter") began to manufacture pipette tips that were interchangeable with and priced lower than Eppendorf's tips. Eppendorf brought suit against Ritter for, among other things, trade dress infringement. In June of 2000, ten months before the Supreme Court handed down TrafFix, Eppendorf's claims were tried before a jury, which returned a verdict in favor of Eppendorf. The district court denied Ritter's motion for judgment as a matter of law. Ritter appealed.} EDITH H. JONES, Circuit Judge . . . . [2] The crucial issue presented by this appeal is whether the eight design elements of the Eppendorf Combitips are functional as a matter of law. This case was tried in June of 2000, almost ten months before the Supreme Court decided TrafFix. The district court, correctly applying this circuit's utilitarian test of functionality, instructed the jury as follows: A design or characteristic is nonfunctional if there are reasonably effective and efficient alternatives possible. Hence, a product's trade dress is functional only, one, if competitors need to incorporate it in order to compete effectively because it is essential to the product's use, or, two, if it significantly affects the cost or quality of the article. A design is functional and thus unprotectable if it is one of a limited number of equally efficient options available to competitors and free competition would be significantly disadvantaged by according the design trademark protection. Relying on this instruction, the jury determined that the Combitips were non-functional. Ritter and RK Manufacturing moved for judgment as a matter of law on the issue of functionality, and the district court denied the motion. . . . . [3] Eppendorf contends that the evidence supports the jury's finding of non-functionality because "[t]he evidence clearly established that there were alternative designs to each of the eight non-functional features." Appellee's Brief at 20. Indeed, there is extensive testimony in the record regarding available alternative designs for each of the eight elements. For example, Eppendorf's expert testified that the number of fins under the flange "could be increased or decreased or their appearance could be changed." Appellee's Brief at 5. Thus, Eppendorf argues that the fins are non-functional because alternative designs are available to competitors in the marketplace. [4] Eppendorf's argument, while consistent with this circuit's utilitarian definition of functionality, is unpersuasive in light of the Court's discussion of functionality in TrafFix. As explained above, the primary test for functionality is whether the product feature is essential to the use or purpose of the product or if it affects the cost or quality of the product. In TrafFix, the Court determined that the dual-spring design on a wind-resistant road sign was functional because the dual-spring design "provides a unique and useful mechanism to resist the force of the wind." 532 U.S. at 33, 121 S.Ct. at 1262. The Court rejected the argument that the springs were non-functional because a competitor could use three or four springs which would serve the same purpose. Id. The Court explained, There is no need, furthermore, to engage, as did the Court of Appeals, in speculation about other design possibilities, such as using three or four springs which might serve the same purpose . . . . The dual-spring design is not an arbitrary flourish in the configuration of [the road sign]; it is the reason the device works. Other designs need not be attempted. Id. at 33-34, 121 S.Ct. at 1261. Accordingly, the design features for which Eppendorf seeks trade dress rights are functional if they are essential to the use or purpose of the Combitips or affect the cost or quality of the Combitips. The availability of alternative designs is irrelevant. [5] In this case it is undisputed that the Combitips's fins provide necessary support for the flange. Without the fins, the flange is subject to deformation. The only testimony offered by Eppendorf to prove non-functionality of the fins related to the existence of alternative design possibilities. Eppendorf's functionality expert testified that the appearance and number of fins could be changed without affecting the function of the fins. Eppendorf did not prove, however, that the fins are an arbitrary flourish which serve no purpose in the Combitips. Rather, Eppendorf's experts concede that fins of some shape, size or number are necessary to provide support for the flange and to prevent deformation of the product. Thus, the fins are design elements necessary to the operation of the product. 5 Because the fins are essential to the operation of the Combitips, they are functional as a matter of law, and it is unnecessary to consider design alternatives available in the marketplace. TrafFix, 532 U.S. at 33-34. [6] Likewise, a careful review of the record demonstrates that Eppendorf failed to prove that the remaining Combitip design elements are unnecessary, non-essential design elements. It is undisputed that: (1) The flange is necessary to connect the Combitip to the dispenser syringe; (2) The rings on the plunger head are necessary to lock the plunger into a cylinder in the dispenser syringe; (3) The plunger is necessary to push liquids out of the tip, and the ribs on the plunger stabilize its action; (4) The tips at the lower end of the Combitips are designed to easily fit into test tubes and other receptacles; (5) The size of the Combitip determines the dispensed volume, and size is essential to accurate and efficient dispensing; (6) The color scheme used on the Combitip-clear plastic with black lettering-enables the user easily to see and measure the amount of liquid in the Combitip, and black is standard in the medical industry; and (7) The stumps of the larger Combitips must be angled to separate air bubbles from the liquid and ensure that the full volume of liquid is dispensed. Thus, all eight design elements identified by Eppendorf are essential to the operation of the Combitips. [7] Eppendorf's theory of non-functionality focused on the existence of alternative designs. Eppendorf's design expert summarized Eppendorf's approach to functionality: "My conclusion was that to achieve the same functional purpose, [the design elements identified by Eppendorf] can be changed significantly, considerably without affecting the overall intended purpose." Although alternative designs are relevant to the utilitarian test of functionality, alternative designs are not germane to the traditional test for functionality. Each of the eight design elements identified by Eppendorf is essential to the use or purpose of the Combitips, and is not arbitrary or ornamental features. Therefore, no reasonable juror could conclude that Eppendorf carried its burden of proving non-functionality. . . . . [8] Accordingly, we REVERSE the judgment of the district court and RENDER judgment for Ritter and RK Manufacturing. We likewise VACATE the injunction entered by the district court . . . . 1. Sixth Circuit application of TrafFix. Just as it did with Eppendorf in the Fifth Circuit, TrafFix directly altered the outcome of a functionality case being litigated in the Sixth Circuit when TrafFix was handed down. In Antioch Co. v. Western Trimming Corp., 196 F.Supp.2d 635 (S.D.Ohio 2002), the district court initially found that the plaintiff's scrap book design was nonfunctional in light of the availability of alternative designs, but the court invited the defendant to renew its motion for summary judgment on the issue if TrafFix altered the legal framework for assessing trade dress functionality. The defendant did so and the district court then ruled that the trade dress at issue was functional. The Sixth Circuit affirmed. See Antioch Co. v. Western Trimming Corp., 347 F.3d 150, 156-157 (6th Cir. 2003) ("[A] a court is not required to examine alternative designs when applying the traditional test for functionality. That much is clear from TrafFix Devices . . . . The dual strap-hinge design, spine cover, padded album cover, and reinforced pages are all components that are essential to the use of Antioch's album and affect its quality. We thus agree with the district court's conclusion that there was no genuine issue of material fact regarding the functionality of Antioch's album under the traditional Inwood test." (emphasis in original)). Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp. 986 F.3d 250 (3d Cir. 2021) BIBAS, Circuit Judge. [1] This is a tale of more than just desserts. Decades ago, Ezaki Glico invented Pocky, a chocolate-covered cookie stick. Pocky was very popular. And its success drew imitators, including Lotte's Pepero. Ezaki Glico now sues Lotte for trade-dress infringement. [2] The District Court granted Lotte summary judgment, finding that because Pocky's design is functional, Ezaki Glico has no trade-dress protection. We agree. Trade dress is limited to designs that identify a product's source. It does not safeguard designs that are functional-that is, useful. Patent law protects useful inventions, but trademark law does not. We will thus affirm. [3] Ezaki Glico is a Japanese confectionery company. For more than half a century, it has made and sold Pocky: a product line of thin, stick-shaped cookies (what the British call biscuits). These cookies are partly coated with chocolate or a flavored cream; some have crushed almonds too. The end of each is left partly uncoated to serve as a handle. Ezaki Glico makes Pocky in both a standard and an "Ultra Slim" size. Appellant's Br. 9. [4] In 1978, Ezaki Glico started selling Pocky in the United States through its wholly owned subsidiary here. Since then, it has tried to fend off competitors by registering U.S. trademarks and patents. It has two Pocky product configurations registered as trade dresses. [5] Ezaki Glico also has a utility patent for a "Stick Shaped Snack and Method for Producing the Same." The first thirteen claims in the patent describe methods for making a stick-shaped snack. The final claim covers "[a] stick-shaped snack made by the method of claim 1." The width of that stick-shaped snack matches that of Pocky Ultra Slim. [6] Imitation is the sincerest form of flattery, and others have noted Pocky's appeal. Starting in 1983, another confectionery company called Lotte started making Pepero. These snacks are also stick-shaped cookies (biscuits) partly coated in chocolate or a flavored cream, and some have crushed almonds too. It looks remarkably like Pocky. Here are the two products side by side: [7] Lotte and its U.S. subsidiary have been selling Pepero in the United States for more than three decades. [8] From 1993 to 1995, Ezaki Glico sent letters to Lotte, notifying Lotte of its registered trade dress and asking it to cease and desist selling Pepero in the United States. Lotte assured Ezaki Glico that it would stop until they resolved their dispute. But Lotte resumed selling Pepero. For the next two decades, Ezaki Glico took no further action. [9] In 2015, Ezaki Glico sued Lotte in federal court for selling Pepero. Under federal law, Ezaki Glico alleged trademark infringement and unfair competition, in violation of the Lanham (Trademark) Act § § 32 and 43(a), 15 U.S.C. § § 1114, 1125(a)(1)(A). Under New Jersey law, it alleged trademark infringement and unfair competition, in violation of both the common law and the New Jersey Fair Trade Act, N.J.S.A. § 56:4-1 and 2. [10] After discovery, the District Court granted summary judgment for Lotte, holding that because Pocky's product configuration is functional, it is not protected as trade dress. Kaisha v. Lotte Int'l Am. Corp., No. 15-5477, 2019 WL 8405592, at *3 (D.N.J. July 31, 2019). [11] Ezaki Glico now appeals. . . . [12] We review the District Court's grant of summary judgment de novo. Cranbury Brick Yard, LLC v. United States, 943 F.3d 701, 708 (3d Cir. 2019). We will affirm if no material fact is genuinely disputed and if, viewing the facts most favorably to Ezaki Glico, Lotte merits judgment as a matter of law. Fed. R. Civ. P. 56(a). Both of Ezaki Glico's Lanham Act claims depend on the validity of its trade dress. New Jersey's unfair-competition and trademark laws are not significantly different from federal law, so our analysis of Ezaki Glico's Lanham Act claims applies equally to dispose of its state-law claims. See Am. Greetings Corp. v. Dan-Dee Imports, Inc., 807 F.2d 1136, 1141 (3d Cir. 1986). Following the parties' lead, we focus on federal trademark law. [13] Under the statute, the key issue is whether Pocky's trade dress is functional. Lotte says that it is; Ezaki Glico says no. Ezaki Glico equates "functional" with "essential." Appellants' Br. 18, 25 (emphases omitted). But that test is too narrow. It misreads the Lanham Act's text and its relationship with the Patent Act. Under both the statute and the caselaw, a feature's particular design is functional if it is useful. And there are several ways to show functionality. A. Patent law protects useful designs, while trademark law does not [14] Copying is usually legal. It is part of market competition. As a rule, unless a patent, copyright, or the like protects an item, competitors are free to copy it. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29 (2001). [15] The Constitution does authorize Congress to grant exclusive patents and copyrights "[t]o promote the Progress of Science and useful Arts," but only "for limited Times." U.S. Const. art. I, § 8, cl. 8. Utility patents promote "Science and useful Arts" by protecting inventions that are "new and useful." 35 U.S.C. § 101. Design patents protect "any new, original and ornamental design." Id. § 171(a). In keeping with the Constitution's time limit, utility patents last for twenty years, and design patents last for only fifteen years. Id. § § 154(a)(2), 173. If there is no patent, or once a patent expires, competitors are free to copy "publicly known design and utilitarian ideas." Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 152 (1989); accord Qualitex Co. v. Jacobson Prod. Co., Inc., 514 U.S. 159, 164 (1995). This way, sellers can compete and build on one another's innovations. That competition improves quality and lowers consumers' costs. [16] By contrast, trademark law protects not inventions or designs per se, but branding. . . . Trademark law can protect a product's "trade dress [,] [which] is the overall look of a product or business." Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303, 308 (3d Cir. 2014). That includes not only a product's packaging but also its design, such as its size, shape, and color. Id.; Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 209 (2000). [17] We are careful to keep trademark law in its lane. Trade dress, like trademark law generally, is limited to protecting the owner's goodwill and preventing consumers from being confused about the source of a product. Shire US Inc. v. Barr Labs., Inc., 329 F.3d 348, 353 (3d Cir. 2003). We must not overextend it to protect all of a product's features, because "product design almost invariably serves purposes other than source identification." TrafFix, 532 U.S. at 29 (quoting Wal-Mart, 529 U.S. at 213). "Trade dress protection . . . is not intended to create patent-like rights in innovative aspects of product design." Shire, 329 F.3d at 353. If it did, it could override restrictions on what is patentable and for how long. Qualitex, 514 U.S. at 164-65. After all, trademarks have no time limit. [18] The functionality doctrine keeps trademarks from usurping the place of patents. The Patent and Trademark Office cannot register any mark that "comprises any matter that, as a whole, is functional." 15 U.S.C. § 1052(e)(5). Even after a mark is registered, it is a defense to infringement "[t]hat the mark is functional." Id. § 1115(b) (8); see also id. § 1125(a)(3) (providing that the holder of an unregistered mark must prove that the mark "is not functional"). Thus, even if copying would confuse consumers about a product's source, competitors may copy unpatented functional designs. B. Functional designs need not be essential, just useful [19] The core dispute here is how to define "functional." Ezaki Glico reads it narrowly, equating it with "essential." Appellant's Br. 18, 25. But that is not what the word means. [20] Since the Lanham Act does not define functionality, we start with its ordinary meaning. A feature's design is functional if it is "designed or developed chiefly from the point of view of use: UTILITARIAN." Functional (def. 2a), Webster's Third New International Dictionary (1966). So something is functional as long as it is "practical, utilitarian"-in a word, useful. Functional (def. 2d), Oxford English Dictionary (2d ed. 1989). The word requires nothing more. [21] Reading functionality as usefulness explains how the Lanham Act fits with the Patent Act. Utility patents, not trademarks, protect inventions or designs that are "new and useful." 35 U.S.C. § 101. If the Lanham Act protected designs that were useful but not essential, as Ezaki Glico claims, it would invade the Patent Act's domain. Because the Lanham Act excludes useful designs, the two statutes rule different realms. [22] Precedent also supports defining functional as useful. In Qualitex, the Supreme Court described the functionality doctrine as protecting competition by keeping a producer from perpetually "control[ling] a useful product feature." 514 U.S. at 164. In TrafFix, the Court described functionality as depending on whether "the feature in question is shown as a useful part of the invention." 532 U.S. at 34. It contrasted functional features disclosed in a utility patent with "arbitrary, incidental, or ornamental aspects" that "do not serve a purpose within the terms of the utility patent." Id. And in Wal-Mart, the Court contrasted designs that only "identify the source" with those that "render the product itself more useful or more appealing." 529 U.S. at 213. "[M]ore useful or more appealing" is a far cry from essential. [23] Conversely, a design is not functional if all it does is identify its maker. "Proof of nonfunctionality generally requires a showing that the element of the product serves no purpose other than identification." Keene Corp. v. Paraflex Indus., Inc., 653 F.2d 822, 826 (3d Cir. 1981) (quoting SK&F, Co. v. Premo Pharm. Labs., Inc., 625 F.2d 1055, 1063 (3d Cir. 1980)). But if a design gives a product an edge in usefulness, then it is functional. [24] Ezaki Glico resists this reading by focusing on one phrase from Qualitex. The heart of its claim is the first sentence of its argument: "A product's configuration is functional for purposes of trade dress protection only 'if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.'" Appellants' Br. 22 (quoting Qualitex, 514 U.S. at 165, and adding the emphasis). But the word "only" is nowhere on the page it cites. Though Ezaki Glico's forceful brief repeats "essential" more than four dozen times and structures its case around that touchstone, the authority does not support its drumbeat. [25] On the contrary, the Supreme Court recognizes several ways to show that a product feature is functional. One way is indeed to show that a feature "is essential to the use or purpose of the article." Qualitex, 514 U.S. at 165 (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982)). Another is if "it affects the cost or quality of the article." Id. (Ezaki Glico keeps skipping over this part of the test.) At least in some cases, a feature is functional and unprotected if the "exclusive use of [the feature] would put competitors at a significant non-reputation-related disadvantage." TrafFix, 532 U.S. at 32 (quoting Qualitex, 514 U.S. at 165). All of these are different ways of showing usefulness. (Though this last inquiry is especially apt for proving aesthetic functionality, the Court has not specifically limited it to that context. See TrafFix, 532 U.S. at 33.) On the other hand, a feature is "not functional" if, for instance, "it is merely an ornamental, incidental, or arbitrary aspect of the device." Id. at 30. [26] We analyze functionality not at the level of the entire product or type of feature, but at the level of the particular design chosen for feature(s). Just "because an article is useful for some purpose," it does not follow that "all design features of that article must be 'functional.'" 1 McCarthy § 7:70 (emphases added). The question is not whether the product or feature is useful, but whether "the particular shape and form" chosen for that feature is. Id. [27] For instance, though ironing-board pads need "to use some color . . . to avoid noticeable stains," there is no functional reason to use green-gold in particular. Qualitex, 514 U.S. at 166. Though French press coffeemakers need some handle, there is no functional reason to design the particular handle in the shape of a "C." Bodum USA, Inc. v. A Top New Casting Inc., 927 F.3d 486, 492-93 (7th Cir. 2019) (also noting that the design sacrificed ergonomics). And though armchairs need some armrest, there is no functional reason to design the particular armrest as a trapezoid. Blumenthal Distrib., Inc. v. Herman Miller, Inc., 963 F.3d 859, 867-68 (9th Cir. 2020) (also noting that the design sacrificed comfort). Ironingboard colors, coffee-pot handles, and armrests are all generally useful. But the particular designs chosen in those cases offered no edge in usefulness. [28] Also, a combination of functional and non-functional features can be protected as trade dress, so long as the non-functional features help make the overall design distinctive and identify its source. See Am. Greetings, 807 F.2d at 1143. [29] But a product's design, including its shape, is often useful and thus functional. For example, when Nabisco sued Kellogg for making its shredded wheat pillow-shaped, just like Nabisco's, the Supreme Court rejected the unfair-competition claim. The pillow shape is functional because using another shape would increase shredded wheat's cost and lower its quality. Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111, 122 (1938). For the same reason, the Court rejected a challenge to copying the exact shape of a pole lamp. Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 231-32 (1964). And if an inventor created a new light-bulb shape that improved illumination, he could not trademark that shape. Qualitex, 514 U.S. at 165. That would be true even if consumers associated the bulb shape with its inventor, because trademarking it would "frustrat[e] competitors' legitimate efforts to produce an equivalent illumination-enhancing bulb." Id. So long as the design improves cost, quality, or the like, it cannot be protected as trade dress. The shape need only be useful, not essential. Conversely, a distinctive logo, pattern, or other arbitrary shape or style may be non-functional and protectable as a trade dress. [30] As the leading trademark treatise concurs, "functional" means useful. "To boil it down to a phrase: something is 'functional' if it works better in this shape." 1 McCarthy § 7:63. That includes features that make a product cheaper or easier to make or use. Id. Because the functionality bar is supposed to keep "trade dress from creating 'back-door patents,' . . .. the test of what is 'functional' should be very similar to that of patent law." Id. § 7:67. [31] There are several ways to prove functionality. First, evidence can directly show that a feature or design makes a product work better. See Am. Greetings, 807 F.2d at 1142 (treating as functional "tummy graphics" on teddy bears because they signal each bear's personality). Second, it is "strong evidence" of functionality that a product's marketer touts a feature's usefulness. Id. at 1142-43. Third, "[a] utility patent is strong evidence that the features therein claimed are functional." TrafFix, 532 U.S. at 29. Fourth, if there are only a few ways to design a product, the design is functional. Keene, 653 F.2d at 827. But the converse is not necessarily true: the existence of other workable designs is relevant evidence but not independently enough to make a design non-functional. Id.; 1 McCarthy § 7:75 (interpreting TrafFix, 532 U.S. at 33-34). [32] Our list is not exhaustive; there may be other considerations. The Federal Circuit and other sister circuits also use similar inquiries. See, e.g., Georgia [33] With these definitions and inquiries in mind, we can now apply them to this case. [34] To decide whether a trade dress is functional, we look at the usefulness of the exact feature or set of features claimed by the trade dress. See Am. Greetings, 807 F.2d at 1141. Ezaki Glico has two registered Pocky trade dresses, both broad. The first "comprises an elongated rod comprising biscuit or the like, partially covered with chocolate." App 10, 1448. The second consists of the same sort of snack, along with almonds on top of the chocolate or cream. [35] In a picture, Ezaki Glico's trade dresses include all cookies like these: [36] Ezaki Glico argues that none of these features is essential to make the snack easy to eat. But that is the wrong test. Lotte has shown that Pocky's design is useful and thus functional. [37] Every feature of Pocky's registration relates to the practical functions of holding, eating, sharing, or packing the snack. Consider each stick's uncoated handle. Ezaki Glico's internal documents show that it wanted to make a snack that people could eat without getting chocolate on their hands. Pocky was born when Ezaki Glico found that it could coat just part of a cookie stick, leaving people an uncoated place to hold it. So it designed Pocky's handle to be useful. [38] The same is true of Pocky's stick shape. As Ezaki Glico recognizes, the stick shape makes it "easy to hold, so it c[an] be shared with others to enjoy as a snack." App. 595. It also lets people eat the cookie without having to open their mouths wide. And the thin, compact shape lets Ezaki Glico pack many sticks in each box, enough to share with friends. [39] Viewed as a whole, Pocky's trade dress is functional. The claimed features are not arbitrary or ornamental flourishes that serve only to identify Ezaki Glico as the source. The design makes Pocky more useful as a snack, and its advantages make Pocky more appealing to consumers for reasons well beyond reputation. See Kellogg, 305 U.S. at 120. As Ezaki Glico's own documents acknowledge, "Pocky provides a functional value [Enjoy chocolate lightly]." App. 636 (bracketed material in original). [40] There is plenty of evidence that Ezaki Glico promotes Pocky's "convenient design." App. 646. Its ads tout all the useful features described above. It advertises "the no mess handle of the Pocky stick," which "mak[es] it easier for multi-tasking without getting chocolate on your hands." App. 648, 651. It also describes Pocky as "[p]ortable," since "one compact, easy-to-carry package holds plentiful amounts of Pocky." App. 648. "With plenty of sticks in each package, Pocky lends itself to sharing anytime, anywhere, and with anyone." App. 655. These promotions confirm that Pocky's design is functional. [41] Lotte could have shaped its Pepero differently. Ezaki Glico offers nine examples of partly-chocolate-coated snacks that do not look like Pocky. That is hardly dispositive. As we noted in Keene, even when there are alternatives, the evidence can still show that a product design is functional. 653 F.2d at 827. That is true here. Every aspect of Pocky is useful. The nine other designs do not make it less so. [42] Finally, Lotte argues that Ezaki Glico's utility patent for a "Stick Shaped Snack and Method for Producing the Same" proves functionality. It does not. [43] As TrafFix explained, "[a] utility patent is strong evidence that the features therein claimed are functional." 532 U.S. at 29. This is because patented items must be "useful." 35 U.S.C. § 101. If a patentee relied on a product's feature to show that the product was patentable, that reliance is good evidence that the feature is useful. As TrafFix put it, the question is whether the "central advance" of the utility patent is also "the essential feature of the trade dress" that the owners want to protect. 532 U.S. at 30, 121 S.Ct. 1255. So Ezaki Glico's utility patent would be strong evidence of functionality if the features it claimed overlapped with its trade dress. But they do not. [44] The trade dress that Ezaki Glico defends is a stick-shaped snack that is partly coated with chocolate or cream. Yet those features are not the "central advance" of its utility patent. Instead, the patent's innovation is a better method for making the snack's stick shape. The method is useful for making the shape whether or not the shape itself is useful for anything. Thus, the patent's mention of the shape says nothing about whether the shape is functional. [45] The District Court erroneously considered the utility patent. But that error was immaterial. Even setting that aside, many other factors show that Pocky's trade dress is functional and so not protectable. Thus, the District Court properly granted summary judgment for Lotte. We need not reach other possible grounds for affirmance. * * * * * [46] Though Ezaki Glico created Pocky, it cannot use trade dress protection to keep competitors from copying it. The Lanham Act protects features that serve only to identify their source. It does not cover functional (that is, useful) features. That is the domain of patents, not trademarks. There is no real dispute that Pocky's design is useful, so the trade dress is not protectable. We will thus affirm. That's the way the cookie crumbles. The following opinion references the "Louboutin test" for functionality that the Second Circuit set out in Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206 (2d Cir. 2012). Louboutin was essentially an aesthetic functionality case and is substantially excerpted below in Part I.B.1.b. [1] If a product's trade dress is functional, there can be no trade dress protection. The functionality doctrine is at the core of the parties' dispute. Plaintiff-Counter-Defendant-Appellee Sulzer Mixpac AG ("Mixpac") and Defendants-Counter-Claimants-Appellants A&N Trading Company, A&N Trading Co., Ltd., and Sung Bin An, also known as Tony An (collectively, "A&N") are competitors in the U.S. market for mixing tips used by dentists to create impressions of teeth for dental procedures, such as crowns. [2] A&N appeals from a final judgment and permanent injunction entered in the United States District Court for the Southern District of New York (Lewis A. Kaplan, J.) on Mixpac's claims of unfair competition, common law trademark infringement, and trademark infringement, trademark counterfeiting, and false designation of origin under the Trademark Act of 1946 (the "Lanham Act"), and on A&N's counterclaims seeking a declaratory judgment that Mixpac's trade dress is functional. The district court entered judgment for Mixpac on these counts. A&N argues on appeal that Mixpac's use of particular colors on mixing tips is functional because the colors serve as a color-coding scheme that signifies the size of a mixing tip. [3] Following a one-day bench trial, the district court concluded that Mixpac's use of particular colors on mixing tips was not functional, as the colors add to manufacturing costs and other companies use different or no colors for their mixing tips. We disagree. The evidence establishes that the colors signify mixing tip sizes, enabling users to more easily match cartridges to the appropriate mixing tips. Therefore, we conclude that Mixpac's trade dress is functional. We reverse the judgment of the district court, and remand. [4] Mixpac manufactures a system to mix adhesives for dental applications. The system consists of a dispenser-like caulking gun, a cartridge containing two cylinders, and a mixing tip. Mixpac manufactures all three parts of the system and is a leading supplier of mixing tips. A mixing tip is composed of a cylinder that contains helixes that blend components as they pass through the tip. The materials that are mixed come from a two-cylinder cartridge. The mixing tip is attached to the cartridge via the mixing tip's cap. The cartridge, in turn, is attached to the dispenser-like caulking gun. When the trigger of the caulking gun is pulled, the components inside the cartridge are pushed into the mixing tip for blending. To accommodate different types of dental procedures, mixing tips vary in their diameter, the length of the helixes that mix component materials, and cap sizes. [5] Mixpac's customers are primarily dental material manufacturers such as 3M ESPE and Dentsply that buy Mixpac cartridges, fill them with their own dental materials, and sell sets of filled cartridges and mixing tips to dental distributors. The distributors, in turn, sell to dental professionals. Mixpac also sells mixing tips directly to dental distributors, such as Henry Schein. [6] A&N Trading Company . . . distributes mixing tips that are manufactured by Seil Global Co., Ltd. ("Seil Global"). [7] Mixpac owns twelve U.S. trademark registrations for particular colors on mixing tips. On March 23, 2010, it obtained trademarks on the principal register for the use of yellow and teal on mixing tip caps. On June 14, 2011, it obtained trademarks on the principal register for the use of blue, pink, purple, and brown on mixing tip caps. In January 2015 and January 2016, it obtained registered marks on the principal register for these same colors as "applied to the lower portion of dental mixing tips." Mixpac also owns trademarks on the supplemental register for yellow, teal, blue, pink, purple, and brown (collectively, the "Candy Colors") as applied to mixing tip cylinders and helixes, which it obtained in July and November of 2017. 2 . . . . [8] Notwithstanding Mixpac's trademark registrations, A&N displayed and advertised mixing tips with clear caps and colored helixes during the 2016 Greater New York Dental Meeting ("2016 GNYDM"), held from November 27-30, 2016. The colors were identical or nearly identical to the colors on Mixpac's mixing tips. . . . Market Segment Healthcare; and expert witness Dr. Howard S. Glazer, a dentist with a general dental practice in Fort Lee, New Jersey. [11] The witnesses testified as to the Candy Colors' purpose. Jutzi testified that applying Candy Colors to the mixing tips "adds time and significant cost" and it "would be less expensive for Mixpac to make clear mixing tips without any color." He testified that while "Mixpac makes mixing tips with different sizes and types in the same color, and also the same size in different colors . . . [it] provides cartridges and mixing tips that can be matched by the same color." His testimony on cross-examination (considered together with other evidence in the record) acknowledges that all yellow mixing tips are 4.2 millimeters in diameter, all teal mixing tips are 6.5 millimeters in diameter, and all blue mixing tips are 3.2 millimeters in diameter. Ferrari similarly testified on cross-examination that Mixpac's catalog identifies mixing tip diameters by color, where teal indicates 6.5 millimeters, pink indicates 5.4 millimeters, yellow indicates 4.2 millimeters, blue indicates 3.2 millimeters, and brown indicates 2.5 millimeters. Glazer testified that in dental practice he does "not use, or select, a replacement mixing tip based on [c]olor alone because each of the two-component materials used is unique." [12] Additional evidence sheds light on the Candy Colors' purpose. In connection with the 2008 Litigation, Mixpac submitted declarations from its employees. In a declaration dated November 25, 2008, Richard J. Wilson, then Business Manager for Sulzer Mixpac USA, described that, "[t]o assist in identifying Mixpac's product and to enable users to quickly select a mixing tip that matches the proper cartridge, [Mixpac] chose a unique and arbitrary color coding system." Wilson further declared that the "colors of the cartridge cap are matched to the mixing tip to indicate the proper size and mixing ratio for the dental materials." . . . Further, Mixpac's advertising materials assert that "[i]n order to simplify handling MIXPAC is using color-coded mixers and outlet caps. The color of the outlet cap used for a certain dental product identifies the mixer best suited for th[e] product." [13] In addition to the bench trial testimony, the declarations of Mixpac employees, and Mixpac's advertising materials, websites advertise mixing tips based primarily on their color under Mixpac's system. A website for Dental City, for example, advertises a bag of 48 pink mixing tips with 5.4 millimeter diameters, the same diameter as Mixpac's pink mixing tips. Materials manufacturers also rely on Mixpac's color-coding scheme in their product use instructions. . . . [14] On August 14, 2019, the district court issued its findings of fact and conclusions of law, and a final judgment and permanent injunction in Mixpac's favor. The district court concluded that the Candy Colors are non-functional because Mixpac's use of the colors "adds to the cost to Mixpac of making . . . mixing tips" and "[o]ther companies in the industry use different colors or no colors for their dental products including dental mixing tips." . . . [15] {W}ith respect to functionality, the district court applied the functionality standard as discussed in Fabrication Enterprises, Inc. v. Hygenic Corp., 64 F.3d 53, 59 (2d Cir. 1995). It found that it was "satisfied from Dr. Glazer's quite persuasive and credible testimony that the degree of functionality here is small" and that "[m]ost important of all with respect to functionality is the fact that alternative designs are obviously and clearly available without impairing the utility of the product." It thus rejected A&N's argument that color is a proxy for diameter. The district court acknowledged however, that "a small minority" of dentists "have [probably] asked for a yellow tip or a blue tip." . . . . 10 (1982)). Product features are essential when they are "dictated by the functions to be performed by the article." Id. (internal quotation marks omitted); accord Warner Bros., Inc. v. Gay Toys, Inc., 724 F.2d 327, 331 (2d Cir. 1983) ("[A] feature that merely accommodates a useful function is not enough."). A feature affects cost or quality when it "permits the article to be manufactured at a lower cost or constitutes an improvement in the operation of the goods." Louboutin, 696 F.3d at 219 (internal quotation marks omitted). [17] A feature can still be functional even if it is not essential to a product's use or purpose and does not affect a product's cost or operation. This is referred to as aesthetic functionality, where "the aesthetic design of a product is itself the mark for which protection is sought." Id. at 219-20 (emphasis in original). In such instances, this Court considers whether "giving the markholder the right to use it exclusively would put competitors at a significant non-reputation-related disadvantage." Id. at 220 (internal quotation marks omitted). [18] The district court did not apply the Louboutin test in either its oral statements on the record at the bench trial or in its findings of fact and conclusions of law. The district court's findings that Mixpac's use of colors for mixing tips adds to Mixpac's manufacturing costs and that some of Mixpac's competitors use different or no colors for their mixing tips are not clearly erroneous and are supported by the record. Jutzi testified that Mixpac incurs "significant cost" for adding Candy Colors to mixing tips. Ferrari testified that "[m]any other mixing tips use colors different from the Candy Colors" and discussed a colorless universal mixing tip that Coltene manufactures. [19] A&N does not argue to the contrary. Instead, A&N argues that the mixing tips' color coding helps users identify useful product characteristics, such as diameter. Because the color coding aids users, A&N argues that it affects the quality of the mixing tips and is "essential to how they are intended to be used." The evidence elicited at the bench trial does not support A&N's argument that use of colors on mixing tips is essential to use of the product. Colorcoded mixing tips and cartridges are simply not akin to the "dual-spring" traffic sign design in TrafFix, where the dual-spring system afforded a "unique and useful mechanism to resist the force of the wind" and wind resistance is essential to a traffic sign's purpose of alerting drivers. TrafFix, 532 U.S. at 33. The district court did not make a factual finding that colors are essential to the use or purpose of mixing tips, and we decline to do so on this record. [20] The evidence elicited at the bench trial, however, firmly establishes that the colors signify diameter, which in turn assists users with selecting the proper cartridge for their needs. As Mixpac's own employees acknowledge, the colors enable users to quickly match the proper mixing tip with the proper cartridge, and thereby "improve[ ] the operation of the goods." Louboutin, 696 F.3d at 219 (internal quotation marks omitted). The colors on the mixing tips serve roughly the same purpose as the colors of the flash-frozen ice cream that the Eleventh Circuit considered in Dippin' Dots, Inc. v. Frosty Bites Distribution, LLC, where the ice cream's colors signified flavor, i.e., pink signified strawberry, white signified vanilla, and brown signified chocolate, and were therefore found to be functional. 369 F.3d 1197, 1203-04, 1207 (11th Cir. 2004); see also Inwood, 456 U.S. at 853, 856-58 (concluding that our Circuit erred when it set aside the district court's findings that colors of certain prescription drugs were functional, in part, because patients "associate[d] color with therapeutic effect" and "rel[ied] on color to differentiate one [drug] from another" because those facts were not clearly erroneous). [21] The district court arguably came to this very conclusion when it acknowledged in its oral findings a "small" "degree of functionality," after noting that "there are probably cases in which some dentists have asked for a yellow tip or a blue tip." But its findings are unclear because it failed to apply the test set forth in Louboutin, and thus did not consider whether the colors affected the quality of the tips. Louboutin set out the three-step functionality test, where "[a]t the start, we address the two prongs of the Inwood test, asking whether the design feature is either essential to the use or purpose or affects the cost or quality of the product at issue. . . . Next, if necessary, we turn to a third prong, which is the competition inquiry . . . ." 696 F.3d at 220 (internal quotation marks omitted). We stressed that "if a design feature would, from a traditional utilitarian perspective, be considered essential to the use or purpose of the article, or to affect its cost or quality, then the design feature is functional under Inwood and our inquiry ends." Id. (internal quotation marks omitted). If and only if a design feature is not functional in the traditional sense, do we move to the fact-intensive test where the feature must be "shown not to have a significant effect on competition in order to receive trademark protection." Id. The district court erred because it did not apply this test when it considered only that Mixpac's use of the Candy Colors adds to manufacturing costs and that other companies use different or no colors [22] Mixpac does not refute by evidence or argument that, because the colors on the tip correspond to the tip sizes, the color affects the quality of the product. It argues only that Cisneros, A&N's expert witness, testified that choosing a mixing tip based on color alone would be "stupid." But that does nothing to counter A&N's argument because the functionality doctrine does not require that a product's functional feature be the only reason why relevant consumers purchase it. We thus conclude that the colors are functional, rendering Mixpac's trade dress unprotectible. Our finding of functionality means we need not reach A&N's arguments that the district court's counterfeiting and infringement analyses were fatally flawed. See TrafFix, 532 U.S. at 33 ("Functionality having been established, whether [the] design has acquired secondary meaning need not be considered. There is no need, furthermore, to engage . . . in speculation about other design possibilities . . . ."). . . . . [1] The Supreme Court reversed {the Sixth Circuit in TrafFix}, finding that the court of appeals gave insufficient evidentiary weight to the expired utility patents in analyzing the functionality of the dual-spring design, and that it overread Qualitex: "the Court of Appeals . . . seemed to interpret {Qualitex} to mean that a necessary test for functionality is 'whether the particular product configuration is a competitive necessity.' . . . This was incorrect as a comprehensive definition." TrafFix, 121 S.Ct. at 1261. The Court then reaffirmed the "traditional rule" of Inwood that "a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." Id. The Court further held that once a product feature is found to be functional under this "traditional rule," "there is no need to proceed further to consider if there is competitive necessity for the feature," and consequently "[t]here is no need . . . to engage . . . in speculation about other design possibilities . . . . Other designs need not be attempted." Id. at 1262. 4[2] We do not understand the Supreme Court's decision in TrafFix to have altered the Morton-Norwich analysis. As noted above, the Morton-Norwich factors aid in the determination of whether a particular feature is functional, and the third factor focuses on the availability of "other alternatives." Morton-Norwich, 671 F.2d at 1341. We did not in the past under the third factor require that the opposing party establish that there was a "competitive necessity" for the product feature. Nothing in TrafFix suggests that consideration of alternative designs is not properly part of the overall mix, and we do not read the Court's observations in TrafFix as rendering the availability of alternative designs irrelevant. Rather, we conclude that the Court merely noted that once a product feature is found functional based on other considerationsfoot_6 there is no need to consider the availability of alternative designs, because the feature cannot be given trade dress protection merely because there are alternative designs available. But that does not mean that the availability of alternative designs cannot be a legitimate source of evidence to determine whether a feature is functional in the first place. We find it significant that neither party argues that TrafFix changed the law of functionality, and that scholarly commentary has reached exactly the same conclusion that we have: In the author's view, the observations by the Supreme Court in TrafFix do not mean that the availability of alternative designs cannot be a legitimate source of evidence to determine in the first instance if a particular feature is in fact "functional." Rather, the Court merely said that once a design is found to be functional, it cannot be given trade dress status merely because there are alternative designs available . . . . . . . . . . . The existence of actual or potential alternative designs that work equally well strongly suggests that the particular design used by plaintiff is not needed by competitors to effectively compete on the merits. [1] Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung Telecommunications America, LLC (collectively, "Samsung") appeal from a final judgment of the U.S. District Court for the Northern District of California in favor of Apple Inc. ("Apple"). [2] A jury found that Samsung infringed Apple's design and utility patents and diluted Apple's trade dresses. For the reasons that follow, we affirm the jury's verdict on the design patent infringements, the validity of two utility patent claims, and the damages awarded for the design and utility patent infringements appealed by Samsung. However, we reverse the jury's findings that the asserted trade dresses are protectable. We therefore vacate the jury's damages awards against the Samsung products that were found liable for trade dress dilution and remand for further proceedings consistent with this opinion. [3] Apple sued Samsung in April 2011. On August 24, 2012, the first jury reached a verdict that numerous Samsung smartphones infringed and diluted Apple's patents and trade dresses in various combinations and awarded over $1 billion in damages. [4] . . . The diluted trade dresses are Trademark Registration No. 3,470,983 ("′983 trade dress") and an unregistered trade dress defined in terms of certain elements in the configuration of the iPhone. [5] Following the first jury trial, the district court upheld the jury's infringement, dilution, and validity findings over Samsung's post-trial motion [and a second post-trial motion]. On March 6, 2014, the district court entered a final judgment in favor of Apple, and Samsung filed a notice of appeal . . . . [6] We review the denial of Samsung's post-trial motions under the Ninth Circuit's procedural standards . . . . The Ninth Circuit reviews de novo a denial of a motion for judgment as a matter of law . . . . [7] The jury found Samsung liable for the likely dilution of Apple's iPhone trade dresses under the Lanham Act. When reviewing Lanham Act claims, we look to the law of the regional circuit where the district court sits. We therefore apply Ninth Circuit law. [8] The Ninth Circuit has explained that "[t]rade dress is the totality of elements in which a product or service is packaged or presented." Stephen W. Boney, Inc. v. Boney Servs., Inc., 127 F.3d 821, 828 (9th Cir. 1997). The essential purpose of a trade dress is the same as that of a trademarked word: to identify the source of the product. 1 McCarthy on Trademarks and Unfair Competition § 8:1 (4th ed.) ("[L]ike a word asserted to be a trademark, the elements making up the alleged trade dress must have been used in such a manner as to denote product source."). In this respect, "protection for trade dress exists to promote competition." TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 28, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001). [9] The protection for source identification, however, must be balanced against "a fundamental right to compete through imitation of a competitor's product . . . ." Leatherman Tool Grp., Inc. v. Cooper Indus., Inc., 199 F.3d 1009, 1011-12 (9th Cir. 1999). This "right can only be temporarily denied by the patent or copyright laws." Id. In contrast, trademark law allows for a perpetual monopoly and its use in the protection of "physical details and design of a product" must be limited to those that are "nonfunctional." Id. at 1011-12; see also Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164-65 (1995) ("If a product's functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity)."). Thus, it is necessary for us to determine first whether Apple's asserted trade dresses, claiming elements from its iPhone product, are nonfunctional and therefore protectable. [10] "In general terms, a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n. 10 (1982). "A product feature need only have some utilitarian advantage to be considered functional." Disc Golf Ass'n v. Champion Discs, Inc., 158 F.3d 1002, 1007 (9th Cir. 1998). A trade dress, taken as a whole, is functional if it is "in its particular shape because it works better in this shape." Leatherman, 199 F.3d at 1013. [11] "[C]ourts have noted that it is, and should be, more difficult to claim product configuration trade dress than other forms of trade dress." Id. at 1012-13 (discussing cases). Accordingly, the Supreme Court and the Ninth Circuit have repeatedly found product configuration trade dresses functional and therefore non-protectable. See, e.g., TrafFix, 532 U.S. at 26-27, 35; Secalt S.A. v. Wuxi Shenxi Const. Mach. Co., 668 F.3d 677, 687 (9th Cir. 2012) (affirming summary judgment that a trade dress on a hoist design was functional); Disc Golf, 158 F.3d at 1006 (affirming summary judgment that a trade dress on a disc entrapment design was functional). [12] Moreover, federal trademark registrations have been found insufficient to save product configuration trade dresses from conclusions of functionality. See, e.g., Talking Rain Beverage Co. v. S. Beach Beverage, 349 F.3d 601, 602 (9th Cir. 2003) (affirming summary judgment that registered trade dress covering a bottle design with a grip handle was functional); Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 782-83 (9th Cir. 2002) (affirming summary judgment that registered trade dress covering a handheld cutter design was functional). The Ninth Circuit has even reversed a jury verdict of non-functionality of a product configuration trade dress. See Leatherman, 199 F.3d at 1013 (reversing jury verdict that a trade dress on the overall appearance of a pocket tool was non-functional). Apple conceded during oral argument that it had not cited a single Ninth Circuit case that found a product configuration trade dress to be non-functional. Oral Arg. 49:0630, available at http://www.cafc.uscourts.gov/oral-argument-recordings/14-1335/all. [13] The Ninth Circuit's high bar for non-functionality frames our review of the two iPhone trade dresses on appeal. While the parties argue without distinguishing the two trade dresses, the unregistered trade dress and the registered ′983 trade dress claim different details and are afforded different evidentiary presumptions under the Lanham Act. We analyze the two trade dresses separately below. A. Unregistered Trade Dress [14] Apple claims elements from its iPhone 3G and 3GS products to define the asserted unregistered trade dress: a rectangular product with four evenly rounded corners; a flat, clear surface covering the front of the product; a display screen under the clear surface; substantial black borders above and below the display screen and narrower black borders on either side of the screen; and when the device is on, a row of small dots on the display screen, a matrix of colorful square icons with evenly rounded corners within the display screen, and an unchanging bottom dock of colorful square icons with evenly rounded corners set off from the display's other icons. Appellee's Br. 10-11. As this trade dress is not registered on the principal federal trademark register, Apple "has the burden of proving that the claimed trade dress, taken as a whole, is not functional . . . ." See 15 U.S.C. § 1125(c)(4)(A). [15] Apple argues that the unregistered trade dress is nonfunctional under each of the Disc Golf factors that the Ninth Circuit uses to analyze functionality: "(1) whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design, and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture." See Disc Golf, 158 F.3d at 1006. However, the Supreme Court has more recently held that "a feature is also functional . . . when it affects the cost or quality of the device." See TrafFix, 532 U.S. at 33. The Supreme Court's holding was recognized by the Ninth Circuit as "short circuiting some of the Disc Golf factors." Secalt, 668 F.3d at 686-87. Nevertheless, we explore Apple's contentions on each of the Disc Golf factors and conclude that there was insufficient evidence to support a jury finding in favor of non-functionality on any factor. 1. Utilitarian Advantage [16] Apple argues that "the iPhone's physical design did not 'contribute unusually . . . to the usability' of the device." Appellee's Br. 61. Apple further contends that the unregistered trade dress was "developed . . . not for 'superior performance.'" Id. at 62 n. 18. Neither "unusual usability" nor "superior performance," however, is the standard used by the Ninth Circuit to determine whether there is any utilitarian advantage. The Ninth Circuit "has never held, as [plaintiff] suggests, that the product feature must provide superior utilitarian advantages. To the contrary, [the Ninth Circuit] has suggested that in order to establish nonfunctionality the party with the burden must demonstrate that the product feature serves no purpose other than identification." Disc Golf, 158 F.3d at 1007 (internal quotation marks omitted). [17] The requirement that the unregistered trade dress "serves no purpose other than identification" cannot be reasonably inferred from the evidence. Apple emphasizes a single aspect of its design, beauty, to imply the lack of other advantages. But the evidence showed that the iPhone's design pursued more than just beauty. Specifically, Apple's executive testified that the theme for the design of the iPhone was: to create a new breakthrough design for a phone that was beautiful and simple and easy to use and created a beautiful, smooth surface that had a touchscreen and went right to the rim with the bezel around it and looking for a look that we found was beautiful and easy to use and appealing. [18] Moreover, Samsung cites extensive evidence in the record that showed the usability function of every single element in the unregistered trade dress. For example, rounded corners improve "pocketability" and "durability" and rectangular shape maximizes the display that can be accommodated. J.A. 40869-70; J.A. 42612-13. A flat clear surface on the front of the phone facilitates touch operation by fingers over a large display. J.A. 42616-17. The bezel protects the glass from impact when the phone is dropped. J.A. 40495. The borders around the display are sized to accommodate other components while minimizing the overall product dimensions. J.A. 40872. The row of dots in the user interface indicates multiple pages of application screens that are available. J.A. 41452-53. The icons allow users to differentiate the applications available to the users and the bottom dock of unchanging icons allows for quick access to the most commonly used applications. J.A. 42560-61; J.A. 40869-70. Apple rebuts none of this evidence. [19] Apple conceded during oral argument that its trade dress "improved the quality [of the iPhone] in some respects." Oral Arg. 56:09-17. It is thus clear that the unregistered trade dress has a utilitarian advantage. See Disc Golf, 158 F.3d at 1007. [20] The next factor requires that purported alternative designs "offer exactly the same features" as the asserted trade dress in order to show non-functionality. Tie Tech, 296 F.3d at 786 (quoting Leatherman, 199 F.3d at 1013-14). A manufacturer "does not have rights under trade dress law to compel its competitors to resort to alternative designs which have a different set of advantages and disadvantages." Id. [21] Apple, while asserting that there were "numerous alternative designs," fails to show that any of these alternatives offered exactly the same features as the asserted trade dress. Apple simply catalogs the mere existence of other design possibilities embodied in rejected iPhone prototypes and other manufacturers' smartphones. The "mere existence" of other designs, however, does not prove that the unregistered trade dress is non-functional. See Talking Rain, 349 F.3d at 604. [22] "If a seller advertises the utilitarian advantages of a particular feature, this constitutes strong evidence of functionality." Disc Golf, 158 F.3d at 1009. An "inference" of a product feature's utility in the plaintiff's advertisement is enough to weigh in favor of functionality of a trade dress encompassing that feature. Id. [23] Apple argues that its advertising was "[f]ar from touting any utilitarian advantage of the iPhone design . . . ." Appellee's Br. 60. Apple relies on its executive's testimony that an iPhone advertisement, portraying "the distinctive design very clearly," was based on Apple's "product as hero" approach. Id. (quoting J.A. 40641-42; 40644:22). The "product as hero" approach refers to Apple's stylistic choice of making "the product the biggest, clearest, most obvious thing in [its] advertisements, often at the expense of anything else around it, to remove all the other elements of communication so [the viewer] see[s] the product most predominantly in the marketing." J.A. 40641-42. [24] Apple's arguments focusing on its stylistic choice, however, fail to address the substance of its advertisements. The substance of the iPhone advertisement relied upon by Apple gave viewers "the ability to see a bit about how it might work," for example, "how flicking and scrolling and tapping and all these multitouch ideas simply [sic]." J.A. 40644:23-40645:2. Another advertisement cited by Apple similarly displayed the message, "[t]ouching is believing," under a picture showing a user's hand interacting with the graphical user interface of an iPhone. J.A. 24896. Apple fails to show that, on the substance, these demonstrations of the user interface on iPhone's touch screen involved the elements claimed in Apple's unregistered trade dress and why they were not touting the utilitarian advantage of the unregistered trade dress. [25] The fourth factor considers whether a functional benefit in the asserted trade dress arises from "economies in manufacture or use," such as being "relatively simple or inexpensive to manufacture." Disc Golf, 158 F.3d at 1009. [26] Apple contends that "[t]he iPhone design did not result from a 'comparatively simple or inexpensive method of manufacture'" because Apple experienced manufacturing challenges. Appellee's Br. 61 (quoting Talking Rain, 349 F.3d at 603). Apple's manufacturing challenges, however, resulted from the durability considerations for the iPhone and not from the design of the unregistered trade dress. According to Apple's witnesses, difficulties resulted from its choices of materials in using "hardened steel"; "very high, high grade of steel"; and, "glass that was not breakable enough, scratch resistant enough." Id. (quoting J.A. 40495-96, 41097). These materials were chosen, for example, for the iPhone to survive a drop: If you drop this, you don't have to worry about the ground hitting the glass. You have to worry about the band of steel surrounding the glass hitting the glass . . . . In order to, to make it work, we had to use very high, high grade of steel because we couldn't have it sort of deflecting into the glass. J.A. 40495-96. The durability advantages that resulted from the manufacturing challenges, however, are outside the scope of what Apple defines as its unregistered trade dress. For the design elements that comprise Apple's unregistered trade dress, Apple points to no evidence in the record to show they were not relatively simple or inexpensive to manufacture. See Disc Golf, 158 F.3d at 1009 ("[Plaintiff], which has the burden of proof, offered no evidence that the [asserted] design was not relatively simple or inexpensive to manufacture."). [27] In sum, Apple has failed to show that there was substantial evidence in the record to support a jury finding in favor of non-functionality for the unregistered trade dress on any of the Disc Golf factors. Apple fails to rebut the evidence that the elements in the unregistered trade dress serve the functional purpose of improving usability. Rather, Apple focuses on the "beauty" of its design, even though Apple pursued both "beauty" and functionality in the design of the iPhone. We therefore reverse the district court's denial of Samsung's motion for judgment as a matter of law that the unregistered trade dress is functional and therefore not protectable. [28] In contrast to the unregistered trade dress, the ′983 trade dress is a federally registered trademark. The federal trademark registration provides "prima facie evidence" of non-functionality. Tie Tech, 296 F.3d at 782-83. This presumption "shift[s] the burden of production to the defendant . . . to provide evidence of functionality." Id. at 783. Once this presumption is overcome, the registration loses its legal significance on the issue of functionality. Id. ("In the face of sufficient and undisputed facts demonstrating functionality, . . . the registration loses its evidentiary significance."). [29] The ′983 trade dress claims the design details in each of the sixteen icons on the iPhone's home screen framed by the iPhone's rounded-rectangular shape with silver edges and a black background: The first icon depicts the letters "SMS" in green inside a white speech bubble on a green background; . . . the seventh icon depicts a map with yellow and orange roads, a pin with a red head, and a red-and-blue road sign with the numeral "280" in white; . . . the sixteenth icon depicts the distinctive configuration of applicant's media player device in white over an orange background. [30] It is clear that individual elements claimed by the ′983 trade dress are functional. For example, there is no dispute that the claimed details such as "the seventh icon depicts a map with yellow and orange roads, a pin with a red head, and a red-and-blue road sign with the numeral '280' in white" are functional. See id. Apple's user interface expert testified on how icon designs promote usability. This expert agreed that "the whole point of an icon on a smartphone is to communicate to the consumer using that product, that if they hit that icon, certain functionality will occur on the phone." J.A. 41458-59. The expert further explained that icons are "[v]isual shorthand for something" and that "rectangular containers" for icons provide "more real estate" to accommodate the icon design. J.A. 41459, 41476. Apple rebuts none of this evidence. [31] Apple contends instead that Samsung improperly disaggregates the ′983 trade dress into individual elements to argue functionality. But Apple fails to explain how the total combination of the sixteen icon designs in the context of iPhone's screen-dominated rounded-rectangular shape-all part of the iPhone's "easy to use" design theme-somehow negates the undisputed usability function of the individual elements. See J.A. 40722-23. Apple's own brief even relies on its expert's testimony about the "instant recognizability due to highly intuitive icon usage" on "the home screen of the iPhone." J.A. 41484; Appellee's Br. 43, 70, 71 (quoting J.A. 41484). Apple's expert was discussing an analysis of the iPhone's overall combination of icon designs that allowed a user to recognize quickly particular applications to use. J.A. 41484, 25487. The iPhone's usability advantage from the combination of its icon designs shows that the ′983 trade dress viewed as a whole "is nothing other than the assemblage of functional parts . . . ." See Tie Tech, 296 F.3d at 786 (quoting Leatherman, 199 F.3d at 1013). There is no "separate 'overall appearance' which is non-functional." Id. (quoting Leatherman, 199 F.3d at 1013). The undisputed facts thus demonstrate the functionality of the ′983 trade dress. "In the face of sufficient and undisputed facts demonstrating functionality, as in our case, the registration loses its evidentiary significance." See id. at 783. [32] The burden thus shifts back to Apple. See id. But Apple offers no analysis of the icon designs claimed by the ′983 trade dress. Rather, Apple argues generically for its two trade dresses without distinction under the Disc Golf factors. Among Apple's lengthy citations to the record, we can find only two pieces of information that involve icon designs. One is Apple's user interface expert discussing other possible icon designs. The other is a citation to a print iPhone advertisement that included the icon designs claimed in the ′983 trade dress. These two citations, viewed in the most favorable light to Apple, would be relevant to only two of the Disc Golf factors: "alternative design" and "advertising." But the cited evidence suffers from the same defects as discussed in subsections I.A.2 and I.A.3. Specifically, the expert's discussion of other icon design possibilities does not show that the other design possibilities "offer[ed] exactly the same features" as the ′983 trade dress. See Tie Tech, 296 F.3d at 786 (quoting Leatherman, 199 F.3d at 1013-14). The print iPhone advertisement also fails to establish that, on the substance, it was not touting the utilitarian advantage of the ′983 trade dress. The evidence cited by Apple therefore does not show the non-functionality of the ′983 trade dress. [33] In sum, the undisputed evidence shows the functionality of the registered ′983 trade dress and shifts the burden of proving non-functionality back to Apple. Apple, however, has failed to show that there was substantial evidence in the record to support a jury finding in favor of non-functionality for the ′983 trade dress on any of the Disc Golf factors. We therefore reverse the district court's denial of Samsung's motion for judgment as a matter of law that the ′983 trade dress is functional and therefore not protectable. [34] Because we conclude that the jury's findings of non-functionality of the asserted trade dresses were not supported by substantial evidence, we do not reach Samsung's arguments on the fame and likely dilution of the asserted trade dresses, the Patent Clause of the Constitution, or the dilution damages. {The Court went on to affirm all remaining district court holdings}. Specialized Seating, Inc. v. Greenwich Industries, L.P. 616 F.3d 722 (7th Cir. 2010) {Declaratory defendant Greenwich Industries, L.P., doing business under the name Clarin, owned PTO Registration No. 2,803,875 for a trademark for folding chairs consisting of "a configuration of a folding chair containing an X-frame profile, a flat channel flanked on each side by rolled edges around the perimeter of the chair, two cross bars with a flat channel and rolled edges at the back bottom of the chair, one cross bar with a flat channel and rolled edges on the front bottom, protruding feet, and a back support, the outer sides of which slant inward." An image of the folding chair configuration is provided to the right. Specialized Seating, Inc. ("Specialized") sought a declaratory judgment that its folding chair design did not infringe Clarin's design. Specialized argued that Clarin's mark was functional. The district court held a bench trial and agreed, ordering that the registration be cancelled. Clarin appealed.} EASTERBROOK, Circuit Judge . . . . [1] The [district] judge found that [Clarin's] x-frame construction is functional because it was designed to be an optimal tradeoff between a chair's weight (and thus its cost, since lighter chairs use less steel) and its strength; an x-frame chair also folds itself naturally when knocked over (an important consideration for large auditoriums, where it is vital that chairs not impede exit if a fire or panic breaks out); the flat channel at the seat's edge, where the attachment to the frame slides so that the chair can fold, was designed for strength and attaching hooks to link a chair with its nearest neighbor; the front and back cross bars contribute strength (and allow thinner tubing to be used in the rest of the frame); and the inward-sloping frame of the back support allows the chair to support greater vertical loads than Clarin's older "a-back" design, which the "b-back" design, depicted in the trademark registration, succeeded. The a-back design is on the left and the b-back on the right: [2] Clarin chairs with a-back designs failed when the audience at rock concerts, seeking a better view, sat on top of the chairs' backs and put their feet on the seats. The tubing buckled at the bend in the frame. The b-back design is less likely to buckle when someone sits on it, and it also produces a somewhat wider back, which concert promoters see as a benefit. (Patrons sometimes try to get closer to the stage by stepping through rows of chairs. The gap between b-back chairs is smaller, so they are more effective at keeping crowds in place.) [3] Having concluded not only that the overall design of Clarin's chair is functional, but also that each feature is functional, the district judge added that Clarin had defrauded the Patent and Trademark Office by giving misleadingly incomplete answers to the trademark examiner's questions. The examiner initially turned down Clarin's proposal to register the design as a trademark, observing that the design appeared to be functional. Clarin replied that the design was chosen for aesthetic rather than functional reasons. (This was not a complete answer, as attractiveness is a kind of function. See Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 860-61 (7th Cir. 2010). But we need not pursue that subject.) Clarin observed that a patent it held on an x-frame chair, No. 1,943,058, issued in 1934, did not include all of the features in the mark's design. What Clarin did not tell the examiner is that it held three other patents on x-frame designs: No. 1,600,248, issued in 1926; No. 2,137,803, issued in 1938; and No. 3,127,218, issued in 1964. The district judge concluded that the four patents collectively cover every feature of the design submitted for a trademark except the b-back, and that as the b-back is a functional improvement over the a-back Clarin should have disclosed all of these utility patents. Had it done so, the judge thought, the examiner would have refused to register the proposed mark. . . . . [4] The district judge started from the proposition, which the Supreme Court articulated in TrafFix, that claims in an expired utility patent presumptively are functional. Since utility patents are supposed to be restricted to inventions that have utility, and thus are functional, that's a sensible starting point-and since inventions covered by utility patents pass into the public domain when the patent expires, it is inappropriate to use trademark law to afford extended protection to a patented invention. See also Jay Franco, 615 F.3d at 857-59. Clarin itself obtained four utility patents for aspects of the x-frame folding chair. These patents disclose every aspect of the asserted trademark design except for the b-back. And the district judge did not commit a clear error by concluding that the b-back design is a functional improvement over the a-back design. This means that the trademark design is functional as a unit, and that every important aspect of it is independently functional. It looks the way it does in order to be a better chair, not in order to be a better way of identifying who made it (the function of a trademark). [5] We do not doubt that there are many other available functional designs. Sometimes the function of the functionality doctrine is to prevent firms from appropriating basic forms (such as the circle) that go into many designs. Our contemporaneous opinion in Jay Franco discusses that aspect of the functionality doctrine. This does not imply that preserving basic elements for the public domain is the doctrine's only role. [6] Another goal, as TrafFix stressed, is to separate the spheres of patent and trademark law, and to ensure that the term of a patent is not extended beyond the period authorized by the legislature. A design such as Clarin's x-frame chair is functional not because it is the only way to do things, but because it represents one of many solutions to a problem. Clarin tells us that other designs are stronger, or thinner, or less likely to collapse when someone sits on the backrest, or lighter and so easier to carry and set up. Granted. But as Clarin's '248 patent states, the x-frame design achieves a favorable strength-to-weight ratio. Plastic chairs are lighter but weaker. Y-frame chairs are stronger but use more metal (and so are heavier and more expensive); some alternative designs must be made with box-shaped metal pieces to achieve strength, and this adds to weight and the cost of fabrication. The list of alternative designs is very long, and it is easy to see why hundreds of different-looking folding chairs are on the market. [7] What this says to us is that all of the designs are functional, in the sense that they represent different compromises along the axes of weight, strength, kind of material, ease of setup, ability to connect ("gang") the chairs together for maximum seating density, and so on. A novel or distinctive selection of attributes on these many dimensions can be protected for a time by a utility patent or a design patent, but it cannot be protected forever as one producer's trade dress. When the patent expires, other firms are free to copy the design to the last detail in order to increase competition and drive down the price that consumers pay. See, e.g., Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141(1989); Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964) . . . . [8] Because the district court did not commit clear error in finding Clarin's design to be functional, it is unnecessary to decide whether Clarin committed fraud on the Patent and Trademark Office . . . . As the Supreme Court briefly explained in TrafFix, a product (or packaging) feature that performs no technical, mechanical function may nevertheless be barred from protection on the ground that it is "aesthetically functional." Under TrafFix, the test to determine whether a product feature is aesthetically functional is not the Inwood test. Instead, courts should ask whether there are a limited range of alternative designs available to competitors such that exclusive rights in the product feature would put competitors at a significant non-reputationrelated competitive disadvantage. What might have prompted courts to abandon the Inwood test in the aesthetic functionality context? A few classic illustrations of aesthetically functional product configuration from the Restatement (Third) of Unfair Competition may help to convey the general idea of aesthetic functionality: 8. A is the first seller to market candy intended for Valentine's Day in heartshaped boxes. Evidence establishes that the shape of the box is an important factor in the appeal of the product to a significant number of consumers. Because there are no alternative designs capable of satisfying the aesthetic desires of these prospective purchasers, the design of the box is functional . . . . 9. A manufactures outdoor lighting fixtures intended for mounting on the walls of commercial buildings to illuminate adjacent areas. The evidence establishes that architectural compatibility with the building is an important factor in the purchase of such fixtures and that A's product is considered to be aesthetically compatible with contemporary architecture. The evidence also establishes that only a limited number of designs are considered compatible with the type of buildings on which A's product is used. Because of the limited range of alternative designs available to competitors, a court may properly conclude that the design of the lighting fixture is functional under the rule stated in this Section. A few examples from the aesthetic functionality case law may also help to introduce the doctrine: • British Seagull Ltd. v. Brunswick Corp., 35 F.3d 1527 (Fed. Cir. 1994) (affirming the TTAB's refusal to register the color black for outboard marine engines and approving of the Board's reasoning that "although the color black is not functional in the sense that it makes these engines work better, or that it makes them easier or less expensive to manufacture, black is more desirable from the perspective of prospective purchasers because it is color compatible with a wider variety of boat colors and because objects colored black appear smaller than they do when they are painted other lighter or brighter colors."). • In re Florists' Transworld Delivery, Inc., Serial No. 77590475 (TTAB Mar. 28, 2013) (precedential) (affirming examiner's rejection of application to register the color black for boxes containing flowers and floral arrangements; "[c]ompetitors who, for example, want to offer flowers for bereavement purposes, Halloween or to imbue an element of elegance or luxury to their presentations through packaging therefor will be disadvantaged if they must avoid using the color black in such packaging."). • Deere's green and yellow color scheme to be non-functional and distinguishing Farmhand on grounds that (1) it was adjudicated before Qualitex, TrafFix, and the Sixth Circuit's establishment of the "comparable alternatives" and "effective competition" tests for aesthetic functionality, and (2) Deere sought in Farmhand to prevent competitors from using "John Deere green" either alone or in combination with any other color, whereas Deere seeks here merely to prevent competitors from using a combination of green and yellow). • In re Ferris Corp., 59 U.S.P.Q.2d 1587 (TTAB 2000) (not citable as precedent) (affirming examiner's refusal to register the color pink for surgical bandages; the color is "de jure functional" in that it blends well with some individuals' skin tone and there are no viable alternative colors available). Of the three opinions that follow, Pagliero v. Wallace China Co., 198 F.2d 339 (9th Cir. 1952), is somewhat notorious for having proposed a definition of aesthetic functionality that, when interpreted loosely, could end up prohibiting the protection of anything that was "an important ingredient in the commercial success of the product," including the trademark itself. The Ninth Circuit no longer follows Pagliero. See, e.g., Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1072 (9th Cir. 2006) ("In the case of a claim of aesthetic functionality, an alternative test inquires whether protection of the feature as a trademark would impose a significant non-reputation-related competitive disadvantage."). In Wallace Int'l Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76 (2d Cir. 1990), the Second Circuit explicitly rejected Pagliero. In Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., 696 F.3d 206, 218-(2d Cir. 2012), the Second Circuit was asked to determine whether a particular color applied to the outsole (the underside) of shoes was aesthetically functional. Two final points. First, not all circuits are receptive to the concept of aesthetic functionality. See, e.g., Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465, 487-88 (5th Cir. 2008) ("We do not believe that the Court's dictum in TrafFix requires us to abandon our long-settled view rejecting recognition of aesthetic functionality."). Why might these circuits refuse to consider aesthetic functionality as a special case of functionality? Second, and related, the student hoping to understand the essence of aesthetic functionality doctrine may do well not to focus too much on the term "aesthetic" or even on the term "functionality." "Aesthetic functionality" is a horribly chosen name for a doctrine that seeks to make up for one particular shortcoming of utilitarian functionality doctrine, which is that it is simply not well designed to analyze non-utilitarian, non-mechanical product features. Aesthetic functionality doctrine seeks to accomplish the same procompetitive goals as utilitarian functionality doctrine, but it does so precisely with respect to non-mechanical product features, be they strictly "aesthetic" or not, that all competitors must be able to include in their products in order to compete effectively. [1] Tepco's use of the designs in question cannot be enjoined even though it be assumed that Wallace can establish secondary meaning for them. Imitation of the physical details and designs of a competitor's product may be actionable, if the particular features imitated are 'non-functional' and have acquired a secondary meaning. Crescent Tool Co. v. Kilborn & Bishop Co., 2d Cir., 1917, 247 F. 299. But, where the features are 'functional' there is normally no right to relief. 'Functional' in this sense might be said to connote other than a trade-mark purpose. If the particular feature is an important ingredient in the commercial success of the product, the interest in free competition permits its imitation in the absence of a patent or copyright. On the other hand, where the feature or, more aptly, design, is a mere arbitrary embellishment, a form of dress for the goods primarily adopted for purposes of identification and individuality and, hence, unrelated to basic consumer demands in connection with the product, imitation may be forbidden where the requisite showing of secondary meaning is made. Under such circumstances, since effective competition may be undertaken without imitation, the law grants protection. [2] These criteria require the classification of the designs in question here as functional. Affidavits introduced by Wallace repeat over and over again that one of the essential selling features of hotel china, if, indeed, not the primary, is the design. The attractiveness and eyeappeal of the design sells the china. Moreover, from the standpoint of the purchaser china satisfies a demand for the aesthetic as well as for the utilitarian, and the design on china is, at least in part, the response to such demand. The granting of relief in this type of situation would render Wallace immune from the most direct and effective competition with regard to these lines of china. It seems clear that these designs are not merely indicia of source, as that one who copies them can have no real purpose other than to trade on his competitor's reputation. On the contrary, to imitate is to compete in this type of situation. Of course, Tepco can also compete by developing designs even more aesthetically satisfying, but the possibility that an alternative product might be developed has never been considered a barrier to permitting imitation competition in other types of cases. The law encourages competition not only in creativeness but in economy of manufacture and distribution as well. Hence, the design being a functional feature of the china, we find it unnecessary to inquire into the adequacy of the showing made as to secondary meaning of the designs. {The Ninth Circuit ordered the district court's injunction to be modified to remove all reference to Tepco's use of designs similar to Wallace's.} ______________________________________________________________________________ Wallace "Grande Baroque" Silverware In reading Wallace Int'l Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76 (2d Cir. 1990), consider the following questions: • How should a court define the relevant market for purposes of assessing competitive alternatives to the plaintiff's design? What exactly is wrong with Wallace's argument that it merely wants to claim the baroque style of silverware, and that countless other styles of silverware are still available for competitors to use? • Even if we are able reliably to define the relevant marketplace, how many alternative designs should be available for a court to determine that the plaintiff's design is not aesthetically functional? Wallace Int'l Silversmiths, Inc. v. Godinger Silver Art Co. 916 F.2d 76 (2d Cir. 1990) WINTER, Circuit Judge: [1] Wallace International Silversmiths ("Wallace") appeals from Judge Haight's denial of its motion for a preliminary injunction under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1988), prohibiting Godinger Silver Art Co., Inc. ("Godinger") from marketing a line of silverware with ornamentation that is substantially similar to Wallace's GRANDE BAROQUE line. Judge Haight held that the GRANDE BAROQUE design is "a functional feature of 'Baroque' style silverware" and thus not subject to protection as a trademark. We affirm. [2] Wallace, a Delaware corporation, has sold sterling silver products for over one hundred years. Its GRANDE BAROQUE pattern was introduced in 1941 and is still one of the best-selling silverware lines in America. Made of fine sterling silver, a complete place setting costs several thousand dollars. Total sales of GRANDE BAROQUE silverware have exceeded fifty million dollars. The GRANDE BAROQUE pattern is fairly described as "ornate, massive and flowery [with] indented, flowery roots and scrolls and curls along the side of the shaft, and flower arrangements along the front of the shaft." Wallace owns a trademark registration for the GRANDE BAROQUE name as applied to sterling silver flatware and hollowware. The GRANDE BAROQUE design is not patented, but on December 11, 1989, Wallace filed an application for trademark registration for the GRANDE BAROQUE pattern. This application is still pending. [3] Godinger, a New York corporation, is a manufacturer of silver-plated products. The company has recently begun to market a line of baroque-style silver-plated serving pieces. The suggested retail price of the set of four serving pieces is approximately twenty dollars. Godinger advertised its new line under the name 20TH CENTURY BAROQUE and planned to introduce it at the Annual New York Tabletop and Accessories Show, the principal industry trade show at which orders for the coming year are taken. Like Wallace's silverware, Godinger's pattern contains typical baroque elements including an indented root, scrolls, curls, and flowers. The arrangement of these elements approximates Wallace's design in many ways, although their dimensions are noticeably different. The most obvious difference between the two designs is that the Godinger pattern extends further down the handle than the Wallace pattern does. The Wallace pattern also tapers from the top of the handle to the stem while the Godinger pattern appears bulkier overall and maintains its bulk throughout the decorated portion of the handle. Although the record does not disclose the exact circumstances under which Godinger's serving pieces were created, Godinger admits that its designers were "certainly inspired by and aware of [the Wallace] design when [they] created [the 20TH CENTURY BAROQUE] design." [4] On the afternoon of April 23, 1990, Leonard Florence of Wallace learned from a wholesale customer, Michael C. Fina Company, that Godinger had placed an advertisement for its 20TH CENTURY BAROQUE serving pieces in an industry trade magazine. George Fina, the company's president, said that he was "confused" when he saw what he believed to be a pattern identical to GRANDE BAROQUE being advertised by another company. He asked Mr. Florence whether Wallace had licensed the design to Godinger or whether "the Godinger product was simply a 'knock-off.'" Two days after this conversation, Wallace filed the complaint in the instant matter stating various federal trademark and state unfair competition claims. Wallace also filed a motion for a temporary restraining order and sought a preliminary injunction prohibiting Godinger from using the mark 20TH CENTURY BAROQUE or infringing the trade dress of Wallace's GRANDE BAROQUE product. [5] Due to the imminence of the trade show, the district court held a hearing on Wallace's application for preliminary relief the day after Wallace had filed its complaint. The record consisted of affidavits from Florence and Fina reciting the facts described supra, samples of the Wallace and Godinger pieces, and various photographs and catalogue illustrations of silverware from other manufacturers. Later that day, Judge Haight issued a Memorandum Opinion and Order in which he concluded that the GRANDE BAROQUE design was a "functional" feature of baroque-style silverware and thus ineligible for trade dress protection under Section 43(a) of the Lanham Act. . . . . [6] Judge Haight found that the similarities between the Godinger and Wallace designs involved elements common to all baroque-style designs used in the silverware market. He noted that many manufacturers compete in that market with such designs and found that "[t]he 'Baroque' curls, roots and flowers are not 'mere indicia of source.' Instead, they are requirements to compete in the silverware market." Judge Haight concluded that "the 'Grande Baroque' design is a functional feature of 'Baroque' style silverware," relying on Pagliero v. Wallace China Co., 198 F.2d 339 (9th Cir. 1952). [7] Although we agree with Judge Haight's decision, we do not endorse his reliance upon Pagliero. That decision allowed a competitor to sell exact copies of china bearing a particular pattern without finding that comparably attractive patterns were not available to the competitor. It based its holding solely on the ground that the particular pattern was an important ingredient in the commercial success of the china. Id. at 343-44. We rejected Pagliero in LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71 (2d Cir. 1985), and reiterate that rejection here. Under Pagliero, the commercial success of an aesthetic feature automatically destroys all of the originator's trademark interest in it, notwithstanding the feature's secondary meaning and the lack of any evidence that competitors cannot develop noninfringing, attractive patterns. By allowing the copying of an exact design without any evidence of market foreclosure, the Pagliero test discourages both originators and later competitors from developing pleasing designs. See Keene Corp. v. Paraflex Industries, Inc., 653 F.2d 822, 824-25 (3d Cir. 1981). [8] Our rejection of Pagliero, however, does not call for reversal. Quite unlike Pagliero, Judge Haight found in the instant matter that there is a substantial market for baroque silverware and that effective competition in that market requires "use [of] essentially the same scrolls and flowers" as are found on Wallace's silverware. Based on the record at the hearing, that finding is not clearly erroneous and satisfies the requirement of Stormy Clime Ltd. v. Progroup, Inc., 809 F.2d 971 (2d Cir. 1987), that a design feature not be given trade dress protection where use of that feature is necessary for effective competition. Id. at 976-77. . . . . [9] Our only hesitation in holding that the functionality doctrine applies is based on nomenclature. "Functionality" seems to us to imply only utilitarian considerations and, as a legal doctrine, to be intended only to prevent competitors from obtaining trademark protection for design features that are necessary to the use or efficient production of the product. See Keene, supra at 825 ("inquiry should focus on the extent to which the design feature is related to the utilitarian function of the product or feature"). Even when the doctrine is referred to as "aesthetic" functionality, it still seems an apt description only of pleasing designs of utilitarian features. Nevertheless, there is no lack of language in caselaw endorsing use of the defense of aesthetic functionality where trademark protection for purely ornamental features would exclude competitors from a market. See, e.g., Rogers, supra at 347 ("Though a producer does not lose a design trademark just because the public finds it pleasing, there may come a point where the design feature is so important to the value of the product to consumers that continued trademark protection would deprive them of competitive alternatives [.]") (Posner, J.) . . . . [10] We put aside our quibble over doctrinal nomenclature, however, because we are confident that whatever secondary meaning Wallace's baroque silverware pattern may have acquired, Wallace may not exclude competitors from using those baroque design elements necessary to compete in the market for baroque silverware. It is a first principle of trademark law that an owner may not use the mark as a means of excluding competitors from a substantial market. Where a mark becomes the generic term to describe an article, for example, trademark protection ceases. 15 U.S.C. § 1064(3) (1988); see Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976). Where granting trademark protection to the use of certain colors would tend to exclude competitors, such protection is also limited. See First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378 (9th Cir. 1987); J. McCarthy, Trademarks and Unfair Competition, § 7:16 et seq. Finally, as discussed supra, design features of products that are necessary to the product's utility may be copied by competitors under the functionality doctrine. [11] In the instant matter, Wallace seeks trademark protection, not for a precise expression of a decorative style, but for basic elements of a style that is part of the public domain. As found by the district court, these elements are important to competition in the silverware market. We perceive no distinction between a claim to exclude all others from use on silverware of basic elements of a decorative style and claims to generic names, basic colors or designs important to a product's utility. In each case, trademark protection is sought, not just to protect an owner of a mark in informing the public of the source of its products, but also to exclude competitors from producing similar products. We therefore abandon our quibble with the aesthetic functionality doctrine's nomenclature and adopt the Restatement's view that, where an ornamental feature is claimed as a trademark and trademark protection would significantly hinder competition by limiting the range of adequate alternative designs, the aesthetic functionality doctrine denies such protection. See Third Restatement of the Law, Unfair Competition (Preliminary Draft No. 3), Ch. 3, § 17(c) at 213-14. This rule avoids the overbreadth of Pagliero by requiring a finding of foreclosure of alternatives 2 while still ensuring that trademark protection does not exclude competitors from substantial markets. 3 [12] Of course, if Wallace were able to show secondary meaning in a precise expression of baroque style, competitors might be excluded from using an identical or virtually identical design. In such a case, numerous alternative baroque designs would still be available to competitors. Although the Godinger design at issue here was found by Judge Haight to be "substantially similar," it is not identical or virtually identical, and the similarity involves design elements necessary to compete in the market for baroque silverware. Because according trademark protection to those elements would significantly hinder competitors by limiting the range of adequate alternative designs, we agree with Judge Haight's denial of a preliminary injunction. 2 The Restatement's Illustrations expressly reject Pagliero. Illustration 6 reads as follows: A manufactures china. Among the products marketed by A is a set of china bearing a particular "overall" pattern covering the entire upper surface of each dish. Evidence indicates that aesthetic factors play an important role in the purchase of china, that A's design is attractive to a significant number of consumers, and that the number of alternative patterns is virtually unlimited. In the absence of evidence indicating that similarly attractive "overall" patterns are unavailable to competing manufacturers, A's pattern design is not functional under the rule stated in this Section. 3 Restatement Illustrations 7 and 8 reflect this aspect of the rule. They read as follows: 7. The facts being otherwise as stated in Illustration 6, A's design consists solely of a thin gold band placed around the rim of each dish. Evidence indicates that a significant number of consumers prefer china decorated with only a gold rim band. Because the number of alternative designs available to satisfy the aesthetic desires of these prospective purchasers is extremely limited, the rim design is functional under the rule stated in this Section. A is the first seller to market candy intended for Valentine's Day in heart-shaped boxes. . . . In reading the excerpt below from Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., 696 F.3d 206 (2d Cir. 2012), consider the following question: • Perhaps the Second Circuit is correct that there should be no per se rule against the trademark protection of individual colors with respect to apparel, but should there at least be a TrafFix-like "strong presumption" against such protection? {Since 1992, designer Christian Louboutin has painted the outsoles of his high-heeled women's shoes with a high-gloss red lacquer, specifically, Pantone 18-1663 TPX Chinese Red. In 2008, based on the secondary meaning he built up in the design, Plaintiff Christian Louboutin S.A. ("Louboutin") registered the red lacquered outsole as a trademark (see the original registration certificate below). In 2011, defendant Yves Saint Laurent America Holding, Inc. ("YSL") began marketing a line of monochrome shoes in, among other colors, red. YSL's red monochrome shoe bore a red insole, heel, upper, and outsole. Louboutin sued, claiming infringement of its registered mark. The district court found that the mark was aesthetically functional and, according to the Second Circuit's reading of the district court opinion, articulated a per se rule that a single color can never serve as a trademark in the fashion industry. Louboutin appealed. Excerpted below is the court's discussion of aesthetic functionality.} PER CURIAM: . . . . [1] As the Supreme Court observed in Qualitex, aspects of a product that are "functional" generally "cannot serve as a trademark." Id. at 165. We have observed that "[t]he doctrine of functionality prevents trademark law from inhibiting legitimate competition by giving monopoly control to a producer over a useful product." Nora Beverages, Inc., 269 F.3d at 120 n. 4; see Genesee Brewing Co., 124 F.3d at 145 n. 5 (it is a "fundamental principle of trademark law that a trademark . . . does not grant a monopoly of production"). This is so because functional features can be protected only through the patent system, which grants a limited monopoly over such features until they are released into general use (typically after either 14 or 20 years, depending on the type of patent). See Fabrication Enters., Inc., 64 F.3d at 58-59 & n. 4 ("The Lanham Act is not concerned with protecting innovation by giving the innovator a monopoly, which is the function of patent law.") . . . . [2] As noted above, two forms of the functionality doctrine are relevant to us today: "traditional" or "utilitarian" functionality, and "aesthetic" functionality. Both forms serve as an affirmative defense to a trademark infringement claim. [3] According to our traditional understanding of functionality, a product feature is considered to be "functional" in a utilitarian sense 11 if it is (1) "essential to the use or purpose of the article," or if it (2) "affects the cost or quality of the article." Inwood Labs., 456 U.S. at 850 n. 10, 102 S.Ct. 2182. A feature is essential "'if [it] is dictated by the functions to be performed'" by the article. LeSportsac, Inc. v. K mart Corp., 754 F.2d 71, 76 (2d Cir. 1985) (quoting Warner Bros. Inc. v. Gay Toys Inc., 724 F.2d 327, 331 (2d Cir. 1983)). It affects the cost or quality of the article where it "'permits the article to be manufactured at a lower cost' or 'constitutes an improvement in the operation of the goods.'" 14 Id. (quoting Warner Bros., Inc., 724 F.2d at 331). A finding that a product feature is functional according to the Inwood test will ordinarily render the feature ineligible for trademark protection. [4] Generally, "[w]here [a product's] design is functional under the Inwood formulation there is no need to proceed further." TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33 (2001) ("TrafFix "). Nevertheless, as the Supreme Court had held in 1995 in Qualitex, when the aesthetic design of a product is itself the mark for which protection is sought, we may also deem the mark functional if giving the markholder the right to use it exclusively "would put competitors at a significant non-reputation-related disadvantage," Qualitex, 514 U.S. at 165. This remains true even if there is "no indication that [the mark has] any bearing on the use or purpose of the product or its cost or quality." TrafFix, 532 U.S. at 33; see Landscape Forms, Inc. v. Colum. Cascade Co., 70 F.3d 251, 253 (2d Cir. 1995) (when evaluating design trademarks we consider whether "certain features of the design are essential to effective competition in [the] particular market"). [5] As set forth below, the test for aesthetic functionality is threefold: At the start, we address the two prongs of the Inwood test, asking whether the design feature is either "essential to the use or purpose" or "affects the cost or quality" of the product at issue. Next, if necessary, we turn to a third prong, which is the competition inquiry set forth in Qualitex. In other words, if a design feature would, from a traditional utilitarian perspective, be considered "essential to the use or purpose" of the article, or to affect its cost or quality, then the design feature is functional under Inwood and our inquiry ends. 15 But if the design feature is not "functional" from a traditional perspective, it must still pass the fact-intensive Qualitex test and be shown not to have a significant effect on competition in order to receive trademark protection. [6] Although the theory of aesthetic functionality was proposed as early as 1938, 16 the first court to adopt the theory as the basis for denial of protection of a design was the United States Court of Appeals for the Ninth Circuit in Pagliero v. Wallace China Co., 198 F.2d 339 (9th Cir. 1952). . . . [7] Despite its apparent counterintuitiveness (how can the purely aesthetic be deemed functional, one might ask?), our Court has long accepted the doctrine of aesthetic functionality. See, e.g., Warner Bros., Inc., 724 F.2d at 329-32 (distinctive color and symbols on toy car were not functional, and so were protectable as trade dress). 17 We have rejected, however, the circular "important ingredient" test formulated by the Pagliero court, which inevitably penalized markholders for their success in promoting their product. 18 Instead, we have concluded that "Lanham Act protection does not extend to configurations of ornamental features which would significantly limit the range of competitive designs available." Coach Leatherware Co. v. AnnTaylor, Inc., 933 F.2d 162, 171 (2d Cir. 1991) (emphasis added). Accordingly, we have held that the doctrine of aesthetic functionality bars protection of a 16 In 1938, the Restatement of Torts stated that "[a] feature of goods is functional . . . if it affects their purpose, action or performance, or the facility or economy of processing, handling or using them; it is non-functional if it does not have any of such effects." Restatement of Torts § 742 (1938). In the official comment to that Section, the Restatement explained several ways in which goods or their features might be functional. With regard to "goods [that] are bought largely for their aesthetic value," the Restatement suggested that "their features may be functional because they definitely contribute to that value and thus aid the performance of an object for which the goods are intended." Id. § 742, cmt. a. This was the first time that a commentator had proposed that an aesthetic product feature might be functional. See 1 McCarthy on Trademarks § 7:79 (4th ed.). 17 The doctrine of aesthetic functionality remains controversial in our sister circuits, which have applied the doctrine in varying ways (and some not at all). For example, the Seventh Circuit has applied the doctrine of aesthetic functionality liberally, holding that "[f]ashion is a form of function." See Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 860 (7th Cir. 2010). The Sixth Circuit recently discussed the doctrine, but made clear that it has not yet decided whether or not to adopt it. See Maker's Mark Distillery, Inc. v. Diageo N. Am., Inc., 679 F.3d 410, 417-19 (6th Cir. 2012). The Ninth Circuit has applied the doctrine inconsistently. See 1 McCarthy on Trademarks § 7:80 (4th ed.) (collecting cases). The Fifth Circuit rejects the doctrine of aesthetic functionality entirely. Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465, 487-88 (5th Cir. 2008) (arguing that the Supreme Court has recognized the aesthetic functionality doctrine only in dicta, and that therefore the Fifth Circuit's long-standing rejection of the doctrine was not abrogated by Qualitex and TrafFix). mark that is "necessary to compete in the [relevant] market." Villeroy & Boch Keramische Werke K.G. v. THC Sys., Inc., 999 F.2d 619, 622 (2d Cir. 1993). [8] In 1995, the Supreme Court in Qualitex gave its imprimatur to the aesthetic functionality doctrine, holding that "[t]he ultimate test of aesthetic functionality . . . is whether the recognition of trademark rights [in an aesthetic design feature] would significantly hinder competition." Qualitex, 514 U.S. at 170 (quoting Restatement (Third) of Unfair Competition § 17, cmt. c, at 176 (1993)) (internal quotation marks omitted). Six years later, reiterating its Qualitex analysis, the Supreme Court in TrafFix declared that where "[a]esthetic functionality [is] the central question," courts must "inquire" as to whether recognizing the trademark "would put competitors at a significant non-reputation-related disadvantage." TrafFix, 532 U.S. at 32-33. [9] Although we have not recently had occasion to apply the doctrine of aesthetic functionality thus enunciated by the Supreme Court, it is clear that the combined effect of Qualitex and TrafFix was to validate the aesthetic functionality doctrine as it had already been developed by this Court in cases including Wallace International Silversmiths, Stormy Clime, and LeSportsac. See Yurman Design, Inc., 262 F.3d at 116 (confirming, five months after the TrafFix decision, that a putative design trademark is "aesthetic[ally] functional[ ]," and therefore barred from trademark protection, if granting "the right to use [the mark] exclusively 'would put competitors at a significant non-reputation-related disadvantage'" (quoting TrafFix, 532 U.S. at 32)). [10] On the one hand, "'[w]here an ornamental feature is claimed as a trademark and trademark protection would significantly hinder competition by limiting the range of adequate alternative designs, the aesthetic functionality doctrine denies such protection.'" Forschner Grp., Inc. v. Arrow Trading Co., 124 F.3d 402, 409-10 (2d Cir. 1997) (quoting Wallace Int'l Silversmiths, Inc., 916 F.2d at 81). But on the other hand, "'distinctive and arbitrary arrangements of predominantly ornamental features that do not hinder potential competitors from entering the same market with differently dressed versions of the product are non-functional[,] and [are] hence eligible for [trademark protection].'" Fabrication Enters., Inc., 64 F.3d at 59 (quoting Stormy Clime, 809 F.2d at 977) (emphasis added). [11] In short, a mark is aesthetically functional, and therefore ineligible for protection under the Lanham Act, where protection of the mark significantly undermines competitors' ability to compete in the relevant market. See Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1006 (2d Cir. 1995) (linking aesthetic functionality to availability of alternative designs for children's fall-themed sweaters); Landscape Forms, Inc., 70 F.3d at 253 (holding that "in order for a court to find a product design functional, it must first find that certain features of the design are essential to effective competition in a particular market"). In making this determination, courts must carefully weigh "the competitive benefits of protecting the source-identifying aspects" of a mark against the "competitive costs of precluding competitors from using the feature." Fabrication Enters., Inc., 64 F.3d at 59. [12] Finally, we note that a product feature's successful source indication can sometimes be difficult to distinguish from the feature's aesthetic function, if any. See, e.g., Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 857 (7th Cir. 2010) (noting that "[f]iguring out which designs [produce a benefit other than source identification] can be tricky"). Therefore, in determining whether a mark has an aesthetic function so as to preclude trademark protection, we take care to ensure that the mark's very success in denoting (and promoting) its source does not itself defeat the markholder's right to protect that mark. See Wallace Int'l Silversmiths, Inc., 916 F.2d at 80 (rejecting argument that "the commercial success of an aesthetic feature automatically destroys all of the originator's trademark interest in it, notwithstanding the feature's secondary meaning and lack of any evidence that competitors cannot develop non-infringing, attractive patterns"). [13] Because aesthetic function and branding success can sometimes be difficult to distinguish, the aesthetic functionality analysis is highly fact-specific. In conducting this inquiry, courts must consider both the markholder's right to enjoy the benefits of its effort to distinguish its product and the public's right to the "vigorously competitive market [ ]" protected by the Lanham Act, which an overly broad trademark might hinder. Yurman Design, Inc., 262 F.3d at 115 (internal quotation mark omitted). In sum, courts must avoid jumping to the conclusion that an aesthetic feature is functional merely because it denotes the product's desirable source. Cf. Pagliero, 198 F.2d at 343. iii. Aesthetic Functionality in the Fashion Industry [14] We now turn to the per se rule of functionality for color marks in the fashion industry adopted by the District Court-a rule that would effectively deny trademark protection to any deployment of a single color in an item of apparel. As noted above, the Qualitex Court expressly held that "sometimes [ ] a color will meet ordinary legal trademark requirements[, a]nd, when it does so, no special legal rule prevents color alone from serving as a trademark." Qualitex, 514 U.S. at 161, 115 S.Ct. 1300. In other words, the Supreme Court specifically forbade the implementation of a per se rule that would deny protection for the use of a single color as a trademark in a particular industrial context. Qualitex requires an individualized, fact-based inquiry into the nature of the trademark, and cannot be read to sanction an industry-based per se rule. The District Court created just such a rule, on the theory that "there is something unique about the fashion world that militates against extending trademark protection to a single color." Louboutin, 778 F.Supp.2d at 451. [15] Even if Qualitex could be read to permit an industry-specific per se rule of functionality (a reading we think doubtful), such a rule would be neither necessary nor appropriate here. We readily acknowledge that the fashion industry, like other industries, has special concerns in the operation of trademark law; it has been argued forcefully that United States law does not protect fashion design adequately. 19 Indeed, the case on appeal is particularly difficult precisely because, as the District Court well noted, in the fashion industry, color can serve as a tool in the palette of a designer, rather than as mere ornamentation. Louboutin, 778 F.Supp.2d at 452-53. [16] Nevertheless, the functionality defense does not guarantee a competitor "the greatest range for [his] creative outlet," id. at 452-53, but only the ability to fairly compete a given market. 20 See Wallace Int'l Silversmiths, Inc., 916 F.2d at 81 ("It is a first principle of trademark law that an owner may not use the mark as a means of excluding competitors from a . . . market." (emphasis added)). The purpose of the functionality defense "is to prevent advances in functional design from being monopolized by the owner of [the intellectual property system, while others have advocated that fashion design may be an appropriate area for sui generis statutory protection. It is arguable that, in the particular circumstances of this case, the more appropriate vehicle for the protection of the Red Sole Mark would have been copyright rather than trademark. See generally Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993-94 (2d Cir. 1980) (addressing the broad issue of aesthetically functional copyrights and holding that decorative belt buckles that were used principally for ornamentation could be copyrighted because the primary ornamental aspect of the buckles was conceptually separate from their subsidiary utilitarian function); Laura A. Heymann, The Trademark/Copyright Divide, 60 SMU L.Rev. 55 (2007). However, because Louboutin has chosen to rely on the law of trademarks to protect his intellectual property, we necessarily limit our review to that body of law and do not further address the broad and complex issue of fashion design protection. 20 The trademark system, in this way, stands in sharp contrast to the copyright system. Copyright, unlike trademark, rewards creativity and originality even if they interfere with the rights of an existing copyright holder. In the copyright system there is a defense to infringement known as "independent creation": if a writer or musician, through the creative process, independently arrives at an arrangement of words or notes that is the subject of a copyright, he may market the result of his creativity despite the existing copyright. See Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 346, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) (requesting that the reader "assume that two poets, each ignorant of the other, compose identical poems. Neither work is novel, yet both are original and, hence, copyrightable"); Procter & Gamble Co. v. Colgate-Palmolive Co., 199 F.3d 74, 77-78 (2d Cir. 1999). The trademark system, unlike the copyright system, aims to prevent consumer confusion even at the expense of a manufacturer's creativity: in trademark, if a branding specialist produces a mark that is identical to one already trademarked by another individual or corporation, he must "go back to the drawing board." See Blendco, Inc. v. Conagra Foods, Inc., 132 Fed.Appx. 520, 523 (5th Cir. 2005) (although defendant's allegedly independent creation of infringing mark tended to show that infringement was not willful, defendant remained liable for damages); Tuccillo v. Geisha NYC, LLC, 635 F.Supp.2d 227 (E.D.N.Y. 2009) (same). mark] . . . in order to encourage competition and the broadest dissemination of useful design features." Fabrication Enters., Inc., 64 F.3d at 58 (internal quotation marks omitted) (emphasis added). [17] In short, "[b]y focusing upon hindrances to legitimate competition, the [aesthetic] functionality test, carefully applied, can accommodate consumers' somewhat conflicting interests in being assured enough product differentiation to avoid confusion as to source and in being afforded the benefits of competition among producers." Stormy Clime, 809 F.2d at 978-79. . . . . [18] Having determined that no per se rule governs the protection of single-color marks in the fashion industry, any more than it can do so in any other industry, we turn our attention to the Red Sole Mark. As we have explained, Part II.A, ante, we analyze a trademark infringement claim in two stages, asking first whether the mark "merits protection" and, second, whether the allegedly infringing use of the mark (or a similar mark) is "likely to cause consumer confusion." Louis Vuitton Malletier, 454 F.3d at 115. The functionality defense (including the tripartite aesthetic functionality test) is an affirmative defense that we consider at the second stage of this analysis. Stormy Clime, Ltd., 809 F.2d at 974. . . . . [19] Although, as set forth below, we determine that the Mark as it currently stands is ineligible for protection insofar as it would preclude competitors' use of red outsoles in all situations, including the monochromatic use now before us, we conclude that the Mark has acquired secondary meaning-and thus the requisite "distinctness" to merit protectionwhen used as a red outsole contrasting with the remainder of the shoe. Because in this case we determine that the Red Sole Mark merits protection only as modified, and because YSL's use of a red outsole on monochromatic red shoes does not infringe on the Mark as modified, we need not, and do not, reach the issues of customer confusion and functionality at the second stage of the trademark infringement analysis described above. . . . . [20] We further hold that the record fails to demonstrate that the secondary meaning of the Red Sole Mark extends to uses in which the sole does not contrast with the upper-in other words, when a red sole is used on a monochromatic red shoe. As the District Court observed, "[w]hen Hollywood starlets cross red carpets and high fashion models strut down runways, and heads turn and eyes drop to the celebrities' feet, lacquered red outsoles on highheeled, black shoes flaunt a glamorous statement that pops out at once." Louboutin, 778 F.Supp.2d at 448 (emphasis added). As clearly suggested by the District Court, it is the contrast between the sole and the upper that causes the sole to "pop," and to distinguish its creator. 1. Are Louboutin's and YSL's shoes nevertheless confusingly similar? The Second Circuit's resolution of the dispute was unconventional, to say the least. Given the secondary meaning of Louboutin's mark, do you think the court was justified in finding that there would be no consumer confusion as to source between Louboutin's shoes bearing a red outsole with contrasting upper and YSL's shoes bearing both a red outsole and red upper? (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, . . . (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. . . . In determining whether marks are "deceptive" or "deceptively misdescriptive" with respect to the goods to which they are affixed, U.S. trademark law analyzes geographic marks (i.e., marks that convey a geographic meaning) differently from how it analyzes nongeographic marks. Before turning to the peculiar manner in which the law treats geographically deceptive or "primarily geographically deceptively misdescriptive" marks, Lanham Act § 2(e)(3), 15 U.S.C. § 1052(e)(3), we first consider the law's more straightforward analysis of the deceptiveness or deceptive misdescriptiveness of nongeographic marks. A non-geographic deceptive trademark cannot be registered or otherwise protected under federal trademark law. See Lanham Act § 2(a), 15 U.S.C. § 1052(a). By contrast, a nongeographic "deceptively misdescriptive" mark may be registered or otherwise protected under federal trademark law, but only if the mark is shown to have developed secondary meaning as a designation of source. See Lanham Act § § 2(e)(1) & 2(f), 15 U.S.C. § § 1052(e)(1) & 2(f). The basic test for determining whether a non-geographic mark is deceptive or deceptively misdescriptive is relatively straightforward. In In re Budge Mfg. Co., 857 F.2d 773 (Fed. Cir. 1988), the Federal Circuit affirmed the TTAB's refusal to register the mark LOVEE LAMB for automobile seat covers that were not in fact made of lambskin on the ground that the mark was deceptive. In doing so, it established a three-step test for determining whether a mark is deceptive or deceptively misdescriptive. The TMEP summarizes the three steps as follows: (1) Is the term misdescriptive of the character, quality, function, composition or use of the goods? (2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods? (3) If so, is the misdescription likely to affect a significant portion of the relevant consumers' decision to purchase? TMEP § 1203.02 (b). If the answer to each question is yes, then the mark is deceptive under Section 2(a) and cannot be protected. If the answer to question (2) is yes (consumers would likely believe that the misdescription actually describes the goods), but the answer to question (3) is no (the misdescription would nevertheless not affect their decision to purchase), then the mark is deceptively misdescriptive under Section 2(e)(1) and can be protected upon a showing of secondary meaning. (And if the answer to question (2) is no, then the mark is likely arbitrary and thus inherently distintive-e.g. DIAMOND pencils). Thus, for non-geographic marks, the question of whether the mark's misdescription would be material to consumers' decisions to purchase the good is what separates an unprotectable deceptive mark from a potentially protectable deceptively misdescriptive mark. This can be a difficult question to answer. The TMEP instructs trademark examining attorneys to focus on "objective criteria" such as whether the misdescription conveys superior quality, enhanced performance or function, difference in price, health benefits, or conformity with meritorious religious practice or social policy. See TMEP § 1203.02(d)(i). The Federal Circuit has emphasized that the misdescription must be material to a "significant portion of relevant consumers." See In re Spirits Intern., N.V., 563 F.3d 1347, 1356 (Fed. Cir. Examples of non-geographic marks found to be deceptive: • In re White Jasmine LLC, 106 USPQ2d 1385 (TTAB 2013) (finding the term "white" in WHITE JASMINE to be deceptive for tea that did not include white tea, where "[t]he evidence establishes that consumers perceive that white tea has desirable health benefits. Thus, the misdescription is material to consumers interested in purchasing or drinking white tea to obtain these health benefits, and is likely to induce such purchasers to buy or drink the tea."). • In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002) (finding SUPER SILK to be deceptive for clothing made of "silk-like" fabric, even where labeling indicated true fiber content of fabric). • In re Shapely, Inc., 231 USPQ 72 (TTAB 1986) (holding SILKEASE deceptive for clothing not made of silk, even where hangtag claimed that the product has "the look and feel of the finest silks with the easy care of polyester"). • In re Organik Technologies, Inc., 41 USPQ2d 1690 (TTAB 1997) (holding ORGANIK deceptive for clothing and textiles made from cotton that is neither from an organically grown plant nor free of chemical processing or treatment). Examples of non-geographic marks found to be deceptively misdescriptive: • Gold Seal Co. v. Weeks, 129 F. Supp. 928 (D.D.C. 1955) (affirming TTAB's finding GLASS WAX to be deceptively misdescriptive for glass cleaner where "[t]he evidence does not show that the public has been influenced to purchase the product on account of believing that it contained wax, or that the product was simply a wax to be placed upon glass."). • In re Berman Bros. Harlem Furniture Inc., 26 U.S.P.Q.2d 1514 (TTAB 1993) (affirming examiner's determination that FURNITURE MAKERS was deceptively misdescriptive for a retail furniture store that sells, but does not make furniture) • In re Christopher C. Hinton, 116 U.S.P.Q.2d 1051 (TTAB 2015) (affirming examiner's determination that THCTea was deceptively misdescriptive for tea-based beverages not containing THC (tetrahydrocannabinol), the primary psychoactive ingredient in marijuana; TTAB repeatedly noted that the question of whether the mark was deceptive under Section 2(a) was not before it, since the examiner had stopped at a finding of deceptive misdescriptiveness under Section 2(e)(1)). While trademark law's analysis of the deceptive misdescriptiveness and deceptiveness of non-geographic marks is relatively uncomplicated, the same cannot be said about the law's analysis of the deceptive misdescriptiveness and deceptiveness of geographic marks. American trademark law devotes special attention to geographic marks primarily because many foreign trading partners have significant economic and cultural interests in preserving the exclusivity of their geographic names (such as CHAMPAGNE, CAMEMBERT, or PARMA). In trade negotiations, particularly those leading to the North American Free Trade Agreement of 1992, the Americans agreed to amend the Lanham Act so that geographic marks that were merely deceptively misdescriptive would be treated the same as geographic marks that were outright deceptive-specifically, geographic marks that were merely deceptively misdescriptive would be unregistrable regardless of whether they possessed secondary meaning. The mechanics of this change in the Lanham Act took the form, in essence, of amending Lanham Act § 2(f) to exclude geographically deceptively misdescriptive marks from that subsection's mechanism by which certain otherwise defective marks can be registered upon a showing of secondary meaning. See Lanham Act § 2(f), 15 U.S.C. § 1052(f) (providing that marks that fall under the provision of § 2(e)(3), in that they are "primarily geographically deceptively misdescriptive," 11 do not qualify for registration upon a showing of secondary meaning). Thus, we now have a scheme in which non-geographic marks that are merely deceptively misdescriptive can be registered upon a showing of secondary meaning while geographic marks that are merely deceptively misdescriptive cannot be registered, even if they possess secondary meaning. Meanwhile, any mark that is outright deceptive, be it non-geographic or geographic, is unregistrable. America's trading partners and perhaps even American trade negotiators at the time could be forgiven for having thought that the Americans had indeed made a significant trade concession, one that limited the ability of trademark applicants at the PTO to register even merely deceptively misdescriptive geographic terms. Enter the Federal Circuit. In In re California Innovations, Inc. 329 F.3d 1334, 1336-1341 (Fed. Cir. 2003), the Federal Circuit reviewed the history of the amendment to the Lanham Act and reached the following conclusion: just as the Lanham Act now treats geographically deceptively misdescriptive terms and geographically deceptive terms the same way (neither is registrable under any circumstances), so the PTO should employ exactly the same test that it uses to determine if a geographic mark is outright deceptive under Lanham Act § 2(a) also to determine if a geographic mark is merely deceptively misdescriptive under Lanham Act § 2(e)(3). Specifically, a mark may be found to be geographically deceptively misdescriptive only if its misdescription is found to be material to consumers' decision to purchase. (Recall that materiality need not be shown for a non-geographic mark to be found deceptively misdescriptive.) See also In re Miracle Tuesday LLC, 695 F.3d 1339, 1343 (Fed. Cir. 2012); In re Spirits Int'l, N.V., 563 F.3d 1347, 1350-54 (Fed. Cir. 2009). In summarizing the current test for geographic deceptive misdescriptiveness (and geographic deceptiveness), the Trademark Manual of Examining Procedure states that a mark will be found to be geographically deceptively misdescriptive (or geographically deceptive) if: (1) The primary significance of the mark is a generally known geographic location; (2) The goods or services do not originate in the place identified in the mark; (3) Purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; and (4) The misrepresentation would be a material factor in a significant portion of the relevant consumers' decision to buy the goods or use the services. 11 No one likes this statutory phrase "primarily geographically deceptively misdescriptive" from Section 2(e)(3), but we appear to be stuck with it. In her opinion in In re Miracle Tuesday, LLC, 695 F.3d 1339 (Fed. Cir. 2012), Judge O'Malley took pains to distance her own elegant prose from the statutory language: "The phrase 'primarily geographically deceptively misdescriptive' is a statutory term of art in the trademark context; we neither take responsibility for nor endorse the split infinitives or absence of necessary commas its use in this opinion requires." Id. at 1342 n. 2. Where possible, this casebook will drop "primarily" and simply speak of "geographically deceptively misdescriptive" marks. TMEP § 1210.05(b). The result is that if all four elements of this test are met, then the mark may be geographically deceptive, geographically deceptively misdescriptive, or both geographically deceptive and geographically deceptively misdescriptive. In any of these cases the mark is unprotectable. For marks not claiming use in commerce or acquired distinctiveness prior to December 8, 1993 (the date of enactment of the NAFTA Implementation Act), the PTO will typically issue a refusal based on Section 2(e)(3) and Section 2(a). 12 See TMEP § 1210.05(d). Consider the strange implications of the Federal Circuit's holding in California Innovations. Before the NAFTA amendments in 1993, geographically deceptively misdescriptive marks could be registered upon a showing of secondary meaning. The Americans then amended the Lanham Act to provide that any terms that qualify as geographically deceptively misdescriptive may not be registered. However, by adding a materiality requirement, California Innovations then made it much more difficult for terms to be classified as geographically deceptively misdescriptive. As a result, at least for certain marks, the U.S. has arguably adopted an even laxer standard for registration of geographically misdescriptive terms. If the misdescriptiveness of such terms is not material to the consumer's decision to purchase, then the term may be registrable, and now without any need to show secondary meaning. For if such terms are not geographically deceptively misdescriptive (because the materiality requirement is not satisfied), neither are they geographically descriptive, a status which would trigger the secondary meaning requirement. Instead, in the wake of California Innovations, it would appear that such terms are essentially suggestive or arbitrary, i.e., inherently distinctive. For a thorough discussion of this turn of events, see Robert Brauneis & Roger E. Schechter, Geographic Trademarks and the Protection of Competitor Communication, 96 TRADEMARK REP. 782 (2006). 1. Synthesizing the Tests. The tests for geographic descriptiveness, geographic deceptiveness, and geographic deceptive misdescriptiveness may appear quite complicated. Experience has shown that these tests distract the student from far more important issues in 12 The Gilson treatise explains why the difference between the two categories might matter: The test for determining whether a mark is deceptive under Section 2(a) is now the same as that for determining whether a mark is primarily geographically deceptively misdescriptive under Section 2(e)(3). The difference comes with respect to registrability: Geographically deceptive marks cannot be registered on either the Principal or Supplemental Register, while primarily geographically deceptively misdescriptive marks may be registered on the Principal Register if the marks became distinctive of the goods or services before December 8, 1993, and they may be registered on the Supplemental Register if they have been in use in commerce since before December 8, 1993. trademark law. To try to aid in understanding the tests, the flowchart below attempts to synthesize the tests into a series of questions (with thanks to Professor Jeremy Sheff). There are many examples of marks held to be geographically deceptively misdescriptive. See, e.g, In re Miracle Tuesday LLC, 695 F3d 1339, 104 USPQ2d 1330 (Fed. Cir. 2012) (affirming the TTAB's refusal to register the composite mark consisting of JPK PARIS 75 and design as primarily geographically deceptively misdescriptive for apparel that did not originate in Paris; "Although [applicant's Miami-based designer] Mr. Klifa may still consider himself to be Parisian, the goods that applicant seeks to register are not because there is no current connection between the goods and Paris."); In re Premiere Distillery, LLC, 103 USPQ2d 1483 (TTAB 2012) (finding REAL RUSSIAN primarily geographically deceptively misdescriptive for vodka not made in Russia; "In view of this demonstrated fame and reputation of Russian vodka to the relevant public, we may infer that a substantial portion of consumers who encounter REAL RUSSIAN on applicant's vodka are likely to incorrectly believe that the vodka comes from Russia and that such mistaken belief would materially influence their decision to purchase the vodka"); In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841 (TTAB 2012) (finding OLD HAVANA primarily geographically deceptively misdescriptive for rum not made in Cuba); Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 102 USPQ2d 1085 (TTAB 2012) (finding GUANTANAMERA, a Spanish word literally meaning "girl from Guantanamo" or "of or from Guantanamo, Cuba," primarily geographically deceptively misdescriptive for cigars not made in Cuba). 3. Example of a mark held not to be geographically deceptively misdescriptive. For an example of a mark held not to be geographically deceptively misdescriptive, consider In re Glaze Inc., Serial No. 76565437 (TTAB Mar. 17, 2005) (not citable as precedent). In In re Glaze, the applicant sought to register the mark SWISSCELL for batteries not made in Switzerland. The examining attorney refused registration and the TTAB reversed. The Board found that because the mark incorporated the word "Swiss," the primary significance of the mark was a generally known geographic location. However, the Board found that consumers would not likely believe that the batteries originated in Switzerland: Even when we view the evidence that perhaps two Swiss companies make different type of batteries and that Switzerland is a country with a prosperous and stable market economy, we hold that, as in California Innovations, 66 USPQ2d at 1859, this is tenuous evidence that purchasers would expect batteries for lighting to come from Switzerland . . . . [H]ere the evidence of a goods/place association consists of a single battery company (Renata) and another company that makes vehicle batteries. Under the stricter California Innovations standards, we are constrained to find that the examining attorney has not established the required goods/place association between Switzerland and batteries for lighting. Id. at *4. Finally, the Board found no evidence that the misrepresentation of the source of the batteries would influence consumers' decision to purchase them: The few references in the retailers' advertisements to "Swiss quality" and "Swiss manufacture" in relation to {another Swiss company's Swiss-made} batteries do not show that prospective purchasers' decisions would be materially influenced by the term "Swiss" when purchasing batteries for lighting . . . . The only other evidence that could indicate that the term "Swiss" may materially impact purchasing decisions is the nebulous references to "Swiss quality." There is simply insufficient evidence to hold that the term "Swiss" applied to virtually any product materially influences purchasers. Id. at *4-5. Thus, the mark was neither geographically descriptive nor geographically deceptively misdescriptive. Apparently, it therefore qualified as inherently distinctive. No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it- Opinion by Bergsman, Administrative Trademark Judge: [1] Nieves & Nieves LLC ("Applicant") filed an intent-to-use application to register the mark ROYAL KATE, in standard character form, for the following goods as amended: Cosmetics; fragrances; perfumes; . . . personal care products, namely, shampoo, body wash, conditioner, soap, shower gel, in Class 3; Watches; cufflinks; key fobs of precious metals; jewelry; jewelry boxes, in Class 14; Pouches, namely leather pouches, pouches for holding makeup, keys and other personal items; purses; handbags; pocketbooks; clutches; backpacks . . . in Class 18; Bedding, namely, bed sheets . . . ; bath towels; towels, in Class 24; and Apparel . . . ; bibs not of paper; cloth diapers, in Class 25. The application includes a statement that "the name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual." [3] To determine whether Applicant's ROYAL KATE mark falsely suggests a connection with Kate Middleton under Section 2(a), the Board analyzes whether the evidence of record satisfies the following four-part test: (1) Whether Applicant's mark ROYAL KATE is the same as or a close approximation of Kate Middleton's previously used name or identity; (2) Whether Applicant's mark ROYAL KATE would be recognized as such by purchasers, in that the mark points uniquely and unmistakably to Kate Middleton; (3) Whether Kate Middleton is not connected with the goods that will be sold by Applicant under its mark; and (4) Whether Kate Middleton's name or identity is of sufficient fame or reputation that when Applicant's mark is used on Applicant's goods, a connection with Kate Middleton would be presumed. A. Whether Applicant's mark ROYAL KATE is the same as or a close approximation of the name or identity of Kate Middleton? [4] Applicant argues that ROYAL KATE is not a close approximation of Kate Middleton's previously-used name or identity because there is no evidence that Kate Middleton herself used ROYAL KATE as her name or identity and because Kate Middleton is not officially a "royal."foot_12 Specifically, Applicant contends as follows: Although some may argue that ROYAL KATE may be reasonably understood as referring to Kate Middleton, Duchess of Cambridge, by some persons, it is not a close approximation of her name because ROYAL is not part of Middleton's name or title. [5] We reject Applicant's interpretation of the first prong of the test as inappropriately narrowing the scope of Section 2(a). The creation of a false suggestion of a connection results from an applicant's use of something that is closely "associated with a particular personality or 'persona' of someone other than the applicant. Notre Dame, 217 USPQ at 509; see also Pitts, 107 USPQ2d at 2024. The reason for the statutory prohibition is that the person identified loses the right to control his/her identity. Notre Dame, 217 USPQ at 509 ("There may be no likelihood of such confusion as to the source of goods even under a theory of "sponsorship" or "endorsement," and, nevertheless, one's right of privacy, or the related right of publicity, may be violated."). [6] The statutory false suggestion of a connection refusal emerged from the right to privacy and right of publicity. Evolving out of the rights of privacy and publicity, the false suggestion of a connection under § 2(a) of the Trademark Act was intended to preclude registration of a mark which conflicts with another's rights, even though not founded on the familiar test of likelihood of confusion. [Notre Dame 217 USPQ at 509]. An opposer may prevail on the false suggestion of a connection ground when its right to control the use of its identity is violated, even if the name claimed to be appropriated was never commercially exploited by the opposer as a trademark or in a manner analogous to trademark use. See Notre Dame, 703 F.2d at 1375, 217 USPQ at 508; Buffett, 226 USPQ at 429. However, while a party's interest in its identity does not depend for its existence on the adoption and use of a technical trademark, a party must nevertheless have a protectable interest in a name (or its equivalent). Thus, we focus on the key factor in the false suggestion analysis for this case: whether applicants' mark is a close approximation of opposers' name or identity, i.e., a right in which opposers possess a protectable interest. [7] The right of publicity has developed to protect the commercial interest of celebrities in their identities. Under this right, the celebrity has an interest that may be protected from the unauthorized commercial exploitation of that identity. If the celebrity's identity is commercially exploited without the consent of the celebrity, there has been an invasion of his/her right, regardless of whether his/her "name or likeness" is used. Cf. Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831, 218 USPQ 1, 4 (6th Cir. 1983) (former late night television personality Johnny Carson's identity may be exploited even if his name or likeness is not used). [8] The evidence reflects that Kate Middleton is a celebrity. That means her identity has value which the § 2(a) false suggestion refusal is intended to protect. See Notre Dame, 217 USPQ at 509 ("It is a right of this nature [that is, the right to privacy or right to publicity], a right to control the use of one's identity, which the University also asserts under § 2(a)."). Therefore, it is the right of publicity basis for the false suggestion of a connection refusal that applies in this case. [9] The fact that Kate Middleton, the Duchess of Cambridge, has never used ROYAL KATE as her name or identity does not obviate the false suggestion of a connection refusal. A term may be considered the identity of a person even if his or her name or likeness is not used. All that is required is that the mark sought to be registered clearly identifies a specific person (i.e., Kate Middleton). . . . See also In re Urbano, 51 USPQ2d 1776, 1779 (TTAB 1999) ("[W]hile the general public in the United States may or may not have seen the upcoming Olympic games referred to precisely as 'Sydney 2000,' we have no doubt that the general public in the United States would recognize this phrase as referring unambiguously to the upcoming Olympic Games in Sydney, Australia, in the year 2000."). [10] We take this opportunity to make explicit what was implicit in our prior decisions in Pitts and In re Urbano, 51 USPQ2d 1776 (TTAB 1999): the first prong of the false suggestion of a connection test inquires into whether applicant's mark is the same as or a close approximation of the name or identity of a particular person other than the applicant, whether or not the person actually "used" the name or identity himself or herself. . . . Therefore, in this case, we examine the evidence of record to determine whether it establishes that Applicant's mark ROYAL KATE would be understood by the relevant public as identifying Kate Middleton. [11] As noted above, the term "royal" refers to a member of the England's royal family. The mark ROYAL KATE creates a commercial impression that references Kate Middleton as a member of the royal family. This is corroborated by articles in the media referencing Kate Middleton as a "royal." . . . . [12] In fact, Kate Middleton is referred to as "Her Royal Highness." Applicant submitted an excerpt from "The official website of The British Monarchy" (royal.gov.uk) which references Kate Middleton as "her Royal Highness." . . . . [13] The Trademark Examining Attorney submitted numerous examples of media coverage referring to Kate Middleton as ROYAL KATE. . . . [14] This evidence is sufficient to establish that the mark ROYAL KATE is a close approximation of the identity of Kate Middleton because American media uses the term ROYAL KATE to identify Kate Middleton and, therefore, the American public receives media reports identifying Kate Middleton as ROYAL KATE. In fact, because the American public receives reports that Kate Middleton will be referred to as Her Royal Highness the Duchess of Cambridge, there is a natural association between the mark ROYAL KATE and Kate Middleton regardless of whether she uses that moniker herself. See Bd. of Trustees of the Univ. of Ala. v. BAMA-Werke Curt Baumann, 231 USPQ 408 (TTAB 1986) ("BAMA" uniquely pointed to the identity of the University of Alabama even though the school had not adopted it as a trademark and had only sporadically referred to itself as BAMA, in large part due to the public's association of the term with the school). [15] Applicant is seeking to register its mark for fashion products such as cosmetics, jewelry, handbags, bedding and clothing and Applicant characterized these products as "luxury items and home goods." The goods and services themselves serve, if anything, to reinforce that the Mark uniquely and unmistakably points to Kate Middleton. Kate Middleton, by virtue of her being a member of the British Royal family and wife of Prince William, the second in line to the English throne, has become a fashion trendsetter. As the evidence establishes, the media reports what she is wearing, where she goes and what she purchases . . . . [16] . . . Applicant has not come forward with any evidence that the name ROYAL KATE refers to anyone other than Kate Middleton. C. Whether Kate Middleton is connected with the goods that are sold or will be sold by Applicant under its mark? [17] Applicant acknowledges that Kate Middleton is not connected with the goods that are or will be sold by Applicant under the mark ROYAL KATE, and that Kate Middleton has not consented to Applicant's use of her persona. Applicant's mark ROYAL KATE is used on Applicant's goods, a connection with Kate Middleton would be presumed? [18] . . . The evidence discussed in Section B . . . demonstrates that Kate Middleton's identity is of sufficient renown that when Applicant's mark ROYAL KATE is used in connection with Applicant's goods, a connection with Kate Middleton will be presumed. [19] "Applicant does not dispute that Catherine, Duchess of Cambridge, is a well-known figure, stemming from her well-publicized relationship with Prince William and her subsequent wedding." "Also, the Applicant does not dispute the . . . claim that Kate Middleton's fame is not temporary." However, Applicant argues that "while the Duchess of Cambridge is well-known, there is no evidence of a presumptive connection between Catherine and the specific goods upon which Applicant's mark will be used. Simply because Catherine is believed to have style and good taste does not mean that she is publicly perceived to be involved in the industry at all." We do not require proof that Kate Middleton is wellknown for cosmetics, jewelry, handbags, bedding and clothing. Our inquiry is whether Kate Middleton's renown is such that when the mark ROYAL KATE is used with those products, consumers will recognize ROYAL KATE as referring to Kate Middleton such that a connection with Kate Middleton will be presumed. As the Board held in In re Pedersen, 109 USPQ2d 1185, 1202 (TTAB 2013): [T]he key is whether the name per se is unmistakably associated with a particular person or institution and, as used would point uniquely to the person or institution. In short, it is the combination of: (1) a name of sufficient fame or reputation and (2) its use on or in connection with particular goods or services, that would point uniquely to a particular person or institution. [Internal citation omitted]. Thus, our inquiry is whether consumers of medicinal herbal remedies would think only of the Lakota tribes when the LAKOTA name is used on such goods. Cf. Notre Dame, 217 USPQ 509 ("'Notre Dame' is not a name solely associated with the University. It serves to identify a famous and sacred religious figure and is used in the names of churches dedicated to Notre Dame, such as the Cathedral of Notre Dame in Paris."). [20] In view [of the record evidence], we find that Kate Middleton's identity is of sufficient fame or reputation that when Applicant's mark ROYAL KATE is used on Applicant's goods, a connection with Kate Middleton will be presumed. [21] [W]e find that Applicant's mark ROYAL KATE for the goods listed in the application falsely suggests a connection with Kate Middleton. III. Whether the mark ROYAL KATE identifies a particular living individual whose written consent to register the mark is not of record? [22] Section 2(c) of the Trademark Act, 15 U.S.C. § 1052(c) provides the following: No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow. [23] The purpose of requiring the consent of a living individual to the registration of his or her name, signature, or portrait is to protect rights of privacy and publicity that living persons have in the designations that identify them. In re Hoefflin, 97 USPQ2d 1174, 1176 (TTAB 2010); Martin v. Carter Hawley Hale Stores, Inc., 206 USPQ 931, 933 (TTAB 1979) (Section 2(c) was designed "to protect one who, for valid reasons, could expect to suffer damage from another's trademark use of his name.") . . . . [24] Whether consent to registration is required depends on whether the public would recognize and understand the mark as identifying a particular living individual. A consent is required only if the individual bearing the name in the mark will be associated with the mark as used on the goods or services, either because: (1) the person is so well known that the public would reasonably assume a connection between the person and the goods or services; or (2) the individual is publicly connected with the business in which the mark is used . . . . [25] For purposes of Section 2(c), a "name" does not have to be the full name of an individual. Section 2(c) applies not only to full names, but also first names, surnames, shortened names, pseudonyms, stage names, titles, or nicknames, if there is evidence that the name identifies a specific living individual who is publicly connected with the business in which the mark is used, or who is so well known that such a connection would be assumed. See In re Hoefflin, 97 USPQ2d at 1177-78 (holding registration of the marks OBAMA PAJAMA, OBAMA BAHAMA PAJAMAS, and BARACK'S JOCKS DRESS TO THE LEFT barred under Section 2(c) in the absence of consent to register, because they create a direct association with President Barack Obama); Krause v. Krause Publ'ns, Inc., 76 USPQ2d at 1909 ("the mark KRAUSE PUBLICATIONS, although it includes only the surname of petitioner, would fall within the provisions of Section 2(c) if petitioner establishes that KRAUSE, as used on or in connection with the goods or services set forth in the involved registration, points uniquely to him 'as a particular living individual."'); In re Sauer, 27 USPQ2d at 1074-75 (holding registration of a mark containing BO, used in connection with a sports ball, barred under Section 2(c) in the absence of consent to register, because BO is the nickname of a well-known athlete and thus use of the mark would lead to the assumption that he was associated with the goods) . . . . [26] In re Steak & Ale Rest. of Am., Inc., 185 USPQ 447, 448 (TTAB 1975) is particularly analogous to the present case. In that decision, the Board affirmed a Section 2(c) refusal of the mark PRINCE CHARLES because the wording identifies a particular well-known living individual whose consent was not of record. The Board reasoned that "the addition of a given name or a surname to the word 'PRINCE' could well serve as a name or 'nickname' for a particular living individual who could be identified and referred to in the various walks of life with this appellation." We find that this same logic applies to the mark ROYAL KATE. Cf. Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192, 1196 (TTAB 1994) (evidence shows that "Duca D'Aosta" is a title and does not refer "unequivocally to a particular living individual.") [27] While with lesser-known figures there may have to be evidence showing that the consuming public connects them with the manufacturing or marketing of the goods at issue, well-known individuals such as celebrities and world-famous political figures are entitled to the protection of Section 2(c) without having to demonstrate a connection with the involved goods or services. See In re Hoefflin, 97 USPQ2d at 1177 (because Barack Obama is the President of the United States, the purchasing public will reasonably assume that marks consisting of the names BARACK and OBAMA identify President Barack Obama); In re Masucci, 179 USPQ 829, 830 (TTAB 1973) (in spite of any common law rights applicant may have, EISENHOWER for greeting cards was refused on the ground that it consisted of the name of the late President Eisenhower during the life of his widow, and application for registration was filed without her consent). [28] As we found in the previous section, ROYAL KATE identifies Kate Middleton whose identity is renowned. By any measure, she is a celebrity, and thus the term ROYAL KATE points uniquely and unmistakably to Kate Middleton. Although Kate Middleton, the Duchess of Cambridge, does not use the name ROYAL KATE, it has become an expression used by the American public (and media) to identify her. We find that the mark ROYAL KATE is the name of a particular living individual, namely, Kate Middleton, and because Kate Middleton has not consented to the use and registration of that name, the Section 2(c) refusal is affirmed. [29] Decision: The refusals to register under Section 2(a) & (c) are affirmed. 1. Difference between § 2(a) false suggestion of a connection and § 2(c) identification of living individual without consent. Lanham Act § 2(c), 15 U.S.C. § 1052(c) prohibits the registration of a mark which "consists of or comprises a name . . . identifying a particular living individual except by his written consent . . ." This does not mean that, for example, every person bearing the surname Singh has the ability under § 2(c) to prohibit the registration of a mark incorporating the word Singh. On the contrary, A name is deemed to "identify" a particular living individual, for purposes of Section 2(c), only if the "individual bearing the name in question will be associated with the mark as used on the goods, either because that person is so well known that the public would reasonably assume the connection, or because the individual is publicly connected with the business in which the mark is used." for vodka; "we conclude that the evidence in this record is more than adequate to establish that the mark would be recognized as the name of the painter Marc Chagall and that the name is of sufficient fame or reputation that when the respondent's mark is used on the goods a connection with the painter Marc Chagall would be presumed"). 3. For a comprehensive review of section 2(a) caselaw, see Anne Gilson LaLonde, Giving the Wrong Impression: Section 2(a)'s False Suggestion of a Connection, 110 TRADEMARK REP. 877 (2020). Lanham Act § 2(d), 15 U.S.C. § 1052 (d), prohibits the registration of a mark that: Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. Because this particular statutory bar bears so much in common with the likelihood of confusion analysis reviewed at length below in Part II.B, we will discuss the § 2(d) bar in that section. The American trademark system provides the benefits of trademark protection and trademark registration to certain kinds of marks but not to others. Furthermore, the government will censor certain uses of trademarks that it deems objectionable, such as those judged to be infringing of another's trademark rights. How is this consistent with the Free Speech Clause of the First Amendment that "Congress shall make no law . . . abridging the freedom of speech"? The cases that follow help to answer this question. In Matal v. Tam, 582 U.S. 218 (2017), excerpted below, the Supreme Court held that the Lanham Act § 2(a) prohibition on the registration of marks that "may disparage . . . persons" was invalid under the Free Speech Clause. Tam is significant for a number of reasons specific to trademark law. First, it abrogated a half-century of PTO practice and federal court case law applying the § 2(a)'s "disparagement clause." Second, Tam also arguably raises significant questions about whether antidilution law, which we cover in Part II.C below, is constitutional. May the government constitutionally restrict non-deceptive speech that "impairs the distinctiveness of the famous mark," 15 U.S.C. § 1125(c)(2)(B), or that "harms the reputation of the famous mark," 15 U.S.C. § 1125(c)(2)(C)? Third, Tam brought to an end the appeal to the Fourth Circuit of Blackhorse v. Pro-Football, Inc., 111 U.S.P.Q.2d 1080, 2014 WL 2757516 (TTAB June 18, 2014). In Blackhorse, five Native Americans petitioned to cancel various trademark registrations consisting in whole or in part of the term REDSKINS for professional football-related services on the ground that at the time of their registration they were disparaging of Native Americans and thus obtained contrary to Lanham Act § § 14(c) and 2(a), 15 U.S.C. § § 1064(c) & 1052(a). (If you strongly support Tam's registration of THE SLANTS, what is your position on the government's registration of the term "redskins" by a professional football team in the nation's capital?) Tam also prompted the question of whether the Lanham Act § 2(a) prohibition on the registration of any mark that "consists of or comprises . . . scandalous matter" is also unconstitutional. In Iancu v. Brunetti, 588 U.S. 388 (2019), excerpted below and involving the mark FUCT for athletic apparel, the Supreme Court found that the § 2 bar against the registration of scandalous matter is also unconstitutional. You will see, however, that the Court found Brunetti to be a much closer case than Tam. Finally, in Vidal v. Elster, 602 U.S. 286 (2024), Elster sought to register the mark TRUMP TOO SMALL without Donald Trump's permission. The PTO refused registration on the ground that no mark may be registered that "[c]onsists of or comprises a name . . . identifying a particular living individual except by his written consent." Lanham Act § 2(c), 15 U. S. C. §1052(c). Elster claimed a violation of his First Amendment rights. The Court found none. Beware that Tam and Brunetti as presented here have been severely edited-down to focus on the Justices' statements about the trademark system. The opinion excerpts provide in some instances only the gist (and few of the subtleties) of the Justices' First Amendment analyses. Students with a special interest in First Amendment doctrine would be better served taking the time to read the full opinions. For a comprehensive study of the relationship between trademark law and free speech principles, see LISA RAMSEY, TRADEMARKS AND FREE SPEECH: CONFLICTS AND RESOLUTIONS (2025). [1] Justice ALITO announced the judgment of the Court and delivered the opinion of the Court with respect to Parts I, II, and III-A, and an opinion with respect to Parts III-B, III-C, and IV, in which THE CHIEF JUSTICE, Justice THOMAS, and Justice BREYER join. [2] This case concerns a dance-rock band's application for federal trademark registration of the band's name, "The Slants." "Slants" is a derogatory term for persons of Asian descent, and members of the band are Asian-Americans. But the band members believe that by taking that slur as the name of their group, they will help to "reclaim" the term and drain its denigrating force. [3] The Patent and Trademark Office (PTO) denied the application based on a provision of federal law prohibiting the registration of trademarks that may "disparage . . . or bring . . . into contemp[t] or disrepute" any "persons, living or dead." 15 U.S.C. § 1052(a). We now hold that this provision violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend. [6] Under the Lanham Act, trademarks that are "used in commerce" may be placed on the "principal register," that is, they may be federally registered. 15 U.S.C. § 1051(a)(1). And some marks "capable of distinguishing [an] applicant's goods or services and not registrable on the principal register . . . which are in lawful use in commerce by the owner thereof" may instead be placed on a different federal register: the supplemental register. § 1091(a). There are now more than two million marks that have active federal certificates of registration. PTO Performance and Accountability Report, Fiscal Year 2016, p. 192 (Table 15), https://www.uspto.gov/sites/default/files/ documents/USPTOFY16PAR.pdf (all Internet materials as last visited June 16, 2017). This system of federal registration helps to ensure that trademarks are fully protected and supports the free flow of commerce. "[N]ational protection of trademarks is desirable," we have explained, "because trademarks foster competition and the maintenance of quality by securing to the producer the benefits of good reputation." San Francisco Arts & Athletics, Inc. v. United States Olympic Comm., 483 U.S. 522, 531 (1987) (internal quotation marks omitted); see also Park 'N Fly, Inc., supra, at 198 ("The Lanham Act provides national protection of trademarks in order to secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers"). B [7] Without federal registration, a valid trademark may still be used in commerce. See 3 McCarthy § 19:8. And an unregistered trademark can be enforced against would-be infringers in several ways. Most important, even if a trademark is not federally registered, it may still be enforceable under § 43(a) of the Lanham Act, which creates a federal cause of action for trademark infringement. See Two Pesos, supra, at 768 ("Section 43(a) prohibits a broader range of practices than does § 32, which applies to registered marks, but it is common ground that § 43(a) protects qualifying unregistered trademarks" (internal quotation marks and citation omitted)). 1 Unregistered trademarks may also be entitled to protection under other federal statutes, such as the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d). See 5 McCarthy § 25A:49, at 25A-198 ("[T]here is no requirement [in the Anticybersquatting Act] that the protected 'mark' be registered: unregistered common law marks are protected by the Act"). And an unregistered trademark can be enforced under state common law, or if it has been registered in a State, under that State's registration system. See 3 id., § 19:3, at 19-23 (explaining that "[t]he federal system of registration and protection does not preempt parallel state law protection, either by state common law or state registration" and "[i]n the vast majority of situations, federal and state trademark law peacefully coexist"); id., § 22:1 (discussing state trademark registration systems). [8] Federal registration, however, "confers important legal rights and benefits on trademark owners who register their marks." B & B Hardware, 135 S.Ct., at 1317 (internal quotation marks omitted). Registration on the principal register (1) "serves as 'constructive notice of the registrant's claim of ownership' of the mark," ibid. (quoting 15 U.S.C. § 1072); (2) "is 'prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner's ownership of the mark, and of the owner's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate,'" B & B Hardware, 135 S.Ct., at 1300 (quoting § 1057(b)); and (3) can make a mark "'incontestable'" once a mark has been registered for five years," ibid. C [9] The Lanham Act contains provisions that bar certain trademarks from the principal register. For example, a trademark cannot be registered if it is "merely descriptive or deceptively misdescriptive" of goods, § 1052(e)(1), or if it is so similar to an already registered trademark or trade name that it is "likely . . . to cause confusion, or to cause mistake, or to deceive," § 1052(d). [10] At issue in this case is one such provision, which we will call "the disparagement clause." This provision prohibits the registration of a trademark "which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, 1 In the opinion below, the Federal Circuit opined that although "Section 43(a) allows for a federal suit to protect an unregistered trademark," "it is not at all clear" that respondent could bring suit under § 43(a) because "there is no authority extending § 43(a) to marks denied under § 2(a)'s disparagement provision." In re Tam, 808 F.3d 1321, 1344-1345, n. 11 (en banc), as corrected (Feb. 11, 2016). When drawing this conclusion, the Federal Circuit relied in part on our statement in Two Pesos that "the general principles qualifying a mark for registration under § 2 of the Lanham Act are for the most part applicable in determining whether an unregistered mark is entitled to protection under § 43(a)." 505 U.S., at 768. We need not decide today whether respondent could bring suit under § 43(a) if his application for federal registration had been lawfully denied under the disparagement clause. or disrepute." § 1052(a).foot_14 This clause appeared in the original Lanham Act and has remained the same to this day. See § 2(a), 60 Stat. 428. [11] When deciding whether a trademark is disparaging, an examiner at the PTO generally applies a "two-part test." The examiner first considers "the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services." Trademark Manual of Examining Procedure § 1203.03(b)(i) (Apr. 2017), p. 1200-150, http://tmep.uspto.gov. "If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols," the examiner moves to the second step, asking "whether that meaning may be disparaging to a substantial composite 3 of the referenced group." Ibid. If the examiner finds that a "substantial composite, although not necessarily a majority, of the referenced group would find the proposed mark . . . to be disparaging in the context of contemporary attitudes," a prima facie case of disparagement is made out, and the burden shifts to the applicant to prove that the trademark is not disparaging. Ibid. What is more, the PTO has specified that "[t]he fact that an applicant may be a member of that group or has good intentions underlying its use of a term does not obviate the fact that a substantial composite of the referenced group would find the term objectionable." Ibid. [12] Simon Tam is the lead singer of "The Slants." In re Tam, 808 F.3d 1321, 1331 (C.A.Fed. 2015) (en banc), as corrected (Feb. 11, 2016). He chose this moniker in order to "reclaim" and "take ownership" of stereotypes about people of Asian ethnicity. Ibid. (internal quotation marks omitted). The group "draws inspiration for its lyrics from childhood slurs and mocking nursery rhymes" and has given its albums names such as "The Yellow Album" and "Slanted Eyes, Slanted Hearts." Ibid. [13] Tam sought federal registration of "THE SLANTS," on the principal register, but an examining attorney at the PTO rejected the request, applying the PTO's two-part framework and finding that "there is . . . a substantial composite of persons who find the term in the applied-for mark offensive." The examining attorney relied in part on the fact that "numerous dictionaries define 'slants' or 'slant-eyes' as a derogatory or offensive term." The examining attorney also relied on a finding that "the band's name has been found offensive numerous times"-citing a performance that was canceled because of the band's moniker and the fact that "several bloggers and commenters to articles on the band have indicated that they find the term and the applied-for mark offensive." [14] Tam contested the denial of registration before the examining attorney and before the PTO's Trademark Trial and Appeal Board (TTAB) but to no avail. Eventually, he took the case to federal court, where the en banc Federal Circuit ultimately found the disparagement clause facially unconstitutional under the First Amendment's Free Speech Clause. The majority found that the clause engages in viewpoint-based discrimination, that the clause regulates the expressive component of trademarks and consequently cannot be treated as commercial speech, and that the clause is subject to and cannot satisfy strict scrutiny. See 808 F.3d, at 1334-1339. The majority also rejected the Government's argument that registered trademarks constitute government speech, as well as the Government's contention that federal registration is a form of government subsidy. See id., at 1339-1355. And the majority opined that even if the disparagement clause were analyzed under this Court's commercial speech cases, the clause would fail the "intermediate scrutiny" that those cases prescribe. See id., at 1355-1357. [15] Several judges wrote separately, advancing an assortment of theories. Concurring, Judge O'Malley agreed with the majority's reasoning but added that the disparagement clause is unconstitutionally vague. See id., at 1358-1363. Judge Dyk concurred in part and dissented in part. He argued that trademark registration is a government subsidy and that the disparagement clause is facially constitutional, but he found the clause unconstitutional as applied to THE SLANTS because that mark constitutes "core expression" and was not adopted for the purpose of disparaging Asian-Americans. See id., at 1363-1374. In dissent, Judge Lourie agreed with Judge Dyk that the clause is facially constitutional but concluded for a variety of reasons that it is also constitutional as applied in this case. See id., at 1374-1376. Judge Reyna also dissented, maintaining that trademarks are commercial speech and that the disparagement clause survives intermediate scrutiny because it "directly advances the government's substantial interest in the orderly flow of commerce." See id., at 1376-1382. [16] The Government filed a petition for certiorari, which we granted in order to decide whether the disparagement clause "is facially invalid under the Free Speech Clause of the First Amendment." Pet. for Cert. i; see sub. nom. Lee v. Tam, 579 U.S. ----, 137 S.Ct. 30 (2016). II {Tam argued that Lanham Act § 2(a) prohibits the registration of marks that disparage only "persons," which, Tam argued, "includes only natural and juristic persons," not "nonjuristic entities such as racial and ethnic groups." The Court rejected this argument.} III [17] Because the disparagement clause applies to marks that disparage the members of a racial or ethnic group, we must decide whether the clause violates the Free Speech Clause of the First Amendment. And at the outset, we must consider three arguments that would either eliminate any First Amendment protection or result in highly permissive rational-basis review. Specifically, the Government contends (1) that trademarks are government speech, not private speech, (2) that trademarks are a form of government subsidy, and (3) that the constitutionality of the disparagement clause should be tested under a new "governmentprogram" doctrine. We address each of these arguments below. [18] The First Amendment prohibits Congress and other government entities and actors from "abridging the freedom of speech"; the First Amendment does not say that Congress and speech and thus eliminates all First Amendment protection, would the registration of the copyright for a book produce a similar transformation? See 808 F.3d, at 1346 (explaining that if trademark registration amounts to government speech, "then copyright registration" which "has identical accoutrements" would "likewise amount to government speech"). [23] The Government attempts to distinguish copyright on the ground that it is "'the engine of free expression,'" Brief for Petitioner 47 (quoting Eldred v. Ashcroft, 537 U.S. 186, 219, 123 S.Ct. 769, 154 L.Ed.2d 683 (2003)), but as this case illustrates, trademarks often have an expressive content. Companies spend huge amounts to create and publicize trademarks that convey a message. It is true that the necessary brevity of trademarks limits what they can say. But powerful messages can sometimes be conveyed in just a few words. [24] Trademarks are private, not government, speech. . . . . {The Court further rejected the Government's government subsidy and governmentprogram arguments.} IV [25] Having concluded that the disparagement clause cannot be sustained under our government-speech or subsidy cases or under the Government's proposed "governmentprogram" doctrine, we must confront a dispute between the parties on the question whether trademarks are commercial speech and are thus subject to the relaxed scrutiny outlined in Central Hudson Gas & Elec. Corp. v. Public Serv. Comm'n of N. Y., 447 U.S. 557 (1980). The Government and amici supporting its position argue that all trademarks are commercial speech. They note that the central purposes of trademarks are commercial and that federal law regulates trademarks to promote fair and orderly interstate commerce. Tam and his amici, on the other hand, contend that many, if not all, trademarks have an expressive component. In other words, these trademarks do not simply identify the source of a product or service but go on to say something more, either about the product or service or some broader issue. The trademark in this case illustrates this point. The name "The Slants" not only identifies the band but expresses a view about social issues. [26] We need not resolve this debate between the parties because the disparagement clause cannot withstand even Central Hudson review. 17 Under Central Hudson, a restriction of speech must serve "a substantial interest," and it must be "narrowly drawn." Id., at 564-565 (internal quotation marks omitted). This means, among other things, that "[t]he regulatory technique may extend only as far as the interest it serves." Id., at 565. The disparagement clause fails this requirement. 17 As with the framework discussed in Part III-C of this opinion, we leave open the question whether Central Hudson provides the appropriate test for deciding free speech challenges to provisions of the Lanham Act. And nothing in our decision should be read to speak to the validity of state unfair competition provisions or product libel laws that are not before us and differ from § 1052(d)'s disparagement clause. [27] It is claimed that the disparagement clause serves two interests. The first is phrased in a variety of ways in the briefs. Echoing language in one of the opinions below, the Government asserts an interest in preventing "'underrepresented groups'" from being "'bombarded with demeaning messages in commercial advertising.'" Brief for Petitioner 48 (quoting 808 F.3d, at 1364 (Dyk, J., concurring in part and dissenting in part)). An amicus supporting the Government refers to "encouraging racial tolerance and protecting the privacy and welfare of individuals." Brief for Native American Organizations as Amici Curiae 21. But no matter how the point is phrased, its unmistakable thrust is this: The has an interest in preventing speech expressing ideas that offend. And, as we have explained, that idea strikes at the heart of the First Amendment. Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express "the thought that we hate." United States v. Schwimmer, 279 U.S. 644, 655 (1929) (Holmes, J., dissenting). [28] The second interest asserted is protecting the orderly flow of commerce. See 808 F.3d, at 1379-1381 (Reyna, J., dissenting); Brief for Petitioner 49; Brief for Native American Organizations as Amicus Curiae 18-21. Commerce, we are told, is disrupted by trademarks that "involv[e] disparagement of race, gender, ethnicity, national origin, religion, sexual orientation, and similar demographic classification." 808 F.3d, at 1380-1381 (opinion of Reyna, J.). Such trademarks are analogized to discriminatory conduct, which has been recognized to have an adverse effect on commerce. See ibid.; Brief for Petitioner 49; Brief for Native American Organizations as Amici Curiae 18-20. [29] A simple answer to this argument is that the disparagement clause is not "narrowly drawn" to drive out trademarks that support invidious discrimination. The clause reaches any trademark that disparages any person, group, or institution. It applies to trademarks like the following: "Down with racists," "Down with sexists," "Down with homophobes." It is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted. [30] The clause is far too broad in other ways as well. The clause protects every person living or dead as well as every institution. Is it conceivable that commerce would be disrupted by a trademark saying: "James Buchanan was a disastrous president" or "Slavery is an evil institution"? [31] There is also a deeper problem with the argument that commercial speech may be cleansed of any expression likely to cause offense. The commercial market is well stocked with merchandise that disparages prominent figures and groups, and the line between commercial and non-commercial speech is not always clear, as this case illustrates. If affixing the commercial label permits the suppression of any speech that may lead to political or social "volatility," free speech would be endangered. [32] For these reasons, we hold that the disparagement clause violates the Free Speech Clause of the First Amendment. The judgment of the Federal Circuit is affirmed. Justice GORSUCH took no part in the consideration or decision of this case. Justice KENNEDY, with whom Justice GINSBURG, Justice SOTOMAYOR, and Justice KAGAN join, concurring in part and concurring in the judgment. [1] The Patent and Trademark Office (PTO) has denied the substantial benefits of federal trademark registration to the mark THE SLANTS. The PTO did so under the mandate of the disparagement clause in 15 U.S.C. § 1052(a), which prohibits the registration of marks that may "disparage . . . or bring . . . into contemp[t] or disrepute" any "persons, living or dead, institutions, beliefs, or national symbols." [2] As the Court is correct to hold, § 1052(a) constitutes viewpoint discrimination-a form of speech suppression so potent that it must be subject to rigorous constitutional scrutiny. The Government's action and the statute on which it is based cannot survive this scrutiny. The Court is correct in its judgment, and I join Parts I, II, and III-A of its opinion. This separate writing explains in greater detail why the First Amendment's protections against viewpoint discrimination apply to the trademark here. It submits further that the viewpoint discrimination rationale renders unnecessary any extended treatment of other questions raised by the parties. [4] Those few categories of speech that the government can regulate or punish-for instance, fraud, defamation, or incitement-are well established within our constitutional tradition. See United States v. Stevens, 559 U.S. 460, 468 (2010). Aside from these and a few other narrow exceptions, it is a fundamental principle of the First Amendment that the government may not punish or suppress speech based on disapproval of the ideas or perspectives the speech conveys. See Rosenberger v. Rector and Visitors of Univ. of Va., 515 U.S. 819, 828-829 (1995). [5] The First Amendment guards against laws "targeted at specific subject matter," a form of speech suppression known as content based discrimination. Reed v. Town of Gilbert, 135 S. Ct. 2218Ct. , 2230Ct. (2015)). This category includes a subtype of laws that go further, aimed at the suppression of "particular views . . . on a subject." Rosenberger, 515 U.S., at 829. A law found to discriminate based on viewpoint is an "egregious form of content discrimination," which is "presumptively unconstitutional." Id., at 829-830. [6] At its most basic, the test for viewpoint discrimination is whether-within the relevant subject category-the government has singled out a subset of messages for disfavor based on the views expressed. See Cornelius v. NAACP Legal Defense & Ed. Fund, Inc., 473 U.S. 788, 806 (1985) ("[T]he government violates the First Amendment when it denies access to a speaker solely to suppress the point of view he espouses on an otherwise includible subject"). In the instant case, the disparagement clause the Government now seeks to implement and enforce identifies the relevant subject as "persons, living or dead, institutions, beliefs, or national symbols." 15 U.S.C. § 1052(a). Within that category, an applicant may register a positive or benign mark but not a derogatory one. The law thus reflects the Government's disapproval of a subset of messages it finds offensive. This is the essence of viewpoint discrimination. . . . . II [7] The parties dispute whether trademarks are commercial speech and whether trademark registration should be considered a federal subsidy. The former issue may turn on whether certain commercial concerns for the protection of trademarks might, as a general matter, be the basis for regulation. However that issue is resolved, the viewpoint based discrimination at issue here necessarily invokes heightened scrutiny. [8] "Commercial speech is no exception," the Court has explained, to the principle that the First Amendment "requires heightened scrutiny whenever the government creates a regulation of speech because of disagreement with the message it conveys." Sorrell v. IMS Health Inc., 564 U.S. 552, 566 (2011) (internal quotation marks omitted). Unlike content based discrimination, discrimination based on viewpoint, including a regulation that targets speech for its offensiveness, remains of serious concern in the commercial context. See Bolger v. Youngs Drug Products Corp., 463 U.S. 60, 65, 71-72 (1983). [9] To the extent trademarks qualify as commercial speech, they are an example of why that term or category does not serve as a blanket exemption from the First Amendment's requirement of viewpoint neutrality. Justice Holmes' reference to the "free trade in ideas" and the "power of . . . thought to get itself accepted in the competition of the market," Abrams v. United States, 250 U.S. 616, 630 (1919) (dissenting opinion), was a metaphor. In the realm of trademarks, the metaphorical marketplace of ideas becomes a tangible, powerful reality. Here that real marketplace exists as a matter of state law and our common-law tradition, quite without regard to the Federal Government. These marks make up part of the expression of everyday life, as with the names of entertainment groups, broadcast networks, designer clothing, newspapers, automobiles, candy bars, toys, and so on. See Brief for Pro-Football, Inc., as Amicus Curiae 8 (collecting examples). Nonprofit organizations-ranging from medical-research charities and other humanitarian causes to political advocacy groups-also have trademarks, which they use to compete in a real economic sense for funding and other resources as they seek to persuade others to join their cause. See id., at 8-9 (collecting examples). To permit viewpoint discrimination in this context is to permit Government censorship. [10] This case does not present the question of how other provisions of the Lanham Act should be analyzed under the First Amendment. It is well settled, for instance, that to the extent a trademark is confusing or misleading the law can protect consumers and trademark owners. See, e.g., FTC v. Winsted Hosiery Co., 258 U.S. 483, 493 (1922) ("The labels in question are literally false, and . . . palpably so. All are, as the Commission found, calculated to deceive and do in fact deceive a substantial portion of the purchasing public"). This case also does not involve laws related to product labeling or otherwise designed to protect consumers. See Sorrell, supra, at 579, ("[T]he government's legitimate interest in protecting consumers from commercial harms explains why commercial speech can be subject to greater governmental regulation than noncommercial speech" (internal quotation marks omitted)). These considerations, however, do not alter the speech principles that bar the viewpoint discrimination embodied in the statutory provision at issue here. . . . . * * * [11] A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all. The First Amendment does not entrust that power to the government's benevolence. Instead, our reliance must be on the substantial safeguards of free and open discussion in a democratic society. [12] For these reasons, I join the Court's opinion in part and concur in the judgment. Justice THOMAS, concurring in part and concurring in the judgment. . . . . [1] I also write separately because "I continue to believe that when the government seeks to restrict truthful speech in order to suppress the ideas it conveys, strict scrutiny is appropriate, whether or not the speech in question may be characterized as 'commercial. ' [2] Respondent Erik Brunetti is an artist and entrepreneur who founded a clothing line that uses the trademark FUCT. According to Brunetti, the mark (which functions as the clothing's brand name) is pronounced as four letters, one after the other: F-U-C-T. But you might read it differently and, if so, you would hardly be alone. See Tr. of Oral Arg. 5 (describing the brand name as "the equivalent of [the] past participle form of a well-known word of profanity"). That common perception caused difficulties for Brunetti when he tried to register his mark with the U.S. Patent and Trademark Office (PTO). [3] Under the Lanham Act, the PTO administers a federal registration system for trademarks. See 15 U.S. C. § § 1051, 1052. Registration of a mark is not mandatory. The owner of an unregistered mark may still use it in commerce and enforce it against infringers. But registration gives trademark owners valuable benefits. For example, registration constitutes "prima facie evidence" of the mark's validity. § 1115(a). And registration serves as "constructive notice of the registrant's claim of ownership," which forecloses some defenses in infringement actions. § 1072. Generally, a trademark is eligible for registration, and receipt of such benefits, if it is "used in commerce." § 1051(a)(1). But the Act directs the PTO to "refuse[ ] registration" of certain marks. § 1052. For instance, the PTO cannot register a mark that "so resembles" another mark as to create a likelihood of confusion. § 1052(d). It cannot register a mark that is "merely descriptive" of the goods on which it is used. § 1052(e). It cannot register a mark containing the flag or insignia of any nation or State. See § 1052(b). There are five or ten more (depending on how you count). And until we invalidated the criterion two years ago, the PTO could not register a mark that "disparage[d]" a "person[ ], living or dead." § 1052(a); see Tam, 582 U.S. ___. [4] This case involves another of the Lanham Act's prohibitions on registration-one applying to marks that "[c]onsist[ ] of or comprise[ ] immoral[ ] or scandalous matter." § 1052(a). The PTO applies that bar as a "unitary provision," rather than treating the two adjectives in it separately. In re Brunetti, 877 F. 3d 1330, 1336 (CA Fed. 2017). To determine whether a mark fits in the category, the PTO asks whether a "substantial composite of the general public" would find the mark "shocking to the sense of truth, decency, or propriety"; "giving offense to the conscience or moral feelings"; "calling out for condemnation"; "disgraceful"; "offensive"; "disreputable"; or "vulgar." 877 F. 3d, at 1336 (internal quotation marks omitted). [5] Both a PTO examining attorney and the PTO's Trademark Trial and Appeal Board decided that Brunetti's mark flunked that test. The attorney determined that FUCT was "a total vulgar" and "therefore[ ] unregistrable." On review, the Board stated that the mark was "highly offensive" and "vulgar," and that it had "decidedly negative sexual connotations." As part of its review, the Board also considered evidence of how Brunetti used the mark. It found that Brunetti's website and products contained imagery, near the mark, of "extreme nihilism" and "anti-social" behavior. In that context, the Board thought, the mark communicated "misogyny, depravity, [and] violence." The Board concluded: "Whether one considers [the mark] as a sexual term, or finds that [Brunetti] has used [the mark] in the context of extreme misogyny, nihilism or violence, we have no question but that [the term is] extremely offensive." [6] Brunetti then brought a facial challenge to the "immoral or scandalous" bar in the Court of Appeals for the Federal Circuit. That court found the prohibition to violate the First Amendment. As usual when a lower court has invalidated a federal statute, we granted certiorari. II [7] This Court first considered a First Amendment challenge to a trademark registration restriction in Tam, just two Terms ago. There, the Court declared unconstitutional the Lanham Act's ban on registering marks that "disparage" any "person[ ], living or dead." § 1052(a). The eight-Justice Court divided evenly between two opinions and could not agree on the overall framework for deciding the case. (In particular, no majority emerged to resolve whether a Lanham Act bar is a condition on a government benefit or simple restriction on speech.) But all the Justices agreed on two propositions. First, if a trademark registration bar is viewpoint-based, it is unconstitutional. And second, the disparagement bar was viewpointbased. [8] The Justices thus found common ground in a core postulate of free speech law: The government may not discriminate against speech based on the ideas or opinions it conveys. See Rosenberger v. Rector and Visitors of Univ. of Va., 515 U.S. 819, 829-830 (1995) (explaining that viewpoint discrimination is an "egregious form of content discrimination" and is "presumptively unconstitutional"). In Justice Kennedy's explanation, the disparagement bar allowed a trademark owner to register a mark if it was "positive" about a person, but not if it was "derogatory." Tam (slip op., at 2). That was the "essence of viewpoint discrimination," he continued, because "[t]he law thus reflects the Government's disapproval of a subset of messages it finds offensive." Id. (slip op., at 2-3). JUSTICE ALITO emphasized that the statute "denie[d] registration to any mark" whose disparaging message was "offensive to a substantial percentage of the members of any group." Id. (slip op., at 22). The bar thus violated the "bedrock First Amendment principle" that the government cannot discriminate against "ideas that offend." Id. (slip op., at 1-2). Slightly different explanations, then, but a shared conclusion: Viewpoint discrimination doomed the disparagement bar. [9] If the "immoral or scandalous" bar similarly discriminates on the basis of viewpoint, it must also collide with our First Amendment doctrine. The Government does not argue otherwise. In briefs and oral argument, the Government offers a theory for upholding the bar if it is viewpoint-neutral (essentially, that the bar would then be a reasonable condition on a government benefit). But the Government agrees that under Tam it may not "deny registration based on the views expressed" by a mark. "As the Court's Tam decision establishes," the Government says, "the criteria for federal trademark registration" must be "viewpoint-neutral to survive Free Speech Clause review." Pet. for Cert. 19. So the key question becomes: Is the "immoral or scandalous" criterion in the Lanham Act viewpointneutral or viewpoint-based? [10] It is viewpoint-based. The meanings of "immoral" and "scandalous" are not mysterious, but resort to some dictionaries still helps to lay bare the problem. When is expressive material "immoral"? According to a standard definition, when it is "inconsistent with rectitude, purity, or good morals"; "wicked"; or "vicious." Webster's New International Dictionary 1246 (2d ed. 1949). Or again, when it is "opposed to or violating morality"; or "morally evil." Shorter Oxford English Dictionary 961 (3d ed. 1947). So the Lanham Act permits registration of marks that champion society's sense of rectitude and morality, but not marks that denigrate those concepts. And when is such material "scandalous"? Says a typical definition, when it "giv[es] offense to the conscience or moral feelings"; "excite[s] reprobation"; or "call[s] out condemnation." Webster's New International Dictionary, at 2229. Or again, when it is "shocking to the sense of truth, decency, or propriety"; "disgraceful"; "offensive"; or "disreputable." Funk & Wagnalls New Standard Dictionary 2186 (1944). So the Lanham Act allows registration of marks when their messages accord with, but not when their messages defy, society's sense of decency or propriety. Put the pair of overlapping terms together and the statute, on its face, distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them; those inducing societal nods of approval and those provoking offense and condemnation. The statute favors the former, and disfavors the latter. "Love rules"? "Always be good"? Registration follows. "Hate rules"? "Always be cruel"? Not according to the Lanham Act's "immoral or scandalous" bar. [11] The facial viewpoint bias in the law results in viewpoint-discriminatory application. Recall that the PTO itself describes the "immoral or scandalous" criterion using much the same language as in the dictionary definitions recited above. The PTO, for example, asks whether the public would view the mark as "shocking to the sense of truth, decency, or propriety"; "calling out for condemnation"; "offensive"; or "disreputable." Using those guideposts, the PTO has refused to register marks communicating "immoral" or "scandalous" views about (among other things) drug use, religion, and terrorism. But all the while, it has approved registration of marks expressing more accepted views on the same topics. 19,2018). Of course, all these decisions are understandable. The rejected marks express opinions that are, at the least, offensive to many Americans. But as the Court made clear in Tam, a law disfavoring "ideas that offend" discriminates based on viewpoint, in violation of the First Amendment. Tam (opinion of ALITO, J.) (slip op., at 2); see id. (slip op., at 22-23); id. (opinion of Kennedy, J.) (slip op., at 2-3). [13] How, then, can the Government claim that the "immoral or scandalous" bar is viewpoint-neutral? The Government basically asks us to treat decisions like those described above as PTO examiners' mistakes. Still more, the Government tells us to ignore how the Lanham Act's language, on its face, disfavors some ideas. In urging that course, the Government does not dispute that the statutory language-and words used to define ithave just that effect. At oral argument, the Government conceded: "[I]f you just looked at the words like 'shocking' and 'offensive' on their face and gave them their ordinary meanings[,] they could easily encompass material that was shocking [or offensive] because it expressed an outrageous point of view or a point of view that most members" of society reject. Tr. of Oral Arg. 6. But no matter, says the Government, because the statute is "susceptible of" a limiting construction that would remove this viewpoint bias. Id., at 7 (arguing that the Court should "attempt to construe [the] statute in a way that would render it constitutional"). The Government's idea, abstractly phrased, is to narrow the statutory bar to "marks that are offensive [or] shocking to a substantial segment of the public because of their mode of expression, independent of any views that they may express." Id., at 11 (emphasis added). More concretely, the Government explains that this reinterpretation would mostly restrict the PTO to refusing marks that are "vulgar"-meaning "lewd," "sexually explicit or profane." Id., at 27, 30. Such a reconfigured bar, the Government says, would not turn on viewpoint, and so we could uphold it. [14] But we cannot accept the Government's proposal, because the statute says something markedly different. This Court, of course, may interpret "ambiguous statutory language" to "avoid serious constitutional doubts." FCC v. Fox Television Stations, Inc., 556 U.S. 502, 516 (2009). But that canon of construction applies only when ambiguity exists. "We will not rewrite a law to conform it to constitutional requirements." United States v. Stevens, 559 U.S. 460, 481 (2010) (internal quotation marks and alteration omitted). So even assuming the Government's reading would eliminate First Amendment problems, we may adopt it only if we can see it in the statutory language. And we cannot. The "immoral or scandalous" bar stretches far beyond the Government's proposed construction. The statute as written does not draw the line at lewd, sexually explicit, or profane marks. Nor does it refer only to marks whose "mode of expression," independent of viewpoint, is particularly offensive. It covers the universe of immoral or scandalous-or (to use some PTO synonyms) offensive or disreputable-material. Whether or not lewd or profane. Whether the scandal and immorality comes from mode or instead from viewpoint. To cut the statute off where the Government urges is not to interpret the statute Congress enacted, but to fashion a new one. * [15] And once the "immoral or scandalous" bar is interpreted fairly, it must be invalidated. The Government just barely argues otherwise. In the last paragraph of its brief, the Government gestures toward the idea that the provision is salvageable by virtue of its constitutionally permissible applications (in the Government's view, its applications to lewd, sexually explicit, or profane marks). In other words, the Government invokes our First Amendment overbreadth doctrine, and asks us to uphold the statute against facial attack because its unconstitutional applications are not "substantial" relative to "the statute's plainly legitimate sweep." Stevens, 559 U.S., at 473. But to begin with, this Court has never applied that kind of analysis to a viewpoint-discriminatory law. In Tam, for example, we did not pause to consider whether the disparagement clause might admit some permissible applications (say, to certain libelous speech) before striking it down. The Court's finding of viewpoint bias ended the matter. And similarly, it seems unlikely we would compare permissible and impermissible applications if Congress outright banned "offensive" (or to use some other examples, "divisive" or "subversive") speech. Once we have found that a law "aim[s] at the suppression of " views, why would it matter that Congress could have captured some of the same speech through a viewpoint-neutral statute? Tam (opinion of Kennedy, J.) (slip op., at 2). But in any event, the "immoral or scandalous" bar is substantially overbroad. There are a great many immoral and scandalous ideas in the world (even more than there are swearwords), and the Lanham Act covers them all. It therefore violates the First Amendment. * We reject the dissent's statutory surgery for the same reason. Although conceding that the term "immoral" cannot be saved, the dissent thinks that the term "scandalous" can be read as the Government proposes. See post, at 1-2 (SOTOMAYOR, J., concurring in part and dissenting in part). But that term is not "ambiguous," as the dissent argues, post, at 3; it is just broad. Remember that the dictionaries define it to mean offensive, disreputable, exciting reprobation, and so forth. See supra, at 5-6; post, at 3 (accepting those definitions). Even if hived off from "immoral" marks, the category of scandalous marks thus includes both marks that offend by the ideas they convey and marks that offend by their mode of expression. And its coverage of the former means that it discriminates based on viewpoint. We say nothing at all about a statute that covers only the latter-or, in the Government's more concrete description, a statute limited to lewd, sexually explicit, and profane marks. Nor do we say anything about how to evaluate viewpoint-neutral restrictions on trademark registration, see post, at 14-17-because the "scandalous" bar (whether or not attached to the "immoral" bar) is not one. [16] We accordingly affirm the judgment of the Court of Appeals. [1] For the reasons explained in the opinion of the Court, the provision of the Lanham Act at issue in this case violates the Free Speech Clause of the First Amendment because it discriminates on the basis of viewpoint and cannot be fixed without rewriting the statute. Viewpoint discrimination is poison to a free society. But in many countries with constitutions or legal traditions that claim to protect freedom of speech, serious viewpoint discrimination is now tolerated, and such discrimination has become increasingly prevalent in this country. At a time when free speech is under attack, it is especially important for this Court to remain firm on the principle that the First Amendment does not tolerate viewpoint discrimination. We reaffirm that principle today. [2] Our decision is not based on moral relativism but on the recognition that a law banning speech deemed by government officials to be "immoral" or "scandalous" can easily be exploited for illegitimate ends. Our decision does not prevent Congress from adopting a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas. The particular mark in question in this case could be denied registration under such a statute. The term suggested by that mark is not needed to express any idea and, in fact, as commonly used today, generally signifies nothing except emotion and a severely limited vocabulary. The registration of such marks serves only to further coarsen our popular culture. But we are not legislators and cannot substitute a new statute for the one now in force. Chief Justice ROBERTS, concurring in part and dissenting in part. [1] The Lanham Act directs the Patent and Trademark Office to refuse registration to marks that consist of or comprise "immoral, deceptive, or scandalous matter." 15 U.S. C. § 1052(a). Although the statute lists "immoral" and "scandalous" separately, the PTO has long read those terms together to constitute a unitary bar on "immoral or scandalous" marks. [2] The Government concedes that the provision so read is broad enough to reach not only marks that offend because of their mode of expression (such as vulgarity and profanity) but also marks that offend because of the ideas they convey. The Government urges, however, that the provision can be given a narrowing construction-it can be understood to cover only marks that offend because of their mode of expression. [3] The Court rejects that proposal on the ground that it would in effect rewrite the statute. I agree with the majority that the "immoral" portion of the provision is not susceptible of a narrowing construction that would eliminate its viewpoint bias. As JUSTICE SOTOMAYOR explains, however, the "scandalous" portion of the provision is susceptible of such a narrowing construction. Standing alone, the term "scandalous" need not be understood to reach marks that offend because of the ideas they convey; it can be read more narrowly to bar only marks that offend because of their mode of expression-marks that are obscene, vulgar, or profane. That is how the PTO now understands the term, in light of our decision in Matal v. Tam, 582 U.S. ___ (2017). I agree with JUSTICE SOTOMAYOR that such a narrowing construction is appropriate in this context. [4] I also agree that, regardless of how exactly the trademark registration system is best conceived under our precedents-a question we left open in Tam-refusing registration to obscene, vulgar, or profane marks does not offend the First Amendment. Whether such marks can be registered does not affect the extent to which their owners may use them in commerce to identify goods. No speech is being restricted; no one is being punished. The owners of such marks are merely denied certain additional benefits associated with federal trademark registration. The Government, meanwhile, has an interest in not associating itself with trademarks whose content is obscene, vulgar, or profane. The First Amendment protects the freedom of speech; it does not require the Government to give aid and comfort to those using obscene, vulgar, and profane modes of expression. For those reasons, I concur in part and dissent in part. Justice BREYER, concurring in part and dissenting in part. . . . . [5] I would conclude that the prohibition on registering "scandalous" marks does not "wor[k] harm to First Amendment interests that is disproportionate in light of the relevant regulatory objectives." Reed, 576 U.S., at ___ (opinion of BREYER, J.) (slip op., at 4). I would therefore uphold this part of the statute. I agree with the Court, however, that the bar on registering "immoral" marks violates the First Amendment. Because JUSTICE SOTOMAYOR reaches the same conclusions, using roughly similar reasoning, I join her opinion insofar as it is consistent with the views set forth here. Justice SOTOMAYOR, with whom Justice BREYER joins, concurring in part and dissenting in part. [1] The Court's decision today will beget unfortunate results. With the Lanham Act's scandalous-marks provision, 15 U.S. C. § 1052(a), struck down as unconstitutional viewpoint discrimination, the Government will have no statutory basis to refuse (and thus no choice but to begin) registering marks containing the most vulgar, profane, or obscene words and images imaginable. [2] The coming rush to register such trademarks-and the Government's immediate powerlessness to say no-is eminently avoidable. Rather than read the relevant text as the majority does, it is equally possible to read that provision's bar on the registration of "scandalous" marks to address only obscenity, vulgarity, and profanity. Such a narrowing construction would save that duly enacted legislative text by rendering it a reasonable, viewpoint-neutral restriction on speech that is permissible in the context of a beneficial governmental initiative like the trademark-registration system. I would apply that narrowing construction to the term "scandalous" and accordingly reject petitioner Erik Brunetti's facial challenge. I . . . . [3] Here, Congress used not only the word "scandalous," but also the words "immoral" and "disparage," in the same block of statutory text-each as a separate feature that could render a mark unregistrable. See § 1052(a). Tam already decided that "disparage" served to prohibit marks that were offensive because they derided a particular person or group. See 582 U.S., at ___ (opinion of ALITO, J.) (slip op., at 22) ("It denies registration to any mark that is offensive to a substantial percentage of the members of any group"); id., at ___ (opinion of Kennedy, J.) (slip op., at 2) ("[A]n applicant may register a positive or benign mark but not a derogatory one"). That defines one of the three words. Meanwhile, as the majority explains, the word "immoral" prohibits marks that are offensive because they transgress widely held moral beliefs. See ante, at 5. That defines a second of the three words. [4] With marks that are offensive because they are disparaging and marks that are offensive because they are immoral already covered, what work did Congress intend for "scandalous" to do? A logical answer is that Congress meant for "scandalous" to target a third and distinct type of offensiveness: offensiveness in the mode of communication rather than the idea. The other two words cover marks that are offensive because of the ideas they express; the "scandalous" clause covers marks that are offensive because of the mode of expression, apart from any particular message or idea. [5] To be sure, there are situations in which it makes sense to treat adjoining words as expressing the same or highly similar concepts (even at the risk of some redundancy). Cf. Swearingen v. United States, 161 U.S. 446, 450 (1896) (construing "'obscene, lewd or lascivious'" to have a unified meaning). That is essentially the approach that the majority takes. See ante, at 6.foot_15 But that is not the approach that Congress appears to have intended here. For example, "scandalous" does not serve as a broader catchall at the end of a list of similar words that all point in one direction. E.g., Washington State Dept. of Social and Health Servs. v. Guardianship Estate of Keffeler, 537 U.S. 371, 384 (2003). Nor is "scandalous" simply grouped among a number of closely related terms that help define its meaning. E.g., Gustafson v. Alloyd Co., 513 U.S. 561, 575 (1995). [6] The text of § 1052, instead, is a grab bag: It bars the registration of marks featuring "immoral, deceptive, or scandalous matter," as well as, inter alia, disparaging marks, flags, insignias, mislabeled wines, and deceased Presidents. See § § 1052(a)-(e). This is not, in other words, a situation in which Congress was simply being "verbos[e] and proli[x]," Bruesewitz v. Wyeth LLC, 562 U.S. 223, 236 (2011), using two synonyms in rapid-fire succession when one would have done fine. Instead, "scandalous" and "immoral" are separated by an unrelated word ("deceptive") and mixed in with a lengthy series of other, unrelated concepts. The two therefore need not be interpreted as mutually reinforcing under the Court's precedents. See save a statute from unconstitutionality"). In directing the PTO to deny the ancillary benefit of registration to trademarks featuring "scandalous" content, Congress used a word that is susceptible of different meanings. The majority's reading would render the provision unconstitutional; mine would save it. Under these circumstances, the Court ought to adopt the narrower construction, rather than permit a rush to register trademarks for even the most viscerally offensive words and images that one can imagine. 13 [13] That said, I emphasize that Brunetti's challenge is a facial one. That means that he must show that "'a substantial number of [the scandalous-marks provision's] applications are unconstitutional, judged in relation to the [provision's] plainly legitimate sweep.'" United States v. Stevens, 559 U.S. 460, 473 (2010). With "scandalous" narrowed to reach only obscene, profane, and vulgar content, provision would not be overly broad. Cf. Frisby, 487 U.S., at 488 (rejecting a facial challenge after adopting a limiting construction); Boos, 485 U.S., at 331 (same). Even so, hard cases would remain, and I would expect courts to take seriously as-applied challenges demonstrating a danger that the provision had been used to restrict speech based on the views expressed rather than the mode of expression. 14 Cf. Finley, 524 U.S., at 587 (reserving the possibility of as-applied challenges). [14] Freedom of speech is a cornerstone of our society, and the First Amendment protects Brunetti's right to use words like the one at issue here. The Government need not, however, be forced to confer on Brunetti's trademark (and some more extreme) the ancillary benefit of trademark registration, when "scandalous" in § 1052(a) can reasonably be read to bar the registration of only those marks that are obscene, vulgar, or profane. Though I concur as to the unconstitutionality of the term "immoral" in § 1052(a), I respectfully dissent as to the term "scandalous" in the same statute and would instead uphold it under the narrow construction discussed here. The opinions that make up Vidal v. Elster are quite lengthy. Justice Thomas's opinion for the majority of the Court is especially extra. It has been included here largely as is because part of its rhetorical strategy appears to be to project, like the "Wall of Sound" style of music, a "wall of history." Justice Barrett's and Justice Sotomayor's concurrences have been more 13 As noted above, I agree with the majority that § 1052(a)'s bar on the registration of "immoral" marks is unconstitutional viewpoint discrimination. See supra, at 2. I would simply sever that provision and uphold the bar on "scandalous" marks. See Reno v. American Civil Liberties Union, 521 U. S. 844, 882-883 (1997); Brockett v. Spokane Arcades, Inc., 472 U. S. 491, 504-507 (1985); see also Tam, 582 U. S., at ___ (slip op., at 26) (striking down only the disparagement clause). 14 The majority adverts to details in the record that could call into question whether the PTO engaged in viewpoint discrimination in this very case. See ante, at 3. Because a facial challenge is the only challenge before the Court, I do not address whether an as-applied challenge could have merit here. [5] Steve Elster sought to register the trademark "Trump too small," accompanied by an illustration of a hand gesture, to use on shirts and hats. The mark draws on an exchange between then-candidate Donald Trump and Senator Marco Rubio during a 2016 Presidential primary debate. [6] The PTO examiner refused registration under the names clause because the mark used President Trump's name without his consent. The Trademark Trial and Appeal Board affirmed, and it also rejected Elster's argument that the names clause violates his First Amendment right to free speech. 1 The Federal Circuit reversed, holding that the names clause violated the First Amendment. In re Elster, 26 F. 4th 1328 (CA Fed. 2022). The court first concluded that the names clause is a viewpoint-neutral, content-based restriction on speech subject to at least intermediate scrutiny. See id., at 1331, 1333-1334. It next concluded that the Government could not satisfy even intermediate scrutiny because the names clause does not advance any substantial governmental interest. See id., at 1339. [7] We granted certiorari to resolve whether the Lanham Act's names clause violates the First Amendment. 598 U. S. ___, 143 S. Ct. 2579, 216 L. Ed. 2d 1192 (2023). II A [8] The First Amendment provides that "Congress shall make no law . . . abridging the freedom of speech." In general, we have held that the First Amendment prohibits the Government from restricting or burdening "expression because of its message, its ideas, its subject matter, or its content." Ashcroft v. American Civil Liberties Union, 535 U. S. 564, 573 (2002) (internal quotation marks omitted). "When enforcing this prohibition, our precedents distinguish between content-based and content-neutral regulations of speech." National Institute of Family and Life Advocates v. Becerra, 585 U. S. 755, 766 (2018). A content-based regulation "target[s] speech based on its communicative content," restricting discussion of a subject matter or topic. Reed v. Town of Gilbert, 576 U. S. 155, 163 (2015). "As a general matter," a content-based regulation is "'presumptively unconstitutional and may be justified only if the government proves that [it is] narrowly tailored to serve compelling state interests.'" National Institute of Family and Life Advocates, 585 U. S., at 766. Our precedents distinguish further a particularly "egregious form of content discrimination"-viewpoint discrimination. Rosenberger v. Rector and Visitors of Univ. of Va., 515 U. S. 819, 829 (1995). A viewpoint-based regulation targets not merely a subject matter, "but particular views taken by speakers on a subject." Ibid. It is also generally subject to heightened scrutiny, though viewpoint discrimination's "violation of the First Amendment is . . . more blatant." Ibid. Because our precedents dictate that these distinctions inform our assessment under the First Amendment, we start with them to evaluate the names clause. [17] Although there was an early push for federal legislation to protect trademarks, no such law was enacted during our country's infancy. See B. Paster, Trademarks-Their Early History, 59 Trademark Rep. 551, 565-566 (1969); see also F. Schechter, Historical Foundations of the Law Relating to Trade-Marks 131 (1925) (Schechter). Instead, trademark law fell largely within "the province of the States" for the 18th and most of the 19th century. Tam, 582 U. S., at 224. For example, Massachusetts passed a private bill incorporating a cotton corporation on the condition that it affix a label to its goods "with the seal of the said Corporation." 1 Mass. Private and Special Laws, 1789, ch. 43, §5, p. 226 (1805). The law also prevented others from "us[ing] a like seal or label" by subjecting them to treble damages. Ibid. To be sure, for most of our first century, most commerce was local and most consumers therefore knew the source of the goods they purchased. See R. Bone, Hunting Goodwill: A History of the Concept of Goodwill in Trademark Law, 86 B. U. L. Rev. 547, 575 (2006). "[E]ven as late as 1860 the term 'trademark' really denoted only the name of the manufacturer." B. Pattishall, Two Hundred Years of American Trademark Law, 68 Trademark Rep. 121, 128 (1978). There was nonetheless "a certain amount of litigation in the state courts in the early nineteenth century," though it went unrecorded. Schechter 133. [18] The "first reported American decision that may be described as a trademark case" involved a dispute over the content of a mark-and in particular, the use of a person's name. Pattishall, Constitutional Foundations, at 460. In Thomson v. Winchester, 36 Mass. 214, 216, 19 Pick. 214 (1837), Samuel Thomson-who sold a medicine under the name "Thomsonian Medicines"-brought suit against another Massachusetts druggist who sold an allegedly inferior product under the same name. The court held that the druggist could be liable for fraud if he passed the medicine off as that of Thomson. Ibid. [19] In a similar vein, the first reported trademark case in federal court revolved around a trademark's content. Justice Story, sitting as Circuit Justice, granted an injunction to prohibit a seller of spools from infringing on the plaintiff 's trademark of "Taylor's Persian Thread." Taylor v. Carpenter, 23 F. Cas. 742 (D. Mass. 1844). Justice Story explained that, by using the trademark, the seller "imitated . . . both descriptions of spools and labels, red and black, of the plaintiffs," and that the principles prohibiting such infringement were at that time "very familiar to the profession" and not "susceptible of any judicial doubt." Id., at 464. [20] Recorded trademark law began to take off in the last decades of the 19th centuryafter the ratification of the Fourteenth Amendment in 1868-and its established contentbased nature continued. See Schechter 134; Pattishall, Two Hundred Years, at 133. American commerce became more national in character, and, perhaps because of this shift, Congress enacted the first federal trademark law in 1870. Although States retained their important role, "Congress stepped in to provide a degree of national uniformity" for trademark protection. Tam, 582 U. S., at 224 (citing Act of July 8, 1870, § §77-84).foot_17 [21] This first law contained prohibitions on what could be protected as a trademark. For example, the law would not protect a trademark that contained "merely the name of a person . . . only, unaccompanied by a mark sufficient to distinguish it from the same name when used by other persons." Id., at 211. It thus restricted a trademark based upon its content (i.e., whether it contained more than a name). As trademark disputes increased, courts continued to assess trademarks based on their content. For example, this Court's first trademark decision explained that a trademark cannot consist of a purely geographical name, rejecting an attempt by one of several coal producers in Pennsylvania's Lackawanna Valley to trademark "Lackawanna coal." Canal Co. v. Clark, 80 U.S. 311 (1872). Throughout its development, trademark law has required content-based distinctions. [22] That did not change when Congress enacted the Lanham Act in 1946. The Act's comprehensive system for federal registration of trademarks continues to distinguish based on a mark's content. See Restatement (Third) of Unfair Competition §9, Comment e (1993) (Restatement) ("The Lanham Act is generally declarative of existing law, incorporating the principal features of common law trademark protection"). The Act defines a trademark to include "any word, name, symbol, or device, or any combination thereof " that a person uses "to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods." §1127. When the Government defines what may be registered as a trademark, it necessarily decides that some words or images cannot be used in a mark. To take one example, the Lanham Act bars the registration of "a mark which so resembles [another's] mark . . . as to be likely . . . to cause confusion, or to cause mistake, or to deceive." §1052(d). It is impossible to determine whether one trademark is the same as (or confusingly similar to) another without looking at the content of the two marks. [23] This history, reflected in the Lanham Act still today, demonstrates that restrictions on trademarks have always turned on a mark's content. But, despite its content-based nature, trademark law has existed alongside the First Amendment from the beginning. That longstanding, harmonious relationship suggests that heightened scrutiny need not always apply in this unique context. [24] The content-based nature of trademark protection is compelled by the historical rationales of trademark law. A trademark has generally served two functions: "indicating ownership of the goods to which it [is] affixed" and "indicating the source or origin of manufacture." Schechter 122. Indicating ownership of a good was needed in part to "fi[x] responsibility for defective merchandise." Restatement §9, Comment b. And, indicating the source of the good helped "prospective purchasers . . . make their selections based upon the reputation, not merely of the immediate vendor, but also of the manufacturer." Ibid. Both goals thus reflect that trademarks developed historically to identify for consumers who sold the goods (the vendor) and who made the goods (the manufacturer). See ibid. In that vein, a Court held that the law exceeded Congress's power under the Commerce Clause. See Trade-Mark Cases, 100 U. S. 82, 99, 25 L. Ed. 550, 1879 Dec. Comm'r Pat. 619 (1879). The law drew no challenge under the First Amendment. basic function of trademark law has always been to "prohibi[t] confusion as to the source of good or services." Pattishall, Constitutional Foundations, at 458; see also Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U. S. 140, 147 (2023) ("Confusion as to source is the bête noire of trademark law"). Indicating ownership and the manufacturing source touch on the content of the mark-i.e., from whom the product came. And, as we have explained, policing trademarks so as to prevent confusion over the source of goods requires looking to the mark's content. Supra, at 10. [25] Because of the uniquely content-based nature of trademark regulation and the longstanding coexistence of trademark regulation with the First Amendment, we need not evaluate a solely content-based restriction on trademark registration under heightened scrutiny. See R. A. V., 505 U. S., at 387 ("Even the prohibition against content discrimination that we assert the First Amendment requires is not absolute"); Jack Daniel's, 599 U. S., at 159 (explaining that, in some circumstances, "trademark law [can] prevai[l] over the First Amendment" (internal quotation marks omitted)); post, at 6 (opinion of Sotomayor, J.); post, at 6-7 (opinion of Barrett, J.). [26] We have acknowledged that trademark rights and restrictions can "play well with the First Amendment." Jack Daniel's, 599 U. S., at 159 (internal quotation marks omitted). In this case, we do not delineate an exhaustive framework for when a content-based trademark restriction passes muster under the First Amendment. But, in evaluating a solely contentbased trademark restriction, we can consider its history and tradition, as we have done before when considering the scope of the First Amendment. See City of Austin v. Reagan Nat. Advertising of Austin, LLC, 596 U. S. 61, 75 (2022); id., at 101 (Thomas, J., dissenting); R. A. V., 505 U. S., at 382-383; Roth v. United States, 354 U. S. 476, 482-483 (1957). [27] The Lanham Act's names clause has deep roots in our legal tradition. Our courts have long recognized that trademarks containing names may be restricted. And, these name restrictions served established principles. This history and tradition is sufficient to conclude that the names clause-a content-based, but viewpoint-neutral, trademark restriction-is compatible with the First Amendment. We need look no further in this case. [28] Restrictions on trademarking names have a long history. See generally 2 McCarthy §13:5. Such restrictions have historically been grounded in the notion that a person has ownership over his own name, and that he may not be excluded from using that name by another's trademark. As the Court has explained, "[a] man's name is his own property, and he has the same right to its use and enjoyment as he has to that of any other species of property." Brown Chemical Co. v. Meyer, 139 U. S. 540, 544 (1891). It is therefore "an elementary principle that every man is entitled to the use of his own name in his own business." F. Treadway, Personal Trade-Names, 6 Yale L. J. 141, 143-144 (1897) (Treadway); see also A. Greeley, Foreign Patent and Trademark Laws §138, p. 135 (1899) ("The right of any one to place his own name on goods sold by him is recognized as a natural right and cannot be interfered with"). "The notion that people should be able to use their own name to identify their goods or business is deeply rooted in American mores." B. Pattishall, D. Hilliard, & J. Welch, Trademarks and Unfair Competition §2.06 (2001). [29] Recognizing a person's ownership over his name, the common law restricted the trademarking of names. It prevented a person from trademarking any name-even his ownby itself. In "the early years of trademark law," courts recognized that " there can be no trademark in the name of a person, because . . . every person has the right to use his own name for the purposes of trade." 2 McCarthy §13:5 (internal quotation marks omitted); see also Restatement §14, Comment e ("[A]t early common law, the recognition of an unencumbered right to use one's name in trade effectively precluded the existence of trademark or trade name rights in personal names"); W. Browne, Law of Trade-Marks §206, p. 219 (2d ed. 1885) ("The rule is, that a man cannot turn his mere name into a trade-mark"); McLean v. Fleming, 96 U. S. 245, 252, 24 L. Ed. 828, 1878 Dec. Comm'r Pat. 262 (1878) (explaining that a person cannot obtain "the exclusive use of a name, merely as such, without more"). [30] The common law did, however, allow a person to obtain a trademark containing his own name-with a caveat: A person could not use a mark containing his name to the exclusion of a person with the same name. "A corollary of the right to use one's own name and identity in trade is the right to stop others from doing so-at least those who don't share the same name." J. Rothman, Navigating the Identity Thicket, 135 Harv. L. Rev. 1271, 1306 (2022); see also Treadway 143-144. In other words, a person's right to his name cannot be exclusive as to other people bearing the same name: John Smith cannot acquire a trademark that prohibits other John Smiths from using their own names. See McLean, 96 U. S., at 252 ("[H]e cannot have such a right, even in his own name, as against another person of the same name, unless such other person uses a form of stamp or label so like that used by the complaining party as to represent that the goods of the former are of the latter's manufacture"); accord, Brown Chemical, 139 U. S., at 542; MeNeely v. MeNeely, 62 N. Y. 427, 432 (Ct. App. 1875); see also Treadway 143; accord, post, at 10 (opinion of Barrett, J.). Consider the case of John L. Faber and John H. Faber, two men who independently manufactured lead pencils near Nuremberg, Germany. Both men stamped the pencils they manufactured with their shared surname. After recognizing that each man "had the right to put his own name on his own pencils," the New York Supreme Court declined to allow one man to effectively trademark the other man's name. Faber v. Faber, 3 Abb. Pr. (N. S.) 115, 116 (1867). [31] We see no evidence that the common law afforded protection to a person seeking a trademark of another living person's name. To the contrary, English courts recognized that selling a product under another person's name could be actionable fraud. See, e.g., Singleton, 3 Dougl. 293, 99 Eng. Rep. 661; Croft v. Day, 7 Beav. 84, 88, 49 Eng. Rep. 994, 996 (1843) ("[N]o man has a right to sell his goods as the goods of another"). This recognition carried over to our country. See McLean, 96 U. S., at 252 ("[I]t is doubtless correct to say that a person may have a right in his own name as a trade-mark as against a trader or dealer of a different name"); see also Faber, 3 Abb. Pr. (N. S.), at 116. Even in the absence of fraud, it would be difficult, if not impossible, to square such a right to trademark another person's name with our established understanding that "[a] person may have a right in his own name as a trade- Slokevage admits that the configuration she is seeking to protect is "trade dress" and thus we will accept for purposes of this appeal that the configuration is "trade dress." http://www.thefashionlaw.com/home/louis-vuitton-lvl-xiii-head-back-to-court-over-sneakertop-plates?rq=LVL%20XIII. The interrelationship between these inquiries is also reflected in Professor McCarthy's discussion of common geometric shapes:Most common geometric shapes are regarded as not being inherently distinctive, in view of the common use of such shapes in all areas of advertising. Thus, such ordinary shapes as circles, ovals, squares, etc., either when used alone or as a background for a word mark, cannot function as a separate mark unless (1) the shape is likely to create a commercial impression on the buyer separate from the word mark or any other indicia and (2) the shape is proven to have secondary meaning . . . . The rationale is that such designs have been so widely and commonly used as mere decorative graphic elements that the originindicating ability of such designs has been diminished. 1 MCCARTHY ON TRADEMARKS § 7:29, at 7-73-74 (footnotes omitted). {Note that the prohibition on the registration of marks that "may disparage . . . persons" was held to be invalid under the Free Speech Clause of the First Amendment in Matal v. Tam, 582 U.S. 218 (2017) and the prohibition of the registration of marks that are "immoral . . . or scandalous" was held to be invalid under the same constitutional provision in Iancu v. Brunetti, 588 U.S. 388 (2019)}. Additionally, Eppendorf's experts concede that some of the suggested alternative designs would slightly increase the cost of the product. This provides further support for the conclusion that the fins are functional under the traditional definition of functionality. TrafFix suggests that there may be a requirement under Qualitex to inquire into a "significant non-reputation-related disadvantage" in aesthetic functionality cases, because aesthetic functionality was "the question involved in Qualitex." 121 S.Ct. at 1262. This statement has been criticized because "aesthetic functionality was not the central question in the Qualitex case." J. Thomas McCarthy, 1 McCarthy on Trademarks and Unfair Competition § 7:80,7-198 (4th ed. 2001). We need not decide what role, if any, the determination of a "significant non-reputation-related disadvantage" plays in aesthetic functionality cases, because aesthetic functionality is not at issue here. For example, a feature may be found functional where the feature "affects the cost or quality of the device." TrafFix, 121 S.Ct. at 1263. See Wallace Int'l Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76, 80 (2d Cir. 1990) (noting that the term "functionality" as commonly understood seems to imply "only utilitarian considerations"). In Warner Brothers, we cited as examples Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 122, 59 S.Ct. 109, 83 L.Ed.73 (1938), in which the pillow shape of a shredded wheat biscuit was deemed functional because the cost of the cereal would be increased and its quality lessened by any other form, and Fisher Stoves Inc. v. All Nighter StoveWorks, Inc., 626 F.2d 193, 195 (1st Cir. 1980), in which a twotier woodstove design was deemed functional because it improved the operation of the stove. See Warner Bros., Inc., 724 F.2d at 331. See, e.g., Industria Arredamenti Fratelli Saporiti v. Charles Craig, Ltd., 725 F.2d 18, 19 (2d Cir. 1984) (interlocking design of couch cushions was a visual "label" but served a utilitarian purpose by keeping cushions in place and was therefore functional). The intellectual property protection of fashion design has been for years a subject of controversy among commentators. Some have proposed working within the confines of the current 15 U.S.C. § 1119 provides that "[i]n any action involving a registered mark the court may determine the right to registration, order the cancellation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action. Decrees and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Patent and Trademark Office, and shall be controlled thereby." (emphasis added). "Royal" is defined, inter alia, as "of or pertaining to a king, queen, other sovereign" and informally as "a royal person; member of the royalty," or "a member of England's royal family." The Random House Dictionary of the English Language (Unabridged), p. 1677 (2nd ed. 1977). The Board may take judicial notice of dictionary definitions., Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). See also Dictionary.com attached to the October 27, 2011 Office Action. The disparagement clause also prevents a trademark from being registered on the supplemental register. § 1091(a). That interpretive move appears to accord with the Federal Circuit and the PTO's past practice. Ante, at 2-3. Nevertheless, it is by no means the only reasonable way to read this text, and indeed some courts have suggested that "scandalous" can and should be applied independently of "immoral," see, e.g., In re McGinley, 660 F. 2d 481, 485, n. 6 (CCPA 1981). The Board declined to reach the PTO examiner's alternative ground for refusing registrationthat Elster's mark "falsely suggest[s] a connection with persons, living or dead." 15 U. S. C. §1052(a). We focus only on the names clause and express no opinion about whether Elster's mark fails to meet other requirements for federal registration. This first federal trademark law "provided for the registration of trademarks generally without regard to whether they were used in interstate or foreign commerce." 1 McCarthy §5:3, at 188. This See Wal-Mart Stores, Inc., 529 U.S. at 210 (noting that the Abercrombie spectrum of distinctiveness is properly applied to word marks); see also 1 McCarthy on Trademarks § 8:13 (4th ed. 2010) (commenting that Seabrook test is preferred for classifying inherently distinctive trade dress in packaging and containers); DCNL, Inc. v. Almar Sales Co., 47 U.S.P.Q.2d 1406, 1997 WL 913941 (N.D.Cal. 1997), aff'd without opinion, 178 F.3d 1308 (9th Cir. 1998). mark, as against a person of a different name." Gilman v. Hunnewell, 122 Mass. 139, 148 (1877); see also Thaddeus Davids Co. v. Davids Mfg. Co., 233 U. S. 461, 472 (1914) (highlighting persons' "right to use their own name in trade"); Faber, 3 Abb. Pr. (N. S.), at 116 ("[T]he maker had the right to put his own name on his own pencils"). Relatedly, one could contract for the use of another person's name in his business. See, e.g., McLean, 96 U. S., at 249 (explaining that a "physician whose name the pills bear . . . sold the right to use the same" to another); see also L. E. Waterman Co. v. Modern Pen Co., 235 U. S. 88, 96 (1914); Meriden Britannia Co. v. Parker, 39 Conn. 450, 453 (1872) ("[T]hey made a contract with the petitioners, by which, and by subsequent contracts, the petitioners acquired the right . . . to manufacture and sell plated spoons and forks with the name 'Rogers' stamped thereon as a component part of a trade mark"). Such contracts would make little sense if one could use another living person's name in business at will. The common-law approach to trademarking names thus protected only a person's right to use his own name. [32] This common-law understanding carried over into federal statutory law. The first federal trademark law contained a requirement that a trademark contain more than merely a name. See Act of July 8, 1870, §79, 16 Stat. 211. That requirement remains largely intact. See §1052(e)(4) (prohibiting registration of a trademark if it "is primarily merely a surname"). A few decades later, federal trademark law emphasized "'[t]hat nothing herein shall prevent the registration of a trade-mark otherwise registerable because of its being the name of the applicant.'" Act of Feb. 18, 1911, ch. 113, 36 Stat. 918 (emphasis added). And, the Lanham Act later "incorporat[ed] the principal features of common law trademark protection," thereby "declar[ing] . . . existing law" rather than writing trademark law from scratch. Restatement §9, Comment e; see also W. Derenberg, Trade-Mark Protection and Unfair Trade 22 (1936) (explaining that the "function [of federal trademark law] is essentially an evidential one, reflecting the underlying common law trade-mark right with the existence of which it rises and falls"). It is thus unsurprising that the Lanham Act included the names clause, prohibiting the registration of a mark containing "a name . . . identifying a particular living individual except by his written consent." §1052(c). The names clause reflects the common law's careful treatment of names when it comes to trademarks. [33] The restriction on trademarking names also reflects trademark law's historical rationale of identifying the source of goods. See Hanover Star Milling Co. v. Metcalf, 240 U. S. 403, 412 (1916) ("The primary and proper function of a trade-mark is to identify the origin or ownership of the article to which it is affixed"); accord, post, at 8 (opinion of Barrett, J.). Trademark protection ensures that consumers know the source of a product and can thus evaluate it based upon the manufacturer's reputation and goodwill. See Restatement §9, Comment b; see also Powell v. Birmingham Vinegar Brewery Co., 13 Rep. Pat. Cas. 235, 250 (Ct. App. 1896) (Lindley, L. J.) ("His mark, as used by him, has given a reputation to his goods. His trade depends greatly on such reputation. His mark sells his goods"). By barring a person from using another's name, the names clause reflects the traditional rationale of ensuring that consumers make no mistake about who is responsible for a product. See also Hanover Star Milling Co., 240 U. S., at 412-413 ("The essence of the wrong [for trademark infringement] consists in the sale of the goods of one manufacturer or vendor for those of another"). [34] Moreover, the names clause respects the established connection between a trademark and its protection of the markholder's reputation. We have long recognized that a trademark protects the markholder's reputation. See McLean, 96 U. S., at 254 (explaining that a trademark "enable[s a mark-holder] to secure such profits as result from his reputation for skill, industry, and fidelity"); see also Hanover Star Milling Co., 240 U. S., at 412-413, 414; Celluloid Mfg. Co. v. Cellonite Mfg. Co., 32 F. 94, 97 (CC NJ 1887) (Bradley, J.). This protection reflects that a mark may "acquir[e] value" from a person's "expenditure of labor, skill, and money." San Francisco Arts & Athletics, Inc. v. United States Olympic Comm., 483 U. S. 522, 532 (1987) (internal quotation marks omitted); accord, McLean, 96 U. S., at 251. Accordingly, when a person uses another's mark, "the owner is robbed of the fruits of the reputation that he had successfully labored to earn." Amoskeag Mfg. Co. v. Spear & Ripley, 2 Sandf. 599, 606 (NY Super. Ct. 1849). A person's trademark is "his authentic seal," and "[i]f another uses it, he borrows the owner's reputation, whose quality no longer lies within his own control." Yale Elec. Corp. v. Robertson, 26 F. 2d 972, 974 (CA2 1928) (Hand, J.). "This is an injury, even though the borrower does not tarnish it, or divert any sales by its use; for a reputation, like a face, is the symbol of its possessor and creator, and another can use it only as a mask." Ibid. [35] This connection between a trademark and reputation is even stronger when the mark contains a person's name. " [I]s not a man's name as strong an instance of trade-mark as can be suggested?" Ainsworth v. Walmsley, 1 L. R., Eq. 518, 525 (1866). In fact, the English common law of trademarks arose from the fact that "those who sold goods . . . that were the fruit of their own labor or craftsmanship [began to] identif[y] those products . . . with their own names." Pattishall, Constitutional Foundations, at 457. As we have explained, virtually up until the Fourteenth Amendment's adoption, a trademark "really denoted only the name of the manufacturer." Pattishall, Two Hundred Years, at 128. And, this Court has long associated names with the good will they may bear. See McLean, 96 U. S., at 252; L. E. Waterman Co., 235 U. S., at 96 ("He purported to transfer to the partnership the good will attaching to his name"). The names clause thus protects "the reputation of the named individual" by preventing another person from using his name. Post, at 9 (opinion of Barrett, J.). [36] Applying these principles, we have recognized that a party has no First Amendment right to piggyback off the goodwill another entity has built in its name. In San Francisco Arts & Athletics, Inc., the Court upheld a provision of the Amateur Sports Act of 1978 that prohibited "'any person'" from using the word "'Olympic'" for certain purposes "'[w]ithout the consent'" of the U. S. Olympic Committee (USOC), and subjected violations to "'the remedies provided in the Lanham Act.'" 483 U. S., at 528 (quoting 36 U. S. C. §380(a); alteration omitted). The Court rejected the argument that the consent requirement violated the First Amendment because "Congress reasonably could conclude" that the value of the word "'Olympic' was the product of the USOC's 'own talents and energy.'" 483 U. S., at 532-533 (quoting Zacchini v. Scripps-Howard Broadcasting Co., 433 U. S. 562, 575 (1977)). Although the petitioner certainly had a First Amendment right to speak on political matters, it lacked the right to "exploit the commercial magnetism" of the word "Olympic" and the USOC's hard-won efforts in giving that word value. 483 U. S., at 539 (internal quotation marks omitted). The names clause guards a similar interest. By protecting a person's use of his name, the names clause "secur [es] to the producer the benefits of [his] good reputation." Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U. S. 189, 198 (1985); see also Pattishall, Two Hundred Years, at 121 (explaining how trademark law protects a person's "commercial identity, thereby [allowing him] to enjoy the fruits of his own labor"). [37] We conclude that a tradition of restricting the trademarking of names has coexisted with the First Amendment, and the names clause fits within that tradition. Though the particulars of the doctrine have shifted over time, the consistent through line is that a person generally had a claim only to his own name. The names clause reflects this common-law tradition by prohibiting a person from obtaining a trademark of another living person's name without consent, thereby protecting the other's reputation and goodwill. 4 [38] None of this is to say that the Government cannot innovate when it comes to trademark law. A firm grounding in traditional trademark law is sufficient to justify the content-based trademark restriction before us, but we do not opine on what may be required or sufficient in other cases. To be sure, as Justice Barrett observes, a case presenting a content-based trademark restriction without a historical analogue may require a different approach. Post, at 15. But, we need not develop such a comprehensive theory to address the relatively simple case before us today. See post, at 1 (Kavanaugh, J., concurring in part). [39] We conclude that the names clause is of a piece with a common-law tradition regarding the trademarking of names. We see no reason to disturb this longstanding tradition, which supports the restriction of the use of another's name in a trademark. [40] Our colleagues would address the names clause with two analogies. Neither is compelling in this case. Under both analogies, the test would boil down to what a judge 4 JUSTICE BARRETT takes a different approach, suggesting that a historical rule that mirrors the names clause is required. See post, at 11. But, history-focused approaches to constitutional scrutiny do not typically require a historical twin. Cf. New York State Rifle & Pistol Assn., Inc. v. Bruen, 597 U. S. 1, 30 (2022). Nor do Justice Barrett's examples undercut the names clause's historical grounding, as they raise different aspects of trademarking names. For example, she relies upon cases that concern trademarks containing "the name of a famous person, long since dead." Barrows v. Knight, 6 R. I. 434, 438 (1860); see also Stephano Bros., Inc. v. Stamatopoulos, 238 F. 89, 93 (CA2 1916) ("In this case the name adopted is a famous Egyptian historical character, who lived at least 1,000 years before the Christian era"). The part of the names clause that we address concerns only "a particular living individual['s]" name. §1052(c) (emphasis added). And, her other examples concern names that had become generic or descriptive words. See Messerole v. Tynberg, 4 Abb. Pr. (N. S.) 410, 414 (NY Ct. Com. Pl. 1868) (treating "the word 'Bismarck'" as "a popular term and one in general use"); Medlar & Holmes Shoe Co. v. Delsarte Mfg. Co., 68 N.J. Eq. 706, 46 A. 1089, 1091 (CC NJ 1900) (treating the name of the deceased French artist Delsarte as "a generic or descriptive term"). believes is "reasonable in light of the purpose" of trademark law. Post, at 5 (opinion of Sotomayor, J.); see post, at 7-8 (opinion of Barrett, J.). But, no matter the approach taken, we all agree that the names clause does not violate the First Amendment. [41] Justice Sotomayor would pull "strands of precedent" together to conclude that heightened scrutiny does not apply to trademark registration because it is a Government initiative or benefit. Post, at 8. This conclusion rests primarily upon cases in which the Government provides a cash subsidy or conditions the use of a public payroll to collect union dues. See ibid. But, those cases "occupy a special area of First Amendment case law, and they are far removed from the registration of trademarks." Tam, 582 U. S., at 241 (plurality opinion). The Government benefit cases are an ill fit for the names clause, and we would not graft this precedent, which Justice Sotomayor acknowledges is not controlling, onto this trademark dispute. Post, at 8-9. [42] Justice Barrett, echoed by Justice Sotomayor, would import the test that we have used for a "limited public forum." Our precedents hold that the Government "may create a forum that is limited to use by certain groups or dedicated solely to the discussion of certain subjects." Pleasant Grove City v. Summum, 555 U. S. 460, 470 (2009). Justice Barrett provides little explanation for why that approach makes sense in the trademark context-she simply declares that the limited public forum framework "is apt" due to the content-based nature of trademark law. Post, at 7. Although she attempts to cabin the analogy to the content-based nature, the limited public forum test is quite obviously about creating a forum. And, there is reason to doubt that the federal trademark register is analogous to a limited public forum. To start, unlike a speaker in a limited public forum, a markholder does not communicate with customers on the register. Rather, as the Government acknowledges, the register "is a way of warning potential infringers that they risk liability if they use the same or confusingly similar marks." Tr. of Oral Arg. 19. The Government has also previously asserted that it did not create a forum for speech by providing for the federal registration of trademarks. See Reply Brief in Matal v. Tam, O. T. 2016, No. 15-1293, p. 4 ("[T]he government has not created a forum here"); Tr. of Oral Arg. in Iancu v. Brunetti, O. T. 2018, No. 18-302, p. 27 ("[W]e don't regard it as a limited public forum"). Without an analogous forum, it is hard to see why the test for a limited public forum should apply. We see no need to adopt a potentially fraught analogy to resolve the names clause's constitutionality. [43] Despite the differences in methodology, both Justice Sotomayor and Justice Barrett reach the same conclusion that the names clause does not violate the First Amendment. On the bottom line, there is no dispute. Rather than adopt a reasonableness test premised upon loose analogies, however, we conclude that the names clause is grounded in a historical tradition sufficient to demonstrate that it does not run afoul of the First Amendment. [44] Our decision today is narrow. We do not set forth a comprehensive framework for judging whether all content-based but viewpoint-neutral trademark restrictions are constitutional. Nor do we suggest that an equivalent history and tradition is required to uphold every content-based trademark restriction. We hold only that history and tradition establish that the particular restriction before us, the names clause in §1052(c), does not violate the First Amendment. Although an occasion may arise when history and tradition cannot alone answer whether a trademark restriction violates the First Amendment, that occasion is not today. In a future case, we can address the "distinct question" whether "a viewpoint-neutral, content-based trademark restriction" is constitutional without "such a historical pedigree." Post, at 1 (opinion of Kavanaugh, J.). The judgment of the Court of Appeals is Justice KAVANAUGH, with whom THE CHIEF JUSTICE joins, concurring in part. [45] I join all but Part III of the Court's opinion. I agree with the Court that the names clause is constitutional, particularly in light of the long history of restricting the use of another's name in a trademark. In my view, a viewpoint-neutral, content-based trademark restriction might well be constitutional even absent such a historical pedigree. We can address that distinct question as appropriate in a future case. Cf., e.g., post, at 7-9 (Barrett, J., concurring in part). Justice BARRETT, with whom Justice KAGAN joins, with whom Justice SOTOMAYOR joins as to Parts I, II, and III-B, and with whom Justice Jackson joins as to Parts I and II, concurring in part. [46] While I agree with the Court that the names clause does not violate the First Amendment, I disagree with some of its reasoning. The Court claims that "history and tradition" settle the constitutionality of the names clause, rendering it unnecessary to adopt a standard for gauging whether a content-based trademark registration restriction abridges the right to free speech. That is wrong twice over. First, the Court's evidence, consisting of loosely related cases from the late-19th and early-20th centuries, does not establish a historical analogue for the names clause. Second, the Court never explains why hunting for historical forebears on a restriction-by-restriction basis is the right way to analyze the constitutional question. I would adopt a standard, grounded in both trademark law and First Amendment precedent, that reflects the relationship between content-based trademark registration restrictions and free speech. In my view, such restrictions, whether new or old, are permissible so long as they are reasonable in light of the trademark system's purpose of facilitating source identification. . . . . [47] Rather than adopt a generally applicable principle, the Court assesses the names clause in isolation, treating the supposed history and tradition of the clause as determinative. In my view, the historical record does not alone suffice to demonstrate the clause's constitutionality. For one thing, the record does not support the Court's conclusion. For another, I disagree with its choice to treat tradition as dispositive of the First Amendment issue. [48] First, the Court's history. It is true that "a tradition of restricting the trademarking of names" arose in the late 19th century. Ante, at 19. As the Court says, a personal name by itself, without any accompanying words or symbols, did not typically qualify as a trademark. See McLean v. Fleming, 96 U. S. 245, 252-253 (1878); ante, at 13. And a person could not always enforce a trademark including her own name against another with the same name. See Brown Chemical Co. v. Meyer, 139 U. S. 540, 542 (1891); ante, at 14. 3 The first federal trademark statute reflected these principles, prohibiting the registration of a mark that was "merely the name of a person, firm, or corporation only, unaccompanied by a mark sufficient to distinguish it from the same name when used by other persons." §79, 16 Stat. 211. Today, the Lanham Act continues to bar the registration of a mark that is "primarily merely a surname." 15 U. S. C. §1052(e) (4). [49] But the Court also claims that the common law did not afford protection to a person seeking a trademark including another living person's name (in other words, a rule akin to the names clause). Ante, at 14. I am less sure. In Thaddeus Davids Co. v. Davids Mfg. Co., 233 U.S. 461 (1914), this Court explained that the 1905 federal trademark statute contained "a fairly complete list of the marks used by dealers in selling their goods, which are not valid trademarks at common law." Id., at 467 (internal quotation marks omitted). Notably, this statute did not include the names clause or any rough equivalent. 4 And if such a common-law rule existed, the majority opinion does not identify it. Instead, the Court draws from sources suggesting that a person could not enforce a trademark with another individual's name against that individual. See ante, at 14-15. Nor could she fraudulently attempt to pass off her goods as those of another person, using that person's name. Ante, at 14. So far, so good. Yet the names clause prevents other uses of someone else's name that the common law may have allowed. And on that score, the Court does not fully grapple with countervailing evidence. [50] In 1860, the Supreme Court of Rhode Island concluded that the phrase "'Roger Williams Long Cloth'" was "capable of distinguishing" the manufacturer's goods and thus qualified as a trademark. Barrows v. Knight, 6 R. I. 434, 438. "'Roger Williams,' though the name of a famous person," the Court explained, was, "as applied to cotton cloth, a fancy name," as would be the case with "any other her [o], living or dead." Ibid. (emphasis added). Likewise, a New York court upheld the plaintiffs' exclusive right to use the name "Bismarck" to designate their paper collars, as they were the first to "appropriate" the name for that purpose. Messerole v.Tynberg, 4 Abb. Pr. (N. S.) 410, 414 (Ct. Com. Pl. 1868). The court thus rejected the defendant's argument that the plaintiffs could not adopt "the name of a distinguished German citizen" as a trademark. Id., at 412. Summarizing, the Second Circuit explained that "[t]he law permits the adoption as a trade-mark of the name of a person who has achieved fame and distinction, provided the name is not descriptive of the quality or the character of the article or a geographical name." Stephano Bros., Inc. v. Stamatopoulos, 238 F. 89, 93 (1916). See also Medlar & Holmes Shoe Co. v. Delsarte Mfg. Co., 68 N.J. Eq. 706, 46 A. 1089 (N. J. Ch. Ct. 1900) ("The name of a famous person, used merely as a fancy name, may become an exclusive trade-mark"); W. Browne, Law of Trade-Marks §216, pp. 225-226 (2d ed. 1885) (same). 5[51] The legislative history of the Lanham Act also undercuts the Court's conclusion. If the names clause codified an existing common-law tradition, one might expect to see some reference to that tradition when the names clause was adopted. But proponents of the clause offered a different justification. Discussing a predecessor version of the clause, Edward Rogers, the Lanham Act's primary drafter, remarked that "[t]he idea of prostituting great names by sticking them on all kinds of goods is very distasteful to me." Trade-Marks: Hearings on H. R. 9041 before the Subcommittee on Trade-Marks, House Committee on Patents, 75th Cong., 3d Sess., 79 (1938) (H. R. 9041); see J. Litman, Keynote Address, 39 Cardozo Arts & Ent. L. J. 855, 856 (2021). The Commissioner of the Patent Office agreed, noting the "shock to [his] sense of propriety to see liberty taken . . . with the names of celebrities of private life." H. R. 9041, at 79. He then referred to the attempted registration of "the name of the Duchess of Windsor for brassieres and ladies' underwear." Ibid. They did not suggest that the common law would already prevent those uses of another's name as a trademark. On the contrary, they seemed most concerned about the types of marks that the common law appeared to allow. See supra, at 11. [52] It is thus difficult to say that the names clause is constitutional solely because of its historical pedigree. 6 Perhaps recognizing that reality, the Court relies not only on the purported common-law tradition restricting the trademarking of names, but also points to the names clause's relation to trademark's historical purposes. Ante, at 16-18. The latter argument is quite similar to my own-I agree that the names clause helps to ensure that the proposed mark functions as a source identifier and to guard against reputational consequences, serving trademark's historical goals. [53] But I cannot agree with the Court that the existence of a "common-law tradition" and a "historical analogue" is sufficient to resolve this case. Ante, at 19-20. Even if the Court's evidence were rock solid, I still would not adopt this approach. To be sure, tradition has a legitimate role to play in constitutional adjudication. For instance, the longstanding practice of the political branches can reinforce our understanding of the Constitution's original meaning. Consumer Financial Protection Bureau v. Community Financial Services Assn. of America, Ltd., 601 U. S. 416, 442 (2024) (Kagan, J., concurring). A course of deliberate practice might liquidate ambiguous constitutional provisions. See The Federalist No. 37, p. 229 (C. Rossiter ed. 1961). The views of preceding generations can persuade, and, in the realm of stare decisis, even bind. But tradition is not an end in itself-and I fear that the Court uses it that way here. [54] The Court does not (and could not) argue that the late-19th and early-20th century names-restriction tradition serves as evidence of the original meaning of the Free Speech Clause. Cf. Samia v. United States, 599 U. S. 635, 655-656, 143 S. Ct. 2004, 216 L. Ed. 2d 597 (2023) (Barrett, J., concurring in part and concurring in judgment). Nor does it treat the history it recites as a persuasive data point. Instead, it presents tradition itself as the constitutional argument; the late-19th and early-20th century evidence is dispositive of the First Amendment issue. Yet what is the theoretical justification for using tradition that way? [55] Relying exclusively on history and tradition may seem like a way of avoiding judgemade tests. But a rule rendering tradition dispositive is itself a judge-made test. And I do not see a good reason to resolve this case using that approach rather than by adopting a generally applicable principle. (After all, there is a tradition of the latter approach too. See, e.g., McCulloch v. Maryland, 17 U.S. 316 (1819) (adopting standard for application of the Necessary and Proper Clause).) In the course of applying broadly worded text like the Free Speech Clause, courts must inevitably articulate principles to resolve individual cases. I do not think we can or should avoid doing so here. As I explained in Part I-B, the takeaway from history is that content-based trademark restrictions have long been central to trademark's purpose of facilitating source identification, and they have not posed a serious risk of censorship. This principle offers a generally applicable way to think about whether registration restrictions "'play well with the First Amendment.'" Ante, at 12. We should bring clarity to the law by adopting it. [56] In my view, the Court's laser-like focus on the history of this single restriction misses the forest for the trees. It gives secondary billing to what I think is the central point: that the names clause "reflects trademark law's historical rationale of identifying the source of goods." Ante, at 16. I see no reason to proceed based on pedigree rather than principle. Besides, as the Court admits, its approach merely delays the inevitable: Eventually, the Court will encounter a restriction without a historical analogue and be forced to articulate a test for analyzing it. Ante, at 19-20. [57] Trademark protection cannot exist without content discrimination. So long as content-based registration restrictions reasonably relate to the purposes of the trademark system, they are constitutional. The names clause clears this bar. I respectfully concur in part. Justice Sotomayor, with whom Justice Kagan and Justice Jackson join, concurring in the judgment. [58] This case involves a free-speech challenge to a viewpoint-neutral, content-based condition on trademark registration. In deciding how to evaluate this kind of challenge, the Court faces two options: Either look only to the history and tradition of the condition, or look to trademark law and settled First Amendment precedent. The first option, which asks whether the history of a particular trademark registration bar plays well with the First Amendment, leads this Court into uncharted territory that neither party requests. The other guides it through well-trodden terrain. I would follow the well-trodden path. [59] In assessing the constitutionality of the names clause and other trademark registration provisions, I would rely on this Court's tried-and-tested First Amendment precedent. This Court has held in a variety of contexts that withholding benefits for contentbased, viewpoint-neutral reasons does not violate the Free Speech Clause when the applied criteria are reasonable and the scheme is necessarily content based. That is the situation here. Content discrimination is an inescapable feature of the trademark system, and federal trademark registration only confers additional benefits on trademark holders. The denial of trademark registration is therefore consistent with the First Amendment if it turns on "reasonable, viewpoint-neutral content regulations." Iancu v. Brunetti, 588 U. S. 388, 424 (2019) (Sotomayor, J., concurring in part and dissenting in part). Because the names clause satisfies that test, I would uphold the constitutionality of the provision on that ground alone. [60] This case is the latest in a trilogy of challenges to the constitutionality of trademark registration bars in the Lanham Act. See id., at 390 (2017). In the first two cases, the Court struck down as unconstitutional certain registration bars that discriminated based on viewpoint. Ante, at 4-5 (majority opinion) (citing Brunetti, 588 U. S., at 390, 393-394; Tam, 582 U. S., at 243 (plurality opinion); id., at 248-249 (Kennedy, J., concurring in part and concurring in judgment). Because those cases involved viewpoint-based provisions, there was no occasion to consider the framework for "how to evaluate viewpoint-neutral restrictions on trademark registration." Brunetti, 588 U. S., at 398, n. This case, by contrast, presents that very circumstance-a viewpoint-neutral, content-based condition on trademark registration. [61] The names clause prohibits registration of a mark that "[c]onsists of or comprises a name . . . identifying a particular living individual except by his written consent." 15 U. S. C. §1052(c). No one disputes that the names clause is content based. Its application turns, after all, on the mark's content, i.e., whether it identifies by name a particular living individual without his or her written consent. See City of Austin v. Reagan Nat. Advertising of Austin, LLC, 596 U. S. 61, 69 (2022) (explaining that a regulation is content based if its application turns on "'the topic discussed or the idea or message expressed'"). The names clause is also viewpoint neutral because it is agnostic as to how the name in the mark is being used and does not "distinguis[h] between two opposed sets of ideas." Brunetti, 588 U. S., at 394; see ante, at 5 and n. 2 (majority opinion) (holding that the clause is viewpoint neutral both on its face and in practice). On these points, and on the conclusion that the names clause is constitutional, we all agree. Our disagreement boils down primarily to methodology. [62] Those familiar with this trilogy of First Amendment challenges to the Lanham Act may be surprised, perhaps even disappointed, to learn that, although this case presents the "situation we did not address in Tam or Brunetti," the Court has shied away from setting forth a "framework 'for deciding free speech challenges to provisions of the Lanham Act.'" Ante, at 6 (majority opinion) (quoting Tam, 582 U. S., at 245, n. 17 (plurality opinion)). Yet perhaps the biggest surprise (and disappointment) of today's five-Justice majority opinion is its reliance on history and tradition as a dispositive test to resolve this case. [63] In holding that the names clause is constitutional, that majority asserts that one need look only to the "history and tradition" of the clause and "no further." Ante, at 12. Why look to history and tradition alone? Because, the majority says, it "is sufficient to conclude that the names clause . . . is compatible with the First Amendment." Ibid. Considering this Court has never applied this kind of history-and-tradition test to a free-speech challenge, and that "[n]o one briefed, argued, or even hinted at the rule that the Court announces today," one would have expected a more satisfactory explanation. Lozman v. Riviera Beach, 585 U. S. 87, 102 (2018) (Thomas, J., dissenting). There is none grounded in our First Amendment doctrine and precedent. [64] Justice Barrett questions the majority's because-it-is-sufficient explanation in part by claiming that, if anything, the Court's evidence "does not establish a historical analogue for the names clause." Ante, at 1 (opinion concurring in part). That may well be true. Yet this back-and-forth highlights the indeterminacy of the Court's history-and-tradition inquiry, which one might aptly describe as the equivalent of entering a crowded cocktail party and looking over everyone's heads to find your friends. Cf. Conroy v. Aniskoff, 507 U. S. 511, 519 (1993) (Scalia, J., concurring in judgment). To make matters worse, the five-Justice majority that undertakes this tradition-as-dispositive inquiry found its friends in a crowded party to which it was not invited. That majority has drawn conclusive inferences from its historical evidence, all without any guidance from the litigants or the court below. That stark departure from settled principles of party presentation and adversarial testing in favor of in-chambers historical research by nonhistorians raises more questions than answers. Cf. Maslenjak v. United States, 582 U. S. 335, 354 (2017) (Gorsuch, J., joined by Thomas, J., concurring in part and concurring in judgment) ("[T]he crucible of adversarial testing on which we usually depend, along with the experience of our thoughtful colleagues on the district and circuit benches, could yield insights (or reveal pitfalls) we cannot muster guided only by our own lights"). [65] It is not appropriate, much less necessary, to find common-law analogues to settle the constitutionality of the names clause or any other trademark registration provision. I agree with Justice Barrett that, even if the majority's historical "evidence were rock solid," there is no good reason to believe that "hunting for historical forebears on a restriction-byrestriction basis is the right way to analyze the constitutional question." Ante, at 1, 13. The majority attempts to reassure litigants and the lower courts that a "history-focused approac[h]" here is sensible and workable, by citing to New York State Rifle & Pistol Assn., Inc. v. Bruen, 597 U.S. 1 (2022). Ante, at 19, n. 4. To say that such reassurance is not comforting would be an understatement. One need only read a handful of lower court decisions applying Bruen to appreciate the confusion this Court has caused. Cf. Brief for Second Amendment Law Scholars as Amici Curiae in United States v. Rahimi, O. T. 2023, No. 22-915, pp. 4 [66] Ultimately, I am reluctant to go further down this precipice of looking for questionable historical analogues to resolve the constitutionality of Congress's legislation. To borrow Justice Scalia's criticism from a different context, such hunting "far into the dimmy past" is not just "a waste of research time and ink" but also "a false and disruptive lesson in the law . . . that . . . condemns litigants (who, unlike us, must pay for it out of their own pockets) to subsidizing historical research by lawyers." Conroy, 507 U. S., at 519 (opinion concurring in judgment). I would instead apply this Court's First Amendment precedent, just as the parties did in arguing this case. [67] The most straightforward way to resolve this and other free-speech challenges to trademark registration criteria is through a doctrinal framework drawn from this Court's First Amendment precedent. The analysis should proceed in two steps. First ask whether the challenged provision targets particular views taken by speakers on a given subject. If the trademark registration bar is viewpoint based, it is presumptively unconstitutional and heightened scrutiny applies; if it is viewpoint neutral, however, the trademark registration bar need only be reasonable in light of the purpose of the trademark system. Specifically, the trademark registration bar must reasonably serve its purpose of identifying and distinguishing goods for the public. If the challenged provision is both viewpoint neutral and reasonable, then it does not violate the Free Speech Clause. [68] This Court has applied strict constitutional scrutiny to viewpoint-neutral content classifications on some occasions, and thus treated them as "presumptively unconstitutional." Reed v. Town of Gilbert, 576 U. S. 155, 163 (2015). It has declined to do so, however, when any "risk" that such classification "will impermissibly interfere with the marketplace of ideas" is "attenuated"; that is, when "'there is no realistic possibility that official suppression of ideas is afoot.'" Davenport v. Washington Ed. Assn., 551 U. S. 177, 188-189 (2007) (quoting R. A. V. v. St. Paul, 505 U. S. 377, 390 (1992)). In those cases, "the difference between viewpoint-based and viewpoint-neutral content discrimination can be decisive." Brunetti, 588 U. S., at 421 (opinion of Sotomayor, J.). This is such a case: Whereas the denial of trademark registration under viewpoint-and content-based criteria is presumptively unconstitutional under heightened scrutiny, a denial under viewpoint-neutral, content-based criteria is not constitutionally suspect and does not trigger the same exacting scrutiny. See ante, at 3-12 (majority opinion). [69] In explaining why the difference is decisive in this context, the Court and Justice Barrett emphasize that trademarks are inherently content based, yet have long coexisted with the First Amendment. Ante, at 6-11 (majority opinion); ante, at 2-7 (opinion of Barrett, J.). I agree with the use of historical evidence to support this point. History informs the understanding that content-based distinctions are an intrinsic feature of trademarks, and that the marks' purpose is to identify and distinguish goods for the public. See ante, at 2-6 (opinion of Barrett, J.). That use of history is legitimate and in fact valuable, just as evidence of a longstanding practice of government can inform the meaning of constitutional provisions in appropriate cases. See ante, at 13-15 (opinion of Barrett, J.); cf. Consumer Financial Protection Bureau v. Community Financial Services Assn. of America, Ltd., 601 U. S. 416, 442 (2024) (Kagan, J., concurring); The Pocket Veto Case, 279 U. S. 655, 689 (1929). That is not how the five-Justice majority is using history, however. The majority instead treats a disputed (and isolated) account of the history and tradition of the names clause as determinative of its constitutionality. Cf. ante, at 12-20 (applying new history-and-tradition test). It is that "judgemade test" that is unmoored from constitutional text and precedent, and which I repudiate as unhelpful. Ante, at 14 (opinion of Barrett, J.). [70] Even then, history does not give us the full story. The assertion that content-based distinctions in trademark law have long played well with the First Amendment, although true, requires a more fulsome explanation, particularly as applied to the trademark registration system. The primary reason why viewpoint-neutral trademark registration criteria easily coexist with the Free Speech Clause is that they do not burden expression. Instead, a denial of registration withholds ancillary benefits that might bolster someone's expression. When a government confers a benefit that supports some forms of expressive activity, the decision to withhold that benefit on viewpoint-neutral grounds "'cannot be equated with the imposition of a "penalty" on that activity,'" which would trigger heightened scrutiny. Rust v. Sullivan, 500 U. S. 173, 193 (1991) [71] "The First Amendment protects the freedom of speech; it does not require the Government to give aid and comfort to those using" particular "modes of expression." Brunetti, 588 U. S., at 401 (Roberts, C. J., concurring in part and dissenting in part). Indeed, this Court has recognized repeatedly that the First Amendment permits governmental bodies to rely on reasonable, viewpoint-neutral, content-based criteria when deciding to benefit certain communicative activities. See, e.g., National Endowment for Arts v. Finley, 524 U. S. 569, 587-588 (1998) ("[T]he Government may allocate competitive funding according to criteria that would be impermissible were direct regulation of speech or a criminal penalty at stake"). . . . . [72] Someone with a federally registered mark enjoys certain benefits by virtue of that registration. Even so, free speech is not abridged when these benefits are denied to someone based on reasonable, viewpoint-neutral criteria. [73] Consider three basic tenets of trademark law, each of which the Court rightly acknowledges. See ante, at 1-2. First, "every trademark's 'primary' function" is to tell the public who is responsible for a particular product, that is, to serve as a source identifier. Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U. S. 140, 146 (2023). Although trademarks may also communicate a "message," that message is only incidental to "what a trademark is and does." Id., at 145-146. Second, "federal law does not create trademarks." B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U. S. 138, 142 (2015). Rather, by virtue of common law, the first person to use a "distinct mark in commerce . . . acquires rights to that mark," including exclusivity rights to "preven[t] others from using the mark." Ibid. Third, federal registration provides increased trademark protection only by conferring additional benefits on trademark holders. See ibid. For example, it (1) provides "nationwide constructive notice of the registrant's claim of ownership of the mark," which forecloses some defenses in infringement actions; and (2) constitutes "prima facie evidence" of the mark's validity and exclusivity in commerce. Ante, at 2 (citing 15 U. S. C. § §1072, 1115(a)). To be sure, nothing in the Constitution requires these predominantly commercial benefits. [74] One conclusion follows from these three principles: By prohibiting trademark registration for viewpoint-neutral, content-based reasons, Congress simply denies an applicant the opportunity to include his mark on a list and secure "certain benefits" that are "useful in infringement litigation." Jack Daniel's, 599 U. S., at 146. The risk of speech suppression is therefore "attenuated" because denying a trademark holder these ancillary benefits does not prevent him from using his mark in commerce or communicating any message incidental to the mark. Davenport, 551 U. S., at 188; see Brunetti, 588 U. S., at 421-422 (opinion of Sotomayor, J.); id., at 401 (opinion of Roberts, C. J.) ("Whether . . . marks can be registered does not affect the extent to which their owners may use them in commerce to identify goods. No speech is being restricted; no one is being punished. The owners of such marks are merely denied certain additional benefits associated with federal trademark registration"). [75] Now consider the facts of this case. Respondent Steve Elster wants to sell shirts with the phrase TRUMP TOO SMALL on them. He also wants increased trademark protection by federally registering the phrase. In the registration request, Elster explained that the phrase "invokes a memorable exchange between President Trump and Senator Marco Rubio from a 2016 presidential primary debate, and aims to 'convey[ ] that some features of President Trump and his policies are diminutive.'" In re Elster, 26 F. 4th 1328, 1330 (CA Fed. 2022) (alteration in original). [76] When the U. S. Patent and Trademark Office rejected the registration request, it denied Elster the opportunity to secure the Government-bestowed benefits associated with registration. Critically, the denial did not prevent Elster from communicating his message. It also did not restrict his preferred mode of expression. Elster can still sell shirts displaying the same message. Elster could also use a different phrase (such as ELSTER APPAREL) as a source identifier to obtain the desired benefits of registration while continuing to sell shirts with his preferred message across the front. See Tr. of Oral Arg. 23-24 (discussing "Elster Apparel" example). Put simply, the denial only barred Elster from registering a mark asserting exclusive rights in another person's name without their written consent. [77] Because trademark registration criteria limit statutory benefits in a necessarily content-based scheme, the First Amendment requires the criteria to be viewpoint neutral and reasonable. Supra, at 5-9; Brunetti, 588 U. S., at 424 (opinion of Sotomayor, J.). From this Court's analogous nonpublic-forum and limited-public-forum cases, it is clear that "reasonable" means that the challenged provision must reasonably serve the purpose of the content-based scheme. On this point, I agree with Justice Barrett that the challenged trademark registration criteria must be "reasonable in light of the trademark system's purpose of facilitating source identification." Ante, at 2; see ante, at 7-9. [78] In Cornelius, for example, the Court confronted a free-speech challenge to the Government's decision to exclude "legal defense and political advocacy organizations from participation in the Combined Federal Campaign (CFC or Campaign), a charity drive aimed at federal employees." 473 U. S., at 790. After concluding that the CFC was a nonpublic forum "not dedicated to general debate or the free exchange of ideas," the Court held that the First Amendment permits content-and speaker-based "distinctions" so long as they are "reasonable in light of the purpose served by the forum and are viewpoint neutral." Id., at 806, 811. Importantly, the "decision to restrict access . . . need not be the most reasonable or the only reasonable limitation." Id., at 808-809. Based on this test, the Court ultimately concluded that the Government acted reasonably, and consistent with the Free Speech Clause, in "limit[ing] participation in the CFC in order to minimize disruption to the federal workplace, to ensure the success of the fundraising effort, or to avoid the appearance of political favoritism without regard to the viewpoint of the excluded groups." Id., at 813. [79] Justice Thomas (joined by two Justices) rejects this test, implying that it is subjective because it supposedly turns on what a given judge might think is reasonable. Ante, at 20. That statement misunderstands the inquiry. As just discussed, a trademark registration condition is reasonable if it serves as a source identifier, a concept that is familiar to anyone who has worked on a trademark case. See Jack Daniel's, 599 U. S., at 146; 1 J. McCarthy, Trademarks and Unfair Competition §3:1 (5th ed. 2023). More generally, this kind of reasonableness inquiry appears in every limited public (or nonpublic) forum case. Far from being subjective and unworkable, this kind of test goes to the very core of what judges and lawyers do every day. When contrasted to their preferred history-driven approach, the criticism of the reasonableness inquiry is even more unpersuasive. As discussed above, the history-andtradition approach is not just flawed as a matter of first principles, but also highly indeterminate and unfamiliar to judges and litigants in this area of the law. See supra, at 3-5. How much history is enough to clear the historical analogue bar the five-Justice majority set up? What does that look like in this context? When it comes to subjectivity, their preferred approach empowers judges to pick their friends in a crowded party. See supra, at 4. When faced with the two options, I choose the test that is rooted in this Court's First Amendment doctrine and precedent, is attuned to what judges and lawyers are properly trained to do, and does not limit Congress from dealing with modern-day conditions based on the foresight of yesterday's generation. [80] "Content-based criteria for trademark registration do not abridge the right to free speech so long as they reasonably relate to the preservation of the markowner's goodwill and the prevention of consumer confusion," "goals" that a "particular restriction will serve . . . if it helps ensure that registered marks actually function as source identifiers." Ante, at 8 (opinion of Barrett, J.) The names clause easily passes this reasonableness test. Source identification is, after all, at the heart of what the names clause does. [81] Imagine someone who wants to manufacture and sell the best bats and catchers' mitts in baseball. Unsurprisingly, that person wants to use the names of Derek Jeter and Jorge Posada to capitalize on their goodwill to promote the products. So, the manufacturer lands on JETER OUT OF THE PARK and CATCH LIKE POSADA as marks. The names clause bars registration of these phrases without the named individuals' written consent. It does so for good reason: Jeter and Posada may not want consumers to misattribute these products to them, just as consumers may not want to buy products under the false pretense that these goods somehow are connected to the players. 3 Source identification is especially important when, for example, the named individual produces similar products-say, Jeter and Posada sell their own baseball goods under the marks MR. NOVEMBER BATS BY JETER and CHAMP'S MITTS BY POSADA. They would not want manufacturers to dilute the commercial value of their name and reputation. Nor would Jeter and Posada want a Boston Red Sox fan 3 Other Lanham Act provisions prohibit the registration of marks that deceive or falsely suggest a connection to a person or entity. See 15 U. S. C. §1052(a). That there is some overlap between the false suggestion and names clauses does not change the fact that the names clause reasonably serves the purpose of source identification. When heightened scrutiny is not in play, Congress is free to use belts and suspenders to support an asserted interest. I therefore also agree with JUSTICE BARRETT that "Congress is entitled to make [the] categorical judgmen[t] . . . that, on the whole, protecting marks that include another living person's name without consent risks undermining the goals of trademark." Ante, at 9. to manufacture cheaper goods and use their names to promote second-rate products. The names clause prevents that from happening. [82] Congress was entitled to make this legislative judgment. The Government, after all, "has a reasonable interest in refraining from lending its ancillary support to marks" that use an unconsenting individual's name for commercial gain. Brunetti, 588 U. S., at 425 (opinion of Sotomayor, J.); cf. id., at 401 (opinion of Roberts, C. J.) ("The Government, meanwhile, has an interest in not associating itself with trademarks whose content is obscene, vulgar, or profane"). In sum, the names clause is constitutional because it is a viewpoint-neutral, reasonable limitation on a trademark's registration. [83] The Court's "decision today is narrow," and its history-and-tradition test is good only for "the relatively simple case before us today." Ante, at 20, 22. Ultimately, all nine Justices agree that Congress can innovate when it comes to trademark law, and we further agree that nothing in today's opinion calls into question the constitutionality of viewpointneutral provisions lacking a historical pedigree. See ibid.; ante, at 1 (Kavanaugh, J., concurring in part); ante, at 1-2 (opinion of Barrett, J.); supra, at 3-6. [84] For the reasons set forth above, I respectfully concur in the judgment. 1. "Trademark rights are primarily a matter of state law." So wrote Justice Thomas early on in his Elster opinion. Does this strike you as an accurate description of the U.S. trademark system? 2. Marijuana marks. To qualify for federal registration, a mark must be used in commerce for goods or services that are legal under federal law. For this reason, the TTAB has affirmed the refusal of registration of the mark HERBAL ACCESS for "retail store services featuring herbs" when such services consisted of the sale of marijuana in Washington state, under whose law such sales are legal. As stated at the beginning of this Part, a trademark must be used in commerce to qualify for protection. See Lucent Info. Mgmt. v. Lucent Techs., Inc., 186 F.3d 311, 319 (3d Cir. 1999) ("It is axiomatic that if there is 'no trade -no trademark.'" (quoting La Société Anonyme des Parfums le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1274 (2d Cir. 1974)). In this subsection, we consider the nature of this "use in commerce" requirement. To avoid ambiguity, it may be useful to recognize from the start the several different aspects of the concept of "use in commerce" in U.S. trademark law, only one of which we will focus on in this subsection. • "Use in commerce" for purposes of establishing trademark rights. This is the focus of this subsection. • "Use in commerce" for purposes of determining whether a trademark owner has abandoned its rights. If a trademark owner ceases to use its trademark in commerce without an intent to resume use, it may be deemed to have "abandoned" its mark. See Lanham Act § 45, 15 U.S.C. § 1127 (defining when a mark shall be deemed "abandoned"). We will address the doctrine of trademark abandonment in Part III.D below. • "Commercial use" of a mark for purposes of determining whether a defendant has made an infringing "actionable use" of the plaintiff's mark. Lanham Act § § 32, 43(a), and 43(c) appear to require that for a defendant's conduct to be infringing, the defendant must be using the mark "in connection with the sale, distribution, or advertising of any goods or services." Lanham Act § 32(1)(a), 15 U.S.C. § 1114(1)(a). Defendants engaged in non-profit, expressive uses of marks (such as internet gripe sites that do not sell any goods) have argued that their conduct does not constitute "commercial use" and is thus not infringing. We will address this issue in Part II.A.1 below. • "Use in commerce," also known as "use as a mark," for purposes of determining whether a defendant has made an infringing "actionable use" of the plaintiff's mark. In several high-profile internet-related cases in the early years of the century, defendants argued that they could be liable for infringement only if they were making a "use in commerce" of the plaintiff's mark as that term is defined under Lanham Act § 45. This came to be known as the "use as a mark" requirement for liability. We will address the case law on this issue in Part II.A.2 below. The student is strongly advised to distinguish between these various aspects of "use in commerce" as we proceed, particularly the difference between (a) "use in commerce" by the plaintiff for purposes of establishing the plaintiff's trademark rights and (b) "use in commerce" or "commercial use" by the defendant for purposes of establishing the defendant's trademark infringement. With respect to the plaintiff's use in commerce for purposes of establishing trademark rights, a further distinction should be drawn from the start. Though the two areas of law are closely related, there are nevertheless important differences between (1) the extent of "use in commerce" that a mark owner must make for the mark to qualify for federal registration, and (2) the extent of "use in commerce" that a mark owner must make of a mark to establish unregistered, "common law" priority over subsequent users of the same mark. In general, the quantum of use necessary for registration is a stricter requirement than that necessary for purposes of establishing unregistered common law priority. See MCCARTHY § 16:12-16:14. In Part I.C.1, we address the use-in-commerce requirement for federal registration. As you will see, Aycock Engineering, Inc. v. Airflite, Inc., 560 F.3d 1350 (Fed. Cir. 2009), and Couture v. Playdom, Inc., 778 F.3d 1379 (Fed. Cir. 2015), make clear that the owner of a mark must complete the sale of goods or services bearing the mark to customers for the mark to qualify for federal registration. 13 Mere advertising or other promotional conduct without actual sales will not support federal registration. By contrast, in Part I.C.2, Cosmic Crusaders LLC v. Andrusiek, No. 2023-1150, 2023WL 6889054 (Fed. Cir. Oct. 19, 2023), shows that for purposes of establishing unregistered, common law priority in a mark, advertising and other promotional conduct prior to actual sales may be sufficient to support a priority claim. In reading through these two subsections, consider whether the distinction between use for purposes of registration and use for purposes of common law priority makes sense as a matter of sound policy. The term "use in commerce" means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce-(1) on goods when-(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce, and (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more 13 There is a minor exception to the general rule that a trademark owner must make use in commerce of its mark in order for the mark to qualify for federal registration. As discussed more fully in Part I.D below, Lanham Act § 44(e), 15 U.S.C. § 1126(e), provides that foreign applicants applying under a § 44 filing basis need not show actual use in commerce prior to obtaining registration. See MCCARTHY § 29:14. O'GRADY, District Judge: [1] In 1970, Respondent-Appellant Aycock Engineering, Inc. ("Aycock Engineering") applied for a service mark, which was registered at the United States Patent and Trademark Office ("USPTO") in 1974 after examination. In 2007, however, the USPTO Trademark Trial and Appeal Board ("TTAB") declared the registration void because it failed to meet the "use in commerce" element of the Lanham Act. Aycock Engineering now appeals the TTAB's ruling. The question presented herein is whether the use in commerce requirement is met when an applicant uses a service mark in the preparatory stages of a service's development, but never offers the service to the public. We hold that it is not. I. BACKGROUND [2] In the late 1940s, William Aycock conceived of and began work on a service involving chartering flights in the air taxi industry. At that time, the common practice for air taxi companies was to lease entire airplanes, not individual seats. Consequently, individual passengers not belonging to a larger party faced more difficulty and expense in chartering a flight. Mr. Aycock intended, through his service, to allow solo passengers to arrange flights on chartered aircraft for less cost. [3] Mr. Aycock did not plan on operating the chartered air taxi services himself. Instead, his goal was to develop a system where he would serve his customers by acting as the middleman, or "communication link," between the customer and one of the air taxi service operators he contracted with to provide flights on an individual seat basis. Mr. Aycock planned to advertise his service, which he called the AIRFLITE service, to the public and to have those interested in using the service call a toll-free phone number to schedule reservations. After learning of customers' travel plans, Mr. Aycock would then arrange for the air taxi service to fly his customers with similar travel plans to their destinations. Mr. Aycock believed that in order for his service to become operational, he needed at least 300 air taxi operators in the United States to agree to participate in his air-taxi-operator network. 2 [4] In the years after conceiving of the idea for his service, Mr. Aycock worked toward offering the service to the public. In the mid-1960s, he formed Aycock Engineering-the corporate entity under which his service would operate. He also sought and obtained two toll-free telephone numbers that the public could use to make reservations. In March of 1970, Mr. Aycock invited virtually all air taxi operators certified by the Federal Aviation Administration ("FAA") to join his operation by, inter alia, distributing flyers with in-depth information about his AIRFLITE service. He eventually entered into contracts with some of those air taxi service operators. 3 Under these contracts, air taxi operators agreed to participate in the AIRFLITE service and even paid modest initiation fees to Mr. Aycock. Furthermore, Mr. Aycock filed a service mark application on August 10, 1970 for the term AIRFLITE. [5] Despite his efforts, Mr. Aycock's operation never got off the ground. While he estimated that he needed at least 300 air service operators under contract to make his service operational, Mr. Aycock never had more than twelve (4% of his minimum goal) under contract at any time throughout his company's history. And while Mr. Aycock advertised to air taxi operators, he never marketed the AIRFLITE service to the general public. More specifically, the record does not suggest that Mr. Aycock ever gave the public an opportunity to use the toll-free phone numbers to book reservations, or that he ever spoke with a member of the general public about making a reservation. Finally, and most notably, Mr. Aycock never arranged for a single passenger to fly on a chartered flight. 4 [6] Mr. Aycock's AIRFLITE mark, which he applied for on August 10, 1970, was registered by the USPTO on April 30, 1974 on the Supplemental Register * after a prosecution that involved considerable negotiation between Mr. Aycock and the trademark examining 2 Mr. Aycock stated in his deposition, "We start this when 300 air taxi operators in the United States have signed on to provide the transportation." J.A. 1942. 3 Some of the contracts originated in the 1970s, and some came as late as 2001. 4 When asked at his deposition whether he had ever arranged for an individual to fly on an airplane, Mr. Aycock stated, "I had never made a-any arrangement . . . I had never had a talk with the customer then talked with the air taxi operator and reached any agreement on them carrying the customer." attorney . . . . The recitation of services for the AIRFLITE service mark eventually agreed upon by the USPTO and Mr. Aycock was "[a]rranging for individual reservations for flights on airplanes." Id. at 729. Mr. Aycock's application to renew his AIRFLITE service mark was granted by the USPTO on April 27, 1994. [7] In 2001, Airflite, Inc., the Petitioner-Appellee, filed a petition for cancellation alleging, inter alia, that Aycock Engineering did not use its AIRFLITE mark prior to registration in connection with the services identified in its registration. In that proceeding, the TTAB agreed with Airflite, Inc. and cancelled the AIRFLITE registration, finding that Mr. Aycock failed to render the service described in its registration in commerce. Airflite, Inc. v. Aycock Eng'g, Inc., Cancellation 92032520, 2007 WL 2972237, at *7 (TTAB Oct. 4, 2007) ("TTAB Decision "). [8] Under § 45 of the Lanham Act, a service mark is any "word, name, symbol or device, or any combination thereof used by a person, or which a person has a bona fide intention to use in commerce . . . to identify and distinguish the services of one person . . . from the services of others." 15 U.S.C. § 1127 (2006). The definition of "service mark" is virtually identical to the definition of "trademark." But while service marks apply to intangible services, trademarks are used to distinguish tangible goods. See Chance v. Pac-Tel Teletrac Inc., 242 F.3d 1151, 1156 (9th Cir. 2001). [9] "It is clear from the wording of the Lanham Act that applications for service mark registrations are subject to the same statutory criteria as are trademarks." 3 J. [10] Despite the seeming harmony and simplicity in the application of the use requirement to trademarks and service marks, opportunity exists for confusion in this area of the law. Different statutory requirements apply to applications filed before November 16, 1989, as compared to those filed after. This is because in 1988, Congress passed the Trademark Law Revision Act ("TLRA"). The TLRA altered the burden that applicants must meet before satisfying the use element by requiring an applicant to make a "bona fide use of [11] This "bona fide use" language was intended to eliminate "token uses," which occurred when applicants used marks in conjunction with selling goods or offering services for the sole purpose of obtaining registration, and with no intention of legitimately using the mark in commerce until a later date. See Blue Bell, Inc. v. Jaymar-Ruby, Inc., 497 F.2d 433, 437 (2d Cir. 1974). Before 1989, a "token use" was sufficient to satisfy the use requirement and qualify a mark for registration. See Id. [12] In addition to eliminating token uses, the 1988 TLRA made other changes to the use requirement. Before 1989, an applicant only qualified for registration if he was using his mark in commerce at the time he filed his application at the USPTO. WarnerVision Entm't Inc. v. Empire of Carolina, Inc., 101 F.3d 259, 260 (2d Cir. 1996). But after 1989, an applicant could begin the registration process even when his mark was not in use in commerce at the time of the filing, so long as he had a "bona fide intention to use the mark in commerce" at a later date. 15 U.S.C. § 1051(b) (2006). Applicants filing these "intent to use" applications are only granted registration, however, if they file a verified statement of commercial use proving eventual use of the mark in commerce. Id. § 1051(d). [13] Because the mark at issue here is a service mark, the use requirement relating to service mark applications, as opposed to trademark applications, guides our analysis. Furthermore, the application at issue in this case was filed in 1970. Therefore, this case must be decided according to the service mark use requirement that appeared in the Lanham Act in 1970 (i.e., the pre-1989 version). See 3 McCarthy § 19:112. However, for the reasons stated below, our holding in this case also applies to the current (and post-1989) service mark use requirement. [14] With the exception of the 1988 TLRA statutory language eliminating token uses and permitting intent-to-use applications, the service mark use requirement as it appeared in 1970 is materially identical to the post-1989 version. The use provision of the Lanham Act in force in 1970 stated that a service mark was in use in commerce "when it is used or displayed in the sale or advertising of services, and the services are rendered in commerce, or the services are rendered in more than one State or in this and a foreign country and the person rendering the services is engaged in commerce in connection therewith." Pub.L. No. 87-772, 76 Stat. 769 (1962). Therefore, like the current use requirement, a service mark applicant seeking to meet the pre-1989 version had to (1) use the mark in the sale or advertising of a service and (2) show that the service was either rendered in interstate commerce or rendered in more than one state or in this and a foreign country by a person engaged in commerce. [15] Courts, as well as the TTAB, have interpreted the pre-1989 statutory language in analogous cases. Without question, advertising or publicizing a service that the applicant intends to perform in the future will not support registration. (TTAB 1982). Instead, the advertising or publicizing must relate to "an existing service which has already been offered to the public." Greyhound, 214 USPQ at 474. Furthermore, "[m]ere adoption (selection) of a mark accompanied by preparations to begin its use are insufficient . . . for claiming ownership of and applying to register the mark." Intermed, 197 USPQ at 507; see Blue Bell, 497 F.2d at 437. "At the very least," in order for an applicant to meet the use requirement, "there must be an open and notorious public offering of the services to those for whom the services are intended." Intermed, 197 USPQ at 507. [16] In Intermed, the TTAB rejected a service mark application for failing to meet the use in commerce requirement even where the applicant had performed many pre-application service-oriented activities involving the public. Id. at 508-09. The applicant in that case sought to register a mark intended to identify an international medical services operation. Id. at 502. The applicant's plan was to build the international service from an already operating United States-based medical service. Id. at 503. The applicant intended to, and did use the United States-based operation as a fundraising affiliate of the new international operation. Id. at 504. Additionally, the applicant communicated with and solicited the support of the Iranian government regarding the service before the application was filed. Id. The applicant also issued a detailed announcement using the service mark term before the filing date designed to inform and update individuals about the service's status. Id. Finally, and also before the date of application, the applicant hired a fundraising firm to raise money for the service. Id. at 508. [17] Despite these activities, the TTAB held that the applicant failed to meet the use requirement because the services described in the application were not "offered, promoted, advertised or rendered . . . in commerce." Intermed, 197 USPQ at 504. The TTAB stated that "[t]he statute requires not only the display of the mark in the sale or advertising of services but also the rendition of those services in order to constitute use of the service mark in commerce." Id. At 507-08. The TTAB further explained that adopting a mark accompanied by mere "preparations to begin its use" is insufficient for service mark registration, and that in order for the use requirement to be met, there must be "an open and notorious public offering of the services to those for whom the services are intended." Id. at 507. [18] In 1983, the TTAB again rejected a service mark application because it failed to meet the use requirement. Cedar Point, 220 USPQ at 533. In Cedar Point, the Cedar Point amusement park, which had been in business for decades, was preparing to open a new water park addition in mid-May of 1980. Id. at 535. One preparatory step taken by Cedar Point before opening day was the filing of a service mark application to register the mark "OCEANA" for its new water park service. Id. Cedar Point also distributed nearly 700,000 water park advertisement brochures containing the OCEANA mark during the months preceding the grand opening. Id. [19] The TTAB emphasized the fact that Cedar Point filed its service mark application with the USPTO before it opened the water park's doors and offered those services to the public. Id. at 535-36. The TTAB then explained that the use of a mark in connection with the advertising of services intended to be "available at some time in the future, but not yet available at the time of filing" does not qualify the mark for registration. Id. at 535. Therefore, Cedar Point's water park advertising campaign, which was ongoing at the time the application was filed, was insufficient on its own to support registration. Id. As a result, the TTAB held that the "applicant's mark 'OCEANA' was not in 'use in commerce' . . . at the time of the filing of [the] application" and that the application was thus void ab initio. Id. at 537. [20] Interestingly, Cedar Point filed for its service mark roughly one month before the scheduled opening of the new water park. Id. at 535. With the application date being so close to the opening date, it is indisputable that Cedar Point had taken numerous steps toward constructing the water park by the time the application was filed. Nevertheless, the TTAB found none of these preparatory steps sufficient to satisfy the use in commerce requirement. . . . . [21] We find the reasoning of these cases persuasive. The language of the statute, by requiring that the mark be "used or displayed in the sale or advertising of services, and the services are rendered in commerce," makes plain that advertisement and actual use of the mark in commerce are required; mere preparations to use that mark sometime in the future will not do. Thus, we hold that an applicant's preparations to use a mark in commerce are insufficient to constitute use in commerce. Rather, the mark must be actually used in conjunction with the services described in the application for the mark. F. Analysis . . . . [22] {Aycock's} activities, even taken together, do not constitute a service that falls within the scope of our definition of the recitation of services. As mentioned earlier, it is our view that the service described in Mr. Aycock's service mark application covers only the arranging of flights between an air taxi operator and a passenger, and not preparatory efforts to arrange a network of air taxi operators. The activities described above, however, were merely preparatory steps that Mr. Aycock took toward his goal of one day, as he described, operating a "communication service between persons desiring to charter aircraft" that "put[ ] individuals desiring air transportation in contact with people rendering that service." J.A. 736, 749. [23] In order for Mr. Aycock to satisfy the use requirement, more was required. Mr. Aycock had to develop his company to the point where he made an open and notorious public offering of his AIRFLITE service to intended customers. See Intermed, 197 USPQ at 507. However, at no point in time did Mr. Aycock give a potential customer the chance to use his AIRFLITE service. He never arranged for a single flight between a customer and an air taxi operator. This is because Mr. Aycock, as stated in his deposition, believed he needed at least 300 air taxi operators under contract before his service could become operational. Reasonably, because he never had more than twelve air taxi operators under contract at any one time, Mr. Aycock chose not to open his doors to the public. {The court affirmed the TTAB's cancellation of Aycock's mark. Judge Newman dissented on the ground that, notwithstanding the description of services listed in the registration that was finally agreed to by Aycock, "it is inappropriate now to construe the registration so as to exclude the actual use of the mark as was explained in the examination, shown in the specimens, and fully explored in the public record of the prosecution." Aycock Eng'g, 560 F.3d at 1365 (Newman, J., dissenting).} 1. Use of a mark "merely to reserve a right in a mark." In Social Technologies LLC v. Apple Inc., 4 F.4th 811 (9th Cir. 2021), Social Technologies filed an intent-to-use application in April, 2016 for the mark MEMOJI in connection with a mobile phone application, but it had not yet launched the application and thus had not yet made actual use of the mark in commerce. Apple then announced that it was adopting the mark also for a mobile phone application. Social Technologies then had one job. All it needed to do was launch its application as planned and thus make a legitimate use of its mark in commerce, which, as we will discuss further in sections I.D and I.E below, would complete the registration process and enable it to claim its intent to use application date as its priority date. But in the process of preparing to make actual use of the mark, Social Technologies' co-founder and president wrote a series of disastrous emails to his employees. The Ninth Circuit cited these emails to conclude that Social Technologies had ultimately launched its product merely to reserve a right in the MEMOJI mark and hold Apple hostage. For example, the co-founder made clear that they should now design the app purely to support the trademark application. He insisted to his engineers that "the editing feature [was] vital" to "satisfy the 'editing' requirement of the trademark." Id. at 815 (emphasis in original). As the Ninth Circuit noted, he also emailed his employees: "We are lining up all of our information, in preparation for a nice lawsuit against Apple, Inc! We are looking REALLY good. Get your Lamborghini picked out!" Id. (emphasis in original). The Ninth Circuit affirmed summary judgment in favor of Apple on the ground that Social Technologies failed to satisfy the Lanham Act § 45 requirement that its use be a "bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. DYK, Circuit Judge: [1] David Couture ("appellant") appeals from a decision of the Trademark Trial and Appeal Board (the "Board") granting a petition by Playdom, Inc. ("appellee") to cancel appellant's PLAYDOM service mark. We affirm. [2] On May 30, 2008, appellant filed an application to register the service mark PLAYDOM pursuant to Lanham Act § 1(a), 15 U.S.C. § 1051(a). As a specimen showing use of the mark, appellant submitted a "[s]creen capture of [a] website offering Entertainment Services in commerce." Also on May 30, 2008, appellant had created the website, which was hosted at www.playdominc.com. As of May 30, 2008, the website included only a single page, which stated: "[w]elcome to PlaydomInc.com. We are proud to offer writing and production services for motion picture film, television, and new media. Please feel free to contact us if you are interested:playdominc@gmail.com." The webpage included the notice: "Website Under Construction." No services under the mark were provided until 2010, well after the application was filed. The PLAYDOM mark was registered by the United States Patent and Trademark Office ("PTO") on January 13, 2009, as registration no. 3,560,701. [3] On February 9, 2009, appellee filed an application to register the identical mark-PLAYDOM. Appellant's registered mark was cited by the examining attorney as a ground for rejecting appellee's application under Lanham Act § 2(d), 15 U.S.C. § 1052(d). On June 15, 2009, appellee filed a petition to cancel the registration of appellant's mark, arguing, inter alia, that appellant's registration was void ab initio because appellant had not used the mark in commerce as of the date of the application. On February 3, 2014, the Board granted the cancellation petition, stating that appellant "had not rendered his services as of the filing date of his application" because he had "merely posted a website advertising his readiness, willingness and ability to render said services," and the registration was therefore void ab initio. DISCUSSION . . . . I . . . . [4] We have not previously had occasion to directly address whether the offering of a service, without the actual provision of a service, is sufficient to constitute use in commerce under Lanham Act § 45, 15 U.S.C. § 1127. In Aycock, we stated that, "[a]t the very least, in order for an applicant to meet the use requirement, there must be an open and notorious public offering of the services to those for whom the services are intended." 560 F.3d at 1358 (internal quotation marks and citation omitted). The applicant in Aycock had not made such an "open and notorious public offering of his . . . service to intended customers," and the registration was therefore void ab initio. Id. at 1361-62 (citation omitted). But we did not suggest in Aycock that an open and notorious public offering alone is sufficient to establish use in commerce. And appellant does not point to any decision by the Board which found mere offering of a service to be sufficient. [5] On its face, the statute is clear that a mark for services is used in commerce only when both [1] "it is used or displayed in the sale or advertising of services and [2] the services are rendered . . . ." 15 U.S.C. § 1127 (emphasis added). This statutory language reflects the nature of trademark rights: There is no such thing as property in a trademark except as a right appurtenant to an established business or trade in connection with which the mark is employed . . . . [T]he right to a particular mark grows out of its use, not its mere adoption . . . . . . . . [7] Here, there is no evidence in the record showing that appellant rendered services to any customer before 2010, and the cancellation of appellant's registration was appropriate. [8] Appellant also argues that the Board erred in failing to allow him to amend the basis of the application to Lanham Act § 1(b), which provides for requesting registration where "[a] person . . . has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce . . . ." 15 U.S.C. § 1051(b)(1). [9] 37 C.F.R. § 2.35(b) provides procedures for substitution of a basis in an application either before or after publication. 37 C.F.R. § 2.35(b)(1)- (2). But that provision contemplates substitution during the pendency of an application, not after registration. See TMEP § 806.03(j) (Jan. 2015) ("Any petition to change the basis must be filed before issuance of the registration."). Therefore, the Board did not err in not granting appellant's request to amend the basis of the application. 1. Amending the application to seek registration under section 1(b)'s intent to use provision. In In re Alessandra Suuberg, Serial No. 88234650, 2021 TTAB LEXIS 459 (TTAB 2021) [precedential], the Board, citing Couture, affirmed the examiner's refusal to register the mark where "the applicant's activities were preliminary and had not resulted in any use of the mark in commerce prior to the filing of the application." Id. at *8-9. In a footnote, the Board took pains to point out that "[t]he Examining Attorney suggested on two occasions that Applicant amend her application to seek registration under the intent-to-use provisions of Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). . . . Had Applicant done so, she would have had the chance to preserve her application and its filing date, and at a later date, if bona fide use of her mark had begun, make the necessary showing of use to obtain a registration. Id." Id. at *11 n. 13. In contrast, because Mr. Couture had already completed registration of the mark, he could not amend the basis of the registration. The following opinion is nonprecedential, meaning that it should not be cited as precedent to any court. It is included here because it presents a good, simple teaching case with memorable facts showing that a claimant's pre-sales activity may form the basis for that claimant's unregistered common law priority in a mark. Trademark law refers to such activity as "use analogous" to trademark use or "analogous use." See, e.g., American Express Co. v. Goetz, 515 F.3d 156, 161 (2d Cir. 2008) ("[T]he analogous use doctrine, where it applies, eases the technical requirements for trademarks and services marks in favor of a competing claimant who asserts priority on the basis of earlier analogous use of the mark."); id. at 161-62 ("At the very least analogous use must be use that is open and notorious. In other words, analogous use must be of such a nature and extent that the mark has become popularized in the public mind so that the relevant segment of the public identifies the marked goods with the mark's adopter." (citations and quotation marks omitted)). An example of Andrusiek's use of the mark is shown on the left, Cosmic Crusaders' on the right. [2] Appellants argue that the Board procedurally erred by considering Andrusiek's allegedly unpled theory of priority (based on his own prior use of the same mark), and alternatively urge that substantial evidence does not support the Board's finding that Andrusiek had priority over Appellants. Because the Board did not abuse its discretion in construing Andrusiek's petition, and because substantial evidence supports the Board's findings regarding Andrusiek's prior use, we affirm. BACKGROUND [3] Both Andrusiek and Appellants "sell[ ] comic books under the mark CAPTAIN CANNABIS, which also serves as the name of a fictitious character." Decision, 2022 WL 4103636, at *5. On April 2, 2014, Appellants filed for and eventually received Registration No. 4,782,920 for the mark CAPTAIN CANNABIS on comic books in International Class 16. Id. at *1, *7. [4] After learning of Appellants' registration, Andrusiek filed a petition for cancellation pursuant to 15 U.S.C. § 1052(d), citing his own prior use of the same mark reaching back into the 1970s and asserting that Appellants' later use was likely to confuse consumers. Id. at *1. Given that both parties used the same mark on the same goods, the parties agreed that "the only issue in dispute under Trademark Act Section 2(d) is priority." Id. If Andrusiek could prove that he had priority based on his earlier use of the trademark, Appellants' registration would be canceled. Id. Conversely, if Andrusiek failed to show he had priority, his petition for cancellation would be denied. Id. [5] As relevant to this appeal, Appellants relied on their April 2014 registration date to prove their priority date. Id. at *7. Because Andrusiek "does not own an existing registration," his amended petition instead detailed his prior use of the CAPTAIN CANNABIS mark, alleging priority based on his: common law usage of the CAPTAIN CANNABIS trademark in U.S. interstate trade since at least January 25, 1999 when [Andrusiek] engaged in sales activities at the NATPE trade fair in New Orleans, Louisiana and bona fide commercial trade in Comic Books starting September 25, 2006 by way of direct sale of a 420/Captain Cannabis comic book to a customer in the state of Florida. Id. at *6. Andrusiek "also claimed priority based on his alleged 'sales and marketing activities through his CAPTAINCANNABIS.COM web portal since April 22, 1999.'" Id. [6] On October 12, 2020, Andrusiek filed a trial brief detailing his theories of priority and evidence therefor. He expressly and repeatedly asserted that he "may prove priority by proving prior trademark (or analogous) use of the CAPTAIN CANNABIS mark in the United States." In response, Appellants' trial brief set forth positions on the merits and asked the Board to strike certain portions of Andrusiek's evidence as procedurally improper, but did not challenge Andrusiek's reliance on, or the evidence underlying, his analogous use theory. [7] In its final decision, the Board first found that the petition's priority claim rested on two separate arguments: actual trademark use and use of the mark analogous to trademark use. Decision, 2022 WL 4103636, at *6. The Board alternatively found that the parties had tried the analogous use issue "by implied consent," citing Fed. R. Civ. P. 15(b). Id. at *6 n.6. [8] As to analogous use, the Board recognized that Andrusiek had to prove not only analogous use, but also actual trademark use within a commercially reasonable time of the analogous uses. Id. at *8-12. Relying on Andrusiek's testimony and extensive corroborative documentation, the Board found Andrusiek engaged in analogous use of the mark from "2006 to the present, including during 2013-14," and engaged in "actual trademark use in 2017." Id. at *12. The Board also found Andrusiek's trademark use "to be within a commercially reasonable period of time following his analogous use in 2013-14 so as to create a 'continuing association of the mark' with Petitioner's goods." Id. [9] The Board thus resolved the priority dispute in favor of Andrusiek. Id. at *12-13. Given Appellants' concession that there was a likelihood of confusion between Andrusiek's mark and Appellants' mark, the Board canceled Appellants' mark. Id. [10] Appellants timely appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(B). [11] "Decisions related to compliance with the Board's procedures are reviewed for an abuse of discretion." Intelligent Bio-Sys., Inc. v party petitioning for cancellation under section 2(d) must show that it had priority and that registration of the [new] mark creates a likelihood of confusion" with the petitioner's earlier mark. Id. at 1162. "To establish priority, the petitioner must show" certain "proprietary rights" in its mark. Id. Those rights may be demonstrated by "a prior registration, prior trademark or service mark use, [or] prior use as a trade name." Id. [13] A party may also try to show that it acquired the relevant proprietary rights as a result of "prior use analogous to trademark or service mark use." Id. Analogous uses are those which "create an association in the minds of the purchasing public between the mark and the petitioner's goods," but which do not constitute "technical" or "actual" trademark uses. Id. "Examples of use analogous to trademark use . . . include prior use of a term: in advertising brochures; in catalogues and newspaper ads; on a sample displayed at a trade show; and in press releases and trade publications." 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 20:16 (5th ed.). These are not examples of "technical" or "actual" trademark uses because the mark is affixed to something other than the actual trade good-e.g., affixed to a press release promoting a comic book, rather than a comic book itself. Herbko, 308 F.3d at 1162. However, our precedent considers these uses sufficient to establish priority if they "create such an association" that it "must reasonably be expected to have a substantial impact on the purchasing public before a later user acquires proprietary rights in a mark." Id. [14] Our precedent also imposes "a reasonable timeliness requirement" on analogous uses. Id. at 1162-63. Following an analogous use, the party must then actually use the mark in connection with goods within a commercially reasonable timeframe. Id. [15] We review the Board's factual findings underlying a finding of analogous use and reasonable timeliness for substantial evidence. See Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1371 (Fed. Cir. 2018); 5 U.S.C. § 706(2)(E). . . . A. The Board did not abuse its discretion by considering analogous use. [16] Appellants have not shown that the Board abused its discretion when it found that Andrusiek adequately pled analogous use. The Board explained that Andrusiek's petition gave fair notice of his analogous use argument when the petition distinguished between two distinct bases for Andrusiek's claim: Andrusiek's "marketing activities" on the one hand (which correspond to analogous use), and his "bona fide commercial trade" on the other (which correspond to actual use). Decision, 2022 WL 4103636, at *6. Since Andrusiek's petition explicitly distinguished between these two bases for priority, the Board concluded that it gave fair notice of both distinct theories. Id. Moreover, the parties' conduct below suggests that Appellants had notice of the analogous use issue. Andrusiek's trial brief before the Board expressly and repeatedly asserted priority based on "analogous use," citing much of the same evidence referenced in his petition. Appellants did seek to exclude this expresslyasserted "analogous use" theory, even as they successfully sought to exclude other portions of Andrusiek's trial evidence as untimely. Decision, 2022 WL 4103636, at *2-3. [17] Appellants' reliance on Andrusiek's reference to "common-law usage" fares little better. Whatever the meaning of "common-law usage" is in the abstract, the Board read Andrusiek's use of that phrase in context of the entire petition and concluded that it was sufficiently clear that Andrusiek alleged both actual and analogous use for the reasons described above. Reading the petition as a whole, we find no abuse of discretion in the Board's conclusion. [18] While we understand Appellants' argument that Andrusiek's pro se pleading could have been more precise, the Board emphasized that it would afford Andrusiek (and all parties) "reasonable latitude" in pleading, as long the responding party received "fair notice" of the claims at issue. Decision, 2022 WL 4103636, at *6. We find no abuse of discretion in that decision. B. Substantial evidence supports the Board's findings regarding analogous use. [19] Appellants also challenge the Board's findings that (i) Andrusiek's prior analogous use was sufficient to impact the purchasing public, and (ii) that Andrusiek engaged in actual trademark use within a reasonable time of the relevant analogous use. Substantial evidence supports both Board findings. [20] On the challenge to Andrusiek's impact on the applicable market, Appellants assert that Andrusiek presented "no evidence regarding the actual perception of any potential consumers" and assert that the Board did not make sufficient findings about the specific "size of the comic book market or number of marijuana consumers," which the parties appear to agree is the relevant market. Appellants' Br. 20; Decision, 2022 WL 4103636, at *11 & n.13 (noting that the parties both targeted the "niche" market of "marijuana-related goods and services"). Appellants cite our decision in T.A.B., asserting that we found no analogous use on a record with more evidence than Andrusiek allegedly offered in this case (citing T.A.B. Sys. v. Pactel Teletrac, 77 F.3d 1372, 1374-75 (Fed. Cir. 1996)). [21] We disagree that T.A.B requires reversal here. T.A.B. vacated a grant of summary judgment in favor of analogous use when the applicable mark was actually displayed only to "seven customers," without "any evidence that any air time or any newspaper space was purchased"-nor evidence of any "advertisements," nor "any indication of 'readership'" for the handful of single-run print news articles relied upon by the Board there. T.A.B., 77 F.3d at 1375, 1377. Without some indication that the seven customers constituted a substantial portion of the market, we could not conclude that the evidence of record, without more, justified granting summary judgment in favor of analogous use. Id. at 1377. But T.A.B. itself emphasized that we do not require "direct evidence" of public association. Id. at 1375. Instead, public association may be inferred by the fact finder "on the basis of indirect evidence regarding the opposer's use of the word or phrase in advertising brochures, catalogs, newspaper ads, and articles in newspapers and trade publications." Id. [22] That is what the Board did in the case before us-it cited Andrusiek's extensive public usage of CAPTAIN CANNABIS to promote comic books, which was well supported by the record. Decision, 2022 WL 4103636, at *9 (the Board citing registration and maintenance of captaincanabis.com); id. at *9-10 (citing Andrusiek's attendance at multiple trade shows and conventions and distribution of materials at each event); id. (citing attachment of photocopies of the "premier issue" of the comic book titled "420," which included explicit references to "Captain Cannabis" as the "star attraction" of the comic as well as the captaincanabis.com URL); id. at *10 (citing Andrusiek's shipping records of "420" comic books featuring "Captain Cannabis"); id. (citing statement from a publishing house reflecting Andrusiek's comic book sales); id. (citing active social media, including www.facebook.com/pages/Captain-Cannabis, which uses as its profile picture an image of the screenplay Captain Cannabis: The Ultimate Hit); id. at *10-11 (citing multiple interviews and profiles in trade press, including one which called Andrusiek "the George Lucas of the comic world" and one which announced him as the "creator of CAPTAIN CANNABIS," describing a photo of the Captain Cannabis character as a "comic book alter ego"). [23] Critically, the Board relied also on multiple news and magazine articles associating CAPTAIN CANNABIS with Andrusiek's comic books, in periodicals whose apparentlyundisputed readership totaled approximately 750,000 people per month. Id. at *11 (citing High Times Magazine, with an undisputed estimated circulation of ~236,000 per month, and Culture Magazine, with an undisputed estimated circulation of ~500,000 per month). [24] The record here is amply greater than the comparatively more modest record in T.A.B. In the deferential posture of our present review, we cannot say there is such a failure of proof here. Given the additional evidence cited by the Board, substantial evidence supports the Board's findings that "more than a negligible portion of the relevant market" associated Andrusiek with CAPTAIN CANNABIS at the relevant times, which is all T.A.B. requires. T.A.B., 77 F.3d at 1377. [25] We similarly reject Appellants' argument that the Board did not make substantively sufficient findings about the applicable market. T.A.B. criticized a party who conducted "utterly" no analysis of the market size. T.A.B., 77 F.3d at 1377. But here, the Board expressly found that the "market for marijuana-related goods and services" was, at the relevant time, a "small" and "niche" market because of then-existing federal and state criminal penalties related to marijuana and drug paraphernalia. Decision, 2022 WL 4103636, at *11 & n.13. Appellants do not present any reason why, in the context of this case, the Board's findings are not adequately specific to sustain the Board's reasoned determination that enough of the consuming public associates Andrusiek's comic books with CAPTAIN CANNABIS. [26] Appellants' second argument is that the Board lacked substantial evidence to conclude that Andrusiek ever used "the CAPTAIN CANNABIS mark as a trademark," and therefore he did not engage in trademark use within a reasonable time from the analogous use. Appellants' Br. at 22. Appellants claim that the Board relied on "a single comic book" to show actual use and assert that "the title of a single book cannot serve as a source identifier" as a matter of law, citing our decision in Herbko. Id. (citing Herbko Int'l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162 (Fed. Cir. 2002)). Accordingly, Appellants assert that even if Andrusiek showed analogous use, he did not show a subsequent actual use, and therefore cannot show priority. [27] The primary issue with Appellants' position is that it misstates the record. Rather than merely relying on the "title" of "a single comic book," the Board relied on multiple independent pieces of evidence showing Andrusiek's trademark usage. Decision, 2022 WL 4103636, at *12-13 (citing "all of the testimony and documentary evidence . . . considered together," including Andrusiek's evidence of actual use of the mark in connection with a related series of goods: a movie, a screenplay, and a comic book called "Captain Cannabis: 40th Anniversary"). Appellants do not grapple with the screenplay; the animated video; or any of the evidence or testimony supporting the same. They simply do not acknowledge that the evidence exists. [28] Our review of the Board's decision and record confirms that it does. Id. Substantial evidence thus supports the Board's finding that Andrusiek engaged in trademark uses with the CAPTAIN CANNABIS mark. We have considered Appellants' remaining arguments and find them unpersuasive. For the reasons above, we affirm the Board's cancellation of Appellants' mark. Comments and Questions 1. The "totality of the circumstances" test. What kind and degree of pre-sales and/or sales activity can satisfy the use in commerce requirement for purposes of common law priority? Most courts have adopted some form of a "totality of the circumstances" test, sometimes heavily influenced by the equities of the case. See La SociétéAnonyme des Parfums Le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1274 n. 11 (2d Cir. 1974) ("[T]he balance of the equities plays an important role in deciding whether defendant's use is sufficient to warrant trademark protection."). In Chance v. Pac-Tel Teletrac Inc., 242 F.3d 1151 (9th Cir. 2001), for example, the Ninth Circuit summarized the factors that might be relevant to a totality of the circumstances analysis of use in commerce sufficient to justify rights: Accordingly, we hold that the totality of the circumstances must be employed to determine whether a service mark has been adequately used in commerce so as to gain the protection of the Lanham Act. In applying this approach, the district courts should be guided in their consideration of non-sales activities by factors we have discussed, such as the genuineness and commercial character of the activity, the determination of whether the mark was sufficiently public to identify or distinguish the marked service in an appropriate segment of the public mind as those of the holder of the mark, the scope of the non-sales activity relative to what would be a commercially reasonable attempt to market the service, the degree of ongoing activity of the holder to conduct the business using the mark, the amount of business transacted, and other similar factors which might distinguish whether a service has actually been "rendered in commerce". Id. at 1159. Applying these factors, the Ninth Circuit found that the October 1989 mailing by Allen Chance ("Chance") of 35,000 postcards promoting his TELETRAC tracking service that led to 128 telephone responses but no sales was not sufficient to establish use in commerce. Meanwhile, Pac-Tel, in contrast, had significant activities even prior to [Chance's] post card mailing. The record demonstrates that as early as June 1989, Pac-Tel began using the mark on a continuous basis. As early as 1984, a Pac-Tel predecessor company was using the mark as part of its business name. Pac-Tel began a public relations campaign using the mark to introduce its new service in July 1989. In September 1989, it sent out brochures to potential customers. In early fall 1989, it conducted interviews with major newspapers including the Wall Street Journal, Washington Post and Chicago Tribune which resulted in a number of stories that mentioned the service mark. During this time the service was marketed to potential customers who managed large vehicle fleets through a slide presentation using the mark. While the district court found that Pac-Tel's first use was in April 1990, when it began making its service available on a commercial basis for the first time on the Los Angeles school buses, the totality of the record demonstrates that its first use of the mark was significantly earlier and clearly predated [Chance]'s first use Id. at 1160. Another example of the application of the totality of the circumstances test, along with a strong grounding in the balance of the equities, is Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d 427 (7th Cir. 1999). When the Los Angeles Rams announced that they were moving to St. Louis, Rodney Rigsby, proprietor of Johnny Blastoff, Inc., had the bright idea somehow to claim ownership of the ST. LOUIS RAMS mark before the football team could. He filed a State of Wisconsin trademark application on February 22, 1995, and two federal intent-to-use registration applications on March 10, 1995. The court found that the football team's use in commerce preceded these dates. Here is the core of the court's analysis: On January 17, 1995, Georgia Frontiere, the owner of the Rams, and St. Louis Mayor Freeman Bosley held a press conference at which they announced the Rams' intention to relocate from Los Angeles to St. Louis. The press conference story received extensive national and local press, including the St. Louis Dispatch's publication, on January 18, 1995, of a sixteen-page pullout section of the newspaper entitled "St. Louis Rams." Vendors sold unlicensed "St. Louis Rams" merchandise in the St. Louis area in January of 1995, and by February of 1995, more than 72,000 personal seat licenses for the St. Louis Rams' home games had been received. By the time Blastoff registered the "St. Louis Rams" mark in Wisconsin in February of 1995, a significant portion of the public associated the mark with the Rams football club. However, Blastoff asserts that the defendants had not sufficiently used the mark "St. Louis Rams" to be given priority. Blastoff argues that at the January 17, 1995, press conference, none of the defendants used the words "St. Louis Rams," and thus, this term was rendered an "unarticulated idea for a team name," which is not protectable. Blastoff also states that newspaper and media coverage is insufficient to establish priority. Finally, Blastoff contends that the football club "operated publicly and exclusively as [the] 'L.A. Rams'" as late as February 8, 1995. For the purpose of establishing public identification of a mark with a product or service, the fact-finder may rely on the use of the mark in "advertising brochures, catalogs, newspaper ads, and articles in newspapers and trade publications," T.A.B. Systems v. Pactel Teletrac, 77 F.3d 1372, 1375 (Fed. Cir. 1996), as well as in media outlets such as television and radio. See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1125 (Fed. Cir. 1985). In addition, courts have recognized that "abbreviations and nicknames of trademarks or names used only by the public give rise to protectable rights in the owners of the trade name or mark which the public modified." Nat'l Cable Television Assoc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1577 (Fed. Cir. 1991). Such public use of a mark is deemed to be on behalf of the mark's owners. See id. Blastoff has failed to demonstrate any equivalent use of the mark "St. Louis Rams" by February of 1995, when the defendants established, by use and public association, their priority in the mark. Blastoff's insignificant and very limited use of the mark prior to February of 1995, consisting of the development of the "Tower City Rams" design, along with the production of a swatch of material with "St. Louis Rams" embroidery, is insufficient to establish a link between the mark and its products. Furthermore, the owner's use of a trademark is relevant in establishing public identification of a mark with a product or service. Georgia Frontiere, owner of the Rams, in announcing her intention to move the franchise to St. Louis from Los Angeles, implicitly adopted the exact phrase "St. Louis Rams" on the date of her press conference. This Court's decision in Indianapolis Colts, Inc. v. Metropolitan Baltimore Football Club Ltd., 34 F.3d 410, 413 (7th Cir. 1994), is strong support for the proposition that the Rams organization and the NFL had a longestablished priority over the use of the "Rams" name in connection with the same professional football team, regardless of urban affiliation. Stealing" someone else's idea for a trademark. Because use, rather than invention, is the basis for trademark rights under the Lanham Act, there is no remedy under the Act for the "theft" of an idea for a trademark. In American Express Co. v. Goetz, 515 F.3d 156 (2d Cir. 2008), cert. denied, 129 S. Ct. 176 (U.S. 2008), the declaratory defendant Stephen Goetz developed the slogan "My Life. My Card." for a credit card and sought to interest various credit card providers in using it and his consulting services. On July 30, 2004, Goetz mailed a proposal to American Express urging American Express to adopt the mark. American Express never responded. In November, 2004, however, American Express launched a global campaign based on the phrase "My Life. My Card." When Goetz threatened suit, American Express filed for a declaration of noninfringement. Documents produced in the litigation showed that the advertising firm Ogilvy Group first proposed the mark to American Express on July 22, 2004, and Goetz eventually conceded that Ogilvy had developed and American Express had adopted the mark without any knowledge of his proposal. The district court granted summary judgment to American Express and the Second Circuit affirmed. What drove the outcome of the litigation was not the priority of invention issue, however. Instead, it was the simple fact that Goetz never made a qualifying use in commerce of the mark: "[C]onstruing all the facts in Goetz's favor, the only reasonable conclusion that can be drawn is that My Life, My Card was a component of Goetz's business proposal to the credit card companies rather than a mark designating the origin of any goods or services he offered to them." Id. at 160. The use in commerce prerequisite for trademark rights has the salutary effect of limiting the ability of bad faith agents to exploit the trademark registration system in the way that some "non-practicing entities" arguably exploit the patent system. In Central Mfg., Inc. v. Brett, 492 F.3d 876 (9th Cir. 2007), the defendant George Brett (and brothers) manufactured a hybrid wood-metal bat under the trademark STEALTH. Plaintiff Central Mfg., of which the then-notorious trademark troll Leo Stoller was president and sole shareholder, sued for infringement of its own mark STEALTH, which it had registered in 1985 for "[s]porting goods, specifically, tennis rackets, golf clubs, tennis balls, basketballs, baseballs, soccer balls, golf balls, cross bows, tennis racket strings and shuttle cocks." When Brett challenged Stoller to produce any evidence of use in commerce of the mark, Stoller's documents failed to persuade the district court. For example: "Plaintiffs produced a table of 'Stealth Brand Baseball Sales' between 1996 and 2003, but could provide absolutely no information to justify the lump sum 'sales' figures listed. There is no way for this Court to know that this alleged sales sheet bears any relation to reality and is not simply something Plaintiffs generated on a home computer for the purposes of this litigation." Stoller has repeatedly sought ways to get around trademark law's prohibition on the stockpiling of unused marks, and this case is no different. It is unfathomable that a company claiming to have engaged in thousands of dollars of sales of a product for more than a decade would be unable to produce even a single purchase order or invoice as proof. Self-serving deposition testimony is not enough to defeat a motion for summary judgment. By exposing Central's failure to make bona fide use of the "Stealth" mark for baseballs, Brett Brothers met its burden to overcome the presumption afforded by the 1985 registration, and summary judgment in its favor was the appropriate course. Id. at 883. Brett was also awarded attorney fees. In December 2010, Stoller was indicted on fraud charges related to statements made in his bankruptcy filings. In November 2014, he was sentenced to 20 months in a federal prison. See http://en.wikipedia.org/ wiki/Leo_Stoller. For a more recent example of behavior possibly akin to trademark trolling, see Eric Goldman, My Declaration Identifying Emoji Co. GmbH as a Possible Trademark Troll, TECH. & MARKETING L. BLOG, Sept. 20, 2021, https://perma.cc/L4YN-X89U (discussing the highvolume litigation behavior of Emoji Co. GmbH). Use, rather than registration, is the basis of federal trademark rights in the United States. See In re Int'l Flavors & Fragrances, Inc., 183 F.3d 1361, 1366 (Fed. Cir. 1999) ("The federal registration of a trademark does not create an exclusive property right in the mark. The owner of the mark already has the property right established by prior use․ However, those trademark owners who register their marks with the PTO are afforded additional protection not provided by the common law."). As explained previously in this Part, the Lanham Act will protect a trademark owner's exclusive rights in any trademark it is using in commerce regardless of whether the mark is registered provided that the unregistered mark meets the various substantive requirements for registration established by the Act. In other words, if the mark as used in commerce could be registered, it will be protected even if it is not registered. Conversely, the Lanham Act will not protect a trademark registrant's exclusive rights in its registered mark if it no longer uses its mark in commerce and cannot prove an intent to resume use in the near future. On this basis, it is often said that the U.S. trademark system is a "use-based" system in contrast to the "registration-based" systems more common around the world. 14 In the United States, registration merely records the preexistence of externally established rights. 15 The U.S. registration system is different in another significant respect. Unlike many foreign registration systems, which review applications only for compliance with formal requirements, the PTO reviews applications to ensure that they meet both formal requirements (which are largely set forth in Lanham Act § 1) and substantive requirements (largely found in Lanham Act § 2). These substantive requirements include both "absolute grounds" for refusal of registration, such as that the mark is deceptive, and "relative grounds" for refusal, such as that the mark is confusingly similar with a previously registered mark. A trademark applicant at the PTO must claim at least one "filing basis" for its application among the five that are provided by the Lanham Act. These filing bases are: 1. Lanham Act § 1(a): the applicant is already making actual use of the mark in commerce; 2. Lanham Act § 1(b): the applicant has a bona fide intent to use the mark in commerce in the near future; 3. Lanham Act § 44(d): the applicant filed a foreign application to register the mark within six months prior to its application to the PTO and claims the priority date of that prior foreign application; 4. Lanham Act § 44(e): the applicant possesses a registration of the mark in the applicant's country of origin; to other nations' registration-based systems and concluding that the former is more economically efficient). 15 See, e.g., Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 372 (1st Cir. 1980) ("[F]ederal registration . . . does not create the underlying right in a trademark. That right, which accrues from the use of a particular name or symbol, is essentially a common law property right . . . ."). 5. Lanham Act § 66(a): the applicant requests extension of protection of an international registration under the Madrid System for the international registration of trademarks. The first four filing bases are not mutually exclusive; the § 66(a) filing basis, by contrast, may not be combined with other filing bases. While the § § 1(a), 44(d), and 44(e) filing bases have been available since the effective date of the original Lanham Act on July 5, 1947, the § 1(b), or "ITU," filing basis became available with the effective date of the Trademark Law Revision Act (TLRA) on November 16, 1989,foot_5 and the § 66(a) filing basis became available with the effective date of the Madrid Protocol Implementation Act on November 2, 2003. 17 Most trademark applications at the PTO are now filed under the Lanham Act § 1(b) intent to use basis. Lanham Act § § 44 & 66(a), 15 U.S.C. § § 1126 & 1141(f), set forth important though relatively obscure exceptions to the general rule that a trademark must be used in commerce for it to be federally registered. See, e.g., Lanham Act § 44(e), 15 U.S.C. § 1126(e) ("The application must state the applicant's bona fide intention to use the mark in commerce, but use in commerce shall not be required prior to registration."). As noted in In re Cyber-Blitz Trading Services, 47 U.S.P.Q.2d 1638 (Comm'r Pats. 1998), [o]ne significant difference between Section 1(b) and 44 of the Trademark Act is that Applicants who rely on Section 1(b) as a filing basis must establish use of the mark prior to registration, or the application will become abandoned. In contrast, Applicants who rely solely on Section 44 are not required to demonstrate use in order to obtain registration. Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984). In fact, the first time evidence of use usually is required for Section 44 Applicants is upon the filing of an Affidavit of Continued Use under Section 8 of the Trademark Act, 15 U.S.C. § 1058. This does not occur until five to six years after registration. Id. at 1639-40. See also TMEP § 1009. The reasoning of Cyber-Blitz also applies to § 66(a) applications. 18 (2025) (describing Amazon's Brand Registry as a "shadow trademark system" and analyzing its impact on trademark application practices at the PTO and branding practices more generally). By the end of 2023, there were 3.1 million live trademark registrations on the PTO's Principal Register. See USPTO Trademark Case Files Dataset 2023. Of these, • 71.6% consisted only of "standard character" marks, meaning that the registrant was claiming a mark consisting only of text and was claiming that text in any font; • 5.8% consisted of "stylized character" marks, meaning that the registrant was claiming a mark consisting only of text in a particular font; • 3.7% consisted only of an image with no textual component; • 18.9% consisting of text and image; and • 0.01% (or 252 total registrations) consisted of "non-traditional marks" such as smells or textures. Registration on the Principal Register confers significant, substantive advantages on the registered mark. First and perhaps most importantly, under Lanham Act § 7(c), 15 U.S.C. § 1057, registration confers on the registrant nationwide priority in the mark as of the date of application. Section 7(c) reads as follows: (c) Application to register mark considered constructive use. Contingent on the registration of a mark on the principal register provided by this Act, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except for a person whose mark has not been abandoned and who, prior to such filing- (2) has filed an application to register the mark which is pending or has resulted in registration of the mark; or (3) has filed a foreign application to register the mark on the basis of which he or she has acquired a right of priority, and timely files an application under section 44(d) [15 USC 1126(d)] to register the mark which is pending or has resulted in registration of the mark. 15 U.S.C § 1057. This right of priority extends nationwide even if, as is often the case, the registrant has not itself used the mark throughout the nation. And in the case of ITU applications, the intent to use applicant enjoys nationwide priority as of its ITU application date even if several years pass before the applicant finally makes an actual use of its mark and completes its registration. (We will address the geographic scope of trademark rights in more detail in Part I.E). Second, registration is prima facie evidence of the validity of the mark and of the registrant's ownership of the mark. Lanham Act § § 7(b) & 33(a), 15 U.S.C. § § 1057(b) & 1115(a). The curcuits vary on whether these provisions shift the burden of persuasion to the defendant to disprove the validity of a registered mark or merely shift the burden of production to the defendant to come forward with evidence of invalidity. Compare, e.g., Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206, 216 n.10 (2d Cir. 2012) ("In order to rebut the presumption of validity, the allegedly infringing party must show, by a preponderance of the evidence, . . . that the mark is ineligible for protection.") with OBX-Stock, Inc. v. Bicast, Inc., 558 F.3d 334, 342 (4th Cir. 2009) ("[E]ntry on the Principal Register does not shift the burden of persuasion on validity, merely the burden of production."); Custom Vehicles, Inc. v. Forest River, Inc., 476 F.3d 481, 486 (7th Cir. 2007) ("[T]he presumption of validity that registration creates is easily rebuttable, since it merely shifts the burden of production to the alleged infringer."); and Door Systems, Inc. v. Pro-Line Door Systems, Inc., 83 F.3d 169, 172 (7th Cir. 1996) ("The presumption of validity that federal registration confers evaporates as soon as evidence of invalidity is presented. Its only function is to incite such evidence and when the function has been performed the presumption drops out of the case." See also Charles L. Cook & Theodore H. Davis, Jr., Litigating the Meaning of "Prima Facie Evidence" under the Lanham Act: The Fog and Art of War, 103 TRADEMARK REP. 437 (2013). Third, only marks registered on the Principal Register may achieve incontestable status, which confers a significant benefit on descriptive marks. Lanham Act § § 15 and 33, 15 U.S.C. § § 1065 & 1115, set out the main requirements a registrant must meet to file a Declaration of Incontestability of a Mark Under Section 15: (1) the mark must have been in continuous use for any period of five consecutive years after the date of registration and must still be in use at the time of filing, (2) there has been no final decision adverse to the registrant's ownership of or validity of the registration of the mark, and (3) there is no proceeding involving the registrant's ownership of or validity of the registration of the mark pending at the PTO or in any court. Lanham Act § 15, 15 U.S.C. § 1065. Incontestable status limits the grounds on which the registered mark's validity may be contested for the remaining life of the registration (which may be renewed in perpetuity). Lanham Act § § 15 and 33(b) explicitly list out these grounds; any that are not listed are foreclosed. One ground not listed is that the mark lacks secondary meaning. Thus, the validity of descriptive marks that have achieved incontestable status may not be challenged on the ground that they lack secondary meaning-though they may be challenged on the ground that they are generic. 19 Another ground not listed is that the mark fails to function as a mark. See Lisa P. Ramsey, Using Failure to Function Doctrine to Protect Free Speech and Competition in Trademark Law, 104 IOWA L. REV. ONLINE 70 (2020) (advocating that § 14 and § 15 be amended to allow any mark to be cancelled at any time on the ground that it fails to function as a mark). In the notorious case of Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 (1985), the Supreme Court confirmed the rule that incontestable marks may not be challenged on the ground that they lack secondary meaning. In Park 'N Fly, the Court held that the incontestable-and clearly descriptive-mark PARK 'N FLY for airport parking services could not be challenged on the ground that it lacked secondary meaning, notwithstanding that the record below strongly suggested that the mark lacked secondary meaning at the time of registration in 1971 and still lacked secondary meaning when the case was being litigated in the early 1980s. See id. at 211 (Stevens, J., dissenting). 20 Registrants may also use incontestable status "defensively" in situations in which their registered mark is accused of infringing another mark. See MCCARTHY § 31:141. Together, 19 Furthermore, even if the statute forces the court to find that the incontestable mark possesses secondary meaning, a court may nevertheless find that the mark's secondary meaning is so weak that as a practical matter no consumers would be confused by a similar mark. See Rebecca Tushnet, Registering Disagreement: Registration in Modern American Trademark Law, 130 HARV. L. REV. 867, 903-04 (2017). 20 In his lengthy dissent, Justice Stevens expressed his dismay that the decision of a single trademark examiner in an ex parte proceeding a decade earlier, followed by the registrant's perfunctory filing of a declaration of incontestability, could somehow prevent the Court from striking from the Principal Register an "inherently unregistrable" mark. See Park 'N Fly, 469 U.S. at 206-07 (Stevens, J., dissenting). He also added his own opinion of trademark quality at the PTO for good measure. See id. at 212 ("No matter how dedicated and how competent administrators may be, the possibility of error is always present, especially in nonadversary proceedings."). In a footnote to this statement, Justice Stevens quoted a PTO official who testified to Congress that "at any one time, about 7 percent of our 25 million documents are either missing or misfiled." Id. at 212 n.12 (quoting Hearing Before the Subcomm. on Patents, Copyrights & Trademarks of the S. Comm. on the Judiciary, 98th Cong. Lanham Act § § 15 and 33(b) establish that in the case of registrations granted incontestable status, the right of the registrant to use its registered mark in commerce on the goods specified in the registration is incontestable (even if the use causes confusion). For example, in Garcoa, Inc. v. Sierra Sage Herbs LLC, No. 21 Civ. 4672, 2022 WL 16548874 (C.D. Cal. October 4, 2022), the plaintiff used the registered mark BLUE GOO for pain relief products and claimed that the defendant's registered mark GREEN GOO, also for pain relief products, infringed. Wisely, the defendant had previously applied for and received incontestable status for its registration. The court granted the defendant's motion for summary judgment purely on the basis that by operation of Lanham Act § § 15 and 33(b), the defendant's right to use its mark in commerce on the goods specified in the registration was incontestable. The court never reached the issue of likelihood of confusion. Does the defensive use of incontestable status make sense as a matter of trademark policy? Is it too formalistic? Registration confers additional benefits on the trademark owner: • Owners of registered marks may obtain statutory damages against counterfeiters. See Lanham Act § 35(c) (statutory damages available in "cases involving the use of a counterfeit mark"), 15 U.S.C. 1117(c), and Lanham Act § 34(d)(1)(B)(i) (defining "counterfeit mark" as "counterfeit of a mark that is registered on the principal register"), 15 U.S.C. § 1116(d)(1)(B)(i). Owners of registered marks may also benefit from criminal prosecution of trademark counterfeiters. See 18 U.S.C. § 2320. • Owners of registered marks enjoy the right to request customs officials to bar the importation of goods bearing infringing trademarks under Lanham Act § 42, 15 U.S.C. § 1124. • In the case of registered trade dress, owners do not bear the burden of establishing the non-functionality of their trade dress. Under Lanham Act § 43(a)(3), 15 U.S.C. § 1125(a)(3), owners of unregistered trade dress bear this burden. • A mark's registered status may serve a powerful rhetorical function in front of juries. Note that it is often still said, incorrectly, that only owners of registered marks may seek treble damages and attorney fees in exceptional cases under Lanham Act § 35(a). In fact, the TLRA of 1988 amended Section § 35(a) to reference any "violation under section 43(a)," thus providing enhanced damages and attorney fees in exceptional cases to owners of unregistered marks. Non-inherently distinctive marks that fail to qualify for Principal Register registration because they are determined to lack acquired distinctiveness may nevertheless seek registration on the Supplemental Register. Specifically, Lanham Act Section 23(a), 15 U.S.C. All marks capable of distinguishing applicant's goods or services and not registerable on the principal register provided in this chapter, except those declared to be unregisterable under subsections (a), (b), (c), (d), and (e)(3) of section 1052 [Lanham Act § 2] of this title, which are in lawful use in commerce by the owner thereof, on or in connection with any goods or services may be registered on the supplemental register upon the payment of the prescribed fee and compliance with the provisions of subsections (a) and (e) of section 1051 [Lanham Act § 1] of this title so far as they are applicable. Id. Principal Register applicants typically seek Supplemental Register registration (by amending their application) only after the PTO has refused registration on the Principal Register on the ground that the applied-for mark is descriptive and lacks secondary meaning. As the language of § 23(a) establishes ("which are in lawful use in commerce"), only usebased applications can be converted into supplemental registrations; intent to use applications do not have this option. There are several benefits to Supplemental Register registration: • Examiners may cite the supplemental registration against future applications for either Principal or Supplemental Register registration where the future applied-for mark would be confusingly similar under § 2(d) with the supplemental registration mark. • Relatedly, the mark registered on the Supplemental Register is more likely to be detected in search reports prepared for others contemplating the registration of similar marks. • Supplemental registration may form the basis for registration of certain marks (particularly those that are descriptive or take the form of product configuration or packaging) in certain foreign countries and regions. The Supplemental Register was originally established for this purpose. Current PTO fees for the registration of a trademark range begin at $350 per Nice class of goods or services. (The Nice classification scheme is discussed below.) Experienced trademark prosecutors will generally estimate that the cost to register a trademark at the PTO, including both filing fees and attorney's fees, starts at approximately $2,000 for a simple use-based single-class word mark application, with the addition of perhaps $500 per additional Nice class. Attorney's fees may vary by the quality of counsel. More complex applications, including those filed on an intent to use basis or for non-verbal marks, may cost considerably more. As the figure above shows, by 1993, over half of all trademark applications filed annually at the PTO were filed on a § 1(b) intent to use filing basis. The ITU filing basis allows an applicant to begin the trademark registration process before it has used its mark in commerce provided that it has a "a bona fide intention, under circumstances showing the good faith of such person, to use [the] trademark in commerce." Lanham Act § 1(b)(1), 15 U.S.C. § 1051(b) (1). The ITU filing basis greatly benefits firms that wish to establish the registrability of and priority rights in their marks before actually using their marks in commerce. However, the ITU system is also open to abuse from firms who have at the time of filing no real intention to use the mark but rather wish merely to establish an option to use the mark sometime in the future. It is also open to abuse from "meme mark" filers who rush to file a § 1(b) application for the latest cultural catchphrase but have at the time of filing no reasonably well-developed plan to use that phrase on or in connection with goods or services. See Barton Beebe, Is the Trademark Office a Rubber Stamp?, 48 HOUSTON L. REV. 751, 757 (2011) (discussing "meme mark" filings associated with September 11 such as "Let's Roll" and "Seal Team 6"). The following opinion grew out of a priority battle between two claimants to the trademark WORKWIRE. [1] Defendant Creative Harbor, LLC ("Creative Harbor") appeals the judgment entered by the district court on February 1, 2016, voiding Creative Harbor's trademark applications numbered 86198230 and 86198309, respectively. Creative Harbor challenges the district court's determinations that: (1) Creative Harbor lacked a bona fide intention to use its requested mark in commerce with respect to some of the goods and services identified in its trademark applications, in violation of § 1(b) of the Lanham Act, 15 U.S.C. § 1051(b); and (2) if Creative Harbor lacked such intent with respect to any of the goods and services, the applications must be voided in their entirety. We have jurisdiction over this appeal pursuant to 28 U.S.C. § 1291. For the reasons set forth below, we AFFIRM IN PART and VACATE IN PART the district court's judgment. We REMAND for further proceedings consistent with this opinion. BACKGROUND I. Factual History [2] We present the facts in the light most favorable to Creative Harbor, against whom the district court entered summary judgment. [3] Defendant Creative Harbor is a California-based technology startup purportedly "engaged in the business of original content creation and concept development for all media, including but not limited to, internet, mobile, photography, film, and TV." (Answer.) Creative Harbor was founded in 2014 by Christian Jurgensen ("Jurgensen"), who serves as Creative Harbor's owner, sole manager, and CEO. [4] Plaintiff Kelly Services, Inc. is a Michigan-based company that is allegedly "one of the world's largest providers of personnel and managed business services -staffing 99% of Fortune 100 companies and 90% of Fortune 500 companies." (Complaint.) Plaintiff Kelly Properties, LLC, is an affiliated entity of Kelly Services, Inc. Because Plaintiffs do not assert separate claims or arguments, and have identical interests for the purposes of this appeal, we refer to them collectively as "Kelly Services." [5] In essence, the parties dispute which of them should have priority to the trademark WORKWIRE ("the Mark"), which both wish to use in connection with their competing employment-based software applications. In September 2013, Jurgensen allegedly developed an idea for a mobile application designed to connect employers with prospective employees. Jurgensen decided to call the application "WorkWire," and formed Creative Harbor in February 2014 to develop the WorkWire application. In early 2014, Creative Harbor hired an intellectual property attorney to explore obtaining the WORKWIRE trademark. That attorney allegedly advised Creative Harbor that the Mark was available. [6] However, in early 2013, Kelly Services allegedly began developing its own employment-based iPad application, which it intended to distribute through the Apple App Store. Kelly Services also decided to name its application "WorkWire." Kelly Services allegedly completed this iPad application on February 4, 2014, and submitted the application to Apple for its approval and eventual distribution. On February 17, 2014, Apple approved Kelly Services' application, but did not release it on the App Store immediately. [7] On February 19, 2014, Creative Harbor filed two trademark applications seeking rights to the Mark with the United States Patent and Trademark Office at 6:28 p.m. and 7:56 p.m. Eastern Standard Time, respectively ("the Applications"). The Applications sought the right to use the Mark in connection with thirty-six individually identified goods and services. Creative Harbor affirmed under penalty of perjury that it possessed a bona fide intention to use the Mark in commerce on or in connection with each of the goods and services listed in the Applications. On the same day, at approximately 8:11 p.m. Eastern Standard Time, Kelly Services' iPad application became available on the Apple App Store. A customer first downloaded the Kelly Services application on February 20, 2014. [8] On March 10, 2014, Creative Harbor sent Kelly Services a cease and desist letter asserting its right to use the Mark, and demanding that Kelly Services cease using the WORKWIRE name in connection with Kelly Services' Apple App Store iPad application. Sixteen days later, Kelly Services responded to that letter by bringing suit against Creative Harbor in the United States District Court for the Eastern District of Michigan. In its complaint, Kelly Services sought a declaratory judgment, inter alia, that: (1) it possessed superior rights to the Mark; (2) it had not infringed on Creative Harbor's rights to the Mark; and (3) Creative Harbor's rights to the Mark were invalid. [9] On May 2, 2014, Creative Harbor answered the complaint and filed counterclaims against Kelly Services. Relevant to this appeal, Creative Harbor sought a declaratory judgment that it had priority rights to the Mark over Kelly Services because it filed the Applications before Kelly Services began using the Mark in commerce. . . . . [10] Kelly Services sought discovery related to various issues in the case, including Creative Harbor's intent to use the Mark in commerce with respect to each of the goods and services listed in the Applications. In response to Kelly Services' document requests, Creative Harbor produced a PowerPoint presentation that included mock-up "wireframes" (a concept map outlining the elements of a software application) for a potential iPhone application. [11] Kelly Services also deposed Jurgensen as Creative Harbor's representative pursuant to Federal Rule of Civil Procedure 30(b)(6). During the deposition, Kelly Services asked Jurgensen a number of questions related to Creative Harbor's plans to use the Mark in connection with the thirty-six goods and services identified in the Applications. In response to these questions, Jurgensen testified that Creative Harbor's outside attorney, David Sharifi, prepared the Applications under Jurgensen's instructions to "protect the mark" as to different products and services for which the Mark "could" eventually be used "in case the brand got bigger." (Deposition transcript.) Accordingly, Jurgensen testified that he was not personally aware of the particular reasons why Sharifi included particular goods and services in the Applications. Jurgensen elaborated that "some of these services might be of future importance. Some of these terms might protect my endeavors in the future that I have . . . with the brand . . . . We can go through every single [item], but I can also say to some of them this would have been a future use." (Id.) [12] Additionally, Jurgensen made several statements concerning the goods and services identified in the Applications. {These statements are discussed below}. [13] On May 14, 2015, Creative Harbor moved for partial summary judgment seeking a declaration that it had priority to the Mark based on the Applications. Kelly Services opposed Creative Harbor's motion on the ground that the Applications were invalid because Creative Harbor lacked bona fide intent to use the Mark on some of the goods and services listed in the Applications, as required by § 1(b) of the Lanham Act. The district court construed Kelly Services' opposition as a cross-motion for summary judgment on the priority issue. . . . . [14] On October 16, 2015, the district court granted Kelly Services' cross-motion for summary judgment, voiding the Applications in their entirety. Kelly Servs. II, 140 F.Supp.3d at 623. The district court concluded that there was no genuine issue of material fact that Creative Harbor lacked a bona fide intent to use the Mark as to some of the goods and services listed in its Applications. Id. at 618-19. After surveying TTAB precedent, the district court concluded that Creative Harbor's lack of bona fide intent as to some of the goods and services necessitated voiding the Applications in their entirety. Id. at 622. . . . . [15] On appeal, Creative Harbor argues that: (1) the district court erred in concluding that it lacked a bona fide intent to use the Mark in commerce with respect to some of the goods and services listed in the Applications at the time the Applications were filed; and (2) even if Creative Harbor did lack bona fide intent as to certain goods and services, the Applications should not have been voided in their entirety. We address each of these arguments in turn. (1). We therefore join the Federal and D.C. Circuits and hold that a lack of bona fide intent is a proper ground on which to oppose an ITU application. M.Z. Berger, 787 F.3d at 1375; Aktieselskabet, 525 F.3d at 21. [18] Although the Lanham Act does not define what constitutes a bona fide intent to later use a mark in commerce, the Federal Circuit has explained "that the applicant's intent must be demonstrable and more than a mere subjective belief." M.Z. Berger, 787 F.3d at 1375; 3 McCarthy on Trademarks § 19.14, at 19.48 ("Congress did not intend the issue to be resolved simply by an officer of the applicant later testifying, 'Yes, indeed, at the time we filed that application, I did truly intend to use the mark at some time in the future.'"). Accordingly, "whether an applicant had a 'bona fide intent' to use the mark in commerce at the time of the application requires objective evidence of intent." M.Z. Berger, 787 F.3d at 1376 (emphasis added). "Although the evidentiary bar is not high, the circumstances must indicate that the applicant's intent to use the mark was firm and not merely intent to reserve a right in the mark." Id. (emphasis added). This determination must be made on a "case-by-case basis considering the totality of the circumstances," and may be assessed as of the time the application was filed. Id . . . . [19] "Neither the [Lanham Act] nor [its] legislative history indicates the specific quantum or type of objective evidence required to meet the bar" to show bona fide intent. M.Z. Berger, 787 F.3d at 1376. Drawing from the relevant legislative history, however, the TTAB has provided "several specific examples of objective circumstances which, if proven, 'may cast doubt on the bona fide nature of the intent or even disprove it entirely.'" Lane, 1994 WL 740491, at *6 (quoting S. Rep. No. 100-515, at 23 (1988)). For example, the applicant may have filed numerous intent-to-use applications to register the same mark for many more new products than are contemplated, numerous intent-to-use applications for a variety of desirable trademarks intended to be used on [a] single new product, numerous intent-to-use applications to register marks consisting of or incorporating descriptive terms relating to a contemplated new product, numerous intent-to-use applications to replace applications which have lapsed because no timely declaration of use has been filed, an excessive number of intent-to-use applications to register marks which ultimately were not actually used, an excessive number of intent-to-use applications in relation to the number of products the applicant is likely to introduce under the applied-for marks during the pendency of the applications, or applications unreasonably lacking in specificity in describing the proposed goods. Other circumstances may also indicate the absence of genuine bona fide intent to actually use the mark. [20] Further, one prominent practitioner has recently compiled a list of "affirmative activities that have been deemed indicative of the presence of a bona fide intent to use," including: • performing preparatory graphic design work or labeling on sales material for a product; • testimony regarding informal, unwritten business plans or market research; • obtaining a correlative domain name for the mark or setting up a website; • making contacts with individuals who might help develop a business; • correspondence mentioning the planned use of the mark; • attempts to find licensees, including ones outside of the U.S.; [and] • obtaining commercial space in which to perform the services. See Sandra Edelman, Proving Your Bona Fides-Establishing Bona Fide Intent to Use Under the U.S. Trademark (Lanham) Act, 99 TRADEMARK RPTR. 763, 781-82 (2009) (footnotes omitted) (emphasis in original). [21] On a motion for summary judgment in an action challenging an ITU application for lack of bona fide intent, the party opposing the application ("opposing party" or "opposer") "has the initial burden of demonstrating by a preponderance of the evidence that [ [22] Creative Harbor argues that the evidence in the record shows that it had a bona fide intent to use the Mark in connection with each and every one of the thirty-six goods and services listed in the Applications at the time they were filed. We disagree. 1. Prime Facie Showing of Lack of Bona Fide Intent [23] As the party challenging Creative Harbor's Applications, Kelly Services bore "the initial burden of demonstrating by a preponderance of the evidence that [Creative Harbor] lacked a bona fide intent to use the mark on the identified goods." Bos. Red Sox, 2008 WL 4149008, at *6. We hold that Kelly Services met this initial burden. [24] As the district court correctly found, Jurgensen's deposition testimony on behalf of Creative Harbor was sufficient to demonstrate by a preponderance of the evidence that Creative Harbor lacked bona fide intent to use the Mark as to at least some of the goods and services identified in the Applications at the time the Applications were filed. The district court and Kelly Services specifically reference the following portions of Jurgensen's deposition: • Mr. Jurgensen testified that he asked his attorney to file the [Applications] in order 'to protect this brand . . . in case the brand got bigger; in case it diversifies a little bit.' (Deposition testimony.); • Mr. Jurgensen said that the services and goods listed on the [Applications] 'were defined with the idea of protecting my present and future exploration of this nameof this brand.' (Id.); • Mr. Jurgensen conceded that at the time his attorney drafted the [Application] he (Jurgensen) 'had clear ideas for some of them, and some of them were meant for future exploration.' (Id.); • Mr. Jurgensen acknowledged that some of the listed 'services might be of future importance' and that they 'might protect my endeavors in the future that I have . . . .' (Id.); [25] These excerpts establish that Creative Harbor did not have a "firm" intention to use the Mark in connection with computer software games, professional credentialing verification services, employee relations information services, employment staffing consultation services, and business consulting services-all goods and services listed in the Applications. See M.Z. Berger, 787 F.3d at 1376. Moreover, several of Jurgensen's other statements strongly suggest that Creative Harbor included some goods and services in the Applications merely to "reserve a right in the mark" in case it ever decided to expand its commercial activities into those areas. Id. Jurgensen's statement that, at the time the Applications were filed, Creative Harbor "had clear ideas for some of [the goods and services], and some of them were meant for future exploration" is particularly indicative of Creative Harbor's lack of firm intent. Creative Harbor was not permitted to claim the Mark for uses that might only materialize after some unspecified "future exploration"-it was required to have firm plans to use the Mark at the time the Applications were filed. M.Z. Berger, 787 F.3d at 1376. Taking all of Jurgensen's statements together, we are persuaded that the district court was correct in concluding that Kelly Services carried its initial burden in showing that it was more likely than not that Creative Harbor lacked bona fide intent as to some of the goods and services listed in the Applications. . . . . [26] Accordingly, we hold that Kelly Services met its initial burden of production to show that Creative Harbor lacked bona fide intent as to some of the goods and services listed in the Applications. [27] Once Kelly Services met its initial burden of production, Creative Harbor was required to come forward with either objective documentary evidence establishing its bona fide intent, or facts supporting a sound explanation as to why such evidence was lacking. Honda Motor Co., 2009 WL 962810, at *2. We hold that Creative Harbor provided sufficient objective evidence as to some of the goods and services listed in the Applications, but not others. [28] In its summary judgment briefing, and again on appeal, Creative Harbor marshals significant evidence demonstrating its bona fide intent. A representative sample of Creative Harbor's evidence includes: • Its hiring of a computer program development firm to develop an employment-based software application for Apple's "App Store." (App Developer Agreement); • A trademark search it purportedly conducted to determine whether the WORKWIRE name was available. (Deposition testimony); • The wireframes it developed for its proposed employment-based software application. (Id.); • Its business plans for the proposed application. (5 Year Business Plan); • Its obtaining of the www.work-wire.com domain name. (Domain Registration); and • Its press release regarding its employment-based software application. (Press Release.) [29] The district court correctly acknowledged that Creative Harbor's evidence "makes clear" that Creative Harbor had a bona fide intent as to some of the goods and services listed in the Applications. Kelly Servs. II, 140 F.Supp.3d at 618. For example, the district court noted "that Creative Harbor had a 'firm' intent to use the Mark in connection with an iPhone application that connected job seekers with employers." Id. We agree with the district court, however, that Creative Harbor's evidence ultimately "misses the mark." Id. [30] As the district court correctly noted, "evidence that Creative Harbor intended to use the Mark with respect to some of the goods and services listed in the [Applications] does not contradict Kelly [Services'] evidence that Creative Harbor lacked a firm intent to use the Mark on several of the other services and goods listed in the [Applications.]" Id. (emphasis in original). Creative Harbor, for example, failed to come forward with any objective evidence showing a bona fide intent to use the Mark in connection with computer software games, professional credentialing verification services, employee relations information services, employment staffing consultation services, and business consulting services-the goods and services most fatally undermined by Jurgensen's deposition testimony. Nor did Creative Harbor offer any reasons excusing its failure to come forward with such objective evidence . . . . [31] Accordingly, we hold that Creative Harbor lacked a bona fide intent to use the Mark in connection with at least some of the goods and services listed in the Applications. II. Remedy . . . . [32] Finally, the district court's interpretation {of Spirits International, B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 U.S.P.Q.2d 1545, 2011 WL 2909909 (T.T.A.B. 2011)} would lead to perverse results. Imagine a hypothetical § 1(b) ITU applicant who submits an application listing 100 goods associated with the requested mark with a subjective intention to use the mark in connection with all of the goods. The hypothetical applicant has at least some objective documentary evidence supporting its bona fide intent as to all 100 goods, but a competitor nevertheless challenges the applicant's bona fide intent as to ten of the goods in a declaratory action in federal district court. Under the district court and Kelly Services' interpretation of Spirits International, the applicant is put in quite a quandary: he must either (1) voluntarily delete the challenged goods, even if the challenges lack merit; or (2) risk having his entire application voided if the district court determines that he lacked bona fide intent for even a single item. If the applicant lacks ironclad documentary evidence for even one item-which is likely in circumstances where the application lists a large number of goods and services-his incentive is to delete the challenged goods rather than risk losing the entire application. Similarly, his competitor is incentivized to bring bona fide intent challenges to all of the applicant's future applications, because the competitor can likely bully the applicant into at least some concessions, and the only consequence for the competitor if it loses is legal fees, which may be a relative pittance depending on the industry and the value of the mark . . . . . . . . [33] Accordingly, we hold that when a § 1(b) ITU applicant lacks bona fide intent as to some, but not all, of the goods and services listed in her application, the application should not be voided in its entirety absent fraud or other egregious conduct. Grand Canyon, 2006 WL 802407, at *1-3. Rather, the court should determine as to which goods and services the applicant lacked bona fide intent, and excise the overbroad portions of the application. We thus hold that the district court erred in voiding Creative Harbor's Applications in their entirety. III. Remand . . . . [34] On remand, the district court should evaluate each of the thirty-six goods and services listed in the Applications, and make individualized determinations as to whether Creative Harbor's objective documentary evidence establishes a bona fide intention to eventually use those items in commerce. The district court may wish to conduct an evidentiary hearing in service of this inquiry, although we do not require it to do so. . . . . ALICE M. BATCHELDER, Circuit Judge, concurring in part and dissenting in part and dissenting from the judgment. . . . . [35] TTAB precedent suggests that it is incumbent upon the applicant to amend its application to eliminate portions of its § 1(b) ITU application for which it cannot demonstrate bona fide intent, or else risk having the entire application voided. Creative Harbor refused to take advantage of this remedy. The district court therefore correctly voided both of Creative Harbor's applications ab initio. Because my colleagues reach the opposite conclusion, I respectfully dissent. For marks already being used in commerce, a successful application proceeds though at least five basic stages: (1) application, (2) examination, (3) publication in the PTO's Official Gazette, (4) opposition, and ( 5) registration. Intent-to-use applications proceed through certain additional stages (shown in italics): (1) application, (2) examination, (3) publication in the PTO's Official Gazette, (4) opposition, (5) the issuance by the PTO of a Notice of Allowance, (6) the filing by the applicant of a Statement of Use showing that the applicant has begun to make actual use of the mark in commerce; and (7) registration. The PTO provides excellent annotated flowcharts of the registration process for each of the five filing bases on its website at: https://www.uspto.gov/trademark/trademark-timelines/trademark-application-and-post-registration-process-timelines. The reader is strongly encouraged to consult these flow charts while reviewing the following information. The application is relatively simple. See Lanham Act § § 1(a) & 1(b) (setting out the required contents of use-based and intent-to-use applications, respectively). The following are the most important elements of the application: • Filing Basis: As mentioned above, the applicant must specify at least one of the five filing bases provided for in the Lanham Act. • Designation of Goods and Services: The applicant must identify the particular goods or services on or in connection with which it uses or intends to use the mark. The U.S. Acceptable Identification of Goods and Services Manual, available online, provides a listing of acceptable identifications of goods and services. The applicant should also identify the international class number(s) of the identified goods or services as established by the Nice International Classification of Goods and Services for the Purposes of the Registration of Trademarks. ("Nice" after the French city where the Nice Agreement was reached, and pronounced to rhyme with "peace"). The 45 classes of the Nice Classification are listed below. In principle, the identification of goods or services does not limit the breadth of the applicant's registered exclusive rights. The sole purpose of the identification of goods and services is to aid the PTO in internal administration and review of applications. However, litigants sometimes cite a registered mark's identification of goods and services to support their particular view of the scope of the registered rights at issue-and courts sometimes treat the identification as relevant, though not binding, on the question. • Drawing: The applicant must submit a drawing of the trademark. As of 2003, if the mark consists of colors, the drawing must as well. For word marks, a typed representation of the mark is sufficient. For nonvisual marks, such as sound or scent marks, the applicant need not submit a drawing. The PTO relies instead on the applicant's description of the mark given elsewhere in the application and on the applicant's specimen of use. TMEP § 807.09. • Specimen of Use: Applicants filing a "1(a)" use-based application must submit one specimen of use of the mark in commerce for each international class in which the applicant seeks registration. This specimen typically takes the form of digital photographs of the mark attached to goods or .pdf images of materials promoting services. Applicants filing a "1(b)" intent-to-use application need not (because they very likely cannot) submit a specimen of use with their application, but must do so instead when they file their Statement of Use. For applications filed under Lanham Act § 1 or § 44, the PTO will grant a filing date to the application according to the date on which all of the following "minimum requirements" are received at the PTO: (1) name of the applicant, ( 2 As of August 3, 2019, foreign-domiciled entities must file their applications through a U.S.-licensed attorney. U.S-domiciled entities may continue to file their applications without an attorney-though, as discussed in Comment 2 at the end of this section, applications filed by specialist trademark attorneys tend to do significantly better. Over 99% of trademark applications are filed electronically at the PTO. Paper applications may be filed only in limited circumstances and incur significantly higher filing fees. See TMEP § 301.01. Typically within about eight to twelve months from the application's filing date, an examining attorney will engage in a substantive examination of the application to determine if there are any absolute or relative grounds for refusal. See Lanham Act § 12(a), 15 U.S.C. § 1062(a). With respect to relative grounds for refusal, the examining attorney will search the PTO's X-Search and Trademark Search databases (the latter of which is available online at no charge) to determine if any marks have already been filed that may be confusingly similar with the applied-for mark under Lanham Act §2(d), 15 U.S.C. § 1052(d). 21 Estimates based on data from the mid-2010s indicate that almost half of applications receive such § 2(d) refusals. 22 If the examining attorney finds no grounds for refusal, the attorney will approve the mark for publication in the PTO's Official Gazette. One study suggests that only about 15% of use-based applications and 21% of ITU applications proceed directly from application to approval for publication without any grounds for refusal being identified by an examining attorney. 23If the examining attorney finds grounds for refusal, the attorney will send an "office action" to the applicant to explain the grounds for refusal. Effective December 3, 2022, the applicant has a maximum of three months to respond (applicants previously had six months) and, if appropriate, to amend the application to satisfy the examiner's objections. 24 If the applicant fails to respond, the application will be deemed abandoned. See Lanham Act § 12(b), 15 U.S.C. § 1062(b). Correspondence between the office and the applicant will continue until either (1) the examining attorney approves the application for publication, (2) the examining attorney issues a final office action refusing registration of the mark, or (3) the applicant abandons the application. See id. The applicant may appeal the final office action to the Trademark Trial and Appeal Board. Marks approved for publication are published in the PTO's Official Gazette (OG), a weekly online publication. See Lanham Act § 12(a), 15 U.S.C. § 1062(a). Publication in the OG gives notice to the public that the PTO plans to register the mark. For a 30-day period following the date of the mark's publication in the OG, any party that believes it would be harmed by the registration, including as a result of dilution, may file an opposition to the registration of the mark. See Lanham Act § 13, 15 U.S.C. § 1063. Oppositions are rare. 10% were opposed and only 0.90% were opposed successfully"). Those few oppositions that are filed are heard by the Trademark Trial and Appeal Board. The TTAB is an administrative board within the PTO that acts in the capacity of a trial court of first instance in opposition, cancellation, interference, and concurrent use proceedings and in the capacity of an appellate body in ex parte appeals from final office actions. Created in 1958, the TTAB consists of the Director of the PTO, the Commissioner for Patents, the Commissioner for Trademarks, and Administrative Judges appointed by the Secretary of Commerce in consultation with the Director. The Director and Commissioners rarely sit on TTAB panels. At this writing, there are 24 Administrative Judges on the TTAB, all of whom are highly experienced in trademark matters. The TTAB sits in panels of three judges. The Trademark Trial and Appeal Board Manual of Procedure, available online, details all aspects of TTAB procedure. Proceedings before the TTAB are conducted in writing (though counsel may request oral argument). There is no live testimony, though transcribed testimony, taken under oath and subject to cross-examination, may be submitted. Note that only those TTAB opinions that are explicitly labeled as "citable as precedent" should be cited to the TTAB in subsequent proceedings. Under the terms of Lanham Act § 21, 15 U.S.C. § 1071, TTAB judgments may be appealed either to a federal district court or to the Court of Appeals for the Federal Circuit. There are two advantages of the district court route. First, the record in the case may be supplemented with additional evidence. Second, the district court's rulings may be appealed to its reviewing appellate court, thus making it possible to avoid the Federal Circuit; for example, if the applicant appeals the PTO's decision to the Eastern District of Virginia, Fourth Circuit case law would control. 25The TTAB and Issue Preclusion. TTAB proceedings may gain substantially increased importance in certain situations in light of the Supreme Court opinion in B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293Ct. (2015)). In 1993, B & B registered the mark SEALTIGHT in connection with metal fasteners for use in the aerospace industry. In 1996, Hargis sought to register the mark SEALTITE in connection with metal fasteners for use in building construction. B & B opposed on the ground that Hargis's mark was confusingly similar to B & B's mark. The TTAB found a likelihood of confusion and refused registration. Hargis did not appeal this decision. While the TTAB opposition proceeding was pending, B & B sued Hargis in federal district court, arguing that Hargis's mark infringed B & B's. Before the district court could rule, the TTAB announced its finding of a likelihood of confusion. B & B argued to the district court that the TTAB's decision should be given preclusive effect. The district court disagreed and the jury ultimately found no likelihood of confusion. The Eighth Circuit affirmed. The Supreme Court reversed and remanded. It held: "So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply." Id. at 1310. For an example of the effect of B & B outside of the likelihood of confusion context, see Ashe v. PNC Financial Services Group, Inc., 165 F. Supp. 3d 357 (D. Md. 2015) (holding that TTAB's prior determination that defendant had priority of use of mark SPENDOLOGY collaterally estopped plaintiff from asserting that defendant's use infringed on plaintiff's identical mark). Standing to Oppose. Lanham Act § 13, 15 U.S.C. § 1063, states that "[a]ny person who believes that he would be damaged by the registration of a mark upon the principal register" may file an opposition. In Ritchie v. Simpson, 170 F.3d 1092 (Fed. Cir. 1999), the Federal Circuit interpreted this language liberally: "an opposer must meet two judicially-created requirements in order to have standing-the opposer must have a 'real interest' in the proceedings and must have a 'reasonable' basis for his belief of damage." Id. at 1095. "In no case has this court ever held that one must have a specific commercial interest, not shared by the general public, in order to have standing as an opposer . . . . The crux of the matter is not how many others share one's belief that one will be damaged by the registration, but whether that belief is reasonable and reflects a real interest in the issue." Id. at 1096-97. In Ritchie, the Federal Circuit held that Mr. Ritchie, who "described himself as a 'family man' who believes that the 'sanctity of marriage requires a husband and wife who love and nurture one another,'" id. at 1097, had standing to oppose O.J. Simpson's application to register the marks O.J. SIMPSON, O.J., and THE JUICE. However, in Curtin v. United Trademark Holdings Inc., 137 F.4th 1359 (Fed. Cir. 2025), the Federal Circuit held that Professor Rebecca Curtin did not have standing to oppose the registration of RAPUNZEL for dolls. Professor Curtin asserted standing on the basis of her status as a consumer and argued that the asserted mark failed to function as a mark, was generic, and would deny to consumers the benefit of healthy competition in the market for dolls depicting the public domain Rapunzel character. Citing Lexmark Int'l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014), the Federal Circuit found, in essence, that standing under the opposition provisions of the Lanham Act is available only to those with "commercial interests" that could be damaged by the registration, such as competitors in the market for dolls. See Curtin, 137 F.4th at 1367 ("Under the Lexmark framework, a plaintiff may oppose registration of a mark when (1) her interests are within the zone of interests protected by the statute and (2) she has a reasonable belief in damage that would be proximately caused by registration of the mark in violation of the opposition statute."). Curtin, following Lexmark, represents a repudiation of Ritchie and a substantial narrowing of standing under the Lanham Act (even if one of the leading justifications for trademark law is supposedly the protection of consumers). With respect to use-based applications, if no opposition is filed within thirty days or if the opposition fails, then the PTO issues a certificate of registration and notice of the registration is published in the Official Gazette. With respect to intent-to-use applications that are either unopposed or unsuccessfully opposed, the PTO issues a Notice of Allowance. The applicant then has six months (extendable for a total of three years) to file a Statement of Use showing that it is making use of the mark in commerce. See Lanham Act § 2(d), 15 U.S.C. § 1052(d); TMEP § 1106. Upon acceptance of the Statement of Use, the PTO issues a certificate of registration and notice of the registration is published in the Official Gazette. The term of registration is ten years. Lanham Act § 8, 15 U.S.C. § 1058. The registration may be renewed indefinitely provided that the registrant complies with the requirements of Lanham Act § § 8 & 9, 15 U.S.C. § § 1058 & 1059. Section 8 requires the registrant to file an Affidavit of Continuing Use "(1) on or after the fifth anniversary and no later than the sixth anniversary of the date of registration . . . and (2) within the year before the end of every tenyear period after the date of registration." TMEP § 1604.04. Thus, the registrant must file a "Section 8 affidavit" in the sixth year of the registration, the tenth year, the twentieth year, the thirtieth year, etc. Section 8 adds a six-month grace period to this deadline. See Lanham Act § 8(c), 15 U.S.C. § 1058(c). See also TMEP § 1604.04 ("Example: For a registration issued on Nov. 1, 2005, a six-year affidavit or declaration may be filed as early as Nov. 1, 2010, and may be filed as late as Nov. 1, 2011, before entering the six-month grace period."). Section 9 requires the registrant to file a Renewal Application every tenth year following the date of registration. Registrants typically file the Section 8 Affidavit of Continuing Use and the Section 9 Renewal Application as a single document. Section 9 also adds a sixth-month grace period. See Lanham Act § 9(a), 15 U.S.C. § 1059(a). See also TMEP § 1606.03 ("Example: For a registration issued on November 5, 1998, an application for renewal may be filed as early as November 5, 2007, and as late as November 5, 2008, before entering the six-month grace period."). Registrants are also strongly advised to file an Affidavit of Incontestability under Lanham Act § 15 (15 U.S.C. § 1065) within one year after any five-year period of continuous use of the mark. In practice, sophisticated trademark owners typically combine their first § 8 Affidavit of Continuing Use (filed in the sixth year following registration) with a § 15 Affidavit of Incontestability. A § 15 affidavit may be filed at any time during the duration of the registration of the mark, however, provided that it is filed within the year following five years' continuous use of the mark. See TMEP § 1605.03. Lanham Act § 29, 15 U.S.C. § 1111, provides: Notwithstanding the provisions of section 22 hereof {15 USC § 1072}, a registrant of a mark registered in the Patent and Trademark Office, may give notice that his mark is registered by displaying with the mark the words "Registered in U.S. Patent and Trademark Office" or "Reg. U.S. Pat. & Tm. Off." or the letter R enclosed within a circle, thus ®; and in any suit for infringement under this Act by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the provisions of this Act unless the defendant had actual notice of the registration. Id. The latter part of § 29 is generally understood to establish that in situations where the registrant has not provided statutory notice of the registration of its mark, that registrant may only win profits and damages from a period after the defendant had actual notice of the registration status of the mark. See MCCARTHY § 19:144. 26The ® or "r in a circle" designation indicates that the mark is registered on either the Principal or Supplemental Register. A "TM" or "SM" designation indicates that the mark is unregistered, but that the owner is claiming property rights in the mark. Firms may sometimes use the "TM" or "SM" designations in an attempt to educate consumers that the mark at issue is a designation of source rather than simply a description, decoration, or feature of the product. Lanham Act § 14, 15 U.S.C. § 1064, addresses the circumstances under which a third party may petition to cancel a registration. It provides, in essence, that for the five year period following the date of registration, a third party may petition to cancel the registration for any The more problematic question is whether a registrant who proves infringement under both § 32(1) (registered mark) and § 43(a) (unregistered mark) can avoid the notice limitation imposed by § 29 by claiming all of its damages fall under the § 43(a) count. A strict reading of the statutory language of § 29 would, in the author's opinion, lead to the conclusion that such a registrant cannot avoid the § 29 damage limitation by using § 43(a). Section 29 does not distinguish between the kind of statutory infringement that a registrant proves. Rather, § 29 simply states that no profits and damages shall be recovered "under the provisions of this Act" unless statutory or actual notice was given. reason. See Lanham Act § 14(1), 15 U.S.C. § 1064 (1). After five years have passed from the date of registration, a third party may petition to cancel a registration for only a limited number of reasons expressly enumerated in Lanham Act § 14(3), 15 U.S.C. § 1064 (3). Here is the relevant statutory language: A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905: (1) Within five years from the date of the registration of the mark under this chapter. (3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used. Lanham Act § 14, 15 U.S.C. § 1064. Note what is missing from § 14(3). Most significantly, after five years have passed since the date of registration, a third party cannot petition to cancel the registration on the ground that the mark is merely descriptive without secondary meaning (this ground is not included in § 14(3)) or on the ground that the registered mark is confusingly similar with a previously used mark ( § 2(d) is not included in § 14(3)). Nor can the registration be cancelled on the ground that the mark fails to function as a mark. This five-year time limit on grounds for cancellation petitions at the PTO applies even if the registrant has not applied for incontestable status. 27Ex parte expungement and ex parte reexamination. In 2020, the Trademark Modernization Act (TMA) added Lanham Act § 16A, which provides that third parties (or the PTO itself) may seek ex parte expungement of a registration, in whole or part, for any goods or services listed in the registration in connection with which the registrant has never in fact made a use of the mark in commerce. The challenger may seek ex parte expungement at any time from the fourth year through the tenth year of the registration. The TMA also added Lanham Act § 16B, which provides that third parties (or the PTO itself) may seek ex parte reexamination of a registration to verify that the registered mark has been used on all the goods or services listed in the registration as of the filing date of a use-based application or the filing date of the Statement of Use following an ITU application. An ex parte reexamination request must be filed within the first five years of the challenged registration. For an assessment of how these provisions have operated in practice, see Jeremy N. Sheff, An Empirical Evaluation of the Trademark Modernization Act, 62 HOUS. L. REV. 339 (2024). Lanham Act § 37. Lanham Act § 37, 15 U.S.C. § 1119, provides federal courts with broad powers over registrations: In any action involving a registered mark the court may determine the right to registration, order the cancelation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action. Decrees and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Patent and Trademark Office, and shall be controlled thereby. Id. The Fourth Circuit has determined, however, that § 37 does not allow federal courts to override the time limits built in to § 14. See Shakespeare Co. v. Silstar Corp. of Am., 9 F.3d 1091 (4th Cir. 1993). The United States has been a member of the "Madrid System" for the international registration of trademarks since November 2, 2003, which was the effective date of the Madrid Protocol Implementation Act ("MPIA"), 116 Stat. 1758, 1913 Pub. L. 107-273. 28 The Madrid System provides an efficient means by which trademark applicants or registrants may apply to register their marks at multiple foreign trademark offices through a single application filed at (and a single fee paid to) their home trademark office. For example, a trademark applicant or registrant at the PTO may file a single application and pay a single fee to register its trademark at any or all of the 131 countriesfoot_17 within the Madrid Union; the fee increases with the number of countries. The PTO will forward any such application to the International Bureau administering the Madrid System (based in Geneva at the World Intellectual Property Organization ("WIPO")), which will then forward the application in turn to all countries selected by the applicant. This can result in significant cost savings for the applicant because it need not hire foreign local counsel to prosecute its application unless the local trademark office rejects or otherwise demands some response relating to the application. Furthermore, the Madrid registrant need only file a single form and pay a single fee to renew its mark across multiple foreign countries. For U.S. applicants, there are certain drawbacks to using Madrid. First, many foreign trademark offices permit relatively broad definitions of the goods or services with which the mark will be used. The PTO, however, does not. As a result, the U.S. applicant must file a narrow definition of the applied-for mark's goods in order to satisfy the PTO but will then be required to use that definition when it seeks to extend its protection abroad. For this reason, some U.S. applicants seek to file in foreign countries locally rather than through Madrid. A second disadvantage of Madrid is that all international trademark registrations filed through Madrid remain dependent on the applicant's home (or "basic") registration for five years from the date of that home registration. If the home registration fails during that five year period (as a result of a "central attack" from a third party opposer or for any other reason), then all international registrations will fail as well. However, within three months from the date of the cancellation of its home registration, the Madrid registrant may file to "transform" its international registrations into local registrations. Trademark registration rates at the PTO. The PTO's release of data concerning the registration process has made it possible to estimate the overall trademark registration rate at the PTO, i.e., the proportion of trademark applications that result in registration. For usebased applications filed at the PTO from 1981 through 2007, the overall registration rate was .75. See Barton Beebe, Is the Trademark Office a Rubber Stamp?, 48 HOUSTON L. REV. 751, 762 (2011). For ITU-based applications filed from November 16, 1989 through 2007, the registration rate was .37. Id. What might explain this significant difference in registration rates between use-based and ITU-based applications? Consider the publication rates of such applications, i.e., the proportion of applications that the PTO approved for publication. For other major economies (such as the U.K. and Japan), into the Madrid System. Both the Agreement and the Protocol are filing treaties rather than substantive harmonization treaties. 2013). They note in particular that for the period 1984 through 2012, the publication rate for applications filed by attorneys was 82% while the publication rate for applications filed by non-attorneys was 60%. Id. at 606. They also reported significant differences in the publication rates of applications depending on the experience of the attorney filing the application. Id. at 610. See the article for a consideration of factors that may explain these differences. Scholarship has focused on the question of whether trademark registration data may be used to measure the rate of "nontechnological" innovation, specifically, innovation in the service and marketing sectors (sectors about which patent data often has very little to say). Under the law of forty-five states, registrations provide registrants with no significant, enforceable substantive rights beyond those awarded under state common law or under the federal statute protecting unregistered common law trademarks. In five states certain substantive rights can accrue to an owner through state registration, although those rights are limited by competing rights held by certain common law owners or federal registrants. Id. at 598-99. Lockridge observes that in five states (Massachusetts, Minnesota, Rhode Island, Texas, and Washington), state law provides that a state trademark registration will create constructive notice of the registrant's claim of ownership as of the date of state registration, which impairs the ability of a common law adopter of the mark to claim good faith adoption of the mark after that date (or good faith geographic expansion within the state of its prior continuing use). Id. at 624. This benefit arises only under state law, however, and has no bearing on claims brought under federal law. Id. In the face of a subsequent third party federal registration, a state trademark registrant is typically treated no better than a § 7(c) prior "common law" user. McCarthy proposes one way in which state registration may provide a slight advantage in federal litigation: State registrations in most states have little legal significance other than serving as proof that on a certain date the registrant filed a claim that it was using a certain mark. This gives a slight procedural advantage of proving priority compared to merely relying upon a trademark owner's inherent common-law right of priority as proven by business records. MCCARTHY at § 22:1 (footnote omitted). Note, however, that before the TTAB, state trademark registrations are not competent evidence of use by the state registrant of the mark. McKenna argues that "the persistent sense that federal and state law regulate concurrently has masked a significant federalization of trademark and unfair competition law over the last forty to fifty years." Id. at 289. McKenna goes so far as to call for the explicit federal preemption of state trademark and unfair competition law. Id. at 298. We consider in this section the geographical extent of trademark rights within the territorial borders of the United States. Under the common law, priority of usage has long been the basis of the geographic extent of a claimant's rights; first in time is first in right. The Lanham Act provides registered marks with the benefit of very important exceptions to this common law principle. We begin first with the geographic extent of rights in unregistered, common law marks. We then turn to the geographic extent of rights in federally registered marks. A classic hypothetical in American trademark law involves the question of whether the owner of an unregistered mark used in, say, Anchorage, Alaska, can assert exclusive rights in that mark beyond the borders of Anchorage. Can the proprietor of the unregistered mark ARCTIC COFFEE for a caféin Anchorage, Alaska prevent someone in Miami, Florida from later opening a café under the same name? And should it make a difference if the proprietor of the Miami coffee shop knew of the existence of the ARCTIC COFFEE café in Anchorage when she opened her café in Miami? In the cases Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916) (commonly known as the Tea Rose case), and United Drug Co. v. Theodore Rectanus, 248 U.S. 90 (1918), the Supreme Court established the so-called "Tea Rose-Rectanus rule," which holds that: (1) The territorial scope of an unregistered mark is limited to the territory in which the mark is known and recognized by relevant consumers in that territory. (2) The senior user of an unregistered mark cannot stop the use of a territorially remote good faith junior user who was first to use the mark in that remote territory. MCCARTHY § 26.2. The result of the Tea Rose-Rectanus rule is that, for unregistered marks, the first person to adopt the mark in the United States and subsequent good faith remote junior users may end up coexisting in the national marketplace, with each entity claiming exclusive rights in the mark in the geographic area in which each was the first to use the mark. Thus, the Anchorage and Miami cafés both using the mark ARCTIC COFFEE may coexist, provided that the Miami café adopted its mark in good faith (the standard for which we will consider below). Furthermore, barring federal registration by either the Anchorage or the Miami café, the two firms' exclusive rights will expand across the country only in those areas in which each firm is the first to use the mark in good faith. The case below, Nat'l Ass'n for Healthcare Commc'ns, Inc. v. Cent. Arkansas Area Agency on Aging, Inc., 257 F.3d 732, 734 (8th Cir. 2001), offers a relatively straightforward example of the application of the Tea Rose-Rectanus doctrine. The six counties where Central Arkansas Area Agency on Aging, Inc. used its mark. [1] This is an action under the Lanham Act and state law to determine which party has the superior right to use the service mark "CareLink" in Arkansas. The National Association for Healthcare Communications, Inc. ("Healthcom") was the first to use the mark nationally. It has a federal service mark registration pending but must rely in this case on its common law trademark rights as enforced under the Lanham Act. See 15 U.S.C. § 1125(a). The Central Arkansas Area Agency on Aging, Inc. ("CA") was the first to use the mark in six counties in central Arkansas and has registered its mark under the Arkansas trademark statutes. See Ark.Code Ann. Tit. 4, Ch. 71 (Michie Supp. 1999). The district court held that CA as first user prevailed in its six-county trade area and that CA's state registration entitled it to statewide relief. Accordingly, the court enjoined Healthcom from using the CareLink mark anywhere in Arkansas. National Ass'n for Healthcare Commun., Inc. v. Central Ark. Area Agency on Aging, Inc., 119 F.Supp.2d 884 (E.D.Ark. 2000). Healthcom appeals. Agreeing that CA is entitled to injunctive relief, but limited to the six Arkansas counties where it has used the mark, we remand to the district court with instructions to modify the injunction. [2] The Parties' Use of the CareLink Mark. Healthcom is an Illinois corporation that provides remote electronic monitoring devices and emergency response services for at-home clients in twenty-five States, including Arkansas. Healthcom solicits local hospitals and home health care agencies to become members of Healthcom's National Association for Emergency Response, Inc. Each member's subscribers (individual clients or patients) are then offered a variety of CareLink at-home emergency response services. A CareLink program typically consists of monitoring equipment, usually leased by Healthcom to the member health care provider or directly to the subscriber, plus a round-the-clock support center operated by Healthcom, which responds to the subscriber's emergency calls in a prearranged fashion and may monitor medical equipment in the subscriber's home or monitor the whereabouts of an at-risk subscriber, such as one suffering from Alzheimer's disease. Each provider-member markets CareLink programs and equipment to its patients, bills the patients, and pays Healthcom a monthly fee for each patient using CareLink services. [3] CA is a private, nonprofit Arkansas corporation organized in 1979 to provide a broad range of support services to elderly and disabled persons in a six-county region in central Arkansas. CA's mission is to provide cost-effective, community-based alternatives to nursing home care. CA has 750 employees and 300 volunteers who assist some 10,000 elderly persons in the region. CA has never provided personal emergency response services, but it has occasionally paid for such services being provided to CA clients. In January 1995, CA adopted the trade name "CareLink" to use in lieu of its corporate name, which had proved awkward and hard to remember, and which created the mis-impression that CA is a government agency. [4] Facts relating to first usage. Healthcom began marketing emergency response services under the CareLink service mark in 1991 or early 1992. From 1992 to 1995, Healthcom spent an estimated $50,000 attempting to sell its services in Arkansas. Despite these efforts, during this period Healthcom made only one $385 sale in Arkansas, to an end user who stopped using its CareLink service in April 1994. Healthcom had no Arkansas customers from April 1994 to September 1995, when it entered into a contract with North Arkansas Regional Medical Center in Harrison. By July 1999, Healthcom had contracts with seven Arkansas health care providers and served 350 individual subscribers. Healthcom estimated that its total Arkansas revenues in 1999 would be just over $82,000. Healthcom has never had a customer for its CareLink services located within the six-county region served by CA. Healthcom applied for federal trademark registration on May 4, 1999, and its application is pending. [5] CA adopted the CareLink trade name and logo in early 1995 and has prominently displayed the logo on stationery, business cards, client information materials, and other publicity materials. CA registered its CareLink mark with the Arkansas Secretary of State on March 23, 1995, and has used the mark in promoting all of its services, except hospice care. CA's annual revenues grew from $5,000,000 to $12,000,000 from early 1995 to mid-1999. Although CA derives most of its revenues from government grants, in 1999 it received approximately $138,000 in private donations and an estimated $250,000 from clients able to pay for its services. All of CA's clients reside in its six-county region, but its activities are publicized beyond central Arkansas through news coverage, telephone listings, advertisements, and a monthly column in an Arkansas newspaper for the elderly. [6] CA did not know of Healthcom's prior usage when it adopted the CareLink name and logo and received a state registration in early 1995. When CA learned that the North Arkansas Regional Medical Center was using Healthcom's CareLink mark for emergency response services in northern Arkansas, CA sent a cease-and-desist letter to that provider. The parties were unable to resolve the resulting dispute. Healthcom then commenced this action, alleging common law trademark infringement and unfair competition in violation of the Lanham Act, 15 U.S.C. § 1125(a), and seeking an injunction barring CA from using the mark and cancellation of CA's state registration. CA counterclaimed, alleging unfair competition under the Lanham Act and trademark infringement under Ark.Code Ann. § 4-71-212, and seeking an injunction prohibiting Healthcom from using its CareLink mark in Arkansas or, alternatively, in CA's six-county region. [7] Deciding the case on cross motions for summary judgment, the district court dismissed Healthcom's claims because its use of the CareLink mark in Arkansas prior to CA's state registration was de minimis. The court granted CA a permanent injunction prohibiting Healthcom from using the mark anywhere in Arkansas because CA's use of the mark has been substantial, because a statewide injunction is necessary "to prevent confusion among consumers and to prevent Healthcom from passing off its services as those of [CA]," and because CA's state registration entitles it to a statewide injunction. Healthcom appeals, arguing that its common law trademark is entitled to priority because it first used the mark in Arkansas. Alternatively, Healthcare argues the district court abused its discretion in granting CA an overly broad injunction. [8] Nearly a century ago, the Supreme Court established what is now called the Tea Rose/Rectanus doctrine-the first user of a common law trademark may not oust a later user's good faith use of an infringing mark in a market where the first user's products or services are not sold. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 100-01 (1918); Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 415 (1916). The rationale is a core principle of trademark law: the owner of a mark may not "monopolize markets that his trade has never reached and where the mark signifies not his goods but those of another." Hanover Star Milling, 240 U.S. at 416. That essential principle applies even when the first user has federally registered its mark under the Lanham Act, with one important modification: the owner of a registered mark has the right to expand its use into a new market unless an infringing user had penetrated that market prior to registration. See Natural Footwear Ltd. v. Hart, Schaffner & Marx, 760 F.2d 1383, 1395 (3d Cir.); 15 U.S.C. § 1072. [9] In this case we must apply the Tea Rose/Rectanus doctrine in resolving two distinct inquiries. First, we must determine whether Healthcom, as the first user of a CareLink common law mark elsewhere in the country, is entitled by reason of its own market penetration to oust CA from any area in Arkansas. Second, to the extent Healthcom failed to prove first use in Arkansas, we must determine whether CA, as owner of a state-registered mark used only in six counties, is entitled to statewide injunctive relief against Healthcom's present use of its mark. [10] It is undisputed that, in early 1995, CA adopted the CareLink mark in good faith, without knowledge of Healthcom's prior use. To be entitled to injunctive relief against CA's subsequent good faith use, Healthcom must prove that its prior use of the mark penetrated the geographic market in question. In determining whether Healthcom achieved the necessary market penetration, we apply the factors identified in our often-cited Sweetarts cases: [Healthcom's] dollar value of sales at the time [CA] entered the market, number of customers compared to the population of the state, relative and potential growth of sales, and length of time since significant sales. Though the market penetration need not be large to entitle [Healthcom] to protection, it must be significant enough to pose the real likelihood of confusion among the consumers in that area. Sweetarts v. Sunline, Inc., 380 F.2d 923, 929 (8th Cir. 1967); Sweetarts v. Sunline, Inc., 436 F.2d 705, 708 (8th Cir. 1971) (citation omitted). Where the first user's activities in a remote area are "so small, sporadic, and inconsequential" that its market penetration is de minimis, the first user is not entitled to protection against a later user's good faith adoption of the mark in that area. Sweetarts, 380 F.2d at 929. [11] Healthcom argues that it penetrated the Arkansas market through its one sale to an end user in 1992, its seven provider-member contracts and 350 subscribers since the fall of 1995, and its continuous advertising and marketing efforts beginning in 1992. Healthcom errs in assuming without proof that the entire State of Arkansas is a single geographic market for these purposes. CA adopted its CareLink mark for use in six counties in central Arkansas, not the entire State. Healthcom has never made a sale in that area, nor has it even attempted to prove that CA's use of the mark in its region is causing a likelihood of confusion elsewhere in the State. For this reason alone, Healthcom has not penetrated CA's six-county trade area, and the district court properly denied Healthcom injunctive relief against CA's use in that area. [12] This leaves the question whether Healthcom is entitled to injunctive relief as a prior user with market penetration in any other part of Arkansas. We agree with the district court that Healthcom's one $385 sale long before CA's adoption of its mark was de minimis market penetration. That leaves Healthcom's reliance on later sales and continuous advertising. CA argues that sales in Arkansas after CA began using the mark are irrelevant, and that Healthcom's prior advertising may not be used to satisfy the Sweetarts market penetration test. Those are strong arguments. The issue is whether they warrant summary judgment. [13] Sweetarts expressly recognized that the market penetration issue is focused on the time when the later user entered the market. However, subsequent sales by the first user may establish a trend of increased sales justifying a finding of market penetration. See Natural Footwear, 760 F.2d at 1401. Likewise, while "advertising alone is not sufficient to satisfy the significant market penetration test of Sweetarts," Flavor Corp. of Am. v. Kemin Indus., Inc., 493 F.2d 275, 284 (8th Cir. 1974), we are not prepared to say as a matter of law that a first user's highly focused local advertising, followed by initial sales shortly after a later user enters the market, may never satisfy the Sweetarts test. Compare Natural Footwear, 760 F.2d at 1402-03; Nutri/System, Inc. v. Con-Stan Indus., Inc., 809 F.2d 601, 604 (9th Cir. 1987). Nevertheless, we need not decide whether CA is entitled to summary judgment on the market penetration issue statewide because Healthcom presented no evidence that CA is presently likely to enter areas of Arkansas beyond its six-county region, and no evidence that any customers or potential customers of Healthcom are actually confused, or likely to be confused, by CA's use of its CareLink mark in serving a six-county region where Healthcom does no business. In these circumstances, the district court properly dismissed all of Healthcom's claims for relief. See generally Gaston's White River Resort v. Rush, 701 F.Supp. 1431, 1435 (W.D.Ark. 1988). [14] Having concluded that Healthcom is not entitled to injunctive relief, we turn to CA's counterclaim for injunctive relief and the district court's grant of a statewide injunction. As we have explained, CA has superior common law rights in its six-county region, and it is a state-registered user of the CareLink mark. Therefore, under both the Lanham Act and the Arkansas trademark statute, CA is entitled to an injunction against an infringing use that is likely to cause confusion as to origin. See 15 U.S.C. § 1125(a)(1)(A); Ark.Code Ann. § 4-71-212(1). . . . . . . . [15] In summary, the absence of concrete evidence of likelihood of confusion outside of CA's six-county region makes it improvident to grant a statewide injunction on this record. Healthcom is now enjoined from using its CareLink mark in CA's trade area. If CA never expands beyond that area, this injunction may be all the judicial action that is required. If CA does decide to expand, its statewide registration puts Healthcom at risk of being ousted. But any future prayer by CA for a broader injunction may raise issues that would be better resolved on a fuller fact record, such as whether Healthcom was the first user in any local market; whether the CareLink mark is descriptive and, if so, whether CA's mark has become incontestable or has acquired secondary meaning; precisely what services CA claims its registration covers; and whether there is likelihood of confusion between users of those services and users of Healthcom's emergency response services. . . . Additional issues would be raised if Healthcom's mark is granted federal registration. See Spartan Food Sys., Inc. v. HFS Corp., 813 F.2d 1279, 1284 (4th Cir. 1987); Burger King of Fla., Inc. v. Hoots, 403 F.2d 904, 906-07 (7th Cir. 1968). [16] We affirm the dismissal of Healthcom's claims and the grant of a permanent injunction barring Healthcom's use of its CareLink mark in CA's six-county trade area. We reverse the grant of a statewide injunction and remand to the district court for an appropriate modification of its Judgment dated January 31, 2000. 1. The geographic scope of rights in unregistered descriptive marks. If the senior user's unregistered mark is a non-inherently distinctive mark, then the geographic scope of the senior's rights are limited to the area in which the mark possesses secondary meaning. A junior user will be enjoined from using the mark in areas in which the senior user has already established secondary meaning. See, e.g., Katz Drug Co. v. Katz, 188 F.2d 696 (8th Cir. 1951). More generally, competitors using unregistered confusingly-similar descriptive marks may end up in a "race to secondary meaning," MCCARTHY § 26:25, in which each competitor seeks to be the first to establish secondary meaning-and thus exclusive rights-in the descriptive term in any particular area where the competitors are competing. 2. What about internet use of the mark? Does the commercial use of a mark on an internet website accessible anywhere in the country establish national geographic common law rights for the mark? Courts have reasoned that common law rights based only on internet use should extend geographically only so far as the mark owner can show actual market penetration. The owner can do so through evidence consisting of the internet protocol addresses of website visitors, the geographic location of online buyers of goods or services bearing the mark, and other evidence that the website is not merely accessible, but has been accessed by consumers in any geographic areas at issue. See, e.g., Optimal Pets, Inc. v. Nutri-Vet, LLC, 877 F. Supp. 2d 953, 962 (C.D. Cal. 2012) ("In considering the adequacy of {the plaintiff's} proof of sufficient market penetration, evidence regarding internet sales and internet advertising will be considered together with the evidence of sales and advertising in geographic areas. Thus, a sale to a customer through the internet will be considered a sale in the geographical area in which the customer is located."); id. at 964 (granting judgment as a matter of law to defendant on ground that "[t]here could be no reasonable finding that [the plaintiff] has proven legally sufficient market penetration to establish a common law trademark as to the entire United States or any geographical area"). Tacking. Can a trademark owner modify the mark over time without loss of priority? If a newly modified mark continues to create the "same, continuing commercial impression" as the previous mark (be it registered or unregistered) such that "consumers generally would regard them as essentially the same," then the mark owner may claim the priority date of the previous mark. Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1048 (9th Cir. 1999). In such a situation, the priority date of the previous mark is "tacked" on to the new mark. The standard for tacking is "exceedingly strict." Id. See also Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 760 (9th Cir. 2006) (holding that the plaintiff could not tack earlier use of QUIKSILVER ROXY onto later use of ROXY because the marks did not create the same continuing commercial impression). In Hana Financial, Inc. v. Hana Bank, 135 S. Ct. 907 (2015), the Supreme Court held that the question of whether an earlier mark may be tacked on to a later mark is an issue of fact to be determined by the jury. When a mark is being used on an unregistered basis by a common law senior user, what constitutes good faith adoption of the same mark (for the same or confusingly-similar goods) by a junior user? All courts agree that if, as in the Central Arkansas case above, the junior user of an unregistered mark had no knowledge of the senior user's use at the time that the junior user adopted its mark, then the junior user adopted its mark in good faith. But what if the junior user did have knowledge of the senior user's use? As discussed below in Stone Creek, Inc. v. Omnia Italian Design, Inc., 875 F.3d 426 (9th Cir. 2017), the circuits are split on this question. The district court found no likelihood of confusion largely on the basis that the parties operated in geographically separate marketing channels. Reversing, the Ninth Circuit found a likelihood of confusion. It then turned to the issue of good faith under the Tea Rose-Rectanus doctrine. Note that, in essence, Omnia was an "intermediate junior user" of the mark-i.e., it adopted the mark at a time intermediate between Stone Creek's first use of the mark and its eventual application to register the mark. As we will discuss further in the next section, Lanham Act § 33(b)(5), 15 U.S.C. § 1115(b) (5), allows such intermediate junior users to continue to use their mark after the senior user has registered it, but only if the intermediate junior user adopted the mark "without knowledge of the registrant's prior use." Because Omnia clearly had knowledge of Stone Creek's prior unregistered use, it could not take advantage of § 33(b) (5) and instead sought to retreat back to the residual common law Tea Rose-Rectanus doctrine (through Lanham Act § 33(a), 15 U.S.C. § 1115(a)). This forced the Ninth Circuit to decide if the Tea Rose-Rectanus doctrine applied only to those remote junior users who lacked knowledge of the senior user's use.} [1] Our determination of a likelihood of confusion with respect to the STONE CREEK mark does not end the infringement analysis. The Tea Rose-Rectanus doctrine is an affirmative defense separate and apart from the underlying infringement claim. 5 McCarthy, supra, § 26:4. Omnia asserts that its use of Stone Creek's mark is protected under that doctrine and argues that we may affirm the district court's judgment of no liability on this alternative basis. [2] The Tea Rose-Rectanus doctrine has its roots in the common law: it is named for a pair of Supreme Court cases, Hanover Star Milling Co. v. Metcalf, 240 403 (1916) ("Tea Rose"), and United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). The central proposition underlying the two cases is that common-law trademark rights extend only to the territory where a is known and recognized, so a later user may sometimes acquire rights in pockets geographically remote from the first user's territory. The question we address is whether Omnia acquired common-law rights in the Midwest under the Tea Rose-Rectanus doctrine. [3] Omnia's common-law rights, if they exist, are not wiped out merely because Stone Creek later filed a federal registration. Although federal registration presumptively entitles the senior user to nationwide protection, 15 U.S.C. § 1057(b), the Lanham Act preserves legal and equitable defenses that could have been asserted prior to registration, id. § 1115(a). Under this rule, already-established common-law rights are carved out of the registrant's scope of protection. Id. § 1115(b)(5); Johnny Blastoff, Inc. v. L.A. Rams Football Co., 188 F.3d 427, 435 (7th Cir. 1999). In other words, the geographic scope of a senior user's rights in a registered trademark looks like Swiss cheese: it stretches throughout the United States with holes cut out where others acquired common-law rights prior to the registration. Because Omnia began using the mark in 2008, well before Stone Creek's federal registration in 2012, the Tea Rose-Rectanus defense is available to Omnia if it is applicable. [4] To take advantage of the Tea Rose-Rectanus doctrine, the junior user must establish good faith use in a geographically remote area. See Rectanus, 248 U.S. at 100, 39 S.Ct. 48; cf. Grupo Gigante SA De CV v. Dallo & Co., 391 F.3d 1088, 1096 & n.26 (9th Cir. 2004). Like the district court, we limit our discussion to the question of good faith because it is dispositive. [5] The varying descriptions of good faith in the leading Supreme Court cases have spawned a circuit split, and our circuit has not yet weighed in. See Grupo Gigante, 391 F.3d at 1096 n.26. On one side, some circuits have held that the junior user's knowledge of the senior user's prior use of the mark destroys good faith. See, e.g., Nat'l Ass'n for Healthcare Commc'ns, Inc. v. Cent. Ark. Area Agency on Aging, Inc., 257 F.3d 732, 735 (8th Cir. 2001); Money Store v. Harriscorp Fin., Inc., 689 F.2d 666, 674-75 (7th Cir. 1982). In contrast, other circuits have held that knowledge is a factor informing good faith, but the "focus is on whether the [junior] user had the intent to benefit from the reputation or goodwill of the [senior] user." GTE Corp. v. Williams, 904 F.2d 536, 541 (10th Cir. 1990); see C.P. Interests, Inc. v. Cal. Pools, Inc., 238 F.3d 690, 700 (5th Cir. 2001). We conclude that the better view is that there is no good faith if the junior user had knowledge of the senior user's prior use. [6] Looking back to the origins of the Tea Rose-Rectanus doctrine informs why knowledge defeats a claim of good faith use. In Tea Rose, the senior user began selling "Tea Rose" flour in approximately 1872; many years later, the junior user began selling "Tea Rose" flour without any knowledge of the senior user's prior use. 240 U.S. at 407-08. At the time that the trademark infringement action was filed, the senior user had made sales in Massachusetts, Ohio, and Pennsylvania, while the junior user's sales had reached Mississippi, Alabama, Georgia, and Florida. Id. at 408-10. Rectanus arose on similar facts: the senior user began selling "Rex" drugs around 1877 and operated in New England, while the junior user selling "Rex" drugs around 1883 and operated in Kentucky, with neither party being aware of the other's use of the "Rex" mark for more than twenty years. 248 U.S. at 94-96. In both cases, the Supreme Court held that the senior user could not enjoin the junior user's use of the same mark because the junior user adopted the mark in good faith and had developed a local reputation in an area where the mark was not recognized as designating the senior user. See id. at 103-04; Tea Rose, 240 U.S. at 415-16. [7] When describing good faith, the Supreme Court emphasized that the junior user had no awareness of the senior user's use of the mark. The Court in Tea Rose states that the junior user "adopted and used [the trademark] in good faith without knowledge or notice that the name 'Tea Rose' had been adopted or used . . . by anybody else." 240 U.S. at 410. The Court also refers to the situation as one where the two parties "independently" employ the same mark. Id. at 41. And the Court's reasoning concentrates on knowledge: Under the circumstances that are here presented, to permit the [senior user] to use the mark in Alabama, to the exclusion of the [junior user], would take the trade and good will of the latter company-built up at much expense and without notice of the former's rights-and confer it upon the former, to the complete perversion of the proper theory of trademark rights. [8] The same focus on notice emerges in Rectanus, which grants protection for an "innocent" junior user who has "hit upon" the same mark and avers that the parties acted "in perfect good faith; neither side having any knowledge or notice of what was being done by the other." 248 U.S. at 96, 103. The Court also relies on a case that says that the defendants there acted in good faith because they "believ [ed] [their] use to be original with them." Richter v. Anchor Remedy Co, 52 F. 455, 455 (C.C.W.D. Pa. 1892), aff'd sub nom. Richter v. Reynolds, 59 F. 577 (3d Cir. 1893). Seventy years later, Justice Brennan stressed that application of the Tea Rose-Rectanus doctrine requires an absence of knowledge. See K Mart Corp. v. Cartier, Inc., 486 U.S. 281, 314 n.8 (1988) (Brennan, J., concurring in part and dissenting in part) ("[A] firm can develop a trademark that is identical to a trademark already in use in a geographically distinct and remote area if the firm is unaware of the identity."). [9] The Seventh and Eighth Circuits and the Trademark Trial and Appeal Board ("TTAB") agree with this reading. The Seventh Circuit put it explicitly: "A good faith junior user is one who begins using a mark with no knowledge that someone else is already using it." Money Store, 689 F.2d at 674. The court went on to analyze whether the junior user in that case had constructive or actual knowledge of the senior user's use. Id. at 675. The Eighth Circuit follows the same approach, parroting the language from Tea Rose and Rectanus. See Nat'l Ass'n for Healthcare Commc'ns, 257 F.3d at 735 ("adopted the [mark] in good faith, without knowledge of [the] prior use"). And the TTAB, the administrative board charged with deciding certain trademark disputes and appeals, similarly holds that "appropriat[ing] a mark with knowledge that it is actually being used by another" means "that use is not believed to be a good faith use." Woman's World Shops Inc. v. Lane Bryant Inc., 5 U.S.P.Q.2d 1985, 1988 (T.T.A.B. 1988). [10] The courts that have ruled the other way have latched on to one line in the Tea Rose case which reads: [W]here two parties are employing the same mark upon goods of the same class, but in separate markets wholly remote the one from the other, the question of prior appropriation is legally insignificant; unless, at least, it appear that the second adopter has selected the mark with some design inimical to the interests of the [senior] user, such as to take the benefit of the reputation of his goods, to forestall the extension of his trade, or the like. 240 U.S. at 415 (emphasis added). But this brief reference to "design inimical" does not override the central focus on knowledge; it is not without significance that "design inimical" does not appear anywhere else in the opinion. The Court in Rectanus repeats the "design inimical" language as a direct quote of the language from the Tea Rose case and mentions offhand that the junior user did not have a "sinister purpose." 248 U.S. at 101. More salient are the various points in the leading opinions that draw a close connection between "good faith" and "knowledge" or "notice." See, e.g., id. at 96 ("in perfect good faith; neither side having any knowledge or notice of what was being done by the other"); id. at 103 ("in good faith, and without notice of any prior use by others, selected and used the 'Rex' mark"); Tea Rose, 240 U.S. at 410 ("trademark was adopted and used [by the junior user] in good faith without knowledge or notice that the name 'Tea Rose' had been adopted or used by the [senior user]"); id. at 419 ("in good faith and without notice of the [senior user's] mark"). [11] Tying good faith to knowledge makes sense in light of the policy underlying the doctrinal framework. As the Supreme Court explained, the Tea Rose-Rectanus doctrine operates to protect a junior user who unwittingly adopted the same mark and invested time and resources into building a business with that mark. Rectanus, 248 U.S. at 103; Tea Rose, 240 U.S. at 419. A junior user like Omnia who has affirmative knowledge of the senior user's mark has not serendipitously chosen the same mark and independently built up its own brand. Instead, a user like Omnia knows that its actions come directly at the expense of the senior user, potentially blocking the senior user from entering into the new market. Viewed in this light, the junior user has acted in bad faith, which "serve[s] as evidence that the [senior] user's mark, at least in reputation, has extended to the new area." Developments in the Law Trade-Marks and Unfair Competition, 68 Harv. L. Rev. 814, 859 (1955); 5 McCarthy, supra, § 26:12. [12] The knowledge standard also better comports with the Lanham Act. The statutory section preserving the Tea Rose-Rectanus defense for junior users acting pre-registration requires that the junior user's mark "was adopted without knowledge of the registrant's prior use." 15 U.S.C. § 1115(b)(5) (emphasis added). More broadly, one major change effected by the Lanham Act is that securing federal registration affords nationwide rights regardless of where the registrant has used the mark, a result accomplished by a provision that puts wouldbe users on constructive notice. See id. § § 1057(b), 1072; 5 McCarthy, supra, § 26:32. In other words, the Lanham Act displaces the Tea Rose-Rectanus defense by charging later users with knowledge of a mark listed on the federal register. If constructive notice is sufficient to defeat good faith, it follows that actual notice should be enough too. [13] Once knowledge is accepted as a determinative factor in deciding good faith, the Tea Rose-Rectanus doctrine has no applicability here. The district court found that "[Omnia] was a non-innocent remote user" who "acquired no common law trademark rights in the [Midwest]." That conclusion flows from the parties' agreement that Omnia adopted Stone Creek's mark with knowledge of Stone Creek's previous use. The Tea Rose-Rectanus doctrine provides no shelter to Omnia for infringement of Stone Creek's mark. {The Ninth Circuit then held, among other things, that Stone Creek must show intentional or willful infringement before disgorgement of Omnia's profits could be awarded. The Ninth Circuit remanded the case back to the district court to determine whether Omnia willfully infringed.} There is no such thing as property in a trade-mark except as a right appurtenant to an established business or trade in connection with which the mark is employed. The law of trade-marks is but a part of the broader law of unfair competition; the right to a particular mark grows out of its use, not its mere adoption; its function is simply to designate the goods as the product of a particular trader and to protect his good will against the sale of another's product as his; and it is not the subject of property except in connection with an existing business. Hanover Milling Co. v. Metcalf, 240 U. S. 403, 412-414. The owner of a trade-mark may not, like the proprietor of a patented invention, make a negative and merely prohibitive use of it as a monopoly. . . . . It results that the adoption of a trade-mark does not, at least in the absence of some valid legislation enacted for the purpose, project the right of protection in advance of the extension of the trade, or operate as a claim of territorial rights over areas into which it thereafter may be deemed desirable to extend the trade. And the expression, sometimes met with, that a trade-mark right is not limited in its enjoyment by territorial bounds, is true only in the sense that wherever the trade goes, attended by the use of the mark, the right of the trader to be protected against the sale by others of their wares in the place of his wares will be sustained. United Drug Co. v. Theodore Rectanus, 248 U.S. 90, 97-98 (1918). In effect, under Stone Creek, the senior user of an unregistered mark enjoys exclusive rights in the mark against any other person in the nation who is aware of the senior user's use, even if the senior user has not yet used the mark in that person's particular remote location. Is this outcome consistent with the principles articulated in Rectanus? Imagine you wish to open a cafe in New York City under the service mark ARCTIC COFFEE. You google the term and discover that a cafe in Anchorage, Alaska is already using the mark. You then search the mark on the PTO's Trademark Electronic Search System and learn that the Anchorage cafe has not applied to register the mark. Under Stone Creek, you cannot adopt the mark in good faith, and if the Anchorage cafe eventually expands into New York City, it may assert priority over your use. Is this sound policy? Unless the Lanham Act states otherwise, the common law norms of Tea Rose-Rectanus apply as much to registered marks as they do to unregistered marks. But crucially, the Lanham Act states otherwise extensively, primarily through the operation of Lanham Act § § 7(c), 15, 22, and 33 (15 U.S.C. § § 1057(c), 1065, 1072, & 1115). Indeed, these sections depart so dramatically from the common law norms that it is easy to forget that at least in theory they form merely an overlay on those underlying norms. The statutory sections grant registered marks important privileges in the form of exceptions to the Tea Rose-Rectanus doctrine. We consider these exceptions here. In what follows, for the sake of explication, we will assume priority conflicts between parties using the identical mark on identical goods or services. But the principles also apply in situations where there is no such "double identity" but there is consumer confusion, that is, in situations where the parties are using confusingly-similar (but non-identical) marks on confusingly-similar (but non-identical) goods or services. The Trademark Law Revision Act of 1988 (TLRA) created Lanham Act § 7(c), 15 U.S.C. § 1057(c), which applies to all applications filed on or after the November 16, 1989 effective date of the TLRA. 30 Section 7(c) reads as follows: 30 The Lanham Act does not explicitly state that the benefits of § 7(c) should be available only to applications filed on or after the effective date of the TLRA. However, as McCarthy notes, "Lanham Act § 33(b)(5), 15 U.S.C. § 1115(b) (5) distinguishes between the application date creating constructive use on the one hand and the registration date creating constructive notice [under § 22] on the other hand, limiting the later to a case where "the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988." This indicates a legislative intent to restrict the benefits of (c) Application to register mark considered constructive use. Contingent on the registration of a mark on the principal register provided by this Act, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except for a person whose mark has not been abandoned and who, prior to such filing- (2) has filed an application to register the mark which is pending or has resulted in registration of the mark; or (3) has filed a foreign application to register the mark on the basis of which he or she has acquired a right of priority, and timely files an application under section 44(d), 15 USC § 1126(d), to register the mark which is pending or has resulted in registration of the mark. Id. Section 7(c) thus confers on the successful registrant nationwide "constructive use" priority in the registered mark as of the date of application, and does so regardless of whether the registrant has in fact made or is in fact making actual nationwide use of the mark. See Humanoids Group v. Rogan, 375 F.3d 301, 305 n.3 (4th Cir. 2004) ("Constructive use establishes a priority date with the same legal effect as the earliest actual use of a trademark at common law." (citation omitted)). Note that until the registration issues, this priority is merely "contingent" nationwide priority. The applicant may not use § 7(c) to enjoin others' conduct until the registration issues, at which time the registrants' constructive use priority is the date of application. To appreciate the practical significance of § 7(c), imagine the following course of events: Time 1: A files a § 1(b) intent-to-use application for registration of the mark. Time 2: B subsequently begins to make actual use of the mark throughout the U.S. (on goods or services confusingly similar to A's). Under the terms of § 7(c), registration confers on A nationwide priority as of Time 1 even though A did not make actual use of the mark until Time 3. At Time 4, A may enjoin B's use. Meanwhile, even though B was the first to make actual use of the mark, B cannot on that basis enjoin A from making its own actual use and thereby completing the ITU process. application. Of course, this right or privilege is not indefinite; it endures only for the time allotted by the statute. But as long as an ITU applicant's privilege has not expired, a court may not enjoin it from making the use necessary for registration on the grounds that another party has used the mark subsequent to the filing of the ITU application. To permit such an injunction would eviscerate the ITU provisions and defeat their very purpose."). As the statutory language makes clear, § 7(c) nationwide constructive use priority is subject to certain important limitations. Most significantly, constructive use priority does not apply to any entity that began use of the mark at issue somewhere in the United States prior to the registrant's own use and date of application. For example: Time 1: A begins actual use of the mark in Area A. Time 2: B begins actual use of the mark in Area B (on goods or services confusingly similar to A's). On these simple facts, A qualifies as a "senior common law user" of the mark, because its unregistered use preceded B's unregistered use and date of application for registration. Once B has registered its mark, A may continue to use its mark, but this raises a difficult question: exactly where may A continue to do so? The answer is that A may continue to use its mark anywhere it was using the mark at the date of B's registration (not the date of B's application). In the senior common law user scenario, the statutory basis for A's frozen area of use is not § 7(c) and its provision of nationwide constructive use at the date of application, because by the clear terms of the section, nationwide constructive use priority does not apply to senior common law users. So what provision does apply to such users? It is Lanham Act § 22, 15 U.S.C. § 1072, that freezes the senior common law user. Section 22 provides that "Registration of a mark on the principal register provided by this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, shall be constructive notice of the registrant's claim of ownership thereof." See also Lanham Act § 15, 15 U.S.C. § 1065 (providing incontestable marks with incontestable rights "except to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration under this chapter of such registered mark"). Section 22's constructive notice at the date of registration is understood to be nationwide in effect and strips the senior common law user of any claim to good faith expansion in the use of its mark after that date. See Allard Enterprises v. Advanced Programming Res., Inc. 249 F.3d 564 (6th Cir. 2001). See also Geisha LLC v. Tuccillo, No. 05 Civ. 5529, 2009 U.S. Dist. LEXIS 20300 (N.D. Ill. March 13, 2009) (citing Allard) (stating that rights are frozen at registration but finding that the senior user had actual notice of junior's federal trademark application before expansion, which prevented the senior user's rights from expanding). Lanham Act § 33(b)(5), 15 U.S.C. § 1115(b) (5), establishes a so-called "intermediate junior user" defense against registered marks that are incontestable and, through § 33(a), registered marks that are contestable. Section 33(b) (5) provides that the registrant's rights are subject to the defense (5) That the mark whose use by a party is charged as an infringement was adopted without knowledge of the registrant's prior use and has been continuously used by such party or those in privity with him from a date prior to (A) the date of constructive use of the mark established pursuant to section 7(c) {15 USC § 1057(c)}, (B) the registration of the mark under this Act if the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988, or (C) publication of the registered mark under subsection (c) of section 12 of this Act {15 USC § 1062(c)}: Provided, however, That this defense or defect shall apply only for the area in which such continuous prior use is proved. But what if the intermediate junior user adopted the mark at issue with knowledge of the registrant's senior common law use? Section 33(b) (5) would not apply (because it explicitly requires adoption "without knowledge"), but is § 7(c) any help? In contrast with § 33(b)(5), § 7(c) makes no mention of knowledge, nor does it explicitly limit itself only to senior common law users or exclude intermediate junior users. Instead, § 7(c) simply refers to any person who "prior to such filing . . . has used the mark." Can an intermediate junior user who adopted with knowledge before the registrant's application date thus retreat back to § 7(c) and claim the same right as a senior common law user to continue to use its mark in an area frozen as of the date of the registrant's registration? The law is not clear on this question, and it was never raised in the Stone Creek case above, but experience has shown that especially attentive students tend to ask it. The answer is almost certainly that the intermediate junior user with knowledge cannot work around § 33(b)( 5) by resorting to § 7(c). For prior common law users of the registrant's mark, be they senior common law users or intermediate junior (common law) users, Section provides no independent basis for freezing any such user's prior rights. It states only that the registrant's nationwide constructive use as of the date of application does not apply to anyone who used the mark before the registrant's date of application. Instead, in general, § 22 would freeze the rights of all such prior users at the latest at the date of the registrant's registration, with the exception that under the more specific provisions of § 33(b) (5) This "constructive notice" disables any person who adopts the mark after the registrant's date of registration from claiming that it did so in good faith. See MCCARTHY § 26:32. With respect to applications filed before November 16, 1989, senior common law users (those who adopted the mark before the registrant began actual use of the mark) are frozen to their area of use as of the date of registration. Lanham Act § 2(d), 15 U.S.C. § 1052(d), provides that two or more parties may use or register similar or identical marks for similar or identical goods provided that their respective uses of the marks will be sufficiently geographically distinct as not to cause consumer confusion. The text of § 2(d) provides as follows: No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it-. . . . (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons. Thus, the first applicant for a mark may be granted a registration covering the entirety of the United States except for the limited area in which an intermediate junior user or senior common law user is entitled to use the mark. See, e.g., Terrific Promotions, Inc. v. Vanlex, Inc., 36 U.S.P.Q.2d 1349 (TTAB 1995) ("TPI is entitled to a concurrent use registration for the mark DOLLAR BILLS and design for discount variety goods store services for the area comprising the entire United States except for the counties of Essex, Bergen, Hudson, Union and Middlesex in New Jersey, the five Boroughs of New York City and the counties of Suffolk, Nassau, Westchester, Rockland and Putnam in New York, the county of Fairfield in Connecticut and the county of Allegheny in Pennsylvania." (see registration certificate below)); Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512 (C.C.P.A. 1980) (limiting junior user-registrant's registration to the entirety of the U.S. except for certain areas of New Jersey in which senior user had been using its mark). Meanwhile, the intermediate junior user or senior common law user may seek to register the mark for the limited area in which it is allowed still to use the mark. See, e.g., Olé Taco, Inc. v. Tacos Olé, Inc., 221 U.S.P.Q. 912 (TTAB 1984) (limiting senior user's registration to entirety of U.S. except for area consisting of 180mile radius around Grand Rapids, Michigan; limiting junior user's registration to Grand Rapids, Michigan (see registration certificates below)). Though concurrent registrations are an interesting phenomenon, they are exceedingly rare. The PTO's data indicate that among all 2.65 million live trademark registrations on the Principal Register in 2020, only 332 consisted of registrations subject to concurrent use. See USPTO, Case Files Dataset, https://www.uspto.gov/ip-policy/economic-research/research-datasets/trademark-case-files-dataset (concur_use_in). In Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959), the Second Circuit established a significant geographic limitation on a federal registrant's ability to enjoin confusingly-similar uses by those over whom the registrant has priority. The Dawn Donut court held that though registration confers on the registrant nationwide priority, mere registration without more does not entitle the registrant to nationwide injunctive relief. Instead, the registrant must show that it is likely to make (or is already making) an actual use of the mark in any post-registration junior user's area of trade before the registrant will be entitled to enjoin the junior use. The Dawn Donut rule does not present a problem for a registrant making nationwide use of its mark. But for a registrant making only a local or regional use of its mark, the registrant cannot enjoin uses in different geographic areas until it can show that it is actually using or is likely imminently to use its mark in those areas or its reputation has spread to those areas. In the Dawn Donut case itself, the plaintiff was the senior user and registrant of the mark DAWN for doughnuts, which it had registered in 1927 and renewed under the Lanham Act in 1947. In 1951, the defendant began to use the same mark for doughnuts in Rochester, New York. At the time of the suit, the plaintiff was not using or advertising its mark in the Rochester area. The Second Circuit held that there was thus no likelihood of confusion that could form the basis of injunctive relief: [I]f the use of the marks by the registrant and the unauthorized user are confined to geographically separate markets, with no likelihood that the registrant will expand his use into the defendant's market, so that no public confusion is possible, then the registrant is not entitled to enjoin the junior user's use of the mark. Dawn Donut, 267 F. 2d at 364. The plaintiff could seek relief at a later date if it could show an intent to expand into the defendant's area of use: [B]ecause of the effect we have attributed to the constructive notice provision of the Lanham Act, the plaintiff may later, upon a proper showing of an intent to use the mark at the retail level in defendant's market area, be entitled to enjoin defendant's use of the mark. Id. at 365. To emphasize, the strange effect of the Dawn Donut rule is that even though a registrant may have nationwide priority in its registered mark, the registrant may not be able to prevent others from using that mark in regions in which the registrant is not yet itself using the mark or has established a reputation. Those others are, however, living on "borrowed time." MCCARTHY, § 26.33. The junior user's "use of the mark can continue only so long as the federal registrant remains outside the market area. But once the federal registrant shows a likelihood of entry, the junior user must stop use of the mark." Id. Dawn Donut remains good law. In the remarkable case of What-A-Burger of Virginia, Inc. v. Whataburger, Inc. of Corpus Christi, Texas, 357 F.3d 441 (4th Cir. 2004), the declaratory defendant Whataburger-Texas registered the mark WHATABURGER for restaurant services in September, 1957. By the time of the suit, Whataburger-Texas was using the mark in connection with over 500 locations in various southern states but not in Virginia. The declaratory plaintiff What-A-Burger-Virginia began to use the mark WHAT-A-BURGER in Newport News, Virginia in August, 1957, and subsequently expanded its use to various other locations in Virginia in the following years. In 1970, Whataburger-Texas became aware of What-A-Burger-Virginia's use in Virginia and proposed a licensing arrangement. There was no further communication between the parties until 2002, when Whataburger-Texas contacted What-A-Burger-Virginia to determine if What-A-Burger-Virginia's use was infringing on Whataburger-Texas's registered mark. What-A-Burger-Virginia asserted, among other things, that Whataburger-Texas was barred by the doctrine of laches from asserting infringement because it had waited nearly thirty years to do so. Whataburger-Texas successfully argued that laches could not apply because, under the principles established in Dawn Donut, Whataburger-Texas could not have sought during that thirty year period to enjoin What-A-Burger-Virginia's use of the mark in Virginia. The Fourth Circuit explained: "There is nothing in this case to indicate a likelihood of entry into the local Virginia market by {Whataburger-Texas} (in fact, {Whataburger-Texas} specifically disavows any such intention) or that the likelihood of confusion otherwise looms large, triggering the obligation for {Whataburger-Texas} to initiate an action for trademark infringement." Id. at 451. Courts are growing increasingly wary of Dawn Donut however. For example, in Westmont Living, Inc. v. Ret. Unlimited, Inc., 132 F.4th 288 (4th Cir. 2025), the plaintiff operated numerous retirement communities in California and Oregon under the registered mark WESTMONT LIVING. The defendant then opened a retirement community in Virginia named "Westmont at Short Pump." On cross-motions for summary judgment, the district court considered only the Dawn Donut rule to find that the parties "operate in entirely distinct geographic markets and therefore there is no likelihood of consumer confusion." Westmont Living, Inc. v. Ret. Unlimited, Inc., No. 22 Civ. 811, 2023 WL 7285420, at *12 (E.D. Va. Nov. 3,2023). The Fourth Circuit remanded. It emphasized that both parties advertised nationally: While Westmont Living operates facilities on the West Coast and RUI operates facilities on the East Coast, they both advertise nationally, and with good success. Westmont Living's online advertising has produced tens of thousands of affirmative responses, including inquiries from every State, which have yielded numerous customers and contributed millions of dollars to Westmont Living's gross revenue. RUI likewise advertises nationally on the Internet, and presumably also with good results. Thus, when a person searches the Internet for "Westmont," he or she will encounter both Westmont Living's site and RUI's site for The Westmont at Short Pump. Westmont Living, Inc. v. Ret. Unlimited, Inc., 132 F.4th at 298. The Fourth Circuit explained more generally: {B}oth Dawn Donut and What-A-Burger recognize the commonsense proposition that when two local businesses operate with the same mark in entirely distinct geographical markets, including their advertising and marketing, a likelihood of confusion will not arise. But those circumstances are present far less frequently today, in light of increased mobility, the Internet, and the reduced influence of local radio and newspaper advertising. See Cir. City Stores, Inc. v. CarMax, Inc., 165 F.3d 1047, 1057 (6th Cir. 1999) (Jones, J., concurring) (observing that "[t]he Dawn Donut Rule was enunciated in 1959" and that "our society is far more mobile than it was four decades ago," with "the Internet . . . increasingly deconstructing geographical barriers for marketing purposes"). Westmont Living, Inc. v. Ret. Unlimited, Inc., 132 F.4th at 298. See also Guthrie Healthcare Sys. v. ContextMedia, Inc., 826 F.3d 27, 48 (2d Cir. 2016) (aggressively distinguishing away Dawn Donut on the basis that "Dawn Donuts {sic} did not present the problem, like this case, of a plaintiff who has shown entitlement to an injunction in one geographic area and seeks to have the injunction extend beyond as well. It therefore has pertinence to the question at issue here."). For an excellent (and brief) practical overview of the Dawn Donut rule, see Christopher P. Bussert, Trademark Enforcement in Distinct Geographic Territories: Is the Infringement Case "Ripe"?, FRANCHISE LAWYER, Summer 2019, at 3. 1. Consent to use agreements. Two users of similar marks may reach an agreement in which they promise not to sue each other for trademark infringement provided that each complies with the limitations on use set forth in the agreement. These limitations may limit use to, among other things, specific geographical areas, specific goods or services, or specific mark formats. See Brennan's Inc. v. Dickie Brennan & Co. Inc., 376 F.3d 356, 364 (5th Cir. 2004) (discussing consent to use agreements); MCCARTHY § 18:79 (same). See also Eric Pfanner, British Judge Allows Apple to Keep Logo on iTunes, NY TIMES, May 9, 2006 (discussing litigation between Apple Computer and Apple Corps, the Beatles' corporate entity, concerning the former's alleged breach of the 1991 consent to use agreement between the two firms). Courts (and examiners) typically give great weight to consent to use agreements, but they sometimes nevertheless find a likelihood of confusion. For example, in In re Ye Mystic Krewe of Gasparilla, Serial No. 90522364 (TTAB Oct. 14, 2025), the TTAB affirmed the examiner's section 2(d) refusal to register the applied-for mark GASPARILLA in certain classes of goods in light of the already-registered mark GASPARILLA TREASURES in those same classes even though the applicant submitted a consent agreement signed by the registrant: As for the Consent Agreement, while we "recognize the Federal Circuit's instruction that consent agreements are frequently entitled to great weight," Bay State Brewing Co., 2016 TTAB LEXIS 46, at *32-and we accordingly give some weight to the existence of the Consent Agreement, the parties' acknowledgement that confusion has not occurred (although the relevant time period is brief), and their agreement that steps will be taken to address any actual confusion-we find that the Consent Agreement as a whole suffers from multiple failings. . . . Notably, there is no sufficient basis in the Consent Agreement explaining why confusion is unlikely where identical and legally identical goods are sold to identical potential consumers in identical channels of trade under highly similar marks. See In re Am. Cruise Lines, 2018 TTAB LEXIS 363, at *18 ("A 'naked consent agreement' is an agreement that contains little more than the registrant's consent to registration and perhaps a statement that confusion is believed to be unlikely. TRADEMARK MANUAL OF EXAMINING PROCEDURE § 1207.01(d)(viii)"). The Consent Agreement simply does not rise to the level of one of the "more detailed agreements" to be given "substantial" weight, DuPont, 476 F.2d at 1362." In re Mystic Krewe of Gasparilla, Serial No. 90522364, at 20. But see In re American Cruise Lines, Inc., 128 U.S.P.Q.2d 1157 (TTAB 2018) (reversing examiner's Lanham Act § 2(d) refusal even though consent agreement between CONSTELLATION and AMERICAN CONSTELLATION for cruise ships contained no provisions requiring parties to seek to avoid confusion, reasoning that "[w]hile the inclusion of provisions to avoid any potential confusion are preferred and probative in consent agreements, they are not mandatory."). To register a non-inherently distinctive mark, the mark owner need only show that the mark has secondary meaning in some part of the United States. But see MCCARTHY 15:72 (citing a 1963 TTAB opinion for the proposition that "the law is unclear [on this issue], with a hint that proving secondary meaning in only a small part of the United States might not be sufficient."). Yet the priority rights that stem from registration are nationwide in scope. Does this make sense as a policy matter? Cf. Société des produits Nestlé v. Mondelez UK Holdings & Services, C-84/17 P, C-85/17 P and C-95/17 P, ECLI:EU:C:2018:596, ¶ 83 (CJEU, July 25, 2018) (holding that for purposes of registering an EU trademark that is not inherently distinctive anywhere in the European Union, the applicant must show that the mark has acquired secondary meaning throughout the European Union). We have focused so far on trademark uses within the territorial borders of the U.S. and the geographical extent of rights established by such uses. We turn now to trademark uses outside the territorial borders of the U.S. and to the question of whether such uses can form the basis for exclusive rights within the U.S. As set forth below in Part I.E.3.a and as exemplified in Person's Co., Ltd. v. Christman, 900 F.2d 1565 (Fed. Cir. 1990), the traditional view has long been that trademark rights are generally limited to national borders and that foreign uses of trademarks generally do not confer exclusive rights within the U.S. However, as discussed in Part I.E.3.b, the "well-known marks doctrine" holds that foreign uses of trademarks that become very well-known in the U.S. may form the basis for exclusive rights within the U.S. even when the foreign user is not making any actual use of the mark within the U.S. Finally, as presented in Part I.E.3.c, a more recent opinion from the Fourth Circuit, Belmora LLC v. Bayer Consumer Care AG, 819 F.3d 697 (4th Cir. 2016), cert. denied, 137 S. Ct. 1202 (U.S. 2017), has the potential profoundly to change our traditional understanding of the national limits of trademark rights (and of the relation between Lanham Act § § 32 and 43(a)). Belmora was denied certiorari review. If its reasoning is adopted by other circuits, it may significantly lessen the importance of much of the doctrine discussed in Parts I.E.3.a & b. The opinion below, Person's Co., Ltd. v. Christman, 900 F.2d 1565 (Fed. Cir. 1990), is frequently cited as standing for the proposition that foreign uses do not establish exclusive rights within the In reading through the opinion, consider the following questions: • Does the outcome in Person's strike you as fair? • Alternatively, has the Federal Circuit chosen the economically efficient outcome? If not, what would that outcome be? [1] Person's Co., Ltd. appeals from the decision of the Patent and Trademark Office Trademark Trial and Appeal Board (Board) which granted summary judgment in favor of Larry Christman and ordered the cancellation of appellant's registrationfoot_18 for the mark "PERSON'S" for various apparel items. Appellant Person's Co. seeks cancellation of Christman's registration 3 for the mark "PERSON'S" for wearing apparel on the following grounds: likelihood of confusion based on its prior foreign use, abandonment, and unfair competition within the meaning of the Paris Convention. We affirm the Board's decision. Background [2] The facts pertinent to this appeal are as follows: In 1977, Takaya Iwasaki first applied a stylized logo bearing the name "PERSON'S" to clothing in his native Japan. Two years later Iwasaki formed Person's Co., Ltd., a Japanese corporation, to market and distribute the clothing items in retail stores located in Japan. [3] In 1981, Larry Christman, a U.S. citizen and employee of a sportswear wholesaler, visited a Person's Co. retail store while on a business trip to Japan. Christman purchased several clothing items bearing the "PERSON'S" logo and returned with them to the United States. After consulting with legal counsel and being advised that no one had yet established a claim to the logo in the United States, Christman developed designs for his own "PERSON'S" brand sportswear line based on appellant's products he had purchased in Japan. In February 1982, Christman contracted with a clothing manufacturer to produce clothing articles with the "PERSON'S" logo attached. These clothing items were sold, beginning in April 1982, to sportswear retailers in the northwestern United States. Christman formed Team Concepts, Ltd., a Washington corporation, in May 1983 to continue merchandising his sportswear line, which had expanded to include additional articles such as shoulder bags. All the sportswear marketed by Team Concepts bore either the mark "PERSON'S" or a copy of appellant's globe logo; many of the clothing styles were apparently copied directly from appellant's designs. [4] In April 1983, Christman filed an application for U.S. trademark registration in an effort to protect the "PERSON'S" mark. Christman believed himself to be the exclusive owner of the right to use and register the mark in the United and apparently had no knowledge that appellant soon intended to introduce its similar sportswear line under the identical mark in the U.S. market. Christman's registration issued in September 1984 for use on wearing apparel. [5] In the interim between Christman's first sale and the issuance of his registration, Person's Co., Ltd. became a well known and highly respected force in the Japanese fashion industry. The company, which had previously sold garments under the "PERSON'S" mark only in Japan, began implementing its plan to sell goods under this mark in the United States. According to Mr. Iwasaki, purchases by buyers for resale in the United States occurred as early as November 1982. This was some seven months subsequent to Christman's first sales in the United States. Person's Co. filed an application for U.S. trademark registration in the following year, and, in 1985, engaged an export trading company to introduce its goods into the U.S. market. The registration for the mark "PERSON'S" issued in August 1985 for use on luggage, clothing and accessories. After recording U.S. sales near 4 million dollars in 1985, Person's Co. granted California distributor Zip Zone International a license to manufacture and sell goods under the "PERSON'S" mark in the United States. [6] In early 1986, appellant's advertising in the U.S. became known to Christman and both parties became aware of confusion in the marketplace. Person's Co. initiated an action to cancel Christman's registration on the following grounds: (1) likelihood of confusion; (2) abandonment; and (3) unfair competition within the meaning of the Paris Convention. Christman counterclaimed and asserted prior use and likelihood of confusion as grounds for cancellation of the Person's Co. registration. [7] After some discovery, Christman filed a motion with the Board for summary judgment on all counts. In a well reasoned decision, the Board held for Christman on the grounds that Person's use of the mark in Japan could not be used to establish priority against a "good faith" senior user in U.S. commerce. The Board found no evidence to suggest that the "PERSON'S" mark had acquired any notoriety in this country at the time of its adoption by Christman. Therefore, appellant had no reputation or goodwill upon which Christman could have intended to trade, rendering the unfair competition provisions of the Paris Convention inapplicable. The Board also found that Christman had not abandoned the mark, although sales of articles bearing the mark were often intermittent. The Board granted summary judgment to Christman and ordered appellant's registration cancelled. [8] The Board held in its opinion on reconsideration that Christman had not adopted the mark in bad faith despite his appropriation of a mark in use by appellant in a foreign country. The Board adopted the view that copying a mark in use in a foreign country is not in bad faith unless the foreign mark is famous in the United States or the copying is undertaken for the purpose of interfering with the prior user's planned expansion into the United States. Person's Co. appeals and requests that this court direct the Board to enter summary judgment in its favor. [9] 1. Does knowledge of a mark's use outside U.S. commerce preclude good faith adoption and use of the identical mark in the United States prior to the entry of the foreign user into the domestic market? [10] 2. Did the Board properly grant summary judgment in favor of on the issue of abandonment? [11] The Board may properly cancel a trademark registration within five years of issue when, e.g. ( 1) there is a valid ground why the trademark should not continue to be registered and ( 2) the party petitioning for cancellation has standing. Such cancellation of the marks' registrations may be based upon any ground which could have prevented registration initially. The legal issue in a cancellation proceeding is the right to register a mark, which may be based on either (1) ownership of a foreign registration of the mark in question or (2) use of the mark in United States commerce. [12] The first ground asserted for cancellation in the present action is § 2(d) of the Lanham Act; each party claims prior use of registered marks which unquestionably are confusingly similar and affixed to similar goods. [13] Section 1 of the Lanham Actfoot_19 states that "[t]he owner of a trademark used in commerce may register his trademark . . . ." The term "commerce" is defined in Section 45 of the Act as ". . . all commerce which may be lawfully regulated by Congress." No specific Constitutional language gives Congress power to regulate trademarks, so the power of the federal government to provide for trademark registration comes only under its commerce power. The term "used in commerce" in the Lanham Act refers to a sale or transportation of goods bearing the mark in or having an effect on: (1) United States interstate commerce; (2) United States commerce with foreign nations; or (3) United States commerce with the Indian Tribes. [14] In the present case, appellant Person's Co. relies on its use of the mark in Japan in an attempt to support its claim for priority in the United States. Such foreign use has no effect on U.S. commerce and cannot form the basis for a holding that appellant has priority here. The concept of territoriality is basic to trademark law; trademark rights exist in each country solely according to that country's statutory scheme. Christman was the first to use the mark in United States commerce and the first to obtain a federal registration thereon. Appellant has no basis upon which to claim priority and is the junior user under these facts. 16 Bad Faith [15] Appellant vigorously asserts that Christman's adoption and use of the mark in the United States subsequent to Person's Co.'s adoption in Japan is tainted with "bad faith" and that the priority in the United States obtained thereby is insufficient to establish rights superior to those arising from Person's prior adoption in a foreign country. Relying on Woman's World Shops, Inc. v. Lane Bryant, Inc., 5 USPQ2d 1985 (TTAB 1988), Person's Co. argues that a "remote junior user" of a mark obtains no right superior to the "senior user" if the "junior user" has adopted the mark with knowledge of the "senior user's" prior use. 18 In Woman's World, the senior user utilized the mark within a limited geographical area. A junior user from a different geographical area of the United States sought unrestricted federal registration for a nearly identical mark, with the exception to its virtually exclusive rights being those of the known senior user. The Board held that such an appropriation with knowledge failed to satisfy the good faith requirements of the Lanham Act and denied the concurrent use rights sought by the junior user. 5 USPQ2d at 1988. Person's Co. cites Woman's World for the proposition that a junior user's adoption and use of a mark with knowledge of another's prior use constitutes bad faith. It is urged that this principle is equitable in nature and should not be limited to knowledge of use within the territory of the United States. [16] While the facts of the present case are analogous to those in Woman's World, the case is distinguishable in one significant respect. In Woman's World, the first use of the mark by both the junior and senior users was in United States commerce. In the case at bar, appellant Person's Co., while first to adopt the mark, was not the first user in the United States. Christman is the senior user, and we are aware of no case where a senior user has been charged with bad faith. The concept of bad faith adoption applies to remote junior users seeking concurrent use registrations; in such cases, the likelihood of customer confusion in the remote area may be presumed from proof of the junior user's knowledge. 20 In the present case, when Christman initiated use of the mark, Person's Co. had not yet entered U.S. commerce. The Person's Co. had no goodwill in the United States and the "PERSON'S" mark had no reputation here. Appellant's argument ignores the territorial nature of trademark rights. alleging actual use in U.S. commerce. If a U.S. application is filed within six months of the filing of the foreign application, such U.S. registration will be accorded the same force and effect as if filed in the United States on the same date on which the application was first filed in the foreign country. The statutory scheme set forth in § 44 is in place to lower barriers to entry and assist foreign applicants in establishing business goodwill in the United States. Person's Co. does not assert rights under § 44, which if properly applied, might have been used to secure priority over Christman. [17] Appellant next asserts that Christman's knowledge of its prior use of the mark in Japan should preclude his acquisition of superior trademark rights in the United States. The Board found that, at the time of registration, Christman was not aware of appellant's intention to enter the U.S. clothing and accessories market in the future. Christman obtained a trademark search on the "PERSON'S" mark and an opinion of competent counsel the mark was "available" in the United States. Since Appellant had taken no steps to secure registration of the mark in the United States, Christman was aware of no basis for Person's Co. to assert superior rights to use and registration here. Appellant would have us infer bad faith adoption because of Christman's awareness of its use of the mark in Japan, but an inference of bad faith requires something more than mere knowledge of prior use of a similar mark in a foreign country. [18] As the Board noted below, Christman's prior use in commerce cannot be discounted solely because he was aware of appellant's use of the mark in Japan. While adoption of a mark with knowledge of a prior actual user in U.S. commerce may give rise to cognizable equities as between the parties, no such equities may be based upon knowledge of a similar mark's existence or on a problematical intent to use such a similar mark in the future. Knowledge of a foreign use does not preclude good faith adoption and use in the United States. While there is some case law supporting a finding of bad faith where (1) the foreign mark is famous here 23 or (2) the use is a nominal one made solely to block the prior foreign user's planned expansion into the United States, 24 as the Board correctly found, neither of these circumstances is present in this case. [19] We agree with the Board's conclusion that Christman's adoption and use of the mark were in good faith. Christman's adoption of the mark occurred at a time when appellant had not yet entered U.S. commerce; therefore, no prior user was in place to give Christman notice of appellant's potential U.S. rights. Christman's conduct in appropriating and using appellant's mark in a market where he believed the Japanese manufacturer did not compete can hardly be considered unscrupulous commercial conduct. Christman adopted the trademark being used by appellant in Japan, but appellant has not identified any aspect of U.S. trademark law violated by such action. Trademark rights under the Lanham Act arise solely out of use of the mark in U.S. commerce or from ownership of a foreign registration thereon; "[t]he law pertaining to registration of trademarks does not regulate all aspects of business morality." [citation omitted] When the law has been crafted with the clarity of crystal, it also has the qualities of a glass slipper: it cannot be shoe-horned onto facts it does not fit, no matter how appealing they might appear. [20] In United Drug Co. v. Rectanus Co., 248 U.S. 90 (1918), the Supreme Court of the United States determined that "[t]here is no such thing as property in a trademark except as a right appurtenant to an established business or trade in connection with which the mark is employed . . . . [I]ts function is simply to designate the goods as the product of a particular trader and to protect his goodwill against the sale of another's product as his; and it is not the subject of property except in connection with an existing business." 36 In the present case, appellant failed to secure protection for its mark through use in U.S. commerce; therefore, no established business or product line was in place from which trademark rights could arise. Christman was the first to use the mark in U.S. commerce. This first use was not tainted with bad faith by Christman's mere knowledge of appellant's prior foreign use, so the Board's conclusion on the issue of priority was correct . . . . Accordingly, the grant of summary judgment was entirely in order, and the Board's decision is affirmed. AFFIRMED. Though it is rarely invoked, the well-known marks doctrine constitutes an important exception to-or variation on-the territoriality principle in trademark law. It is also the source of a basic split between the Ninth and Second Circuits on whether U.S. federal trademark law incorporates well-known marks protection. As you read through the opinions below, consider the following questions: • As a policy matter, for a foreign mark not used in the U.S., how well-known should such a mark be in the U.S. for it to qualify for protection in the U.S.? Should mere secondary meaning in a particular geographic location be sufficient? "Secondary meaning plus"? Nationwide fame? • What is the particular statutory or common law basis for the Ninth Circuit's application of the well-known marks doctrine? • Is the New York Court of Appeals approach to the issue persuasive? • Is the well-known marks doctrine simply a transnational extension of the Tea Rose-Rectanus doctrine? Is there any way in which the well-known marks doctrine is different? 36 248 U.S. at 97. It goes without saying that the underlying policy upon which this function is grounded is the protection of the public in its purchase of a service or product. See, e.g. In re Canadian Pacific Ltd., 754 F.2d 992, 994 (Fed. Cir. 1985). [1] This is a trademark case. The contest is between a large Mexican grocery chain that has long used the mark, but not in the United States, and a small American chain that was the first to use the mark in the United States, but did so, long after the Mexican chain began using it, in a locality where shoppers were familiar with the Mexican mark. [2] Grupo Gigante S.A. de C.V. ("Grupo Gigante") operates a large chain of grocery stores in Mexico, called "Gigante," meaning "Giant" in Spanish. Grupo Gigante first called a store "Gigante" in Mexico City in 1962. In 1963, Grupo Gigante registered the "Gigante" mark as a trade name in Mexico, and has kept its registration current ever since. The chain was quite successful, and it had expanded into Baja California, Mexico by 1987. By 1991, Grupo Gigante had almost 100 stores in Mexico, including six in Baja, all using the mark "Gigante." Two of the Baja stores were in Tijuana, a city on the U.S.-Mexican border, just south of San Diego. [3] As of August 1991, Grupo Gigante had not opened any stores in the United States. That month, Michael Dallo began operating a grocery store in San Diego, using the name "Gigante Market." In October 1996, Dallo and one of his brothers, Chris Dallo, opened a second store in San Diego, also under the name Gigante Market. The Dallo brothers-who include Michael, Chris, and their two other brothers, Douray and Rafid-have since controlled the two stores through various limited liability corporations. [4] In 1995, which was after the opening of the Dallos' first store and before the opening of their second, Grupo Gigante began exploring the possibility of expanding into Southern California. It learned of the Dallos' Gigante Market in San Diego. Grupo Gigante decided against entering the California market at that time. It did nothing about the Dallos' store despite Grupo Gigante's knowledge that the Dallos were using "Gigante" in the store's name. [5] In 1998, Grupo Gigante decided that the time had come to enter the Southern California market. It arranged a meeting with Michael Dallo in June 1998 to discuss the Dallos' use of the name "Gigante." Grupo Gigante was unsuccessful at this meeting in its attempt to convince Dallo to stop using the "Gigante" mark. Also in June 1998, Grupo Gigante registered the "Gigante" mark with the state of California. The Dallos did likewise in July 1998. Neither has registered the mark federally. [6] About one year later, in May 1999, Grupo Gigante opened its first U.S. store. That store was followed by a second later that year, and then by a third in 2000. All three stores were in the Los Angeles area. All were called "Gigante," like Grupo Gigante's Mexican stores. [7] In July 1999, after learning of the opening of Grupo Gigante's first U.S. store, the Dallos sent Grupo Gigante a cease-and-desist letter, making the same demand of Grupo Gigante that Grupo Gigante had made of them earlier: stop using the name Gigante. Grupo Gigante responded several days later by filing this lawsuit. Its claim was based on numerous federal and state theories, including trademark infringement under the Lanham Act. 3 It sought compensatory and punitive damages, a declaratory judgment that it had the superior right to the Gigante mark, and an injunction against the Dallos' use of the mark. The Dallos counterclaimed, on similar theories, asserting it had the superior right to the mark in Southern California. 4 The Dallos sought a declaratory judgment, injunctive relief, damages, and cancellation of Grupo Gigante's California registration of the mark. [8] The district court disposed of the case in a published decision on cross motions for summary judgment. 5 The court recognized that under the "territoriality principle," use of a mark in another country generally does not serve to give the user trademark rights in the United States. Thus, the territoriality principle suggests that the Dallos' use of the mark, which was the first in the United States, would entitle them to claim the mark. But it held that because Grupo Gigante had already made Gigante a well-known mark in Southern California by the time the Dallos began using it, an exception to the territoriality principle applied. As the district court interpreted what is known as the "famous-mark" or "well-known mark" exception to the territoriality principle, Grupo Gigante's earlier use in Mexico was sufficient to give it the superior claim to the mark in Southern California. The court held, therefore, that Grupo Gigante was entitled to a declaratory judgment that it had a valid, protectable interest in the Gigante name. Nevertheless, the court held that laches barred Grupo Gigante from enjoining the Dallos from using the mark at their two existing stores. The Dallos appeal the holding that Grupo Gigante has a protectable right to use the mark in Southern California. Grupo Gigante appeals the laches holding. We agree in large part with the district court's excellent opinion, but some necessary qualifications to it require a remand. The exception for famous and well-known foreign marks [9] We review the summary judgment decision de novo. [10] A fundamental principle of trademark law is first in time equals first in right. But things get more complicated when to time we add considerations of place, as when one user is first in time in one place while another is first in time in a different place. The complexity swells when the two places are two different countries, as in the case at bar. [11] Under the principle of first in time equals first in right, priority ordinarily comes with earlier use of a mark in commerce. It is "not enough to have invented the mark first or even to have registered it first." If the first-in-time principle were all that mattered, this case would end there. It is undisputed that Grupo Gigante used the mark in commerce for decades before the Dallos did. But the facts of this case implicate another well-established principle of trademark law, the "territoriality principle." The territoriality principle, as stated in a treatise, says that "[p]riority of trademark rights in the United States depends solely upon priority of use in the United States, not on priority of use anywhere in the world."foot_25 Earlier use in another country usually just does not count.foot_26 Although we have not had occasion to address this principle, it has been described by our sister circuits as "basic to trademark law," in large part because "trademark rights exist in each country solely according to that country's statutory scheme."foot_27 While Grupo Gigante used the mark for decades before the Dallos used it, Grupo Gigante's use was in Mexico, not in the United States. Within the San Diego area, on the northern side of the border, the Dallos were the first users of the "Gigante" mark. Thus, according to the territoriality principle, the Dallos' rights to use the mark would trump Grupo Gigante's. [12] Grupo Gigante does not contest the existence of the territoriality principle. But like the first-in-time, first-in-right principle, it is not absolute. The exception, as Grupo Gigante presents it, is that when foreign use of a mark achieves a certain level of fame for that mark within the United States, the territoriality principle no longer serves to deny priority to the earlier foreign user. The Dallos concede that there is such an exception, but dispute what it takes for a mark to qualify for it. Grupo Gigante would interpret the exception broadly, while the Dallos would interpret it narrowly. [13] Grupo Gigante does not argue to this court that it used the mark in the United States in a way that qualifies for protection regardless of the territoriality principle and any exception to it. While the district court opinion suggests that Grupo Gigante made an alternative argument of this sort below, its argument on appeal is limited to whether the mark has become well-known enough to overcome the territoriality principle. For example, while the statement of facts in Grupo Gigante's brief claims that Grupo Gigante engaged in advertising in Mexico that reached United States consumers, Grupo Gigante does not assert that this advertising, combined with other activities, constitutes domestic use of the mark. 13 Thus, while Grupo Gigante does not appear to concede explicitly that application of the famous-mark exception is necessary to its success on appeal, the structure of its argument suggests as much. Since the district court based its holding on an interpretation of the exception, and since Grupo Gigante does not urge us to consider alternative ways it might be eligible for protection, we have no occasion to decide, and do not decide, whether Grupo Gigante could establish protection for its mark apart from application of the famous-mark exception to the territoriality principle. [14] There is no circuit-court authority-from this or any other circuit-applying a famous-mark exception to the territoriality principle. At least one circuit judge has, in a dissent, called into question whether there actually is any meaningful famous-mark exception. 14 We hold, however, that there is a famous mark exception to the territoriality principle. While the territoriality principle is a long-standing and important doctrine within trademark law, it cannot be absolute. An absolute territoriality rule without a famous-mark exception would promote consumer confusion and fraud. Commerce crosses borders. In this nation of immigrants, so do people. Trademark is, at its core, about protecting against consumer confusion and "palming off." 15 There can be no justification for using trademark law to fool immigrants into thinking that they are buying from the store they liked back home. [15] It might not matter if someone visiting Fairbanks, Alaska from Wellington, New Zealand saw a cute hair-salon name-"Hair Today, Gone Tomorrow," "Mane Place," "Hair on Earth," "Mary's Hair'em," or "Shear Heaven"-and decided to use the name on her own salon back home in New Zealand. The ladies in New Zealand would not likely think they were going to a branch of a Fairbanks hair salon. But if someone opened a high-end salon with a red door in Wellington and called it Elizabeth Arden's, women might very well go there because they thought they were going to an affiliate of the Elizabeth Arden chain, even if there had not been any other Elizabeth Ardens in New Zealand prior to the salon's opening. If it was not an affiliate, just a local store with no connection, customers would be fooled. The real Elizabeth Arden chain might lose business if word spread that the Wellington salon was nothing special. [16] The most cited case for the famous-mark exception is Vaudable v. Montmartre, Inc., a 1959 trial court decision from New York. 16 A New York restaurant had opened under the name "Maxim's," the same name as the well-known Parisian restaurant in operation since 1893, and still in operation today. The New York Maxim's used similar typography for its sign, as well as other features likely to evoke the Paris Maxim's-particularly among what the court called "the class of people residing in the cosmopolitan city of New York who dine out" 17 (by which it apparently meant the sort of people who spend for dinner what some people spend for a month's rent). The court enjoined the New York use, even though the Paris restaurant did not operate in New York, or in the United States, because the Maxim's mark was "famous." 18 [17] While Vaudable stands for the principle that even those who use marks in other countries can sometimes-when their marks are famous enough-gain exclusive rights to the marks in this country, the case itself tells us little about just how famous or well-known the foreign mark must be. The opinion states in rather conclusory terms that the Paris Maxim's "is, of course, well known in this country," and that "[t]here is no doubt as to its unique and eminent position as a restaurant of international fame and prestige." 19 This language suggests that Maxim's had achieved quite a high degree of fame here, and certainly enough to qualify for the exception to the territoriality principle, but it suggests nothing about just how much fame was necessary. It does not suggest where the line is between "Shear Heaven" and Maxim's. [18] The Patent and Trademark Office's Trademark Trial and Appeal Board, whose expertise we respect and whose decisions create expectations, has recognized the validity of the famous-mark exception. 20 But as with Vaudable, none of these cases helps us to establish a clear threshold for just how famous a mark must be to qualify for the exception. [19] Grupo Gigante urges us to adopt the approach the district court took. The district court held that the correct inquiry was to determine whether the mark had attained secondary meaning in the San Diego area. Secondary meaning refers to a mark's actual ability to trigger in consumers' minds a link between a product or service and the source of that product or service. That is, a mark has secondary meaning "when, in the minds of the public, the primary significance of a mark is to identify the source of the product rather than the product itself."foot_31 Determining whether a mark has secondary meaning requires taking into account at least seven considerations, which the district court did in this case. 22 [20] Applying its interpretation of the famous-mark exception, the district court concluded that Grupo Gigante's use of the mark had achieved secondary meaning in the San Diego area by the time the Dallos opened their first store, and thus the court held that Grupo Gigante's use was eligible for the exception to the territoriality principle. Grupo Gigante asserts that we, too, should adopt secondary meaning as the definition of the exception. We decline to go quite this far, however, because following the district court's lead would effectively cause the exception to eclipse the territoriality rule entirely. 18 Id. at 335. 19 Id. at 334 (emphasis added). 20 See, e.g., The All England Lawn Tennis Club (Wimbledon) Ltd. [21] Secondary meaning has two functions. First, it serves to determine whether certain marks are distinctive enough to warrant protection. Some marks-those that are arbitrary, fanciful, or suggestive-are deemed inherently distinctive. Others-including those that are descriptive of some feature of the products or services to which they are attached-require some indication of distinctiveness before trademark protection is available. That required indication is that the mark have acquired secondary meaning. Thus, before Grupo Gigante (or for that matter the Dallos) could have a protectable interest in "Gigante" at all, Grupo Gigante would have to show that the mark has acquired secondary meaning by demonstrating that it has come to identify to consumers Grupo Gigante's particular brand of store, not merely a characteristic of Grupo Gigante's stores and others like them. [22] Second, and most relevant to this case, secondary meaning defines the geographic area in which a user has priority, regardless of who uses the mark first. Under what has become known as the Tea Rose-Rectanus doctrine, priority of use in one geographic area within the United States does not necessarily suffice to establish priority in another area. Thus, the first user of a mark will not necessarily be able to stop a subsequent user, where the subsequent user is in an area of the country "remote" from the first user's area. 26 The practical effect is that one user may have priority in one area, while another user has priority over the very same mark in a different area. The point of this doctrine is that in the remote area, where no one is likely to know of the earlier user, it is unlikely that consumers would be confused by the second user's use of the mark. Secondary meaning comes into play in determining just how far each user's priority extends. Courts ask whether the first, geographically limited use of the mark is well-known enough that it has gained secondary meaning not just within the area where it has been used, but also within the remote area, which is usually the area where a subsequent user is claiming the right to use the mark. [23] Assume, for example, that Grupo Gigante had been using the mark in Arizona as well as in various parts of Mexico, and that it had met all the other requirements of having a protectable interest in the mark, including having established secondary meaning throughout Arizona. If the Dallos later began using the same mark in San Diego without knowledge of Grupo Gigante's earlier "remote" use in Arizona, whether Grupo Gigante could stop them would depend on what the mark meant to consumers in San Diego. Under the Tea Rose-Rectanus doctrine, Grupo Gigante would have priority in San Diego, and thus be able to stop the Dallos' use of the mark, only if the secondary meaning from Grupo Gigante's use of the mark in Arizona extended to San Diego as well. If, on the other hand, the secondary meaning from Grupo Gigante's use were limited to Arizona, then the Dallos might be free to continue using the mark in San Diego. [24] Thus, if the dispute before us were between a Mexican and Arizonan Grupo Gigante on the one hand, and the Dallos on the other, we would analyze, under the Tea Rose-Rectanus doctrine, whether Grupo Gigante's use of the mark had achieved secondary meaning in San Diego. This is how the district court analyzed the actual dispute, as a result of having defined the exception to the territoriality principle in terms of secondary meaning. In other words, the district court treated Grupo Gigante's use of the mark exactly as it would have had Grupo Gigante used the mark not only in Mexico, but also in another part of the United States. Under the district court's interpretation of the exception to the territoriality principle, the fact that Grupo Gigante's earlier use of the mark was entirely outside of the United States becomes irrelevant. [25] The problem with this is that treating international use differently is what the territoriality principle does. This interpretation of the exception would effectively eliminate the territoriality principle by eliminating any effect of international borders on protectability. We would end up treating foreign uses of the mark just as we treat domestic uses under the Tea Rose-Rectanus doctrine, asking in both cases whether the use elsewhere resulted in secondary meaning in the local market. [26] We would go too far if we did away with the territoriality principle altogether by expanding the famous-mark exception this much. The territoriality principle has a long history in the common law, 30 and at least two circuits have described it as "basic to trademark law." 31 That status reflects the lack of a uniform trademark regime across international borders. What one must do to acquire trademark rights in one country will not always be the same as what one must do in another. And once acquired, trademark rights gained in other countries are governed by each country's own set of laws. 32 Furthermore, we are arguably required by the Paris Convention, of which the United States is a signatory, to preserve the territoriality principle in some form. 33 Thus, we reject Grupo Gigante's argument that we should define the well-known mark exception as merely an inquiry into whether the mark 30 As McCarthy has noted, traces of the territoriality principle appear in Justice Holmes's opinion for the U.S. Supreme Court in A. Bourjois & Co. v. Katzel, 260 U.S. 689, 692 (1923). McCarthy, supra, at § 29:1, p. 29-4; see also Philip Morris Inc. v. Allen Distribs., Inc., 48 F.Supp.2d 844, 850 (S.D.Ind. 1999) (identifying Bourjois as marking the shift from "the 'universality' principle [to] a 'territoriality principle' that recognizes a separate legal existence for a trademark in each country whose laws afford protection to the mark"). 31 Fuji Photo, 754 F.2d at 599; Person's, 900 F.2d at 1569. 32 See Ingenohl v. Walter E. Olsen & Co., Inc., 273 U.S. 541, 544, (1927) ("A trademark started elsewhere would depend for its protection in Hongkong upon the law prevailing in Hongkong and would confer no rights except by the consent of that law."); Fuji Photo, 754 F.2d at 599 ("[T]rademark rights exist in each country solely according to that country's statutory scheme."). has achieved secondary meaning in the area where the foreign user wishes to assert protection. [27] To determine whether the famous-mark exception to the territoriality rule applies, the district court must determine whether the mark satisfies the secondary meaning test. The district court determined that it did in this case, and we agree with its persuasive analysis. But secondary meaning is not enough. [28] In addition, where the mark has not before been used in the American market, the court must be satisfied, by a preponderance of the evidence, that a substantial percentage of consumers in the relevant American market is familiar with the foreign mark. The relevant American market is the geographic area where the defendant uses the alleged infringing mark. In making this determination, the court should consider such factors as the intentional copying of the mark by the defendant, and whether customers of the American firm are likely to think they are patronizing the same firm that uses the mark in another country. While these factors are not necessarily determinative, they are particularly relevant because they bear heavily on the risks of consumer confusion and fraud, which are the reasons for having a famous-mark exception. [29] Because the district court did not have the benefit of this additional test, we vacate and remand so that it may be applied. We intimate no judgment on whether further motion practice and some additions to what the district court has already written in its published opinion will suffice, or whether trial will be needed to apply this new test. Nor do we intimate what the result should be. The concurring opinion is incorrect in its suggestion that the case necessarily must go to trial because distinctiveness of a mark is a question of fact and defendants have contested the reliability of plaintiffs' survey evidence. That conclusion flies in the face of the 1986 triumvirate of summary judgment cases. 34 Regardless of whether questions are factual, there is nothing to try unless there is a genuine issue of material fact. One survey that is impeachable, but still good enough to get to a jury, weighed against no survey evidence at all on the other side, along with all the other evidence in the record, does not necessarily add up to a genuine issue of fact. . . . [30] I concur in the majority's opinion because I agree that a foreign owner of a supposedly famous or well-known foreign trademark must show a higher level of "fame" or recognition than that required to establish secondary meaning. Ultimately, the standard for famous or well-known marks is an intermediate one. To enjoy extraterritorial trademark protection, the owner of a foreign trademark need not show the level of recognition necessary to receive nation-wide protection against trademark dilution. On the other hand, the foreign trademark owner who does not use a mark in the United States must show more than the level of recognition that is necessary in a domestic trademark infringement case. [31] Nonetheless, I write separately to express my view that the evidence that Plaintiffs have presented thus far is insufficient as a matter of law to establish that their mark is famous or well-known. The survey population and the survey's results establish little more than the fact that Plaintiffs' customers are familiar with Plaintiffs' stores. In an abundance of caution, the majority does not intimate whether that evidence is sufficient to warrant a grant of summary judgment in Plaintiffs' favor on the issue of the famous mark exception. I would go beyond intimation and hold directly that Plaintiffs' evidence is insufficient to support a grant of summary judgment in its favor. I would further hold that, unless the district court entertains a renewed motion for summary judgment on a considerably expanded record, this case should proceed to trial. [32] The district court, relying entirely on survey evidence, concluded that Plaintiffs' trademark had acquired secondary meaning and was thus entitled to protection from domestic users. 1 The survey population consisted of only 78 people in San Diego County who were "Spanish-speaking, and had recently purchased Mexican-style food at a supermarket or other food store." Grupo Gigante S.A. de C.V. v. Dallo & Co., Inc., 119 F.Supp.2d 1083, 1093 (C.D.Cal. 2000). Twenty-four respondents from that population "(1) had recently shopped at a Gigante store in Mexico; (2) believed that the Gigante name was affiliated with an entity that had at least one store located in Mexico; or (3) were aware of a Gigante supermarket located in Mexico." Id. However, the survey was conducted in 2000, nine years after Defendants first began using the Gigante name in the United States. When testing for awareness of the Gigante mark before Defendants' entry into the San Diego market in 1991, the awareness level dropped to 20 to 22 percent of the respondents. Id. That is, the district court based its conclusion that Plaintiffs' mark was well known on a survey that turned up just seventeen people who had heard of Gigante before 1991. [33] That evidence is insufficient in two important respects. First, the survey result is highly questionable in view of its narrowly defined survey population. Plaintiffs' own description of their stores makes clear that the goods sold are little different from those available in any large retail grocery store: "Product offerings in the Gigante stores generally include a complete selection of perishable and non-perishable foods and a wide selection of general merchandise, as well as clothing and fashion items." Further, Plaintiffs admit in their briefs that the clientele of their Mexican stores includes "both Hispanic and non-Hispanic" customers. Consequently, nothing about either the nature of the goods sold by Plaintiffs or its customer base warrants limiting the relevant public to Mexican-Americans. 1 Expert surveys can provide the most persuasive evidence of secondary meaning. Comm. for Idaho's High Desert, Inc. v. Yost, 92 F.3d 814, 822 (9th Cir. 1996). "However, survey data is not a requirement and secondary meaning can be, and often is, proven by circumstantial evidence. . . . . [34] Because Plaintiffs sell widely-available, non-specialized goods to the general public, it is uninformative to focus exclusively on Mexican-Americans living in San Diego County. The district court's reliance on Plaintiffs' survey is especially problematic because its population was limited to Mexican-Americans who had recently purchased Mexican-style food at a supermarket or grocery store. That survey is only very slightly more informative than the study whose probative value we dismissed entirely in Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999), because it focused exclusively on the plaintiff's existing customers: "Avery Dennison's marketing reports are comparable to a survey we discussed in Anti-Monopoly, Inc. v. General Mills Fun Group, Inc., 684 F.2d 1316 (9th Cir. 1982), proving only the near tautology that consumers already acquainted with Avery and Avery Dennison products are familiar with Avery Dennison." 189 F.3d at 879. [35] Because a conclusion that Plaintiffs have a protectable interest would prohibit Defendants from selling groceries under that mark to any residents of San Diego Countynot just to Mexican-Americans-it makes little sense to define the relevant public so narrowly. Comprised of all grocery shoppers, the "relevant sector of the public" in this case is the very antithesis of a specialized market; because everyone eats, the relevant sector of the public consists of all residents of San Diego County, without qualification. [36] Second, in view of the standard we announce today, I do not believe that a showing that 20 to 22 percent of the relevant market is familiar with the foreign mark establishes that a "significant" or "substantial" percentage of that market is familiar with the foreign mark. On that ground alone, I would conclude that Plaintiffs have failed, so far, to show that their mark is famous or well-known. [37] In terms of the level of fame, trademark dilution cases often speak of a "significant percentage of the defendant's market." Mead Data Cent., Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1031 (2d Cir. 1989). Discussing the level of recognition required to establish "niche fame," McCarthy argues that "a mark should not be categorized as 'famous' unless it is known to more than 50 percent of the defendant's potential customers." 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 24:112, at 24-271 (4th ed. 2002). [38] I would adopt a similar standard for the exception for famous or well-known foreign marks. When a foreign mark has not been used in the United States, I would require the owner of the foreign mark to show, through surveys and other evidence, that a majority of the defendant's customers and potential customers, on aggregate, were familiar with the foreign mark when the defendant began its allegedly infringing use. Admittedly, that is a high standard. However, I believe that a stringent standard is required when conferring trademark protection to a mark that has never been, and perhaps never may be, used in this country. A conclusion that Plaintiffs' mark is well-known in the relevant sector brings with it the right to oust Defendants from their own market, notwithstanding the fact that they have established priority of use. A bare showing of acquired distinctiveness should not suffice to invert the ordinary allocation of trademark rights. [39] Of course, I recognize that the doctrine of "niche fame" has received heavy, and in the context of domestic trademark law, deserved criticism. However, the niche fame cases may provide the district court with an instructive benchmark against which to measure an intermediate standard of fame. 2 [40] In summary, I agree with the majority's conclusion that this case must be remanded and the evidence reevaluated under a heightened standard for the famous or well-known marks exception. However, I would hold directly that the evidence presented thus far does not meet that standard and thus does not suffice to warrant protection for Plaintiff's mark. Finally, in determining whether a foreign mark has met the standard for famous or wellknown foreign trademarks, I would look to precedent from this court and others addressing whether a mark has become famous in its market niche. [1] This case requires us to decide, among other things, the applicability of the "famous marks" doctrine to a claim for unfair competition under federal and state law. Plaintiffs ITC Limited and ITC Hotels Limited (collectively "ITC") held a registered United States trademark for restaurant services: "Bukhara." They sued defendants, Punchgini, Inc., Bukhara Grill II, Inc., and certain named individuals associated with these businesses, in the United States District Court for the Southern District of New York (Gerard E. Lynch, Judge ) claiming that defendants' use of a similar mark and related trade dress constituted trademark infringement, unfair competition, and false advertising in violation of federal and state law. ITC now appeals from the district court's award of summary judgment in favor of defendants on all claims. See ITC Ltd. v. Punchgini, Inc., 373 F.Supp.2d 275 (S.D.N.Y. 2005). [2] Having reviewed the record de novo, we affirm the award of summary judgment on ITC's infringement claim, concluding, as did the district court, that ITC abandoned its Bukhara mark for restaurant services in the United States. To the extent ITC insists that the "famous marks" doctrine nevertheless permits it to sue defendants for unfair competition because its continued international use of the mark led to a federally protected right, we conclude that 2 There are no other cases that directly guide us here. Although international trademark law has recognized both the territoriality principle and the exception for famous and well-known marks since 1925, remarkably, no case addressed meaningfully the exception before the district court's decision below. Since that decision, only one case has confronted the issue. Empresa Cubana del Tabaca v. Culbro Corp., 70 U.S.P.Q.2d 1650, 2004 WL 602295 (S.D.N.Y. 2004). Empresa Cubana adhered closely to the reasoning and conclusion of the district court in this case. Id. at 1676-77. has not yet incorporated that doctrine into federal trademark law. 2 Therefore, we affirm the award of summary judgment on ITC's federal unfair competition claim. Whether the famous marks doctrine applies to a New York common law claim for unfair competition and, if so, how famous a mark must be to trigger that application, are issues not easily resolved by reference to existing state law. Accordingly, we certify questions relating to these issues to the New York Court of Appeals, reserving our decision on this part of ITC's appeal pending the state court's response. A. The Bukhara Restaurant in New Delhi [3] ITC Limited is a corporation organized under the laws of India. Through its subsidiary, ITC Hotels Limited, it owns and operates the Maurya Sheraton & Towers, a fivestar hotel in New Delhi, India. One of the restaurants in the Maurya Sheraton complex is "Bukhara." Named after a city in Uzbekistan on the legendary Silk Road between China and the West, Bukhara offers a cuisine and decor inspired by the northwest frontier region of India. Since its opening in 1977, the New Delhi Bukhara has remained in continuous operation, acquiring a measure of international renown. 4[4] Over the past three decades, ITC has sought to extend the international reach of the Bukhara brand. At various times, it has opened or, through franchise agreements, authorized Bukhara restaurants in Hong Kong, Bangkok, Bahrain, Montreal, Bangladesh, Singapore, Kathmandu, Ajman, New York, and Chicago. As of May 2004, however, ITC-owned or -authorized Bukhara restaurants were in operation only in New Delhi, Singapore, Kathmandu, and Ajman. [5] In 1986, an ITC-owned and -operated Bukhara restaurant opened in Manhattan. In 1987, ITC entered into a franchise agreement for a Bukhara restaurant in Chicago. Shortly after opening its New York restaurant, ITC sought to register the Bukhara mark with the United States Patent and Trademark Office ("Patent and Trademark Office"). On October 13, 1987, ITC obtained United States trademark registration for the Bukhara mark in connection with "restaurant services." See United States Trademark Registration No. 1,461,445 (Oct. 13, 1987). The Manhattan restaurant remained in operation for only five years, closing on 2 Although the term "famous marks" is often used to describe marks that qualify for protection under the federal anti-dilution statute, see 15 U.S.C. § 1125(c), the "famous marks" doctrine is, in fact, a different and distinct "legal concept under which a trademark or service mark is protected within a nation if it is well known in that nation even though the mark is not actually used or registered in that nation," 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 29.2, at 29-164 (4th ed. 2002). Thus, the famous marks doctrine might more aptly be described as the famous foreign marks doctrine. It is in this latter sense that we reference the famous marks doctrine on this appeal. December 17, 1991. On August 28, 1997, after a decade in business, ITC cancelled its Chicago franchise. Notwithstanding its registration, ITC concedes that it has not owned, operated, or licensed any restaurant in the United States using the Bukhara mark since terminating the Chicago restaurant franchise. [6] Over three years later, in 2001, ITC commissioned a marketing study to determine the viability of selling packaged food products in the United States under the Bukhara label, including "Dal Bukhara." 5 In that same year, ITC filed an application with the Patent and Trademark Office to register a "Dal Bukhara" mark in connection with packaged, ready-toserve foods. In May 2003, ITC sold packaged Dal Bukhara food products to two distributors, one in California and the other in New Jersey. One month later, in June 2003, ITC exhibited Dal Bukhara products at the International Fancy Foods Show in New York City. [7] Meanwhile, in 1999, named defendants Raja Jhanjee, Vicky Vij, Dhandu Ram, and Paragnesh Desai, together with Vijay Roa, incorporated "Punchgini, Inc." for the purpose of opening an Indian restaurant in New York City. Jhanjee, Vij, and Ram had all previously worked at the New Delhi Bukhara, and Vij had also previously worked at ITC's New York Bukhara. In selecting a name for their restaurant, the Punchgini shareholders purportedly considered "Far Pavilions" and "Passage to India" before settling on "Bukhara Grill." As Vij candidly acknowledged at his deposition, there was then "no restaurant Bukhara in New York, and we just thought we will take the name." Vij Dep. 25:7-11, May 5, 2004. After some initial success with "Bukhara Grill," several Punchgini shareholders, with the support of two additional partners, defendants Mahendra Singh and Bachan Rawat, organized a second corporation, "Bukhara Grill II, Inc.," in order to open a second New York restaurant, "Bukhara Grill II." [8] When the record is viewed in the light most favorable to ITC, numerous similarities suggestive of deliberate copying can readily be identified between the defendants' Bukhara Grill restaurants and the Bukhara restaurants owned or licensed by ITC. Quite apart from the obvious similarity in name, defendants' restaurants mimic the ITC Bukharas' logos, decor, staff uniforms, wood-slab menus, and red-checkered customer bibs. Indeed, the similarities were sufficiently obvious to be noted in a press report, wherein defendant Jhanjee is quoted acknowledging that the New York Bukhara Grill restaurant "is quite like Delhi's Bukhara." [9] By letter dated March 22, 2000, ITC, through counsel, demanded that defendants refrain from further use of the Bukhara mark. The letter accused defendants of unlawfully appropriating the reputation and goodwill of ITC's Bukhara restaurants in India and the United States by adopting a virtually identical name for their New York Bukhara Grill restaurants. It further demanded, under threat of legal action, that defendants acknowledge ITC's exclusive rights to the Bukhara mark, disclose the period for which defendants had used the mark, and remit to ITC any profits derived therefrom. [10] In a response dated March 30, 2000, defendants' counsel expressed an interest in avoiding litigation. Nevertheless, counsel observed that ITC appeared to have abandoned the Bukhara mark by not using it in the United States for several years. Receiving no reply, defendants' counsel sent a second letter to ITC dated June 22, 2000, stating that, if no response was forthcoming "by June 28, 2000, we will assume that ITC Limited has abandoned rights it may have had in the alleged mark and any alleged claim against our client." Marsh Letter to Horwitz, June 22, 2000. The record indicates no timely reply. [11] Instead, almost two years later, on April 15, 2002, ITC's counsel wrote to defendants reiterating the demands made in March 2000 and complaining of defendants' failure formally to respond to that initial letter. Defendants' counsel promptly challenged the latter assertion; faulted ITC for failing to reply to his March 22, 2000 letter; and reasserted his abandonment contention, a position that he claimed was now bolstered by the passage of additional time. There was apparently no further communication among the parties until this lawsuit. [12] On February 26, 2003, ITC filed the instant lawsuit. In the amended complaint that is the controlling pleading for purposes of our review, ITC charged defendants with trademark infringement under section 32(1)(a) of the Lanham Act, see 15 U.S.C. § 1114(1)(a), as well as unfair competition and false advertising under sections 43(a) and 44(h) of the Lanham Act, see 15 U.S.C. § § 1125(a), 1126(h). ITC also pursued parallel actions under New York common law. 6 As an affirmative defense, defendants charged ITC with abandonment of its United States rights to the Bukhara mark and, on that ground, they filed a counterclaim seeking cancellation of the ITC registration. [13] Following discovery, defendants successfully moved for summary judgment. In a detailed published decision, the district court ruled that ITC could not pursue an infringement claim because the record conclusively demonstrated its abandonment of the Bukhara mark as applied to restaurants in the United States. See ITC Ltd. v. Punchgini, Inc., 373 F.Supp.2d at 285. To the extent ITC asserted that its continued operation of Bukhara restaurants outside the United States allowed it to sue defendants for unfair competition under the famous marks doctrine, the district court was not convinced. It observed that, even if it were to assume the applicability of the famous marks doctrine, ITC had failed to adduce sufficient evidence to permit a reasonable jury to conclude that the name or trade dress of its foreign restaurants had attained the requisite level of United States recognition to trigger the doctrine. See id. at 291. Finally, the district court found that ITC lacked standing to pursue its false advertising claim. See id. at 291-92. This appeal followed. [14] Before this court, ITC advances essentially three arguments. It submits that (1) the record does not conclusively establish its abandonment of United States rights in the Bukhara mark, (2) the district court misapplied applicable federal and state law regarding the famous marks doctrine, and (3) it has standing to sue defendants for false advertising. {The court determined that ITC had abandoned its registered Bukhara mark. We will address abandonment in Part III of the casebook below.} [15] ITC claims that defendants violated section 43(a)(1)(A) of the Lanham Act by engaging in unfair competition in the use of its Bukhara mark and its related trade dress. Section 43(a)(1)(A) allows the producer of a product or service to initiate a cause of action against a person who uses "any word, term name, symbol, or device, or any combination thereof . . . which . . . is likely to cause confusion . . . as to the origin, sponsorship, or approval of [the producer's] . . . services." 15 U.S.C. § 1125(a)(1)(A). This protection is broader than that afforded by section 32(1)(a), which prohibits only infringement of marks actually registered with the Patent and Trademark Office. See Two Pesos v. Taco Cabana, 505 U.S. 763, 768 (1992) ("Section 43(a) prohibits a broader range of practices than does § 32, which applies to registered marks, but it is common ground that § 43(a) protects qualifying unregistered trademarks" (internal citations and quotation marks omitted)); accord Chambers v. Time Warner, Inc., 282 F.3d 147, 155 (2d Cir. 2002). [16] To succeed on a section 43(a)(1)(A) claim, a plaintiff must prove (1) that the mark or dress is distinctive as to the source of the good or service at issue, and (2) that there is the likelihood of confusion between the plaintiff's good or service and that of the defendant. [17] In light of our conclusion that, as a matter of law, ITC abandoned its registered Bukhara mark as of August 28, 2000, ITC confronts a high hurdle in demonstrating that, at the time of defendants' challenged actions, it possessed a priority right to the use of the Bukhara mark and related trade dress for restaurants in the United States. See Vais Arms, Inc. v. Vais, 383 F.3d at 292 n. 8 (noting that "abandonment results in a break in the chain of priority") (quoting 2 McCarthy, supra, § 17:4); Emergency One, Inc. v. American Fire Eagle Engine Co., 332 F.3d 264, 268 (4th Cir. 2003) ("The priority to use a mark . . . can be lost through abandonment."). To clear this hurdle, ITC invokes the famous marks doctrine. It submits that, because (1) since 1977, it has continuously used its Bukhara mark and trade dress outside the United States; and (2) that mark was renowned in the United States before defendants opened their first Bukhara Grill restaurant in New York in 1999, it has a priority right to the mark sufficient to claim section 43(a)(1)(A) protection in this country. [18] To explain why we disagree, we begin by discussing the principle of trademark territoriality. We then discuss the famous marks exception to this principle and the international treaties, implementing legislation, and policy concerns relied on by ITC in urging the application of this exception to this case. [19] The principle of territoriality is basic to American trademark law. Cir. 1990). As our colleague, Judge Leval, has explained, this principle recognizes that a trademark has a separate legal existence under each country's laws, and that its proper lawful function is not necessarily to specify the origin or manufacture of a good (although it may incidentally do that), but rather to symbolize the domestic goodwill of the domestic markholder so that the consuming public may rely with an expectation of consistency on the domestic reputation earned for the mark by its owner, and the owner of the mark may be confident that his goodwill and reputation (the value of the mark) will not be injured through use of the mark by others in domestic commerce. [20] Precisely because a trademark has a separate legal existence under each country's laws, ownership of a mark in one country does not automatically confer upon the owner the exclusive right to use that mark in another country. Rather, a mark owner must take the proper steps to ensure that its rights to that mark are recognized in any country in which it seeks to assert them. Cf. Barcelona.com, Inc. v [21] As we have already noted, United States trademark rights are acquired by, and dependent upon, priority of use. See supra at 146-47. The territoriality principle requires the use to be in the United States for the owner to assert priority rights to the mark under the Lanham Act. See Buti v. Impressa Perosa, S.R.L., 139 F.3d at 103 (noting that "Impressa's 14 The "territoriality principle" stands in contrast to the so-called "universality principle," which posits that "if a trademark [is] lawfully affixed to merchandise in one country, the merchandise would carry that mark lawfully wherever it went and could not be deemed an infringer although transported to another country where the exclusive right to the mark was held by someone other than the owner of the merchandise. States combined with rendering of services abroad to American customers). Thus, absent some use of its mark in the United States, a foreign mark holder generally may not assert priority rights under federal law, even if a United States competitor has knowingly appropriated that mark for his own use. See Person's Co. v. Christman, 900 F.2d at 1569-70 (holding that foreign use is not sufficient to establish priority rights even over a United States competitor who took mark in bad faith). [22] ITC urges us to recognize an exception to the territoriality principle for those foreign marks that, even if not used in the United States by their owners, have achieved a certain measure of fame within this country. (1) Origin of the Famous Marks Doctrine [23] The famous marks doctrine is no new concept. It originated in the 1925 addition of Article 6bis to the Paris Convention for the Protection of Industrial Property, Mar. 20, 1883, as rev. at Stockholm, July 14, 1967, 21 U.S.T. 1583, 828 U.N.T.S. 305 ("Paris Convention"). Article 6bis, which by its terms applies only to trademarks, requires member states ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith. Paris Convention, art. 6bis. 15 One commentator has observed that the "purpose" of Article 6bis "is to avoid the registration and use of a trademark, liable to create confusion with another mark already well known in the country of such registration or use, although the latter wellknown mark is not, or not yet, protected in that country by a registration which would normally prevent the registration or use of the conflicting mark." G.H.C. Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property 90 (1968). The New York restaurant had apparently adopted both the Paris restaurant's name and slogan ("Tout ce qui vient de la mer" 16 ) and boldly advertised itself as "The Famous French Sea Food Restaurant." While the French plaintiff conceded that it had never operated a restaurant in the United States, it nevertheless sought relief for the unauthorized use of its name and mark under the common law of unfair competition. [25] In ruling in favor of the plaintiff, the trial court first observed that "the right of a French corporation to sue here for protection against unfair competition was expressly granted in [Article 10bis of] the [Paris] convention between the United States and various other powers for the protection of industrial property." Id. at 554, 288 N.Y.S. at 532. 17 It then ruled that "actual competition in a product is not essential to relief under the doctrine of unfair competition." Id. at 555, 288 N.Y.S. at 533. The plaintiff was entitled to protection from "'any injury which might result to it from the deception of the public through the unauthorized use of its trade name, or a trade name which would lead the public to believe that it was in some way connected with the plaintiff. ' to protection against unfair competition because its trademark enjoyed "wide repute" and the facts of the case indicated a total lack of good faith on the part of the defendants. Id. at 559, 288 N.Y.S. at 537. The basis of this holding, it should be noted, was not Article 6bis of the Paris Convention. Instead, the holding was based entirely on New York common law principles of unfair competition. [26] More than twenty years later, in Vaudable v. Montmartre, Inc., 20 Misc.2d 757, 193 N.Y.S.2d 332 (N.Y.Sup.Ct. 1959), another New York trial court granted a different Paris restaurant, "Maxim's," injunctive relief against a New York City restaurant that had appropriated its name, decor, and distinctive script style, all without permission. The court concluded that the lack of direct competition between the two restaurants was "immaterial" to a common law claim for unfair competition. Id. at 759, 193 N.Y.S.2d at 335. The only relevant question was whether "there had been a misappropriation, for the advantage of one person, of a property right belonging to another." Id. at 759, 193 N.Y.S.2d at 335. Noting that the Paris Maxim's had been in continuous operation since 1946, when it reopened after World War II, the court concluded that its owners had priority rights as against the junior American user by virtue of (1) their uninterrupted use of the mark abroad, and (2) the fame of the "Maxim's" mark among "the class of people residing in the cosmopolitan city of New York who dine out." Id. at 758, 193 N.Y.S.2d at 334. [27] A quarter century later, the federal Trademark Trial and Appeal Board ("Trademark Board") invoked Vaudable's recognition of the famous marks doctrine in several inter partes proceedings. 18 In Mother's Rests., Inc. v. Mother's Other Kitchen, Inc., the Trademark Board stated in dictum that: [I]t is our view that prior use and advertising of a mark in connection with goods or services marketed in a foreign country (whether said advertising occurs inside or outside the United States) creates no priority rights in said mark in the United States as against one who, in good faith, has adopted the same or similar mark for the same or similar goods or services in the United States prior to the foreigner's first use of the mark on goods or services sold and/or offered in the United States at least unless it can be shown that the foreign party's mark was, at the time of the adoption and first use of a similar mark by the first user in the United States, a "famous" mark within the meaning of Vaudable v. Montmartre, Inc. 218 U.S.P.Q 1046, at *8 (TTAB 1983) (concluding that customers would be likely to confuse the "Mother's Pizza Parlour" trademark with the "Mother's Other Kitchen" trademark) (internal citation omitted). 18 The Trademark Board's primary function is to determine whether trademarks are registerable and to conduct opposition and cancellation proceedings by which interested parties can dispute the claims of applicants and registrants. See 15 U.S.C. § § 1051, 1063-64. [28] That same year, the Trademark Board applied the same reasoning in All England Lawn Tennis Club, Ltd. v. Creations Aromatiques, 220 U.S.P.Q. 1069 (1983), granting plaintiff's request to block registration of a trademark for "Wimbledon Cologne" even though plaintiff was not itself using the Wimbledon mark on any product sold in the United States. The Trademark Board observed that the Wimbledon mark had "acquired fame and notoriety as used in association with the annual championships within the meaning of Vaudable" and that "purchasers of applicant's cologne would incorrectly believe that said product was approved by or otherwise associated with the Wimbledon tennis championships and that allowance of the application would damage opposer's rights to the mark." Id. at *10. Recently, the Trademark Board has reiterated in dicta that owners of well known foreign marks need not use those marks in the United States to challenge the registration of marks likely to promote confusion on the part of consumers. (Fed. Cir. 1987). In applying this principle to this case, however, we identify a significant concern: nowhere in the three cited rulings does the Trademark Board state that its recognition of the famous marks doctrine derives from any provision of the Lanham Act or other federal law. Indeed, the federal basis for the Trademark Board's recognition of the famous marks doctrine is never expressly stated. Its reliance on Vaudable suggests that recognition derives from state common law. At least one Trademark Board member, however, has questioned whether state common law can support recognition of the famous marks doctrine as a matter of federal law: [I]t seems to me that the Vaudable decision according protection to the famous Maxim's restaurant in the United States . . . is inapplicable in this case since that decision was based on a theory of unfair competition, namely misappropriation, under the law of the State of New York. Under Federal law, it seems to me that application of the well-known marks doctrine depends on whether the applicable text of the Paris Convention . . . and, in particular, Article 6bis of that Convention, is self-executing [so as to become part of federal law]. Mother's Rests., Inc. v. Mother's Other Kitchen, Inc., 218 U.S.P.Q 1046, at *21 (Allen, concurring in part, dissenting in part) (internal citations omitted). Because we conclude that the Trademark Board's reliance on state law to recognize the famous marks doctrine falls outside the sphere to which we owe deference, we consider de novo the question of that doctrine's existence within federal trademark law. [31] To date, the Ninth Circuit Court of Appeals is the only federal appeals court to have recognized the famous marks doctrine as a matter of federal law. See Grupo Gigante S.A. De C.V. v. Dallo & Co., 391 F.3d at 1088; cf. International Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Estrangers a Monaco, 329 F.3d at 389 n. 9 (Motz, J., dissenting) (noting that the famous marks doctrine has been applied so infrequently that its viability is uncertain). In Grupo Gigante, 391 F.3d at 1088, the Ninth Circuit considered whether the "Gigante" markregistered and used by a large chain of grocery stores in Mexico since 1963-was sufficiently well known among Mexican-Americans in Southern California to afford it priority over a competing "Gigante" mark used by a separate chain of Los Angeles grocery stores. In resolving this question, the court ruled: [T]here is a famous mark exception to the territoriality principle. While the territoriality principle is a long-standing and important doctrine within trademark law, it cannot be absolute. An absolute territoriality rule without a famous-mark exception would promote consumer confusion and fraud. Commerce crosses borders. In this nation of immigrants, so do people. Trademark is, at its core, about protecting against consumer confusion and "palming off." There can be no justification for using trademark law to fool immigrants into thinking that they are buying from the store they liked back home. [32] In Grupo Gigante, the Ninth Circuit did not reference either the language of the Lanham Act nor Article 6bis of the Paris Convention to support recognition of the famous marks doctrine. Indeed, elsewhere in its opinion, the court specifically stated that the Paris Convention creates no "additional substantive rights" to those provided by the Lanham Act. Id. at 1100. The court also acknowledged that the famous marks doctrine is not recognized by California state law. See id. at 1101 (observing that cases cited by plaintiff "provide no support for the conclusion that use anywhere in the world suffices to establish priority in California"). Thus, it appears that the Ninth Circuit recognized the famous marks doctrine as a matter of sound policy: "An absolute territoriality rule without a famous marks exception would promote customer confusion and fraud." Id. at 1094. [33] This court has twice referenced the famous marks doctrine, but on neither occasion were we required to decide whether it does, in fact, provide a legal basis for acquiring priority rights in the United States for a foreign mark not used in this country. See Buti v. Impressa Perosa, S.R.L., 139 F.3d at 104 n. 2 (referencing Mother's Restaurant and Vaudable but, in the end, concluding that famous marks doctrine "has no application here given that Impressa has made no claim under that doctrine"); see also Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d at 481 (declining to decide whether famous marks doctrine should be recognized because "even assuming that the famous marks doctrine is otherwise viable and applicable, the [Cuban] embargo bars [plaintiff] from acquiring property rights in the . . . mark through the doctrine"). 19. . . . 1994)) (stating that TRIPs and other GATT agreements "are not self-executing and thus their legal effect in the United States is governed by implementing legislation"). While Congress has amended numerous federal statutes to implement specific provisions of the TRIPs agreement, it appears to have enacted no legislation aimed directly at Article 16(2). 23 [36] ITC nevertheless submits that Lanham Act sections 44(b) and (h) effectively incorporate the protections afforded famous marks by the Paris Convention and TRIPs. {In a lengthy analysis, the court concluded that § § 44(b) & (h) do not provide a basis for famous marks protection.} (d) Policy Rationales Cannot, by Themselves, Support Judicial Recognition of the Famous Marks Doctrine Under Federal Law [37] Even if the Lanham Act does not specifically incorporate Article 6bis and Article 16(2) protections for famous foreign marks, ITC urges this court to follow the Ninth Circuit's lead and to recognize the famous marks doctrine as a matter of sound policy. See Grupo Gigante S.A. De C.V. v. Dallo & Co., 391 F.3d at 1094 (recognizing famous marks doctrine because "[t]here can be no justification for using trademark law to fool immigrants into thinking that they are buying from the store they liked back home"). ITC argues that the United States cannot expect other nations to protect famous American trademarks if United States courts decline to afford reciprocal protection to famous foreign marks. [38] We acknowledge that a persuasive policy argument can be advanced in support of the famous marks doctrine. See, e.g., De Beers LV Trademark Ltd. v. DeBeers Diamond Syndicate, Inc., 2005 U.S. Dist. LEXIS 9307, at *25 (noting that "[r]ecognition of the famous marks doctrine is particularly desirable in a world where international travel is commonplace and where the Internet and other media facilitate the rapid creation of business goodwill that transcends borders") . . . . The fact that a doctrine may promote sound policy, however, is not a sufficient ground for its judicial recognition, particularly in an area regulated by statute. See, e.g., Badaracco v. Comm'r, 464 U.S. 386, 398 (1984) ("The relevant question is not whether, as an abstract matter, the rule advocated by petitioners accords with good policy. The question we must consider is whether the policy petitioners favor is that which Congress effectuated by its enactment of [the statute]."). In light of the comprehensive and frequently modified federal statutory scheme for trademark protection set forth in the Lanham Act, we conclude that any policy arguments in favor of the famous marks doctrine must be submitted to Congress for it to determine whether and under what circumstances to accord federal recognition to such an exception to the basic principle of territoriality. See Almacenes Exito S.A. v. El Gallo Meat Mkt., Inc., 381 F.Supp.2d at 326-28. Absent such Congressional recognition, we must decline ITC's invitation to grant judicial recognition to the famous marks doctrine simply as a matter of sound policy. [39] For all these reasons, we affirm the district court's award of summary judgment in favor of defendants on ITC's federal unfair competition claim. [40] ITC submits that, even if we affirm the district court's dismissal of its federal unfair competition claim, we must reverse the dismissal of its parallel state law claim. As it correctly observes, New York common law allows a plaintiff to sue for unfair competition where a "property right or a commercial advantage" has been "misappropriated." Flexitized, Inc. v. National Flexitized Corp., 335 F.2d 774, 781-82 (2d Cir. 1964). Nevertheless, in light of ITC's abandonment of the Bukhara mark and dress for restaurants in the United States, its common law assertion of a "property right or a commercial advantage" in these designations based on their foreign use depends on whether New York recognizes the famous marks doctrine in the circumstances here at issue. [ (2) Certified Question 1: Does New York Recognize the Famous Marks Doctrine? [43] In this case, we conclude that these factors weigh in favor of certifying the question of New York's recognition of the famous marks doctrine. First, the only New York cases to address the question of whether state common law recognizes the famous marks doctrine, Vaudable and Prunier, are decades-old trial court decisions. While these decisions are routinely cited by non-New York courts as accurate statements of the state's common law of unfair competition, 28 and while commentators routinely identify the cases as foundational in the development of the famous marks doctrine, 29 the lack of authoritative adoption of the famous marks doctrine by New York's highest court weighs in favor of certification. Second, recognition of the famous marks doctrine as part of New York common law is plainly an important policy issue for a state that plays a pivotal role in international commerce. This factor strongly counsels in favor of our soliciting the views of the New York Court of Appeals. See generally Board of Regents v. Roth, 408 U.S. 564, 577, 92 S.Ct. 2701, 33 L.Ed.2d 548 (1972) (observing that property interests "are created and their dimensions are defined by existing rules or understandings that stem from an independent source such as state law"). Finally, certification will conclusively resolve the question of whether ITC's state unfair competition claim was, in fact, properly dismissed. [44] Accordingly, we certify the following question to the New York Court of Appeals: "Does New York common law permit the owner of a famous mark or trade dress to assert property rights therein by virtue of the owner's prior use of the mark or dress in a foreign country?" (3) Certified Question 2: How Famous Must a Mark Be to Come Within the Famous Marks Doctrine? [45] If the New York Court of Appeals were to answer the first certified question in the affirmative, we ask it to consider a second query: "How famous must a foreign mark or trade dress be to permit its owner to sue for unfair competition?" 30 Although we have had no prior occasion to address this question, we note the availability of a number of possible standards. [46] If New York were inclined to recognize a broad famous marks doctrine, the Court of Appeals might conclude that a foreign mark's acquisition of "secondary meaning" in the state was sufficient to accord it common law protection. "Secondary meaning" is a term of art referencing a trademark's ability to "'identify the source of the product rather than the product itself.'" Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. at 766 n. 4 [47] The Court of Appeals might note, however, that in Grupo Gigante the Ninth Circuit specifically rejected "secondary meaning" as the appropriate standard for application of the famous marks doctrine. That federal court explained that such an interpretation of the 30 In formulating both certified questions, we do not intend to limit the Court of Appeals' analysis or its response. That court may expand or modify the certified questions as it deems appropriate to indicate whether state common law recognizes the famous marks doctrine and the scope of that recognition. famous marks doctrine went "too far" because it effectively eliminated the territoriality principle that itself "has a long history in the common law." Id. at 1097-98. [48] Instead, the Court of Appeals might consider the Ninth Circuit's compromise standard, which can be described as "secondary meaning plus." See id. at 1098 (holding that "secondary meaning is not enough"). Under this test, "where the mark has not before been used in the American market,foot_43 the court must be satisfied, by a preponderance of the evidence, that a substantial percentage of consumers in the relevant American market is familiar with the foreign mark." Id. (emphasis added); see also 4 McCarthy, supra, § 29:4, at 29-17 (suggesting that a "substantial" percentage of consumers in the relevant American market would be at least 50%). [49] Judge Graber, concurring in Grupo Gigante, emphasized the intermediate character of this standard: I agree that a foreign owner of a supposedly famous or well-known foreign trademark must show a higher level of "fame" or recognition than that required to establish secondary meaning. Ultimately, the standard for famous or wellknown marks is an intermediate one. To enjoy extraterritorial trademark protection, the owner of a foreign trademark need not show the level of recognition necessary to receive nation-wide protection against trademark dilution. On the other hand, the foreign trademark owner who does not use a mark in the United States must show more than the level of recognition that is necessary in a domestic trademark infringement case. 391 F.3d at 1106 (Graber, J., concurring). [50] Precisely because "secondary meaning plus" is an intermediate standard, the Court of Appeals might also consider the high standard of recognition established by section 43(c) of the Lanham Act, the federal anti-dilution statute. See 15 U.S.C. § 1125(c). Under that federal law, four non-exclusive factors are relevant when determining whether a mark is sufficiently famous for anti-dilution protection: (i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties; (ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark; (iii) The extent of actual recognition of the mark; (iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register. [51] Under the federal anti-dilution statute, the holder of a mark deemed famous under this test may seek an injunction against another person who, "at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury." Id. § 1125(c)(1). ITC does not sue for dilution in this case. Nevertheless, the Court of Appeals might consider whether the factors set out in the statute provide a useful guide for defining famous marks generally. [52] Finally, should the Court of Appeals decide to articulate an entirely new and different standard of recognition for the application of the famous marks doctrine, among the factors it might consider are those identified as relevant in the non-binding "Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks," adopted by the World Intellectual Property Organization in 1999: (1) the degree of knowledge or recognition of the mark in the relevant sector of the public; (2) the duration, extent and geographical area of any use of the mark; (3) the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, or the goods and/or services to which the mark applies; (4) the duration and geographical area of any registrations, and/or any application for registration, of the mark, to the extent that they reflect use or recognition of the mark; (5) the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities; [and] (6) the value associated with the mark. World Intellectual Property Organization, Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks (Sept. 1999), available at http:// www. wipo. int/ about-ip/ en/ development iplaw/ pub 833.htm. [53] We express no view as to how New York should define its state common law. We simply reserve decision on ITC's challenge to the district court's dismissal of its state common law claim for unfair competition pending the New York Court of Appeals response to our certified questions. and that it has a substantial following in New York city and in other parts of the world" was proved (id. at 559 [emphasis added]). [6] In Vaudable, the plaintiff's restaurant in Paris-Maxim's-was internationally famous "in the high-class restaurant field" (20 Misc 2d at 758-759). The defendants "appropriate[d] the good will plaintiffs [had] created in the name Maxim's as a restaurant," and were therefore held liable for unfair competition based on misappropriation even though the parties were "not in present actual competition" (id. at 759). "The trend of the law, both statutory and decisional," the court "has been to extend the scope of the doctrine of unfair competition, whose basic principle is that commercial unfairness should be restrained whenever it appears that there has been a misappropriation, for the advantage of one person, of a property right belonging to another" (id. at 759 [ famous examples" of the "well known" marks doctrine]), Prunier and Vaudable themselves in no way explain or proclaim-let alone rely on-any famous or well-known marks doctrine for their holdings. Instead, Prunier and Vaudable fit logically and squarely within our time-honored misappropriation theory, which prohibits a defendant from using a plaintiff's property right or commercial advantage-in Prunier and Vaudable, the goodwill attached to a famous name-to compete unfairly against the plaintiff in New York. [8] Under New York law, "[a]n unfair competition claim involving misappropriation usually concerns the taking and use of the plaintiff's property to compete against the plaintiff's own use of the same property" (Roy Export, 672 F2d at 1105). The term "commercial advantage" has been used interchangeably with "property" within the meaning of the misappropriation theory (see Flexitized, Inc. v National Flexitized Corp., 335 F2d 774, 781-782 [2d Cir 1964]). What Prunier and Vaudable stand for, then, is the proposition that for certain kinds of businesses (particularly cachet goods/services with highly mobile clienteles), goodwill can, and does, cross state and national boundary lines. [9] Accordingly, while we answer "Yes" to the first certified question, we are not thereby recognizing the famous or well-known marks doctrine, or any other new theory of liability under the New York law of unfair competition. Instead, we simply reaffirm that when a business, through renown in New York, possesses goodwill constituting property or a commercial advantage in this state, that goodwill is protected from misappropriation under New York unfair competition law. This is so whether the business is domestic or foreign. [10] "How famous must a foreign mark or trade dress be to permit its owner to sue for unfair competition?" [11] Protection from misappropriation of a famous foreign mark presupposes the existence of actual goodwill in New York (see e.g. Roy Export, 672 F2d at 1105 [misappropriation under New York law usually requires use in state of plaintiff's property or commercial advantage to compete against plaintiff]). If a foreign plaintiff has no goodwill this state to appropriate, there can be no viable claim for unfair competition under a theory of misappropriation. At the very least, a plaintiff's mark, when used in New York, must call to mind its goodwill. Otherwise, a plaintiff's property right or commercial advantage based on the goodwill associated with its mark is not appropriated in this state when its unregistered mark is used here. Thus, at a minimum, consumers of the good or service provided under a certain mark by a defendant in New York must primarily associate the mark with the foreign plaintiff (cf. Allied Maintenance Corp. v Allied Mech. Trades, 42 NY2d 538, 545 [1977]). [12] Whether consumers of a defendant's goods or services primarily associate such goods or services with those provided by a foreign plaintiff is an inquiry that will, of necessity, vary with the facts of each case. Accordingly, we cannot-and do not-provide an exhaustive list of the factors relevant to such an inquiry. That said, some factors that would be relevant include evidence that the defendant intentionally associated its goods with those of the foreign plaintiff in the minds of the public, such as public statements or advertising stating or implying a connection with the foreign plaintiff; direct evidence, such as consumer surveys, indicating that consumers of defendant's goods or services believe them to be associated with the plaintiff; and evidence of actual overlap between customers of the New York defendant and the foreign plaintiff. [13] If the customers of a New York defendant do not identify a mark with the foreign plaintiff, then no use is being made of the plaintiff's goodwill, and no cause of action lies under New York common law for unfair competition. As a result, to prevail against defendants on an unfair competition theory under New York law, ITC would have to show first, as an independent prerequisite, that defendants appropriated (i.e., deliberately copied), ITC's Bukhara mark or dress for their New York restaurants. If they successfully make this showing, plaintiffs would then have to establish that the relevant consumer market for New York's Bukhara restaurant primarily associates the Bukhara mark or dress with those Bukhara restaurants owned and operated by ITC. [14] Accordingly, the certified questions should be answered in accordance with this opinion. 1. The final disposition of ITC v. Punchgini. The case returned to the Second Circuit, which affirmed the district court's initial grant of summary judgment to the defendant on the ground, among others, that BUKARA for restaurant services had no secondary meaning in New York. ITC Ltd. v. Punchgini, Inc., 518 F.3d 159 (2d Cir. 2008), aff'g 373 F.Supp.2d 275 (S.D.N.Y. 2005). 2. "Well-known marks doctrine" or "famous marks doctrine"? In a footnote in a portion of the New York Court of Appeals opinion not included in the excerpt above, the court addressed the terminological ambiguity over the correct name of the doctrine at issue: There is some ambiguity regarding the proper name for what has been variously called the "famous marks doctrine," the "well-known marks doctrine" and the "famous mark doctrine" (see e.g. 5 McCarthy on Trademarks and Unfair Competition § 29:4 [4th ed 2007] [using the above names interchangeably]). Apparently, the use of "well-known" in place of "famous" took hold after the Lanham Act was amended by passage of the Federal Trademark Anti-Dilution Act of 2006, which uses "famous" as a term of art (see 15 USC § 1125 [c]). At any rate, "famous" and "well-known," "mark" and "marks," have been used interchangeably to describe the putative doctrine, and no distinction is intended by our choice of words here. As stated above, the Fourth Circuit's opinion in Belmora LLC v. Bayer Consumer Care AG, 819 F.3d 697 (4th Cir. 2016), cert. denied, 137 S. Ct. 1202, (U.S. 2017), represents a significant break with much of our traditional understanding of the national limits of trademark rights and with the requirement that a plaintiff use a mark in commerce in the U.S. (or otherwise own a mark that qualifies as a well-known mark in the U.S.) in order to assert exclusive rights in the mark. Two noteworthy cases form the basis of Belmora. The first is International Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Etrangers à Monaco, 329 F.3d 359 (4th Cir. 2003). The mark at issue was CASINO DE MONTE CARLO. The declaratory plaintiffs operated various websites whose domain names and content incorporated at least "some portion", id. at 361, of the term CASINO DE MONTE CARLO and various images of the declaratory defendant's casino in Monte Carlo, which has operated under the CASINO DE MONTE CARLO mark since 1863. The defendant advertised its casino in the U.S. but rendered its services only abroad. In a controversial opinion, the Fourth Circuit found infringement. Judge Luttig reasoned, in short, that the defendant had shown "use in commerce" because (1) U.S. consumers' purchase of casino services from the defendant constituted trade with a foreign nation that Congress was empowered to regulate, and (2) the defendant's advertising of its mark in the U.S. had made the mark distinctive as a designation of source in the U.S. In a thorough and well-reasoned opinion, Judge Motz dissented. Id. at 383-398 (Motz, J., dissenting). The second is Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014). Static Control Components (SCC) produced components that various companies employed in the remanufacture and refurbishing of used toner cartridges for Lexmark printers. Such remanufacturers were significantly disrupting Lexmark's own sales of replacement toner cartridges for its printers. SCC alleged that Lexmark engaged in false advertising (1) by informing certain Lexmark toner cartridge end-users that they were contractually required to return used cartridges to Lexmark and (2) by informing remanufacturing companies that it was illegal to refurbish certain Lexmark toner cartridges and to use SCC's components in doing so. Id. at 122-23. The district court granted Lexmark's motion to dismiss on the ground that SCC lacked standing. Id. at 123-24. The Sixth Circuit reversed. Id. at 124-25. As explained in Belmora, the Supreme Court clarified in Lexmark what the plaintiff must show to have standing to sue for false advertising. Two final notes: First, the Belmora opinion makes no reference whatsoever to the wellknown marks doctrine. As you will see, Belmora's facts cry out for application of the doctrine. But early on in the litigation, the TTAB determined that Article 6bis of the Paris Convention "do[es] not afford an independent cause of action for parties in Board proceedings," nor does any section of the Lanham Act establish such a cause of action. AGEE, Circuit Judge: [1] In this unfair competition case, we consider whether the Lanham Act permits the owner of a foreign trademark and its sister company to pursue false association, false advertising, and trademark cancellation claims against the owner of the same mark in the United States. Bayer Consumer Care AG ("BCC") owns the trademark "FLANAX" in Mexico and has sold naproxen sodium pain relievers under that mark in Mexico (and other parts of Latin America) since the 1970s. Belmora LLC owns the FLANAX trademark in the United States and has used it here since 2004 in the sale of its naproxen sodium pain relievers. BCC and its U.S. sister company Bayer Healthcare LLC ("BHC," and collectively with BCC, "Bayer") contend that Belmora used the FLANAX mark to deliberately deceive Mexican-American consumers into thinking they were purchasing BCC's product. [2] BCC successfully petitioned the U.S. Trademark Trial and Appeal Board ("TTAB") to cancel Belmora's registration for the FLANAX mark based on deceptive use. Belmora appealed the TTAB's decision to the district court. In the meantime, BCC filed a separate complaint for false association against Belmora under § 43 of the Lanham Act, 15 U.S.C. § 1125, and in conjunction with BHC, a claim for false advertising. After the two cases were consolidated, the district court reversed the TTAB's cancellation order and dismissed the false association and false advertising claims. [3] Bayer appeals those decisions. For the reasons outlined below, we vacate the judgment of the district court and remand this case for further proceedings consistent with this opinion. I. Background [4] This appeal comes to us following the district court's grant of Belmora's Federal Rule of Civil Procedure 12(b)(6) motion to dismiss Bayer's complaint and Belmora's Rule 12(c) motion for judgment on the pleadings on the trademark cancellation claim. . . . Belmora later modified its packaging (below), but the color scheme, font size, and typeface remain similar to that of BCC's FLANAX packaging. [7] In addition to using similar packaging, Belmora made statements implying that its FLANAX brand was the same FLANAX product sold by BCC in Mexico. For example, Belmora circulated a brochure to prospective distributors that stated, For generations, Flanax has been a brand that Latinos have turned to for various common ailments. Now you too can profit from this highly recognized topselling brand among Latinos. Flanax is now made in the U.S. and continues to show record sales growth everywhere it is sold. Flanax acts as a powerful attraction for Latinos by providing them with products they know, trust and prefer. Belmora also employed telemarketers and provided them with a script containing similar statements. This sales script stated that Belmora was "the direct producers of FLANAX in the US" and that "FLANAX is a very well known medical product in the Latino American market, for FLANAX is sold successfully in Mexico." Belmora's "sell sheet," used to solicit orders from retailers, likewise claimed that "Flanax products have been used [for] many, many years in Mexico" and are "now being produced in the United States by Belmora LLC." [8] Bayer points to evidence that these and similar materials resulted in Belmora's distributors, vendors, and marketers believing that its FLANAX was the same as or affiliated with BCC's FLANAX. For instance, Belmora received questions regarding whether it was legal for FLANAX to have been imported from Mexico. And an investigation of stores selling Belmora's FLANAX "identified at least 30 [purchasers] who believed that the Flanax products . . . were the same as, or affiliated with, the Flanax products they knew from Mexico." B. Proceedings Below 1. [9] In 2007, BCC petitioned the TTAB to cancel Belmora's registration for the FLANAX mark, arguing that Belmora's use and registration of the FLANAX mark violated Article 6bis of the Paris Convention "as made applicable by Sections 44(b) and (h) of the Lanham Act." BCC also sought cancellation of Belmora's registration under § 14(3) of the Lanham Act because Belmora had used the FLANAX mark "to misrepresent the source of the goods . . . [on] which the mark is used." Lanham Act § 14(3), 15 U.S.C. § 1064(3). [10] The TTAB dismissed BCC's Article 6bis claim, concluding that Article 6bis "is not self-executing" and that § 44 of the Lanham Act did not provide "an independent basis for cancellation." However, the TTAB allowed Bayer's § 14(3) claim to proceed. In 2014, after discovery and a hearing, the TTAB ordered cancellation of Belmora's FLANAX registration, concluding that Belmora had misrepresented the source of the FLANAX goods and that the facts "d[id] not present a close case." The TTAB noted that Belmora 1) knew the favorable reputation of Bayer's FLANAX product, 2) "copied" Bayer's packaging, and 3) "repeatedly invoked" that reputation when marketing its product in the United States. [11] Shortly after the TTAB's ruling, Bayer filed suit in the Southern District of California, alleging that 1) BCC was injured by Belmora's false association with its FLANAX product in violation of Lanham Act § 43(a)(1)(A), and 2) BCC and BHC were both injured by Belmora's A. False Association and False Advertising Under Section 43(a) [17] The district court dismissed Bayer's false association 4 and false advertising claims because, in its view, the claims failed to satisfy the standards set forth by the Supreme Court in Lexmark. At the core of the district court's decision was its conclusion that 1) Bayer's claims fell outside the Lanham Act's "zone of interests"-and are not cognizable-"because Bayer does not possess a protectable interest in the FLANAX mark in the United States," and 2) that a "cognizable economic loss under the Lanham Act" cannot exist as to a "mark that was not used in United States commerce." [18] On appeal, Bayer contends these conclusions are erroneous as a matter of law because they conflict with the plain language of § 43(a) and misread Lexmark. [19] "While much of the Lanham Act addresses the registration, use, and infringement of trademarks and related marks, § 43(a) . . . goes beyond trademark protection." Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 28-29 (2003). Written in terms of the putative defendant's conduct, § 43(a) sets forth unfair competition causes of action for false association and false advertising: 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) [False Association:] 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, or (B) [False Advertising:] in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, 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. Lanham Act § 43(a)(1), 15 U.S.C. § 1125(a) (1). Subsection A, which creates liability for statements as to "affiliation, connection, or association" of goods, describes the cause of action known as "false association." Subsection B, which creates liability for "misrepresent[ing] the nature, characteristics, qualities, or geographic origin" of goods, defines the cause of action for "false advertising." [20] Significantly, the plain language of § 43(a) does not require that a plaintiff possess or have used a trademark in U.S. commerce as an element of the cause of action. Section 43(a) stands in sharp contrast to Lanham Act § 32, which is titled as and expressly addresses "infringement." 15 U.S.C. § 1114 (requiring for liability the "use in commerce" of "any reproduction, counterfeit, copy, or colorable imitation of a registered mark " (emphasis added)). Under § 43(a), it is the defendant's use in commerce-whether of an offending "word, term, name, symbol, or device" or of a "false or misleading description [or representation] of fact"-that creates the injury under the terms of the statute. And here the alleged offending "word, term, name, symbol, or device" is Belmora's FLANAX mark. [21] What § 43(a) does require is that Bayer was "likely to be damaged" by Belmora's "use[ ] in commerce" of its FLANAX mark and related advertisements. The Supreme Court recently considered the breadth of this "likely to be damaged" language in Lexmark, a false advertising case arising from a dispute in the used-printer-cartridge market. 134 S.Ct. at 1383, 1388. The lower courts in Lexmark had analyzed the case in terms of "prudential standing"-that is, on grounds that are "prudential" rather than constitutional. Id. at 1386. The Supreme Court, however, observed that the real question in Lexmark was "whether Static Control has a cause of action under the statute." Id. at 1387. This query, in turn, hinged on "a straightforward question of statutory interpretation" to which it applied "traditional principles" of interpretation. Id. at 1388. As a threshold matter, the Supreme Court noted that courts must be careful not to import requirements into this analysis that Congress has not included in the statute: We do not ask whether in our judgment Congress should have authorized Static Control's suit, but whether Congress in fact did so. Just as a court cannot apply its independent policy judgment to recognize a cause of action that Congress has denied, it cannot limit a cause of action that Congress has created merely because 'prudence' dictates. Id. The Court concluded that § 43(a)'s broad authorization-permitting suit by "any person who believes that he or she is or is likely to be damaged"-should not be taken "literally" to reach the limits of Article III standing, but is framed by two "background principles," which may overlap. Id. [22] First, a plaintiff's claim must fall within the "zone of interests" protected by the statute. Id. The scope of the zone of interests is not "especially demanding," and the plaintiff receives the "benefit of any doubt." Id. at 1389. Because the Lanham Act contains an "unusual, and extraordinarily helpful" purpose statement in § 45, identifying the statute's zone of interests "requires no guesswork." Id. Section 45 provides: The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition entered into between the United States and foreign nations. Lanham Act § 45, 15 U.S.C. § 1127. 5 [23] The Supreme Court observed that "[m]ost of the enumerated purposes are relevant to a false-association case," while "a typical false-advertising case will implicate only the Act's goal of 'protecting persons engaged in commerce within the control of Congress against unfair competition.'" Lexmark, 134 S.Ct. at 1389. The Court concluded "that to come within the zone of interests in a suit for false advertising under [ § 43(a)], a plaintiff must allege an injury to a commercial interest in reputation or sales." Id. at 1390. [24] The second Lexmark background principle is that "a statutory cause of action is limited to plaintiffs whose injuries are proximately caused by violations of the statute." Id. The injury must have a "sufficiently close connection to the conduct the statute prohibits." Id. In the § 43(a) context, this means "show[ing] economic or reputational injury flowing directly from the deception wrought by the defendant's advertising; and that that occurs when deception of consumers causes them to withhold trade from the plaintiff." Id. at 1391. [25] The primary lesson from Lexmark is clear: courts must interpret the Lanham Act according to what the statute says. To determine whether a plaintiff, "falls within the class of plaintiffs whom Congress has authorized to sue," we "apply traditional principles of statutory interpretation." Id. at 1387. The outcome will rise and fall on the "meaning of the congressionally enacted provision creating a cause of action." Id. at 1388. [26] We now turn to apply these principles to the case before us. [27] We first address the position, pressed by Belmora and adopted by the district court, that a plaintiff must have initially used its own mark in commerce within the United States as a condition precedent to a § 43(a) claim. In dismissing BCC's § 43(a) claims, the district court found dispositive that "Bayer failed to plead facts showing that it used the FLANAX mark in commerce in [the] United States." Upon that ground, the district court held "that Bayer does not possess a protectable interest in the [FLANAX] mark." [28] As noted earlier, such a requirement is absent from § 43(a)'s plain language and its application in Lexmark. Under the statute, the defendant must have "use [d] in commerce" the 5 In the same section, the Lanham Act defines "commerce" as "all commerce which may lawfully be regulated by Congress." Lanham Act § 45, 15 U.S.C. § 1127. We have previously construed this phrase to mean that the term is "coterminous with that commerce that Congress may regulate under the Commerce Clause of the United States Constitution." Int'l Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Etrangers a Monaco, 329 F.3d 359, 363-64 (4th Cir. 2003). "Commerce" in Lanham Act context is therefore an expansive concept that "necessarily includes all the explicitly identified variants of interstate commerce, foreign trade, and Indian commerce." Id. at 364 (citing U.S. Const. art. I, § 8, cl. offending "word, term, name, [or] symbol," but the plaintiff need only "believe[ ] that he or she is or is likely to be damaged by such act." Lanham Act § 43(a), 15 U.S.C. § 1125(a). [29] It is important to emphasize that this is an unfair competition case, not a trademark infringement case. Belmora and the district court conflated the Lanham Act's infringement provision in § 32 (which authorizes suit only "by the registrant," and thereby requires the plaintiff to have used its own mark in commerce) with unfair competition claims pled in this case under § 43(a). Section 32 makes clear that Congress knew how to write a precondition of trademark possession and use into a Lanham Act cause of action when it chose to do so. It has not done so in § 43(a). See Russello v. United States, 464 U.S. 16, 23 (1983) ("[W]here Congress includes particular language in one section of a statute but omits it in another section of the same Act, it is generally presumed that Congress acts intentionally and purposely in the disparate inclusion or exclusion."). [30] Given that Lexmark advises courts to adhere to the statutory language, "apply[ing] traditional principles of statutory interpretation," Lexmark, 134 S.Ct. at 1388, we lack authority to introduce a requirement into § 43(a) that Congress plainly omitted. Nothing in Lexmark can be read to suggest that § 43(a) claims have an unstated requirement that the plaintiff have first used its own mark (word, term, name, symbol, or device) in U.S. commerce before a cause of action will lie against a defendant who is breaching the statute. [31] The district court thus erred in requiring Bayer, as the plaintiff, to have pled its prior use of its own mark in U.S. commerce when it is the defendant's use of a mark or misrepresentation that underlies the § 43(a) unfair competition cause of action. Having made this foundational error, the district court's resolution of the issues requires reversal. 6 [32] Admittedly, some of our prior cases appear to have treated a plaintiff's use of a mark in United States commerce as a prerequisite for a false association claim. See Lamparello v. Falwell, 420 F. 6 Even though the district court's error in transposing § 43(a)'s requirements for a defendant's actions upon the plaintiff skews the entire analysis, the district court also confused the issues by ill-defining the economic location of the requisite unfair competition acts. As noted earlier, supra n. 5, a defendant's false association or false advertising conduct under § 43(a) must occur in "commerce within the control of Congress." Such commerce is not limited to purchases and sales within the territorial limits of the United States as the district court seems to imply at times with regard to § 43(a) and § 14(3) claims. See J.A. 483, 506 (as to § 14(3), stating that "Bayer did not use the FLANAX mark in the United States"); J.A. 487 (as to § 43(a), stating that "Bayer failed to plead facts showing that it used the FLANAX mark in commerce in [the] United States"). Instead, as we explained in International Bancorp, Lanham Act "commerce" includes, among other things, "foreign trade" and is not limited to transactions solely within the borders of the United States. Int'l Bancorp, 329 F.3d at 364. Of course, any such "foreign trade" must satisfy the Lexmark "zone of interests" and "proximate cause" requirements to be cognizable for Lanham Act purposes. identical."); Lone Star Steakhouse & Saloon v. Alpha of Va., Inc., 43 F.3d 922, 930 (4th Cir. 1995) ("[T]o prevail under § § 32(1) and 43(a) of the Lanham Act for trademark infringement and unfair competition, respectively, a complainant must demonstrate that it has a valid, protectible trademark[.]"). However, none of these cases made that consideration the ratio decidendi of its holding or analyzed whether the statute in fact contains such a requirement. See, e.g., 5 J. Thomas McCarthy, Trademarks and Unfair Competition § 29:4 (4th ed. 2002) (observing that International Bancorp merely "assumed that to trigger Lanham Act § 43(a), the plaintiff's mark must be 'used in commerce'"). Moreover, all of these cases predate Lexmark, which provides the applicable Supreme Court precedent interpreting § 43(a). See U.S. Dep't of Health & Human Servs. v. Fed. Labor Relations Auth., 983 F.2d 578, 581 (4th Cir. 1992) ("A decision by a panel of this court, or by the court sitting en banc, does not bind subsequent panels if the decision rests on authority that subsequently proves untenable."). [33] Although the plaintiffs' use of a mark in U.S. commerce was a fact in common in the foregoing cases, substantial precedent reflects that § 43(a) unfair competition claims come within the statute's protectable zone of interests without the preconditions adopted by the district court and advanced by Belmora. As the Supreme Court has pointed out, § 43(a) "goes beyond trademark protection." Dastar Corp., 539 U.S. at 29. For example, a plaintiff whose mark has become generic-and therefore not protectable-may plead an unfair competition claim against a competitor that uses that generic name and "fail[s] adequately to identify itself as distinct from the first organization" such that the name causes "confusion or a likelihood of confusion." Blinded Veterans Ass'n v. Blinded Am. Veterans Found., 872 F.2d 1035, 1043 (D.C. Cir. 1989); see also Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111, 118-19 (1938) (requiring the defendant to "use reasonable care to inform the public of the source of its product" even though the plaintiff's "shredded wheat" mark was generic and therefore unprotectable); Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 203-04 (1896) (same, for "Singer" sewing machines). [34] Likewise, in a "reverse passing off" case, the plaintiff need not have used a mark in commerce to bring a § 43(a) action.foot_46 A reverse-passing-off plaintiff must prove four elements: "(1) that the work at issue originated with the plaintiff; (2) that origin of the work was falsely designated by the defendant; (3) that the false designation of origin was likely to cause consumer confusion; and (4) that the plaintiff was harmed by the defendant's false designation of origin." Universal Furniture Int'l, Inc. v. Collezione Europa USA, Inc., 618 F.3d 417, 438 (4th Cir. 2010). Thus, the plaintiff in a reverse passing off case must plead and prove only that the work "originated with" him-not that he used the work (which may or may not be associated with a mark) in U.S. commerce. Id. [35] The generic mark and reverse passing off cases illustrate that § 43(a) actions do not require, implicitly or otherwise, that a plaintiff have first used its own mark in United States commerce. If such a use were a condition precedent to bringing a § 43(a) action, the generic mark and reverse passing off cases could not exist. [36] In sum, the Lanham Act's plain language contains no unstated requirement that a § 43(a) plaintiff have used a U.S. trademark in U.S. commerce to bring a Lanham Act unfair competition claim. The Supreme Court's guidance in Lexmark does not allude to one, and our prior cases either only assumed or articulated as dicta that such a requirement existed. Thus, the district court erred in imposing such a condition precedent upon Bayer's claims. 8 [37] As Bayer is not barred from making a § 43(a) claim, the proper Lexmark inquiry is twofold. Did the alleged acts of unfair competition fall within the Lanham Act's protected zone of interests? And if so, did Bayer plead proximate causation of a cognizable injury? We examine the false association and false advertising claims in turn. b. [38] As to the zone of interests, Lexmark advises that "[m]ost of the [Lanham Act's] enumerated purposes are relevant to false-association cases." 134 S.Ct. at 1389. One such enumerated purpose is "making actionable the deceptive and misleading use of marks" in "commerce within the control of Congress." Lanham Act § 45, 15 U.S.C. § 1127; see also Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 784 n. 19 (1992) (Stevens, J., concurring) ("Trademark law protects the public by making consumers confident that they can identify brands they prefer and can purchase those brands without being confused or misled."). As pled, BCC's false association claim advances that purpose. [39] The complaint alleges Belmora's misleading association with BCC's FLANAX has caused BCC customers to buy the Belmora FLANAX in the United States instead of purchasing BCC's FLANAX in Mexico. For example, the complaint alleges that BCC invested heavily in promoting its FLANAX to Mexican citizens or Mexican-Americans in border areas. Those consumers cross into the United States and may purchase Belmora FLANAX here before 8 A plaintiff who relies only on foreign commercial activity may face difficulty proving a cognizable false association injury under § 43(a). A few isolated consumers who confuse a mark with one seen abroad, based only on the presence of the mark on a product in this country and not other misleading conduct by the mark holder, would rarely seem to have a viable § 43(a) claim. The story is different when a defendant, as alleged here, has-as a cornerstone of its businessintentionally passed off its goods in the United States as the same product commercially available in foreign markets in order to influence purchases by American consumers. See M. Kramer Mfg. Co. v. Andrews, 783 F.2d 421, 448 (4th Cir. 1986) ("[E]vidence of intentional, direct copying establishes a prima facie case of secondary meaning sufficient to shift the burden of persuasion to the defendant on that issue."). Such an intentional deception can go a long way toward establishing likelihood of confusion. See Blinded Veterans, 872 F.2d at 1045 ("Intent to deceive . . . retains potency; when present, it is probative evidence of a likelihood of confusion."). Lanham Act unfair competition by using deceptive advertisements that capitalized on BCC's goodwill. . . . If not for Belmora's statements that its FLANAX was the same one known and trusted in Mexico, some of its consumers could very well have instead purchased BHC's ALEVE brand. These lost customers likewise satisfy Lexmark's second prong: they demonstrate an injury to sales or reputation proximately caused by Belmora's alleged conduct. [45] BCC's false advertising claim is perhaps not "typical" as BCC is a foreign entity without direct sales in the territorial United States. Nonetheless, BCC's claim advances the Act's purpose of "making actionable the deceptive and misleading use of marks." Lanham Act § 45, 15 U.S.C. § 1127. As alleged, Belmora's advertising misrepresents the nature of its FLANAX product in that Belmora implies that product is the same as consumers purchased in Mexico from BCC and can now buy here. [46] To be sure, BCC's false advertising claim overlaps to some degree with its false association claim, but the two claims address distinct conduct within the two subsections of § 43(a). Belmora's alleged false statements go beyond mere claims of false association; they parlay the passed-off FLANAX mark into misleading statements about the product's "nature, characteristics, qualities, or geographic origin," all hallmarks of a false advertising claim. Lanham Act 43(a)(1)(B), 15 U.S.C. 1125(a)(1)(B). [47] Belmora's alleged false statements intertwine closely with its use of the FLANAX mark. The FLANAX mark denotes history: Belmora claims its product has been "used [for] many, many years in Mexico" and "Latinos have turned to" it "[f]or generations." FLANAX also reflects popularity: Belmora says the product is "highly recognized [and] top-selling." And FLANAX signifies a history of quality: Belmora maintains that Latinos "know, trust and prefer" the product. Each of these statements by Belmora thus directly relates to the "nature, characteristics, qualities, or geographic origin" of its FLANAX as being one and the same as that of BCC. Lanham Act § 43(a)(1)(B), 15 U.S.C. § 1125(a)(1)(B). Because these statements are linked to Belmora's alleged deceptive use of the FLANAX mark, we are satisfied that BCC's false advertising claim, like its false association claim, comes within the Act's zone of interests. As we can comfortably infer that the alleged advertisements contributed to the lost border sales pled by BCC, the claim also satisfies Lexmark's proximate cause prong (for the same reasons discussed above regarding the false association claim). d. [48] We thus conclude that the Lanham Act permits Bayer to proceed with its claims under § 43(a)-BCC with its false association claim and both BCC and BHC with false advertising claims. It is worth noting, as the Supreme Court did in Lexmark, that "[a]lthough we conclude that [Bayer] has alleged an adequate basis to proceed under [ § 43(a)], it cannot obtain relief without evidence of injury proximately caused by [Belmora's alleged misconduct]. We hold only that [Bayer] is entitled to a chance to prove its case." 134 S.Ct. at 1395. [49] In granting Bayer that chance, we are not concluding that BCC has any specific trademark rights to the FLANAX mark in the United States. Belmora owns that mark. But 2. The ongoing saga of Belmora. After the Supreme Court denied certiorari review of the 2016 Fourth Circuit opinion in Belmora, the case returned to the Eastern District of Virginia. In September, 2016, the district court affirmed the PTO's cancellation of Belmora's registration but granted Belmora's motion for summary judgment on Bayer's unfair competition claim on the ground that Bayer had waited too long to file suit. See Belmora, LLC v. Bayer Consumer Care AG, 338 F. Supp. 3d 477, 484 (E.D. Va. 2018) ("Whether a three or four-year statute of limitations is applied in this case is immaterial. That is because Bayer's filing of this action misses the statute of limitations by almost a decade."). In May, 2021, the Fourth Circuit reversed the district court's grant of summary judgment to Belmora on Bayer's unfair competition claim, holding that the district court should have applied laches rather than any state-law statute of limitations. See Belmora LLC v. Bayer Consumer Care AG, 987 F.3d 284 (4th Cir. 2021). The Fourth Circuit once again remanded the case back to the district court. Id. In this Part, we consider the infringement of trademark rights under certain sections of the Lanham Act: The test for likelihood of confusion under § 32 is now essentially the same as the test for likelihood of confusion under § 43(a), and courts often cite to case law under one section interchangeably with case law under the other. When owners of registered marks plead likelihood of confusion, they typically do so under both § 32 and § 43(a) in the event that some defect is discovered in their registration. Such plaintiffs may also plead under both sections in order to avail themselves of the slightly broader language of § 43(a), though, again, courts have come to treat § 32 and § 43(a) as essentially interchangeable. Courts have set forth the elements of a trademark infringement claim in a variety of ways. For example, with respect to a claim based on a likelihood of confusion under either or both of § 32 and § 43(a), courts have stated: • "[T]o succeed in a Lanham Act suit for trademark infringement, a plaintiff has two obstacles to overcome: the plaintiff must prove that its mark is entitled to protection and, even more important, that the defendant's use of its own mark will likely cause confusion with plaintiff's mark." Gruner + Jahr USA Publ'g v. Meredith Corp., 991 F.2d 1072, 1074 (2d Cir. 1993). • "To prevail on a claim of trademark infringement under the Lanham Act, 15 U.S.C. § 1114, a party must prove: (1) that it has a protectible ownership interest in the mark; and (2) that the defendant's use of the mark is likely to cause consumer confusion." Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137, 1144 (9th Cir. 2011) (citations omitted). • "To establish trademark infringement under the Lanham Act, a plaintiff must prove: (1) that it owns a valid mark; (2) that the defendant used the mark 'in commerce' and without plaintiff's authorization; (3) that the defendant used the mark (or an imitation of it) 'in connection with the sale, offering for sale, distribution, or advertising' of goods or services; and (4) that the defendant's use of the mark is likely to confuse consumers." Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 152 (4th Cir. 2012) (citations omitted). • "Both infringement and false designation of origin have five elements. To prevail under either cause of action, the trademark holder must prove: (1) that it possesses a mark; (2) that the [opposing party] used the mark; (3) that the [opposing party's] use of the mark occurred 'in commerce'; (4) that the [opposing party] used the mark 'in connection with the sale, offering for sale, distribution, or advertising' of goods or services; and (5) that the [opposing party] used the mark in a manner likely to confuse consumers." Lamparello v. Falwell, 420 F.3d 309, 313 (4th Cir. 2005) (citations omitted). Though the enumerations vary in their level of detail, these statements of the elements of a likelihood of confusion claim are all essentially the same. The plaintiff must prove that (1) it possesses exclusive rights in a mark and (2) the defendant has infringed those exclusive rights. Our focus in Part I was on the first of these two basic elements-whether there is a property right. Our focus in this Part is on the second of these elements-whether that right has been infringed. We begin in Part II.A by reviewing the requirement that, in order to be liable for trademark infringement, a defendant must "use in commerce" the plaintiff's mark "in connection with the sale . . . of any goods or services." We then turn in Part II.B to forms of infringement that are based on the likelihood of consumer confusion as to the source or sponsorship of the defendant's goods. In Part II.C, we consider forms of infringement that are not based on consumer confusion, most notably trademark dilution. In Part II.D, we turn to forms of relief for cybersquatting. Finally, in Part II.E, we review the doctrine of secondary liability in trademark law. 1. Do individual consumers or groups of consumers have standing to sue under the Lanham Act's infringement sections? In short, no. Lanham Act § 32(1), 15 U.S.C. § 1114 (1), which applies to registered marks, provides that an infringing party "shall be liable in a civil action by the registrant for the remedies hereafter provided" (emphasis added). Lanham Act § 43(a), 15 U.S.C. § 1125(a), which applies to both registered and unregistered marks, provides that an infringing party "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" (emphasis added). Though broad, this language has been construed to exclude consumers. See Lexmark Int'l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 132 (2014) ("A consumer who is hoodwinked into purchasing a disappointing product may well have an injury-in-fact cognizable under Article III, but he cannot invoke the protection of the Lanham Act-a conclusion reached by every Circuit to consider the question . . . . Even a business misled by a supplier into purchasing an inferior product is, like consumers generally, not under the Act's aegis."). See also id. at 140 ("To invoke the Lanham Act's cause of action for false advertising, a plaintiff must plead (and ultimately prove) an injury to a commercial interest in sales or business reputation proximately caused by the defendant's misrepresentations."). Does this make sense as a matter of sound policy? See also Curtin v. United Trademark Holdings Inc., 137 F.4th 1359 (Fed. Cir. 2025). In order to prove infringement, a plaintiff is required to show that the alleged infringer made an "actionable use" of the plaintiff's trademark (or of a confusingly-similar approximation of the mark). Specifically, the plaintiff must show that the defendant made a "use in commerce" of the mark "in connection with" goods or services. We saw various statements of this requirement above. See, e.g., Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 152 (4th Cir. 2012) (citations omitted) ("(2) that the defendant used the mark 'in commerce' and without plaintiff's authorization; (3) that the defendant used the mark (or an imitation of it) 'in connection with the sale, offering for sale, distribution, or advertising' of goods or services"). The statutory basis for this requirement is found in Lanham Act § 32 and § 43(a), in the italicized language: Lanham Act § 32, 15 U.S.C. § 1114 (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 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 . . . shall be liable in a civil action by the registrant for the remedies hereinafter provided. (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 . . . 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. In a high proportion of trademark infringement disputes, the plaintiff easily meets the actionable use requirement, and courts often do not even bother mentioning it. But in some cases, the actionable use requirement can be dispositive of the outcome of the dispute. Consider, for example, a defendant who is a political speaker making information freely available online that refers to the plaintiff by its trademark. This defendant is not selling goods or services and so would likely fall outside of the statutory language quoted above. Or consider a defendant who is an artist selling a painting that includes an image of the plaintiff's trademark but the artist is not using that mark as a designation of source for the painting. Relatedly, consider a newspaper who refers to the plaintiff by the plaintiff's trademark in an editorial critical of the plaintiff. Here, the artist and the newspaper may be able to avoid liability on the basis that they are not making a "trademark use" of the plaintiff's trademarkthat is, use of the mark as a designation of source of the defendant's goods. In circumstances like these, the actionable use requirement allows courts to decide a case without ever having to proceed to the potentially messy, expensive, and fact-intensive issue of whether the defendant's conduct confuses consumers as to source. In other words, if the defendant can prevail on the actionable use issue, it will not need to expend the resources necessary to contend with "(4) that the defendant's use of the mark is likely to confuse consumers." Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 152 (4th Cir. 2012) (citations omitted). The actual use requirement can thus be especially helpful (perhaps even at the motion to dismiss stage) for defendants making artistic, expressive, or political uses of others' trademarks. We consider below two forms of the actionable use requirement. We turn first, in Part II.A.1, to the "in connection with" goods or services requirement, which is sometimes called the "commercial use" requirement. We then turn in Part II.A.2 to a troubled area of trademark doctrine known as the "trademark use" requirement. As the following opinion explains, during the early days of the internet courts expanded what qualified as a commercial use by a defendant-that is, what qualified as an actionable use in connection with goods or services under Lanham Act § 32 or § 43(a). They did so in order to enjoin the conduct of clearly bad faith internet defendants. Courts bent the doctrine to reach what they thought was the right result. For example, in People for Ethical Treatment of Animals, Inc. v. Doughney, 263 F.3d 359 (4th Cir. 2001), the defendant owned a wide variety of domain names, including many that resembled others' trademarks. He registered peta.org and created a website entitled "People Eating Tasty Animals." The organization People for the Ethical Treatment of Animals sued for trademark infringement. The defendant claimed no use of the mark "in connection with the sale" of goods or services because he sold no goods or services on his website. The Fourth Circuit found such a connection on the ground that the defendant's use interfered with internet users' efforts to reach PETA's website. Id. at 365. Furthermore, the defendant's website linked to "more than 30 commercial operations offering goods and services." Id. at 366. See also Planned Parenthood Federation of America, Inc. v. Bucci, No. 97 Civ. 0629, 1997 WL 133313 (S.D.N.Y. 1997), aff'd without opinion, 152 F.3d 920 (2d Cir. 1998) (reasoning similarly with respect to defendant's domain name plannedparenthood.com); Jews For Jesus v. Brodsky, 993 F. Supp. 282, 46 U.S.P.Q.2d 1652 (D.N.J. 1998), judgment aff'd, 159 F.3d 1351 (3d Cir. 1998) (reasoning similarly with respect to defendant's domain names jewsforjesus.org and jews-for-jesus.org). Radiance Foundation, Inc. v. National Association for the Advancement of Colored People, 786 F.3d 316 (4th Cir. 2015), finally presented circumstances that forced a retreat from this previous case law's overly expansive, plaintiff-friendly reading of the "in connection with the sale" requirement. By the early-20th century, however, courts enforced personal-name marks even against "newcomer[s] with the same name when confusion over source[was] the likely result." 2 McCarthy §13:8; see L. E. Waterman Co. v. Modern Pen Co., 235 U. S. 88 (1914). The Thaddeus Court referred specifically to the statute's prohibition on the registration of marks that "consis[t] merely of individual, firm or corporate names, not written or printed in a distinctive manner, or of designations descriptive of the character or quality of the goods with which they are used, or of geographical names or terms." 233 U. S., at 467. The Court dismisses my examples as irrelevant because several involve the names of dead individuals. Ante, at 19, n. 4. But "[t]he exclusive right to grace paper collars with Bismarck's name was granted while he was still alive." J. Pike, Personal Names as Trade Symbols, 3 Mo. L. Rev. 93, 101 (1938) (Pike). And the other authorities either expressly recognized that the names of famous living persons could be trademarked, see Barrows, R. I., at 438, or did not indicate whether the rule differed for dead versus living individuals, see Stephano Bros., 238 F., at 92-93. Indeed, "[t]he authorities [were] somewhat meagre" as to "the rule . . . . where the notable person [was] still alive," Pike 100, undercutting the notion that the common law contained a clear rule one way or the other.6 The Court characterizes my critique as a demand for a "historical twin." Ante, at 19, n. 4. On the contrary, my point is that the Court has not cleared the "historical analogue" bar it sets for itself. The existence of closely analogous historical counterexamples surely complicates the argument that "history and tradition" alone establish the clause's constitutionality. By presenting its evidence as conclusive, "the Court overclaims." Samia v. United States, 599 U. S. 635, 657 (2023) (BARRETT, J., concurring in part and concurring in judgment). Although these other circuit cases involve infringement, they address the same language in Lanham Act § 45. Trademark Law Revision Act of 1988, Pub. L. No. 100-667, 102 Stat. 3935 (codified as amended in scattered sections of the U.S.C.). Madrid Protocol Implementation Act, Pub. L. No. 107-273, 116 Stat. 1913 (2002) (codified as amended at 15 U.S.C. § § 1141-1141 (2006)). However, as is suggested by Dragon Bleu (SARL) v. VENM, LLC, 112 U.S.P.Q.2d (TTAB 2014), which dealt with § 66(a) registrations, if the § 44 or § 66(a) registrant is accused of having abandoned its mark in the U.S., the registrant may be required to present evidence of use sooner than five years after the date of registration. On the issue of trademark abandonment, see Part III.D. At the examination stage, an examiner may not refuse registration on the ground that the applied-for mark will dilute another mark. See Lanham Act § 2(f), 15 U.S.C. § 1052(f) ("A mark which when used would cause dilution under section 43(c) may be refused registration only pursuant to a[n opposition] proceeding brought under section 13."). See Barton Beebe & Jeanne Fromer, Are We Running Out of Trademarks? An Empirical Study of Trademark Depletion and Congestion, 131 HARV. L. REV. 945, 1005 (2018) See Barton Beebe, Is the Trademark Office a Rubber Stamp?: Trademark Registration Rates at the PTO, 1981-2010, 48 HOUSTON L. REV. 752 (2012). Applicants whose filing basis is §66(a) under the Madrid Protocol continue to have six months to respond to an office action. Formerly, a disadvantage of the district court route was that the applicant was required to pay the government's expenses in defending any ex parte PTO decision before the district court, including prorated salaries of the government attorneys, regardless of whether the applicant prevailed. This rule was based on Lanham Act § 21(b)(3), 15 U.S.C. § 1071(b)(3): "[U]nless the court finds the expenses to be unreasonable, all the expenses of the proceeding shall be paid by the [appealing] party bringing the case, whether the final decision is in favor of such party or not." However, in Peter v. NantKwest, 140 S.Ct. 365 (2019), the Supreme Court determined that similar language from the Patent Act did not override "the bedrock principle known as the '"American Rule"': Each litigant pays his own attorney's fees, win or lose, unless a statute or contract provides otherwise." Id. at 370. Thus, applicants challenging ex parte PTO decisions at a district court need not pay the government's attorney's fees. May registrants take advantage of their rights under Lanham Act § 43(a), dealing with unregistered marks, to claim profits and damages even where the registrant did not provide statutory notice? McCarthy suggests that the answer is no: Note that Lanham Act § 14 can be read only to apply to cancellation petitions brought before the PTO. If the registrant has not obtained incontestable status for the mark, challengers in federal court are arguably not limited by Lanham Act § 14 in the grounds on which they can challenge the validityor at least the enforceability-of the mark. But see MCCARTHY § 30:112 (arguing that § 14's five-year limit on grounds for cancellation applies to federal courts as well). The Madrid System functions under two international instruments, the Madrid Agreement Concerning the International Registration of Marks of 1891, which the U.S. has never joined, and the 1989 Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (generally referred to as the "Madrid Protocol"), which was developed primarily to bring the U.S. and As of May 2025. See http://www.wipo.int/madrid/en/members/. Canada became a party to the Madrid Protocol in June 2019, and Brazil did so in October 2019. Registration No. 1,354,062, issued August 13, 1985. The case at bar is decided under the provisions of the Act in force prior to the enactment of the Trademark Law Revision Act of 1988.16 Section 44 of the Lanham Act, 15 U.S.C. § (1982), permits qualified foreign applicants who own a registered mark in their country of origin to obtain a U.S. trademark registration without Appellant repeatedly makes reference to a "world economy" and considers Christman to be the remote junior user of the mark. Although Person's did adopt the mark in Japan prior to Christman's use in United States commerce, the use in Japan cannot be relied upon to acquire U.S. trademark rights. Christman is the senior user as that term is defined under U.S. trademark law.20 See 2 J. McCarthy, Trademarks and Unfair Competition § 26:4 (2d ed. 1984); Restatement of Torts § 732 comment a (1938). The Dallos asserted the following causes of action: (1) trademark infringement, under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (2) false designation of origin, misrepresentation, and unfair competition, under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) common law unfair competition; (4) trademark infringement and unfair competition under California law; (5) dilution under California law; and (6) common law misappropriation. Grupo Gigante S.A. de C.V. v. Dallo & Co., Inc., 119 F.Supp.2d 1083 (C.D.Cal. 2000). J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 29:2, at 29-6 (4th ed. 2002) (internal footnote omitted). See Person's Co., Ltd. v. Christman, 900 F.2d 1565, 1569-70 (Fed. Cir. 1990); Buti v. Perosa, S.R.L., 139 F.3d 98, 103-05 (2d Cir. 1998); Fuji Photo Film Co., Inc. v. Shinohara Shoji Kabushiki Kaisha, 754 F.2d 591, 599 (5th Cir. 1985). Fuji Photo, 754 F.2d at 599; see also Person's, 900 F.2d at 1569. Int'l Bancorp, 329 F.3d at 389 n. 9 (Motz, J., dissenting) ("Nor does the 'famous marks' doctrine provide SBM any refuge. That doctrine has been applied so seldom (never by a federal appellate court and only by a handful of district courts) that its viability is uncertain."). See Thane Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 901 (9th Cir. 2002). Vaudable v. Montmartre, Inc., 20 Misc.2d 757, 193 N.Y.S.2d 332 (N.Y.Sup.Ct. 1959). Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211 (2000) (internal quotation and editing omitted). Good faith may also be an issue in such cases. See Hanover Star, 240 U.S. at 415, 36 S.Ct. 357 (excepting from the general Tea Rose-Rectanus principle cases in which "the second adopter has selected the mark with some design inimical to the interests of the first user, such as to take the benefit of the reputation of his goods, to forestall the extension of his trade, or the like."). Good faith is not raised in this appeal (perhaps because the appeal comes up on summary judgment) and is irrelevant to our analysis. Paris Convention for the Protection of Industrial Property, Mar. 20, 1883, as revised at Stockholm, July 14, 1967, art. 6(3), 21 U.S.T. 1583, § 6(3) ("A mark duly registered in a country of the Union shall be regarded as independent of marks registered in the other countries of the Union, including the country of origin."). See Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986); Matsushita Elec. Indus. Co. v. Zenith Radio, 475 U.S. 574 (1986). The record indicates that in 2002 and 2003, the New Delhi Bukhara was named one of the world's fifty best restaurants by London-based "Restaurant" magazine. This product takes its name from a lentil dish served at the New Delhi Bukhara restaurant. ITC's amended complaint also charged defendants with false designation of origin in violation of the Lanham Act, 15 U.S.C. § 1125(a), and deceptive acts and practices in violation of New York General Business Law § 349, but it appears to have abandoned those claims in otherwise opposing defendants' motion for summary judgment. See ITC Ltd. v. Punchgini, Inc., 373 F.Supp.2d at 278. The reach of Article 6bis was extended to service marks by Article 16(2) of the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPs"), see generally Uruguay Round In Empresa Cubana, however, we did observe, in dictum, that "[t]o the extent that a foreign entity attempts to utilize the famous marks doctrine as [a] basis for its right to a U.S. trademark and seeks to prevent another entity from using the mark in the United States, the claim should be brought under Section 43(a)." Id. at 480 n. 10. See, e.g., Grupo Gigante S.A. De C.V. v. Dallo & Co., 391 F.3d at 1095; Buti v. Impressa Perosa, S.R.L., 139 F.3d at 104; Person's Co. v. Christman, 900 F.2d at 1570; Almacenes Exito S.A. v. El Gallo Meat Mkt., Inc., 381 F.Supp.2d at 328; De Beers LV Trademark Ltd. v. DeBeers Diamond Syndicate, Inc., 2005 U.S. Dist. LEXIS 9307 at *21-22. See, e.g., 4 McCarthy, supra, § 29:4, at 29-12; Graeme B. Dinwoodie et al., International Intellectual Property Law and Policy 108 (2001). New York could, of course, conclude that a "secondary meaning plus" standard also applied to a foreign mark or dress that had previously been used in the United States where, as in this case, such domestic use had been abandoned. The district court had agreed with the TTAB that Article 6bis does not create an independent cause of action for the cancellation of Belmora's FLANAX registration. Because Bayer appears to have abandoned its treaty claims on appeal and their resolution is not necessary to our decision, we do not address any issue regarding the Paris Convention arguments. As the district court pointed out, we have sometimes denominated Lanham Act § 43(a)(1)(A) claims as "false designation" claims. We think it preferable to follow the Supreme Court's terminology in Lexmark and instead refer to such claims as those of "false association," although the terms can often be used interchangeably. Reverse passing off occurs when a "producer misrepresents someone else's goods or services as his own," in other words, when the defendant is selling the plaintiff's goods and passing them off as originating with the defendant. Universal Furniture Int'l, Inc. v. Collezione Europa USA, Inc., 618 F.3d 417, 438 (4th Cir. 2010) (quoting Dastar Corp., 539 U.S. at 28 n. 1). • In the [Applications], Creative Harbor said that it intended to use the Mark in connection with 'employment staffing consultation services,' and Mr. Jurgensen explained that Creative Harbor included this service because 'maybe at some point [the WorkWire application] would have consulting in there, maybe some kind of career advisor, something like this.' (Id.); • In the [Applications], Creative Harbor said that it intended to use the Mark in connection with 'business consulting' services, but Mr. Jurgensen conceded that he 'wanted to make sure [that] was there included' because the company 'could' perhaps perform those services 'at some point' in the future. (Id.) Kelly Servs. II, 140 F.Supp.3d at 617-18 (emphasis in original) (record citations altered). , the rights of good faith intermediate junior users in particular are frozen earlier at the registrant's date of application. What then of intermediate junior users who did not adopt in good faith (i.e., who adopted with knowledge of the registrant's prior use)? It would be at odds with the purposes of the Lanham Act (among them, to promote good faith conduct) to leave bad faith intermediate junior users better off than good faith intermediate junior users by treating the former as if they were senior common law users under § 7(c) and § 22. Instead, once the registrant's registration issues, the intermediate junior user who adopted with knowledge of the registrant's prior use would almost certainly be required to cease all use of its mark (subject to the Dawn Donut rule, discussed below).b. [13] At the very least, reading the "in connection with" element to take in broad swaths of noncommercial speech would be an "overextension" of the Lanham Act's reach that would "intrude on First Amendment values." Rogers v. Grimaldi, 875 F.2d 994, 998 (2d Cir. 1989); see also Taubman, 319 F.3d at 774 (stating that the "Lanham Act is constitutional because it only regulates commercial speech"). It is true that neither of the Lanham Act's infringement provisions explicitly mentions commerciality. Lamparello, 420 F.3d at 314. Still, this provision must mean something more than that the mark is being used in commerce in the constitutional sense, because the infringement provisions in § 1114(1)(a) and § 1125(a) ( [14] Although this case does not require us to hold that the commercial speech doctrine is in all respects synonymous with the "in connection with" element, we think that doctrine provides much the best guidance in applying the Act. The "in connection with" element in fact reads very much like a description of different types of commercial actions: "in connection with the sale, offering for sale, distribution, or advertising of any goods or services." 15 U.S.C. [15] Use of a protected mark as part of "speech that does no more than propose a commercial transaction" thus plainly falls within the Lanham Act's reach. United States v. United Foods, Inc., 533 U.S. 405, 409 (2001). Courts also look to the factors outlined in Bolger v. Youngs Drug Products Corp., 463 U.S. 60, 66-67 (1983): whether the speech is an advertisement; whether the speech references a particular good or service; and whether the speaker (the alleged infringer) has a demonstrated economic motivation for his speech. Greater Balt. Ctr. for Pregnancy Concerns, Inc. v. Mayor of Balt., 721 F.3d 264, 285 (4th Cir. 2013) (en banc). These are not exclusive factors, and the presence or absence of any of them does not necessitate a particular result. [16] In the context of trademark infringement, the Act's purpose . . . is to protect consumers from misleading uses of marks by competitors. Thus if in the context of a sale, distribution, or advertisement, a mark is used as a source identifier, we can confidently state that the use is "in connection with" the activity. Even the Second Circuit, which rejected noncommerciality as an invariable defense to Lanham Act liability, conceded that a "crucial" factor is that the infringer "us [ed] the Mark not as a commentary on its owner, but instead as a source identifier." United We Stand, 128 F.3d at 92. The danger of allowing the "in connection with" element to suck in speech on political and social issues through some strained or tangential association with a commercial or transactional activity should thus be evident. Courts have uniformly understood that imposing liability under the Lanham Act for such speech is rife with the First Amendment problems. [17] Finally, in order to determine whether the use is "in connection with" goods or services, we must consider what qualifies as a good or service. The Lanham Act does not directly define either term, but we can deduce their meaning from other defined terms and common usage. A "good" is best understood as a valuable product, physical or otherwise, that the consumer may herself employ. See 15 U.S.C. § 1127 (noting that a mark may be used in commerce in relation to a good when placed on a good, its container, its tag, or its associated documents); Black's Law Dictionary 809 (10th ed. 2014) (defining "goods" as "[t]hings that have value, whether tangible or not"). A service is a more amorphous concept, "denot[ing] an intangible commodity in the form of human effort, such as labor, skill, or advice." Black's Law Dictionary 1576. Because Congress intended the Lanham Act to protect consumers from confusion in the marketplace, it is probable that the Act is meant to cover a wide range of products, whether "goods" or "services." See Yates v. United States, ---U.S. ----, 135 S.Ct. 1074, 1082 (2015) ("Ordinarily, a word's usage accords with its dictionary definition. In law as in life, however, the same words, placed in different contexts, sometimes mean different things."). [18] It is clear, therefore, that despite the need to reconcile the reach of the Lanham Act with First Amendment values, "goods or services" remains a broad and potentially fuzzy concept. That is yet another reason why the "in connection with" language must denote a real nexus with goods or services if the Act is not to fatally collide with First Amendment principles. III. . . . . A. [19] In finding that Radiance's use of the NAACP's marks was "in connection with" goods or services, the district court erred in several respects. To begin, the court held that because the Radiance article appeared in a Google search for the term "NAACP," it diverted "Internet users to Radiance's article as opposed to the NAACP's websites," which thereby created a connection to the NAACP's goods and services. Radiance Found., Inc. v. NAACP, 25 F.Supp.3d 865, 884 (E.D.Va. 2014). But typically the use of the mark has to be in connection with the infringer's goods or services, not the trademark holder's. See Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045, 1053-54 (10th Cir. 2008) (stating that "the defendant in a trademark infringement . . . case must use the mark in connection with the goods or services of a competing producer, not merely to make a comment on the trademark owner's goods or services"). [20] If the general rule was that the use of the mark merely had to be in connection with the trademark holder's goods or services, then even the most offhand mention of a trademark holder's mark could potentially satisfy the "in connection with" requirement. That interpretation would expand the requirement to the point that it would equal or surpass the scope of the Lanham Act's "in commerce" jurisdictional element. This would not only make the jurisdictional element superfluous, but would hamper the ability of the "in connection with" requirement to hold Lanham Act infractions within First Amendment limits. [21] In People for the Ethical Treatment of Animals v. Doughney, we stated that an infringer "need only have prevented users from obtaining or using [the trademark holder's] goods or services, or need only have connected the [infringing] website to other's goods or services" in order to satisfy the "in connection with" requirement. 263 F.3d 359, 365 (4th Cir. 2001). But that rule applies specifically where the infringer has used the trademark holder's mark in a domain name. Id. at 365-66. Neither of Radiance's websites used an NAACP mark in its domain name. Rather, Radiance used the NAACP's marks only in the title and body of an article criticizing the NAACP. Nothing in PETA indicates that the use of a mark in the course of disseminating such an idea is on that account sufficient to establish the requisite relationship to goods or services. PETA simply does not govern the application of the "in connection with" element in this case. [22] The district court proceeded to find that Radiance's use of the NAACP's marks was also in connection with Radiance's goods or services. Radiance Found., 25 F.Supp.3d at 884-85. But the court's analysis failed to demonstrate a sufficient nexus between the specific use of the marks and the sale, offer for sale, distribution, or advertisement of any of the goods or services that the court invoked. The court first found that there was a sufficient nexus "with Radiance's own information services" because Radiance "provided information" on its website. Id. at 884. That ruling, however, neuters the First Amendment. The provision of mere "information services" without any commercial or transactional component is speechnothing more. [23] In the alternative, the court held that Radiance's use of the NAACP's marks was in connection with goods or services, because the use was "part of social commentary or criticism for which they solicit donations and sponsorship." Id. The NAACP echoes the district court, arguing that the transactional nature of the billboard campaign and Radiance's fundraising efforts place Radiance's use of the marks "comfortably within" the reach of the "in connection with" element. Appellee's Br. at 24-26. [24] We need not address this point with absolute pronouncements. Suffice it to say that the specific use of the marks at issue here was too attenuated from the donation solicitation and the billboard campaign to support Lanham Act liability. Although present on the article page, the Donate button was off to the side and did not itself use the NAACP's marks in any way. The billboard campaign was displayed on a different page altogether. A visitor likely would not perceive the use of the NAACP's marks in the article as being in connection with those transactional components of the website. It is important not to lose perspective. The article was just one piece of each Radiance website's content, which was comprised of articles, videos, and multimedia advocacy materials. That the protected marks appear somewhere in the content of a website that includes transactional components is not alone enough to satisfy the "in connection with" element. To say it was would come too close to an absolute rule that any social issues commentary with any transactional component in the neighborhood enhanced the commentator's risk of Lanham Act liability. [25] The Supreme Court has warned "that charitable appeals for funds . . . involve a variety of speech interests . . . that are within the protection of the First Amendment." Vill. of Schaumburg v. Citizens for a Better Env't, 444 U.S. 620, 632 (1980). Such solicitation, the Court stated, is not a "variety of purely commercial speech." Id. Courts are thus well-advised to tread cautiously when a trademark holder invokes the Lanham Act against an alleged non-profit infringer whose use of the trademark holder's marks may be only tenuously related to requests for money. Again, this is not to say that in all instances a solicitation by a non-profit is immune from Lanham Act liability. A solicitation may satisfy the "in connection with" element if the trademark holder demonstrates a sufficient nexus between the unauthorized use of the protected mark and clear transactional activity. Such a nexus may be present, for example, where the protected mark seems to denote the recipient of the donation. However, where, as here, the solicitations are not closely related to the specific uses of the protected marks, we are compelled to conclude that the district court erred in ruling that the "in connection element" was met. . . . . 1. The difference in the language of Lanham Act § 32 and § 43(a). You may have noticed that the two likelihood of confusion sections formulate the commercial use requirement slightly differently. Compare Lanham Act § 32(1)(a), 15 U.S.C. § 1114(1)(a) (establishing liability for "[a]ny person who shall use in commerce" the plaintiff's mark "in connection with the sale, offering for sale, distribution, or advertising of any goods or services" in a manner that is confusing) to Lanham Act § 43(a) (1), 15 U.S.C. § 1125(a)(1) (establishing liability for "[a]ny person who, on or in connection with any goods or services, or any container for goods, uses in commerce" the plaintiff's mark in a manner that is confusing). In practice, courts have read both statements of the commercial use requirement to mean the same thing. We now briefly turn to a considerably more unsettled area of actionable use doctrine known as the "trademark use" or "use as a mark" requirement. The Sixth Circuit is the only circuit that has consistently applied this requirement. See Sazerac Brands, LLC v. Peristyle It is necessary to be familiar with the doctrine because, as discussed below, the Supreme Court relied heavily on it in Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023), and the Court further committed itself to the doctrine in Abitron Austria Gmbh v. Hetronic International, Inc., 600 U.S. 412 (2023). According to "use as a mark" doctrine, to prove infringement, the plaintiff must show as a threshold matter that the defendant is using the accused designation "as a trademark," that is, as a designation of source of the defendant's goods or services. Thus, for example, in Rupp v. Courier Journal, Inc., No. 18 Civ. 277, 2020 WL 1310491 (W.D. Ky. Mar. 19, 2020), the plaintiff owned the mark DERBY-PIE for chocolate nut pies. The defendant newspaper used the term "Derby pie" in the title of a recipe for chocolate-walnut pies, as shown above. The newspaper moved for dismissal of the plaintiff's claim of trademark infringement on the ground that the newspaper did not use the term as a designation of source for its own goods or services. The court granted the motion, finding that "the Complaint fails to plausibly establish that Defendant used Plaintiff's Mark in any other way than a non-trademark one." Id. at *3. See also Rigsby v. GoDaddy Inc., 59 F.4th 998, 1005 (9th Cir. 2023) (in case in which defendant domain name registrar transferred plaintiff's lapsed domain name to a third party, granting motion to dismiss trademark infringement claim on ground that plaintiff "has not adequately alleged that {defendant} 'used' his mark, let alone 'in commerce,' sufficient to state a claim under § 1125(a)"); Naked Cowboy v. CBS, 844 F. Supp. 2d 510, 515 (S.D.N.Y. 2012) (granting defendant's motion to dismiss in part on the ground that defendant's references to Times Square's Naked Cowboy in connection with soap opera The Bold and the Beautiful did not constitute "use in commerce" as defined in § 45); id. at 515 ("None of the contents of the Episode could have violated Plaintiff's trademark rights because the word mark 'Naked Cowboy' does not appear anywhere in it. Similarly, inclusion of 'naked' and 'cowboy' as separate tags associated with the YouTube video clips is not 'use' of Plaintiff's word mark 'Naked Cowboy.'"). In theory, the use as a mark requirement is separate from the requirement that the plaintiff also show that the defendant's accused use is likely to confuse consumers as to the source of the defendant's goods or services. As the Sixth Circuit has explained: In our circuit, plaintiffs carry a threshold burden to show that the defendant is using a mark "in a '[ ]trademark' way" that "identifies the source of their goods." Interactive Prods. Corp. v. a2z Mobile Office Sols., Inc., 326 F.3d 687, 695 (6th Cir. 2003); see Grubbs v. Sheakley Grp., Inc., 807 F.3d 785, 793-94 (6th Cir. 2015); Hensley Mfg. v. ProPride, Inc., 579 F.3d 603, 610-12 (6th Cir. 2009). Otherwise the "trademark infringement and false designation of origin laws do not apply." Interactive Prods. Corp., 326 F.3d at 695. Only if the plaintiff clears this threshold test do we proceed to the conventional likelihood-of-confusion analysis and fair use defense, among other defenses. Sazerac Brands, LLC v. Peristyle, LLC, 892 F.3d 853, 859 (6th Cir. 2018). On this reasoning, if the plaintiff is unable to prove that the defendant's accused use constitutes a "use as a mark" for its own goods or services, then that would decide the case. There would thus be no need to move on to the often more difficult, unpredictable, and costly-to-litigate question of whether that use is likely to confuse consumers. As in Rupp v. Courier Journal, courts and defendants could utilize the use as a mark requirement to quickly dispense with especially dumb claims of infringement. For its advocates, the statutory basis for the use as a mark requirement is found in Lanham Act § 32(1), 15 U.S.C. § 1114 (1), ("Any person who shall . . . use in commerce"), and in Lanham Act § 43(a) (1), 15 U.S.C. § 1125(a) (1), ("Any person who . . . uses in commerce"). As we saw above in Part I.C, the Lanham Act defines "use in commerce" in Lanham Act § 45, 15 U.S.C. § 1127: The term "use in commerce" means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce- (1) on goods when-(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce, and (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services. For advocates of the use as a mark requirement, a defendant can be held liable only if its conduct satisfies the terms of the Lanham Act § 45 definition of "use in commerce." See, e.g., Naked Cowboy, 844 F. Supp. 2d at 515 ("The purchase from YouTube of adword advertising for the term 'naked cowboy' likewise does not constitute 'use in commerce' because Defendants did not place [the 'naked cowboy' term] on any goods or containers or displays or associated documents, nor do they use them in any way to indicate source or sponsorship." (citation omitted)). Critics of use as a mark doctrine make several arguments. First, they argue that there is in fact no statutory basis for it. In their view, the § 45 definition of "use in commerce" describes the kind of "use in commerce" necessary to establish trademark rights rather than the kind of "use in commerce" necessary to infringe those rights. Cf. Rescuecom Corp. v. Google Inc., 562 F.3d 123, 134-39 (2d Cir. 2009) (reviewing the legislative history of the Lanham Act to determine that "Congress did not intend that this definition apply to the sections of the Lanham Act which define infringing conduct," but nevertheless expressing doubt as to whether at least part of the definition should apply to defendants' conduct). Second, if the § 45 definition of "use in commerce" applies to defendants' conduct, then defendants could escape liability by avoiding the conduct described in the definition, for example, by using the accused mark in advertising but not placing the mark on its goods. See Rescuecom, 562 F.3d at 139 ("It is easy to imagine perniciously confusing conduct involving another's mark which does not involve placement of the mark in the manner specified in the definition."). See also Tiffany & Co. v. Costco Wholesale Corp., 971 F.3d 74, 95 (2d Cir. 2020) ("Terms not used as a mark may still generate confusion as to 'affiliation, connection, . . . association [,] . . . sponsorship or approval," § 1125(a)(1)(A), and therefore constitute trademark infringement."). Third and more fundamentally, to determine if a defendant's use qualifies as a "use as a mark," a court must ask: do consumers perceive the defendant's use as a designation of the source of the defendant's goods? But this question comes very close to the question of whether consumers are confused as to source by the defendant's use. The "use as a mark" test purports to be a threshold requirement prior to the fact-intensive confusion inquiry, but in operation, it typically simply begs the question of whether consumers are confused. See McKenna, Trademark Use and the Problem of Source, at 777 ("[P]recisely because trademark use is not separable from consumer understanding, proponents cannot articulate the doctrine without lapsing into claims about likelihood of confusion"). By the 2010s, the "use as a mark" doctrine appeared to have fallen into disfavor and, outside of the Sixth Circuit, it was appearing less and less in case law. Then came two Supreme Court cases, Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023), and Abitron Gmbh v. Hetronic International, Inc., 600 U.S. 412 (2023), which have given new life to the doctrine. We will devote substantial attention to Jack Daniel's below in Part III.C.2, but it is enough to explain here that in Jack Daniel's VIP produced a dog toy mimicking the shape and appearance of a Jack Daniel's whiskey bottle. Jack Daniel's sent a cease-and-desist letter. VIP then sued for a declaratory judgment of non-infringement. VIP argued that its conduct should be analyzed under the Rogers v. Grimaldi test, which, as we will see, is an extremely parodistfriendly test for whether an expressive use of a mark is infringing. The Supreme Court held otherwise. It reasoned that "the Rogers test has applied only to cases involving 'nontrademark uses'-or otherwise said, cases in which 'the defendant has used the mark' at issue in a 'non-source-identifying way.' S. Dogan & M. Lemley, Grounding Trademark Law Through Trademark Use, 92 Iowa L. Rev. 1669, 1684 (2007); see id., at 1683-1684, and n. 58." Jack Daniel's, 590 U.S. at 155. The problem for VIP was that in its complaint seeking declaratory judgment it had asserted trademark rights in the appearance of its dog toy. Id. at 150. More generally, Jack Daniel's now stands for the proposition that for a defendant to benefit from the Rogers v. Grimaldi test, the defendant must not be using the accused expression "as a mark." As explained in Part III.C.2, the "use as a mark" inquiry has now come to play a central role in trademark infringement litigation over unauthorized expressive uses of marks. Abitron then followed Jack Daniel's. Abitron held that the main infringement sections of the Lanham Act ( § § 32(1)(a) & 43(a)(1)) do not apply extraterritorially. In the opinion for the Court, Justice Alito read the Lanham Act § 45 definition of "use in commerce" to apply to the type of conduct necessary to infringe trademark rights. (Recall that this was the definition that most lower courts had recognized applied only to the type of conduct necessary to establish trademark rights.) Thus, Abitron now apparently stands for the proposition that for a defendant to be liable for trademark infringement, its conduct must fulfill the various requirements built in to the definition of "use in commerce" quoted above-including apparently that it be making a "bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark." It is not clear that the Court in Jack Daniel's or Abitron was aware of all the past controversy that has swirled around the doctrines it was resuscitating. Cf. Lerner & Rowe PC v. Brown Engstrand & Shely LLC, 119 F.4th 711, 727 (9th Cir. 2024) (Desai, J., concurring) (fully aware of the past controversy but urging the Ninth Circuit "to reconsider whether keyword bidding and purchasing constitutes a 'use in commerce' under the Lanham Act. Our binding precedent says it does, Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137, 1144-45 (9th Cir. 2011), but I am not convinced that we got it right or that our holding withstands the test of time and recent advancements in technology."). In conclusion: first, it is worth remembering that in the vast majority of trademark cases, it is obvious that the defendant is making a "use as a mark" of its accused designation, so the "use as a mark" doctrine plays no significant role and typically is not even referenced. But second, in a small subset of fact patterns-involving, for example, parodic or other expressive uses, keyword advertising, uses in computer code, and uses outside of the United States-"use as a mark" or "use in commerce" doctrine may play a role. In these situations, the defendant may seek to show that its conduct is a "non-trademark use" or does not constitute "use in commerce" as that term is defined in Lanham Act § 45. 1. The leading advocates of the use as a mark requirement, Professors Stacey Dogan and Mark Lemley, argue that the doctrine serves a crucial limiting function: The speech-oriented objectives of the trademark use doctrine protect more than just intermediaries; they prevent trademark holders from asserting a generalized right to control language, an interest that applies equally-and sometimes especially-when the speaker competes directly with the trademark holder. The trademark use doctrine has broad application-because of it, newspapers aren't liable for using a trademarked term in a headline, even if the use is confusing or misleading. Writers of movies and books aren't liable for using trademarked goods in their stories. Makers of telephone directories aren't liable for putting all the ads for taxi services together on the same page. Marketing surveyors aren't liable for asking people what they think of a competitor's brand-name product. Magazines aren't liable for selling advertisements that relate to the content of their special issues, even when that content involves trademark owners. Gas stations and restaurants aren't liable for locating across the street from an established competitor, trading on the attraction the established company has created or benefiting from the size of the sign the established company has put up. Individuals aren't liable for their use of a trademark in conversation, even in an inaccurate or misleading way (referring to a Puffs brand facial tissue as a "Kleenex," or a competing cola as a "Coke," for example). Generic drug manufacturers aren't liable for placing their drugs near their brand-name equivalents on drug store shelves, and the stores aren't liable for accepting the placement. They may be making money from their "uses" of the trademark, and the uses may be ones the trademark owner objects to, but they are not trademark uses and therefore are not within the ambit of the statute. Dogan & Lemley, Trademarks and Consumer Search Costs, supra, at 809. What is your intuition as to what drives non-liability in the scenarios Dogan & Lemley set out? Are the potential defendants not liable because, as a formal matter, they do not use the mark "as a mark" or because, as an empirical matter, their use would simply not cause confusion as to source? At the same time, however, in scenarios like Rupp v. Courier Journal, isn't it sensible to provide defendants with an efficient means of getting abusive and speech-chilling infringement claims dismissed before they reach the likelihood of confusion analysis? The overriding question in most federal trademark infringement litigation is a simple one: is the defendant's trademark, because of its similarity to the plaintiff's trademark, causing or likely to cause consumer confusion as to the source or sponsorship of the defendant's goods? Each of the circuits requires that, in answering this question, the district court conduct a multifactor analysis of the likelihood of consumer confusion according to the factors set out by that circuit. As the Seventh Circuit has explained, the multifactor test operates "as a heuristic device to assist in determining whether confusion exists." Sullivan v. CBS Corp., 385 F.3d 772, 778 (7th Cir. 2004). In Section II.B.1, we will briefly review the peculiar history of the multifactor test approach to the likelihood of confusion (or "LOC") question. In Section II.B.2, we will focus on a particularly rich application of the multifactor test in Virgin Enterprises Ltd. v. Nawab, 335 F.3d 141 (2d Cir. 2003). Section II.B.4 will address the use of survey evidence in the LOC context. Sections II.B.5 through II.B.9 will address various modes of consumer confusion such as "sponsorship or affiliation" confusion, "initial interest" confusion, "post-sale" confusion, and "reverse" confusion. Section II.B.10 will return briefly to the Lanham Act § 2(d) bar to registration of a mark that is confusingly-similar to a previously registered mark. In the following opinion, Borden Ice Cream Co. v. Borden's Condensed Milk Co., 201 F. 510 (7th Cir. 1912), the appellee Borden Condensed Milk Co. was the well-known manufacturer of, among other things, milk products under the trademark BORDEN. However, the only ice cream appellee had ever made was a specialized product made from malted milk and sold only to hospitals. The appellant Borden Ice Cream Co. commenced use of the BORDEN mark for ice cream -after finding someone named Borden to join its application for a corporate charter in Illinois. Under current trademark law, this would be a clear case of trademark infringement. As you will see, the Borden Ice Cream court saw things differently at the time. [3] On May 31, 1899, the appellee was incorporated under the laws of the state of New Jersey, with broad corporate powers, and specifically authorized 'to manufacture, sell and otherwise deal in condensed, preserved and evaporated milk and all other manufactured forms of milk; to produce, purchase and sell fresh milk, and all products of milk; to manufacture, purchase and sell all food products; to raise, purchase and sell all garden, farm and dairy products; to raise, purchase and sell, and otherwise deal in, cattle and all other live stock; to manufacture, lease, purchase and sell all machinery, tools, implements, apparatus and all other articles and appliances used in connection with all or any of the purposes aforesaid, or with selling and transporting the manufactured or other products of the company; and to do any and all things connected with or incidental to the carrying on of such business, or any branch or part thereof.' [4] It may be stated in this connection that the charter of the company contains no express authority to manufacture or sell what is known commercially as ice cream. . . . . [5] Appellee has developed in the state of Illinois and the city of Chicago, and elsewhere, a large business in the sale of fresh milk and cream and evaporated milk to confectioners for use by them in making commercial ice cream. It has expended large sums of money in promoting and advertising its business, and particularly in extending the sale of the so-called 'Borden's Peerless Brand Evaporated Milk, Confectioners' Size,' a high quality of evaporated milk inclosed [sic] in cans, especially designed for use in the manufacture of ice cream. [6] For more than two years prior to the filing of the bill in the District Court, the appellee had been manufacturing a form of ice cream known as 'Borden's Malted Milk Ice Cream,' which product is, as the name implies, an ice cream made with malted milk as its basic element, and is especially adapted for use in hospitals. This malted milk ice cream, which hitherto has been used only in hospitals, the appellee is about to place on the market for general use in competition with commercial ice cream. [7] On May 25, 1911, the appellants Charles F. Borden, George W. Brown, and Edgar V. Stanley applied to the Secretary of State of the state of Illinois for a license to incorporate under the name of 'Borden Ice Cream Company.' On July 31, 1911, the appellee notified the individual appellants that the term 'Borden' had become so firmly established in connection with the products of the appellee the use of that word in connection with any company dealing in milk products would lead to the presumption that they were the products of the appellee, and demanded that the word 'Borden' be eliminated from appellants' company name. [8] On the same day appellee protested to the Secretary of State of the state of Illinois against the issuance of any charter under the name of 'Borden Ice Cream Company,' but on the 16th of August, 1911, a charter was duly issued to the 'Borden Ice Cream Company,' by which it was authorized 'to manufacture and sell ice cream, ices and similar products.' [9] The appellant Charles F. Borden had never before been engaged in the ice cream business, or in buying or selling milk or milk products, or in any similar business, and is not the principal person connected with the appellant Borden Ice Cream Company. The appellant Lawler is an ice cream manufacturer, and has subscribed to 47 out of a total of 50 shares of stock of the Borden Ice Cream Company. Charles F. Borden has subscribed to one share of stock, and has not paid for that. [10] The bill charges, upon information and belief, that it is the intention of appellant Borden Ice Cream Company to use the word 'Borden' for the purpose of trading upon the reputation of appellee's goods and products, and for the purpose of deceiving and defrauding the public into the belief that such product is the product of the appellee; that such 'improper, deceitful and fraudulent use of the name 'Borden' will be a great and irreparable injury to the complainant's (appellee's) property right in its trade-name; and that the reputation of the products of complainant (appellee) will be greatly injured thereby; and that the business of complainant (appellee) will be injured;' and that there will be great confusion in the business carried on by the original company because of such improper use; and that it will be impossible for present and prospective customers to know that the product of the Borden Ice Cream Company is not the product of Borden's Condensed Milk Company. [11] The bill and the affidavits on file do not show any facts tending to sustain the allegation of irreparable injury to the old company or its business, or showing or tending to show that the old company has been or will be injured in any way in the business which it is now engaged in. Moreover, it does not appear that the malted milk ice cream manufactured by the old company will in any way come into competition with the commercial ice cream proposed to be put on the market by the new company. [12] The bill was filed before the defendant had started to do any business. The answer admits most of the material allegations, but denies all fraudulent purpose. CARPENTER, District Judge (after stating the facts as above). [13] A personal name, such as 'Borden,' is not susceptible of exclusive appropriation, and even its registration in the Patent Office cannot make it a valid trade-mark. [14] There is no charge made in the bill that the appellants are infringing, or propose to infringe, upon any technical trade-mark of the appellee, so we may dismiss any claim for relief upon that score. [15] The only theory upon which the injunction in this case can be sustained is upon that known as unfair competition. Relief against unfair competition is granted solely upon the ground that one who has built up a good will and reputation for his goods or business is entitled to all of the resultant benefits. Good will or business popularity is property, and, like other property, will be protected against fraudulent invasion. . . . . [16] It has been said that the universal test question in cases of this class is whether the public is likely to be deceived as to the maker or seller of the goods. This, in our opinion, is not the fundamental question. The deception of the public naturally tends to injure the proprietor of a business by diverting his customers and depriving him of sales which otherwise he might have made. This, rather than the protection of the public against imposition, is the sound and true basis for the private remedy. That the public is deceived may be evidence of the fact that the original proprietor's rights are being invaded. If, however, the rights of the original proprietor are in no wise interfered with, the deception of the public is no concern of a court of chancery. American Washboard Co. v. Saginaw Mfg. Co., 103 Fed. 281. [17] Doubtless it is morally wrong for a person to proclaim, or even intimate, that his goods are manufactured by some other and well-known concern; but this does not give rise to a private right of action, unless the property rights of that concern are interfered with. The use by the new company of the name 'Borden' may have been with fraudulent intent; and, even assuming that it was, the trial court had no right to interfere, unless the property rights of the old company were jeopardized. Nothing else being shown, a court of equity cannot punish an unorthodox or immoral, or even dishonest, trader; it cannot enforce as such the police power of the state. [18] In the case now under our consideration the old company (the appellee) never has manufactured what is known as commercial ice cream. The new company (the appellant) was incorporated for the sole purpose of manufacturing and putting on the market such an article. . . . . [19] The secondary meaning of a name . . . has no legal significance, unless the two persons make or deal in the same kind of goods. Clearly the appellants here could make gloves, or plows, or cutlery, under the name 'Borden' without infringing upon any property right of the old company. If that is true, they can make anything under the name 'Borden' which the appellee has not already made and offered to the public. George v. Smith (C.C.) 52 Fed. 830. [20] The name 'Borden,' until appellants came into the field, never had been associated with commercial ice cream. By making commercial ice cream the appellants do not come into competition with the appellee. In the absence of competition, the old company cannot assert the rights accruing from what has been designated as the secondary meaning of the word 'Borden.' The phrase 'unfair competition' presupposes competition of some sort. In the absence of competition the doctrine cannot be invoked. [21] There being no competition between the appellants and appellee, we are confronted with the proposition that the appellee, in order to succeed on this appeal, has and can enforce a proprietary right to the name 'Borden' in any kind of business, to the exclusion of all the world. [22] It is urged that appellee has power, under its charter, to make commercial ice cream, and that it intends some day to do so. If such intention can be protected at this time, it might well be that appellee, having enjoined appellants from making commercial ice cream, would rest content with selling its evaporated milk to ice cream dealers, and never itself manufacture the finished product. But, as was well stated by Judge Coxe, in George v. Smith, supra: 'It is the party who uses it first as a brand for his goods, and builds up a business under it, who is entitled to protection, and not the one who first thought of using it on similar goods, but did not use it. The law deals with acts and not intentions.' [23] Appellee also urges that it makes and sells large quantities of evaporated or condensed milk to manufacturers of ice cream, and that if the appellants are permitted to use the name 'Borden' in the ice cream business dealers probably will believe that its ice cream is made by appellee, and will in consequence buy the finished product rather than the component parts, and that appellee's sales of evaporated or condensed milk will fall off, to its manifest damage. Such result would be too speculative and remote to form the basis of an order restraining men from using in their business any personal name, especially their own. [24] Appellee is in this position: If it bases its right to an injunction upon the doctrine of unfair competition, no competition of any kind has been shown by the record. If it relies upon some supposed damage which may result from appellants' use of the name 'Borden' in connection with inferior goods, the action is premature, because the appellants, as yet, have neither sold nor made anything. [25] The order of the District Court must be reversed; and it is so ordered. The idiosyncrasies of tradition rather than of reason drove the development of the multifactor tests across the circuits. Each of the circuits' current multifactor tests originated either directly or indirectly from the 1938 Restatement (First) of the Law of Torts. The Restatement (First) failed to set forth a single, unified multifactor test for trademark infringement. Instead, it proposed four factors that courts should consider in all cases and nine more factors that courts should additionally consider only when the parties' goods were noncompeting with each other, i.e., not substitutable for each other. Section 729 of the Restatement (First) set out the four factors courts should always consider: In determining whether the actor's designation is confusingly similar to the other's trade-mark or trade name, the following factors are important: (a) the degree of similarity between the designation and the trade-mark or trade name in (i) appearance; (iii) verbal translation of the pictures or designs involved; (b) the intent of the actor in adopting the designation; (c) the relation in use and manner of marketing between the goods or services marketed by the actor and those marketed by the other; (d) the degree of care likely to be exercised by purchasers. RESTATEMENT FIRST OF TORTS § 729 (1939). Section 731 set out the additional nine factors that courts should additionally consider only in cases involving noncompetitive goods: In determining whether one's interest in a trade-mark or trade name is protected, under the rules stated in § § 717 and 730, with reference to the goods, services or business in connection with which the actor uses his designation, the following factors are important: (a) the likelihood that the actor's goods, services or business will be mistaken for those of the other; (b) the likelihood that the other may expand his business so as to compete with the actor; (c) the extent to which the goods or services of the actor and those of the other have common purchasers or users; (d) the extent to which the goods or services of the actor and those of the other are marketed through the same channels; (e) the relation between the functions of the goods or services of the actor and those of the other; (f) the degree of distinctiveness of the trademark or trade name; (g) the degree of attention usually given to trade symbols in the purchase of goods or services of the actor and those of the other; (h) the length of time during which the actor has used the designation; (i) the intent of the actor in adopting and using the designation. Through the course of the mid-twentieth century, the federal courts lost track of the distinction between the two sets of factors, and the circuits each began to use a single, unified multifactor test regardless of whether the parties' goods were competing. Each circuit developed its own test, and for the most part, the peculiarities of the particular cases in which the circuit's multifactor test first coalesced determined which factors are still considered in that circuit today. A good example of this is found in the following opinion, Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 402 (2d Cir. 1961), which is the origin of the Second Circuit's "Polaroid factors." Despite Judge Friendly's clear statement that his test was meant for situations "[w]here the products are different," id. at 495, Second Circuit courts routinely apply the Polaroid factors in competing goods cases. The opinion is presented here primarily for its historical significance as one of the most influential opinions in U.S. trademark law, but also to show, in the final paragraph of the opinion excerpt, how much trademark infringement doctrine had evolved since Borden's Ice Cream. [1] Plaintiff, Polaroid Corporation, a Delaware corporation, owner of the trademark Polaroid and holder of 22 United States registrations thereof granted between 1936 and 1956 and of a New York registration granted in 1950, brought this action in the Eastern District of New York, alleging that defendant's use of the name Polarad as a trademark and as part of defendant's corporate title infringed plaintiff's Federal and state trademarks and constituted unfair competition. It sought a broad injunction and an accounting. Defendant's answer, in addition to denying the allegations of the complaint, sought a declaratory judgment establishing defendant's right to use Polarad in the business in which defendant was engaged, an injunction against plaintiff's use of Polaroid in the television and electronics fields, and other relief. Judge Rayfiel, in an opinion reported in D.C. 1960, 182 F.Supp. 350, dismissed both the claim and the counterclaims, concluding that neither plaintiff nor defendant had made an adequate showing with respect to confusion and that both had been guilty of laches. Both parties appealed but defendant has withdrawn its cross-appeal. We find it unnecessary to pass upon Judge Rayfiel's conclusion that defendant's use of Polarad does not violate any of plaintiff's rights. For we agree that plaintiff's delay in proceeding against defendant bars plaintiff from relief so long as defendant's use of Polarad remains as far removed from plaintiff's primary fields of activity as it has been and still is. . . . . [2] Conceding that the bulk of its business is in optics and photography, lines not pursued by defendant, plaintiff nevertheless claims to be entitled to protection of its distinctive mark in at least certain portions of the large field of electronics. Plaintiff relies on its sales of Schmidt corrector plates, used in certain types of television systems, first under government contracts beginning in 1943 and to industry commencing in 1945; on its sale, since 1946, of polarizing television filters, which serve the same function as the color filters that defendant supplies as a part of the television apparatus sold by it; and, particularly, on the research and development contracts with the government referred to above. Plaintiff relies also on certain instances of confusion, predominantly communications intended for defendant but directed to plaintiff. Against this, defendant asserts that its business is the sale of complex electronics equipment {consisting of microwave devices and television studio equipment} to a relatively few customers; that this does not compete in any significant way with plaintiff's business, the bulk of which is now in articles destined for the ultimate consumer; that plaintiff's excursions into electronics are insignificant in the light of the size of the field; that the instances of confusion are minimal; that there is no evidence that plaintiff has suffered either through loss of customers or injury to reputation, since defendant has conducted its business with high standards; and that the very nature of defendant's business, sales to experienced industrial users and the government, precludes any substantial possibility of confusion. Defendant also asserts plaintiff's laches to be a bar. [3] The problem of determining how far a valid trademark shall be protected with respect to goods other than those to which its owner has applied it, has long been vexing and does not become easier of solution with the years. Neither of our recent decisions so heavily relied upon by the parties, Harold F. Ritchie, Inc. v. Chesebrough-Pond's, Inc., 2 Cir., 1960, 281 F.2d 755, by plaintiff, and Avon Shoe Co., Inc. v. David Crystal, Inc., 2 Cir., 1960, 279 F.2d 607 by defendant, affords much assistance, since in the Ritchie case there was confusion as to the identical product and the defendant in the Avon case had adopted its mark 'without knowledge of the plaintiffs' prior use,' at page 611. Where the products are different, the prior owner's chance of success is a function of many variables: the strength of his mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of defendant's good faith in adopting its own mark, the quality of defendant's product, and the sophistication of the buyers. Even this extensive catalogue does not exhaust the possibilities-the court may have to take still other variables into account. American Law Institute, Restatement of Torts, § § 729, 730, 731. Here plaintiff's mark is a strong one and the similarity between the two names is great, but the evidence of actual confusion, when analyzed, is not impressive. The filter seems to be the only case where defendant has sold, but not manufactured, a product serving a function similar to any of plaintiff's, and plaintiff's sales of this item have been highly irregular, varying, e.g., from $2,300 in 1953 to $303,000 in 1955, and $48,000 in 1956. [4] If defendant's sole business were the manufacture and sale of microwave equipment, we should have little difficulty in approving the District Court's conclusion that there was no such likelihood of confusion as to bring into play either the Lanham Act, 15 U.S.C.A. § 1114 (1), or New York General Business Law, § 368-b, or to make out a case of unfair competition under New York decisional law, see Avon Shoe Co. v. David Crystal, Inc., supra, at page 614, footnote 11. What gives us some pause is defendant's heavy involvement in a phase of electronics that lies closer to plaintiff's business, namely, television. Defendant makes much of the testimony of plaintiff's executive vice president that plaintiff's normal business is 'the interaction of light and matter.' Yet, although television lies predominantly in the area of electronics, it begins and ends with light waves. {The court went on to reject the plaintiff's attempts to overcome the defendant's defense of laches.} There is no statute of limitations provision in the Lanham Act. Federal courts instead recognize the equitable defense of laches, which will bar a plaintiff's claim if the plaintiff unreasonably delayed asserting the claim resulting in significant prejudice to the defendant. Courts may look to the analogous state statute of limitations period in the forum state to determine who bears the initial burden of proof in establishing laches. See, e.g., Conopco Inc. v. Campbell Soup Co., 95 F.3d 187, 191 (2d Cir. 1996). Gilson explains: "The {state law} limitations period is often used to shift the initial burden of proof for the laches defense. If the case was filed within the relevant statute of limitations, the burden will be on the defendant to show that laches applies, but if the case was filed after the limitations period expired, then the burden will be on the plaintiff to show why it would be inequitable to apply laches." However, it has of recent years been recognized that a merchant may have a sufficient economic interest in the use of his mark outside the field of his own exploitation to justify interposition by a court. His mark is his authentic seal; by it he vouches for the goods which bear it; it carries his name for good or ill. If another uses it, he borrows the owner's reputation, whose quality no longer lies within his own control. This is an injury, even though the borrower does not tarnish it, or divert any sales by its use; for a reputation, like a face, is the symbol of its possessor and creator, and another can use it only as a mask. And so it has come to be recognized that, unless the borrower's use is so foreign to the owner's as to insure against any identification of the two, it is unlawful. Id. at 974. If the defendant's conduct "does not tarnish [the plaintiff's reputation], or divert any sales by its use," then what exactly is the harm to the plaintiff? Each circuit has developed its own multifactor test for the likelihood of consumer confusion. Here are the multifactor tests from certain leading circuits. As you will see, they are roughly similar: • The Second Circuit's "Polaroid factors": Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961) ("Where the products are different, the prior owner's chance of success is a function of many variables: the strength of his mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of defendant's good faith in adopting its own mark, the quality of defendant's product, and the sophistication of the buyers. Even this extensive catalogue does not exhaust the possibilities-the court may have to take still other variables into account. American Law Institute, Restatement of Torts, § § 729, 730, 731."). In Virgin Enterprises Ltd. v. Nawab, 335 F.3d 141 (2d Cir. 2003), the Second Circuit applied its Polaroid test to determine if consumers would likely mistake the goods and services of the defendant, operating under the mark VIRGIN WIRELESS, for those of the plaintiff, the owner of the VIRGIN mark for a wide variety of goods and services. The opinion is exceptional for its thorough analysis of the factors. In reading through Virgin Enterprises, consider the following questions: • Which of the Polaroid factors are likely the most important to courts' adjudication of the likelihood of confusion question? • In practice, is intent likely as unimportant to courts' determinations as the Virgin Enterprises opinion suggests? • Why should strong marks receive a wider scope of protection than weak marks? • Why should inherent strength be more important to the multifactor inquiry than acquired strength? Relatedly, why should fanciful marks receive a wider scope of protection than arbitrary or suggestive marks? • Does the court make any basic mistakes of doctrine in its discussion of the Abercrombie spectrum? LEVAL, Circuit Judge. [1] Plaintiff Virgin Enterprises Limited ("VEL" or "plaintiff") appeals from the denial of its motion for a preliminary injunction. This suit, brought under § 32 of the Lanham Act, 15 U.S.C. § 1114(1), alleges that defendants infringed plaintiff's rights in the registered mark VIRGIN by operating retail stores selling wireless telephones and related accessories and services under the trade name VIRGIN WIRELESS. The United States District Court for the Eastern District of New York (Sifton, J.) denied plaintiff's motion for a preliminary injunction, based upon its finding that plaintiff's registration did not cover the retail sale of wireless telephones and related products, and that plaintiff failed to show a likelihood of consumer confusion. BACKGROUND [2] Plaintiff VEL, a corporation with its principal place of business in London, owns U.S. Registration No. 1,851,817 ("the 817 Registration"), filed on May 5, 1991, and registered on August 30, 1994, for the VIRGIN mark as applied to "retail store services in the fields of . . . computers and electronic apparatus " (emphasis added). . . . Plaintiff also owns U.S. Registration No. 1,852,776 ("the 776 Registration"), filed on May 9, 1991, and registered on September 6, 1994, for a stylized version of the VIRGIN mark for use in connection with "retail store services in the fields of . . . computers and electronic apparatus," and U.S. Registration No. 1,863,353 ("the 353 Registration"), filed on May 19, 1992, and registered on November 15, 1994, for the VIRGIN MEGASTORE mark. It is undisputed that these three registrations have become incontestable pursuant to 15 U.S.C. § 1065. [3] VEL, either directly or through corporate affiliates, operates various businesses worldwide under the trade name VIRGIN, including an airline, large-scale record stores called Virgin Megastores, and an internet information service. Plaintiff or its affiliates also market a variety of goods branded with the VIRGIN name, including music recordings, computer games, books, and luggage. Three of plaintiff's megastores are located in the New York area. According to an affidavit submitted to the district court in support of plaintiff's application for preliminary injunction, Virgin Megastores sell a variety of electronic apparatus, including video game systems, portable CD players, disposable cameras, and DVD players. These stores advertise in a variety of media, including radio. [4] Defendants Simon Blitz and Daniel Gazal are the sole shareholders of defendants Cel-Net Communications, Inc. ("Cel-Net"); The Cellular Network Communications, Inc., doing business as CNCG ("CNCG"); and SD Telecommunications, Inc. ("SD Telecom"). Blitz and Gazal formed Cel-Net in 1993 to sell retail wireless telephones and services in the New York area. Later, they formed CNCG to sell wireless phones and services on the wholesale level. CNCG now sells wireless phones and services to more than 400 independent wireless retailers. In 1998, Cel-Net received permission from New York State regulators to resell telephone services within the state. [5] Around 1999, Andrew Kastein, a vice-president of CNCG, began to develop a Cel-Net brand of wireless telecommunications products. In early 1999, Cel-Net entered into negotiations with the Sprint PCS network to provide telecommunications services for resale by Cel-Net. In August 1999, Cel-Net retained the law firm Pennie & Edmonds to determine the availability of possible service marks for Cel-Net. Pennie & Edmonds associate Elizabeth Langston researched for Kastein a list of possible service marks; among the marks Cel-Net asked to have researched was VIRGIN. Defendants claim that Langston told Cel-Net officer Simon Corney that VIRGIN was available for use in the telecommunications field. Plaintiff disputed this, offering an affidavit from Langston that she informed defendants that she would not search the VIRGIN mark because her firm represented plaintiff. [6] According to defendants, in December 1999, Cel-Net retained Corporate Solutions, LLC and its principals Nathan Erlich and Tahir Nawab as joint venture partners to help raise capital to launch Cel-Net's wireless telephone service. On December 2, 1999, Erlich and Nawab filed four intent-to-use applications with the U.S. Patent and Trademark Office ("PTO") to register the marks VIRGIN WIRELESS, VIRGIN MOBILE, VIRGIN COMMUNICATIONS, and VIRGIN NET in the field of telecommunications services, class 38. On December 24, 1999, Corporate Solutions incorporated defendant Virgin Wireless, Inc. ("VWI") and licensed to VWI the right to use the marks VIRGIN WIRELESS and VIRGIN MOBILE. Meanwhile, one of plaintiff's affiliates had begun to offer wireless telecommunication services bearing the VIRGIN mark in the United Kingdom. A press release dated November 19, 1999, found on plaintiff's website, stated that its Virgin Mobile wireless services were operable in the United States. [7] On June 23, 2000, defendant Blitz signed a lease under the name Virgin Wireless for a kiosk location in South Shore Mall in Long Island from which to re-sell AT&T wireless services, telephones, and accessories under the retail name Virgin Wireless. Defendants Cel-Net and VWI later expanded their telecommunications re-sale operations to include two retail stores and four additional retail kiosks in malls in the New York area and in Pennsylvania. All of these stores have been run by VWI under the trade name VIRGIN WIRELESS. VWI also has leases and bank accounts in its name, and has shown evidence of actual retail transactions and newspaper advertisements. [8] In August 2000, plaintiff licensed Virgin Mobile USA, LLC, to use the VIRGIN mark for wireless telecommunications services in the United States. On August 10, 2000, plaintiff filed an intent-to-use application with the PTO for use of the VIRGIN mark in the United States on telecommunications services and mobile telephones. On October 11, 2001, the PTO suspended this mark's registration in international class 9, which covers wireless telephones, and class 38, which covers telecommunications services, because the VIRGIN mark was already reserved by a prior filing, presumably defendants'. On August 16, 2001, plaintiff filed another intent-to-use application for the mark VIRGIN MOBILE to brand telecommunications services. The PTO issued a non-final action letter for both of plaintiff's pending new registrations on October 31, 2001, which stated that defendant Corporation Solutions' pending applications for similar marks in the same class could give rise to "a likelihood of confusion." The PTO suspended action on plaintiff's application pending the processing of Corporation Solutions' applications. [9] In October 2001, plaintiff issued a press release announcing that it was offering wireless telecommunications services and mobile telephones in the United States. [10] Plaintiff became aware of Corporation Solutions' application for registration of the VIRGIN WIRELESS and VIRGIN MOBILE marks by May 2000. In October 2001 and December 2001, defendant VWI filed suits against plaintiff in the federal district courts in Arizona and Delaware, alleging that plaintiff was using VWI's mark. Plaintiff maintains (and the district court found) that it learned in January 2002 that VWI and Cel-Net were operating kiosks under the VIRGIN WIRELESS name and two days later filed the present suit seeking to enjoin defendants from selling mobile phones in VIRGIN-branded retail stores. [11] On May 2, 2002, the district court considered plaintiff's application for a preliminary injunction. It found that no essential facts were in dispute, and therefore no evidentiary hearing was required. It was uncontested (and the district court accordingly found) that plaintiff sold "electronic apparatus" in its stores, including "various video game systems, portable cassette tape, compact disc, mp3, and mini disc players, portable radios, and disposable cameras," but not including telephones or telephone service, and that the only products the defendants sold in their stores were wireless telephones, telephone accessories, and wireless telephone services . . . . [12] Arguing against plaintiff's likelihood of success, the court noted that plaintiff's registrations did not claim use of the VIRGIN mark "in telecommunications services or in the associated retail sale of wireless telephones and accessories." While plaintiff's 817 and 776 Registrations covered the retail sale of "computers and electronic apparatus," they did not extend to telecommunications services and wireless phones. [13] The court noted that the defendants were the first to use the VIRGIN mark in telecommunications, and the first to attempt to register VIRGIN for telecommunications and retail telephone sales . . . . [14] A claim of trademark infringement, whether brought under 15 U.S.C. § 1114(1) (for infringement of a registered mark) or 15 U.S.C. § 1125(a) (for infringement of rights in a mark acquired by use), is analyzed under the familiar two-prong test described in Gruner + Jahr USA Publ'g v. Meredith Corp., 991 F.2d 1072 (2d Cir. 1993). See Time, Inc. v. Petersen Publ'g Co. L.L.C., 173 F.3d 113, 117 (2d Cir. 1999) (noting that Gruner test is applicable to claims brought under § 1114(1) and § 1125(a)). The test looks first to whether the plaintiff's mark is entitled to protection, and second to whether defendant's use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant's goods. Gruner, 991 F.2d at 1074. Examining the question as the test dictates, we have no doubt that plaintiff was entitled to a preliminary injunction. [15] We believe the district court accorded plaintiff too narrow a scope of protection for its famous, arbitrary, and distinctive mark. There could be no dispute that plaintiff prevailed as to the first prong of the test-prior use and ownership. For years, plaintiff had used the VIRGIN mark on huge, famous stores selling, in addition to music recordings, a variety of consumer electronic equipment. At the time the defendants began using VIRGIN, plaintiff owned rights in the mark. The focus of inquiry thus turns to the second prong of the testwhether defendants' use of VIRGIN as a mark for stores selling wireless telephone services and phones was likely to cause confusion. There can be little doubt that such confusion was likely. [16] The landmark case of Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961) (Friendly, J.), outlined a series of nonexclusive factors likely to be pertinent in addressing the issue of likelihood of confusion, which are routinely followed in such cases. . . [17] Six of the Polaroid factors relate directly to the likelihood of consumer confusion. These are the strength of the plaintiff's mark; the similarity of defendants' mark to plaintiff's; the proximity of the products sold under defendants' mark to those sold under plaintiff's; where the products are different, the likelihood that plaintiff will bridge the gap by selling the products being sold by defendants; the existence of actual confusion among consumers; and the sophistication of consumers. Of these six, all but the last (which was found by the district court to be neutral) strongly favor the plaintiff. The remaining two Polaroid factors, defendants' good or bad faith and the quality of defendants' products, are more pertinent to issues other than likelihood of confusion, such as harm to plaintiff's reputation and choice of remedy. We conclude that the Polaroid factors powerfully support plaintiff's position. [18] Strength of the mark. The strength of a trademark encompasses two different concepts, both of which relate significantly to likelihood of consumer confusion. The first and most important is inherent strength, also called "inherent distinctiveness." This inquiry distinguishes between, on the one hand, inherently distinctive marks-marks that are arbitrary or fanciful in relation to the products (or services) on which they are used-and, on the other hand, marks that are generic, descriptive or suggestive as to those goods. The former are the strong marks. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). The second sense of the concept of strength of a mark is "acquired distinctiveness," i.e., fame, or the extent to which prominent use of the mark in commerce has resulted in a high degree of consumer recognition. See TCPIP Holding Co. v. Haar Communications Inc., 244 F.3d 88, 100 (2d Cir. 2001) (describing these two concepts of strength). [19] Considering first inherent distinctiveness, the law accords broad, muscular protection to marks that are arbitrary or fanciful in relation to the products on which they are used, and lesser protection, or no protection at all, to marks consisting of words that identify or describe the goods or their attributes. The reasons for the distinction arise from two aspects of market efficiency. The paramount objective of the trademark law is to avoid confusion in the marketplace. The purpose for which the trademark law accords merchants the exclusive right to the use of a name or symbol in their area or commerce is identification, so that the merchants can establish goodwill for their goods based on past satisfactory performance, and the consuming public can rely on a mark as a guarantee that the goods or services so marked come from the merchant who has been found to be satisfactory in the past. Cir. 1979). At the same time, efficiency and the public interest require that every merchant trading in a class of goods be permitted to refer to the goods by their name, and to make claims about their quality. Thus, a merchant who sells pencils under the trademark Pencil or Clear Mark, for example, and seeks to exclude other sellers of pencils from using those words in their trade, is seeking an advantage the trademark law does not intend to offer. To grant such exclusivity would deprive the consuming public of the useful market information it receives where every seller of pencils is free to call them pencils. Abercrombie, 537 F.2d at 9; CES Publ'g Corp. v. St. Regis Publ'ns, Inc., 531 F.2d 11, 13 (2d Cir. 1975). The trademark right does not protect the exclusive right to an advertising messageonly the exclusive right to an identifier, to protect against confusion in the marketplace. Thus, as a matter of policy, the trademark law accords broader protection to marks that serve exclusively as identifiers and lesser protection where a grant of exclusiveness would tend to diminish the access of others to the full range of discourse relating to their goods. See TCPIP, 244 F.3d at 100; Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 215 (2d Cir. 1999); Otokoyama Co. Ltd. v. Wine of Japan Import, Inc., 175 F.3d 266, 270 (2d Cir. 1999). [20] The second aspect of efficiency that justifies according broader protection to marks that are inherently distinctive relates directly to the likelihood of confusion. If a mark is arbitrary or fanciful, and makes no reference to the nature of the goods it designates, consumers who see the mark on different objects offered in the marketplace will be likely to assume, because of the arbitrariness of the choice of mark, that they all come from the same source. For example, if consumers become familiar with a toothpaste sold under an unusual, arbitrary brand name, such as ZzaaqQ, and later see that same inherently distinctive brand name appearing on a different product, they are likely to assume, notwithstanding the product difference, that the second product comes from the same producer as the first. The more unusual, arbitrary, and fanciful a trade name, the more unlikely it is that two independent entities would have chosen it. In contrast, every seller of foods has an interest in calling its product "delicious." Consumers who see the word delicious used on two or more different food products are less likely to draw the inference that they must all come from the same producer. Cf. Streetwise Maps, 159 F.3d at 744 (noting that several map producers use "street" in product names; thus plaintiff's mark using "street" was not particularly distinctive); W. Publ'g, 910 F.2d at 61 (noting numerous registrations of marks using word "golden"). In short, the more distinctive the mark, the greater the likelihood that the public, seeing it used a second time, will assume that the second use comes from the same source as the first. The goal of avoiding consumer confusion thus dictates that the inherently distinctive, arbitrary, or fanciful marks, i.e., strong marks, receive broader protection than weak marks, those that are descriptive or suggestive of the products on which they are used. See Abercrombie, 537 F.2d at 9-11; TCPIP, 244 F.3d at 100-01. [21] The second sense of trademark strength, fame, or "acquired distinctiveness," also bears on consumer confusion. See TCPIP, 244 F.3d at 100-01; Streetwise Maps, 159 F.3d at 744. If a mark has been long, prominently and notoriously used in commerce, there is a high likelihood that consumers will recognize it from its prior use. Widespread consumer recognition of a mark previously used in commerce increases the likelihood that consumers will assume it identifies the previously familiar user, and therefore increases the likelihood of consumer confusion if the new user is in fact not related to the first. See Nabisco, 191 F.3d at 216-17. A mark's fame also gives unscrupulous traders an incentive to seek to create consumer confusion by associating themselves in consumers' minds with a famous mark. The added likelihood of consumer confusion resulting from a second user's use of a famous mark gives reason for according such a famous mark a broader scope of protection, at least when it is also inherently distinctive. See McGregor, 599 F.2d at 1132 (noting that secondary meaning may further enlarge the scope of protection accorded to inherently distinctive marks). [22] Plaintiff's VIRGIN mark undoubtedly scored high on both concepts of strength. In relation to the sale of consumer electronic equipment, the VIRGIN mark is inherently distinctive, in that it is arbitrary and fanciful; the word "virgin" has no intrinsic relationship whatsoever to selling such equipment. Because there is no intrinsic reason for a merchant to use the word "virgin" in the sale of consumer electronic equipment, a consumer seeing VIRGIN used in two different stores selling such equipment will likely assume that the stores are related. [23] Plaintiff's VIRGIN mark was also famous. The mark had been employed with worldwide recognition as the mark of an airline and as the mark for megastores selling music recordings and consumer electronic equipment. The fame of the mark increased the likelihood that consumers seeing defendants' shops selling telephones under the mark VIRGIN would assume incorrectly that defendants' shops were a part of plaintiff's organization. See Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 873 (2d Cir. [24] There can be no doubt that plaintiff's VIRGIN mark, as used on consumer electronic equipment, is a strong mark, as the district court found. It is entitled as such to a broad scope of protection, precisely because the use of the mark by others in connection with stores selling reasonably closely related merchandise would inevitably have a high likelihood of causing consumer confusion. [25] Similarity of marks. When the secondary user's mark is not identical but merely similar to the plaintiff's mark, it is important to assess the degree of similarity between them in assessing the likelihood that consumers will be confused. See McGregor, 599 F.2d at 1133. Plaintiff's and defendants' marks were not merely similar; they were identical to the extent that both consisted of the same word, "virgin." [26] The district court believed this factor did not favor plaintiff because it found some differences in appearance. Defendants' logo used a different typeface and different colors from plaintiff's. While those are indeed differences, they are quite minor in relation to the fact that the name being used as a trademark was the same in each case. [27] Advertisement and consumer experience of a mark do not necessarily transmit all of the mark's features. Plaintiff, for example, advertised its Virgin Megastores on the radio. A consumer who heard those advertisements and then saw the defendants' installation using the name VIRGIN would have no way of knowing that the two trademarks looked different. See Sports Auth., Inc. v. Prime Hospitality Corp., 89 F.3d 955, 962 (2d Cir. 1996). A consumer who had visited one of plaintiff's Virgin Megastores and remembered the name would not necessarily remember the typeface and color of plaintiff's mark. The reputation of a mark also spreads by word of mouth among consumers. One consumer who hears from others about their experience with Virgin stores and then encounters defendants' Virgin store will have no way knowing of the differences in typeface. See Hills Bros. Coffee, Inc. v. Hills Supermarkets, Inc., 428 F.2d 379, 381 (2d Cir. 1970) (per curiam ). [28] In view of the fact that defendants used the same name as plaintiff, we conclude the defendants' mark was sufficiently similar to plaintiff's to increase the likelihood of confusion. This factor favored the plaintiff as a matter of law. We conclude that the district court erred in concluding otherwise on the basis of comparatively trivial and often irrelevant differences. [29] Proximity of the products and likelihood of bridging the gap. The next factor is the proximity of the products being sold by plaintiff and defendant under identical (or similar) marks. See Arrow Fastener, 59 F.3d at 396. This factor has an obvious bearing on the likelihood of confusion. When the two users of a mark are operating in completely different areas of commerce, consumers are less likely to assume that their similarly branded products come from the same source. In contrast, the closer the secondary user's goods are to those the consumer has seen marketed under the prior user's brand, the more likely that the consumer will mistakenly assume a common source. See Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 480-81 (2d Cir. 1996). [30] While plaintiff had not sold telephones or telephone service prior to defendant's registration evincing intent to sell those items, plaintiff had sold quite similar items of consumer electronic equipment. These included computer video game systems, portable cassette-tape players, compact disc players, MP3 players, mini-disc players, and disposable cameras. Like telephones, many of these are small consumer electronic gadgets making use of computerized audio communication. They are sold in the same channels of commerce. Consumers would have a high expectation of finding telephones, portable CD players, and computerized video game systems in the same stores. We think the proximity in commerce of telephones to CD players substantially advanced the risk that consumer confusion would occur when both were sold by different merchants under the same trade name, VIRGIN. [31] Our classic Polaroid test further protects a trademark owner by examining the likelihood that, even if the plaintiff's products were not so close to the defendants' when the defendant began to market them, there was already a likelihood that plaintiff would in the reasonably near future begin selling those products. See Cadbury Beverages, 73 F.3d at 482. VEL's claim of proximity was further strengthened in this regard because, as the district court expressly found, "plans had been formulated [for VEL] to enter [the market for telecommunications products and services] shortly in the future." VEL had already begun marketing telephone service in England which would operate in the United States, and, as the district court found, had made plans to sell telephones and wireless telephone service under the VIRGIN name from its retail stores. [32] The district court, nonetheless, found in favor of the defendants with respect to the proximity of products and services. We would ordinarily give considerable deference to a factual finding on this issue. Here, however, we cannot do so because it appears the district court applied the wrong test. The court did not assess the proximity of defendants' VIRGINbranded retail stores selling telephone products to plaintiff's VIRGIN-branded retail stores selling other consumer electronic products. It simply concluded that, because defendants were selling exclusively telephone products and services, and plaintiff's electronic products did not include telephones or related services, the defendants must prevail as to the proximity factor. [33] This represents a considerable misunderstanding of the Polaroid test. The famous list of factors of likely pertinence in assessing likelihood of confusion in Polaroid was specially designed for a case like this one, in which the secondary user is not in direct competition with the prior user, but is selling a somewhat different product or service. In Polaroid, the plaintiff sold optical and camera equipment, while the defendant sold electronic apparatus. The test the court discussed was expressly addressed to the problem "how far a valid trademark shall be protected with respect to goods other than those to which its owner has applied it." 287 F.2d at 495 (emphasis added); see also Arrow Fastener, 59 F.3d at 396 (noting that products need not actually compete with each other). The very fact that the test includes the "proximity" between the defendant's products and the plaintiff's and the likelihood that the plaintiff will "bridge the gap" makes clear that the trademark owner does not lose, as the district court concluded, merely because it has not previously sold the precise good or service sold by the secondary user. [34] In our view, had the district court employed the proper test of proximity, it could not have failed to find a high degree of proximity as between plaintiff VEL's prior sales of consumer electronic audio equipment and defendants' subsequent sales of telephones and telephone services, which proximity would certainly contribute to likelihood of consumer confusion. And plaintiff was all the more entitled to a finding in its favor in respect of these matters by virtue of the fact, which the district court did find, that at the time defendants began using the VIRGIN mark in the retail sale of telephones and telephone services, plaintiff already had plans to bridge the gap by expanding its sales of consumer electronic equipment to include sales of those very goods and services in the near future. Consumer confusion was more than likely; it was virtually inevitable. [35] Actual confusion. It is self-evident that the existence of actual consumer confusion indicates a likelihood of consumer confusion. Nabisco, 191 F.3d at 228. We have therefore deemed evidence of actual confusion "particularly relevant" to the inquiry. Streetwise Maps, 159 F.3d at 745. [36] Plaintiff submitted to the district court an affidavit of a former employee of defendant Cel-Net, who worked at a mall kiosk branded as Virgin Wireless, which stated that individuals used to ask him if the kiosk was affiliated with plaintiff's VIRGIN stores. The district court correctly concluded that this evidence weighed in plaintiff's favor. [37] Sophistication of consumers. The degree of sophistication of consumers can have an important bearing on likelihood of confusion. Where the purchasers of products are highly trained professionals, they know the market and are less likely than untrained consumers to be misled or confused by the similarity of different marks. The district court recognized that "[r]etail customers, such as the ones catered to by both the defendants and [plaintiff], are not expected to exercise the same degree of care as professional buyers, who are expected to have greater powers of discrimination." On the other hand, it observed that purchasers of cellular telephones and the service plans were likely to give greater care than self-service customers in a supermarket. Noting that neither side had submitted evidence on the sophistication of consumers, the court made no finding favoring either side. We agree that the sophistication factor is neutral in this case. [38] Bad faith and the quality of the defendants' services or products. Two factors remain of the conventional Polaroid test: the existence of bad faith on the part of the secondary user and the quality of the secondary user's products or services. Polaroid, 287 F.2d at 495. Neither factor is of high relevance to the issue of likelihood of confusion. A finding that a party acted in bad faith can affect the court's choice of remedy or can tip the balance where questions are close. It does not bear directly on whether consumers are likely to be confused. See TCPIP, 244 F.3d at 102. The district court noted some evidence of bad faith on the defendants' part, but because the evidence on the issue was scant and equivocal, the court concluded that such a finding "at this stage [would be] speculative." The court therefore found that this factor favored neither party. [39] The issue of the quality of the secondary user's product goes more to the harm that confusion can cause the plaintiff's mark and reputation than to the likelihood of confusion. See Arrow Fastener, 59 F.3d at 398 (noting that first user's reputation may be harmed if secondary user's goods are of poor quality). In any event, the district court found this factor to be "neutral" with respect to likelihood of confusion. [40] In summary we conclude that of the six Polaroid factors that pertain directly to the likelihood of consumer confusion, all but one favor the plaintiff, and that one-sophistication of consumers-is neutral. The plaintiff is strongly favored by the strength of its mark, both inherent and acquired; the similarity of the marks; the proximity of the products and services; the likelihood that plaintiff would bridge the gap; and the existence of actual confusion. None of the factors favors the defendant. The remaining factors were found to be neutral. Although we do not suggest that likelihood of confusion may be properly determined simply by the number of factors in one party's favor, the overall assessment in this case in our view admits only of a finding in plaintiff's favor that defendants' sale of telephones and telephone-related services under the VIRGIN mark was likely to cause substantial consumer confusion. [41] One issue remains. Defendants argue that plaintiff should be barred by laches from seeking injunctive relief. They contend that because of plaintiff's delay after learning of the defendants' applications to register the VIRGIN marks, they expended considerable sums and developed goodwill in their use of the VIRGIN marks before plaintiff brought suit. Because the district court ruled in the defendants' favor it made no express finding on the issue of laches. But the district court explicitly found that plaintiff first learned of defendants' use of the name VIRGIN in commerce only two days before plaintiff instituted this suit. Given that finding, plaintiff could not be chargeable with laches. [42] We conclude that, as a matter of law, plaintiff demonstrated irreparable harm and likelihood of success on the merits and was entitled to a preliminary injunction. Comments and Questions 1. The Abercrombie spectrum. In its discussion of inherent distinctiveness, the court divides the Abercrombie spectrum into inherently and non-inherently distinctive marks: "This inquiry distinguishes between, on the one hand, inherently distinctive marks-marks that are arbitrary or fanciful in relation to the products (or services) on which they are usedand, on the other hand, marks that are generic, descriptive or suggestive as to those goods." Do you detect an error in this division? Later in the opinion, the court refers to the Virgin mark as "arbitrary and fanciful." Should we treat these two Abercrombie categories as indistinguishable for purposes of the inherent distinctiveness analysis? Why might we seek to accord a greater scope of protection to fanciful marks than to arbitrary marks? 2. Are all factors equally important? In order to prevail in the overall likelihood of confusion multifactor test, must a plaintiff win all of the factors, a majority of them, some of them? Is the outcome of any particular factor necessary or sufficient to trigger a particular overall test outcome? Empirical work offers some insight into these questions. See Barton Beebe, An Empirical Study of the Multifactor Tests for Trademark Infringement, 94 CALIF. L. REV. 1581 (2006). The author's evidence suggests that five core factors drive the outcome of the likelihood of confusion test. In order of importance, these factors are the similarity of the marks, the defendant's intent, the proximity of the goods, evidence of actual confusion, and the strength of the plaintiff's mark. Certain factor outcomes correlate nearly perfectly with the overall outcome of the test. A finding that the marks are not similar is nearly always associated with a finding of no likelihood of confusion, while a finding that the defendant acted in bad faith is nearly always associated with a finding of likelihood of confusion. The remaining factors appear, in practice, to be largely irrelevant to the outcome of the test. See also Thomas Reichert, "Decoding DuPont: A Large-Scale Empirical Study of Trademark Confusion at the TTAB" (working paper, February 11, 2026); Daryl Lim, Trademark Confusion Revealed: An Empirical Analysis, 71 AM. U. L. REV. 1285 (2022). The conventional rationale for according a greater scope of protection to strong marks is that, due to their notoriety, they are more easily called to mind by similar marks. See Jacob Jacoby, The Psychological Foundations of Trademark Law: Secondary Meaning, Genericism, Fame, Confusion and Dilution, 91 TRADEMARK REP. 1013, 1038-42 (2001). But shouldn't strong marks actually require less protection? Consider the example of COKE. Having been exposed to the COKE mark countless times throughout their lives, are American consumers more or less likely to detect slight differences between the COKE mark and other similar marks? Some foreign courts have had the temerity to suggest that exceptionally strong marks are less likely to be confused with other marks. See, e.g., Baywatch Production Co. Inc 4. Sophistication of the relevant consumers. Courts assess the likelihood of confusion by the "reasonably prudent" consumer of the goods or services at issue. Consumers of more expensive or more technically sophisticated goods are understood to exercise greater care in their purchasing decisions, and thus to be comparatively less likely to be confused. See, e.g., Florida Int'l Univ. Bd. of Trustees v. Florida Nat'l Univ., Inc., 830 F.3d 1242, 1256 (11th Cir. 2016) (in finding no likelihood of confusion between FLORIDA INTERNATIONAL UNIVERSITY and FLORIDA NATIONAL UNIVERSITY, observing that "students looking for a college to attend are likely to be relatively sophisticated and knowledgeable because of the nature, importance, and size of the investment in a college education"); Heartsprings, Inc. v. Heartspring, Inc., 143 F.3d 550, 557 (10th Cir. 1998) (finding that consumers would not likely confuse defendant's mark HEARTSPRING for a residential school for physically disabled children with plaintiff's mark HEARTSPRINGS for printed materials teaching children to resolve conflicts non-violently where tuition for defendant's school ranged from $90,000 to $150,000 per year). See also M Welles & Assocs., Inc. v. Edwell, Inc., 69 F.4th 723, 736 (10th Cir. 2023) (citing Heartsprings in support of and affirming magistrate judge's bench trial ruling that EDWELL for nonprofit organization dedicated to improving schoolteachers' mental health was not confusingly similar with EDWEL for provider of classes and certification workshops for project management professionals); but see id. at 737 (Thmokovich, J., dissenting) ("The majority . . . overlooks the likelihood of confusion as to affiliation between the two."). A Canadian case captured this aspect of consumer sophistication doctrine quite memorably. In Atomic Energy of Canada Limited v. Areva NP Canada Ltd., 2009 FC 980 (2009), the plaintiff used a stylized "A" (shown below on the left) as its trademark for services relating to the design and construction of nuclear reactors while the defendant also used a stylized "A" (shown below on the right) in connection with the sale of nuclear reactor parts and components. The court noted: "All of [the plaintiff's] experts acknowledged in crossexamination that the relevant consumers would not be confused into purchasing the wrong nuclear reactor." Id. at ¶19. Citing English case law, the court recognized that "[I]t is not sufficient that the only confusion would be to a very small, unobservant section of society; or as Foster J. put it recently, if the only person who would be misled was a 'moron in a hurry.'" Id. at ¶28. Mr. Justice Zinn added: "In this industry, the fact that Homer Simpson may be confused is insufficient to find confusion." Id. Are relatively poor individuals less sophisticated consumers and thus more easily confused? One S.D.N.Y. judge seemed to think so. See Schieffelin & Co. v. The Jack Co., 1994 WL 144884 at *55 (S.D.N.Y. 1994) ("Even if some of the prospective purchasers of Dom Perignon are from low income groups, and are therefore less sophisticated shoppers than wealthier purchasers, . . ."). A later court took exception to the Schieffelin Court's assumption. See Reebok Intern. Ltd. v. K-Mart Corp., 849 F.Supp. 252, 268 (S.D.N.Y. 1994) ("[T]he court expressly disagrees with this statement's implication that there is a direct relationship between income and consumer intelligence. Careless shopping habits are not a necessary byproduct of a low income."). Indeed, couldn't an argument be made that low-income groups would typically give more care to their purchases? Trademark litigation typically unfolds as a battle between competing sellers who argue over whether the defendant's conduct is likely to confuse consumers. This is an unfair fight. In the traditional narrative, the plaintiff defends her trademark while simultaneously protecting consumers at risk for confusion. The defendant, relatively speaking, stands alone. The resulting "two-against-one" storyline gives short shrift to the interests of nonconfused consumers who may have a stake in the defendant's conduct. As a result, courts are too receptive to nontraditional trademark claims where the case for consumer harm is questionable. Better outcomes are available by appreciating trademark litigation's parallel status as a conflict between consumers. This view treats junior and senior trademark users as proxies for different consumer classes and recognizes that remedying likely confusion among one group of consumers may cause harm to others. Focusing on the interests of benefited and harmed consumers also minimizes the excessive weight given to moral rhetoric in adjudicating trademark cases. Consideration of trademark's consumer-conflict dimension is therefore a useful device for critiquing trademark's expansion and assessing future doctrinal developments. Id. at 60. Should courts be more solicitous of the interests of sophisticated consumers who are in fact not confused and may benefit from the information provided by the defendant's conduct? 6. Is it necessary for courts explicitly to consider each factor? District courts are generally required explicitly to address each of the factors listed in their circuit's multifactor test. If a factor is irrelevant, the court must explain why. Failure to do so can result in remand. See, for example, Sabinsa Corp. v. Creative Compounds, 609 F.3d 175 (3d Cir. 2010), which reviewed a district court opinion that addressed only three of the ten Lapp factors used by the Third Circuit. The Third Circuit explained: "[W]hile it is true that a district court may find that certain of the Lapp factors are inapplicable or unhelpful in a particular case, the court must still explain its choice not to employ those factors. Here, the District Court failed to explain whether it viewed these remaining factors as neutral or irrelevant or how it weighed and balanced the combined factors." Id. at 183. Finding that the facts were "largely undisputed," id., the Third Circuit declined to remand. Instead, it considered each of the ten Lapp factors and reversed. A two-dimensional model of trademark scope. Trademark lawyers typically speak of trademarks in two dimensions, as in the trademark "FORD for cars" or the trademark "ACE for hardware, but not for bandages." From this we can derive a simple two-dimensional model of trademark infringement, as in the figure below. See Barton Beebe, The Semiotic Analysis of Trademark Law, 51 UCLA L. REV. 621, 654-655 (2004). This model conceives of any given trademark as forming a point in a two-dimensional features space consisting of a trademark dimension and a goods/services dimension. The trademark dimension consists of a collapsed, one-dimensional continuum of all possible marks arranged according to similarities of "sound, sight, and meaning." The goods/services dimension similarly consists of a one-dimensional continuum of all possible goods and services arranged according to their degree of similarity. Distance in this feature space is a measure of two concepts. First, distance is a measure of difference. The distance between any two points represents the degree of difference between them. Second, and related, distance is a measure of the likelihood of consumer confusion. The closer two points are in features space, the greater the proportion of consumers in the relevant consumer population who will likely confuse them. As we have seen, in order to prevent consumer confusion as to source, trademark law invests a trademark-product combination with some broader scope of protection extending out from the point the combination forms in this features space. Otherwise, a competitor could come very near to that point, as in (stout, BASS) or (ale, BOSS) in the above figure and, by confusing some proportion of consumers as to source, unfairly appropriate as to those consumers the goodwill of the BASS ale brand. The closer a junior user's trademark-product combination comes to the trademark-product combination of a senior user, the greater the proportion of consumers who will confuse the junior's with the senior's use. At some proximity to the senior's use, trademark law declares that too high a proportion of consumers are or will be confused, and establishes a border, a property line, inside of which no competitor may come. This border, enveloping any given trademark, describes the scope of that trademark's protection and the extent of the producer's property right. For exceptionally well-known marks, what might be the shape of the mark's scope in this features space? Would it matter where the mark falls on the Abercrombie spectrum? What would be the shape of the scope of protection for COCA-COLA? Can any other firm reasonably use that mark on any other good or service? What would be the shape of the scope of FORD for automobiles or APPLE for high technology goods and services? The application of the multifactor test for the likelihood of confusion is often highly factspecific. String citations of cases finding confusion and other seemingly similar cases finding no confusion may give the impression that the test is unpredictable. Adding to the difficulty is that there are no clear rules for when marks are too similar or not similar enough to trigger liability. Good trademark lawyers tend to build up over time a feel for what courts will likely find infringing in light of all the facts of the case. Provided below are brief summaries of a few more cases in which courts found or did not find confusion to try to impart to those new to trademark law some further sense of the diverse variety of considerations that can enter into a court's application of the multifactor test. In finding no confusion after a bench trial, the court summarized its multifactor analysis: The balance of the Sleekcraft factors does not demonstrate a likelihood of confusion between Hero's marks and Nutraceutical's use of "Yummy Gummy." Hero's marks are weak and entitled only to a narrow scope of protection. Although the words "Yummy" and "yummi" are similar, the overall impression of the marks, including the packaging, labeling, designs, and house marks, are dissimilar. Consumers of children's vitamins at health food stores tend to be more careful and discriminating than the average shopper. Despite years of coexistence in the market, there was no showing of actual confusion, nor has Hero offered a survey to show actual confusion. Other than knowledge of the YUMMI BEARS mark, Hero has made no showing that Nutraceutical's use of "Yummy Gummy" was done in bad faith with an intent to trade off of Hero's good will. Although the products at issue are competitive and are generally sold in the same trade channel, these factors do not outweigh the other considerations leading to the ultimate conclusion that there is no likelihood of confusion. In Spangler Candy Co. v. Tootsie Roll Indus., LLC, 372 F. Supp. 3d 588 (N.D. Ohio 2019), the defendant Tootsie Roll developed a new, red trade dress for its CHARMS MINI POPS lollipops product, shown immediately below on the right. This new trade dress was suspiciously similar to the red trade dress of the plaintiff Spangler's DUM DUMS, which had been gaining market share, shown immediately below on the left. The defendant Tootsie Roll's previous trade dress was yellow, shown below. The court found a likelihood of confusion and summarized its reasoning as follows: The Dum Dums trade dress is not strong and there is no evidence of actual confusion. But the two companies used the same marketing channels to sell the same product. While the Charms Mini Pops trade dress is distinguishable when seen alone, Tootsie intends the product to be sold side-by-side on the shelf with Dum Dums, which would increase the likelihood of confusion due to the low degree of purchaser care. This intent along with other evidence also supports a conclusion that Tootsie acted with the intent to deceive. Therefore, considering all the factors, I find the evidence suggests the red Charms Mini Pops packaging is confusingly similar to the Dum Dums trade dress. 3. In Eli Lilly & Co. v. Nat. Answers, Inc., 86 F. Supp. 2d 834 (S.D. Ind.), aff'd, 233 F.3d 456 (7th Cir. 2000), the plaintiff produced an antidepressant under the registered mark PROZAC. The defendant produced an herbal drug under the name HERBROZAC that it claimed promoted "mood elevation." In finding a likelihood of confusion and granting the plaintiff's motion for a preliminary injunction, the district court summarized its multifactor analysis: Considering all the factors as set forth above, the court concludes that Lilly has shown an unusually strong case on the issue of likelihood of confusion. Most important here are the unusual strength of Lilly's PROZAC® mark, the strong similarity between PROZAC® and HERBROZAC, and defendant's intentional selection of the HERBROZAC name precisely because of its similarity to PROZAC® for the purpose of suggesting an association or affiliation between the products. Add to this mixture the fairly close "competitive proximity" of the two products, especially as pharmaceutical companies expand into the herbal and dietary supplement business, and Lilly has made a powerful showing of likelihood of success on its claim for trademark infringement. Id. at 846. In finding no likelihood of confusion after a bench trial, the court summarized its multifactor analysis: After considering and weighing each of the Polaroid factors, I conclude that Saturdays Surf NYC has not shown a likelihood of confusion by a preponderance of the credible evidence. I am particularly persuaded by the relative weakness of the word that the two marks share, the significant distance between the men's and women's products, and the consistent inclusion of the famous house mark, Kate Spade, in its Kate Spade Saturday mark. Id. at 648 5. In the relatively straightforward case of Nikon, Inc. v. Ikon Corp., 987 F.2d 91 (2d Cir. 1993), the plaintiff was a world-famous producer of high-quality cameras under the mark NIKON. The defendant was a lesser known seller of low-cost cameras under the mark IKON. The court found confusion: "Applying the facts found by the court, each factor, with the exception of actual confusion, weighs heavily in favor of Nikon. And there was some evidence of actual confusion." Id. at 96. 6. In Alliance for Good Gov't v. Coalition for Better Gov't, 901 F.3d 498 (5th Cir. 2018), the plaintiff had been using the mark below on the left since the 1960s to promote political candidates in Louisiana. The defendant organization subsequently developed its own logo, below on the right, in the early 1980s or 1990s to promote political candidates in New Orleans. The district court found a likelihood of confusion and the Fifth Circuit affirmed. Of special interest is the Fifth Circuit's analysis of the similarity of the marks, and in particular its reference to the defendant's attorney's ignoble attempt (basically a failed con) to distinguish the marks: Finally, we observe that Coalition attempted to distinguish the two logosnot by appearance, design, color, or font-but by the birds' species: DISTRICT COURT: They look exactly alike to me, the two birds. COUNSEL: [. . .] [N]o, they really aren't, your Honor, if you look at the wing span. The wing span of the eagle is different from the hawk. It's much larger and it fans out, and that's just the way the hawk looks. COURT: I'll tell you, unless my eyes are deceiving me, . . . those two look exactly alike. They even look like the same feathers, same number of feathers, same arrangement, head is facing the same way, the same beak. I don't know if you call them-I don't know technically what kind of bird it is, but whatever they are, they look exactly alike to me. COUNSEL: Well, they're both birds of prey; one is an eagle and one is a hawk. COURT: Okay. COUNSEL: And when we filed with the Secretary of State to get our font, we said it was a hawk. We were represented by a hawk, not an eagle. We agree with the district court: the birds are identical. Whether that bird is a haliaeetus leucocephalus (bald eagle), a buteo jamaicensis (red-tailed hawk), or some other bird, we need not determine. Id. at 511-12. The plaintiff was subsequently awarded attorney's fees in the dispute. See Alliance for Good Gov't v. Coalition for Better Gov't, 919 F.3d 291 (5th Cir. 2019). (For more on fee shifting in trademark disputes, see Part VI). It is often said that survey evidence is routinely submitted in trademark litigation, particularly on the issue of consumer confusion. In a statement before Congress, the American Bar Association offered a typical expression of this view: "survey evidence is traditionally one of the most classic and most persuasive and most informative forms of trial evidence that trademark lawyers utilize in both prosecuting and defending against trademark claims of various sorts." Committee Print to Amend the Federal Trademark Dilution Act: Hearing Before the Subcomm. on Courts, the Internet, and Intellectual Property of the Comm. on the Judiciary, 108th Cong. 14 (2004) (statement of Robert W. Sacoff, Chair, Section of Intellectual Property Law, American Bar Association). In fact, empirical work suggests that survey evidence plays a surprisingly small role in deciding most trademark cases. See Barton Beebe, An Empirical Study of the Multifactor Tests for Trademark Infringement, 94 CALIF. L. REV. 1581, 1641-42 (2006). The author studied all federal court opinions applying a likelihood of confusion multifactor test over a five-year period from 2000 through 2004 and found that only 65 (20%) of the 331 opinions addressed survey evidence, 34 (10%) credited the survey evidence, and 24 (7%) ultimately ruled in favor of the outcome that the credited survey evidence itself favored. Eleven (24%) of the 46 bench trial opinions addressed survey evidence (with eight crediting it), while 24 (16%) of the 146 preliminary injunction opinions addressed survey evidence (with 12 crediting it). Id. See also Robert C. Bird & Joel H. Steckel, The Role of Consumer Surveys in Trademark Infringement: Empirical Evidence from the Federal Courts, 14 PENN. J. BUS. L. 1013 (2012) (finding that survey evidence is infrequently used in trademark litigation and suggesting that "the mere submission of a survey by a defendant appears to help its case, while a plaintiff-submitted survey can potentially hurt its case if the court deems it flawed"). But see Dan Sarel & Howard Marmorstein, The Effect of Consumer Surveys and Actual Confusion Evidence in Trademark Litigation: An Empirical Assessment, 99 TRADEMARK REP. 1416 (2009) (finding survey evidence presented in one-third of the opinions studied and that survey evidence had a substantial impact in cases involving dissimilar goods). Cf. Shari Seidman Diamond & David Franklyn, Trademark Surveys: An Undulating Path, 92 TEXAS L. REV. 2029 (2014) (concluding based on a survey of trademark practitioners that surveys can perform a significant role in settlement negotiations). Nevertheless, in the small subset of trademark cases involving high-stakes litigation or one or more well-funded parties, survey evidence is customary, so much so that courts will sometimes draw an "adverse inference" against a party for failing to present it. See, e.g., Eagle Snacks, Inc. v. Nabisco Brands, Inc., 625 F. Supp. 571, 583 (D.N.J. 1985) ("Failure of a trademark owner to run a survey to support its claims of brand significance and/or likelihood of confusion, where it has the financial means of doing so, may give rise to the inference that the contents of the survey would be unfavorable, and may result in the court denying relief."); but see, e.g., Tools USA and Equipment Co. v. Champ Frame Straightening Equipment Inc., 87 F.3d 654, 661 (4th Cir. 1996) ("Actual confusion can be demonstrated by survey evidence, but contrary to [defendant's] suggestion, survey evidence is not necessarily the best evidence of actual confusion and surveys are not required to prove likelihood of confusion."). When litigants do present survey evidence, courts' analysis of this evidence can be painstaking, especially when the litigants present dueling survey experts. In the following opinion, Smith v. Wal-Mart Stores, Inc., 537 F.Supp.2d 1302 (N.D. Ga. 2008), the declaratory plaintiff Charles Smith sought to criticize Wal-Mart's effect on American communities and workers by likening the retailer to the Nazi regime and, after Wal-Mart sent Smith two cease and desist letters, to Al Qaeda. Smith created and sold online through CafePress.com t-shirts and other merchandise incorporating the term "Walocaust" and various Nazi insignia (shown below) or the term "Wal-Qaeda" and various slogans and images (shown below). Wal-Mart produced survey evidence to support the proposition that American consumers would believe that Wal-Mart was selling the t-shirts or had otherwise authorized their sale, or that in any case, Smith's conduct tarnished Wal-Mart's trademark. Both parties moved for summary judgment. Excerpted below is Judge Timothy Batten, Sr.'s extraordinarily fine analysis of the surveys before him, which he conducted under the "actual confusion" factor of the multifactor test for the likelihood of consumer confusion. The analysis is lengthy and very detailed, but it addresses a variety of survey-related issues with which a serious student of trademark litigation should be familiar. (For another exemplary judicial analysis of survey evidence, see Snap Inc. v. Vidal, 750 F. Supp. 3d 1120 (C.D. Cal. 2024) (Magistrate Judge Steve Kim)). A few additional preliminary comments. First, the surveys at issue in Smith v. Wal-Mart are modified forms of the "Eveready format" for likelihood of confusion surveys, based on the case Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366 (7th Cir. 1976), in which the Seventh Circuit credited two surveys as strong evidence of the likelihood of confusion. (Despite the spelling of "Ever-Ready" in the caption of the case, most commentators, including McCarthy, refer to the survey format as the "Eveready format.") Second, the excerpt below addresses, in addition to the likelihood of confusion issue, a cause of action for dilution by tarnishment of Wal-Mart's mark. We will address dilution more fully in Part II.C. In reading through the excerpt, consider the following question: • Do you find the Eveready format persuasive? How else might you design a likelihood of confusion survey? • The "third set of questions" in the surveys, "aimed at testing for confusion as to authorization or sponsorship, asked whether the company that 'put out' the shirt needed permission from another company to do so, and if so, which company." Is this an appropriate survey question to ask consumers? [1] Proof of actual confusion is considered the best evidence of likelihood of confusion. Roto-Rooter Corp. v. O'Neal, 513 F.2d 44, 45-46 (5th Cir. 1975). A claimant may present anecdotal evidence of marketplace confusion, and surveys, when appropriately and accurately conducted and reported, are also widely and routinely accepted as probative of actual confusion. See, e.g., AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1544 (11th Cir. 1986) (considering the proffered survey but giving it little weight); SunAmerica Corp. v. Sun Life Assurance Co. of Canada, 890 F.Supp. 1559, 1576 (N.D.Ga. 1994) (viewing the proffered survey as confirmation of consistent anecdotal evidence). [2] Wal-Mart concedes that it has no marketplace evidence of actual consumer confusion. Instead, it presents two consumer research studies conducted by Dr. Jacob Jacoby that purport to prove that consumer confusion and damage to Wal-Mart's reputation are likely. a. The Jacoby Report [3] Jacoby developed two surveys for Wal-Mart that both purported to measure consumer confusion and dilution by tarnishment. Specifically, the stated objectives of the research were (1) "To determine whether (and if so, to what extent), when confronted with merchandise bearing Mr. Smith's designs either in person or via the Internet, prospective consumers would be confused into believing that these items either came from Wal-Mart, came from a firm affiliated with Wal-Mart, or had been authorized by Wal-Mart," and ( 2) "To determine whether (and if so, to what extent) exposure to Mr. Smith's designs would generate dilution via tarnishment." [4] Deeming it impractical to test all of Smith's designs, Jacoby chose instead to test two products as representative of all of Smith's allegedly infringing products-the white t-shirt with the word "WAL*OCAUST" in blue font over the Nazi eagle clutching a yellow smiley face, and another white t-shirt that depicted the word "WAL-QAEDA" in a blue font as part of the phrase "SUPPORT OUR TROOPS. BOYCOTT WAL-QAEDA." [5] He also tested consumer reactions to "control" designs, which he compared to consumer responses to the Walocaust and Wal-Qaeda designs. To develop the control for the Walocaust design, Jacoby replaced the star with a hyphen and removed the smiley face from the yellow circle, and for both the Walocaust and Wal-Qaeda controls, he substituted "Z" for "W." These substitutions resulted in control concepts entitled "Zal-ocaust" and "Zal-Qaeda." [6] Jacoby engaged a market research firm to test each of the t-shirt designs in (1) a "product" study intended to test for post-purchase confusion and tarnishment, and (2) a "website" study intended to test for point-of-sale confusion and tarnishment. 15 [7] The market research company conducted the studies in a mall-intercept format. The company's researchers would approach people who appeared to be thirteen years old or older and ask a series of screening questions. 16 To qualify for either survey, the respondent was required to be at least thirteen years oldfoot_1 and must have in the past year bought, or would in the coming year consider buying, bumper stickers, t-shirts or coffee mugs with words, symbols or designs on them. To qualify for the "website" study, the respondent must also have (1) used the Internet in the past month to search for information about products or services and ( 2) either (a) in the past year used the Internet to buy or to search for information about bumper stickers, t-shirts or coffee mugs with words, symbols or designs on them, or (b) in the coming year would consider buying over the Internet bumper stickers, t-shirts or coffee mugs with words, symbols or designs on them. 18 If the respondent met the qualifications, he or she was asked to go with the researcher to the mall's enclosed interviewing facility for a five-minute interview. 19 [8] For the "product" study, the interviewers presented to each respondent one of the four t-shirts described above and asked the respondent to imagine seeing someone wearing the shirt. The interviewer then asked a series of questions. [9] The first three sets of questions were designed to test for consumer confusion. The interviewers were directed to ask each of the "likelihood of confusion" questions sequentially unless the respondent answered "Sears," "Wal-Mart," "Youngblood's" or "K-Mart," in which case the interviewer was to record the answer, skip the remaining confusion questions, and go directly to the tarnishment questions. [10] In the consumer confusion series, the first set of questions tested for confusion as to source. The interviewer would ask "which company or store" the respondent thought "put out" the shirt, and if the respondent named a company or store, the interviewer then asked what about the shirt made the respondent think the shirt was "put out" by that company or store. The second set of questions, which dealt with confusion as to connection or relationship, asked the respondent whether the company or store that "put out" the shirt had some "business connection or relationship with another company" and if so, with what company. The respondent was then asked why he or she believed the companies had a business connection or relationship. A third set of questions, aimed at testing for confusion as to authorization or sponsorship, asked whether the company that "put out" the shirt needed permission from another company to do so, and if so, which company. [11] Finally, if the respondent had not yet answered "Sears," "Wal-Mart," "Youngblood's" or "K-Mart" to any of the first three sets of questions, he or she was then asked what the shirt made him or her "think of" and then "which company or store" the shirt brought to mind. [12] The fifth set of questions, which tested for dilution by tarnishment, were asked in reference to any company or store the respondent mentioned in his or her answers to the first four sets of questions. The first question asked whether seeing the shirt made the respondent more or less likely to shop at the store he or she had named, and the second question asked whether the perceived association with the store made the respondent more or less likely to buy the shirt. [13] The interviews for the website study were much like those for the product study, except that instead of being shown the actual shirts, the respondents were exposed to a simulation of Smith's Walocaust CafePress homepage, his Wal-Qaeda CafePress homepage or the associated control homepage. 20 In each of the simulations, all of the hyperlinks were removed from the homepages except for the one hyperlink associated with the t-shirt that Jacoby had decided to test. [14] Jacoby directed the interviewers to begin each website interview by providing a URL to the respondent and asking the respondent to imagine that the URL was a search term the respondent had heard or seen somewhere and wanted to look up on the Internet. The interviewer would then have the respondent sit at a computer and type the URL into the browser. The URL would take the respondent to the simulated home page for testing. [15] The interviewer would then direct the respondent to look at the screen and scroll down the page "as [he or she] normally would" and click through to the first t-shirt on the screen. The respondent was then directed to click on the "view larger" box and look at the shirt as though he or she "found it interesting and [was] considering whether or not to order it . . . ." The interviewer would then ask the respondent exactly the same series of questions posed in the product study, including the same skip pattern to be applied in the event that the respondent mentioned Sears, Wal-Mart, Youngblood's or K-Mart in response to any of the consumer confusion questions. [16] In order to be tallied as "confused," the respondent had to meet two tests. First, the respondent had to indicate either that the shirt came from Wal-Mart (first confusion series), came from a company that had some business connection or relationship with Wal-Mart (second confusion series), or came from a source that required or obtained permission from Wal-Mart (third confusion series). Second, the respondent had to indicate that his or her reason for that understanding was either because of the prefix "Wal," the name (or equivalent), the smiley face, or the star after the prefix "Wal." Thus, a respondent who believed that there was a connection between Wal-Mart and the t-shirt that he or she was shown but who did not mention the prefix "Wal," the name (or equivalent), the smiley face, or the star, would not be counted as "confused." [17] Any respondent who perceived an association between Wal-Mart and the t-shirt that he or she was shown and reported that the perceived association either made the respondent less likely to shop at Wal-Mart or more likely to buy that t-shirt was deemed to satisfy the requirement for dilution. [18] The field interviewers returned 322 completed interviews for the product study and 335 for the website study. Three responses were eliminated from the sample after the research company conducted a review to ensure that each respondent was qualified to participate in the study and that the questionnaires had been completed properly. The research company then sent the name and phone number of each of the interview respondents to an independent telephone interviewing service for validation, which consisted of calling each mall-intercept respondent to ensure that the respondent had actually participated in the study and that his or her answers were accurately recorded. [19] In the product study, 181 respondents (fifty-six percent of the usable sample) were positively validated, and sixteen respondents (about five percent) reported either different answers to the survey questions or claimed not to have participated in the study. The remainder either could not be reached during the twenty days Jacoby allocated for the validation or refused to respond to the validation survey. [20] Jacoby reported the results of those respondents who were positively validated plus the results from the respondents who could not be reached or would not respond to the validation survey, and he eliminated the results of the respondents who provided nonaffirming answers during the validation process. This resulted in 305 reported responses to the product study: seventy-three for the Wal*ocaust concept, seventy-six for the Wal-Qaeda concept, seventy-nine for the Zal-ocaust concept, and seventy-seven for the Zal-Qaeda concept. [21] In the website study, 169 respondents (fifty-one percent of the usable sample) were positively validated, and forty-six respondents (about fourteen percent) reported either different answers to the survey questions or claimed not to have participated in the study. The remainder either could not be reached during the twenty days Jacoby allocated for the validation or refused to respond to the validation survey. [22] As he did in the product study, Jacoby reported the results of those respondents who were positively validated plus the results from the respondents who could not be reached or would not respond to the validation survey, and he eliminated the results of the respondents who provided non-affirming answers during the validation process. This resulted in 287 reported responses to the {website} study: seventy for the Wal*ocaust concept, seventy-eight for the Wal-Qaeda concept, sixty-nine for the Zal-ocaust concept, and seventy for the Zal-Qaeda concept. [23] Jacoby reported that the survey reflected high levels of consumer confusion and dilution by tarnishment. He claimed that the post-purchase confusion "product study" indicated a likelihood of confusion in nearly forty-eight percent of the respondents and that the point-of-sale confusion "website" study indicated a likelihood of confusion in almost forty-one percent of the respondents. 21 Jacoby also claimed that the "dilution" study indicated that almost twelve percent of the respondents were less likely to shop at Wal-Mart after seeing Smith's designs. [24] Smith moves to exclude Wal-Mart's expert report. He claims that Jacoby did not have the requisite Internet expertise to conduct the web-based "point-of-sale" portion of this particular study and that several aspects of Jacoby's methodology affecting both portions of the study were faulty; thus, he contends, Jacoby's study is "too deeply flawed to be considered . . . ." [25] Wal-Mart argues that the Jacoby test was performed by a competent expert according to industry standards and therefore is valid. Wal-Mart further contends that the expert witnesses Smith presents in rebuttal are not experts in the area of consumer-goods "likelihood of confusion" trademark studies, and therefore their testimony is irrelevant and should be excluded. [26] Whether a given survey constitutes acceptable evidence depends on the survey's ability to satisfy the demands of Federal Rule of Evidence 703, which requires consideration of the "validity of the techniques employed." 233-34 FED. JUD. CTR., REFERENCE MANUAL ON SCI. EVIDENCE (2d ed. 2002) (explaining that in the context of surveys for litigation purposes, "[t]he inquiry under Rule 703[, which] focuses on whether facts or data are 'of a type reasonably relied upon by experts in the particular field in forming opinions or inferences upon the subject' . . . becomes, 'Was the . . . survey conducted in accordance with generally accepted survey principles, and were the results used in a statistically correct way?'"). See also BFI Waste Sys. of N. Am. v. Dekalb County, 303 F.Supp.2d 1335,1346 (N.D.Ga. 2004) (noting that the opposing party could have challenged an expert witness's reference to a recent survey by questioning whether the survey methodology satisfied Rule 703). [27] The Eleventh Circuit has held that alleged technical deficiencies in a survey presented in a Lanham Act action affect the weight to be accorded to the survey and not its admissibility. Jellibeans, Inc. v. Skating Clubs of Ga., Inc., 716 F.2d 833, 844 (11th Cir. 1983). Other courts have held that a significantly flawed survey may be excludable as evidence under either Rule 403 (the rule barring evidence that is more prejudicial than probative) or Rule 702 (the rule barring unreliable expert testimony). Citizens Fin. Group, Inc. v. Citizens Nat'l Bank, 383 F.3d 110, 188-21 (3d Cir. 2004) (finding that the district court properly excluded survey evidence under Rules 702 and 403 where the survey contained flaws that were not merely technical, but were so damaging to the reliability of the results as to be "fatal": the survey relied on an improper universe and its questions were imprecise); Malletier v. Dooney & Bourke, Inc., 525 F.Supp.2d 558, 562-63 (S.D.N.Y. 2007). Even when a party presents an admissible survey purporting to show consumer confusion, however, the survey "does not itself create a triable issue of fact." Mattel, Inc. v. MCA Records, Inc., 28 F.Supp.2d 1120, 1133 (C.D. Cal. 1998) (citing Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112, 118 (2d Cir. 1984), which found a survey "so badly flawed that it cannot be used to demonstrate the existence of a question of fact of the likelihood of consumer confusion"). . . . [28] To ground a survey as trustworthy, its proponent must establish foundation evidence showing that (1) the 'universe' was properly defined, (2) a representative sample of that universe was selected, (3) the questions to be asked of interviewees were framed in a clear, precise and non-leading manner, (4) sound interview procedures were followed by competent interviewers who had no knowledge of the litigation or the purpose for which the survey was conducted, (5) the data gathered was accurately reported, (6) the data was analyzed in accordance with accepted statistical principles and ( 7) objectivity of the entire process was assured. Failure to satisfy any of the listed criteria may seriously compromise the survey's impact on a court's likelihood of confusion evaluation. Id. [29] Smith cites several grounds for excluding the Jacoby survey. He argues that the survey is inadmissible because it (1) failed to identify the relevant consumer universe or used a consumer universe that was substantially overbroad; (2) failed to replicate shopping conditions as consumers would encounter them in the marketplace; (3) was improperly leading; (4) violated the survey structure protocol necessary to comply with double-blind standards; and (5) failed to establish a relevant factual basis for Wal-Mart's dilution by tarnishment claims. Smith further argues that even if the Court admits the survey, its consideration should be limited to only the two tested designs, despite Jacoby's claim that they are representative of all the designs Wal-Mart seeks to enjoin. [30] As an initial matter, the Court observes that Smith does not take issue with Jacoby's qualifications to design and conduct a consumer confusion survey and to analyze its results. It is undisputed that Jacoby is a nationally renowned trademark survey expert who has testified hundreds of times. Smith contends, however, that Jacoby was unqualified to conduct this particular survey because he "lacks knowledge, experience, [and] sophistication" with regard to products marketed exclusively over the Internet and that as a result Jacoby's survey protocol contained significant flaws. [31] Based upon its own review of Jacoby's education and experience, the Court concludes that Jacoby is qualified to design and conduct a consumer survey and to testify about its results. To the extent that Jacoby's purported lack of experience with surveys concerning goods sold exclusively online may have led him to test the wrong universe or to fail to replicate the shopping experience, as Smith has alleged, these factors will be examined when the Court evaluates the trustworthiness of the survey. [32] In undertaking to demonstrate likelihood of confusion in a trademark infringement case by use of survey evidence, the "appropriate universe should include a fair sampling of those purchasers most likely to partake of the alleged infringer's goods or services." Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 264 (5th Cir. 1980). Selection of the proper universe is one of the most important factors in assessing the validity of a survey and the weight that it should receive because "the persons interviewed must adequately represent the opinions which are relevant to the litigation." Id. . . . . [34] Smith hired Dr. Alan Jay Rosenblatt as a rebuttal witness to point out Internetrelated deficiencies in Jacoby's survey methodology-particularly deficiencies in universe selection and replication of marketplace conditions-that he claims resulted from Jacoby's erroneous assumptions about how people reach and interact with websites. . . . . [35] . . . . Wal-Mart maintains that Jacoby's universe selection was proper. Smith counters that it was overly broad. [36] Although the universe Jacoby selected would include purchasers of Smith's Walocaust or Wal-Qaeda merchandise, the Court finds that it is significantly overbroad. Because Smith's merchandise was available only through his CafePress webstores and the links to his CafePress webstores from his Walocaust and Wal-Qaeda websites, it is likely that only a small percentage of the consumers in the universe selected by Jacoby would be potential purchasers of Smith's products. A survey respondent who purchases bumper stickers, t-shirts or coffee mugs with words, symbols or designs on them may buy such merchandise because the imprint represents his or her school, company, favorite sports team, cartoon character, social group, or any of hundreds of other interests or affiliations; he or she may have no interest at all in purchasing merchandise containing messages about Wal-Mart, pro or con. The respondent may buy from brick-and-mortar stores or well-known retailers with Internet storefronts without being aware of Smith's website or CafePress, or may have little interest in buying such merchandise over the Internet at all. Therefore, a respondent who clearly falls within Jacoby's survey universe may nevertheless have no potential to purchase Smith's imprinted products. See Leelanau Wine Cellars, 452 F.Supp.2d at 782. [37] Other courts have similarly criticized surveys-including surveys Jacoby conducted in other trademark infringement cases-that failed to properly screen the universe to ensure that it was limited to respondents who were potential purchasers of the alleged infringer's product. [38] For example, in Weight Watchers Int'l, Inc. v. Stouffer Corp., 744 F.Supp. 1259 (S.D.N.Y. 1990), Weight Watchers sued Stouffer for trademark infringement after Stouffer launched an advertising campaign that suggested that new exchange listings on Stouffer's Lean Cuisine packages would allow adherents to the Weight Watchers program to use Lean Cuisine entrees in their diets. Id. at 1262. Stouffer's likelihood of confusion survey, also conducted by Jacoby, identified the universe as "women between the ages of 18 and 55 who have purchased frozen food entrees in the past six months and who have tried to lose weight through diet and/or exercise in the past year." Id. at 1272. The court found that the universe was overbroad because the screener had not limited it to dieters, but also had included respondents who may have tried to lose weight by exercise only. The court concluded that as a result the survey likely included respondents who were not potential consumers, and because "[r]espondents who are not potential consumers may well be less likely to be aware of and to make relevant distinctions when reading ads than those who are potential consumers," that portion of the survey universe may have failed to make "crucial" distinctions in the likelihood of confusion testing. Id. at 1273. . . . . [39] To be valid for the purposes of demonstrating actual confusion in a trademark infringement suit, it is necessary for a survey's protocol to take into account marketplace conditions and typical consumer behavior so that the survey may as accurately as possible measure the relevant "thought processes of consumers encountering the disputed mark . . . as they would in the marketplace." Simon Prop. Group, 104 F.Supp.2d at 1038; accord WE Media, Inc. v. Gen. Elec. Co., 218 F.Supp.2d 463, 474 (S.D.N.Y. 2002). [40] Smith contends that Jacoby's point-of-purchase study, which purported to measure consumer confusion over merchandise that Smith sold exclusively online, was improperly designed because it failed to take into account typical consumer Internet behavior. Wal-Mart does not contradict the expert testimony Smith proffers regarding consumer Internet behavior but instead maintains that it is irrelevant. [41] Jacoby's point-of-purchase survey called for interviewers to provide each respondent with specific "search terms" that would take the respondent to a simulation of one of Smith's websites. The respondent was asked to pretend that the resulting web page was of interest and to act accordingly (looking at the page and scrolling through it as the respondent would "normally" do), and then was directed to scroll down the page, below the first screen, and click on a specific t-shirt link. The respondent was not asked what message he or she took from the website or whether the website was in fact of interest. The survey protocol also gave the respondent no choice but to scroll down to the next screen and click on the t-shirt link, the only live link in the simulation. [42] In presenting Smith's website and directing the survey respondents to click on one specific t-shirt link, Jacoby's survey design presumed that all consumers who might be interested in a printed t-shirt, mug or bumper sticker would be equally likely to happen across Smith's designs, regardless of the respondent's level of interest in the messages on Smith's webpage. [43] Although, as Wal-Mart points out, it is possible that some consumers may view web pages randomly and may scroll through and clink on links on pages that are not of interest to them, the Court finds that the survey protocol did not sufficiently reflect actual marketplace conditions or typical consumer shopping behavior and therefore was unlikely to have elicited a shopping mindset that would have allowed Jacoby to accurately gauge actual consumer confusion. [44] Because Smith's merchandise was available only through his CafePress webstores and the links to his CafePress webstores from his Walocaust and Wal-Qaeda websites, it is unlikely that many consumers randomly happen across Smith's products. According to Rosenblatt's uncontroverted testimony, people do not come to websites randomly, and they do not move within websites randomly. A great majority of Internet users arrive at a particular website after searching specific terms via an Internet search engine or by following links from another website. The user makes a judgment based on contextual cues-what is shown about a prospective website from the text of a search result or what is said about a prospective website in the hyperlinked words and surrounding text of the website currently being viewed-in determining where to surf next. He moves from website to website, he moves within websites, and he performs actions such as signing a petition-or buying a product-by making choices based on what he sees and whether what he sees leads him to believe that going to the next page or following a link to another website will bring him to something he is interested in seeing, doing or buying. [45] In the marketplace, the visitor would be presented with a screen full of Smith's anti-Wal-Mart messages. Consumers who were interested in the messages on Smith's web pages would be motivated to choose the links that would eventually lead to his products, while those who were uninterested in Smith's messages would simply leave the page. Because the survey protocol directed the respondents to "pretend" to be interested in Smith's anti-Wal-Mart homepages and then directed them to click on a specific link, there is no assurance that the respondent actually read the homepage or would have been interested enough in it to be motivated to click on the t-shirt link. See Gen. Motors Corp. v. Cadillac Marine & Boat Co., 226 F.Supp. 716, 737 (D.C.Mich. 1964) (observing that because survey respondents had little interest the allegedly infringing product, it followed that their inspection of the advertisement shown to them as part of the survey protocol was "casual, cursory and careless" and therefore of little probative value). [46] Other courts have similarly criticized surveys that failed to adequately replicate the shopping experience. In Gen. Motors Corp., 226 F.Supp. at 737, the court criticized the proffered survey because it did not take into account typical consumer behavior: Actual purchasers of a boat would not hastily read an advertisement, nor would a potential purchaser read it carelessly. A reasonable man, anticipating the purchase of a boat, would peruse the material at least well enough to note the manufacturer as being "Cadillac Marine & Boat Company, 406 Seventh Street, Cadillac, Michigan." Also, most buyers would want to see the boat itself before making a purchase. Although the purchase of a t-shirt obviously does not involve the same level of financial consideration a consumer typically makes when buying a boat, a consumer is likely to consider the meaning of an imprinted t-shirt such as Smith's before wearing it in public. A reasonable person who was considering buying a t-shirt that references Al-Qaeda or the Holocaust would likely read the associated webpage at least well enough to see the harsh criticism of Wal-Mart and the prominent disclaimer dispelling any notion of a possible association with the company. [47] For all of these reasons, the survey Jacoby conducted for Wal-Mart is of dubious value as proof of consumer confusion both because its survey universe was overinclusive and because its design failed to approximate real-world marketplace conditions. Jacoby's survey is subject to the same criticisms as his Weight Watchers survey . . . : Jacoby failed to screen the respondents to ensure that they would likely be aware of and make relevant distinctions concerning the specific product. See Weight Watchers, 744 F.Supp. at 1273. By failing to approximate actual market conditions, Jacoby further ensured that the survey would not "replicate the thought processes of [likely] consumers [of the junior user's merchandise] encountering the disputed mark . . . as they would in the marketplace." See Simon Prop. Group, 104 F.Supp.2d at 1038; accord Gen. Motors Corp., 226 F.Supp. at 737. Therefore, the Court must consider these flaws in determining whether the survey is admissible and, if so, what evidentiary weight to afford it. [48] Smith further alleges that the Jacoby study suffers from several structural flaws that diminish the trustworthiness of the results of both the web-based point-of-sale portion and the post-purchase t-shirt portion of the survey. He contends that (1) both the structure of the survey and the wording of several questions suggested the answers Wal-Mart wanted, and (2) the survey results should not be presumed to represent consumer reaction to any of the challenged merchandise that was not actually tested. [49] Smith hired Dr. Richard Teach as a rebuttal witness to point out deficiencies in Jacoby's website study survey methodology. Teach is an emeritus marketing professor and former dean at the Georgia Tech School of Business who has designed and conducted over one hundred surveys, including about fifty buyer surveys, and has taught survey methodology, statistics and related courses. Teach testifies that he agrees with Rosenblatt's testimony and also offers criticisms of his own. Smith uses Teach's survey expertise to support his Daubert argument that because the survey protocol contains multiple technical flaws, the results are unreliable and hence should be afforded very light evidentiary value if not completely excluded from evidence. [50] Wal-Mart moves to exclude Teach's testimony, supporting its motion with arguments much like those it used in its motion to exclude Rosenblatt's testimony . . . . [51] The Court finds . . . that his extensive experience designing and evaluating surveys qualifies him to provide testimony about technical flaws in the design of Jacoby's study and the impact of those flaws on the trustworthiness of Jacoby's reported results. [52] [T]o the extent that Teach's testimony focuses on general survey methodology, whether Jacoby's survey protocol deviated from standard methodology, and what impact any deviations may have had on the trustworthiness of Jacoby's reported results, Wal-Mart's motion to exclude it is DENIED. [53] Smith argues that both the structure of the survey and the wording of several questions suggested the answers Wal-Mart wanted. Wal-Mart, of course, contends that Jacoby's survey presented no such risk. [54] To ensure objectivity in the administration of the survey, it is standard practice to conduct survey interviews in such a way as to ensure that "both the interviewer and the respondent are blind to the sponsor of the survey and its purpose." REFERENCE MANUAL at 266. The parties agree that double-blind conditions are essential because if the respondents know what the interviewer wants, they may try to please the interviewer by giving the desired answer, and if the interviewer knows what his employer wants, he may consciously or unconsciously bias the survey through variations in the wording or the tone of his questions. See id. [55] Smith argues that the skip pattern included in Jacoby's survey hinted to the interviewers that Wal-Mart was the survey's sponsor. The survey protocol directed the interviewers to skip to the final tarnishment question, question five, if the respondent gave any one of four specific store names-Sears, Wal-Mart, K-Mart or Youngblood's-to any of the first three questions. Similarly, if the respondent did not give any of those four names in response to the first three questions, the interviewer was directed to ask "what other companies or stores" the stimulus t-shirt brought to mind, and only if the respondent answered with one of the four names was the interviewer to ask question five, the dilution question. The text on both of the tested t-shirts began with the prefix "Wal," and Wal-Mart was the only one of the four listed names that began with that prefix. [56] Smith argues that this series of questions combined with the t-shirt stimulus subtly informed the interviewers not only that a store name was desired, but also that a particular store name-Wal-Mart-was sought. Thus, Smith contends, because the survey failed to meet the double-blind requirement, it was not conducted in an objective manner and must be excluded for what must therefore be biased results. See REFERENCE MANUAL at 248 (noting that poorly formed questions may lead to distorted responses and increased error and therefore may be the basis for rejecting a survey). [57] Wal-Mart argues that the skip patterns followed proper protocol and that even if the interviewers guessed that Wal-Mart was involved, there could be no risk of bias because (1) interviewers are professionally trained and adhere to extremely high ethical standards, and (2) it was impossible to determine from the design of the study who sponsored the study and for which side of a dispute the survey evidence was to be proffered. [58] Based on the facts that (1) both of the tested t-shirts include the prefix "Wal" and (2) the only store on the specified list of four that included that same prefix was Wal-Mart, it is safe to surmise that the interviewers at least suspected that Wal-Mart was involved in the survey in some manner. Aside from a common sense assumption that the party with deep pockets and reason to be insulted by the tested concepts was likely to have sponsored the research, however, the interviewers had no way to know who was the proponent of the research and who was the opponent. Thus, although the survey design may have breached generally accepted double-blind protocol to some degree, because the breach offered little risk of bias toward one party or the other the Court finds this issue to be of little import in its trustworthiness determination. [59] Smith also argues that the wording of Jacoby's confusion questions was improperly leading. Although the challenged t-shirts were created and offered for sale by Charles Smith, an individual, via his CafePress webstore, the survey asked about sponsorship only in the context of companies or stores, such as in the survey's lead question, which asked, "[W]hich company or store do you think puts out this shirt?" Smith contends that this wording suggested to the respondent that the interviewer was looking for the name of a company or store, which would lead the respondent away from the answer that the shirt was put out by an individual who was criticizing a company. Wal-Mart counters that because Smith's merchandise was sold through his CafePress webstores, the questions were accurately worded and thus not misleading. [60] The Court agrees with Smith that the disputed questions improperly led respondents to limit their answers to companies or stores. Though Smith did offer his merchandise through his CafePress webstore, as Wal-Mart argues, the Court finds this characterization disingenuous; the party Wal-Mart sued for offering the Walocaust and Wal-Qaeda merchandise for sale is not a company or a store, but instead Charles Smith, an individual. Furthermore, Wal-Mart has failed to point to any authority supporting the use of the "company or store" language in a consumer "likelihood of confusion" apparel survey or any such surveys previously conducted by Jacoby. Thus, the Court must consider this weakness in determining the admissibility or evidentiary weight to be accorded the survey. [61] Smith also argues that the Jacoby survey results should not be presumed to represent consumer reaction to any of the challenged merchandise that was not actually tested. Jacoby limited his surveys to testing two specific t-shirts (the Wal*ocaust smiley eagle shirt and the "SUPPORT OUR TROOPS" Wal-Qaeda shirt), and the conclusions stated in his report were narrowly drawn to refer to the tested t-shirts. At his deposition, however, he stated that because the tested shirts were "reasonably representative" of all the shirts that included the prefix "Wal" and the star, as in Wal*ocaust, or the prefix "Wal" and a hyphen, as in Wal-Qaeda, his results could be extrapolated from the tested t-shirts to all of the challenged t-shirts that shared those features. [62] Jacoby's own deposition testimony supplies a fitting framework for analyzing this issue. When declining to offer an opinion about whether consumers would also be confused over the sponsorship of Smith's Walocaust website, Jacoby stated that consumers respond differently to a given stimulus depending on the context in which is it presented, and because his survey tested only Smith's CafePress webstores, his survey provided him with no data upon which to answer the question about consumer confusion regarding Smith's website. [63] Applying the same reasoning, the Court finds that test results from one Walocaust or Wal-Qaeda t-shirt provide no data upon which to estimate consumer confusion regarding another Walocaust or Wal-Qaeda t-shirt. A consumer confused about the sponsorship of a shirt that says "SUPPORT OUR TROOPS [.] BOYCOTT WAL-QAEDA" may easily grasp the commentary in the more straightforwardly derogatory "WAL-QAEDA[.] Freedom Haters ALWAYS" concept. Similarly, a consumer confused over the sponsorship of a "Walocaust" shirt paired with an eagle and a smiley face might have a crystal clear understanding of the word's meaning when it is superimposed over a drawing of a Wal-Mart-like building paired with a sign that advertises family values and discounted alcohol, firearms, and tobacco or when it is presented along with the additional text "The World is Our Labor Camp. Walmart Sucks." As a result, this weakness will also impact the Court's assessment of the survey's evidentiary value. [64] Smith also challenges the survey's small sample size; the Court additionally notes that Jacoby's study employed mall-intercept methodology, which necessarily results in a nonrandom survey sample. [65] It is true that the majority of surveys presented for litigation purposes do, in fact, include small and non-random samples that are not projectible to the general population or susceptible to evaluations of statistical significance. 6 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 32:165 (4th ed. 2006). Courts have found that "nonprobability 'mall intercept' surveys are sufficiently reliable to be admitted into evidence," reasoning that because "nonprobability surveys are of a type often relied upon by marketing experts and social scientists in forming opinions on customer attitudes and perceptions," they may be admitted into evidence under Federal Rule of Evidence 703 as being "of a type reasonably relied upon by experts in the particular field in forming opinions or inferences upon the subject." Id. [66] However, probability surveys are preferred to non-probability surveys. Id. ( Inc. 1973) and quoting its comment that "nonprobability samples do not represent the population truly, and the inapplicability of probability models as well as the impossibility of measuring or controlling random sampling error makes them even less attractive for scientific studies."). Jacoby has similarly noted that although the vast majority of in-person surveys conducted for marketing purposes employ non-probability design, marketers more typically use telephone interviews, a "sizable proportion" of which employ probability designs. Jacoby & Handlin, 81 TRADEMARK REP. at 172 & Table 1 (estimating that sixty-nine percent of commercial marketing and advertising research is conducted by telephone). [67] Although courts typically admit nonprobability surveys into evidence, many recognize that "the results of a nonprobability survey cannot be statistically extrapolated to the entire universe," and they consequently discount the evidentiary weight accorded to them. Id.; accord Am. Home Prods. Corp. v. Barr Labs., Inc., 656 F.Supp. 1058, 1070 (D.N.J. 1987) (criticizing a Jacoby survey and noting, "While non-probability survey results may be admissible, they are weak evidence of behavior patterns in the test universe.") Similarly, "[c]onducting a survey with a number of respondents too small to justify a reasonable extrapolation to the target group at large will lessen the weight of the survey." 6 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 32:171. [68] This Court finds troubling the Jacoby survey's implicit assumption that a study protocol insufficient for many marketing purposes and heavily criticized for behavioral science purposes is nevertheless sufficient to aid a factfinder in a legal action challenging free speech. Therefore, this factor will also affect the Court's assessment of the survey's evidentiary value. [69] Having identified numerous substantial flaws in Jacoby's survey, the Court must now determine whether the flaws limit the survey's evidentiary weight or are so substantial as to render the survey irrelevant or unreliable and therefore inadmissible under Federal [70] Courts in the Eleventh Circuit typically decline to exclude likelihood of confusion surveys and instead consider a survey's technical flaws when determining the amount of evidentiary weight to accord the survey. See, e.g., Jellibeans, 716 F.2d at 845; Nightlight Sys., Inc. v. Nitelites Franchise Sys., Inc., 2007 WL 4563873 at *5 (N.D.Ga. Jul.17, 2007). Consequently, although this is a close case, the Court concludes that the better option is to admit the survey evidence and to consider the survey's flaws in determining the evidentiary weight to assign the survey in the likelihood of confusion analysis. [71] The Court finds, however, that because the survey tested only the "SUPPORT OUR TROOPS[.] BOYCOTT WAL-QAEDA" t-shirt and the Walocaust eagle t-shirt, it has no relevance to any of Smith's other Wal-Mart-related concepts. The Court agrees with Jacoby that context matters-a lot-and therefore will not consider Jacoby's survey as evidence of likelihood of confusion with regard to the words "Walocaust" and "Wal-Qaeda" in general; the study is admissible only as to the two concepts that Jacoby actually tested. See Fed.R.Evid. 702 (limiting expert testimony to that "based upon sufficient facts or data"). [72] Even with regard to the tested concepts, the Court finds that the survey was so flawed that it does not create a genuine issue of material fact. See Spraying Sys. Co. v. Delavan, Inc., 975 F.2d 387, 394 (7th Cir. 1992) (recognizing that if a proffered survey is severely and materially flawed, it may not be sufficient to establish a genuine issue of material fact even if it purports to show evidence of actual confusion). Jacoby surveyed an overbroad universe, failed to adequately replicate the shopping experience, and asked leading questions. He also surveyed a non-random sample that in any case was too small to allow the results to be projected upon the general market. Thus, the Court finds that the Jacoby survey is so flawed that it does not establish a genuine issue of material fact with regard to actual confusion, much less prove actual confusion. [73] Lack of survey evidence showing consumer confusion is not dispositive, however; the Eleventh Circuit has moved away from relying on survey evidence. Frehling Enters. v. Int'l Select Group, Inc., 192 F.3d 1330, 1341 n. 5 (11th Cir. 1999). In fact, a court may find a likelihood of confusion in the absence of any evidence of actual confusion, even though actual confusion is the best evidence of likelihood of confusion. E. Remy Martin & Co. v. Shaw-Ross Int'l Imps., Inc., 756 F.2d 1525, 1529 (11th Cir. 1985). Accordingly, the Court will now consider the remaining likelihood of confusion factors. {The court ultimately granted summary judgment to Smith on Walmart's confusion and dilution claims.} 1. The authorization or permission question. You will recall that the third group of questions in the surveys at issue in Smith v. Wal-Mart asked respondents if they thought the company that "put out" the defendant's products needed permission from another company to do so, and if so, which company. Isn't this the very question that the judge is trying to decide in the case? Why should we ask survey respondents for their view on what is in essence a legal question? 2. Confusion by whom? What is the appropriate consumer population to survey, the defendant's and/or the plaintiff's? McCarthy sets forth the conventional wisdom: "In a traditional case claiming 'forward' confusion, not 'reverse' confusion, the proper universe to survey is composed of the potential buyers of the junior user's goods or services. However, in a 'reverse confusion' case, the relevant group to be surveyed is the senior user's customer base." MCCARTHY, at § 32:159 (citations omitted). 3. Alternative survey formats. Two other methods of surveying for the likelihood of consumer confusion are of particular interest. "What is the first thing that comes to mind when looking at this sign?," and "What was there about the sign that made you say that?" If the respondents did not name a company in response to the first set of questions, they were then asked: "What is the first company that comes to mind when you look at this sign?" (emphasis in original survey script) and "What was there about the sign that made you mention (COMPANY)?" Courts have proven to be less receptive to this "word association" method of surveying for consumer confusion. 2017) (proposing and testing a "survey interpretation method" of contractual interpretation in which "interpretation disputes are resolved through large surveys of representative respondents, by choosing the meaning that a majority supports"). As the surveys at issue in Smith v. Wal-Mart Stores suggested, trademark law may find infringement when the defendant's conduct leads consumers mistakenly to believe that there is a relation of "sponsorship" or "affiliation" between the plaintiff and the defendant. In this excerpt from Int'l Info. Sys {The plaintiff developed a certification program and the certification mark CISSP to denote a "Certified Information Systems Security Professional" who has passed the plaintiff's certification exam. The defendant offered various courses to prepare individuals for the plaintiff's exam. It was undisputed that the defendant could use the plaintiff's mark to indicate that the courses were directed towards preparing students to take the plaintiff's exam. However, the defendant advertised its courses as taught by "Master CISSP Clement Dupuis", allegedly suggesting that Mr. Dupuis had obtained some higher, "Master" level of certification from the plaintiff. Both parties moved for summary judgment.} . . . . [1] The district court held that the only type of confusion relevant in determining infringement is confusion as to source. This is incorrect; protection is not exclusively limited for any type of mark to cases in which there may be confusion as to source. Rather, "[t]he modern test of infringement is whether the defendant's use [is] ("Appellants read the confusion requirement too narrowly. In order to be confused, a consumer need not believe that the owner of the mark actually produced the item and placed it on the market. The public's belief that the mark's owner sponsored or otherwise approved the use of the trademark satisfies the confusion requirement." (citations omitted)); see also Team Tires Plus, Ltd. v. Tires Plus, Inc., 394 F.3d 831, 835 (10th Cir. 2005) ("[T]he relevant confusion under trademark law is not limited to confusion of consumers as to the source of the goods, but also includes confusion as to sponsorship or affiliation, such as a consumer's mistaken belief that a retailer is part of a larger franchising operation.") . . . . [2] This broader prohibition on consumer confusion as to sponsorship or approval is also made explicit in Section 43 of the Lanham Act, which prohibits false advertising and false designation of origin by providing for civil penalties to a person injured by: Any person who, on or in connection with any goods or services, . . . 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, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities . . . . 15 U.S.C. § 1125(a)(1) (emphases added). [3] Indeed, our case law demonstrates that consumer confusion is plainly not limited to source confusion. For example, in Weight Watchers International, Inc. v. Luigino's, Inc., 423 F.3d 137 (2d Cir. 2005), we recognized that Weight Watchers was likely to succeed on its claim that a frozen food manufacturer had infringed its registered trademark in the term "Points" by prominently displaying the Weight Watchers points value on the packages of its frozen meals. In that case, it was clear from the packaging that Luigino's was the source of the actual goods-i.e. the frozen meals. Nonetheless, Weight Watchers could succeed on its claim for trademark infringement by showing "that the use of the term 'Points' on the front of the package was likely to confuse consumers into believing that Weight Watchers had determined the point values or otherwise endorsed the Luigino's products." Id. at 144 (emphasis added). Moreover, we have held that there may be consumer confusion based on the misuse of a trademark, even where it is conceded that the plaintiff's mark accurately designated the source of goods. See Original Appalachian Artworks, Inc. v. Granada Electronics, Inc., 816 F.2d 68, 73 (2d Cir. 1987) (holding unauthorized importation and sale of Cabbage Patch dolls manufactured in Spain with the foreign language adoption papers and birth certificate infringed the plaintiff's trademark in Cabbage Patch dolls "even though the goods do bear [plaintiff's] trademark and were manufactured under license with [the plaintiff]," because plaintiff's "domestic good will is being damaged by consumer confusion caused by the importation of the [Spanish] dolls," which were materially different from American dolls). The district court therefore erred in applying its narrow conception of confusion relevant to infringement claims. [I]t is helpful to distinguish between two fundamentally different and mutually exclusive forms of consumer confusion, which we term signifier confusion and affiliation confusion. Signifier confusion denotes those situations in which a consumer fails to detect the difference between two different marks and perceives each mark to be identical to the other. For example, a consumer may be exposed to the mark STARLUCKS and simply mistakenly read or hear the mark as STARBUCKS. By contrast, affiliation confusion denotes those situations in which a consumer detects the difference between two different marks (so there is no signifier confusion), but the consumer nevertheless concludes that due to the similarity of the marks, there must be some commercial connection between the users of the marks. For example, a consumer thinks STARLUCKS represents a brand extension, sponsorship or endorsement relationship, or some other form of commercial affiliation. The consumer perceives the plaintiff as the source of or somehow responsible for the defendant's goods. to which trademark law should passively take consumer perceptions as given or proactively seek to shape those perceptions. In other words, should trademark law assert in some cases that as a descriptive matter it may well be that consumers are in fact confused as to source or affiliation by the defendant's conduct, but as a prescriptive matter they simply should not be? Should the law allow some degree of confusion in the short term so that consumers can learn in the long term not to be confused? And are federal judges and federal trademark litigation properly suited to this task? See [1] In 2006, back when it was good, NBC's hit show Heroes depicted an indestructible cheerleader sticking her hand down a kitchen garbage disposal and mangling it (the hand quickly regenerated). It was an Insinkerator brand garbage disposal, though you might have had to watch the show in slow motion to notice; the brand name was visible for only a couple of seconds. Emerson Electric, owner of the Insinkerator brand, sued NBC, alleging the depiction of its product in an unsavory light was both an act of trademark dilution and was likely to cause consumers to believe Emerson had permitted the use. NBC denied any wrongdoing, but it obscured the Insinkerator name when it released the DVD and Web versions of the episode. 8 And not just television shows but also movies have provoked the ire of trademark owners: Caterpillar sued the makers of the movie Tarzan on the theory that the use of Caterpillar tractors in the movie to bulldoze the forest would cause consumers to think Caterpillar was actually anti-environment, 9 and the makers of Dickie Roberts: Former Child Star were sued for trademark infringement for suggesting that the star of the absurdist comedy was injured in a Slip 'N Slide accident. 10 Even museums aren't immune: Pez recently sued the Museum of Pez Memorabilia for displaying an eight-foot Pez dispenser produced by the museum's owners. 11 And forget about using kazoos on your duck tours: Ride the Ducks, a tour company in San Francisco that gives out duck-call kazoos to clients on its ducks, sued Bay Quackers, a competing duck tour company that also facilitated quacking by its clients. 12 [2] Most of these examples involve threats of suit, and they could be dismissed simply as overreaching by a few aggressive trademark owners. But these threats were not isolated incidents, and they shouldn't be quickly ignored. The recipients of all of these threats, like many others who receive similar objections, 13 knew well that they had to take the asserted claims seriously because courts have sometimes been persuaded to shut down very similar uses. In 1998, for instance, New Line Productions was set to release a comedy about a beauty pageant that took place at a farm-related fair in Minnesota. New Line called the movie Dairy Queens but was forced to change the name to Drop Dead Gorgeous after the franchisor of Dairy Queen restaurants obtained a preliminary injunction. 14 The owners of a restaurant called the "Velvet Elvis" were forced to change its name after the estate of Elvis Presley sued for trademark infringement. 15 A humor magazine called Snicker was forced to pull a parody "ad" for a mythical product called "Michelob Oily," not because people thought Michelob was actually selling such a beer (only six percent did 16 ), but because a majority of consumers surveyed thought that the magazine needed to receive permission from Anheuser-Busch to run the ad. 17 And Snicker might face more trouble than that; another court enjoined a furniture delivery company from painting its truck to look like a famous candy bar. 18 [3] The Mutual of Omaha Insurance Company persuaded a court to stop Franklyn Novak from selling T-shirts and other merchandise bearing the phrase "Mutant of Omaha" and depicting a side view of a feather-bonneted, emaciated human head. 19 No one who saw Novak's shirts reasonably could have believed Mutual of Omaha sold the T-shirts, but the court was impressed by evidence that approximately ten percent of all the persons surveyed thought that Mutual of Omaha "[went] along" with Novak's products. 20 The creators of Godzilla successfully prevented the author of a book about Godzilla from titling the book Godzilla, despite clear indications on both the front and back covers that the book was not authorized by the creators. 21 [4] The Heisman Trophy Trust prevented a T-shirt company called Smack Apparel from selling T-shirts that used variations of the word HEISMAN, such as "HE.IS.the.MAN," to from the owners of the Marco Beach Ocean Resort to the operators of "urinal.net," a website that collects pictures of urinals in various public places, for depicting urinals at the Resort and identifying them as such, Mark Owner Pissed About Urinals, Chilling Effects Clearinghouse, Jan. 4, 2005, http:// www.chillingeffects.org/trademark/notice.cgi?NoticeID=1576. 14 Am. Dairy Queen Corp. v. New Line Prods., Inc., 35 F. Supp. 2d 727, 728 (D. Minn. 1998). 15 Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998) 16 Anheuser-Busch, Inc. v. Balducci Publ'ns, 28 F.3d 769, 772-73 (8th Cir. 1994). That any consumers were confused was remarkable, and perhaps a statement about the reliability of consumer confusion surveys rather than the stupidity of 6% of the population. 19 Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 397 (8th Cir. 1987). 20 Id. at 400. promote particular players for the Heisman Trophy. 22 This was not Smack Apparel's first trademark lesson: a court previously ordered it to stop selling T-shirts that used university colors and made oblique references to those universities' football teams because the court believed the designs created "a link in the consumer's mind between the T-shirts and the Universities" and demonstrated that Smack Apparel "inten[ded] to directly profit [from that link]." 23 Respect Sportswear was denied registration of "RATED R SPORTSWEAR" for men's and women's clothing on the ground that consumers would be confused into thinking the Motion Picture Association of America sponsored the clothes. 24 A street musician who plays guitar in New York while (nearly) naked was permitted to pursue his claim against Mars on the theory consumers would assume he sponsored M&Ms candies, since Mars advertised M&Ms with a (naked) blue M&M playing a guitar. 25 A legitimate reseller of dietary supplements lost its motion for summary judgment in a suit by the supplements' brand owner because the court concluded the reseller might have confused consumers into thinking it was affiliated with the brand owner when it purchased ad space on Google and truthfully advertised the availability of the supplements. 26 Amoco persuaded a court that consumers might believe it sponsored Rainbow Snow's sno-cones, mostly because Rainbow Snow's shops were located in the same area as some of Amoco's Rainbo gas stations. 27 The National Football League successfully sued the state of Delaware for running a lottery based on point spreads in NFL games, even though the Lottery never used the NFL name or any of its marks for the purpose of identifying or advertising its games. 28 The court was persuaded that the 22 27 Amoco Oil Co. v. Rainbow Snow, 748 F.2d 556, 559 (10th Cir. 1984). Rainbow Snow sold its snow cones from fourteen round, ten-by-six-foot booths, which were blue with a 180-degree, redorange-yellow-green rainbow appearing on the upper half of the face of the booth and prominently displayed the name "Rainbow Snow" in white letters below the rainbow. Id. at 557. Signs at Amoco's Rainbo gas stations displayed the word "Rainbo" in white, with the word appearing against a black background and below a red-orange-yellow-blue truncated rainbow logo. Id. 28 NFL v. Governor of Del., 435 F. Supp. 1372, 1376, 1380-81 (D. Del. 1977). The lottery game was called "Scoreboard" and the individual games were identified as "Football Bonus," "Touchdown," and "Touchdown II." Id. at 1380. betting cards' references to NFL football games by the names of the cities whose teams were playing might cause consumers to believe the NFL sponsored the lottery game. 29 And the owners of a Texas golf course that replicated famous golf holes from around the world were forced to change their course because one of the holes was, in the view of the Fifth Circuit, too similar to the corresponding South Carolina golf hole it mimicked. 30 [5] Whatever fraction of the total universe of trademark cases these cases constitute, there are enough of them that recipients of cease and desist letters from mark owners have to take the objections seriously. Indeed many simply cave in and change their practices rather than face the uncertainty of a lawsuit. The producers of the TV show Felicity changed the name of the university attended by characters on the show after New York University, the school originally referenced, objected to the depiction of those students as sexually active. 31 The producers of a movie originally titled Stealing Stanford changed the title of their movie after Stanford University objected to the movie's storyline, which centered on a student who stole money to pay tuition. 32 It's possible that the producers of the show and the movie would have had legitimate defenses had they decided to use the real universities' names despite the objections, but in light of the case law outlined above, neither was willing to defend its right to refer to real places in their fictional storylines. 33 And anecdotes like these are becoming depressingly common. Production of the film Moneyball, which was based on Michael Lewis's best-selling profile of Oakland Athletics General Manager Billy Beane, was halted just days before shooting was set to begin in part because Major League Baseball disapproved of the 29 The cards on which the customers of the Delaware Lottery marked their betting choices identified the next week's NFL football games by the names of the cities whose NFL teams were scheduled to compete against each other (e.g., Washington v. Baltimore). Id. The parties stipulated that, in the context in which they appeared, these geographic names were intended to refer to, and consumers understood them to refer to, particular NFL football teams. Id. This was enough for the court to find sponsorship or affiliation confusion because, "[a]pparently, in this day and age when professional sports teams franchise pennants, teeshirts, helmets, drinking glasses and a wide range of other products, a substantial number of people believe, if not told otherwise, that one cannot conduct an enterprise of this kind without NFL approval." Id. at 1381. The court therefore entered a limited injunction "requiring the Lottery Director to include on Scoreboard tickets, advertising and any other materials prepared for public distribution a clear and conspicuous statement that Scoreboard [was] not associated with or authorized by the National Football League." Id. 30 script's depiction of baseball and therefore objected to use of its trademarks in the film. 34 Apparently Major League Baseball believes it can control the content of any film that refers to real baseball teams. [6] What unifies all the cases that have given these creators such pause is that courts found actionable confusion notwithstanding the fact that consumers couldn't possibly have been confused about the actual source of the defendants' products . . . . Though many of the examples provided in the Lemley & McKenna excerpt show severe overreach by trademark owners, there are of course counterexamples in which most would agree that trademark owners should have every right to seek to prevent association or affiliation confusion. For example, consumers might care strongly about whether a company is truthfully declaring itself to be an "Official Sponsor of the United States Olympic Team" or an "Official Sponsor of the United States Women's National Team." In the following case, Board of Supervisors for Louisiana State University Agricultural & Mechanical College v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008), parts of which were excerpted in Part I.A.1.b, the Fifth Circuit addressed the argument that consumers do not care if the merchandise they purchase is authorized. The plaintiffs Louisiana State University, the University of Oklahoma, Ohio State University, the University of Southern California, and Collegiate Licensing Company (the official licensing agent for the universities) brought suit against defendant Smack Apparel for its unauthorized sale of apparel bearing the universities' colors and various printed messages associated with the universities. The Eastern District of Louisiana granted the plaintiffs' motion for summary judgment on the issue of trademark infringement. The Fifth Circuit affirmed. Excerpted here is the Fifth Circuit's discussion of sponsorship confusion and whether consumers prefer authorized merchandise in certain situations. Do you find it persuasive? Note that the apparel at issue, further examples of which are given below, did not bear the universities' full names or mascots. [1] Once a plaintiff shows ownership in a protectible trademark, he must next show that the defendant's use of the mark "creates a likelihood of confusion in the minds of potential customers as to the 'source, affiliation, or sponsorship'" of the product at issue. Westchester Media v. PRL USA Holdings, Inc. 38 When assessing the likelihood of confusion, we consider a nonexhaustive list of so-called "digits of confusion," including: "(1) the type of mark allegedly infringed, (2) the similarity between the two marks, (3) the similarity of the products or services, (4) the identity of the retail outlets and purchasers, (5) the identity of the advertising media used, (6) the defendant's intent, and (7) any evidence of actual confusion." 40 Courts also consider (8) the degree of care exercised by potential purchasers. 41 No single factor is dispositive, and a finding of a likelihood of confusion need not be supported by a majority of the factors. 42 [2] Smack argues that there were genuine issues of material fact whether its t-shirt designs were likely to cause confusion among consumers. We disagree. The first digit, the type of mark, refers to the strength of the mark. Generally, the stronger the mark, the greater the likelihood that consumers will be confused by competing uses of the mark. We agree with 38 214 F.3d 658, 663 (5th Cir. 2000) (citation omitted). 40 Id. at 664. 41 Am. Rice, 518 F.3d at 329. the district court that the plaintiffs' marks, which have been used for over one hundred years, are strong. As noted above, Smack concedes that the Universities' color schemes are wellknown and are used to identify the plaintiff Universities. It argues, however, that the district court disregarded evidence of third-party use of the Universities' team colors in a nontrademark manner, and it cites Sun Banks of Florida, Inc. v. Sun Federal Savings and Loan Association 46 in support of its argument. [3] In Sun Banks, we held that "extensive" third-party use can weaken a mark and negate a likelihood of confusion. In that case there were "over 4400 businesses" in Florida that were using the word "Sun" in their names, and we noted that "a significant number" fell within the same category of financial institutions as the plaintiff. 48 [4] Smack presented photographs of three businesses in Louisiana, eight businesses in Ohio, and approximately 20 businesses in Oklahoma that incorporated in their signage color schemes similar to the school colors of LSU, OSU, and OU, respectively. The businesses included several restaurants and bars, a driving school, a pain management clinic, a theater, a furniture store, a dry cleaners, a motel, a donut shop, an apartment complex, and a car care company. All third-party use of a mark, not just use in the same industry as a plaintiff, may be relevant to whether a plaintiff's mark is strong or weak. 49 But the key is whether the thirdparty use diminishes in the public's mind the association of the mark with the plaintiffsurely lacking where colors are shown on a store wall. See Univ. of Ga. Athletic Ass'n v. Laite. 50 Smack's evidence falls far below that of extensive use, and the specific photographs of thirdparty use here fail to create an issue of fact concerning the public's association between the plaintiffs and color schemes and other indicia that clearly reference the Universities. We conclude that the Universities possess strong marks in their use of color schemes and other identifying indicia on college sports-themed merchandise. [5] The second digit is the similarity of the marks. This factor requires consideration of the marks' appearance, sound, and meaning. The district court held that the marks at issue are virtually identical. Smack argues that there was no evidence that any of its shirts were identical to any shirts licensed by the Universities and that its t-shirt designs are not at all similar to any of the Universities' licensed products. Smack's contention is belied by the record, and even a cursory comparison of Smack's designs with the plaintiffs' licensed products reveals striking similarity. National Champions," and the back contains the scores from twelve games won by LSU. The scores are arranged in a circle with a short phrase poking fun at each opponent. The shirt also contains the final score of the 2004 Sugar Bowl, which LSU won, and the phrase "Sweet as Sugar!" Although the shirt does not use the initials "LSU" anywhere, its identification of LSU as the national champion is unmistakable from the colors and from the references to the games in which LSU played. This shirt is strikingly similar to LSU's own merchandise that also uses the purple and gold colors and proclaims LSU as the national champion. Several of the official designs contain the scores of the games from LSU's season and at least two designs present those scores in a circular arrangement. The official designs also contain the phrases "Ain't It Sweet!" and "Pour It On!" [7] Another Smack shirt directed at LSU fans is the "Beat Oklahoma" shirt. It states, "Bring it Back to the Bayou." This is very similar to two official designs that state in part "Bring It Home" and "We'll Have Big Fun on the Bayou." [8] The evidence of similarity is not limited to the shirts targeted toward LSU fans. For example, the "Bourbon Street or Bust!" shirt directed at OU fans highlights the letters "OU" in a different type face in the words "Bayou" and "your." It also states "Sweet as Sugar," references beads, and contains a picture of a mardi gras mask. OU presented evidence of official t-shirt designs that also highlight the letters "OU," contain phrases such as "Ain't Nothin' Sweeter" and "100% Pure Sugar," and contain depictions of mardi gras masks and beads. Another Smack OU design encourages, "Let's Make it Eight," while official designs proclaim "Sugar is Sweet But . . . 8 is Great!" [9] In the district court, Smack presented the affidavit of its principal, Wayne Curtiss, who explained that Smack uses humor and creative language to distinguish its t-shirt designs from those of the purportedly more conservative licensed or school-endorsed apparel. Curtiss asserted that the "got seven?" and "got eight?" shirts directed toward OSU and USC fans, respectively, are parodies of the "got milk" campaign. He further averred that he has used a similar design on shirts for LSU and OU fans. It is clear from the record, however, that use of creative language is not unique to Smack and does not make Smack's shirts dissimilar to the Universities' own products. For example, LSU presented evidence of a school-endorsed design that included the phrase "got sugar?" We conclude that Smack's shirts and the Universities' products are similar in look, sound, and meaning, and contain very similar color schemes, words, and images. The similarities in design elements are overwhelming and weigh heavily in favor of a likelihood of confusion. The district court correctly held there is no genuine issue of material fact with respect to this digit of confusion. 54 54 Because we conclude that there is no issue of fact as to the similarity of the use of the marks in the t-shirt designs, we need not consider Smack's contention that the district court erroneously stated there had been instances where consumers actually believed Smack's shirts were affiliated with or sponsored by the Universities. Smack points to a stipulation by the parties at the summary judgment stage that there was no evidence any consumer purchased a Smack shirt believing it to be licensed by one of the Universities. Actual confusion on the part of a consumer is not required to find a likelihood of confusion, however. Elvis Presley Enters., 141 F.3d at 203. [10] The third digit in the likelihood of confusion analysis is the similarity of the products or services. We disagree with Smack's assertion that the district court did not find a great deal of similarity between the plaintiffs' products and the t-shirts at issue, as the district court specifically held that "[i]t is undisputed that both Smack and the universities market shirts bearing the same color schemes, logos, and designs." 55 The district court went on to reject Smack's argument that its t-shirts differed from the Universities' products because of the use of irreverent phrases or slang language, reasoning that Smack's use of such phrases and language was a misuse of the Universities' good will in its marks. Smack denies that it appropriated the Universities' good will, but it does not make an argument here that its shirts are distinguishable from those of the Universities because of particular language on its shirts. We therefore find this factor weighs in favor of a likelihood of confusion. [11] Smack concedes that the fourth factor of the analysis-identity of retail outlets and purchasers-weighs in favor of a likelihood of confusion because the Universities' licensed products are often sold wholesale to the same retailers who purchase Smack's products. [12] The fifth digit is the identity of advertising media. The district court found that Smack used the Universities' color schemes, logos, and designs in advertising its shirts at the same or similar venues as those used by the Universities. The court based its finding on Smack's admission that it participated in the same trade shows as the Universities and that it displayed its shirts at the trade shows. The Universities do not point us to evidence that trade shows are a significant advertising channel for the kinds of products at issue in this case. Although the t-shirts are sold to the public at the same retail outlets as officially licensed merchandise, Curtiss testified that beside limited sales on Smack's web site, Smack does not sell directly to the public and does not advertise. Curtiss testified that Smack sells mainly to wholesalers. Some of these wholesalers may include Smack's shirts in advertisements that promote their own business, but Curtiss was unable to provide much information about these ads. We conclude that this digit, based on trade show advertising, is minimally probative. [13] The sixth digit of confusion further supports a likelihood of confusion. Although not necessary to a finding of likelihood of confusion, a defendant's intent to confuse may alone be sufficient to justify an inference that there is a likelihood of confusion. As noted by the district court, Smack admitted that it "'used school colors and "other indicia" with the intent of identifying the university plaintiffs as the subject of the message expressed in the shirt design.'" Curtiss testified that it was "no coincidence" that Smack's shirts incorporated the color schemes of the plaintiff Universities and that he designed the shirts to make people think of the particular school that each shirt targeted. Smack asserts that its intent to copy is not the same as an intent to confuse. The circumstances of this case show, however, that Smack intended to capitalize on the potential for confusion. Smack knew that its shirts were sold in the same venues as and sometimes alongside officially licensed merchandise, and it intentionally incorporated color marks to create the kind of association with the Universities that would influence purchasers. [14] The Eleventh Circuit found a likelihood of confusion based on a similar intent by the defendant to capitalize on the popularity of a college sports team. Univ. of Ga. Athletic Ass'n v. Laite. 59 In Laite, the defendant used school colors and a mark strikingly similar to the University of Georgia's bulldog mascot on cans to sell "Battlin' Bulldog Beer." After concluding that the defendant's bulldog mark was similar to the university's mark, the court turned to the defendant's intent, concluding "there can be no doubt that Laite hoped to sell 'Battlin' Bulldog Beer' not because the beer tastes great, but because the cans would catch the attention of University of Georgia football fans." 61 Significantly, the court found "the defendant's intent and the similarity of design between the two marks sufficient to support the district court's finding of a 'likelihood of confusion . . . .'" 62 The same is true here. Smack did not hope to sell its t-shirts because of some competitive difference in quality or design compared with the Universities' licensed products, but rather it intended to take advantage of the popularity of the Universities' football programs and the appearance of the school teams in the college bowl games. We have previously said that when a "mark was adopted with the intent of deriving benefit from the reputation of [the mark holder] that fact alone 'may be sufficient to justify the inference that there is confusing similarity.'" Amstar Corp. v. Domino's Pizza, Inc. 63 We believe that Smack's admitted intent and the similarity in appearance between Smack's shirts and the Universities' licensed products is strong evidence of a likelihood of confusion. [15] Smack argues that an intent to confuse is negated by its use of its own logo and the words "Talkin' the Talk," which it maintains identifies it as the source of the shirt. We are not persuaded. Smack's logo appears in a space that is only 2.5 inches wide. We cannot conclude, without more, that this small and inconspicuous placement of the logo would disabuse consumers of a mistaken belief that the Universities sponsored, endorsed or were otherwise affiliated with the t-shirts. 64 Smack has not pointed to evidence that its own logo is recognizable by consumers or that it was acting to trade off its own reputation as a producer of specialty t-shirts. Nor are we convinced that Smack's logo on the shirts acts as a disclaimer. The Universities point out that they require all licensed products to contain the licensee's name. Therefore, a consumer could believe that Smack's logo merely indicated that it was a 59 756 F.2d 1535 (11th Cir. 1985). 62 Id. at 1545. 63 615 F.2d 252, 263 (5th Cir. 1980) (quoting RESTATEMENT OF TORTS § 729, comment f (1938)). 64 See Pebble Beach, 155 F.3d at 552 (noting that "conspicuous disclaimers that disclaim affiliation may reduce or eliminate confusion"). licensee. 66 We conclude that the intent digit weighs in favor of a conclusion that there is a likelihood of confusion. [16] The seventh digit is evidence of actual confusion. Evidence that consumers have been actually confused in identifying the defendant's use of a mark as that of the plaintiff may be the best evidence of a likelihood of confusion. It is well established, however, that evidence of actual confusion is not necessary for a finding of a likelihood of confusion. The district court did not resolve whether there was sufficient evidence of actual confusion, and because such evidence is not required we also find it unnecessary to pass on the question further. 69 [17] With respect to the eighth digit of confusion-the degree of care exercised by potential purchasers-the district court held that the t-shirts at issue are relatively inexpensive impulse items that are not purchased with a high degree of care. Where items are relatively inexpensive, a buyer may take less care in selecting the item, thereby increasing the risk of confusion. Smack contends there was insufficient evidence for the district court's conclusion. In response, the Universities note Curtiss' testimony that he hoped customers' decisions to purchase Smack's shirts would be "quick," and they point out that the shirts sell for less than $18. Smack cites no evidence to demonstrate an issue of fact on this point, and we agree with the district court that this digit weighs in favor of a likelihood of confusion. [18] After reviewing the record, we conclude that there is no genuine issue of fact that Smack's use of the Universities' color schemes and other identifying indicia creates a likelihood of confusion as to the source, affiliation, or sponsorship of the t-shirts. As noted above, the digits of confusion-particularly the overwhelming similarity of the marks and the defendant's intent to profit from the Universities' reputation-compel this conclusion. This is so, we have noted, because Smack's use of the Universities' colors and indicia is designed to create the illusion of affiliation with the Universities and essentially obtain a "free ride" by profiting from confusion among the fans of the Universities' football teams who desire to show support for and affiliation with those teams. 72 This creation of a link in the consumer's mind between the t-shirts and the Universities and the intent to directly profit therefrom results in "an unmistakable aura of deception" and likelihood of confusion. 66 See A.T. Cross Co. v. Jonathan Bradley Pens, Inc., 470 F.2d 689, 692 (2d Cir. 1972) (defendant's placement of its own name on pen also bearing mark similar to plaintiff's mark "does not save the day; a purchaser could well think plaintiff had licensed defendant as a second user and the addition is thus 'an aggravation, and not a justification' " (citation omitted)). 69 The Universities contend that there was evidence of actual confusion consisting of consumer surveys concerning two of the six t-shirt designs and testimony from Curtiss that "I have had people come up and go-at the booth and go, 'Are these licensed?' " The evidence is arguably minimal, see Amstar, 615 F.2d at 263, but as discussed we need not resolve the matter. 72 See Boston Athletic Ass'n v. Sullivan, 867 F.2d 22, 33 (1st Cir. 1989) ("Defendants' shirts are clearly designed to take advantage of the Boston Marathon and to benefit from the good will associated with its promotion by plaintiffs. Defendants thus obtain a 'free ride' at plaintiffs' expense."). [19] Smack contends that there is no evidence that consumers care one way or the other whether t-shirts purchased for wear at a football game are officially licensed and that, absent evidence that consumers prefer licensed merchandise, it was error for the district court to conclude there was a likelihood of confusion. Smack relies in part on our decision in Supreme Assembly, Order of Rainbow for Girls v. J.H. Ray Jewelry Company. 74 The context of that case is different from the instant case. [20] In Rainbow for Girls, a fraternal organization and its official jeweler sued a retailer for trademark infringement based on the retailer's sale of jewelry bearing the organization's registered mark. Purchasers in the fraternal-organization jewelry market bought jewelry to show membership and status in the organization. We upheld the district court's finding of no likelihood of confusion, concluding that "[t]he fact that purchasers purchased Rainbow jewelry as a direct result of the presence of the Rainbow emblem does not compel the conclusion that they did so believing that the jewelry was in any way endorsed, sponsored, approved or otherwise associated with Rainbow, given the court's findings." 76 The district court had held that there was no historic custom or practice specific to Rainbow jewelry or to the fraternal jewelry industry that Rainbow jewelry could be manufactured only with Rainbow's sponsorship or approval. Instead, the court noted that fraternal organizations exercised little control over the manufacture of jewelry bearing their emblems. Furthermore, the court had held that because Rainbow's "official jeweler" was itself well-advertised and used its own distinctive mark on the jewelry, any jewelry without that distinctive mark could not cause confusion. We noted that the district court's findings distinguished the case from our decision in Boston Professional Hockey Association v. Dallas Cap & Emblem Manufacturing. [21] In Boston Hockey, we held that the defendant infringed the plaintiff's trademark rights by selling embroidered patches containing the emblems of professional hockey teams. 81 There, the emblems were sold for use by the public to show "allegiance to or identification with the teams." 82 We held that the likelihood of confusion requirement was met because the defendant duplicated and sold the emblems "knowing that the public would identify them as being the teams' trademarks" and because the public's "certain knowledge . . . that the source and origin of the trademark symbols were in plaintiffs satisfies the requirements of the act." 83 [22] Subsequently, in Kentucky Fried Chicken Corporation v. Diversified Packaging Corporation, we recognized that Boston Hockey might be read to dispose of the confusion issue when buyers undoubtedly know that the plaintiff is the source and origin of a mark. 84 We reiterated that a showing of likelihood of confusion was still required. But we noted that 74 676 F.2d 1079 (5th Cir. 1982). 76 Id. at 1084 (emphasis added). 81 510 F.2d 1004 (5th Cir. 1975). 82 Id. at 1011. 83 Id. at 1012. the circumstances in Boston Hockey supported the likelihood of confusion there insofar as the sale of products "universally associated" with the hockey team "supported the inescapable inference that many would believe that the product itself originated with or was somehow endorsed by Boston Hockey." In Rainbow for Girls, the district court opinion, which we upheld, also recognized in reference to Boston Hockey that "'(i)t is not unreasonable to conclude, given the degree to which sports emblems are used to advertise teams and endorse products, that a consumer seeing the emblem or name of a team on or associated with a good or service would assume some sort of sponsorship or association between the product's seller and the team.'" 87 [23] We agree with this reasoning as applied to this case, which is more like Boston Hockey than Rainbow for Girls. We hold that given the record in this case and the digits of confusion analysis discussed above-including the overwhelming similarity between the defendant's t-shirts and the Universities' licensed products, and the defendant's admitted intent to create an association with the plaintiffs and to influence consumers in calling the plaintiffs to mind-that the inescapable conclusion is that many consumers would likely be confused and believe that Smack's t-shirts were sponsored or endorsed by the Universities. The Universities exercise stringent control over the use of their marks on apparel through their licensing program. It is also undisputed that the Universities annually sell millions of dollars worth of licensed apparel. We further recognize the public's indisputable desire to associate with college sports teams by wearing team-related apparel. We are not persuaded that simply because some consumers might not care whether Smack's shirts are officially licensed the likelihood of confusion is negated. Whether or not a consumer cares about official sponsorship is a different question from whether that consumer would likely believe the product is officially sponsored. For the foregoing reasons, we conclude that a likelihood of confusion connecting the presence of the Universities' marks and the Universities' themselves was demonstrated in this case. . . . . [W]e argue that courts can begin to rein in some of these excesses by focusing their attention on confusion that is actually relevant to purchasing decisions. Uses of a trademark that cause confusion about actual source or about responsibility for quality will often impact purchasing decisions, so courts should presume materiality and impose liability when there is evidence such confusion is likely. Uses alleged to cause confusion about more nebulous relationships, on the other hand, are more analogous to false advertising claims, and those uses should be actionable only when a plaintiff can prove the alleged confusion is material to consumers' decision making. Th[e] reality of modern brand extensions raises the "circularity" question. If consumers think that most uses of a trademark require authorization, then in fact they will require authorization because the owner can enjoin consumer confusion caused by unpermitted uses or charge for licenses. And if owners can sue to stop unauthorized uses, then only authorized uses will be seen by consumers, creating or reinforcing their perception that authorization is necessary. This is a "chicken and the egg" conundrum. Which comes first? The trademark right on far-flung items or the license? Licensing itself may affect consumer perception if consumers see a plethora of items with the mark perhaps accompanied by an "authorized by" label. MCCARTHY § 24:9. See also Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 YALE L.J. 1687, 1708 (1999) ("Ironically, having accepted the merchandising rationale for certain sorts of trademarks, we may find it hard to undo. It is possible that consumers have come to expect that 'Dallas Cowboys' caps are licensed by the Cowboys, not because they serve a trademark function, but simply because the law has recently required such a relationship. If this expectation exists, consumers may be confused if the law changes."). Cf. Vornado Air Circulation Sys., Inc. v. Duracraft Corp., 58 F.3d 1498, 1509 (10th Cir. 1995) ("We recognize also that consumer confusion resulting from the copying of product features is, in some measure, a self-fulfilling prophecy. To the degree that useful product configurations are protected as identifiers, consumers will come to rely on them for that purpose, but if copying is allowed, they will depend less on product shapes and more on labels and packaging."). Trademark lawyers sometimes speak of the entity referenced on merchandise (such as apparel) as the "secondary source" of the merchandise: The "ornamentation" of a T-shirt can be of a special nature which inherently tells the purchasing public the source of the T-shirt, not the source of manufacture but the secondary source. Thus, the name "New York University" . . . , albeit it will serve as ornamentation on a T-shirt will also advise the purchaser that the university is the secondary source of that shirt. It is not imaginable that Columbia University will be the source of an N.Y.U. T-shirt. Where the shirt is distributed by other than the university the university's name on the shirt will indicate the sponsorship or authorization by the university. In re Olin Corp., 181 U.S.P.Q. 182, 182, (TTAB 1973). In Lucasfilm Ltd. LLC v. Ren Ventures Ltd., No. 17 Civ. 07249, 2018 WL 2392963 (N.D. Cal. Apr. 24, 2018), the defendants produced a mobile game app entitled "Sabacc-The High Stakes Card Game," which was based on the card game Sabacc described in several novels from the fictional Star Wars universe (and which was featured in the Star Wars film Solo: A Star Wars Story). The plaintiff asserted trademark rights in the name. In denying the defendants' motion to dismiss, the Northern District of California cited several previous cases in which courts recognized trademark rights in fictional elements of expressive works: Defendants next contend that the name of a fictional good or service in an expressive work does not function as a mark for the expressive work in which the fictional good or service appears. On the contrary, courts have long held that fictional elements of expressive works can function as trademarks when those elements symbolize the plaintiff or its product to the consuming public. See DC Comics, Inc. v. Filmation Assocs., 486 F. Supp. 1273, 1277 (S.D.N.Y. 1980). Following this principle, courts have extended trademark protection to the "General Lee" car from the television series "The Dukes of Hazzard," see Warner Bros., Inc. v. Gay Toys, Inc., 658 F.2d 76, 78 (2d Cir. 1981), the fictional restaurant "The Krusty Krab" from the "SpongeBob SquarePants" television series, see Viacom Int'l Inc. v. IJR Capital Invs., LLC, 242 F. Supp. 3d 563, 569 (S.D. Tex. 2017), the "Hobbit" characters from J.R.R. Tolkien ' In the face of this weight of authority, defendants point to several administrative decisions from the Trademark Trial and Appeal Board (TTAB) where the Board refused to recognize certain fictional elements as being trademarks. See Mot. to Dismiss at 17-18. Yet these decisions merely suggest that fanciful elements do not always function as marks for the expressive works in which they appear, not that they may never do so. For example, in Paramount Pictures Corp. v. Romulan Invasions, 7 U.S.P.Q.2d 1897 (T.T.A.B. Mar. 31, 1988), Paramount sought to enjoin a rock band from registering "The Romulans" as the group's name, on the grounds that "Romulans" are a fictional alien race appearing in the Star Trek franchise. While the Board provided no explanatory reasoning for its conclusion that Paramount's use of the name did not confer trademark rights, a reasonable consumer would not likely assume the rock band was affiliated with the Star Trek franchise on account of its name alone. Thus, the Board concluded Paramount's use of "Romulans" should not preclude registration of the rock band's name. Lucasfilm Ltd. LLC, 2018 WL 2392963, at *3-4. See also Lisa Pearson, The Real Life of Fictional Trademarks, 100 TRADEMARK REP. 839 (2020). Virgin Enterprises focused on "point of sale" confusion, i.e., consumer confusion as to source at the moment when the consumer purchases the defendant's goods or services. We turn now to other modes of confusion. We consider first "initial interest confusion," which "occurs when a customer is lured to a product by the similarity of the mark, even if the customer realizes the true source of the goods before the sale is consummated." Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808, 812 (7th Cir. 2002), as amended (Oct. 18, 2002) (citation omitted). See also Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 523 F.2d 1331, 1342 (2d Cir. 1975) (finding "initial confusion" when the declaratory plaintiff used the mark GROTRIAN-STEINWEG for pianos even if no consumers ultimately purchased the plaintiff's pianos believing them to be STEINWAY pianos). [1] Plaintiffs and Defendants sell competing adjustable air mattresses and related products. Plaintiffs' registered trademarks include "SLEEP NUMBER", "WHAT'S YOUR SLEEP NUMBER", "SELECT COMFORT", and "COMFORTAIRE". Plaintiffs allege Defendants used similar and identical marks in several different capacities online to sell competing products. . . . At summary judgment the district court rejected as a matter of law an infringement theory based on presale or initial-interest confusion. 4 J. McCarthy, Trademarks and Unfair Competition, § 23:6 (4th Ed. 2010) (hereinafter McCarthy) (initial-interest confusion is "confusion that creates initial customer interest, even though no actual sale is finally completed as a result of the confusion"). The case proceeded to a trial on trademark infringement and dilution claims and on unfair competition and false advertising claims. Consistent with the summary judgment ruling, the district court instructed the jury that infringement liability depended on a showing of a likelihood of confusion at the time of purchase. The trial resulted in a mixed verdict. [2] Both sides appeal. . . . Because we conclude the district court erred by finding as a matter of law that the relevant consumers were sophisticated and that a theory of initialinterest confusion could not apply, we reverse. . . . I. Background [3] Plaintiffs are the owners of the heavily advertised Select Comfort and Sleep Number brands of adjustable air mattresses sold online, over the phone, and (primarily) through hundreds of company-owned stores nationwide. Defendant Dires, LLC, and its principals and predecessor or affiliated companies, actually made adjustable air beds at an earlier date. Defendants have evolved into an online retailer ("personalcomfortbed.com") that utilizes internet advertising and a call-center-based sales model to sell their own brand of lowerpriced adjustable air beds. The individual defendants are executives or owners of Dires or related companies, all of whom had input into marketing strategy and advertising design. Defendants are a distant second to Plaintiffs in adjustable-bed sales volume. [4] Plaintiffs' overall theory of the case alleges Defendants employed words or phrases identical or confusingly similar to Plaintiffs trademarks in various online advertising formats including: website urls; search inquiry paid terms; embedded links in third-party sites; and general use of identical or similar phrases in text advertisements or combined graphic-andtext advertisements that could be viewed by users or detected organically by search engines. According to Plaintiffs, Defendants used these means to divert customers to their own website and phone lines where Defendants (1) failed to dispel consumer confusion or made statements that caused further source confusion and (2) made false representations about their own products and Plaintiffs' products in order to promote their own products. In this way, Plaintiffs assert trademark infringement, trademark dilution, and false-advertising theories that rely upon common facts. [5] As relevant to claims on appeal, Plaintiffs asserted federal trademark infringement and dilution claims based on their registered trademarks, federal unfair competition and false advertising claims, and a state law deceptive trade practices claim. In a declaratory judgment counterclaim, Defendants . . . argued Plaintiffs could not maintain an infringement claim based on presale or initial-interest confusion. Both parties sought summary judgment. [6] In summary judgment rulings, the district court found . . . [r]egarding trademark infringement . . that outstanding questions of fact precluded summary judgment. Regarding the specific question of trademark infringement in the form of initial-interest confusion, the district court first noted that Plaintiffs expressly disavowed any theory of trademark infringement that relied exclusively on Defendants' use of Plaintiffs' trademarks as paid search terms with search engine providers such as Google. Rather, Plaintiffs alleged infringement based on that use coupled with Defendants' several and varied other uses of similar and identical trademarks in multiple forms of online advertising. The district court then relied on our case, Sensient Techs. Corp. v. SensoryEffects Flavor Co., 613 F.3d 754 (8th Cir. 2010), noting that the Eighth Circuit had neither expressly adopted nor rejected a theory of initial-interest confusion as a general matter, but had refused to apply the theory in a case where consumers were sophisticated. [7] The District Court next held as a matter of law that retail purchasers of mattresses were sophisticated consumers because mattresses are expensive. As a result, the District Court held as a matter of law that a claim alleging initial-interest confusion could not proceed and Plaintiffs would have to show a likelihood of confusion at the time of purchase. . . . [8] At trial, Plaintiffs presented evidence which showed Defendants had used Plaintiffs' actual trademarks as paid search terms and as identical phrases in their own web-based advertising in text pages, combined text and graphical pages, as terms embedded in linked internet address urls, and in other fashions. Examples included website links that presented Plaintiffs' trademarks as identical phrases (e.g. personalcomfortbed.com/vSleepNumber or www.personalcomfortbed.com/ cComfortaire). In addition, Defendants used phrases similar to Plaintiffs' trademarks, often with words broken up in a grammatically non-sensical fashion. Examples included the use of terms such as "Sleep 55% Off Number Beds" and "Comfort Air Beds on Sale" in online advertisements. Survey evidence demonstrated actual consumer confusion, although the parties disputed the relevancy and value of the survey evidence based on percentages of participants who were confused, whether the survey participants were actual or potential consumers, and how the questions were presented. Evidence also included instances of actual confusion, often from transcripts of call-center interactions, messages from customers, or messages from call-center employees. The transcripts and recordings of call-center interactions appeared to show that Defendants' call-center employees at times attempted to promote confusion and at other times attempted to dispel confusion. Finally, evidence included statements from Defendants' principals in which they described confusion as between Plaintiffs' and Defendants' brands as a "good thing" and, in response to reports of confusion, indicated that their advertisements were "working." [9] At the end of the day, the district court submitted the case to the jury. Based on the summary judgment ruling, the district court instructed the jury that a likelihood of confusion must exist at the time of purchase to support a trademark infringement claim. . . . [10] The jury rejected the trademark infringement claims as to the registered trademarks based on the jury instruction that limited the possibility of a likelihood of confusion to the time of purchase. . . . A. Initial-Interest Confusion [11] The primary issue in this appeal is the availability of a theory of initial-interest confusion on the trademark infringement claim and the resulting limitation in the instruction requiring any likelihood of confusion to exist at the time of purchase. As noted, initial-interest confusion is "confusion that creates initial customer interest, even though no actual sale is finally completed as a result of the confusion." 4 McCarthy § 23:6. Most circuits that have addressed the question "recognize the initial interest confusion theory as a form of likelihood of confusion which can trigger a finding of infringement." Id. (collecting cases). In general, the theory of initial-interest confusion recognizes that a senior user's goodwill holds value at all times, not merely at the moment of purchase. The theory protects against the threat of a competitor "receiving a 'free ride on the goodwill' of [an] ). This free ride may result in the consumer falsely inferring an affiliation between the junior and senior users, provide the junior user with an opportunity it otherwise would not have achieved, or deprive the senior user of an actual opportunity. Id. at 293-95. At least one circuit has "equated initial interest confusion to a 'bait and switch scheme.'" Id. at 294 (quoting Dorr-Oliver, Inc. v. Fluid Quip, Inc., 94 F.3d 376, 382 (7th Cir. 1996)). [12] In the present case, the parties dispute as a general matter whether a theory of initial-interest confusion is a viable theory of infringement in our circuit. They also dispute whether the relevant consumers-consumers investigating mattresses and online shoppers in general-are so sophisticated that the issue of consumer sophistication could properly be removed from the jury. To address these questions, it is necessary first to review more generally the test for confusion and what our Court has said about when confusion must exist. . . . . [13] To assess the likelihood of confusion as required for a showing of infringement, our circuit employs a list of nonexclusive factors for addressing a core inquiry: whether the relevant average consumers for a product or service are likely to be confused as to the source of a product or service or as to an affiliation between sources based on a defendant's use. . . . The factors we consider come from SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980). . . . [14] This flexible, context-specific, and relative-rather-than-mechanical approach makes sense because the general function of the likelihood-of-confusion factors is to guide the finder of fact towards considerations generally thought to be material to the consuming public's understanding of product source or affiliation. . . . [15] Although our test for a likelihood of confusion is well-developed, some uncertainty remains as to when confusion must exist in order to support a trademark infringement claim. Sensient, 613 F.3d at 766. Although not addressing initial-interest confusion specifically, our Court has clearly established that claims of infringement are not limited solely to a likelihood of confusion at the time of purchase. See Insty*Bit, Inc. v. Poly-Tech Indus., 95 F.3d 663, 671-72 (8th Cir. 1996). In Insty*Bit, our Court recognized that a 1962 amendment to the Lanham Act eliminated reference to "purchasers" when describing actionable confusion. Id. (quoting Pub. L. No. 87-772, 76 Stat. 769, 773 (1962)). We interpreted this statutory amendment as permitting claims for post-sale confusion among nonpurchasers-generally "consumers"who witnessed a confusingly marked product. Id. [16] Fourteen years later, however, our Court indicated that it was unclear as a general matter whether initial-interest or presale confusion was actionable. See Sensient Tech., 613 F.3d at 766. There, over a dissent, our circuit identified the theory, but neither rejected nor adopted it for general application. Instead, we held that the theory did not apply on the facts of the case because the consumers at issue were sophisticated commercial purchasers of inputs for industrial food production who goods with a high degree of care "after a collaborative process." Id. at 769. [17] The general question of whether presale, initial-interest confusion is actionable, therefore, seemingly pits two opposing views of trademark law against one another. On the one hand, through our application and review of the likelihood of confusion factors, we recognize the varied landscape of commercial transactions and leave the jury to sort through the details. Our factors provide guidance but do not draw bright lines that might constrain the general test for confusion. Similarly, the Court in Insty*Bit refused to place firm constraints on the question of when confusion must exist. On the other hand, in Sensient, our Court acknowledged the possibility of cabining the likelihood-of-confusion test to a particular moment in time, at least under certain circumstances. [18] We now address the issue left open in Sensient and hold that a theory of initialinterest confusion may apply in our circuit. We are, of course, bound by Sensient. But, when the particular conditions of Sensient are not present, i.e., when a jury question exists as to the issue of consumer sophistication, a plaintiff should not be barred from proving presale, initial-interest confusion. In reaching this conclusion we find the Lanham Act itself and amendments to its language as cited in Insty*Bit particularly compelling. Other courts addressing the question of initial-interest confusion have relied on this language. Checkpoint, 269 F.3d at 295 (noting that as originally enacted, "the Lanham Act only applied where the use of similar marks was 'likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods or services'" (quoting 1946 Lanham Act) (accord Esercizio v. Roberts, 944 F.2d 1235, 1244 (6th Cir. 1991))); see generally, 4 McCarthy § 23:7 (collecting cases) (noting that several courts have interpreted this amendment as expanding trademark protection beyond point-of-sale confusion to reach presale confusion (including initialinterest confusion) and post-sale confusion). And, in general, adoption of the theory is consistent with the overall practice of recognizing the varied nature of commercial interactions and the importance of not cabining the jury's analysis of the likelihood of confusion factors. If we do not generally impose strict constraints on the jury's nuanced assessment of how or whether the consuming public might be confused, it would be odd to presume that all commercial interactions are alike or that, in all settings, trademarks are worthy of protection only in the few moments before the consummation of a transaction. [19] Of course, as per Sensient, the theory of initial-interest confusion cannot apply in our Circuit where the relevant average consumers are sophisticated at the level of the careful professional purchasers who were at issue in Sensient. In this regard, however, we find several comments by the dissent in Sensient compelling, and we note that a finding of customer sophistication typically will rest with the jury. [20] In reaching its conclusion, the Court in Sensient relied upon Checkpoint Systems for the proposition that "courts look to factors such as product relatedness and the level of care exercised by customers to determine whether initial interest confusion exists." Sensient, 613 F.3d at 766. Sensient was an appeal from a grant of summary judgment, and on the summary judgment record, our Court indicated the parties agreed the relevant consumers were sophisticated. The dissent in Sensient accurately noted, however, that in Checkpoint Systems, the Third Circuit had been reviewing the issue after trial, not making a determination as to consumer sophistication as a matter of law (or making any likelihood of confusion determinations) at the summary judgment stage. Id. at 773 (Colloton, J, dissenting). The dissent described the theory of initial-interest confusion and emphasized that, even if customers are sophisticated, that fact alone should not automatically defeat the theory. In advocating for this no-blanket-rule point, the dissent cited a Second Circuit case involving professional buyers in a lawsuit between Mobil Oil and an entity that was marketing products under the name "Pegasus Petroleum." The dissent noted that "[w]hether or not a sophisticated customer eventually would sort out the difference, the doctrine of initial interest confusion prevents an infringer from using another's mark to gain 'crucial credibility during the initial phases of a deal.'" Id. at 773 (quoting Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 258 (2d Cir. 1987)). And, the dissent also emphasized that the Third Circuit in Checkpoint specifically disclaimed any categorical rule, stating instead that the "significance [of customer sophistication] will vary, and must be determined on a case-bycase basis." Sensient, 613 F.3d at 773 (quoting Checkpoint, 269 F.3d at 297). [21] Regardless of the relative merits of the positions reflected in Sensient, our general adoption of the theory of initial-interest confusion forecloses summary judgment where a question of fact exists as to the level of consumer sophistication. Here, the parties dispute the issue of consumer sophistication both in reference to shopping for mattresses and shopping online. They also dispute whether consumer sophistication should be measured at the "point of click" for an online shopper, at the point of sale upon final purchase, or at points in between. For the reasons previously discussed, we do not believe it is appropriate to cabin the analysis to any one point in time. And, in any event, authority is mixed as to whether mattress shoppers and online shoppers should be deemed careful, sophisticated consumers. [22] On the one hand, mattresses are relatively expensive among most consumers' purchases. See Sleepmaster Prods. Co. v. Am. Auto-Felt Corp., 241 F.2d 738, 741 (C.C.P.A. 1957) ("[T]he average purchaser will exercise such care in the selection of a mattress as to minimize the possibility of confusion as to the origin of the goods."). On the other hand, most people buy mattresses infrequently, so they enter the marketplace uneducated and susceptible to fast-talking sales people and brand confusion. See Friedman v. Sealy, Inc., 274 F.2d 255, 261-62 (10th Cir. 1959) ("[S]ince a mattress or box spring requires an investment . . ., the degree of care which a customer might be expected to exercise is somewhat greater than if he were buying 5-cent candies. [But] the construction of sleep equipment is not a matter of common knowledge and the consumer buys infrequently. He is thus forced to rely on his memory, more than his inspection, for the recall of names, guarantees, and endorsements. Under such circumstances, confusion can easily arise."). [23] Authority is also mixed as to the level of sophistication web-based shoppers bring to the table and ], reasonable, prudent and experienced internet consumers are accustomed to such exploration by trial and error. They skip from site to site, ready to hit the back button whenever they're not satisfied with a site's contents. They fully expect to find some sites that aren't what they imagine based on a glance at the domain name or search engine summary."). See also Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137, 1152 (9th Cir. 2011) (noting that although "'there is generally a low degree of care exercised by Internet consumers' . . . the degree of care analysis cannot begin and end at the marketing channel. We still must consider the nature and cost of the goods, and whether 'the products being sold are marketed primarily to expert buyers.'" (quoting Brookfield Comm'ns, Inc. v. West Coast Ent. Corp., 174 F.3d 1036, 1060 (9th Cir. 1999))). [24] At the end of the day, this mix of authority regarding consumer confusion in the context of internet shopping and mattress purchases demonstrates well why a jury rather than a judge should assess the level of consumer sophistication. This point is particularly strong in a case which, like the present case, enjoys a full record including highly detailed descriptions of Plaintiffs' and Defendants' customers' experience and ample evidence of (1) actual confusion including transcripts of potential customers who called Defendants' call centers and believed they were calling Plaintiffs, and (2) statements by Defendants' principals describing the actual confusion as evidence that their own advertising was working. See Kemp, 398 F.3d at 1058 (evidence of actual confusion, while not required, is strong evidence of a likelihood of confusion); SquirtCo, 628 F.2d at 1091 ("Likewise, actual confusion is not essential to a finding of trademark infringement, although it is positive proof of likelihood of confusion."). [25] Against this backdrop, we conclude a jury question existed as to the issue of consumer sophistication and summary judgment on the theory of initial-interest confusion was error. For the same reasons, and based on Insty*Bit, we conclude that limiting the infringement instruction to require confusion at the time of purchase was error. Finally, given the strength of the Plaintiffs' evidence on the issue of confusion, we cannot conclude that the summary judgment and instructional errors were harmless. See Fed. R. Civ. P. 61. In so ruling, we make no comment as to how a finding of confusion at times other than the moment of purchase might affect the analysis of remedies and the determination of damages. [1] "What's in a name?" William Shakespeare, Romeo and Juliet act 2, sc. 2, l. 46. According to Juliet Capulet, not much. Romeo Montague's last name, though charged with meaning, does not confuse her about who he is. In this keyword advertising trademark dispute, the district court saw most consumers as discerning Juliets. Appellant, however, likens them to the larger Capulet clan, a group more prone to confusion. As explained below, we disagree and affirm the district court's grant of summary judgment. [3] Since its founding in 2015 until 2021, ALG purchased the term "Lerner & Rowe" as a Google Ads keyword, which prompted ALG's advertisements to appear near the top of Google's search results list whenever someone searched for "Lerner & Rowe." This strategy, known as "conquesting," is a common internet marketing tool by which companies promote their services to potential customers who might be searching for a competitor. In fact, Lerner & Rowe has engaged in conquesting in other contexts. Importantly, while the format and copy of ALG's advertisements varied from search to search, they never included or referenced the term "Lerner & Rowe." [4] On September 8, 2021, Lerner & Rowe filed a complaint alleging claims for (1) trademark infringement, unfair competition, false designation of origin, and false description under the Lanham Act; (2) state trademark infringement and unfair competition; and (3) unjust enrichment. In a May 18, 2023, order, the district court granted summary judgment in favor of ALG on the trademark infringement and unjust enrichment claims but denied summary judgment on the unfair competition claims. ALG moved for reconsideration, and the district court subsequently entered summary judgment as to all claims. Lerner & Rowe timely appealed that ruling. . . . [5] . . . . Because the parties do not dispute that Lerner & Rowe has a protectible interest in its mark, this case concerns only the likelihood of confusion element. [6] When assessing the likelihood of confusion in the keyword advertising context, we primarily consider the following non-exhaustive list of factors: (1) the strength of the mark; (2) the evidence of actual confusion; (3) the type of goods and degree of care likely to be exercised by the purchaser; and (4) the labeling and appearance of the advertisements and the surrounding context on the screen displaying the results page. Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1154 (9th Cir. 2011). Other, less relevant factors include the "proximity of the goods, similarity of the marks, marketing channels used, defendant's intent in selecting the mark, and likelihood of expansion of the product lines." Id. at 1145 (quoting AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979)) (cleaned up). These factors are "not a rote checklist," and we must be flexible when analyzing them. Id. Depending on the circumstances of a given case, certain factors may be more important than others. Id. at 1148; see also Multi Time Mach., 804 F.3d at 937, 939 (affirming grant of summary judgment based on two factors: "evaluation of the web page at issue and the relevant consumer"). [7] This case primarily concerns "initial interest confusion," which occurs when an alleged infringer uses a competitor's mark to direct consumer attention to its product. 1 See Playboy Enters., Inc. v. Netscape Commc'ns Corp., 354 F.3d 1020, 1025 (9th Cir. 2004). "Although dispelled before an actual sale occurs, initial interest confusion impermissibly capitalizes on the goodwill associated with a mark and is therefore actionable trademark infringement." Id. Such a claim applies, however, only to "misleading and deceptive" uses of a mark, not to "legitimate comparative and contextual advertising." Network Automation, 638 F.3d at 1148. Therefore, in the keyword advertising context, we have emphasized that, "the owner of the mark must demonstrate likely confusion, not mere diversion." Id. at 1149; see also Playboy Enters., 354 F.3d at 1035 (Berzon, J., concurring) ("There is a big difference between hijacking a customer to another website by making the customer think he or she is visiting the trademark holder's website (even if only briefly) ... and just distracting a potential customer with another choice, when it is clear that it is a choice."). 1 Lerner & Rowe also advanced a theory of source confusion, which occurs when consumers purchase services from an alleged infringer due to confusion about the actual provider of those services. . . . This does not, however, affect our analysis, because both theories turn on the same likelihood of confusion test. [8] Strong trademarks receive greater protection because "a user searching for a distinctive term is more likely to be looking for a particular product, and therefore, could be more susceptible to confusion when sponsored links appear that advertise a similar product from a different source." Network Automation, 638 F.3d at 1149. . . . [9] The district court correctly found, and ALG does not dispute, that Lerner & Rowe's mark is strong. Not only is the mark federally registered, but Lerner & Rowe has spent millions of dollars advertising it, garnering the business of over 100,000 clients. This factor weighs in favor of Lerner & Rowe. . . . . [10] Here, Lerner & Rowe's proffer of actual confusion consists of 236 phone calls that ALG's intake department received during which the caller mentioned Lerner & Rowe by name when responding to a question about how the caller found ALG's phone number. 2 Data from Google shows that, between 2017 and 2021, searches for "Lerner & Rowe" returned results featuring ALG's advertisement 109,322 times. Evidence of 236 instances of actual confusion, therefore, constitutes only 0.216% of the total number of users exposed to the challenged advertisements. Moreover, users clicked on ALG's advertisements 7,452 times, or just 6.82% of the time Google displayed them. ALG separately commissioned an expert survey concluding that ALG's advertisements confused between 0% and 3% of consumers. The district court dismissed this evidence of actual confusion as de minimis and concluded that this factor favored ALG. [11] Lerner & Rowe does not dispute these statistics. Nor did it commission its own survey. Rather, it relies on cases like Ironhawk Technologies, Inc. v. Dropbox, Inc., 2 F.4th 1150 (9th Cir. 2021), for the proposition that even one or two instances of actual confusion should weigh in the plaintiff's favor on summary judgment. In Ironhawk, we weighed two instances of actual confusion in favor of the plaintiff, concluding that "it is evidence a reasonable jury could rely on to support a finding of actual confusion or when assessing a likelihood of confusion under the totality of the circumstances." 2 F.4th at 1166; see also Entrepreneur Media, 279 F.3d at 1151 (holding that, while a jury could disregard as de minimis a single incident of actual confusion, such evidence still weighed slightly in favor of plaintiff's 2 The district court concluded that most of these call log entries were too ambiguous to constitute reliable evidence of actual confusion. The entries are indeed terse, and many do not convey any apparent impression of customer confusion. For example, some callers mentioned Lerner & Rowe because the firm had referred them to ALG. This is not evidence of confusion at all. Other entries-like one that states, "Google. Thought we were L&R"-more likely express confusion. Most of the entries fall somewhere between these two poles in terms of the clarity with which they convey customer confusion. Nevertheless, for the sake of brevity, we will treat all 236 call log entries as evidence of actual confusion because, as discussed below, even that total, under the particular facts of this case, represents only de minimis evidence of actual confusion. infringement claim for purposes of summary judgment). In Lerner & Rowe's view, its proffer of 236 instances of actual confusion easily meets Ironhawk's standard regardless of the number of times consumers viewed ALG's advertisements. [12] Typically, instances of actual confusion present a numerator with no denominator, saying little or nothing about the actual proportion of the consumer population that is confused. In such cases, we see the tip of an iceberg and have no ability to speculate about how much lies below the surface. Here, however, no speculation is necessary-we can see the entire iceberg. Because we have both the numerator-the 236 calls representing actual confusion-and the denominator-the 109,322 consumers who saw the advertisementswe can discern with a high degree of precision the proportion of all consumers who were actually confused. See 3 § 23:14 (5th ed.) ("Evidence of the number of instances of actual confusion must be placed against the background of the number of opportunities for confusion before one can make an informed decision as to the weight to be given the evidence."). The resulting 0.216% confusion rate is direct evidence of the likelihood of confusion comparable to, but more complete than, survey evidence. No reasonable jury would conclude that this percentage is anything but de minimis and fails to support a finding of likelihood of confusion. . . . [13] Our conclusion does not conflict with cases like Ironhawk, where we weighed individual instances of confusion without the benefit of knowing the total number of opportunities consumers had for confusion. See 2 F.4th at 1165-66. We surmised that a reasonable jury would likely find the proffered evidence of actual confusion in Ironhawk de minimis, but we could not make that determination ourselves without more data. See id. at 1166. Here, on the other hand, we know how many times consumers searched for "Lerner & Rowe" on Google and saw an ALG advertisement. We also know how many of those consumers called ALG and, in a potential expression of confusion, referenced "Lerner & Rowe." The resulting calculation is simple and telling: unlike in Ironhawk, the evidence of actual confusion here is demonstrably de minimis. [14] While evidence showing the actual proportion of confused consumers is important, we do not suggest that courts should automatically discount de minimis instances of actual confusion when the record contains additional evidence of consumer confusion. The Fourth Circuit's decision in Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144 (4th Cir. 2012), is instructive. There, the district court disregarded five depositions from confused consumers because there had been more than 100,000 opportunities for confusion over a period of six years. Id. at 157-58. The Fourth Circuit noted that, if the depositions had been the only evidence of actual confusion before the district court, disregarding them would not have been improper. Id. at 158. But the plaintiff had presented other evidence, including records of 262 customer complaints, in-house studies from Google about the likelihood that the defendant's advertising strategy could confuse consumers, testimony from Google's in-house trademark attorneys who were themselves unable to distinguish between the links at issue in the case, and an expert survey demonstrating a net confusion rate among consumers of 17%. Id. at 158-59. Here, by contrast, Lerner & Rowe's de minimis actual confusion evidence stands alone. In fact, ALG presented the only other evidence of confusion-an expert survey showing a customer confusion rate of 0% to 3% and evidence of a 6.82% click-thru rate 4 -which bolsters the de minimis nature of Lerner & Rowe's actual confusion evidence. See 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 32:189 ed.) ("When the percentage of confusion survey below 10%, they become evidence will indicate confusion is not likely."). [15] Having determined that Lerner & Rowe's evidence of actual confusion is de minimis, we must now decide how to weigh it. In one sense, the evidence Lerner & Rowe has presented is so slight it may as well have presented none at all. Due to the difficulties in gathering evidence of actual confusion, we have noted that "its absence [is] generally unnoteworthy." Brookfield Commc'ns, 174 F.3d at 1050. . . . Here, however, the nature of the actual confusion evidence paints a picture that affirmatively contradicts Lerner & Rowe's assertions that ALG's advertisements were likely to confuse an appreciable number of consumers, compelling us to conclude that this factor should weigh substantially in favor of ALG. See Surfvivor Media, 406 F.3d at 633 (weighing de minimis actual confusion evidence against plaintiff when defendant presented consumer survey showing "an absence of significant confusion"). . . . [16] Sophisticated consumers and those shopping for high-value products are likely to exercise a higher degree of care while shopping and are, therefore, less likely to be confused by similar marks. See Network Automation, 638 F.3d at 1152. Additionally, when it comes to online shopping, "the default degree of consumer care is becoming more heightened as the novelty of the Internet evaporates and online commerce becomes commonplace." Id. The district court weighed this factor in favor of ALG because acquiring legal services can be expensive and important and because those accustomed to online shopping are typically savvy enough to differentiate between search engine results. [17] We agree that this factor weighs in ALG's favor. Since at least 2010, we have recognized that "[c]onsumers who use the internet for shopping are generally quite sophisticated about" how the internet functions. Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1178 (9th Cir. 2010). For example, regular internet users can readily distinguish domain names associated with the companies they are searching for from those they are not. See id. Additionally, Google's search engine is so ubiquitous that we can be confident that the reasonably prudent online shopper is familiar with its layout and function, knows that it orders results based on relevance to the search term, and understands that it produces sponsored links along with organic search results. Moreover, in this case, the relevant consumers specifically typed in "Lerner & Rowe" as a search term, suggesting that they would be even more discerning of the results they received. Therefore, because this case involves search results did not include an entry for Lerner & Rowe after the ALG advertisement, our conclusion would remain the same. Indeed, we find it difficult to believe that consumers searching for the phrase "Lerner & Rowe" would not choose to click on the link that matches their search query word for word. [24] Nor do we think that ALG's advertisements are so confusing as to lure reasonably prudent online shoppers into unwittingly clicking on them in search of Lerner & Rowe's website. Lerner & Rowe attempts to demonstrate confusion by distinguishing Multi Time Machine v. Amazon.com, where we held that Amazon's search results page was so clearly labeled that no reasonable consumer would find it confusing. See 804 F.3d at 937-38. That case involved Amazon searches for the MTM Special Ops watch, a product that the manufacturer did not sell on Amazon. Id. at 933. When someone searched for "mtm special ops" on Amazon, the results page listed the search query twice above a "Related Searches" field that contained alternative search queries that might help the consumer find a related product. Id. Below the "Related Searches" field, separated by a gray bar, was a list of products available on Amazon that were similar to the MTM Special Ops watch. Id. at 934. The entry for each of these products included a photograph and listed the name of the product and the manufacturer in "large, bright, bold letters." Id. at 938. [25] Lerner & Rowe notes that, unlike in Multi Time Machine, Google's search results do not contain a "Related Results" field and do not separate advertisements from organic results with "borders, bars, or shading." First, it is not surprising that Google styles its search results differently from Amazon; they are distinct search engines with distinct functions. Second, Multi Time Machine did not elucidate a list of features that a search engine must incorporate in order for their results to be clearly labeled. Analyzing the search results in the context of the Google results at issue here, we conclude that the bolded "Ad" designation next to each of ALG's advertisements sufficiently distinguishes ALG's advertisements from the search's organic results. Moreover, the fact that ALG's advertisements sometimes appear above organic results for Lerner & Rowe does not change this analysis. We think that reasonably prudent consumers shopping on Google would be accustomed to scrolling past advertisements at the top of a list of search results to find the organic result relevant to their query. [26] We acknowledge that some of ALG's advertisements are not models of clarity. As Lerner & Rowe points out, sometimes the content of an advertisement contains generic statements that could apply to any personal injury law firm-for example, "Your Personal Injury Attorney-We Don't Win-You Don't Pay." In such cases, the only feature identifying ALG as the source of the advertisement is the URL, which is in a smaller, lighter font. While these features could possibly cause confusion in isolation, our job is to analyze the advertisements within the context of the entire search results page. That page invariably contains a result for Lerner & Rowe that includes the precise search term at issue, dispelling any confusion ALG's advertisements might cause. The parties' presentation of de minimis evidence of actual confusion only bolsters our conclusion that it is only the "[u]nreasonable, imprudent and inexperienced web-shoppers" who might find the search results pages confusing. Tabari, 610 F.3d at 1176. [27] While the factors above are the most relevant to trademark infringement claims based on keyword advertising, other factors can also be helpful. See Network Automation, 638 F.3d at 1149-54 (weighing nine factors and finding four to be the most relevant to the court's analysis). Here, however, our assessment of these other factors does nothing to change our conclusion that Lerner & Rowe has failed to establish a genuine dispute of material fact regarding the likelihood of confusion element. [28] When companies provide similar services, consumers are more likely to confuse them. See Network Automation, 638 F.3d at 1150. Nevertheless, "the proximity of the goods . . . become[s] less important if advertisements are clearly labeled or consumers exercise a high degree of care, because rather than being misled, the consumer would merely be confronted with choices among similar products." Id. The district court correctly noted that, even though ALG and Lerner & Rowe are direct competitors offering similar services, savvy online shoppers would be able to differentiate between the parties' links on Google. If it has any weight at all, this factor falls in favor of ALG. [29] This factor might be relevant if ALG's advertisements appeared on a lesser-known or product-specific search engine, but "[t]oday, it would be the rare commercial retailer that did not advertise online, and the shared use of a ubiquitous marketing channel does not shed much light on the likelihood of consumer confusion." Network Automation, 638 F.3d at 1151. Lerner & Rowe cites a case from the year 2000 to argue that online marketing increases the likelihood of confusion. While that may have been true over twenty years ago when internet advertising was new, our precedent acknowledges that advertising on Google is commonplace today. The district court properly accorded this factor little to no weight. [30] "Where the two marks are entirely dissimilar, there is no likelihood of confusion." Brookfield Commc'ns, 174 F.3d at 1054. Lerner & Rowe argues that this factor favors it because ALG's use of Lerner & Rowe's mark as a keyword means that ALG uses a mark identical to Lerner & Rowe's. Network Automation rejected this exact reasoning, holding that this factor should reflect "what consumers 'encountered in the marketplace,' " not what Google's algorithm uses to churn out search results. 638 F.3d at 1151. In this case, ALG does not display Lerner & Rowe's mark in its advertisements. In fact, the URL above each advertisement displays ALG's own mark, albeit in a lower-case, condensed form. These two marks-"Lerner & Rowe" and "Accident Law Group"-are in no way similar. This factor favors ALG. [31] "When the alleged infringer knowingly adopts a mark similar to another's, reviewing courts presume that the defendant can accomplish his purpose: that is, that the public will be deceived." Network Automation, 638 F.3d at 1153. Apart from an affirmative intent to confuse, an alleged infringer's failure to take remedial steps when faced with evidence of confusion can cause a likelihood of confusion. See Playboy Enters., 354 F.3d at 1028-29. We agree with the district court that, because Lerner & Rowe's evidence of intent is identical to the evidence it offered to support its likelihood of confusion argument generally, it has failed to distinguish between an intent to deceive and an intent to compete on the part of ALG. Accordingly, this factor bears little to no weight. . . . . [32] The district court was correct to conclude that this is one of the rare trademark infringement cases susceptible to summary judgment. The generally sophisticated nature of online shoppers, the evidence demonstrating that there is not an appreciable number of consumers who would find ALG's use of the mark confusing, and the clarity of Google's search results pages, convince us that ALG's use of the "Lerner & Rowe" mark is not likely to cause consumer confusion. The district court's judgment is affirmed. Guitars, LP, 423 F.3d 539 (6th Cir. 2005), Gibson and Paul Reed Smith both manufactured single cutaway guitars, the shape of which is shown below in Gibson's trademark registration for its product configuration. Gibson conceded that there was no likelihood of point-of-sale confusion due to Paul Reed Smith's prominent labelling, but argued that there was a likelihood of initial interest confusion in that consumers would see a PRS single cutaway guitar from across a store and believe it to be a Gibson guitar. The Sixth Circuit declined to apply initial interest confusion to trade dress. It reasoned: The potential ramifications of applying this judicially created doctrine to product-shape trademarks are different from the ramifications of applying the doctrine to trademarks on a product's name, a company's name, or a company's logo. Cf. Versa Prods. Co. v. Bifold Co., 50 F.3d 189, 201-03, 207, 209, 212-13, 215 (3rd Cir. 1995) (discussing the related context of product-configuration trade dress). Specifically, there are only a limited number of shapes in which many products can be made. A product may have a shape which is neither functional nor generic (and hence which can be trademarked) but nonetheless is still likely to resemble a competing product when viewed from the far end of a store aisle. Thus, many legitimately competing product shapes are likely to create some initial interest in the competing product due to the competing product's resemblance to the better-known product when viewed from afar. In other words, application of the initial-interest-confusion doctrine to product shapes would allow trademark holders to protect not only the actual product shapes they have trademarked, but also a "penumbra" of more or less similar shapes that would not otherwise qualify for trademark protection. Id. at 551. (In ruling in favor of Paul Reed Smith on all surviving claims brought against it, the court ruled that Paul Reed Smith's functionality objection to the validity of Gibson's mark was moot.) 2. When do courts find initial interest confusion? Initial interest confusion remains a highly controversial basis for a finding of infringement, one which courts typically resort to only in a limited set of contexts. Courts appear to be more likely to find initial interest confusion if the defendant has engaged in patently bad faith "bait and switch" sales practices or in conduct akin to intentional cybersquatting, if the relevant consumers are unsophisticated, or if the defendant competes directly with the plaintiff. See, e.g., Epic Sys. Corp. v. YourCareUniverse, Inc., 244 F. Supp. 3d 878, 902 (W.D. Wisc. 2017) ("Courts are most likely to apply the doctrine of initial interest confusion doctrine in circumstances involving directly competing products, particularly when the potential purchasers are lay consumers making decisions in a relatively short amount of time with limited information."). But see Multi Time Mach., Inc. v. Amazon.com, Inc., 804 F.3d 930 (9th Cir. 2015). In Multi Time Machine, when consumers entered the plaintiff's trademark in Amazon's search box, they were not shown the plaintiff's products, which Amazon did not carry, but were instead shown competing products. The Ninth Circuit found no likelihood of initial interest confusion, reasoning that "[t]he search results page makes clear to anyone who can read English that Amazon carries only the brands that are clearly and explicitly listed on the web page. The search results page is unambiguous-not unlike when someone walks into a diner, asks for a Coke, and is told 'No Coke. Pepsi.'" Id. at 938. Furthermore, in reviewing the initial interest confusion case law, Gilson concludes that to prevail on an initial interest confusion basis, the plaintiff must show that it has been economically damaged by the defendant's conduct. See GILSON § 5.14[01] [1][a]. See also Lamparello v. Falwell, 420 F.3d 309, 317 (4th Cir. 2005) ("The few appellate courts that have . . . imposed liability under [the initial interest confusion] theory for using marks on the Internet have done so only in cases involving . . . one business's use of another's mark for its own financial gain. . . . Profiting financially from initial interest confusion is . . . a key element for imposition of liability under this theory."). In general, it appears that courts have developed initial interest confusion doctrine to provide them with some degree of flexibility to reach what they deem to be the right result as a matter of equity in situations where there is no consumer confusion at the point of sale. Trademark Law, 27 CARDOZO L. REV. 105 (2005). Rothman observes: "The courts' initial motivation for adopting initial interest confusion was a legitimate effort to prevent baiting and switching practices. However, since then courts have unreasonably stretched the doctrine to cover many circumstances which should be considered fair competition or which are better addressed by other existing statutes." Id. at 113. While initial interest confusion addresses the likelihood of confusion before the point of sale, post-sale confusion, as its name suggests, addresses confusion after the point of sale. One of the first cases to recognize some form of post-sale confusion was Mastercrafters Clock & Radio Co. v. Vacheron & Constantin-LeCoultre Watches, Inc., 221 F.2d 464 (2d Cir. 1955). In Mastercrafters, the declaratory plaintiff Mastercrafters produced an electric clock made to look like the declaratory defendant's expensive and prestigious Atmos table clock, a non-electric clock that wound itself from changes in atmospheric pressure. Mastercrafters sold its clock for about $30; LeCoultre sold the Atmos clock for not less than $175 (about $2,000 in today's money). Mastercrafters sought a declaration that its conduct did not constitute unfair competition. Judge Frank held in favor of LeCoultre. Though there was no point-of-sale confusion, there was nevertheless unfair competition: True, a customer examining plaintiff's clock would see from the electric cord, that it was not an 'atmospheric' clock. But, as the {district} judge found, plaintiff copied the design of the Atmos clock because plaintiff intended to, and did, attract purchasers who wanted a "luxury design" clock. This goes to show at least that some customers would buy plaintiff's cheaper clock for the purpose of acquiring the prestige gained by displaying what many visitors at the customers' homes would regard as a prestigious article. Plaintiff's wrong thus consisted of the fact that such a visitor would be likely to assume that the clock was an Atmos clock. Neither the electric cord attached to, nor the plaintiff's name on, its clock would be likely to come to the attention of such a visitor; the likelihood of such confusion suffices to render plaintiff's conduct actionable. Id. at 464. The post-sale confusion theory has been controversial, as the dissent in the following case suggests. In reading through Ferrari S.P.A. v. Roberts, 944 F.2d 1235 (6th Cir. 1991), which involves the unauthorized production of "Fauxrraris," consider the following questions: • Should courts take into account the confusion as to source of consumers who would never actually purchase the plaintiff's goods (or the defendant's goods for that matter)? • Should trademark law be used to protect the exclusivity of status goods? If it should not be so used, how can we make sure that we design trademark law so that it will not protect the exclusivity of status goods but will nevertheless continue to protect the traditional source-denoting function of trademarks for non-status goods? • Who decides which goods are status goods? Is a pickup truck a status good? [1] This is a trademark infringement action brought pursuant to the Lanham Act, 15 U.S.C. § 1051, et seq. The principal issue is whether the district court correctly concluded that plaintiff Ferrari enjoyed unregistered trademark protection in the exterior shape and appearance of two of its automobiles and, if so, whether defendant Roberts' replicas of Ferrari's designs infringed that protection, in violation of section 43(a) of the Lanham Act . . . . [2] We hold that the district court properly decided all of the issues and, therefore, we shall affirm. Because Ferrari intentionally limits production of its cars in order to create an image of exclusivity, only 1400 Daytonas were built; of these, only 100 were originally built as Spyders, soft-top convertibles. Daytona Spyders currently sell for one to two million dollars. Although Ferrari no longer makes Daytona Spyders, have continuously produced mechanical parts and body panels, and provided repair service for the cars. [4] Ferrari began producing a car called the Testarossa in 1984. To date, Ferrari has produced approximately 5000 Testarossas. Production of these cars is also intentionally limited to preserve exclusivity: the entire anticipated production is sold out for the next several years and the waiting period to purchase a Testarossa is approximately five years. A new Testarossa sells for approximately $230,000. [5] Roberts is engaged in a number of business ventures related to the automobile industry. One enterprise is the manufacture of fiberglass kits that replicate the exterior features of Ferrari's Daytona Spyder and Testarossa automobiles. Roberts' copies are called the Miami Spyder and the Miami Coupe, respectively. The kit is a one-piece body shell molded from reinforced fiberglass. It is usually bolted onto the undercarriage of another automobile such as a Chevrolet Corvette or a Pontiac Fiero, called the donor car. Roberts marketed the Miami Spyder primarily through advertising in kit-car magazines. Most of the replicas were sold as kits for about $8,500, although a fully accessorized "turnkey" version was available for about $50,000. refers to "the image and overall appearance of a product." Allied Mktg. Group, Inc. v. CDL Mktg., Inc., 878 F.2d 806, 812 (5th Cir. 1989) . . . . [11] Ferrari's Lanham Act claim in this case is a "trade dress" claim. Ferrari charges, and the district court found, that the unique and distinctive exterior shape and design of the Daytona Spyder and the Testarossa are protected trade dress which Roberts has infringed by copying them and marketing his replicas. [12] Roberts asserts that there has been no infringement under section 43(a) for a number of reasons: (1) the design of Ferrari's vehicles are protected only under design patent law, see 35 U.S.C. § 171, and not the Lanham Act; (2) there is no actionable likelihood of confusion between Ferrari's vehicles and Roberts' replicas at the point of sale; and (3) the "aesthetic functionality doctrine" precludes recovery. [14] To prove a violation of section 43(a), Ferrari's burden is to show, by a preponderance of the evidence: 1) that the trade dress of Ferrari's vehicles has acquired a "secondary meaning," 2) that there is a likelihood of confusion based on the similarity of the exterior shape and design of Ferrari's vehicles and Roberts' replicas, and 3) that the appropriated features of Ferrari's trade dress are primarily nonfunctional. See Kwik-Site Corp. v. Clear View Mfg. Co., Inc., 758 F.2d 167, 178 (6th Cir. 1985). [15] Ferrari's vehicles would not acquire secondary meaning merely because they are unique designs or because they are aesthetically beautiful. The design must be one that is instantly identified in the mind of the informed viewer as a Ferrari design. The district court found, and we agree, that the unique exterior design and shape of the Ferrari vehicles are their "mark" or "trade dress" which distinguish the vehicles' exterior shapes not simply as distinctively attractive designs, but as Ferrari creations. [16] We also agree with the district court that Roberts' admission that he intentionally copied Ferrari's design, the survey evidence introduced by Ferrari, and the testimony of {various witnesses} amount to abundant evidence that the exterior design features of the Ferrari vehicles are "trade dress" which have acquired secondary meaning. . . . . [17] The district court found, based upon an evaluation of the eight Frisch factors, that the similarity of the exterior design of the Ferrari vehicles and the Roberts replicas was likely to confuse the public. The court noted that while no evidence was offered on two of the factors, evidence of actual confusion and likelihood of expansion of the product lines, two others, marketing channels and purchaser care, favored Roberts and the remaining factors "radically favor[ed] Ferrari." Summarized, the district court's findings on the Frisch "likelihood of confusion" factors are as follows: [18] Recalling that the claimed mark involved here is the trade dress-the exterior shape and design of the Ferrari vehicles-it is clear that Ferrari's mark is very strong. The strength of the mark is its distinctiveness and Ferrari's designs are unquestionably distinctive. The survey evidence we have discussed, as well as the testimony that the shape of the plaintiff's vehicles "says Ferrari," is evidence of that distinctiveness. Indeed, Roberts' purposeful effort to copy the Ferrari designs is strong circumstantial evidence of the distinctiveness of the originals. [19] There is no dispute about the relatedness of the goods factor. The products produced by both parties are sports cars. [20] Likewise, the similarity of the marks-the exterior designs of the vehicles-is indisputable. Ferrari offered survey evidence which showed that 68% of the respondents could not distinguish a photograph of the McBurnie replica, upon which Roberts' Miami Spyder is based, from a photograph of the genuine Ferrari Daytona Spyder. In these photographs, the cars were shown without identifying insignia. Drawings for Roberts' cars show identifying insignia, an "R" on the parking lens and vent window, but the cars produced at the time of trial did not include the "R". Because the survey respondents saw photographs of the McBurnie cars, and because all of the identifying insignia were removed, the survey has limited value in showing the likelihood of confusion between the Roberts and Ferrari vehicles if displayed with identifying emblems. The survey, however, does show that the trade dress of the two car designs, the shapes and exteriors, were quite similar. An examination of the photographs of the cars which are in evidence confirms the striking similarity of the dress of the originals and the replicas. They are virtually indistinguishable. [21] Finally, Roberts conceded that his intent in replicating the exterior design of Ferrari's vehicles was to market a product that looked as much as possible like a Ferrari original, although Roberts made no claim to his customers that his replicas were Ferraris. "'[The] intent of [a party] in adopting [another's mark] is a critical factor, since if the mark was adopted with the intent of deriving benefit from the reputation of [the plaintiff,] that fact alone may be sufficient to justify the inference that there is confusing similarity.'" Frisch's Restaurants, 670 F.2d at 648 (emphasis in original) (quoting Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 263 (5th Cir.), cert. denied, 449 U.S. 899, 101 S.Ct. 268, 66 L.Ed.2d 129 (1980)); see also Mastercrafters, 221 F.2d at 467. This is especially true in cases, such as this one, where the defendant sold a comparatively cheap imitation of an expensive, exclusive item. As the court in Rolex Watch explained: By selling the bogus watches, only one inference may be drawn: the Defendants intended to derive benefit from the Plaintiff's reputation. This inference is no less reasonable when weighed against the Defendants' assertion that in selling these watches, they did not fail to inform the recipients that they were counterfeits. Rolex Watch, U.S.A., Inc. v. Canner, 645 F.Supp. 484, 492 (S.D.Fla. 1986). Intentional copying, however, is not actionable under the Lanham Act "absent evidence that the copying was done with the intent to derive a benefit from the reputation of another." Zin-Plas Corp. v. Plumbing Quality AGF Co., 622 F.Supp. 415, 420 (W.D. Mich. 1985). "Where the copying by one party of another's product is not done to deceive purchasers and thus derive a benefit from another's name and reputation, but rather to avail oneself of a design which is attractive and desirable, a case of unfair competition is not made out." West Point Mfg., 222 F.2d at 586. In this case, where Ferrari's design enjoyed strong secondary meaning and Roberts admitted that he designed his cars to look like Ferrari's, the intent to copy was clear. [22] We conclude that aside from the presumption of likelihood of confusion that follows from intentional copying, Ferrari produced strong evidence that the public is likely to be confused by the similarity of the exterior design of Ferrari's vehicles and Roberts' replicas. [23] Roberts disagrees with the legal significance of the district court's findings of likelihood of confusion. He argues that for purposes of the Lanham Act, the requisite likelihood of confusion must be confusion at the point of sale-purchaser confusion-and not the confusion of nonpurchasing, casual observers. The evidence is clear that Roberts assured purchasers of his replicas that they were not purchasing Ferraris and that his customers were not confused about what they were buying. . . . . [24] Roberts argues that his replicas do not violate the Lanham Act because he informed his purchasers that his significantly cheaper cars and kits were not genuine Ferraris and thus there was no confusion at the point of sale. The Lanham Act, however, was intended to do more than protect consumers at the point of sale. When the Lanham Act was enacted in 1946, its protection was limited to the use of marks "likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods or services." In 1967 {recte 1962}, Congress deleted this language and broadened the Act's protection to include the use of marks "likely to cause confusion or mistake or to deceive." Thus, Congress intended "to regulate commerce within [its control] by making actionable the deceptive and misleading use of marks in such commerce; [and] . . . to protect persons engaged in such commerce against unfair competition . . . ." 15 U.S.C. § 1127. Although, as the dissent points out, Congress rejected an anti-dilution provision when recently amending the Lanham Act, it made no effort to amend or delete this language clearly protecting the confusion of goods in commerce. The court in Rolex Watch explicitly recognized this concern with regulating commerce: The real question before this Court is whether the alleged infringer has placed a product in commerce that is "likely to cause confusion, or to cause mistake, or to deceive." . . . The fact that an immediate buyer of a $25 counterfeit watch does not entertain any notions that it is the real thing has no place in this analysis. Once a product is injected into commerce, there is no bar to confusion, mistake, or deception occurring at some future point in time. Rolex Watch, 645 F.Supp. at 492-93 (emphasis in original). The Rolex Watch court noted that this interpretation was necessary to protect against the cheapening and dilution of the genuine product, and to protect the manufacturer's reputation. Id. at 495; see also Mastercrafters, 221 F.2d at 466. As the court explained: Individuals examining the counterfeits, believing them to be genuine Rolex watches, might find themselves unimpressed with the quality of the item and consequently be inhibited from purchasing the real time piece. Others who see the watches bearing the Rolex trademarks on so many wrists might find themselves discouraged from acquiring a genuine because the items have become too common place and no longer possess the prestige once associated with them. Rolex Watch, 645 F.Supp. at 495; see also Mastercrafters, 221 F.2d at 466. Such is the damage which could occur here. As the district court explained when deciding whether Roberts' former partner's Ferrari replicas would be confused with Ferrari's cars: Ferrari has gained a well-earned reputation for making uniquely designed automobiles of quality and rarity. The DAYTONA SPYDER design is well-known among the relevant public and exclusively and positively associated with Ferrari. If the country is populated with hundreds, if not thousands, of replicas of rare, distinct, and unique vintage cars, obviously they are no longer unique. Even if a person seeing one of these replicas driving down the road is not confused, Ferrari's exclusive association with this design has been diluted and eroded. If the replica Daytona looks cheap or in disrepair, Ferrari's reputation for rarity and quality could be damaged . . . . Ferrari, 11 U.S.P.Q.2d at 1848. The dissent argues that the Lanham Act requires proof of confusion at the point of sale because the eight factor test used to determine likelihood of confusion focuses on the confusion of the purchaser, not the public. The dissent submits that three of the factors, marketing channels used, likely degree of purchaser care and sophistication, and evidence of actual confusion, specifically relate to purchasers. However, evidence of actual confusion is not limited to purchasers. The survey evidence in this case showed that members of the public, but not necessarily purchasers, were actually confused by the similarity of the products. Moreover, the other five factors, strength of the mark, relatedness of the goods, similarity of the marks, defendant's intent in selecting the mark, and likelihood of product expansion, do not limit the likelihood of confusion test to purchasers. [25] Since Congress intended to protect the reputation of the manufacturer as well as to protect purchasers, the Act's protection is not limited to confusion at the point of sale. Because Ferrari's reputation in the field could be damaged by the marketing of Roberts' replicas, the district court did not err in permitting recovery despite the absence of point of sale confusion. . . . . KENNEDY, Circuit Judge, dissenting. [26] I respectfully dissent because the majority opinion does more than protect consumers against a likelihood of confusion as to the source of goods; it protects the source of the goods, Ferrari, against plaintiff's copying of its design even if the replication is accompanied by adequate labelling so as to prevent consumer confusion. I believe the majority commits two errors in reaching this result. The majority first misconstrues the scope of protection afforded by the Lanham Act by misapplying the "likelihood of confusion" test and reading an anti-dilution provision into the language of section 43(a). The majority then affirms an injunction that is overbroad . . . . [27] The majority invokes the appropriate test to determine whether protection is available for an unregistered trademark pursuant to section 43(a) of the Lanham Act. Kwik-Site Corp. v. Clear View Mfg. Co., 758 F.2d 167 (6th Cir. 1985) (secondary meaning; likelihood of confusion; and nonfunctionality of trade dress). While I agree that Ferrari's designs have acquired secondary meaning and are primarily nonfunctional, I disagree with the majority's construction and application of the likelihood of confusion test and their conclusion that the Lanham Act protects against dilution of a manufacturer's goods. [28] This Circuit applies an eight-factor test to determine whether relevant consumers in the marketplace will confuse one item with another item. Frisch's Restaurants, Inc. v. Elby's Big Boy, Inc., 670 F.2d 642 (6th Cir.), cert. denied, 459 U.S. 916 (1982). The majority correctly points out one purpose this test is not designed to accomplish: "Where the copying by one party of another's product is not done to deceive purchasers and thus derive a benefit from another's name and reputation, but rather to avail oneself of a design which is attractive and desirable, a case of unfair competition is not made out." West Point Mfg. v. Detroit Stamping Co., 222 F.2d 581, 586 (6th Cir.) (emphasis added), cert. denied, 350 U.S. 840 (1955). This passage properly notes that the statute is triggered when a copier attempts to "palm off" his replica as an original. In other words, the protection afforded by the Lanham Act is primarily to potential purchasers. The protection accruing to a producer is derivative of and only incidental to this primary protection: a producer can market his goods with the assurance that another may not market a replica in a manner that will allow potential purchasers to associate the replica with the producer of the original. Unfortunately, the majority merely pays lip service to this fundamental tenet in its application of the eight-factor test. [29] The majority never clearly defines the target group that is likely to be confused. Although West Point counsels that purchasers must be deceived, the majority concludes that the target group is the "public." The majority errs to the extent that its analysis shifts from potential purchasers to the broader more indefinite group of the "public." [30] The eight-factor test contemplates that the target group is comprised of potential purchasers. For example, the importance of one factor-evidence of actual confusion-is determined by the kinds of persons confused and degree of confusion. "Short-lived confusion or confusion of individuals casually acquainted with a business is worthy of little weight . . . ." Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1110 (6th Cir. 1991) (quoting Safeway Stores, Inc. v. Safeway Discount Drugs, Inc., 675 F.2d 1160, 1167 (11th Cir. 1982)). Two other factors obviously refer to potential purchasers: the marketing channels used and the likely degree of purchaser care and sophistication. Thus, three of the eight factors expressly focus on the likelihood of confusion as to potential purchasers. [31] Other courts have made clear that section 43(a) is concerned with the welfare of potential purchasers in the marketplace. See Kwik-Site, 758 F.2d at 178 (referring to "intending purchasers" when discussing likelihood of confusion); see also Coach Leatherware Co. v. AnnTaylor, Inc., 933 F.2d 162, 168 (2d Cir. 1991) (stating that plaintiff must prove that "purchasers are likely to confuse the imitating goods with the originals"); West Point, 222 F.2d at 592 (referring to "purchasers exercising ordinary care to discover whose products they are buying . . . ." (quoting Reynolds & Reynolds Co. v. Norick, 114 F.2d 278 (10th Cir. 1940))). [32] Plaintiff's replicas are not likely to confuse potential purchasers. Plaintiff's vehicles display an "R" on the parking lenses and vent windows. No symbols or logos affiliated with Ferrari are displayed. Roberts informs all purchasers that his product is not affiliated with Ferrari. In light of these distinctions, and the high degree of customer care and sophistication that normally accompanies such a purchase-defendant's vehicles at issue sell for a minimum of $230,000, as well as the distinctly different marketing channels employed by the parties, I find the evidence insufficient to prove a likelihood of confusion by potential purchasers in the marketplace. [33] To be sure, some courts have expanded the application of the likelihood of confusion test to include individuals other than point-of-sale purchasers. These courts have included potential purchasers who may contemplate a purchase in the future, reasoning that in the pre-sale context an "observer would identify the [product] [34] In applying the test in this manner, these courts appear to recognize that the deception of a consumer under these circumstances could dissuade such a consumer from choosing to buy a particular product, thereby foreclosing the possibility of point-of-sale confusion but nevertheless injuring the consumer based on this confusion. The injury stems from the consumer's erroneous conclusion that the "original" product is poor quality based on his perception of a replica that he thinks is the original. These cases protect a potential purchaser against confusion as to the source of a particular product. Hence, even when expanding the scope of this test, these courts did not lose sight of the focus of section 43(a): the potential purchaser. The majority applies the likelihood of confusion test in a manner which departs from this focus. [35] The cases which have expanded the scope of the target group are distinguishable from the instant case, however. In Rolex, the counterfeit watches were labelled "ROLEX" on their face. Similarly, the Mastercrafters court found that the clock was labelled in a manner that was not likely to come to the attention of an individual. It is also noteworthy that the Second Circuit has limited Mastercrafters "by pointing out that '[i]n that case there was abundant evidence of actual confusion, palming off and an intent to deceive.'" Bose Corp. v. Linear Design Labs, Inc., 467 F.2d 304, 310 n. 8 (2d Cir. 1972) (quoting Norwich Pharmacal Co. v. Sterling Drug, Inc., 271 F.2d 569 (2d Cir. 1959), cert. denied, 362 U.S. 919 (1960)). No evidence was introduced in the instant case to show actual confusion, palming off or an intent to deceive and, as previously noted, plaintiff does not use any name or logo affiliated with Ferrari on its replicas. [36] Further, these cases conclude that the proper remedy is to require identification of the source of the replica, not prohibit copying of the product. See West Point, 222 F.2d at 589 (stating that under such circumstances "the only obligation of the copier is to identify its product lest the public be mistaken into believing that it was made by the prior patentee"); see also Coach Leatherware, 933 F.2d at 173 (Winter, J., dissenting in part) (stating that "[a copier] thus has every right to copy [a product] so long as consumers know they are buying [the copied product]"). Accordingly, even if I were to conclude that plaintiff's copies created confusion in the pre-sale context, I would tailor the remedy to protect only against such confusion; this would best be accomplished through adequate labelling. The majority's remedy goes well beyond protection of consumers against confusion as to a product's source. It protects the design itself from being copied. See supra at 1239. [37] In sum, the relevant focus of the eight-factor test should be upon potential purchasers in the marketplace. Plaintiff's replicas present no likelihood of confusion because plaintiff provides adequate labelling so as to prevent potential purchasers, whether in the pre-sale or point-of-sale context, from confusing its replicas with Ferrari's automobiles. The majority errs by expanding the target group to include the "public," an expansion unsupported by the language and purpose of the Lanham Act. To the extent that the majority expands the target group, the test increasingly protects the design from replication and the producer from dilution, rather than the potential purchaser from confusion. 1 [38] The majority does more than implicitly recognize a dilution cause of action by its misapplication of the eight-factor test; it expressly reads such a cause of action into the statute. To justify this interpretation, the majority points out that Congress deleted the word "purchasers" from the statutory language in 1967 {recte 1962}. According to the majority, this congressional act demonstrates that Congress intended "to protect against the cheapening and dilution of the genuine product, and to protect the manufacturer's reputation." I fail to see how this one congressional act leads to such a conclusion. [39] As an initial matter, the majority's method of reasoning should compel it to reach a different conclusion. In 1989, Congress specifically considered and rejected adding an antidilution provision to the Lanham Act. 2 This action, it can be asserted, demonstrates that Congress does not now consider the protection of the Lanham Act to encompass injuries to a manufacturer based on dilution. The majority cannot look to one action of Congress to bolster its position, but ignore other actions which undercut its position. [40] More importantly, the language of the Lanham Act does not afford such protection to producers of goods. As noted in the previous section, the Lanham Act's protection runs to relevant consumers in the marketplace; its protection to producers is incidental to this primary protection. Requiring adequate labelling ensures that a producer will not have the 1 I also note that the survey relied upon by the majority to prove a likelihood of confusion is fatally flawed. Generally, "[i]n assessing the likelihood of confusion, a court's concern is 'the performance of the marks in the commercial context.'" Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1106 (6th Cir. 1991) (quoting Frisch's Restaurants, Inc. v. Shoney's, Inc., 759 F.2d 1261, 1266 (6th Cir. 1985)). "It is the overall impression of the mark, not an individual feature, that counts." Id. at 1109. Applied to the instant case, this means that the analysis must be based on the products as they appear in the marketplace. The ultimate question is "whether relevant consumers are likely to believe that the products or services offered by the parties are affiliated in some way." Id. at 1107. The survey lacks any probative value on the issue of consumer confusion because of the manner in which it was conducted. The survey was conducted by showing photographs of Ferrari's cars and Roberts' replicas stripped of their identifying badges. By conducting the survey in this manner, no assessment could be made of the likelihood of confusion in the "commercial context." Purchasers of plaintiff's cars are not purchasing from photographs. Accordingly, the survey is meaningless as to the likelihood of confusion. 2 The most recent amendment to the Lanham Act, the Trademark Law Revision Act of 1988, Pub.L. No. 100-667, 102 Stat. 3935 (1988) (effective Nov. 16, 1989), as originally introduced in both houses of Congress, permitted separate causes of action for dilution, disparagement and tarnishment. All of these provisions were deleted from the legislation which eventually was enacted. House Rep. 100-1028 (Oct. 3, 1988), reprinted in United States Trademark Ass'n, The Trademark Law Revision Act of 1988, The Legislative History, Reports, Testimony, and Annotated Statutory Text 277, 278 (1989); Cong.Rec. H10411, H10421 (Oct. 19, 1988). {As Part II.C discusses, Congress eventually created Lanham Act § 43(c) in 1995 to provide for federal antidilution protection and amended § 43(c) in 2006.} poor quality of a replica imputed to its product by a confused potential purchaser. This is the only benefit accruing to a producer. Trademark dilution is not a cause of action under the Lanham Act. See Eveready Battery Co. v. Adolph Coors Co., 765 F.Supp. 440 (N.D.Ill. 1991). . . . . 1. Are the Ferrari exterior designs functional? The district court found that they were not and the Sixth Circuit affirmed: The district court found that Ferrari proved, by a preponderance of the evidence, that the exterior shapes and features of the Daytona Spyder and Testarossa were nonfunctional. The court based this conclusion on the uncontroverted testimony of Angelo Bellei, who developed Ferrari's grand touring cars from 1964-75, that the company chose the exterior designs for beauty and distinctiveness, not utility. Ferrari S.P.A., 944 at 1246. Does this strike you as an adequate consideration of the issue? Consider a quick example of a claim of "reverse confusion." In Dreamwerks Production, Inc. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1998), the plaintiff had been using the mark DREAMWERKS since 1984 in connection with services for organizing science fiction conventions in the Northeast and Midwest of the U.S. In 1994, Steven Spielberg, Jeffrey Katzenberg and David Geffen established the massive Hollywood studio known as DreamWorks SKG. The plaintiff sued for "reverse confusion." It argued that consumers would now believe that the plaintiff's services somehow originated in the defendant. In the Dreamwerks case, the Ninth Circuit reversed the district court's summary judgment in favor of the defendant and held that the matter should go to trial. The court observed: "Dreamwerks notes that whatever goodwill it has built now rests in the hands of DreamWorks; if the latter should take a major misstep and tarnish its reputation with the public, Dreamwerks too would be pulled down." Id. at 1130. The case eventually settled. In many typical "forward confusion" cases, such as in the Virgin Wireless case above, the senior user of the mark is a much larger company than the junior user of the mark. Thus, the senior Goliath claims that the junior David's use of the mark will likely confuse consumers into believing that the junior's goods are coming from the senior user, the company with which consumers are much more familiar. By contrast, reverse confusion typically involves a situation in which the senior user of the mark is a small company and the junior user is an enormous company with the resources to extensively advertise its use of the mark. The risk is that the meaning of the senior David's mark will be overwhelmed by the junior Goliath's use, so that consumers will believe that the senior user's goods are coming from the junior user. This was exactly the claim the plaintiff made in the following opinion, Wreal, LLC v. Amazon.com, Inc. Note, importantly, how certain of the factors in the multifactor test for the likelihood of consumer confusion change in a reverse confusion analysis. (And incidentally, do you agree with the court's treatment of the plaintiff's evidence of actual confusion?) Wreal, LLC v. Amazon.com, Inc. 38 F.4th 114 (11th Cir. 2022) Lagoa, Circuit Judge: [1] This appeal asks us to address the doctrine of reverse-confusion trademark infringement. Reverse confusion is not a standalone claim in trademark law; rather, it is a theory of how trademark infringement can occur. In reverse-confusion cases, the plaintiff is usually a commercially smaller, but more senior, user of the mark at issue. The defendant tends to be a commercially larger, but more junior, user of the mark. The plaintiff thus does not argue that the defendant is using the mark to profit off plaintiff's goodwill; instead, the plaintiff brings suit because of the fear that consumers are associating the plaintiff's mark with the defendant's corporate identity. It is this false association and loss of product control that constitutes the harm in reverse-confusion cases. [2] In this case, the plaintiff is Wreal, LLC, a Miami-based pornography company, which has been using the mark "FyreTV" in commerce since 2008. The defendant is Amazon.com, Inc., the largest online purveyor of goods and services in the United States, which has been using the mark "Fire TV" (or "fireTV") in commerce since 2012. Wreal does not claim that Amazon, by using the "Fire TV" mark, is attempting to profit off Wreal's good name, as would be typical in a forward-confusion case. Instead, Wreal contends that Amazon's allegedly similar mark is causing consumers to associate its mark-"FyreTV"-with Amazon. [3] The resolution of this appeal turns on the likelihood of confusing Amazon's "Fire TV" with Wreal's "FyreTV." In forward-confusion cases, we determine likelihood of confusion by applying a well-established seven-factor test. See Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1360 (11th Cir. 2007). Applying those seven factors, the district court found that consumers were unlikely to confuse "Fire TV" with "FyreTV" and granted summary judgment to Amazon on Wreal's trademark infringement claims. [4] We have not had the opportunity to delineate how this seven-factor test applies in reverse-confusion cases. As discussed below, there are several important differences in how the seven likelihood-of-confusion factors apply in reverse-confusion cases versus forwardconfusion cases. When applied specifically to the issues presented here, we conclude that the district court erred in granting summary judgment and should have allowed the case to proceed to trial. We therefore reverse the district court's order. A. Wreal, LLC, and FyreTV [5] Wreal is a "Miami-based technology company that was formed in 2006 with the goal of developing a platform for streaming [pornographic] video content over the internet." Wreal, LLC, v. Amazon.com, Inc. (Wreal I), 840 F.3d 1244, 1246 (11th Cir. 2016). In 2007, Wreal launched "FyreTV," an online streaming service that Wreal markets as the "Netflix of Porn," "The Ultimate Adult Video On Demand Experience," and a "porn pay per view service." That same year, Wreal began using in commerce the marks "FyreTV" and "FyreTV.com"foot_9 the latter of which represents the website where users can access the FyreTV service. See id. In order to access the FyreTV service, potential consumers must first go to FyreTV.com to sign up for an account. Once on the website, potential consumers must first verify they are at least eighteen years old and interested in viewing adult content before accessing the homepage, which displays several rows of pornographic images. [6] In order to make accessing its FyreTV service easier, Wreal also sells a set-top box, 2 called the FyreBoXXX, which allows consumers to access FyreTV on their television sets. To purchase a FyreBoXXX, a potential consumer must first travel to the FyreTV.com site and set up an account. In fact, the FyreBoXXX has never been sold in any store or website save for the online store at FyreTV.com. Between October 2012 and April 2014, Wreal suspended sales of the FyreBoXXX on its website. Indeed, by the end of 2012, Wreal had suspended all forms of print, radio, trade show, and television advertising for either the FyreBoXXX or FyreTV-Wreal's only two products. As of today, Wreal advertises its products only on other adult websites. [7] Apart from the FyreBoXXX and FyreTV.com, Wreal's customers also have other methods available to access the FyreTV service. For example, both Apple TV and Roku-two commercial set-top boxes that offer a host of general interest channels and media-support FyreTV. Thus, after signing up for an account at FyreTV.com, Wreal's customers can watch its content from their television set through a computer, a smartphone, a FyreBoXXX, an Apple TV, or a Roku. [8] Amazon is the largest online purveyor of goods in the United States. In 2011, Amazon "started using the mark 'Fire' in connection with its Kindle tablets . . . to highlight the new model's ability to stream video over the internet." Id. at 1247. In late 2012 and early 2013, Amazon was gearing up to launch several new products, including a phone, a new tablet, and a set-top box. Id. It decided to use the "Fire" brand, as well as its housemark, "amazon," on these products, with the set-top box being called "fireTV." 3 Id. During its branding discussions for the set-top box, Amazon learned about Wreal and its FyreTV products, but it never contacted Wreal about the set-top box's name and decided to use the "Fire" mark without Wreal's knowledge. Id. [9] Amazon launched fireTV in April 2014 with a nationwide advertising campaign covered by major magazines and television networks. The fireTV is a streaming-only set-top box; it does not contain a DVD tray and cannot play DVDs. Amazon markets the product as a set-top box for general interest content, including "instant access to Netflix, Prime Instant Video, WatchESPN," and more. It is not marketed as a device for streaming pornography. Amazon advertises the device on amazon.com, as well as on television, in print media, and using in-store displays at retailers like Best Buy and Staples. When Amazon began its searchengine-optimization efforts (to help fireTV appear on the internet), it bought ads for keywords related to fireTV, but not for FyreTV or anything related to pornography. Oftenbut not always-Amazon will market its "Fire" products with its housemark, "amazon." In the graphics and advertisements for the device, the device is sometimes referred to as one word, i.e., "fireTV," and sometimes it appears as two words, i.e., "Fire TV." [10] Amazon's fireTV does not broadcast any hardcore pornographic material. 4 But the fireTV does have apps for Showtime and HBO GO, and both of those content providers broadcast softcore pornography as part of their after-hours programming. It is unclear, however, whether those providers had any such material on their apps that link to fireTV at the time of the lawsuit. [11] It is undisputed that Amazon's policies for Amazon Prime Instant Video, which is Amazon's own streaming service and streams on the fireTV, prohibit the sale and consumption of hardcore pornography on the set-top box. However, the record evidence suggests that hardcore pornographic DVDs are available for purchase on amazon.com. The record evidence also suggests that two films with highly suggestive names were available for streaming on the fireTV through Amazon Prime Instant Video, though the record does not establish whether those films would be categorized as hardcore or softcore pornography. [12] Moreover, Amazon does not advertise the fireTV on any pornographic websites and, as such, there is no overlap between the marketing schemes for FyreTV and fireTV. Nor does Amazon sell the fireTV on any pornographic websites. Thus, there is no overlap of the sales outlets utilized by Amazon and Wreal. [13] In order to prevail on its trademark claims, Wreal must show a "likelihood of confusion." Forman, 509 F.3d at 1360. We therefore summarize the record evidence relevant to this issue, as presented by Wreal at the preliminary injunction hearing and by both parties as part of their summary judgment briefing. Below are screenshots of the marks at issue as they appear in internet advertising for the set-top boxes: [14] As noted above, the two products are neither advertised nor sold in the same outlets. A consumer cannot buy a fireTV at the same place where he could buy a FyreTV, and vice versa. Thus, no consumer will come across the products or marks in the same locationwhether over the internet or in person at a brick-and-mortar location-save for an internet search engine like google.com. Additionally, Wreal's own evidence supports the proposition that mine-run internet consumers would not confuse Amazon's amazon.com website with Wreal's FyreTV.com website. [15] Over the course of the litigation, both Wreal and Amazon sought to present evidence relevant to the issue of actual consumer confusion. Amazon, for its part, produced in discovery "tens of thousands" of customer service inquiries related to the fireTV. In one of those inquiries, an Amazon customer asked whether he could access adult content on the Amazon "fyreTV." 6 Wreal points to record evidence showing a number of customer service inquiries it received in which customers asked Wreal if the FyreTV streaming service would be available on Amazon's fireTV set-top box. Significantly, Wreal also produced in discovery a tweet directed to Wreal's Twitter account in which the sender asked, "Did you guys just merge with Amazon?" [16] Both parties also presented expert testimony regarding the level of confusion between the marks-Wreal at the preliminary injunction hearing and Amazon at the summary judgment stage. Amazon's expert, Dr. Dan Sarel, conducted a consumer survey that showed a "confusion rate of one percent," which he described as "statistically insignificant" and "nonexistent." That conclusion was bolstered by Wreal's own expert-Dr. Thomas Maronick-who conducted his own consumer surveys in April 2014 and testified at the preliminary injunction hearing that he found "very low" levels of consumer confusion. 7 [17] Wreal filed this lawsuit against Amazon about two weeks after the fireTV's product launch. In its complaint, Wreal sought treble damages and injunctive relief for reverseconfusion trademark infringement under the Lanham Act, the Florida Deceptive and Unfair Trade Practices Act, and Florida common law. 8 Five months after filing suit, Wreal moved for a preliminary injunction, which the district court referred to the magistrate judge and ultimately denied. We affirmed that denial. See Wreal I, 840 F.3d at 1246. [18] After the close of discovery, Amazon moved for summary judgment. The district court again referred the motion to the magistrate judge for a report and recommendation, and the magistrate judge recommended granting the motion. Over Wreal's objections, the district court adopted the report and recommendation and granted summary judgment to Amazon. Wreal then timely appealed. . . . . (and, by adoption, the district court) did not believe that the sender was confused. Credibility determinations like this, however, are inappropriate at the summary judgment stage. . . . Here, for example, a reasonable juror could view the same evidence and come to the opposite conclusion reached by the magistrate judge and the district court. Because this credibility determination improperly invaded the province of the jury, it must be disregarded. 7 Wreal complains about both studies, arguing that the Amazon study was conducted too early to be relevant to the issue of consumer confusion and that its own study was conducted for a separate purpose altogether. Absence of evidence for a proposition, however, is not affirmative evidence to the contrary. And the only survey evidence available to us is not in dispute-both surveys show that there was no consumer confusion. Nevertheless, we accord this evidence relatively little weight, as "[t]his Circuit . . . has moved away from relying on survey evidence" in trademark cases. Frehling Enters., Inc. v. Int'l Select Grp., Inc., 192 F.3d 1330, 1341 n.5 (11th Cir. 1999). [19] Wreal argues that Amazon's use of the mark fireTV infringed its trademark FyreTV under a reverse-confusion theory-the resolution of which boils down to the likelihood of confusion between the two marks. . . . . [20] In order to resolve this appeal, we must determine how these seven likelihood-ofconfusion factors {from Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1360 (11th Cir. 2007)} apply in the context of reverse-confusion trademark infringement. The "paradigm case [of reverse confusion] is that of a knowing junior user with much greater economic power who saturates the market with advertising of a confusingly similar mark, overwhelming the marketplace power and value of the senior user's mark." 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:10 (5th ed.); see also Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 957 (7th Cir. 1992) ("Reverse confusion occurs when a large junior user saturates the market with a trademark similar or identical to that of a smaller, senior user. In such a case, the junior user does not seek to profit from the good will associated with the senior user's mark.") Because both the harm and the theory of infringement in a reverse-confusion case differ from what is claimed in a forward-confusion case, the analysis and application of the seven likelihood-of-confusion factors differ as well. [21] In a reverse-confusion case, the harms that can occur are varied. For example, consumers may come to believe the smaller, senior user of the mark is itself a trademark infringer, see Banff, Ltd. v. Federated Dep't Stores, Inc., 841 F.2d 486, 490 (2d Cir. 1988), or that the defendant's use of the mark diminishes the value of the plaintiff's mark as a source indicator, see Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270, 301-02 (3d Cir. 2001). As our sister court, the Sixth Circuit has stated in a reverse confusion case: [t]he public comes to assume the senior user's products are really the junior user's or that the former has become somehow connected to the latter. 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. goodwill and reputation. And here, the district court did assess the conceptual strength of Wreal's "FyreTV" mark and found it distinctive and strong. [24] But in a reverse-confusion case, the plaintiff is not arguing that the defendant is attempting to profit off the plaintiff's goodwill. Rather, the plaintiff asserts that the defendant-the junior but more powerful mark user-has been able to commercially overwhelm the market and saturate the public conscience with its own use of the mark, thereby weakening and diminishing the value of the senior user's mark. See, e.g., Checkpoint Sys., 269 F.3d at 302-03. Thus, in this situation, the conceptual strength of the plaintiff's mark is necessarily less important to the analysis. See Com. Nat'l Ins. Servs., Inc. v. Com. Ins. Agency, Inc., 214 F.3d 432, 444 (3d Cir. 2000) (noting that "it is the strength of the larger, junior user's mark which results in reverse confusion"). Accordingly, when assessing the distinctiveness of the mark in a reverse-confusion case, the district court should consider both the conceptual strength of the plaintiff's mark and the relative commercial strength of the defendant's mark. See . . . A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 231 (3d Cir. 2000) (noting that a plaintiff is more likely to succeed when "pitted against a defendant with a far stronger mark" in reverse confusion cases); Checkpoint Sys., 269 F.3d at 303 ("But in a reverse confusion situation, the senior user's claim may be strengthened by a showing that the junior user's mark is commercially relatively strong. The greater relative strength of the junior mark allows the junior user to 'overwhelm' the marketplace, diminishing the value of the senior user's mark."). . . . [25] Here, the district court did not consider the commercial strength of Amazon's mark because it found that Wreal waived the argument by failing to raise it in its response to Amazon's motion for summary judgment and instead raised it for the first time in its objections to the magistrate judge's report and recommendation. 12 The district court erred in that finding. At the summary judgement stage, it was Amazon's burden, as the movant, to show that it was entitled to judgment as a matter of law, and the parties cannot "waive the application of the correct law or stipulate to an incorrect legal test." Jefferson v. Sewon Am., Inc., 891 F.3d 911, 923 (11th Cir. 2018). [26] The commercial strength of Amazon's mark is manifest and appears in the record. Amazon admitted in its answer that the fireTV was launched with a major advertising campaign, was covered by major magazines and television networks, and that it was a bestseller. Amazon also admits that it advertises the fireTV in multiple brick-and-mortar locations, as well as on amazon.com, one of the most visited online shopping sites in the United States. In short, Amazon's overwhelming commercial success with the fireTV mark, coupled with the conceptual strength of Wreal's mark, pushes this factor firmly in Wreal's favor. [27] The similarity-of-the-marks analysis is, with one exception related to housemarks noted below, the same in both forward-confusion and reverse-confusion cases. We compare "the marks and consider[ ] the overall impressions that the marks create, including the sound, appearance, and manner in which they are used." Frehling, 192 F.3d at 1337. In doing so, we determine similarity based on "the total effect of the designation, rather than on a comparison of individual features." Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 260-61 (5th Cir. 1980). . . . Similarity in any of these elements-appearance, sound, connotation, and commercial impression-may be sufficient to find the marks similar. See Stone Lion Cap. Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 1321 (Fed. Cir. 2014). [28] The district court concluded that the marks at issue-fireTV and FyreTV-were not similar. It reached this conclusion mainly by focusing on the fact that the marks were spelled differently and used different fonts, as well as the fact that they were used differently in commerce. The district court also noted that one of Wreal's experts, Dr. Linda Williams, testified that visitors to FyreTV.com would not confuse it with amazon.com. The inquiry under this factor, however, is the similarity of the marks, not the similarity of the services or the similarity of the sales methods-each of which has their own factor and should thus be considered separately. [29] When the focus is on the similarity of the marks themselves, the result is clear-FyreTV and fireTV are nearly identical. "Fire" is the first and only dominant word in both marks, and it is presented in a phonetically and connotatively identical fashion. It is also an abstract term, and thus the only term in either mark that gives the mark meaning. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1372 (Fed. Cir. 2005) (finding similarity between "VEUVE ROYALE" and "VEUVE CLICQUOT" because "VEUVE . . . remains a 'prominent feature' as the first word in the mark and the first word to appear on the label"); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876 (Fed Cir. 1992) (finding similarity between "CENTURY 21" and "CENTURY LIFE OF AMERICA" in part because "consumers must first notice th[e] identical lead word"). . . . By contrast, the secondary word in the marks-"TV"-is merely descriptive of or generic for the goods and services sold-i.e., streaming services. See Frehling, 192 F.3d at 1337 (noting that "a mark may be surrounded by additional words of lesser importance and not have its strength diluted"). [30] Moreover, the marks need not be identical, as the "purpose in considering the similarity of marks as an indicator of likelihood of confusion is that the closer the marks are, the more likely reasonable consumers will mistake the source of the product that each mark represents." Id. Thus, while "Fyre" and "fire" are spelled differently, and one is capitalized, the words have the same connotation and pronunciation, and the differences in font, color, and capitalization are not dispositive. [31] The Ninth Circuit's decision in Dreamwerks Production Group, Inc. v. SKG Studio, 142 F.3d 1127, 1130 (9th Cir. 1998) is instructive on this point. In that case, the court had to assess the similarity of the marks "Dreamwerks" and "DreamWorks," which, like the marks at issue here, utilized different spellings and capitalization. Id. The Ninth Circuit concluded that the marks were similar, noting the obvious "perfect similarity of sound" and "similarity of meaning" while determining that even the similarity of sight also weighed in favor of a finding of similarity, as consumers "might shrug off the difference [in spelling and capitalization] as an intentional modification." Id. at 1131. Our decision in Frehling is also instructive. There, we said that the marks "BELL' OGGETTI" and "Tavola Collection by OGGETTI" were similar because the presence of the dominant and protected "OGGETTI" in both was likely to be confusing. Frehling, 192 F.3d at 1337. Each of these conclusions applies here. [32] Amazon's pervasive use of its "amazon" housemark alongside "fireTV" in advertisements warrants separate discussion. In forward-confusion cases-where a commercially superior plaintiff with a strong conceptual mark sues a defendant for attempting to profit off its goodwill-the presence of a housemark is indeed likely to dispel confusion in ordinarily prudent consumers. See, e.g., Custom Mfg., 508 F.3d at 652 n.10. But in reverse-confusion cases, this presumption is reversed; because the harm is false association of the plaintiff's mark with the defendant's corporate identity, the defendant's use of a housemark alongside the mark is more likely to cause confusion. See, e.g., A & H Sportswear, 237 F.3d at 230 (noting that there is a "possibility that the [housemark] will aggravate, rather than mitigate, reverse confusion, by reinforcing the association of the [trademark] exclusively with [the housemark]") (emphasis added); Attrezzi, LLC v. Maytag Corp., 436 F.3d 32, 39 (1st Cir. 2006) ("Yet since the alleged harm is reverse confusion, to the extent [the defendant's housemark] is itself the more recognized label the linkage could actually aggravate the threat to [the plaintiff].") . . . [33] Amazon's use of its housemark alongside advertisements for the "fireTV" does exactly what one might expect it to do: it causes consumers to associate Amazon with fireTV. Because this is a reverse-confusion case asserting that Amazon's use of fireTV causes consumers to associate FyreTV with Amazon instead of Wreal, Amazon's use of the housemark supports Wreal's theory of recovery. The district court erred in concluding otherwise. [34] In short, the parties' marks are nearly identical. Both use the same words, are pronounced the same, and have the same meaning. While they are spelled slightly differently and use different fonts, this is not enough to conclude that the marks are dissimilar. Moreover, Amazon's pervasive use of its housemark alongside "fireTV" pushes this factor even further in favor of Wreal, as it is likely to confuse consumers into believing that Amazon is the origin of the FyreTV mark. Thus, the similarity-of-the-marks factor weighs heavily in favor of Wreal. [35] The analysis of this factor is the same regardless of the theory of confusion, and "requires a determination as to whether the products are the kind that the public attributes to a single source, not whether or not the purchasing public can readily distinguish between the products of the respective parties." Frehling, 192 F.3d at 1338 . . . . In reverse-confusion cases, it also is relevant to ask whether consumers might expect the defendant to "bridge the gap" and enter the plaintiff's market. See Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 480 (3d Cir. 1994). [36] Here, many pieces of record evidence are relevant to the question of whether the fireTV set-top box is similar to the FyreBoXXX. The record evidence presented in the district court established that consumers were already able to stream softcore pornography on Amazon's fireTV through content providers like HBO GO and Showtime. The record evidence also established that Amazon Prime Instant Video-Amazon's own streaming service, which, like HBO GO and Showtime, is available on the fireTV-offered consumers softcore pornography. And the record evidence also established that: (1) Amazon already offered the sale of hardcore pornographic DVDs and magazines on its related consumer website, amazon.com; (2) the parties' devices are visually similar-both are plain black set-top boxes that come with a small remote; and (3) direct competitors in the mainstream settop box market-Roku and Apple TV-already provided access to hardcore pornography, including FyreTV. [37] The question therefore is whether this record evidence would suggest to an ordinarily prudent consumer that a do-it-all giant like Amazon-which already sells a set-top box that streams softcore pornography and which competes against other set-top boxes that stream hardcore pornography-would "bridge the gap" to hardcore pornography streaming and release a set-top box that streams exclusively pornographic content. We answer that question in the affirmative. Amazon is a company that already sells hardcore pornography on its website and offers softcore pornography on its set-top box. And it competes in a market in which its direct competitors offer hardcore pornography streaming directly on their settop boxes. Given this information, a reasonable juror could conclude that Amazon decided to "bridge the gap" and offer a standalone set-top box dedicated to streaming hardcore pornography. See id. The two products at issue therefore "are the kind the public attributes to a single source." E. Remy Martin, 756 F.2d at 1530. [38] Our caselaw provides ample support for this conclusion. In E. Remy Martin, a trademark dispute between a wine company and a liquor company, this Court concluded that cognac and brandy-the products sold by the liquor company-were distilled from wine and that, as a result, it was "quite likely that, even assuming a sophisticated consumer from the drinking world, such a consumer could easily conclude that [the liquor company] had undertaken the production and sale of wine and that its name and goodwill therefore attached to [the wine company's] product." 756 F.2d at 1530. . . . [39] Decisions from our sister circuits in reverse-confusion cases lend further support to our conclusion here. In Attrezzi, the First Circuit held that the products of two "small electric appliance" manufacturers were similar even though one manufacturer also used the mark on its gourmet foods and dinnerware. 436 F.3d at 39. In Dreamwerks, the Ninth Circuit concluded that a movie studio and a convention holder had similar products because it would not be unreasonable for consumers to presume that the production company behind Star Trek decided to bridge the gap to convention holding and had begun to host Star Trek conventions. See 142 F.3d at 1131 ("[M]ovies and sci-fi merchandise are now as complementary as baseball and hot dogs. The main products sold at Dreamwerks conventions are movie and TV collectibles and memorabilia; the lectures, previews and appearances by actors which attract customers to Dreamwerks conventions are all dependent, in one way or another, on the output of entertainment giants like DreamWorks."). [40] Here, as in E. Remy Martin and Dreamwerks, a reasonable juror could conclude that Amazon was likely to market and sell a product like Wreal's. Indeed, to see a do-it-all giant like Amazon enter the pornographic streaming industry requires no more of an inferential leap than seeing a movie studio begin holding public conventions (as in Dreamwerks) or a liquor company begin selling wine (as in E. Remy Martin). Amazon already offers at least some softcore pornography on its streaming services and competes with other general-interest settop boxes that offer hardcore pornography content on theirs, including the FyreTV streaming service at issue here. Amazon also sells hardcore pornographic materials on its website. It would not be unreasonable for a reasonable consumer to see FyreTV and think Amazon was the source. [41] Finally, we note that "the more similar the marks are, the less necessary it is that the products themselves be very similar to create confusion." Attrezzi, 436 F.3d at 39. Accordingly, we conclude that this factor favors Wreal. [42] As for the "similarity of sales outlets" factor, we have held: This factor takes into consideration where, how, and to whom the parties' products are sold. Direct competition between the parties is not required for this factor to weigh in favor of a likelihood of confusion, though evidence that the products are sold in the same stores is certainly strong. The parties' outlets and customer bases need not be identical, but some degree of overlap should be present. Frehling, 192 F.3d at 1339 (citations omitted). The analysis of this factor is the same in forward-confusion and reverse-confusion cases. [43] Here, the district court concluded that the "similarity of sales outlets" factor weighs in favor of Amazon. Amazon's fireTV is available everywhere-on multiple internet sites and in brick-and-mortar locations around the world. Wreal's FyreTV, on the other hand, is available in only one place and can only be purchased one way-a consumer must make his way to FyreTV.com, navigate through an eighteen-year-olds-only banner, certify that he is interested in purchasing pornography, and find the product on the website. And crucially, Amazon's fireTV is unavailable on FyreTV.com. Both where the products are sold and how the products are sold are thus different. Only to whom the products are sold is arguably similar, as the record evidence shows that both companies target twenty-to fifty-year-old men with disposable income. The difference, however, is that Wreal targets only individuals who "are interested in purchasing pornography"-a uniquely identifiable subset of Amazon's customer base. Cf. Amstar, 615 F.2d at 262 (noting that Domino Sugar and Domino's Pizza had different sales outlets and customer bases because they were distributed through different outlets despite the fact both were "in the restaurant business"). We therefore conclude that this factor favors Amazon. [44] This similarity of advertising "factor looks to each party's method of advertising." Frehling, 192 F.3d at 1339. "[T]he standard is whether there is likely to be significant enough overlap in the readership of the publications in which the parties advertise that a possibility of confusion could result." Id. at 1340. This inquiry is the same in both forward-and reverseconfusion cases. [45] There is no dispute in this case that the parties advertise in completely different media. Amazon advertises the fireTV on the amazon.com homepage, on television, in print media, and on in-store displays. Wreal stopped advertising on television and in print in 2012, two years before Amazon launched the fireTV. In fact, at all times relevant to the lawsuit, Wreal advertised the FyreTV and FyreBoXXX only through pornographic websites, social media, and newsletters-i.e., only on the internet or other media dedicated to similarly prurient content. [46] Wreal nonetheless argues that this factor favors it because, very broadly speaking, both the fireTV and the FyreBoXXX advertise through search engines, word of mouth, and social media. But Wreal presented no record evidence of audience overlap. Nor does Wreal identify any website (outside of search engines like Google) where both the fireTV and the FyreBoXXX are advertised. As we explained in Tana, rejecting a similar argument: "[T]he only similarity in the advertising channels used by the two parties is their maintenance of websites on the World Wide Web. This similarity would dispel rather than cause confusion, however, because the websites are separate and distinct, suggesting two completely unrelated business entities." 611 F.3d at 778; see also Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623, 637 (6th Cir. 2002) (noting that the availability of information about the parties' goods on the internet does not lead to the conclusion that they use the same marketing channels). [47] We therefore conclude that this factor weighs heavily in Amazon's favor. [48] In the forward-confusion context, the intent factor asks whether the "defendant adopted [the] plaintiff's mark with the intention of deriving a benefit from the plaintiff's business reputation." Frehling, 192 F.3d at 1340. This is because in forward-confusion cases, "customers mistakenly think that the junior user's goods or services are from the same source as or are connected with the senior user's goods or services." 4 McCarthy, supra, § 23:10. Without precedent pointing in any other direction, the district court understandably applied this test for intent and found that Amazon did not adopt the fireTV mark with any intent to derive a benefit from Wreal's FyreTV mark. [49] But reverse-confusion cases are different. In this context, the concern is that customers will "purchase the senior user's goods under the mistaken impression that they are getting the goods of the junior user." Id. In other words, that "the junior user's advertising and promotion so swamps the senior user's reputation in the market that customers are likely to be confused into thinking that the senior user's goods are those of the junior user." Id. In this case, Wreal is not suggesting that Amazon chose the fireTV mark with the intention of siphoning Wreal's goodwill; instead, Wreal claims that, by Amazon's use of the fireTV mark, Wreal has lost control over its own, more senior mark. [50] Courts have responded to this problem in varying ways. The Seventh Circuit, for example, has eliminated the intent element from its likelihood-of-confusion test in reverseconfusion cases. See Sands, 978 F.2d at 961. The Third Circuit has acknowledged that evidence of intent to infringe is not expected in reverse-confusion cases, but continues to consider such evidence if it exists. See A & H Sportswear, 237 F.3d at 232. And the Tenth Circuit, while similarly discounting the importance of the intent factor in reverse-confusion cases, has continued to apply it in the same manner in both forward-and reverse-confusion cases. See Universal Money Ctrs., Inc. v. Am. Tel. & Tel. Co., 22 F.3d 1527, 1531-32 (10th Cir. 1994). Finally, the Ninth Circuit applies a modified version of the intent factor in reverse-confusion cases, under which indicia of intent may come from a variety of sources: At one extreme, intent could be shown through evidence that a defendant deliberately intended to push the plaintiff out of the market by flooding the market with advertising to create reverse confusion. Intent could also be shown by evidence that, for example, the defendant knew of the mark, should have known of the mark, intended to copy the plaintiff, failed to conduct a reasonably adequate trademark search, or otherwise culpably disregarded the risk of reverse confusion. The tenor of the intent inquiry shifts when considering reverse confusion due to the shift in the theory of confusion, but no specific type of evidence is necessary to establish intent, and the importance of intent and evidence presented will vary by case. Marketquest Grp., Inc. v. BIC Corp., 862 F.3d 927, 934-35 (9th Cir. 2017) (citations omitted). [51] We agree with and adopt the Ninth Circuit's approach. Evidence of a specific intent to deceive is not a prerequisite to establish intent in reverse-confusion cases, as it is in forward-confusion cases. Indicia of intent can come from a wide variety of sources, including a more generalized intent to obtain market saturation or to proceed with the adoption of a mark in circumstances where the defendant had constructive knowledge of the plaintiff's mark. The facts of each case will vary, and district courts should accord the intent factor whatever weight it is due under the circumstances. [52] Here, applying this standard, the evidence of intent is strong. First, Amazon has admitted that, before launching the fireTV, it had actual knowledge of both the FyreBoXXX and Wreal's FyreTV trademark registration. Wreal I, 840 F.3d at 1247 ("Amazon was aware of Wreal's FyreTV mark when it launched Fire TV but did not contact Wreal before launching Fire TV."). Amazon's Vice President of Marketing further testified in his deposition that Amazon not only chose to proceed with its usage of the fireTV mark after becoming aware of the FyreTV registration, but that his "goal was customers . . . if they search for Amazon Fire TV, if they search for our product I did not want them to first come across a porn site and have that experience." The district court, upon reviewing that testimony, concluded that no reasonable juror could view it and conclude that Amazon had any "bad faith (or other) intent to deceive consumers or drive Wreal out of the market." That conclusion was erroneous. The record evidence established that when Amazon launched the fireTV, it specifically tried to flood the market with advertising in an attempt to lower awareness of Wreal's similarly named mark. We take Amazon at its word, and we therefore conclude that the intent factor weighs heavily in favor of Wreal. [53] "[E]vidence of actual confusion is the best evidence of a likelihood of confusion." Frehling 192 F.3d at 1340. But the presence of such evidence is obviously not a prerequisite to a finding of likelihood of confusion, as it is one of seven factors considered in the likelihoodof-confusion determination. Id. Indeed, "it is not necessary to show actual confusion. One merely has to show that the likelihood of confusion exists." World Carpets, Inc. v. Dick Littrell's New World Carpets, 438 F.2d 482, 489 (5th Cir. 1971). But in assessing the quantum of actual confusion required for a finding in the plaintiff's favor, even a "very little" amount of actual confusion is highly probative. See id. [54] "The strength of such evidence depends on 'the number of instances of confusion,' 'the kinds of persons confused' and the 'degree of confusion.'" Sovereign Mil. Hospitaller v. Fla. Priory of the Knights, 809 F.3d 1171, 1189 (11th Cir. 2015). But even more important than the number of persons confused is the type of person confused; our "caselaw makes plain that the consumers of the relevant product or service, especially the mark holder's customers, turn the key." Caliber Auto. Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 936 (11th Cir. 2010). Indeed, we have accorded "substantial weight" to any instances of "evidence that actual customers were confused by the use of a mark as opposed to other categories of people." Aronowitz v. Health-Chem Corp., 513 F.3d 1229, 1240 (11th Cir. 2008). [55] In reverse-confusion cases, evidence of forward confusion will usually be probative. See Freedom Card, Inc. v. JPMorgan Chase & Co., 432 F.3d 463, 473 (3d Cir. 2005). But even more relevant is direct evidence of reverse confusion-i.e., evidence that consumers of the plaintiff's more senior mark became confused as to its source following the launch of the defendant's more junior mark. See Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 741 (2d Cir. 1994) (noting that, in a reverse-confusion claim, "the relevant issue is whether consumers mistakenly believe that the senior user's products actually originate with the junior user" and that "it is appropriate to survey the senior user's customers"). Survey evidence-while perhaps more accurately described as circumstantial evidence of confusion 16 rather than direct evidence-is, of course, admissible. But because the theory of reverse confusion depends on market saturation by the defendant's mark, a reliable survey "cannot be run in a reverse confusion case prior to the junior user's saturation of the market with its mark because, until that time, consumers have not been exposed to the relatively large advertising 16 and promotion of the junior user that is the hallmark of a reverse confusion case." 4 McCarthy, supra, § 23:10. [56] The record evidence here contains some evidence of actual confusion. For example, Wreal introduced evidence that one of its customers asked over Twitter, "Did you guys just merge with Amazon?" And one of Amazon's customers communicated with Amazon to ask whether he could access "adult content" on his Amazon "fyre" TV. Both instances directly suggest reverse confusion; the first consumer believed Amazon had purchased Wreal's trademark, and the second consumer contacted Amazon to inquire about Wreal's product.foot_15 But these are the only two true instances of confusion present in the record. 18 [57] Amazon and Wreal both also introduced survey evidence regarding the rate of confusion. Dr. Thomas Maronick, who testified for Wreal at the preliminary injunction hearing, conducted a preliminary survey in April 2014 and found "very low consumer confusion" between FyreTV and fireTV. Dr. Maronick also testified that awareness of the FyreTV mark was "very low." In a similar vein, Dr. Dan Sarel, Amazon's expert, conducted a consumer survey and found a confusion rate of one percent, which he testified was "nonexistent" and "statistically insignificant." [58] We hesitate to give significant weight to either the specifically identified instances of actual confusion or the surveys. Amazon introduced evidence from an expert witness, Peter Lehman, that tended to suggest that watching pornography is an inherently shameful act, and that consumers of pornography are less likely to report their consumption than consumers of other media. With this testimony in mind, we turn first to the first two instances of actual confusion. [59] Our caselaw is clear that the "the quantum of evidence needed to show actual confusion is relatively small." Jellibeans, Inc., 716 F.2d at 845. But our caselaw imposes no hard-and-fast rule regarding the number of instances required to prevail. See Caliber Auto. Liquidators, 605 F.3d at 937. "Rather, the court must evaluate the evidence of actual confusion in the light of the totality of the circumstances involved." AmBrit, 812 F.2d at 1543; accord World Carpets, 438 F.2d at 489 (5th Cir. 1971) ("[R]eason tells us that while very little proof of actual confusion would be necessary to prove the likelihood of confusion, an almost overwhelming amount of proof would be necessary to refute such proof."). [60] Our previous decisions serve as guides. In Safeway Stores, when reviewing a district court's findings following a bench trial, we held that a mere two instances of confusion from relevant consumers was worthy of consideration. 675 F.2d at 1166-67, abrogation recognized on other grounds, PlayNation Play Sys., Inc. v. Velex Corp., 924 F.3d 1159, 1166 (11th Cir. 2019). Additionally, in Caliber Automotive, we stated that two instances of confusion among professional buyers weighed in the plaintiff's favor at the summary judgment stage. 605 F.3d at 937-38. In contrast, in Frehling, when reversing the district court's entry of judgment for the defendant following a bench trial, we concluded that a single instance of actual confusion from a "professional buyer" while "sufficient to raise an inference of actual confusion" was "not sufficiently dispositive so as to favor either side in an appreciable fashion." 192 F.3d at 1341. [61] Perhaps most analogous are our decisions in AmBrit and PlayNation. In AmBrit as in this case, the relevant products (ice cream novelties there and set-top boxes, here) were sold to the general public, not professional buyers, and had a "high volume of sales" (at least, such is the case for the fireTV here). See 812 F.2d at 1544. The district court in AmBrit, after a bench trial, found that four instances of actual confusion supported a finding of actual confusion in favor of the plaintiff. See id. And we, reviewing for clear error, affirmed. See id. at 1544-45. Similarly, in PlayNation, the products at issue were playground equipment and pullup bars which, like ice cream novelties and set-top boxes, are sold to the general public rather than to professional buyers. See 924 F.3d at 1164. Following a bench trial, the district court found that just two instances of actual confusion-in which the plaintiff's customers contacted the defendant for customer support-were sufficient to support a finding of actual confusion. See id. at 1167. On appeal, we affirmed the ruling. See id. at 1167-68. [62] As in AmBrit and PlayNation, the reported instances of confusion in this case are relatively few. Even after years of litigation, Wreal is able to identify only two instances of potential or actual Wreal consumers being confused as to the source of its product. But the record also contains expert testimony that consumers of pornography are less likely to report their consumption than consumers of other media. Given that we are obliged to "evaluate the evidence of actual confusion in the light of the totality of the circumstances involved," AmBrit, 812 F.2d at 1543, we find it appropriate here to take that expert testimony into account when considering the number of reported instances of actual confusion. Although a close call, we conclude that the two reported instances of actual confusion here are sufficient to make the issue one of triable fact and thus weighs in Wreal's favor. [63] Turning to the survey evidence, both parties advance a number of arguments either for or against the consideration of the surveys. But given that we conclude that the instances of actual confusion present in the record are sufficient to push this factor in Wreal's favor, we conclude that it is unnecessary to also address the issue of survey evidence especially as a plaintiff need not present survey evidence in a trademark claim in order to escape summary judgment. See PlayNation, 924 F.3d at 1169 ("Lack of survey evidence does not weigh against the plaintiff when determining likelihood of confusion.") . . . . And, as already noted above, at least in our circuit, survey evidence in trademark actions has always been viewed with a skeptical eye. See Frehling, 192 F.3d at 1341 n.5 ("This Circuit . . . has moved away from relying on survey evidence [in trademark cases]."); Safeway Stores, 675 F.2d at 1167 n.10 (noting that our circuit has "followed the trend of cases in the former Fifth Circuit, in which market surveys have not fared well as evidence in trademark cases"). [64] This case addresses the application of the seven likelihood-of-confusion factors to a reverse-confusion trademark infringement case. Although some of those factors are analyzed and applied in the same way in both reverse-confusion cases and the more familiar forwardconfusion cases, there are important differences in how other factors are analyzed and applied that stem from the fact that the harm and the theory of infringement differ between forward and reverse confusion. [65] Here, the record evidence establishes that Amazon acquired actual knowledge of Wreal's registered trademark and still launched a product line with a phonetically similar name. The two marks at issue are nearly identical, the commercial strength of Amazon's mark is consistent with Wreal's theory of recovery, the parties' services are the kind that a reasonable consumer could attribute to a single source, and the record establishes that Amazon intended to swamp the market with its advertising campaign. Furthermore, Wreal has identified two consumers who a reasonable juror could conclude were confused by Amazon's chosen mark. [66] As noted throughout our decision, there is no mechanical formula for applying the seven factors relating to likelihood of confusion. But when considering all seven factors as they apply to a theory of reverse confusion and taking all the circumstances of this case into account on the record before us, we conclude that they weigh heavily in favor of Wreal and that the district court erred when it entered summary judgment in Amazon's favor. We therefore reverse the district court's order. This is not to say that Amazon may not ultimately prevail on the merits; rather, it must do so before a jury. Comments and Questions 1. Did Wreal ever go before a jury? As expected, after the Eleventh Circuit decision, the parties settled on confidential terms. John Woolley, Amazon Settles with Porn Company In 'Fire TV' Trademark Lawsuit, BLOOMBERG LAW, Aug. 16, 2023. Where the greater advertising originates from the senior user, we are more likely to see a case of direct confusion; if the greater advertising originates from the junior user, reverse confusion is more likely . . . . Logically, then, in a direct confusion claim, a plaintiff with a commercially strong mark is more likely to prevail than a plaintiff with a commercially weak mark. Conversely, in a reverse confusion claim, a plaintiff with a commercially weak mark is more likely to prevail than a plaintiff with a stronger mark, and this is particularly true when the plaintiff's weaker mark is pitted against a defendant with a far stronger mark . . . . "[T]he lack of commercial strength of the smaller senior user's mark is to be given less weight in the analysis because it is the strength of the larger, junior user's mark which results in reverse confusion." Commerce Nat'l Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 444 (3d Cir. 2000) . . . . Therefore, in a reverse confusion claim, a court should analyze the "commercial strength" factor in terms of (1) the commercial strength of the junior user as compared to the senior user; and (2) any advertising or marketing campaign by the junior user that has resulted in a saturation in the public awareness of the junior user's mark. b. Distinctiveness or Conceptual Strength . . . . As stated above, in the paradigmatic reverse confusion case, the senior user has a commercially weak mark when compared with the junior user's commercially strong mark. When it comes to conceptual strength, however, we believe that, just as in direct confusion cases, a strong mark should weigh in favor of a senior user . . . . In H. Lubovsky, Inc. v. Esprit de Corp., 627 F.Supp. 483 (S.D.N.Y. 1986), the court explained that conceptual distinctiveness was relevant in the same way for a reverse confusion claim because "if a customer saw a doll in a toy store bearing a strong familiar trademark like 'Exxon,' he might well assume that the oil company had gone into the toy business; if, on the other hand, he saw a doll bearing a familiar but weak laudatory trademark like Merit, he would be unlikely to assume that it is connected with the similarly named gasoline or cigarettes." Id. at 487; see also Long & Marks, supra, at 22. The H. Lubovsky logic resonates, for it makes more sense to hold that conceptual strength, unlike commercial strength, works in the plaintiff's favor. That is, if we were to apply the rule stated above for commercial strength, i.e., weighing weakness in the plaintiff's favor, we would bring about the perverse result that less imaginative marks would be more likely to win reverse confusion claims than arbitrary or fanciful ones. We therefore hold that, as in direct confusion claims, a district court should weigh a conceptually strong mark in the plaintiff's favor, particularly when the mark is of such a distinctive character that, coupled with the relative similarity of the plaintiff's and defendant's marks, a consumer viewing the plaintiff's product is likely to assume that such a mark would only have been adopted by a single source-i.e., the defendant. s use of "Interview" as the descriptive heading of its interview section did not create reverse confusion with magazine of same name where consumers would not believe that defendant published plaintiff's magazine). "Reverse passing off" generally involves situations in which a "defendant falsely takes credit for another's goods or services," MCCARTHY § 25.6. More specifically, reverse passing off occurs when the defendant unauthorizedly passes off as its own product (or service) what was in fact made (or performed) by the plaintiff, perhaps to gain the goodwill that the plaintiff's product might generate for the defendant, perhaps to charge a higher price to unsuspecting consumers, or perhaps simply to meet a production deadline. For example, a defendant who unauthorizedly rebottles (or simply relabels) a plaintiff's shampoo under a new brand name could be liable for reverse passing off. Who does this sort of thing? See, for a recent example, DJ Direct, Inc. v. Margaliot, 512 F. Supp. 3d 396 (E.D.N.Y. 2021), in which the defendant hot glued a metallic "Amasing" label directly over the plaintiff's KARAOKING mark on karaoke machines and then listed those rebranded machines on Amazon: The court found reverse passing off and granted the plaintiff's motion for a preliminary injunction. Id. at 414-417. Cf. id. at 415 ("Although, as Defendants argue, Plaintiff's supplier manufactured the tangible goods offered for sale in this case, the fact that Plaintiff ordered the machines in question to be built to its specifications and to bear the KaraoKing mark, and that it provided customer service and support through its website, www.karaoking.net, supports the conclusion that Plaintiff commissioned the machines and stood behind their production."). For another example, see Industria de Diseo Textil SA. v. Thiliko LLC, No. 23 Civ. 47 (S.D.N.Y.) (complaint filed Jan. 4, 2023), in which the global fast-fashion retailer Zara sued the defendant Thilikó for, among other things, purchasing Zara's goods, replacing all Zara labelling with defendant's own labelling, and reselling those goods as its own (at significantly higher prices). The defendant also used on its webpage Zara's copyrighted images, as shown below. The court eventually issued a default judgment against the defendant. Reverse passing off is a very rare cause of action, even more so after the case below, Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003). We consider reverse passing off and the Dastar case because of the profound policy questions implicated by the cause of action and the facts of the Dastar case. It is one thing to provide a reverse passing off cause of action when someone unauthorizedly rebottles or relabels someone else's shampoo without attribution, but what about when someone unauthorizedly restates someone else's ideas or expression without attribution? Should trademark law and specifically the concept of "reverse passing off" provide a cause of action for plagiarism? If not, why should we treat ideas and expression differently? Consider a related problem. One advantage that trademark protection enjoys over copyright or patent protection is that trademark protection is unlimited in time, provided that the trademark owner continue to use the mark in commerce. Thus, when patent or copyright protection of a product feature expires, the patent or copyright owner may continue to exert control over that feature through trademark law (if the feature satisfies the various requirements of trademark protection). This raises significant concerns. For example, Disney owns the Mickey Mouse image mark, whose registration is shown below: At some point, Disney's copyright rights in the countless cartoons in which Mickey Mouse is depicted will begin to expire. See Brooks Barnes, Mickey's Copyright Adventure: Early Disney Creation Will Soon Be Public Property, N.Y. TIMES, Dec. 27, 2022 (discussing the legal aspects of the expiration beginning in 2024 of Disney's copyright rights in Steamboat Willie and subsequent incarnations of Mickey Mouse). But can Disney then use its trademark rights in the image of the character to prevent others from reproducing these cartoons? With copyright law, the public agrees to grant short-term exclusive rights to the author of a work in order to incentivize authorship, but an exceedingly important part of that bargain is that these rights will eventually expire and the work will be dedicated to the public domain, free for anyone to use in any way. Should trademark rights be allowed to trump this basic bargain? As you read through the Dastar opinion, consider whether it resolves the question of whether Disney may continue to assert exclusive rights through trademark law after its copyright rights have expired. Crusade in Europe series created by Twentieth Century Fox, labeled the resulting product with a different name and marketed it without attribution to Fox[, and] therefore committed a 'bodily appropriation' of Fox's series." Id., at 314. It concluded that "Dastar's 'bodily appropriation' of Fox's original [television] series is sufficient to establish the reverse passing off." Ibid. 2 The court also affirmed the District Court's award under the Lanham Act of twice Dastar's profits. We granted certiorari. 537 U.S. 1099 (2003). II [8] The Lanham Act was intended to make "actionable the deceptive and misleading use of marks," and "to protect persons engaged in . . . . . [9] Thus, as it comes to us, the gravamen of respondents' claim is that, in marketing and selling Campaigns as its own product without acknowledging its nearly wholesale reliance on the Crusade television series, Dastar has made a "false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which . . . is likely to cause confusion . . . as to the origin . . . of his or her goods." § 43(a). That claim would undoubtedly be sustained if Dastar had bought some of New Line's Crusade videotapes and merely repackaged them as its own. Dastar's alleged wrongdoing, however, is vastly different: It took a creative work in the public domain-the Crusade television series-copied it, made modifications (arguably minor), and produced its very own series of videotapes. If "origin" refers only to the manufacturer or producer of the physical "goods" that are made available to the public (in this case the videotapes), Dastar was the origin. If, however, "origin" includes the creator of the underlying work that Dastar copied, then someone else (perhaps Fox) was the origin of Dastar's product. At bottom, we must decide what § 43(a)(1)(A) of the Lanham Act means by the "origin" of "goods." III [10] The dictionary definition of "origin" is "[t]he fact or process of coming into being from a source," and "[t]hat from which anything primarily proceeds; source." Webster's New International Dictionary 1720-1721 (2d ed. 1949). And the dictionary definition of "goods" (as relevant here) is "[w]ares; merchandise." Id., at 1079. We think the most natural understanding of the "origin" of "goods"-the source of wares-is the producer of the tangible product sold in the marketplace, in this case the physical Campaigns videotape sold by Dastar. The concept might be stretched . . . to include not only the actual producer, but also the trademark owner who commissioned or assumed responsibility for ("stood behind") production of the physical product. But as used in the Lanham Act, the phrase "origin of goods" is in our view incapable of connoting the person or entity that originated the ideas or communications that "goods" embody or contain. Such an extension would not only stretch the text, but it would be out of accord with the history and purpose of the Lanham Act and inconsistent with precedent. [11] Section 43(a) of the Lanham Act prohibits actions like trademark infringement that deceive consumers and impair a producer's goodwill. It forbids, for example, the Coca-Cola Company's passing off its product as Pepsi-Cola or reverse passing off Pepsi-Cola as its product. But the brand-loyal consumer who prefers the drink that the Coca-Cola Company or PepsiCo sells, while he believes that that company produced (or at least stands behind the production of) that product, surely does not necessarily believe that that company was the "origin" of the drink in the sense that it was the very first to devise the formula. The consumer who buys a branded product does not automatically assume that the brand-name company is the same entity that came up with the idea for the product, or designed the product-and typically does not care whether it is. The words of the Lanham Act should not be stretched to cover matters that are typically of no consequence to purchasers. [12] It could be argued, perhaps, that the reality of purchaser concern is different for what might be called a communicative product-one that is valued not primarily for its physical qualities, such as a hammer, but for the intellectual content that it conveys, such as a book or, as here, a video. The purchaser of a novel is interested not merely, if at all, in the identity of the producer of the physical tome (the publisher), but also, and indeed primarily, in the identity of the creator of the story it conveys (the author). And the author, of course, has at least as much interest in avoiding passing off (or reverse passing off) of his creation as does the publisher. For such a communicative product (the argument goes) "origin of goods" in § 43(a) must be deemed to include not merely the producer of the physical item (the publishing house Farrar, Straus and Giroux, or the video producer Dastar) but also the creator of the content that the physical item conveys (the author Tom Wolfe, or-assertedlyrespondents). [13] The problem with this argument according special treatment to communicative products is that it causes the Lanham Act to conflict with the law of copyright, which addresses that subject specifically. The right to copy, and to copy without attribution, once a copyright has expired, like "the right to make [an article whose patent has expired]including the right to make it in precisely the shape it carried when patented-passes to the public." Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 230 (1964); see also Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 121-122 (1938). "In general, unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying." TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29 (2001). The rights of a patentee or copyright holder are part of a "carefully crafted bargain," Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 150-151 (1989), under which, once the patent or copyright monopoly has expired, the public may use the invention or work at will and without attribution. Thus, in construing the Lanham we have been "careful to caution against misuse or over-extension" of trademark and related protections into areas traditionally occupied by patent or copyright. TrafFix, 532 U.S., at 29. "The Lanham Act," we have said, "does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity." Id., at 34. Federal trademark law "has no necessary relation to invention or discovery," In re Trade-Mark Cases, 100 U.S. 82, 94 (1879), but rather, by preventing competitors from copying "a source-identifying mark," "reduce[s] the customer's costs of shopping and making purchasing decisions," and "helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product," Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 163-164 (1995) (internal quotation marks and citation omitted). Assuming for the sake of argument that Dastar's representation of itself as the "Producer" of its videos amounted to a representation that it originated the creative work conveyed by the videos, allowing a cause of action under § 43(a) for that representation would create a species of mutant copyright law that limits the public's "federal right to 'copy and to use'" expired copyrights, Bonito Boats, supra, at 165, 109 S.Ct. 971. [14] When Congress has wished to create such an addition to the law of copyright, it has done so with much more specificity than the Lanham Act's ambiguous use of "origin. [15] Reading "origin" in § 43(a) to require attribution of uncopyrighted materials would pose serious practical problems. Without a copyrighted work as the basepoint, the word "origin" has no discernable limits. A video of the MGM film Carmen Jones, after its copyright has expired, would presumably require attribution not just to MGM, but to Oscar Hammerstein II (who wrote the musical on which the film was based), to Georges Bizet (who wrote the opera on which the musical was based), and to Prosper Merimee (who wrote the novel on which the opera was based). In many cases, figuring out who is in the line of "origin" would be no simple task. Indeed, in the present case it is far from clear that respondents have that status. Neither SFM nor New Line had anything to do with the production of the Crusade television series-they merely were licensed to distribute the video version. While Fox might have a claim to being in the line of origin, its involvement with the creation of the television series was limited at best. Time, Inc., was principal, if not the exclusive, creator, albeit under arrangement with Fox. And of course it was neither Fox nor Time, Inc., that shot the film used in the Crusade television series. Rather, that footage came from the United States Army, Navy, and Coast Guard, the British Ministry of Information and War Office, the National Film Board of Canada, and unidentified "Newsreel Pool Cameramen." If anyone has a claim to being the original creator of the material used in both the Crusade television series and the Campaigns videotapes, it would be those groups, rather than Fox. We do not think the Lanham Act requires this search for the source of the Nile and all its tributaries. [16] Another practical difficulty of adopting a special definition of "origin" for communicative products is that it places the manufacturers of those products in a difficult position. On the one hand, they would face Lanham Act liability for failing to credit the creator of a work on which their lawful copies are based; and on the other hand they could face Lanham Act liability for crediting the creator if that should be regarded as implying the creator's "sponsorship or approval" of the copy, 15 U.S.C. § 1125(a)(1)(A). In this case, for example, if Dastar had simply "copied [the television series] as Crusade in Europe and sold it as Crusade in Europe," without changing the title or packaging (including the original credits to Fox), it is hard to have confidence in respondents' assurance that they "would not be here on a Lanham Act cause of action," Tr. of Oral Arg. 35. [17] Finally, reading § 43(a) of the Lanham Act as creating a cause of action for, in effect, plagiarism-the use of otherwise unprotected works and inventions without attributionwould be hard to reconcile with our previous decisions. For example, in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000), we considered whether product-design trade dress can ever be inherently distinctive. Wal-Mart produced "knockoffs" of children's clothes designed and manufactured by Samara Brothers, containing only "minor modifications" of the original designs. Id., at 208. We concluded that the designs could not be protected under § 43(a) without a showing that they had acquired "secondary meaning," id., at 214, so that they "'identify the source of the product rather than the product itself,'" id., at 211 (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851, n. 11 (1982)). This carefully considered limitation would be entirely pointless if the "original" producer could turn around and pursue a reverse-passing-off claim under exactly the same provision of the Lanham Act. Samara would merely have had to argue that it was the "origin" of the designs that Wal-Mart was selling as its own line. It was not, because "origin of goods" in the Lanham Act referred to the producer of the clothes, and not the producer of the (potentially) copyrightable or patentable designs that the clothes embodied. [18] Similarly under respondents' theory, the "origin of goods" provision of § 43(a) would have supported the suit that we rejected in Bonito Boats, 489 U.S. 141, where the defendants had used molds to duplicate the plaintiff's unpatented boat hulls (apparently without crediting the plaintiff). And it would have supported the suit we rejected in TrafFix, 532 U.S. 23: The plaintiff, whose patents on flexible road signs had expired, and who could not prevail on a trade-dress claim under § 43(a) because the features of the signs were functional, would have had a reverse-passing-off claim for unattributed copying of his design. [19] In sum, reading the phrase "origin of goods" in the Lanham Act in accordance with the Act's common-law foundations (which were not designed to protect originality or creativity), and in light of the copyright and patent laws (which were), we conclude that the phrase refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods. Cf. 17 U.S.C. § 202 (distinguishing between a copyrighted work and "any material object in which the work is embodied"). To hold otherwise would be akin to finding that § 43(a) created a species of perpetual patent and copyright, which Congress may not do. See Eldred v. Ashcroft, 537 U.S. 186, 208 (2003). [20] The creative talent of the sort that lay behind the Campaigns videos is not left without protection. The original film footage used in the Crusade television series could have been copyrighted, see 17 U.S.C. § 102(a)(6), as was copyrighted (as a compilation) the Crusade television series, even though it included material from the public domain, see § 103(a). Had Fox renewed the copyright in the Crusade television series, it would have had an easy claim of copyright infringement. And respondents' contention that Campaigns infringes Doubleday's copyright in General Eisenhower's book is still a live question on remand. If, moreover, the producer of a video that substantially copied the Crusade series were, in advertising or promotion, to give purchasers the impression that the video was quite different from that series, then one or more of the respondents might have a cause of actionnot for reverse passing off under the "confusion . . . as to the origin" provision of § 43(a)(1)(A), but for misrepresentation under the "misrepresents the nature, characteristics [or] qualities" provision of § 43(a)(1)(B). For merely saying it is the producer of the video, however, no Lanham Act liability attaches to Dastar. [21] Because we conclude that Dastar was the "origin" of the products it sold as its own, respondents cannot prevail on their Lanham Act claim. We thus have no occasion to consider whether the Lanham Act permitted an award of double petitioner's profits. The judgment of the Court of Appeals for the Ninth Circuit is reversed, and the case is remanded for further proceedings consistent with this opinion. Justice BREYER took no part in the consideration or decision of this case. Lapine sued for, among other things, copyright infringement and reverse passing off. The court found no copyright infringement on the ground that the "total concept and feel" of the two cookbooks was dissimilar. Id. at *12. On the reverse passing off claim, the court explained: In Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 123 S.Ct. 2041, 156 L.Ed.2d 18 (2003), the Supreme Court defined the "origin of goods" for section 43(a) purposes, holding that the phrase "refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods." Id. at 37. 9 To do otherwise would place the Lanham Act in conflict with the copyright [and patent] law and "be akin to finding that § 43(a) created a species of perpetual patent and copyright, which Congress may not do." Id. The Court recognized that the Lanham Act was not intended to protect originality or creativity. Id. Following Dastar, a plaintiff may able to bring a section 43(a) violation based on a defendant's repackaging of plaintiff's material as its own. Id. at 31 (the claim "would undoubtedly be sustained if Dastar had bought some of New Line's Crusade videotapes and merely repackaged them as its own"); see also Flaherty Plaintiffs have not alleged that Defendants took Plaintiffs' cookbook and repackaged it as their own, nor could the evidentiary record sustain such a claim because, as explained above, the works are not substantially similar. Although Plaintiffs did not identify in the Complaint the Section 43 subdivision under which they assert their Lanham Act unfair competition claim, Plaintiffs argue that they are asserting a claim under Section 43(a)(1)(B), the false advertising subsection, and that Dastar does not foreclose that claim. This argument is unavailing. Plaintiffs' Lanham Act unfair competition claim is, at its core, the same as Plaintiffs' copyright claim-that Defendants took Plaintiff Lapine's ideas and used them in Deceptively Delicious without Plaintiffs' permission and without any attribution as to the source of the ideas and the work. Plaintiffs' Section 43(a) claim is premised on their allegations that Seinfeld misappropriated Lapine's work in preparing Deceptively Delicious and that, consequently, Seinfeld's statements that Deceptively Delicious is the product of her own work and Defendants' claim of a copyright in that work constitute falsities because they "assign the entire credit for [Deceptively Delicious] and Lapine's property contained therein, to themselves, and fail to credit Lapine or her Book." (Compl. ¶ ¶ 73-75.) Plaintiffs assert that the alleged misrepresentations that are likely to cause confusion or deception "as to the origin of [Deceptively Delicious] and Lapine's property contained therein." (Id. ¶ 76 (emphasis supplied).) This is precisely the type of claim that is precluded by Dastar, and the Court finds persuasive those decisions holding that "a failure to attribute authorship to Plaintiff does not amount to misrepresentation of the nature, characteristics, qualities, or geographic origin of . . . Id. at *14-15. 3. Dastar and products other than "communicative products". Courts have similarly held that short of the mere "repackaging" of another's products as one's own, the "origin of goods" provision of Lanham Act § 43(a) will not prevent the unattributed use of someone else's products as components in one's own products. Consider, for example, Bretford Mfg., Inc. v. Smith System Mfg. Corp., 419 F.3d 576 (7th Cir. 2005). The plaintiff and defendant were competing table manufacturers. When one of its suppliers failed to produce satisfactory parts, the defendant incorporated some of the plaintiff's hardware in its sample table that it showed to purchasing officials from a school district, who placed an order. The tables the defendant ultimately delivered to the school district contained none of the plaintiff's hardware. Judge Easterbrook held for the defendant: Passing off or palming off occurs when a firm puts someone else's trademark on its own (usually inferior) goods; reverse passing off or misappropriation is selling someone else's goods under your own mark. See Roho, Inc. v. Marquis, 902 F.2d 356, 359 (5th Cir. 1990). It is not clear what's wrong with reselling someone else's goods, if you first buy them at retail. If every automobile sold by DeLorean includes the chassis and engine of a Peugeot, with DeLorean supplying only the body shell, Peugeot has received its asking price for each car sold and does not suffer any harm. Still, the Supreme Court said in Dastar that "reverse passing off" can violate the Lanham Act if a misdescription of goods' origin causes commercial injury. Our opinion in Peaceable Planet, Inc. v. Ty, Inc., 362 F.3d 986 (7th Cir. 2004), shows how this could occur. Dastar added that the injury must be a trademark loss-which is to say, it must come from a misrepresentation of the goods' origin. Dastar thus had the right (so far as the Lanham Act is concerned) to incorporate into its videos footage taken and edited by others, provided that it manufactured the finished product and did not mislead anyone about who should be held responsible for shortcomings. No one makes a product from scratch, with trees and iron ore entering one end of the plant and a finished consumer product emerging at the other. Ford's cars include Fram oil filters, Goodyear tires, Owens-Corning glass, Bose radios, Pennzoil lubricants, and many other constituents; buyers can see some of the other producers' marks (those on the radio and tires for example) but not others, such as the oil and transmission fluid. Smith System builds tables using wood from one supplier, grommets (including Teflon from du Pont) from another, and vinyl molding and paint and bolts from any of a hundred more sources-the list is extensive even for a simple product such as a table. If Smith System does not tell du Pont how the Teflon is used, and does not inform its consumers which firm supplied the wood, has it violated the Lanham Act? Surely not; the statute does not condemn the way in which all products are made. Legs are a larger fraction of a table's total value than grommets and screws, but nothing in the statute establishes one rule for "major" components and another for less costly inputs. The right question, Dastar holds, is whether the consumer knows who has produced the finished product. In the Dastar case that was Dastar itself, even though most of the product's economic value came from elsewhere; just so when Smith System includes components manufactured by others but stands behind the finished product. The portion of § 43(a) that addresses reverse passing off is the one that condemns false designations of origin. "Origin" means, Dastar holds, "the producer of the tangible product sold in the marketplace". 539 U.S. at 31. As far as Dallas was concerned, the table's "origin" was Smith System, no matter who made any component or subassembly. Much of Bretford's argument takes the form that it is just "unfair" for Smith System to proceed as it did, making a sale before its subcontractor could turn out acceptable leg assemblies. Businesses often think competition unfair, but federal law encourages wholesale copying, the better to drive down prices. Consumers rather than producers are the objects of the law's solicitude. If Smith System misled Dallas into thinking that it could supply high-quality tables, when its subcontractor could not match Bretford's welds and other attributes of Bretford's V-shaped leg assemblies, then the victim would be the Dallas school system. (As far as we are aware, however, Dallas is happy with the quality of the tables it received; it has not complained about a bait and switch.) As the Court observed in Dastar, creators of certain artistic works are entitled (along the lines of the European approach to moral rights) to control how their work is presented or altered by others. See 539 U.S. at 34-35, citing 17 U.S.C. § 106A. See also Lee v. A.R.T. Co., 125 F.3d 580 (7th Cir. 1997). Bretford's table is not a "work of visual art" under § 106A (and the definition in 17 U.S.C. § 101). Once Bretford sold its goods, it had no control over how customers used their components: the Lanham Act does not include any version of the "derivative work" right in copyright law. See 17 U.S.C. § 106 (2). 4. Non-attribution versus misattribution. In Gilliam v. American Broadcasting Companies, Inc., 538 F.2d 14 (2d Cir. 1976), the plaintiffs were a highly successful British comedy group known as "Monty Python." They sought to enjoin the ABC television network from broadcasting edited versions of three 30-minute Monty Python programs. Though ABC had validly obtained the rights to broadcast the programs, ABC replaced approximately 24 minutes of the total of 90 minutes of Monty Python material with television commercials. Some of ABC's edits destroyed the comedic content of the work. The plaintiffs argued among other things that, in essence, their Monty Python trademark was being placed on work that should no longer be attributed to them. The Ninth Circuit explained: {T}he appellants claim that the editing done for ABC mutilated the original work and that consequently the broadcast of those programs as the creation of Monty Python violated the Lanham Act § 43(a), 15 U.S.C. § 1125(a). This statute, the federal counterpart to state unfair competition laws, has been invoked to prevent misrepresentations that may injure plaintiff's business or personal reputation, even where no registered trademark is concerned. It is sufficient to violate the Act that a representation of a product, although technically true, creates a false impression of the product's origin . . . . We find that the truncated version at times omitted the climax of the skits to which appellants' rare brand of humor was leading and at other times deleted essential elements in the schematic development of a story line. We therefore agree with {the district court's} conclusion that the edited version broadcast by ABC impaired the integrity of appellants' work and represented to the public as the product of appellants what was actually a mere caricature of their talents. Id. at 24-25 (citations and footnotes omitted). 1 Is a claim akin to the plaintiffs' claim in Gilliam still viable after Dastar? (To be clear, Gilliam was not a reverse passing off case, but what about its facts makes it at least problematic in light of Dastar?) 1 The specifics of the injunctive relief granted to the plaintiffs are more complicated. The plaintiffs filed their complaint on December 15, 1976, seeking to prevent the airing of the episodes eleven days later on December 26. For various reasons, the district court ordered ABC only to broadcast a disclaimer during the December 26 broadcast stating that the plaintiffs disassociated themselves form the program because of their editing. By the time it heard the appeal of the case in April, 1977, the Ninth Circuit was left to preliminarily enjoin ABC from any further airing of the episodes in their mutilated form. 5. Do data or computer software qualify as protectable tangible goods or unprotectable intangible "communicative products" under Dastar? The answer to this question appears to be highly fact-specific. 6. What about "forward passing off"? Dastar may be read to establish the proposition that there is no liability for reverse passing off under the Lanham Act when a defendant reproduces the plaintiff's "communicative products" and relabels those non-physical products as originating in the defendant. But does Dastar go too far? Does it further establish the proposition that there is no liability when a defendant places on its own "communicative products" a trademark confusingly similar with the plaintiff's mark (the standard "forward passing off" scenario)? For example, if an entity creates non-fungible tokens that explicitly reference a famous trademark and then sells those NFTs, is the entity liable for trademark infringement? Aren't the NFTs (and any images they may link to) non-physical "comunicative products" akin to those at issue in Dastar, the origin of which "are typically of no consequence to purchasers"? Apparently not, at least according to Hermès Int'l v. Rothschild, 590 F. Supp. 3d 647, 654 (S.D.N.Y. 2022) (finding that "Dastar said nothing at all about the general applicability of the Lanham Act to intangible goods"). See also Yuga Labs, Inc. v. Ripps, No. 22 Civ. 4355, 2023 WL 3316748, at *5 (C.D. Cal. Apr. 21, 2023) (agreeing with Hermès and concluding that "although NFTs are virtual goods, they are, in fact, goods for purposes of the Lanham Act"). Recall that a registration application at the PTO may be rejected on the basis that the applied-for mark will create a likelihood of confusion with an already registered mark. The PTO's test for determining whether Lanham Act § 2(d) bars a registration is essentially the same as the multifactor test for the likelihood of confusion in the federal court litigation context. See B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293 (2015). Excerpted below is the discussion of the § 2(d) bar in the Trademark Manual of Examining Procedure. [1] In the ex parte examination of a trademark application, a refusal under § 2(d) is normally based on the examining attorney's conclusion that the applicant's mark, as used on or in connection with the specified goods or services, so resembles a registered mark as to be likely to cause confusion. See TMEP § 1207.02 concerning application of the § 2(d) provision relating to marks that so resemble another mark as to be likely to deceive, and TMEP § 1207.03 concerning § 2(d) refusals based on unregistered marks (which generally are not issued in ex parte examination). [2] The examining attorney must conduct a search of USPTO records to determine whether the applicant's mark so resembles any registered mark(s) as to be likely to cause confusion or mistake, when used on or in connection with the goods or services identified in the application. The examining attorney also searches pending applications for conflicting marks with earlier effective filing dates . . . . The examining attorney must place a copy of the search strategy in the record. [3] If the examining attorney determines that there is a likelihood of confusion between applicant's mark and a previously registered mark or marks, the examining attorney refuses registration of the applicant's mark under § 2(d). Before citing a registration, the examining attorney must check the automated records of the USPTO to confirm that any registration that is the basis for a § 2(d) refusal is an active registration . . . . • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. • The relatedness of the goods or services as described in the application and registration(s). See (3) the applicant's prior registration has co-existed for at least five years with the registration being considered as the basis for the Section 2(d) refusal. See Id. at 1400. [9] The determination of likelihood of confusion under § 2(d) in an intent-to-use application under § 1(b) of the Trademark Act does not differ from the determination in any other type of application. As a basis for refusal, § 2(d) refers not only to registered marks but also to "a mark or trade name previously used in the United States by another and not abandoned." Refusal on the basis of an unregistered mark or trade name has sometimes been referred to as refusal on the basis of a "known mark." This provision is not applied in ex parte examination because of the practical difficulties with which an examining attorney is faced in locating "previously used" marks, and determining whether anyone has rights in them and whether they are "not abandoned." 1. Lanham Act § 2(d) and unregistered marks. Note that § 2(d) not only prohibits the registration of a mark that is confusingly similar with any previously registered mark, but also prohibits the registration of a mark that is confusingly similar with an unregistered "mark or tradename previously used in the United States by another and not abandoned." Lanham Act § 2(d), 15 U.S.C. § 1052 (d). In practice, "[t]his provision is not applied in ex parte examination because of the practical difficulties with which an examining attorney is faced in locating 'previously used' marks, and determining whether anyone has rights in them and whether they are 'not abandoned.'" TMEP § 1207.03 (Jan. 2015). Lanham Act § 43(c)foot_20 provides protection for trademarks against "dilution," which is probably the single most muddled concept in all of trademark doctrine. Of the many reasons for this, perhaps the most significant-and avoidable-is that trademark courts and commentators tend to speak of several different species of trademark dilution without identifying them any more specifically than by the generic name "dilution." From the very beginning of your study of dilution, it may be worthwhile to distinguish among three specific species of dilution: (1) dilution of uniqueness, (2) dilution by "blurring," and (3) dilution by "tarnishment." Because dilution is so easily misunderstood, each form of dilution is briefly discussed below before we turn to the representative case law. Note that, strictly speaking, U.S. trademark law protects against only dilution by blurring and dilution by tarnishment. A brief description of dilution of a trademark's uniqueness is offered because it is arguably what the trademark practitioner and scholar Frank Schechter had in mind when he first spoke of the concept of trademark dilution in the 1920s. In his seminal 1927 article The Rational Basis of Trademark Protection, 40 HARV. L. REV. 813 (1927), Schechter introduced to American law the concept of trademark dilution. Schechter used the term "dilution" to refer to the impairment of a trademark's uniqueness, or what modern marketing doctrine would term its "brand differentiation."foot_21 His primary concern was to preserve what he variously termed a mark's "arresting uniqueness," its "singularity," "identity," and "individuality," its quality of being "unique and different from other marks." 4 Schechter was not so much concerned with a trademark's distinctiveness of source, but with a trademark's distinctiveness from other marks, not its "source distinctiveness," but its "differential distinctiveness." 5 In Schechter's view, trademark uniqueness was worth protecting because it generated "selling power." Certain very strong marks were not simply a means of identifying and advertising source. In a new age of mass production, they were also a means of endowing the goods to which they were attached with the characteristic of uniqueness as against the crowds of other massproduced goods in the marketplace, a characteristic for which consumers would pay a premium. Schechter believed, quite rightly at the time, that antidilution protection was necessary because anti-infringement protection, based on consumer confusion as to source, would not fully preserve the uniqueness of famous marks. In situations where a defendant used a famous mark on goods unrelated to those on which the famous mark normally appeared (e.g., NIKE pianos, ROLLS-ROYCE chewing gum, CHANEL waste disposal services), consumers would not likely assume that the defendant's product had the plaintiff as its source. Thus, no cause of action for consumer confusion as to source would lie. The beauty of Schechter's original conception of antidilution protection was that it was relatively easy to put into practice. Uniqueness is an absolute concept. A mark is either unique or it is not. If a senior mark is unique in the marketplace and a junior mark appears that is identical to it, then the junior mark will destroy the senior mark's uniqueness. Thus, the test for dilution was an essentially formal one. The judge need only consider the identity or close similarity of the parties' marks. If they were identical or closely similar, then the loss of uniqueness could be presumed. See Eli Lilly & Co. v. Natural Answers, Inc. 233 F.3d 456, 468-69 (7th Cir. 2000) (considering only similarity of the parties' marks and the "renown" of the senior mark in finding a likelihood of dilution); Ringling Bros-Barnum & Bailey Combined Shows, Inc. v. Utah Division of Travel Development, 170 F.3d 449, 464 (4th Cir. 1999) ("[O]nly mark similarity and, possibly, degree of 'renown' of the senior mark would appear to have trustworthy relevance under the federal Act."). Where the consumer confusion test was a messy and unpredictable empirical analysis centered on the consumer, the trademark dilution test was a simple and relatively predictable analysis centered on the trademark. Note that Schechter's original conception has never been enacted into law, and the language of Lanham Act § 43(c) is careful to steer clear of it. Indeed, in the early stages of the drafting of the Act, a form of antidilution protection based on "uniqueness" was proposed and rejected. 6 Dilution by blurring. The idea underlying the concept of trademark "blurring" is that the defendant's use of a mark similar or identical to the plaintiff's mark, though perhaps not confusing as to source, will nevertheless "blur" the link (a) between the plaintiff's mark and the plaintiff or (b) between the plaintiff's mark and the goods or services to which the plaintiff's mark is traditionally attached. In modern marketing parlance, anti-blurring protection seeks to preserve a brand's "typicality," the brand's "ability to conjure up a particular product category." Alexander F. Simonson, How and When Do Trademarks Dilute: A Behavioral Framework to Judge "Likelihood of Dilution", 83 TRADEMARK REP. 149, 152-53 (1993). In Ty Inc. v. Perryman, 306 F.3d 509 (7th Cir. 2002), Judge Posner provided a hypothetical example of blurring: [T]here is concern that consumer search costs will rise if a trademark becomes associated with a variety of unrelated products. Suppose an upscale restaurant calls itself "Tiffany." There is little danger that the consuming public will think it's dealing with a branch of the Tiffany jewelry store if it patronizes this restaurant. But when consumers next see the name "Tiffany" they may think about both the restaurant and the jewelry store, and if so the efficacy of the name as an identifier of the store will be diminished. Consumers will have to think harder-incur as it were a higher imagination cost-to recognize the name as the name of the store. So "blurring" is one form of dilution. Id. at 511 (citations omitted). As Judge Posner's description suggests, the increase in "imagination cost" that blurring is thought to cause forms the basis of the economic rationale underlying antidilution protection. As Judge Posner explained, "[a] trademark seeks to economize on information costs by providing a compact, memorable and unambiguous identifier of a product or service. The economy is less when, because the trademark has other associations, a person seeing it must think for a moment before recognizing it as the mark of the product or service." Richard Posner, When Is Parody Fair Use?, 21 J. LEGAL STUDIES 67, 75 (1992). 7 The blurring theory of dilution is highly empirical in orientation. For the judge to find that a junior mark "blurs" a senior mark, the judge must find that the junior mark is causing consumers to "think for a moment" before recognizing that the senior mark refers to the goods of the senior mark's owner. 8 A merely formal analysis of the similarity of the marks is insufficient. The judge must evaluate the likely effect of the junior mark on the perceptions of actual consumers and must in the process take into account such factors as the degree of distinctiveness-or typicality-of the senior mark. The analysis is once again centered on the consumer. The concept of trademark blurring is controversial. In his treatise, Tom McCarthy memorably observes: 7 The Restatement (Third) of Unfair Competition provides an alternative account of dilution by blurring, one that the student may find more persuasive: [A] mark may be so highly distinctive and so well advertised that it acts as a powerful selling tool. Such a mark may evoke among prospective purchasers a positive response that is associated exclusively with the goods or services of the trademark owner. To the extent that others use the trademark to identify different goods, services, or businesses, a dissonance occurs that blurs this stimulant effect of the mark. The antidilution statutes protect against this dilution of the distinctiveness and selling power of the mark. RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 25 (1995). However, Judge Posner's "imagination cost" account of blurring has proven to be far more influential in the courts and commentary, for better or worse. Commentators almost uniformly contend that dilution by blurring is a purely theoretical hypothesis and rarely, if ever, happens in the real world. That is, the argument is that impairment of the distinctiveness of a trademark by blurring is like Bigfoot, the Himalayan Yeti or the Loch Ness Monster: a theoretical construct never proven to exist by incontrovertible evidence. MCCARTHY § 24:15. For example, Christine Haight Farley defies proponents of the blurring theory to provide even one concrete (and not hypothetical) example of a famous mark that has been significantly damaged through blurring. See Christine Haight Farley, Why We Are Confused about the Trademark Dilution Law, 16 FORDHAM INTELL. PROP. MEDIA & ENTER. L. J. 1175, 1184-85 (2006). Yet as will see, courts continue to rule in favor of blurring plaintiffs, particularly when the defendant has acted in clear bad faith. Dilution by tarnishment. Dilution by tarnishment is fundamentally different from dilution by blurring (and arguably has nothing to do with "dilution" as Schechter originally formulated the concept). Tarnishment describes damage to the positive associations or connotations of a trademark. See Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 43 (2d Cir. 1994) ("'Tarnishment' generally arises when the plaintiff's trademark is linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context likely to evoke unflattering thoughts about the owner's product[s]."). For example, in New York Stock Exchange, Inc. v. New York, New York Hotel, LLC, 293 F.3d 550 (2d Cir. 2002), a Las Vegas casino called its players club the "New York $lot Exchange." Owners of the NEW YORK STOCK EXCHANGE trademark took offense at the suggestion that their stock exchange was in some sense a venue for gambling, if not also for stacked odds, and sued. The district court granted summary judgment to the casino. New York Stock Exch., Inc. v. New York, New York Hotel, LLC, 69 F. Supp. 2d 479, 482 (S.D.N.Y. 1999). On appeal, the Second Circuit reversed and remanded on certain of the dilution claims. Among other things it found, with respect to the plaintiff's New York state law tarnishment claim, that "[a] reasonable trier of fact might . . . find that the Casino's humorous analogy would injure NYSE's reputation." New York Stock Exch., Inc. v. New York, New York Hotel LLC, 293 F.3d 550, 558 (2d Cir. 2002) (analyzing the issue under New York state anti-tarnishment law). In principle, trademark confusion and trademark dilution are starkly different. When a consumer experiences trademark confusion, the similarity of the plaintiff's and the defendant's marks leads the consumer to believe that both the plaintiff's and the defendant's products are coming from the same company. The consumer believes that one company is the source of both parties' marks and products. By contrast, when a consumer experiences dilution, the similarity between the parties' marks leads the consumer to associate the two marks with each other, but the consumer does not believe that they are coming from the same company. She knows that there are two different companies. (e.g., FOUR SEASONS for hotel services and FOUR SEASONS for landscaping services). The harm in dilution by blurring is that whenever the consumer sees either the plaintiff's or the defendant's mark, she is compelled to think for a moment to determine to which of those two different companies the mark is referring. The harm in dilution by tarnishment is that any negative connotations of one of the marks may The research company conducted the surveys in malls in Trumbull, Connecticut; Philadelphia, Pennsylvania; Youngstown, Ohio; Chicago Ridge, Illinois; Louisville, Kentucky; San Antonio, Texas; Colorado Springs, Colorado; and Northridge, California. The website survey was also conducted in Portland, Oregon. Because CafePress allowed only consumers over the age of thirteen to purchase from its site, Jacoby similarly limited his universe of respondents. Respondents who worked at an advertising agency, a market research firm or a business located in the mall (or had an immediate family member who did) were excluded, as were people who normally wore eyeglasses or contact lenses but were not wearing them at the time of the screening. The screening questionnaire provided to the Court indicates that the respondents who then participated in the surveys were given a monetary reward. Neither Jacoby's report nor any of the supporting survey documents disclosed the amount of the reward. The simulations were reproduced on a compact disc; the respondents did not view Smith's actual web pages on the Internet. Jacoby arrived at these numbers by averaging the net survey results for the Walocaust and Wal-Qaeda t-shirts. See Paul R. La Monica, NBC Sued over 'Heroes' Scene by Garbage Disposal Maker, CNNMoney.com, As one circuit has recognized, a click-thru rate represents the upper limit of initial interest confusion. See 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229, 1244 (10th Cir. 2013). But we cannot know how many, if any, consumers clicked on ALG's advertisements out of confusion rather than mere diversion. * Courtesy of Rebecca Tushnet & Georgetown Law Library, Intellectual Property Teaching Resources (2020). 2008, Wreal registered both of its marks-"FyreTV" and "FyreTV.com"-with the U.S. Patent and Trademark Office. Wreal I, 840 F.3d at 1246.2 A "set-top box" is "a device that is connected to a television so that the television can receive digital signals." Set-top Box, Merriam-Webster Online Dictionary, https://www.merriamwebster.com/dictionary/set-top% 20box (last visited June 19, 2022).3 The record shows that Amazon has alternatively used "Fire TV" or "fireTV" in its graphics and advertisements for its set-top box. For purposes of this opinion, we use the stylization of "fireTV," because Wreal highlighted the inconsistency in its response disputing Amazon's statement of undisputed facts. However, we emphasize that we make no ultimate conclusion on whether Amazon's mark is stylized as "Amazon Fire TV" or "fireTV." Generally, hardcore pornography refers to "scenes of actual sex acts." Hardcore, Merriam-Webster Online Dictionary, https://www.merriam-webster.com/dictionary/hard-core (last visited June 19, 2022). Softcore pornography refers to "scenes of sex acts that are less explicit than hard-core material."Soft-core, Merriam-Webster Online Dictionary, https://www.merriamwebster.com/dictionary/soft-core (last visited June 19, 2022). The district court adopted the magistrate judge's determination that, while this inquiry appears to show confusion, the sender was not confused. The magistrate judge based its conclusion solely on the text of the inquiry itself, and not on any other record evidence. In other words, the magistrate judge As noted by the district court, the protection that these three bodies of law provide is coextensive. . . . The district court also noted that the presence of Amazon's "amazon" housemark alongside "fireTV" in advertisements pushed the distinctiveness-of-the-mark factor further in Amazon's favor. As we discuss below, however, the presence of a housemark should be assessed in reference to the second factor in the analysis-the similarity of the marks. See A & H Sportswear, 237 F.3d at 229-30. The magistrate judge (and, by its adoption, the district court) discounted both pieces of evidence, concluding that neither consumer was actually confused. As already discussed in footnote 5, supra, this amounted to an improper credibility determination that invaded the province of the jury. Wreal identified other pieces of evidence to the district court, but our review of the record indicates that they do not represent direct evidence of actual confusion. For example, one of Wreal's customers said, "I plan to buy the new Amazon FireTV box (I know it is NOT related to you guysalthough confusion over the name may bring Fyretv some more customers and maybe a domain name sale windfall-more power to you!) Will this new Amazon streaming device have a private channel installation of FyreTV in the near future?" As for the copyright claim, the Ninth Circuit held that the tax treatment General Eisenhower sought for his manuscript of the book created a triable issue as to whether he intended the book to be a work for hire, and thus as to whether Doubleday properly renewed the copyright in 1976. See Fed.Appx., at 314. The copyright issue is still the subject of litigation, but is not before us. We express no opinion as to whether petitioner's product would infringe a valid copyright in General Eisenhower's book. Although Dastar involved copying of uncopyrighted work, subsequent decisions have recognized its applicability to copyrighted work as well. See, e.g., Atrium Group De Ediciones Y Publicaciones, S.L. v. Harry N. Abrams, Inc., 565 F.Supp.2d 505, 512-13 (S.D.N.Y. 2008) (discussing cases). The current version of § 43(c) is sometimes referred to as the Trademark Dilution Revision Act or "TDRA," which became effective on October 6, 2006 (and which replaced the old language of § 43(c) that was established by the Federal Trademark Dilution Act of 1995 or "FTDA"). For an important alternative reading of Schechter, which asserts that he sought to provide antidilution protection only to marks which are "synonymous with a single product or product class," see Sara Stadler Nelson, The Wages of Ubiquity in Trademark Law, 88 IOWA L.REV. 731 (2003). Frank I. Schechter, The Rational Basis of Trademark Protection, 40 HARV. L. REV. 813, 830, 831, 827, 830, 831 (1927). See Barton Beebe, The Semiotic Analysis of Trademark Law, 51 UCLA L. REV. (2004) (distinguishing between source distinctiveness and "differential distinctiveness," or in semiotic terms, between "signification" and "value"). For a strong critique of this conception of blurring, see Rebecca Tushnet, Gone in 60 Milliseconds: Trademark Law and Cognitive Science, 86 TEXAS L. REV. 507 (2008). 3 GILSON ON TRADEMARKS § 13.21 (2026). Different states' limitations periods can run anywhere from about two to six years. See MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 31:23 (2026).For an impressive application of the laches defense, see Dropbox,Inc. v. Thru Inc., • The "Exxon format". In Exxon Corp. v. Texas Motor Exchange of Houston, Inc., 628 F.2d 500 (5th Cir. 1980), survey respondents were shown a photograph of one of the defendant's signs bearing its TEXON trademark. The respondents were then asked: See, e.g., Major League Baseball Properties v. Sed Non Olet Denarius, Ltd., 817 F. Supp. 1103, 1122 (S.D.N.Y. 1993) ("[T]he issue here is not whether defendants' name brings to mind any other name . . . . Rather, the issue here is one of actual confusion. Plaintiff's survey questions regarding association are irrelevant to the issue of actual confusion.").In Itamar Simonson, The Effect of Survey Method on Likelihood of Confusion Estimates: omitted). That provision now penalizes a person who use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any damage by association the reputation of the other mark, even when the consumer knows that the two companies are commercially unrelated. Though trademark confusion and trademark dilution are different, a population of relevant consumers may contain some consumers who are confused as to source and some other consumers (perhaps the more sophisticated in the population) who are not confused as to source but rather experience dilution. See MCCARTHY § 24:72 ("A given unauthorized use by defendant can cause confusion in some people's minds and in other people's minds cause dilution by blurring, but in no one person's mind can both perceptions occur at the same time."). See also RESTATMENT (THIRD) OF UNFAIR COMPETITION § 25, comment f (1995), Reporter's Note ("Although in a particular case the use of another's mark may confuse some consumers and dilute the value of the mark in the minds of other consumers, the state of mind required for confusion and dilution are distinct and inconsistent. The confused consumer believes that the actor's use of the mark is connected with the trademark owner, and thus for such consumers the use does not dilute the distinctiveness of the mark."). Though distinct in theory, the processes of trademark confusion and trademark dilution are sometimes treated as interchangeable by careless lawyers and courts. This can be frustrating. See MCCARTHY § 24:72. In Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007), the Fourth Circuit set forth the main elements of a federal claim for dilution by blurring or dilution by tarnishment. The plaintiff must show: (1) that the plaintiff owns a famous mark that is distinctive; (2) that the defendant has commenced using a mark in commerce that allegedly is diluting the famous mark; (3) that a similarity between the defendant's mark and the famous mark gives rise to an association between the marks; and (4) that the association is likely to impair the distinctiveness of the famous mark or likely to harm the reputation of the famous mark. Id. at 264-65. Not made explicit in this listing of the elements is the important detail that the plaintiff's mark must have become famous before the defendant began use of its allegedly diluting mark. See Lanham Act § 43(c)(1), 15 U.S.C. § 1125(c)(1) ("at any time after the owner's mark has become famous"). In light of the above, the statutory language of § 43(c) excerpted below will reward a close reading. We then turn first, in section II.C.1, to the fame requirement for antidilution protection and then, in section II.C.2, to anti-blurring protection and, in section II.C.3, to antitarnishment protection.foot_0 Lanham Act § 43(c), 15 U.S.C. § 1125(c) (c) Dilution by blurring; dilution by tarnishment (1) Injunctive relief. Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury. (2) Definitions (A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following: (i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties. (ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark. (iii) The extent of actual recognition of the mark. (iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register. (B) For purposes of paragraph (1), "dilution by blurring" is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following: (i) The degree of similarity between the mark or trade name and the famous mark. (ii) The degree of inherent or acquired distinctiveness of the famous mark. (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark. (iv) The degree of recognition of the famous mark. (v) Whether the user of the mark or trade name intended to create an association with the famous mark. (vi) Any actual association between the mark or trade name and the famous mark. (C) For purposes of paragraph (1), "dilution by tarnishment" is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. (3) Exclusions. The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection: (A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person's own goods or services, including use in connection with-(i) advertising or promotion that permits consumers to compare goods or services; or (ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner. (B) All forms of news reporting and news commentary. To qualify for federal anti-blurring and anti-tarnishment protection under § 43(c), a mark must be "widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner." Lanham Act § 43(c)(2)(A), 15 U.S.C. § 1125(c)(2)(A). Furthermore, the mark must have become famous before the defendant began its allegedly diluting use. Lanham Act § 43(c)(1), 15 U.S.C. § 1125(c) (1). Among the marks that have failed to meet the fame requirement are the "longhorn" logo of the University of Texas, Board of Regents v. KST In the opinion excerpt that follows, the Federal Circuit considered the fame of the mark COACH. Coach Services, Inc. ("CSI"), the proprietor of COACH leather goods stores, opposed Triumph Learning, LLC's application to register the mark COACH for educational materials used to prepare students for standardized tests. (Does CSI's opposition strike you as a reasonable assertion of CSI's rights in its COACH mark?) In affirming the TTAB's finding of no likelihood of confusion or dilution, the Federal Circuit found that CSI had failed to establish that its mark was "widely recognized by the general consuming public of the United States" at the time that Triumph Learning adopted its mark. Triumph filed its applications to register the COACH word mark, a stylized COACH mark, and a COACH mark and design (shown below) in December 2004. The applications were published for opposition on September 20, 2005. mark are now eclipsed by the owner's use of the mark." Toro, 61 U.S.P.Q.2d at 1180. An opposer must show that, when the general public encounters the mark "in almost any context, it associates the term, at least initially, with the mark's owner." Id. at 1181. In other words, a famous mark is one that has become a "household name." Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1012 (9th Cir. 2004) (quoting Thane Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 911 (9th Cir. 2002)). With this framework in mind, we turn to CSI's evidence of fame. [4] The Board found that CSI's evidence of fame was insufficient to support a dilution claim. On appeal, CSI argues that the same evidence establishing fame for likelihood of confusion also establishes fame for dilution purposes. Specifically, CSI argues that the Board disregarded: (1) sales and advertising figures for years 2000-2008; (2) its sixteen federal trademark registrations; (3) unsolicited media attention; (4) joint marketing efforts; (5) two Second Circuit decisions finding the Coach hangtag, which features the COACH mark, to be famous; and (6) CSI's internal brand awareness survey showing awareness among 18-24 year old consumers. We address each category of evidence in turn. For the reasons set forth below, we find substantial evidence supporting the Board's decision that CSI failed to show the requisite level of fame for dilution. [5] Turning first to CSI's evidence of sales and advertising expenditures, CSI argues that the Board erred when it ignored the annual reports that were attached to a Notice of Reliance. As previously discussed, however, the Board correctly held that these reports were unauthenticated and thus inadmissible. The only sales and advertising figures in the record via Ms. Sadler's testimony were for one year-2008-which, notably, is after Triumph filed its use-based applications in December 2004. We agree with the Board that this limited evidence of sales and advertising is insufficient to show fame. Even if the Board had considered the annual reports, moreover, such evidence, standing alone, would be insufficient. See Toro, 61 U.S.P.Q.2d at 1181 ("Merely providing evidence that a mark is a topselling brand is insufficient to show this general fame without evidence of how many persons are purchasers."). [6] With respect to CSI's registrations, the Board found that the mere existence of federally registered trademarks is insufficient to show that the mark is famous for purposes of dilution because ownership of a registration is not proof of fame. On appeal, CSI argues that the Board erred in this determination because one of the statutory factors a court can consider in the fame analysis is whether the mark is registered on the principal register. See 15 U.S.C. § 1125(c)(2)(A)(iv). As Triumph points out, however, "[o]ne cannot logically infer fame from the fact that a mark is one of the millions on the Federal Register." 4 McCarthy, § 24:106 at 24-310. While ownership of a trademark registration is relevant to the fame inquiry, and-to the extent the Board decision implies otherwise-the Board erred on this point, proof of registration is not conclusive evidence of fame. [7] With respect to media attention, the Board found that CSI's evidence fell short of showing "widespread recognition of opposer's mark [by] the general population." Board Decision, 96 U.S.P.Q.2d at 1611. Specifically, the Board found that: the vast majority of unsolicited media recognition for opposer's COACH mark comprises a reference to one of opposer's products as one of many different fashion buys or trends, and the news articles noting opposer's renown are too few to support a finding that opposer's mark has been transformed into a household name. Id. On appeal, CSI argues that the Board ignored hundreds of unsolicited articles mentioning the COACH mark over the years. CSI points to several examples, including the following: • "In fact, Coach's growth . . . has been phenomenal. When Sara Lee acquired the firm in 1985, its volume was about $18 million. In Sara Lee's latest fiscal year, which ended last June 30, Coach's sales exceeded $500 million. The name also resonates with consumers. The brand ranked eighth among the top 10 in accessories firms in the latest Fairchild 100 consumer survey of fashion labels, in 1995." J.A. 3607 (Women's Wear Daily, May 5, 1997). • "Coach, one of the top makers of status handbags in the United States . . ." J.A. 3598 (The New York Times, Jan. 27,1999). • "Coach's creative director has helped transform the 60-year old company into a must-have American icon." J.A. 3156 (Women's Wear Daily, June 2001). • "Will Coach Become Too Popular? . . . Coach, the maker and retailer of stylish handbags, just had a blowout season . . . . Clearly Coach has recorded some of the best growth numbers of any retailer or accessories maker in recent years." J.A. 3543 (Business Week, Jan. 24, 2007). [8] Looking at the media attention in the record, there is certainly evidence that CSI's COACH mark has achieved a substantial degree of recognition. That said, many of the articles submitted are dated after Triumph filed its registration applications and thus do not show that CSI's mark was famous prior to the filing date. See Toro, 61 U.S.P.Q.2d at 1174 ("an owner of an allegedly famous mark must establish that its mark had become famous prior to the filing date of the trademark application" which it opposes). And, there is substantial evidence supporting the Board's determination that many of the references are limited to mentioning one of CSI's COACH products among other brands. Accordingly, even though there is some evidence of media attention, substantial evidence supports the Board's conclusion that the media evidence submitted fails to show widespread recognition. [9] With respect to joint marketing efforts, CSI argued that other popular brands, including LEXUS and CANON, have used the COACH mark in connection with their products. The Board found that CSI "failed to provide any testimony regarding the success of the joint marketing efforts and the effect of those efforts in promoting opposer's mark." Board Decision, 96 U.S.P.Q.2d at 1611, n. 37. We agree. Without evidence as to the success of these efforts or the terms of any contracts involved, they have little value here. [10] Next, the Board found that CSI's 2008 brand awareness study was "of dubious probative value" because it did not offer a witness with first-hand knowledge of the study to explain how it was conducted. Id. at 1611. The Board further noted that, although the study showed a high level of brand awareness among women ages 13-24, it provided no evidence of brand awareness among women generally, or among men. See Top Tobacco, 509 F.3d at 384 (noting that the TDRA eliminated the possibility of "niche fame" as a basis for finding a mark famous). And, the survey was conducted in 2007, several years after Triumph filed its applications. Given these circumstances, we find no error in the Board's decision to give this survey limited weight. [11] CSI also argues that the Board failed to adequately consider two Second Circuit decisions finding that the hangtag attached to its various handbags, which features the COACH mark, is distinctive. See Coach Leatherware Co., Inc. v. AnnTaylor, Inc., 933 F.2d 162, 166 (2d Cir. 1991) (finding that Coach's lozenge-shaped leather tags embossed with the name "Coach Leatherware," which are attached to Coach's handbags by beaded brass chains, "have become distinctive and valuable through Coach's promotional efforts and by virtue of its upscale reputation"); see also Coach, Inc. v. We Care Trading Co., Inc., 67 Fed.Appx. 626, 630 (2d Cir. 2002) (affirming the jury's dilution verdict on grounds that "the jury's determination that the hang tag was famous and distinctive was not unreasonable" and "the substantial similarity of the two marks here coupled with the use of Coach's very distinctive hang tag shape amply justified the jury's verdict"). Although the Board did not specifically address these cases, we agree with Triumph that they are unrelated and irrelevant, particularly because: (1) the 1991 case did not involve a dilution claim; and (2) both cases focus on the hangtag feature on CSI's handbags, not on the alleged fame of the COACH mark generally. [12] Based on the foregoing, we agree with the Board that CSI failed to provide sufficient evidence of fame for dilution purposes. Absent a showing of fame, CSI's dilution claim fails, and we need not address the remaining statutory factors for dilution by blurring. [13] Before moving on, we pause to emphasize the fact-specific nature of our holding today. While the burden to show fame in the dilution context is high-and higher than that for likelihood of confusion purposes-it is not insurmountable. We do not hold that CSI could never establish the requisite level of fame for dilution purposes. We hold only that, on the record presented to it, the Board had substantial support for its conclusion that CSI's evidentiary showing was just too weak to do so here. 1. The importance of the timing of fame evidence. Courts appear to be applying quite strictly the requirement that the plaintiff show fame before defendant began use. Consider the case of Inter IKEA Systems B.V. v. Akea, LLC, 110 U.S.P.Q.2d 1734 (TTAB 2014). In June 2009, Akea filed an intent-to-use application for the mark AKEA for nutritional supplements in international class 5, retail services in class 35, and advice and information services relating to diet in class 44. Ikea opposed under § 2(d), claiming likelihood of confusion, and under § 13 and § 43(c), claiming likelihood of dilution. Almost all of Ikea's evidence of fame was dated after June 2009. "For example, opposer's evidence that the IKEA brand was ranked No. 28 on the Business Week/Interbrand 2012 list of the Top 100 Brands worldwide, with an estimated brand value of $12,808,000,000 is subsequent to the filing date of applicant's application and, therefore, is not relevant." Id. at 1745. Ikea's dilution claim therefore failed. What result? Akea's registration was refused in class 35 for retail services where the TTAB found a likelihood of confusion, but allowed in classes 5 and 44, for nutritional supplements and for information services relating to diet respectively, where the TTAB found no likelihood of confusion (but might very well have found a likelihood of dilution had Ikea's lawyers submitted, for example, evidence that in 2008, Interbrand ranked Ikea as the 35th most valuable brand in the world worth $10.9 billion). 2. Fame surveys. What level of fame must a mark be shown to have achieved in survey evidence to qualify for federal antidilution protection? Consider McCarthy's proposal, which he provides in an "Author's Opinion" section of his treatise: I think that the extraordinary scope of the federal antidilution law requires proof of a relatively high level of recognition . . . . I believe that a minimum threshold survey response should be in the range of 75% of the general consuming public of the United States. I do not propose that a mark that obtained such a reading on a survey would automatically qualify as "famous": surveys are not indisputably accurate measures of public perception. It is no secret that survey percentages can vary widely depending on which group of people are asked questions phrased in various ways. My 75% proposal assumes that the fact finder is satisfied that the data reasonably reflects actual public perception of the entire general consuming public of the United States. MCCARTHY § 24:106 (cited in T-Mobile US, Inc. v. AIO Wireless LLC, 991 F. Supp. 2d 888, 931 (S.D. Tex. 2014)). What would be the appropriate question to ask survey respondents? 3. Mark fame and unauthorized parodic uses of a mark. When sending cease and desist letters against unauthorized expressive users of their marks (such as parodists or those who create appropriation art), trademark owners frequently assert that the law requires them to enforce their exclusive rights or they will lose those rights. Owners resort to this reasoning to defend often dubious and overreaching threat letters. In an effort to align owners' incentives with free speech, Mark Lemley has proposed that "[c]ourts should consider the existence, number, and prominence of unauthorized parodies, satires, or other expressive and referential uses of a mark directed at the general public as evidence tending to show that the mark is famous for both dilution and likelihood of confusion purposes, and the absence of such uses as tending to show that the mark is not famous and not as strong . . . . My proposal should encourage trademark lawyers to advise their clients to let such uses be. Trademark owners don't need to police expressive uses even today, and my approach would give them a reason not to." Mark A. Lemley, Fame, Parody, and Policing in Trademark Law, 2019 MICH. ST. L. REV. 1 (2019). Does this strike you as a salutary doctrinal innovation? Are courts likely to adopt it? 4. State antidilution law as an alternative for marks that are not nationally famous. As the table below indicates, 38 states provide state statutory antidilution protection. See MCCARTHY §24.77. Importantly, none of these states requires that the mark be nationally famous to qualify for state antidilution protection. Some, such as Connecticut, Illinois, Minnesota, and New Jersey, provide protection only to a "mark which is famous in this state." See, e.g., 765 Ill. Comp. Stat. 1036/65. Other state statutes, such as New York's, have been interpreted to require that the mark is "truly distinctive" to qualify for state antidilution protection. See Allied Maint. Corp. v. Allied Mech. Trades, Inc., 42 N.Y.2d 538, 546 (1977). See also Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 625 (2d Cir. 1983) ("In Allied the majority indicated that the anti-dilution statute protects only extremely strong marks."); Moore Bus. Forms, Inc. v. Rite Aid Corp., No. 90 Civ.1211E, 1991 U.S. Dist. LEXIS 18599, at *25 (W.D.N.Y. Dec. 6,1991) ("Allied Maintenance requires that only truly distinctive marks be afforded the protection of New York's anti-dilution statute."). Though federal antidilution law requires a substantially higher level of fame for marks to qualify for federal antidilution protection, it does not preempt state antidilution law. See, e.g., Viacom, Inc. v. Ingram Enterprises, Inc., 141 F.3d 886 (8th Cir. 1998) (holding that the 1996 federal antidilution law does not preempt Missouri state antidilution law). This follows from the "general principle of federal-state trademark relations that while the states cannot subtract from the exclusive rights of trademark given by federal law, they can add to those rights." MCCARTHY § 24:80. A limitation of state antidilution protection, however, is that in certain instances injunctive relief may be limited only to the state covered by the statute or even to a part of that state. See MCCARTHY § 24.82. Another limitation is that federal registration of a mark is an absolute defense to a state antidilution claim against that mark. Lanham Act § 43(c)(6); 15 U.S.C. § 1125(c) (6). In Diageo North America, Inc. v. W.J. Deutsch & Sons Ltd., No. 22-2106, 2024 WL 2712636 (2d Cir. May 28, 2024), the Second Circuit affirmed in a summary order the district court's denial of the defendant's motion for judgment as a matter of law in Diageo North America, Inc. v. W.J. Deutsch & Sons Ltd., 626 F. Supp. 3d 635 (S.D.N.Y. 2022). The jury found that the defendant's bottle design, shown below on the right, would not create a likelihood of confusion as to its source with the plaintiff's bottle design shown on the left. However, the jury found that the plaintiff's bottle design qualified as a famous mark under federal antidilution law, id. at 645, and that the defendant's design diluted by blurring the distinctiveness of the plaintiff's design. Id. at 645-46. As to the issue of fame, the Second Circuit explained in its order: Here, the jury was presented with evidence that: (1) Diageo had marketed Bulleit in the Bulleit Packaging Design since 1999; (2) between 2011 and 2016, Diageo spent $56 million on advertising and promotion for Bulleit, which featured the Bulleit Packaging Design, including almost $20 million in 2016; (3) between 2005 and November 2016, the Bulleit Packaging Design was featured in at least sixteen television show episodes and four movies; (4) beginning in 2012, the Bulleit Packaging Design was featured in the magazines GQ and Esquire, among others; (5) from 2014 to November 2016, Diageo made over $100 million in sales of Bulleit each year, and surpassed $220 million in sales of Bulleit in the fiscal year that the Redemption Packaging Design was released; (6) some market research showed that Bulleit was mentioned in the same category as Jack Daniels and Jim Beam, and one of Diageo's witnesses stated that Jack Daniels was "the most famous"; and (7) the Bulleit Packaging Design was registered with the Patent and Trademark Office in 2006. Although not an exhaustive list of the evidence presented to the jury, the above evidence alone refutes any suggestion that there was a complete absence of evidence supporting the verdict such that the jury's findings could only have been the result of conjecture. As such, we reject Deutsch's challenge to the jury's verdict regarding the federal dilution claim. Diageo North America, Inc., 2024 WL 2712636, at *2. Recall that to qualify as a famous mark for purposes of federal antidilution protection, the mark must be "widely recognized by the general consuming public of the United States as a designation of source." Lanham Act § 43(c)(2)(a), 15 U.S.C. § 1125(c)(2)(a). The following opinion, Nike, Inc. v. Nikepal Intern., Inc., 84 U.S.P.Q.2d 1820 (E.D. Cal. 2007), was one of the first opinions thoroughly to analyze a claim of dilution by blurring under the new § 43(c) established by the TDRA. In reading Nikepal, consider the following questions; • What is the nature of the harm to the NIKE mark? Is it reasonable to argue that Nikepal's use of the NIKEPAL mark could harm in any significant way a mark as strong as NIKE? • Does the survey method described in the opinion strike you as valid? • Though the opinion never addresses the likelihood of consumer confusion as to source, do you think some consumers might be confused as to source by the NIKEPAL mark? Could Nike have prevailed on a simple likelihood of confusion claim? Nike, Inc. v. Nikepal Intern., Inc. 84 U.S.P.Q.2d 1820 (E.D. Cal. 2007) GARLAND E. BURRELL, JR., United States District Judge. [1] The following findings of fact and conclusions of law issue as a result of a bench trial conducted in this trademark action. Plaintiff Nike, Inc. ("Nike"), a company headquartered in Beaverton, Oregon which uses the mark NIKE, contests the use of the mark NIKEPAL by Defendant Nikepal International, Inc. ("Nikepal"), a company located in Sacramento, California. Nike initially contested Nikepal's registration of the NIKEPAL mark at the Trademark Trial and Appeal Board ("TTAB") of the United States Patent and Trademark Office ("PTO"); however, the TTAB denied Nike's opposition to Nikepal's registration of the NIKEPAL mark. Nike subsequently appealed the TTAB's ruling to this court under 15 U.S.C. § 1071 and brought additional claims for federal and state trademark dilution under 15 U.S.C. § 1125(c) and California Business and Professions Code section 14330; for trademark infringement under 15 U.S.C. § 1114; and for unfair competition under 15 U.S.C. § 1125(a).foot_1 [2] Nike seeks an injunction preventing Nikepal from using the term "Nike" (or any term confusingly similar thereto) alone or as part of any trademark, domain name or business name under which Nikepal offers goods or services in commerce. Nike also seeks a reversal of the TTAB's ruling allowing Nikepal to register the NIKEPAL mark. Nikepal seeks an affirmation of the TTAB's April 21, 2005 order. (TTAB's April 21, 2005 Order ("TTAB Decision").) A. Nike [3] Nike was incorporated in 1968 under the original company name Blue Ribbon Sports. In 1971, it adopted the NIKE mark to brand its footwear products and in May 1978, the company's name was officially changed to "Nike, Inc." Today, Nike is the largest seller of athletic footwear and apparel in the world. Nike sells around 180 million pairs of shoes annually in the United States alone. Nike's principal business activity is the design, development, and worldwide marketing and distribution of high quality and technologically advanced footwear, apparel, equipment, and accessories. Nike has continuously used the NIKE mark on and in connection with the various products offered by the company since the 1970s. Sometimes, the word mark NIKE is the only brand used; sometimes, Nike's Swoosh design mark (i.e. the logo which frequently appears on products along with NIKE, and in some instances alone) is also placed on the product. [4] Nikepal was incorporated on May 18, 1998 by the company's founder and president, Palminder Sandhu ("Mr. Sandhu"), who then began using the NIKEPAL mark in commerce. Nikepal provides services and products to analytical, environmental, and scientific laboratories. Nikepal's trademark application to the PTO requested registration for: "import and export agencies and wholesale distributorships featuring scientific, chemical, pharmaceutical, biotechnology testing instruments and glassware for laboratory use, electrical instruments, paper products and household products and cooking appliances." (Application Serial No. 76123346, filed September 6, 2000) Nikepal distributes glass syringes in varying volumes and other laboratory products to testing and power companies and also distributes paper boxes (syringe carrying cases) and nylon valves and caps for use with the syringes. Nikepal only distributes its products to laboratories, not to individuals. [5] Nikepal does not have a retail office, but operates its business through its website (located at www.nikepal.com), via email, and via telephone. Nikepal is run by Mr. Sandhu, who also works as a transportation engineer. Currently, Nikepal has one other part-time employee. Nikepal has only a few hundred customers, but it has a list of thousands of prospective customers, some of whom receive materials from Nikepal advertising its product and service offerings under the mark NIKEPAL. A. NIKE [6] Nike first registered the NIKE mark with the PTO in February 1974. Nike owns ten federal trademark registrations for the NIKE mark alone, covering footwear, clothing, bags, timepieces, paper products such as notebooks and binders, sport balls, swim accessories, and retail store services, all of which related to pre-May 1998 uses of the mark. By May 1998, Nike was also using and applied for trademark registrations covering the use of the NIKE mark in combination with other terms or designs for footwear, clothing, bags, timepieces, posters, sport balls, swim accessories, weights, gloves, headgear, and retail store services. For example, Nike owns nineteen federal registrations for NIKE composite marks such as: NIKE and the Swoosh design which has been in use since 1971; NIKE AIR which has been in use since 1987; NIKE-FIT which has been in use since 1990; NIKE TOWN which has been in use since 1990; NIKE SHOP which has been in use since 1991; and NIKE GOLF which has been in use since 1993. From 1998 to the present, Nike has continued to use the mark NIKE alone and in combination with other terms or designs. [7] Mr. Sandhu testified that he conceived of the term Nikepal when he wanted to create a vanity license plate for his car. He testified that he selected the word "Nike" by opening a dictionary to a random page and choosing the first word he saw, and then combined it with the first three letters of his first name "Pal." "Pal" means friend or benefactor. Mr. Sandhu admits he knew of the existence of the company Nike and its use of the NIKE mark at the time he devised the term NIKEPAL. Despite Mr. Sandhu's trial testimony concerning the manner in which he conceived of the term NIKEPAL, the court does not find it to be credible. [7] The "Nike" portion of the NIKEPAL mark is pronounced the same way as the NIKE mark is pronounced: with a hard "i" (like bike) in the first syllable and a hard "e" (like in "key") in the second syllable. 3 The articles of incorporation signed by Mr. Sandhu for Nikepal in 1998 3 Nikepal's attorney attempted to convince the court that there is a pronunciation difference between NIKE and NIKEPAL. In her questions during trial, for example, she pronounced Nikepal's mark as "nik-a-pal." However, in answering her questions at trial, Mr. Sandhu, the president of Nikepal, alternated between the pronunciation of NIKEPAL as "nik-a-pal" and as "Ny-key-pal." Further, Nike's witness, Joseph Sheehan, a former FBI agent and now a private investigator, provided a tape recording of the outgoing message heard on Nikepal's answering machine which clearly pronounced the term "Nike" with long, or hard, vowels, that is an "i" like in "bike" and "e" like in "key" identical to the pronunciation of the Nike's trademark. display the company name as "NikePal International, Inc.," with the first word of the company name spelled "NikePal," with a capital "N" and a capital "P."foot_2 [8] In addition to using Nikepal as the company name, NIKEPAL appears directly on some of Nikepal's products, including on its syringe products, and on its marketing materials. Nikepal also places www.nikepal.com on its syringes to identify the source of the syringe. Nikepal also uses the NIKEPAL mark in a vanity phone number (1-877-N-I-K-E-P-A-L), on its website, and in its domain names, including nikepal.com, nikepal.biz, nikepal.us, nikepal.tv, nikepal.info, and nikepal.net. [9] By the late 1980s, United States sales of NIKE branded products were over one billion dollars per year. Starting in 1991 and through the mid 1990s, sales of NIKE products in the United States were approximately two billion dollars per year, and were above five billion dollars per year by 1997. By 1997, Nike was the largest seller of athletic footwear and apparel in the world. The geographic area of Nike's sales includes the United States and 140 countries throughout the world. Since 1997, Nike has sold over 100,000,000 pairs of NIKE shoes each year. [10] Nike has undertaken significant expense to promote the NIKE mark. Nike advertises in various types of media, including traditional print advertising, such as magazines (of both special and general interest), newspapers (of general circulation), leaflets, and billboards. Nike also advertises in electronic media, including radio, television, cable and internet, on sides of buildings, on taxi cabs, and through direct mailings. Nike's television advertisements have run on network channels and have reached national audiences. Nike has also promoted its mark by associating with athletes through endorsement arrangements. By 1991, Nike was spending in excess of one hundred million dollars per year in the United States alone to advertise products bearing the NIKE mark. By 1997, Nike had spent at least $1,567,900,000.00 to promote the NIKE mark in the United States. [11] The NIKE mark has been consistently ranked as a top brand in publications that survey the top brands each year. Since at least 1990, Nike has been named one of the top forty brands in the United States based on the EquiTrend and other studies published in BrandWeek and Financial World Magazine. Other brands ranked in such studies include FRITO LAY, LEVI'S, CAMPBELLS', HEWLETT-PACKARD, SONY, PEPSI, and VISA. One story printed in Forbes magazine, reported a survey conducted by Young & Rubicam that ranked the NIKE brand among the top ten in the United States in 1996 with COKE, DISNEY, and HALLMARK. [12] A survey conducted by Phillip Johnson of Leo J. Shapiro and Associates ("Mr. Johnson's survey"), a Chicago-based market research firm, determined that a significant number of Nikepal's potential laboratory customers actually associated NIKE with NIKEPAL. Mr. Johnson is an expert at designing surveys that measure consumer behavior. The primary business of Shapiro and Associates is to explore consumer behavior through the use of surveys for businesses such as Toys-R-Us, Target, and Petsmart in order to help them better understand their marketplace when developing new retail concepts. Nike retained Mr. Johnson to design a survey to measure, inter alia, the likelihood of dilution of the NIKE brand as a result of Nikepal's use of the NIKEPAL mark. [13] In designing his study, Mr. Johnson used a universe of survey participants randomly selected from lists of companies that Mr. Sandhu's deposition testimony identified as the sources for Nikepal's current and prospective customers. Mr. Johnson conducted the survey by phone and asked respondents about their perception of a website called nikepal.com. In designing his survey, Mr. Johnson chose one of the ways that the NIKEPAL mark is used in commerce which allowed him to reasonably recreate a purchasing context while obtaining a controlled and accurate measurement. Mr. Johnson testified that this survey replicated the circumstances in which people typically encountered the NIKEPAL mark. [14] Once survey respondents were screened to confirm that they were the persons most responsible for ordering laboratory equipment at their business, they were asked: "What if anything, came to your mind when I first said the word Nikepal?" Many survey respondents who were not actually confused about the source of the Nikepal website nonetheless identified Nike. Mr. Johnson testified that his survey revealed that the vast majority of respondents, 87%, associated Nikepal with Nike; that is, when they encounter the mark NIKEPAL, they think of Nike and/or its offerings. [15] Evidence of actual association of the NIKEPAL mark with the NIKE mark also exists beyond the results demonstrated in Mr. Johnson's survey. Mr. Sandhu registered the domain names nikepal.biz, nikepal.us, nikepal.tv, nikepal.net, and nikepal.info with Network Solution, and until just prior to trial, those websites were inactive. Mr. Sandhu testified that at the time he registered those domains he chose not to link them to an active website. As a result, Network Solutions assigned those domains an "under construction" page and then associated with that page promotions and advertisement links to product and service offerings of its choice. These promotions and advertisements all referred to NIKE products or those of one of its competitors. Thus, when accessing Nikepal's NIKEPAL domain names (other than nikepal.com), users received information about Nike or its competitors, but not Nikepal. [16] Under the Federal Trademark Dilution Revision Act, 6 . . . 15 U.S.C. § 1125(c)(1) ("TDRA"){, t}o prevail on its dilution claim, Nike must prove 1) that its mark was famous as of a date prior to the first use of the NIKEPAL mark and 2) that Nikepal's use of its allegedly diluting mark creates a likelihood of dilution by blurring or tarnishment. 7 A. Whether NIKE Was Famous Prior to the First Use of NIKEPAL [17] . . . Since Nikepal's first use of NIKEPAL commenced in May 1998, Nike must show that NIKE was famous before that date. {The court applied the four factors listed in Lanham Act § 43(c)(2)(A), 15 U.S.C. 1125(c)(2)(A), to find that the NIKE mark was famous before May 1998}. [18] The TDRA defines dilution by blurring as an "association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following: (i) The degree of similarity between the mark or trade name and the famous mark. (ii) The degree of inherent or acquired distinctiveness of the famous mark. (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark. 6 The TDRA, signed into law on October 6, 2006, amended the previous federal anti-dilution statute (the Federal Trademark Dilution Act ("FTDA")). The TDRA revises the FTDA in three ways: it establishes that likelihood of dilution, and not actual dilution, is a prerequisite to establish a dilution claim; it sets forth four relevant factors courts may consider in determining famousness; and it also lists six relevant factors that courts may consider in determining whether a likelihood of dilution exists. Century 21 Real Estate LLC v. Century Surety Co., 2007 WL 433579, at *1 (D.Ariz. Feb.6, 2007). 7 California's anti-dilution statute, under which Nike also brings a claim, prescribes: Likelihood of injury to business reputation or a dilution of the distinctive quality of a mark registered under this chapter, or a mark valid at common law, or a trade name valid at common law, shall be a ground for injunctive relief notwithstanding the absence of competition between parties or the absence of confusion as to the source of goods or services. Cal. Bus. & Prof.Code § 14330. If Nike prevails on its federal dilution claim, it will also prevail on its dilution claim under California law. See Jada Toys, Inc. v. Mattel, Inc., 496 F.3d 974 (9th Cir. Aug. (iv) The degree of recognition of the famous mark. (v) Whether the user of the mark or trade name intended to create an association with the famous mark. (vi) Any actual association between the mark or trade name and the famous mark. [19] Marks in a dilution analysis must be "identical" or "nearly identical." 8 Thane Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 906 (9th Cir. 2002). "For marks to be nearly identical to one another, they 'must be similar enough that a significant segment of the target group of customers sees the two marks as essentially the same.'" Playboy Enters., Inc. v. Welles, 279 F.3d 796, 806 n. 41 (9th Cir. 2002) (internal citation omitted). [20] The parties' marks are nearly identical. The NIKEPAL mark is a composite of the word "Nike" with the term of affinity, "pal." The composite nature of the NIKEPAL mark is evident in the logo selected by the company which clearly features an "N" and a "P." In each case the dominant feature of the mark is the term "Nike." In addition, the term "Nike" in both marks is pronounced identically with an "i" like in "bike" and an "e" like in "key." See Porsche Cars N. Am., Inc., 2000 WL 641209, at *3, (finding that the trademark PORSCHE was diluted by PORCHESOURCE.COM); see also Jada Toys, Inc., 496 F.3d 974, 2007 WL 2199286, at *4 (concluding "that a reasonable trier of fact could find that the HOT WHEELS and HOT RIGZ marks are nearly identical."). [21] Further, as shown by Mr. Johnson's survey, the vast majority of the survey respondents, representing a significant segment of Nikepal's target customer group, associate Nike and/or its products and services when they encounter the mark NIKEPAL, thus perceiving the two marks as essentially the same. See Thane Int'l, Inc., 305 F.3d at 906 ("The marks must be of sufficient similarity so that, in the mind of the consumer, the junior mark will conjure an association with the senior.") (citing Nabisco, Inc. v. PF Brands, 191 F.3d 208 (2d Cir. 1999)). Accordingly, this factor favors Nike. [22] Nikepal does not dispute that NIKE is, at the very least, suggestive. (See Nikepal's Proposed Findings and Recommendations at 42 ("[Nike's] mark is suggestive when used in 8 Nike argues that the TDRA does not require that the marks be identical or nearly identical. However, the enactment of the TDRA did "not eliminate the requirement that the mark used by the alleged diluter be 'identical,' or 'nearly identical,' or 'substantially similar,' to the protected mark." Century 21 Real Estate LLC, 2007 WL 433579, at *2 (citing House Report on Trademark Dilution Act of 2005 at 8, 25). {Note that the Ninth Circuit subsequently explicitly rejected this "identical or nearly identical" standard. See the casebook note following the opinion.} connection with Plaintiff's products.").) Accordingly, NIKE is inherently distinctive and this factor favors Nike. (iii) Substantially Exclusive Use [23] The law does not require that use of the famous mark be absolutely exclusive, but merely "substantially exclusive." See L.D.Kichler Co. v. Davoil Inc., 192 F.3d 1349, 1352(Fed. Cir. 1999) (holding that in the trademark context, "substantially exclusive" use does not mean totally exclusive use). Therefore, a limited amount of third party use is insufficient to defeat a showing of substantially exclusive use. See Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 878 (9th Cir. 1999) (finding that use of the mark was not substantially exclusive when the words "Avery" and "Dennison" were "commonly used as trademarks, both on and off of the Internet, by parties other than Avery Dennison." (emphasis added)). [24] Nike asserts that its use of the NIKE mark is substantially exclusive. Nikepal introduced evidence of use of the term "Nike" in the company name "Nike Hydraulics, Inc.," through a bottle jack purchased from the company and a 1958 trademark registration for "Nike" owned by Nike Hydraulics. However, this evidence is insufficient to disprove Nike's claim that its use of NIKE is substantially exclusive. Even Nikepal's witness, Roger Smith, admitted that he had not encountered Nike Hydraulics before hearing that name in connection with this action. Accordingly, the court finds that Nike's use of the NIKE mark is substantially exclusive and this factor therefore favors Nike. 10 [25] The degree of recognition of NIKE is quite strong. Millions of NIKE products are sold in the United States annually and the evidence demonstrates that NIKE is readily recognized. This factor therefore favors Nike. [26] Mr. Sandhu admitted that he was aware of the existence of the NIKE mark before he adopted the company name. Although he testified at trial that he came up with the term Nikepal by opening the dictionary to a random page and essentially finding that word by "fate," his testimony was not credible. Therefore, this factor favors Nike. (vi) Actual Association [27] Nikepal registered the domain names nikepal.biz, nikepal.net, nikepal.us, nikepal.info and nikepal.tv. The evidence shows that the domain registrar assigned the domain names an "under construction" page and then associated with that page promotions and advertisement links to a number of web pages that offered NIKE products (or products 10 Nikepal also introduced evidence that the term "Nike" appears in dictionaries referring to the Greek goddess of victory, that the image of Nike the goddess appeared on some Olympic medals, and that the United States Government named one of its missile programs "Nike." However, Nikepal did not show that these uses were made in commerce in association with the sale or marketing of goods or services as required under the TDRA. (See 15 U.S.C. § 1125(c) (1) (providing that under the TDRA, only "use of a mark or trade name in commerce" is actionable as diluting a famous mark.).) of Nike's competitors in the shoe and apparel field). Thus, in the internet context, there is actual association between NIKEPAL and NIKE. [28] Further, Mr. Johnson's survey also evinced that there is a strong degree of association between NIKEPAL and NIKE. Mr. Johnson's survey showed over 87% of the people in Nikepal's own customer pool associated the stimulus "Nikepal" with NIKE. The survey presents ample proof of association between the marks to support a finding that such exists in the general public. Accordingly, the court finds that there is actual association between the NIKEPAL and NIKE marks and this factor favors Nike. [29] In conclusion, since the six factors considered in the likelihood of dilution analysis favor Nike, there is a likelihood that NIKE will suffer dilution if Nikepal is allowed to continue its use of NIKEPAL. Accordingly, Nike prevails on its federal and state dilution claims. . . . . CONCLUSION [30] For the reasons stated, Nike prevails on its federal and state dilution claims, the decision of the TTAB is reversed, and the opposition to Nikepal's registration of the NIKEPAL mark is sustained. Further, Nikepal is permanently enjoined from using NIKEPAL in connection with the offering of goods or services in commerce, including its use in domain names, on web pages, in printed matter, and on products, and shall cease any such uses of NIKEPAL within sixty days of the date on which this order is filed. Nikepal may continue to use its numeric telephone number, but may not advertise or associate it with the designation "1-877-NIKEPAL." In reading the following opinion, consider how the Wolfe's Borough analysis of the blurring issue differs from the analysis undertaken by the Nikepal court. Does the Wolfe's Borough court simply assume, as does the Nikepal court, that association necessarily impairs the distinctiveness of the plaintiff's mark, or does the Wolfe's Borough court require an additional showing of impairment? LOHIER, Circuit Judge: [1] Starbucks Corporation and Starbucks U.S. Brands LLC (together, "Starbucks") appeal from a judgment of the United States District Court for the Southern District of New York (Swain, J.) denying Starbucks' request for an injunction pursuant to the Federal Trademark Dilution Act of 1995 ("FTDA"), 15 U.S.C. § 1125(c), prohibiting Wolfe's Borough Coffee, Inc., doing business as Black Bear Micro Roastery ("Black Bear"), from using Black Bear's "Mister Charbucks," "Mr. Charbucks," and "Charbucks Blend" marks (the "Charbucks Marks"). After a bench trial followed by additional briefing from the parties upon remand from this Court, the District Court concluded that Starbucks failed to prove that the Charbucks Marks are likely to dilute Starbucks' famous "Starbucks" marks (the "Starbucks Marks") and denied Starbucks' request for an injunction. [2] On appeal, Starbucks argues that the District Court erred in finding only minimal similarity and weak evidence of actual association between the Charbucks Marks and the Starbucks Marks. Starbucks also contends that the District Court erred in balancing the statutory dilution factors by giving no weight at all to three of the factors-the strong distinctiveness, exclusive use, and high degree of recognition of the Starbucks Marks-and placing undue weight on the minimal similarity between the marks. [3] For the following reasons, we conclude that the District Court did not err in its factual findings, and, balancing the statutory factors de novo, we agree with the District Court that Starbucks failed to prove a likelihood of dilution. We therefore affirm. [4] We assume familiarity with the underlying facts and long procedural history of the case, which are set forth in our previous opinions, Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 477 F.3d 765 (2d Cir. 2007) ("Starbucks II "), and Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009) ("Starbucks IV "). We recount them here only as necessary to explain our disposition of this appeal. [5] As of 2005, when the bench trial occurred, Starbucks had grown from a single coffee shop in Seattle in 1971 to a singularly prominent global purveyor of specialty coffee and coffee products, with 8,700 retail locations worldwide and revenues of $5.3 billion for fiscal year 2004. Starbucks U.S. Brands is the owner, and Starbucks Corporation a licensee, of at least 56 valid United States trademark registrations that include the Starbucks Marks. The Starbucks Marks are displayed on signs and at multiple locations in each Starbucks store, as well as on the Starbucks website. [6] Starbucks has devoted substantial time, effort, and money to advertising and promoting the Starbucks Marks. From fiscal year 2000 to 2003, Starbucks spent over $136 million on advertising, promotion, and related marketing activities, essentially all of which featured the Starbucks Marks. Starbucks actively polices the Starbucks Marks, demanding that infringing uses be terminated and, where necessary, commencing litigation. Well before Black Bear used the term "Charbucks" as part of any product name, the Starbucks Marks were "famous" within the meaning of the FTDA. See 15 U.S.C. § 1125(c)(2)(A). [7] Black Bear manufactures and sells roasted coffee beans and related goods via mail and internet order, at a limited number of New England supermarkets, and at a single New Hampshire retail outlet. In 1997 Black Bear developed a coffee blend named "Charbucks Blend"; it now sells a dark-roast coffee called "Mister Charbucks" or "Mr. Charbucks." When Black Bear began manufacturing coffee using the Charbucks Marks, it was aware of the Starbucks Marks. One of the reasons Black Bear used the term "Charbucks" was the public perception that Starbucks roasted its beans unusually darkly. Soon after Black Bear began to sell Charbucks Blend, Starbucks demanded that it cease using the Charbucks Marks. Black Bear nevertheless continued to sell coffee under the Charbucks Marks, and in 2001 Starbucks started this action claiming, among other things, trademark dilution in violation of 15 U.S.C. § § 1125(c), 1127. 3[8] The District Court held a two-day bench trial in March 2005. At trial, two matters of significance to this appeal occurred. First, Black Bear's founder, James O. Clark III, testified that the name "Charbucks" had previously been used during "the coffee wars in Boston between Starbucks and the Coffee Connection," a Boston-based company. Second, Starbucks introduced the testimony of Warren J. Mitofsky, a scientist in the field of consumer research and polling. Mitofsky explained the results of a telephone survey he had conducted of six hundred participants, designed to be representative of the United States population. The survey found that when asked, "What is the first thing that comes to your mind when you hear the name 'Charbucks,' spelled C-H-A-R-B-U-C-K-S?," 30.5 percent of participants answered "Starbucks," while 9 percent answered "coffee." 5 When the participants were asked, "Can you name any company or store that you think might offer a product called 'Charbucks'?," 3.1 percent responded "Starbucks," and another 1.3 percent responded "coffee house." 6 Mitofsky concluded that "[t]he number one association of the name 'Charbucks' in the minds of consumers is with the brand 'Starbucks.'" Commenting on the scope of his survey, Mitofsky also stated: "[I]f you want to know the reaction to the name Charbucks, then the telephone is perfectly adequate. If you want to measure the reaction or the familiarity with other visual cues, then it's not the right method." Starbucks IV, 588 F.3d at 104. ). The District Court determined that there was neither actual dilution, which would establish a violation of federal trademark law, 7 nor a likelihood of dilution, which would establish a violation of New York trademark law. [10] Starbucks appealed. While the appeal was pending, Congress passed the Trademark Dilution Revision Act of 2006 ("TDRA"), which amended the FTDA to clarify that the owner of a famous mark seeking an injunction need prove only that the defendant's mark "is likely to cause dilution . . . of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury." 15 U.S.C. § 1125(c) (1). The TDRA further redefined "dilution by blurring" as "association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark." Id. § 1125(c)(2)(B). . . . In light of this change in the governing law, we vacated the judgment of the District Court and remanded for further proceedings. Starbucks II, 477 F.3d at 766. (3) the intent factor weighed in Black Bear's favor because Black Bear's intent to create an association with the Starbucks Marks did not constitute bad faith; and (4) evidence from Mitofsky's survey was "insufficient to make the actual confusion factor weigh in [Starbucks'] favor to any significant degree." Id. at 477-78 (quotation marks omitted). Balancing all six factors, the District Court held that the record was "insufficient to demonstrate the requisite likelihood that the association arising from the similarity of the core terms is likely to impair the distinctiveness of Starbucks' mark, and Plaintiff is not entitled to injunctive relief under that statute." Id. at 478. [12] Starbucks appealed again, arguing that the District Court erred in finding that the Charbucks Marks are not likely to dilute the Starbucks Marks. In Starbucks IV, we examined the District Court's findings as to the first, fifth, and sixth factors, as well as its balancing of the statutory factors that bear on the likelihood of dilution by blurring. We held that "the District Court did not clearly err in finding that the Charbucks Marks were minimally similar to the Starbucks Marks," 588 F.3d at 106, because the context of the Charbucks Marks (on Black Bear's packaging, on its website, and in the phrases "Charbucks Blend" and "Mister Charbucks") differentiated them from the famous marks. We concluded, however, that "the District Court erred to the extent it required 'substantial' similarity between the marks," id. at 107, and we suggested that the District Court had overemphasized the similarity factor. In particular, we stated that the inclusion of "the degree of similarity" as only one of six factors in the revised statute indicates that even a low degree of similarity would not categorically bar a dilution-by-blurring claim. Id. at 108. [13] Turning to the fifth and sixth factors-intent to associate and actual associationwe held that the District Court had erred by requiring "bad faith" to find that the intent to associate factor favored Starbucks. Id. at 109 (quotation marks omitted). Noting the survey results, which demonstrated some degree of association between "Charbucks" and "Starbucks," we also held that the District Court erred by relying on evidence supporting the absence of "actual confusion " to conclude that the actual association factor did not weigh in Starbucks' favor "to any significant degree." Id. (quotation marks omitted). The absence of actual or likely confusion, we reasoned, does not bear directly on whether dilution is likely. Id. [14] Emphasizing that the analysis of a dilution by blurring claim must ultimately focus on "whether an association, arising from the similarity between the subject marks, 'impairs the distinctiveness of the famous mark,'" id. (quoting 15 U.S.C. § 1125(c)(2)(B)), we vacated the judgment of the District Court and remanded for reconsideration of the claim in light of our discussions of the first, fifth, and sixth statutory factors, id. at 109-10. [15] In its opinion and order following that remand, see Starbucks Corp. v. Wolfe's Borough Coffee, Inc., No. 01 Civ. 5981, 2011 WL 6747431 (S.D.N.Y. Dec. 23, 2011) ("Starbucks V "), the District Court recognized that the second through fifth statutory factors 8 favored Starbucks. Id. at *3 (citing Starbucks IV, 588 F.3d at 106-10). But the court again found that the first factor (the similarity of the marks) favored Black Bear because the marks were only minimally similar when presented in commerce-that is, when the Charbucks Marks are viewed on the packaging, which includes the phrases "Charbucks Blend" or "Mister Charbucks." Id. [16] As for the sixth factor (actual association), the District Court acknowledged that the results of the Mitofsky survey "constitute evidence of actual association," id. at *4, but it then significantly discounted those results on the ground that the survey inquired into associations only with the isolated word "Charbucks" and failed to present the Charbucks Marks in full context, id. The court also compared the survey results in this case with those in other cases. Here, it noted, only 30.5 percent of respondents associated "Charbucks" with "Starbucks," while in other trade dilution cases 70 percent to 90 percent of survey respondents associated the relevant marks. Id. The District Court also compared the 3.1 percent of respondents who thought a product called "Charbucks" would be made by Starbucks to the 28 percent of respondents who made a similar origin association in a Ninth Circuit trademark dilution case. Id. (citing Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 636 (9th Cir. 2008)). With the benefit of these comparisons, the District Court found that the actual association factor weighs "no more than minimally" in Starbucks' favor. Id. [17] In evaluating the likelihood of dilution, the District Court emphasized the "association" and "similarity" factors. Citing the TDRA's definition of dilution by blurring as "association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark," the District Court explained that "[t]he statutory language leaves no doubt" that these two factors are "obviously important." Id. at *5 (quoting 15 U.S.C. § 1125(c)(2)(B)). 1 After balancing all six factors, the District Court held that Starbucks had failed to meet its burden of showing that it was entitled to injunctive relief: [T]he Charbucks marks are only weakly associated with the minimally similar Starbucks marks and, thus, are not likely to impair the distinctiveness of the famous Starbucks marks. In other words, [Starbucks] has failed to carry its burden of proving that [Black Bear's] use of its marks, as evidenced on the record before the Court, is likely to cause dilution by blurring. [18] On appeal, Starbucks challenges both the factual findings of minimal similarity and weak association and the conclusion that it failed to demonstrate a likelihood of dilution. [19] After a bench trial on a claim for trademark dilution by blurring, where the district court evaluates and balances the factors listed in the TDRA, we review the court's determinations as to each factor for clear error and its balancing of those factors de novo. See Tiffany, 600 F.3d at 101; Starbucks IV, 588 F.3d at 105. 10 . . . . 10 We employ the same standard here that we use in the context of trademark infringement, where a district court evaluates and then balances the eight factors set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961), to determine whether there is a likelihood of confusion. See, e.g., Star Indus. v. Bacardi & Co., 412 F.3d 373, 384 (2d Cir. 2005). The statutory factors enumerated in § 1125(c)(2)(B) are similar in kind to the Polaroid factors. For example, both lists include the "similarity between" the two marks; "strength" of the mark in Polaroid is akin to "distinctiveness" in § 1125; and "actual confusion" in Polaroid mirrors "actual association" in § 1125. See Polaroid, 287 F.2d at 495. . . . . [20] We previously have declined to treat the factors pertinent to a trademark dilution analysis as an inflexible, mechanical test, suggesting instead that the importance of each factor will vary with the facts. Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 227-28 (2d Cir. 1999), abrogated on other grounds by Moseley, 537 U.S. at 433, 123 S.Ct. 1115. Accordingly, we need not consider all six statutory factors listed in 15 U.S.C. § 1125(c)(2)(B)(i)-(vi) if some are irrelevant to the ultimate question; nor are we limited to those six factors. . . . Instead, we employ a "cautious and gradual approach," which favors the development of a nonexclusive list of trademark dilution factors over time. Nabisco, 191 F.3d at 217. [21] On appeal, Starbucks challenges two of the District Court's findings: (1) that there is only a minimal degree of similarity between the Starbucks Marks and the Charbucks Marks; and (2) that Starbucks demonstrated only a weak association between the marks. The District Court did not clearly err with regard to either finding. [22] In Starbucks IV we held that "[w]ith respect to the first factor-the degree of similarity between the marks-the District Court did not clearly err in finding that the Charbucks Marks were minimally similar to the Starbucks Marks." 588 F.3d at 106. We highlighted the difference between the Starbucks Marks and Charbucks Marks when the latter are placed in the context of Black Bear's packaging and the word "Charbucks" is incorporated into the phrases "Charbucks Blend" and "Mister Charbucks." Id. . . . Starbucks advances no compelling reason for us to revisit our ruling on the issue of similarity. . . . [23] Starbucks next contends that the District Court's finding that actual association "weighs no more than minimally" in Starbucks' favor, Starbucks V, 2011 WL 6747431, at *4, was error for two reasons. First, Starbucks argues, Black Bear's admitted intent to create an association-the fifth statutory factor-raises a "presumption of association," or at least is strong evidence of actual association-the sixth statutory factor. Second, it argues that the District Court improperly discounted the Mitofsky survey evidence, which, in Starbucks' view, proves a high degree of actual association. We reject both arguments. [24] As an initial matter, an intent to create an association is a separate factor under the TDRA and does not constitute per se evidence that the actual association factor weighs in favor of the owner of the famous mark. In support of its argument to the contrary, Starbucks quotes McCarthy's treatise, which states, "If the junior [user] intended to create an association, the law may assume that it succeeded." McCarthy § 24:119. Starbucks similarly relies on Federal Express Corp. v. Federal Espresso, Inc., 201 F.3d 168 (2d Cir. 2000), a dilution case in which we stated that the trier of fact "may well find that the marks are of sufficient similarity so that, in the mind of the consumer, the junior mark will conjure an association with the senior, especially in light of the testimony of [Federal Espresso's founder] that she chose the name Federal Espresso, in part, precisely because it would call to mind Federal Express." Id. at 177 (quotation marks omitted). [25] Both Federal Espresso and McCarthy's treatise acknowledge the importance of the intent factor in determining likelihood of dilution. This makes sense, as district courts must evaluate whether a junior mark is "likely to cause" "association arising from the similarity" between the marks "that impairs the distinctiveness of the famous mark," 15 U.S.C. § § 1125(c)(1), (c)(2)(B), and the intent to associate may bear directly on the likelihood that the junior mark will cause such an association. [26] That said, "we interpret statutes to give effect, if possible, to every clause and word and to avoid statutory interpretations that render provisions superfluous." United States v. Al Kassar, 660 F.3d 108, 124-25 (2d Cir. 2011) (quotation marks omitted). Adopting Starbucks' presumption argument would effectively merge the intent to associate and the actual association factors, by making the former determinative of the latter, rather than treating them as distinct but related considerations. We therefore conclude that the District Court did not clearly err in finding that Clark's testimony concerning the origin of the Charbucks Marks was not an "admission" of actual association and that his intentions were not definitive proof of an actual association between the marks. [27] Nor did the District Court err when it discounted the Mitofsky survey evidence because the survey measured only how respondents reacted to the isolated word "Charbucks," rather than to the Charbucks Marks in context, and because the share of respondents who indicated an association between the marks was "relatively small." Starbucks V, 2011 WL 6747431, at *4. We arrive at this conclusion for two reasons. [28] First, it coheres with our decision in Starbucks IV, in which we discerned no clear error in the District Court's consideration of context-including the addition of "Mister" or "Blend" to "Charbucks" and Black Bear's packaging-in assessing the marks' similarity, as consumers are likely to experience the product only in the context of those full phrases and Black Bear's packaging or website. Starbucks IV, 588 F.3d at 106. In our analysis of Starbucks' infringement claim, we similarly determined that the District Court did not clearly err when it found (1) that the survey failed to demonstrate significant actual confusion, "[p]articularly in light of the fact that the survey was administered by telephone and did not present the term 'Charbucks' in the context in which Black Bear used it," id. at 117, and (2) that the survey should have examined the effects of "a hypothetical coffee named either 'Mister Charbucks' or 'Charbucks Blend'" on the respondents' impressions of Starbucks coffee as a measure of dilution by tarnishment, id. at 110. [29] Second, our conclusion also comports with our prior precedents and other cases unrelated to Starbucks. In Playtex Products, Inc. v. Georgia-Pacific Corp., 390 F.3d 158 (2d Cir. 2004), a case interpreting the pre-revision FTDA, we held that the results of a consumer survey showing an association between the marks "Moist-Ones" and "Wet Ones" were inadmissible as evidence of actual dilution because the defendant's product was "presented and packaged" as "Quilted Northern Moist-Ones." Id. at 168 (emphasis added). . . . In the dilution context, the language of the FTDA, which requires a plaintiff to show the defendant's "use of a mark . . . in commerce that is likely to cause dilution by blurring . . . ," 15 U.S.C. § 1125(c)(1) (emphasis added), clarifies that the way the defendant's mark is used in commerce is central to the dilution inquiry. As in Playtex, the District Court was within its rights to conclude that the Mitofsky survey had limited probative value because the defendant's marks were not presented to survey respondents as they are actually "presented and packaged" in commerce. [30] Citing our decision in Nabisco, Starbucks nevertheless argues that consumers are likely to hear and view the term "Charbucks" outside the context of Black Bear's packaging and without the full phrases "Mister Charbucks" and "Charbucks Blend." Nabisco, 191 F.3d at 218 (rejecting an argument under the pre-revision FTDA that packaging made two marks dissimilar, because many consumers would see the marks outside of the packaging). But Starbucks presented no record evidence that "Charbucks" is ever read or heard in isolation, 13 and in the absence of such evidence, we are not persuaded by the argument. . . . [31] Starbucks also challenges the District Court's finding that the association between "Charbucks" and Starbucks was "relatively small." It contends that the Mitofsky survey in fact provided evidence of substantial actual association. We disagree. [32] It is true that in response to Mitofsky's question most probative of actual association-"What is the FIRST THING that comes to your mind when you hear the name 'Charbucks,' spelled C-H-A-R-B-U-C-K-S?"-30.5 percent of respondents said "Starbucks," and 9 percent said "coffee." Both of these responses suggest an association between "Charbucks" and the Starbucks Marks. In Jada Toys, 518 F.3d at 636, for example, the Ninth Circuit held that a survey demonstrated actual association because it showed that 28 percent of respondents thought Jada's product was made by Mattel when asked who they thought produced the item. Here, however, the equivalent question in Mitofsky's survey was: "Can you name any company or store that you think might offer a product called 'Charbucks'?" 14 In response to that question concerning source on the Mitofsky survey, however, only 3.1 percent of respondents answered "Starbucks" and 1.3 percent answered "coffee house." These percentages are far below that for the equivalent question in Jada Toys and fail to 13 Although the name "Mr. Charbucks" is presented in plain text on at least one page of Black Bear's website, all other record uses of the Charbucks Marks situate them in Black Bear's distinct color scheme, font, and layout. 14 Both that question and the question discussed in Jada Toys test not merely association but also source confusion. Source confusion may be probative of association, because to confuse Charbucks with Starbucks, the word "Charbucks" must call "Starbucks" to mind. See Nabisco, 191 F.3d at 221 ("Confusion lessens distinction."). demonstrate anything more than minimal actual association. 15 See Starbucks V, 2011 WL 6747431, at *4. [33] Ultimately, on this factor, we consider only whether the District Court clearly erred when it found that the Mitofsky survey tilts the "actual association" factor "no more than minimally in [Starbucks'] favor." Id. Had the Mitofsky survey presented the Charbucks Marks as they appear in commerce, we might well conclude that the District Court erred. But the word "Charbucks" was presented outside of its marketplace context, and Starbucks, which bears the burden of proof, see Jada Toys, 518 F.3d at 634, failed to show that this flaw did not materially impact the survey results. We therefore conclude that the record supports the District Court's decision to discount the survey and consider the actual association factor as weighing only minimally in Starbucks' favor. [34] We next balance the factors enumerated in § 1125(c)(2)(B), along with any other factors that bear on a likelihood of dilution, de novo. . . . [35] We have already affirmed the District Court's finding of minimal similarity between the Charbucks Marks and the Starbucks Marks. That finding weighs heavily in Black Bear's favor. Certainly, a plaintiff may show a likelihood of dilution notwithstanding only minimal similarity. But here, minimal similarity strongly suggests a relatively low likelihood of an association diluting the senior mark . . . . {I}n Starbucks IV, we stated that "'similarity' is an integral element in the definition of 'blurring'" under the TDRA and suggested that, without any similarity, there could be no dilution by blurring. 588 F.3d at 108-09. 17 [36] The next three factors-the degrees of distinctiveness, exclusive use, and recognition-are features of the senior mark itself that do not depend on the use of the junior mark . . . . [37] Although the three factors of distinctiveness, recognition, and exclusivity favor Starbucks and bear to some degree on our assessment of the likelihood of dilution by blurring, the more important factors in the context of this case are the similarity of the marks and actual association. We agree with the District Court that the distinctiveness, recognition, and exclusive use of the Starbucks Marks do not overcome the weak evidence of actual association between the Charbucks and Starbucks marks. To the contrary, viewed in light of Starbucks' fame, both globally and among the Mitofsky survey participants more particularly, the fact that more survey participants did not think of "Starbucks" upon hearing "Charbucks" reinforces the District Court's finding that the marks are only minimally similar, and therefore unlikely to prompt an association that impairs the Starbucks Marks. Likewise, although the distinctiveness and exclusive use of the Starbucks Marks help Starbucks prove susceptibility to dilution by association arising from similarity between the Charbucks and Starbucks marks, they do not demonstrate that such an association is likely to arise, as Starbucks needed to show to obtain an injunction. Accordingly, these factors weigh only weakly in Starbucks' favor. [38] In this case, we attribute a moderate amount of significance to the fifth factor, intent to create an association . . . . [39] The final, disputed factor, actual association, is highly relevant to likelihood of association. In the analogous context of determining the "likelihood of confusion" for trademark infringement claims, we have noted that "[t]here can be no more positive or substantial proof of the likelihood of confusion than proof of actual confusion," even though a showing of actual confusion is not necessary to prevail on such a claim. Savin Corp. v. Savin Grp., 391 F.3d 439, 459 (2d Cir. 2004). The same principle obtains with respect to proof of actual association in dilution claims. And as noted, the Mitofsky survey demonstrated weak actual association, at best. [40] Weighing the factors above de novo, we agree with the District Court that Starbucks did not demonstrate a likelihood of dilution by blurring. Ultimately what tips the balance in this case is that Starbucks bore the burden of showing that it was entitled to injunctive relief on this record. Because Starbucks' principal evidence of association, the Mitofsky survey, was fundamentally flawed, and because there was minimal similarity between the marks at issue, we agree with the District Court that Starbucks failed to show that Black Bear's use of its Charbucks Marks in commerce is likely to dilute the Starbucks Marks. [41] We have considered all of Starbucks' contentions on this appeal and have concluded that they are without merit. For the foregoing reasons, we AFFIRM the judgment of the District Court. 1. How similar must the parties' marks be to show dilution? The Nikepal court applied an "identical or nearly identical" standard of similarity in its blurring analysis, following Thane Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d 894 (9th Cir. 2002). The Second Circuit, however, has rejected this approach. In Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009), it emphasized that the new statute "does not use the words 'very' or 'substantial' in connection with the similarity factor," id. at 108, and reasoned that if courts were to impose a heightened similarity standard, this would give undue weight to the similarity factor-by turning the heightened similarity requirement into a threshold requirement that would short-circuit the six-factor multifactor balancing test for blurring. (The Second Circuit found that New York state anti-dilution law, by contrast, does impose a requirement that the marks be "'substantially' similar," id. at 114). In Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d 1158 (9th Cir. 2011), the Ninth Circuit subsequently followed the Second Circuit's reasoning: Turning to the language of subsection (c)(2)(B), the TDRA defines "dilution by blurring" as the "association arising from the similarity between a mark and a trade name and a famous mark that impairs the distinctiveness of the famous mark." Id. § 1125(c)(2)(B) (emphasis added). Congress did not require an association arising from the "substantial" similarity, "identity" or "near identity" of the two marks. The word chosen by Congress, "similarity," sets forth a less demanding standard than that employed by many courts under the FTDA. Id. at 1171. Do you find the Second and Ninth Circuits' reasoning persuasive? As a matter of sound policy, should courts require a heightened standard of similarity when analyzing a blurring claim? And in any case, are you persuaded that Nike and Nikepal are nearly identical? 2. Mere association or association that impairs distinctiveness? Recall that the TDRA defines dilution by blurring as "association. . .that impairs the distinctiveness of the famous mark." The Nikepal court found evidence of association, but it never addressed the question of whether this association "impairs the distinctiveness of the famous mark." Can we assume, as the Nikepal court appears to do, that any association necessarily impairs the distinctiveness of the plaintiff's mark? Consider what the Supreme Court said in Moseley: We do agree, however, with {the} conclusion that, at least where the marks at issue are not identical, the mere fact that consumers mentally associate the junior user's mark with a famous mark is not sufficient to establish actionable dilution. {S}uch mental association will not necessarily reduce the capacity of the famous mark to identify the goods of its owner, the statutory requirement for dilution under the FTDA. For even though Utah drivers may be reminded of the circus when they see a license plate referring to the "greatest snow on earth," it by no means follows that they will associate "the greatest show on earth" with skiing or snow sports, or associate it less strongly or exclusively with the circus. "Blurring" is not a necessary consequence of mental association. (Nor, for that matter, is "tarnishing.") Cir. 2016) (rejecting the Hyundai reasoning, stating "association is a necessary, but not sufficient, condition for a finding of dilution by blurring"). See also Barton Beebe, Roy Germano, Christopher Jon Sprigman, & Joel Steckel, Testing for Trademark Dilution in Court and the Lab, 86 U. CHI. L. REV. 611 (2019) (presenting experimental evidence that "even when consumers associate a junior mark with a famous senior mark, this association does not necessarily result in any impairment of the ability of the senior mark to identify its source and associations"). 3. Are some trademarks so strong as to be immune to blurring? In 2000, Professors Maureen Morrin and the late Jacob Jacoby, the latter of whom was a highly regarded trademark survey expert, reported the results of two studies they conducted to detect the effects of diluting stimuli on brand recognition and recall in test subjects. See Maureen Morrin & Jacob Jacoby, Trademark Dilution: Empirical Measures for an Elusive Concept, 19 J. Pub. Pol. & Marketing 265 (2000). Among other findings, they reported: "It appears that very strong brands are immune to dilution because their memory connections are so strong that it is difficult for consumers to alter them or create new ones with the same brand name." Id. at 274. Does this make sense to you? What are the implications of such a finding for anti-dilution protection, a form of protection granted only to brands "widely recognized by the general consuming public of the United States"? 4. Does dilution protection make any difference in practice? Commentators have long asserted that the very marks that qualify for dilution protection rarely need it. This is because such marks will likely win the conventional likelihood of confusion cause of action both because of their enormous fame and because the scope of the likelihood of confusion cause of action has expanded dramatically in the past few decades. See, e.g., Mark P. McKenna, The Normative Foundations of Trademark Law, 82 NOTRE DAME L. REV. 1839REV. , 1913REV. -14 (2007)). For example, if a defendant were to begin to sell Coca-Cola brand bicycles, how likely is it that Coca-Cola's lawyers would be able to prove some degree of confusion? Empirical evidence suggests that when courts consider both confusion and dilution, their dilution determinations are usually redundant of their confusion determinations. One study found that in the year following the October 6, 2006, effective date of the TDRA, no reported federal court opinion that considered both confusion and dilution found the latter but not the former. See Barton Beebe, The Continuing Debacle of U.S. Antidilution Law: Evidence from the First Year of Trademark Dilution Revision Act Case Law, 24 Santa Clara Computer & High Tech. L.J. 449 (2008). This trend appears to have continued. In the three and a half years following the effective date of the TDRA, two reported federal court opinions have analyzed both confusion and dilution and found the latter but not the former, and one of these opinions was a dissent. See Hershey Co. v. Art Van Furniture, Inc., No. 08 Civ. 14463, 2008 WL 4724756 (E.D. Mich. Oct. 24, 2008); American Century Proprietary Holdings, Inc. v. American Century Casualty Co., 295 Fed. Appx. 630 (5th Cir. Oct. 3, 2008) (Garwood, J., dissenting). This is not to say that the dilution case of action never provides relief not already provided by a confusion cause of action. As in Nikepal, courts may decline to consider confusion at all in their opinions and move directly to a finding of dilution. See, e.g., V Secret Catalogue, Inc. v. Moseley, 558 F. Supp. 2d 734 (W.D. Ky. 2008). Furthermore, a mark may be opposed in TTAB proceedings solely on the basis that it dilutes the opposer's mark. See 15 U.S.C. § 1052(f). In the registration context, it appears that antidilution law has been largely irrelevant. In 2014, Jeremy Sheff reported the results of a wide-ranging empirical study of the effect of antidilution law on registration practice at the PTO. See Jeremy N. Sheff, Dilution at the Patent and Trademark Office, 21 MICH. TELECOMM. & TECH. L. REV. 79 (2014). Among other things, Sheff developed and hand-coded a dataset of all 453 TTAB dispositions of dilution claims from the January 16, 1996 effective date of the FTDA through June 30, 2014. He found only three TTAB cases over that 18-year period in which anti-dilution claims made any difference to the outcome of a TTAB adjudication. In one of these, Sheff argues, a likelihood of confusion claim could have been used to reach the same outcome, but having found dilution, the board declined to consider the confusion claim. The TDRA contains no such prohibition against the misappropriation of a mark's "selling power." David Franklyn has argued that dilution is essentially a form of "free-riding", that courts often hold in favor of plaintiffs alleging dilution in an effort to punish free-riding, and that "it would be better to scrap dilution altogether and replace it with an independent cause of action that explicitly prevents free-riding in appropriate circumstances." David J. Franklyn, Debunking Dilution Doctrine: Toward a Coherent Theory of the Anti-Free-Rider Principle in American Trademark Law, 56 HASTINGS L.J. 117 (2004) MERRITT, Circuit Judge. [1] In this trademark "dilution by tarnishment" case, brought under the Trademark Dilution Revision Act of 2006, the question is whether the plaintiff, an international lingerie company that uses the trade name designation "Victoria's Secret" has a valid suit for injunctive relief against the use of the name "Victor's Little Secret" or "Victor's Secret" by the defendants, a small retail store in a mall in Elizabethtown, Kentucky, that sells assorted merchandise, including "sex toys" and other sexually oriented products. The District Court issued the injunction. Since then the shop has been operating under the name of "Cathy's Little Secret." The District Court concluded that even though the two parties do not compete in the same market, the "Victor's Little Secret" mark-because it is sex related-disparages and tends to reduce the positive associations and the "selling power" of the "Victoria's Secret" mark. The question is whether the plaintiff's case meets the definitions and standards for "dilution by tarnishment" set out in the new Act which amended the old Act, i.e., the Federal Trademark Dilution Act of 1995. [2] The new Act was expressly intended to overrule the Supreme Court interpretation of the old Act in this very same case, Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003), rev'g 259 F.3d 464 (6th Cir. 2001), aff'g 54 U.S.P.Q.2d 1092 (W.D. Ky. 2000). The Supreme Court reversed a panel of this Court that had affirmed an injunction against "Victor's Little Secret" issued by the District Court. On remand to the District Court from the Supreme Court after the 2003 reversal, no new evidence was introduced, and the District Court reconsidered the case based on the same evidence but used the new language in the new Act which overrules the Supreme Court in this case. We will first brief the Supreme Court opinion and the reasons Congress overruled the Supreme Court in this case. We will then outline our understanding of the new standards for measuring trademark "dilution by tarnishment" and apply them to this case. We conclude that the new Act creates a kind of rebuttable presumption, or at least a very strong inference, that a new mark used to sell sex related products is likely to tarnish a famous mark if there is a clear semantic association between the two. That presumption has not been rebutted in this case. [3] The Supreme Court explained that this case started when an Army Colonel at Fort Knox saw an ad for "Victor's Secret" in a weekly publication. It advertised that the small store in Elizabethtown sold adult videos and novelties and lingerie. 3 There was no likelihood of confusion between the two businesses or the two marks, but the Army Colonel was offended because the sexually-oriented business was semantically associating itself with "Victoria's Secret." The Court explained that the concepts of "dilution by blurring" and "dilution by tarnishment" originated with an article in the Harvard Law Review, Frank Schechter, "Rational Basis of Trademark Protection," 40 HARV. L. REV. 813 (1927), and that the history and meaning of the concepts were further well explained in Restatement (Third) of Unfair Competition, Section 25 (1995). The Restatement section referred to by the Supreme Court explains this new intellectual property tort and contains in § 25 a comprehensive statement of "Liability Without Proof of Confusion: Dilution and Tarnishment." "Tarnishment," as 3 The Supreme Court explained: In the February 12, 1998, edition of a weekly publication distributed to residents of the military installation at Fort Knox, Kentucky, petitioners advertised the "GRAND OPENING just in time for Valentine's Day!" of their store "VICTOR'S SECRET" in nearby Elizabethtown. The ad featured "Intimate Lingerie for every woman," "Romantic Lighting"; "Lycra Dresses"; "Pagers"; and "Adult Novelties/Gifts." An army colonel, who saw the ad and was offended by what he perceived to be an attempt to use a reputable company's trademark to promote the sale of "unwholesome, tawdry merchandise," sent a copy to respondents. Their counsel then wrote to petitioners stating that their choice of the name "Victor's Secret" for a store selling lingerie was likely to cause confusion with the well-known VICTORIA'S SECRET mark and, in addition, was likely to "dilute the distinctiveness" of the mark. They requested the immediate discontinuance of the use of the name "and any variations thereof." In response, petitioners changed the name of their store to "Victor's Little Secret." Because that change did not satisfy respondents, they promptly filed this action in Federal District Court. distinguished from "dilution by blurring" was the only claim before the Supreme Court and is the only claim before us in this new appeal. We quote at length the relevant Restatement explanation of "tarnishment" in the footnote below. 4 [4] After reviewing a number of secondary sources other than the Harvard Law Review article and the Restatement, including state statutes on dilution and a Fourth Circuit case, the 4 c. Interests protected. The antidilution statutes have been invoked against two distinct threats to the interests of a trademark owner. First, a mark may be so highly distinctive and so well advertised that it acts as a powerful selling tool. Such a mark may evoke among prospective purchasers a positive response that is associated exclusively with the goods or services of the trademark owner. To the extent that others use the trademark to identify different goods, services or businesses, a dissonance occurs that blurs this stimulant effect of the mark. The antidilution statutes protect against this dilution of the distinctiveness and selling power of the mark. The selling power of a trademark also can be undermined by a use of the mark with goods or services such as illicit drugs or pornography that "tarnish" the mark's image through inherently negative or unsavory associations, or with goods or services that produce a negative response when linked in the minds of prospective purchasers with the goods or services of the prior user, such as the use on insecticide of a trademark similar to one previously used by another on food products. Tarnishment and dilution of distinctiveness, although conceptually distinct, both undermine the selling power of a mark, the latter by disturbing the conditioned association of the mark with the prior user and the former by displacing positive with negative associations. Thus, tarnishment and dilution of distinctiveness reduce the value of the mark to the trademark owner. . . . . g. Tarnishment. The antidilution statutes have also been invoked to protect the positive associations evoked by a mark from subsequent uses that may disparage or tarnish those associations. The rule stated in Subsection (1)(b) applies to cases in which the tarnishment results from a subsequent use of the mark or a substantially similar mark in a manner that associates the mark with different goods, services, or businesses. Use of another's mark by the actor, not as a trademark or trade name, but in other ways that may disparage or tarnish the prior user's goods, services, business, or mark is governed by the rule stated in Subsection (2). Any designation that is distinctive under the criteria established in § 13 is eligible for protection against disparaging or tarnishing use by others. Whenever the subsequent use brings to mind the goods, services, business, or mark of the prior user, there is potential for interference with the positive images associated with the mark. To prove a case of tarnishment, the prior user must demonstrate that the subsequent use is likely to come to the attention of the prior user's prospective purchasers and that the use is likely to undermine or damage the positive associations evoked by the mark. 3. A, a bank, uses the designation "Cookie Jar" to identify its automatic teller machine. B opens a topless bar across the street from A under the trade name "Cookie Jar." Although prospective customers of A are unlikely to believe that A operates or sponsors the bar, B is subject to liability to A for tarnishment under an applicable antidilution statute if the customers are likely to associate A's mark or A's business with the images evoked by B's use. Supreme Court held that "actual harm" rather than merely the "likelihood of tarnishment" is necessary and stated its conclusion as follows: Noting that consumer surveys and other means of demonstrating actual dilution are expensive and often unreliable, respondents [Victoria's Secret] and their amici argue that evidence of an actual "lessening of the capacity of a famous mark to identify and distinguish goods or services," may be difficult to obtain. It may well be, however, that direct evidence of dilution such as consumer surveys will not be necessary if actual dilution can reliably be proved through circumstantial evidence-the obvious case is one where the junior and senior marks are identical. Whatever difficulties of proof may be entailed, they are not an acceptable reason for dispensing with proof of an essential element of a statutory violation. The evidence in the present record is not sufficient to support the summary judgment on the dilution count. The judgment is therefore reversed, and the case is remanded for further proceedings consistent with this opinion. 537 U.S. at 434, 123 S.Ct. 1115 (emphasis added). [5] Thus, the Court held that "actual harm" rather than merely a "likelihood" of harm must be shown by Victoria's Secret in order to prevail and that this means that Victoria's Secret carries the burden of proving an actual "lessening of the capacity of the Victoria's Secret mark to identify and distinguish goods or services sold in Victoria's Secret stores or advertised in its catalogs." Id. In the new law Congress rejected the Court's view that a simple "likelihood" of an association in the consumer's mind of the Victoria's Secret mark with the sexually-oriented videos and toys of "Victor's Secret" is insufficient for liability. [6] The House Judiciary Committee Report states the purpose of the new 2006 legislation as follows: The Moseley standard creates an undue burden for trademark holders who contest diluting uses and should be revised. . . . . The new language in the legislation [provides] . . . specifically that the standard for proving a dilution claim is "likelihood of dilution" and that both dilution by blurring and dilution by tarnishment are actionable. (Emphasis added.) U.S. Code Cong. & Adm. News, 109th Cong.2d Sess. 2006, Vol. 4, pp. 1091, 1092, 1097. . . . The drafters of the Committee Report also called special attention to the "burden" of proof or persuasion placed on "trademark holders" by the Supreme Court's opinion in Moseley, suggesting a possible modification in the burden of proof. The question for us then is whether "Victor's Little Secret" with its association with lewd sexual toys creates a "likelihood of dilution by tarnishment" of Victoria's Secret mark. [7] The specific question in this case is whether, without consumer surveys or polls or other evidence, a semantic "association" is equivalent to a liability-creating mental "association" of a junior mark like "Victor's Little Secret" with a famous mark like "Victoria's Secret" that constitutes dilution by tarnishment when the junior mark is used to sell sexual toys, videos and similar soft-core pornographic products. There appears to be a clearly emerging consensus in the case law, aided by the language of § 25 of the Restatement of Trademarks 3d, quoted in footnote 4, supra, that the creation of an "association" between a famous mark and lewd or bawdy sexual activity disparages and defiles the famous mark and reduces the commercial value of its selling power. This consensus stems from an economic prediction about consumer taste and how the predicted reaction of conventional consumers in our culture will affect the economic value of the famous mark. [8] There have been at least eight federal cases in six jurisdictions that conclude that a famous mark is tarnished when its mark is semantically associated with a new mark that is used to sell sex-related products. We find no exceptions in the case law that allow such a new mark associated with sex to stand. See Pfizer Inc. v. Sachs, 652 F.Supp. [9] The phrase "likely to cause dilution" used in the new statute . . . significantly changes the meaning of the law from "causes actual harm" under the preexisting law. The word "likely" or "likelihood" means "probably," WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY 1310 (1963); BLACK'S LAW DICTIONARY 1076 (1968). It is important to note also that the Committee Report quoted above seeks to reduce the "burden" of evidentiary production on the trademark holder. The burden-of-proof problem, the developing case law, and the Restatement (Third) of Trademarks in § 25 (particularly subsection g) should now be interpreted, we think, to create a kind of rebuttable presumption, or at least a very strong inference, that a new mark used to sell sex-related products is likely to tarnish a famous mark if there is a clear semantic association between the two. This res ipsa loquitur-like effect is not conclusive but places on the owner of the new mark the burden of coming forward with evidence that there is no likelihood or probability of tarnishment. The evidence could be in the form of expert testimony or surveys or polls or customer testimony. [10] In the present case, the Moseleys have had two opportunities in the District Court to offer evidence that there is no real probability of tarnishment and have not done so. They did not offer at oral argument any suggestion that they could make such a showing or wanted the case remanded for that purpose. The fact that Congress was dissatisfied with the Moseley result and the Moseley standard of liability, as well as apparently the Moseley burden of proof, supports the view of Victoria's Secret that the present record-in the eyes of the legislative branch-shows a likelihood of tarnishment. Without evidence to the contrary or a persuasive defensive theory that rebuts the presumption, the defendants have given us no basis to reverse the judgment of the District Court. We do not find sufficient the defendants' arguments that they should have the right to use Victor Moseley's first name and that the effect of the association is de minimis. The Moseleys do not have a right to use the word "secret" in their mark. They use it only to make the association with the Victoria's Secret mark. We agree that the tarnishing effect of the Moseley's mark on the senior mark is somewhat speculative, but we have no evidence to overcome the strong inference created by the case law, the Restatement, and Congressional dissatisfaction with the burden of proof used in this case in the Supreme Court. The new law seems designed to protect trademarks from any unfavorable sexual associations. Thus, any new mark with a lewd or offensive-tosome sexual association raises a strong inference of tarnishment. The inference must be overcome by evidence that rebuts the probability that some consumers will find the new mark both offensive and harmful to the reputation and the favorable symbolism of the famous mark. [11] Our dissenting colleague, in relying on the Supreme Court treatment of the proof in this case-for example, the long quotation from the Supreme Court concerning the legal effect of the evidence-fails to concede what seems obvious: Congress overruled the Supreme Court's view of the burden of proof. As quoted above, it said, "the Moseley standard creates an undue burden for trademark holders who contest diluting uses." It seems clear that the new Act demonstrates that Congress intended that a court should reach a different result in this case if the facts remain the same. We do not necessarily disagree with our dissenting colleague that the policy followed by the Supreme Court in such cases may be better. We simply believe that the will of Congress is to the contrary with regard to the proof in this case and with regard to the method of allocating the burden of proof. . . . . JULIA SMITH GIBBONS, Circuit Judge, concurring. [12] I fully concur in the majority opinion with the exception of one small quibble. I would not use the term "rebuttable presumption" to describe the inference that a new mark used to sell sex-related products is likely to tarnish a famous mark if there is a clear semantic association between the two. Practically speaking, what the inference is called makes little difference. I agree with the majority opinion that the inference is a strong one and that, to counter it, some evidence that there is no likelihood or probability of tarnishment is required. But because we are endeavoring to interpret a new law and because the legislative history is not explicit on the point of modification of the burden of proof, I think it best to end our analysis by characterizing the inference as an inference. KAREN NELSON MOORE, Circuit Judge, dissenting. [13] Because I believe that Victoria's Secret has failed to produce sufficient evidence to show that the Moseleys' use of the name "Victor's Little Secret" is likely to tarnish the VICTORIA'S SECRET mark, I would reverse the judgment of the district court and must respectfully dissent. [14] Under the Trademark Dilution Revision Act of 2006 ("TDRA"), Victoria's Secret is entitled to injunctive relief if the Moseleys' use of "Victor's Little Secret" as the name of their adult-oriented novelty store 1 "is likely to cause dilution . . . by tarnishment of the" VICTORIA'S SECRET mark. 15 U.S.C. § 1125(c) (1). "[D]ilution by tarnishment" is defined as an "association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark." Id. § 1125(c)(2)(C). Thus, under the terms of the statute, to determine whether the VICTORIA'S SECRET mark is likely to be tarnished by the Moseleys' use, this court must inquire as to both the "association" between the two marks and the "harm" that the association causes to the senior mark. [15] Because I agree that there is a clear association between the two marks, the determinative inquiry in this dilution-by-tarnishment case is whether that association is likely to harm Victoria's Secret's reputation. See id. § 1125(c)(2)(C) ("that harms the reputation of the famous mark"). Contrary to the majority's conclusion, however, given the record before the panel, I would hold that Victoria's Secret has failed to meet its burden to show that the Moseleys' use of "Victor's Little Secret" is likely to dilute Victoria's Secret's mark. 2 1 Victor's Little Secret "sell[s] a wide variety of items, including adult videos, adult novelties, and lingerie." Moseley v. v. Secret Catalogue, Inc., 537 U.S. 418, 424, 123 S.Ct. 1115, 155 L.Ed.2d 1 (2003) (internal quotation marks omitted); see also id. at 424 n. 4, 123 S.Ct. 1115 (listing numerous other items sold). "Victor Moseley stated in an affidavit that women's lingerie represented only about five percent of their sales." Id. at 424, 123 S.Ct. 1115. 2 I respectfully disagree with the majority's conclusion that in dilution-by-tarnishment cases involving new marks "with lewd or offensive-to-some sexual association[s]" the TDRA establishes a presumption or inference of tarnishment that the Moseleys must rebut. Maj. Op. at 389, 390. To be sure, the House Judiciary Committee Report highlights Congress's concern with the pre-TDRA actualdilution standard, but I do not read its concern that the previous standard created "an undue burden" to mean that Congress envisioned a modification of the party that bears the burden of proof as opposed to simply a lightening of the evidentiary showing. [16] Victoria's Secret's evidence of tarnishment includes nothing more than the following: (1) an affidavit from Army Colonel John E. Baker stating that he "was . . . offended by [the] defendants' use of [Victoria's Secret's] trademark to promote . . . unwholesome, tawdry merchandise," such as "'adult' novelties and gifts," and that since his "wife . . . and . . . daughter . . . shop at Victoria's Secret, [he] was further dismayed by [the] defendants' effort to associate itself with, trade off on the image of, and in fact denigrate a store frequented by members of [his] family," Record on Appeal ("ROA") at 267 (Baker Aff.); and (2) a statement from one of Victoria's Secret's corporate officers that Victoria's Secret strives to "maintain[ ] an image that is sexy and playful" and one that "avoid[s] sexually explicit or graphic imagery." Id. at 90 (Kriss Aff.). [17] Reviewing Baker's affidavit, I believe that it is plain that Baker made a "mental association" between "Victor's Little Secret" and "Victoria's Secret." Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 434, 123 S.Ct. 1115, 155 L.Ed.2d 1 (2003); see also ROA at 266 (Baker Aff.). It is also clear that Baker held a negative impression of "Victor's Little Secret." See Moseley, 537 U.S. at 434, 123 S.Ct. 1115; see also ROA at 267 (Baker Aff.). But despite the clear negative association of this one individual when confronted with "Victor's Little Secret," Victoria's Secret has presented no evidence that Baker's, or anyone else's, distaste or dislike of "Victor's Little Secret" is likely to taint their positive opinion or perception of Victoria's Secret. Yet evidence that the junior mark is likely to undermine or alter the positive associations of the senior mark-i.e., evidence that the junior mark is likely to harm the reputation of the senior mark-is precisely the showing required under the plain language of 15 U.S.C. § 1125(c)(2)(C) to prove dilution by tarnishment. As the Second Circuit recently noted in Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009): That a consumer may associate a negative-sounding junior mark with a famous mark says little of whether the consumer views the junior mark as harming the reputation of the famous mark. The more relevant question, for purposes of tarnishment, would have been how a hypothetical coffee [with a negativesounding name] would affect the positive impressions about the coffee sold by Starbucks. Unfair Competition § 24:89 (4th ed.) [hereinafter McCarthy on Trademarks] (discussing tarnishment claims as being premised on the notion that "positive associations" of the senior mark will be displaced or degraded by the negative associations of the junior mark); Restatement (Third) of Unfair Competition § 25 cmt. g (1995) ("To prove a case of tarnishment, the prior user must demonstrate that the subsequent use is likely to . . . undermine or damage the positive associations evoked by the mark."). In fact, when reviewing the exact same evidentiary record, the Supreme Court explicitly noted that Victoria's Secret's offer of proof included no evidence that "Victor's Little Secret" affected Baker's positive impressions of Victoria's Secret: The record in this case establishes that an army officer . . . did make the mental association with "Victoria's Secret," but it also shows that he did not therefore form any different impression of the store that his wife and daughter had patronized. There is a complete absence of evidence of any lessening of the capacity of the VICTORIA'S SECRET mark to identify and distinguish goods or services sold in Victoria's Secret stores or advertised in its catalogs. The officer was offended by the ad, but it did not change his conception of Victoria's Secret. His offense was directed entirely at [the Moseleys], not at [Victoria's Secret]. Moreover, the expert retained by respondents had nothing to say about the impact of [the Moseleys'] name on the strength of [Victoria's Secret's] mark. Moseley, 537 U.S. at 434, 123 S.Ct. 1115 (emphases added). 3 3 The majority mischaracterizes my citation to the Supreme Court's decision as evidencing a refusal to follow the "will of Congress" and a desire to follow the pre-TDRA "policy [of the] . . . Supreme Court." Maj. Op. at 389. My citation to the Supreme Court's decision, however, does no such thing. First, as stated previously, I believe that the majority's conclusion that Congress intended to change which party has the burden of proof-i.e., the framework governing which party must put forth evidence in support of its position-as opposed to the standard of harm-i.e., actual harm versus a likelihood of harm-is not supported by the statute or the legislative history. In fact, the only evidence that the majority cites in support of its belief that Congress intended to place the burden of proof on the defendant is the House Committee Report, but even that Report undercuts the majority's argument. The full paragraph from which the majority draws its quotation states: Witnesses at the[ ] [legislative] hearings focused on the standard of harm threshold articulated in Moseley [sic]. For example, a representative of the International Trademark Association observed that "[b]y the time measurable, provable damage to the mark has occurred much time has passed, the damage has been done, and the remedy, which is injunctive relief, is far less effective." The Committee endorses this position. The Moseley [sic] standard creates an undue burden for trademark holders who contest diluting uses and should be revised. H.R.Rep. No. 109-23, at 5 (internal footnote omitted and emphasis added). It was the "standard of harm threshold," i.e., the showing of actual harm that the Supreme Court employed, that was Congress's concern, not the party bearing the burden of proof. This conclusion is supported by the hearings to which the Committee Report refers. During those hearings, the focus of both the House Representatives and the witnesses was whether Congress should "maintain an actual dilution standard, as the Supreme Court held in the Victoria's Secret case," or adopt a "likelihood of dilution I certainly recognize that Congress changed the law concerning dilution in response to the Supreme Court's decision in Moseley, but the Supreme Court in Moseley said nothing about changing the party bearing the burden of proof and neither does the amended statute. Instead, the statute explicitly states that "dilution by tarnishment" is an "association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark." 15 U.S.C. § 1125(c)(2)(C) (emphasis added). In concluding that Victoria's Secret has failed to prove a likelihood of tarnishment because it has failed to present evidence that Victor's Little Secret is likely to harm the [18] In short, Victoria's Secret has presented no probative evidence that anyone is likely to think less of Victoria's Secret as a result of "Victor's Little Secret" and cannot therefore prevail on its claim of dilution by tarnishment. See Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 507 (2d Cir. 1996) ("Absent any showing that Henson's use [of a puppet named Spa'am] will create negative associations with the SPAM mark, there [is] little likelihood of dilution."). Instead of developing a record on remand that contains at least some evidence that Victoria's Secret's reputation is likely to suffer because of the negative response that "Victor's Little Secret" engendered, the record before the panel indicates only that a single individual thinks poorly of "Victor's Little Secret." See Moseley, 537 U.S. at 434, 123 S.Ct. 1115. On this record, it is simply no more probable that Victoria's Secret will suffer reputational harm as a result of the Moseleys' use of "Victor's Little Secret" than it is probable that those who are offended by "Victor's Little Secret" will limit their negative impressions to the Moseleys and refrain from projecting those negative associations upon Victoria's Secret. Baker's affidavit does nothing to contradict this conclusion, and given the absence of any indication that his or his family's opinion of Victoria's Secret changed following the Moseleys' use of "Victor's Little Secret," his affidavit may, in fact, provide evidence that individuals are likely to confine their distaste to the Moseleys. See id. ("The officer was offended by the ad, but it did not change his conception of Victoria's Secret. His offense was directed entirely at [the Moseleys], not at [Victoria's Secret]."). [19] Certainly, it is possible that the Moseleys' use of "Victor's Little Secret" to sell adultoriented material and other novelties could reflect poorly on the VICTORIA'S SECRET mark and could cause Victoria's Secret to suffer damage to its "sexy and playful" reputation, but the evidentiary standard set forth in the statute is one of likelihood not mere possibility. Likelihood is based on probable consequence and amounts to more than simple speculation as to what might possibly happen. See McCarthy on Trademarks § 24:115 n. 2 (indicating that "'likelihood' in the dilution part of the Lanham Act has the same meaning as it does in the traditional infringement sections of the Lanham Act: as synonymous with 'probability'"); see also Parks v. LaFace Records, 329 F.3d 437, 446 (6th Cir. 2003) ("A 'likelihood' means a 'probability' rather than a 'possibility' of confusion."). Yet, as the majority notes, on the instant record, the "tarnishing effect of the Moseley's mark on the senior mark" is nothing more than "speculative." Maj. Op. at 388-89. [20] Despite the absence of evidence, the majority is willing to assume that Victoria's Secret has met its burden to prove the essential element of "harm to reputation" based on the fact that numerous cases from other jurisdictions conclude, without much inquiry, "that a famous mark is tarnished when its mark is semantically associated with a new mark that is used to sell sex-related products." Id. at 388. I do not agree. Although it is true that courts have concluded that a finding of tarnishment is likely when a mark's "likeness is placed in the reputation of its mark, I am doing nothing more than applying the plain language of the statute that Congress enacted after the Supreme Court's decision. This approach certainly reflects the "will of Congress." Maj. Op. at 389. context of sexual activity, obscenity, or illegal activity," Hormel Foods Corp., 73 F.3d at 507, a court cannot ignore the showing of reputational harm that the statute requires. 4 [21] Even assuming that "Victor's Little Secret" is plainly unwholesome when compared to Victoria's Secret and that this case is completely analogous to those cases on which the majority relies, I still maintain that it is improper simply to assume likelihood of harm to the reputation of a senior mark when dealing with a junior mark of sexual character. As recounted above, there is no evidence connecting Victor's Little Secret's "unwholesome" or "tawdry" sexual character to the senior mark's reputation, and there is nothing in the language of the TDRA that would allow the court to forgive a party's obligation to present proof as to an element of the tarnishment cause of action-i.e., the likelihood of harm to 4 Nor can the court ignore the character of the senior mark when applying the majority's "rule." Victoria's Secret sells women's lingerie, and, as Victoria's Secret readily admits, its own mark is already associated with sex, albeit not with sex novelties. See ROA at 90 (Kriss Aff.) (noting that Victoria's Secret attempts to maintain a "sexy and playful" image); see also, e.g., id. at 156-57 (depicting Victoria's Secret advertisements for "sexy little things" lingerie, which urge customers to "[b]e bad for goodness sake[ ] [i]n peek-a-boo's, bras and sexy Santa accessories," to "[g]ive flirty panties" as gifts, and participate in the store's "panty fantasy," which it describes as "Very racy. Very lacy"); id. at 209 (reproducing an article in Redbook magazine entitled "46 Things to Do to a Naked Man," which highlights Victoria's Secret's role in the sexual activities of one of the contributors). In essence, the VICTORIA'S SECRET mark is not entirely separate from the sexual context within which the junior mark, "Victor's Little Secret," operates. This fact makes the instant case unlike many of the cases that the majority cites. reputation. 5 See McCarthy on Trademarks § 24:115 ("Even after the 2006 revision when only a likelihood of dilution is required, . . . judges should demand persuasive evidence that dilution is likely to occur. Even the probability of dilution should be proven by evidence, not just by theoretical assumptions about what possibly could occur or might happen."). [22] With its conclusion that there is sufficient evidence of harm to the reputation of the VICTORIA'S SECRET mark based solely on the sexual nature of the junior mark, the majority sanctions an almost non-existent evidentiary standard and, in the process, essentially eliminates the requirement that a plaintiff provide some semblance of proof of likelihood of reputational harm in order to prevail on a tarnishment claim, despite the plain language of 15 U.S.C. § 1125(c) (2). Because I believe that Victoria's Secret has not met its burden to show that "Victor's Little Secret" is likely to dilute the famous mark by way of tarnishment, I respectfully dissent. 1. Criticisms of the Sixth Circuit majority opinion in V Secret. Leading voices in trademark law have strongly criticized the majority opinion. See, e.g., MCCARTHY § 24:89 (condemning the V Secret presumption as "wildly misguided" and observing that "[t]he majority's presumption certainly sounds like the judiciary is making value judgments about what is unacceptably 'sexy,' a highly subjective and very slippery slope, allowing courts to censor uses they personally find 'sex-related.'"). McCarthy further notes a fundamental problem with the plaintiff's evidence of tarnishment (and perhaps with the theory of dilution by tarnishment more broadly): "I find very troubling that the district court based its finding of a likelihood of tarnishment upon the very same testimony that the Supreme Court in 2003 had characterized as not being evidence of tarnishment." Id. McCarthy explains: The district court relied on the same Army officer's testimony that the Supreme Court characterized in its opinion. That is, an Army Officer was offended by the junior user's use of its name on what he considered to be tasteless goods. The Supreme Court said that the officer "did not therefore form any different impression of the store that his wife and daughter had patronized … . The officer was offended by the ad, but it did not change his conception of Victoria's Secret. His offense was directed entirely at [the junior user], not at [the senior user Victoria's Secret]." Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 434 (2003). Yet, on remand, the district court said this same testimony "suggests the likelihood that the reputation and standing of the VICTORIA'S SECRET mark would be tarnished." In Matal v. Tam, 582 U.S. 218 (2017), excerpted above in Part I.B.5, the Supreme Court ruled that the Lanham Act § 2(a) prohibition on the registration of marks that "may disparage . . . persons" was invalid under the Free Speech Clause of the First Amendment. What are the implications of the Court's reasoning in Tam for antidilution law, and particularly for anti-tarnishment law? 3. Tarnishment or "burnishment"? See Jake Linford, Justin Sevier & Allyson Willis, Trademark Tarnishmyths, 55 ARIZ. ST. L.J. 609 (2023) (reporting the results of a series of experiments that suggest that purportedly tarnishing conduct associating a targeted mark with sex, narcotics, or sacrilege does not harm the reputation and may even result in the "burnishment" of the mark). There are three main methods by which a trademark owner may seek to prevent thirdparty unauthorized uses of its trademark as part of an internet domain name: ( 1 Roslyn O. Silver, Senior United States District Judge: [1] Defendant Automobili Lamborghini ("Lamborghini") manufactures cars sometimes referred to as "Lambos." Plaintiff Richard Blair is the current owner of the domain name <lambo.com> ("Disputed Domain"). Lamborghini believes it is entitled to own that domain name and an international arbitration panel agreed. Blair filed this suit seeking a judgment that he is allowed to retain ownership of <lambo.com>. Lamborghini filed a motion for summary judgment on all claims. Because Blair has failed to demonstrate genuine issues of material fact, the Court will grant Lamborghini's motion. BACKGROUND . . . . [2] Lamborghini is an Italian manufacturer of luxury sports cars. Richard Blair is an investor and developer of domain names. On January 16,1990, Lamborghini filed an application, Serial No. 74019105, with the United States Patent and Trademark Office ("USPTO") to register the LAMBORGHINI mark. On November 13, 1990, the USPTO granted Lamborghini's application and the LAMBORGHINI mark received its federal registration, U.S. Registration No. 1622382. The domain <lambo.com> was registered on March 5, 2000. On February 16, 2018, Blair purchased the Disputed Domain for $10,000 from John Lambeth. When Blair acquired the Disputed Domain, neither Blair nor Lamborghini had any trademark rights in the word LAMBO. 1[3] On April 29, 2022, Lamborghini filed a Complaint with the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center seeking a transfer of domain name under the Uniform Domain Name Dispute Resolution Policy (the "UDRP"). On August 3, 2022, the panel determined (with one dissenting panelist) the domain was "confusingly similar" to the LAMBORGHINI mark and Blair was using the mark in bad faith. The panel ordered Blair to transfer the domain to Lamborghini. After Lamborghini filed its WIPO complaint, Blair redirected visitors to the <lambo.com> domain to a third-party website called NamePros.com wherein Blair stated, among other things, he would "defend, defeat, and humiliate" Lamborghini, accused Lamborghini of "theft," and provided a link to the UDRP proceedings in his blog post. [4] Blair has listed the Disputed Domain for sale at different prices at various times as follows: August 6, 2020-$1,129,298.00; December 23, 2020-$1.5 million; January 27, 2021-$3.3 million; September 23, 2021-$12 million; August 11, 2022-€50 million; September 7, 2023 and currently-$75 million. Blair received several offers and inquiries from others seeking to buy <lambo.com> at various different prices, but he declined them all. Blair has not used the Disputed Domain-neither commercially nor non-commercially-and claims he purchased it because he saw <lambo.com> as a "brandable, pronounceable, singleword dot-com domain name" that fit with his existing portfolio of around 130 other domain names. Blair claims he planned to "develop" the Disputed Domain but had abandoned those plans due to "limited personal capacity." Finally, Blair claims he will seek to later resume development of the website. Lamborghini argues Blair's ownership of the Disputed Domain violates the Anti-Cybersquatting Consumer Protection Act ("ACPA"). . . . . [5] To establish a cybersquatting violation under the ACPA, a mark owner must prove "(1) the [domain name owner] registered, trafficked in, or used a domain name; (2) the domain name is identical or confusingly similar to a protected mark owned by the [mark owner]; and (3) the [domain name owner] acted with bad faith intent to profit from that mark." DSPT Intern., Inc. v. Nahum, 624 F.3d 1213, 1218-19 (9th Cir. 2010) (internal quotations omitted). The ACPA lists nine non-exhaustive factors a court may consider in determining bad faith: (I) the trademark or other intellectual property rights of the person, if any, in the domain name; (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; (III) the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; (IV) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name; (V) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; (VI) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct; (VII) the person's provision of material and misleading false contact information when applying for the registration of the domain name, the person's intentional failure to maintain accurate contact information, or the person's prior conduct indicating a pattern of such conduct; (VIII) the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and (IX) the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c). [6] The plain language of the ACPA requires not just proof of "bad faith" in a generalized sense. Rather, "[a] defendant is liable only where a plaintiff can establish that the defendant had a 'bad faith intent to profit. ' [8] Defendant Automobili Lamborghini moves for summary judgment on its cybersquatting claim under 15 U.S.C. § 1125(d). Blair concedes (i) he is the current registrant of the domain name <lambo.com>; (ii) the LAMBORGHINI mark was distinctive prior to both the initial registration of the Disputed Domain and as of the date Blair purchased the Disputed Domain; and (iii) <lambo.com> is confusingly similar to the LAMBORGHINI mark. This leaves at issue only whether Blair acted with bad faith intent to profit from the mark. Lamborghini's motion analyzes several of the ACPA bad faith factors, arguing they are undisputed and leave no genuine issue of material fact whether Blair acted with bad faith intent to profit. Blair's response argues disputes exist regarding his lack of bad faith that render summary judgment inappropriate. The Court will analyze each of the nine factors and conclude that no genuine issues of material fact exist with respect to Blair's bad faith intent to profit. [9] Lamborghini first asserts Blair has no trademark or other intellectual property rights in <lambo.com>. Blair admits he has no trademark rights in the word LAMBO. This factor clearly favors Lamborghini. See Sporty's Farm L.L.C., 202 F.3d at 498 (finding Factor I favored the mark holder where the alleged cybersquatter had no property rights in the mark at the time of registration). [10] Lamborghini next asserts "Lambo" is not Blair's legal name nor a name "commonly used to identify" Blair. Lamborghini offers evidence in the form of several email exchanges where Blair and others refer to him as "Richard" or "Richard Blair." Blair argues he has used "Lambo," "Lambo.com," and "Lambodotcom" as a moniker in multiple online communities and in the field of domain name investment and development. Somewhat perplexing, Blair claims he was drawn to the name "Lambo" as a play on the word "Lamb," with an outlier generic aptitude and intelligence, hence "Lambo-O", and the name "Lambo" "resonated with him on a personal level and perfectly encapsulated his identity and ethos." Lamborghini asserts Blair only began referring to himself as "Lambo" after he acquired <lambo.com> which disqualifies Blair from protection under this factor. Lamborghini cites a legislative report and a well-known trademark law treatise as support for this contention. See Reply at 2 (citing H.R.Rep. No. 106-412, at *10 ("This factor is not intended to suggest that domain name registrants may evade the application of this act by merely adopting Exxon, Ford, Bugs Bunny or other well-known marks as their nicknames.") and 5 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 25A:55). [11] Blair argues he adopted the "Lambo" moniker before Lamborghini commenced the UDRP proceeding. This is immaterial. The fact that a party used the domain name as a nickname is only probative of good faith if the usage occurred prior to Plaintiff's acquisition of the domain name. See Sporty's Farm, 202 F.3d at 499 (finding that although the domain name included part of Plaintiff's name, the Plaintiff-entity "did not exist at the time the domain name was registered"). To suggest otherwise would render the import of this factor meaningless. See H.R.Rep. No. 106-412, at *10. Blair fails to provide evidence that he adopted the moniker "Lambo" before purchasing the Disputed Domain. Accordingly, Factor II clearly favors Lamborghini. [12] Lamborghini next asserts Blair has not made use of the Disputed Domain "whether that be a bona fide commercial, noncommercial, or fair use." Blair fails to respond to or dispute this assertion. Indeed, Blair never developed <lambo.com> beyond a landing page, which, since mid-2020, has been replaced with a "For Sale" page allowing web users to purchase, or make an offer to purchase, the Disputed Domain. This factor clearly favors Lamborghini. See Porsche Cars N. Am., Inc. v. Spencer, No. CIV. S-00-471 GEB PA, 2000 WL 641209, at *4 (E.D. Cal. May 18, 2000) (finding no prior use of the domain name in connection with the bona fide offering of goods and services when the webpage at issue solicited offers to purchase the domain name). [13] The evidence presented with respect to Factors I through IV make clear Blair did not acquire the Disputed Domain in good faith. [14] Lamborghini asserts Blair acted with bad-faith intent when-after Lamborghini filed its UDPR Complaint-Blair redirected visitors to the <lambo.com> domain to a thirdparty website "where Mr. Blair disparaged Lamborghini's actions against him." The thirdparty website, NamePros.com, contained a blog post published by Plaintiff under the alias "lambo.com." The blog post, among other things, (1) stated "I AM LAMBO of LAMBO.com and I will defend, defeat and humiliate those endeavouring to steal any of my domain name brands -including my moniker," (2) accused Lamborghini of "THEFT of my asset, nomenclature, and taxonomy they possess ZERO rights to," (3) contained the link to the UDRP proceedings, and (4) stated "[c]ountermeasures to humiliate such endeavours are afoot. Unlawful theft will be duly punished through legal and commensurate counter efforts including any coerced and submissive accomplices." [15] Blair, in response, asserts Lamborghini "misrepresents the import of Factor V, and the ACPA overall" because Lamborghini's interpretation of the factor effectively eliminates the "intent to profit" language in the "bad faith intent to profit" requirement. Blair argues his statements in the blog post regarding defending, defeating, and humiliating Lamborghini do not evince an intent to profit and are not emblematic of the "essence of the wrong" the ACPA was enacted to combat. [16] Blair's actions in diverting <lambo.com> users to his blog post are not as clearly synonymous with bad faith intent to profit as the cases cited by Lamborghini. Morrison & Foerster, LLP v. Wick, 94 F.Supp.2d 1125, 1131-32 (D. Colo. 2000) (finding when alleged cybersquatter acquired domain names identical to the marks owned by a prominent law firm and the websites contained highly offensive and derogatory content regarding the legal profession, "a user may wonder about [the law firm's] affiliation with the sites or endorsement of the sites"); E. & J. Gallo Winery v. Spider Webs Ltd., 129 F. Supp. 2d 1033, 1045 (S.D. Tex. 2001) (finding when alleged cybersquatter acquired a domain name confusingly similar to the mark owned by a winery and the website contained commentary on the instant lawsuit and the unfairness of the ACPA, coupled with a strongly-worded campaign about the evils of alcohol consumption, the conduct "placed [the winery] at risk of losing business and of having its business reputation tarnished."). Both of these cases illustrate examples of highly offensive conduct, wherein the central purpose of acquiring the domain names was to harass the mark holders. That blatant harassment formed the basis of the Wick and Spider Webs decisions; Blair's conduct here does not conclusively project a primary motivation to harass Lamborghini, but rather to voice his grievances regarding the ongoing dispute. [17] However, the Court notes Blair's conduct in redirecting web users to his blog post while clearly painting Lamborghini in a negative light does not bolster his assertion that he acted without bad faith intent to profit. It does the opposite. Construing this factor liberally, any disparagement of a mark by an alleged cybersquatter carries inherent negative commercial consequences-especially given Blair's platform and the substantial number of views and comments received by his blog post. Thus, although Blair's behavior in response to the UDRP proceedings is not given substantial weight in this analysis, this factor marginally weighs in Lamborghini's favor. [18] Lamborghini next asserts this factor weighs in its favor because Blair listed, and continues to list, the Disputed Domain at exorbitant prices with a current list price of $75 million, and he has entertained multiple offers from prospective buyers. Blair argues although he has received multiple inquiries from third parties seeking the asking price of <lambo.com>, he never made any attempt to negotiate a sale price with them. Instead, Blair directed the inquirers back to the exorbitant price(s) listed at the time and even increased the price of the Disputed Domain several times purportedly to discourage people from making offers, "as the Disputed Domain because more valuable to him as a part of his identity." [19] Further, Lamborghini asserts Blair, in his Amended Complaint, admitted though he initially planned on developing a website at the Disputed Domain, "those plans were subsequently delayed and abandoned." ("Compl." at 3-4). In his affidavit, Blair states his "work and interests were scheduled to be showcased on <lambo.com>" and he completed a WordPress installation and a landing page on May 2, 2019. However, he subsequently decided to focus on developing another website at <ceec.com> due to limited personal capacity, and to resume development of <lambo.com> later. Blair states once <ceec.com> reaches certain developmental milestones, he plans to build <lambo.com> into a blog and Ceec founder's website that "will offer tips, tricks, and inspiration to others in the Ceec community, sharing insights from my experiences and fostering a supportive environment for individuals pursuing similar endeavors." Lamborghini contends Blair's statements are no more than an attempt to walk back on his prior statement that his plans to develop the Disputed Domain were "abandoned" in order "to manufacture a dispute of fact regarding his intentions with the <lambo.com> domain." [20] Blair has not offered a credible response to substantiate his claim that he intends to make legitimate use of the Disputed Domain. He has owned <lambo.com> for over six years, and over the course of his ownership, has made no bona fide use of the website. In fact, since mid-2020, the Disputed Domain has platformed a "For Sale" page. Blair asserts he listed <lambo.com> for sale at an "unreasonably high price . . . to discourage prospective purchasers." An offer to sell an item necessarily requires an intention to sell that item. To contend otherwise would defy all common sense and well-settled principles of law. Blair provides no explanation as to how listing the Disputed Domain for sale discourages prospective purchasers. Not only did he receive numerous inquiries and offers to purchase the Disputed Domain, but he responded to and engaged with these prospective purchasers. If <lambo.com> was truly "valuable to him as part of his identity," and he intended to "resume development of <lambo.com> at a later date," the (seventy-five) million-dollar question is why Blair would offer it for sale in the first place-let alone consistently over the past four years. [21] Further, Blair asserts he did not register <lambo.com> with the intent to sell it to Lamborghini, nor has he ever offered to sell the Disputed Domain to Lamborghini. However, an explicit offer to sell to the mark owner is not required. DSPT Int'l, Inc. v. Nahum, 624 F.3d 1213, 1221 (9th Cir. 2010). As an experienced domain name investor, Blair would know better than to directly extort Lamborghini. His conduct is indirectly extortionate because Lamborghini would have no other way to acquire the Disputed Domain besides forking over $75 million-or whatever ludicrous amount Blair decided on at any given day. Blair indisputably offered to sell the Disputed Domain-without any genuine intent to use it-for his own financial gain. This factor clearly favors Lamborghini. See Prudential Ins. Co. of Am. v. PRU.COM, 546 F. Supp. 3d 476, 490 (E.D. Va. 2021) (finding Factor VI weighed in favor of mark owner when alleged cybersquatter "used the domain name to procure a six figure sum"); cf. Lamparello v. Falwell, 420 F.3d 309, 321-22 (4th Cir. 2005) (finding Factor VI weighed in favor of alleged cybersquatter where he used the domain name to engage in permissible "comment and criticism" and never attempted to transfer it "for valuable consideration"). [22] Blair asserts he did not provide false contact information for his acquisition and management of the Disputed Domain, nor did he fail to maintain accurate contact information. Lamborghini does not respond to or dispute this assertion. This factor favors Blair. [23] Blair further asserts he does not have a history of cybersquatting because he has invested in domain names since 2009 and maintains a portfolio of around 130 domain names, several of which he has developed, and none of which infringe upon the marks of others. Blair's domain name portfolio includes two categories of name types: (1) short domain names consisting of a randomized combination of letters and numbers, such as <11215.com>, <wywy.com>, <ceec.com>, and <nyip.com>; and (2) names consisting of combinations of commonly used words, such as <AsbestosLitigation.com>, <CigarRoller.com>, <ComputerCase.com>, and <InternetFilter.com>. Blair asserts he "conscientiously avoids targeting established trademarks before he acquires a domain name." Moreover, prior to this dispute, Blair has never been accused of cybersquatting, been a party to a UDPR proceeding, or been a party to an action under the ACPA. [24] Lamborghini disputes Blair's contention that none of the domain names in his portfolio infringe upon the marks of others, arguing at least two of the domain names owned by Blair are trademarked word marks not owned by Blair: DNAS and PHARMACORE. Blair provides a list of the domain names he owned or owns, along with the dates of purchase and/or sale, and the purchase or sale prices. Lamborghini provides the registration information for the trademarked word marks DNAS and PHARMACORE. The registration date of the DNAS mark is listed as May 4, 2021. Blair's purchase of <dnas.com> on June 2, 2018, however, predated the mark's registration. Thus, this example does not support cybersquatting because the trademark did not exist "at the time of registration" of <dnas.com>. See 15 U.S.C. § 1125(d)(1)(B)(i)(VIII). Although the PHARMACORE mark was registered on May 18, 2004, the record does not contain acquisition information for <pharmacore.com>, such as the date of purchaser and the vendor, which is essential in determining Blair's intent. Moreover, there is no evidence to support a finding that the PHARMACORE mark is "distinctive" or "famous" as stated in factor eight and that Blair's acquisition of <pharmacore.com> was made with bad faith intent to profit. See 15 U.S.C. § 1125(d)(1)(B)(i)(VIII). [25] The Court notes is it significant that Blair has engaged in the business of acquiring, developing, investing in, and selling domain names for 15 years. "The ACPA was not enacted to put an end to the sale of all domain names." Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264, 270 (4th Cir. 2001); see also 5 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 25A:61 ("[T]he mere registration of multiple domain names for resale does not per se mark one as a cybersquatter. One may be in a justifiable business of reserving many domain names."). However, that Blair does not have a history of cybersquatting is not in itself enough to absolve him of an ill-intent to profit from Lamborghini's mark. Nevertheless, this factor weighs in Blair's favor. [26] The final bad faith intent to profit factor "simply directs the court's attention to the strength of the [senior] mark." 5 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 25A:62 ("[The] more distinctive the senior mark, the greater the chance that there will be a likelihood of confusion."). Blair argues this factor weighs in his favor because "Lambo" is not distinctive and "not exclusively used by the public as a shorthand for Lamborghini." (Resp. at 9). However, this factor refers to the distinctiveness and famousness of the senior mark, i.e., LAMBORGHINI, not LAMBO. 15 U.S.C. § 1125(d)(1)(B)(i)(IX); see H.R. Rep. No. 106-412, at *13 (October 25, 1999) ("The more distinctive or famous a mark has become, the more likely the owner of that mark is deserving of the relief available under this act."). [27] Blair admits "[t]he LAMBORGHINI mark was distinctive prior to both the initial registration of the domain name and as of the date Blair purchased the domain name" and "<lambo.com> is confusingly similar to the LAMBORGHINI mark." (Resp. at 7). There is no doubt the LAMBORGHINI mark is distinctive and famous as defined in 15 U.S.C. § 1125(c)as Blair concedes-because it is widely recognized by the general public in association with the world-famous automobiles it manufactures. This factor clearly favors Lamborghini. [28] The evidence presented with respect to Factors V through IX, on balance, indisputably shows Blair evinces a bad faith intent to profit from the Disputed Domain. [29] "The ACPA allows a court to view the totality of the circumstances in making the bad faith determination." Virtual Works, 238 F.3d at 270. The only two factors weighing in Blair's favor-Factors VII and VIII-do not overcome the strength of the remaining factors supporting his bad faith intent to profit from the Disputed Domain. While it may be true that (1) Blair initially acquired <lambo.com> for bona fide reasons to expand his domain name portfolio and eventually develop the website into a blog and (2) he has no prior history of cybersquatting, the conclusion of any reasonable factfinder can only be that Blair's actions with respect to the Disputed Domain to date were made with a bad faith intent to profit from the goodwill of Lamborghini. [30] Blair has no legal rights in the mark LAMBO. He only began adopting the moniker "Lambo" after acquiring the Disputed Domain. He has made no bona fide use of the Disputed Domain. Blair disparaged Lamborghini by redirecting <lambo.com> users to a blog post where he threatened to "humiliate" Lamborghini following its success in the UDRP proceedings. Since as early as mid-2020, Blair has listed the Disputed Domain for sale at exorbitant sums. Its current list price of $75 million marks a 749,900% increase from the price for which Blair purchased <lambo.com>. Blair claims he intends to develop <lambo.com> into a personal blog at an unspecified point in time, without presenting any concrete plans to do so. [31] Moreover, LAMBORGHINI is a highly famous and distinctive mark, and Blair concedes LAMBO is confusingly similar to it. The Court notes the general public may not exclusively associate LAMBO with LAMBORGHINI. However, it is obvious the public's strong association of LAMBO with LAMBORGHINI is the most enticing reason for a prospective buyer's acquisition of the Disputed Domain. Profiteering on the goodwill of another's mark is exactly what the ACPA intended to prevent. See Lucas Nursery & Landscaping, Inc., 359 F.3d at 810 (citing S.Rep. No. 106-140, at *9). The sole reasonable inference from the facts and circumstances presented is that Blair acted with bad faith intent to profit from the LAMBORGHINI mark. Based on the totality of the circumstances and the admissible evidence presented, the Court finds there are no genuine disputes of material fact with respect to the cybersquatting claim. Therefore, the Court grants Lamborghini's motion. Because Blair's claims for injunctive relief under the ACPA necessarily fail, Blair's Complaint is dismissed with prejudice. [32] Accordingly, IT IS ORDERED Defendant's motion for summary judgment is GRANTED. Plaintiff's Complaint is dismissed in its entirety with prejudice. [1] Christopher Lamparello appeals the district court's order enjoining him from maintaining a gripe website critical of Reverend Jerry Falwell. For the reasons stated below, we reverse. [2] Reverend Falwell is "a nationally known minister who has been active as a commentator on politics and public affairs." Hustler Magazine v. Falwell, 485 U.S. 46, 47, 108 S.Ct. 876, 99 L.Ed.2d 41 (1988). He holds the common law trademarks "Jerry Falwell" and "Falwell," and the registered trademark "Listen America with Jerry Falwell." Jerry Falwell Ministries can be found online at "www.falwell.com," a website which receives 9,000 hits (or visits) per day. [3] Lamparello registered the domain name "www.fallwell.com" on February 11, 1999, after hearing Reverend Falwell give an interview "in which he expressed opinions about gay people and homosexuality that [Lamparello] considered . . . offensive." Lamparello created a website at that domain name to respond to what he believed were "untruths about gay people." Lamparello's website included headlines such as "Bible verses that Dr. Falwell chooses to ignore" and "Jerry Falwell has been bearing false witness (Exodus 20:16) against his gay and lesbian neighbors for a long time." The site also contained in-depth criticism of Reverend Falwell's views. For example, the website stated: Dr. Falwell says that he is on the side of truth. He says that he will preach that homosexuality is a sin until the day he dies. But we believe that if the reverend were to take another thoughtful look at the scriptures, he would discover that they have been twisted around to support an anti-gay political agenda . . . at the expense of the gospel. [4] Although the interior pages of Lamparello's website did not contain a disclaimer, the homepage prominently stated, "This website is NOT affiliated with Jerry Falwell or his ministry"; advised, "If you would like to visit Rev. Falwell's website, you may click here"; and provided a hyperlink to Reverend Falwell's website. [5] At one point, Lamparello's website included a link to the Amazon.com webpage for a book that offered interpretations of the Bible that Lamparello favored, but the parties agree that Lamparello has never sold goods or services on his website. The parties also agree that "Lamparello's domain name and web site at www.fallwell.com," which received only 200 hits per day, "had no measurable impact on the quantity of visits to [Reverend Falwell's] web site at www.falwell.com." [6] Nonetheless, Reverend Falwell sent Lamparello letters in October 2001 and June 2003 demanding that he cease and desist from using www.fallwell.com or any variation of Reverend Falwell's name as a domain name. Ultimately, Lamparello filed this action against Reverend Falwell and his ministries (collectively referred to hereinafter as "Reverend Falwell"), seeking a declaratory judgment of noninfringement. Reverend [7] The parties stipulated to all relevant facts and filed cross-motions for summary judgment. The district court granted summary judgment to Reverend Falwell, enjoined Lamparello from using Reverend Falwell's mark at www.fallwell.com, and required Lamparello to transfer the domain name to Reverend Falwell. Lamparello, 360 F.Supp.2d at 773, 775. However, the court denied Reverend Falwell's request for statutory damages or attorney fees, reasoning that the "primary motive" of Lamparello's website was "to put forth opinions on issues that were contrary to those of [Reverend Falwell]" and "not to take away monies or to profit." Id. at 775. [8] Lamparello appeals the district court's order; Reverend Falwell cross-appeals the denial of statutory damages and attorney fees. We review de novo a district court's ruling on cross-motions for summary judgment. See People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 364 (4th Cir. 2001) [hereinafter "PETA "]. {In analyzing Falwell's likelihood of confusion claims under Lanham Act § § 32 and 43(a), the court addressed without deciding the issue of whether Lamparello was engaging in commercial speech or using Falwell's mark "in connection with the sale, offering for sale, distribution, or advertising of any goods or services." Instead, the court simply found no likelihood of confusion as to the true source of Lamparello's website, explaining that "to determine whether a likelihood of confusion exists as to the source of a gripe site like that at issue in this case, a court must look not only to the allegedly infringing domain name, but also to the underlying content of the website." As for the issue of initial interest confusion, the court stated that "even if we did endorse the initial interest confusion theory, that theory would not assist Reverend Falwell here because it provides no basis for liability in circumstances such as these. The few appellate courts that have followed the Ninth Circuit and imposed liability under this theory for using marks on the Internet have done so only in cases involving a factor utterly absent here-one business's use of another's mark for its own financial gain . . . . This critical element-use of another firm's mark to capture the markholder's customers and profits-simply does not exist when the alleged infringer establishes a gripe site that criticizes the markholder."} III. [9] We evaluate Reverend Falwell's cybersquatting claim separately because the elements of a cybersquatting violation differ from those of traditional Lanham Act violations. To prevail on a cybersquatting claim, Reverend Falwell must show that Lamparello: (1) "had a bad faith intent to profit from using the [www.fallwell.com] domain name," and (2) the domain name www.fallwell.com "is identical or confusingly similar to, or dilutive of, the distinctive and famous [Falwell] mark." PETA, 263 F.3d at 367 (citing 15 U.S.C. [10] "The paradigmatic harm that the ACPA was enacted to eradicate" is "the practice of cybersquatters registering several hundred domain names in an effort to sell them to the legitimate owners of the mark." Lucas Nursery & Landscaping, Inc. v. Grosse, 359 F.3d 806, 810 (6th Cir. 2004). The Act was also intended to stop the registration of multiple marks with the hope of selling them to the highest bidder, "distinctive marks to defraud consumers" or "to engage in counterfeiting activities," and "well-known marks to prey on consumer confusion by misusing the domain name to divert customers from the mark owner's site to the cybersquatter's own site, many of which are pornography sites that derive advertising revenue based on the number of visits, or 'hits,' the site receives." S.Rep. No. 106-140, 1999 WL 594571, at *5-6. The Act was not intended to prevent "noncommercial uses of a mark, such as for comment, criticism, parody, news reporting, etc.," and thus they "are beyond the scope" of the ACPA. Id. at *9. [11] To distinguish abusive domain name registrations from legitimate ones, the ACPA directs courts to consider nine nonexhaustive factors . . . . [12] These factors attempt "to balance the property interests of trademark owners with the legitimate interests of Internet users and others who seek to make lawful uses of others' marks, including for purposes such as comparative advertising, comment, criticism, parody, news reporting, fair use, etc." H.R. Rep. No. 106-412, 1999 WL 970519, at *10 (emphasis added). "The first four [factors] suggest circumstances that may tend to indicate an absence of bad-faith intent to profit from the goodwill of a mark, and the others suggest circumstances that may tend to indicate that such bad-faith intent exists." Id. However, "[t]here is no simple formula for evaluating and weighing these factors. For example, courts do not simply count up which party has more factors in its favor after the evidence is in." Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214, 234 (4th Cir. 2002). In fact, because use of these listed factors is permissive, "[w]e need not . . . march through" them all in every case. Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264, 269 (4th Cir. 2001). "The factors are given to courts as a guide, not as a substitute for careful thinking about whether the conduct at issue is motivated by a bad faith intent to profit." Lucas Nursery & Landscaping, 359 F.3d at 811. [13] After close examination of the undisputed facts involved in this case, we can only conclude that Reverend Falwell cannot demonstrate that Lamparello "had a bad faith intent to profit from using the [www. 7That Lamparello provided a link to an Amazon.com webpage selling a book he favored does not diminish the communicative function of his website. The use of a domain name to engage in criticism or commentary "even where done for profit" does not alone evidence a bad faith intent to profit, H.R.Rep. No. 106-412, 1999 WL 970519, at *11, and Lamparello did not even stand to gain financially from sales of the book at Amazon.com. Thus factor IV weighs heavily in favor of finding Lamparello lacked a bad faith intent to profit from the use of the domain name. [14] Equally important, Lamparello has not engaged in the type of conduct described in the statutory factors as typifying the bad faith intent to profit essential to a successful cybersquatting claim. First, we have already held, supra Part III.B, that Lamparello's domain name does not create a likelihood of confusion as to source or affiliation. Accordingly, Lamparello has not engaged in the type of conduct-"creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site," 15 U.S.C. § 1125(d)(1)(B)(i)(V) -described as an indicator of a bad faith intent to profit in factor V of the statute. [15] Factors VI and VIII also counsel against finding a bad faith intent to profit here. Lamparello has made no attempt-or even indicated a willingness-"to transfer, sell, or otherwise assign the domain name to [Reverend Falwell] or any third party for financial gain." 15 U.S.C. § 1125(d)(1)(B)(i)(VI). Similarly, Lamparello has not registered "multiple domain names," 15 U.S.C. § 1125(d)(1)(B)(i)(VIII); rather, the record indicates he has registered only one. Thus, Lamparello's conduct is not of the suspect variety described in factors VI and VIII of the Act. [16] Notably, the case at hand differs markedly from those in which the courts have found a bad faith intent to profit from domain names used for websites engaged in political commentary or parody. For example, in PETA we found the registrant of www.peta.org engaged in cybersquatting because www.peta.org was one of fifty to sixty domain names Doughney had registered, PETA, 263 F.3d at 362, and because Doughney had evidenced a clear intent to sell www.peta.org to PETA, stating that PETA should try to "'settle' with him and 'make him an offer.'" Id. at 368. See also Virtual Works, 238 F.3d at 269-70. Similarly, in Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004), the Eighth Circuit found an anti-abortion activist who had registered domain names incorporating famous marks such as "Washington Post" liable for cybersquatting because he had registered almost seventy domain names, had offered to stop using the Washington Post mark if the newspaper published an opinion piece by him on its editorial page, and posted content that created a likelihood of confusion as to whether the famous markholders sponsored the anti-abortion sites and "ha[d] taken positions on hotly contested issues." Id. at 786. In contrast, Lamparello did not register multiple domain names, he did not offer to transfer them for valuable consideration, and he did not create a likelihood of confusion. [17] Instead, Lamparello, like the plaintiffs in two cases recently decided by the Fifth and Sixth Circuits, created a gripe site. Both courts expressly refused to find that gripe sites located at domain names nearly identical to the marks at issue violated the ACPA. In TMI, Inc. v. Maxwell, 368 F.3d 433, 434-35 (5th Cir. 2004), Joseph Maxwell, a customer of homebuilder TMI, registered the domain name "www.trendmakerhome.com," which differed by only one letter from TMI's mark, TrendMaker Homes, and its domain name, "www.trendmakerhomes.com." Maxwell used the site to complain about his experience with TMI and to list the name of a contractor whose work pleased him. After his registration expired, Maxwell registered "www.trendmakerhome.info." TMI then sued, alleging cybersquatting. The Fifth Circuit reversed the district court's finding that Maxwell violated the ACPA, reasoning that his site was noncommercial and designed only "to inform potential customers about a negative experience with the company." Id. at 438-39. [18] Similarly, in Lucas Nursery & Landscaping, a customer of Lucas Nursery registered the domain name "www.lucasnursery.com" and posted her dissatisfaction with the company's landscaping services. Because the registrant, Grosse, like Lamparello, registered a single domain name, the Sixth Circuit concluded that her conduct did not constitute that which Congress intended to proscribe-i.e., the registration of multiple domain names. Lucas Nursery & Landscaping, 359 F.3d at 810. Noting that Grosse's gripe site did not create any confusion as to sponsorship and that she had never attempted to sell the domain name to the markholder, the court found that Grosse's conduct was not actionable under the ACPA. The court explained: "One of the ACPA's main objectives is the protection of consumers from slick internet peddlers who trade on the names and reputations of established brands. The practice of informing fellow consumers of one's experience with a particular service provider is surely not inconsistent with this ideal." Id. at 811. [19] Like Maxwell and Grosse before him, Lamparello has not evidenced a bad faith intent to profit under the ACPA. To the contrary, he has used www.fallwell.com to engage in the type of "comment[ ][and] criticism" that Congress specifically stated militates against a finding of bad faith intent to profit. See S. Rep. No. 106-140, 1999 WL 594571, at *14. And he has neither registered multiple domain names nor attempted to transfer www.fallwell.com for valuable consideration. We agree with the Fifth and Sixth Circuits that, given these circumstances, the use of a mark in a domain name for a gripe site criticizing the markholder does not constitute cybersquatting. [20] For the foregoing reasons, Lamparello, rather than Reverend Falwell, is entitled to summary judgment on all counts. 8 Accordingly, the judgment of the district court is reversed and the case is remanded for entry of judgment for Lamparello. REVERSED AND REMANDED. What is the Uniform Domain Name Dispute Resolution Policy? The Uniform Domain Name Dispute Resolution Policy (the UDRP Policy) sets out the legal framework for the resolution of disputes between a domain name registrant and a third party (i.e., a party other than the registrar) over the abusive registration and use of an Internet domain name in the generic top level domains or gTLDs (e.g., .biz, .com, .info, .mobi, .name, .net, .org), and those country code top level domains or ccTLDs that have adopted the UDRP Policy on a voluntary basis. At its meetings on August 25 and 26, 1999 in Santiago, Chile, the ICANN * Board of Directors adopted the UDRP Policy, based largely on the recommendations contained in the Report of the WIPO Internet Domain Name Process, as well as comments submitted by registrars and other interested parties. All ICANN-accredited registrars that are authorized to register names in the gTLDs and the ccTLDs that have adopted the Policy have agreed to abide by and implement it for those domains. Any person or entity wishing to register a domain name in the gTLDs and ccTLDs in question is required to consent to the terms and conditions of the UDRP Policy. What are the advantages of the UDRP Administrative Procedure? The main advantage of the UDRP Administrative Procedure is that it typically provides a faster and cheaper way to resolve a dispute regarding the registration and use of an Internet domain name than going to court. In addition, the procedures are considerably more informal than litigation and the decision-makers are experts in such areas as international trademark law, domain name issues, electronic commerce, the Internet and dispute resolution. It is also international in scope: it provides a single mechanism for resolving a domain name dispute regardless of where the registrar or the domain name holder or the complainant are located. What are the WIPO Center's fees for a domain name dispute? For a case involving between 1 and 5 domain names, the fee for a case that is to be decided by a single Panelist is USD1500 and USD4000 for a case that is to be decided by 3 Panelists. For a case involving between 6 and 10 domain names, the fee for a case that is to be decided by a single Panelist is USD2000 and USD5000 for a case that is to be decided by 3 Panelists. The Complainant is responsible for paying the total fees. The only time the Respondent has to share in the fees is when the Respondent chooses to have the case decided by 3 Panelists and the Complainant had chosen a single Panelist. In exceptional circumstances, either the Panel or the WIPO Center may ask the parties to make additional payments to defray the costs of the administrative procedure. (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith. In the administrative proceeding, the complainant must prove that each of these three elements are present. b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented outof-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. d. Selection of Provider. The complainant shall select the Provider from among those approved by ICANN by submitting the complaint to that Provider. The selected Provider will administer the proceeding, except in cases of consolidation as described in Paragraph 4(f). The Rules of Procedure state the process for initiating and conducting a proceeding and for appointing the panel that will decide the dispute (the "Administrative Panel"). f. Consolidation. In the event of multiple disputes between you and a complainant, either you or the complainant may petition to consolidate the disputes before a single Administrative Panel. This petition shall be made to the first Administrative Panel appointed to hear a pending dispute between the parties. This Administrative Panel may consolidate before it any or all such disputes in its sole discretion, provided that the disputes being consolidated are governed by this Policy or a later version of this Policy adopted by ICANN. All fees charged by a Provider in connection with any dispute before an Administrative Panel pursuant to this Policy shall be paid by the complainant, except in cases where you elect to expand the Administrative Panel from one to three panelists as provided in Paragraph 5(b)(iv) of the Rules of Procedure, in which case all fees will be split evenly by you and the complainant. h. Our Involvement in Administrative Proceedings. We do not, and will not, participate in the administration or conduct of any proceeding before an Administrative Panel. In addition, we will not be liable as a result of any decisions rendered by the Administrative Panel. i. Remedies. The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant. Administrative Panel with respect to a domain name you have registered with us. All decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision. k. Availability of Court Proceedings. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel's decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel's decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name. All other disputes between you and any party other than us regarding your domain name registration that are not brought pursuant to the mandatory administrative proceeding provisions of Paragraph 4 shall be resolved between you and such other party through any court, arbitration or other proceeding that may be available. Our Involvement in Disputes. We will not participate in any way in any dispute between you and any party other than us regarding the registration and use of your domain name. You shall not name us as a party or otherwise include us in any such proceeding. In the event that we are named as a party in any such proceeding, we reserve the right to raise any and all defenses deemed appropriate, and to take any other action necessary to defend ourselves. Maintaining the Status Quo. We will not cancel, transfer, activate, deactivate, or otherwise change the status of any domain name registration under this Policy except as provided in Paragraph 3 above. . . . . 9. Policy Modifications. We reserve the right to modify this Policy at any time with the permission of ICANN. We will post our revised Policy at <URL> at least thirty (30) calendar days before it becomes effective. Unless this Policy has already been invoked by the submission of a complaint to a Provider, in which event the version of the Policy in effect at the time it was invoked will apply to you until the dispute is over, all such changes will be binding upon you with respect to any domain name registration dispute, whether the dispute arose before, on or after the effective date of our change. In the event that you object to a change in this Policy, your sole remedy is to cancel your domain name registration with us, provided that you will not be entitled to a refund of any fees you paid to us. The revised Policy will apply to you until you cancel your domain name registration. [2] The Respondent is Pinerest.com c/o Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Ian Townsend of Madrid, Spain. [3] The disputed domain name <pinerest.com> is registered with Fabulous.com (the "Registrar"). [4] The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 20, 2015. On October 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 27, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 27, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on October 29, 2015. [5] The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). [6] In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 5, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 26, 2015. [7] The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on December 2, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. [8] To the Panel's knowledge (on which subject see section 6A below), the Complainant is a provider of online services via its website and mobile applications under the PINTEREST trademark, providing a facility whereby Internet users may gather images and content and organize this into themed collections on a "pinboard". [9] The Complainant is the owner of a variety of registered trademarks for the word mark PINTEREST in a range of different jurisdictions including, for example, United States registered trademark No. 4145087 registered on May 22, 2012 in international classes 42 and 45. [10] According to WhoIs records the disputed domain name was created on February 25, 1998. Little is known regarding the Respondent, who appears from the WhoIs to be an individual with an address in Spain. The Complainant submits that the Respondent is not the original registrant of the disputed domain name and notes that, according to historic WhoIs records, that entity was a memorial park and funeral home in Alabama, United States. The Complainant says that the disputed domain name has more recently been transferred to the Respondent. The probable date for such transfer, according to the Complainant, is August 24, 2015, which is the "last updated" date shown on the WhoIs record of October 13, 2015. [11] Screenshots produced by the Complainant illustrate its assertion that the disputed domain name cycles through to a number of different unconnected websites, one of which invites users to participate in a survey purporting to be run by the Complainant, which produces a popup window on entry stating "Congratulations Pinterest Visitor!", and another of which directs users to malware. A. Complainant [12] The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name has been registered and is being used in bad faith. [13] The Complainant submits that it satisfies the threshold requirement of having trademark rights under the Policy and that its PINTEREST trademark is incorporated in the disputed domain name with the omission of a single character. The Complainant asserts that its mark is well known and that the omission of a single character from such mark constitutes "type squatting" [sic] and renders the disputed domain name confusingly similar to such mark. [14] The Complainant contends that it has not authorized the Respondent to register or use its PINTEREST mark or any confusingly similar variant thereof, that the Respondent has not been commonly known by the disputed domain name and that the Respondent is not making a noncommercial or fair use of the disputed domain name. The Complainant asserts that as the disputed domain name cycles through unconnected websites or popups and directs users to malware this cannot be described as a bona fide offering of goods or services. The Complainant submits that the purpose of the disputed domain name is to capture users who mistakenly enter it when attempting to visit the Complainant's website for the Respondent's commercial gain and that accordingly the Respondent cannot claim rights or legitimate interests therein. [15] The Complainant submits that the Respondent acquired the disputed domain name from the original registrant in bad faith in order to use the disputed domain name in bad faith by creating confusion with the Complainant's PINTEREST mark. The Complainant contends that the Octogen trio of cases (City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643; Phillip Securities Pte Ltd v. Yue Hoong Leong,ADNDRC Decision DE-0900226; and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786) are applicable in the scenario where the Respondent is not the original registrant of the disputed domain name but subsequently acquired this in bad faith and demonstrably uses it in bad faith. The Complainant also asserts that the date of registration for the purposes of the Complaint should be the date of acquisition of the disputed domain name by the Respondent and not the original creation date. [16] The Complainant asserts that the date of acquisition of the disputed domain name by the Respondent is August 2015 and that the Respondent would have been aware of the Complainant's rights by that date. The Complainant also argues that the Respondent must have been fully aware of such rights by virtue of its use of its PINTEREST mark on the surveys to which the disputed domain name points. The Complainant also describes and illustrates the use of the disputed domain name to point to sale items on a popular auction website together with popup advertisements stating that users have downloaded malware. The Complainant asserts that the use of the disputed domain name in this manner constitutes use in bad faith within the meaning of the Policy. [17] The Respondent did not reply to the Complainant's contentions. [18] To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. . . . . [19] Having found that the Complainant has rights in the PINTEREST trademark, the Panel observes that the disputed domain name is identical to such mark, subject to the omission of the initial letter "t" in the disputed domain name. The Panel accepts the Complainant's submission that the omission of a single letter in the disputed domain name is insufficient to distinguish it from the Complainant's mark and accordingly finds that the disputed domain name is confusingly similar thereto. Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. [20] Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name . . . . [21] As paragraph 2.1 of the WIPO Overview 2.0 notes, a consensus view among panelists in cases under the Policy has emerged that a complainant is required to make out a prima facie case that the respondent has no rights or legitimate interests in a domain name and that once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating such rights or legitimate interests. [22] In the present proceeding, the Panel is satisfied that the Complainant has made out the requisite prima facie case by way of its submissions that the Respondent was not authorized by the Complainant to use the Complainant's PINTEREST mark or a confusingly similar variant, that the Respondent has not been commonly known by the disputed domain name and that the Respondent is not making a noncommercial or fair use thereof. Furthermore, the Complainant's evidence regarding the use to which the disputed domain name has been put, which appears to target the Complainant's PINTEREST trademark by way of a survey addressed to the "Pinterest Visitor" is also supportive of the notion that the Respondent lacks rights or legitimate interests in the disputed domain name, which is itself a close typographical variant of such mark. [23] In these circumstances the burden of production shifts to the Respondent to bring forward evidence or allegations demonstrating rights or legitimate interests in the disputed domain name. The Respondent, however, has chosen not to file a Response in these proceedings or otherwise to communicate anything which might point towards it having such rights or legitimate interests. The Panel does note that the disputed domain name might also be read as the two words "pine" and "rest", which might well have been the intent of the original registrant of the disputed domain name but the Panel accepts the Complainant's contention that the Respondent is not the original registrant and is a more recent acquirer. In contrast to the original registrant, the Respondent has used the disputed domain name not in connection with any meaning of the words "pine" and "rest" but rather to address the viewer of the associated website as "Pinterest Visitor", that is, the typographical variant representing the Complainant's trademark, and thereafter to deliver to such viewer a variety of unrelated websites or malware. In the Panel's opinion, no rights or legitimate interests can vest in the Respondent by virtue of such activity. [24] Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and therefore that the requirements of paragraph 4(a)(ii) of the Policy have been met. [25] Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith . . . . [26] Typically, a complainant would not prevail on this aspect of the Policy if its trademark rights post-date the creation date of the disputed domain name because the registrant could not have contemplated the complainant's then non-existent right and thus could not have registered the domain name in bad faith (see the discussion at paragraph 3.1 of the WIPO Overview 2.0). In the present case, the Complainant anticipates that difficulty by referencing the Octogen line of decisions, supra, in order to assert that the Policy does not require a complainant to show the conjunctive requirement of both bad faith registration and bad faith use. This Panel subscribes to the traditional and generally accepted view of the conjunctive requirement within this element of the Policy and, rather than rehearsing at length the arguments for and against the alternative interpretation provided by the Octogen trio, simply notes for the sake of brevity that it endorses the detailed analysis on this topic provided by the panel in Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716. [27] Despite this, there are exceptions to the general rule regarding a post-dating trademark, including the circumstance where a domain name has been transferred between unrelated registrants after its creation date, as is alleged here. In such a circumstance, UDRP panels typically assess the registration in bad faith requirement as at the date when the respondent took possession of the disputed domain name and not at its original creation date. In the present matter, the Complainant asserts that the Respondent acquired the disputed domain name in August 2015, thus post-dating the registration of the Complainant's trademark by almost three years. The Complainant bases its assertion on the fact that this is the "last updated" date shown on the corresponding WhoIs record. [28] The Panel is aware that while a change in the "last updated" date on a WhoIs record might indicate a registrant transfer of a domain name, such changes can also be triggered by a renewal or indeed by the making of a variety of different types of amendments to the WhoIs data. Accordingly, the Complainant's case would have been better served by producing entries from historic WhoIs records which might have shown a change of registrants on successive records and thus have placed the matter beyond doubt. In the absence of such records, the Panel has come to the conclusion that it may nevertheless accept the Complainant's assertion on the following basis: First, the Panel considers that it is not wholly improbable that the "last updated" date on a WhoIs record represents the date of transfer to the present holder and, as such, it is not unreasonable to accept that allegation in the absence of countervailing evidence, the majority of which would necessarily be in the hands of the Respondent in its capacity as holder of the disputed domain name. In other words, once such an allegation has been made and the matter is clearly placed in issue by a complainant, the respondent is the party best able to bring forward evidence, which may come from a wide variety of sources, supporting a contrary proposition that it has been the holder of the domain name concerned for a longer period (as this Panel encountered in Qwalify, Inc. v. Domain Administrator, Fundacion Private Whois / Gregory Ricks, WIPO Case No. D2014-0313). [29] Secondly, while the present Complaint lacks the detailed evidence which historic WhoIs records would have provided, the Complainant's averments regarding the identity of the original registrant of the disputed domain name and its past use are also supportive, albeit to a limited degree, of the notion that a transfer has taken place. Taking these two aspects together, the Panel finds on the balance of probabilities, and in particular on the basis of the present record, that the Respondent received a transfer of the disputed domain name after the Complainant's rights in its trademark came into being, notwithstanding the original date of creation of the disputed domain name. While the disputed domain name may have been created by its original registrant for purposes unrelated to the Complainant or its trademark, the Panel is satisfied on the balance of probabilities that the transferee and present Respondent knew of the Complainant's online fame when taking a transfer of the disputed domain name and took such transfer with intent to target the Complainant's trademark. [30] Turning to the present use of the disputed domain name, there is little doubt in the Panel's mind that this constitutes use in bad faith within the meaning of the Policy. In the Panel's opinion, the disputed domain name is being used to capture Internet traffic generated by users of the Complainant's services, in order to deploy malware and gain customer data through confusion generated by the typographical variant of the Complainant's trademark contained within the disputed domain name. That the Respondent deliberately intended to target the Complainant by taking advantage of such typographical variant is demonstrated by its use of the correct spelling of the Complainant's trademark in the legend "Congratulations Pinterest Visitor!" displayed on the associated website. Accordingly, there can be no suggestion that the Respondent acquired the disputed domain name with a good faith motivation associated with the dictionary words "pine" and "rest" which are contained therein. Furthermore, the Respondent has chosen not to answer the Complainant's allegations or provide evidence of any alleged good faith motivation in taking a transfer of or using the disputed domain name. [31] In all of these circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been met. [32] For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <pinerest.com> be transferred to the Complainant. In 2011, ICANN's Board of Directors approved an enormous expansion of the generic top-level domain (gTLD) system beyond the 22 gTLDsfoot_13 then operating. In January, 2012, ICANN began accepting applications from private companies or organizations that wished to administer new gTLDs consisting essentially of any string of characters, including non-Latin characters. In October, 2013, ICANN "delegated" the first new gTLDs: شبكة (Arabic for "web/network", International Domain Registry Pty. Ltd), онлайн (Cyrillic for "online", CORE Association), сайт (Cyrillic for "site", CORE Association) and 游戏 (Chinese for "game(s)", Spring Fields, LLC). From October 2013 through 2022, ICANN delegated over 1,200 new gTLDs. 11 ICANN has established a sophisticated process very much akin to a national trademark registration process for the evaluation of new gTLD applications (which cost $185,000 per gTLD). Objections can be raised against a new gTLD application on the ground, among others, that it conflicts with preexisting trademark rights. Students wishing to know more about this process should consult the ICANN gTLD Applicant Guidebook. Our focus here, however, is not on the implications for trademark owners of the ICANN new gTLD delegation process (though those implications can be profound), but rather on a new system by which trademark owners can oppose the registration of second-level domains within these new gTLDs. For example, if a third-party seeks to register the second-level domain "microsoft" within the شبكة gTLD, (thus microsoft.شبكة ), Microsoft may avail itself of a new means of opposing the registration that is even faster and less expensive that the UDRP. This new process is the Uniform Rapid Suspension System (URS), which largely applies only to second-level domains within new gTLDs established since 2013 and to ccTLDs (country code top-level domains such as .us) that have adopted some variation of the URS. Cf. ECR European Consumer Rights GmbH v. WhoisGuard, Inc., Claim No. FA2012001924132 (Nat'l Arb. Forum, Dec. 30, 2020) (applying the URS to the .org TLD and suspending the domain name verbraucherritter.org). Students wishing to read the URS Procedure may find the document at http://newgtlds.icann.org/en/applicants/urs. The URS is designed for especially clear, essentially "slam-dunk" cases of bad faith second-level domain registration. The URS specifies that the complainant must show: [1] that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed. a. Use can be shown by demonstrating that evidence of use -which can be a declaration and one specimen of current use in commerce -was submitted to, and validated by, the Trademark Clearinghouse. b. Proof of use may also be submitted directly with the URS Complaint. and [2] that the Registrant has no legitimate right or interest to the domain name; and [3] that the domain was registered and is being used in bad faith. URS, 1.2.6.1-1.2.6.3. Note that the URS Procedure explicitly states that "[t]he burden of proof shall be clear and convincing evidence." Id. at 8.2 The URS process is very fast. The URS provider (such as the National Arbitration Forum) must review the complaint within two business days from the filing of the complaint. If the complaint complies with all filing requirements, the URS provider notifies the relevant registry operator, who must "lock" the targeted domain within 24 hours (locking a domain in this context merely means that the registrant cannot make any changes to registration data; the domain still resolves to a website). Within 24 hours of locking the domain, the registry operator must notify the registrant of the complaint. The registrant then has 14 days to file a response of no more than 2,500 words. If the registrant defaults on that 14 day period, the registrant still has six months from the date of a Notice of Default to reopen proceedings de novo. The remedy available to the successful complainant is suspension of the domain name and resolution of the domain to an informational page stating that the domain name has been suspended after a URS proceeding. Unlike the UDRP, the successful complainant cannot win transfer of the domain. The fee for a URS proceeding, which is conducted entirely electronically and only in English, is $375 to $500, depending on the number of domain names complained of. By comparison, UDRP filing fees start at $1500. Below is the first URS decision ever issued, with respect to the domain name facebok.pw. (.pw is the TLD of the Pacific nation of Palau and was the first TLD to adopt the URS). Default Date: September 26, 2013 [2] Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") . RELIEF SOUGHT [3] Complainant requests that the domain name be suspended for the life of the registration. [5] Complainant is Facebook Inc. which lists its address as Menlo Park, CA, USA. Complainant states that since it began doing business in 2004 it has become the world's leading provider of online social networking services with more than 1.11 billion registered users around the world. Complainant also asserts that "it is ranked as the first most visited website in the world, and has the second highest traffic in Slovakia (where the Respondent is based)." Complainant owns numerous domestic and international registrations for its FACEBOOK mark including; FACEBOOK -Community Trade Mark No. 006455687 registered on 07 October 2008. [6] Complainant contends that domain name, <facebok.pw>, is confusingly similar to its FACEBOOK mark, and was registered and is being used in bad faith by the Respondent who has no rights or legitimate interests in the domain name. [7] Respondent is Radoslav Stach whose address is listed as Presnov, Slovakia. Respondent registered the disputed domain name on or about March 26, 2013. Respondent did not provide a response to the Complaint in accordance with the URS rules of procedure; however Respondent did provide correspondence which stated, "Im was offline, could you pleas tell me what I have doing ? I want removed this domain from my account!" IDENTICAL OR CONFUSINGLY SIMILAR [8] The only difference between the Domain Name, <facebok.pw>, and the Complainant's FACEBOOK mark is the absence of one letter ("o") in the Domain Name. In addition, it is well accepted that the top level domain is irrelevant in assessing identity or confusing similarity, thus the ".pw" is of no consequence here. The Examiner finds that the Domain Name is confusingly similar to Complainant's FACEBOOK mark. [9] To the best of the Complainant's knowledge, the Respondent does not have any rights in the name FACEBOOK or "facebok" nor is the Respondent commonly known by either name. Complainant has not authorized Respondent's use of its mark and has no affiliation with Respondent. The Domain Name points to a web page listing links for popular search topics which Respondent appears to use to generate click through fees for Respondent's personal financial gain. Such use does not constitute a bona fide offering of goods or services and wrongfully misappropriates Complainant's mark's goodwill. The Examiner finds that the Respondent has established no rights or legitimate interests in the Domain Name. [10] The Domain Name was registered and is being used in bad faith. [11] The Domain Name was registered on or about March 26, 2013, nine years after the Complainant's FACEBOOK marks were first used and began gaining global notoriety. [12] The Examiner finds that the Respondent has engaged in a pattern of illegitimate domain name registrations (See Complainant's exhibit URS Site Screenshot) whereby Respondent has either altered letters in, or added new letters to, well-known trademarks. Such behavior supports a conclusion of Respondent's bad faith registration and use. Furthermore, the Complainant submits that the Respondent is using the Domain Name in order to attract for commercial gain Internet users to its parking website by creating a likelihood of confusion as to the source, sponsorship or affiliation of the website. The Examiner finds such behavior to further evidence Respondent's bad faith registration and use. DETERMINATION [13] After reviewing the Complainant's submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration. Questions and Comments 1. The Trademark Clearinghouse. To help trademark owners cope with the challenges presented by a greatly expanded domain name system, ICANN oversaw the development of the Trademark Clearinghouse, www.trademark-clearinghouse.com. Trademark owners that register their trademarks with the Clearinghouse (and pay the associated fees) may benefit from two main services. First, the Clearinghouse gives Clearinghouse registrants access to the "Sunrise period" for every new gTLD. During this period (which must last at least 30 days), Clearinghouse registrants enjoy priority registration of their marks as domain names within the new gTLD before that gTLD's domain name registration process is opened up to the general public. To qualify for the Sunrise Service, Clearinghouse registrants must submit proof that they are actually using the mark they have registered with the Clearinghouse. Second, the Clearinghouse will notify Clearinghouse registrants on an ongoing basis of any third-party attempt to register (or eventual success in registering) within a new gTLD a domain name that matches the Clearinghouse registrant's trademark. It is then left to the trademark owner to decide whether to pursue an infringement claim against the third-party domain name applicant or registrant. The Lanham Act does not explicitly provide for secondary liability. Instead, as the court in Tiffany (NJ) Inc. v. eBay Inc. explains, secondary liability in trademark law is an entirely judge-made doctrine. Both of the opinions that follow address secondary liability for providers of services. The first, Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010), has essentially become the law of the land for online auction site liability for infringing conduct occurring on those sites. It focuses on the nature of the knowledge requirement in contributory liability doctrine. The second, Gucci America, Inc. v. Frontline Processing Corp., 721 F.Supp.2d 228 (S.D.N.Y. 2010), involved providers of credit card services. It is a decidedly less influential case, but engages the important issue of how much control a service provider must have over the direct infringer's conduct to be liable for contributory infringement. In reading through Tiffany v. eBay, consider the following questions: • As a policy matter, has the court chosen the most efficient result? Who can more efficiently bear the burden of policing eBay's website for counterfeit Tiffany merchandise? • Are you persuaded that eBay was not willfully blind to the sale of counterfeits on its auction site? Tiffany (NJ) Inc. v. eBay Inc. 600 F.3d 93 (2d Cir. 2010) [1] eBay, Inc. ("eBay"), through its eponymous online marketplace, has revolutionized the online sale of goods, especially used goods. It has facilitated the buying and selling by hundreds of millions of people and entities, to their benefit and eBay's profit. But that marketplace is sometimes employed by users as a means to perpetrate fraud by selling counterfeit goods. [2] Plaintiffs Tiffany (NJ) Inc. and Tiffany and Company (together, "Tiffany") have created and cultivated a brand of jewelry bespeaking high-end quality and style. Based on Tiffany's concern that some use eBay's website to sell counterfeit Tiffany merchandise, Tiffany has instituted this action against eBay, asserting various causes of action-sounding in trademark infringement, trademark dilution and false advertising-arising from eBay's advertising and listing practices. For the reasons set forth below, we affirm the district court's judgment with respect to Tiffany's claims of trademark infringement and dilution but remand for further proceedings with respect to Tiffany's false advertising claim. [3] By opinion dated July 14, 2008, following a week-long bench trial, the United States District Court for the Southern District of New York (Richard J. Sullivan, Judge) set forth its findings of fact and conclusions of law. Tiffany (NJ) Inc. v. eBay, Inc., 576 F.Supp.2d 463 (S.D.N.Y. 2008) ("Tiffany"). When reviewing a judgment following a bench trial in the district court, we review the court's findings of fact for clear error and its conclusions of law de novo. Giordano v. Thomson, 564 F.3d 163, 168 (2d Cir. 2009). Except where noted otherwise, we conclude that the district court's findings of fact are not clearly erroneous. We therefore rely upon those non-erroneous findings in setting forth the facts of, and considering, this dispute. [4] eBay 1 is the proprietor of www.ebay.com, an Internet-based marketplace that allows those who register with it to purchase goods from and sell goods to one another. It "connect[s] buyers and sellers and [ ] enable[s] transactions, which are carried out directly between eBay members." Tiffany, 576 F.Supp.2d at 475. 2 In its auction and listing services, it "provides the venue for the sale [of goods] and support for the transaction[s], [but] it does not itself sell the items" listed for sale on the site, id. at 475, nor does it ever take physical possession of them, id. Thus, "eBay generally does not know whether or when an item is delivered to the buyer." Id. [5] eBay has been enormously successful. More than six million new listings are posted on its site daily. Id. At any given time it contains some 100 million listings. Id. [6] eBay generates revenue by charging sellers to use its listing services. For any listing, it charges an "insertion fee" based on the auction's starting price for the goods being sold and ranges from $0.20 to $4.80. Id. For any completed sale, it charges a "final value fee" that ranges from 5.25% to 10% of the final sale price of the item. Id. Sellers have the option of purchasing, at additional cost, features "to differentiate their listings, such as a border or bold-faced type." Id. [7] eBay also generates revenue through a company named PayPal, which it owns and which allows users to process their purchases. PayPal deducts, as a fee for each transaction that it processes, 1.9% to 2.9% of the transaction amount, plus $0.30. Id. This gives eBay an added incentive to increase both the volume and the price of the goods sold on its website. Id. Tiffany [8] Tiffany is a world-famous purveyor of, among other things, branded jewelry. Id. at 471-72. Since 2000, all new Tiffany jewelry sold in the United States has been available exclusively through Tiffany's retail stores, catalogs, and website, and through its Corporate Sales Department. Id. at 472-73. It does not use liquidators, sell overstock merchandise, or put its goods on sale at discounted prices. Id. at 473. It does not-nor can it, for that mattercontrol the "legitimate secondary market in authentic Tiffany silvery jewelry," i.e., the market for second-hand Tiffany wares. Id. at 473. The record developed at trial "offere[d] little basis from which to discern the actual availability of authentic Tiffany silver jewelry in the secondary market." Id. at 474. [9] Sometime before 2004, Tiffany became aware that counterfeit Tiffany merchandise was being sold on eBay's site. Prior to and during the course of this litigation, Tiffany conducted two surveys known as "Buying Programs," one in 2004 and another in 2005, in an attempt to assess the extent of this practice. Under those programs, Tiffany bought various items on eBay and then inspected and evaluated them to determine how many were counterfeit. Id. at 485. Tiffany found that 73.1% of the purported Tiffany goods purchased in the 2004 Buying Program and 75.5% of those purchased in the 2005 Buying Program were counterfeit. Id. The district court concluded, however, that the Buying Programs were "methodologically flawed and of questionable value," id. at 512, and "provide[d] limited evidence as to the total percentage of counterfeit goods available on eBay at any given time," id. at 486. The court nonetheless decided that during the period in which the Buying Programs were in effect, a "significant portion of the 'Tiffany' sterling silver jewelry listed on the eBay website . . . was counterfeit," id., and that eBay knew "that some portion of the Tiffany goods sold on its website might be counterfeit," id. at 507. The court found, however, that "a substantial number of authentic Tiffany goods are [also] sold on eBay." Id. at 509. [10] Reducing or eliminating the sale of all second-hand Tiffany goods, including genuine Tiffany pieces, through eBay's website would benefit Tiffany in at least one sense: It would diminish the competition in the market for genuine Tiffany merchandise. See id. at 510 n. 36 (noting that "there is at least some basis in the record for eBay's assertion that one of Tiffany's goals in pursuing this litigation is to shut down the legitimate secondary market in authentic Tiffany goods"). The immediate effect would be loss of revenue to eBay, even though there might be a countervailing gain by eBay resulting from increased consumer confidence about the bona fides of other goods sold through its website. Anti-Counterfeiting Measures [11] Because eBay facilitates many sales of Tiffany goods, genuine and otherwise, and obtains revenue on every transaction, it generates substantial revenues from the sale of purported Tiffany goods, some of which are counterfeit. "eBay's Jewelry & Watches category manager estimated that, between April 2000 and June 2004, eBay earned $4.1 million in revenue from completed listings with 'Tiffany' in the listing title in the Jewelry & Watches category." Id. at 481. Although eBay was generating revenue from all sales of goods on its site, including counterfeit goods, the district court found eBay to have "an interest in eliminating counterfeit Tiffany merchandise from eBay . . . to preserve the reputation of its website as a safe place to do business." Id. at 469. The buyer of fake Tiffany goods might, if and when the forgery was detected, fault eBay. Indeed, the district court found that "buyers . . . complain [ed] to eBay" about the sale of counterfeit Tiffany goods. Id. at 487. "[D]uring the last six weeks of 2004, 125 consumers complained to eBay about purchasing 'Tiffany' items through the eBay website that they believed to be counterfeit." Id. [12] Because eBay "never saw or inspected the merchandise in the listings," its ability to determine whether a particular listing was for counterfeit goods was limited. Id. at 477-78. Even had it been able to inspect the goods, moreover, in many instances it likely would not have had the expertise to determine whether they were counterfeit. Id. at 472 n. 7 ("[I]n many instances, determining whether an item is counterfeit will require a physical inspection of the item, and some degree of expertise on the part of the examiner."). [13] Notwithstanding these limitations, eBay spent "as much as $20 million each year on tools to promote trust and safety on its website." Id. at 476. For example, eBay and PayPal set up "buyer protection programs," under which, in certain circumstances, the buyer would be reimbursed for the cost of items purchased on eBay that were discovered not to be genuine. Id. at 479. eBay also established a "Trust and Safety" department, with some 4,000 employees "devoted to trust and safety" issues, including over 200 who "focus exclusively on combating infringement" and 70 who "work exclusively with law enforcement." Id. at 476. [14] By May 2002, eBay had implemented a "fraud engine," "which is principally dedicated to ferreting out illegal listings, including counterfeit listings." Id. at 477. eBay had theretofore employed manual searches for keywords in listings in an effort to "identify blatant instances of potentially infringing . . . activity." Id. "The fraud engine uses rules and complex models that automatically search for activity that violates eBay policies." Id. In addition to identifying items actually advertised as counterfeit, the engine also incorporates various filters designed to screen out less-obvious instances of counterfeiting using "data elements designed to evaluate listings based on, for example, the seller's Internet protocol address, any issues associated with the seller's account on eBay, and the feedback the seller has received from other eBay users." Id. In addition to general filters, the fraud engine incorporates "Tiffany-specific filters," including "approximately 90 different keywords" designed to help distinguish between genuine and counterfeit Tiffany goods. Id. at During the period in dispute, eBay also "periodically conducted [manual] reviews of listings in an effort to remove those that might be selling counterfeit goods, including Tiffany goods." Id. [15] For nearly a decade, including the period at issue, eBay has also maintained and administered the "Verified Rights Owner ('VeRO') Program"-a "'notice-and-takedown' system" allowing owners of intellectual property rights, including Tiffany, to "report to eBay any listing offering potentially infringing items, so that eBay could remove such reported listings." Id. at 478. Any such rights-holder with a "good-faith belief that [a particular listed] item infringed on a copyright or a trademark" could report the item to eBay, using a "Notice Of Claimed Infringement form or NOCI form." Id. During the period under consideration, eBay's practice was to remove reported listings within twenty-four hours of receiving a NOCI, but eBay in fact deleted seventy to eighty percent of them within twelve hours of notification. Id. [16] On receipt of a NOCI, if the auction or sale had not ended, eBay would, in addition to removing the listing, cancel the bids and inform the seller of the reason for the cancellation. If bidding had ended, eBay would retroactively cancel the transaction. Id. In the event of a cancelled auction, eBay would refund the fees it had been paid in connection with the auction. Id. at 478-79. [17] In some circumstances, eBay would reimburse the buyer for the cost of a purchased item, provided the buyer presented evidence that the purchased item was counterfeit. Id. at 479. 4 During the relevant time period, the district court found, eBay "never refused to remove a reported Tiffany listing, acted in good faith in responding to Tiffany's NOCIs, and always provided Tiffany with the seller's contact information." Id. at 488. [18] In addition, eBay has allowed rights owners such as Tiffany to create an "About Me" webpage on eBay's website "to inform eBay users about their products, intellectual property rights, and legal positions." Id. at 479. eBay does not exercise control over the content of those pages in a manner material to the issues before us. [19] Tiffany, not eBay, maintains the Tiffany "About Me" page. With the headline "BUYER BEWARE," the page begins: "Most of the purported TIFFANY & CO. silver jewelry and packaging available on eBay is counterfeit." Pl.'s Ex. 290 (bold face type in original). It also says, inter alia: The only way you can be certain that you are purchasing a genuine TIFFANY & CO. product is to purchase it from a Tiffany & Co. retail store, via our website (www. tiffany. com) or through a Tiffany & Co. catalogue. Tiffany & Co. stores do not authenticate merchandise. A good jeweler or appraiser may be able to do this for you. [20] In 2003 or early 2004, eBay began to use "special warning messages when a seller attempted to list a Tiffany item." Tiffany, 576 F.Supp.2d at 491. These messages "instructed the seller to make sure that the item was authentic Tiffany merchandise and informed the seller that eBay 'does not tolerate the listing of replica, counterfeit, or otherwise unauthorized items' and that violation of this policy 'could result in suspension of [the seller's] account.'" Id. (alteration in original). The messages also provided a link to Tiffany's "About Me" page with its "buyer beware" disclaimer. Id. If the seller "continued to list an item despite the warning, the listing was flagged for review." Id. [21] In addition to cancelling particular suspicious transactions, eBay has also suspended from its website "'hundreds of thousands of sellers every year,' tens of thousands of whom were suspected [of] having engaged in infringing conduct." Id. at 489. eBay primarily employed a "'three strikes rule'" for suspensions, but would suspend sellers after the first violation if it was clear that "the seller 'listed a number of infringing items,' and '[selling counterfeit merchandise] appears to be the only thing they've come to eBay to do.'" Id. But if "a seller listed a potentially infringing item but appeared overall to be a legitimate seller, the 'infringing items [were] taken down, and the seller [would] be sent a warning on the first offense and given the educational information, [and] told that . . . if they do this again, they will be suspended from eBay.'" Id. (alterations in original). 5 [22] By late 2006, eBay had implemented additional anti-fraud measures: delaying the ability of buyers to view listings of certain brand names, including Tiffany's, for 6 to 12 hours 5 According to the district court, "eBay took appropriate steps to warn and then to suspend sellers when eBay learned of potential trademark infringement under that seller's account." Tiffany, 576 F.Supp.2d at 489. The district court concluded that it was understandable that eBay did not have a "hard-and-fast, one-strike rule" of suspending sellers because a NOCI "did not constitute a definitive finding that the listed item was counterfeit" and because "suspension was a very serious matter, particularly to those sellers who relied on eBay for their livelihoods." Id. The district court ultimately found eBay's policy to be "appropriate and effective in preventing sellers from returning to eBay and re-listing potentially counterfeit merchandise." Id. so as to give rights-holders such as Tiffany more time to review those listings; developing the ability to assess the number of items listed in a given listing; and restricting one-day and three-day auctions and cross-border trading for some brand-name items. Id. at 492. [23] The district court concluded that "eBay consistently took steps to improve its technology and develop anti-fraud measures as such measures became technologically feasible and reasonably available." Id. at 493. [24] At the same time that eBay was attempting to reduce the sale of counterfeit items on its website, it actively sought to promote sales of premium and branded jewelry, including Tiffany merchandise, on its site. Id. at 479-80. Among other things, eBay "advised its sellers to take advantage of the demand for Tiffany merchandise as part of a broader effort to grow the Jewelry & Watches category." Id. at 479. And prior to 2003, eBay advertised the availability of Tiffany merchandise on its site. eBay's advertisements trumpeted "Mother's Day Gifts!," Pl.'s Exs. 392, 1064, a "Fall FASHION BRAND BLOWOUT," Pl.'s Ex. 392, "Jewelry Best Sellers," id., "GREAT BRANDS, GREAT PRICES," Pl.'s Ex. 1064, or "Top Valentine's Deals," Pl.'s Ex. 392, among other promotions. It encouraged the viewer to "GET THE FINER THINGS." Pl.'s Ex. 392. These advertisements provided the reader with hyperlinks, at least one of each of which was related to Tiffany merchandise-"Tiffany," "Tiffany & Co. under $150," "Tiffany & Co," "Tiffany Rings," or "Tiffany & Co. under $50." Pl.'s Exs. 392, 1064. eBay also purchased sponsored-link advertisements on various search engines to promote the availability of Tiffany items on its website. Tiffany, 576 F.Supp.2d at 480. In one such case, in the form of a printout of the results list from a search on Yahoo! for "tiffany," the second sponsored link read "Tiffany on eBay. Find tiffany items at low prices. With over 5 million items for sale every day, you'll find all kinds of unique [unreadable] Marketplace. www.ebay.com." Pl.'s Ex. 1065 (bold face type in original). Tiffany complained to eBay of the practice in 2003, and eBay told Tiffany that it had ceased buying sponsored links. Tiffany, 576 F.Supp.2d at 480. The district court found, however, that eBay continued to do so indirectly through a third party. Id. [25] By amended complaint dated July 15, 2004, Tiffany initiated this action. It alleged, inter alia, that eBay's conduct-i.e., facilitating and advertising the sale of "Tiffany" goods that turned out to be counterfeit-constituted direct and contributory trademark infringement, trademark dilution, and false advertising. On July 14, 2008, following a bench trial, the district court, in a thorough and thoughtful opinion, set forth its findings of fact and conclusions of law, deciding in favor of eBay on all claims. [26] Tiffany appeals from the district court's judgment for eBay. DISCUSSION [27] We review the district court's findings of fact for clear error and its conclusions of law de novo. Giordano v. Thomson, 564 F.3d 163, 168 (2d Cir. 2009). {The court found that eBay did not directly infringe Tiffany's trademark when it used the mark on its website "to describe accurately the genuine Tiffany goods offered for sale on its website" and when it purchased sponsored links on Google and Yahoo! triggered by the Tiffany mark.} [28] The more difficult issue, and the one that the parties have properly focused our attention on, is whether eBay is liable for contributory trademark infringement-i.e., for culpably facilitating the infringing conduct of the counterfeiting vendors. Acknowledging the paucity of case law to guide us, we conclude that the district court correctly granted judgment on this issue in favor of eBay. [29] Contributory trademark infringement is judicially created doctrine that derives from the common law of torts. See, e.g., Hard Rock Cafe Licensing Corp. v. Concession Servs., Inc., 955 F.2d 1143, 1148 (7th Cir. 1992); cf. Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005) ("[T]hese doctrines of secondary liability emerged from common law principles and are well established in the law.") (citations omitted). The Supreme Court most recently dealt with the subject in Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982). There, the plaintiff, Ives, asserted that several drug manufacturers had induced pharmacists to mislabel a drug the defendants produced to pass it off as Ives'. See id. at 847-50. According to the Court, "if a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorially responsible for any harm done as a result of the deceit." Id. at 854. 8 The Court ultimately decided to remand the case to the Court of Like Inwood, Eli Lilly involved an allegation by a plaintiff drug manufacturer that a defendant drug manufacturer had intentionally induced distributors to pass off the defendant's drug to purchasers as the plaintiff's. 265 U.S. at 529-30. The Supreme Court granted the plaintiff's request for an injunction, stating that "[o]ne who induces another to commit a fraud and furnishes the means of consummating it is equally guilty and liable for the injury." Id. at 530-31. In Snow Crest, the Coca-Cola Company claimed that a rival soft drink maker had infringed Coca-Cola's mark because bars purchasing the rival soft drink had substituted it for Coca-Cola when patrons requested a "rum (or whiskey) and Coca-Cola." 64 F.Supp. at 982, 987. Judge Wyzanski entered Appeals after concluding it had improperly rejected factual findings of the district court favoring the defendant manufacturers. Id. at 857-59. [30] Inwood's test for contributory trademark infringement applies on its face to manufacturers and distributors of goods. Courts have, however, extended the test to providers of services. [31] The Seventh Circuit applied Inwood to a lawsuit against the owner of a swap meet, or "flea market," whose vendors were alleged to have sold infringing Hard Rock Café T-shirts. See Hard Rock Café, 955 F.2d at 1148-49. The court "treated trademark infringement as a species of tort," id. at 1148, and analogized the swap meet owner to a landlord or licensor, on whom the common law "imposes the same duty . . . [as Inwood] impose[s] on manufacturers and distributors," id. at 1149; see also Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259 (9th Cir. 1996) (adopting Hard Rock Cafe's reasoning and applying Inwood to a swap meet owner). [32] Speaking more generally, the Ninth Circuit concluded that Inwood's test for contributory trademark infringement applies to a service provider if he or she exercises sufficient control over the infringing conduct. Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 984 (9th Cir. 1999); see also id. ("Direct control and monitoring of the instrumentality used by a third party to infringe the plaintiff's mark permits the expansion of Inwood Lab.'s 'supplies a product' requirement for contributory infringement."). [33] We have apparently addressed contributory trademark infringement in only two related decisions, see Polymer Tech. Corp. v. Mimran, 975 F.2d 58, 64 (2d Cir. 1992) ("Polymer I"); Polymer Tech. Corp. v. Mimran, 37 F.3d 74, 81 (2d Cir. 1994) ("Polymer II"), and even then in little detail. Citing Inwood, we said that "[a] distributor who intentionally induces another to infringe a trademark, or continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, is contributorially liable for any injury." Polymer I, 975 F.2d at 64. [34] The limited case law leaves the law of contributory trademark infringement illdefined. Although we are not the first court to consider the application of Inwood to the Internet, see, e.g., Lockheed, 194 F.3d 980, supra (Internet domain name registrar), we are apparently the first to consider its application to an online marketplace.foot_20 judgment in favor of the defendant primarily because there was insufficient evidence of such illicit substitutions taking place. Id. at 990. In doing so, the court stated that "[b]efore he can himself be held as a wrongdoer o[r] contributory infringer one who supplies another with the instruments by which that other commits a tort, must be shown to have knowledge that the other will or can reasonably be expected to commit a tort with the supplied instrument." Id. at 989. [35] In the district court, the parties disputed whether eBay was subject to the Inwood test. See Tiffany, 576 F.Supp.2d at 504. eBay argued that it was not because it supplies a service while Inwood governs only manufacturers and distributors of products. Id. The district court rejected that distinction. It adopted instead the reasoning of the Ninth Circuit in Lockheed to conclude that Inwood applies to a service provider who exercises sufficient control over the means of the infringing conduct. Id. at 505-06. Looking "to the extent of the control exercised by eBay over its sellers' means of infringement," the district court concluded that Inwood applied in light of the "significant control" eBay retained over the transactions and listings facilitated by and conducted through its website. Id. at 505-07. [36] On appeal, eBay no longer maintains that it is not subject to Inwood. 10 We therefore assume without deciding that Inwood's test for contributory trademark infringement governs. [37] The question that remains, then, is whether eBay is liable under the Inwood test on the basis of the services it provided to those who used its website to sell counterfeit Tiffany products. As noted, when applying Inwood to service providers, there are two ways in which a defendant may become contributorially liable for the infringing conduct of another: first, if the service provider "intentionally induces another to infringe a trademark," and second, if the service provider "continues to supply its [service] to one whom it knows or has reason to know is engaging in trademark infringement." Inwood, 456 U.S. at 854. Tiffany does not argue that eBay induced the sale of counterfeit Tiffany goods on its website-the circumstances addressed by the first part of the Inwood test. It argues instead, under the second part of the Inwood test, that eBay continued to supply its services to the sellers of counterfeit Tiffany 10 Amici do so claim. See Electronic Frontier Foundation et al. Amici Br. 6 (arguing that Inwood should "not govern where, as here, the alleged contributory infringer has no direct means to establish whether there is any act of direct infringement in the first place"). We decline to consider this argument. "Although an amicus brief can be helpful in elaborating issues properly presented by the parties, it is normally not a method for injecting new issues into an appeal, at least in cases where the parties are competently represented by counsel." Universal City Studios, Inc. v. Corley, 273 F.3d 429, 445 (2d Cir. 2001). goods while knowing or having reason to know that such sellers were infringing Tiffany's mark. [38] The district court rejected this argument. First, it concluded that to the extent the NOCIs that Tiffany submitted gave eBay reason to know that particular listings were for counterfeit goods, eBay did not continue to carry those listings once it learned that they were specious. Tiffany, 576 F.Supp.2d at 515-16. The court found that eBay's practice was promptly to remove the challenged listing from its website, warn sellers and buyers, cancel fees it earned from that listing, and direct buyers not to consummate the sale of the disputed item. Id. at 516. The court therefore declined to hold eBay contributorially liable for the infringing conduct of those sellers. Id. at 518. On appeal, Tiffany does not appear to challenge this conclusion. In any event, we agree with the district court that no liability arises with respect to those terminated listings. [39] Tiffany disagrees vigorously, however, with the district court's further determination that eBay lacked sufficient knowledge of trademark infringement by sellers behind other, non-terminated listings to provide a basis for Inwood liability. Tiffany argued in the district court that eBay knew, or at least had reason to know, that counterfeit Tiffany goods were being sold ubiquitously on its website. Id. at 507-08. As evidence, it pointed to, inter alia, the demand letters it sent to eBay in 2003 and 2004, the results of its Buying Programs that it shared with eBay, the thousands of NOCIs it filed with eBay alleging its good faith belief that certain listings were counterfeit, and the various complaints eBay received from buyers claiming that they had purchased one or more counterfeit Tiffany items through eBay's website. Id. at 507. Tiffany argued that taken together, this evidence established eBay's knowledge of the widespread sale of counterfeit Tiffany products on its website. Tiffany urged that eBay be held contributorially liable on the basis that despite that knowledge, it continued to make its services available to infringing sellers. Id. at 507-08. [40] The district court rejected this argument. It acknowledged that "[t]he evidence produced at trial demonstrated that eBay had generalized notice that some portion of the Tiffany goods sold on its website might be counterfeit." Id. at 507 (emphasis in original). The court characterized the issue before it as "whether eBay's generalized knowledge of trademark infringement on its website was sufficient to meet the 'knowledge or reason to know' prong of the Inwood test." Id. at 508 (emphasis in original). eBay had argued that "such generalized knowledge is insufficient, and that the law demands more specific knowledge of individual instances of infringement and infringing sellers before imposing a burden upon eBay to remedy the problem." Id. [41] The district court concluded that "while eBay clearly possessed general knowledge as to counterfeiting on its website, such generalized knowledge is insufficient under the Inwood test to impose upon eBay an affirmative duty to remedy the problem." Id. at 508. The court reasoned that Inwood's language explicitly imposes contributory liability on a defendant who "continues to supply its product [-in eBay's case, its service-] to one whom it knows or has reason to know is engaging in trademark infringement." Id. at 508 (emphasis in original). The court also noted that plaintiffs "bear a high burden in establishing 'knowledge' of contributory infringement," and that courts have been reluctant to extend contributory trademark liability to defendants where there is some uncertainty as to the extent or the nature of the infringement. In Inwood, Justice White emphasized in his concurring opinion that a defendant is not "require [d] . . . to refuse to sell to dealers who merely might pass off its goods." Id. at 508-09 (quoting Inwood, 456 U.S. at 861, 102 S.Ct. 2182) (White, J., concurring) (emphasis and alteration in original). 11[42] Accordingly, the district court concluded that for Tiffany to establish eBay's contributory liability, Tiffany would have to show that eBay "knew or had reason to know of specific instances of actual infringement" beyond those that it addressed upon learning of them. Id. at 510. Tiffany failed to make such a showing. [43] On appeal, Tiffany argues that the distinction drawn by the district court between eBay's general knowledge of the sale of counterfeit Tiffany goods through its website, and its specific knowledge as to which particular sellers were making such sales, is a "false" one not required by the law. Appellants' Br. 28. Tiffany posits that the only relevant question is "whether all of the knowledge, when taken together, puts [eBay] on notice that there is a substantial problem of trademark infringement. If so and if it fails to act, [eBay] is liable for contributory trademark infringement." Id. at 29. [44] We agree with the district court. For contributory trademark infringement liability to lie, a service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods. Some contemporary knowledge of which particular listings are infringing or will infringe in the future is necessary. [45] We are not persuaded by Tiffany's proposed interpretation of Inwood. Tiffany understands the "lesson of Inwood" to be that an action for contributory trademark infringement lies where "the evidence [of infringing activity]-direct or circumstantial, taken as a whole-. . . provide[s] a basis for finding that the defendant knew or should have known that its product or service was being used to further illegal counterfeiting activity." Appellants' Br. 30. We think that Tiffany reads Inwood too broadly. Although the Inwood Court articulated a "knows or has reason to know" prong in setting out its contributory liability test, the Court explicitly declined to apply that prong to the facts then before it. See Inwood, 456 U.S. at 852 n. 12, 102 S.Ct. 2182 ("The District Court also found that the petitioners did not continue to provide drugs to retailers whom they knew or should have known were engaging in trademark infringement. The Court of Appeals did not discuss that finding, and we do not address it.") (internal citation omitted). The Court applied only the inducement prong of the test. See id. at 852-59. [46] We therefore do not think that Inwood establishes the contours of the "knows or has reason to know" prong. Insofar as it speaks to the issue, though, the particular phrasing that the Court used-that a defendant will be liable if it "continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement," id. at 854, 102 S.Ct. 2182 (emphasis added)-supports the district court's interpretation of Inwood, not Tiffany's. [47] We find helpful the Supreme Court's discussion of Inwood in a subsequent copyright case, Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984). There, defendant Sony manufactured and sold home video tape recorders. Id. at 419. Plaintiffs Universal Studios and Walt Disney Productions held copyrights on various television programs that individual television-viewers had taped using the defendant's recorders. Id. at 419-20. The plaintiffs contended that this use of the recorders constituted copyright infringement for which the defendants should be held contributorily liable. Id. In ruling for the defendants, the Court discussed Inwood and the differences between contributory liability in trademark versus copyright law. If Inwood's narrow standard for contributory trademark infringement governed here, [the plaintiffs'] claim of contributory infringement would merit little discussion. Sony certainly does not 'intentionally induce[ ]' its customers to make infringing uses of [the plaintiffs'] copyrights, nor does it supply its products to identified individuals known by it to be engaging in continuing infringement of [the plaintiffs'] copyrights. Id. at 439 n. 19 (quoting Inwood, 456 U.S. at 855; emphases added). [48] Thus, the Court suggested, had the Inwood standard applied in Sony, the fact that Sony might have known that some portion of the purchasers of its product used it to violate the copyrights of others would not have provided a sufficient basis for contributory liability. Inwood's "narrow standard" would have required knowledge by Sony of "identified individuals" engaging in infringing conduct. Tiffany's reading of Inwood is therefore contrary to the interpretation of that case set forth in Sony. [49] Although the Supreme Court's observations in Sony, a copyright case, about the "knows or has reason to know" prong of the contributory trademark infringement test set forth in Inwood were dicta, they constitute the only discussion of that prong by the Supreme Court of which we are aware. We think them to be persuasive authority here. 12[50] Applying Sony's interpretation of Inwood, we agree with the district court that "Tiffany's general allegations of counterfeiting failed to provide eBay with the knowledge required under Inwood." Tiffany, 576 F.Supp.2d at 511. Tiffany's demand letters and Buying Programs did not identify particular sellers who Tiffany thought were then offering or would offer counterfeit goods. Id. at 511-13. 13 And although the NOCIs and buyer complaints gave eBay reason to know that certain sellers had been selling counterfeits, those sellers' listings were removed and repeat offenders were suspended from the eBay site. Thus Tiffany failed to demonstrate that eBay was supplying its service to individuals who it knew or had reason to know were selling counterfeit Tiffany goods. [51] Accordingly, we affirm the judgment of the district court insofar as it holds that eBay is not contributorially liable for trademark infringement. [52] Tiffany and its amici express their concern that if eBay is not held liable except when specific counterfeit listings are brought to its attention, eBay will have no incentive to root out such listings from its website. They argue that this will effectively require Tiffany and similarly situated retailers to police eBay's website-and many others like it-"24 hours a day, and 365 days a year." Council of Fashion Designers of America, Inc. Amicus Br. 5. They urge that this is a burden that most mark holders cannot afford to bear. [53] First, and most obviously, we are interpreting the law and applying it to the facts of this case. We could not, even if we thought it wise, revise the existing law in order to better serve one party's interests at the expense of the other's. [54] But we are also disposed to think, and the record suggests, that private market forces give eBay and those operating similar businesses a strong incentive to minimize the counterfeit goods sold on their websites. eBay received many complaints from users claiming to have been duped into buying counterfeit Tiffany products sold on eBay. Tiffany, 576 F.Supp.2d at 487. The risk of alienating these users gives eBay a reason to identify and remove counterfeit listings. 14 Indeed, it has spent millions of dollars in that effort. [55] Moreover, we agree with the district court that if eBay had reason to suspect that counterfeit Tiffany goods were being sold through its website, and intentionally shielded itself from discovering the offending listings or the identity of the sellers behind them, eBay might very well have been charged with knowledge of those sales sufficient to satisfy Inwood's "knows or has reason to know" prong. Tiffany, 576 F.Supp.2d at 513-14. A service provider is not, we think, permitted willful blindness. When it has reason to suspect that users of its service are infringing a protected mark, it may not shield itself from learning of the particular infringing transactions by looking the other way. See, e.g., Hard Rock Café, 955 F.2d at 1149 ("To be willfully blind, a person must suspect wrongdoing and deliberately fail to investigate."); Fonovisa, 76 F.3d at 265 (applying Hard Rock Café's reasoning to conclude that "a swap meet can not disregard its vendors' blatant trademark infringements with impunity"). 15 In the words of the Seventh Circuit, "willful blindness is equivalent to actual knowledge for purposes of the Lanham Act." Hard Rock Café, 955 F.2d at 1149. 16 [56] eBay appears to concede that it knew as a general matter that counterfeit Tiffany products were listed and sold through its website. Tiffany, 576 F.Supp.2d at 514. Without more, however, this knowledge is insufficient to trigger liability under Inwood. The district court found, after careful consideration, that eBay was not willfully blind to the counterfeit sales. Id. at 513. That finding is not clearly erroneous. 17 eBay did not ignore the information it was given about counterfeit sales on its website. {The Court went on to find that eBay was not diluting Tiffany's marks and did not engage in false advertising.} ______________________________________________________________________________ In Perfect 10, Inc. v. Visa Intern. Service Ass'n, 494 F.3d 788 (9th Cir. 2007), the Ninth Circuit declined to hold credit card providers liable for providing payment services to websites that infringed the plaintiff's copyrights in pornographic images. Judge Kozinski dissented. See id. at 810 (Kozinski, J., "dissenting for the most part"). In the following opinion, the S.D.N.Y. considered whether to hold credit card processors liable for trademark counterfeiting on the ground that they provided credit card payment services to website operators that sold counterfeit merchandise. 15 To be clear, a service provider is not contributorially liable under Inwood merely for failing to anticipate that others would use its service to infringe a protected mark. Inwood, 456 U.S. at 854 n. 13, 102 S.Ct. 2182 (stating that for contributory liability to lie, a defendant must do more than "reasonably anticipate" a third party's infringing conduct (internal quotation marks omitted)). But contributory liability may arise where a defendant is (as was eBay here) made aware that there was infringement on its site but (unlike eBay here) ignored that fact. 16 The principle that willful blindness is tantamount to knowledge is hardly novel. See, e.g. Harte-Hanks Commc'ns, Inc. v. Connaughton, 491 U.S. 657, 659, 692, 109 S.Ct. 2678, 105 L.Ed.2d 562 (1989) (concluding in public-official libel case that "purposeful avoidance of the truth" is equivalent to "knowledge that [a statement] was false or [was made] with reckless disregard of whether it was false" (internal quotation marks omitted)); United States v. Khorozian, 333 F.3d 498, 504 (3d Cir. 2003) (acting with willful blindness satisfies the intent requirement of the federal bank fraud statute) . . . . 17 Tiffany's reliance on the "flea market" cases, Hard Rock Café and Fonovisa, is unavailing. eBay's efforts to combat counterfeiting far exceeded the efforts made by the defendants in those cases. See Hard Rock Café, 955 F.2d at 1146 (defendant did not investigate any of the seizures of counterfeit products at its swap meet, even though it knew they had occurred); Fonovisa, 76 F.3d at 265 (concluding that plaintiff stated a claim for contributory trademark infringement based on allegation that swap meet "disregard[ed] its vendors' blatant trademark infringements with impunity"). Moreover, neither case concluded that the defendant was willfully blind. The court in Hard Rock Café remanded so that the district court could apply the correct definition of "willful blindness," 955 F.2d at 1149, and the court in Fonovisa merely sustained the plaintiff's complaint against a motion to dismiss, 76 F.3d at 260-61, 265. HAROLD BAER, JR., District Judge: [1] Gucci America, Inc. is a well-known manufacturer of luxury goods. The company holds a variety of trademarks in its products and designs, and invests substantial capital in ensuring that the marks maintain a reputation for quality. Seeking to capitalize on the popularity of Gucci products, certain internet merchants have sold "replica," counterfeit Gucci products that infringe Gucci marks at significantly lower prices and of lower quality. Gucci recently concluded a successful litigation against one such merchant that operated a website called TheBagAddiction.com. The owners of the website admitted that they sold counterfeit Gucci products to customers across the country through the website. In its continuing effort to root out and prevent infringement of its trademarks, Gucci now brings suit against three entities, which while a step down in the "food chain," allegedly ensured that TheBagAddiction.com was able to sell these counterfeit products. These defendants allegedly established the credit card processing services used to complete the online sales of fake Gucci items. The three defendants have jointly moved to dismiss the case for lack of personal jurisdiction and for failure to state a claim. For the reasons that follow, the defendants' motion to dismiss is DENIED. [2] Gucci America, Inc. ("Plaintiff" or "Gucci") is a New York company, with its principal place of business in New York City. Compl. ¶ 11. It is the sole, exclusive distributor in the United States of items labeled with the "Gucci Marks," including leather goods, jewelry, home products, and clothing. Id. The Gucci Marks are a series of marks-the Gucci name, the Gucci crest, the "non-interlocking GG monogram," the "repeating GG design," etc.-registered by Gucci with the United States Patent and Trademark Office. See Compl. ¶ ¶ 24-25 (reproduction of marks), Ex. 1 (Patent Office registration certificates). According to Plaintiff, the marks are well-known and recognizable in the United States and around the world. Gucci promotes the marks widely, and relies on "strict quality control standards" for its products, and as a result has achieved and retains a reputation for quality. Id. ¶ 28. The company spends hundreds of millions of dollars to advertise and promote its products and marks, and enjoys billions in sales of the Gucci products. "Based on the extensive sales of the Gucci [p]roducts and such products' wide popularity," claims Plaintiff, "the Gucci Marks have developed a secondary meaning and significance in the minds of the purchasing public, and the services and products utilizing and/or bearing such marks and names are immediately identified by the purchasing public with Plaintiff." Id. ¶ 30. [3] This case arises out of Plaintiff's attempts to eliminate online sales of counterfeit products and the unauthorized use of the Gucci Marks. In Gucci America, Inc., et al. v. Laurette Company, Inc., et al., No. 08 Civ. 5065(LAK), Gucci brought suit in this District against certain defendants, collectively known as the "Laurette Counterfeiters" or "Laurette," for the sale of counterfeit Gucci products on a website called "TheBagAddiction.com."foot_25 Through this website, the Laurette Counterfeiters sold a variety of "replica" luxury products, and, in particular, sold replica Gucci products under the Gucci name, with the various Gucci registered trademarks, and at fractions of the retail price for an authentic version. See Compl. ¶ ¶ 33-36 (describing and providing images of counterfeit Gucci products sold on TheBagAddiction.com). The website itself was replete with the use of the Gucci name and trademarks. See id. ¶ 41 (image of TheBagAddiction.com website). According to Plaintiff, the Laurette Counterfeiters "openly boasted" about the sale of counterfeit products, because the website expressly noted that the products were not authentic but rather "mirror images" of Gucci products. See id. ¶ 32. Though they are inferior in quality and workmanship, they appear to the naked eye to be similar if not identical to Gucci products. Gucci claims that, as a result of the sale of these counterfeit products, customers were deceived and misled "into believing that the products sold by the Laurette Counterfeiters on TheBagAddiction.com were authorized or sponsored by the Plaintiff." Id. ¶ 40. Eventually, Laurette consented to the entry of judgment and admitted liability for counterfeiting activities. According to Plaintiff, "the Laurette [c]ounterfeiters admitted . . . that, without authorization or license . . . they willfully and intentionally used, reproduced and/or copied the Gucci [m]arks in connection with their manufacturing, distributing, exporting, importing, advertising, marketing, selling and/or offering to sell their [c]ounterfeit [p]roducts." Id. ¶ 31. [4] Plaintiff now seeks to bring the present action against three companies, Durango Merchant Services, Frontline Processing Corporation, and Woodforest National Bank, 2 who allegedly assisted the Laurette Counterfeiters and other similar website operators. Durango Merchant Services ("Durango") is a Wyoming corporation with its business address in Durango, Colorado. . . . Durango's business is predicated on assisting merchants in setting up credit card processing services with institutions that provide credit card merchant accounts. . . . Frontline Processing Corporation ("Frontline") is a Nevada corporation with its principal place of business in Bozeman, Montana. Frontline is a "nationwide provider of credit card processing and electronic payment services for merchants, banks, and sales agents," and is an "Independent Service Organization" and "Merchant Service Provider" with Visa and MasterCard, respectively. Compl. ¶ 58. . . . Finally, Woodforest National Bank ("Woodforest") is a bank organized under the laws of the United States, with its business address in The Woodlands, Texas. Similar to Frontline, Woodforest also "provides certain credit card processing services." Id. ¶ 14. . . . [5] To understand the roles of the three defendants and their alleged liability, a summary explanation of the credit card transaction process is necessary. A customer will initiate the process when he or she purchases a product from the merchant with a credit card. Once the credit card information is "swiped" on a terminal, or entered on a website, the merchant terminal transmits an authorization request to the merchant's "acquiring bank," who in this case was Frontline and Woodforest. The acquiring bank sends the credit card request through an electronic network to the cardholder's issuing bank. Based on the cardholder's credit limit or other factors, the issuing bank will send a message back through the network to the acquiring bank, who forwards it back to the merchant, which states that the merchant should either approve or decline the transaction. If approved, the merchant will complete the transaction and the acquiring bank will credit the merchant's account with the appropriate amount of funds. This entire process typically takes a matter of seconds. Some days to months after the sale is completed, the acquiring bank will submit the transaction information to the issuing bank, which will seek payment from the cardholder and settle with the acquiring bank. [6] Gucci's overarching theory of the case is that Durango arranged for web companies that sold counterfeit Gucci products to establish credit card processing services with companies like Woodforest and Frontline. These processors then provided the credit card services necessary for the sale of the faux Gucci items. The complaint focuses largely on the allegedly representative conduct of Defendants with the Laurette Counterfeiters. According to Plaintiff, Durango acted as an agent for the defendant credit card processing companies 3 to locate potential customers, including the Laurette Counterfeiters and other similar infringing online operations. Durango collected a referral fee for bringing together these online merchants with banks and companies like Frontline and Woodforest. Durango's website billed the company as specializing in services for "High Risk Merchant Accounts," including those who sell "Replica Products." Compl. ¶ 48. Gucci alleges that the Laurette Counterfeiters entered into a "Merchant Service Agreement" with Durango through one of its sales representatives, Nathan Counley and, through this relationship, "procur[ed] merchant accounts with credit card processing agencies, including Defendants Frontline and Woodforest." Id. ¶ 51. Gucci asserts that, through email and other documents, Durango was aware that TheBagAddiction.com sold counterfeit "replica" Gucci products and nevertheless chose to do business with them. . . . . [7] Gucci maintains that the credit card processing services established by these three defendants was essential to the Laurette Counterfeiters' sale of counterfeit Gucci products. These services "facilitated the Laurette Counterfeiters ability to quickly and efficiently 3 Neither party has provided sufficiently clear terminology to describe Woodforest or Frontline. For the purposes of this opinion, terms like "acquiring bank" and "credit card processors" are intended to have the same meaning and do not imply anything about their services beyond what is alleged in the complaint. transact sales for [c]ounterfeit [p]roducts through their website by enabling customers to use personal credit cards to pay for purchases on TheBagAddiction.com." Compl. ¶ 87. Without credit card processing, Plaintiff claims, websites like TheBagAddiction.com could not operate or functionally exist. As such, Gucci believes that Durango, Frontline, and Woodforest are equally responsible for the infringement and counterfeiting engaged in by Laurette through their website. Based on these allegations, Plaintiff brings causes of action for (1) trademark infringement and counterfeiting under the Lanham Act, 15 U.S.C. § § 1114, 1125, 1116, 1117; (2) contributory trademark infringement and counterfeiting pursuant to the Lanham Act; (3) vicarious liability for trademark infringement and counterfeiting under the Lanham Act; and (4) trademark infringement and unfair competition under New York state law, see N.Y. Gen. Bus. Law § § 360-k, 360-o. Defendants jointly moved to dismiss these claims based on a purported lack of personal jurisdiction, and because Plaintiff has failed to state a claim, pursuant to Rule 12(b)( 2) and ( 6) of the Federal Rules of Civil Procedure. A. Personal Jurisdiction {The court found personal jurisdiction over the defendants.} B. Trademark Infringement Liability 1. Standard of review [8] To survive a motion to dismiss, a plaintiff must "plead enough facts to state a claim to relief that is plausible on its face." Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). A facially plausible claim is one where "the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Ashcroft v. Iqbal, ---U.S. ----, 129 S. Ct. 1937Ct. , 1949Ct. (2009)). . . . [9] . . . Gucci offers three theories of liability to hold Defendants accountable for the infringing sales of counterfeit products by others: direct, vicarious, and contributory liability. 62. Direct and Vicarious Liability [10] Gucci has not put forth sufficient factual allegations to support trademark infringement claims based on either direct or vicarious theories of liability. . . . The problem for Gucci is that there is no indication that any of the defendants actually "used the mark in commerce." Knowledge alone of another party's sale of counterfeit or infringing items is insufficient to support direct liability, see eBay, 600 F.3d at 103, and there are otherwise no factual allegations that Durango, Woodforest, or Frontline themselves advertised or sold infringing goods. [11] Gucci's allegations are also unable to support a claim for vicarious liability. Vicarious trademark infringement, a theory of liability considered elsewhere but not yet the subject of a decision by this Circuit, "requires a finding that the defendant and the infringer have an apparent or actual partnership, have authority to bind one another in transactions with third parties or exercise joint ownership or control over the infringing product." Hard Rock Cafe Licensing Corp. v. Concession Servs., Inc., 955 F.2d 1143, 1150 (7th Cir. 1992); Perfect 10, Inc. v. Visa Intern. Serv. Ass'n, 494 F.3d 788, 807 (9th Cir. 2007) . . . . Though Gucci has raised a number of factual allegations that indicate that Defendants' services were crucial to a website like TheBagAddiction.com's sale of infringing goods, there is insufficient evidence to plausibly infer an actual or apparent partnership. The vague, puffery-like references to a "partnership" between these companies and website merchants are not enough to support vicarious liability. See Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 591 F.Supp.2d 1098, 1113 (N.D.Cal. 2008) ("off-hand references to customers as 'partners' is insufficient to exhibit the type of behavior and relationship that can be considered an actual or apparent partnership."). While Defendants may have sufficient control over the sale of counterfeit goods to support contributory liability, see infra, the facts alleged do not support an inference that they had the type of control over a company like Laurette as a whole, i.e. akin to joint ownership, necessary for vicarious liability. [12] Gucci's only plausible theory of liability here is contributory trademark infringement. The Supreme Court has determined that liability can extend "beyond those who actually mislabel goods with the mark of another." Inwood Lab., Inc. v. Ives Lab., Inc., 456 U.S. 844, 853 (1982) . . . . As the Seventh Circuit noted, however, the Supreme Court's test for contributory liability is not as easily applied to service providers as it is to a manufacturer. See Hard Rock, 955 F.2d at 1148 ("it is not clear how the doctrine applies to people who do not actually manufacture or distribute the good that is ultimately palmed off as made by someone else"); see also Tiffany Inc. v. eBay, Inc., 576 F.Supp.2d 463, 504 (S.D.N.Y. 2008) (reversed on other grounds). While the "intentional inducement" prong of the Inwood test still applies, see eBay, 600 F.3d at 106, courts have crafted a slightly different test for service providers that "continue [ ] to supply its [services] to one whom it knows or has reason to know is engaging in trademark infringement." Inwood, 456 U.S. at 853. To avoid imputing liability on truly ancillary figures like a "temporary help service" that may set up a flea market stand for a counterfeiting merchant, see Hard Rock, 955 F.2d at 1148, courts in other circuits have determined that a plaintiff must also show "direct control and monitoring of the instrumentality used by a third party to infringe the plaintiff's mark." See, e.g., Perfect 10, 494 F.3d at 807; Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 984 (9th Cir. 1999). While the Second Circuit has yet to directly contemplate the validity of this modified part of the Inwood test, I concur with Judge Sullivan that this is a "persuasive synthesis." See eBay, 576 F.Supp.2d at 505-06. As such, Gucci can proceed with its action against Defendants if it can show that they (1) intentionally induced the website to infringe through the sale of counterfeit goods or (2) knowingly supplied services to websites and had sufficient control over infringing activity to merit liability. (a) Intentional Inducement [13] A party can be held liable for trademark infringement if it intentionally induces another to engage in trademark infringement. With regards to the role played by Durango, Plaintiff's inducement theory is supported by sufficient factual allegations. Durango's website reaches out to "high risk merchant accounts," including those who sell "replica products." Id. ¶ 48. The website further boasts that 95% of merchant accounts are approved and that Durango "specialize[s] in hard to acquire accounts." See Coyle Decl., Ex. 10 (printed copies of Durango website pages). Similar to the companies that promise the extension of credit or loans to those who are rejected by traditional lending institutions for having bad credit, Gucci's complaint suggests that Durango bills itself as a company that sets up a certain quality of business with credit card processing services that accept these "high risk" clients. These allegations can fairly be construed as Durango's attempt to induce less savory businesses, like those who sell counterfeit "replicas" of luxury goods. Moreover, Gucci alleges that Durango's sales representative, Nathan Counley, specifically discussed Laurette's difficulty in finding a credit card processor because they were "replica" merchants, which Gucci argues was synonymous on the internet for a counterfeiter. 7 Durango "communicated an inducing message to [its] . . . users," and while there is of yet no evidence that they expressly sought out counterfeiters, Gucci has pled sufficient facts to infer that Durango crafted "advertisement[s] or solicitation[s] that broadcast[ ] a message designed to stimulate others to commit violations." Perfect 10, 494 F.3d at 801 (discussing contributory copyright infringement, but suggesting later that the analysis applies to trademark infringement as well). Finally, Gucci alleges that Counley and Durango helped the Laurette Counterfeiters set up a system to avoid chargebacks, which required customers to check a box that said "I understand these are replicas." This suggests "affirmative steps taken to foster infringement" or "that Defendants promoted their payment system as a means to infringe." Id. at 800-01. [14] On the other hand, Gucci has failed to plausibly support a claim that either Woodforest or Frontline intentionally induced Laurette to sell counterfeit products. Durango, not Woodforest or Frontline, helped set up the Laurette Counterfeiters with credit card processing services. Though both companies allegedly advertised for high risk merchants, they did not bring Laurette to the table the way Durango allegedly did. Gucci notes that they both charged higher fees for processing high risk merchants, and that Frontline reviewed the language of the aforementioned acknowledgement of receipt of a replica product. These 7 Defendants challenge the meaning of both "replica" and "high risk," and claim that both are much more innocuous terms than Gucci suggests. First, "replica" is in fact often used in conjunction, or interchangeably, with the term "counterfeit" in case law on trademark infringement. See, e.g., Hermes Int'l v. Lederer de Paris Fifth Ave., Inc., 219 F.3d 104, 106 (2d Cir. 2000) ("Appellees Lederer and Artbag sell replicas of various Hermès products"); eBay, 600 F.3d at 100 (Defendant internet auction house has disclaimer that it "does not tolerate" replicas); Akanoc, 591 F.Supp.2d at 1103 ("Plaintiff believes that each of them is a counterfeit replica of Plaintiff's products which infringe Plaintiff's copyrights and trademarks."). Second, the precise meaning of the term is a fact-specific issue that can be dealt with through discovery, and I may rely on Gucci's pleadings at this stage of the litigation. claims, however, are not enough to suggest that either Woodforest or Frontline took the affirmative steps necessary to foster infringement. See Perfect 10, 494 F.3d at 801. (b) Control and knowledge [15] Even if a defendant does not seek out and intentionally induce a third-party to commit trademark infringement, it may still be held liable for the infringement if it supplied services with knowledge or by willfully shutting its eyes to the infringing conduct, while it had sufficient control over the instrumentality used to infringe. See eBay, 576 F.Supp.2d at 505-06; Perfect 10, 494 F.3d at 807. Knowledge in this context means that "a service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods . . . [s]ome contemporary knowledge of which particular listings are infringing or will infringe in the future is necessary." eBay, 600 F.3d at 107. A showing of willful blindness to this information is also sufficient. Id. at 109-10 ("When [a service provider] has reason to suspect that users of its service are infringing a protected mark, it may not shield itself from learning of the particular infringing transactions by looking the other way."). [16] Here, Gucci has made substantial factual allegations about the knowledge of all three defendants. These allegations at the very least provide a strong inference that each knew that Laurette traded in counterfeit products, or were willfully blind to that fact. As described previously, Durango allegedly held itself out to high risk replica merchants. Its sales agent, Counley, traded emails with the Laurette Counterfeiters who expressly told him that they were unable to get credit card services because they sold "replica" items. Counley later wrote back to say he had found a U.S. bank that "can do replica accounts now." Compl. ¶ 54. Surely, a connection between an inability to get the services needed to transact goods online and the sale of replicas should have attracted Durango's attention. [17] Frontline likewise is alleged to have sufficient knowledge of trademark infringement by the Laurette Counterfeiters. According to Gucci, Laurette completed an application to obtain Frontline's services, and Nathan Counley, though a Durango employee, is listed as Frontline's sales agent. Counley "acted as Frontline's agent in soliciting and directing credit card processing business from replica merchants like the Laurette Counterfeiters" and therefore Frontline may be charged with his knowledge, including his understanding of Laurette's difficulty to obtain services for selling replicas. Compl. ¶ 56. Gucci alleges that the "replica acknowledgment" described above that was created for the Laurette website with Counley's assistance was also reviewed by Frontline, who made suggestions as to where they should place this warning on the website. Even more significantly, Frontline allegedly performed its own investigation of products sold through TheBagAddiction.com as part of Frontline's chargeback reviews. When faced with a chargeback, Gucci claims that Frontline received supporting documentation from Laurette that included information about the specific item ordered, including a description of the item purchased. Not only did Frontline allegedly review the specific item description, Plaintiff also claims that the relatively small price tag for the item, as well as specific complaints from customers who made chargebacks about not receiving what the website purported to sell, e.g. a product made of genuine leather, should have alerted Frontline that these were infringing products. These fact-specific claims are enough to at least infer that Frontline knew or consciously avoided knowing that the counterfeit products were sold on TheBagAddiction.com [18] Gucci claims that Woodforest's situation is similar to Frontline. As was the case with Frontline, Counley represented himself on Laurette's application as Woodforest's sales agent. See Compl. ¶ 72. The application itself said that Laurette was a "wholesale/retail designer [of] handbags," and listed the supplier as a Chinese bag manufacturer rather than Gucci. See Compl., Ex. 6. Gucci also claims that Woodforest specifically reviewed the website and the products listed on it as part of its initial decision to do business with Laurette. A Woodforest employee allegedly completed an "Internet Merchant Review Checklist," which required him or her to review the website and confirm whether it contained a complete description of the goods offered. See Compl. ¶ 75. Based on these claims and the website images provided by Plaintiff, even a cursory review of the TheBagAddiction.com would indicate that they claimed to sell replica Gucci products. Indeed, Plaintiff alleges that Woodforest printed out a number of pages that displayed goods that were for sale, including counterfeit Gucci products, and maintained these pages as part of their business records. Woodforest would also perform a second-level review, performed repeatedly after it accepted the business, where an employee would complete a purchase and request a refund. Finally, like Frontline, Woodforest investigated chargeback disputes and received supporting documentation that allegedly should have tipped them off to the infringing conduct. These claims are more than sufficient to suggest, at this stage of the litigation, that Woodforest knew or shielded themselves from the knowledge that Laurette was selling counterfeit Gucci products with their credit card processing system. [19] The most significant dispute between the parties with regard to contributory liability is whether any or all of the Defendants had sufficient control over Laurette and TheBagAddiction.com website to render them liable for the web merchant's counterfeiting practices. As noted above, the control element was incorporated by the Seventh Circuit to establish a limiting principle that would exclude those service providers that do not really contribute to the infringing conduct; this Circuit has yet to directly consider the merits or contours of this modified form of the Inwood test. See eBay, 600 F.3d at 105-06 (noting control element but "assum[ing] without deciding that Inwood 's test for contributory trademark infringement governs"). Although the concept of control arose out of the flea market context and is based on common law landlord-tenant tort principles, see Hard Rock, 955 F.2d at 1149-50, the concept of control is not limited to that context. Inwood "laid down no limiting principle that would require defendant to be a manufacturer or distributor," and "whether the venue is online or in brick and mortar is immaterial." eBay, 576 F.Supp.2d at 505; see also Fonovisa, Inc. v [20] Here, Plaintiff provides sufficient factual allegations to establish a claim that Woodforest and Frontline had some control over the directly infringing third-party, but fails to provide enough facts to show control on the part of Durango. Though Gucci has made an adequate showing of intentional inducement by Durango, there is little indication that they had much control over the website's sales process. Durango appears to be the veritable middleman in this case. Though there allegedly was an ongoing relationship between Durango and the Laurette Counterfeiters, Gucci provides little indication that once Laurette received services from Frontline and Woodforest, Durango had any particular ability to stop or prohibit sales. Plaintiff's allegations suggest both inducement and knowledge, but "procuring merchant accounts with credit card processing agencies," Compl. ¶ 51, does not demonstrate that Durango could thereafter prevent the sale of any or all of the counterfeit products. [21] In contrast, Gucci's complaint indicates that Frontline and Woodforest's credit card processing services are a necessary element for the transaction of counterfeit goods online, and were essential to sales from TheBagAddiction.com. Although other methods of online payment exist, such as online escrow-type services like PayPal, generally speaking "credit cards serve as the primary engine of electronic commerce." Perfect 10, 494 F.3d at 794. Indeed, Gucci points out that Durango's website claims that "9 out of 10 people use a credit card for their online orders." Compl. ¶ 3. As such, without the credit card processing operation set up by these two defendants, Gucci alleges that TheBagAddiction.com would largely have been unable to sell its counterfeit Gucci products. They further support this claim with an affidavit by one of the website owners, who states that "[a]pproximately 99% of payments from my customers were made using credit cards." Kirk Decl. ¶ 1. Both Frontline and Woodforest processed transactions for cardholders with major credit card institutions-Visa, MasterCard, and so forth-and, according to Gucci, Laurette sold over $500,000 in counterfeit products "during the time they utilized Defendants' merchant bankcard services." Compl. ¶ 44. By processing these transactions, both companies allegedly earned significant revenue from the transaction fees they charged. Put another way, "[t]hey knowingly provide a financial bridge between buyers and sellers of [counterfeit products], enabling them to consummate infringing transactions, while making a profit on every sale." Perfect 10, 494 F.3d at 810-11 (Kozinski, J., dissenting). 9 Though both Frontline and Woodforest insist they are middlemen with no ability to prevent a transaction, they do not dispute that they could have simply refused to do business with "replica" internet merchants, just like the flea market purveyor who refuses to provide a booth to a counterfeiter. See Compl. ¶ ¶ 87-89 (Woodforest and Frontline "facilitated the Laurette Counterfeiters ability to quickly and efficiently transact sales for Counterfeit Products through their website by enabling customers to use personal credit cards to pay for purchases on TheBagAddiction.com"). According to one of the website operators, "[i]f I did not receive an approval for a credit card charge, I would not ship the customer's order." Kirk Decl. ¶ 2. These allegations indicate that the infringing products "are delivered to the buyer only after defendants approve the transaction . . . This is not just an economic incentive for infringement; it's an essential step in the infringement process." Perfect 10, 494 F.3d at 811-12 (Kozinski, J., dissenting). [22] Frontline and Woodforest insist that these allegations are insufficient because they do not allege direct or complete control over the website itself. However, the ability to literally shut down the website is not needed given the facts of this case. The circuits that have considered this issue look for control and monitoring over the "instrumentality used . . . to infringe the plaintiff's mark." Perfect 10, 494 F.3d at 807. Based on Gucci's claims, the instrumentality in this case is the combination of the website and the credit card network, since both are allegedly necessary elements for the infringing act-the sale and distribution of the counterfeit good. 10 Defendants' rely on the fact that, in Perfect 10, the Ninth Circuit declined to hold certain credit card processors liable for a website's trademark infringement. There, however, the infringing conduct was the publication on the website of trademarked images of nude models, and the distribution occurred via individuals viewing and taking the image directly from the website. See Perfect 10, 494 F.3d at 796 ("the infringement rests on the reproduction, alteration, display and distribution of Perfect 10's images over the internet"); Perfect 10, Inc. v. Visa Inter. Serv. Assoc., No. C 04-00371, 2004 WL 3217732 (N.D.Cal. Dec. 3, 2004) ("Plaintiff alleges that a number of websites routinely and illicitly publish Plaintiff's images-and thereby infringe."). Plaintiff in that case failed or perhaps was unable to allege that the credit card service providers had the "power to remove infringing material" or "directly stop their distribution" because the infringement occurred on the website itself and a credit card transaction was not needed for the website to continue to infringe. See Perfect 10, 494 F.3d at 807. This is not the case here. [23] Rather, Gucci's allegations indicate that they are concerned primarily with the sale of tangible counterfeit goods to customers around the country, which allegedly could not be accomplished without Woodforest and Frontline's ability to process the credit card-based purchases. In the words of the Supreme Court, these defendants "furnish[ed] the means of consummating" the trademark infringement. See eBay, 600 F.3d at 104 (quoting William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 530, 44 S.Ct. 615, 68 L.Ed. 1161 (1924)). While in Perfect 10 the credit card services may not have been needed for a website to display infringing photographs, the infringement here occurred through the sale of the counterfeit products. "It's not possible to distribute by sale without receiving compensation, so payment is in fact part of the infringement process." Perfect 10, 494 F.3d at 814 (Kozinski, J., dissenting). This action resembles cases with defendants who helped consummate infringing transactions by delivering the counterfeit or infringing goods to the customer. In Getty Petroleum Corp. v. Aris Getty, Inc., the First Circuit found a defendant common carrier contributorily liable because it delivered unbranded gasoline to gas stations it knew would re-sell the gasoline under the Getty brand name. See 55 F.3d 718, 719 (1st Cir. 1995). Lack of title to the gasoline did not matter; the defendant "supplied[ ] an essential factor-physical possession of the property to which the trademark was to be attached." Id. at 720. Similarly, these defendants allegedly provided an "essential factor" to the infringement because the goods could not be sold and shipped without their credit card services. "[I]t makes no difference that defendants control only the means of payment, not the mechanics of transferring the material . . . In a commercial environment, distribution and payment are . . . like love and marriage-you can't have one without the other. If cards don't process payments, pirates don't deliver booty." Perfect 10, 494 F.3d at 818 (Kozinski, J., dissenting). If, as Gucci alleges, the Laurette website was functionally dependent upon Woodforest and Frontline's credit card processing services to sell counterfeit Gucci products, it would be sufficient to demonstrate the control needed for liability. [24] Gucci has sufficiently alleged facts to support personal jurisdiction and its trademark claims against Durango, Woodforest, and Frontline. Although Plaintiff has not sufficiently pled facts to support either direct or vicarious theories of liability, claims against all three defendants may proceed based on a contributory liability theory. The factual allegations are sufficient to infer that Durango intentionally induced trademark infringement, and that Woodforest and Frontline exerted sufficient control over the infringing transactions and knowingly provided its services to a counterfeiter. [25] For the foregoing reasons, Defendant's motion to dismiss is DENIED. SO ORDERED. Since Tiffany v. eBay, non-internet, brick-and-mortar defendants have sought to take advantage of Tiffany v. eBay's defendant-friendly reformulation of contributory liability doctrine in trademark law. As the following case demonstrates, they have not been successful. JILL PRYOR, Circuit Judge: [1] Luxury eyewear manufacturers holding registered trademarks brought a contributory trademark infringement action under the Lanham Act against owners of a discount mall whose subtenants were selling counterfeit eyewear. At trial, the jury returned a verdict in the plaintiffs' favor. After careful review and with the benefit of oral argument, we conclude that none of the issues the defendants raise on appeal demonstrates reversible error, so we affirm the jury's verdict. [2] Plaintiffs Luxottica Group, S.p.A. and its subsidiary Oakley, Inc. (collectively and individually "Luxottica") manufacture and sell luxury eyewear and own registered trademarks for the Ray-Ban and Oakley brands. Defendants Jerome and Jenny Yeh own defendant Yes Assets, LLC. In 2004, Yes Assets purchased the Old National Village Shopping Center in College Park, Georgia. The Shopping Center included about 30 store fronts as well as an approximately 79,000-square-foot indoor space (the "Mall"), which contained between 120 and 130 booths to lease to individual vendors. Defendant Alice Jamison, the Yehs' daughter, managed the Shopping Center. Her responsibilities included reviewing leases, collecting rent, and visiting the Shopping Center and Yes Assets' tenants, including the lessee of the Mall. [3] Until December 1, 2009, Yes Assets leased the Mall to a tenant, who assigned it to a subtenant, who subleased it to former Georgia congressman Pat Swindall, who in turn subleased the booths to vendors. From December 1, 2009 forward, Yes Assets leased the Mall to defendant Airport Mini Mall, LLC ("AMM"), a company Jerome and Jenny created and later gave to their son, defendant Donald Yeh, and the Mall became known as the International Discount Mall, AMM's tradename. Under the lease agreement, Yes Assets provided AMM and its subtenants (the vendors in the 120 to 130 booths) with a variety of services-including lighting, water, sewerage, maintenance and repairs, painting, and cleaning-and a parking area for customers. Greg Dickerson, whom Jerome hired as AMM's property manager, subleased the booths to vendors and reported to Jamison and Jerome until 2013, when Jerome had a stroke, and to Jamison and Donald afterward. [4] AMM's tenure as the Mall's landlord saw three law enforcement raids there, during which officers executed search warrants, arrested subtenants, and seized alleged counterfeits of Luxottica eyewear and other brands' products. After the first raid, law enforcement left a copy of the search warrant and a list of items seized, including eyewear bearing Luxottica's marks, at the raided booth. The second raid lasted more than 14 hours and involved approximately 30 federal and local law enforcement agents who shut down the Mall to execute search warrants, arrested subtenants for selling counterfeit goods, seized thousands of counterfeit items bearing Luxottica's marks, and loaded the items onto a tractor-trailer parked in front of the Shopping Center. Dickerson witnessed the second raid from the Shopping Center's parking lot and notified Jamison, Donald, and Jerome and Jenny's attorney, Louis Bridges. Dickerson later walked through the Mall to compile a list of the booths where law enforcement had seized goods and informed Jamison, Jerome, and Bridges about his inquiries of subtenants regarding the raid and whether they were selling counterfeit items. Each subtenant denied selling counterfeit merchandise, but Jamison admitted that she would expect the subtenants to lie if they were selling counterfeit goods. On Bridges' advice, the defendants decided to take no action against the subtenants unless the subtenants were convicted of a crime. More than a year after Luxottica filed this lawsuit, police executed several more search warrants at the Mall and seized additional counterfeit items bearing Luxottica's marks. [5] Luxottica twice sent letters notifying the defendants that their subtenants were not authorized to sell Luxottica's eyewear and that any mark resembling Ray-Ban or Oakley marks would indicate that the glasses were counterfeit. The second letter also identified specific booths Luxottica suspected of selling counterfeit eyewear. Jamison and Donald were aware of both letters. Dickerson visited the booths named in the second letter but made no attempt to determine whether those vendors' eyewear products were counterfeit or to terminate their leases. After Luxottica filed this lawsuit, Jamison and Bridges attended a meeting at the College Park Police Department to discuss the unlawful selling of counterfeit products at the Mall. [6] Despite the raids, letters, and meeting with law enforcement, the defendants took no steps to evict the infringing subtenants; they even renewed leases with several of the subtenants who had been arrested during the 14-plus-hour raid. In the month leading up to the filing of this lawsuit, Isabel Rozo, an employee of Luxottica's private investigator Geanie Johansen, purchased and photographed $15 and $20 counterfeit Ray-Ban glasses at several booths. Ray-Ban glasses normally retail for $140 to $220 a pair. [7]. . . After an 11-day trial, the jury returned a special verdict holding all defendants except Jenny liable for contributory trademark infringement and assessing $100,000 in damages for each infringed trademark, totaling $1.9 million in damages. Having moved for judgment as a matter of law after the close of all the evidence, the defendants renewed their motion, which the district court denied. . . . . [8] In support of its theory that the defendants had at least constructive knowledge of their subtenants' infringement, Luxottica presented evidence tending to show that the defendants exhibited willful blindness to the subtenants' unlawful conduct. Across the circuits, a consensus has developed that willful blindness is one way to show that a defendant had constructive knowledge in cases of contributory trademark infringement. . . . {S}ee also United States v. Baxter Int'l, Inc., 345 F.3d 866, 902 (11th Cir. 2003) (holding, in the context of the Medicare Secondary Payer statute, that "[a] party that willfully blinds itself to a fact . . . can be charged with constructive knowledge of that fact"). Willful blindness occurs when a person "suspect[s] wrongdoing and deliberately fail[s] to investigate." Hard Rock Cafe, 955 F.2d at 1149. We agree with the other circuits that willful blindness is a form of constructive knowledge for contributory trademark infringement. We evaluate the strength of Luxottica's evidence regarding willful blindness and constructive knowledge in Part III.A.3. . . . . [9] Pursuing a knowledge theory of contributory trademark infringement, Luxottica sought to prove that the defendants knew or had reason to know that their subtenants were selling counterfeit items yet continued to supply services (space, utilities, maintenance, and parking) that enabled the subtenants to sell their goods. The question that arises-[ ] one of first impression for this Court-is whether the knowledge theory of contributory liability requires the plaintiff to prove that the defendant had actual or constructive knowledge of specific infringing acts. We need not answer this question, however, because even if liability for contributory trademark infringement requires the defendant to have knowledge of specific acts of direct infringement, the evidence in this case was sufficient for a reasonable jury to find that the defendants had at least constructive knowledge of (or were willfully blind to) specific acts of direct infringement by their subtenants. [10] The defendants argue that the district court should have applied what they deem a stricter standard from Tiffany (NJ) v. eBay Inc., 600 F.3d 93 (2d Cir. 2010), in ruling on their renewed motion for judgment as a matter of law. In Tiffany, the jewelry titan sued the online listing service eBay for contributory trademark infringement because vendors listed counterfeit Tiffany products for sale on eBay's website. Whenever Tiffany notified eBay of a direct infringer's identity, eBay delisted the vendor within 24 hours. But, by itself, eBay was unable to identify and block each direct infringer, even with 200 employees focused on that task, because its website contained 100 million listings, and eBay lacked the ability to inspect goods in person and the expertise to distinguish Tiffany products from non-Tiffany products. "For contributory trademark infringement liability to lie," the Second Circuit held, "a service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods. Some contemporary knowledge of which particular listings are infringing or will infringe in the future is necessary." Id. at 107. Because Tiffany's demand letters identified no additional sellers of counterfeit goods other than the sellers eBay had already delisted, eBay lacked actual or constructive knowledge of the remaining direct infringers. The court thus upheld the bench trial verdict in favor of eBay. [11] The defendants articulate Tiffany's legal standard for contributory trademark infringement as whether "Plaintiffs provide[d] notice to Defendants that a particular seller was then selling counterfeit versions of Plaintiffs' product." Appellants' Initial Br. at 22 (internal quotation marks omitted). The defendants err, though, in asserting that Tiffany narrowed the sources of a defendant's actual or constructive knowledge to just one: notice by the trademark holders. Tiffany did not categorically shift the burden onto trademark holders to provide notice to defendants; it simply clarified that certain facts of the case-a marketplace of 100 million listings and eBay's inability to inspect goods in person and lack of expertise to distinguish Tiffany from non-Tiffany jewelry-made it unlikely that eBay could identify the infringing vendors on its own, without help from Tiffany. Tiffany, 600 F.3d at 97-98, 109. In arguing that it was Luxottica's burden to notify the defendants of the infringing subtenants' identities, the defendants fail to acknowledge that actual or constructive knowledge of the direct infringers' identities could arise from many sources, including steps the defendants could have taken to investigate alleged direct infringement at the Mall after being put on notice by Luxottica that unnamed subtenants' may have been selling counterfeit Luxottica products. [12] In any event, we need not decide today whether a defendant must be found to have had knowledge of specific acts of direct infringement for contributory liability to attach. Even if specific knowledge is necessary, the trial evidence was sufficient to prove that the defendants had at least constructive knowledge of specific instances where their subtenants infringed Luxottica's marks. Unlike in Tiffany, the defendants here did not need Luxottica's help to identify the infringing subtenants. Although Inwood created "no affirmative duty to take precautions against the sale of counterfeits," Hard Rock Cafe, 955 F.2d at 1149, the jury reasonably could have found that Luxottica's notice letters would have prompted a reasonable landlord to do at least a cursory visual inspection of the Mall's 130 booths to determine which vendors displayed eyewear with Luxottica's marks and sold it at prices low enough-$15 or $20 a pair for glasses that typically retail at $140 to $220 a pair-to alert a reasonable person that it was counterfeit. Similarly, the jury reasonably could have found that a cursory visual inspection of 130 booths to see if they displayed what appeared to be counterfeit Luxottica eyewear was not so burdensome as to relieve the defendants of the responsibility to investigate after being informed by Luxottica that unnamed subtenants may have been engaging in illegal activity. [13] What's more, previously we have held that evidence of "serious and widespread" infringement makes it more likely that a defendant knew about the infringement. Mini Maid Servs. Co. v. Maid Brigade Sys., Inc., 967 F.2d 1516, 1522(11th Cir. 1992). The three law enforcement raids-one of which lasted over 14 hours and required a tractor-trailer to haul away the seized merchandise-evidenced "serious and widespread" violations that gave the defendants at least constructive knowledge that their subtenants were selling counterfeit goods. Id. After the 14-plus-hour raid, Dickerson, the defendants' property manager, walked through the Mall; compiled a list of booths where law enforcement had seized goods; and informed Jerome, Jamison, and Bridges about his conversations with subtenants regarding the raid and whether they were selling counterfeit products. The record evidence of (1) the raids, arrests, and seizures, (2) the meeting at the College Park Police Department Jamison and Bridges attended where they discussed the sale of counterfeit goods at the Mall, and (3) the defendants' ability to visually inspect the approximately 130 booths was, taken together, sufficient to support a jury finding that the defendants had at least constructive knowledge of, or were willfully blind to learning, which subtenants were directly infringing Luxottica's trademarks. [14] In sum, evidence of the defendants' knowledge of specific infringing acts by subtenants who relied on the services the defendants provided (including space, utilities, and maintenance) amply supported the jury verdict. 1. Tiffany v. eBay and Canal Street. A Canal Street landlord sought to use the specific knowledge standard in Tiffany v. eBay to escape secondary liability for the continuing sale of counterfeit OMEGA watches by unnamed individuals operating out of its building as either tenants or subtenants. (Canal Street is a major street in New York City at the northern edge of Manhattan's Chinatown.) As the defendants would in Luxottica, the landlord 375 Canal argued that while it had been made aware of previous unnamed individuals selling counterfeits from its building, it did not have specific knowledge of the counterfeit sales that were the subject of the current suit, which were made by different unnamed individuals (whom the landlord basically claimed not to be able to tell apart). Omega argued before the jury that 375 Canal was willfully blind to the identities of its tenants and the jury agreed, finding that 375 Canal was contributorily liable (and awarding $1.1 million in statutory damages). Finding no error in the jury instructions, the Second Circuit distinguished eBay's conduct in Tiffany: Omega introduced evidence from which a jury could find that Canal had a history of turning a blind eye toward counterfeiting at 375 Canal Street and that Canal had taken insufficient steps to root out the counterfeiting it knew or should have known was occurring . . . . Canal insists that the verdict below portends widespread liability even for innocent actors. But Tiffany made clear that contributory trademark infringement based on willful blindness does not create liability simply because of a defendant's "general knowledge as to counterfeiting on its" property, id. at 107, or because a defendant "fail [ed] to anticipate that others would use its service to infringe a protected mark," id. at 110 n.15. Tiffany provided a test for identifying which scenarios could result in liability: "[C]ontributory liability may arise where a defendant is . . . made aware that there was infringement on its site but . . . ignored that fact." Id. There is no inherent duty to look for infringement by others on one's property. Indeed, the district court's jury instructions correctly stated that Canal had no affirmative duty to police trademarks: "Even if 375 Canal has control over the premises, 375 Canal has no affirmative duty to take precautions against the sale of counterfeit goods or to seek out and prevent alleged trademark violations, and cannot be found liable if it simply fails to take reasonable preemptive precautions against sales of counterfeit items." J. App'x 2629. But where a defendant knows or should know of infringement, whether that defendant may be liable for contributory infringement turns on what the defendant does next. If it undertakes bona fide efforts to root out infringement, such as eBay did in Tiffany, that will support a verdict finding no liability, even if the defendant was not fully successful in stopping infringement. But if the defendant decides to take no or little action, it will support a verdict finding liability. See Coach, Inc. v. Goodfellow, 717 F.3d 498, 505 (6th Cir. 2013) (upholding liability because the defendant knew or had reason to know of infringement yet continued to lease vending space "without undertaking a reasonable investigation or taking other appropriate remedial measures"). Omega SA v. 375 Canal, LLC, 984 F.3d 244, 254-55 (2d Cir. 2021). Earlier in the opinion, the court referenced such reasonable precautions as "posting anti-counterfeiting signs, conducting walk-throughs, or inspecting the property for hidden compartments that could contain counterfeit goods." Id. at 249. Trademark rights are subject to a number of limitations. Certain of these take the form of affirmative defenses on which the defendant bears the ultimate burden of persuasion. For example, even if a court finds that a defendant is causing a likelihood of confusion, the defendant may escape liability if it can show by a preponderance of the evidence that it was engaging in descriptive fair use (Part III.A) or that the plaintiff has abandoned its mark (Part III.D). Other limitations on trademark rights are implemented through modifications to the likelihood of confusion test that tend to shield the defendant from liability. For example, if the defendant's conduct qualifies as a nominative fair use (Part III.B) or an expressive use such as a parody (Part III.C), a court may add additional, defendant-friendly factors to the standard multifactor test for the likelihood of consumer confusion or replace the multifactor test outright with an alternative test. Though trademark lawyers may speak loosely of these doctrines as "defenses," they are not true affirmative defenses. Instead they are modifications of the test for infringement. In such situations, the plaintiff typically continues to bear the ultimate burden of persuasion on the question of whether the defendant has infringed the plaintiff's mark. In a typical descriptive fair use situation, the plaintiff uses a term as a trademark (e.g., SWEETARTS for candy) that the defendant also uses merely to describe its own goods (e.g., "sweet-tart" to describe the taste of OCEAN SPRAY cranberry juice). See Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055 (7th Cir. 1995) (finding defendant's descriptive, nontrademark use of the term "sweet-tart" to be a descriptive fair use); Sorensen v. WD-40 Co., 792 F.3d 712, 722 (7th Cir. 2015) ("The hypothetical producer of 'Crunchy' brand potato chips, for example, cannot block its competitors from describing their chips as crunchy. It may, though, be able to block its competitors from selling chips that are branded 'Crunchy.'"). The affirmative defense of descriptive fair use (sometimes called "classic" fair use) is based on Lanham Act § 33(b)(4), 15 U.S.C. § 1115(b)(4), which establishes a defense to trademark infringement on the ground: (4) That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin; We begin our review of descriptive fair use in Part III.A.1 with KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U. S. 111 (2004). KP Permanent does not apparently set forth any specific test that the circuits should apply to adjudicate a descriptive fair use claim. The opinion is included here primarily because of the importance of the Court's clear holding that in analyzing descriptive fair use, a court may find the defendant's conduct to be a descriptive fair use even if that conduct causes some degree of consumer confusion as to source. We then turn in Part III.A.2 to the basic three-step test that most courts apply to evaluate a claim of descriptive fair use. In KP Permanent, the declaratory plaintiff KP Permanent Make-Up, Inc. used the term "microcolor" in advertisements for its "permanent makeup" (shown below on the right). The defendant had previously registered the trademark MICRO COLORS at the PTO (on the left). In the excerpt that follows, the Supreme Court finally overruled the Ninth Circuit's bizarre doctrine that any likelihood of consumer confusion defeats a defense of descriptive fair use. [4] Starting from these textual fixed points, it takes a long stretch to claim that a defense of fair use entails any burden to negate confusion. It is just not plausible that Congress would have used the descriptive phrase "likely to cause confusion, or to cause mistake, or to deceive" in § 1114 to describe the requirement that a markholder show likelihood of consumer confusion, but would have relied on the phrase "used fairly" in § 1115(b)(4) in a fit of terse drafting meant to place a defendant under a burden to negate confusion. "'[W]here Congress includes particular language in one section of a statute but omits it in another section of the same Act, it is generally presumed that Congress acts intentionally and purposely in the disparate inclusion or exclusion.'" Russello v. United States, 464 U.S. 16, 23 (1983) (quoting United States v. Wong Kim Bo, 472 F.2d 720, 722 (C.A.5 1972); alteration in original). 4[5] Nor do we find much force in Lasting's suggestion that "used fairly" in § 1115(b)(4) is an oblique incorporation of a likelihood-of-confusion test developed in the common law of unfair competition. Lasting is certainly correct that some unfair competition cases would stress that use of a term by another in conducting its trade went too far in sowing confusion, and would either enjoin the use or order the defendant to include a disclaimer. See, e.g., Baglin v. Cusenier Co., 221 U.S. 580, 602 (1911) ("[W]e are unable to escape the conclusion that such use, in the manner shown, was to serve the purpose of simulation . . ."); Herring-Hall-Marvin Safe Co. v. Hall's Safe Co., 208 U.S. 554, 559 (1908) ("[T]he rights of the two parties have been reconciled by allowing the use, provided that an explanation is attached"). But the common law of unfair competition also tolerated some degree of confusion from a descriptive use of words contained in another person's trademark. See, e.g., William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 528 (1924) (as to plaintiff's trademark claim, "[t]he use of a similar name by another to truthfully describe his own product does not constitute a legal or moral wrong, even if its effect be to cause the public to mistake the origin or ownership of the product"); Canal Co. v. Clark, 13 Wall. 311, 327, 20 L.Ed. 581 (1872) ("Purchasers may be mistaken, but they are not deceived by false representations, and equity will not enjoin against telling the truth"); see also 3 L. Altman, Callmann on Unfair Competition, Trademarks and Monopolies § 18:2, pp. 18-8 to 18-9, n. 1 (4th ed. 2004) (citing cases). While these cases are consistent with taking account of the likelihood of consumer confusion as one consideration in deciding whether a use is fair, see Part II-B, infra, they do not stand for the proposition that an assessment of confusion alone may be dispositive. Certainly one cannot get out of them any defense burden to negate it entirely. [6] Finally, a look at the typical course of litigation in an infringement action points up the incoherence of placing a burden to show nonconfusion on a defendant. If a plaintiff succeeds in making out a prima facie case of trademark infringement, including the element of likelihood of consumer confusion, the defendant may offer rebutting evidence to undercut the force of the plaintiff's evidence on this (or any) element, or raise an affirmative defense to bar relief even if the prima facie case is sound, or do both. But it would make no sense to give the defendant a defense of showing affirmatively that the plaintiff cannot succeed in proving some element (like confusion); all the defendant needs to do is to leave the factfinder unpersuaded that the plaintiff has carried its own burden on that point. A defendant has no need of a court's true belief when agnosticism will do. Put another way, it is only when a plaintiff has shown likely confusion by a preponderance of the evidence that a defendant could have any need of an affirmative defense, but under Lasting's theory the defense would be foreclosed in such a case. "[I]t defies logic to argue that a defense may not be asserted in the only situation where it even becomes relevant." Shakespeare Co. v. Silstar Corp., 110 F.3d, at 243. Nor would it make sense to provide an affirmative defense of no confusion plus good faith, when merely rebutting the plaintiff's case on confusion would entitle the defendant to judgment, good faith or not. . . . . B [7] Since the burden of proving likelihood of confusion rests with the plaintiff, and the fair use defendant has no free-standing need to show confusion unlikely, it follows (contrary to the Court of Appeals's view) that some possibility of consumer confusion must be compatible with fair use, and so it is. The common law's tolerance of a certain degree of confusion on the part of consumers followed from the very fact that in cases like this one an originally descriptive term was selected to be used as a mark, not to mention the undesirability of allowing anyone to obtain a complete monopoly on use of a descriptive term simply by grabbing it first. Canal Co. v. Clark, 13 Wall., at 323-324, 327. The Lanham Act adopts a similar leniency, there being no indication that the statute was meant to deprive commercial speakers of the ordinary utility of descriptive words. "If any confusion results, that is a risk the plaintiff accepted when it decided to identify its product with a mark that uses a well known descriptive phrase." Cosmetically Sealed Industries, Inc. v. Chesebrough-Pond's USA Co., 125 F.3d, at 30. See also Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 201 (1985) (noting safeguards in Lanham Act to prevent commercial monopolization of language); Car-Freshner Corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267, 269 (C.A.2 1995) (noting importance of "protect[ing] the right of society at large to use words or images in their primary descriptive sense"). 5 This right to describe is the reason that descriptive terms qualify for registration as trademarks only after taking on secondary meaning as "distinctive of the applicant's goods," 15 U.S.C. § 1052(f), with the registrant getting an exclusive right not in the original, descriptive sense, but only in the secondary one associated with the markholder's goods, 2 McCarthy, supra, § 11:45, p. 11-90 ("The only aspect of the mark which is given legal protection is that penumbra or fringe of secondary meaning which surrounds the old descriptive word"). [8] While we thus recognize that mere risk of confusion will not rule out fair use, we think it would be improvident to go further in this case, for deciding anything more would take us beyond the Ninth Circuit's consideration of the subject. It suffices to realize that our holding that fair use can occur along with some degree of confusion does not foreclose the relevance of the extent of any likely consumer confusion in assessing whether a defendant's use is objectively fair. Two Courts of Appeals have found it relevant to consider such scope, and commentators and amici here have urged us to say that the degree of likely consumer confusion bears not only on the fairness of using a term, but even on the further question whether an originally descriptive term has become so identified as a mark that a defendant's use of it cannot realistically be called descriptive. [9] Since we do not rule out the pertinence of the degree of consumer confusion under the fair use defense, we likewise do not pass upon the position of the United States, as amicus, that the "used fairly" requirement in § 1115(b)(4) demands only that the descriptive term describe the goods accurately. Tr. of Oral Arg. 17. Accuracy of course has to be a consideration in assessing fair use, but the proceedings in this case so far raise no occasion to evaluate some other concerns that courts might pick as relevant, quite apart from attention to confusion. The Restatement raises possibilities like commercial justification and the strength of the plaintiff's mark. Restatement § 28. As to them, it is enough to say here that the door is not closed. III [10] In sum, a plaintiff claiming infringement of an incontestable mark must show likelihood of consumer confusion as part of the prima facie case, 15 U.S.C. § 1115(b), while the defendant has no independent burden to negate the likelihood of any confusion in raising the affirmative defense that a term is used descriptively, not as a mark, fairly, and in good faith, § 1115(b)(4). [11] Because we read the Court of Appeals as requiring KP to shoulder a burden on the issue of confusion, we vacate the judgment and remand the case for further proceedings consistent with this opinion. 6 In your view, was summary judgment appropriate in both of the following cases? Solid 21, Inc. v. Breitling U.S.A., Inc. 96 F.4th 265 (2d Cir. 2024) Wesley, Circuit Judge: [1] This is a trademark case about wristwatches and "red gold." Defendant-Appellee Breitling, a luxury watch manufacturer, uses the term "red gold" in its advertisements, product listings, and catalogues. Plaintiff-Appellant Solid 21, a luxury jewelry and watch business, has owned a trademark in RED GOLD® since 2003, using it since 1989. The question in this case is whether Breitling's use of the term "red gold" constitutes fair usegood faith use of a trademark to describe a Breitling product. We hold that Breitling established its fair use defense as a matter of law. BACKGROUND [2] Gold wristwatches come in different colors, usually occurring when manufacturers combine pure gold with other metals like and silver, changing their overall appearance. Left untouched, pure gold is yellow. With the addition of silver, gold takes on a whiter tone; copper creates a reddish or pinkish color. [3] Beginning as early as the mid-nineteenth century, trade dictionaries, jewelry makers, and newspapers referred to these combinations with terms like "yellow gold," "white gold," "red gold," "blue gold," and "pink gold." Throughout the twentieth century, many newspapers, advertisements, magazines, textbooks, and other reference materials used the term "red gold" to describe the gold-copper combination. Though the term "rose gold" is commonly used today, references to "red gold" continue; from 2001 to 2017, the Wristwatch Annual included more than 1,300 references to "red gold" by fifty-three different watchmakers. [4] Appellant Solid 21 is a luxury watch and jewelry business founded by Chris Aire, a high-profile jeweler; his roster of celebrity clients call him "Iceman" and the "King of Bling." In 2002, Aire filed a trademark application for "RED GOLD®" with the United States Patent and Trademark Office ("USPTO") for "[f]ine jewelry made of a special alloying of gold with a distinct color made into fine jewelry." It was registered as a trademark in 2003. Today, RED GOLD® is a collection of jewelry under the Solid 21 name-a "brand" which includes some products made of what Solid 21 describes as "amber hue gold," and is meant to "appeal in particular to male clients." Solid 21 proclaims that its RED GOLD® mark is "pure genius." that Lasting made those concessions only as to KP's use of "microcolor" on bottles and flyers in the early 1990's, not as to the stylized version of "microcolor" that appeared in KP's 1999 brochure. See Opposition to Motion for Summary Judgment/Adjudication in Case No. SA CV 00-276-GLT (EEx) (CD Cal.), pp. 18-19; Appellants' Opening Brief in No. 01-56055(CA9), pp. 31-32. We also note that the fair use analysis of KP's employment of the stylized version of "microcolor" on its brochure may differ from that of its use of the term on the bottles and flyers. and social media posts: [9] In Breitling's print advertisement above, the words "[available in stainless steel or 18k red gold" appear in lowercase and in small font at the bottom right of the advertisement, directly under an enlarged picture of the reddish and pinkish watch. In one of the product listings on Breitling's website, the words "18k Red Gold -Silver" appear in smaller font directly under the model name of the watch, "NAVITIMER AUTOMATIC 41." Other website listings display the words "Stainless Steel & 18k Red Gold" under the bolded, larger model name "NAVITIMER B01 CHRONOGRAPH 46." Breitling's social media posts use the term as well; "red[ ]gold" appears in hashtags after other words like "breitling," "navitimer," "automatic," "diamonds," and "steel," and directly next to a picture of a watch with a reddish/pinkish hue. [10] Solid 21 and Aire accused Breitling of stealing their business by using the term "red gold" to confuse customers over the source of Breitling's products. In 2010 and 2011, Solid 21 originally filed trademark infringement suits against Breitling and several other watch companies in the Central District of California. Pursuant to a tolling agreement, Solid 21 refiled this suit against Breitling in 2019 in the District of Connecticut, asserting claims for trademark infringement under the Lanham Act, along with related claims under state law. Solid 21's complaint alleged that Breitling's use of the term "red gold" was "likely to cause confusion, reverse confusion, mistake, and/or deception as to the source" of Breitling's watches, and that consumers would mistakenly believe that Solid 21 was affiliated with Breitling's products. [11] Breitling moved for summary judgment on the grounds that the term "red gold" was generic and the trademark registration was invalid, or alternatively, that Breitling's use of the term fell under the Lanham Act's "fair use" defense, which permits the use of a protected mark to describe one's goods so long as the use is in good faith and not as a mark. See 15 U.S.C. § 1115(b)(4). After first denying Breitling's motion for summary judgment, the district court granted Breitling's reconsideration motion and entered judgment for Breitling on the fair use defense. 7[12] Though the district court found in its initial decision that Breitling did not carry its burden of showing descriptive use because Breitling could have used alternative terms like "rose gold" in lieu of "red gold,"foot_36 on reconsideration, the court reexamined our precedents and determined that the mere existence of alternative terms did not preclude summary judgment, and that the images of Breitling's product materials made clear that it was using the term "red gold" descriptively. 9 The court also determined that Breitling satisfied the good faith element of its fair use defense. The district court cited our Circuit's law that "knowledge alone is insufficient for a finding of bad faith," and found that, even if Breitling knew about Solid 21's prior use of the mark, there was "no other evidence of bad faith." The district court granted summary judgment for Breitling, and this appeal followed. We affirm. [13] { } "Fair use is a defense to liability under the Lanham Act even if a defendant's conduct would otherwise constitute infringement of another's trademark." Cosmetically Sealed Indus., Inc. v. Chesebrough-Pond's USA Co., 125 F.3d 28, 30 (2d Cir. 1997). This defense permits "use . . . otherwise than as a mark . . . of a term . . . which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin." 15 U.S.C. § 1115(b)(4). The underlying principle of fair use is that it "protects the right of society at large to use words or images in their primary descriptive sense, as against the claims of a trademark owner to exclusivity." Car-Freshner Corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267, 269 (2d Cir. 1995). "In order to assert a successful fair use defense to a trademark infringement claim, the defendant must prove three elements: that the use was made (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith." Kelly-Brown v. Winfrey, 717 F.3d 295, 308 (2d Cir. 2013). [14] We review a grant of summary judgment de novo and affirm only if there are no genuine issues of material fact and the moving party establishes its right to judgment as a advertising materials leave no dispute that Breitling uses "red gold" to describe its watches' materials and appearance, not as an indication of source. [19] We conclude for the same reasons that Breitling does not use the term "red gold" as a mark. We equate "use as a mark" with the use of a term "as a symbol to attract public attention," or "to identify and distinguish . . . goods [or services] . . . and to indicate [their] source." Tiffany, 971 F.3d at 92 (quoting 15 U.S.C. § 1127). Breitling uses the term "red gold" in smaller print, near other descriptive terms, and near its own Breitling trademark. There is no indication that Breitling uses the term on products themselves. Even in rare instances where Breitling capitalizes "Red Gold" in its social media posts, it also capitalizes the descriptor "Steel." Its "#redgold" tag is likewise buried in a long list of other terms, most of which are descriptive. Though Breitling uses "red gold" in multiple instances, it does so only as often as referring to its watches with red/pink hues. Cf. Kelly-Brown, 717 F.3d at 308-10 (holding that, at the motion-to-dismiss stage, plaintiffs sufficiently alleged that "defendants were trying to create, through repetition across various forms of media, a[n] association between [defendants] and the [trademarked] phrase" where "use was far more . . . varied" involving "wide-ranging content"). [20] Solid 21 argues that Breitling's use is not descriptive because Breitling could have used alternative terms to describe its watches. In Solid 21's telling, "rose gold" is a superior description because it is "a term that is commonly understood and in popular usage among consumers." Appellant's Br. at 39-40. Citing our decision in EMI Catalogue, Solid 21 argues that the availability of alternative and superior terms forecloses summary judgment for Breitling. [21] In EMI Catalogue, a music publisher sued a defendant golf club manufacturer for infringing its trademark in the classic Benny Goodman jazz song, "Sing, Sing, Sing (With a Swing)." 228 F.3d at 59. The defendant ran a television advertisement for a line of golf clubs featuring swing-style stock music along with the words "Swing Swing Swing." Id. at 59-60. Noting that the defendant could have used other terms like "hit," "stroke," "shot," or even the single word "swing" instead of the alliterative "Swing Swing Swing," our Court concluded that summary judgment for the defendant was inappropriate on its fair use defense. Id. at 65-66. sufficed, EMI Catalogue might be decisive. The availability of an alternative does not necessarily neutralize the descriptive meaning "red gold" already engenders. [24] Our conclusion that Breitling used the term "red gold" descriptively is undisturbed by evidence that Breitling once used "rose gold" and "red gold" to describe the same watch. This is not evidence that Breitling's use of either was anything but descriptive. While it undercuts a suggestion that Breitling used the term "red gold" only to describe a watch darker in color (containing more copper) than one in "rose gold," the exact chemical composition and degree of reddish tint in Breitling's watches is not material. "The test of descriptiveness is the meaning attached to the designation by prospective purchasers rather than the scientific meaning" given by chemists and metallurgists. Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 699 (2d Cir. 1961). Unlike the word "gold"-which describes the watch's precious metal-the word "red" describes to consumers only the watch's general color, rather than an exact mixture of copper/gold. Because "red gold" describes Breitling's watches "in a broad sense," accurately "identify[ing] some information" about appearance, it is descriptive. Tiffany, 971 F.3d at 93. 12[25] The availability of alternative terms does not preclude summary judgment here. Concluding otherwise would undermine fair use principles, which recognize the "undesirability of allowing anyone to obtain a complete monopoly on use of a descriptive term simply by grabbing it first." KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122 (2004). Solid 21 trademarked the name of a color-red-coupled with the name of a metal: gold. It cannot now "deprive commercial speakers," like Breitling, "of the ordinary utility of descriptive words" by requiring the use of synonyms or alternatives. Id. To the extent this may lead to some consumer confusion, that "is a risk [Solid 21] accepted" when it chose to trademark a descriptive term. Id. [26] The final element of fair use is a showing that the defendant used the mark in good faith. See Kelly-Brown, 717 F.3d at 312. The good faith requirement is not litigated frequently. EMI Catalogue, 228 F.3d at 66. We equate it with "the subsequent user's intent to trade on the good will of the trademark holder by creating confusion as to source or sponsorship." Kelly-Brown, 717 F.3d at 312. "Any evidence that is probative of intent to trade on the protected mark would be relevant to the good faith inquiry," EMI Catalogue, 228 F.3d at 66, including whether the defendant used a term "reflect[ing] the product's characteristics," Sports Auth., 89 F.3d at 964, and whether the "source of the defendants' product is clearly identified by the prominent display of the defendants' own trademarks," Cosmetically Sealed, 125 F.3d at 30. [32] Further, the availability of alternative terms, in this case, does not create a triable issue with respect to good faith. In EMI Catalogue, we noted that "[t]he availability of other descriptive terms and a decision not to use one of those terms is also evidence suggesting bad faith." 228 F.3d at 67. We did not, however, say that the availability of alternatives necessarily precludes summary judgment. More importantly, the term "red gold"-unlike "Swing Swing Swing"-is inherently descriptive, and evidence that Breitling used one inherently descriptive term over another is not evidence that Breitling intended to trade on Solid 21's name. [33] Solid 21's evidence falls short of the kind we previously found to have created triable issues in fair use defenses. In EMI Catalogue, there was evidence that the defendant first "contemplated paying for the right" to license the plaintiff's song, determined the cost of doing so was too high, and then asked its sound studio to find a similar song instead. See id. In Tiffany, the plaintiff (Tiffany) submitted as evidence an internal email from an employee of the defendant (Costco) "indicating that Costco's jewelry boxes should have a more 'Tiffany or upscale look,'" testimony that a Costco employee ignored emails indicating customer and employee confusion over the source of its jewelry, and evidence that Costco shared links to Tiffany's website in communications with vendors. See 971 F.3d at 88; see also Inst. for Sci. Info., Inc. v. Gordon & Breach, Sci. Publishers, Inc., 931 F.2d 1002, 1009 (3d Cir. 1991) (defendant breached agreement with plaintiff not to use plaintiff's mark). There is no similar evidence here that Breitling intended to mislead its customers as to the source of its products or reap the benefits of any goodwill Solid 21 purportedly created surrounding the term "red gold." 13 [34] Lastly, Solid 21 cites as evidence that Breitling did not begin using the term "red gold" until 2010-over two decades after Aire first used it. Even viewed in a light most favorable to Solid 21, this evidence does not show that Breitling intended to confuse its customers as to source or sponsorship. Solid 21 submitted no evidence that Breitling was actually aware of Solid 21's trademark. In any event, constructive or actual knowledge "has no tendency to show bad faith" where Breitling was "fully entitled to use"-and did use-"red gold" descriptively. Car-Freshner, 70 F.3d at 270. There is no genuine issue of fact as to Breitling's good faith; it has met its burden on each of the elements of fair use. [35] Finally, a few words regarding our colleague's dissenting view. The dissent states that our analysis "effectively eliminates the good-faith prong," such that if "a defendant's use is descriptive . . . it is also in good faith." Dissent at 282. Not so. As demonstrated above, a defendant's descriptive use does not end the fair use inquiry. See supra at 278-81. We simply 13 There is evidence to the contrary. In the handful of instances when consumers asked Breitling about the meaning of "red gold," Breitling did not indicate Solid 21 as a source or sponsor. Rather, Breitling described "red gold" as an attribute. See JA at 4720 (Q: "Whats [sic] the difference between rose gold and red gold" A: "They are both a rose gold color") (emphasis added)). recognize that the defendant's burden to establish both descriptiveness and good faith does not come with an additional requirement to categorize evidence as exclusively relevant to one or the other. See supra at 279. That there was also no genuine issue of fact as to Breitling's good faith in this case does not foreclose a genuine issue of fact as to a defendant's good faith in other cases. Despite the dissent's concern, summary judgment is always a matter of the record. [36] We have examined Solid 21's remaining arguments and conclude that they are without merit. We AFFIRM the judgment of the district court. Park, Circuit Judge, dissenting: [1] We don't know why Breitling began using the disputed "red gold" mark in 2010. But the majority still concludes that Breitling proved good-faith fair use, and to get there, it resolves factual disputes about Breitling's mental state at summary judgment. I respectfully dissent because those are issues for a jury to decide. [2] A trademark defendant raising a fair-use defense has the burden to show that it did not act in bad faith-i.e., that it lacked "the intent to sow confusion between the two companies' products." Tiffany & Co. v. Costco Wholesale Corp., 971 F.3d 74, 88 (2d Cir. 2020). This turns on a fact-intensive, totality-of-the-circumstances judgment; the jury must consider "[a]ny evidence that is probative of intent to trade on the protected mark." EMI Catalogue P'ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 66 (2d Cir. 2000) (emphasis added). So "we have consistently observed" that the good-faith element is "singularly inappropriate for . . . summary judgment." Tiffany & Co., 971 F.3d at 88. The majority sees this as a case in which "there can be but one reasonable conclusion as to the verdict." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986). I disagree. [3] The main question on good faith is why Breitling decided to start using "red gold" instead of "rose gold" to sell some of its watches, which otherwise remained the same. This apparently occurred in 2010, well after Solid 21 trademarked the term. And "where the allegedly infringing mark is identical to the registered mark, and its use began subsequent to the plaintiff's trade-mark registration, the defendant must carry the burden of explanation." Tiffany & Co., 971 F.3d at 88. Neither Breitling nor the majority has even attempted to provide a plausible explanation for the sudden change. 1[4] Against the backdrop of this unanswered question, Breitling admits that it began its "red gold" marketing without conducting a trademark search. To be sure, this failure was not per se bad faith. But in general, and particularly when there is uncertainty, a trademark search is consistent with good faith, and the lack of it is consistent with bad faith. See Sports Auth., Inc. v. Prime Hosp. Corp., 89 F.3d 955, 964 (2d Cir. 1996) (reversing a grant of summary judgment to a defendant who "neither consulted with an attorney nor conducted a trademark search").foot_41 [5] There are more reasons why a jury might not give Breitling the benefit of the doubt. It could find that Breitling had actual or constructive knowledge of Solid 21's "red gold" mark, which was repeatedly covered in trade and popular publications before Breitling's use. Again, everything is relevant, and nothing is dispositive. See, e.g., Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 398 (2d Cir. 1995) ("Prior knowledge of a senior user's trade mark does not necessarily give rise to an inference of bad faith." (emphasis added)). A reasonable jury could find that Breitling knew about the "red gold" mark and used it anyway, which would undercut its claim of good faith. See Kelly-Brown v. Winfrey, 717 F.3d 295, 313 (2d Cir. 2013) (collecting cases). [6] Finally, there is evidence that Breitling's prior use of "rose gold" was not just an adequate substitute for "red gold," but a superior one. For example, Solid 21 presented an affidavit from a former senior executive at competitor watchmakers stating that "red gold" is not a term used by luxury-watch consumers, as well as survey evidence that consumers do not consider "red gold" a potential watch material. "The availability of other descriptive terms and a decision not to use one of those terms is . . . evidence of bad faith." EMI, 228 F.3d at 67. This is especially true when the alternative is both known to the defendant and a better descriptor. [7] In short, the record shows that Breitling (1) relatively recently began using the "red gold" mark, (2) without conducting a trademark search, (3) possibly knowing of Solid 21's use, (4) despite previously using a substitute, "rose gold." In response, Breitling offers no explanation for the change whatsoever. To my mind, a reasonable jury could find bad faith based on those facts. [8] The majority reasons that Breitling acted in good faith because its use was descriptive. See Maj. Op. at 279. But this sequencing effectively eliminates the good-faith prong. Under the majority's reading, either (1) the defendant's use is descriptive, in which case it is also in good faith, or (2) the defendant's use is not descriptive, in which case it cannot show fair use and its good faith doesn't matter. This approach minimizes good faith as an independent element of a fair-use defense. See, e.g., Tiffany & Co., 971 F.3d at 92. [9] In any case, the descriptiveness question also should go to the jury. First, we "more readily find a phrase descriptive when it is in common usage," Kelly-Brown, 717 F.3d at 311, and Solid 21's evidence tends to show that "red gold" lacks a meaning to consumers. For example, its witness opined that "'Red Gold' is not a metal, but a marketing tool" associated uniquely with Solid 21 and not otherwise used in the industry. Second, the availability of "other terms . . . to describe the pertinent characteristic" counsels against finding a use descriptive. EMI, 228 F.3d at 65. As discussed above, Breitling in fact used the common term "rose gold" to describe its watches (rather than Solid 21's "red gold" mark) up until its unexplained change in 2010. [10] The fair-use analysis in this case is not obvious. The parties briefed it exhaustively. The district court itself was of two minds-it initially denied summary judgment, then granted it on reconsideration. A different district court in this circuit recently denied summary judgment on fair use in a related case. And now we do not agree either. We have counseled district courts to use summary judgment with restraint in cases involving questions of good faith. See Tiffany & Co., 971 F.3d at 88. We should follow our own advice. I respectfully dissent. ______________________________________________________________________________ SportFuel, Inc. v. Pepsico, Inc. 932 F.3d 589 Cir. 2019) Kanne, Circuit Judge. [1] SportFuel appeals the district court's grant of summary judgment for Gatorade and its parent company, PepsiCo. SportFuel brought this suit against Gatorade alleging violations of its trademark after Gatorade rebranded itself with the slogan, "Gatorade The Sports Fuel Company." The district court deemed Gatorade's slogan a fair use protected by the Lanham Act. We affirm. BACKGROUND [2] SportFuel is a Chicago-based sports nutrition and wellness consulting firm whose clients include several of Chicago's prominent professional sports teams and their athletes. The company provides personalized nutrition consulting services to professional and amateur athletes, but also sells SportFuel-branded dietary supplements. SportFuel holds two registered trademarks for "SportFuel." It registered the first for "food nutrition consultation, nutrition counseling, and providing information about dietary supplements and nutrition." After several years of use, SportFuel's trademark became "incontestable" in 2013 under 15 U.S.C. § 1065. SportFuel also registered a trademark in 2015 for "goods and services related to dietary supplements and sports drinks enhanced with vitamins." [3] Gatorade was created in 1965 at the University of Florida College of Medicine and public sales began several years later. Undoubtedly, Gatorade is more widely known. It is the official sports drink of the NBA, PGA, MLB, MLS, and many other professional and collegiate organizations. Whether by television imagery of victorious athletes drenching their coaches or teammates with a Gatorade shower from a distinctive cooler, or through aggressive national media marketing campaigns, Gatorade became a household name. [4] In addition to its traditional sports drinks, Gatorade now customizes its sports drink line by selling formulas that are tailored to the nutritional needs of individual professional athletes. The company also sells numerous other sports nutrition products beyond sports drinks. It began to publicly describe its products as sports fuels in 2013. Seeking to broaden its public image to reflect its expanded variety of products, Gatorade began a rebranding effort. In 2016 it registered the trademark "Gatorade The Sports Fuel Company" with the United States Patent and Trademark Office ("PTO"). Notably, Gatorade disclaimed the exclusive use of "The Sports Fuel Company" after the PTO advised the company that the phrase was merely descriptive of its products. . . . . [6] On June 14, 2018, the district court granted Gatorade's motion for summary judgment after finding that SportFuel failed to produce evidence that demonstrated a factual dispute on any of the three elements of Gatorade's fair use defense. The court also determined that because it found that Gatorade successfully raised the Act's fair use defense, it need not conduct a risk of confusion analysis for SportFuel's claims. Similarly, because the court determined that SportFuel's claims under Illinois law were subject to the same analysis as its federal claims, it did not separately consider those claims. SportFuel appeals. . . . . [8] SportFuel claims that the district court erred in finding that Gatorade did not use the term "Sports Fuel" as a trademark. SportFuel supports its argument with three factors: Gatorade uses the slogan as an "attention getting symbol," it placed a trademark indication after the slogan, and it sought to trademark the slogan. . . . . [9] As here, Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 953 (7th Cir. 1992), involved a suit over Gatorade's use of a slogan in an advertising campaign. 978 F.2d at 953-trademark use. And as the district court pointed out, Gatorade's chief marketing officer stated in his deposition that he viewed the whole phrase-including the protected house mark-as a trademark. [14] Thus, even construing the record in SportFuel's favor on summary judgment, insufficient evidence supports SportFuel's claim. Accordingly, we do not believe the district court erred in determining that Gatorade never employed the term "Sports Fuel" as a trademark in its "Gatorade The Sports Fuel Company" slogan. B. Gatorade Used "Sports Fuel" Descriptively. [15] The district court also found that Gatorade used "Sports Fuel" descriptively, rather than suggestively, and therefore not as a trademark. SportFuel maintains that the district court erred in this determination. We review the district court's classification de novo. Quaker Oats, 978 F.2d at 952. [16] Suggestive marks . . . do not "directly and immediately describe an aspect of the goods," rather they "require[ ] an observer or listener to use imagination and perception to determine the nature of the goods." Uncommon, LLC v. Spigen, Inc., 926 F.3d 409, 421 (7th Cir. 2019) (quotations omitted). However, just because a phrase is unfamiliar and "requires a hearer to think about its meaning" does not necessarily mean it is suggestive. Quaker Oats, 978 F.2d at 953. Courts look to a variety of factors to distinguish between descriptive and suggestive terminology, but we find two factors particularly helpful in this instance. 2 "First, we can look to how, and how often, the relevant market uses the word [or phrase] in question." Uncommon, 926 F.3d at 421. Second, we employ the "imagination test," where we ask whether the word or phrase imparts information about the product or service directly or rather requires "some operation of the imagination to connect it with the goods." Id. at 422 (quoting Platinum Home Mortg., 149 F.3d at 727). Both factors lead us to characterize the slogan here as descriptive. [17] First, producers of nutritional products for athletes regularly invoke the "Sports Fuel" terminology to describe the products they sell. Gatorade provided numerous examples of this widespread industry use to the district court, including, for example, Twin Laboratories' "SPORT FUEL" and Trident Sports' "SPORTS FUEL." Similarly, the PTO recognized this point when it processed Gatorade's trademark application stating, "[a]s SPORTS FUEL is commonly used in reference to sports nutrition, consumers encountering the wording THE SPORTS FUEL COMPANY in the proposed mark would readily understand it to mean that the goods are provided by a company that provides sports nutrition." This widespread industry use, coupled with Gatorade's disclaimer of exclusive use of "The Sports Fuel Company," supports Gatorade's argument it used "Sports Fuel" descriptively. [18] Second, SportFuel argues that Gatorade's use of "Sports Fuel" is suggestive-and not descriptive-of Gatorade's products because the term requires a mental leap to deduce that the company is really selling athletic nutrition products. To support this notion, SportFuel also points out that Gatorade's consumers, by and large, are not high-performance athletes. We find these arguments unpersuasive. The use of "Sports Fuel" in "Gatorade The Sports Fuel Company" clearly describes the category of goods that Gatorade produces. It requires no imaginative leap to understand that a company selling "Sports Fuel" is selling a variety of food products designed for athletes. That non-athletes regularly consume Gatorade's products has no bearing whether the term is descriptive. Just as the pervasive use of yoga pants and other activewear as casual clothing does not change the athletic characteristics of those products, the fact that Gatorade sells more sports drinks to average joes who limit their rigorous exercise to lawn mowing does not change the athletic characteristics of Gatorade's products. [19] We conclude that Gatorade's slogan uses "Sports Fuel" in a descriptive sense. C. Gatorade Uses "Sports Fuel" Fairly and in Good Faith. [20] A party raising a fair use defense "must show that it used the plaintiff's mark fairly and in good faith." Sorensen, 792 F.3d at 725. Courts determine defendants' good faith by looking to their subjective purpose in using a slogan. Packman, 267 F.3d at 642. As an initial matter, we note that although the district court's analysis implicitly confirmed that Gatorade used "Sport Fuel" in good faith, it never stated its conclusion explicitly. Nonetheless, as we explain, we believe Gatorade produced sufficient evidence to show that it descriptively used the term "Sports Fuel" in its slogan fairly and in good faith. SportFuel insisted during summary judgment that the evidence, construed in its favor, demonstrated that Gatorade acted unfairly and in bad faith by using its slogan. But the district court rejected SportFuel's argument and explained why SportFuel failed to show that Gatorade acted in bad faith. [21] On appeal, SportFuel challenges the district court's conclusion for three reasons. First, SportFuel claims that evidence produced during discovery justified inferring bad faith on Gatorade's part. Second, the district court purportedly erred in concluding that Gatorade used "Sports Fuel" fairly given the risk that reverse confusion posed to SportFuel. Third, Gatorade uses "Sports Fuel" in a trademark manner, beyond describing its goods or services. [22] SportFuel alleges that the district court erred because it never properly considered evidence of Gatorade's bad faith. It provides four main examples to support this argument. First, it argues that Gatorade was aware of SportFuel's mark by virtue of Gatorade's previous working relationship with Julie Burns. Second, it suggests that Gatorade's continued use of "Sports Fuel" after SportFuel filed suit betrays its bad faith. Third, SportFuel points to a dearth of evidence concerning Gatorade's adoption of its new slogan. Fourth, SportFuel alludes to a falling out between Gatorade and Burns, suggesting that Gatorade adopted the new slogan to settle an old score. [23] SportFuel alleges that Gatorade's bad faith is demonstrated by the fact that it began to use "Sports Fuel" even though it knew of SportFuel's mark. But the defendant's "mere knowledge" of the plaintiff's mark, without other evidence of subjective bad faith, is insufficient. Sorensen, 792 F.3d at 725. Accordingly, "[t]o survive summary judgment, a plaintiff must point to something more that suggests subjective bad faith." Id. Therefore, without other, substantial evidence, this factor provides no support for the claim that Gatorade used "Sports Fuel" in bad faith. [24] SportFuel also points to Gatorade's continued use of "Sports Fuel," even after SportFuel filed this suit. But "it is lawful to use a mark that does not infringe some other; intentional infringement creates problems, but [a defendant's] intentional use of a mark that [it] had every right to use is not itself a ground on which to draw an adverse inference." M-F-G Corp. v. EMRA Corp., 817 F.2d 410, 412 (7th Cir. 1987). Gatorade believed it had every right to use "Sports Fuel" in a descriptive sense, so its continued use after SportFuel filed suit also fails to justify an inference of bad faith. [25] Third, SportFuel suggests that Gatorade failed to produce evidence in discovery that must have existed. Specifically, Gatorade's production included no documentation related to its approval of the slogan "Gatorade The Sports Fuel Company." SportFuel argues that a company as large as Gatorade certainly required high-level approval before adopting a nation-wide rebranding campaign. And presumably Gatorade would possess documentation of that approval. Yet, "[s]peculation will not suffice" to defeat summary judgment. Borcky v. Maytag Corp., 248 F.3d 691, 695 (7th Cir. 2001); Amadio v. Ford Motor Co., 238 F.3d 919, 927 (7th Cir. 2001) ("It is well-settled that speculation may not be used to manufacture a genuine issue of fact."); Gorbitz v. Corvilla, Inc., 196 F.3d 879, 882 (7th Cir. 1999). SportFuel's argument relies on the assumption that something must have existed. But the time to pursue this idea was during discovery. SportFuel did not, and it cannot now avoid summary judgment with assumption or speculation. The record neither provides evidence to support the claim that Gatorade adopted the slogan in bad faith, nor indicates that Gatorade purposefully failed to produce such evidence. [26] Fourth, SportFuel suggests that Gatorade's adoption of the slogan relates to a falling out between Burns and Gatorade. The problem with this claim-much like the last argument-is that SportFuel provides no relevant evidence as support. It relies on Burns's deposition testimony, where she stated that her relationship with Gatorade ended after she refused to endorse one of Gatorade's new sugary sports bar products. However, Burns's relationship with Gatorade ended more than a decade before the alleged infringement began. And the idea that a new slogan for a nation-wide rebranding campaign and stale antipathy towards Burns are connected is facially incredible when otherwise unsupported by the record. [27] We accordingly find none of these factors significant enough-individually or in the aggregate-to create an inference of Gatorade's bad faith. [28] Second, SportFuel claims that the district court conducted an insufficient analysis of Gatorade's intent in using "Sports Fuel" because its alleged infringement creates reverse confusion. . . . In this case, the alleged reverse confusion would occur when Gatorade used its house mark alongside the term "Sports Fuel," which would effectively coopt SportFuel's trademark and confuse consumers by leading them to believe the companies were related. USPS licensed ISA among others to create merchandise incorporating USPS's images. "Stamp images were transmitted to licensees in the form of transparencies, each marked as copyright protected and depicting the entire stamp including any perforated edges." Id. at 1272. USPS eventually began to produce its own line of stamp art cards, some of which incorporated the flat-edged perforated border design. ISA sued for trademark infringement. USPS claimed descriptive fair use. Affirming the district court's grant of summary judgment, the Eleventh Circuit found descriptive fair use. The court devoted the bulk of its analysis to the third step, whether USPS's use was in good faith, i.e., "whether the alleged infringer intended to trade on the good will of the trademark owner by creating confusion as to the source of the goods or services." Id. at 1275. The court noted that "the overwhelming majority of stamps the Postal Service produces include perforated edges and have long done so," id.; that USPS "prominently places its own familiar Eagle trademark on the backs of its stamp art products thereby identifying them as Postal Service products," id.; and that "ISA has not identified any evidence that the Postal Service sought to mislead or confuse consumers into thinking that the source of the cards it produced was actually International Stamp Art," id. ISA claimed that USPS had a "non-infringing, commercially viable alternative" in the form of "cards depicting the art upon which its stamp designs was based, rather than the stamps themselves." Id. at 1276. The Eleventh Circuit recognized that "[f]ailure to employ a non-infringing, commercially viable alternative can raise a genuine issue of material fact," id., but was ultimately unpersuaded: "This, however, is not an alternative manner of depicting the stamps, but rather a choice not to depict stamps." Id. On cross motions for summary judgment, the court first applied the Sleekcraft multifactor test for the likelihood of consumer confusion to find no likelihood of confusion. The court then further found descriptive fair use. It cited KP Permanent for the proposition that "some possibility of consumer confusion must be compatible with fair use[.]" KP Permanent, at 121. It then applied the three-step test to find that Harley Davidson does not use the phrase as a trademark, "i.e., to identify the source of its products," Bell, at 1258, and uses the phrase only descriptively. The Court explained: "Although Bell protests that such a use does not describe a specific characteristic of Harley's products or goods, courts do not interpret the Lanham Act's fair use language so narrowly. To the contrary, courts have applied the fair use doctrine in situations where the defendant's use of the trademarked phrase described a feeling inherently associated with the phrase or typically experienced by the consumer upon using defendant's product." Id. The court further found good faith. "Harley-Davidson demonstrated its intent not to create confusion by including the Harley-Davidson name or bar-&-shield logo on every advertisement and piece of merchandise bearing the 'Ride Hard' phrase." Id. at 1259. Though Bell pointed out that Wrangler Clothing Company abandoned "Ride Hard" and substituted "Ride Rough" in response to Bell's 1999 lawsuit, Harley Davidson was not obligated to use an alternative phrase under these facts. In a lengthy opinion reversing the lower court's grant of summary judgment to Victoria's Secret and remanding for trial, the Ninth Circuit first considered the Sleekcraft factors for the likelihood of consumer confusion and found that a jury could reasonably find confusion. With respect to Victoria's Secret's fair use defense, the court concluded that a reasonable jury could find that Victoria's Secret was using the term "Delicious" as a trademark given the term's prominent placement on the front of the shirt, similar to where Victoria's Secret had placed two of its own trademarks PINK and VERY SEXY. The court also found issues of material fact on the question of whether Victoria's Secret was using the term "delicious" descriptively: Victoria's Secret says that it used "Delicious" merely to "describe the flavorful attributes of Victoria's Secret's BEAUTY RUSH lip gloss and other products that feature the same popular fruit flavors." A jury, however, could reasonably conclude otherwise. For one thing, in its advertisements, Victoria's Secret described its BEAUTY RUSH lip gloss as "deliciously sexy," not delicious. For another, Victoria's Secret's executives testified that they wanted "Delicious" to serve as a "playful self-descriptor," as if the wearer of the pink tank top is saying, "I'm delicious." These examples suggest that a jury could reasonably decide that Victoria's Secret did not use "Delicious" "only to describe its goods." 15 U.S.C. § 1115(b)(4) . . . . [A]lthough we accept some flexibility in what counts as descriptive, we reiterate that the scope of the fair use defense varies with the level of descriptive purity. Thus, as a defendant's use of a term becomes less and less purely descriptive, its chances of prevailing on the fair use defense become less and less likely. Id. at 1041-42. The court also noted Victoria's Secret's lack of "precautionary measures" to dispel confusion and the "abundance of alternative words" that it could have used. Id. at 1042. On good faith, the court found that Victoria's Secret's failure to investigate whether anyone held a "delicious" trademark, combined with other evidence, suggested that a jury could reasonably find no good faith. In New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302 (9th Cir. 1992), the Ninth Circuit first developed the concept of nominative fair use. The defendants, two newspapers, conducted separate polls asking readers to call a 900 number to vote for their favorite member of the boy band New Kids on the Block. As The Star politely put it: "Which of the New Kids on the Block would you most like to move next door?" Id. at 305. The band sued for, among other things, trademark infringement. Affirming the district court's grant of summary judgment to the defendants, Judge Kozinski held that a "nominative use of a mark-where the only word reasonably available to describe a particular thing is pressed into service-lies outside the strictures of trademark law," id. at 308 (emphasis in original), and set out three "requirements" that a defendant's use must meet to qualify as nominative fair use: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; 7 and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. Id. at 307. The Lanham Act did not at the time explicitly include any basis for nominative fair use and even now it arguably only references nominative fair use in connection with dilution, see § 43(c)(3)(A), 15 U.S.C. § 1125(c)(3)(A). On the issue of confusion, nominative fair use remains essentially judge-made law. Note the conceptual distinction between descriptive (or "classic") fair use and nominative fair use: The nominative fair use analysis is appropriate where a defendant has used the plaintiff's mark to describe the plaintiff's product, even if the defendant's 7 Thus, a soft drink competitor would be entitled to compare its product to Coca-Cola or Coke, but would not be entitled to use Coca-Cola's distinctive lettering. See Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350, 352 (9th Cir. 1969) ("{In advertising that he specialized in Volkswagen repair,} Church did not use Volkswagen's distinctive lettering style or color scheme, nor did he display the encircled 'VW' emblem" {and was therefore not infringing}). . . . ultimate goal is to describe his own product. Conversely, the classic fair use analysis is appropriate where a defendant has used the plaintiff's mark only to describe his own product, and not at all to describe the plaintiff's product. Co., 292 F.3d 1139, 1151(9th Cir. 2002). In the opinion below, Judge Kozinski returned to the concept of nominative fair use, this time in connection with domain names-and in light of KP Permanent. In reading through the opinion, consider the following questions: • Why should the New Kids factors replace the Sleekcraft multifactor test for the likelihood of consumer confusion? Why shouldn't a court first work through the Sleekcraft test to determine if plaintiff has even made out its case and, if it has, then turn to the question of nominative fair use? • What sense do you make of the final excerpted paragraphs of Judge Kozinski's opinion? How exactly should a Ninth Circuit court now proceed to evaluate a nominative fair use "defense"? Toyota Motor Sales, U.S.A., Inc. v. Tabari 610 F.3d 1171 (9th Cir. 2010) KOZINSKI, Chief Judge: [1] In this trademark infringement case, we consider the application of the nominative fair use doctrine to internet domain names. Facts [2] Farzad and Lisa Tabari are auto brokers-the personal shoppers of the automotive world. They contact authorized dealers, solicit bids and arrange for customers to buy from the dealer offering the best combination of location, availability and price. Consumers like this service, as it increases competition among dealers, resulting in greater selection at lower prices. For many of the same reasons, auto manufacturers and dealers aren't so keen on it, as it undermines dealers' territorial exclusivity and lowers profit margins. Until recently, the Tabaris offered this service at buy-a-lexus.com and buyorleaselexus.com. [3] Toyota Motor Sales U.S.A. ("Toyota") is the exclusive distributor of Lexus vehicles in the United States, and jealous guardian of the Lexus mark. A Toyota marketing executive testified at trial that Toyota spends over $250 million every year promoting the Lexus brand. In the executive's estimation, "Lexus is a very prestigious luxury brand and it is an indication of an exclusive luxury experience." No doubt true. [4] Toyota objected to the Tabaris' use on their website of copyrighted photography of Lexus vehicles and the circular "L Symbol Design mark." Toyota also took umbrage at the Tabaris' use of the string "lexus" in their domain names, which it believed was "likely to cause confusion as to the source of [the Tabaris'] web site." The Tabaris removed Toyota's photography and logo from their site and added a disclaimer in large font at the top. But they refused to give up their domain names. Toyota sued, and the district court found infringement after a bench trial. It ordered the Tabaris to cease using their domain names and enjoined them from using the Lexus mark in any other domain name. Pro se as they were at trial, the Tabaris appeal. Nominative Fair Use [5] When customers purchase a Lexus through the Tabaris, they receive a genuine Lexus car sold by an authorized Lexus dealer, and a portion of the proceeds ends up in Toyota's bank account. Toyota doesn't claim the business of brokering Lexus cars is illegal or that it has contracted with its dealers to prohibit selling through a broker. Instead, Toyota is using this trademark lawsuit to make it more difficult for consumers to use the Tabaris to buy a Lexus. [6] The district court applied the eight-factor test for likelihood of confusion articulated in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979), and found that the Tabaris' domain names-buy-a-lexus.com and buyorleaselexus.com-infringed the Lexus trademark. But we've held that the Sleekcraft analysis doesn't apply where a defendant uses the mark to refer to the trademarked good itself. See Playboy Enters., Inc. v. Welles, 279 F.3d 796, 801 (9th Cir. 2002); New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302, 308 (9th Cir. 1992). 1 The Tabaris are using the term Lexus to describe their business of brokering Lexus automobiles; when they say Lexus, they mean Lexus. We've long held that such use of the trademark is a fair use, namely nominative fair use. And fair use is, by definition, not infringement. The Tabaris did in fact present a nominative fair use defense to the district court. [7] In cases where a nominative fair use defense is raised, we ask whether (1) the product was "readily identifiable" without use of the mark; (2) defendant used more of the mark than necessary; or (3) defendant falsely suggested he was sponsored or endorsed by the trademark holder. Welles, 279 F.3d at 801 (quoting New Kids, 971 F.2d at 308-09). This test "evaluates the likelihood of confusion in nominative use cases." Id. It's designed to address the risk that nominative use of the mark will inspire a mistaken belief on the part of consumers that the speaker is sponsored or endorsed by the trademark holder. The third factor speaks directly to the risk of such confusion, and the others do so indirectly: Consumers may reasonably infer sponsorship or endorsement if a company uses an unnecessary trademark or "more" of a mark than necessary. But if the nominative use satisfies the threefactor New Kids test, it doesn't infringe. If the nominative use does not satisfy all the New Kids 1 This is no less true where, as here, "the defendant's ultimate goal is to describe his own product." Cairns v. Franklin Mint Co., 292 F.3d 1139, 1151 (9th Cir. 2002) (emphasis omitted). In Welles, for instance, we applied our nominative fair use analysis to a former playmate's use of the Playboy mark to describe herself and her website. 279 F.3d at 801. We observed that, in those circumstances, "application of the Sleekcraft test, which focuses on the similarity of the mark used by the plaintiff and the defendant, would lead to the incorrect conclusion that virtually all nominative uses are confusing." Id. sponsorship or endorsement. See Welles, 279 F.3d at 803 n.26. In New Kids, for instance, we found that use of the "New Kids on the Block" mark in a newspaper survey did not infringe, even absent a disclaimer, because the survey said "nothing that expressly or by fair implication connotes endorsement or joint sponsorship." 971 F.2d at 309. Speakers are under no obligation to provide a disclaimer as a condition for engaging in truthful, non-misleading speech. [12] Although our opinion in Volkswagenwerk Aktiengesellschaft v. Church remarked on that defendant's "prominent use of the word 'Independent' whenever the terms 'Volkswagen' or 'VW' appeared in his advertising," 411 F.2d 350, 352 (9th Cir. 1969), it isn't to the contrary. The inclusion of such words will usually negate any hint of sponsorship or endorsement, which is why we mentioned them in concluding that there was no infringement in Volkswagenwerk. Id. But that doesn't mean such words are required, and Volkswagenwerk doesn't say they are. Our subsequent cases make clear they're not. See Welles, 279 F.3d at 803 n.26; New Kids, 971 F.2d at 309. 3 [13] The district court reasoned that the fact that an internet domain contains a trademark will "generally" suggest sponsorship or endorsement by the trademark holder. When a domain name consists only of the trademark followed by .com, or some other suffix like .org or .net, it will typically suggest sponsorship or endorsement by the trademark holder. Cf. Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998). 4 This is because "[a] customer who is unsure about a company's domain name will often guess that the domain name is also the company's name." Id. (quoting Cardservice Int'l v. McGee, 950 F.Supp. 737, 741 (E.D.Va. 1997)) (internal quotation marks omitted); see also Brookfield Commc'ns, Inc. v. 3 The Sixth Circuit enjoined a domain name in part because it did "not include words like 'independent' or 'unaffiliated,'" but in that case there were additional factors indicating sponsorship or endorsement, including the use of stylized versions of the plaintiff's marks on the site. PACCAR Inc. v. TeleScan Techs., L.L.C., 319 F.3d 243, 256-57 (6th Cir. 2003). Where these or other factors suggest that nominative use is likely to cause confusion, a disclaimer may well be necessary. But a disclaimer is not required every time a URL contains a mark. 4 Of course, not every trademark.com domain name is likely to cause consumer confusion. See Interstellar Starship, 304 F.3d at 944-46. For instance, we observed in Interstellar Starship that an apple orchard could operate at the website apple.com without risking confusion with Apple Computers, in light of the vast difference between their products. Id. at 944. "If, however, the apple grower . . . competed directly with Apple Computer by selling computers, initial interest confusion probably would result," as the apple grower would be using the apple.com domain to appropriate the goodwill Apple Computer had developed in its trademark. Id. When a website deals in goods or services related to a trademarked brand, as in this case, it is much closer to the second example, where apple.com competes with Apple Computers. If a company that repaired iPods, iPads and iPhones were to set up at apple.com, for instance, consumers would naturally assume that the company was sponsored or endorsed by Apple (or, more likely, that it was Apple). Where a site is used to sell goods or services related to the trademarked brand, a trademark.com domain will therefore suggest sponsorship or endorsement and will not generally be nominative fair use. W. Coast Entm't Corp., 174 F.3d 1036, 1045 (9th Cir. 1999). If customers type in trademark.com and find the site occupied by someone other than the trademark holder, they may well believe it is the trademark holder, despite contrary evidence on the website itself. Alternatively, they may become discouraged and give up looking for the trademark holder's official site, believing perhaps that such a website doesn't exist. Panavision, 141 F.3d at 1327. [14] But the case where the URL consists of nothing but a trademark followed by a suffix like .com or .org is a special one indeed. See Brookfield, 174 F.3d at 1057. The importance ascribed to trademark.com in fact suggests that far less confusion will result when a domain making nominative use of a trademark includes characters in addition to those making up the mark. Cf. Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146-47 (9th Cir. 2002). Because the official Lexus site is almost certain to be found at lexus.com (as, in fact, it is), it's far less likely to be found at other sites containing the word Lexus. On the other hand, a number of sites make nominative use of trademarks in their domains but are not sponsored or endorsed by the trademark holder: You can preen about your Mercedes at mercedesforum.com and mercedestalk.net, read the latest about your double-skim-no-whip latte at starbucksgossip.com and find out what goodies the world's greatest electronics store has on sale this week at fryselectronics-ads.com. Consumers who use the internet for shopping are generally quite sophisticated about such matters and won't be fooled into thinking that the prestigious German car manufacturer sells boots at mercedesboots.com, or homes at mercedeshomes.com, or that comcastsucks.org is sponsored or endorsed by the TV cable company just because the string of letters making up its trademark appears in the domain. [15] When people go shopping online, they don't start out by typing random URLs containing trademarked words hoping to get a lucky hit. They may start out by typing trademark.com, but then they'll rely on a search engine or word of mouth. 6 If word of mouth, confusion is unlikely because the consumer will usually be aware of who runs the site before typing in the URL. And, if the site is located through a search engine, the consumer will click on the link for a likely-relevant site without paying much attention to the URL. Use of a trademark in the site's domain name isn't materially different from use in its text or metatags in this context; a search engine can find a trademark in a site regardless of where exactly it appears. In Welles, we upheld a claim that use of a mark in a site's metatags constituted nominative fair use; we reasoned that "[s]earchers would have a much more difficult time locating relevant websites" if the law outlawed such truthful, non-misleading use of a mark. 279 F.3d at 804. The same logic applies to nominative use of a mark in a domain name. [16] Of course a domain name containing a mark cannot be nominative fair use if it suggests sponsorship or endorsement by the trademark holder. We've already explained why trademark.com domains have that effect. See pp. 1177-78 supra. Sites like trademark-USA.com, trademark-of-glendale.com or e-trademark.com will also generally suggest sponsorship or endorsement by the trademark holder; the addition of "e" merely indicates the electronic version of a brand, and a location modifier following a trademark indicates that consumers can expect to find the brand's local subsidiary, franchise or affiliate. See Visa Int'l Serv. Ass'n v. JSL Corp., No. 08-15206, 2010 WL 2559003, 610 F.3d 1088 (9th Cir. June 28, 2010). For even more obvious reasons, domains like official-trademark-site.com or we-aretrademark.com affirmatively suggest sponsorship or endorsement by the trademark holder and are not nominative fair use. 7 But the district court's injunction is not limited to this narrow class of cases and, indeed, the Tabaris' domain names do not fall within it. [17] When a domain name making nominative use of a mark does not actively suggest sponsorship or endorsement, the worst that can happen is that some consumers may arrive at the site uncertain as to what they will find. But in the age of FIOS, cable modems, DSL and T1 lines, reasonable, prudent and experienced internet consumers are accustomed to such exploration by trial and error. Cf. Interstellar Starship, 304 F.3d at 946. They skip from site to site, ready to hit the back button whenever they're not satisfied with a site's contents. They fully expect to find some sites that aren't what they imagine based on a glance at the domain name or search engine summary. Outside the special case of trademark.com, or domains that actively claim affiliation with the trademark holder, consumers don't form any firm expectations about the sponsorship of a website until they've seen the landing page-if then. This is sensible agnosticism, not consumer confusion. See Jennifer E. Rothman, Initial Interest Confusion: Standing at the Crossroads of Trademark Law, 27 Cardozo L.Rev. 105, 122-24, 140, 158 (2005). So long as the site as a whole does not suggest sponsorship or endorsement by the trademark holder, such momentary uncertainty does not preclude a finding of nominative fair use. [18] Toyota argues it is entitled to exclusive use of the string "lexus" in domain names because it spends hundreds of millions of dollars every year making sure everyone recognizes and understands the word "Lexus." But "[a] large expenditure of money does not in itself create legally protectable rights." Smith v. Chanel, Inc., 402 F.2d 562, 568 (9th Cir. 1968); see also Ty Inc. v. Perryman, 306 F.3d 509, 513 (7th Cir. 2002); Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 Yale L.J. 1687, 1714-15 (1999). Indeed, it is precisely because of Toyota's investment in the Lexus mark that "[m]uch useful social and commercial discourse would be all but impossible if speakers were under threat 7 Domain names containing trademarks may also be prohibited because they dilute the value of those marks-for instance, by creating negative associations with the brand. Cf. Playboy Enters., Inc. v. Netscape Commc'ns Corp., 354 F.3d 1020, 1033 (9th Cir. 2004). For example, the website People of Walmart, which publishes rude photos of Walmart shoppers at peopleofwalmart.com, might dilute the Walmart trademark by associating it with violations of customers' privacy and the idea that a visitor to Walmart stores risks being photographed and ridiculed on the internet. See Jeffrey Zaslow, Surviving the Age of Humiliation, Wall St. J., May 5, 2010, at D1. But Toyota does not allege that the Tabaris' site has any such effect. of an infringement lawsuit every time they made reference to [Lexus] by using its trademark." New Kids, 971 F.2d at 307. 8[19] It is the wholesale prohibition of nominative use in domain names that would be unfair. It would be unfair to merchants seeking to communicate the nature of the service or product offered at their sites. And it would be unfair to consumers, who would be deprived of an increasingly important means of receiving such information. As noted, this would have serious First Amendment implications. The only winners would be companies like Toyota, which would acquire greater control over the markets for goods and services related to their trademarked brands, to the detriment of competition and consumers. The nominative fair use doctrine is designed to prevent this type of abuse of the rights granted by the Lanham Act. [20] Toyota asserts that, even if the district court's injunction is overbroad, it can be upheld if limited to the Tabaris' actual domain names: buyorleaselexus.com and buy-alexus.com. We therefore apply the three-part New Kids test to the domain names, and we start by asking whether the Tabaris' use of the mark was "necessary" to describe their business. Toyota claims it was not, because the Tabaris could have used a domain name that did not contain the Lexus mark. It's true they could have used some other domain name like autobroker.com or fastimports.com, or have used the text of their website to explain their business. But it's enough to satisfy our test for necessity that the Tabaris needed to communicate that they specialize in Lexus vehicles, and using the Lexus mark in their domain names accomplished this goal. While using Lexus in their domain names wasn't the only way to communicate the nature of their business, the same could be said of virtually any choice the Tabaris made about how to convey their message: Rather than using the internet, they could publish advertisements in print; or, instead of taking out print ads, they could rely on word of mouth. We've never adopted such a draconian definition of necessity, and we decline to do so here. In Volkswagenwerk, for instance, we affirmed the right of a mechanic to put up a sign advertising that he specialized in repairing Volkswagen cars, although he could have used a sandwich board, distributed leaflets or shouted through a megaphone. 411 F.2d at 352. 9 One way or the other, the Tabaris need to let consumers know that they are brokers of Lexus cars, and that's nearly impossible to do without mentioning Lexus, cf. Monte Carlo Shirt, Inc. v. Daewoo Int'l (Am.) Corp., 707 F.2d 1054, 1058 (9th Cir. 1983), be it via domain name, metatag, radio jingle, telephone solicitation or blimp. [21] The fact that the Tabaris also broker other types of cars does not render their use of the Lexus mark unnecessary. 10 Lisa Tabari testified: "I in my conviction and great respect for the company always try to convince the consumer to first purchase a Lexus or Toyota product." If customers decide to buy some other type of car, the Tabaris may help with that, but their specialty is Lexus. The Tabaris are entitled to decide what automotive brands to emphasize in their business, and the district court found that the Tabaris do in fact specialize in Lexus vehicles. Potential customers would naturally be interested in that fact, and it was entirely appropriate for the Tabaris to use the Lexus mark to let them know it. [22] Nor are we convinced by Toyota's argument that the Tabaris unnecessarily used domain names containing the Lexus trademark as their trade name. See Volkswagenwerk, 411 F.2d at 352. The Tabaris' business name is not buyorleaselexus.com or buy-a-lexus.com; it's Fast Imports. Toyota points out that the Tabaris' domain names featured prominently in their advertising, but that by no means proves the domain names were synonymous with the Tabaris' business. The Tabaris may have featured their domain names in their advertisements in order to tell consumers where to find their website, as well as to communicate the fact that they can help buy or lease a Lexus. Toyota would have to show significantly more than "prominent" advertisement to establish the contrary. We therefore conclude that the Tabaris easily satisfy the first New Kids factor. [23] As for the second and third steps of our nominative fair use analysis, Toyota suggests that use of the stylized Lexus mark and "Lexus L" logo was more use of the mark than necessary and suggested sponsorship or endorsement by Toyota. This is true: The Tabaris could adequately communicate their message without using the visual trappings of the Lexus brand. New Kids, 971 F.2d at 308 n.7. Moreover, those visual cues might lead some consumers to believe they were dealing with an authorized Toyota affiliate. Imagery, logos and other visual markers may be particularly significant in cyberspace, where anyone can convincingly recreate the look and feel of a luxury brand at minimal expense. It's hard to duplicate a Lexus showroom, but it's easy enough to ape the Lexus site. [24] But the Tabaris submitted images of an entirely changed site at the time of trial: The stylized mark and "L" logo were gone, and a disclaimer appeared in their place. The disclaimer stated, prominently and in large font, "We are not an authorized Lexus dealer or affiliated in any way with Lexus. We are an Independent Auto Broker." While not required, such a disclaimer is relevant to the nominative fair use analysis. See Welles, 279 F.3d at 803. Toyota 10 Toyota doesn't suggest that the Tabaris used the Lexus mark to refer to those other cars, or that the Tabaris used the Lexus mark in order to redirect customers to those cars. See, e.g., Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1019 (9th Cir. 2004). Everyone seems to concede the Tabaris are bona fide Lexus brokers. We therefore do not consider whether the Tabaris used the Lexus mark in conjunction with brokering vehicles other than Lexus, or whether such use would be infringing. claims the Tabaris' disclaimer came too late to protect against confusion caused by their domain names, as such confusion would occur before consumers saw the site or the disclaimer. See Brookfield, 174 F.3d at 1057. But nothing about the Tabaris' domains would give rise to such confusion; the Tabaris did not run their business at lexus.com, and their domain names did not contain words like "authorized" or "official." See pp. 1178-79 supra. Reasonable consumers would arrive at the Tabaris' site agnostic as to what they would find. Once there, they would immediately see the disclaimer and would promptly be disabused of any notion that the Tabaris' website is sponsored by Toyota. Because there was no risk of confusion as to sponsorship or endorsement, the Tabaris' use of the Lexus mark was fair. [25] This makeover of the Tabaris' site is relevant because Toyota seeks only forwardlooking relief. In Volkswagenwerk, we declined to order an injunction where the defendant had stopped all infringing activities by the time of trial, 411 F.2d at 352, although we've said that an injunction may be proper if there's a risk that infringing conduct will recur, Polo Fashions, Inc. v. Dick Bruhn, Inc., 793 F.2d 1132, 1135-36 (9th Cir. 1986). Even assuming some form of an injunction is required to prevent relapse in this case, the proper remedy for infringing use of a mark on a site generally falls short of entirely prohibiting use of the site's domain name, as the district court did here. See Interstellar Starship, 304 F.3d at 948. "[O]nly upon proving the rigorous elements of cyber-squatting . . . have plaintiffs successfully forced the transfer of an infringing domain name." Id. Forced relinquishment of a domain is no less extraordinary. [26] The district court is in a better position to assess in the first instance the timing and extent of any infringing conduct, as well as the scope of the remedy, if any remedy should prove to be required. We therefore vacate the injunction and remand for reconsideration. The important principle to bear in mind on remand is that a trademark injunction should be tailored to prevent ongoing violations, not punish past conduct. Speakers do not lose the right to engage in permissible speech simply because they may have infringed a trademark in the past. C. [27] When considering the scope and timing of any infringement on remand, the district court must eschew application of Sleekcraft and analyze the case solely under the rubric of nominative fair use. Cairns, 292 F.3d at 1151. The district court treated nominative fair use as an affirmative defense to be established by the Tabaris only after Toyota showed a likelihood of confusion under Sleekcraft. This was error; nominative fair use "replaces" Sleekcraft as the proper test for likely consumer confusion whenever defendant asserts to have referred to the trademarked good itself. Id. (emphasis omitted); see also Welles, 279 F.3d at 801. [28] On remand, Toyota must bear the burden of establishing that the Tabaris' use of the Lexus mark was not nominative fair use. A finding of nominative fair use is a finding that the plaintiff has failed to show a likelihood of confusion as to sponsorship or endorsement. See Welles, 279 F.3d at 801; New Kids, 971 F.2d at 308 ("Because [nominative fair use] does not implicate the source-identification function that is the purpose of trademark, it does not The student wishing to avoid madness may do well to avoid the term "dilution" altogether and simply refer to these two forms of protection as "anti-blurring protection" and "anti-tarnishment" protection. For the reasons stated herein, Nike prevails on its federal and state dilution claims. Therefore, Nike's claims for trademark infringement and unfair competition need not be reached. However, since both parties refer to "Nikepal" with a lowercase "p" in this action, the court adopts this spelling for the purposes of this order. Starbucks also asserted claims of trademark infringement in violation of 15 U.S.C. § 1114(1); unfair competition in violation of 15 U.S.C. § 1125(a); trademark dilution in violation of New York General Business Law § 360-l; deceptive acts and business practices and false advertising in violation of New York General Business Law § § 349, 350; and unfair competition in violation of New York common law. All of these claims were dismissed during the course of this suit and are not the subject of this appeal.5 Other common responses included "barbeque" or "charcoal" (7.9 percent); "restaurant" or "grill" (7.5 percent); "meat," "steak," or "hamburger" (4.6 percent); and "money" (3.9 percent).6 More popular responses to this second question included: "grocery store" (18.3 percent); "discount store" (16.9 percent); "restaurant" (7.0 percent); "department store" (4.8 percent); and "hardware store" or "home improvement store" (3.7 percent). At the time, federal law provided: "The owner of a famous mark shall be entitled . . . to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark . . . ." For convenience, we repeat those factors here: (ii) the distinctiveness of the Starbucks Marks; (iii) the exclusivity of Starbucks' use of its marks; (iv) the high degree of recognition of the Starbucks Marks; and (v) Black Bear's intent to associate the Charbucks Marks with the Starbucks Marks. Although some other respondents gave answers consistent with an association with Starbucks-18.3 percent answered "grocery store," 16.9 percent answered "discount store," 7 percent answered "restaurant," and 4.8 percent answered "department store"-these responses are also consistent with other views of what "Charbucks" could be, including meat or a charcoal grilling product, as 38.5 percent of respondents suggested.17 Of course, in Starbucks IV, we rejected a per se or threshold requirement of "substantial similarity" between the marks at issue in federal dilution actions. 588 F.3d at 108-09. In doing so, however, we did not suggest that a finding of minimal similarity could not be highly probative of the likelihood of dilution. The potential problem with simply assuming tarnishment when the junior mark places the senior mark in a sexual context becomes apparent if one considers a different case. What if the holder of a sex-related senior mark levied a claim of dilution by tarnishment against the holder of a junior mark that was similarly associated with sex? Would the court be willing to assume without further proof that despite their similar sexual origins the junior mark necessarily tarnishes the senior mark? Under the majority's reasoning, such an assumption would be appropriate. This cannot be the law. According to the United States Patent and Trademark Office, Defendant Lamborghini filed an application for registration of the LAMBO mark on September We note that factor IV does not protect a faux noncommercial site, that is, a noncommercial site created by the registrant for the sole purpose of avoiding liability under the FTDA, which exempts noncommercial uses of marks, see 15 U.S.C. § 1125(c)(4)(B), or under the ACPA. As explained by the Senate Report discussing the ACPA, an individual cannot avoid liability for registering and attempting to sell a hundred domain names incorporating famous marks by posting noncommercial content at those domain names. See S.Rep. No. 106-140, 1999 WL 594571, at *14 (citing Panavision Int'l v. Toeppen, 141 F.3d 1316 (9th Cir. 1998)). But Lamparello's sole purpose for registering www.fallwell.com was to criticize Reverend Falwell, and this noncommercial use was not a ruse to avoid liability. Therefore, factor IV indicates that Lamparello did not have a bad faith intent to profit. Given our resolution of Lamparello's appeal, Reverend Falwell's cross-appeal with respect to statutory damages and attorney fees is moot. These were: .aero, .arpa, .asia, .biz, .cat, .com, .coop, .edu, .gov, .info, .int, .jobs, .mil, .mobi, .names, .net, .org, .post, .pro, .tel, .travel and .xxx. See Jacqueline Lipton & Mary Wong, Trademark and Freedom of Expression in ICANN's New gTLD Process, 38 MONASH U. L. REV. 188, 192 (2012). eBay appears to be short for Echo Bay-the name of eBay's founder's consulting firm was Echo Bay Technology Group. The name "EchoBay" was already in use, so eBay was employed as the name for the website. See http:// en. wikipedia. org/ wiki/ EBay# Origins_ and_ history (last visited Feb. 26, 2010); http:// news. softpedia. com/ news/ eBay-Turns-Ten-Happy-Birthday-7502. shtml (last visited Feb. 26, 2010). In addition to providing auction-style and fixed-priced listings, eBay is also the proprietor of a traditional classified service. Id. at 474. We note, however, that, Tiffany's "About Me" page on the eBay website states that Tiffany does not authenticate merchandise. Pl.'s Ex. 290. The Supreme Court cited two cases in support of this proposition: William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526 (1924), and Coca-Cola Co. v. Snow Crest Beverages, Inc., 64 F.Supp. (D.Mass. 1946) (Wyzanski, J.), aff'd, 162 F.2d 280 (1st Cir.), cert. denied, 332 U.S. 809 (1947). European courts have done so. A Belgian court declined to hold eBay liable for counterfeit cosmetic products sold through its website. See Lancôme v. eBay, Brussels Commercial Court (Aug. 12, 2008), Docket No. A/07/06032. French courts, by contrast, have concluded that eBay violated applicable trademark laws. See, e.g., S.A. Louis Vuitton Malletier v. eBay, Inc., Tribunal de Commerce de Paris, Premiere Chambre B. (Paris Commercial Court), Case No. 200677799 (June 30, 2008); Hermes v. The district court found the cases Tiffany relied on for the proposition that general knowledge of counterfeiting suffices to trigger liability to be inapposite. Id. at 510. In discussing Inwood's "knows or has reason to know" prong of the contributory infringement test, Sony refers to a defendant's knowledge, but not to its constructive knowledge, of a third party's infringing conduct. Sony, 464 U.S. at 439 n. 19, 104 S.Ct. 774. We do not take the omission as altering the test Inwood articulates. The demand letters did say that eBay should presume that sellers offering five or more Tiffany goods were selling counterfeits, id. at 511, but we agree with the district court that this presumption was factually unfounded, id. at 511-12. At the same time, we appreciate the argument that insofar as eBay receives revenue from undetected counterfeit listings and sales through the fees it charges, it has an incentive to permit such listings and sales to continue. See TheBagAddiction.com, http:// www. The Bag Addiction. com. This site can [no] longer be accessed because it was shut down following Gucci's lawsuit, but archived versions of the website can be browsed at The Internet Archive Wayback Machine. See http:// web. archive. org/ web/*/ http:// the bag addiction. com (last visited May 23, 2010).2 Gucci also brings suit against certain other "ABC Companies," unknown companies who engaged with the known defendants "in the manufacture, distribution, sale, and advertisement of [c]ounterfeit [p]roducts," Compl. ¶ 17, and "John Does," unknown individuals who also participated with the named defendants in the infringement and counterfeiting of Gucci products. Id. ¶ 18. Federal law and state common law infringement claims are analyzed identically. See, e.g., eBay, Judge Kozinski's analysis, like that of the majority in Perfect 10, is largely set in the context of copyright infringement. However, he later states that his dissent on trademark infringement is based on "precisely the same reasons." Perfect 10, 494 F.3d at 822. Indeed, Frontline and Woodforest's credit card processing system were likely integrated to some degree, since some sort of credit card "portal" necessarily had to be embedded in the website for a customer to make a purchase. Not only that, but the failure to say anything about a defendant's burden on this point was almost certainly not an oversight, not after the House Subcommittee on Trademarks declined to forward a proposal to provide expressly as an element of the defense that a descriptive use be "'[un]likely to deceive the public.'" Hearings on H.R. 102 et al. before the Subcommittee on Trade-Marks of the House Committee on Patents, 77th Cong., 1st Sess., 167-168 (1941) (hereinafter Hearings) (testimony of Prof. Milton Handler). See also Hearings 72 (testimony of Wallace Martin, Chairman, American Bar Association Committee on Trade-Mark Legislation) ("Everybody has got a right to the use of the English language and has got a right to assume that nobody is going to take that English language away from him"). The record indicates that on remand the courts should direct their attention in particular to certain factual issues bearing on the fair use defense, properly applied. The District Court said that Lasting's motion for summary adjudication conceded that KP used "microcolor" descriptively and not as a mark. Case No. SA CV 00-276-GLT (EEx), at 8, App. to Pet. for Cert. 29a. We think it is arguable Breitling also uses the term "red gold" in its website product listings The district court also concluded that there was a genuine issue of fact as to whether Solid 21's mark was generic, and thus invalid. Breitling does not challenge this finding on appeal. In all of its orders, the district court concluded that Breitling did not use the term "red gold" as a mark. In its reconsideration decision, the district court suggested that Breitling's "rose gold" watch as portrayed on the Breitling website was a lighter shade than the watch listed as "red gold." This was, as the district court saw it, evidence that "Breitling was using 'red gold' in a descriptive sense to reflect the nuance of that particular color," and that it was a "different hue from 'rose gold.'" After Solid 21 moved for reconsideration partly on the basis that Breitling used both terms to describe the same watch, the district court clarified that its prior finding "was not essential" to its reconsideration because Breitling's use of both terms was always descriptive and was "paired with other color and material descriptors such as 'stainless steel' and 'mother-of-pearl.'" The International Standards Organization ("ISO") created criteria for determining the chemical composition of gold alloys. Breitling contends that it complies with ISO Standard 8654. This standard specifies the composition of the "5N" alloy of gold, which the ISO calls "red." This is in contrast to the ISO's specification of a lighter "pink" gold alloy. For reasons stated above, whether Breitling complies with the ISO's exact metallurgical standards is immaterial to a descriptiveness analysis, but may have some bearing on the question of whether Breitling was acting in good faith when it employed the term "red gold." The majority explains that "red gold" is a longstanding scientific description of a particular gold alloy. See Maj. Op. at This has two problems. First, as a logical matter, it attempts to explain a change with a constant. And second, as a factual matter, the evidence shows that Breitling used "red gold" and "rose gold" interchangeably, not to describe two scientifically distinct alloys. In the only case in which we appear to have affirmed a grant of summary judgment on good faith despite the lack of a trademark search, Savin Corp. v. Savin Grp., F.3d 439 (2d Cir. 2004), the failure to perform the search was harmless because the mark was registered for use only in a different industry, see id. at 460. That is not the case here. Courts also occasionally find dictionary definitions and third-party patent registrations probative of whether a term or phrase is descriptive. See Uncommon, 926 F.3d at 422-23. If defendants are unable or unwilling to modify their use of the mark to comply with New Kids, then the district court's order to modify may effectively enjoin defendants from using the mark at all. By "word of mouth" we, of course, refer not merely to spoken recommendations from friends and acquaintances, but to the whole range of information available to online shoppers, including chat rooms, discussion forums, feedback and evaluation websites, and the like. "Words . . . do not worm their way into our discourse by accident." Alex Kozinski, Trademarks Unplugged, 68 N.Y.U. L. Rev. 960, 975 (1993). Trademark holders engage in "well-orchestrated campaigns intended to burn them into our collective consciousness." Id. Although trademark holders gain something by pushing their trademark into the lexicon, they also inevitably lose a measure of control over their mark.9 The Seventh Circuit has similarly upheld the right of a seller of Beanie Babies to operate at "bargainbeanies.com" on the grounds that "[y]ou can't sell a branded product without using its brand name." Ty Inc., 306 F.3d at 512. In a prophetic choice of examples, Judge Posner remarked that prohibiting such a domain name "would amount to saying that if a used car dealer truthfully advertised that it sold Toyotas, or if a muffler manufacturer truthfully advertised that it specialized in making mufflers for installation in Toyotas, Toyota would have a claim of trademark infringement." Id. This is necessarily so because, unlike classic fair use, nominative fair use is not specifically provided for by statute. A court may find classic fair use despite "proof of infringement" because the Lanham Act authorizes that result. See 15 U.S.C. § 1115(b)(4). Nominative fair use, on the other hand, represents a finding of no liability under that statute's basic prohibition of infringing use. See id. § 1114. As discussed above, our Court's test for assessing likelihood of confusion is the Polaroid test . . . . This Court has repeatedly urged district courts to apply the Polaroid factors even "where a factor is irrelevant to the facts at hand." Arrow Fastener Co., 59 F.3d at 400 ("[I]t is incumbent upon the district judge to engage in a deliberate review of each factor, and, if a factor is inapplicable to a case, to explain why."). [3] The district court, rather than applying the Polaroid factors, applied the Ninth Circuit's test which applies in cases of nominative use of marks. Nominative use is a "use of another's trademark to identify, not the defendant's goods or services, but the plaintiff's goods or services." McCarthy § 23:11. It is called "nominative" use "because it 'names' the real owner of the mark." Id. "The doctrine of nominative fair use allows a defendant to use a plaintiff's trademark to identify the plaintiff's goods so long as there is no likelihood of confusion about the source of the defendant's product or the mark-holder's sponsorship or affiliation." Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 102 (2d Cir. 2010) (alterations and internal quotation marks omitted). Because the Polaroid factors-or their analogues in other circuits-are not easily applied in cases of nominative use, various courts have created new tests to apply in such circumstances. The Ninth Circuit's nominative fair use doctrine stems from its decision in New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992) . . . . Other circuits have adopted variations of this test. See, e.g., Universal Commc'n Sys., Inc. v. Lycos, Inc., 478 F.3d 413, 424 (1st Cir. 2007); Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211, 220-22 (3d Cir. 2005); Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 546-47 (5th Cir. 1998). [4] In the Ninth Circuit, nominative fair use is not an affirmative defense because it does not protect a defendant from liability if there is, in fact, a likelihood of consumer confusion. Rather, the nominative fair use test replaces the multi-factor test that the Ninth Circuit typically employs to determine consumer confusion, i.e., it replaces the Ninth Circuit's analogue to the Polaroid test. See Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150-51 (9th Cir. 2002); accord Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1175 (9th Cir. 2010); see also McCarthy § 23:11 ("The Ninth Circuit, in crafting a separate category of a 'nominative fair use' analysis, created a specialized tool to analyze a certain class of cases of alleged infringement . . . . The Ninth Circuit did not intend nominative fair use to constitute an affirmative defense."). [5] By contrast, the Third Circuit, another court to have developed a nominative fair use doctrine, affords defendants broader protection. The Third Circuit treats nominative fair use as an affirmative defense that may be asserted by the defendant despite a likelihood of consumer confusion. To be entitled to protection based on the affirmative defense, a defendant must show (1) that the use of plaintiff's mark is necessary to describe both the plaintiff's product or service and the defendant's product or service; (2) that the defendant uses only so much of the plaintiff's mark as is necessary to describe plaintiff's product; and (3) that the defendant's conduct or language reflect the true and accurate relationship between plaintiff and defendant's products or services. [6] To this point, this Court has not adopted either the Ninth Circuit or the Third Circuit's rule on nominative fair use. Nonetheless, district courts within our Circuit frequently use the Ninth Circuit's formulation. See, e.g., Car-Freshner Corp. v. Getty Images, Inc., 822 F.Supp.2d 167, 177-78 (N.D.N.Y. 2011); Audi AG v. Shokan Coachworks, Inc., 592 F.Supp.2d 246, 269-70 (N.D.N.Y. 2008) (collecting cases). Further, as discussed below we have endorsed the principles underlying the nominative fair use doctrine. See Tiffany (NJ) Inc., 600 F.3d at 102-03; Dow Jones & Co. v. Int'l Sec. Exch., Inc., 451 F.3d 295, 308 (2d Cir. 2006). [7] Having considered the case law, as well as the positions of the United States Patent and Trademark Office, we reject the Third Circuit's treatment of nominative fair use as an affirmative defense. The Lanham Act sets forth numerous affirmative defenses to infringement claims that can be asserted even if the plaintiff has established likelihood of confusion. See 15 U.S.C. § 1115(b). The Third Circuit's basis for treating nominative fair use as an affirmative defense is that the Supreme Court has treated classic, or descriptive, fair use as an affirmative defense. See Century 21 Real Estate Corp., 425 F.3d at 222 (citing KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 118-20, 125 S.Ct. 542, 160 L. Ed.2d 440 (2004)). But in treating descriptive fair use as an affirmative defense, the Supreme Court was interpreting a provision of the Lanham Act which provided that claims of infringement are subject to various defenses, including That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin . . . . 15 U.S.C. § 1115(b) (4); see KP Permanent Make-Up, Inc., 543 U.S. at 118-20, 125 S.Ct. 542 (analyzing 15 U.S.C. § 1115(b) (4) and ultimately concluding that Congress intended descriptive fair use to be an affirmative defense). That is, under the Supreme Court's interpretation, the Lanham Act explicitly provides that descriptive fair use is an affirmative defense. And nominative fair use cannot fall within § 1115(b)(4)'s language, as nominative fair use is not the use of a name, term, or device otherwise than as a mark which is descriptive of and used merely to describe the goods or services of the alleged infringer. See Cosmetically Sealed Indus., Inc. v. Chesebrough-Pond's USA Co., 125 F.3d 28, 30 (2d Cir. 1997) (finding descriptive fair use when the alleged infringer engaged in a "non-trademark use of words in their descriptive sense"). Nominative use involves using the mark at issue as a mark to specifically invoke the mark-holder's mark, rather than its use, other than as a mark, to describe the alleged infringer's goods or services. If Congress had wanted nominative fair use to constitute an additional affirmative defense, it would have provided as such. We therefore hold that nominative fair use is not an affirmative defense to an infringement claim. [8] We turn next to the question of whether we should adopt a nominative fair use test, either to supplant or to replace the Polaroid test. Although we see no reason to replace the Polaroid test in this context, we also recognize that many of the Polaroid factors are a bad fit here and that we have repeatedly emphasized that the Polaroid factors are non-exclusive. And although we have not expressly rejected or accepted other circuits' nominative fair use tests, we "have recognized that a defendant may lawfully use a plaintiff's trademark where doing so is necessary to describe the plaintiff's product and does not imply a false affiliation or endorsement by the plaintiff of the defendant." Tiffany (NJ) Inc., 600 F.3d at 102-03 . . . . [9] Because we believe that the nominative fair use factors will be helpful to a district court's analysis, we hold that, in nominative use cases, district courts are to consider the Ninth Circuit and Third Circuit's nominative fair use factors, in addition to the Polaroid factors. When considering a likelihood of confusion in nominative fair use cases, in addition to discussing each of the Polaroid factors, courts are to consider: (1) whether the use of the plaintiff's mark is necessary to describe both the plaintiff's product or service and the defendant's product or service, that is, whether the product or service is not readily identifiable without use of the mark; (2) whether the defendant uses only so much of the plaintiff's mark as is necessary to identify the product or service; and (3) whether the defendant did anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the plaintiff holder, that is, whether the defendant's conduct or language reflects the true or accurate relationship between plaintiff's and defendant's products or services. [10] When assessing the second nominative fair use factor, courts are to consider whether the alleged infringer "step [ped] over the line into a likelihood of confusion by using the senior user's mark too prominently or too often, in terms of size, emphasis, or repetition." McCarthy § 23:11; see, e.g., PACCAR Inc. v. TeleScan Technologies, L.L.C., 319 F.3d 243, 256 (6th Cir. 2003) ("Using [the plaintiff's] trademarks in its domain names, repeating the marks in the main titles of the web sites and in the wallpaper underlying the web sites, and mimicking the distinctive fonts of the marks go beyond using the marks 'as is reasonably necessary to identify' [the plaintiff's] trucks, parts, and dealers."), abrogated on other grounds by KP Permanent Make-Up, Inc., 543 U.S. at 116-17; Brother Records, Inc. v. Jardine, 318 F.3d 900, 908 (9th Cir. 2003) (considering the fact that the defendant used the mark "'The Beach Boys' more prominently and boldly" than the rest of its name "The Beach Boys Family and Friends" such that event organizers and members of the audience were confused about who was performing); Playboy Enters., Inc. v. Welles, 279 F.3d 796, 804 (9th Cir. 2002) (holding that defendant's repeated use of the abbreviation "PMOY ′81" meaning "Playmate of the Year 1981" on the background/wallpaper of her website failed to establish nominative fair use because "[t]he repeated depiction of "PMOY ′81" is not necessary to describe [the defendant]"), abrogated on other grounds by Miller v. Gammie, 335 F.3d 889 (9th Cir. 2003); cf. Swarovski Aktiengesellschaft v. Building No. 19, Inc., 704 F.3d 44, 51-52 (1st Cir. 2013) (reversing preliminary injunction restricting discount retailer from using large size font in advertising sale of "Swarovski" crystal figurines because lower court erred by assuming that retailer used "more of the mark than necessary" without determining if large size font was likely to cause consumer confusion). [11] Additionally, when considering the third nominative fair use factor, courts must not, as the district court did here, consider only source confusion, but rather must consider confusion regarding affiliation, sponsorship, or endorsement by the mark holder. See Courtenay Commc'ns Corp. v. Hall, 334 F.3d 210, 213 n. 1 (2d Cir. 2003) (vacating dismissal of Lanham Act claims and holding nominative fair use did not supply alternative grounds for dismissal because defendant's "hyperlink connection to a page of endorsements suggests affiliation, sponsorship, or endorsement by" the plaintiff (internal quotation marks omitted)). [12] We therefore remand for reconsideration of the Polaroid factors in addition to the nominative fair use factors . . . . Liquid Glass Enterprises, Inc. v. Dr. Ing. h.c.F. Porsche AG 8 F. Supp. 2d 398 (D.N.J. 1998) In Liquid Glass Enterprises, Inc. v. Dr. Ing. h.c.F. Porsche AG, the declaratory plaintiff Liquid Glass ran numerous advertisements incorporating Porsche automobiles. The court focused on two. The first was "an ad appearing in the May 1997 issue of a national car magazine, Motor Trend, which portrays a provocatively-dressed woman applying Liquid Glass car polish to a Porsche 911 with the trademark 'PORSCHE' prominently displayed on the car." Id. at 399. The second was a ten-minute video for use at trade shows that opens with a Porsche 911 (with the Porsche crest plainly visible) accelerating down a highway. Immediately following, the video cuts to a woman who is undressing and taking a shower. Thereafter, the video cuts alternately between a car (not a Porsche) being washed and polished and a woman showering, putting on her makeup and getting dressed. The video then illustrates Liquid Glass's uses on numerous expensive cars and ends with a shot of the Porsche 911 speeding down the road. Id. at 400. Applying New Kids, the court found no nominative fair use and ultimately granted the declaratory defendant's preliminary injunction motion. As to the first factor, "Liquid Glass has asserted no reason why the Porsche trademark or trade dress is necessary in its promotion of Liquid Glass products." Id. at 402. As to the second factor, "[n]either does Liquid Glass use only so much of Porsche's trademarks and trade dress as is reasonably necessary. See, e.g., Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350, 352 (9th Cir. 1969) (repair shop can only use the word 'Volkswagen' but cannot use the distinctive lettering or the encircled 'VW' emblem)". Id. at 402-403. As to the third New Kids factor, the court then proceeded through the Third Circuit's Scott Paper multifactor test for consumer confusion to find that "Liquid Glass's advertisements could mislead the public into believing that Porsche endorsed Liquid Glass's products or at least approved of their use on Porsche automobiles." Id. at 403. The court also found dilution by blurring. The defendant planned to release a 227-page Godzilla compendium book entitled "Godzilla!", the title of which was "written in the distinctive lettering style used by Toho and its licensees in their merchandising activities." Id. at 1209. Toho moved for a preliminary injunction. Applying New Kids, the court found, on factor one, that "[t]he product (the Godzilla character) is one not readily identifiable without the use of the trademark. A 'giant sized prehistoric dragon-like monster' may be an adequate description of Plaintiff's product, but use of the 'Godzilla' mark is required to readily identify Plaintiff's product." Id. at 1211. However, on factor two, "the cover of the Morrow Book contains Toho's trademark in bold orange lettering prominently displayed. This prong of the test does not appear to be satisfied because Morrow's use exceeds its legitimate referential purpose." Id. On the third New Kids factor, the court proceeded through the Ninth Circuit's Sleekcraft test for the likelihood of consumer confusion to find that "consumer confusion is likely." Id. at 1215. In a separate discussion (placed after its analysis of the first and second New Kids Factors but before its Sleekcraft analysis), the court found that the defendant's disclaimers on the front and back of the book were ineffective. The court described the disclaimers: On the front cover, the word "UNAUTHORIZED" appears at the very top of the page, in relatively small lettering, surrounded by an orange bordering. On the back cover the following disclaimer appears, highlighted by its appearance against a blue background: "THIS BOOK WAS NOT This Court finds that the disclaimers do not alleviate the potential for consumer confusion. The word "UNAUTHORIZED" on the front cover only conveys a limited amount of information. It is not necessarily clear that alerting the average consumer to the word "UNAUTHORIZED" would negate consumer confusion as to Toho's sponsorship or endorsement of the Morrow Book. As the court in Twin Peaks Productions v. Publications Intern., 996 F.2d 1366, 1379 (2nd Cir. 1993) stated, the disclaimer would have been far more effective had it simply stated "that the publication has not been prepared, approved, or licensed by any entity that created or produced the" original Toho Godzilla films. That this information is conveyed on the back cover does not suffice. This Court is of the belief that most consumers look primarily at the front cover of a book prior to purchase. Moreover, the color of the disclaimer on the front cover does not effectively draw the attention of the average consumer as its bordering is in the same shade as the title. Further, the word is placed at the top of the page where most consumers' eyes are not likely to dwell. Perhaps if the information contained on the back cover were placed on the front cover, consumer confusion could be negated. The disclaimer is also not placed on the spine of the Morrow Book, a place where many consumers are likely to view before seeing the cover. Toho also asserts that the advertisement for the Morrow Book placed on the Internet at sites such as "Amazon.com" does not even contain the disclaimer. In summary, this Court finds that the disclaimers are ineffective. Id. at 1213. Consider, by contrast, the approach taken by the following book: trade dress in the Superstar Barbie head and the doll's overall appearance. The district court concluded that there was no likelihood that the public would be misled into believing that Mattel endorsed Forsythe's photographs despite Forsythe's use of the Barbie figure. [4] Arguably, the Barbie trade dress also plays a role in our culture similar to the role played by the Barbie trademark-namely, symbolization of an unattainable ideal of femininity for some women. Forsythe's use of the Barbie trade dress, therefore, presumably would present First Amendment concerns similar to those that made us reluctant to apply the Lanham Act as a bar to the artistic uses of Mattel's Barbie trademark in both MCA and this case. But we need not decide how the MCA/Rogers First Amendment balancing might apply to Forsythe's use of the Barbie trade dress because we find, on a narrower ground, that it qualifies as nominative fair use. . . . . [5] Forsythe's use of the Barbie trade dress is nominative. Forsythe used Mattel's Barbie figure and head in his works to conjure up associations of Mattel, while at the same time to identify his own work, which is a criticism and parody of Barbie. See Cairns, 292 F.3d at 1151. Where use of the trade dress or mark is grounded in the defendant's desire to refer to the plaintiff's product as a point of reference for defendant's own work, a use is nominative. [6] Fair use may be either nominative or classic. Id. at 1150. We recognize a fair use defense in claims brought under § 1125 where the use of the trademark "does not imply sponsorship or endorsement of the product because the mark is used only to describe the thing, rather than to identify its source." New Kids on the Block, 971 F.2d at 306. . . . [7] Forsythe's use easily satisfies the first element {of the New Kids test}; his use of the Barbie figure and head are reasonably necessary in order to conjure up the Barbie product in a photographic medium. See id. at 1153 (" [T]here is no substitute for Franklin Mint's use of Princess Diana's likeness on its Diana-related products . . . ."). It would have been extremely difficult for Forsythe to create a photographic parody of Barbie without actually using the doll. [8] Forsythe also satisfies the second element, which requires that a defendant only use so much of a trademark or trade dress as is reasonably necessary. As we recognized in Cairns, "[w]hat is 'reasonably necessary to identify the plaintiff's product' differs from case to case." Id. at 1154. Where identification "of the defendant's product depends on the description [or identification] of the plaintiff's product, more use of the plaintiff's trademark" or trade dress is reasonably necessary. Id. Given the photographic medium and Forsythe's goal of representing the social implications of Barbie, including issues of sexuality and body image, Forsythe's use of the Barbie torso and head is both reasonable and necessary. It would be very difficult for him to represent and describe his photographic parodies of Barbie without using the Barbie likeness. [9] Though a "closer call than the first two elements" of the nominative fair use analysis, id. at 1155, the final element-that the user do nothing that would, in conjunction with use of the mark or dress, suggest sponsorship or endorsement by the trademark or trade dress holder-is satisfied here and weighs in Forsythe's favor. This element does not require that the defendant make an affirmative statement that their product is not sponsored by the plaintiff. Id. [10] Mattel attempts to argue that Forsythe suggested sponsorship by asserting to potential consumers that one of his photographs "hangs on the wall of the office of Mattel's President of Production," to whom Forsythe referred as "Joe Mattel." [11] One of the purchasers of Forsythe's work apparently told Forsythe that he had given the work to this Mattel senior executive as a gift. Forsythe repeated this fact in certain letters to galleries and friends. Forsythe claims that he had no intention of suggesting sponsorship and that he meant the statement humorously. In virtually every promotional packet in which Forsythe mentioned "Joe Mattel," he also included a copy of his biography in which he identified himself as "someone criticizing Mattel's Barbie and the values for which it stands." The letters in the packets asserted that Forsythe was attempting to "deglamourize[ ] Barbie," "skewer[ ] the Barbie myth," and expose an "undercurrent of dissatisfaction with consumer culture." A similar mission statement was prominently featured on his website. [12] The rest of the materials in these promotional packets sent to galleries reduce the likelihood of any consumer confusion as to Mattel's endorsement of Forsythe's work. Any reasonable consumer would realize the critical nature of this work and its lack of affiliation with Mattel. Critical works are much less likely to have a perceived affiliation with the original work. New Kids on the Block, 971 F.2d at 309 (finding no suggested sponsorship in part because a poll in a magazine regarding the popularity of the New Kids asked if the New Kids had become a "turn off"). Moreover, even if "Joe Mattel" existed, we question whether possession by a third-party passive recipient of an allegedly infringing work can suggest sponsorship. . . . . {The district court eventually ordered Mattel to pay Forsythe's legal fees in the amount of $1.9 million. See Mattel, Inc. v. Walking Mountain Productions, 2004 WL 1454100 (C.D.Cal., June 21, 2004). This was in addition to the Ninth Circuit's determination that Mattel should pay the costs of the appeal. See Mattel, Inc. v. Walking Mountain Productions, 353 F.3d 792, 816 (9th Cir. 2003).} ______________________________________________________________________________ You may recall the Smack Apparel case excerpted above in Parts I.A.1.b and II.B.5. Why weren't Smack Apparel's uses nominative uses? Excerpted here is the core of the Fifth Circuit's analysis, such as it is. [1] Smack used the Universities' colors and indicia in more than a nominative sense. It did not incorporate the colors and other indicia to describe or compare its shirts with shirts licensed by the Universities, nor did it do so to tell the public what it had copied. Smack did incorporate the marks to identify the Universities as the subject of the shirts, but it did so in a way that improperly suggested affiliation, sponsorship, or endorsement. [2] To take a simple example, two shirt designs targeted toward the fans of OSU and USC refer to the number of national championships those universities have won and ask, respectively, "got seven?" and "got eight?" Both shirts proclaim "WE DO!" and contain other specific indicia identifying the schools. Smack did not win any national championships-the respective Universities did. The use of the inclusive first-person personal pronoun "we" easily permits the inference that the schools are the speakers in the shirts and therefore endorsed the message. [3] As noted by the district court, Smack copied the mark with "an intent to rely upon the drawing power in enticing fans of the particular universities to purchase their shirts." Such an attempt to capitalize on consumer confusion is not a nominative fair use. 122 We conclude that the district court correctly granted summary judgment to the Universities on this issue. . . . . We use the term "expressive" to denote the great variety of unauthorized uses of marks for purposes such as parody, criticism, or social commentary, be they for profit or entirely non-commercial in nature. Unlike copyright law and its doctrine of copyright fair use, trademark law has no one-size-fits-all doctrine to address the permissibility of such expressive uses. Further complicating matters is that any particular expressive use should be analyzed both (1) for the likelihood that the use will cause consumer confusion and (2), if the targeted mark qualifies for antidilution protection, for the likelihood that the use will cause trademark dilution. In Part III.C.1, we turn first to a leading example of a court's analysis of a for-profit parodic use both under the multifactor test for the likelihood of consumer confusion and the test under Lanham Act § 43(c), 15 U.S.C. § 1125(c), for the likelihood of tradebark blurring and tarnishment. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007), is a lengthy opinion that is presented here almost in full, but it may reward a thorough reading. Not all courts follow the example of the Fourth Circuit's analysis in Haute Diggity Dog, however. Indeed, the case law on expressive uses and the likelihood of consumer confusion can be quite diverse. Part III.C.1 also offers a brief summary of a minor case, MPS Entm't, LLC v. Abercrombie & Fitch Stores, Inc., No. 11 Civ. 24110, 2013 WL 3288039 (S.D. Fla. June 28, 2013), in which the court engaged in a routine use of the multifactor test for the likelihood of confusion (without any special attention to the issue of parody) and simply found no likelihood of confusion. We then turn in Part III.C.2 to the Rogers v. Grimaldi test for artistically relevant uses of trademarks. In recent years, this test has become increasingly influential as a replacement for the likelihood of confusion test in expressive use situations. However, in Jack Daniel's Props. v. VIP Prods. LLC, 599 U.S. 140 (2023), the Supreme Court significantly limited the reach of the test. Note also that the Rogers v. Grimaldi test limits itself only to the question of consumer confusion. It does not address the additional question of whether the expressive use dilutes by blurring or tarnishment the targeted mark. On that issue, a typical defendant may seek to avail itself of the "Exclusions" from antidilution protection provided by Lanham Act § 43(c)(3), 15 U.S.C. 1125(c) (3). Accordingly, Part III.C.3 focuses on expressive uses and trademark dilution and considers further aspects of the Lanham Act § 43(c)(3) exclusions. One final preliminary comment going to the realities of the reading in this subpart: for all of the elaborate doctrine that is meant to limit plaintiffs' trademark rights and allow defendants' expressive uses, the fact is that defendants often cannot afford to benefit from these limits. They often settle rather than bankrupt themselves through litigation. Consider one example of this sad reality: Seal Press, a small book publisher that specializes in non-fiction and fiction by women writers, published a book, "Adios, Barbie," that examined body image from a feminist perspective {image of first edition book cover shown below on left}. Seal was sued by Mattel for dilution. Commenting on the suit, the Seal Press publisher said "[w]e thought the First Amendment provided us with every right to evoke the outrageousness of tall, thin,

vi Select Comfort Wreal, LLC v. Amazon.com, Inc. ...................................................................................... Coach Servs., Inc. v. Triumph Learning LLC ............................................................. Nike, Inc. v. Nikepal Intern., Inc. ..................................................................................... Starbucks Corp. v. Wolfe's Borough Coffee, Inc. ..................................................... Catalogue, Inc. v. Moseley ............................................................................. Blair v. Automobili Lamborghini SpA .......................................................................... Lamparello v. Falwell ........................................................................................................ Facebook Inc. v. Radoslav ................................................................................................ Inc. v. eBay Inc. ............................................................................................. Gucci America, Inc. v. Frontline Processing Corp. ................................................ I should say a word or two about the court opinions included in this casebook. As with any casebook, students should ask themselves as they come upon each particular opinion: Why is this opinion being presented to me? What is it doing here? This casebook includes some opinions because they are leading opinions that continue to have a significant influence on the course of American trademark doctrine. Other opinions are included because they are simple, straightforward examples of the doctrine being applied. Still other opinions are included because they are problematic and almost certainly wrong. Finally, some opinions are included because they are all of the above. Though the casebook does sometimes point out which opinions have proven to be highly influential, you are nevertheless invited, as you proceed through the casebook, to decide for yourself how each opinion should otherwise be characterized.

The opinions are sometimes lightly edited and may retain many of the citations included in the original opinion. They may also retain paragraphs that review doctrine previously covered. This may be frustrating to students accustomed to reading aggressively editeddown opinions. But sometimes more is ultimately less. I use curly brackets-{ }-to distinguish edits I have made in the opinions from the original opinion's use of square brackets.

If you would prefer a different format for the casebook, one more easily readable on screen, a .docx version of the casebook is available at tmcasebook.org.

The casebook remains a work in progress. I update it every summer. I'm grateful to the many professors who have adopted the book for use in their classrooms and who have written to me with corrections and suggestions. I'm also grateful to the many students who have done the same. This is a free casebook. My hope is that this casebook shows that it is possible to produce a reasonably useful American law school casebook on standard word-processing software without the need for the traditional publishers-and their exploitative prices per copy. My further hope is that, being free and online, the casebook is more accessible to students around the world. The downside is that the book is not professionally proofread, formatted, or bluebooked. Please forgive any errors.

Finally, the book is free largely due to the support of NYU Law's students and alumni, most notably, John M. Desmarais (NYU Law '88) of Desmarais LLP, who established the professorship I hold at NYU Law. I thank all of them for their support.

Trademark lawyers often tell the story in one form or another of the Coca-Cola lawyer who spoke in 1986 of the value of the company's goodwill as symbolized by its brand: "The production plants and inventories of The Coca-Cola Company could go up in flames overnight. Yet, on the following morning there is not a bank in Atlanta, New York, or anywhere else, that would not lend this Company the funds necessary for rebuilding, accepting as security only the inherent good will in its trademarks 'Coca-Cola' and 'Coke."' 1 The story was and remains no exaggeration. In 2024, Interbrand estimated the value of the Coca-Cola brand to be $58.0 billionfoot_1 -as against Coca-Cola's fixed assets in 2024 of $9.2 billion. 3APPLE, GOOGLE, COKE, MICROSOFT, SAMSUNG, TOYOTA, MCDONALDS, LOUIS VUITTON, NIKE, PEPSI, FACEBOOK, VISA, CITI, STARBUCKS. Instantly recognizable by a very large proportion of humanity, these are among the most valuable and influential signs in the world, rivaling in significance many religious and national symbols. They are only the most notorious of the millions of brand names that populate the modern marketplace. Trademark law regulates these brand names, from the multi-billion dollar global brands to the name of the local shop down the street. Without trademark protection, many would cease to exist.

In this introductory chapter, we first review the early history of trademarks and trademark law, including the first great Supreme Court trademark case, the so-called Trade-Mark Cases. We then critically consider the varied policy justifications for trademark protection. We conclude by briefly situating trademark law within the larger scheme of intellectual property law.

A. The History of U.S. Trademark Law 1. The Origins of Trademarks and Trademark Law

In the excerpt that follows, Professor Mark McKenna surveys the origins of American trademark law from seventeenth-century English case law up through nineteenth-century American case law. Some of the cases he mentions may seem far removed in their facts and reasoning from the present-day world of the global internet and multi-billion dollar brands. But as you will see, the early history of trademark law implicates questions that continue to concern courts and trademark law policymakers. What is the proper rationale for trademark protection? Are trademark rights simply a form of pernicious monopoly rights? Is trademark law intellectual property law or is it unfair competition law? What should qualify for trademark protection? What role should intent or "bad faith" play in the determination of liability for trademark infringement? Should consumers have standing to sue when they are confused by one company's use of a mark similar to another company's mark? II. A SECOND LOOK AT EARLY TRADEMARK PROTECTION [1] Use of markings to identify and distinguish one's property dates to antiquity, and regulations regarding use of those marks almost as long . . . . Because nineteenth-century American courts explicitly drew on English law . . . , a full account necessarily begins in England.

A. Medieval Marks as Liabilities [2] Scholars have identified a number of ways in which individuals and producers historically used distinguishing marks. Most basically, merchants used marks to demonstrate ownership of physical goods, much in the way that ranchers use cattle brands to identify their cattle. Use of marks to indicate ownership of goods was particularly important for owners whose goods moved in transit, as those marks often allowed owners to claim goods that were lost. Producers relied on identifying marks, for example, to demonstrate ownership of goods recovered at sea.foot_3 [3] Marks also were quite important to the operation of the guild system in medieval England. Local guilds often developed reputations for the quality of their products. When they did, the names of the towns or regions in which those guilds operated became repositories of goodwill. To maintain that goodwill, guilds needed to be able to restrict membership and identify and punish members who produced defective products. Guilds therefore required their members to affix distinguishing marks to their products so they could police their ranks effectively. 26[4] Importantly, guilds required members to display their marks for the purpose of developing and maintaining the collective goodwill of the guild; marks were not used for the purpose of establishing individual producer goodwill. Indeed, intraguild competition was strictly forbidden. Moreover, guild regulations were not motivated primarily by a concern for consumers. Even in the cutlers' trade, where marks seem to have been viewed most analogously to modern trademarks, 28 regulation was intended not for the protection of purchasers, but for "guidance of those exercising control or working in rivalry." 29 In fact, though it is not clear how often mark owners sought enforcement of their marks during this period, whatever enforcement mark owners did pursue seems to have been motivated by their concern about being held responsible for products they did not make.

. . . . 1. Trademarks in Courts of Law and Equity [5] The first reported English decision clearly involving a claim based on use of a party's trademark was the court of equity's 1742 decision in Blanchard v. Hill, 39 {in which Lord Chancellor Hardwicke declined to issue an injunction}. The plaintiff in that case, a maker of playing cards, sought an injunction to restrain the defendant from making use of the Great Mogul as a stamp upon his cards, to the prejudice of the plaintiff, upon a suggestion, that the plaintiff had the sole right to this stamp, having appropriated it to himself, conformable to the charter granted to the cardmakers' company by King Charles the First. 40 [6] The factual context of Blanchard is particularly noteworthy; the plaintiff was seeking protection of a mark for playing cards pursuant to a royal charter, and charters granting exclusive rights to cardmakers had been at the center of a long political struggle between Parliament and the Crown. Marks played an important role in the contested charter scheme because cardmakers were required to use their seals so that exclusivity could be enforced, 42 a fact that clearly colored the court's view of the case. . . .

[7] The Blanchard decision, however, should not be read as a categorical condemnation of claims based on use of a competitor's mark. Rather, Lord Hardwicke was focused on cases in which the plaintiff's claim of exclusive rights emanated from a monopoly granted by royal charter. In fact, his decision in Blanchard specifically distinguished the plaintiff's claim in that case from the clothier's claim referenced in Popham's report of Southern {v. How, which was probably the case J. G. v. Samford (C.P. 1584) in which one clothier used the mark of another with the intent to deceive consumers}. Unlike the plaintiff in Blanchard, who claimed the exclusive right to use his Mogul mark without qualification, the clothier in Southern based his case on the defendant's "fraudulent design, to put off bad cloths by this means, or to draw away customers from the other clothier." 45 When the defendant intended to pass off its goods as those of the plaintiff, Lord Hardwicke implied, an injunction might well be appropriate. 29 Id. at 120 (quoting Robert Eadon Leader, History of the Cutlers of Hallamshire 110 (1906)). 39 (1742) 2 Atk. 484 (Ch.), 26 Eng. Rep. 692 40 Id. at 484, 26 Eng. Rep. at 692-93. 42 See The Case of Monopolies, (1603) 11 Co. Rep. 84b, 88b, 77 Eng. Rep. 1260, 1266 (K.B.) (calling the playing card monopoly granted by Queen Elizabeth under her royal prerogative an "odious monopoly").

[8] Despite the initial reluctance of courts of equity to recognize exclusive rights in trademarks and Lord Hardwicke's clear suggestion that claimants pursue such claims at law, the first reported trademark decision by an English common law court was the 1824 decision in Sykes v. Sykes. 46 In that case, the court upheld a verdict for the plaintiff against defendants who marked their shot-belts and powder-flasks with the words "Sykes Patent" in imitation of the plaintiff's use of the same mark for its shot-belts and powder-flasks. 47 After specifically noting that the plaintiff's sales had decreased after the defendants began selling their identically labeled products, the court concluded that the defendants had violated the plaintiff's rights by marking their goods so as "to denote that they were of the genuine manufacture of the plaintiff" and "[selling] them to retail dealers, for the express purpose of being resold, as goods of the plaintiff's manufacture." 48 [9] A number of common law cases following the Sykes decision recognized claims in similar circumstances, imposing liability when a producer sought to pass off its goods as those of a competitor. 49 Those cases generally were brought as actions on the case, in the nature of deceit. Yet one must be careful not to read those cases through modern lensesdespite the form of action, courts in these early cases invariably described the defendant as having practiced fraud against the plaintiff. 51

[10] Like their counterparts in courts of law, courts of equity became more solicitous of trademark claims in the first part of the nineteenth century. Of particular significance, courts very early on concluded that, where a claimant could demonstrate an exclusive right to use a particular mark, equity would intervene to protect a property interest and evidence of fraudulent intent was not necessary. . . . [11] As Lord Westbury said in Leather Cloth Co. v. American Leather Cloth Co. 57 rejecting any contention that courts of equity based their jurisdiction on fraud,

The true principle, therefore, would seem to be, that the jurisdiction of the Court in the protection given to trade marks rests upon property, and that the Court interferes by injunction, because that is the only mode by which property of this description can be effectually protected. 59 Significantly, Lord Westbury reached this conclusion after noting that, even when a party held out his goods as those of another, the other had no right to complain unless the act caused 46 (1824) 3 B. & C. 541,107 Eng. Rep. 834 (K.B.). 47 Sykes, 3 B. & C. at 543, 107 Eng. Rep. at 835. 48 Id. 49 See, e.g., Blofeld v. Payne, (1833) 4 B. & Ad. 410, 411-12, 110 Eng. Rep. 509, 510 (K.B.). 51 See Blofeld,4 B. & Ad. at 412,110 Eng. Rep. at 510 (upholding the verdict for the plaintiff and holding that the defendant's use of envelopes resembling those of plaintiff's, and containing the same words, was a "fraud against the plaintiff"). 57 (1863) 4 De G.J. & S. 137,141,46 Eng. Rep. 868 (Ch). 59 Id. at 142,46 Eng. Rep. at 870. him some pecuniary loss or damage. 60 "Imposition on the public, occasioned by one man selling his goods as the goods of another, cannot be the ground of private right of action or suit." 61 The court in Levy v. Walker 62 was even more explicit that the protection of trademarks was intended to protect producers and not primarily for the benefit of consumers: "The Court interferes solely for the purpose of protecting the owner of a trade or business from a fraudulent invasion of that business by somebody else. It does not interfere to prevent the world outside from being misled into anything." 63 . . . .

C. Early American Trademark Jurisprudence

Comments and Questions 1. "Technical trademarks", "trade names", and intent. In addressing the role of intent in late nineteenth century American unfair competition law, McKenna cites The Restatement (Third) of Unfair Competition. The Restatement explains:

In both England and the United States {in the late nineteenth century}, the property conception of trademark rights extended only to certain designations. When the defendant imitated a designation that was clearly distinctive of the plaintiff's goods, the natural inference that the defendant intended to deceive prospective purchasers eventually led to a conclusive presumption of fraud. Thus, in the case of words or other symbols invented by the plaintiff or arbitrary designations that had no apparent relation to the plaintiff's goods except as an indication of source, the courts began to protect the plaintiff's "property" interest in the mark without regard to the presence of any fraudulent intent. Such marks were characterized as "trademarks," and cases involving the unauthorized use of these marks were designated as actions for "trademark infringement." The focus of the inquiry thus shifted from an analysis of the defendant's conduct to a consideration of the nature of the plaintiff's right. Less distinctive marks that had nevertheless come to be recognized by prospective consumers as indications of source were called "trade names." Although not recognized as "property" in the same sense as technical "trademarks," protection for "trade names" remained available through the action for "unfair competition," with its historical emphasis on the fraudulent character of the defendant's conduct.

. . . The initial emphasis on fraud and property rights has generally given way to a more explicit analysis of the propriety of the defendant's conduct as a means of competition, and the technical distinctions between the actions for trademark infringement and unfair competition have now been abandoned. RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 9, cmt. d (1995).

2. Production marks. As the McKenna excerpt explains, local guilds required production marks not just to aid in asserting their monopoly but also to fix liability for poorlymade goods that might tarnish the reputation of the guild. An early example of quality enforcement-and of trademark adjudication-comes to us in the remarkable story of the fourteenth-century bladesmith John Odinsay. Odinsay was accused of making a sword that broke during combat when one Sir Peter Harpdon used it to defend himself from highway brigands while travelling through Bordeaux in 1345. Sir Peter recovered from his wounds in that skirmish and went on to fight next to the Black Prince in the Battle of Crecy in 1346. But upon his return to London, he pursued the matter of the broken sword. The hallmark suggested that Odinsay had made it (and the penalties for such faulty craftsmanship would have ruined Odinsay and his family), but the mark turned out to be a forgery. The London bladesmiths' guild discovered that several of its members' marks were being forged, perhaps by smiths in nearby cities. See Thomas D. Drescher, The Transformation and Evolution of Trademarks-From Signals to Symbols to Myth, 82 TRADEMARK REPORTER 301, 313-18 (1992).

The Supreme Court's 1879 opinion in the Trade-Mark Cases is the first great Supreme Court opinion on trademarks (often written at the time as "trade-marks" or "trade marks", which latter usage British English still prefers to this day). It arose out of three criminal cases in which the defendants challenged the constitutionality of the federal trademark law in effect at the time. As you will see, it was not an auspicious start for federal trademark law.

Trade-Mark Cases 100 U.S. 82 (1879) MR. JUSTICE MILLER delivered the opinion of the court.

[1] The three cases whose titles stand at the head of this opinion are criminal prosecutions for violations of what is known as the trade-mark legislation of Congress. The first two are indictments in the southern district of New York, and the last is an information in the southern district of Ohio. In all of them the judges of the circuit courts in which they are pending have certified to a difference of opinion on what is substantially the same question; namely, are the acts of Congress on the subject of trade-marks founded on any rightful authority in the Constitution of the United States? [2] The entire legislation of Congress in regard to trade-marks is of very recent origin. It is first seen in sects. 77 to 84, inclusive, of the act of July 8, 1870, entitled 'An Act to revise, consolidate, and amend the statutes relating to patents and copyrights. ' 16 Stat. 198. The part of this act relating to trade-marks is embodied in chap. 2, tit. 60, sects. 4937 to 4947, of the Revised Statutes. [3] It is sufficient at present to say that they provide for the registration in the Patent Office of any device in the nature of a trade-mark to which any person has by usage established an exclusive right, or which the person so registering intends to appropriate by that act to his exclusive use; and they make the wrongful use of a trade-mark, so registered, by any other person, without the owner's permission, a cause of action in a civil suit for damages. Six years later we have the act of Aug. 14, 1876 (19 Stat. 141), punishing by fine and imprisonment the fraudulent use, sale, and counterfeiting of trade-marks registered in pursuance of the statutes of the United States, on which the informations and indictments are founded in the cases before us.

[4] The right to adopt and use a symbol or a device to distinguish the goods or property made or sold by the person whose mark it is, to the exclusion of use by all other persons, has been long recognized by the common law and the chancery courts of England and of this country, and by the statutes of some of the States. It is a property right for the violation of which damages may be recovered in an action at law, and the continued violation of it will be enjoined by a court of equity, with compensation for past infringement. This exclusive right was not created by the act of Congress, and does not now depend upon it for its enforcement. The whole system of trade-mark property and the civil remedies for its protection existed long anterior to that act, and have remained in full force since its passage. [5] These propositions are so well understood as to require neither the citation of authorities nor an elaborate argument to prove them.

[6] As the property in trade-marks and the right to their exclusive use rest on the laws of the States, and, like the great body of the rights of person and of property, depend on them for security and protection, the power of Congress to legislate on the subject, to establish the conditions on which these rights shall be enjoyed and exercised, the period of their duration, and the legal remedies for their enforcement, if such power exist at all, must be found in the Constitution of the United States, which is the source of all powers that Congress can lawfully exercise.

[7] In the argument of these cases this seems to be conceded, and the advocates for the validity of the acts of Congress on this subject point to two clauses of the Constitution, in one or in both of which, as they assert, sufficient warrant may be found for this legislation.

[8] The first of these is the eighth clause of sect. 8 of the first article. That section, manifestly intended to be an enumeration of the powers expressly granted to Congress, and closing with the declaration of a rule for the ascertainment of such powers as are necessary by way of implication to carry into efficient operation those expressly given, authorizes Congress, by the clause referred to, 'to promote the progress of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries.' 

[9] As the first and only attempt by Congress to regulate the right of trade-marks is to be found in the act of July 8, 1870, to which we have referred, entitled 'An Act to revise, consolidate, and amend the statutes relating to patents and copyrights,' terms which have long since become technical, as referring, the one to inventions and the other to the writings of authors, it is a reasonable inference that this part of the statute also was, in the opinion of Congress, an exercise of the power found in that clause of the Constitution. It may also be safely assumed that until a critical examination of the subject in the courts became necessary, it was mainly if not wholly to this clause that the advocates of the law looked for its support.

[10] Any attempt, however, to identify the essential characteristics of a trade-mark with inventions and discoveries in the arts and sciences, or with the writings of authors, will show that the effort is surrounded with insurmountable difficulties.

[17] The questions in each of these cases being an inquiry whether these statutes can be upheld in whole or in part as valid and constitutional, must be answered in the negative; and it will be

[18] So certified to the proper circuit courts. . Fritz Lanham, 1880-1965(D-Texas, 1919-1947) Excerpt from Restatement (Third) of Unfair Competition § 9 (1995) [1] e. Trademark legislation. The federal government and each of the states have enacted legislation protecting trademarks. The statutes generally provide a mechanism for the registration of trademarks, describe the types of marks that may be registered, and specify the procedural and substantive advantages afforded to the owner of a trademark registration. The statutes, however, do not ordinarily preempt the protection of trademarks at common law.

[3] I supposed that Mr. Lanham was just going to study this memorandum and skeleton-it was hardly more than that-and begin to hold hearings. I was surprised when, on January 19, 1938, he introduced it as H.R. 9041. [4] Immediately bar associations appointed committees which did thoughtful and conscientious work, with the result that we now have a new Trade-Mark Act. Since the last Act was passed in 1905 and the new Act in 1946-forty-one years later-I suspect we are going to have to live with the Lanham Act for a long time.

. . . . [5] Whenever there was a hearing before any committee on the trade-mark bill, sooner or later there appeared zealous men from the Department of Justice who raised all manner of objections. They asserted that trade-marks are monopolistic and any statutory protection of them plays into the hands of big business and should be discouraged. In vain it was pointed out that what is now big business started as little business-that trade-marks are not, like patents and copyrights, a government grant of an exclusive right, that trade-marks are visible reputation and symbols of good will, that trade-marks are the antithesis of monopoly, and that to protect them is to insure the one whose goods or services they distinguish against fraud and misrepresentation.

[6] No progress seemed to be made with the Department's representatives, who were against not only the protection of trade-marks but trade-marks as an institution. . . .

1. The long road to the Lanham Act. In his influential treatise, J. Thomas McCarthy records the fate of legislative efforts through the war years leading to the Lanham Act of 1946:

Hearings on the bill and the various forms in which it was reintroduced were held in March 1938, March 1939, June 1939, and passed the House and Senate in 1939and 1940. However, the Senate moved to reconsider the bill on June 23, 1940 and it was returned to the calendar and died. In the 77th Congress a reintroduced bill passed the Senate in 1941 and the House in 1942, but the bill died upon being referred back to Committee in 1942. Hearings were held in the 78th Congress in 1943 and 1944, but the bill was not passed. Finally, the 1945 version of the bill (H.R. 1654) was passed by the 79th Congress.

MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 5.4 (2018). If we date the Lanham Act from its first draft in 1937 (or indeed back to the so-called Vestal Bill of 1931), then the Act is almost 90 years old. This may help to explain the existence of certain especially abstruse statutory sections that the student will confront through the course of studying U.S. trademark law.

The Lanham Act has been amended numerous times since its July 5, 1947 effective date. Listed here are some of the more important amendments, many of which we will refer to through the course of this casebook.

The limiting phrase "purchasers as to the source of origin of such goods or services" was deleted from Lanham Act § 32. 1962 Pub. L. No. 87-772, 76 Stat. 769. This arguably significantly broadened the scope of antiinfringement protection under the Act.

The following sentence was added to Lanham Act § 35: "The court in exceptional cases may award reasonable attorney fees to the prevailing party. " 1975Pub. L. No. 93-600, 88 Stat. 1955. Congress finally changed the name of the "Patent Office" to the "Patent and Trademark Office." 1975Pub. L. No. 93-596, 88 Stat. 1949.

The Court of Customs and Patent Appeals became the Court of Appeals for the Federal Circuit. Pub. L. 97-164, 96 Stat. 25. The Trademark Counterfeiting Act of 1984was enacted, 1984Pub. L. No. 98-473, 98 Stat. 1837, amending Lanham § § 34, 35, and 36, and establishing criminal trademark anti-counterfeiting penalties in 18 U.S.C. § 2320.

The Trademark Law Revision Act of 1988 (TLRA) was enacted, effective November 16, 1989. Pub. L. No. 100-667, 102 Stat. 3935. The TLRA established the "intent-to-use" basis for registration and federal statutory "constructive use" for purposes of priority. It also significantly rewrote Lanham Act § 43(a).

The Federal Trademark Dilution Act (FTDA), enacted and effective January 16, 1996, established a federal cause of action for anti-dilution protection in Lanham Act § 43 (c)

1. "The Last Best Place." One of the stranger moments in the history of U.S. trademark legislation involves the phrase "The Last Best Place." Between 2001 and 2004, a Nevada business named Last Best Beef, LLC filed eight applications at the PTO to register the phrase "The Last Best Place" in connection with various goods and services. In 2005, Congress passed and the President signed into law an appropriations bill with a rider that consisted of the following language: "Notwithstanding any other provision of this Act, no funds appropriated under this Act shall be used to register, issue, transfer, or enforce any trademark of the phrase 'The Last Best Place.' " See Pub.L. No. 109-108, 119 Stat. 2290. Upon learning of this statutory command in an appropriations bill that covered the PTO, the PTO suspended all consideration of Last Best Beef's trademark applications and no further applications for the phrase have since been filed. What? In 1988, a Montana writer had entitled an anthology of Montana-oriented poetry and prose "The Last Best Place." The phrase was soon taken up by Montana businesses and state government. In 2005, Montana Senator Conrad Burns attached the rider to the appropriations bill on the ground that the phrase "belongs to the State of Montana." See John L. Welch, Montana Senator Again Blocks "LAST BEST PLACE" Registrations, The TTABlog, Feb. 27, 2009. See also The Last Best Beef, LLC v. Dudas, 506 F.3d 333 (4th Cir. 2007) (not seeing a problem with any of this).

B. The Policy Justifications for Trademark Protection

Probably the most oft-quoted passage from the Trade-Mark Cases is the paragraph in which the Supreme Court compared trademarks to the two other most significant forms of intellectual property, copyrights and patents (paragraph 11 in the excerpt above). Consider again that paragraph. Is what Justice Miller wrote in 1879 about the development of trademarks still accurate today, that "[t]he ordinary trade-mark has no necessary relation to invention or discovery," that "[i]t is often the result of accident rather than design," that it does not "depend upon novelty, invention, discovery, or any work of the brain," that "[i]t requires no fancy or imagination, no genius, no laborious thought," and that "[t]he trade-mark may be, and generally is, the adoption of something already in existence as the distinctive symbol of the party using it"? By 1942, the Court was describing trademarks and the role of trademark law in different terms. In Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203 (1942), Justice Frankfurter explained:

The protection of trade-marks is the law's recognition of the psychological function of symbols. If it is true that we live by symbols, it is no less true that we purchase goods by them. A trade-mark is a merchandising short-cut which induces a purchaser to select what he wants, or what he has been led to believe he wants. The owner of a mark exploits this human propensity by making every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol. Whatever the means employed, the aim is the same-to convey through the mark, in the minds of potential customers, the desirability of the commodity upon which it appears. Once this is attained, the trade-mark owner has something of value. If another poaches upon the commercial magnetism of the symbol he has created, the owner can obtain legal redress.

Id. at 205. By the 1980s, American courts were describing trademarks and trademark law in yet different terms, terms which still resonate today. Reflecting the rise of the Chicago School economic analysis of law, Judge Easterbrook described the economic benefits of trademarks and trademark protection in Scandia Down Corp. v. Euroquilt, Inc., 772 F.2d. 1423(7th Cir. 1985):

Trademarks help consumers to select goods. By identifying the source of the goods, they convey valuable information to consumers at lower costs. Easily identified trademarks reduce the costs consumers incur in searching for what they desire, and the lower the costs of search the more competitive the market. A trademark also may induce the supplier of goods to make higher quality products and to adhere to a consistent level of quality. The trademark is a valuable asset, part of the "goodwill" of a business. If the seller provides an inconsistent level of quality, or reduces quality below what consumers expect from earlier experience, that reduces the value of the trademark. The value of a trademark is in a sense a "hostage" of consumers; if the seller disappoints the consumers, they respond by devaluing the trademark. The existence of this hostage gives the seller another incentive to afford consumers the quality of goods they prefer and expect.

Which description of trademarks most accurately reflects their characteristics in the present day? Are they often adopted, in the terms of the Trade-Mark Cases, as "the result of accident rather than design"? Can we say of the development of trademarks, as of the legal conditions leading to their protection, that "no fancy of imagination, no genius, no laborious thought" is required? Or is it rather that, through the development of a brand name, "[t]he owner of a mark . . . mak[es] every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol"? Is the consumer in some sense a victim of these machinations of the trademark owner, who through the "commercial magnetism" of the trademark "induces the purchaser to select what he wants, or what he has been led to believe he wants"? Or is it finally not consumers who are victims of the trademark, but the trademark who is a "hostage" of consumers, whom it serves by enabling them to find what they desire and to insist on "the quality of goods they prefer and expect"?

The Economic Justification for Trademark Protection

These differing accounts of trademarks and trademark law are probably all more or less true, depending on the trademark, product, and consumer at issue. But it is well-accepted that the last account, based on the economic analysis of law, is currently by far the dominant account of trademark law. In Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995), Justice Breyer set forth the purposes of trademark law in economic terms: {T}rademark law, by preventing others from copying a source-identifying mark, reduces the customer's costs of shopping and making purchasing decisions, for it quickly and easily assures a potential customer that this item-the item with this mark-is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past. At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product. The law thereby encourages the production of quality products, and simultaneously discourages those who hope to sell inferior products by capitalizing on a consumer's inability quickly to evaluate the quality of an item offered for sale. . . . William Landes & Richard Posner, The Economics of Trademark Law, 78 TRADEMARK REP. 267, 271-272 (1988).

Qualitex, 514 U.S. at 163-64 (some citations omitted).

The current orthodox view of trademarks, then, is that they (1) minimize consumer search costs, and ( 2) provide incentives to producers to produce consistent levels of product quality. This latter benefit of trademarks is especially important for certain types of products. In general, products may be understood to possess three types of characteristics: "search" characteristics, such as color or price, which can be inspected prior to purchase; "experience" characteristics, such as taste, which can only be verified through use of the product; and "credence" characteristics, such as durability, which can only be confirmed over time. See Phillip Nelson, Advertising as Information, 82 J. POL. ECON. 729 (1974). For products such as medicine, automobiles or high-technology goods, the "search" characteristics of which say little about the quality of the product, consumers may rely heavily on the trademark attached to the product in making their purchasing decision. It follows that in a market without reliable source-identification for such products, producers would have little incentive to invest in the production of products of high quality. This is because they would likely be undercut by competitors who would offer cheaper products of lower quality under the same mark. See George A. Akerlof, The Market for "Lemons": Quality Uncertainty and the Market Mechanism, 84 Q.J. ECON. 488 (1970).

As indications of quality, trademarks signify and allow firms to develop commercial goodwill, which for many firms may be by far their most valuable asset. The concept of goodwill encompasses the reputation of the firm and its products and the probability, based on this reputation, that consumers will continue to patronize the firm in the future. A nineteenth-century court described goodwill in these terms:

When an individual or a firm or a corporation has gone on for an unbroken series of years conducting a particular business, and has been so scrupulous in fulfilling every obligation, so careful in maintaining the standard of goods dealt in, so absolutely honest and fair in all business dealings that customers of the concern have become convinced that their experience in the future will be as satisfactory as it has been in the past, while such customers' good report of their own experience tends continually to bring new customers to the same concern, there has been produced an element of value quite as important-in some cases, perhaps far more important-than the plant or machinery with which the business is carried on. Wall-Paper Co., 81 F. 17, 20 (2d Cir. 1897).

Criticisms of the Economic Justification for Trademark Protection

The example of Coca-Cola and brands like it may lead many readers to doubt the sufficiency of the economic account of trademark law, focused as it is on search costs and incentives to produce quality goods. After all, many trademarks, such as COKE, do more than merely indicate the source of the goods to which they are affixed, and strictly speaking, some trademarks don't even do that. A t-shirt bearing the trademark ARSENAL is not intended to indicate and is not read by consumers to indicate that Arsenal soccer players knitted the shirt themselves. The trademark primarily functions instead as a "badge of support for or loyalty or affiliation to the trademark proprietor. " Arsenal Football Club Plc v. Matthew Reed, Case C-206/01, [2003] ETMR 19, ¶ 15. This same function may be attributed to many trademarks, and not simply to high-fashion marks such as POLO or PRADA, but also to more mundane marks such as PEPSI or FORD, whose owners have quite consciously sought to build "consumption communities"foot_5 around these brands. See Int'l Order of Job's Daughters v. Lindeburg & Co., 633 F.2d 912, 918 (9th Cir. 1980) (recognizing that "[w]e commonly identify ourselves by displaying emblems expressing allegiances. Our jewelry, clothing, and cars are emblazoned with inscriptions showing the organizations we belong to, the schools we attend, the landmarks we have visited, the sports teams we support, the beverages we imbibe"). In such situations, the mark itself is often the primary product characteristic that the consumer wishes to acquire, and the underlying material good, if any, is merely a means of conveying that characteristic and an alibi for the consumption of that characteristic. 5 We typically think of a trademark as supplementary in relation to the goods to which it is affixed, as something added to preexisting goods. But certain doctrines in trademark law may make sense only if one appreciates that for certain brands, this relation is reversed. The brand is prior and the physical goods are supplementary to it, supporting and enhancing the brand's value, so that a firm (for example, a fashion house) may first design a brand and then produce or license tangible or intangible goods consistent with that brand.

Even when the consumer is interested in the quality of the material good, the trademark may contribute to deleterious "artificial product differentiation," as when consumers pay a premium for branded versions of pharmaceuticals when lower-cost generic versions are required by government regulation to meet exactly the same quality standards as the more expensive branded versions. This argument, which associates trademarks with the purported evils of some forms of advertising, first gained significant influence with the publication in 1933 of the economist Edward Chamberlin's book The Theory of Monopolistic Competition, which systematically formulated the artificial product differentiation view. 6 Chamberlin's work proved to be especially influential in mid-twentieth century trademark commentary 7 and is reflected to some degree in Justice Frankfurter's discussion of trademarks in Mishawaka Rubber. Other courts sometimes picked up on Chamberlin's ideas. See, e.g., Smith v. Chanel, Inc., 402 F.2d 562, 567 (2d Cir. 1968) (proposing that, through the trademark, "economically irrational elements are introduced into consumer choices; and the trademark owner is insulated from the normal pressures of price and quality competition. In consequence the competitive system fails to perform its function of allocating available resources efficiently.").

Since the 1980s, however, mainstream economic thought has grown increasingly hostile toward, even dismissive of, the argument that, as Landes and Posner characterize it, trademarks "promote social waste and consumer deception" through "the power of brand advertising to bamboozle the public and thereby promote monopoly." 8 Instead, economists have generally come to view trademarks and advertising in a much more positive light. See 5 For further discussion of the trademark "merchandising right," see Stacey L. Dogan & Mark A. Lemley, The Merchandising Right: Fragile Theory or Fait Accompli?, 54 EMORY L.J. 461 (2005). 6 See also Joan Robinson, The Economics of Imperfect Competition 89 (1933). 7 See generally Glynn S. Lunney, Trademark Monopolies, 48 EMORY L.J. 367, 367-69 (1999) (discussing the influence of Chamberlin's work on trademark commentary). See also Sherwin Rosen, Advertising, Information, and Product Differentiation, in ISSUES IN ADVERTISING: THE ECONOMICS OF PERSUASION 161-91 (David G. Tuerck ed., 1978) (summarizing the artificial product differentiation view). See generally Beverly W. Pattishall, Trademarks and the Monopoly Phobia, 50 MICH. L. REV. 967 (1952) (criticizing the artificial product differentiation view). 8 Landes & Posner, supra, at 276-77.

George Stigler, The Economics of Information, 69 J. POL. ECON. 213 (1961). The orthodox view now is that advertising cheaply conveys information to consumers, particularly with respect to "experience goods." See Phillip Nelson, Advertising as Information, 82 J. POL. ECON. 729 (1974). Advertising also signals that the advertiser believes its goods to be of sufficiently high quality to benefit from advertising. "The higher quality brand will, other things being equal, have a comparative advantage in acquiring more customers by advertising-since it will retain a larger fraction of them on repeat sales." See Jack Hirshleifer, Where Are We in the Theory of Information?, 63 AM. ECON. REV. PROC. 31, 38 (1973). 9 Finally, consumers may greatly benefit even from supposedly "artificial" product differentiation and may enjoy-and willingly pay for-the consumption of high-performance and high-status goods. See Jake Linford, Placebo Marks, 47 PEPP. L. REV. 45 (2020).

1. Trademark law and "property." Critics of the expansion in the subject matter and scope of trademark protection often accuse the law of having lost its purportedly traditional focus on consumer protection and having instead embraced a property-rights rationale for trademark protection. Elsewhere in the article excerpted above in Part A, McKenna directly challenges this view: {T}rademark law was not traditionally intended to protect consumers. Instead, trademark law, like all unfair competition law, sought to protect producers from illegitimate diversions of their trade by competitors. Courts did focus on consumer deception in these cases, but only because deception distinguished actionable unfair competition from mere competition, which was encouraged. In fact, courts denied relief in many early trademark cases despite clear evidence that consumers were likely to be confused by the defendant's use. Invariably they did so because the plaintiff could not show that the defendant's actions were likely to divert customers who otherwise would have gone to the plaintiff.

Moreover, American courts protected producers from illegitimately diverted trade by recognizing property rights. This property-based system of trademark protection was largely derived from the natural rights theory of property that predominately influenced courts during the time American trademark law developed in the nineteenth century . . . . Critics cannot continue simply to claim that modern law is illegitimate because it does not seek to protect consumers. Because it never really did.

Mark P. McKenna, The Normative Foundations of Trademark Law, 82 NOTRE DAME L. REV. 1839, 1841, 1916(2007). For an alternative reading of the history of American trademark law, see Robert G. Bone, Hunting Goodwill: A History of the Concept of Goodwill in Trademark Law, 86 B.U. L. REV. 547 (2006). For an authoritative history of the impact of the concept of "goodwill" on American trademark law, see Barbara Lauriat, Borrowing Goodwill: The True History of American Trademark Law (working paper).

2. Beware of the term "consumer." Trademark talk habitually uses the term "consumer" and only that term to describe members of the public. Dustin Marlan criticizes the term for "(1) its connotation of humans as reductive market-based objects; (2) its anti-ecological bent; and (3) its nonsensical nature." Dustin Marlan, Is "Consumer" Biasing Trademark Law?, 8 TEX. A&M L. REV. 367, 377 (2021). He argues that "the biasing effects of consumer may be contributing to trademark law defining the public in a manner that is patronizing, biased, insulting, and indulgent of likelihood-of-confusion claims." Id. at 373. He advocates "one of two approaches: (1) take active steps to phase out use of consumer and replace it with more respectful and appropriate terminology such as citizen; or (2) simply maintain the status quo in using consumer, but each time be conscious of the biasing effects that the consumer construct may have for the law and us as its subjects." Id. at 373-74.

C. Trademark Law Within the Larger Scheme of Intellectual Property Law

As the excerpt above from the Trade-Mark Cases suggests, when seen from the perspective of trademark law, copyright law and patent law can appear to be closely similar to each other and quite different from trademark law-so much so that it is not unreasonable to ask why trademark is grouped with patent and copyright under the rubric of "intellectual property law" rather than separated out as some hybrid of competition law and intellectual property law. As the table at the conclusion of this section summarizes, both copyright and patent are based on the Intellectual Property Clause of the Constitution, which empowers Congress "{t}o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." U.S. Const. art. I, § 8, cl. 8. The Constitution thus requires copyright and patent to promote innovation, human creativity, or more generally, human "Progress," with patent focusing primarily on incentivizing the invention of new technologies, such as new pharmaceuticals, better machines, or more efficient methods of manufacture, and copyright focusing on incentivizing the production of "works of authorship," such as novels, music, and motion pictures (and this textbook).

Inventions and works of authorship share important characteristics (akin to "public goods") 12 that make intellectual property protections useful. Both tend to be expensive to develop, but once developed, they are relatively inexpensive to reproduce in copies. It can cost $1 billion to develop a successful pharmaceutical and bring it to market and potentially only a few dollars or less per copy to manufacture it. The consumption of inventions and works of authorship also tends to be "non-rivalrous." A potentially unlimited number of people can benefit equally from the same idea or listen each to their own copy of the same recording of the same musical work. Finally, without recourse to prohibitions established by law, it is often exceedingly difficult to exclude people from and thus charge a price for the benefit of an invention or work of authorship. This condition has only intensified with improvements in reproduction and distribution technologies, whether they take the form of ever more flexible assembly lines, automated manufacture, 3D printing, or the reproduction of digital files on a home computer or the internet.

To address these problems, patent law and copyright law provide limited terms of protection to qualifying works, with patent's term significantly shorter in duration than copyright's. In essence, the public makes a bargain with inventors and authors. To incentivize them, we give them exclusive rights in their innovations so that they can recoup the costs of and perhaps profit from their innovating activity, but in exchange, we eventually claim their innovations for the public domain, where these innovations become free for all, including subsequent inventors and authors, to use. 12 See Wendy J. Gordon, Fair Use As Market Failure: A Structural and Economic Analysis of the Betamax Case and Its Predecessors, 82 COLUM. L. REV. 1600REV. (1982)). Gordon describes "public goods" as follows:

A public good is often described as having two defining traits. First, it is virtually inexhaustible once produced, in the sense that supplying additional access to new users would not deplete the supply available to others. Second, and more important for the instant purposes, persons who have not paid for access cannot readily be prevented from using a public good. Because it is difficult or expensive to prevent "free riders" from using such goods, public goods usually will be under-produced if left to the private market. A familiar example of a public good is national defense. Since it is not possible to use a radar early-warning network in a way that discriminates between one person who has paid for defense and his neighbor who has not, a less than optimal amount of national defense will be produced if its purchase is left to the usual consensual market mechanisms of voluntary purchase. Some sort of compulsory payment, such as taxation, and central decision-making may be necessary to eliminate free riders and obtain the socially desirable amount of defense. Id. at 1610-11 (footnotes omitted).

In contrast to copyright and patent law, trademark law is based not on the Intellectual Property Clause, but on the Commerce Clause. Its goal is not to promote the progress of "Science and useful Arts" but rather to promote fair and efficient competition. Its term of protection is unlimited in time provided that the trademark owner continues to use the trademark in commerce. And the utilization of trademarks is arguably rivalrous. If two firms share the same trademark for the same type of product in the same marketplace, the utility of both trademarks will be severely diminished.

For all of the differences among copyright, patent, and trademark law, note that these separate regimes of intellectual property law can simultaneously protect the same thing. For example, a logo might qualify for both copyright and trademark protection. A particular product feature, such as the shape of a mobile phone, might qualify for trademark protection and design patent protection. A particular furniture design might qualify for trademark protection, design patent protection, and copyright protection as well.

These overlapping regimes of exclusive rights can create significant problems in intellectual property law, some of which we will engage later in this casebook. For example, what should happen when the term of copyright protection in a particular work of authorship expires, but that expression also functions as a trademark? Should trademark law allow the Walt Disney Company to continue to assert exclusive rights in images of Mickey Mouse after its copyright in those images has expired? More significantly, should companies be able to assert trademark rights in product features that also qualify for utility patent protection, or at least that perform some mechanical function in addition to serving as designations of source?

1. Do we want to incentivize more trademarks? We generally seek through patent and copyright law to incentivize the production of more patentable inventions and more copyrightable works of authorship. Should we similarly design trademark law to incentivize the production of more trademarks? Is there anything intrinsically valuable about trademarks? Do more trademarks indicate or themselves constitute "Progress"? Could there be situations (or market sectors) in which there are too many trademarks?

In order to qualify for trademark protection under U.S. federal law, a trademark must meet three basic requirements: (1) the trademark must be "distinctive" of the source of the goods or services to which it is affixed, (2) the trademark must not be disqualified from protection by various statutory bars to protection, the most significant of which is that the trademark not be "functional," and (3) the trademark must be used in commerce.

Note what is missing from this list of basic requirements for trademark protection. First, in order to qualify for protection under the Lanham Act, a trademark does not need to be registered at the PTO (though, as we will discuss in Part I.D, there are significant benefits to registration). Lanham Act § 32, 15 U.S.C. § 1114, protects registered marks from unauthorized uses that are likely to cause consumer confusion as to the true source of the unauthorized user's goods. Lanham Act § 43(a), 15 U.S.C. § 1125(a), does the same for unregistered marks. (And Section 43(c), 15 U.S.C. § 1125 (c), protects both registered and unregistered marks from trademark dilution). As a matter of tradition, trademark lawyers sometimes refer to unregistered mark protection under § 43(a) as "common law" protection of trademarks even though this protection is based on statutory federal law.

Second, a protectable trademark need not manifest itself in any particular form. 1Consider the extraordinary variety of forms that trademarks (here, all registered) may take:

• Words: APPLE for computers (U.S. Reg. No. 1,078,312, Nov. 29, 1977); AMAZON for online retailing services (U.S. Reg. No. 2,832,943, April 13, 2004); NIKE for athletic shoes (U.S. Reg. No. 978,952, Feb. 19, 1974); THE for clothing (U.S. Reg. No. 6,763,118, June 21, 2022).

• Phrases: JUST DO IT for clothing (U.S. Reg. No. 1,875,307, Jan. 24, 1995).

• Two-dimensional still images: a "'wing' design" for sports bags (U.S. Reg. No. 1145473, Jan. 6, 1981) • Two-dimensional moving images: for online entertainment services, "[t]he mark consists of a moving image of a flash of light from which rays of light are emitted against a background of sky and clouds. The scene then pans downward to a torch being held by a lady on a pedestal. The word "COLUMBIA" appears across the top running through the torch and then a circular rainbow appears in the sky encircling the lady." (U.S. Reg. No. 1,975,999, May 28, 1996).

• Colors: the color canary yellow for adhesive stationary notes (U.S. Reg. No. 2,390,667, Oct. 3, 2000); the color brown for parcel delivery services (U.S. Reg. No. • Colors as used on apparel: for promotional services relating to sports events, where "[t]he mark consists of the colors green and gold where the color green is applied to the jacket and the color gold is applied to the three waist buttons and the two sleeve buttons on each arm of the jacket." (U.S. Reg. No. 6,000,045, March 3, 2020).

• Sounds: Tarzan's yell for toy action figures (U.S. Reg. No. 2,210,506, Dec. 15, 1998); for canned and frozen vegetables where the mark consists of "the sound of a deep, male, human-like voice saying 'Ho-Ho-Ho' in even intervals with each 'Ho' dropping in pitch" (U.S. Reg. No. 2,519,203, Dec. 18, 2001).

• Scents: for toy modeling compounds, where "[t]he mark is a scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough" (U.S. Reg. No. 5,467,089, May 15, 2018); for crayons, where "[t]he mark consists of a scent reminiscent of a slightly earthy soap with pungent, leather-like clay undertones" (U.S. Reg. No. 7,431,203, July 2, 2024).

• Textures: for wines where "[t]he mark consists of a velvet textured covering on the surface of a bottle of wine" (U.S. Reg. No. 3,155,702, Oct. 17, 2006).foot_7

• Motions: for automobiles where "[t]he mark consists of the unique motion in which the door of a vehicle is opened. The doors move parallel to the body of the vehicle but are gradually raised above the vehicle to a parallel position." (U.S. Reg. No. 2,793,439, Dec. 16, 2003).

• Building exteriors: the design of a building for restaurant services (U.S. Reg. No. 1,045,615, Aug. 3, 1976).

• Building interiors: for retail consumer electronics services, "the mark consists of the design and layout of a retail store. The store features a clear glass storefront surrounded by a paneled facade consisting of large, rectangular horizontal panels over the top of the glass front, and two narrower panels stacked on either side of the storefront. Within the store, rectangular recessed lighting units traverse the length of the store's ceiling. There are cantilevered shelves below recessed display spaces along the side walls, and rectangular tables arranged in a line in the middle of the store parallel to the walls and extending from the storefront to the back of the store. There is multi-tiered shelving along the side walls, and a oblong table with stools located at the back of the store, set below video screens flush mounted on the back wall.

The walls, floors, lighting, and other fixtures appear in dotted lines and are not claimed as individual features of the mark; however, the placement of the various items are considered to be part of the overall mark." (U.S. Reg. No. 4,277,914, Jan. 22, 2013).

• Product shapes: for mobile phones, where "the mark consists of the configuration of a rectangular handheld mobile digital electronic device with rounded corners" (U.S. Reg.

No. 3,457,218, July 1, 2008); for uncooked hamburger patties, where "the mark consists of the configuration of a hamburger patty" (U.S. Reg. No. 5,742,743, May 7, 2019); for footwear, where "the mark consists of [sic] three-dimensional configuration of a zip tie with a substantially rectangular end, all in the color red" (U.S. Reg. No. 6,681,777, Mar. 29, 2022).

• Product packaging: for soft drinks, "[t]he mark consists of a three dimensional configuration of a version of the Coca Cola Contour Bottle, rendered as a two-liter bottle, having a distinctive curved shape with an inward curve or pinch in the bottom portion of the bottle and vertical flutes above and below a central flat panel portion." (U.S. Reg. No. 4,242,307, Nov. 13, 2012).

The reader may be surprised to see that trademark rights can cover such a wide array of subject matter. This Part covers how these various marks have managed to qualify for trademark protection and why various other marks have failed to qualify. Section I.A devotes a great deal of attention to what is by far the most important requirement for trademark protection: that the trademark be "distinctive." Section I.B then turns to the various statutory bars to protection, including the functionality bar, which disqualify marks from protection under the Lanham Act. Section I.C seeks to make sense of the "use in commerce" requirement for trademark protection. Section I.D reviews why it is worthwhile to register a mark at the PTO and how the registration process works. Section I.E addresses the geographic scope of the protection of registered and unregistered marks.

The term "trademark" includes any word, name, symbol, or device, or any combination thereof . . . used by a person . . . to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

The § 45 definition of the term "trademark" emphasizes that a protectable trademark must be distinctive of source -it must "identify and distinguish . . . goods . . . and . . . indicate the source of the goods." Note that in order to qualify for protection, a trademark need not indicate the precise manufacturing source of the goods or the corporate name of the producer of the goods. For example, the trademark TIDE for laundry detergent need not indicate in exactly which factory the particular bottle of laundry detergent was made or that Proctor & Gamble ultimately owns the TIDE brand. Instead, consumers need only know that all products bearing the same trademark originate in or are sponsored by the same source, even if that source is "anonymous" to consumers. 3 This is sometimes known as the "anonymous source" theory of trademark protection.

A trademark will qualify as distinctive if either (1) it is "inherently distinctive" of source or ( 2) it has developed "acquired distinctiveness" of source. A mark is inherently distinctive if "its intrinsic nature serves to identify a particular source." Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 210 (2000) (alterations omitted). The underlying assumption is that as a matter of consumer literacy, consumers will almost instantly recognize that an inherently distinctive mark is a designation of source, even when they encounter the mark for the first time. After all, how else would a modern consumer make sense of the word "apple" as used in the sale of electronics that have nothing to do with apples? Inherently distinctive marks "almost automatically tell a customer that they refer to a brand," Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 162-63 (1995) (emphasis in original), and "immediately . . . signal a brand or a product 'source.'" Id. at 163.

Marks that lack inherent distinctiveness may nevertheless qualify as distinctive if they have developed "acquired distinctiveness," otherwise known as "secondary meaning," through advertising or use in the marketplace. Over time, consumers may come to identify what might have seemed merely a description of the good or service (e.g., "American Airlines") or merely a decoration on a product (e.g., three stripes on the side of an athletic shoe) as a designation of the source of that product. Indeed, consumers may come to identify the configuration of the product itself as a signifier of its source.

Here in Section I.A, we will spend considerable time reviewing how courts determine if a commercial sign qualifies as inherently distinctive or as possessing acquired distinctiveness. Before proceeding, two things should be kept in mind. First, some of the opinions below address the registrability of the marks at issue at the PTO while other opinions address the protectability under § 43(a) of marks that have never been registered. Recall that registration is not a prerequisite for trademark protection under the Lanham Act. Many significant trademark cases over past decades have involved unregistered marks. The important point for our purposes in this subsection is that the basic doctrine relating to the registrability of a mark is essentially the same as the doctrine relating to whether it may be protected regardless of its registration status. We may use opinions from either context to understand the distinctiveness requirement in trademark law.

Second, this subsection will first consider distinctiveness doctrine as it relates to verbal marks. It will then proceed to the more difficult area of distinctiveness doctrine that covers 3 See McCarthy § 3.9 ("[T]he 'source' identified by a trademark need not be known by name to the buyer. It may be anonymous in the sense that the buyer does not know, or care about, the name of the corporation that made the product or the name of the corporation which distributes it. But the buyer is entitled to assume that all products carrying the same trademark are somehow linked with or sponsored by that single, anonymous source."). See also P & P Imports LLC v. Johnson Enterprises, LLC, 46 F.4th 953, 960-61 (9th Cir. 2022).

non-verbal marks, such as logos, colors, product packaging, and product configuration (i.e., the shape of the product itself).

Inherent Distinctiveness of Source and Acquired Distinctiveness of Source a. Inherent Distinctiveness of Source i. The Abercrombie Spectrum

The excerpt below, from Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976), analyzes some of the most fundamental terms and concepts in trademark law. Though Abercrombie is now a relatively old opinion, its influence on U.S. and even foreign trademark law cannot be overstated. It is the origin of the "Abercrombie spectrum" of trademark distinctiveness, a classification scheme that is used in a wide variety of areas of trademark doctrine.

The essential facts underlying the opinion are as follows. Plaintiff Abercrombie & Fitch Company ("A&F") operated various sporting goods stores in New York City and elsewhere. It had multiple PTO registrations for its trademark SAFARI. Among these was a registration for SAFARI for cotton clothing, a registration for SAFARI for hats, and a registration for SAFARI for shoes. Defendant Hunting World, Incorporated ("HW") began to sell at its New York City store sporting apparel, including hats and shoes, bearing the terms "Safari," "Minisafari," and "Safariland." A&F sued on the ground that HW's conduct would confuse consumers as to the true source of HW's goods. At the core of the case was the question of whether A&F's SAFARI trademark possessed distinctiveness of source on certain of A&F's goods.

As you read the excerpt, consider the following questions:

• To the extent that a mark's categorization somewhere along the Abercrombie spectrum bears directly on whether the mark will qualify for trademark protection, which borders between categories do you suspect are especially disputed?

• Where would you classify the trademark "safari" for clothing? for boots? for hats?

Abercrombie & Fitch Co. v. Hunting World, Inc. 537 F.2d 4, 9-11 (2d Cir. 1976) FRIENDLY, Circuit Judge:

. . . . [1] It will be useful at the outset to restate some basic principles of trademark law, which, although they should be familiar, tend to become lost in a welter of adjectives.

[2] The cases, and in some instances the Lanham Act, identify four different categories of terms with respect to trademark protection. Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and ( 4) arbitrary or fanciful. The lines of demarcation, however, are not always bright. Moreover, the difficulties are compounded because a term that is in one category for a particular product may be in quite a different one for another,foot_8 because a term may shift from one category to another in light of differences in usage through time,foot_9 because a term may have one meaning to one group of users and a different one to others, and because the same term may be put to different uses with respect to a single product.

[3] A generic term is one that refers, or has come to be understood as referring, to the genus of which the particular product is a species. At common law neither those terms which were generic nor those which were merely descriptive could become valid trademarks, see Delaware & Hudson Canal Co. v. Clark, 80 U.S. (13 Wall.) 311, 323, 20 L.Ed. 581 (1872) ("Nor can a generic name, or a name merely descriptive of an article or its qualities, ingredients, or characteristics, be employed as a trademark and the exclusive use of it be entitled to legal protection"). . . . While, as we shall see, the Lanham Act makes an important exception with respect to those merely descriptive terms which have acquired secondary meaning, see § 2(f), 15 U.S.C. § 1052(f), it offers no such exception for generic marks. The Act provides for the cancellation of a registered mark if at any time it "becomes the common descriptive name of an article or substance," § 14 (c). This means that even proof of secondary meaning, by virtue of which some "merely descriptive" marks may be registered, cannot transform a generic term into a subject for trademark. As explained in J. Kohnstam, Ltd. v. Louis Marx andCompany, 280 F.2d 437, 440, 47 CCPA 1080 (1960), no matter how much money and effort the user of a generic term has poured into promoting the sale of its merchandise and what success it has achieved in securing public identification, it cannot deprive competing manufacturers of the product of the right to call an article by its name. We have recently had occasion to apply this doctrine of the impossibility of achieving trademark protection for a generic term, CES Publishing Corp. v. St. Regis Publications, Inc., 531 F.2d 11 (1975). The pervasiveness of the principle is illustrated by a series of well known cases holding that when a suggestive or fanciful term has become generic as a result of a manufacturer's own advertising efforts, trademark protection will be denied save for those markets where the term still has not become generic and a secondary meaning has been shown to continue. Bayer Co. v. United Drug Co., 272 F. 505 (2d Cir. 1921) (L. Hand, D. J. ) {finding "aspirin" generic}; DuPont Cellophane Co. v. Waxed Products Co., 85 F.2d 75 (2d Cir.) (A. N. Hand, C. J. ), cert. denied, 299 U. S. 601 (1936) {finding "cellophane" generic}; King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577 (2d Cir. 1963) {finding "thermos" generic}. A term may thus be generic in one market and descriptive or suggestive or fanciful in another.

[4] The term which is descriptive but not generic 11 stands on a better basis. Although § 2(e) of the Lanham Act, 15 U.S.C. § 1052, forbids the registration of a mark which, when applied to the goods of the applicant, is "merely descriptive," § 2(f) removes a considerable part of the sting by providing that "except as expressly excluded in paragraphs (a)-(d) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce" and that the Commissioner may accept, as prima facie evidence that the mark has become distinctive, proof of substantially exclusive and continuous use of the mark applied to the applicant's goods for five years preceding the application. As indicated in the cases cited in the discussion of the unregistrability of generic terms, "common descriptive name," as used in § § 14 (c) and 15(4), refers to generic terms applied to products and not to terms that are "merely descriptive." In the former case any claim to an exclusive right must be denied since this in effect would confer a monopoly not only of the mark but of the product by rendering a competitor unable effectively to name what it was endeavoring to sell. In the latter case the law strikes the balance, with respect to registration, between the hardships to a competitor in hampering the use of an appropriate word and those to the owner who, having invested money and energy to endow a word with the good will adhering to his enterprise, would be deprived of the fruits of his efforts.

[5] The category of "suggestive" marks was spawned by the felt need to accord protection to marks that were neither exactly descriptive on the one hand nor truly fanciful on the other, a need that was particularly acute because of the bar in the Trademark Act of 1905, 33 Stat. 724, 726, (with an exceedingly limited exception noted above) on the registration of merely descriptive marks regardless of proof of secondary meaning. See 11 See, e. g., W. E. Bassett Co. v. Revlon, Inc., 435 F.2d 656 (2d Cir. 1970). A Commentator has illuminated the distinction with an example of the "Deep Bowl Spoon": "Deep Bowl" identifies a significant characteristic of the article. It is "merely descriptive" of the goods, because it informs one that they are deep in the bowl portion . . . . It is not, however, "the common descriptive name" of the article (since) the implement is not a deep bowl, it is a spoon . . . . "Spoon" is not merely descriptive of the article it identifies the article (and therefore) the term is generic.

Fletcher, Actual Confusion as to Incontestability of Descriptive Marks, 64 Trademark Rep. 252, 260 (1974). On the other hand, "Deep Bowl" would be generic as to a deep bowl.

Orange Crush Co. v. California Crushed Fruit Co., 54 U.S.App.D.C. 313, 297 F. 892 (1924). Having created the category the courts have had great difficulty in defining it. Judge Learned Hand made the not very helpful statement:

It is quite impossible to get any rule out of the cases beyond this: That the validity of the mark ends where suggestion ends and description begins.

Franklin Knitting Mills, Inc. v. Fashionit Sweater Mills, Inc., 297 F. 247, 248 (S.D.N.Y. 1923), aff'd per curiam, 4 F.2d 1018(2d Cir. 1925), a statement amply confirmed by comparing the list of terms held suggestive with those held merely descriptive in 3 Callmann, Unfair Competition, Trademarks and Monopolies s 71.2 (3d ed.). Another court has observed, somewhat more usefully, that:

A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.

Stix Products, Inc. v. United Merchants & Manufacturers Inc., 295 F.Supp. 479, 488 (S.D.N.Y. 1968). Also useful is the approach taken by this court in Aluminum Fabricating Co. of Pittsburgh v. Season-All Window Corp., 259 F.2d 314 (2d Cir. 1958), that the reason for restricting the protection accorded descriptive terms, namely the undesirability of preventing an entrant from using a descriptive term for his product, is much less forceful when the trademark is a suggestive word since, as Judge Lumbard wrote, 259 F.2d at 317:

The English language has a wealth of synonyms and related words with which to describe the qualities which manufacturers may wish to claim for their products and the ingenuity of the public relations profession supplies new words and slogans as they are needed.

If a term is suggestive, it is entitled to registration without proof of secondary meaning. Moreover, as held in the Season-All case, the decision of the Patent Office to register a mark without requiring proof of secondary meaning affords a rebuttable presumption that the mark is suggestive or arbitrary or fanciful rather than merely descriptive.

[6] It need hardly be added that fanciful or arbitrary terms 12 enjoy all the rights accorded to suggestive terms as marks without the need of debating whether the term is "merely descriptive" and with ease of establishing infringement.

In the light of these principles we must proceed to a decision of this case. 12 As terms of art, the distinctions between suggestive terms and fanciful or arbitrary terms may seem needlessly artificial. Of course, a common word may be used in a fanciful sense; indeed one might say that only a common word can be so used, since a coined word cannot first be put to a bizarre use. Nevertheless, the term "fanciful", as a classifying concept, is usually applied to words invented solely for their use as trademarks. When the same legal consequences attach to a common word, i. e., when it is applied in an unfamiliar way, the use is called "arbitrary."

Comments and Questions 1. Is "SAFARI" generic as to clothing, hats, and boots? Judge Friendly found that safari was a generic term when used in connection with certain items of clothing and hats. Here is part of his reasoning:

It is common ground that A&F could not apply 'Safari' as a trademark for an expedition into the African wilderness. This would be a clear example of the use of 'Safari' as a generic term. What is perhaps less obvious is that a word may have more than one generic use. The word 'Safari' has become part of a family of generic terms which, although deriving no doubt from the original use of the word and reminiscent of its milieu, have come to be understood not as having to do with hunting in Africa, but as terms within the language referring to contemporary American fashion apparel. These terms name the components of the safari outfit well-known to the clothing industry and its customers: the 'Safari hat', a broad flat-brimmed hat with a single, large band; the 'Safari jacket', a belted bush jacket with patch pockets and a buttoned shoulder loop; when the jacket is accompanied by pants, the combination is called the 'Safari suit'.

Abercrombie, 537 F.2d at 11-12. Judge Friendly determined that the term "safari" was not generic, however, when used in connection with boots; it was either suggestive or merely descriptive, and because the registration of SAFARI for boots had become "incontestable" (a concept we will discuss below), the mark was found in either case to be protected. Id. at 12. Nevertheless, HW was deemed to be making a "fair use" (another concept we will address below) of the term safari in connection with its boots and was thus found not to be infringing. Id. at 12-13.

We will devote much more attention to the question of genericism in Part I.A.1.c below.

Abercrombie borderlines are the most disputed? Under the Abercrombie spectrum, suggestive, arbitrary, and fanciful marks qualify as inherently distinctive and may be protected without a showing that the mark has developed secondary meaning as a designation of source. Descriptive marks do not qualify as inherently distinctive and require a showing of secondary meaning to be protected. Generic marks may not be protected regardless of any showing of secondary meaning. Thus, there are two significantly disputed borders in the Abercrombie spectrum, the border between generic and descriptive marks (addressed in Part I.A. 1.c) and the border between descriptive and suggestive marks (addressed in the next subsection).

3. Coined terms that are not fanciful, but rather suggestive. Not all coined terms qualify as fanciful. In Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625 (9th Cir. 2005), the court analyzed the Abercrombie classification of the trademark SURFVIVOR for beach-themed products:

Because "Surfvivor" is a coined term, [plaintiff] Deptula contends that it should be treated as a fanciful mark. However, the mere fact that a mark consists of a coined term does not automatically render that mark fanciful. See Interstellar Starship Servs. Ltd. v. Epix, Inc., 184 F.3d 1107, 1111(9th Cir. 1999) (determining that the coined phrase "EPIX" for electronic pictures should not automatically be considered an arbitrary [or fanciful] mark). Fanciful marks have no commonly known connotation to the product at hand. By contrast, the term "Surfvivor" is highly evocative of the company's beach-related products.

Id. at 632. The court ultimately determined that the SURFVIVOR mark was suggestive. See id.

Why choose a non-inherently distinctive descriptive mark? Lawyers may advise their clients always to choose inherently distinctive marks (and ideally only fanciful marks) because such marks do not require any showing of secondary meaning to qualify for protection. Yet clients often prefer -and the marketplace is full of -descriptive marks, particularly marks that are descriptive in a laudatory sense (e.g., BEST BUY). Why should this be the case? In an opinion involving the trademark FASHIONKNIT, Judge Learned Hand offered one persuasive explanation: I have always been at a loss to know why so many marks are adopted which have an aura, or more, of description about them. With the whole field of possible coinage before them, it is strange that merchants insist upon adopting marks that are so nearly descriptive. Probably they wish to interject into the name of their goods some intimation of excellence, and are willing to incur the risk.

Franklin Knitting Mills, Inc. v. Fashionit Sweater Mills, Inc., 297 F. 247 (S.D.N.Y. 1923). See also Aloe Creme Labs., Inc. v. Milsan, Inc., 423 F.2d 845, 165 U.S.P.Q. 37 (9th Cir. 1970) ("Apparently entrepreneurs cannot resist the temptation to tie the name of their product to some disabling quality of description, geography, or vanity."). The Gilson treatise discusses this issue thoroughly at JEROME GILSON & ANNE GILSON LALONDE, GILSON ON TRADEMARKS § 2.01 (2022).

In short, no. See Restatement (Third) of Unfair Competition (1995) § 14, cmt. a ("The misspelling or corruption of an otherwise descriptive word will not ordinarily alter the descriptive character of the designation."); Spex, Inc. v. Joy of Spex, Inc., 847 F. Supp. 567 (N.D. Ill. 1994) (SPEX for eyeglasses merely descriptive); In re Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 U.S.P.Q. 505 (C.C.P.A. 1980) (QUIK-PRINT for photocopy services merely descriptive). See also Flexitized, Inc. v. National Flexitized Corp., 335 F.2d 774, 780, 142 U.S.P.Q 334 (2d Cir. 1964) ("That the terms used to comprise a trademark are misspelled, or represent the combination of several words or parts of words, or are otherwise so formed or malformed that the mark does not appear in any standard dictionary, will not preclude a finding of invalidity based on descriptiveness if the terms which are used, interpreted according to the basic rules of the English language, do sufficiently describe.").

6. Beyond Abercrombie. Students with a background in linguistics, semiotics, or literature may find the Abercrombie spectrum to be disappointingly primitive. For a far more sophisticated classification of trademarks by the poetic and rhetorical devices they employ, see Alexandra J. Roberts, A Poetics of Trademark Law, 38 BERKELEY TECH. L.J. 51 (2023).

ii. Distinguishing Suggestive from Descriptive Marks

There are a number of reasons why a trademark owner would want to show that a mark on the border between descriptiveness and suggestiveness is in fact suggestive and thus inherently distinctive. First, as we will see in Part I.A.1.b, it can be difficult and costly to show that a mark deemed descriptive has developed secondary meaning as a designation of source. Second, as we will see in Part I.D, only inherently distinctive marks may be registered on an intent-to-use basis.

Where a mark falls along the continuum between suggestiveness and descriptiveness can be difficult to determine, and a court's determination of the issue difficult to predict. See Jake Linford, The False Dichotomy Between Suggestive and Descriptive Trademarks, 76 OHIO ST. L.J. 1367, 1371 (2015) (characterizing the distinction between descriptive and suggestive marks as "illusory at best" and urging reforms in trademark law's treatment of suggestive marks). Courts' approaches vary, but all emphasize, as did Judge Friendly in Abercrombie, the question of the degree of "imagination" a consumer must use to connect the meaning of the mark to the characteristics of the goods. See, e.g., Platinum Home Mortgage Corp. v. Platinum Financial Group, Inc., 149 F.3d 722, 47 U.S.P.Q.2d 1587(7th Cir. 1998) (stating the Seventh Circuit's "degree of imagination" test as "[I]f a mark imparts information directly it is descriptive. If it stands for an idea which requires some operation of the imagination to connect it with the goods, it is suggestive", and quoting approvingly the district court's reasoning that PLATINUM MORTGAGE is descriptive because "the mental leap . . . is nearly instantaneous and . . . requires little imagination to associate 'platinum' with superiority and quality service").

Because the borderline between descriptive and suggestive marks is so important, two representative analyses are provided here for your consideration. To give you a sense of the relative importance of various opinions in the trademark law canon, it is worth noting that neither of the opinions excerpted here has been nearly as influential as Abercrombie. They are provided instead as everyday examples from various circuits of how courts draw (sometimes unpredictably, sometimes wrongly) the border between suggestiveness and descriptiveness.

In reading these cases, consider the following questions:

• Which factors should be the most important to a court's determination of whether a mark is either descriptive or suggestive?

• How might you design a consumer survey to aid a court in determining whether a mark is either descriptive or suggestive?

• Has the court in Innovation Ventures (the second opinion below) adopted a sensible approach to analyzing descriptiveness versus suggestiveness? If you were the plaintiff (i.e., the asserter of trademark rights), would you prefer the Zatarains or the Innovation Ventures approach?

Zatarains, Inc. v. Oak Grove Smokehouse, Inc. 698 F.2d 786, 792-93 (5th Cir. 1983) {Plaintiff Zatarain's, Inc. ("Zatarain's") used two registered trademarks: FISH-FRI for friedfish batter and CHICK-FRI for fried chicken batter. Competitors, including Oak Grove Smokehouse, Inc. ("Oak Grove") and Visko's Fish Fry, Inc. ("Visco's"), used phrases like "FISH FRY" or "CHICKEN FRY" on the packaging of competing products to describe the contents of those products. Both sides of the dispute cross-appealed the outcome of the district court's bench trial.} Goldberg, Circuit Judge: . . . . [1] Throughout this litigation, Zatarain's has maintained that the term "Fish-Fri" is a suggestive mark automatically protected from infringing uses by virtue of its registration in 1962. Oak Grove and Visko's assert that "fish fry" is a generic term identifying a class of foodstuffs used to fry fish; alternatively, Oak Grove and Visko's argue that "fish fry" is merely descriptive of the characteristics of the product. The district court found that "Fish-Fri" was a descriptive term identifying a function of the product being sold. Having reviewed this finding under the appropriate "clearly erroneous" standard, we affirm. [2] We are mindful that "[t]he concept of descriptiveness must be construed rather broadly." Callman § 70.2. Whenever a word or phrase conveys an immediate idea of the qualities, characteristics, effect, purpose, or ingredients of a product or service, it is classified as descriptive and cannot be claimed as an exclusive trademark. Id. § 71.1; see Stix Products, Inc. v. United Merchants & Manufacturers, Inc., 295 F.Supp. 479, 488 (S.D.N.Y. 1968). Courts and commentators have formulated a number of tests to be used in classifying a mark as descriptive.

[3] A suitable starting place is the dictionary, for "[t]he dictionary definition of the word is an appropriate and relevant indication 'of the ordinary significance and meaning of words' to the public." American Heritage Life Insurance Co. v. Heritage Life Insurance Co., 494 F.2d 3, 11 n.5 (5th Cir. 1974). Webster's Third New International Dictionary 858 (1966) lists the following definitions for the term "fish fry": "1. a picnic at which fish are caught, fried, and eaten; . . . . 2. fried fish." Thus, the basic dictionary definitions of the term refer to the preparation and consumption of fried fish. This is at least preliminary evidence that the term "Fish-Fri" is descriptive of Zatarain's product in the sense that the words naturally direct attention to the purpose or function of the product.

[4] The "imagination test" is a second standard used by the courts to identify descriptive terms. This test seeks to measure the relationship between the actual words of the mark and the product to which they are applied. If a term "requires imagination, thought and perception to reach a conclusion as to the nature of goods," Stix Products, 295 F.Supp. at 488, it is considered a suggestive term. Alternatively, a term is descriptive if standing alone it conveys information as to the characteristics of the product. In this case, mere observation compels the conclusion that a product branded "Fish-Fri" is a prepackaged coating or batter mix applied to fish prior to cooking. The connection between this merchandise and its identifying terminology is so close and direct that even a consumer unfamiliar with the product would doubtless have an idea of its purpose or function. It simply does not require an exercise of the imagination to deduce that "Fish-Fri" is used to fry fish. Accordingly, the term "Fish-Fri" must be considered descriptive when examined under the "imagination test." [5] A third test used by courts and commentators to classify descriptive marks is "whether competitors would be likely to need the terms used in the trademark in describing their products." Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 379 (7th Cir. 1976). A descriptive term generally relates so closely and directly to a product or service that other merchants marketing similar goods would find the term useful in identifying their own goods. Common sense indicates that in this case merchants other than Zatarain's might find the term "fish fry" useful in describing their own particular batter mixes. While Zatarain's has argued strenuously that Visko's and Oak Grove could have chosen from dozens of other possible terms in naming their coating mix, we find this position to be without merit. As this court has held, the fact that a term is not the only or even the most common name for a product is not determinative, for there is no legal foundation that a product can be described in only one fashion. There are many edible fish in the sea, and as many ways to prepare them as there are varieties to be prepared. Even piscatorial gastronomes would agree, however, that frying is a form of preparation accepted virtually around the world, at restaurants starred and unstarred. The paucity of synonyms for the words "fish" and "fry" suggests that a merchant whose batter mix is specially spiced for frying fish is likely to find "fish fry" a useful term for describing his product.

[6] A final barometer of the descriptiveness of a particular term examines the extent to which a term actually has been used by others marketing a similar service or product. This final test is closely related to the question whether competitors are likely to find a mark useful in describing their products. As noted above, a number of companies other than Zatarain's have chosen the word combination "fish fry" to identify their batter mixes. Arnaud's product, "Oyster Shrimp and Fish Fry," has been in competition with Zatarain's "Fish-Fri" for some ten to twenty years. When companies from A to Z, from Arnaud to Zatarain's, select the same term to describe their similar products, the term in question is most likely a descriptive one.

[7] The correct categorization of a given term is a factual issue; consequently, we review the district court's findings under the "clearly erroneous" standard of Fed.R.Civ.P. 52. The district court in this case found that Zatarain's trademark "Fish-Fri" was descriptive of the function of the product being sold. Having applied the four prevailing tests of descriptiveness to the term "Fish-Fri," we are convinced that the district court's judgment in this matter is not only not clearly erroneous, but clearly correct. {In a footnote, the court considered and rejected the argument that FISH-FRI was generic as to fish-frying batter. The court also affirmed the district court's finding that CHICK-FRI was descriptive.} [1] NVE claims that the term "5-hour ENERGY" is not a distinctive mark, but is a descriptive mark. 1 A descriptive mark, by itself, is not protectable. However, "[a] merely descriptive term . . . can, by acquiring a secondary meaning, i.e., becoming distinctive of the applicant's goods . . . , become a valid trademark." Induct-O-Matic Corp. v. Inductotherm Corp., 747 F.2d 358, 362 (6th Cir. 1984). LE counters that the "5-hour ENERGY" mark is not descriptive, but rather is distinctive, due to the mark's suggestiveness. Such a mark "suggests rather than describes an ingredient or characteristic of the goods and requires the observer or listener to use imagination and perception to determine the nature of the goods." Id. at 362.

[2] The "5-hour ENERGY" mark could be characterized as merely descriptive, in the sense that it simply describes a product that will give someone five hours of energy. But that is not the end of such an inquiry. The first question one would ask is how would the energy be transferred? Through food? Through drink? Through injections? Through pills? Through exercise? Also, one would ask what kind of energy is the mark referring to? Food energy (measured in Calories)? Electrical energy? Nuclear energy? With some thought, one could arrive at the conclusion that the mark refers to an energy shot. But it is not as straightforward as NVE suggests. Such cognitive inferences are indicative of "suggestive" rather than descriptive marks.

[3] The nature of the "5-hour ENERGY" mark "shares a closer kinship with those marks previously designated as suggestive than those labeled merely descriptive because of the degree of inferential reasoning necessary for a consumer to discern" that the "5-hour ENERGY" mark relates to an energy shot. Tumblebus v. Cranmer, 399 F.3d 754, 763 (6th Cir. 2005). The connection between "5-hour" and "ENERGY" is "not so obvious that a consumer seeing in isolation would know that the term refers to" an energy shot rather than, for example, a battery for electronics, an exercise program, a backup generator, or a snack for endurance sports. Ibid. Connecting the mark "5-hour ENERGY" with the energy-shot product requires "imagination and perception to determine the nature of the goods." Induct-O-Matic, 747 F.2d at 362. [4] "The line between merely descriptive and suggestive marks is admittedly hazy and can be difficult to discern." Tumblebus, 399 F.3d at 763. However, we disagree with NVE's contention that the mark is not distinctive and thus not protectable. The "5-hour ENERGY" mark is "suggestive."

{The Sixth Circuit found other fact issues and remanded.}

1. The PTO's conflicting analysis of the 5-HOUR ENERGY mark. Innovation Ventures originally applied to register 5-HOUR ENERGY at the PTO in 2004, but the PTO denied registration on the ground that the mark was merely descriptive and lacked acquired distinctiveness. In 2005, Innovation Ventures resorted to registration of the mark on the Supplemental Register (U.S. Reg. No. 3,003,077, Sept. 27, 2005). In 2011, after showing the mark had developed acquired distinctiveness, Innovation Ventures finally managed to register the mark on the Principal Register. (U.S. Reg. No. 4,004,225, Aug. 2, 2011). (For a discussion of the difference between the Supplemental Register and the Principal Register, see Part I.D.1 below).

In a subsequent case, Innovation Ventures, LLC v. N2G Distrib., Inc., 763 F.3d 524 (6th Cir. 2014), the Sixth Circuit noted this history and simply stated in a footnote: "By contrast, we have held that the '5-hour ENERGY' mark was 'suggestive and thus protectable' by at least March 2006. Innovation Ventures, LLC v. N.V.E., Inc., 694 F.3d 723, 730 (6th Cir. 2012)." Innovation Ventures, LLC v. N2G Distrib., Inc., 763 F.3d at 530 n.1. With whose determination do you agree, the PTO's or the Sixth Circuit's?

Here are a few further examples of marks classified either as descriptive or suggestive. You are strongly encouraged to decide for yourself how you would predict the court ruled before consulting the actual outcome (and keep in mind that the court may simply have gotten it wrong):

• COASTAL WINE for wine made near a coast. See Callaway Vineyard & Winery v. Endsley Capital Group, Inc., 63 U.S.P.Q.2d 1919(TTAB 2002) (finding the mark to be descriptive since the mark describes "a significant feature of applicant's goods, namely the place or establishment where applicant produces its wine").

• 24 HOUR FITNESS for fitness facilities. The combination of the terms into a single unique word places the mark in the 'suggestive' category, requiring a leap of the imagination to get from the mark to the product. The CROSSFIT® mark is not an arbitrary term such as KODAK." (citation omitted)).

• XTREME LASHES for artificial eyelashes. See Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221 (5th Cir. 2009) (finding the mark to be suggestive; "The consumer must exercise some imagination to associate 'xtreme lashes' with 'artificially elongated eyelashes.'").

• 100% and 100% TIME RELEASE MOISTURIZER for skin moisturizer. See Estee Lauder, Inc. v. The Gap, Inc., 108 F.3d 1503(2d Cir. 1997) (affirming the district court's finding the mark to be suggestive; "The phrase '100% Time Release Moisturizer' could be read to indicate the purity of the moisturizing content of Lauder's product, or to imply an enduring effect. Or, as the district court found, it could be read as indicating that the bottle contains nothing but time-release moisturizer or that the product moisturizes continuously until removed or worn off. All of these interpretations require some stretch of the imagination. And of course, as the court found, if the term '100%' is simply viewed as the brand of time-release moisturizer, it plainly is suggestive.").

• LITTLE MERMAID for a doll taking the form of a mermaid. See In re United Trademark Holdings, Inc., 122 U.S.P.Q.2d 1796 (TTAB 2017) (finding the mark to be descriptive for a doll taking the form of a mermaid because consumers will "understand the mark to describe the public domain character in the Hans Christian Andersen fairy tale, as well as a young or little mermaid"; by contrast, " [c]onsumers reasonably expect goods and services bearing the name or image of {Superman} to emanate from, or be produced or marketed under license from, the entity which created the character and therefore owns the right to profit from commercialization of it.").

• The app icon shown to the right for a mobile game consisting of block puzzles. See Hangzhou Mengku Technology Co., Ltd v. Shanghai Zhenglang Technology Co., Ltd, Opposition No. 91272143 (TTAB Dec. 30, 2024) (finding the asserted mark to be descriptive: "Considering the context in which Applicant's proposed mark is used and the average purchaser of the goods, we find that Opposers have shown that Applicant's proposed mark conveys an immediate idea of a feature of the goods, namely that Applicant's product is a block puzzle game, as described in the identification of goods.").

1. Surveying for suggestiveness versus descriptiveness. In Rise-N-Shine, LLC v. Duner-Fenter, No. 14 Civ. 1305, 2015WL 876470 (S.D.N.Y. Feb. 28, 2015), the plaintiff produced a dietary supplement under the mark GO AWAY GRAY that purportedly prevents the growth of gray hair. The defendant produced a competing dietary supplement under the mark GET AWAY GREY. The defendant asserted that the plaintiff's mark was descriptive (and both parties agreed that the plaintiff's mark lacked secondary meaning). The plaintiff presented survey evidence of the mark's suggestiveness. The methodology of the survey was essentially as follows:

First, the pool of respondents was limited-through screening questions at the beginning of the survey-to adults between the ages of 35 and 55, residing in the United States, who had purchased vitamins or supplements in the previous six months, and who reported that they would "definitely" or "probably" consider buying vitamins or supplements "to promote healthy hair" in the next six months. In all, 208 participants qualified after these screening mechanisms. Next, respondents were informed of the difference between a brand name and a product description, and given two test phrases ("ONE A DAY" and "IMMUNITY BOOSTER") to evaluate whether they understood that distinction. Respondents were then asked whether they believed the Disputed Mark-as well as two other marks, "SLIM-FAST" and "MUSCLE BUILDER," which were included to minimize potential bias-refers to a product's brand name or describes a product's function or purpose, or whether the respondent did not know. Respondents were also asked, at the conclusion of the survey, whether they had gray hair, and 176 of the 208 respondents answered affirmatively. Ultimately, 49% of survey respondents-and 51% of respondents with gray hair-answered that they believed the Disputed Mark was a brand name. {The survey expert} then excluded all those respondents who incorrectly identified either SLIM-FAST or MUSCLE BUILDER as a brand name or product description, which left 160 respondents. Of those respondents, 56% in total, and 59% of those with gray hair, answered that they believed the Disputed Mark was a brand name.

Id. at *1. Judge Sullivan rejected the defendant's motion in limine to exclude the survey expert's testimony and allowed the survey results to be presented to the jury. Id. at *4. Does this survey methodology for distinguishing between descriptive and suggestive marks appear valid? 2. Is the protection of descriptive marks constitutionally sound? See Lisa Ramsey, Descriptive Trademarks and the First Amendment, 70 TENN. L. REV. 1095REV. (2003) ) (arguing that the protection of descriptive marks violates the free speech clause of the First Amendment because it does not directly advance the government's interest in protecting consumers from confusion and is in any case more extensive than necessary).

iii. Special Rules for Classification of Certain Kinds of Trademarks

There are many special rules that guide the Abercrombie classification of certain kinds of trademarks. Nearly all of them are detailed in the PTO's Trademark Manual of Examining Procedure ("TMEP"), tmep.uspto.gov, which is an excellent resource for the trademark lawyer, particularly one who specializes in trademark "prosecution," i.e., the process of registering trademarks at the PTO. Among the most important of these special rules are the following:

As we will see through the course of this Part, Lanham Act § 2, 15 U.S.C. § 1052, has several provisions giving special treatment to geographic terms. Consider for the moment § 2(e) (2), which provides: "No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (e) Consists of a mark which . . . ( 2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title."

Such "primarily geographically descriptive" marks may be registered or otherwise protected only upon a showing of secondary meaning (with one important exception relating to geographic certification or collective marks that we will address in a moment for apparel to be not primarily geographically descriptive where consumers would not perceive the primary significance of the mark as a whole as designating a particular geographic location).

The third prong of the PGD test calls for evidence that consumers would make a "goods/place association" (or "service/place association") between (a) the geographic location referred to by the mark and (b) the goods sold under the mark. Importantly, if the geographic location is "neither obscure nor remote," TMEP § 1210.04, and the goods actually originate from that location, then this goods/place association may ordinarily be presumed. The result is that the goods/place association is almost always found. See, e.g., In re Spirits of New Merced, LLC, 85 U.S.P.Q.2d 1614 (TTAB 2007) (finding YOSEMITE BEER to be primarily geographically descriptive where the registration applicant's beer was brewed near Yosemite National Park and applicant failed to overcome presumption of goods/place association; "{s}ince the goods originate at or near {Yosemite National Park}, we can presume an association of applicant's beer with the park."). But see In re Mankovitz, 90 USPQ2d 1246 (TTAB 2009) (finding THE MONTECITO DIET for a diet system to be not primarily geographically descriptive where evidence of goods/place association consisted only of the fact that the registration applicant lived in Montecito, California; "it would be speculation on our part to reach the conclusion that the goods or services originate there or that the public would understand that there is a goods/place relationship").

(b) Certification Marks and Collective Marks

"Certification marks" and "collective marks" are special forms of trademarks in the Lanham Act. Lanham Act § 45 defines a certification mark as follows:

The term "certification mark" means any word, name, symbol, or device, or any combination thereof-(1) used by a person other than its owner, or (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this Act, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.

As the § 45 definition suggests, certification marks may take a variety of forms, including:

• certifications of a good's quality, e.g., SCOTCH 2023) (in refusing registration of GRUYERE as a certification mark on the ground that the term is generic, finding that "the pervasive sales of non-Swiss and non-French cheese labeled as gruyere in the United States{} and the common usage of gruyere establish that when purchasers walk into retail stores and ask for gruyere, they regularly mean a type of cheese, and not a cheese that was produced in the Gruyère region of Switzerland and France" (cleaned up));

• certifications that a product was union-made e.g., the International Union of Painters and Allied Trades mark indicating that the designated services were performed by union members, Reg. No. 2,749,294 (Aug. 12, 2003).

Various specific rules apply to certification marks. First, certifying organizations may not themselves produce goods or services to which the certification mark is applied. See Lanham Act § 14( 5 In contrast to certification marks, collective marks are used by members of the collective to identify their goods and services as made by collective members. The "anti-use-by-owner" rule that applies to certification marks-i.e., the rule that the owner of the certification mark may not itself sell goods or services bearing the certification mark-does not apply to collective marks. 4 Lanham Act § 45 defines collective marks as follows:

The term "collective mark" means a trademark or service mark- When certification or collective marks take the form of geographic designations, the distinctiveness analysis of them is unique in the statutory scheme. Lanham Act § 2(e) (2) establishes that proprietors of certification or collective marks that take the form of "indications of regional origin" need not establish that the indication of regional origin has secondary meaning in order to register the indication as trademark. A mark's ability to qualify as a regional certification or collective mark turns on "whether the public understands that goods bearing the mark come only from the region named in the mark, not whether the public is expressly aware of the certification function of the mark per se." TMEP § 1306.05(a). See also Institut Nat'l Des Appellations D'Origine v. Brown-Forman Corp., 47 USPQ2d 1875(TTAB 1998).

Just as it does with geographic marks, § 2 of the Lanham Act, 15 U.S.C. § 1052, also explicitly addresses the protectability of surnames and classifies them essentially as descriptive marks. It states: "No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (e) Consists of a mark which . . . ( 4) is primarily merely a surname." Surnames may be registered only upon a showing of acquired distinctiveness under § 2(f), 15 U.S.C. § 1052(f). As the TMEP explains, § 2(e)(4) "reflects the common law that exclusive rights in a surname per se cannot be established without evidence of long and exclusive use that changes its significance to the public from that of a surname to that of a mark for particular goods or services. The common law also recognizes that surnames are shared by more than one individual, each of whom may have an interest in using his surname in business; and, by the requirement for evidence of distinctiveness, the law, in effect, delays appropriation of exclusive rights in the name." TMEP § 1211.

But what qualifies as "primarily merely a surname"? "Fiore," "Hackler," and "Bird" are used as surnames, but each has been deemed not "primarily merely a surname" under trademark law. See In re Isabella Fiore LLC, 75 USPQ2d 1564 (TTAB 2005); In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000); Fisher Radio Corp. v. Bird Elec. Corp., 162 USPQ 265 (TTAB 1969). The TTAB has established a five factor balancing test to determine whether the relevant purchasing public perceives the primary significance of a term to be that of a surname: (1) whether the surname is rare; (2) whether the term is the surname of anyone connected with the applicant; (3) whether the term has any recognized meaning other than as a surname; (4) whether it has the "look and feel" of a surname; (5) in cases of stylized, rather than standard character marks, whether the stylization of lettering is distinctive enough to create a separate commercial impression. In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-1334(TTAB 1995) (finding that the mark BENTHIN in stylized lettering inside an oval design would not be perceived as primarily merely a surname). If it is determined that the relevant purchasing public does not perceive a term as a surname, then the term would likely be classified as either arbitrary or suggestive, or possibly even as fanciful. In any case, the term would qualify as inherently distinctive of source. 5 5 As for full names, the common law has long treated full names the same as it treats surnames: both require a showing of secondary meaning to merit protection. But importantly, the PTO treats full names differently from surnames for purposes of registration. It will allow the registration of a full name without any showing that the name carries secondary meaning (or is famous), provided that the applicant can show that the name is being used as an indication of commercial origin rather than as simply the applicant's own name. See Brooks v. Calloway, 93 U.S.P.Q.2d 18232010 WL 595585, at *8 (T.T.A.B. 2010) ("A personal name mark, unless it is primarily merely a surname, is registrable on the Principal Register without a showing of secondary meaning, and thus is deemed to be inherently distinctive under the Lanham Act if the record shows that it is used in a manner that would be perceived by purchasers as identifying the services in addition to the person."). The divergence What about historic surnames? "A term with surname significance may not be primarily merely a surname if that term also identifies a historical place or person." TMEP § 1211.01(a)(iv). (d) Non-English Words: The Doctrine of "Foreign Equivalents"

Under the "doctrine of foreign equivalents," the distinctiveness analysis of non-English words is based on the English translation of those words if (1) the non-English words originate from "common, modern languages, which encompasses all but dead, obscure, or unusual languages," TMEP § 1207.01(b)(vi)(B), and ( 2) "it is likely that the ordinary American purchaser would stop and translate the foreign wording into its English equivalent." TMEP § 1209.03(g). Thus, "leche," "lait," and "Milch" as brand names for milk would be deemed generic, and "fresca," "frais," and "frisch" as brand names for milk would likely be deemed descriptive and require secondary meaning to be protected. See, e.g., In re Tokutake Indus. Co., 87 USPQ2d 1697 (TTAB 2008) (finding AYUMI, meaning "walking," and its Japanese character equivalent to be merely descriptive for footwear); In re Oriental Daily News, Inc., 230 USPQ 637 (TTAB 1986) (finding Chinese characters meaning "Oriental Daily News" to be merely descriptive of newspapers). between the common law and the registration regime with respect to full names can lead to strange outcomes. See, e.g., Zinner v. Olenych, 108 F. Supp. 3d 369, 381-86 (E.D. Va. 2015) (explaining the difference between the USPTO's "more lenient standard" and the common law doctrine and finding that plaintiff's mark, ED ZINNER, was a personal name, unprotectable under the common law, yet awarding it a presumption of validity, because the USPTO had granted it registration).

The doctrine of foreign equivalents has long been riddled with inconsistencies, limitations, and exceptions, however, and is arguably incoherent. See, e.g., In re Bayou Grande Coffee Roasting Co., 160 F.4th 1370, 1374(Fed. Cir. 2025) (reversing the TTAB's determination that KAHWA, which in Arabic means "coffee," is generic for cafés and coffee shops, reasoning that the doctrine of foreign equivalents does not apply because the English term "kahwa" refers to a type of Kashmiri green tea). In In re Vetements Grp. AG, 137 F.4th 1317(Fed. Cir. 2025), the Federal Circuit sought to rationalize the doctrine. In the case, a fashion house applied to register the term "vetements" (which means "clothing" in French) for various items of apparel. The Federal Circuit found the term to be generic based on the following "guiding principles":

First, the burden is on the party opposing translation to show that it is unlikely the ordinary American purchaser would stop and translate the word into its English equivalent. Placing the burden on a party opposing translation takes into account the well-recognized tenet that words from modern languages are generally translated into English. . . . Second, we consider the capability of the U.S. population to translate the word. . . . As long as an appreciable number of Americans, from the U.S. population as a whole, are capable of translating the word, the word likely will be translated. This principle does not require an absolute majority of the population being capable of translation because it takes into account that words from modern languages are generally translated into English.

Third, we consider whether in context, the mark would ordinarily be translated by a purchaser (from the U.S. population as a whole) with ordinary sensibilities. . . . Because the second principle considers language capability, this third principle does not depend on linguistic capabilities. Instead, it assumes linguistic ability but asks whether a purchaser with ordinary sensibilities would translate the word given the context in which the mark is used. This follows from cases that have articulated sometimes even a native speaker would not perform a literal translation because it would be irrelevant in the context of the specific goods, services, or market.

Id. at 1331 (quotation marks and citations omitted; emphasis in original).

What is an "appreciable number of Americans"? In Vetements, the record established that "approximately 2.1 million Americans over the age of five spoke a dialect of French at home. French is also the second most widely taught non-English language in schools in the United States." Id. at 1327. See also In re Hag Aktiengesellschaft, 155 U.S.P.Q. 598 (TTAB 1967) (finding KABA, meaning coffee in Serbian and Ukrainian, to be descriptive for coffee). But see Palm Bay Imports v. Veuve Clicquot, 396 F.3d 1369(Fed. Cir. 2005) (finding that VEUVE CLICQUOT is not confusingly similar to THE WIDOW, since most American consumers won't know that ''veuve'' means ''widow'' in French). 6

The general rule is that an acronym will be classified as descriptive or generic if (1) the wording it stands for is merely descriptive of or generic as to the goods or services, and ( 2) relevant purchasers will recognize the acronym as an acronym of the merely descriptive or generic wording it represents (rather than as, say, a fanciful sequence of letters

A descriptive, and thus non-inherently distinctive, mark may qualify for protection if it is shown to have developed "acquired distinctiveness" or "secondary meaning" (the two terms mean the same thing) as a designation of source. For example, though the term "American Airlines" is highly descriptive of an airline service based in the U.S., the term has developed enormous secondary meaning as a designation of source through use and advertising. As the Supreme Court commented in Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000), the term "secondary meaning" is not as clear as it could be:

The phrase "secondary meaning" originally arose in the context of word marks, where it served to distinguish the source-identifying meaning from the ordinary, or "primary," meaning of the word. "Secondary meaning" has since come to refer to the acquired, source-identifying meaning of a nonword mark as well. It is often a misnomer in that context, since nonword marks ordinarily have no "primary" meaning. Clarity might well be served by using the term "acquired meaning" in both the word-mark and the nonword-mark contexts-but in this opinion we follow what has become the conventional terminology.

Id. at 211 fn. Indeed, most trademark practitioners still continue as a matter of tradition to use the term "secondary meaning" rather than "acquired distinctiveness."

Each circuit typically uses its own multifactor test to determine if a mark has developed secondary meaning. They are generally quite similar. Here are some examples of these tests: 6 A common objection to the doctrine of foreign equivalents is that Americans don't speak "foreign" languages. In fact, according to U.S. Census Bureau data, 1 in 5 Americans speak a language other than English at home. See https://www.census.gov/acs/www/about/why-we-ask-each-question/language/.

• Second Circuit: "(1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, ( 5) attempts to plagiarize the mark, and (6) length and exclusivity of the mark's use." Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 143 n.4 (2d Cir. 1997).

• Third Circuit: "We have identified an eleven-item, non-exhaustive list of factors relevant to the factual determination whether a term has acquired secondary meaning: (1) 1) whether actual purchasers of the product bearing the claimed trademark associate the trademark with the producer, ( 2) the degree and manner of advertising under the claimed trademark, (3) the length and manner of use of the claimed trademark, and ( 4) whether use of the claimed trademark has been exclusive.").

The three opinion excerpts that follow offer examples of courts' analyses of whether a non-inherently distinctive mark has developed sufficient secondary meaning to qualify for protection. Each of these opinions addresses facts involving non-verbal marks, but they are included here because the secondary meaning analysis of verbal and non-verbal marks operates in essentially the same way. In reading these excerpts, consider the following questions:

• What proportion of consumers in the relevant population should courts require to perceive the mark as possessing secondary meaning for the mark to qualify for protection? 25%? 50? 75%? Relatedly, how should courts determine what constitutes the relevant population of consumers?

• How would you devise a survey to test for secondary meaning?

• Why should "length and exclusivity of use" matter for purposes of establishing secondary meaning?

• Imagine a situation in which Company David, after a great deal of market research, adopts an especially good descriptive mark and initiates a small-scale launch of the descriptive mark in the marketplace. Company Goliath then becomes aware of Company David's mark, adopts the mark as its own, and immediately spends enormous resources building up secondary meaning in the mark, so that when consumers see the mark, they think of Company Goliath. Which company should be granted rights in the mark? And is this in your view an equitable or efficient outcome?

The following case involved two main questions. The first was whether a combination of design elements incorporated into the design of boots had acquired distinctiveness. The case is included here because of the court's rich analysis of this issue. But the case also involved the question of whether the combination of design elements was functional. Because we will address the issue of functionality in more detail in section I.B.1, the court's discussion of that issue has been largely edited out of the opinion excerpt below. In any event, as you will see, the court ultimately determined that it did not need to decide the issue of functionality because of how it ruled on the issue of acquired distinctiveness.

TBL Licensing, LLC v. Vidal 98 F.4th 500 (4th Cir. 2024) QUATTLEBAUM, Circuit Judge: [1] TBL Licensing, LLC, more commonly known as Timberland, tried to register certain features from the design of its popular boot under the Lanham Act as trade dress. But the law prohibits the registration of product designs that have not acquired a distinctive meaning identifying the product with its maker in the minds of the consuming public. See TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 28-29 (2001). It also bars the registration of product designs that are functional since protection of functionality is reserved for patent law. Id. at 29. Concluding the boot design is not distinctive, the United States Patent and Trademark Office ("USPTO") refused to register it. TBL turned to federal district court, which agreed with the USPTO that the boot design is not distinctive and added that it is impermissibly functional. On either independent ground, the district court granted the USPTO's motion for summary judgment. On distinctiveness, the issue we face is not whether the public recognizes the entire product as Timberland's perhaps iconic boot; rather, we must decide whether the district court reversibly erred in concluding that the subset of design features that TBL selectively sought to register lacks distinctiveness in the public's view. We hold that the district court did not reversibly err. So, without deciding functionality, we affirm the district court's grant of summary judgment for the USPTO. I. . . . .

[2] For decades, TBL has sold the following boot in several colors: [3] In May 2015, TBL applied to register aspects of the boot's design as protected trade dress with the USPTO. As required by law, see 37 C.F.R. § 2.37, TBL included a written description{, block-quoted below,} "specify[ing] which elements ... constitute the mark and are claimed as part of the mark and which are not." Trademark Manual of Examining Procedure § 1202.02(c)(ii).

The mark consists of a three-dimensional configuration of a lace-up boot having an overall shape and silhouette as depicted in the drawings, with a visibly bulbous toe box and the following individual features:

(1) the external appearance of a tube-shaped ankle collar on the outside surface of the product running from one eyelet panel to the other eyelet panel around the sides and rear of the boot and protruding over the upper side and rear panels of the boot (material on the inside of the ankle collar not being claimed);

(2) outsoles having two color tones divided horizontally and extending around the circumference of the boot, and visibly showing inverted tooth shaped cuts on each side of the heel of the outsole and around the sides and front of the forward portion of the outsole;

(3) an hourglass-shaped rear heel panel, defined by four vertical stitching lines from the top of the outsole to the rear collar;

(4) quad-stitching forming an inverted "U" shape around the vamp line in front of the boot at the bottom of the tongue and curving around to the left and right sides and ending at the cinched portion of the hourglass stitching of the rear heel panel; and

(5) eyelets shaped hexagonally on the exterior-facing outside surface.

The double row stitching around the rear and side ankle collar, the single stitching around the upper two eyelets on each side, the single stitching along the upper perimeter of the shaft in front of the eyelets and the boot tongue, the appearance of the eyelets on the boot interior, the top of the ankle collar, the bottom, outer most surface of the outsole, and the uppermost surface of the outsole connecting to the boot around the perimeter, all of which are depicted in broken or dotted lines, are not being claimed as part of the mark and serve only to show the position or placement of the mark.

[4] Also as required by law, see 15 U.S.C. § 1051(a)(2); 37 C.F.R. § 2.51, TBL included this drawing of the design features it sought to register: [5] For clarity, we have added the numbers on the drawing, which correspond to the design features described in the application.

[6] Importantly, TBL did not try to register every aspect of the boot. In its registration application, TBL asserted-or, to use the legal term, "claimed"-intellectual property rights in some, but not all, of the features of its boot design. For instance, as a part of the design it sought to register, TBL claimed "the external appearance of a tube-shaped ankle collar on the outside surface of the product" but not "material on the inside of the ankle collar." Likewise, it claimed two-colored outsoles "visibly showing inverted tooth shaped cuts" along the soles' sides, but not "the bottom, outer most surface of the outsole." Also, the application claimed no particular color as a part of the boot's design, such as the popular wheat-yellow color depicted above. Nor did it include TBL's already-registered tree logo or TIMBERLAND word mark. 4 [7] The USPTO's examining attorney refused to register the design, finding it overall functional and not distinctive. TBL appealed to TTAB, which affirmed the examining attorney's refusal to register the design, finding the design lacks distinctiveness and declining to reach whether it is functional.

[8] As allowed by the Lanham Act, TBL challenged TTAB's decision in federal district court, naming as defendants the USPTO and its then-acting director (collectively "USPTO"). After discovery, the parties agreed to allow the district court to "resolve any factual disputes 4 TBL's decision to limit the design features of the boot in its application was quite possibly strategic. Had it included, for instance, the inner ankle collar or the lug sole, the overall risk of a functionality finding likely would have increased. But having omitted these features in its application, TBL must prove that, without resorting to these unclaimed features, the public associates the features TBL did claim exclusively with Timberland.

without the need for a trial." Having so agreed, TBL and the USPTO then cross-moved for summary judgment. So, in effect, the district court conducted a bench trial. . . . .

[9] Here, we must affirm the district court unless it reversibly erred in finding both that the design TBL claimed is functional and that the same design is not distinctive. In assessing both issues, we focus on the design drawn and described in TBL's application. See 37 C.F.R. § 2.37 ("A description of the mark must be included if the mark is not in standard characters."); id. § 2.52 ("A drawing depicts the mark sought to be registered."); . . . 1 McCarthy § 8:7 ("To be registerable as a trademark or service mark, the elements of the trade dress must be listed and defined so that the public will know the exact parameters of the claimed exclusive right covered by the registration."). Crucial to this appeal, that means we consider only the outer ankle collar, the two-tone color and etching on the side of the boot's sole, the hourglass rear heel panel, the quad stitching along the boot's side and tongue area, the hexagonal eyelets for the boot's laces and the boot's bulbous toe box. Other design features of the boot-such as the popular wheat-yellow color, the tree logo, the lug soles and the inner ankle collar-cannot be used to prove distinctiveness, as they are not design features that TBL claimed in its application.

[10] To be registerable, a mark must cause the public to identify the product bearing it as coming from a specific source. Wal-Mart Stores, 529 U.S. at 210. That is, the mark must be distinctive. Id. A mark generally acquires distinctiveness "if it has developed secondary meaning, which occurs when, 'in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.'" Id. at 211 (quoting Inwood Labs., 456 U.S. at 851 n.11). . . . While the public "need not be able to identify the name of the manufacturer that produces the product," it must perceive "that the product emanates from a single source." Tools USA & Equip. Co. v. Champ Frame Straightening Equip. Inc., 87 F.3d 654, 660 (4th Cir. 1996) . . . . That public perception must rely on the features claimed, as drawn and described in TBL's application.

[11] This point is critical. Some consumers might recognize the whole boot, unclaimed features and all, as a Timberland. But TBL did not undertake to register the entire boot. Instead, TBL sought to register only the select attributes described in its application-for instance, two-colored outsoles "visibly showing inverted tooth shaped cuts" along the soles' sides, but not "the bottom, outer most surface of the outsole." Just as TBL effectively narrowed the functionality inquiry by tailoring its application to select elements of its boot design, so too must we limit our secondary meaning analysis to those applied-for features. Thus, the question is whether the design features claimed in TBL's application have acquired secondary meaning. And those features have not if consumers associate them with sources other than just Timberland. See Two Pesos, 505 U.S. at 766 n.4. [12] A party seeking to establish secondary meaning in a product design bears a "formidable burden of proof." 1 McCarthy § 8:8.50; see also U.S. Search, Reflecting that "rigorous evidentiary standard," our circuit assesses secondary meaning through many factors: (1) advertising expenditures; (2) consumer studies linking the mark to a source; (3) record of sales success; (4) unsolicited media coverage of the product; (5) attempts to plagiarize the mark; and (6) the length and exclusivity of the mark's use. U.S. Search, 300 F.3d at 525. "[N]o single factor is determinative." Id.

[13] Applying these factors, the district court found that TBL failed to carry its formidable burden of proving that the design features of the boot that it sought to register have acquired secondary meaning. And, as described below, the district court did not clearly err in reaching that finding. [14] We start with consumer studies, or surveys, due to their importance in the secondary meaning analysis. "Survey evidence is generally thought to be the most direct and persuasive way of establishing secondary meaning." Id. at 526 n.13. Indeed, TBL hired a survey expert in its effort to show that consumers associate the claimed features of its boot's design with Timberland. But the district court pointed out several flaws with the survey.

[15] First, the survey, according to the district court, improperly suggested an outcome. The uncolored and unshaded drawing in TBL's application "depicts the mark sought to be registered." 37 C.F.R. § 2.52. But, instead of using that drawing, the survey used grayscale photographs of the boots. While those photographs depicted boots that were light in color, the grayscale photographs of the non-Timberland boots used as control images appeared darker.

[16] The district court concluded that the grayscale photographs of the light-colored boots suggested to the survey respondents that the boot presented to them was a Timberland boot depicted in its best-selling wheat-yellow color. While the boot is now offered in multiple colors, the boot has been sold in a wheat-yellow color from the beginning. In fact, TBL previously applied to register that color but was ultimately unsuccessful. In its present application, the one on which our present analysis must focus, TBL has not claimed the wheat-yellow color or any other. So, the district court found that the survey used features of the boot's design that were not part of the application to improperly suggest the boot was a Timberland.

[17] Second, the district court determined that the survey used a problematic progression. The survey began by asking, "Do you associate this boot design with any company or companies?" Then, it asked, "What company?" The district court worried that this progression may have nudged respondents to name only a single company, even if the respondents associated the boot with several. Such a nudge would matter because if the public associated the claimed design features with more than just Timberland, the design did not acquire a distinctive secondary meaning.

[18] TBL has not challenged the district court's critique. In fact, it affirmatively waived any challenge to the district court's findings regarding the weight, or lack thereof, of the survey TBL proffered. Without "this most direct and persuasive" evidence of secondary meaning from consumers, TBL must resort to circumstantial evidence. U.S. Search, 300 F.3d at 526 n.13.

[19] TBL did, however, challenge the district court's ruling on advertising expenditures, arguing it clearly erred in not giving such expenditures more weight. No doubt, TBL has spent vast sums on advertising. According to the declaration of a senior Timberland manager, TBL has spent over $81 million marketing the boot in the U.S. across various media over the past six years. But the district court declined to infer secondary meaning from advertisements merely picturing Timberland boots. It emphasized TBL's failure to point to advertisements encouraging consumers to identify the boots as Timberlands by looking for the specific design features TBL sought to register.

[20] Expenditures themselves do not, from a legal standpoint, establish secondary meaning without a showing that they translated into what counts-consumers associating the claimed design features with a single source. See, e.g., B & J Enters., Ltd. v. Giordano, 329 F. App'x 411, 419 (4th Cir. 2009) (argued but unpublished) ("Absent a showing that such expenditures 'were effective in causing the relevant group of consumers to associate the mark with itself,' secondary meaning cannot be established." (quoting FM 103. 1, Inc. v. Universal Broad. of N.Y., Inc., 929 F. Supp. 187, 196 (D.N.J. 1996))); Dick's Sporting Goods, Inc. v. Dick's Clothing & Sporting Goods, Inc., 188 F.3d 501, *7 (4th Cir. 1999) (unpublished table decision) (discounting advertising expenditures since the company alleging trade name infringement "failed to show that its expenditures were effective in causing consumers in the . . . geographic area to associate the trade name . . . with [its] business"); see also 2 McCarthy § 15:51 ("[T]he mere expenditure of money is not, in itself, determinative of the actual result in buyers' minds.").

[21] Accordingly, not all advertisements are equally probative of secondary meaning. Advertisements that direct consumers to "look for" features claimed as trade dress to identify the advertiser's product provide particularly powerful evidence that those features have acquired secondary meaning. See 1 McCarthy § 8:8.50 (stating that sometimes look-for advertising is "the only practical way to develop secondary meaning in trade dress") . . . ; see also Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654, 662 (7th Cir. 1995) ("Advertising that touts a product feature for its desirable qualities and not primarily as a way to distinguish the producer's brand is not only not evidence that the feature has acquired secondary meaning, it directly undermines such a finding."). The Maker's Mark red wax seal illustrates this principle. In Maker's Mark, the Sixth Circuit affirmed the district court's finding that "Maker's Mark usually focus[ed] directly on the red dripping wax seal." Maker's Mark, 679 F.3d at 421. It explained that "the district court had before it, and considered, an abundance of Maker's Mark advertisements that specifically feature the red dripping wax seal." Id.

[22] On the other hand, advertising proves less if it does not somehow spotlight the claimed design features over other unclaimed attributes. See Forney Indus., Inc. v. Daco of Mo., Inc., 835 F.3d 1238, 1254(10th Cir. 2016) ("[A]dvertising alone is typically unhelpful to prove secondary meaning when it is not directed at highlighting the trade dress."); Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863, 871 (8th Cir. 1994) ("The advertisements submitted with the application cannot establish secondary meaning because they do not separate the claimed dress of the products from the other marks that serve to identify the products as those of Aromatique."). [23] This makes sense. If advertising calls no special attention to the features of the product's design claimed to have secondary meaning, such evidence generally carries less weight. Even so, less talk may be required to showcase to consumers a product's more prominent features, which to an extent speak for themselves. See, e.g., Nabisco, 50 F. Supp. 2d at 200 ("The Goldfish shape, the most salient feature of the product design, dominates these advertisements."); id. at 204 ("The print advertisements call attention to the product configuration, prominently displaying the Goldfish form.").

[24] The district court followed these principles. Looking beyond the mere expenditures, it explained that the advertisements TBL introduced depicted the entire boot. Those pictures, for example, included the wheat-yellow color and Timberland's tree logo, even though those features are not claimed in its current trade dress application. 7 Compared to those unclaimed, but perhaps more conspicuous, features of the boot, the advertisements did not call attention to the design features in the application-like the hexagonal shape of the eyelets or the fourth row of stitching, to name two examples. As a result, the district court did not clearly err in its analysis of this factor.

[27] Therefore, while the Timberland boot boasts impressive sales, we see no clear error in the district court's determination that the numbers themselves did little to indicate that the claimed features of the boot's design have acquired secondary meaning.

[28] TBL's challenge to the district court's analysis concerning media coverage follows the same pattern. The Timberland boot has appeared in various media. As one senior Timberland manager has catalogued, the boots have appeared in television, movies, music and publications. The record also contains reams of Instagram posts of individuals, mostly celebrities, wearing boots that user comments identify as "Timberlands," "Tims" or the like.

[29] Even so, the district court found that these references did little to show that the design features TBL specifically sought to register had acquired secondary meaning. Rather, the district court stressed that these images from media coverage, like the advertisements, included features of the Timberland boot that were not part of its trade dress application. Some images include TBL's registered tree logo burned onto the boot's side. Also, as the district court observed, most of the images present the boot in its best-selling wheat-yellow color, a feature TBL does not claim in its current application. The district court considered these unclaimed design features to be more distinctive than the design that TBL now wishes to register as trade dress.

[30] True, as TBL argues, the presence of other identifiers is not always fatal to showing a product design's distinctiveness. But their presence can suggest that a producer relies on that other branding rather than just the claimed design to identify itself as the product's maker. See Aromatique, 28 F.3d at 872 (concluding that articles were insufficient to support a showing of secondary meaning since they "do not distinguish between the trade dress and Aromatique's other marks"); see also Gen. Shoe Corp. v. Rosen, 111 F.2d 95, 99 (4th Cir. 1940) ("It is of course possible that marks may be so completely associated with one another in the minds of the public as not to indicate separately the origin of the goods."). So, the district court did not legally err by considering the role of the unclaimed design features.

[31] In finding the unclaimed design features played a predominant role in identifying the boot, the district court did not need to look far since TBL had already admitted that they do. When previously TBL sought to register the wheat-yellow color as trade dress, TBL officers stated under oath that it was only the boots' color that allowed for their identification as Timberlands. TBL objects that the statements it made in that prior trade dress application "do not give rise to estoppel in subsequent proceedings." Reply Br. at 29 (quoting Institutional Wholesalers, Inc. v. Saxons Sandwich Shoppes, Inc., 170 U.S.P.Q. 107, 1971WL 16746, at *2 (TTAB Mar. 29, 1971)). But the district court did not conclude that these prior declarations estopped TBL from asserting in this case that the design it now claims has enjoyed unsolicited media coverage; rather, the district court determined only that the prior sworn statements "undercut" TBL's current position that its boot is identifiable based on features other than its color. TBL Licensing, 644 F. Supp. 3d at 201-02. TBL's prior inconsistent declarations to the USPTO are certainly relevant evidence. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1340(Fed. Cir. 2015);Freedom Card, Inc. v. JPMorgan Chase & Co., 432 F.3d 463, 476 (3d Cir. 2005).

[32] As with TBL's advertising, the media coverage of the Timberland boot does not highlight the aspects of the boot design claimed in TBL's current application. To the contrary, many of the design features TBL described in its application are imperceptible in many of the images contained in the record.

[33] In weighing the media portrayals of the boot, the district court did not legally or clearly err.

TBL also argues that attempts by others to plagiarize its boot show secondary meaning. And true, attempts to plagiarize a design can evince its distinctiveness. U.S. Search, 300 F.3d at 525. But, under the law of secondary meaning, it matters why one imitates. Imitation of design features only to profit from the design's functionality does not establish secondary meaning. Imitation suggests secondary meaning only if it is intended to deceive consumers about the product's source. See Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 45 (1st Cir. 2001) ("[T]he relevant intent is not just the intent to copy, but to 'pass off' one's goods as those of another."); Duraco, 40 F.3d at 1453 ("[A]ttempts to copy a product configuration [may] not be probative [because] the copier may very well be exploiting a particularly desirable feature, rather than seeking to confuse consumers as to the source."); Groeneveld Transp. Efficiency, Inc. v. Lubecore Int'l, Inc., 730 F.3d 494, 514 (6th Cir. 2013) ("[T]he appropriate 'intent' to focus on is not the intent to copy but rather the intent to deceive or confuse.") . . . ; Aromatique, 28 F.3d at 871 (holding that it was clearly erroneous to infer secondary meaning from the copying of a product when the copier conspicuously used its own trademarks to distinguish its products) . . . .

[34] Here, the district court declined to infer distinctiveness from the existence of boots resembling Timberlands. It concluded that TBL has not provided any evidence showing that its competitors sell similar looking boots intending to trick consumers into thinking their boots are Timberlands. In support of that conclusion, the court noted that TBL has not identified any ruling that competitors have infringed its alleged trade dress.

[35] TBL responds that it persuaded two of its competitors to stop selling similar looking boots. But it never provided written documentation of those supposed enforcement efforts, even after the USPTO requested it. Though TBL asserts that it resolved those matters over the phone without documentation, TBL has not demonstrated that any of its competitors crossed the fine line that distinguishes emulating desirable product features from plagiarizing protected designs to confuse consumers about their source. Since TBL failed to produce evidence of intentional plagiarism, the district court did not clearly err in declining to infer distinctiveness from the mere existence of similar looking boots.

[36] Instead, the district court found that the presence of similar looking boots from other manufacturers actually undermined TBL's argument that its claimed design features are distinctive. The last factor suggests secondary meaning only if the continuous use of the design in commerce is also substantially exclusive. See U.S. Search, 300 F.3d at 526 n.12 ("Even assuming [plaintiff] has used 'U.S. Search' continuously since 1982 ..., length of time alone is insufficient to establish secondary meaning."); B & J Enters., 329 F. App'x at 419 ("[E]vidence of length of use, absent a showing of exclusivity, is inadequate to satisfy the sixth Perini factor."). "The saturation of the market with look-alike boots," to the district court, undercut TBL's assertion of secondary meaning. TBL Licensing, 644 F. Supp. 3d at 200. TBL argues that the district court lent too much weight to those lookalikes.

[37] TBL contends that the district court erred by considering competing designs without scrutinizing on a more granular level each design and its relative share of the U.S. boot market. It is true that courts sometimes have considered competitors' minimal market shares to find that their competing marks did not weaken the commercial strength of a senior mark. See, e.g., Combe Inc. v. Dr. August Wolff GmBH & Co. KG Arzneimittel, 382 F. Supp. 3d 429, 452-53 (E.D. Va. 2019) (considering the limited sales and marketing of third-party marks in determining that they did not materially weaken the commercial strength of the plaintiff's mark), aff 'd, 851 F. App'x 357 (4th Cir. 2021) (per curiam); Select Auto Imps. Inc. v. Yates Select Auto Sales, LLC, 195 F. Supp. 3d 818, 833 (E.D. Va. 2016) ("Without evidence as to the extent of actual day-to-day use of [third-party] marks, the probative value of such evidence is minimal."). But we have never required a deep dive into those details. See, e.g., CareFirst of Md., Inc. v. First Care, P.C., 434 F.3d 263, 269-71 (4th Cir. 2006) (reasoning that third-party use of similar marks undermined commercial strength, without analyzing market share); Variety Stores, Inc. v. Wal-Mart Stores, Inc., 888 F.3d 651, 663-64 (4th Cir. 2018) (same). Nor have other circuit courts when there is evidence of significant third-party use. . . . Even when the record "does not establish the exact extent," widespread third-party use of substantially similar designs suggests the at-issue design lacks secondary meaning. Echo Travel, Inc. v. Travel Assocs., Inc., 870 F.2d 1264, 1269(7th Cir. 1989).

[38] So, while TBL had every right to argue that the lookalike boots were not substantially similar and that their minimal sales did not preclude exclusivity, the district court was entitled to consider the countervailing evidence. And based on our review, the record is replete with pictures of boots marketed and sold in the United States that appear "substantially similar" to the design TBL sought to register, which suffices to prevent TBL from proving it exclusively used that design. See Sweetheart Plastics, Inc. v. Detroit Forming, Inc., 743 F.2d 1039, 1045(4th Cir. 1984) (approving of the admission of evidence of "substantially identical" and "substantially similar" designs as "probative of the extent and nature of exclusivity of use"); Converse, Inc. v. Int'l Trade Comm'n, 909 F.3d 1110, 1122(Fed. Cir. 2018) (ruling that evidence of the use of "substantially similar" but not identical trade dress may inform a secondary meaning analysis).

[39] As the party seeking registration, TBL bore the "rigorous" burden of showing secondary meaning, including continuous and exclusive use. U.S. Search, 300 F.3d at 525. To find TBL failed to discharge its burden, the district court was not required to assess the market shares of the myriad of lookalike boots. Nor was the district court obligated to run through each boot one-by-one and discuss how it resembled the applied-for TBL design. As a result, the district court did not clearly err in finding that TBL came up short of showing its use of the design was substantially exclusive.

[40] To sum up our secondary meaning analysis, TBL had to show that the design features described in its application encourage consumers to buy the boot not because those features make the boot a solid product but because, to the public, those features make the boot a Timberland product. Since this distinctiveness concept is "intuitive" and "heavily factdependent," "when a factfinder does make findings on this question . . . , an appellate court will naturally be exceedingly reluctant to rule such findings clearly erroneous." Ashley Furniture Indus., Inc. v. SanGiacomo N.A. Ltd., 187 F.3d 363, 377 (4th Cir. 1999). Without a viable consumer survey, TBL lacks direct evidence of secondary meaning. Resorting to circumstantial evidence, TBL has not shown that its sales or advertising expenditures have translated into consumer recognition of the design elements it sought to register. Indeed, portrayals of TBL's boot in marketing materials and the media tend to highlight features not claimed in TBL's current application. The many similar looking products in the boot market do not show that competitors copied TBL's design intending to confuse consumers. Rather, those lookalikes undermine TBL's attempt to show that the design it sought to register has come to be "uniquely associated" with Timberland. Two Pesos, 505 U.S. at 766 n.4. Assessing these various factors, the district court found that TBL failed to show that the combination of features it specified in its registration application-the outer ankle collar, the two-tone color and etching on the side of the boot's sole, the hourglass rear heel panel, the quad stitching along the boot's side and tongue area, the hexagonal eyelets for the boot's laces and the boot's bulbous toe box-leads consumers to associate the boot with Timberland alone. Since our review of the record does not leave us with "a definite and firm conviction that a mistake has been made," we conclude that the district court did not clearly err in finding that the design TBL sought to register has not acquired secondary meaning. Pizzeria Uno Corp., 747 F.2d at 1526.

[41] In conclusion, the district court did not clearly err in finding that TBL failed to carry its burden of proving that the boot design it sought to register has acquired a distinctive meaning. For that reason alone, TBL could not register the design described in its application, regardless of whether or not that design, as a whole, is functional. Accordingly, without deciding the functionality issue, the district court's judgment is [1] Defendants and Plaintiff both conducted surveys to test the secondary meaning of the four families of Cartier watches at issue. Simply stated, the parties retained experts to poll the public as to whether they associated the Panthere, Pasha, Tank Americaine, and Tank Francaise, or more specifically, their watch designs, with Cartier. a. Defendants' Expert: Mr. Harry O'Neill [2] Defendants retained Mr. Harry O'Neill, Vice Chairman of Roper ASW. Mr. O'Neill's report is hereinafter referenced as the "Roper Report." [3] The Roper Report was created by intercepting shoppers at six shopping malls throughout the country: Atlanta, Boston, Chicago, Dallas, Los Angeles and San Francisco. O'Neill attempted to pick malls with "relatively upscale stores" in order to maximize the likelihood of identifying survey participants who represented the appropriate population.

Consumer Recognition: the Expert Reports

O'Neill concluded that a mall that was anchored by Sears or Kmart, for example, would be unlikely to be frequented by consumers in the luxury watch market.

[4] At the malls, shoppers were intercepted and screened to determine their eligibility to participate. Shoppers who were under 18, did not have their glasses or contact lenses available but relied on them, or who worked for an advertising company, market research company, or watch retailer or manufacturer were ineligible to be surveyed. Id. Shoppers were further asked whether or not they owned a watch worth at least $2,500. If so, they were qualified to answer the survey's questions. If not, they were asked: "How likely is it that you would consider buying a fine watch-one that would cost at least $2,500-in the next couple of years-very likely, fairly likely, not very likely or not at all likely?" Those who responded indicated that they were "very likely" or "fairly likely" qualified to participate.

[5] Eligible participants were then shown pictures of a Cartier Tank Francaise, a Cartier Tank Americaine, a Cartier Panthere, and five other watches made by other manufacturers, namely, Chopard, Rolex, Tag Heuer, Movado and Bvlgari. With each picture, a participant was asked: "Do you associate this style or design with the watches of one or more than one company?" If so, although unnecessary to establish secondary meaning, as an "added extra attraction," participants were asked a second, follow-up question as to whether they recognized to which particular company the watch belonged.

[6] The results of the Roper study are as follows: 38% of the respondents associated the style or design of the Tank Americaine with one company (with 13% correctly identifying Cartier as that company); 34% of the respondents said that they associated the style or design of the Tank Francaise with one company (with 13% correctly identifying Cartier as that company); 31% associated the Panthere style or design with one company (with 13% correctly identifying Cartier as that company). Based on these figures in the Roper Report, O'Neill concludes that a significant portion of the purchasing public does not associate the style or design of the watches at issue with Cartier.

[7] What is noteworthy to the Court, however, is the considerable discrepancy in findings at the Atlanta mall vis a vis the results obtained in surveying shoppers at the other five malls. Of the six malls involved in creating the Roper Report, only the Atlanta mall was anchored by upscale retail establishments. Whereas the Atlanta Mall was anchored by Neiman Marcus and Bloomingdales, the Boston mall was not anchored by any high-end stores, although there was one within five minutes' walking distance, the Chicago mall was anchored by Marshall Fields and Carson Pirie Scott and the Dallas mall was anchored by a Dillar Folis and a Mervins. Further, in Atlanta, 69% of survey respondents owned a watch worth at least $2,500, compared to the 41% of respondents at the other locales. For those who did not already own a fine watch, 55% of the participants were "very likely" to purchase one in the near future, compared to 15% of the participants who answered in similar fashion at the other malls. Accordingly, the court concludes that the population of survey respondents at the Atlanta mall was the most representative of the Cartier consumer population. Here, 63% of the participants associated the style and design of the Tank Francaise with one company, 60% of respondents associated the Tank Americaine with one company, and 60% associated the style or design of the Panthere with one company.

b. Plaintiffs' Expert: Dr. Sidney Lirtzman

[8] Dr. Lirtzman criticized the Roper Report on the grounds that it surveyed the wrong population insofar as it failed to distinguish between those "very likely" to purchase an expensive, luxury timepiece in the near future, and those who were "fairly likely" to make such a purchase. He testified that the survey results from Atlanta indicate that if the Roper Report had been conducted exclusively at "high end malls" and included only those persons more resolute about their intentions of buying a fine watch, the numbers of participants identifying the style or design of the three Cartier watches with one company would have been higher.

[9] To support this conclusion, Lirtzman conducted his own survey designed to parallel O'Neill's, with the exception of two important differences: Lirtzman only interviewed individuals who either already owned a luxury watch or were "very likely" to purchase a watch in the next year, whereas the Roper Report includes respondents who were "very likely" to purchase a watch "in the near future" and persons who were "fairly likely" to purchase such a luxury watch "in the next couple of years." Further, Lirtzman intercepted individuals while they were shopping not in shopping malls, but in Tourneau Watch Company stores, two in Manhattan and one in the Roosevelt Field Mall on Long Island, NY, one in Costa Mesa, CA, and one in Century City in Los Angeles, CA. Tourneau is an authorized dealer of Cartier watches. In light of this relationship, the Tourneau stores feature prominent posters of Cartier watches as well as display cases with Cartier watches.

[10] The Lirtzman study also included a few less significant alterations from O'Neill's study. Lirtzman asked if the participants associated the watch's design with a particular source, as opposed to asking about whether the participant associated the "design or style" with a particular source. Because it is irrelevant to establishing secondary meaning, Lirtzman also did not ask O'Neill's second question as to whether the participant could identify which company she or he associated with the watch's design. The Lirtzman study was also limited to the Tank Francaise and the Panthere because these watches were the least recognized according to the Roper Report. Lirtzman showed participants pictures of the Tag Heuer and Movado watches, like the Roper Report, achieving the same percentages for recognition of these watches among participants, but excluded the other controls. Finally, the photographs shown to survey participants in Lirtzman's study are increasingly clear and more uniform than those shown to participants in the Roper study.

Note that we will soon return to the protectability of colors as trademarks in Part I.A.2.a when we consider Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995). . . . . [1] The parties correctly agree that a color scheme can be protected as a trademark when it has acquired secondary meaning and is non-functional. Qualitex Co. v. Jacobson Prods. Co. 22Although the parties discuss color at length in their briefs, the Universities do not claim that every instance in which their team colors appear violates their respective trademarks. Instead, the claimed trademark is in the colors on merchandise that combines other identifying indicia referring to the Universities. It is appropriate therefore to consider not only the color but also the entire context in which the color and other indicia are presented on the t-shirts at issue here.

Board of Supervisors for Louisiana State University Agricultural & Mechanical College v. Smack Apparel

[2] Smack contends that the claimed marks are too broad to encompass a trademark because the concept of color along with other identifying indicia is not distinctive. We disagree. As noted, the statute contemplates that a trademark may include any word, name, or symbol "or any combination thereof." 23 The Supreme Court has recognized that the Lanham Act describes the universe of permissible marks "in the broadest of terms." 24 Because the Court recognizes that trademarks may include color, we see no reason to exclude color plus other identifying indicia from the realm of protectible marks provided the remaining requirements for protection are met. Thus, the first step here is to ask whether the Universities' claimed marks have acquired secondary meaning.

[6] We think this conclusion is consistent with the importance generally placed on sports team logos and colors by the public. We have previously noted, although not in the context of secondary meaning, that team emblems and symbols are sold because they serve to identify particular teams, organizations, or entities with which people wish to identify. See Boston Prof'l Hockey Ass 'n v. Dallas Cap & Emblem Mfg., Inc. 36 We think this desire by consumers to associate with a particular university supports the conclusion that team colors and logos are, in the minds of the fans and other consumers, source indicators of team-related apparel. By associating the color and other indicia with the university, the fans perceive the university as the source or sponsor of the goods because they want to associate with that source.

[7] Smack argues that because photographs of businesses near the campuses of the Universities show use of school colors by those businesses, consumers in college towns merely associate school colors with "support of the home team." Smack cites no authority or supporting evidence for its contention, however. Moreover, the fact that other businesses in college towns may use the same colors as a local university does not create an issue of fact as to the secondary meaning of the colors used in merchandise that the Universities indisputably produce, especially given Smack's admission of intentional use of the colors to influence consumers.

[8] Smack also argues that because the Universities grant licenses to many licensees, a consumer may not identify a university as the single source of the product. The fact that the Universities may grant licenses to many licensees to sell authorized products does not negate the fact that the schools are still the sources of the marks. 37 We conclude that the record establishes secondary meaning in the marks here.

{The Fifth Circuit went on to affirm the E.D.La.'s disposition of the case in all respects.} Comments and Questions

Necessary proportion of relevant consumer population perceiving secondary meaning.

Courts generally require that a "substantial" proportion of the relevant consumer population perceive the descriptive mark as a designation of source for that mark to qualify for protection. See, e.g., Coach Leatherware Co. v. AnnTaylor, Inc., 933 F.2d 162, 168 (2d Cir. 1991) ("The plaintiff is not required to establish that all consumers relate the product to its producer; it need only show that a substantial segment of the relevant consumer group makes this connection."). But what proportion is substantial? If survey evidence is presented, courts have generally been satisfied, as in the Cartier case above, with a proportion at or above 50%. See, e.g., Harlequin Enterprises, Ltd. v. Gulf & Western Corp., 644 F.2d 946 (2d Cir. 1981) (finding 50% association to be probative of secondary meaning in book cover design); Spraying Systems Co. v. Delavan, 975 F.2d 387, 394 (7th Cir. 1992) ("While a 50-percent figure 36 510 F.2d 1004, 1011 (5th Cir. 1975). 37 Cf. Taco Cabana Int'l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1121(5th Cir. 1991) ("An owner may license its trademark or trade dress and retain proprietary rights if the owner maintains adequate control over the quality of goods and services that the licensee sells with the mark or dress.").

is regarded as clearly sufficient to establish secondary meaning, a figure in the thirties can only be considered marginal."); Boston Beer Co. Ltd. Partnership v. Slesar Bros. Brewing Co., 9 F.3d 175, 183 n.5 (1st Cir. 1993) (characterizing a 36% showing of association as "hardly overwhelming"). See also Zatarain's Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 795 (5th Cir. 1983) (affirming district court's finding that FISH-FRI possessed secondary meaning on the basis of survey showing 28% consumer association and other, circumstantial evidence, but calling the issue "close" and suggesting that "[w]ere we considering the question of secondary meaning de novo, we might reach a different conclusion than did the district court").

More generally, courts may require more compelling evidence of secondary meaning for marks that are highly descriptive. See MCCARTHY § 15:28 ("[A]s a general rule of thumb, the more descriptive the term, the greater the evidentiary burden to establish secondary meaning. That is, the less distinctive the term, the greater the quantity and quality of evidence of secondary meaning needed to prove the requisite degree of distinctiveness."). No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them.

The statutory mechanism for registration of descriptive marks

(f) Except as expressly excluded in subsections (a), (b), (c), (d), (e) (3), and (e) (5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce.

The prima facie presumption of acquired distinctiveness after five years of exclusive and continuous use.

In the registration context, Lanham Act § 2(f), 15 U.S.C. § 1052(f), establishes that "The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made." Courts have emphasized the "may" in "may accept. " See Heritage All. v. Am. Pol'y Roundtable, 133 F.4th 1063, 1070(Fed. Cir. 2025) (affirming the TTAB's finding that the asserted marks "iVoterGuide" and "iVoterGuide.com" had not acquired distinctiveness after five years of continuous use and noting that § 2(f) "indicates that the Board has discretion not to accept such evidence as prima facie evidence, much less as ultimately persuasive evidence, on a case-by-case basis.").

Trademarks may be deemed generic either (1) The following are examples of marks that have not (yet?) been held to be generic and remain registered trademarks at the PTO:

• BAND-AID for "protective surgical dressing in the form of a bandage" (U.S. Reg. No. 194,123, Jan. 13, 1925);

• REALTOR for real estate brokerage services (U.S. Reg. No. 519,789, Jan. 15,1950);

• STYROFOAM for "multicellular expanded synthetic resinous material" (U.S. Reg. No. 539,147, March 13, 1951).

A leading test for genericism is the Marvin Ginn test: "Determining whether a mark is generic . . . involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services?" H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986). Though the Marvin Ginn test is formulated here in terms of registrability, its approach works well enough in determining if unregistered marks are generic.

There are a variety of simple rules of thumb that inform courts' determination of whether a mark is generic or descriptive. Abercrombie outlined a genus/species distinction akin to that implied in Marvin Ginn: "A generic term is one that refers, or has come to be understood as referring, to the genus of which the particular product is a species." Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). There is also the "who-are-you/what-are-you" distinction:

In determining whether a term is generic, we have often relied upon the "whoare-you/what-are-you" test: "A mark answers the buyer's questions 'Who are you?' 'Where do you come from?' 'Who vouches for you?' But the [generic] name of the product answers the question 'What are you?'" Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1391(9th Cir. 1993) (quoting 1 J. Thomas McCarthy, Trademarks and Unfair Competition § 12.01 (3d ed. 1992)). Under this test, "[i]f the primary significance of the trademark is to describe the type of product rather than the producer, the trademark [is] a generic term and [cannot be] a valid trademark." Anti-Monopoly, Inc. v. General Mills Fun Group, 611 F.2d 296, 304 (9th Cir. 1979) (emphases added) Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc., 198 F.3d 1143, 1147(9th Cir. 1999). Courts will also rely on the proposition that a mark is generic if it is the "common descriptive name" of the good or service to which it is affixed. See, e.g., San Francisco Arts & Athletics, Inc. v. U.S. Olympic Committee, 483 U.S. 522, 532 n. 7 (1987) ("A common descriptive name of a product or service is generic. Because a generic name by definition does not distinguish the identity of a particular product, it cannot be registered as a trademark under the Lanham Act." (emphasis in original)).

But while the basic principles underlying the genericness analysis are straightforward, distinguishing between a highly descriptive mark and a generic mark can be exceedingly difficult in close cases, and the stakes in such cases can be exceedingly high. 7 Recall that even a "highly descriptive" mark will qualify for protection upon a showing of secondary meaning. A generic mark, by contrast, is unredeemable; it will never receive protection under any circumstances. Genericness doctrine, meanwhile, can be quite malleable.

The following three cases offer different views of trademark genericism. The first is the Supreme Court case United States Patent and Trademark Office v. Booking.com B.V., 591 U.S. 549 (2020). In analyzing whether the mark BOOKING.COM is generic, the three opinions in the case engage a variety of overarching questions in genericism doctrine, such as whether the facts of consumer perception or the goals of competition policy should drive the genericism analysis. The second case emerged out of a dispute between the giant snack food maker Frito-Lay North America, Inc. and an upstart competitor, Princeton Vanguard LLC (subsequently purchased by Snyder's Lance, Inc.), who introduced "pretzel crisps" into the market and sought to trademark the term. The Snyder's Lance opinion is quite lengthy but useful for our purposes because it shows the wide variety of evidence that parties may present in a hardfought genericism dispute. It will be of special interest to students interested in the nuts-andbolts of frontline genericism litigation. The third opinion, Elliott v. Google, Inc., engages the question of whether the mark GOOGLE has fallen victim to genericide. Remarkably, the court reasons that even if the public uses the verb "google" in a generic sense to describe the act of "searching on the internet without regard to the search engine used," that would not support a finding that GOOGLE has become generic for internet search services.

United States Patent and Trademark Office v. Booking.com B.V. 591 U.S. 549 (2020)

Justice GINSBURG delivered the opinion of the Court.

[1] This case concerns eligibility for federal trademark registration. Respondent Booking.com, an enterprise that maintains a travel-reservation website by the same name, sought to register the mark "Booking.com." Concluding that "Booking.com" is a generic name for online hotel-reservation services, the U.S. Patent and Trademark Office (PTO) refused registration.

[2] A generic name-the name of a class of products or services-is ineligible for federal trademark registration. The word "booking," the parties do not dispute, is generic for hotelreservation services. "Booking.com" must also be generic, the PTO maintains, under an encompassing rule the PTO currently urges us to adopt: The combination of a generic word and ".com" is generic. [3] In accord with the first-and second-instance judgments in this case, we reject the PTO's sweeping rule. A term styled "generic.com" is a generic name for a class of goods or services only if the term has that meaning to consumers. Consumers, according to lower court determinations uncontested here by the PTO, do not perceive the term "Booking.com" to signify online hotel-reservation services as a class. In circumstances like those this case presents, a "generic.com" term is not generic and can be eligible for federal trademark registration. I A . . . . [4] The Lanham Act not only arms trademark owners with federal claims for relief; importantly, it establishes a system of federal trademark registration. The owner of a mark on the principal register enjoys "valuable benefits," including a presumption that the mark is valid. Iancu v. Brunetti, 588 U.S. --, --(2019) (slip op., at 2); see § § 1051, 1052. The supplemental register contains other product and service designations, some of which could one day gain eligibility for the principal register. See § 1091. The supplemental register accords more modest benefits; notably, a listing on that register announces one's use of the designation to others considering a similar mark. See 3 J. McCarthy, Trademarks and Unfair Competition § 19:37 (5th ed. 2019) (hereinafter McCarthy). Even without federal registration, a mark may be eligible for protection against infringement under both the Lanham Act and other sources of law. See Matal, 582 U.S., at -----(slip op., at 4-5).

[5] Prime among the conditions for registration, the mark must be one "by which the goods of the applicant may be distinguished from the goods of others." § 1052; see § 1091(a) (supplemental register contains "marks capable of distinguishing . . . goods or services"). Distinctiveness is often expressed on an increasing scale: Word marks "may be (1) generic;

(2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful." Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). . . . .

[6] At the lowest end of the distinctiveness scale is "the generic name for the goods or services." § § 1127, 1064(3), 1065 (4). The name of the good itself (e.g., "wine") is incapable of "distinguish[ing] [one producer's goods] from the goods of others" and is therefore ineligible for registration. § 1052; see § 1091(a). Indeed, generic terms are ordinarily ineligible for protection as trademarks at all. See Restatement (Third) of Unfair Competition § 15, p. 142 (1993);Otokoyama Co. v. Wine of Japan Import, Inc., 175 F.3d 266, 270 (CA2 1999) ("[E]veryone may use [generic terms] to refer to the goods they designate.").

[7] Booking.com is a digital travel company that provides hotel reservations and other services under the brand "Booking.com," which is also the domain name of its website. 1Booking.com filed applications to register four marks in connection with travel-related services, each with different visual features but all containing the term "Booking.com." 2[8] Both a PTO examining attorney and the PTO's Trademark Trial and Appeal Board concluded that the term "Booking.com" is generic for the services at issue and is therefore unregistrable. "Booking," the Board observed, means making travel reservations, and ".com" signifies a commercial website. The Board then ruled that "customers would understand the term BOOKING.COM primarily to refer to an online reservation service for travel, tours, and lodgings." Alternatively, the Board held that even if "Booking.com" is descriptive, not generic, it is unregistrable because it lacks secondary meaning.

[9] Booking.com sought review in the U. S. District Court for the Eastern District of Virginia, invoking a mode of review that allows Booking.com to introduce evidence not presented to the agency. See § 1071 (b). Relying in significant part on Booking.com's new evidence of consumer perception, the District Court concluded that "Booking.com"-unlike "booking"-is not generic. The "consuming public," the court found, "primarily understands that BOOKING.COM does not refer to a genus, rather it is descriptive of services involving 'booking' available at that domain name." Booking.com B.V. v. Matal, 278 F.Supp.3d 891, 918 (2017). Having determined that "Booking.com" is descriptive, the District Court additionally found that the term has acquired secondary meaning as to hotel-reservation services. For those services, the District Court therefore concluded, Booking.com's marks meet the distinctiveness requirement for registration.

[10] The PTO appealed only the District Court's determination that "Booking.com" is not generic. Finding no error in the District Court's assessment of how consumers perceive the term "Booking.com," the Court of Appeals for the Fourth Circuit affirmed the court of first instance's judgment. In so ruling, the appeals court rejected the PTO's contention that the combination of ".com" with a generic term like "booking" "is necessarily generic." 915 F. 3d 171, 184 (2019). Dissenting in relevant part, Judge Wynn concluded that the District Court mistakenly presumed that "generic.com" terms are usually descriptive, not generic.

[11] We granted certiorari, 589 U. S. --, 140 S. Ct. 489 (2019), and now affirm the Fourth Circuit's decision. II [12] Although the parties here disagree about the circumstances in which terms like "Booking.com" rank as generic, several guiding principles are common ground. First, a "generic" term names a "class" of goods or services, rather than any particular feature or exemplification of the class. {S}ee § § 1127, 1064(3), 1065(4) (referring to "the generic name for the goods or services"); Park 'N Fly, 469 U.S. at 194 ("A generic term is one that refers to the genus of which the particular product is a species."). Second, for a compound term, the distinctiveness inquiry trains on the term's meaning as a whole, not its parts in isolation. {S}ee Estate of P. D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 545-546 (1920). Third, the relevant meaning of a term is its meaning to consumers. {S}ee Bayer Co. v. United Drug Co., 272 F. 505, 509 (SDNY 1921) (Hand, J.) ("What do the buyers understand by the word for whose use the parties are contending?"). Eligibility for registration, all agree, turns on the mark's capacity to "distinguis[h]" goods "in commerce." § 1052. Evidencing the Lanham Act's focus on consumer perception, the section governing cancellation of registration provides that "[t]he primary significance of the registered mark to the relevant public . . . shall be the test for determining whether the registered mark has become the generic name of goods or services." § 1064(3). 3[13] Under these principles, whether "Booking.com" is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services. Thus, if "Booking.com" were generic, we might expect consumers to understand Travelocity-another such service-to be a "Booking.com." We might similarly expect that a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite "Booking.com" provider.

[14] Consumers do not in fact perceive the term "Booking.com" that way, the courts below determined. The PTO no longer disputes that determination. See Pet. for Cert. I; Brief for Petitioners 17-18 (contending only that a consumer-perception inquiry was unnecessary, not that the lower courts' consumer-perception determination was wrong). That should resolve this case: Because "Booking.com" is not a generic name to consumers, it is not generic. III [15] Opposing that conclusion, the PTO urges a nearly per se rule that would render "Booking.com" ineligible for registration regardless of specific evidence of consumer perception. In the PTO's view, which the dissent embraces, when a generic term is combined with a generic top-level domain like ".com," the resulting combination is generic. In other words, every "generic.com" term is generic according to the PTO, absent exceptional circumstances. 4[16] The PTO's own past practice appears to reflect no such comprehensive rule. See,e.g.,Trademark Registration No. 3,601,346 ("ART.COM" on principal register for, inter alia, "[o]nline retail store services" offering "art prints, original art, [and] art reproductions"); Trademark Registration No. 2,580,467 ("DATING.COM" on supplemental register for "dating services"). Existing registrations inconsistent with the rule the PTO now advances would be at risk of cancellation if the PTO's current view were to prevail. See § 1064(3). We decline to adopt a rule essentially excluding registration of "generic.com" marks. As explained below, we discern no support for the PTO's current view in trademark law or policy.

[17] The PTO urges that the exclusionary rule it advocates follows from a common-law principle, applied in Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888), that a generic corporate designation added to a generic term does not confer trademark eligibility. In Goodyear, a decision predating the Lanham Act, this Court held that "Goodyear Rubber Company" was not "capable of exclusive appropriation. " Id., at 602. Brewing Co., 124 F.3d 137, 144 (CA2 1997); Trademark Manual of Examining Procedure § 1209.01 (c)(i), p. 1200(c)(i), p. -267 (Oct. 2018)), http://tmep.uspto.gov. We need not address today the scope of the primary-significance test's application, for our analysis does not depend on whether one meaning among several is "primary." Sufficient to resolve this case is the undisputed principle that consumer perception demarcates a term's meaning.

Standing alone, the term "Goodyear Rubber" could not serve as a trademark because it referred, in those days, to "well-known classes of goods produced by the process known as Goodyear's invention." Ibid. "[A]ddition of the word 'Company'" supplied no protectable meaning, the Court concluded, because adding "Company" "only indicates that parties have formed an association or partnership to deal in such goods." Ibid. Permitting exclusive rights in "Goodyear Rubber Company" (or "Wine Company, Cotton Company, or Grain Company"), the Court explained, would tread on the right of all persons "to deal in such articles, and to publish the fact to the world." Id., at 602-603.

[18] "Generic.com," the PTO maintains, is like "Generic Company" and is therefore ineligible for trademark protection, let alone federal registration. According to the PTO, adding ".com" to a generic term-like adding "Company"-"conveys no additional meaning that would distinguish [one provider's] services from those of other providers." Brief for Petitioners 44. The dissent endorses that proposition: "Generic.com" conveys that the generic good or service is offered online "and nothing more." Post, at --.

[24] The PTO's principal concern is that trademark protection for a term like "Booking.com" would hinder competitors. But the PTO does not assert that others seeking to offer online hotel-reservation services need to call their services "Booking.com." Rather, the PTO fears that trademark protection for "Booking.com" could exclude or inhibit competitors from using the term "booking" or adopting domain names like "ebooking.com" or "hotelbooking.com." Brief for Petitioners 27-28. The PTO's objection, therefore, is not to exclusive use of "Booking.com" as a mark, but to undue control over similar language, i.e., "booking," that others should remain free to use.

[25] That concern attends any descriptive mark. Responsive to it, trademark law hems in the scope of such marks short of denying trademark protection altogether. Notably, a competitor's use does not infringe a mark unless it is likely to confuse consumers. See § § 1114 (1), 1125(a)(1)(A); 4 McCarthy § 23:1.50 (collecting state law). In assessing the likelihood of confusion, courts consider the mark's distinctiveness: "The weaker a mark, the fewer are the junior uses that will trigger a likelihood of consumer confusion." 2 id., § 11:76. When a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark's owner. Ibid. Similarly, "[i]n a 'crowded' field of look-alike marks" (e.g., hotel names including the word "grand"), consumers "may have learned to carefully pick out" one mark from another. Id., § 11:85. And even where some consumer confusion exists, the doctrine known as classic fair use, see id., § 11:45, protects from liability anyone who uses a descriptive term, "fairly and in good faith" and "otherwise than as a mark," merely to describe her own goods. 15 U.S.C. § 1115(b)(4); see KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122-123 (2004).

[26] These doctrines guard against the anticompetitive effects the PTO identifies, ensuring that registration of "Booking.com" would not yield its holder a monopoly on the term "booking." Booking.com concedes that "Booking.com" would be a "weak" mark. Tr. of Oral Arg. 66. See also id., at 42-43, 55. The mark is descriptive, Booking.com recognizes, making it "harder . . . to show a likelihood of confusion." Id., at 43. Furthermore, because its mark is one of many "similarly worded marks," Booking.com accepts that close variations are unlikely to infringe. Id., at 66. And Booking.com acknowledges that federal registration of "Booking.com" would not prevent competitors from using the word "booking" to describe their own services. Id., at 55.

[27] The PTO also doubts that owners of "generic.com" brands need trademark protection in addition to existing competitive advantages. Booking.com, the PTO argues, has already seized a domain name that no other website can use and is easy for consumers to find. Consumers might enter "the word 'booking' in a search engine," the PTO observes, or "proceed directly to 'booking.com' in the expectation that [online hotel-booking] services will be offered at that address." Brief for Petitioners 32. Those competitive advantages, however, do not inevitably disqualify a mark from federal registration. All descriptive marks are intuitively linked to the product or service and thus might be easy for consumers to find using a search engine or telephone directory. The Lanham Act permits registration nonetheless. See § 1052(e), (f). And the PTO fails to explain how the exclusive connection between a domain name and its owner makes the domain name a generic term all should be free to use. That connection makes trademark protection more appropriate, not less. See supra, at 2305-2306.

[28] Finally, even if "Booking.com" is generic, the PTO urges, unfair-competition law could prevent others from passing off their services as Booking.com's. Cf. Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 149 (CA2 1997);Blinded Veterans Assn. v. Blinded Am. Veterans Foundation, 872 F.2d 1035, 1042-1048(CADC 1989). But federal trademark registration would offer Booking.com greater protection. See,e.g.,Genesee Brewing,124 F.3d at 151 (unfair-competition law would oblige competitor at most to "make more of an effort" to reduce confusion, not to cease marketing its product using the disputed term); Matal, 582 U. S., at --(slip op., at 5) (federal registration confers valuable benefits); Brief for Respondent 26 (expressing intention to seek protections available to trademark owners under the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d)); Brief for Coalition of .Com Brand Owners as Amici Curiae 14-19 (trademark rights allow mark owners to stop domainname abuse through private dispute resolution without resorting to litigation). We have no cause to deny Booking.com the same benefits Congress accorded other marks qualifying as nongeneric.

* * * [29] The PTO challenges the judgment below on a sole ground: It urges that, as a rule, combining a generic term with ".com" yields a generic composite. For the above-stated reasons, we decline a rule of that order, one that would largely disallow registration of "generic.com" terms and open the door to cancellation of scores of currently registered marks. Accordingly, the judgment of the Court of Appeals for the Fourth Circuit regarding eligibility for trademark registration is Affirmed.

[30] The question before the Court here is simple: whether there is a nearly per se rule against trademark protection for a "generic.com" term. See ante, at 2304See ante, at -2305;;post, at 2314 (BREYER, J., dissenting). I agree with the Court that there is no such rule, a holding that accords with how the U. S. Patent and Trademark Office (PTO) has treated such terms in the past. See ante, at 2305 (noting that the "PTO's own past practice appears to reflect no such comprehensive rule"). I add two observations.

[31] First, the dissent wisely observes that consumer-survey evidence "may be an unreliable indicator of genericness." Post, at 2314. Flaws in a specific survey design, or weaknesses inherent in consumer surveys generally, may limit the probative value of surveys in determining whether a particular mark is descriptive or generic in this context. But I do not read the Court's opinion to suggest that surveys are the be-all and end-all. As the Court notes, sources such as "dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term's meaning" may also inform whether a mark is generic or descriptive. Ante, at 2307, n. 6.

[32] Second, the PTO may well have properly concluded, based on such dictionary and usage evidence, that Booking.com is in fact generic for the class of services at issue here, and the District Court may have erred in concluding to the contrary. But that question is not before the Court. With these understandings, I concur in the Court's opinion.

[33] What is Booking.com? To answer this question, one need only consult the term itself. Respondent provides an online booking service. The company's name informs the consumer of the basic nature of its business and nothing more. Therein lies the root of my disagreement with the majority.

[34] Trademark law does not protect generic terms, meaning terms that do no more than name the product or service itself. This principle preserves the linguistic commons by preventing one producer from appropriating to its own exclusive use a term needed by others to describe their goods or services. Today, the Court holds that the addition of ".com" to an otherwise generic term, such as "booking," can yield a protectable trademark. Because I believe this result is inconsistent with trademark principles and sound trademark policy, I respectfully dissent. I A . . . .

[35] By preventing others from copying a distinctive mark, trademark law "protect[s] the ability of consumers to distinguish among competing producers" and "secure[s] to the owner of the mark the goodwill of his business." Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985). Ultimately, the purpose of trademark law is to "foster competition" and "suppor[t] the free flow of commerce." Matal, 582 U. S., at --(slip op., at 3) (internal quotation marks omitted).

[36] There are also "generic" terms, such as "wine" or "haircuts." They do nothing more than inform the consumer of the kind of product that the firm sells. We have called generic terms "descriptive of a class of goods." Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602 (1888). And we have said that they simply convey the "genus of which the particular product is a species." Park 'N Fly, 469 U.S. at 196. A generic term is not eligible for use as a trademark. That principle applies even if a particular generic term "ha[s] become identified with a first user" in the minds of the consuming public. CES Publishing Corp. v. St. Regis Publications, Inc., 531 F.2d 11, 13 (CA2 1975) (Friendly, J.). The reason is simple. To hold otherwise "would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are." Ibid.

[37] In Goodyear, 128 U.S. 598, we held that appending the word "'Company'" to the generic name for a class of goods does not yield a protectable compound term. Id., at 602-603. The addition of a corporate designation, we explained, "only indicates that parties have formed an association or partnership to deal in such goods." Id., at 602. For instance, "parties united to produce or sell wine, or to raise cotton or grain," may well "style themselves Wine Company, Cotton Company, or Grain Company." Ibid. But they would not thereby gain the right to exclude others from the use of those terms "for the obvious reason that all persons have a right to deal in such articles, and to publish the fact to the world. " Id.,at 603. "[I]ncorporation of a company in the name of an article of commerce, without other specification," we concluded, does not "create any exclusive right to the use of the name." Ibid.

[38] I cannot agree with respondent that the 1946 Lanham Act "repudiate[d] Goodyear and its ilk." Brief for Respondent 39. It is true that the Lanham Act altered the common law in certain important respects. Most significantly, it extended trademark protection to descriptive marks that have acquired secondary meaning. See Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 171 (1995). But it did not disturb the basic principle that generic terms are ineligible for trademark protection, and nothing in the Act suggests that Congress intended to overturn Goodyear. We normally assume that Congress did not overturn a common-law principle absent some indication to the contrary. See Astoria Fed. Sav. & Loan Assn. v. Solimino, 501 U.S. 104, 108 (1991). I can find no such indication here. Perhaps that is why the lower courts, the Trademark Trial and Appeal Board (TTAB), the U. S. Patent and Trademark Office's (PTO) Trademark Manual of Examining Procedure (TMEP), and leading treatises all recognize Goodyear's continued validity. . . .

[39] More fundamentally, the Goodyear principle is sound as a matter of law and logic. Goodyear recognized that designations such as "Company," "Corp.," and "Inc." merely indicate corporate form and therefore do nothing to distinguish one firm's goods or services from all others'. 128 U.S. at 602. It follows that the addition of such a corporate designation does not "magically transform a generic name for a product or service into a trademark, thereby giving a right to exclude others." 2 McCarthy § 12:39. In other words, where a compound term consists simply of a generic term plus a corporate designation, the whole is necessarily no greater than the sum of its parts.

[40] This case requires us to apply these principles in the novel context of internet domain names. Respondent seeks to register a term, "Booking.com," that consists of a generic term, "booking" (known as the second-level domain) plus ".com" (known as the top-level domain). The question at issue here is whether a term that takes the form "generic.com" is generic in the ordinary course. In my view, appending ".com" to a generic term ordinarily yields no meaning beyond that of its constituent parts. Because the term "Booking.com" is just such an ordinary "generic.com" term, in my view, it is not eligible for trademark registration.

[41] Like the corporate designations at issue in Goodyear, a top-level domain such as ".com" has no capacity to identify and distinguish the source of goods or services. It is merely a necessary component of any web address. See 1 McCarthy § 7:17.50. When combined with the generic name of a class of goods or services, ".com" conveys only that the owner operates a website related to such items. Just as "Wine Company" expresses the generic concept of a company that deals in wine, "wine.com" connotes only a website that does the same. The same is true of "Booking.com." The combination of "booking" and ".com" does not serve to "identify a particular characteristic or quality of some thing; it connotes the basic nature of that thing"-the hallmark of a generic term. Blinded Veterans Assn. v. Blinded Am. Veterans Foundation, 872 F.2d 1035, 1039(CADC 1989) (Ginsburg, J. for the court) (emphasis added; internal quotation marks omitted). . . . .

[42] Generic second-level domains are no different. The meaning conveyed by "Booking.com" is no more and no less than a website associated with its generic second-level domain, "booking." This will ordinarily be true of any generic term plus ".com" combination. The term as a whole is just as generic as its constituent parts. See 1 McCarthy § 7:17.50;2 id.,§ 12:39.50.

[43] There may be exceptions to this rule in rare cases where the top-level domain interacts with the generic second-level domain in such a way as to produce meaning distinct from that of the terms taken individually. See ante, at 2305, n. 4. Likewise, the principles discussed above may apply differently to the newly expanded universe of top-level domains, such as ".guru," ".club," or ".vip," which may "conve[y] information concerning a feature, quality, or characteristic" of the website at issue. In re North Carolina Lottery, 866 F.3d at 1367; see also Brief for International Trademark Association as Amicus Curiae 10-11; TMEP § 1209.03(m). These scenarios are not presented here, as "Booking.com" conveys only a website associated with booking.

[44] The majority believes that Goodyear is inapposite because of the nature of the domain name system. Because only one entity can hold the contractual rights to a particular domain name at a time, it contends, consumers may infer that a "generic.com" domain name refers to some specific entity. . . .

[45] That fact does not distinguish Goodyear. A generic term may suggest that it is associated with a specific entity. That does not render it nongeneric. For example, "Wine, Inc." implies the existence of a specific legal entity incorporated under the laws of some State. Likewise, consumers may perceive "The Wine Company" to refer to some specific company rather than a genus of companies. But the addition of the definite article "the" obviously does not transform the generic nature of that term. See In re The Computer Store, Inc., 211 U.S.P.Q. 72, 74-75 (TTAB 1981). True, these terms do not carry the exclusivity of a domain name. But that functional exclusivity does not negate the principle animating Goodyear: Terms that merely convey the nature of the producer's business should remain free for all to use. See 128 U.S. at 603.

[46] This case illustrates the difficulties inherent in the majority's fact-specific approach. The lower courts determined (as the majority highlights), that consumers do not use the term "Booking.com" to refer to the class of hotel reservation websites in ordinary speech. 915 F. 3d 171, 181-183 (CA4 2019). True, few would call Travelocity a "Booking.com." Ibid. But literal use is not dispositive. See 915 F. 3d, at 182;H. Marvin Ginn Corp. v. International Assn. of Fire Chiefs, Inc., 782 F.2d 987, 989-990 (CA Fed. 1986). Consumers do not use the term "Wine, Incs." to refer to purveyors of wine. Still, the term "Wine, Inc." is generic because it signifies only a company incorporated for that purpose. See Goodyear, 128 U.S. at 602-603. Similarly, "Booking, Inc." may not be trademarked because it signifies only a booking company. The result should be no different for "Booking.com," which signifies only a booking website.

[47] More than that, many of the facts that the Court supposes may distinguish some "generic.com" marks as descriptive and some as generic are unlikely to vary from case to case. There will never be evidence that consumers literally refer to the relevant class of online merchants as "generic.coms." Nor are "generic.com" terms likely to appear in dictionaries. And the key fact that, in the majority's view, distinguishes this case from Goodyear-that only one entity can own the rights to a particular domain name at a time-is present in every "generic.com" case. See ante, at 2305-2306.

[48] What, then, stands in the way of automatic trademark eligibility for every "generic.com" domain? Much of the time, that determination will turn primarily on survey evidence, just as it did in this case. See 915 F. 3d,[183][184] [49] However, survey evidence has limited probative value in this context. Consumer surveys often test whether consumers associate a term with a single source. (describing types of consumer surveys). But it is possible for a generic term to achieve such an association-either because that producer has enjoyed a period of exclusivity in the marketplace, e.g., Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118-119 (1938), or because it has invested money and effort in securing the public's identification, e.g., Abercrombie, 537 F.2d at 9. Evidence of such an association, no matter how strong, does not negate the generic nature of the term. Ibid. For that reason, some courts and the TTAB have concluded that survey evidence is generally of little value in separating generic from descriptive terms. . . . Although this is the minority viewpoint, see 2 McCarthy § 12:17.25, I nonetheless find it to be the more persuasive one.

[50] Consider the survey evidence that respondent introduced below. Respondent's survey showed that 74.8% of participants thought that "Booking.com" is a brand name, whereas 23.8% believed it was a generic name. At the same time, 33% believed that "Washingmachine.com"-which does not correspond to any company-is a brand, and 60.8% thought it was generic.

[51] What could possibly account for that difference? "Booking.com" is not inherently more descriptive than "Washingmachine.com" or any other "generic.com." The survey participants who identified "Booking.com" as a brand likely did so because they had heard of it, through advertising or otherwise. If someone were to start a company called "Washingmachine.com," it could likely secure a similar level of consumer identification by investing heavily in advertising. Would that somehow transform the nature of the term itself? Surely not. This hypothetical shows that respondent's survey tested consumers' association of "Booking.com" with a particular company, not anything about the term itself. But such association does not establish that a term is nongeneric. See Kellogg, 305 U.S. at 118-119; Abercrombie, 537 F.2d at 9.

[52] Under the majority's approach, a "generic.com" mark's eligibility for trademark protection turns primarily on survey data, which, as I have explained, may be an unreliable indicator of genericness. As the leading treatise writer in this field has observed, this approach "[d]iscard[s] the predictable and clear line rule of the [PTO] and the Federal Circuit" in favor of "a nebulous and unpredictable zone of generic name and top level domain combinations that somehow become protectable marks when accompanied by favorable survey results. " 1 McCarthy § 7:17.50. I would heed this criticism. In my view, a term that takes the form "generic.com" is not eligible for federal trademark registration, at least not ordinarily. There being no special circumstance here, I believe that "Booking.com" is a generic term not eligible for federal registration as a trademark.

[53] In addition to the doctrinal concerns discussed above, granting trademark protection to "generic.com" marks threatens serious anticompetitive consequences in the online marketplace.

[54] The owners of short, generic domain names enjoy all the advantages of doing business under a generic name. These advantages exist irrespective of the trademark laws. Generic names are easy to remember. Because they immediately convey the nature of the business, the owner needs to expend less effort and expense educating consumers. . . . And a generic business name may create the impression that it is the most authoritative and trustworthy source of the particular good or service. . . . These advantages make it harder for distinctively named businesses to compete.

[55] Owners of generic domain names enjoy additional competitive advantages unique to the internet-again, regardless of trademark protection. Most importantly, domain name ownership confers automatic exclusivity. Multiple brick-and-mortar companies could style themselves "The Wine Company," but there can be only one "wine.com." And unlike the trademark system, that exclusivity is world-wide.

[56] Generic domains are also easier for consumers to find. A consumer who wants to buy wine online may perform a keyword search and be directed to "wine.com." Or he may simply type "wine.com" into his browser's address bar, expecting to find a website selling wine. . . . The owner of a generic domain name enjoys these benefits not because of the quality of her products or the goodwill of her business, but because she was fortunate (or savvy) enough to be the first to appropriate a particularly valuable piece of online real estate.

[57] Granting trademark protection to "generic.com" marks confers additional competitive benefits on their owners by allowing them to exclude others from using similar domain names. Federal registration would allow respondent to threaten trademark lawsuits against competitors using domains such as "Bookings.com," "eBooking.com," "Booker.com," or "Bookit.com." Respondent says that it would not do so. See Tr. of Oral Arg. 55-56. But other firms may prove less restrained.

[58] Indeed, why would a firm want to register its domain name as a trademark unless it wished to extend its area of exclusivity beyond the domain name itself? The domain name system, after all, already ensures that competitors cannot appropriate a business's actual domain name. And unfair-competition law will often separately protect businesses from passing off and false advertising. See Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 149 (CA2 1997);2 McCarthy § 12:2. [59] Under the majority's reasoning, many businesses could obtain a trademark by adding ".com" to the generic name of their product (e.g., pizza.com, flowers.com, and so forth). As the internet grows larger, as more and more firms use it to sell their products, the risk of anticompetitive consequences grows. Those consequences can nudge the economy in an anticompetitive direction. At the extreme, that direction points towards one firm per product, the opposite of the competitive multifirm marketplace that our basic economic laws seek to achieve.

[60] Not to worry, the Court responds, infringement doctrines such as likelihood of confusion and fair use will restrict the scope of protection afforded to "generic.com" marks. Ante, at 2307-2308. This response will be cold comfort to competitors of "generic.com" brands. Owners of such marks may seek to extend the boundaries of their marks through litigation, and may, at times succeed. See, e.g., Advertise.com v. AOL, LLC, 2010 WL 11507594 (CD Cal.) (owner of "Advertising.com" obtained preliminary injunction against competitor's use of "Advertise.com"), vacated in part, 616 F.3d 974 (CA9 2010). Even if ultimately unsuccessful, the threat of costly litigation will no doubt chill others from using variants on the registered mark and privilege established firms over new entrants to the market. See Brief for Electronic Frontier Foundation as Amicus Curiae 19-20.

[61] In sum, the term "Booking.com" refers to an internet booking service, which is the generic product that respondent and its competitors sell. No more and no less. The same is true of "generic.com" terms more generally. By making such terms eligible for trademark protection, I fear that today's decision will lead to a proliferation of "generic.com" marks, granting their owners a monopoly over a zone of useful, easy-to-remember domains. This result would tend to inhibit, rather than to promote, free competition in online commerce. I respectfully dissent. ______________________________________________________________________________ [4] In reviewing the Parties' extensive supporting, opposition and reply briefs (together with thousands of pages of exhibits and the underlying record at the TTAB), it is obvious that the issue of genericness is genuinely disputed such that entry of summary judgment for any party would be inappropriate. . . . [5] Upon the denial of summary judgment, this matter would normally proceed to a bench trial on the merits. However, as they did before the TTAB, the Parties have waived their right to present live testimony at trial and stipulated that the Court may fully consider and rule on all the issues presented based on the written record. The Court has agreed to do so, and this Order and Judgment thus reflects the Court's final determination of the facts and resulting ruling and judgment on the merits.

[6] While the Parties agree that the Court may rule on the merits based on the existing record without hearing further evidence at trial, the Parties sharply disagree on the Court's standard of review of the TTAB's decision and the applicable burden of proof. . . .

[7] {W}hile the Court will consider all the evidence de novo, it will also consider the TTAB's findings in weighing the evidentiary value that will be afforded the new evidence presented by the Parties. . . .

[8] The burden of proof is more easily addressed. In the Federal Circuit decision in this matter, the court expressly held that Frito-Lay bears the burden to prove genericness by a preponderance of the evidence. Princeton Vanguard, 786 F.3d at 965, n.2. . . . This unambiguous ruling is binding on this Court, see Snyder's-Lance, 991 F.3d at 522, as Frito-Lay acknowledged at oral argument. Therefore, Frito-Lay must prove that PRETZEL CRISPS is generic by a preponderance of the evidence.

[9] The pretzel, a simple mixture of water, flour and salt, is a well-known snack food with a long and colorful history dating back to the Middle Ages, when Catholic priests rewarded young children who learned their prayers with soft strips of baked bread dough folded to resemble arms crossed in prayer. 6 German immigrants in the 1700's brought their "bretzels" (from the Old German "brezitella" which is derived from the Latin for "arm" (bracchiatus)) to the United States and by 1861 a commercial pretzel bakery was making "hard" pretzels -a brittle, glazed and salted cracker-like version of the original soft pretzel -that could be shipped and stored in airtight containers. Over the ensuing years, pretzels became increasingly popular and have been baked and sold as snacks in many sizes, forms and names, including sticks, thins, crackers, chips, rods, rounds and, as at issue here, crisps. Over $500 million worth of pretzels are now sold annually in the United States, with the average American consuming about two pounds of pretzels a year. (https://positivelypa.com/pretzel-facts/ (accessed May 14, 2021)).

[10] The use of the term "pretzel crisps" dates from, at the latest, the late 1990's. For example, in April 1998, an article in Men's Health suggested a recipe for a low-calorie snack mix consisting of "flat pretzel crisps and crunchy pretzel sticks." In 1999, The San Francisco Chronicle included "Honey-mustard pretzel crisps" on its list of "Hot" grocery items. In 2001, the Charleston Gazette recommended serving a dip recipe "at room temperature with pretzel crisps or crackers."

[17] According to the Federal Circuit, 10 determining a mark's genericness requires "a two-step inquiry: First, what is the genus (or class) of goods or services at issue? Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services?" Id. at 990. The Parties do not dispute either the genus of goods or the relevant public. The genus of goods at issue is "pretzel crackers" and the relevant public are "ordinary consumers who purchase and eat pretzel crackers." See Princeton-Vanguard, 786 F.3d at 965.

[18] Booking.com, the most recent Supreme Court opinion on the question of whether a trademark is generic, provides the Court clear guidance on the process for making the factual finding on how the relevant public perceives the mark. Evidence of the public's understanding of the mark as either a common name or a mark identifying the good's source may be obtained from dictionaries; usage by the mark holder, consumers and others; consumer surveys; 11 publications and any other source of evidence bearing on how 10 The Fourth Circuit follows a functionally similar three-step test: (1) identify the class of product or service to which use of the mark is relevant; (2) identify the relevant consuming public; and (3) determine whether the primary significance of the mark to the relevant public is as an indication of the nature of the class of the product or services to which the mark relates, which suggests that it is generic, or an indication of the source or brand, which suggests that it is not generic. Booking.com B.V., 915 F.3d at 180. 11 With respect to consumer surveys, the Supreme Court has specifically cautioned: "surveys can be helpful evidence of consumer perception but require care in their design and interpretation. See Brief for Trademark Scholars as Amici Curiae 18-20 (urging that survey respondents may conflate the fact that domain names are exclusive with a conclusion that a given "generic.com" term has achieved consumers perceive a term's meaning. See Booking.com B. V., 140 S. Ct. at 2306-07;Princeton Vanguard, 786 F.3d at 965. Also, the public's primary understanding of a mark "is derived from it as a whole, not from its elements separated and considered in detail;" therefore, "it should be considered in its entirety." Estate of P.D. Beckwith, Inc. v. Comm'r of Patents, 252 U.S. 538, 545-46 (1920). Although "a mark must be considered as a whole," this "does not preclude courts from considering the meaning of individual words in determining the meaning of the entire mark." Hunt Masters, Inc. v. Landry's Seafood Rest., Inc., 240 F.3d 251, 254 (4th Cir. 2001).

[19] Further, for an asserted trademark such as PRETZEL CRISPS that is a "compound of generic elements" ("pretzel" and "crisps"), 12 the mark "is generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or services." Booking.com B. V., 140 S. Ct. at 2306. (emphasis in original). This principle is not inconsistent with consideration of a mark in its entirety. "An inquiry into the public's understanding of a mark requires consideration of the mark as a whole. Even if each of the constituent words in a combination mark is generic, the combination is not generic unless the entire formulation does not add any meaning to the otherwise generic mark." In re Steelbuilding.com, 415 F.3d 1293, 1297(Fed. Cir. 2005).

[20] To find if the combination of generic terms in an asserted trademark has "additional" meaning to consumers, the Court logically must first determine what meaning the generic elements would have to the relevant public. See Booking.com, 915 F.3d at 184-85 ("when confronted with a compound term like PRETZEL CRISPS, courts may consider as a first step the meaning of each of the term's component marks . . ."). The TTAB analyzed the constituent terms "PRETZEL" and "CRISPS" at length in its two decisions. See TTAB Decision 2, 124 U.S.P.Q.2d at 1201-04.

[24] The analysis of whether a combination of generic terms adds any meaning to the separate meaning of the generic words that make up the mark can also be considered from 14 When asked at oral argument to identify any additional meaning or source identification that the combined term adds to its generic components, Plaintiffs' counsel simply reiterated their position that the Court should not consider the meaning of the component terms in any way (notwithstanding the clear recent direction from the Supreme Court in Boooking.com).

another angle, which is whether the disputed combined term can satisfy the basic elements of a "descriptive" term, which is the trademark category just beyond generic terms (and how Plaintiffs argue PRETZEL CRIPS should be categorized). "Descriptive" terms "immediately convey information concerning a feature, quality, or characteristic" of the producer's goods or services, not simply the good or service itself. See In re North Carolina Lottery, 866 F.3d 1363, 1367(Fed. Cir. 2017) However, PRETZEL CRISPS does not convey any "feature, quality or characteristic" of "pretzel crackers" (the agreed genus of goods). 15 Instead, it is simply another name for the goods being sold. Accordingly, the failure of the combined term to convey any additional meaning that allows it to function as a "descriptive" term further supports a finding that the combined term is merely "a common name for the goods" which is appropriately placed in the lower category of generic goods.

[25] Although the Court concludes that the combination of the generic elements "pretzel" and "crisps" does not create any additional meaning for consumers from which they can distinguish Plaintiffs' product and thus indicates that PRETZEL CRISPS is generic, the Court does not rest its finding of genericness on that finding. Rather, after considering de novo all the evidence offered by the Parties which bears on consumers' perception of the mark, the Court finds that, on balance, a preponderance of the evidence supports the conclusion that the mark, considered only in its entirety, is generic. [26] Before reviewing the evidence in detail, the Court notes two points relevant to its overall analysis. First, exercising its discretion, the Court views the more recent purported evidence of consumer perception (from both sides) as less probative than evidence closer to Princeton-Vanguard's registration applications and Frito-Lay's opposition. As discussed above, the law does not permit a generic mark to evolve into a descriptive mark or other type of non-generic mark based on the association of the product with a particular company (driven by the mark holder's marketing success). And, Plaintiffs themselves acknowledge that it "accords with [ ] common-sense reasoning that, as more consumers are exposed to PRETZEL CRISPS crackers' packaging prominently displaying the PRETZEL CRISPS mark and encounter the mark in advertisements and on social media, they will naturally come to view it as [a] brand name . . ." So, the farther in time the evidence is from Plaintiffs' trademark applications, the more likely it is that the cumulative effect of Plaintiffs' sales efforts will limit the ability of the evidence to establish consumer perceptions of genericness as distinguished from secondary meaning resulting from Plaintiffs' successful marketing. . . . .

[27] Second, in making its factual determination of genericness, the Court has considered not just the "quantity" of evidence (the number of times the mark is allegedly used in some "trademark" sense) but also the "quality" of the evidence presented. In other words, the Court finds that not all bare mentions of the mark are equal. For example, many (indeed most) of the cited references to PRETZEL CRISPS appear in otherwise irrelevant financial documents or simply reflect the fact that Plaintiffs are marketing and selling the product (i.e., term appearing in the reporting of results for Snyder's-Lance's second quarter of 2013, and article noting that "media sponsors include . . . Startup Digest, Pretzel Crisps, Modern Oats,"), rather than more direct evidence of consumer perceptions (i.e., an article suggesting that a baked potato dip be served with "your favorite potato chips or pretzel crisps"). Thus, the Court has, as it must, not only "counted" the evidence but "weighed" it to reach the final conclusion that PRETZEL CRISPS is, on balance, a generic term for the goods sold by Plaintiffs.

[28] The Court evaluates each type of supporting evidence offered by the Parties as follows:

Dictionaries [29] As noted above, the Court may look to the dictionary for evidence of common usage to support a finding of genericness. See McCarthy, § 11:51 While the Parties have provided definitions of the words "pretzel" and "crisps" as discussed above, it appears that there are no dictionary definitions of the mark as a whole. Plaintiffs contend that the absence of dictionary definitions of "pretzel crisps" is "powerful evidence that the mark is not generic." The Court disagrees. First, the authority offered by Plaintiffs in support of their position, JFJ Toys, Inc. v. Sears Holdings Corp., 237 F. Supp. 3d 311, 332-33 (D. Md. 2017), 20 notes that "[d]ictionary definitions are particularly helpful where a composite mark which was 'invented' by its holder is listed in the dictionary as the accepted designator for a unique product," citing Nat'l Fed'n of the Blind, Inc. v. Loompanics Enterprises, Inc., 936 F. Supp. 1232, 1248(D. Md. 1996). . . . Here, although the Court does not find that Princeton-Vanguard invented the PRETZEL CRISPS name as discussed above, Plaintiffs contend they did. Thus, by their own version of the facts, the absence of a dictionary definition would appear to cut against rather than support their arguments.

[30] More significant to the Court, while there is no dictionary definition of "pretzel crisps," there is also no dictionary definition of "pretzel crackers," "pretzel chips," or "pretzel thins," all of which Plaintiffs agree are generic terms. And, similarly, a reasonable search by the Court finds no dictionary definition of other non-pretzel generic snack food names such as "pita chips." In other words, names of particular food products, whether brand specific or generic, are unlikely to be in the dictionary, presumably because dictionary editors do not find the term noteworthy enough to warrant an entry of any type. See TTAB Decision 2, 124 U.S.P.Q.2d at 1193. Therefore, in the specific context of the facts presented here, dictionary definitions are not particularly helpful to either party beyond the meaning of the words that make up the mark as discussed above (as part of the question of whether the compound mark adds additional meaning to consumers).

[31] The Parties have also proffered examples of the Plaintiffs' use of the mark for the Court to consider on genericness. While the vast majority of Plaintiffs' uses of the mark refer to PRETZEL CRISPS as a brand, three references from high ranking executives have been cited to the Court as evidence supporting generic use. In 2010, Maureen Phelan, VP of Sales for Snack Factory, told a major potential customer (Starbucks): "I have seen your new line of healthy snack foods in the stores & think Pretzel Crisps would be a great addition. We are the original pretzel crisp company about to introduce a new package which is much more appealing to your demographic than our current deli line." (emphasis added). And, in 2009, Snack Factory's Vice President of Marketing Perry Abbenante asked a marketing firm for help coming up with a new name for an "umbrella brand" for the product, explaining that "Pretzel Crisps" consists of "two pretty generic words" and could be vulnerable to a challenge. ("Per our conversation, I was hoping you and PGW braintrust could mull over some creative names we might be able to use as an umbrella brand for Pretzel Crisps. Currently, we do have a copyright on the name Pretzel Crisps, but because it's a two pretty generic words [sic], there could be a challenge to it."). Finally, the founder Mr. Wilson also used the term generically in a published interview, noting, "We have been able to take the middle out of pretzel making the pretzel crisp a thin crunchy cracker-like snack."

[32] While evidence of the mark owner's generic use may be "strong evidence of genericness," McCarthy, § 12.13, there must be "repeated and consistent instances of such usage," JFJ Toys, Inc. v. Sears Holdings Corp., 237 F. Supp. 3d at 331, for that use to have a significant effect. Accordingly, although these statements by Plaintiffs' executives are generally consistent with the other evidence discussed below which supports a finding of genericness and have been considered, the Court does not view these apparently isolated instances as indicative of general usage of the mark generically by Plaintiffs. Therefore, the Court does not find Plaintiffs' use of the mark generically to be "strong evidence" and gives it relatively little weight in the balance of evidence.

Usage by Competitors, Industry Insiders and Others

[33] More significant to the Court than Plaintiffs' limited generic use, the record reflects use of pretzel crisps generically by competitors and food vendors. In 2010, Kraft introduced pretzel crackers under its RITZ MUNCHABLES mark, using "pretzel crisps" as the generic descriptor. 21 The generic nature of this use is evident from the way "pretzel crisps" was set off from Kraft Food's RITZ MUNCHABLES mark in different typeface and color. Princeton-Vanguard complained to Kraft and threatened litigation. 21 All food items are required to list a "statement of identity" or "generic descriptor" to describe the food. The name established by law or regulation, or in the absence thereof, the common or usual name of the food, if the food has one, should be used as the statement of identity. If there is none, then an appropriate descriptive name, that is not misleading, should be used. Brand names are not considered to be statements of identity and should not be unduly prominent compared to the statement of identity. See 21 CFR 101.3(b) & (d).

[34] Plainly choosing to avoid a lengthy battle with an aggressive and similarly deep pocketed competitor (a decision which now may seem particularly prescient to Kraft in light of the decade long history of this case), Kraft entered into an Agreement and Mutual Release with Princeton-Vanguard in which Kraft was allowed to continue to use the mark generically for several monthsfoot_33 but thereafter agreed not to use "pretzel crisps" "as a product descriptor" or a "trademark." Kraft made no concession, admission of liability or acknowledgement that Princeton-Vanguard was entitled to a registration for "pretzel crisps" or of "any fact" (but agreed that Princeton owns a registration on the Supplemental Register, which of course was true at the time).

[35] Significantly, Kraft was careful to both note Frito-Lay's already pending opposition to Princeton-Vanguard's efforts to obtain a principal registration and include a provision allowing Kraft to resume generic use of the term should a court or trademark office find the term to be generic. Following the settlement, Kraft changed the generic descriptor "pretzel crisps" on its packaging to "pretzel thins" and "pretzel rounds" (two terms that Plaintiffs agree are not used as trademarks), demonstrating that Kraft considers all of these terms to be generic. See Doc. No. 33 at 17 ("Kraft subsequently adopted the terms 'pretzel thins' and 'pretzel rounds' to describe its products"; see also Opp'n No. 91195552 at A1543 (declaration from Warren Wilson testifying that "pretzel thins" and "pretzel rounds" are "generic descriptors"). . . . .

[36] More recently, Plaintiffs have continued to object to other companies' ongoing generic use of the mark (even after the TTAB ruled the mark was generic and ordered the registration cancelled). For example, in 2018 Wish Farms posted a recipe on its website for "Blueberry Pretzel Crisps." The recipe did not feature Plaintiffs' product, and the term "Pretzel Crisps" was used generically to refer to the recipe itself. Claiming that PRETZEL CRISPS was at that time a "registered trademark" (ignoring the TTAB's decision that the registration should be cancelled), Snyder's-Lance demanded that the small company cease using "pretzel crisps" (unless it changed the recipe to include Plaintiffs' product). Wish Farms agreed to change the recipe name but declined to "alter the recipe" to include Plaintiffs' product, noting that "the photos were done with a different product and the quickest way that we could address your concern was to simply change the name." . . . .

[37] All of these examples show that the third parties involved believed "pretzel crisps" was a commonly understood generic term, without any intent by the third parties to copy or trade on Plaintiffs' purported mark or goodwill. In response, Plaintiffs argue that their successful policing efforts "support the conclusion that others in the industry recognize PRETZEL CRISPS as a brand name." The Court disagrees. In the Court's view, after reviewing the particular circumstances and communications described above, the various agreements not to use "pretzel crisps" do not reflect any "recognition" that PRETZEL CRISPS is a brand name. Rather, the agreements represent the considered practical judgment of the accused companies (which in all cases but one were significantly smaller enterprises) that it wasn't worth the cost to resist Plaintiffs' threats. On the contrary, the Court finds the generic use by these unrelated companies to be a clear indication of public perception that "pretzel crisps" is a name for a type of pretzel snack rather than a brand name. Indeed, Plaintiffs' ability to successfully use its trademark registration (even after the TTAB ruling that it should be cancelled) to deny others the ability to use a common product name only emphasizes the power Plaintiffs have wielded to clear the marketplace of similarly named products and the importance of not allowing generic terms to become registered trademarks. . . . .

[38] In the TTAB and this Court, Plaintiffs have offered in total approximately 1800 "media references" from 2004 to 2018 in support of their position that PRETZEL CRISPS is not generic. The Court has separately reviewed every one of these proffered references. For the reasons discussed below, after considering not only the number but also the probative nature and quality of the references (as well as some illustrative current advertisements), the Court finds that, on balance, the cited media references favor a finding that consumers primarily perceive "pretzel crisps" as a term that identifies a common name for the goods rather than a mark identifying the good's source. . . . .

[39] After reviewing all the references individually, the Court finds that they can be grouped into several categories for analysis (in addition to duplicates which represented over 36% of the references reviewed):

Press Releases / Other Plaintiff Created References / Business References

[40] A majority of the articles (close to 60%), reflect Plaintiffs' business affairs, financial results and executive employment changes. . . . See,e.g.,p. 51 (stating that the team for First Aid Shot Therapy, a healthcare company, is comprised of executives that were responsible for the launch and success of Pretzel Crisps, as well as other products). . . . . . . .

[41] The list of media references that Mr. Lauzau counts as equal "trademark" references also includes a number of articles (approximately 4%) that discuss the court decisions related to this dispute. . . . . . . .

False Positive and Indeterminate References

[42] Approximately 3% of the articles were "false positives" that did not include the terms that were searched in any relevant context and, similarly, approximately 3% of the articles could not be classified by the Court for lack of information or context about the article or other reasons.

[43] Accordingly, the Court finds that adding together the business articles, lawsuit articles, false positives and indeterminate articles approximately 70% of the articles offered by {Plaintiffs} have little or no probative value with respect to the question of genericness.

[44] The Court finds that approximately 13% of the articles reflect generic use of "pretzel crisps. " See,e.g.,p. 32 (describing a school lunch idea that includes "[h]ummus with carrots, red peppers, green peppers, pretzel crisps and dried fruit"); 42-3, p. 121 (explaining how Skinnygirl creator Bethenny Frankel plans on offering pretzel crisps and pita chips as products); . . .;foot_34 see also TTAB Decision 2, 124 U.S.P.Q at 1190-91 (quoting numerous other generic references). In these articles, "pretzel crisps" are used without any particular reference to the term as a brand or to Plaintiffs. Many reference "homemade" or "my own" "pretzel crisps." And, in a number of the articles, including several of those cited above, "pretzel crisps" are listed in a parallel manner with other food items such as "popcorn" or "chips," further emphasizing that the term is being used generically.

[45] Further, other media articles cited by Frito-Lay reflect strong evidence of generic use, including the use of "Pretzel Crisps" as a category for the taste test among several different brands of pretzel crackers. See Doc. No. 28-13 at 17-18 (January 2009 San Francisco Chronicle article determining that Snack Factory came in third in a taste test comparing Pepperidge Farm, Trader Joe's other brands which are generically referenced as "pretzel chips," "pretzel crackers" and "pretzel crisps" in the article). . . . In sum, the Court finds that the articles in which "pretzel crisps" is used generically provide clear affirmative evidence that consumers primarily view the term "pretzel crisps" as a type of goods rather than a brand name.

[46] The remaining articles (approximately 20%) can be generously described as articles in which PRETZEL CRISPS may be referred to as a brand or the use of the term appears to refer specifically to Plaintiffs' product. However, for the reasons discussed below, the Court finds, in the exercise of its judgment, that a substantial percentage of those references should be given only a limited weight.

[47] While a number of the articles use Pretzel Crisps in a way that indicates it is viewed as a brand, see, e.g., 41-2, p. 11, #13 (comparing the ingredients in Tostitos and Pretzel Crisps to discover the better snack); . . . many more articles are similar to the "business" articles discussed above in that they only describe or reflect Plaintiffs' sales efforts.

[48] That is, the articles simply reflect the fact that Plaintiffs are active participants in the marketplace rather than more direct evidence of consumer perceptions. See,e.g.,p. 2,#2 (listing exhibitors,including Pretzel Crisps,at an Earth Day Fair);p. 3,#3 (advertising Pretzel Crisps and mentioning the nutrition facts, flavors, and store placement). . . .

[49] Again, evidence that a product has become a success and associated with a particular company cannot change a generic term into a non-generic brand. Thus, the Court's judgment, considering all aspects of these articles, is that they are entitled to relatively less weight than the generic articles discussed above, even though they are more numerous.

[50] Moreover, as noted above in the Court's review of both the business and the "brand identification" articles, many of the cited articles refer to Plaintiffs' product as "Snack Factory Pretzel Crisps" rather than simply "Pretzel Crisps." The Court finds this is significant and undercuts Plaintiffs' argument that the term PRETZEL CRISPS is, standing alone, perceived as a brand. 31 The wide prevalence of using Snack Factory as a clear brand identifier preceding "Pretzel Crisps" makes it more likely that consumers perceive pretzel crisps as a product name rather than a second brand name. 32 Recent advertisements easily found by the Court on the internet vividly demonstrate this point. 31 Indeed, in some of Plaintiff's purchasing contracts, the Product Description is "Pretzel Crips" and the "Extended product desc." is "Thin, flat pretzel crisps," while the "Trademark" is listed only as "Snack Factory."

32 Plaintiffs' argue that "Snack Factory Pretzel Crisps" is no different than saying "Frito-Lay's cool ranch DORITOS." The Court disagrees. Beyond the absence of any evidence that DORITOS are often referred to as "Frito-Lay Doritos" in communications describing the brand, DORITOS is not even arguably the name of a class or type of food.

[51] The Costco ad pictured above is contained in an advertising circular for the period May 19, 2021 to June 13, 2021. See https://www.costcoinsider.com/costco-may-and-june-2021-coupon-book/ (accessed May 21, 2021). In the top two panels, Costco is offering a special price on both Snack Factory Pretzel Crisps and Stacy's Pita Chips. The ad uses both Snack Factory and Stacy's as the brand names and then "Organic," "Pretzel Crisps" and "Pita Chips" as generic product descriptors for the snacks. The Court also notes the difference in how "Cheerios" and "Sunny D" are both referred to only by their brand names in the bottom two panels. Thus, this ad is a striking example of how Snack Factory (brand name) and "pretzel crisps" (product name) are often viewed differently when used together. . . . .

[52] In summary, for all the reasons discussed above, the Court finds, after a careful de novo review, that the media references offered into evidence and discussed above on balance support a finding that Frito-Lay has established by a preponderance of evidence that PRETZEL CRISPS is a generic term.

[53] Pursuant to the Supreme Court's directive in Booking.com and the Federal Circuit decision in this matter, 34 the Court also considers -cautiously -the survey evidence presented by the Parties. At the TTAB, Plaintiffs submitted two surveys and related expert declarations, one from Dr. E. Deborah Jay (the "Jay Survey") on genericness and the other from George Mantis (the "Mantis Survey") on secondary meaning. Frito-Lay submitted one survey and a related declaration from Dr. Alex Simonson on genericness. In this Court, Plaintiffs have filed additional declarations from both their experts and Frito-Lay has submitted an Expert Report and Declaration from Professor Isabella Cunningham on secondary meaning. None of the Parties have challenged the credentials of any of the experts, and the Court finds that all of them are well qualified to express their opinions. Accordingly, all of the expert reports and declarations have been considered de novo, although for the reasons discussed below the Court finds the Jay Survey and the Mantis Survey most instructive.

[54] Dr. Jay, founder and President of Field Research Corp., conducted what is commonly known as a "Teflon" survey in an attempt to test how consumers perceive the term PRETZEL CRISPS. Named after a survey performed to determine if "Teflon" was a valid trademark, a 34 Prior to Booking.com, in the Fourth Circuit and elsewhere consumer survey evidence was not considered in cases where, as here, the mark was not a coined term. See, e.g., Hunt Masters, Inc. v. Landry's Seafood Restaurant, Inc. 240 F.3d 251, 255, 57 USPQ2d 1884, 1886(4th Cir. 2001) ("Hunt does not claim to have first coined the term 'crab house.' Therefore, it is not necessary to determine whether the term has become generic through common use, rendering Hunt's consumer survey irrelevant."); TTAB Decision 2, 124 U.S.P.Q. at 1202-04 (collecting cases). However, as discussed above, such evidence was considered by the Supreme Court in Booking.com and the Federal Circuit instructed the TTAB to consider survey evidence in this matter. Accordingly, the Court has considered the evidence, with due regard for the limitations of such evidence cited by the Supreme Court (which had led many courts to not consider the evidence in these circumstances as noted).

interviews have a maximum sampling error of approximately +/-7 percentage points at the 95% confidence level." She also admitted that "there are other potential sources of error in surveys besides sampling error," but expressed her opinion that "the overall design and execution of the survey minimized the potential for other sources of error."

[61] The "margin of error" in surveys should be considered in whether and how much to rely on their results. See vonRosenberg v. Lawrence, 413 F.Supp.3d 437, 449 n.9 (D.S.C. 2019) (finding that a 5.6% error rate was a "wide margin of error" relevant to the weight that should be given to a trademark survey on genericness where, considering the error rate, the "rate of [survey respondents] who responded "category" rather than "trademark" would fall below 50%, thus arguably negating its ability to show that a "majority" of individuals consider the mark generic. See 2 McCarthy on Trademarks and Unfair Competition § 12:6 (5th ed.) (for genericness, "majority use controls")"); Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 120 n. 6 (1st Cir. 2006) (concluding that an expert report's "small sample size and large margin of error [10%] combined to cast considerable doubt on its statistical integrity"). . . . This seems especially important in circumstances like here in which the answers of only 222 survey respondents are purported to fairly represent the consumer perceptions of over 100 million adults in the United States.

[62] Using a 7% margin of error, the range of those who view PRETZEL CRISPS as a brand within the margin of error is 48% to 63%. In other words, without discounting the results of the Jay Survey in any manner (even for the other sources of error Dr. Jay references), a finding that fewer than a majority of respondents perceived PRETZEL CRISPS as a brand is within the survey's margin of error. Indeed, if the percentages of those who believed that the term is a brand or common name are fully adjusted up or down for the margin of error then the difference between them could be very small, 48% to 43%.

[63] However, beyond consideration of the margin of error (which still leaves a small relative but not absolute majority identifying the mark as a brand), the Court finds there are a number of reasons that suggest the survey results should be discounted in addition to considering the margin of error. First, as mentioned above, Dr. Jay acknowledges that the survey population is not representative of the relevant population, either by age or geography. However, the amount and direction of the survey error or uncertainty as a consequence of these disparities is not quantified or estimated.

[64] Moreover, the answers of the survey respondents with respect to a number of the "control" terms do not inspire confidence in the survey results and appear to reflect that the survey respondents' choices may have been driven, in significant part, by commercial success or notoriety rather than a valid assessment of the distinction between generic and trademark names. While over 90% of respondents correctly identified "macadamia nuts" and "onion rings" as generic names, 25% incorrectly identified "gourmet popcorn" as a brand. More significantly, less than half of respondents correctly identified FLAVOR TWISTS (which are twisted corn chips) as a brand. The Court finds that this failure indicates that the bulk of survey respondents did not fully understand the distinction between common names and brands. The mark FLAVOR TWISTS is plainly not a common name (TWISTS is certainly not a common name for corn chips, if it has any "common" meaning at all).

[65] So, what accounts for the vast difference in correct answers for CHEESE NIPS and SUN CHIPS, which are also brands? Simply put, the difference likely lies in marketing and commercial success. CHEESE NIPS and SUN CHIPS are more well-known and successful than FLAVOR TWISTS as a name standing alone (indeed if the survey had included the full product name FRITOS FLAVOR TWISTS the Court expects the results may have been markedly different). Thus, the failure of respondents to correctly identify FLAVOR TWISTS as a brand suggests that a substantial portion of the survey results reflect secondary meaning (the association of a product with a particular source) rather than a recognition of genericness. 35[66] Accordingly, it is the Court's judgment -based on the fact that less than a majority of respondents may have believed PRETZEL CRISPS is a brand name (taking into account the survey's margin of error), the other limitations and concerns about the survey results discussed above and the Supreme Court's warning to be cautious in relying on consumer surveys purporting to measure genericness -that the results of the Jay Survey are, at best, inconclusive. Thus, the Court does not agree that the survey indicates that consumers "primarily" perceive PRETZEL CRISPS as a brand.foot_36 . . . .

[67] In sum, considering all the available evidence, the Court, finds that, on balance, the survey evidence slightly favors 39 an affirmative finding that consumers primarily perceive PRETZEL CRISPS as a common or generic name.

[68] Plaintiffs also offered evidence of Google searches and social media mentions on Twitter to support their position that PRETZEL CRISPS is not generic. . . .

[69] However, the Court does not find either the Google search or the Twitter analysis persuasive on the issue of genericness. First, as discussed above, these searches have only a limited usefulness in establishing whether PRETZEL CRISPS is generic due to the more than a decade (and $50 million in advertising and marketing expenditures) that has passed since the challenged registration of the mark in 2005. Again, the repeated use of ordinary words cannot give a single company a proprietary right over those words, even if an association develops between the words and that company. Am. Online, 243 F.3d at 821.

[70] Second, for the Google search, the same concerns that the Court expressed {in connection with media references} apply here as well. . . . Indeed, the vast bulk of the Google search results simply identify websites of large companies offering PRETZEL CRISPS for sale. (See Id. at 2 (Amazon.com,Walmart.com,etc.)). Again, there is no dispute that Plaintiffs have developed a very large business selling their pretzel product; however, the typical commercial sales efforts associated with that business-including the websites featured in the Plaintiffs' Google search, do not reflect consumer perceptions of genericness. Instead, to the extent they have relevance to this action at all, they may be mostly evidence of secondary meaning, an issue that the Court does not reach. Accordingly, the Court gives the Google results little weight.

[71] Similarly, it is undisputed that Plaintiffs have developed a large social media presence as part of their marketing efforts. As of October 2018, the PRETZEL CRISPS brand had over 47,800 followers on Twitter. . . .

[72] {M]erely referencing Plaintiffs or their hashtag does not necessarily make the use of "pretzel crisps" in a tweet a brand reference. As with the Google search results discussed above, use of the disputed product name in the normal course of business communications, here on Twitter, does not reveal whether or not a consumer understands the product name primarily as a brand or a type of goods. Instead, it just reflects consumer engagement with the product,foot_37 which, again, may be relevant to secondary meaning but not necessarily genericness. Simply put, it is unremarkable and unconvincing that communication about a product mentions the product name. And, because consumer perception of a term may be "mixed," that is, reflecting both generic use and brand awareness, see Booking.com,278 F.3d at 902, a bare reference to the product name does not answer the more difficult question before the Court of how consumers primarily perceive the term. So, after a de novo review of the evidence, the Court finds, for all the reasons discussed above, that Plaintiffs' evidence of Twitter communications is unpersuasive.

[73] Finally, Plaintiffs argue that the availability of other product names for "pretzel cracker" snacks supports their claim that PRETZEL CRISPS is not generic. First, regardless of the availability of similar names for a product, a generic name cannot be registered as a trademark thereby granting exclusive use of the name of a product to a single company. See Ale House Mgmt., Inc. v. Raleigh Ale House, 205 F.3d 137, 141 (4th Cir. 2000) (affirming summary judgment finding term ALE HOUSE generic, while also noting alternative generic names like "bar," "lounge," "pub," "saloon," and "tavern"). . . .

[74] Second, the Court does not find that the names suggested, while generic, are necessarily "equally acceptable" alternatives. For example, Plaintiffs claim that "pretzel thins" and "pretzel rounds" are equivalent generic names. However, "pretzel thins" is also a name used for regularly shaped thin pretzels and "pretzel rounds" is used for small, rounded pretzel pieces as well as snacks that look more like Plaintiff's "pretzel crisps" product. Therefore, a company could reasonably conclude that "pretzel crisps" is a better description for a small, rounded pretzel product.

[75] Moreover, the absence of other companies using the name "pretzel crisps" to describe their products is neither "compelling evidence" as urged by Plaintiffs nor even surprising. As discussed above, Plaintiffs have aggressively "policed" the mark. Thus, the obvious reason no one else uses the name is they will be threatened with legal action. In such circumstances, the relative absence of competitive use of the name simply reflects a practical business judgment rather than any acknowledgement that "pretzel crisps" is not generic.

[76] In conclusion, there is no dispute that Snack Factory Pretzel Crisps is a hugely successful product, due in no small part to Plaintiffs' extensive marketing efforts and the PRETZEL CRISPS trademark registration they received and have enforced to clear the field of similarly named products. However, no matter how much commercial success the product enjoys, Plaintiffs are not entitled to monopolize the common name of the product being sold. Summarizing the evidence on the genericness of the mark, considered as a whole, the Court finds that the combination of the acknowledged generic elements of the compound mark "yields no additional meaning to consumers capable of distinguishing the goods" and, independently, usage by competitors, media references and consumer surveys (as well as some use by Plaintiffs) reflects that, on balance, consumers primarily perceive "pretzel crisps" to be a common / generic name. Therefore, for all the reasons discussed above, the Court finds that Frito-Lay has carried its burden to prove by a preponderance of the evidence that PRETZEL CRISPS is a generic mark, and this Court will affirm the TTAB and order the cancellation of the registration of the mark. [1] Between February 29, 2012, andMarch 10, 2012, Chris Gillespie used a domain name registrar to acquire 763 domain names that included the word "google." Each of these domain names paired the word "google" with some other term identifying a specific brand, person, or product-for example, "googledisney.com," "googlebarackobama.net," and "googlenewtvs.com."

[2] Google, Inc. ("Google") objected to these registrations and promptly filed a complaint with the National Arbitration Forum ("NAF"), which has authority to decide certain domain name disputes under the registrar's terms of use. Google argued that the registrations violate the Uniform Domain Name Dispute Resolution Policy, which is included in the registrar's terms of use, and amount to domain name infringement, colloquially known as "cybersquatting." Specifically, Google argued that the domain names are confusingly similar to the GOOGLE trademark and were registered in bad faith. The NAF agreed, and transferred the domain names to Google on May 10, 2012.

[3] Shortly thereafter, David Elliott filed, and Gillespie later joined,foot_38 an action in the Arizona District Court. Elliott petitioned for cancellation of the GOOGLE trademark under the Lanham Act, which allows cancellation of a registered trademark if it is primarily understood as a "generic name for the goods or services, or a portion thereof, for which it is registered." 15 U.S.C. § 1064 (3). Elliott petitioned for cancellation on the ground that the word "google" is primarily understood as "a generic term universally used to describe the act[ ] of internet searching." [4] On September 23, 2013, the parties filed cross-motions for summary judgment on the issue of genericness. Elliott requested summary judgment because (1) it is an indisputable fact that a majority of the relevant public uses the word "google" as a verb-i.e., by saying "I googled it," and ( 2) verb use constitutes generic use as a matter of law. Google maintained that verb use does not automatically constitute generic use, and that Elliott failed to create even a triable issue of fact as to whether the GOOGLE trademark is generic. Specifically, Google argued that Elliott failed to present sufficient evidence to support a jury finding that the relevant public primarily understands the word "google" as a generic name for internet search engines. The district court agreed with Google and its framing of the relevant inquiry, and granted summary judgment in its favor. [5] Elliott raises two arguments on appeal. First, he argues that the district court misapplied the primary significance test and failed to recognize the importance of verb use. Second, he argues that the district court impermissibly weighed the evidence when it granted summary judgment for Google. We review the district court's grant of summary judgment de novo . . . . For the reasons described below, we reject both of Elliott's arguments and affirm summary judgment for Google. II. . . . .

[6] Over time, the holder of a valid trademark may become a "victim of 'genericide. '" Freecycle Network, Inc. v. Oey, 505 F.3d 898, 905 (9th Cir. 2007) (quoting J. Thomas McCarthy, McCarthy on Trademarks andUnfair Competition § 12:1 (4th ed. 1998) [hereinafter McCarthy] ). Genericide occurs when the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source. For example, ASPIRIN, CELLOPHANE, and ESCALATOR were once protectable as arbitrary or fanciful marks because they were primarily understood as identifying the source of certain goods. But the public appropriated those marks and now primarily understands aspirin, cellophane, and escalator as generic names for those same goods. See Bayer Co. v. United Drug Co., 272 F. 505, 510 (S.D.N.Y. 1921);DuPont Cellophane Co. v. Waxed Prods. Co., 85 F.2d 75, 82 (2d Cir. 1936); Freecycle Network, Inc., 505 F.3d at 905. The original holders of the ASPIRIN, CELLOPHANE, and ESCALATOR marks are thus victims of genericide.

[7] The question in any case alleging genericide is whether a trademark has taken the "fateful step" along the path to genericness. Ty Inc. v. Softbelly's Inc., 353 F.3d 528, 531 (7th Cir. 2003). The mere fact that the public sometimes uses a trademark as the name for a unique product does not immediately render the mark generic. See 15 U.S.C. § 1064 (3). Instead, a trademark only becomes generic when the "primary significance of the registered mark to the relevant public" is as the name for a particular type of good or service irrespective of its source. Id.

[8] We have often described this as a "who-are-you/what-are-you" test. See Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 929 (9th Cir. 2005) (quoting Filipino Yellow Pages, Inc., 198 F.3d at 1147). . . .

[9] On appeal, Elliott claims that he has presented sufficient evidence to create a triable issue of fact as to whether the GOOGLE trademark is generic, and that the district court erred when it granted summary judgment for Google. First, he argues that the district court erred because it misapplied the primary significance test and failed to recognize the importance of verb use. Specifically, he argues that the district court erroneously framed the inquiry as whether the primary significance of the word "google" to the relevant public is as a generic name for internet search engines, or as a mark identifying the Google search engine in particular. Instead, Elliott argues that the court should have framed the inquiry as whether the relevant public primarily uses the word "google" as a verb.

[10] We conclude that Elliott's proposed inquiry is fundamentally flawed for two reasons. First, Elliott fails to recognize that a claim of genericide must always relate to a particular type of good or service. Second, he erroneously assumes that verb use automatically constitutes generic use. For similar reasons, we conclude that the district court did not err in its formulation of the relevant inquiry under the primary significance test.

A trademark can serve a dual function-that of [naming] a product while at the same time indicating its source. Admittedly, if a product is unique, it is more likely that the trademark adopted and used to identify that product will be used as if it were the identifying name of that product. But this is not conclusive of whether the mark is generic. S. Rep. No. 98-627, at 5 (1984). In this way, Congress has instructed us that a speaker might use a trademark as a noun and still use the term in a source-identifying trademark sense.

[16] Moreover, we have already implicitly rejected Elliott's theory that only adjective use constitutes trademark use. In Coca-Cola Co. v. Overland, Inc., 692 F.2d 1250(9th Cir. 1982), the Coca-Cola Company sued a local restaurant for trademark infringement because its servers regularly and surreptitiously replaced customer orders for "a coke" with a non-Coca-Cola beverage. Id. at 1252. The restaurant defended on the basis of genericide, arguing that the COKE trademark had become a generic name for all cola beverages. Id. at 1254. To support its claim, the restaurant presented employee affidavits stating that the employees believed that customers who ordered "a coke" were using the term in a generic sense. Id. We rejected these affidavits because they were not based on personal knowledge. More significant to the issue at hand, we also noted that the mere fact that customers ordered "a coke," i.e., used the mark as a noun, failed to show "what . . . customers [were] thinking," or whether they had a particular source in mind. Id. at 1255.

[17] If Elliott were correct that a trademark can only perform its source-identifying function when it is used as an adjective, then we would not have cited a need for evidence regarding the customers' inner thought processes. Instead, the fact that the customers used the trademark as a noun and asked for "a coke" would prove that they had no particular source in mind. In this way, we have implicitly rejected Elliott's theory that a trademark can only serve a source-identifying function when it is used as an adjective.

[18] For these reasons, the district court correctly rejected Elliott's theory that verb use automatically constitutes generic use. 3 Moreover, the district court aptly coined the terms "discriminate verb" and "indiscriminate verb" in order to evaluate Elliott's proffered examples of verb use and determine whether they were also examples of generic use. Although novel, these terms properly frame the relevant inquiry as whether a speaker has a particular source in mind. We have already acknowledged that a customer might use the noun "coke" in an indiscriminate sense, with no particular cola beverage in mind; or in a discriminate sense, with a Coca-Cola beverage in mind. In the same way, we now recognize that an internet user might use the verb "google" in an indiscriminate sense, with no particular search engine in mind; or in a discriminate sense, with the Google search engine in mind.

[19] Because a claim of genericide must relate to a particular type of good or service and because verb use does not necessarily constitute generic use, the district court did not err when it refused to frame its inquiry as whether the relevant public primarily uses the word "google" as a verb. Moreover, the district court correctly framed its inquiry as whether the primary significance of the word "google" to the relevant public is as a generic name for 3 We acknowledge that if a trademark is used as an adjective, it will typically be easier to prove that the trademark is performing a source-identifying function. If a speaker asks for "a Kleenex tissue," it is quite clear that the speaker has a particular brand in mind. But we will not assume that a speaker has no brand in mind simply because he or she uses the trademark as a noun and asks for "a Kleenex." Instead, the party bearing the burden of proof must offer evidence to support a finding of generic use. See McCarthy § 12:8 ("The fact that buyers or users often call for or order a product by a [trademark] term does not necessarily prove that that term is being used as a 'generic name.' ").

internet search engines or as a mark identifying the Google search engine in particular. We therefore evaluate Elliott's claim of genericide and the sufficiency of his proffered evidence under the proper inquiry.

B. [20] Elliott next argues that the district court must have impermissibly weighed the evidence when it granted summary judgment for Google in light of the "sheer quantity" of evidence that Elliott produced to support his claim of genericide. See Jesinger v. Nev. Fed. Credit Union, 24 F.3d 1127, 1131(9th Cir. 1994) (noting that a court "must not weigh the evidence" at summary judgment). We disagree. Instead, we conclude that Elliott's admissible evidence is largely inapposite to the relevant inquiry under the primary significance test because Elliott ignores the fact that a claim of genericide must relate to a particular type of good or service.

[21] A party applying for cancellation of a registered trademark bears the burden of proving genericide by a preponderance of the evidence. Anti-Monopoly, Inc. v. Gen. Mills Fun Grp., 684 F.2d 1316, 1319(9th Cir. 1982). Moreover, the holder of a registered trademark benefits from a presumption of validity and has "met its [initial] burden of demonstrating" the lack of "a genuine issue of material fact" regarding genericide. Coca-Cola Co., 692 F.2d at 1254. Therefore, in light of the relevant inquiry under the primary significance test, Elliott was required to identify sufficient evidence to support a jury finding that the primary significance of the word "google" to the relevant public is as a name for internet search engines generally and not as a mark identifying the Google search engine in particular. [22] At summary judgment, the district court assumed that a majority of the public uses the verb "google" to refer to the act of "searching on the internet without regard to [the] search engine used." 4 In other words, it assumed that a majority of the public uses the verb "google" in a generic and indiscriminate sense. The district court then concluded that this fact, on its own, cannot support a jury finding of genericide under the primary significance test. We agree. [23] As explained above, a claim of genericide must relate to a particular type of good. Even if we assume that the public uses the verb "google" in a generic and indiscriminate sense, this tells us nothing about how the public primarily understands the word itself, irrespective of its grammatical function, with regard to internet search engines. As explained below, we also agree that Elliott's admissible evidence only supports the favorable but insufficient inference already drawn by the district court-that a majority of the public uses the verb "google" in a generic sense. Standing in isolation, 5 this fact is insufficient to support a jury finding of genericide. The district court therefore properly granted summary judgment for Google.

[24] We begin with Elliott's three consumer surveys. . . . Here, the district court properly excluded two of Elliott's consumer surveys because they were not conducted according to accepted principles. Specifically, these surveys were designed and conducted by Elliott's counsel, who is not qualified to design or interpret surveys. . . .

[25] The district court properly considered only Elliott's third survey, which was conducted by James Berger-a qualified survey expert. Elliott's third survey is a "Thermos" survey, which generally "puts the respondent in an imaginary situation . . . and asks how the respondent would ask" for the type of good for which the trademark is alleged to be generic. McCarthy § 12:15 (citing Am. Thermos Prods. Co. v. Aladdin Indus., 207 F.Supp. 9, 21-22 (D. Conn. 1962), aff'd, 321 F.2d 577 (2d Cir. 1963)). Here, Berger asked 251 respondents: "If you were going to ask a friend to search for something on the Internet, what word or phrase would you use to tell him/her what you want him/her to do?" Over half of the 251 respondents answered this question by using the word "google" as a verb.

[26] Although verb use does not automatically constitute generic use, the district court allowed Berger to rely on the third survey to offer his expert "opinion that a majority of the public uses the word google as a [generic and indiscriminate] verb to mean search on the internet." In this way, Elliott's admissible consumer survey evidence goes no further than supporting the favorable inference already drawn by the district court. 7

[27] We next consider Elliott's examples of alleged generic use by the media and by consumers. Documented examples of generic use might support a claim of genericide if they reveal a prevailing public consensus regarding the primary significance of a registered trademark. . . . However, if the parties offer competing examples of both generic and trademark use, this source of evidence is typically insufficient to prove genericide. See id.

[28] Initially, we note that Elliott's admissible examples are only examples of verb use. To repeat, verb use does not automatically constitute generic use. For instance, Elliott purports to offer an example of generic use by T-Pain, a popular rap music artist. But we will support a finding of genericide when it is unaccompanied by evidence regarding the primary significance of the mark as a whole. 7 The district court also considered a fourth survey. Although Google already benefits from a presumption against genericide, see Coca-Cola Co., 692 F.2d at 1254, Google offered a "Teflon" survey to prove that the GOOGLE mark is not generic. A Teflon survey begins with a brief lesson explaining the difference between brand names and common names. It then asks respondents to classify a series of words, including the trademark at issue, as either brand names or common names. E. I. DuPont de Nemours & Co. v. Yoshida Int'l, Inc., 393 F.Supp. 502, 526-27 (E.D.N.Y. 1975). In response to Google's Teflon survey, a little over 93% of respondents classified "Google" as a brand name. Most respondents also classified "Coke," "Jello," "Amazon," and "Yahoo!" as brand names, and classified "Refrigerator," "Margarine," "Browser," and "Website" as common names. Unlike Elliott's Thermos survey, Google's Teflon survey offers comparative evidence as to how consumers primarily understand the word "google" irrespective of its grammatical function.

not assume that T-Pain is using the word "google" in a generic sense simply because he tells listeners to "google [his] name." T-Pain, Bottlez, on rEVOLVEr (RCA Records 2011). Without further evidence regarding T-Pain's inner thought process, we cannot tell whether he is using "google" in a discriminate or indiscriminate sense. In this way, many of Elliott's admissible examples do not even support the favorable inference that a majority of the relevant public uses the verb "google" in a generic sense.

[29] Elliott also attempted to offer clear examples of indiscriminate verb use by the media and by consumers. For example, in response to Google's motion for summary judgment, he produced a transcript from an episode of a German television show in which a character claims to have "googled at Wikipedia." Elliott also produced examples in which the media uses phrases like "googled on ebay," "googled on facebook," and "googled on pinterest." Finally, Elliott produced evidence suggesting that certain consumers claimed that they accessed a website by "googling" it, even though those consumers actually accessed the website through a non-Google search engine.

[30] The district court properly excluded these examples of indiscriminate verb use because they were not disclosed during discovery and because Elliott failed to show that his delay was "substantially justified or . . . harmless." Fed. R. Civ. P. 37(c) (1). Moreover, even if these examples had been timely disclosed, they are largely irrelevant because they only support the favorable inference already drawn by the district court.

{The court then considered Elliott's proferred expert testimony and dictionary evidence and concluded that each only supports favorable inference already drawn by the district court.}

[31] Next, we consider Elliott's claim that Google has used its own trademark in a generic sense. Generic use of a mark by the holder of that mark can support a finding of genericide. See McCarthy § 12:13. However, Elliott has not presented an example of generic use by Google. Instead, Elliott has presented an email from Google cofounder Larry Page, which encourages recipients to "[h]ave fun and keep googling!" Once again, Elliott relies on an example of verb use. Elliott has not shown, nor is it likely that he could show, that the cofounder of Google had no particular search engine in mind when he told recipients of the "Google Friends Newsletter" to "keep googling."foot_41

[32] Finally, we consider Elliott's claim that there is no efficient alternative for the word "google" as a name for "the act" of searching the internet regardless of the search engine used. Once again, a claim of genericide must relate to a particular type of good or service. In order to show that there is no efficient alternative for the word "google" as a generic term, Elliott must show that there is no way to describe "internet search engines" without calling them "googles." Because not a single competitor calls its search engine "a google," and because members of the consuming public recognize and refer to different "internet search engines," Elliott has not shown that there is no available substitute for the word "google" as a generic term. Compare, e.g., Q-Tips, Inc. v. Johnson & Johnson, 108 F.Supp. 845, 863 (D.N.J. 1952) (concluding that "medical swab" and "cotton-tipped applicator" are efficient alternatives for Q-Tips); with Bayer Co., 272 F. at 505 (concluding that there is no efficient substitute for the generic term "aspirin" because consumers do not know the term "acetyl salicylic acid"); see also Softbelly's Inc.,353 F.3d at 531 (explaining that genericide does not typically occur "until the trademark has gone so far toward becoming the exclusive descriptor of the product that sellers of competing brands cannot compete effectively without using the name").

[33] Elliott cannot survive summary judgment based on "sheer quantity" of irrelevant evidence. We agree with the district court that, at best, Elliott has presented admissible evidence to support the inference that a majority of the relevant public uses the verb "google" in a generic sense. Because this fact alone cannot support a claim of genericide, the district court properly granted summary judgment for Google. . . . . WATFORD, Circuit Judge, concurring:

[34] I join the court's well-reasoned opinion with one caveat. To resolve this appeal, we need not decide whether evidence of a trademark's "indiscriminate" verb use could ever tell us something about whether the public primarily thinks of the mark as the generic name for a type of good or service. Maj. op. at 1159-60. To the extent the court's opinion can be read as taking a position on that question, I decline to join that aspect of its reasoning.

[35] We don't need to resolve whether evidence of indiscriminate verb use is categorically irrelevant in an action alleging that a trademark has become generic because, on this record, no rational jury could find in the plaintiffs' favor even taking into account the flimsy evidence of indiscriminate verb use they produced. In support of its motion for summary judgment, Google produced overwhelming evidence that the public primarily understands the word "Google" as a trademark for its own search engine, not the name for search engines generally. In Google's consumer survey, 93% of respondents identified "Google" as a brand name, rather than a common name for search engines. In every dictionary in the record, the first entry for "Google" or "google" refers to Google's search engine. Google extracted concessions from the plaintiffs' expert linguists that Google functions as a trademark for Google's search engine. Google also submitted evidence showing that it uses its trademark to refer only to its own search engine, that it polices infringement by others, and that its competitors refrain from using the trademark to refer to their own search engines. Finally, Google offered evidence showing that major media outlets use "Google" to refer exclusively to Google's search engine.

[36] In response, the plaintiffs produced thousands of pages of largely irrelevant evidence showing merely that "google" is sometimes used as a verb. The sliver of potentially relevant evidence purporting to show that the public uses the verb "google" to refer to searching the Internet with any search engine (as opposed to Google's search engine in particular) is too insubstantial to save the plaintiffs' case. For example, the plaintiffs point to their Thermos survey, in which respondents were asked what word or phrase they would use to ask a friend to search for something on the Internet. Most respondents answered either "google," "google it," "google something," "google this," "google search," or "bring up google." However, those answers share the same problem that the court identifies with almost all of the plaintiffs' evidence, such as the rapper T-Pain's lyric telling his listeners to "google my name." That is, without more context, we simply can't tell whether the survey respondents were referring to searching the Internet with Google's search engine or with any search engine generally.

[37] At most, with respect to evidence that the public employs the verb "google" without regard to the search engine used, the plaintiffs have mustered secondary definitions from a few dictionaries and expert testimony from their linguists. Whatever this evidence might suggest about the use of "google" as a verb, no rational jury could rely on it to find, on this record, that the word has become the generic name for Internet search engines. As already mentioned, these dictionaries' primary definitions of the word uniformly refer to Google's own search engine. And the expert linguists conceded in their depositions that, despite their opinion that "google" is used in verb form without regard to a specific search engine, the term has not become a generic name for search engines.

[38] There may never be a case that turns on evidence that a trademark is commonly used as a verb to refer to use of a type of good or service, as opposed to use of the particular product for which the trademark is registered. But if such a case were to arise, it's not obvious to me that a jury should be foreclosed from relying on the way the public uses the word as a verb to decide whether the public also thinks of the mark as the generic name for the type of good or service. The way we use words as verbs is often related to how we use those words as adjectives or nouns, such that evidence of indiscriminate verb use could potentially be relevant in deciding whether a trademark has become the generic name for a type of good or service. To the extent the court's opinion can be read to foreclose the consideration of such evidence as a matter of law, I decline to join it.

What is the appropriate level of abstraction? With respect to the genus/species distinction, how does one establish the appropriate level of abstraction at which one defines the genus, the species, and even the subspecies (or, for that matter, the family above the genus)? What prevents a plaintiff from claiming that the genus is, for example, beer, and the plaintiff merely wants rights in the name of a species of beer, which is "light beer" ? See Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75 (7th Cir. 1977) (finding LIGHT and LITE for beer to be generic).

In a thoughtful opinion, Magistrate Judge Steve Kim of the Central District of California cited approvingly an additional way of thinking about generic versus non-generic designations:

Because ''conceptually'' consumers do an ''aisle search'' for ''the type of good they want'' in the market and a ''shelf search'' for ''the particular brand of that good,'' the ''genericism inquiry is therefore about assessing terms to determine whether they are related to an aisle search or a shelf search.' ' Laura A. Heymann, Trademarks in Conversation: Assessing Genericism After Booking.com, 39 Cardozo Arts & Ent. L.J. 955, 958 (2021). ''Competitors, for their part, need to be able to use the term that will allow them to be grouped with comparable goods in the aisle search and to use trademarks as one method of winning the competition in the shelf search.' ' Id.> Snap Inc. v. Vidal, 750 F.Supp.3d 1120, 1139-40 n. 12 (C.D. Cal. 2024).

3. Surveying for genericism: the "Thermos" survey method. In American Thermos Products Co. v. Aladdin Industries, Inc., 207 F. Supp. 9 (D. Conn. 1962), aff'd, 321 F.2d 577 (2d Cir. 1963), the defendant argued that the term "thermos" had lost its significance as a designation of source and become a generic term for vacuum-insulated containers. To support this argument, the defendant submitted a survey whose method has been copied in many subsequent genericism cases. See, e.g., E.T. Browne Drug Co. v. Cococare Products, Inc., 538 F.3d 185, 87 U.S.P.Q.2d 1655(3d Cir. 2008) (evaluating Thermos-type survey). See also MCCARTHY § 12:15. In essence, a Thermos survey (1) asks the survey respondent whether they are familiar with the general product at issue (e.g., "the type of container that is used to keep liquids, like soup, coffee, tea and lemonade, hot or cold for a period of time"), ( 2) asks the respondent to imagine him/herself walking into a store and asking for that product, and then (3) inquires "What would you ask for-that is, what would you tell the clerk you wanted?" The survey will then typically ask some form of the question "Can you think of any other words that you would use to ask for the product?" In American Thermos Products, 75% of the 3,300 respondents answered "Thermos" to the "what would you ask for" question. American Thermos Products, 207 F. Supp. at 21-22. The court found that the term "thermos" had become generic for vacuum-insulated bottles.

The Thermos survey method has been criticized on the ground that "for a very strong trademark, respondents with brand loyalty may answer with the trademark and drop what they consider to be a generic name, because it's so obvious to them." MCCARTHY § 12:15. Imagine you walk into a fast food restaurant in order to purchase a carbonated cola-flavored beverage. What would you ask for? What do you think the results of such a survey of 100 respondents would be, and do they support McCarthy's criticism? 4. Surveying for genericism: the "Teflon" survey method. In E. I. DuPont de Nemours & Co. v. Yoshida International, Inc., 393 F. Supp. 502 (E.D.N.Y. 1975), Dupont, producer of TEFLON resins, brought a trademark action against the defendant Yoshida, producer of EFLON zippers. In response to Yoshida's argument that TEFLON had become generic, DuPont submitted two surveys, one of which was a telephone survey in which respondents were first given what was essentially a mini-course in the difference between "brand names" and "common names" and then asked if "teflon" was a brand name or a common name. Now, would you say ---is a brand name or a common name? MCCARTHY § 12:16. In one evening, 514 men and 517 women were surveyed in 20 cities. The survey results were as follows:

Interestingly, Yoshida submitted a Thermos survey to support its claim that TEFLON had become generic. As the court explained, this survey was conducted among adult women, 90.6% of whom expressed awareness of 'kitchen pots and pans that have their inside surfaces coated by chemical substances to keep grease or food from sticking to them.' Of the aware respondents, 86.1% apparently mentioned only 'TEFLON' or 'TEFLON II' [DuPont's mark for an improved means of applying its resin to metal surfaces] as their sole answer when asked, 'What is the name . . . or names of these pots and pans . . .?' Further, 71.7% of the aware women gave only 'TEFLON' or 'TEFLON II' as the name they would use to describe the pots and pans to a store clerk or friend. Nemours & Co.,393 F.Supp. at 525. The court ultimately found DuPont's brand name vs. common name survey to be the more persuasive. In Yoshida's Thermos survey (as in other surveys in the case not discussed here), the court found, "respondents were, by the design of the questions, more often than not focusing on supplying the inquirer a 'name', without regard to whether the principal significance of the name supplied was 'its indication of the nature or class of an article, rather than an indication of its origin.'" Id. at 527 (quoting King-Seeley Thermos Co., 321 F.2d at 580). Only DuPont's brand name vs. common name survey really gets down to the critical element of the case. . . . {T}he responses of the survey reveal that the public is quite good at sorting out brand names from common names, and, for TEFLON, answers the critical question left unanswered by the ambiguities inherent in {the other surveys]-that of the principal significance of the TEFLON mark to the public. Not only have defendants failed to show that TEFLON's principal significance is as a common noun, plaintiff has succeeded in showing it to be a 'brand name'-an indicator, in the words of DuPont's questionnaire, of a product 'made by one company.'" E. I. DuPont de Nemours & Co., 393 F.Supp. at 527. Do you agree that the Teflon survey method is superior to the Thermos survey method for assessing whether a mark is generic?

5. What proportion of relevant consumers is sufficient to qualify the asserted mark as nongeneric? In keeping with the statutory language that "[t]he primary significance of the registered mark to the relevant public . . . shall be the test for determining whether the registered mark has become the generic name of goods or services," 15 U.S.C. § 1064(3), courts generally require that survey evidence show that a majority of consumers, i.e., above 50%, recognize the asserted mark as a designation of source rather than a generic term. See MCCARTHY § 12:6. Interprofession du Gruyere v. U. S. Dairy Exp. Council, 61 F.4th 407, 416 n. 4 (4th Cir. 2023);Freecycle Network, Inc. v. Oey, 505 F.3d 898, 905 (9th Cir. 2007). Cf. Murphy Door Bed Co. v. Interior Sleep Sys., Inc., 874 F.2d 95, 101 (2d Cir. 1989) ("substantial majority").

6. Surveying for genericism: secondary meaning surveys? In a portion of the Snyder's Lance opinion not excerpted above, the district court quoted and endorsed the TTAB's analysis of a secondary meaning survey that Princeton Vanguard had submitted in an effort to prove that PRETZEL CRISPS had acquired secondary meaning. The TTAB interpreted the survey evidence rather differently. As quoted by the Snyder's Lance district court, the TTAB explained:

The {Mantis Survey} was conducted via online participation, between August 26 and August 30, 2011. There were 400 survey participants. Respondents were invited by email to participate in the survey and were told it was about "salty snack foods." Individuals were then asked prescreening questions. To be included in the survey, individuals had to, among other things, be the "primary grocery shopper," be "between the ages of 24 and 39," and "have purchased crackers and pretzels in the past month and will purchase crackers and pretzels in the next month." Survey respondents were informed during the screening process about the difference between "brand" and "common" names and then allowed to proceed with the survey only if they correctly associated BAKED TOSTITOS with "only one company" and TORTILLA CHIPS with "more than one company." For those who proceeded with the study, two control names were given, and the same questions were asked. The results are shown as follows:

Based on the survey, Mr. Mantis found that 38.7% of the respondents associated the name "PRETZEL CRISPS" with only one company. On that basis, he stated: "It is my opinion that the name 'PRETZEL CRISPS,' used in conjunction with a salty snack food product, has acquired secondary meaning." Plaintiff retained Dr. Ivan Ross to rebut the findings of Mr. Mantis. Keeping in mind that the rebuttal was as to a survey offered to show acquired distinctiveness, Dr. Ross' main objection to the Mantis survey is that although Mr. Mantis said that he conducted the survey for the purpose of establishing secondary meaning, Mr. Mantis's methodology actually analyzes genericness. Plaintiff specifically argues that the Mantis survey was conducted in the manner of a Teflon-style survey, in that participants were asked whether they associate each term with one company or with more than one company. In this regard, during the initial mini-course, participants were specifically instructed as to the differences between "brand" and "common" names: Some names are brand names. A brand name refers to a product associated with one particular company. Other names are common names. A common name refers to a type of product associated with more than one company.

As such, participants were told that if they associated a term with "one particular company" then it is a "brand name," and vice-versa. With this instruction given to all participants in the survey, we find it logical to consider all those who said they associated the term "PRETZEL CRISPS" with "one particular company" thus also found the term "PRETZEL CRISPS" to be a "brand name" rather than a "common name," and that all those who said they associated the term "PRETZEL CRISPS" with "more than one company" thus also found the term "PRETZEL CRISPS" to be a "common name" rather than a "brand name." In this regard, only 38.7% of participants, which is rather less than 50%, found the term to be a brand name.

Accordingly, we find that although the Mantis survey was conducted and offered for the purpose of showing secondary meaning, if we had considered the other two surveys on the question of genericness, the Mantis survey should also have been considered on the issue of genericness. Since substantially less than half of the Mantis survey respondents associated the term "PRETZEL CRISPS" with a single source, this survey weighs in favor of finding genericness. We note, in this regard, that even if we were to split the 13.5% percent of "don't know" responses, as suggested by Defendant with regard to the Simonson survey, then adding 6.75% to each of the "only one company" and "more than one company" tallies, we still have less than a majority who associate the term with one company, and more than half who associate the term with more than one company, and so we have the same result.

Snyder 's Lance, Inc. v. Frito-Lay North America, Inc., 542 F.Supp.3d 371, 402-03 (2021) (quoting Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 124 U.S.P.Q.2d 1184, 1191-1201(TTAB 2017)).

Corpus linguistics evidence of genericism?

The edited-down version of Synder's Lance appearing above does not include the court's detailed review of the plaintiff's own attempts to read and classify each of the thousands of media, Google, and social media references to "pretzel crisps." In essence, the plaintiff had attempted to develop "corpus linguistics evidence" (empirical data derived from very large, systematic collections of human-authored texts, or corpora) to show non-genericness. But the plaintiff used non-attorney, administrative employees of its law firm to develop this evidence. The court was highly critical of this effort on the ground, among others, that the law firm employees did not explain how they reached their decisions and often failed to record how they classified particular uses. An emerging mode of genericism evidence seeks to overcome these kinds of objections to corpus linguistics evidence by employing credentialed linguists to prepare reports that classify all relevant uses of a term in a corpus. See James A. Heilpern et al., Going Generic: A Linguistics Approach to Genericide in Trademark Law, 50 BYU L. REV. 81 (2024). For an example of the use of machine-learning methods to classify corpus usages, see Barton Beebe, Sibo Ma, & Julian Nyarko, "Benchmarking Trademark Genericide" (working paper, June 14, 2026). 8. Is WINDOWS for a computer operating system generic? On December 20, 2011, Microsoft filed suit against Lindows.com ("Lindows") alleging that Lindows' mark LINDOWS for a Linuxbased operating system infringed Microsoft's WINDOWS mark. Lindows argued that WINDOWS was generic at the time that Microsoft first began to use it in 1985. In Microsoft Corp. v. Lindows.com, Inc., No. 01 Civ. 2115C, 2002WL 31499324 (W.D.Wash., Mar. 15, 2002), the district court denied Microsoft's motion for a preliminary injunction, finding that there were "serious questions regarding whether Windows is a non-generic name and thus eligible for the protections of federal trademark law." Id. at *18. The case eventually settled-with Microsoft agreeing to pay Lindows $20 million to change its name (to Linspire) and cease using the LINDOWS mark on any of its products.

After Booking.com, would a secondary meaning survey showing that an otherwise generic term has substantial secondary meaning be enough to justify a finding that the mark is not generic? For example, if a litigant can produce a survey showing that 60% of consumers believe the term WINDOWS for computer operating systems is used by only one company, should that justify a finding of distinctiveness? 9. Usage policies. Owners of very well-known marks are especially wary of their marks' falling prey to genericide through widespread generic usage. They typically develop and seek to enforce strict policies on how their marks are used. See, e.g., Google, Rules for proper usage, http://www.google.com/permissions/trademark/rules.html ("Use a generic term following the trademark, for example: GOOGLE search engine, Google search, GOOGLE web search"; "Use the trademark only as an adjective, never as a noun or verb, and never in the plural or possessive form."; "If you do not capitalize the entire mark, always spell and capitalize the trademark exactly as they are shown in the Google Trademarks and Suggested Accepted Generic Terms."). 10. Source-denotative in American English, but generic elsewhere? Sheepskin boots with a tanned outer surface, fleece interior, and synthetic soles are generically known as "ugg boots" or "uggs" in Australia and New Zealand, where they were originally developed and where a variety of companies use the term "ugg" to describe the boots they manufacture. In the United States, by contrast, UGG is a registered trademark for such boots, owned by Deckers Outdoor Corp. (U. S. Trademark Reg. No. 4,234,396, Oct. 30, 2012). When an Australian company sought to sell what it called "ugg boots" in the United States, Deckers sued. The Australian company argued that the term was generic. It lost. In granting summary judgment to Deckers on the issue, the court explained:

Australian Leather has evidence that ugg is generic in Australia, but there is no evidence that Americans familiar with Australian usage (or Australian visitors to the United States) would be misled into thinking that there is only one brand of ugg-style sheepskin boots available in this country. Australian Leather needed to come forward with some evidence that would allow a jury to conclude that the term ugg has a generic meaning to buyers in the United States; its Australian and surf-shop evidence does not suffice. Corp. v. Australian Leather Pty. Ltd., 340 F. Supp. 3d 706, 716 (N.D. Ill. 2018).

For an interesting comparison, the Swiss and French associations representing the makers of Gruyère cheese filed in 2015 an application at the PTO to register the term GRUYERE (without the accent) as a certification mark. GRUYÈRE is a protected geographic indication in the European Union and Switzerland. Various American dairy interests opposed the registration. The TTAB refused registration on the ground that the term was generic. It found that American consumers "understand the term 'gruyere' as a designation that primarily refers to a category within the genus of cheese that can come from anywhere." Int'l Dairy Foods Ass'n v. Interprofession Du Gruyere, 2020 TTAB LEXIS 268, *82, 2020 U.S.P.Q.2D 10892 (TTAB August 5, 2020).

What about "Coke" in the American South? See Valerie Fraser Luesse, Why Southerners Refer to All Soft Drinks as 'Coke,' SOUTHERN LIVING, June 22, 2025 ("Native Texans (like most native Southerners) call all soft drinks 'coke'-a generic use of Coke.") Should regional genericness make any difference? 11. Can a color be generic? In Milwaukee Electric Tool Corp. v. Freud America, Inc., Cancellation Nos. 92,059,634 & 92,059,637 (TTAB Dec. 2, 2019) [precedential], the TTAB found that the color red was generic when covering the surface of saw blades:

This evidence overwhelmingly demonstrates that the color red on saw blades is so common in the industry that it cannot identify a single source for saw blades for power woodworking machines or saw blades for reciprocating power saws. What is more, because the evidence establishes that the color red was widely used by others at the time Freud filed the underlying applications for each of its subject registrations and third-party use continues to the present day, the color red was generic for power saw blades when Freud applied for both of its marks and remains so now.

Id. at *67. See also In re PT Medisafe Techs., 134 F.4th 1368(Fed. Cir. 2025) (finding the color dark green to be generic for medical gloves).

Most commentators would likely agree with the proposition that "[g]enericness seems . . . to be the wrong pigeonhole for a proposed color mark." John L. Welch, Precedential No. 37: TTAB Rules that the Color Red is Generic for Saw Blades, THE TTABLOG, Dec. 9, 2019. But what other options are available in trademark doctrine to deny protection to such marks? 12. Can a product shape be generic? In In re Jasmin Larian, LLC, 2022 TTAB LEXIS 99 (TTAB Jan. 19, 2022) [precedential], the applicant sought to register as a trademark the configuration of its "Ark" handbag, shown below. The TTAB held that the configuration had long since become a commonplace design originating from multiple sources and was thus generic. It reasoned: "In the context of product design, genericness may be found where the design is so common in the industry that it cannot be said to identify a particular source. " Id. at *8. See also Deckers Outdoor Corp. v. Last Brand, Inc., No. 23 Civ. 04850, 2025WL 2822685, at *4 (N.D. Cal. Oct. 2, 2025) (finding certain Ugg boot designs to be generic).

In recent years, trademark applicants have increasingly sought to register cultural memes or other commonplace slogans as trademarks for various merchandise. The PTO has rejected such applications on the ground that the applied-for marks are not perceived by consumers as designations of source. See, e.g., In re Texas With Love, LLC, Serial No. 87793802 (TTAB October 29, 2020) [precedential] (refusing to register TEXAS LOVE for "hats, shirts" on ground that because the phrase "only serves as an expression of a concept or sentiment, and is widely used by third parties, it would not be perceived as an indicator of source in the context of Applicant's identified goods."); In re Gillard, Serial No. 87469115 (TTAB Jan. 11, 2019) (not citable as precedent) (refusing application of one John Gillard to register #COVFEFE on ground that "because hashtags are commonly employed to facilitate categorization and searching of topics of public discussion, and the record makes it clear that #COVFEFE has served that purpose in promoting discussion of the mystery word in the President's tweet, the public will not understand #COVFEFE to identify one, and only one, source of clothing, and to recognize Applicant as that source, when it appears on Applicant's goods"); PTO Office Action, U.S. Application Serial No. 86,506,015, Mar. 25, 2015 (refusing registration of JE SUIS CHARLIE for various goods on ground that " [b]ecause consumers are accustomed to seeing this slogan or motto commonly used in everyday speech by many different sources, the public will not perceive the motto or slogan as a trademark that identifies the source of applicant's goods but rather only as conveying an informational message"); PTO Office Action, U.S. Application No. 88579771, Sept. 11, 2019 (refusing basketball player LeBron James's application to register TACO TUESDAY in connection with podcasting and other related goods and services); PTO Office Action, U.S. Application No. 86,479,784, Mar. 4, 2015 (refusing registration of I CAN'T BREATHE for clothing). In the opinion below, the Federal Circuit affirmed the TTAB's refusal to register the mark EVERYBODY VS RACISM. In failure to function analysis, are courts essentially engaging in a secondary meaning analysis or are their concerns broader?

In re GO & Associates, LLC 90 F.4th 1354 (Fed. Cir. 2024) Lourie, Circuit Judge.

[1] GO & Associates, LLC ("GO") appeals from a decision of the United States Trademark Trial and Appeal Board ("the Board") affirming the examining attorney's final refusal to register GO's applied-for mark: "EVERYBODY VS RACISM." In re GO & Assocs., LLC, No. 88944728, 2022WL 1421542 (T.T.A.B. Apr. 20, 2022) ("Decision"). Because substantial evidence supports the Board's conclusion, we affirm. BACKGROUND [2] On June 2, 2020, GO filed an application seeking registration on the principal register of "EVERYBODY VS RACISM" in standard characters. It identified the goods and services as:

T-shirts, hoodies as clothing, tops as clothing, bottoms as clothing, and head wear; and

Promoting public interest and awareness of the need for racial reconciliation and encouraging people to know their neighbor and then affect change in their own sphere of influence. [3] In a non-final office action, the examining attorney refused to register the mark because it failed to function as a source identifier for GO's goods and services. Rather, the examining attorney observed, the mark was "an informational social, political, religious, or similar kind of message that merely conveys support of, admiration for, or affiliation with the ideals conveyed by the message." As support for the refusal, the examiner cited dozens of examples of the mark being used in informational (rather than source-identifying) ways. For example, the examiner provided evidence that the mark had been used by referees in the National Basketball Association; in titles of rap songs, podcasts, church sermons, and YouTube videos; and on various articles of clothing. See J.A. at 43-96 (cited evidence).

[4] GO responded by arguing that its uses of the mark were source-identifying, while those relied upon by the examining attorney were "merely ornamental third party uses of EVERYBODY VS RACISM on clothing," which could not function as a trademark. Id. at 106. It also argued that the third-party uses of the mark in speech, rap songs, podcasts, church sermons, and the like did not render the mark incapable of functioning as a trademark. To support its position, GO submitted search engine optimization evidence, allegedly showing that the mark was "almost never used or searched" before GO began using it in May 2020, and that GO's successful policing of the mark throughout the summer of 2020 led to "a significant drop in searches." Id. at 106-08.

[5] But the examining attorney was not persuaded and concluded that competitors' ornamental uses of the mark only reinforced the fact that consumers would likely view the mark "as a sentiment rather than a source." Id. at 183 ("The evidence showing the wearing of shirts with 'EVERYBODY VS RACISM' by NBA referees during their protest walk out shows that they wore the shirts to convey meaning, and that meaning was understood by those who saw the referees."). The examining attorney also observed that GO's search engine evidence showed that public use of the mark aligned with the general timeline of the "heated antiracism protests throughout the nation in the wake of the George Floyd killing." Id. That evidence therefore did little to show that the public perceived the mark as a source identifier. Because granting GO the right to exclude others from using the mark to promote racial reconciliation "would seriously impede the heartfelt need of citizens of the country to express that everybody should be against racism," the examining attorney finally refused registrability of the mark. Id.

[6] GO appealed to the Board. Finding that the record as a whole "show[ed] wide use of the proposed mark in a non-trademark manner to consistently convey an informational, antiracist message to the public," as opposed to a source identifier of GO's goods and services, the Board affirmed the examiner's refusal to register the mark. Decision at *7, *10.

[7] GO appeals from the Board's decision. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(B) and 15 U.S.C. § 1071(a).

[8] The Lanham Act conditions the registrability of any mark on its ability to distinguish an applicant's goods and services from those of others. See 15 U.S.C. § § 1052, 1053. In other words, it is a threshold requirement of registrability that the mark "identify and distinguish" the goods and services of the applicant from those of others, as well as "indicate the source" of those goods and services. Id. § 1127;Jack Daniel's Props., Inc. v. VIP Prods. LLC, 599 U.S. 140, 146 (2023) ("[A] trademark is not a trademark unless it identifies a product's source (this is a Nike) and distinguishes that source from others (not any other sneaker brand)."); Abitron Austria GmbH v. Hetronic Int'l, Inc., 600 U.S. 412, 429 (2023) (Jackson, J., concurring) ("It is clear beyond cavil that what makes a trademark a trademark under the Lanham Act is its source-identifying function.").

[9] As we recently observed, "whether a proposed mark is a source identifier typically arises before us in the context of whether the proposed mark is descriptive under 15 U.S.C. § 1052(e)." In re Vox Populi Registry Ltd., 25 F.4th 1348, 1351(Fed. Cir. 2022) (collecting cases). But "the source identifier requirement is broader than just whether a proposed mark is generic or descriptive," and typically focuses on how the mark is used in the marketplace and how it is perceived by consumers. See id.; see also In re Light, 662 F. App'x 929, 934-35 (Fed. Cir. 2016) (affirming Board's refusal to register a mark containing over 570 words arranged in column format because the "sheer number and visual display" of the words made it "significantly more difficult" for the public to perceive the mark as a unitary trademark (internal quotation marks and citation omitted)); D.C. One Wholesaler, Inc. v. Chien, 120 U.S.P.Q.2d 1710 (T.T.A.B. 2016) (refusing to register "I ♥ DC" for use on apparel and souvenirs because it "would be perceived by purchasers and prospective purchasers as an expression of enthusiasm for the city of Washington, DC," as opposed to an indicator of the source of the goods on which it appeared). If the nature of a proposed mark would not be perceived by consumers as identifying the source of a good or service, it is not registrable. See Jack Daniel's, 599 U.S. at 145. As relevant here, the PTO enforces the source-identifying statutory requirement, in part, by prohibiting the registrability of what it calls "informational matter." See TMEP § 1202.04(b) (precluding from trademark protection "informational matter," such as slogans, terms, and phrases used by the public to convey familiar sentiments, because consumers are unlikely to "perceive the matter as a trademark or service mark for any goods and services.").

[10] Whether or not a mark functions as a source identifier is a question of fact that we review for substantial evidence. Vox Populi, 25 F.4th at 1351-52. A finding is supported by substantial evidence if a reasonable mind might accept the evidence as adequate to support the finding. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229, 59 S.Ct. 206, 83 L.Ed. 126 (1938). Applying that standard to the case before us, we conclude that the Board's determination that "EVERYBODY VS RACISM" does not function as a source identifier for GO's products (i.e., tote bags and apparel) or services (i.e., promoting awareness of the need for racial reconciliation) was supported by substantial evidence.

[11] In reaching its conclusion, the Board properly considered the evidence of record, which included not only the third-party evidence identified by the examining attorney, but also GO's specimens and other evidence of its own use of the mark. See Decision at *3-4. Based on the totality of evidence, the Board agreed with the examining attorney that the third-party uses of the mark "show[ ] that 'everybody vs racism' is commonly used in an informational and ornamental manner on clothing items, tote bags, and other retail items sold by thirdparties to convey an anti-racist sentiment." Id. at *6. The Board also found that the evidence showed that the mark frequently appeared "in opinion pieces, in music, podcasts, and YouTube videos, and by organizations (websites) that support efforts to eradicate racism." Id. Considering the diversity and breadth of third-party uses, the Board found that GO's own specimens and uses were insufficient to render the mark source-identifying. Id. at *7 ("As to [GO's] services, consumers would perceive EVERYBODY VS RACISM as merely an informational statement against racism rather than a service mark."). And significantly, as the Board observed, GO did not argue that any of the dozens of third-party uses of "EVERYBODY VS RACISM" were trademark uses attributable to GO-a finding GO does not challenge on appeal. Id.;cf. In re Nat'l Ass'n to Advance Black Birth, No. 90581377, 2022WL 4385036, at *6 (T.T.A.B. Aug. 23, 2022) ("The record indicates that the mark, as used on the specimens, would be associated with Applicant, the National Association to Advance Black Birth, by itself, even though it may also be used by third parties." (emphasis added)).

unlikely to associate the mark "EVERYBODY VS RACISM" as a source identifier of GO's goods and services, we affirm.

[17] For the foregoing reasons, we affirm the Board's refusal to register "EVERYBODY VS RACISM."

In In re Lizzo, LLC, Serial Nos. 88466264 and88466281, 2023 TTAB LEXIS 22 (TTAB Feb. 2, 2023), the trademark registration applicant is the trademark holding company owned by the famous artist known as Lizzo. It sought to register the mark 100% THAT BITCH, which is a lyrical phrase in one of Lizzo's songs entitled "Truth Hurts." The applicant's submitted specimen of use is shown below.

The Examining Attorney refused registration on failure to function grounds, determining that the asserted mark "is a commonplace expression widely used by a variety of sources to convey an ordinary, familiar, well-recognized sentiment." Id. at *2. On appeal, the Trademark Trial and Appeal Board reversed. Its opinion is lengthy with numerous images and will reward a full reading. Excerpted here is the core of the Board's reasoning: {T}he evidence here does not demonstrate that Applicant's proposed mark is used in general parlance or that it conveys a common social, political, patriotic, religious or other informational message such as DRIVE SAFELY, THINK GREEN or WATCH THAT CHILD. Applicant and the Examining Attorney agree that the proposed mark conveys a feeling of female strength, empowerment and independence. But more importantly, considering the entirety of the record, we find that most consumers would perceive 100% THAT BITCH used on the goods in the application as associated with Lizzo rather than as a commonplace expression.

{T}he evidence in these appeals establishes that in 2017, the musical artist Lizzo encountered "I just took a DNA test, turns out I'm 100% that bitch" as a Twitter meme from the same year. The message in the meme resonated with her, and she used the meme as a lyric in her 2017 song "Truth Hurts," which went on to become a Billboard Number 1 hit single. Lizzo did not originate the expression she encountered as a Twitter meme, and subsequently granted a writing credit for her song "Truth Hurts" to its originator. See Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, at *9 (TTAB 2020) ("[T]rademark rights are not gained by creating a mark, but through use of the mark."). Nonetheless, lyrics from songs are more likely to be attributed to the artists who sing, rap or otherwise utter them, rather than the songwriters, who may be different individuals receiving varying degrees of writing credit. The evidence of record here indicates that Lizzo and her hit song "Truth Hurts" popularized the lyric and elevated 100% THAT BITCH from what may have been a lesser known phrase (the evidence of record only points to use of that phrase from the 2017 meme onward) to more memorable status.

All of the evidence of record regarding third-party use of 100% THAT BITCH is from 2017 or later. The Urban Dictionary entry for the term is dated June 12, 2019. Thus, the evidence is contemporaneous with or subsequent to the release of Lizzo's hit single "Truth Hurts." There is no evidence of use of the term 100% THAT BITCH prior to 2017, so we have no indication that the proposed mark already was "widely used, over a long period of time and by a large number of merchandisers" before Lizzo popularized it. See D.C. One Wholesaler, Inc., 120 USPQ2d at 1716. And, as noted above, much of the evidence of third-party use specifically seeks to associate the goods emblazoned with 100% THAT BITCH with Lizzo, her music and the lyrics from "Truth Hurts." In addition, evidence of record indicates that third-party retailers responding to takedown notices from Applicant's counsel recognize that 100% THAT BITCH is associated with Lizzo and her music. 29 . . . . 29 . . . . The third parties seeking to associate their use of the phrase 100% THAT BITCH with Lizzo suggests that, for purposes of this failure to function refusal, the phrase currently is associated with Lizzo. We observe, nonetheless, that proliferation of unauthorized third-party use risks the mark's loss of strength as an exclusive source indicator, or even abandonment. See, e.g., Nobelle.com, LLC v. Qwest Commc'ns Int'l, Inc., 66 USPQ2d 1300, 1306-07 (TTAB 2003).

The record as a whole does not establish that the proposed mark is a common expression in such widespread use that it fails to function as a mark for the goods identified in this application.

In re Lizzo, LLC, Serial Nos. 88466264 and88466281, 2023 TTAB LEXIS 22, at *22-25 (TTAB Feb. 2, 2023).

1. For more on the "failure to function as a mark" bar to protectability, see Alexandra J. Roberts, Trademark Failure to Function, 104 IOWA L. REV. 1977(2019). See also Lucas Daniel Cuatrecasas, Failure to Function and Trademark Law's Outermost Bound, 96 N.Y.U. L. REV. 1312 (2021) (describing numerous inconsistencies in TTAB failure to function case law and urging that failure to function doctrine be replaced by aesthetic functionality doctrine to focus not on consumer perception, but on whether exclusive rights in the asserted mark "would significant hinder competition in the relevant market"); Lisa P. Ramsey, Using Failure to Function Doctrine to Protect Free Speech and Competition in Trademark Law, 104 IOWA L. REV. ONLINE 70, 89 (2020) ("Allowing trademark registration and protection of puns, political and social messages, culturally important terms or images, and other common words or designs for expressive merchandise can chill and suppress the speech of competing manufacturers, print-on-demand companies, and others who want to display this language on products sold to people who desire these goods because of the ideas they convey.").

2. Can survey evidence overcome a failure to function refusal? What survey format would be appropriate? See R. Charles Henn Jr., Survey Methodologies to Overcome "Failure to Function" Refusals in the U.S. Patent and Trademark Office, 114 TRADEMARK REP. 560 (2024).

e. Further Examples of Abercrombie Classifications

Provided here are numerous examples of courts' classification of trademarks' distinctiveness along the Abercrombie spectrum. You are very strongly encouraged to determine your own view on the appropriate classification before you consult how the court ruled. Do any of the following classifications strike you as incorrect?

• TIDE for laundry detergent. See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 210 (2000) (giving TIDE for laundry detergent as an example of a suggestive mark).

• SERIAL for "entertainment in the nature of ongoing audio program featuring investigative reporting, interviews, and documentary storytelling." See In re Serial Podcast, LLC, 126 U.S.P.Q.2d 1061 (TTAB 2018) (finding the applied-for standard character mark to be generic but finding the applied-for logos incorporating the term to possess acquired distinctiveness and qualify for protection)

• THE STORK CLUB for a restaurant. See Stork Restaurant v. Sahati, 166 F.2d 348, 355 (9th Cir. 1948) (finding the stork club to be arbitrary as to a restaurant and reasoning that "[i]t is in no way descriptive of the appellant's night club, for in its primary significance it would denote a club for storks. Nor is it likely that the sophisticates who are its most publicized customers are particularly interested in the stork.").

• GOOGLE for internet search service. See GILSON § 2.04 (giving GOOGLE for search engine as an example of a fanciful mark).

• SNAKELIGHT for a light with a flexible neck. See Black & Decker Corp. v. Dunsford, 944 F. Supp. 220 (S.D.N.Y. 1996) (finding the mark to be descriptive and reasoning that "Snakelight' is just what it says: a 'snake-like' light. In this context, the word 'snake' functions as an adjective, modifying the principal term, the generic noun 'light.' Taken as a whole, the name conveys the 'immediate idea' of the 'characteristics' of the product [citing Abercrombie]).

• CLOROX for bleach . See Clorox Chemical Co. v. Chlorit Mfg. Corp., 25 F. Supp. 702, 705 (D.N.Y. 1938) ("'Clorox' is a fanciful word, arbitrarily selected in no wise describes its ingredients.").

• STREETWISE for street maps. See Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 744 (2d Cir. 1998) ("The district court ranked the Streetwise mark as suggestive, meaning that the term 'suggested' the features of the product and required the purchaser to use his or her imagination to figure out the nature of the product. We agree.").

• SUPREME for vodka. See Supreme Wine Co. v. American Distilling Co., 310 F.2d 888, 889 (2d Cir. 1962) (finding SUPREME for vodka to be descriptive on the ground that "[m]erely laudatory words, such as 'best', 'outstanding', or 'supreme' cannot of their own force indicate the source or origin of the labeled goods").

• PLAYBOY for a men's magazine. See Playboy Enters., Inc. v. Chuckleberry Pub., Inc., 687 F.2d 563, 566-67 (2d. Cir. 1982) (finding the mark to be suggestive and reasoning that "Playboy is defined in the Random House Dictionary of the English Language (unabridged ed. 1966) as 'a wealthy, carefree man who devotes most of his time to leisure, self-amusement, and hedonistic pleasures, conventionally frequenting parties and night clubs, romancing a rapid succession of attractive young women, and racing speedboats and sports cars.' Although the word may signify the aspirations of PLAYBOY's readership, it does not describe the product or its contents.").

• NO NAME for meat and other food products. See J&B Wholesale Distributing, Inc. v. Redux Beverages, LLC, 85 U.S.P.Q.2d 1623, 1626 (D. Minn. 2007) ("[S]tanding alone, 'No Name' does not bear any relation to the product-that is it does not tell the consumer anything about the product. The Court thus finds that 'No Name' is an arbitrary mark that is entitled to protection.").

• BAIKALSKAYA for vodka produced in the Lake Baikal region of Russia, where "Baikalskaya" means "from Baikal" in Russian. See In re Joint-Stock Co. "Baik," 80 USPQ2d 1305 (TTAB 2006) (finding BAIKALSKAYA for vodka to be primarily geographically descriptive).

• KODAK for photographic film. See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 210 (2000) (giving Kodak for film as an example of a fanciful mark).

• GLOW for fragrance, shower gel, and body lotion products. See Glow Indus., Inc. v. Lopez, 252 F. Supp. 2d 962, 978 (C.D. Cal. 2002) (finding GLOW suggestive as to perfume and reasoning that "[t]he mark does not directly describe the attributes of Glow, Inc.'s perfume. Indeed, words other than the GLOW mark are used on the packaging to convey the fact that the perfume is a sandalwood scent. The mark thus appears to refer suggestively to the positive feeling one will achieve by using the product."); id. at 979 (finding GLOW suggestive as to shower gel and body lotion and reasoning that "'Glow' is not descriptive of the qualities or characteristics of shower gels or body lotions. Indeed, one who hears the word does not immediately think of such products. Rather, some amount of association is required to link the concept of glowing skin to use of a particular gel or lotion.").

• BRICK OVEN PIZZA for frozen pizza. See Schwan's IP, LLC v. Kraft Pizza Co., 460 F.3d 971 (8th Cir. 2006) (citing industry usage, media usage, and PTO rulings to find the term generic for pizza that is or appears to be baked in a brick oven).

• CITIBANK for banking services. See Citibank, N.A. v. Citibanc Group, Inc., 724 F.2d 1540, 222 U.S.P.Q. 292 (11th Cir. 1984) (approving of the district court's finding that CITIBANK is suggestive for banking services).

• ODOL for mouthwash. See In re Odol Chemical Corp., 150 U.S.P.Q. 827 (TTAB 1966) (finding ODOL for mouthwash to be fanciful).

• MORNINGSIDE for financial services. See Morningside Group Ltd. v. Morningside Capital Group L.L.C., 182 F.3d 133 (2d Cir. 1999) (finding MORNINGSIDE to be arbitrary as to financial services).

• EAST END for vodka distilled in the East End of Houston, Texas. See In re Buffalo Bayou Distilleries, LLC, Serial No. 86,583,137 (TTAB July 30, 2018) (not citable as precedent) ("In this case, the record reflects that 'East End' can refer to numerous geographic locations, suggesting that its primary significance is not referring to the area in Houston, Texas. Also, the quantity and nature of the evidence regarding the East End of Houston does not establish that it is generally known to U.S. consumers. . . . The first prong of the inquiry under Section 2(e) (2), that the primary significance of the term in the mark sought to be registered is the name of a place generally known to the public, is not satisfied.").

• L.L.C. v. Netfire, Inc., 310 F. Supp. 2d 786 (N.D. Tex. 2003) (finding without analysis the mark MARCH MADNESS to be descriptive of an annual basketball tournament).

• SPEEDY for bail bond services. See Lederman Bonding Co. v. Sweetalia, 83 U.S.P.Q.2d 1660, 2006WL 2949290, at *3 (D. Colo. 2006) (finding SPEEDY for bail bond services to be descriptive "because it describes the quality of the bail bond services offered").

• BEAR for cold-weather outerwear. See Bear U. S.A., Inc. v. A.J. Sheepskin & Leather Outerwear, Inc., 909 F.Supp. 896, 904 (S.D.N.Y. 1995) ("The word 'bear, especially in conjunction with the image of a polar bear, is connected with the concept of cold weather and protection from the elements. It suggests that the type of outerwear and boots sold by plaintiff offer the sort of protection afforded by bears' skins. The imagination and thought process involved in this mental association supports the conclusion that plaintiff's bear marks are suggestive, particularly as used in connection with boots and cold weather outwear.").

• QUANTUM for a health club. See Quantum Fitness Corp. v. Quantum Lifestyle Ctrs., 83 F. Supp. 2d 810, 820 (S.D. Tex. 1999) (finding QUANTUM to be arbitrary for health club and reasoning, in part, that "[t]he absence of a connection between the term 'quantum' and the plaintiff's products is evidenced by the frequent use of the word by third parties in a variety of different, unrelated lines of business").

• VIAGRA for an erectile dysfunction drug. See Pfizer Inc. v. Sachs, 652 F. Supp. 2d 512, 520 (S.D.N.Y. 2009) ("The Viagra mark is fanciful, because the word 'Viagra' was coined specifically for purposes of this trademark and has no meaning outside this context.").

• Each of 928, 924, 944, 911, 911S, and 911SC for automobiles. See Porsche Cars N. Am., Inc. v. Lloyd Design Corp., 2002U.S. Dist. LEXIS 9612 (N.D. Ga. Mar. 26, 2002) ("[M]ost courts have held that model numbers, whether numbers or alphanumeric designations, are generally considered descriptive for the purposes of trademark protection. Although they may be 'arbitrary' in the sense ' that they do not refer directly to a characteristic of the products, model numbers are generally intended merely to distinguish one specific product from another by a particular source, and are not intended to distinguish products from totally different sources.").

The Distinctiveness Analysis of Nonverbal Marks

We have focused so far on the analysis of the distinctiveness of word marks. But as we saw at the beginning of this Part, contemporary trademark law offers protection to far more than words and phrases. It protects image marks, sound marks, scent marks, and perhaps someday it will protect flavor or taste marks. See In re N.V. Organon, 79 U.S.P.Q.2d 1639, 2006WL 1723556 (TTAB 2006) (denying registration to a mark consisting of "an orange flavor" for "pharmaceuticals for human use, namely, antidepressants in quick-dissolving tablets and pills" on the grounds that the mark lacked distinctiveness and was functional). Trademark law also protects "trade dress," which may consist of a product's packaging or configuration as well as nearly any other aspect of the product or service.

Over the past two decades, courts have struggled with how to analyze the distinctiveness of nonverbal marks, none more so than the Supreme Court. We first consider here the relevant Supreme Court case law on the issue. We then turn to lower court attempts to apply the doctrine developed in that case law.

a. Supreme Court Approaches to the Distinctiveness Analysis of Nonverbal Marks

The Supreme Court has engaged the distinctiveness analysis of nonverbal marks in a series of three opinions:

• Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (analyzing the sourcedistinctiveness of a restaurant interior),

• Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995) (analyzing the sourcedistinctiveness of a single color), and

• Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) (analyzing the sourcedistinctiveness of an apparel design).

In Two Pesos, the Court held that inherently distinctive trade dress could be protected without a showing of secondary meaning. In other words, and contrary to lower court case law primarily from the Second Circuit, the Court held that there was no special rule requiring that trade dress always show secondary meaning. In Qualitex, the Court held that a single color could qualify for trademark protection (provided that it possessed acquired distinctiveness of source). Finally, in Wal-Mart, the Court arguably rewrote Two Pesos. It described the universe of trade dress as consisting of at least two categories: product packaging trade dress and product configuration trade dress. Product packaging trade dress was deemed capable of being inherently distinctive and when it was, it did not require a showing of secondary meaning to receive protection. Product configuration trade dress, however, could never be inherently distinctive and must always be shown to have acquired distinctiveness in order to qualify for protection.

One area of distinctiveness doctrine that the Court has not explicitly addressed is how to analyze the inherent distinctiveness of product packaging. Should courts use the Abercrombie spectrum or some other scheme of classification? As we will see below, there appears to be a circuit split on this issue. ______________________________________________________________________________ exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors. The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme. " 932 F.2d 1113" 932 F.2d , 1117" 932 F.2d (CA5 1991)).

Two Pesos, 505 U.S. at 765. The Court apparently accepted Taco Cabana's broad definition of its trade dress. In a footnote, Justice White's opinion for the Court explained:

The District Court instructed the jury: "'[T]rade dress' is the total image of the business. Taco Cabana's trade dress may include the shape and general appearance of the exterior of the restaurant, the identifying sign, the interior kitchen floor plan, the decor, the menu, the equipment used to serve food, the servers' uniforms and other features reflecting on the total image of the restaurant." 1 App. 83-84. The Court of Appeals accepted this definition and quoted from Blue Bell Bio-Medical v. Cin-Bad, Inc., 864 F.2d 1253, 1256(CA5 1989): "The 'trade dress' of a product is essentially its total image and overall appearance." See 932 F.2d 1113, 1118(CA5 1991). It "involves the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques." John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (CA11 1983). Restatement (Third) of Unfair Competition § 16, Comment a (Tent.Draft No. 2, Mar. 23, 1990).

Two Pesos substantially copied Taco Cabana's restaurant design, though with different colors. Taco Cabana sued under Lanham Act § 43(a) and the case went to a jury. The Texas jury found that Taco Cabana's trade dress was inherently distinctive but that it "has not acquired a secondary meaning in the Texas market." Id. at 766 (footnote omitted). These jury findings presented something of a paradox (or were simply nonsensical): how could a trademark that has for several years been used in the marketplace possess inherent distinctiveness of source but not yet have developed any additional acquired distinctiveness of source? The very fact that the mark over the years had not developed any additional acquired distinctiveness could be understood to indicate instead that the mark was not inherently distinctive in the first place.

On appeal to the Fifth Circuit, Two Pesos argued that "a finding of no secondary meaning contradicted a finding of inherent distinctiveness." Id. at 767. The Fifth Circuit disagreed and affirmed the jury findings. Two Pesos then sought certiorari to reverse the Fifth Circuit and adopt instead Second Circuit doctrine of the time that 43(a) protects unregistered trade dress only if secondary meaning is shown. Id. Recognizing a circuit split on the issue, the Court "granted certiorari to resolve the conflict among the Courts of Appeals on the question whether trade dress that is inherently distinctive is protectible under § 43(a) without a showing that it has acquired secondary meaning." Id.

In ruling in favor of Taco Cabana and the protectability of its trade dress, the Court stated that "[t]here is no persuasive reason to apply to trade dress a general requirement of

Quoted in Thomas D. Drescher, The Transformation and Evolution of Trademarks-From Signals to Symbols toMyth, 82 TRADEMARK REP. 301, 301-02 (1992).

See Interbrand, Best Global Brands, https://interbrand.com/best-global-brands/.

The Coca-Cola Company, Balance Sheet, https://investors.coca-colacompany.com/financialinformation.

Owners also carved identifying marks into the beaks of swans they were allowed to own by royal privilege. See FRANK I. SCHECHTER, THE HISTORICAL FOUNDATIONS OF THE LAW RELATING TOTRADE- MARKS 35-37 (1925).

Not coincidentally, these mandatory marks also made it possible for the Crown to regulate conduct, particularly in the printing industry, where the Crown policed heresy and piracy. See id. at 63-77.28 There are some examples in the cutlers' trade of the government treating marks as property that could be passed by will and of owners advertising to suppress piracy.

DANIEL J. BOORSTIN, AMERICANS: THEDEMOCRATIC EXPERIENCE 145 (1974).

See Jerome Gilson & Anne Gilson LaLonde, Cinnamon Buns, Marching Ducks, and Cherry-Scented Racecar Exhaust: Protecting Nontraditional Trademarks, 95 TRADEMARK REP. 773 (2005).

See Christina S. Monteiro, A Nontraditional Per-Spectrum: The Touch of Trademarks, INTA BULL.,June 15, 2010, at 4.

To take a familiar example "Ivory" would be generic when used to describe a product made from the tusks of elephants but arbitrary as applied to soap.

See, e.g., Haughton Elevator Co. v. Seeberger,

U.S.P.Q.80 (1950), in which the coined word 'Escalator', originally fanciful, or at the very least suggestive, was held to have become generic.

We note that, in contrast with its position in this case, in other litigation NVE has asserted that its own mark, "6 Hour POWER," is an "inherently distinctive" mark. See Complaint at ¶ 12, N.V.E.,Inc. v. N2G Distrib., Inc. & Alpha Performance Labs, No.

2:08-cv-01824 (D.N.J. Apr.14, 2008) ("The 6 HOUR POWER mark distinguishes NVE as the source of these products, is inherently distinctive, and has also become distinctive through the acquisition of secondary meaning." (emphasis added)).

The distinction between certification and collective marks is sometimes very fine, leading McCarthy to lament that "[t]he problem with collective trademarks and service marks is that they are almost indistinguishable from certification marks." MCCARTHY § 19:99. McCarthy suggests that one advantage (or disadvantage) of collective marks is that they offer a way to avoid the strict requirements for the operation of certification marks established in Lanham Act § 14(5).

To be fair, recall that, in a previous application, TBL tried and failed to register the wheat-yellow color. But we must focus on the separate application before us, which did not claim the color.

In addition, customers may have bought the boots because they liked other features that were not part of TBL's application, such as the wheat-yellow color, the tree logo or the lug sole. Or customers may have attributed those unclaimed features to Timberland. Regardless, customer perceptions of the unclaimed aspects of the boot cannot demonstrate that the claimed portions of the boot have acquired secondary meaning.

514 U.S. 159, 163-64 (1995).

15 U.S.C. § 1127 (emphasis added).

Is "App Store" a generic term for an online platform selling apps? See Apple, Inc. v. Amazon.com Inc., No. 11 Civ. 1327, 2011 WL 2638191, at *7 (N.D. Cal. July 6, 2011) ("The court assumes without deciding that the 'App Store' mark is protectable as a descriptive mark that has arguably acquired secondary meaning." But the court found, on Apple's preliminary injunction motion, that Amazon's use of "App Store" to describe its app store did not create a likelihood of confusion.).

A domain name identifies an address on the Internet. The rightmost component of a domain name-".com" in "Booking.com"-is known as the top-level domain. Domain names are unique; that is, a given domain name is assigned to only one entity at a time.

For simplicity, this opinion uses the term "trademark" to encompass the marks whose registration Booking.com seeks. Although Booking.com uses the marks in connection with services, not goods, rendering the marks "service marks" rather than "trademarks" under 15 U.S.C. § 1127, that distinction is immaterial to the issue before us.

The U. S. Patent and Trademark Office (PTO) suggests that the primary-significance test might not govern outside the context of § 1064(3), which subjects to cancellation marks previously registered that have "become" generic. See Reply Brief 11; Tr. of Oral Arg. 19. To so confine the primary-significance test, however, would upset the understanding, shared by Courts of Appeals and the PTO's own manual for trademark examiners, that the same test governs whether a mark is registrable in the first place.See, e.g., In re Cordua Restaurants, Inc., 823 F.3d 594, 599 (CA Fed. 2016); Nartron Corp. v. STMicroelectronics, Inc., 305 F.3d 397,

(CA6 2002); Genesee BrewingCo. v. Stroh

The PTO notes only one possible exception: Sometimes adding a generic term to a generic toplevel domain results in wordplay (for example, "tennis.net"). That special case, the PTO acknowledges, is not presented here and does not affect our analysis.

Evidence informing that inquiry can include not only consumer surveys, but also dictionaries,

Princeton Vanguard's co-Plaintiff is Snyder's-Lance, Inc. ("Snyder's-Lance"), which is its parent company.

Having determined that the mark is generic, the Court need not and does not decide the further issue of whether if the mark were found to be descriptive it has acquired distinctiveness (secondary meaning) with respect to its association with the Plaintiffs.

In medieval Europe, monks gave away pretzels as religious symbols to the poor to provide spiritual as well as literal sustenance. Thus, the pretzel became a sign of fulfillment, good fortune and prosperity. In 1529, pretzel bakers saved Vienna from ransacking by Ottoman Turks when they heard the invaders tunneling under the city during their early morning work and alerted the city leadership (thereby earning their own coat of arms which includes angry lions holding a pretzel). By the 17th Century, the interlocking loops of the pretzel had also come to symbolize undying love when couples in Switzerland began eating a pretzel in their wedding ceremonies to seal the bond of matrimony, which is reputed to be the origin of the phrase "tying the knot." See foodandwine.com/lifestyle/religious-history-pretzels (Updated April 17, 2019, accessed May 5, 2021); The Pretzel: A Twisted History(History. com Jan. 30, 2020).

In 2018, Campbell's Soup Co. bought Snyder's-Lance, combining the company with Campbell's existing Pepperidge Farm business and other brands to create Campbell Snacks, an even larger company unit with additional marketing reach and resources.

The Supreme Court recently confirmed this principle in United StatesPat. & Trademark Off. v. Booking.com B. V., 140 S. Ct. 2298, 2306-07 (2020), emphasizing that it "presupposes that a generic term is at issue." Id. In other words, the determination of whether a mark is generic must be made separately and independently of the mark's commercial success and association with a particular company that results from extensive advertising and marketing (which would, of course, still be relevant to a determination of whether a descriptive mark had acquired secondary meaning).

At oral argument, Plaintiffs' counsel agreed that both "pretzels" and "crisps" are generic terms.

As with "additional meaning," when asked at oral argument why "pretzel crisps" is a descriptive term, Plaintiffs' counsel did not identify any "feature, quality or characteristic" of the goods that is reflected in the mark.

In JFT Toys, the Court agreed with the USPTO that a suggestive term, "Stomp Rocket," was not generic, finding that because of the lack of any dictionary reference to a rocket in the definition of "stomp" and no definition at all for "stomp rocket" that "the dictionary is unhelpful to Defendants." JFJ Toys, 237 F. Supp. 3d at 333.

Kraft's distributors were allowed to continue to distribute and sell the Ritz Munchables pretzel crisps indefinitely so long as they were sold and distributed by Kraft as permitted in the agreement.

Also, Plaintiffs excluded from their generic results references to other companies providing "pretzel crisps." See, e.g., at 253 (referring to "Stacy's Pretzel Crisps"); [Doc. 42-6] at 131 (using the term "Pretzel Crisps" to refer to "Stacy's Bake Shop crisps.").]

While genericness and secondary meaning are different concepts, they are not easily disentangled, particularly for successful products. Indeed, a product may have a leading market share with a generic name. See Kellogg, 305 U.S. at 118 (shredded wheat).

Compare, for example, the consumer survey results reported in the District Court decision in Booking.com, in which the plaintiff produced a Teflon survey which revealed that 74.8 percent of respondents identified BOOKING.COM as a brand name.Booking.com B.V. v. Matal, 278 F. Supp. 3d 891, 915 (E.D. Va. 2017).39 Even if the Court were to find that all the survey evidence was on balance inconclusive that would not affect the Court's ultimate factual determination that there is sufficient affirmative evidence to conclude that PRETZEL CRISPS is a generic mark.

The Court also is concerned that a focus on those relative few consumers who are most engaged with the product through Twitter would be a misleading sample in determining how the "relevant public," i.e., average or typical consumers perceive the product name.

For the remainder of this opinion, we collectively refer to Appellants as "Elliott."

In making this assumption, the district court drew a favorable (and generous) inference for Elliott. As discussed above, verb use does not necessarily constitute generic use, yet most of Elliott's proffered evidence relies on that theory.

Contrary to our colleague's suggestion, we do not hold that generic verb use is "categorically irrelevant." However, evidence that a mark is used in a generic sense in one particular setting cannot

Elliott also argues that the email shows generic use because "googling" is not capitalized. As we explained with regard to verb use and noun use, we cannot rely on grammatical formalism to determine what a speaker has in mind when using a registered trademark. SeeCoca-Cola Co., 692 F.2d at 1255.

a. The Uniform Dispute Resolution Policy ................................................................................. WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP) ........................................................................................................................................................ Pinterest, Inc. v. Pinerest.com c/o Whois Privacy Svcs Pty Ltd/Ian Townsend ........................................................................................................................................................ b. The Uniform Rapid Suspension System .................................................................................

.. 2. Landlord-Tenant Secondary Liability............................................................................................ ix White v. a. Willful Intent and Profits .............................................................................................................Romag Fasteners, Inc. v. Fossil, Inc. ........................................................................... b. Actual Confusion and Profits .....................................................................................................

• CROSSFIT for "fitness training and consulting." See Crossfit, Inc. v. Quinnie, 232 F. Supp. 3d 1295, 1306 (N.D. Ga. 2017) ("The Court finds that the CROSSFIT® mark is a suggestive mark. The mark CROSSFIT® is a combination of the terms, 'cross' and "fit," which are both commonly associated with exercise and fitness. The term 'cross' has been used in sports and fitness as in cross-training to refer to combining different sports or types of exercises in order to improve a person's fitness and performance.

48 USPQ2d 1542 (TTAB 1998) (finding CAROLINA APPAREL for clothing stores in North Carolina to be primarily geographically descriptive); In re Brouwerij Nacional Balashi NV, 80 U.S.P.Q.2d 1820 (TTAB 2006) (finding BALASHI BEER and BALASHI for beer made in the Balashi neighborhood of the Santa Cruz district of Aruba to be not primarily geographically descriptive where the

WHISKY "to certify that the goods/services provided originate in Scotland and have met the Standards as set forth in The Scotch Whisky Regulations 2009 and The Scotch Whisky technical file", Reg.No. 6,763,223 (30, 1956);• certifications of the regional origin of a product, e.g., the "Grown in Idaho" mark of theState of Idaho Potato Commission, Reg. No. 4,221,403 (July 24, 2012); the ROQUEFORT mark of the Community of Roquefort, France, Reg.No. 0571798 (Mar. 10, 1953); but see Interprofessionel du Gruyere v. U.S. DairyExp. Council, 61 F.4th 407, 425 (4th Cir.

The following are examples of marks that have fallen to genericide:• Haughton ElevatorCo. v. Seeberger, 85 U.S.P.Q. 80 (Comm'r Pat. 1950) (cancelling registration of ESCALATOR for moving staircases);• Duncan F.Duncan, Inc. v. Royal Tops Mfg. Co., 343 F.2d 655, 662 (7th Cir. 1965) (finding that the term "yo-yo" had long since become generic despite plaintiff's "herculean efforts to fasten upon the toy the generic term, 'return top'");•Bayer Co. v. United Drug Co., 272 F. 505, 510 (D.N.Y. 1921) (finding as to the mark ASPIRIN for acetylsalicylic acid that "[a]mong consumers generally the name has gone into the public domain").

for the product's source."); Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d 619, 635 (6th Cir. 2002) (stating that a plaintiff is "expected to list the elements of the designs and the unique combinations it [seeks] to protect . . . ."). Cf. General Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 415 (6th Cir. 2006) (finding sufficient plaintiff's definition of the trade dress of its hummer and humvee vehicles as "the exterior appearance and styling of the vehicle design which includes the grille, slanted and raised hood, split windshield, rectangular doors, squared edges, etc.").

What strategic considerations may come into play in how a plaintiff defines its trade dress? What are the costs and benefits of defining it too broadly or too narrowly? ______________________________________________________________________________ In reading Qualitex, consider the following questions:

• It is often remarked that the Court's holding in Qualitex is in significant tension with its previous holding in Two Pesos. Do you detect any tension between the holdings of the two cases?

• Does Justice Breyer's analysis apply as well to a combination of two or more colors?

• In light of Qualitex, how do you predict courts will treat smells, textures, and tastes? Are such marks capable of inherent distinctiveness?

Justice BREYER delivered the opinion of the Court.

[1] The question in this case is whether the Trademark Act of 1946 (Lanham Act), 15 U.S.C. § § 1051-1127 (1988 ed. and Supp. V), permits the registration of a trademark that consists, purely and simply, of a color. We conclude that, sometimes, a color will meet ordinary legal trademark requirements. And, when it does so, no special legal rule prevents color alone from serving as a trademark.

[2] The case before us grows out of petitioner Qualitex Company's use (since the 1950's) of a special shade of green-gold color on the pads that it makes and sells to dry cleaning firms for use on dry cleaning presses. In 1989, respondent Jacobson Products (a Qualitex rival) began to sell its own press pads to dry cleaning firms; and it colored those pads a similar green gold. In 1991, Qualitex registered the special green-gold color on press pads with the Patent and Trademark Office as a trademark. Registration No. 1,633,711 (Feb. 5, 1991). Qualitex subsequently added a trademark infringement count, 15 U.S.C. § 1114(1), to an unfair competition claim, § 1125(a), in a lawsuit it had already filed challenging Jacobson's use of the green-gold color.

[3] Qualitex won the lawsuit in the District Court. 1991 WL 318798 (CD Cal. 1991). But, the Court of Appeals for the Ninth Circuit set aside the judgment in Qualitex's favor on the trademark infringement claim because, in that Circuit's view, the Lanham Act does not permit Qualitex, or anyone else, to register "color alone" as a trademark. 13 F.3d 1297, 1300, 1302 (1994).

[4] The Courts of Appeals have differed as to whether or not the law recognizes the use of color alone as a trademark. Compare NutraSweet Co. v. Stadt Corp., 917 F.2d 1024, 1028 (CA7 1990) (absolute prohibition against protection of color alone), with In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1128 (CA Fed. 1985) (allowing registration of color pink for fiberglass insulation), and Master Distributors, Inc. v. Pako Corp., 986 F.2d 219, 224 (CA8 1993) (declining to establish per se prohibition against protecting color alone as a trademark). Therefore, this Court granted certiorari. 512 U.S. 1287 (1994). We now hold that there is no rule absolutely barring the use of color alone, and we reverse the judgment of the Ninth Circuit.

[5] The Lanham Act gives a seller or producer the exclusive right to "register" a trademark, 15 U.S.C. § 1052 (1988 ed. and Supp. V), and to prevent his or her competitors from using that trademark, § 1114(1). Both the language of the Act and the basic underlying principles of trademark law would seem to include color within the universe of things that can qualify as a trademark. The language of the Lanham Act describes that universe in the broadest of terms. It says that trademarks "includ[e] any word, name, symbol, or device, or any combination thereof." § 1127. Since human beings might use as a "symbol" or "device" almost anything at all that is capable of carrying meaning, this language, read literally, is not restrictive. The courts and the Patent and Trademark Office have authorized for use as a mark a particular shape (of a Coca-Cola bottle), a particular sound (of NBC's three chimes), and even a particular scent (of plumeria blossoms on sewing thread). See, e.g., Registration No. 696,147 (Apr. 12, 1960); Registration Nos. 523,616 (Apr. 4, 1950) and 916,522 (July 13,1971); In re Clarke, 17 U.S.P.Q.2d 1238, 1240 (TTAB 1990). If a shape, a sound, and a fragrance can act as symbols why, one might ask, can a color not do the same?

[6] A color is also capable of satisfying the more important part of the statutory definition of a trademark, which requires that a person "us[e]" or "inten [d] to use" the mark "to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." 15 U.S.C. § 1127.

of a particular product, only some colors are usable. By the time one discards colors that, say, for reasons of customer appeal, are not usable, and adds the shades that competitors cannot use lest they risk infringing a similar, registered shade, then one is left with only a handful of possible colors. And, under these circumstances, to permit one, or a few, producers to use colors as trademarks will "deplete" the supply of usable colors to the point where a competitor's inability to find a suitable color will put that competitor at a significant disadvantage.

[14] This argument is unpersuasive, however, largely because it relies on an occasional problem to justify a blanket prohibition. When a color serves as a mark, normally alternative colors will likely be available for similar use by others. See, e.g., Owens-Corning, 774 F.2d, at 1121 (pink insulation). Moreover, if that is not so-if a "color depletion" or "color scarcity" problem does arise-the trademark doctrine of "functionality" normally would seem available to prevent the anticompetitive consequences that Jacobson's argument posits, thereby minimizing that argument's practical force.

1. Why did Qualitex bother seeking certiorari review of its single-color claim if it had already won its case against Jacobsen on its broader trade dress claim? Both the district court and the Ninth Circuit ruled that Jacobsen had infringed Qualitex's overall trade dress, consisting of "[t]he total impression of the Qualitex green-gold pad and its 'Sun Glow' name . . . or overall appearance[ ] of the Qualitex product." Qualitex Co. v. Jacobson Prod. Co., 13 F.3d 129713 F.3d , 130413 F.3d (9th Cir. 1994)). But this judgment would likely not have enabled Qualitex to prevent competitors, including Jacobsen, from selling press pads in a green-gold color that prominently carried a different brand name or other distinguishing feature. Qualitex sought at the Supreme Court a more abstract and much more powerful property right: the exclusive right to use the green-gold color on press pads regardless of brand name or any other distinguishing feature.

2. Color Marks and Non-English-Speaking and Illiterate Consumers. Perhaps it makes sense that a company like Tiffany & Co. would assert exclusive rights in the distinctive robin's-egg blue color of its packaging, see U.S. Reg. No. 2,359,351 (June 20, 2000) ("The mark consists of a shade of blue often referred to as robin's-egg blue which is used on boxes."), or even that 3M Corp. would assert exclusive rights in the canary yellow color of its Post-It Pads, see U.S. Reg. No. 2,390,667 (Oct. 3, 2000) ("The mark consists of the color canary yellow used over the entire surface of the goods."), but why would a manufacturer of dry cleaning press pad covers claim rights in the color of its press pad covers? Professor Laura Heymann points to one possible explanation. See Laura A. Heymann, The Reasonable Person in Trademark Law, 52 ST. LOUIS. L.J. 781, 792 (2008). Though the Supreme Court opinion makes no mention of the issue, the Qualitex district court opinion noted that "many [dry cleaning business owners] are foreign speaking with limited skills in reading or speaking English." Qualitex Co. v. Jacobson Prods. Co., Inc., No. 90 Civ. 1183, 1991 WL 318798, at *1 (C.D. Cal. Sep. 5,1991), aff'd in part and rev'd in part, 13 F.3d 1297 (9th Cir. 1994), rev'd, 514 U.S. 159 (1995).

Between Two Pesos in 1992 and Samara Bros. in 2000, lower courts struggled to establish a workable test by which to determine whether a particular instance of trade dress was inherently distinctive. Courts had particular difficulty establishing a test to determine whether trade dress in the form of product configuration-i.e., in the form of design features of the product itself-was inherently distinctive. As we will see, in Samara Bros. the Supreme Court solved this problem of product configuration rather abruptly.

In reading through Samara Bros., consider the following questions:

• In Samara Bros., the Supreme Court accepted certiorari on the following question:

"What must be shown to establish that a product's design is inherently distinctive for purposes of Lanham Act trade-dress protection?" Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 528 U.S. 808 (1999). How did the Court answer this question?

• Is the court's holding in Samara Bros. consistent with its holding in Two Pesos?

An example of the apparel at issue in Samara Bros.

Wal-Mart Stores, Inc. v. Samara Bros., Inc. 529 U.S. 205 (2000)

Justice SCALIA delivered the opinion of the Court.

Respondent Samara Brothers, Inc., designs and manufactures children's clothing. Its primary product is a line of spring/summer one-piece seersucker outfits decorated with appliques of hearts, flowers, fruits, and the like. A number of chain stores, including JCPenney, sell this line of clothing under contract with Samara.

[2] Petitioner Wal-Mart Stores, Inc., is one of the Nation's best known retailers, selling among other things children's clothing. In 1995, Wal-Mart contracted with one of its suppliers, Judy-Philippine, Inc., to manufacture a line of children's outfits for sale in the 1996 spring/summer season. Wal-Mart sent Judy-Philippine photographs of a number of garments from Samara's line, on which Judy-Philippine's garments were to be based; Judy-Philippine duly copied, with only minor modifications, 16 of Samara's garments, many of which contained copyrighted elements. In 1996, Wal-Mart briskly sold the so-called knockoffs, generating more than $1.15 million in gross profits.

[3] In June 1996, a buyer for JCPenney called a representative at Samara to complain that she had seen Samara garments on sale at Wal-Mart for a lower price than JCPenney was allowed to charge under its contract with Samara. The Samara representative told the buyer that Samara did not supply its clothing to Wal-Mart. Their suspicions aroused, however, Samara officials launched an investigation, which disclosed that Wal-Mart and several other major retailers-Kmart, Caldor, Hills, and Goody's-were selling the knockoffs of Samara's outfits produced by Judy-Philippine.

[4] After sending cease-and-desist letters, Samara brought this action in the United States District Court for the Southern District of New York against Wal-Mart, Judy-Philippine, Kmart, Caldor, Hills, and Goody's for copyright infringement under federal law, consumer fraud and unfair competition under New York law, and-most relevant for our purposesinfringement of unregistered trade dress under § 43(a) of the Lanham Act, 15 U.S.C.

§ 1125(a). All of the defendants except Wal-Mart settled before trial.

[5] After a weeklong trial, the jury found in favor of Samara on all of its claims. Wal-Mart then renewed a motion for judgment as a matter of law, claiming, inter alia, that there was insufficient evidence to support a conclusion that Samara's clothing designs could be legally protected as distinctive trade dress for purposes of § 43(a). The District Court denied the motion, 969 F.Supp. 895 (S.D.N.Y. 1997), and awarded Samara damages, interest, costs, and fees totaling almost $1.6 million, together with injunctive relief, see App. to Pet. for Cert. 56-58. The Second Circuit affirmed the denial of the motion for judgment as a matter of law, 165 F.3d 120 (1998), and we granted certiorari, 528 U.S. 808, 120 S.Ct. 308, 145 L.Ed.2d 35 (1999).

[6] The Lanham Act provides for the registration of trademarks, which it defines in § 45 to include "any word, name, symbol, or device, or any combination thereof [used or intended to be used] to identify and distinguish [a producer's] goods . . . from those manufactured or sold by others and to indicate the source of the goods . . . ." 15 U.S.C. § 1127. Registration of a mark under § 2 of the Lanham Act, 15 U.S.C. § 1052, enables the owner to sue an infringer under § 32, 15 U.S.C. § 1114; it also entitles the owner to a presumption that its mark is valid, see § 7(b), 15 U.S.C. § 1057(b), and ordinarily renders the registered mark incontestable after five years of continuous use, see § 15, 15 U.S.C. § 1065. In addition to protecting registered marks, the Lanham Act, in § 43(a), gives a producer a cause of action for the use by any person of "any word, term, name, symbol, or device, or any combination thereof . . . which . . . is likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her goods . . . ." 15 U.S.C. § 1125(a). It is the latter provision that is at issue in this case. [7] The breadth of the definition of marks registrable under § 2, and of the confusionproducing elements recited as actionable by § 43(a), has been held to embrace not just word marks, such as "Nike," and symbol marks, such as Nike's "swoosh" symbol, but also "trade dress"-a category that originally included only the packaging, or "dressing," of a product, but in recent years has been expanded by many Courts of Appeals to encompass the design of a product. See, e.g., Ashley Furniture Industries, Inc. v. Sangiacomo N. A., Ltd., 187 F.3d 363 (C.A.4 1999) (bedroom furniture); Knitwaves, Inc. v. Lollytogs, Ltd., 71 F.3d 996 (C.A.2 1995) (sweaters); Stuart Hall Co., Inc. v. Ampad Corp., 51 F.3d 780 (C.A.8 1995) (notebooks). These courts have assumed, often without discussion, that trade dress constitutes a "symbol" or "device" for purposes of the relevant sections, and we conclude likewise. "Since human beings might use as a 'symbol' or 'device' almost anything at all that is capable of carrying meaning, this language, read literally, is not restrictive." Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162 (1995). This reading of § 2 and § 43(a) is buttressed by a recently added subsection of § 43(a), § 43(a)(3), which refers specifically to "civil action[s] for trade dress infringement under this chapter for trade dress not registered on the principal register." 15 U.S.C.

[11] Indeed, with respect to at least one category of mark-colors-we have held that no mark can ever be inherently distinctive. See Qualitex, supra, at 162-163,. In Qualitex, petitioner manufactured and sold green-gold dry-cleaning press pads. After respondent began selling pads of a similar color, petitioner brought suit under § 43(a), then added a claim under § 32 after obtaining registration for the color of its pads. We held that a color could be protected as a trademark, but only upon a showing of secondary meaning. Reasoning by analogy to the Abercrombie & Fitch test developed for word marks, we noted that a product's color is unlike a "fanciful," "arbitrary," or "suggestive" mark, since it does not "almost automatically tell a customer that [it] refer[s] to a brand," 514 U.S., at 162-163, and does not "immediately . . . signal a brand or a product 'source,'" id., at 163. However, we noted that, "over time, customers may come to treat a particular color on a product or its packaging . . . as signifying a brand." Ibid. Because a color, like a "descriptive" word mark, could eventually "come to indicate a product's origin," we concluded that it could be protected upon a showing of secondary meaning. Ibid.

[14] It is true, of course, that the person seeking to exclude new entrants would have to establish the nonfunctionality of the design feature, see § 43(a)(3), 15 U.S.C. § 1125(a)(3) (1994 ed., Supp. V)-a showing that may involve consideration of its esthetic appeal, see Qualitex, supra, at 170, 115 S.Ct. 1300. Competition is deterred, however, not merely by successful suit but by the plausible threat of successful suit, and given the unlikelihood of inherently source-identifying design, the game of allowing suit based upon alleged inherent distinctiveness seems to us not worth the candle. That is especially so since the producer can ordinarily obtain protection for a design that is inherently source identifying (if any such exists), but that does not yet have secondary meaning, by securing a design patent or a copyright for the design-as, indeed, respondent did for certain elements of the designs in this case. The availability of these other protections greatly reduces any harm to the producer that might ensue from our conclusion that a product design cannot be protected under § 43(a) without a showing of secondary meaning.

[15] Respondent contends that our decision in Two Pesos forecloses a conclusion that product-design trade dress can never be inherently distinctive. In that case, we held that the trade dress of a chain of Mexican restaurants, which the plaintiff described as "a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals," 505 U.S., at 765 (internal quotation marks and citation omitted), could be protected under § 43(a) without a showing of secondary meaning, see id., at 776. Two Pesos unquestionably establishes the legal principle that trade dress can be inherently distinctive, see, e.g., id., at 773, 112 S.Ct. 2753, but it does not establish that product-design trade dress can be. Two Pesos is inapposite to our holding here because the trade dress at issue, the decor of a restaurant, seems to us not to constitute product design. It was either product packaging-which, as we have discussed, normally is taken by the consumer to indicate origin-or else some tertium quid that is akin to product packaging and has no bearing on the present case. [16] Respondent replies that this manner of distinguishing Two Pesos will force courts to draw difficult lines between product-design and product-packaging trade dress. There will indeed be some hard cases at the margin: a classic glass Coca-Cola bottle, for instance, may constitute packaging for those consumers who drink the Coke and then discard the bottle, but may constitute the product itself for those consumers who are bottle collectors, or part of the product itself for those consumers who buy Coke in the classic glass bottle, rather than a can, because they think it more stylish to drink from the former. We believe, however, that the frequency and the difficulty of having to distinguish between product design and product packaging will be much less than the frequency and the difficulty of having to decide when a product design is inherently distinctive. To the extent there are close cases, we believe that courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning. The very closeness will suggest the existence of relatively small utility in adopting an inherent-distinctiveness principle, and relatively great consumer benefit in requiring a demonstration of secondary meaning.

[17] We hold that, in an action for infringement of unregistered trade dress under § 43(a) of the Lanham Act, a product's design is distinctive, and therefore protectible, only upon a showing of secondary meaning. The judgment of the Second Circuit is reversed, and the case is remanded for further proceedings consistent with this opinion.

1. What about copyright infringement in Samara Bros.? At the district court, "[t]he jury found that Wal-Mart had willfully infringed Samara's rights, awarding Samara $912,856.77 on the copyright claims, $240,458.53 for the Lanham Act violation and $50 for the state law violations." Samara Bros. v. Wal-Mart Stores, Inc., 165 F.3d 120, 123 (2d Cir. 1998). Decades later, Judge Denny Chin, who was the district court judge in Samara Bros. (and is now on the Second Circuit), reflected on the case: Ironically, the Supreme Court latched on to a very small part of the case. This was principally a copyright case-the copying of Samara's copyrighted designs. But Samara had included a trade dress claim, and the jury awarded some damages for the trade dress claim, although far less than for the copyright claims. The jury's award on the copyright claims remained intact, and, ultimately, the Supreme Court's reversal had little practical impact on the case, even as it made new law. Apparently, the Supreme Court saw this case as an opportunity to clarify the law in the trade dress area, and it did so. The Supreme Court's holding in Samara Bros. eliminated one problem-how to analyze the inherent distinctiveness of product configuration trade dress-but created another: how to determine whether a particular product feature or combination of product features qualifies as product packaging trade dress, product configuration trade dress, or perhaps some other kind of trade dress. The opinion excerpts that follow offer examples of how courts have sought to determine where along the packaging/configuration divide particular forms of trade dress fall. In reading the opinions, consider the following questions: How should a court treat various forms of decoration applied to the surface of the product (e.g., stripes on the side of an athletic shoe)? Is such decoration product packaging, production configuration, or something else?

In re Slokevage 441 F.3d 957 (Fed. Cir. 2006) LOURIE, Circuit Judge.

[1] Joanne Slokevage ("Slokevage") appeals from the decision of the United States Patent and Trademark Office, Trademark Trial and Appeal Board ("Board") sustaining the refusal of the examiner to register her trade dress mark for clothing. In re Joanne Slokevage, Serial No. 75602873 (TTAB Nov. 10, 2004) ("Final Decision"). Because the Board's finding that Slokevage's trade dress was product design and thus could not be inherently distinctive . . . we affirm.

[2] Slokevage filed an application to register a mark on the Principal Register for "pants, overalls, shorts, culottes, dresses, skirts." Slokevage described the mark in her application as a "configuration" that consists of a label with the words "FLASH DARE!" in a V-shaped background, and cut-out areas located on each side of the label. The cut-out areas consist of a hole in a garment and a flap attached to the garment with a closure device. This trade dress configuration, which is located on the rear of various garments, is depicted below:

[3] Although Slokevage currently seeks to register a mark for the overall configuration of her design, she has already received protection for various aspects of the trade dress configuration. For example, she received a design patent for the cut-out area design. She also registered on the Supplemental Register 1 a design mark for the cut-out area. In addition, she registered the word mark "FLASH DARE!" on the Principal Register.

[4] The trademark examiner initially refused registration of the proposed mark on the ground that it constituted a clothing configuration that is not inherently distinctive. The examiner afforded Slokevage the opportunity to submit evidence of acquired distinctiveness or to disclaim the design elements of the configuration, but Slokevage chose not to submit evidence of acquired distinctiveness or to disclaim the design elements. Rather, she argued that the trade dress was inherently distinctive. The examiner, relying on section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), made final his refusal to register the mark on the ground that the clothing configuration constitutes "product design/configuration," and pursuant to the decision of the U.S. Supreme Court in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000), "product design" cannot be inherently distinctive. The examiner noted that Slokevage's reference in her application to the trade dress as a "cut-away flap design" supported a determination that the configuration constitutes product design . . . .

[5] Slokevage appealed the refusal of the examiner to register the trade dress configuration, and the Board affirmed the examiner's decision. The Board found that the cutout areas, consisting of the holes and flaps, constituted product design. Relying on Wal-Mart, the Board observed that a product design "will not be regarded as a source indicator at the time of its introduction." According to the Board, Slokevage's trade dress, as product design, could not be inherently distinctive, and therefore could not be registered absent a showing of acquired distinctiveness. . . . . 1 Pursuant to section 23 of the Lanham Act, the United States Patent and Trademark Office ("PTO") maintains a Supplemental Register for marks "capable of distinguishing applicant's goods or services and not registrable on the principal register." 15 U.S.C. § 1091(a). DISCUSSION . . . .

[6] As a preliminary matter, Slokevage argues that whether trade dress is product design or not is a legal determination, whereas the government asserts that it is a factual issue. The resolution of that question is an issue of first impression for this court. We conclude that the determination whether trade dress is product design is a factual finding because it is akin to determining whether a trademark is inherently distinctive or whether a mark is descriptive, which are questions of fact. . . . Inherent distinctiveness or descriptiveness involves consumer perception and whether consumers are predisposed towards equating a symbol with a source. See In re MBNA Am. Bank, N.A., 340 F.3d 1328, 1332 (Fed. Cir. 2003). Such issues are determined based on testimony, surveys, and other evidence as questions of fact. Determining whether trade dress is product design or product packaging involves a similar inquiry. Wal-Mart, 529 U.S. at 213 (discussing product packaging and design in the context of consumers ability to equate the product with the source). We therefore will defer to the Board's finding on product design, affirming the Board if its decision is supported by substantial evidence . . . .

[12] In addition, the reasoning behind the Supreme Court's determination that product design cannot be inherently distinctive is also instructive to our case. The Court reasoned that, unlike a trademark whose "predominant function" remains source identification, product design often serves other functions, such as rendering the "product itself more useful or more appealing." Wal-Mart, 529 U.S. at 212, 213. The design at issue here can serve such utilitarian and aesthetic functions. For example, consumers may purchase Slokevage's clothing for the utilitarian purpose of wearing a garment or because they find the appearance of the garment particularly desirable. Consistent with the Supreme Court's analysis in Wal-Mart, in such cases when the purchase implicates a utilitarian or aesthetic purpose, rather than a source-identifying function, it is appropriate to require proof of acquired distinctiveness.

[13] Finally, the Court in Wal-Mart provided guidance on how to address trade dress cases that may be difficult to classify: "To the extent that there are close cases, we believe that courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning." 529 U.S. at 215. Even if this were a close case, therefore, we must follow that precedent and classify the trade dress as product design. We thus agree with the Board that Slokevage's trade dress is product design and therefore that she must prove acquired distinctiveness in order for her trade dress mark to be registered. In LVL XIII Brands, the plaintiff produced "'luxury' men's sneakers" featuring "a rectangular metal toe plate with a 'LVL XIII inscription' secured to the front outsole of the sneaker by metal screws." Id. at 628. (See the above image on the left). The defendant produced luxury sneakers also featuring a metal toe plate (above, right). The parties filed cross-motions for summary judgment. The district court analyzed whether the plaintiff's toe plate design was product packaging or product configuration: This is not a close case. Even a cursory examination of the TP {metal toe plate} discloses that it does not qualify as a trademark or product packaging. . . . {P}roduct packaging is generally limited to "the appearance of labels, wrappers, boxes, envelopes, and other containers used in packaging a product as well as displays and other materials used in presenting the product to prospective purchasers." Restatement (Third) of Unfair Competition § 16 cmt.a (1995).

Tellingly, LVL XIII has not offered any admissible evidence to support its claim that the TP falls within either of these categories. And the record evidence is decidedly to the contrary. First, the "packag[ing]" described in LVL XIII's business plan consists solely of "distinctive branded shoe boxes" and "black cotton dust bags"-it does not include the TP.

Second, in declining to register {LVL XIII's trademark} Application, the PTO stated that "the rectangular shape of the shoe toe plate . . . is a configuration of a feature of the shoe design," which "can never be inherently distinctive as a matter of law." Although the PTO's determination is not dispositive, the Court is to "accord weight" to it. Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 148 n. 11 (2d Cir. 1997). Such deference is particularly appropriate where, as here, the PTO's determination is consistent with the registrant's own characterization of the claimed mark: As noted, the '102 Application sought registration for a "shoe toe design" (emphasis added); see In re Slokevage, 441 F.3d at 959 ("Slokevage's reference in her application to the trade dress as a 'cut-away flap design' supported a determination that the configuration constitutes product design."). And LVL XIII used dotted lines to identify unclaimed portions of the mark, a procedure required only for "trade dress marks." See U.S. Patent & Trademark Office, Trademark Manual of Examining Procedures ("TMEP") § 1202.02(c)(i) (Apr. 2016 ed.).

Despite this evidence, LVL XIII argues that the TP is an inherently distinctive trademark because its uniform size and placement on LVL XIII's line of sneakers renders it "arbitrary" and "fanciful," and thus apt to be an automatic indicator of source. That argument is not persuasive. . . . Despite LVL XIII's efforts to shoehorn the TP into the trademark category, it does not fit. Rather, like the configuration in Slokevage, the TP serves a primarily aesthetic function: making LVL XIII's sneakers appear more enticing. Accordingly, the TP can be classified only as a product design feature which is not inherently distinctive. To prevail on its Lanham Act claims, LVL XIII must therefore show that the TP acquired secondary meaning. In McKernan, the plaintiff McKernan sold a novelty bumper sticker that purported to be a "Cape Cod Canal Tunnel Permit." (This was meant to be hilarious. There is no tunnel to Cape Cod.) He brought a trademark infringement suit against Burek and others who were producing similar bumper stickers. McKernan conceded that his bumper sticker design had no secondary meaning. The parties filed cross-motions for summary judgment. Judge Lasker analyzed whether the bumper sticker was product packaging or product configuration as follows:

LVL XIII Brands, Inc. v. Louis Vuitton Malletier

The Tunnel Permit presents one of the "hard cases at the margin" referred to by the Supreme Court {in Wal-Mart}. It is particularly difficult to try to distinguish between the packaging and the product when discussing an ornamental bumper sticker. The packaging and the product are so intertwined that distinguishing between them may be regarded as a scholastic endeavor.

Nevertheless, the Supreme Court's opinion in Wal-Mart provides some guidance. The example given in Wal-Mart, of the classic Coca-Cola bottle is instructive: an item is the product if it is the essential commodity being purchased and consumed rather than the dress which presents the product.

Here, the essential commodity being purchased is a joke on a bumper sticker. All of the visual elements contained in the Tunnel Permit are a part of this joke and indispensable to it. What is being purchased and consumed is the novelty sticker, not dress identifying the prestige or standing of its source. Unlike more traditional trade dress cases that concern product packaging (like water bottles, see Nora Beverages, Inc. v. Perrier Group of America, Inc., 269 F.3d 9 From Rockwell Group, http://www.rockwellgroup.com/projects/entry/best-cellars.

114 (2d Cir. 2001)) or product designs (like children's clothing, see Samara Bros., 529 U.S. at 213), this case concerns the interior decor of a retail establishment where customers purchase other products. In this, the case is similar to Two Pesos, which concerned the interior decor of Mexican-themed restaurants. See Two Pesos, 505 U.S. at 764-65 n. 1 (noting that trade dress "may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques" (citations and internal quotation marks omitted)). As the Supreme Court explained, the interior decor category fits awkwardly into the classifications of trade dress law, constituting either product packaging or a "tertium quid" akin to product packaging. Samara Bros., 529 U.S. at 215. Interior decor is thus clearly not product design. Accordingly, it is appropriate to analyze the Best Cellars' interior decor trade dress under the product packaging standard for inherent distinctiveness . . . . In Fedders, the plaintiff, a manufacturer of single room air conditioners claimed as its trade dress the "undulating curve on the left or right of the faceplate separating the portion of the faceplate on which the controls are positioned from the air intake louvers." Judge Gilbert analyzed the question of product packaging / product configuration as follows:

In this case, the key question is whether the subject trade dress-the undulating curve on the decorative front-is part of the product design or packaging. The defendants argue that the curve is part of the product design, and that, therefore, evidence of secondary meaning is required. On the other hand, Fedders notes that the curve is not functional, but rather, purely esthetic. Moreover, Fedders argues that the curve is a unique design that is associated with its Chassis line of air conditioners. Therefore, according to Fedders, the curve is "inherently distinctive," and no evidence of secondary meaning is necessary . . . . In this case, the Court believes that Fedders's undulating curve is not "packaging", but rather product design. The curve serves a purpose other than to identify the maker. It serves the purpose of making the air conditioners more esthetically appealing. The applicant sought to register the mark shown below for goods it identified as consisting of a "Concession trailer for snowball vendors to operate a viable snowball business." Id. at 1001. The applicant described the mark as follows: "The mark consists of a three-dimensional configuration of a snowcapped roof with the word "SNOBALLS", a snowball and associated beverage container positioned on top of a concession trailer for snowball vendors. The matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark." Id. at 1001-02.

The applicant presented the photograph shown below as its specimen of use:

The TTAB found: "Clearly, the product at issue in this case is the concession trailer; that is the product offered for sale, purchased by, and used by snowball vendors. It is not a container for flavored shaved ice or snowballs sold to consumers, as suggested by Applicant. Accordingly, Applicant's applied-for mark is properly characterized as a product design. Specifically, it is the design of the roof of a concession trailer. It therefore requires a showing of acquired distinctiveness in order to be registered on the Principal Register." Id. In In Re Frankish Enterprises Ltd., the applicant sought to register the above-pictured three-dimensional mark for "[e]ntertainment services, namely, performing and competing in motor sports events in the nature of monster truck exhibitions." The applicant described the mark as follows: "The mark consists of a truck cab body in the design of a fanciful, prehistoric animal. The matter shown by dotted lines is not part of the mark, but serves only to show the position of the mark." The TTAB concluded that the mark was capable of inherent distinctiveness:

Applicant does not seek registration of its design for a product, it seeks registration of its "fanciful, prehistoric animal" design for its monster truck exhibition services, and under Two Pesos, trade dress for services may be inherently distinctive. Indeed, Applicant's service is exhibiting its monster truck in action, such as doing wheelies, jumping over and crushing smaller vehicles and otherwise entertaining fans with the truck's size, power and sheer awesomeness, which could be performed with or without the "fanciful, prehistoric animal" design on the outside of the truck, just as Taco Cabana's service of offering Mexican food to restaurant customers could be performed without the particular interior design found to be inherently distinctive in Two Pesos. {T}he "fanciful, prehistoric animal" design is akin to the packaging of what is being sold, in this case Applicant's monster truck services.

In Re Frankish Enterprises Ltd., 113 U.S.P.Q.2d 1964, 2015 WL 1227728, at *4 (TTAB 2015). (For the Board's determination of whether in fact the mark was inherently distinctive, see below in Part I.A.2.c).

1. Is the three stripes design for the surface of athletic shoes shown in the registration below product configuration, product packaging, or some "tertium quid"? (The dotted lines do not constitute part of the claimed mark. The registration includes them only to show placement of the mark).

c. Analyzing the Inherent Distinctiveness of Product Packaging Trade Dress

Product configuration trade dress and single colors (whether applied to the packaging of the product or the product itself) are per se incapable of inherent distinctiveness, and it is likely that courts would also find smells, tastes, and textures also to be incapable of inherent distinctiveness. But this leaves a wide array of nonverbal marks, including product packaging trade dress, that remain capable of inherent distinctiveness. The question, then, is how to determine whether a particular mark that falls into one of these categories is in fact inherently distinctive. While the Abercrombie spectrum works reasonably well for verbal marks, it is not well suited to the inherent distinctiveness analysis of nonverbal marks. Instead, as we will see below, most courts outside of the Second Circuit have adopted the socalled Seabrook factors, from Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342(CCPA 1977), to analyze the inherent distinctiveness of nonverbal marks. We first consider an example of the Second Circuit's attempt to adapt its Abercombie spectrum to the question of whether a product packaging feature is inherently distinctive. We then turn to an example of the (probably far more sensible) Seabrook factors approach to the question. {Plaintiff Fun-Damental Too, Ltd. ("Fun-Damental") brought suit for trademark infringement against defendants alleging that defendants had copied the trade dress of Fun-Damental's "Toilet Bank" (see photo below) in the sale of their own "Currency Can." Judge Mukasey of the S.D.N.Y. granted a preliminary injunction in favor of Fun-Damental. Defendants appealed. Excerpted here are the court's description of the Toilet Bank's trade dress and the court's analysis of the inherent distinctiveness, if any, of that trade dress.} CARDAMONE, Circuit Judge . . . .

[1] Plaintiff's product is displayed in stores in a royal blue triangular-shaped box. The Toilet Bank itself is visible within the open-style box, which allows a consumer access to the toilet handle so that the flushing sound may be tested. The toy's bowl is covered with a clear plastic cover that includes a raised three-dimensional circle to which is affixed a gray sticker depicting a coin. The bank is held in place in its box by a 1/4 inch strap running up one side of the toilet bowl, through the plastic cover, and down the other side.

[2] The product name "TOILET BANK" appears in yellow letters on the royal blue box's lower front panel. The four inch-high upper rear panel is decorated with the product name and two pictures demonstrating how to use the product. The top picture shows a hand holding a coin over the toilet bowl, and the bottom one shows an index finger depressing the handle with the message "REAL FLUSHING SOUND" in white letters on a red bubble. In the upper right hand corner of this panel is a yellow starburst with the words "REAL FLUSHING SOUND" in red letters. Below it is a yellow arrow pointing down toward the handle with the legend in red: "TRY ME" and in smaller letters: "PRESS HANDLE." The same message appears on a red arrow sticker, affixed to the toilet tank, pointing diagonally towards the silver handle. [5] Yet trade dress protection has limits. A trade dress that consists of the shape of a product that conforms to a well-established industry custom is generic and hence unprotected. For example, the cosmetics industry's common use of black, rectangular-shaped compacts renders that packaging generic. Mana, 65 F.3d at 1070; see also Paddington, 996 F.2d at 583 (soda industry practice would render green cans generic for the purpose of packaging lime-flavored soda). In short, despite the broad opportunity to design an arbitrary or fanciful trade dress, a specific trade dress must still be evaluated to determine whether it is so distinctive as to point to a single source of origin and thereby be entitled to Lanham Act protection.

[6] Defendants urge us to adopt a more stringent standard of distinctiveness than that used by the trial court. Recently we declined to use the Abercrombie spectrum of distinctiveness in a trade dress case that involved features of the product itself. Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996 (2d Cir. 1995). In an attempt to extend that rationale, defendants suggest we adopt an alternative test for inherent distinctiveness of trade dress set forth in Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 1344 (C.C.P. A. 1977). Under Seabrook, the inquiry is whether the design or shape of a package is a common, basic one, or whether it is unique or unusual in a particular field; whether the design is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a trade dress or ornamentation for such goods, or whether it is one capable of creating a commercial impression separate from the accompanying words. Id. [7] We see no reason to abandon the Abercrombie distinctiveness spectrum in this case. Several reasons lead us to decline. First, we have expressly ruled that the Abercrombie classifications apply to packaging. Paddington, 996 F.2d at 583. Second, Knitwaves is a pure product configuration case, separate from product packaging, the category of trade dress at issue in this case. In Knitwaves, the trade dress lay in the product itself, rather than in a symbol-a trademark or packaging-associated with the product. It was therefore difficult to define some aspect or feature of the trade dress as "descriptive" or "arbitrary" in relation to the product. See Knitwaves, 71 F.3d at 1007-08 (quoting Duraco Prods. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1440-41 (3d Cir. 1994)). In contrast, a store display of a product's packaging style creates an image of the product more readily separated from the product itself. Moreover, although there may be a finite set of ways to configure a product, the variety of packaging available for a given product is limited only by the bounds of imagination. These factors render packaging more suitable than product configuration for classification under the Abercrombie system as arbitrary or fanciful, suggestive, descriptive, or generic.

[8] Third, use of the Abercrombie test tracks the purpose of the Lanham Act to identify source. That is, it is consistent with the Supreme Court's emphasis on a trade dress' capacity to "identify a particular source of the product." Two Pesos, 505 U.S. at 771. While a more stringent test is necessary in the product configuration context, applying Abercrombie to product packaging serves the aims of the Lanham Act because consumers are more likely to rely on the packaging of a product than on the product's design as an indication of source. Restatement (Third) of Unfair Competition § 16 cmt. b (1995). In contrast, over-inclusive protection of the product design risks conferring benefits beyond the intended scope of the Lanham Act and entering what is properly the realm of patent law. See Fabrication Enters., Inc. v. Hygenic Corp., 64 F.3d 53, 59 n. 4 (2d Cir. 1995). Thus, though the Abercrombie classifications were originally developed for analysis of word marks, we conclude that because of the endless number of product packaging options the Abercrombie test is appropriately applied in this trade dress case. B. Distinctiveness in the Instant Case [9] Defendants insist that the Toilet Bank's trade dress is not inherently distinctive, principally because the elements identified as part of that characterization are generic. Classification under the Abercrombie spectrum of distinctiveness is a question of fact reviewed under the clearly erroneous standard. See Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1039-40 (2d Cir. 1992) (classification of trademarks). We evaluate trade dress distinctiveness by looking at all its elements and considering the total impression the trade dress gives to the observer. Paddington, 996 F.2d at 584. Concededly, a number of individual features of the Toilet Bank's trade dress are common in the toy industry; for example, the triangular shape of the box and its open styling are found everywhere on toy store shelves. The red arrows stating "Try Me," the starburst (separate from the notation "flushing sound"), and the raised blister are similarly quite usual legends in the toy business. Although some of the individual elements of a trade dress are generic or descriptive, the impression given by all of them in combination may be inherently distinctive. Such was what the district court found here; and we cannot say that this finding is clearly erroneous.

[10] Gemmy maintains that the trial court improperly considered the similarities between its product and Fun-Damental's when making the inherently distinctive determination regarding the Toilet Bank's trade dress. We disagree. Although Fun-Damental makes no claim regarding the copying of its product, it was appropriate to consider the packaging in conjunction with the product, rather than simply the empty box. "[T]rade dress today encompasses a broad concept of how a product presented to the public looks, including its color, design, container, and all the elements that make up its total appearance." Mana, 65 F.3d at 1069. [11] This "total look" approach is the only workable way to consider such elements of the trade dress as the arrow sticker that is affixed to the Toilet Bank's tank. Because the box is open in order to display the product, it was proper to analyze Fun-Damental's trade dress as seen by consumers-including the Toilet Bank product. Further, there is no risk of "spillover" protection for the Toilet Bank as a product here since the injunction is limited to the sale of a similar product in a particular package, rather than an absolute ban on the sale of the Currency Can in an open-style box. In sum, we conclude that looking at the product itself in the context of its packaging is a proper method of analyzing open-style packaging for trade dress protection.

ii. Using the Seabrook Factors to Analyze Whether Product Packaging Is Inherently Distinctive

In Seabrook, the plaintiff Seabrook had registered, for frozen vegetables, a mark consisting in part of a pointed loop (or "stylized leaf design", as Seabrook called it) as shown below. Seabrook opposed the registration of Bar-Well's mark, also for frozen foods, that incorporated a similar pointed loop design on the ground that Bar-Well's use of the mark would confuse consumers. The Court of Customs & Patent Appeals (the predecessor court to the Court of Appeals for the Federal Circuit) set forth various factors relevant to the question of whether consumers would perceive the pointed loop design (absent the words and image of a farm) as inherently distinctive of source:

In determining whether a design is arbitrary or distinctive this court has looked to whether it was a 'common' basic shape or design, whether it was unique or unusual in a particular field, whether it was a mere refinement of a commonlyadopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods, or whether it was capable of creating a commercial impression distinct from the accompanying words.

Id. at 1344. The CCPA ultimately determined that the pointed loop design on its own would be perceived merely as decoration. Id. These factors soon came to inform most courts' analysis of the inherent distinctiveness of all nonverbal trademarks (including, before Samara Bros., product configuration trade dress).

Note that the two leading treatises on trademark law disagree on whether the Abercrombie spectrum or the Seabrook factors work better for assessing the inherent distinctiveness of product packaging trade dress. McCarthy strongly endorses Seabrook:

In the author's view, the Seabrook test is by far the preferable test to classify inherently distinctive trade dress in packaging and containers. Necessarily focusing upon the probable reaction of the ordinary consumer, it focuses upon the key issue in these cases: is the design so different in this market that it will immediately be perceived as a source identifier, not merely or solely as an attractive decoration or embellishment. The Abercrombie spectrum was developed specifically for word marks and does not translate into the world of shapes and designs. MCCARTHY § 8:13. The Gilson treatise remains loyal to Abercrombie:

The Abercrombie classifications are not an ideal fit for product packaging trade dress cases; is a squeeze bottle with a top that squirts liquid suggestive of dish soap or spring water or is it generic for those products because it is so widely used? Nevertheless, pending further clarification from the Supreme Court, lower courts should continue to use the Abercrombie spectrum in classifying product packaging trade dress.

Note further that if a court finds a feature of product packaging to lack both inherent and acquired distinctiveness or a feature of product configuration to lack acquired distinctiveness, then the court will often (but not always) deem the feature to be "mere ornamentation."

As you read through the following opinion, consider the following questions: {The relevant facts are as follows: Plaintiff Amazing Spaces, Inc. ("Amazing Spaces") and defendant Metro Mini Storage ("Metro") were rival self-storage businesses in Houston, Texas. Amazing Spaces claimed a star design as its service mark, which it registered at the PTO in 2004 (see the registration certificate below). Metro used a similar design on its storage buildings. In response to Amazing Spaces' suit for trademark infringement, Metro argued that Amazing Spaces' star design mark lacked both inherent and acquired distinctiveness and was improperly registered. The district court agreed and granted Metro's motion for summary judgment on the issue. On appeal, after considering, among other things, the weight to be accorded to the PTO registration (an issue we will discuss in Part I.D below), the Fifth Circuit turned to the question of whether the star design was inherently distinctive.} KING, Circuit Judge . . . .

[1] As mentioned above, "a mark is inherently distinctive if 'its intrinsic nature serves to identify a particular source.'" Wal-Mart Stores, 529 U.S. at 210 (quoting Two Pesos, 505 U.S. at 768). Inherent distinctiveness is attributable to a mark when the mark "almost automatically tells a customer that it refers to a brand and . . . immediately signal[s] a brand or a product source." Id. at 212 (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162-63 (1995)). The parties disagree over not only the answer to whether the Star Symbol is inherently distinctive but also over the proper method for conducting the inquiry. Metro urges that the familiar Abercrombie test cannot be used to categorize the Star Symbol and instead asks that we apply the Seabrook Foods test to determine that the Star Symbol is not inherently distinctive. Amazing Spaces, by contrast, presses the application of the Abercrombie test, under which it claims the Star Symbol is inherently distinctive, and it argues alternatively that the Star Symbol is inherently distinctive under the Seabrook Foods test.

[2] In Abercrombie, Judge Friendly sought to arrange the universe of marks into a spectrum of distinctiveness. See 537 F.2d at 9. . . .

[3] We agree with Metro that the Star Symbol resists categorization under the Abercrombie test, and we consequently do not rely on a rote application of its categories in determining whether the Star Symbol is inherently distinctive. The Supreme Court's most recent recitation of the Abercrombie categories noted its use only in the context of marks consisting of words. See Wal-Mart Stores, 529 U.S. at 210 ("In the context of word marks, courts have applied the now-classic test originally formulated by Judge Friendly . . . ." (emphasis added) (citing Abercrombie, 537 F.2d at 10-11)). The Court's precedent also supports the proposition that some marks, although deserving of legal protection, do not fit within the Abercrombie spectrum. In Qualitex, the Court declined to apply the Abercrombie test to a mark consisting purely of a shade of color used in a product's trade dress, holding that the mark could constitute a legally protectable mark only through a showing of secondary meaning. 514 U.S. at 162-63. The Court further extended that logic when, in Wal-Mart Stores, it stated that "[i]t seems to us that [product] design, like color, is not inherently distinctive" and held that marks consisting of a product's design were protectable only upon proof of secondary meaning-a conclusion it could not have reached had it applied the Abercrombie test. Wal-Mart Stores, 529 U.S. at 212. Professor McCarthy, a luminary in the field of trademark law, has likewise suggested that the Abercrombie test may not apply to all marks, stating that "[u]se of the spectrum of descriptive, suggestive, arbitrary and fanciful is largely confined to word marks. It is usually not suitable for nonword designations such as shapes and images . . . [, which] must be judged by other guidelines." 2 MCCARTHY ON TRADEMARKS § 11:2, at 11-7. . . .

[4] As the district court discovered, the challenge of placing the Star Symbol into Abercrombie's constellation of categories is a futile endeavor. We have described the Abercrombie categories as follows . . . .

[5] The district court briefly probed the utility of applying the Abercrombie test and concluded that the Star Symbol did not fit as a generic, descriptive, or suggestive mark. See Amazing Spaces, 665 F.Supp.2d at 737. The district court first rejected the notion that the Star Symbol was generic because "[a] five-pointed star within a circle does not refer to a product or service provided by a self-storage company" and "[t]he evidence of widespread use of a five-point star or a five-point star set within a circle by many diverse businesses and government offices supports the conclusion that the star mark is not related to or a generic symbol for self-storage goods or services." Id. It next determined that the Star Symbol was not descriptive because "[i]t does not identify a characteristic or quality of self-storage service, such as its function or quality." Id. Nor was the Star Symbol suggestive, according to the district court, because "[t]here is no basis to conclude that a five-pointed star set within a circle suggests an attribute of self-storage services." Id. We discern no flaws in the district court's analysis with respect to these three categories. However, the logical extension of the district court's analysis is the conclusion that the Star Symbol is arbitrary or fanciful, which under the Abercrombie test would render it inherently distinctive and thus entitled to protection. Yet the district court refused to so conclude, stating that "the star mark cannot be classified as arbitrary or fanciful unless it is inherently distinctive so as to serve as a source identifier for Amazing Spaces." Id. It then turned to the Seabrook Foods test in conducting its inquiry into the Star Symbol's inherent distinctiveness. See id.

[6] We agree that the Star Symbol-indeed, any mark-lacks inherent distinctiveness if its intrinsic nature does not serve to identify its source. See Wal-Mart Stores, 529 U.S. at 210 ("[A] mark is inherently distinctive if 'its intrinsic nature serves to identify a particular source.'" (quoting Two Pesos, 505 U.S. at 768)). Furthermore, as we have already indicated, we approve the district court's decision to apply a test other than Abercrombie in this case. However, we disagree somewhat with the district court's reasoning that a mark cannot be categorized as arbitrary or fanciful unless it is inherently distinctive. Under the Abercrombie test, it is the categorization of a mark that dictates its inherent distinctiveness, not the other way around. A rote application of the Abercrombie test yields the conclusion that the Star Symbol is an arbitrary or fanciful mark because it "'bear[s] no relationship to the products or services to which [it is] applied.'" Pebble Beach, 155 F.3d at 540 (quoting Zatarains, 698 F.2d at 791). Were we to apply the Abercrombie test mechanically to the Star Symbol, without an eye to the question the test seeks to answer, we would be left with the conclusion that the Star Symbol is inherently distinctive. The district court, aware of that result, proceeded to apply the Seabrook Foods test. See Amazing Spaces, 665 F.Supp.2d at 737. [7] Both the Supreme Court and scholars have questioned the applicability of the Abercrombie test to marks other than words. See Wal-Mart Stores, 529 U.S. at 210-13, (noting that the Abercrombie test was developed and applied "[i]n the context of word marks" and declining to apply it to a mark consisting of product design); Qualitex, 514 U.S. at 162-63 (referring to the Abercrombie test but not applying it to a mark consisting of a shade of color); . . . . 1 MCCARTHY ON TRADEMARKS § 8:13, at 8-58.1 ("Only in some cases does [Abercrombie] classification make sense [for trade dress] . . . . The word spectrum of marks simply does not translate into the world of shapes and images."); . . . . We do not go so far as to hold that the Abercrombie test is eclipsed every time a mark other than a word is at issue. Instead, we hold that the Abercrombie test fails to illuminate the fundamental inquiry in this case: whether the Star Symbol's "'intrinsic nature serves to identify'" Amazing Spaces and its storage services. Wal-Mart Stores, 529 U.S. at 210 (quoting Two Pesos, 505 U.S. at 768, 112 S.Ct. 2753). For the answer to that question, we now turn to the Seabrook Foods test employed by the district court.

b. Seabrook Foods [8] In contrast to the Abercrombie test, the Seabrook Foods test, articulated by the U.S. Court of Customs and Patent Appeals in 1977, applies expressly to marks consisting of symbols and designs:

In determining whether a design is arbitrary or distinctive this court has looked to [1] whether it was a "common" basic shape or design, [2] whether it was unique or unusual in a particular field, [3] whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods, or [4] whether it was capable of creating a commercial impression distinct from the accompanying words.

[10] The district court determined that the Star Symbol was "not a plain five-pointed star" but was instead "shaded and set within a circle," rendering it "sufficient[ly] styliz[ed]" to be "more than a common geometric shape." Amazing Spaces, 665 F.Supp.2d at 737. It then proceeded to conclude that the Star Symbol "[wa]s not inherently distinctive and d[id] not act as an indicator of origin for any self-storage business, including Amazing Spaces." Id. at 738. It supported this assertion with a discussion of "[t]he ubiquitous nature of the fiveis not inherently distinctive under the Seabrook Foods test, we do not address whether it constitutes a "reasonably clear test," id. at 213, such that it would be preferable to the Abercrombie test in the ordinary trademark or service mark dispute.

pointed star set within a circle" in Texas, specifically its "use[ ] as a decoration or ornamentation on innumerable buildings, signs, roads, and products." Id. The court concluded that this ubiquity-including use of the same or a similar star design in 63 businesses and 28 other self-storage locations-"preclude[d] a finding that [the Star Symbol wa]s inherently distinctive or that it c[ould] serve as an indicator of origin for a particular business." Id. [11] Undoubtedly, the Star Symbol is stylized relative to an unshaded five-pointed star design not set within a circle. However, we disagree that the issue of stylization revolves around comparing a design's actual appearance to its corresponding platonic form. Instead, as discussed above, asking whether a shape is stylized is merely another way of asking whether the design is "commonplace" or "unique or unusual in the relevant market," Star Indus., 412 F.3d at 382 (citing Permatex, 175 U.S.P.Q. at 766), or whether it is "a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation," Seabrook Foods, 568 F.2d at 1344. 18 The stylization inquiry is properly conceived of as asking whether a particular 18 The parties dispute the scope of the "relevant market"-specifically, whether the district court correctly considered use of a similar or identical star design beyond the self-storage service industry. Amazing Spaces contends that we should limit our analysis to the self-storage services industry, while Metro argues that we may take into account uses of star designs in a larger context. The second Seabrook Foods factor refers to uniqueness or unusualness "in a particular field," 568 F.2d at 1344, and the Second Circuit has stated that a stylized design may be protectable when it "is not commonplace but rather unique or unusual in the relevant market," Star Indus., 412 F.3d at 382. Similarly, the third factor refers to whether a mark is commonly used as ornamentation for a "particular class of goods." Seabrook Foods, 568 F.2d at 1344. In contrast, the First Circuit, in considering whether a red heart on the chest of a teddy bear was inherently distinctive, appeared to consider the broader use of red hearts in determining whether the use at issue was unique or unusual. See Wiley, 762 F.2d at 142 ("[T]he record contains so many examples of use of a red heart motif on teddy bears and other stuffed animals, not to mention all manner of other toys and paraphernalia, that no reasonable argument on this point can be made." (emphasis added)). The rule in the RESTATEMENT asks whether, "because of the nature of the designation and the context in which it is used, prospective purchasers are likely to perceive it as a designation that . . . identifies goods or services produced or sponsored by a particular person." RESTATEMENT § 13(a), at 104 (emphasis added). It further explains that

[c]ommonplace symbols and designs are not inherently distinctive since their appearance on numerous products makes it unlikely that consumers will view them as distinctive of the goods or services of a particular seller. Thus, unless the symbol or design is striking, unusual, or otherwise likely to differentiate the products of a particular producer, the designation is not inherently distinctive.

{The court ultimately found that the star design lacked secondary meaning. It remanded the case, however, on the question, among others, of whether the overall appearance of Amazing Spaces' facilities, rather than simply the star design alone, was protectable trade dress.} [1] FIJI also alleges that the VITI product infringes the FIJI trade dress, which includes the following elements: the use of a bottle with a dominantly square shape, with a recessed central body portion defined by the protruding shoulders and base portions of the bottle, a blue bottle cap, a transparent outer front label with a pink accent in the lower right hand corner, a depiction of a blue background and palm tree fronds on the inside of the back label, a three-dimensional effect created by having a transparent label on the front panel of the bottle revealing the inner side of the back label, a rainwater drop on the front label, a statement on the front label stating "From the islands of Fiji/Natural Artesian Water," and prominent use of the four-letter, two-syllable word FIJI, in block white lettering with a metallic outline around the letters. . . . .

[2] The second element that FIJI must establish to succeed on the merits for its trade dress infringement claim is that its trade dress is inherently distinctive or has acquired secondary meaning. Packaging such as the FIJI bottle shape and label design is inherently distinctive if "[its] intrinsic nature serves to identify a particular source. [3] Although the square bottle and blue cap elements may be fairly common in the bottled water industry, the stylized hibiscus, the palm fronds and the three-dimensional effect of the transparent front label with palm fronds on the inside back label are not a common design. Contra Paddington Corp. v. Attiki Imps. & Distribs., Inc., 996 F.2d 577 (2d Cir. 1993) (giving examples of designs that are not inherently distinctive in certain markets, such as packaging lime soda in green cans or showing a shining car on a bottle of car wax). The stylized white block letters with metallic outline for the word "FIJI," together with the tropical foliage using hues of blue and green and the raindrop invites consumers to imagine fresh, clear water from a remote tropical island. Reviewing the 2008 Bottled Water Guide that FIJI submitted reveals no other brands that combine the elements of the square bottle, threedimensional labeling effect, and tropical motif. FIJI has won international awards for print and packaging excellence and design innovation in the food packaging industry, which is strong evidence that its packaging is unique or unusual in the field and not simply a variation on existing bottled water designs. Finally, the transparent three-dimensional label distinguishes FIJI from the other brands, and makes the trade dress recognizable even apart from the block-letter word mark FIJI, as evidenced by some of the open-ended responses consumers gave in FIJI's consumer confusion survey. Based on this evidence, the Court concludes that FIJI's trade dress is inherently distinctive.

In re Frankish Enterprises Ltd. 113 U.S.P.Q.2d 1964 (TTAB 2015)

[2] The district court erred when it described the Star "O" as a basic geometric shape or letter, and therefore rejected inherent distinctiveness and required a showing of secondary meaning. The Star "O" is not a "common basic shape" or letter, and the district court's holding to the contrary was premised on a misunderstanding of this trademark law concept. Unshaded linear representations of common shapes or letters are referred to as "basic." They are not protectable as inherently distinctive, because to protect them as trademarks would be to deprive competitors of fundamental communicative devices essential to the dissemination of information to consumers. However, stylized letters or shapes are not "basic," and are protectable when original within the relevant market. (noting that applicant conceded that unshaded line oval was not inherently distinctive). Star's "O" is sufficiently stylized to be inherently distinctive and therefore protectable as a trademark. It is stylized with respect to shading, border, and thickness, and each of these design elements distinguishes it from the simple or basic shapes and letters that have been held unprotectable.

[3] The Star "O" design had sufficient shape and color stylization to render it slightly more than a simply linear representation of an ellipse or the letter "O." It was, furthermore, a unique design in the alcoholic beverage industry at the time it was introduced. This suffices to establish its inherent distinctiveness and thus its protectability. Furthermore, the Star "O" design is protectable separately from the other design elements on the Georgi orangeflavored vodka label precisely because the "O" design is itself inherently distinctive. See In re E.J. Brach & Sons, 45 C.C.P.A. 998, 256 F.2d 325, 327 (1958); W.B. Roddenbery, 135 U.S.P.Q. at 216. However, the extent of stylization was marginal at best. The outline of the "O," though not uniform, is ordinary in its slightly varying width, and the interior and exterior borders are also ordinary. The result is a "thin" or weak mark, which will be entitled to only limited protection. See Libman Co. v. Vining Indus., 69 F.3d 1360, 1363 (7th Cir. 1995).

{The court went on to find no likelihood of confusion.}

d. Analyzing the Acquired Distinctiveness of Nonverbal Marks

The secondary meaning analysis of nonverbal marks is largely the same as that of verbal marks. Courts tend to use essentially the same factors and considerations for both. See, e.g., Herman Miller, Inc. v. Palazzetti Imports and Exports, Inc., 270 F.3d 298 (6th Cir. 2001) (reviewing seven factors to determine that Herman Miller had raised an issue of fact as to the secondary meaning of the design of its Eames chair); Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 43-45, (1st Cir. 2001) (finding insufficient evidence of secondary meaning in plaintiff's label designs for scented candles).

Courts may treat one factor differently, however, in the context of product configuration. Evidence that the defendant deliberately copied from the plaintiff may not carry as much weight when the defendant copied product configuration. See, e.g., Kaufman & Fisher Wish Co. v. F.A.O. Schwarz, 184 F. Supp. 2d 311, 319 (S.D.N.Y. 2001) (in case involving defendant's alleged trademark infringement of plaintiff's toy doll and packaging, stating that "[t]he probative value of evidence of intentional copying is particularly limited in cases involving product design, since 'the copier may very well be exploiting a particularly desirable feature, rather than seeking to confuse consumers as to the source of the product.' Duraco Products, Inc. v. Joy Plastic Enterprises, Ltd., 40 F.3d 1431, 1453 (3d Cir. 1994)").

The concept of "limping trademarks" is also relevant to determining whether nonverbal marks (and indeed some verbal marks) have developed sufficient acquired distinctiveness to merit protection. This concept comes to American trademark law from English trademark law, and in particular from the opinion of Mr. Justice Jacobs (as he then was, before becoming a Lord Justice) in Philips Elecs. BV v. Remington Consumer Prods., [1998] RPC 283 (U.K.). There, Philips had claimed trademark rights in the mark PHILISHAVE and separate trademark rights in the particular configuration of the three rotating heads on its electric shaver. As to the latter, product configuration mark, Jacobs memorably explained that the three-headed configuration "has never been used by Philips as the sole means of identification of trade source. It has never been trusted by Philips to do this job on its own, a matter plainly relevant in considering acquired distinctiveness. It is at best a 'limping trade mark', needing the crutch of 'Philishave' in use." Id. at 290. In other words, standing on its own, the three-headed configuration fails to indicate source; it only does so when appearing with the PHILISHAVE mark. For more on the concept of limping marks, see Rebecca Tushnet, Registering Disagreement: Registration in Modern American Trademark Law, 130 HARV. L. REV. 867, 922-25 (2017) (urging American trademark law to recognize the phenomenon of limping marks).

Even if a trademark is distinctive of source, it will still be denied protection if it falls within one of the statutory bars established under Lanham Act § 2, 15 U.S.C. § 1052. We review the most important of these statutory bars here.

It is important to note that, strictly speaking, the § 2 statutory bars are bars only to the registration of a mark at the PTO. Recall however that the Lanham Act will protect both registered marks under § 32, 15 U.S.C. § 1114, and unregistered marks under § 43(a), 15 U.S.C. § 1125(a). This framework raises a question that the law has not yet definitively answered: if a mark is refused registration or its registration is cancelled under one of the statutory bars established in § 2, can the user of the mark nevertheless seek protection of the mark under § 43(a)? For example, if a mark consists of the flag of a foreign nation and thus is barred from registration under Lanham Act § 2(b), could the user of the mark nevertheless claim exclusive rights in the mark under § 43(a)? Though scholarly opinion remains divided, the better view would appear to be that a mark unregistrable under § 2 should be unprotectable under § 43(a). See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992) ("[I]t is common ground that § 43(a) protects qualifying unregistered trademarks and that the general principles qualifying a mark for registration under § 2 of the Lanham Act are for the most part applicable in determining whether an unregistered mark is entitled to protection under § 43(a)."); Renna v. Cnty. of Union, N.J., 88 F.Supp.3d 310, 319 (D.N.J. 2014) ("It follows that such unregistrable marks, not actionable as registered marks under Section 32, are not actionable under Section 43, either."). Cf. Matal v. Tam, 582 U.S. 218, 226 n. 1 (2017) ("We need not decide today whether respondent could bring suit under § 43(a) if his application for federal registration had been lawfully denied under the disparagement clause.").

We will not review the specifics of the registration process until Section II.D. However, in order to complete our picture of what marks qualify for protection, be they registered or unregistered, we will necessarily review opinions in this section that involve questions of registration. Thus, the reader will need to tolerate references to certain aspects of the registration process that will not become clear until Section II.D.

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it-(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage 10 or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501 (9) (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.

(e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.

(f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.

A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.

Even when a product (or packaging) feature is distinctive of source, trademark law will not protect that product feature if it is "functional." See Lanham Act § 2(e)(5), 15 U.S.C.

§ 1052(e)(5) (prohibiting the registration of any mark that "comprises any matter that, as a whole, is functional"). Of course, all source-distinctive product features are functional in the lay sense that they function to indicate the source of the product to which they are attached or of which they form a part. In trademark law, however, functionality is a term of art denoting a legal conclusion about the particular nature or degree of the product feature's technical or competitive importance. The opinions excerpted in this subsection cover both categories of functionality in U.S. trademark law: "utilitarian functionality" (or as some call it, "mechanical functionality") and "aesthetic functionality." The name of the first category may sound like a redundancy, and the name of the second an oxymoron, yet the underlying policy goals that inform utilitarian and aesthetic functionality doctrine show that the two categories have much in common. We turn first to utilitarian functionality.

TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001), excerpted below, is the leading utilitarian functionality case in U.S. trademark law. But before turning to TrafFix, it is worthwhile briefly to review three cases that preceded it, which may help to explain what was at stake in TrafFix as well as what followed in the wake of TrafFix.

The first is In re Morton-Norwich Products, Inc., 671 F.2d 1332 (C.C.P. A. 1982). Morton-Norwich sought to register as a trademark the configuration of its spray bottle, shown to the right. It claimed that it had sold some 132 million products in the spray bottle under brands such as FANTASTIK, GLASS PLUS, GREASE RELIEF, and MIRAKILL, and that the bottle had developed substantial secondary meaning as a designation of source. The examiner refused registration on the grounds that the bottle was functional and lacked secondary meaning. On appeal, the Trademark Trial and Appeal Board addressed only the functionality issue. It affirmed the finding of functionality and on that basis the refusal to register.

The Court of Customs and Patent Appeals, which was the predecessor court to the current Court of Appeals for the Federal Circuit, reversed the TTAB's functionality refusal and remanded for further consideration of the secondary meaning issue. In a lengthy opinion, the CCPA distinguished between "de facto functionality" and "de jure functionality," with de facto functionality indicating "the use of 'functional' in the lay sense, indicating that although the design of a product, a container, or a feature of either is directed to performance of a function, it may be legally recognized as an indication of source," and de jure functionality "used to indicate the opposite-such a design may not be protected as a trademark." Id. at 1337. To determine if an asserted product configuration rose to the level of de jure functionality and thus could not qualify for trademark protection, the Morton-Norwich court set out four factors that should be considered. The TMEP has summarized these so-called "Morton-Norwich factors" as follows:

(1) the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;

(2) advertising by the applicant that touts the utilitarian advantages of the design;

(3) facts pertaining to the availability of alternative designs; and

(4) facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

The third Morton-Norwich factor, going to the "availability of alternative designs," has proven to be controversial. In practice, it tends to weigh strongly in favor of non-functionality and thus of protectability. This is because creative lawyers and engineers can likely cite to or dream up a wide variety of alternative designs that carry just as much de facto functionalitythat is, that are just as useful-as the asserted design. This is exactly what happened in Morton-Norwich:

The PTO has not produced one iota of evidence to show that the shape of appellant's bottle was required to be as it is for any de facto functional reason, which might lead to an affirmative determination of de jure functionality. The evidence, consisting of competitor's molded plastic bottles for similar products, demonstrates that the same functions can be performed by a variety of other shapes with no sacrifice of any functional advantage. There is no necessity to copy appellant's trade dress to enjoy any of the functions of a spray-top container.

The second important predecessor to TrafFix is Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982). Inwood is important for our purposes here mainly because of its brief, onesentence footnote 10, which has had an enormous impact on functionality doctrine. The facts are that Ives Laboratories, Inc. manufactured and marketed the patented prescription drug cyclandelate, a vasodilator, under the registered trademark CYCLOSPASMOL. After Ives' patent expired in 1972, several generic drug manufacturers, including Inwood Laboratories, Inc., began manufacturing and marketing cyclandelate capsules that copied the appearance, including the color, of Ives' capsules. Pharmacists then began placing capsules produced by the generic manufacturers into bottles labeled with Ives' CYCLOSPASMOL mark. Ives brought an action for trademark infringement against the manufacturers, alleging that the manufacturers were vicariously liable for the infringement of Ives' CYCLOSPASMOL mark by the pharmacists. The Supreme Court ultimately found that the generic manufacturers were not liable.

In the course of her opinion for the Court, Justice O'Connor noted: "Ives argued that the colors of its capsules were not functional." She appended to this statement footnote number 10:

In general terms, a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. Stiffel, but the Kellogg court had stated that the pillow shape of Nabisco's shredded wheat was functional: "The evidence is persuasive that this form is functional-that the cost of the biscuit would be increased and its high quality lessened if some other form were substituted for the pillow-shape" Id. at 122. Now nearly forgotten is that Inwood contained further discussion of the concept of functionality in trademark law. In a subsequent footnote, Justice O'Connor criticized the Inwood appellate court for failing to respond to the district court's determination that the color of Ives' capsules was functional. Id. at 857 n. 20. In his concurrence joined by Justice Marshall, Justice White also took the appellate court to task for failing to respond to the district court's functionality determination. In doing so, he quoted the appellate court's definition of functionality apparently with approval: "A functional characteristic is 'an important ingredient in the commercial success of the product.'" Id. at 863 (White, J., concurring) (quoting Ives Laboratories, Inc. v. Darby Drug Co., Inc., 601 F.2d 631 (2nd Cir.

. As we will see below, this language, going to whether a product feature is "an important ingredient in the commercial success of the product," would come back to haunt functionality doctrine and aesthetic functionality doctrine in particular.

The third important predecessor to TrafFix is Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995), the case we considered above focusing on whether a single color without more could qualify for trademark protection. The reader may recall this passage from Qualitex:

This Court consequently has explained that, "[i]n general terms, a product feature is functional," and cannot serve as a trademark, "if it is essential to the use or purpose of the article or if it affects the cost or quality of the article," that is, if exclusive use of the feature would put competitors at a significant nonreputation-related disadvantage. Inwood Laboratories, Inc., 456 U. S., at 850, n. 10.

Qualitex, 514 U.S. at 165. Before reading TrafFix, consider this question: does this passage from Qualitex suggest that Inwood's test ("essential to the use or purpose . . . ") is interchangeable with and the equivalent of the test asking if "exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage"? Would appellate courts have been justified in assuming the equivalence between these two statements of the test for functionality?

Between Morton-Norwich (1982) and TrafFix (2001), functionality doctrine appeared to many to have lost its moorings. Perhaps influenced by Morton-Norwich, especially its third factor, courts increasingly relied on various forms of a "competitive necessity" test to determine if a particular product feature was functional, and because alternative designs could often be found or hypothesized, the "competitive necessity" test tended greatly, perhaps overwhelmingly, to benefit plaintiffs. Enter TrafFix.

i. TrafFix Devices, Inc. v. Marketing Displays, Inc.

• How do we determine if a product feature is "essential to the use or purpose" of the product? What do we mean by "essential"? That the product feature is a competitive necessity? An engineering necessity? How could a product feature be "essential to the use or purpose" of the product if there are alternative designs that competitors could use and still compete effectively?

• Are there any product features that do not in some way "affect[] the cost or quality of the product"?

• Why not apply the Inwood Laboratories test to aesthetic product features as well?

• Does TrafFix in any sense overrule Morton-Norwich?

Justice KENNEDY delivered the opinion of the Court.

[1] Temporary road signs with warnings like "Road Work Ahead" or "Left Shoulder Closed" must withstand strong gusts of wind. An inventor named Robert Sarkisian obtained two utility patents for a mechanism built upon two springs (the dual-spring design) to keep these and other outdoor signs upright despite adverse wind conditions. The holder of the now-expired Sarkisian patents, respondent Marketing Displays, Inc. (MDI), established a successful business in the manufacture and sale of sign stands incorporating the patented feature. MDI's stands for road signs were recognizable to buyers and users (it says) because the dual-spring design was visible near the base of the sign.

[2] This litigation followed after the patents expired and a competitor, TrafFix Devices, Inc., sold sign stands with a visible spring mechanism that looked like MDI's. MDI and TrafFix products looked alike because they were. When TrafFix started in business, it sent an MDI product abroad to have it reverse engineered, that is to say copied. Complicating matters, TrafFix marketed its sign stands under a name similar to MDI's. MDI used the name "WindMaster," while TrafFix, its new competitor, used "WindBuster."

[3] MDI brought suit under the Trademark Act of 1946 (Lanham Act), 60 Stat. 427, as amended, 15 U.S.C. § 1051 et seq., against TrafFix for trademark infringement (based on the similar names), trade dress infringement (based on the copied dual-spring design), and unfair competition. TrafFix counterclaimed on antitrust theories. After the United States District Court for the Eastern District of Michigan considered cross-motions for summary judgment, MDI prevailed on its trademark claim for the confusing similarity of names and was held not liable on the antitrust counterclaim; and those two rulings, affirmed by the Court of Appeals, are not before us.

[4] We are concerned with the trade dress question. The District Court ruled against MDI on its trade dress claim. 971 F.Supp. 262 (E.D.Mich. 1997). After determining that the one element of MDI's trade dress at issue was the dual-spring design, id., at 265, it held that "no reasonable trier of fact could determine that MDI has established secondary meaning" in its alleged trade dress, id., at 269. In other words, consumers did not associate the look of the dual-spring design with MDI. As a second, independent reason to grant summary judgment in favor of TrafFix, the District Court determined the dual-spring design was functional. On this rationale secondary meaning is irrelevant because there can be no trade dress protection in any event. In ruling on the functional aspect of the design, the District Court noted that Sixth Circuit precedent indicated that the burden was on MDI to prove that its trade dress was nonfunctional, and not on TrafFix to show that it was functional (a rule since adopted by Congress, see 15 U.S.C. § 1125(a)(3) (1994 ed., Supp. V)), and then went on to consider MDI's arguments that the dual-spring design was subject to trade dress protection. Finding none of MDI's contentions persuasive, the District Court concluded MDI had not "proffered sufficient evidence which would enable a reasonable trier of fact to find that MDI's vertical dual-spring design is non-functional." 971 F.Supp., at 276. Summary judgment was entered against MDI on its trade dress claims.

[5] The Court of Appeals for the Sixth Circuit reversed the trade dress ruling. 200 F.3d 929 (1999). The Court of Appeals held the District Court had erred in ruling MDI failed to show a genuine issue of material fact regarding whether it had secondary meaning in its alleged trade dress, id., at 938, and had erred further in determining that MDI could not prevail in any event because the alleged trade dress was in fact a functional product configuration, id., at 940. The Court of Appeals suggested the District Court committed legal error by looking only to the dual-spring design when evaluating MDI's trade dress. Basic to its reasoning was the Court of Appeals' observation that it took "little imagination to conceive of a hidden dual-spring mechanism or a tri or quad-spring mechanism that might avoid infringing [MDI's] trade dress." Ibid. The Court of Appeals explained that "[i]f TrafFix or another competitor chooses to use [MDI's] dual-spring design, then it will have to find some other way to set its sign apart to avoid infringing [MDI's] trade dress." Ibid. It was not sufficient, according to the Court of Appeals, that allowing exclusive use of a particular feature such as the dual-spring design in the guise of trade dress would "hinde [ 1498, 1500 (C.A.10 1995) ("Where a product configuration is a significant inventive component of an invention covered by a utility patent . . . it cannot receive trade dress protection"). To resolve the conflict, we granted certiorari. 530 U.S. 1260 (2000).

[6] It is well established that trade dress can be protected under federal law. The design or packaging of a product may acquire a distinctiveness which serves to identify the product with its manufacturer or source; and a design or package which acquires this secondary meaning, assuming other requisites are met, is a trade dress which may not be used in a manner likely to cause confusion as to the origin, sponsorship, or approval of the goods. In these respects protection for trade dress exists to promote competition. As we explained just last Term, see Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000), various Courts of Appeals have allowed claims of trade dress infringement relying on the general provision of the Lanham Act which provides a cause of action to one who is injured when a person uses "any word, term name, symbol, or device, or any combination thereof . . . which is likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her goods." 15 U.S.C. § 1125(a)(1)(A). Congress confirmed this statutory protection for trade dress by amending the Lanham Act to recognize the concept. Title 15 U.S.C. § 1125(a)(3) (1994 ed., Supp. V) provides: "In a civil action for trade dress infringement under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional." This burden of proof gives force to the well-established rule that trade dress protection may not be claimed for product features that are functional. Qualitex, supra, at 164-165; Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 775 (1992). And in Wal-Mart, supra, we were careful to caution against misuse or overextension of trade dress. We noted that "product design almost invariably serves purposes other than source identification." Id., at 213. [7] Trade dress protection must subsist with the recognition that in many instances there is no prohibition against copying goods and products. In general, unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying. As the Court has explained, copying is not always discouraged or disfavored by the laws which preserve our competitive economy. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 160 (1989). Allowing competitors to copy will have salutary effects in many instances. "Reverse engineering of chemical and mechanical articles in the public domain often leads to significant advances in technology." Ibid.

[8] The principal question in this case is the effect of an expired patent on a claim of trade dress infringement. A prior patent, we conclude, has vital significance in resolving the trade dress claim. A utility patent is strong evidence that the features therein claimed are functional. If trade dress protection is sought for those features the strong evidence of functionality based on the previous patent adds great weight to the statutory presumption that features are deemed functional until proved otherwise by the party seeking trade dress protection. Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device. [9] In the case before us, the central advance claimed in the expired utility patents (the Sarkisian patents) is the dual-spring design; and the dual-spring design is the essential feature of the trade dress MDI now seeks to establish and to protect. The rule we have explained bars the trade dress claim, for MDI did not, and cannot, carry the burden of overcoming the strong evidentiary inference of functionality based on the disclosure of the dual-spring design in the claims of the expired patents.

[12] In finding for MDI on the trade dress issue the Court of Appeals gave insufficient recognition to the importance of the expired utility patents, and their evidentiary significance, in establishing the functionality of the device. The error likely was caused by its misinterpretation of trade dress principles in other respects. As we have noted, even if there has been no previous utility patent the party asserting trade dress has the burden to establish the nonfunctionality of alleged trade dress features. MDI could not meet this burden. Discussing trademarks, we have said "'[i]n general terms, a product feature is functional,' and cannot serve as a trademark, 'if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.'" Qualitex, 514 U.S., at 165 (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, n. 10 (1982)). Expanding upon the meaning of this phrase, we have observed that a functional feature is one the "exclusive use of [which] would put competitors at a significant non-reputation-related disadvantage." 514 U.S., at 165. The Court of Appeals in the instant case seemed to interpret this language to mean that a necessary test for functionality is "whether the particular product configuration is a competitive necessity." 200 F.3d, at 940. See also Vornado, 58 F.3d, at 1507 ("Functionality, by contrast, has been defined both by our circuit, and more recently by the Supreme Court, in terms of competitive need"). This was incorrect as a comprehensive definition. As explained in Qualitex, supra, and Inwood, supra, a feature is also functional when it is essential to the use or purpose of the device or when it affects the cost or quality of the device. The Qualitex decision did not purport to displace this traditional rule. Instead, it quoted the rule as Inwood had set it forth. It is proper to inquire into a "significant non-reputation-related disadvantage" in cases of esthetic functionality, the question involved in Qualitex. Where the design is functional under the Inwood formulation there is no need to proceed further to consider if there is a competitive necessity for the feature. In Qualitex, by contrast, esthetic functionality was the central question, there having been no indication that the green-gold color of the laundry press pad had any bearing on the use or purpose of the product or its cost or quality.

[13] The Court has allowed trade dress protection to certain product features that are inherently distinctive. Two Pesos, 505 U.S., at 774. In Two Pesos, however, the Court at the outset made the explicit analytic assumption that the trade dress features in question (decorations and other features to evoke a Mexican theme in a restaurant) were not functional. Id., at 767, n. 6. The trade dress in those cases did not bar competitors from copying functional product design features. In the instant case, beyond serving the purpose of informing consumers that the sign stands are made by MDI (assuming it does so), the dualspring design provides a unique and useful mechanism to resist the force of the wind. Functionality having been established, whether MDI's dual-spring design has acquired secondary meaning need not be considered. [14] There is no need, furthermore, to engage, as did the Court of Appeals, in speculation about other design possibilities, such as using three or four springs which might serve the same purpose. 200 F.3d, at 940. Here, the functionality of the spring design means that competitors need not explore whether other spring juxtapositions might be used. The dualspring design is not an arbitrary flourish in the configuration of MDI's product; it is the reason the device works. Other designs need not be attempted.

[15] Because the dual-spring design is functional, it is unnecessary for competitors to explore designs to hide the springs, say, by using a box or framework to cover them, as suggested by the Court of Appeals. Ibid. The dual-spring design assures the user the device will work. If buyers are assured the product serves its purpose by seeing the operative mechanism that in itself serves an important market need. It would be at cross-purposes to those objectives, and something of a paradox, were we to require the manufacturer to conceal the very item the user seeks. [16] In a case where a manufacturer seeks to protect arbitrary, incidental, or ornamental aspects of features of a product found in the patent claims, such as arbitrary curves in the legs or an ornamental pattern painted on the springs, a different result might obtain. There the manufacturer could perhaps prove that those aspects do not serve a purpose within the terms of the utility patent. The inquiry into whether such features, asserted to be trade dress, are functional by reason of their inclusion in the claims of an expired utility patent could be aided by going beyond the claims and examining the patent and its prosecution history to see if the feature in question is shown as a useful part of the invention. No such claim is made here, however. MDI in essence seeks protection for the dual-spring design alone. The asserted trade dress consists simply of the dual-spring design, four legs, a base, an upright, and a sign. MDI has pointed to nothing arbitrary about the components of its device or the way they are assembled. The Lanham Act does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity. The Lanham Act, furthermore, does not protect trade dress in a functional design simply because an investment has been made to encourage the public to associate a particular functional feature with a single manufacturer or seller. The Court of Appeals erred in viewing MDI as possessing the right to exclude competitors from using a design identical to MDI's and to require those competitors to adopt a different design simply to avoid copying it. MDI cannot gain the exclusive right to produce sign stands using the dual-spring design by asserting that consumers associate it with the look of the invention itself. Whether a utility patent has expired or there has been no utility patent at all, a product design which has a particular appearance may be functional because it is "essential to the use or purpose of the article" or "affects the cost or quality of the article." Inwood, 456 U.S., at 850, n. 10, 102 S.Ct. 2182.

[17] TrafFix and some of its amici argue that the Patent Clause of the Constitution, Art. I, § 8, cl. 8, of its own force, prohibits the holder of an expired utility patent from claiming trade dress protection. Brief for Petitioner 33-36; Brief for Panduit Corp. as Amicus Curiae 3; Brief for Malla Pollack as Amicus Curiae 2. We need not resolve this question. If, despite the rule that functional features may not be the subject of trade dress protection, a case arises in which trade dress becomes the practical equivalent of an expired utility patent, that will be time enough to consider the matter. The judgment of the Court of Appeals is reversed, and the case is remanded for further proceedings consistent with this opinion.

1. What product feature does not affect the cost or quality of the product? The TrafFix Court held that "a feature is also functional when it is essential to the use or purpose of the device or when it affects the cost or quality of the device." Going to the second part of the TrafFix test ("affects the cost or quality of the device"), is there any product feature that would not affect in some way the cost or quality of the product? See In re Morton-Norwich Prod., Inc., 671 F.2d 1332, 1340 (C.C.P.A. 1982) ("[I]t appears to us that 'affects' and 'contributes to' are both so broad as to be meaningless, for every design 'affects' or 'contributes to' the utility of the article in which it is embodied."). Isn't any product feature therefore functional under TrafFix?

Would it be reasonable instead to read the second part of the TrafFix test as implicitly requiring that, to be functional, the product feature must significantly affect the cost or quality of the product-i.e., affect the cost in such a way that granting exclusive rights in the product feature would put competitors at a "significant non-reputation related disadvantage"? But if we read the second part of the TrafFix test in this way, then how is it different from the "competitive necessity" test? (To be clear, the word "significantly" does not appear in the second part of the TrafFix test and at least in theory the overall test means what it says: any product feature that is either (a) "essential to the use or purpose of the device" or (b) "affects the cost or quality of the device" should be held to be functional).

2. Functionality and food flavors. Under TrafFix, are flavors of food protectable as trademarks? In a case in which a restaurant franchisor sued a knock-off restaurant, the court found that food flavors are functional. See New York Pizzeria, Inc. v. Syal, 56 F. Supp. 3d 875, 882 (S.D. Tex. 2014) ("The flavor of food undoubtedly affects its quality, and is therefore a functional element of the product.").

ii. Utilitarian Functionality Case Law after TrafFix

After the Supreme Court issued its opinion in TrafFix, the lower courts applied the teachings of the opinion in a variety of ways. Presented here are excerpts from certain of the leading lower court functionality opinions after TrafFix.

In reading these opinions, consider the following questions:

• Which opinion represents the best interpretation of TrafFix?

• Which opinions' approaches to functionality are more pro-plaintiff (i.e., less likely to find a product feature to be functional) or more pro-defendant (i.e., more likely to find a product feature to be functional) in orientation?

• For each opinion, how close does the opinion's definition of de jure functionality come to a simple de facto functionality standard? {Plaintiff Eppendorf-Netheler-Hinz GMBH ("Eppendorf") manufactured disposable pipette tips and dispenser syringes to which the pipette tips can be attached for use in laboratories. Defendant Ritter GMBH ("Ritter") began to manufacture pipette tips that were interchangeable with and priced lower than Eppendorf's tips. Eppendorf brought suit against Ritter for, among other things, trade dress infringement. In June of 2000, ten months before the Supreme Court handed down TrafFix, Eppendorf's claims were tried before a jury, which returned a verdict in favor of Eppendorf. The district court denied Ritter's motion for judgment as a matter of law. Ritter appealed.} EDITH H. JONES, Circuit Judge . . . . [2] The crucial issue presented by this appeal is whether the eight design elements of the Eppendorf Combitips are functional as a matter of law. This case was tried in June of 2000, almost ten months before the Supreme Court decided TrafFix. The district court, correctly applying this circuit's utilitarian test of functionality, instructed the jury as follows:

A design or characteristic is nonfunctional if there are reasonably effective and efficient alternatives possible. Hence, a product's trade dress is functional only, one, if competitors need to incorporate it in order to compete effectively because it is essential to the product's use, or, two, if it significantly affects the cost or quality of the article. A design is functional and thus unprotectable if it is one of a limited number of equally efficient options available to competitors and free competition would be significantly disadvantaged by according the design trademark protection.

Relying on this instruction, the jury determined that the Combitips were non-functional. Ritter and RK Manufacturing moved for judgment as a matter of law on the issue of functionality, and the district court denied the motion. . . . .

[3] Eppendorf contends that the evidence supports the jury's finding of non-functionality because "[t]he evidence clearly established that there were alternative designs to each of the eight non-functional features." Appellee's Brief at 20. Indeed, there is extensive testimony in the record regarding available alternative designs for each of the eight elements. For example, Eppendorf's expert testified that the number of fins under the flange "could be increased or decreased or their appearance could be changed." Appellee's Brief at 5. Thus, Eppendorf argues that the fins are non-functional because alternative designs are available to competitors in the marketplace.

[4] Eppendorf's argument, while consistent with this circuit's utilitarian definition of functionality, is unpersuasive in light of the Court's discussion of functionality in TrafFix. As explained above, the primary test for functionality is whether the product feature is essential to the use or purpose of the product or if it affects the cost or quality of the product. In TrafFix, the Court determined that the dual-spring design on a wind-resistant road sign was functional because the dual-spring design "provides a unique and useful mechanism to resist the force of the wind." 532 U.S. at 33, 121 S.Ct. at 1262. The Court rejected the argument that the springs were non-functional because a competitor could use three or four springs which would serve the same purpose. Id. The Court explained, There is no need, furthermore, to engage, as did the Court of Appeals, in speculation about other design possibilities, such as using three or four springs which might serve the same purpose . . . . The dual-spring design is not an arbitrary flourish in the configuration of [the road sign]; it is the reason the device works. Other designs need not be attempted.

Id. at 33-34, 121 S.Ct. at 1261. Accordingly, the design features for which Eppendorf seeks trade dress rights are functional if they are essential to the use or purpose of the Combitips or affect the cost or quality of the Combitips. The availability of alternative designs is irrelevant.

[5] In this case it is undisputed that the Combitips's fins provide necessary support for the flange. Without the fins, the flange is subject to deformation. The only testimony offered by Eppendorf to prove non-functionality of the fins related to the existence of alternative design possibilities. Eppendorf's functionality expert testified that the appearance and number of fins could be changed without affecting the function of the fins. Eppendorf did not prove, however, that the fins are an arbitrary flourish which serve no purpose in the Combitips. Rather, Eppendorf's experts concede that fins of some shape, size or number are necessary to provide support for the flange and to prevent deformation of the product. Thus, the fins are design elements necessary to the operation of the product. 5 Because the fins are essential to the operation of the Combitips, they are functional as a matter of law, and it is unnecessary to consider design alternatives available in the marketplace. TrafFix, 532 U.S. at 33-34.

[6] Likewise, a careful review of the record demonstrates that Eppendorf failed to prove that the remaining Combitip design elements are unnecessary, non-essential design elements. It is undisputed that: (1) The flange is necessary to connect the Combitip to the dispenser syringe; (2) The rings on the plunger head are necessary to lock the plunger into a cylinder in the dispenser syringe; (3) The plunger is necessary to push liquids out of the tip, and the ribs on the plunger stabilize its action; (4) The tips at the lower end of the Combitips are designed to easily fit into test tubes and other receptacles; (5) The size of the Combitip determines the dispensed volume, and size is essential to accurate and efficient dispensing; (6) The color scheme used on the Combitip-clear plastic with black lettering-enables the user easily to see and measure the amount of liquid in the Combitip, and black is standard in the medical industry; and (7) The stumps of the larger Combitips must be angled to separate air bubbles from the liquid and ensure that the full volume of liquid is dispensed. Thus, all eight design elements identified by Eppendorf are essential to the operation of the Combitips.

[7] Eppendorf's theory of non-functionality focused on the existence of alternative designs. Eppendorf's design expert summarized Eppendorf's approach to functionality: "My conclusion was that to achieve the same functional purpose, [the design elements identified by Eppendorf] can be changed significantly, considerably without affecting the overall intended purpose." Although alternative designs are relevant to the utilitarian test of functionality, alternative designs are not germane to the traditional test for functionality. Each of the eight design elements identified by Eppendorf is essential to the use or purpose of the Combitips, and is not arbitrary or ornamental features. Therefore, no reasonable juror could conclude that Eppendorf carried its burden of proving non-functionality. . . . . [8] Accordingly, we REVERSE the judgment of the district court and RENDER judgment for Ritter and RK Manufacturing. We likewise VACATE the injunction entered by the district court . . . .

1. Sixth Circuit application of TrafFix. Just as it did with Eppendorf in the Fifth Circuit, TrafFix directly altered the outcome of a functionality case being litigated in the Sixth Circuit when TrafFix was handed down. In Antioch Co. v. Western Trimming Corp., 196 F.Supp.2d 635 (S.D.Ohio 2002), the district court initially found that the plaintiff's scrap book design was nonfunctional in light of the availability of alternative designs, but the court invited the defendant to renew its motion for summary judgment on the issue if TrafFix altered the legal framework for assessing trade dress functionality. The defendant did so and the district court then ruled that the trade dress at issue was functional. The Sixth Circuit affirmed. See Antioch Co. v. Western Trimming Corp., 347 F.3d 150, 156-157 (6th Cir. 2003) ("[A] a court is not required to examine alternative designs when applying the traditional test for functionality. That much is clear from TrafFix Devices . . . . The dual strap-hinge design, spine cover, padded album cover, and reinforced pages are all components that are essential to the use of Antioch's album and affect its quality. We thus agree with the district court's conclusion that there was no genuine issue of material fact regarding the functionality of Antioch's album under the traditional Inwood test." (emphasis in original)).

Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp. 986 F.3d 250 (3d Cir. 2021) BIBAS, Circuit Judge.

[1] This is a tale of more than just desserts. Decades ago, Ezaki Glico invented Pocky, a chocolate-covered cookie stick. Pocky was very popular. And its success drew imitators, including Lotte's Pepero. Ezaki Glico now sues Lotte for trade-dress infringement.

[2] The District Court granted Lotte summary judgment, finding that because Pocky's design is functional, Ezaki Glico has no trade-dress protection. We agree. Trade dress is limited to designs that identify a product's source. It does not safeguard designs that are functional-that is, useful. Patent law protects useful inventions, but trademark law does not. We will thus affirm.

A. A cookie is born: Ezaki Glico's Pocky

[3] Ezaki Glico is a Japanese confectionery company. For more than half a century, it has made and sold Pocky: a product line of thin, stick-shaped cookies (what the British call biscuits). These cookies are partly coated with chocolate or a flavored cream; some have crushed almonds too. The end of each is left partly uncoated to serve as a handle. Ezaki Glico makes Pocky in both a standard and an "Ultra Slim" size. Appellant's Br. 9.

[4] In 1978, Ezaki Glico started selling Pocky in the United States through its wholly owned subsidiary here. Since then, it has tried to fend off competitors by registering U.S. trademarks and patents. It has two Pocky product configurations registered as trade dresses.

[5] Ezaki Glico also has a utility patent for a "Stick Shaped Snack and Method for Producing the Same." The first thirteen claims in the patent describe methods for making a stick-shaped snack. The final claim covers "[a] stick-shaped snack made by the method of claim 1." The width of that stick-shaped snack matches that of Pocky Ultra Slim.

B. A new cookie comes to town: Lotte's Pepero

[6] Imitation is the sincerest form of flattery, and others have noted Pocky's appeal. Starting in 1983, another confectionery company called Lotte started making Pepero. These snacks are also stick-shaped cookies (biscuits) partly coated in chocolate or a flavored cream, and some have crushed almonds too. It looks remarkably like Pocky. Here are the two products side by side: [7] Lotte and its U.S. subsidiary have been selling Pepero in the United States for more than three decades.

[8] From 1993 to 1995, Ezaki Glico sent letters to Lotte, notifying Lotte of its registered trade dress and asking it to cease and desist selling Pepero in the United States. Lotte assured Ezaki Glico that it would stop until they resolved their dispute. But Lotte resumed selling Pepero. For the next two decades, Ezaki Glico took no further action. [9] In 2015, Ezaki Glico sued Lotte in federal court for selling Pepero. Under federal law, Ezaki Glico alleged trademark infringement and unfair competition, in violation of the Lanham (Trademark) Act § § 32 and 43(a), 15 U.S.C. § § 1114, 1125(a)(1)(A). Under New Jersey law, it alleged trademark infringement and unfair competition, in violation of both the common law and the New Jersey Fair Trade Act, N.J.S.A. § 56:4-1 and 2.

[10] After discovery, the District Court granted summary judgment for Lotte, holding that because Pocky's product configuration is functional, it is not protected as trade dress. Kaisha v. Lotte Int'l Am. Corp., No. 15-5477, 2019 WL 8405592, at *3 (D.N.J. July 31, 2019). [11] Ezaki Glico now appeals. . . .

[12] We review the District Court's grant of summary judgment de novo. Cranbury Brick Yard, LLC v. United States, 943 F.3d 701, 708 (3d Cir. 2019). We will affirm if no material fact is genuinely disputed and if, viewing the facts most favorably to Ezaki Glico, Lotte merits judgment as a matter of law. Fed. R. Civ. P. 56(a). Both of Ezaki Glico's Lanham Act claims depend on the validity of its trade dress. New Jersey's unfair-competition and trademark laws are not significantly different from federal law, so our analysis of Ezaki Glico's Lanham Act claims applies equally to dispose of its state-law claims. See Am. Greetings Corp. v. Dan-Dee Imports, Inc., 807 F.2d 1136, 1141 (3d Cir. 1986). Following the parties' lead, we focus on federal trademark law. [13] Under the statute, the key issue is whether Pocky's trade dress is functional. Lotte says that it is; Ezaki Glico says no. Ezaki Glico equates "functional" with "essential." Appellants' Br. 18, 25 (emphases omitted). But that test is too narrow. It misreads the Lanham Act's text and its relationship with the Patent Act. Under both the statute and the caselaw, a feature's particular design is functional if it is useful. And there are several ways to show functionality.

II. TRADE-DRESS LAW DOES NOT PROTECT PRODUCT DESIGNS THAT ARE USEFUL

A. Patent law protects useful designs, while trademark law does not [14] Copying is usually legal. It is part of market competition. As a rule, unless a patent, copyright, or the like protects an item, competitors are free to copy it. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29 (2001).

[15] The Constitution does authorize Congress to grant exclusive patents and copyrights "[t]o promote the Progress of Science and useful Arts," but only "for limited Times." U.S. Const. art. I, § 8, cl. 8. Utility patents promote "Science and useful Arts" by protecting inventions that are "new and useful." 35 U.S.C. § 101. Design patents protect "any new, original and ornamental design." Id. § 171(a). In keeping with the Constitution's time limit, utility patents last for twenty years, and design patents last for only fifteen years. Id. § § 154(a)(2), 173. If there is no patent, or once a patent expires, competitors are free to copy "publicly known design and utilitarian ideas." Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 152 (1989); accord Qualitex Co. v. Jacobson Prod. Co., Inc., 514 U.S. 159, 164 (1995). This way, sellers can compete and build on one another's innovations. That competition improves quality and lowers consumers' costs.

[16] By contrast, trademark law protects not inventions or designs per se, but branding. . . . Trademark law can protect a product's "trade dress [,] [which] is the overall look of a product or business." Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303, 308 (3d Cir. 2014). That includes not only a product's packaging but also its design, such as its size, shape, and color. Id.; Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 209 (2000).

[17] We are careful to keep trademark law in its lane. Trade dress, like trademark law generally, is limited to protecting the owner's goodwill and preventing consumers from being confused about the source of a product. Shire US Inc. v. Barr Labs., Inc., 329 F.3d 348, 353 (3d Cir. 2003). We must not overextend it to protect all of a product's features, because "product design almost invariably serves purposes other than source identification." TrafFix, 532 U.S. at 29 (quoting Wal-Mart, 529 U.S. at 213). "Trade dress protection . . . is not intended to create patent-like rights in innovative aspects of product design." Shire, 329 F.3d at 353. If it did, it could override restrictions on what is patentable and for how long. Qualitex, 514 U.S. at 164-65. After all, trademarks have no time limit.

[18] The functionality doctrine keeps trademarks from usurping the place of patents. The Patent and Trademark Office cannot register any mark that "comprises any matter that, as a whole, is functional." 15 U.S.C. § 1052(e)(5). Even after a mark is registered, it is a defense to infringement "[t]hat the mark is functional." Id. § 1115(b) (8); see also id. § 1125(a)(3) (providing that the holder of an unregistered mark must prove that the mark "is not functional"). Thus, even if copying would confuse consumers about a product's source, competitors may copy unpatented functional designs.

B. Functional designs need not be essential, just useful [19] The core dispute here is how to define "functional." Ezaki Glico reads it narrowly, equating it with "essential." Appellant's Br. 18, 25. But that is not what the word means.

[20] Since the Lanham Act does not define functionality, we start with its ordinary meaning. A feature's design is functional if it is "designed or developed chiefly from the point of view of use: UTILITARIAN." Functional (def. 2a), Webster's Third New International Dictionary (1966). So something is functional as long as it is "practical, utilitarian"-in a word, useful. Functional (def. 2d), Oxford English Dictionary (2d ed. 1989). The word requires nothing more.

[21] Reading functionality as usefulness explains how the Lanham Act fits with the Patent Act. Utility patents, not trademarks, protect inventions or designs that are "new and useful." 35 U.S.C. § 101. If the Lanham Act protected designs that were useful but not essential, as Ezaki Glico claims, it would invade the Patent Act's domain. Because the Lanham Act excludes useful designs, the two statutes rule different realms. [22] Precedent also supports defining functional as useful. In Qualitex, the Supreme Court described the functionality doctrine as protecting competition by keeping a producer from perpetually "control[ling] a useful product feature." 514 U.S. at 164. In TrafFix, the Court described functionality as depending on whether "the feature in question is shown as a useful part of the invention." 532 U.S. at 34. It contrasted functional features disclosed in a utility patent with "arbitrary, incidental, or ornamental aspects" that "do not serve a purpose within the terms of the utility patent." Id. And in Wal-Mart, the Court contrasted designs that only "identify the source" with those that "render the product itself more useful or more appealing." 529 U.S. at 213. "[M]ore useful or more appealing" is a far cry from essential.

[23] Conversely, a design is not functional if all it does is identify its maker. "Proof of nonfunctionality generally requires a showing that the element of the product serves no purpose other than identification." Keene Corp. v. Paraflex Indus., Inc., 653 F.2d 822, 826 (3d Cir. 1981) (quoting SK&F, Co. v. Premo Pharm. Labs., Inc., 625 F.2d 1055, 1063 (3d Cir. 1980)). But if a design gives a product an edge in usefulness, then it is functional.

[24] Ezaki Glico resists this reading by focusing on one phrase from Qualitex. The heart of its claim is the first sentence of its argument: "A product's configuration is functional for purposes of trade dress protection only 'if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.'" Appellants' Br. 22 (quoting Qualitex, 514 U.S. at 165, and adding the emphasis). But the word "only" is nowhere on the page it cites. Though Ezaki Glico's forceful brief repeats "essential" more than four dozen times and structures its case around that touchstone, the authority does not support its drumbeat.

[25] On the contrary, the Supreme Court recognizes several ways to show that a product feature is functional. One way is indeed to show that a feature "is essential to the use or purpose of the article." Qualitex, 514 U.S. at 165 (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982)). Another is if "it affects the cost or quality of the article." Id. (Ezaki Glico keeps skipping over this part of the test.) At least in some cases, a feature is functional and unprotected if the "exclusive use of [the feature] would put competitors at a significant non-reputation-related disadvantage." TrafFix, 532 U.S. at 32 (quoting Qualitex, 514 U.S. at 165). All of these are different ways of showing usefulness. (Though this last inquiry is especially apt for proving aesthetic functionality, the Court has not specifically limited it to that context. See TrafFix, 532 U.S. at 33.) On the other hand, a feature is "not functional" if, for instance, "it is merely an ornamental, incidental, or arbitrary aspect of the device." Id. at 30.

[26] We analyze functionality not at the level of the entire product or type of feature, but at the level of the particular design chosen for feature(s). Just "because an article is useful for some purpose," it does not follow that "all design features of that article must be 'functional.'" 1 McCarthy § 7:70 (emphases added). The question is not whether the product or feature is useful, but whether "the particular shape and form" chosen for that feature is. Id.

[27] For instance, though ironing-board pads need "to use some color . . . to avoid noticeable stains," there is no functional reason to use green-gold in particular. Qualitex, 514 U.S. at 166. Though French press coffeemakers need some handle, there is no functional reason to design the particular handle in the shape of a "C." Bodum USA, Inc. v. A Top New Casting Inc., 927 F.3d 486, 492-93 (7th Cir. 2019) (also noting that the design sacrificed ergonomics). And though armchairs need some armrest, there is no functional reason to design the particular armrest as a trapezoid. Blumenthal Distrib., Inc. v. Herman Miller, Inc., 963 F.3d 859, 867-68 (9th Cir. 2020) (also noting that the design sacrificed comfort). Ironingboard colors, coffee-pot handles, and armrests are all generally useful. But the particular designs chosen in those cases offered no edge in usefulness.

[28] Also, a combination of functional and non-functional features can be protected as trade dress, so long as the non-functional features help make the overall design distinctive and identify its source. See Am. Greetings, 807 F.2d at 1143.

[29] But a product's design, including its shape, is often useful and thus functional. For example, when Nabisco sued Kellogg for making its shredded wheat pillow-shaped, just like Nabisco's, the Supreme Court rejected the unfair-competition claim. The pillow shape is functional because using another shape would increase shredded wheat's cost and lower its quality. Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111, 122 (1938). For the same reason, the Court rejected a challenge to copying the exact shape of a pole lamp. Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 231-32 (1964). And if an inventor created a new light-bulb shape that improved illumination, he could not trademark that shape. Qualitex, 514 U.S. at 165. That would be true even if consumers associated the bulb shape with its inventor, because trademarking it would "frustrat[e] competitors' legitimate efforts to produce an equivalent illumination-enhancing bulb." Id. So long as the design improves cost, quality, or the like, it cannot be protected as trade dress. The shape need only be useful, not essential. Conversely, a distinctive logo, pattern, or other arbitrary shape or style may be non-functional and protectable as a trade dress.

[30] As the leading trademark treatise concurs, "functional" means useful. "To boil it down to a phrase: something is 'functional' if it works better in this shape." 1 McCarthy § 7:63. That includes features that make a product cheaper or easier to make or use. Id. Because the functionality bar is supposed to keep "trade dress from creating 'back-door patents,' . . .. the test of what is 'functional' should be very similar to that of patent law." Id. § 7:67.

[31] There are several ways to prove functionality. First, evidence can directly show that a feature or design makes a product work better. See Am. Greetings, 807 F.2d at 1142 (treating as functional "tummy graphics" on teddy bears because they signal each bear's personality). Second, it is "strong evidence" of functionality that a product's marketer touts a feature's usefulness. Id. at 1142-43. Third, "[a] utility patent is strong evidence that the features therein claimed are functional." TrafFix, 532 U.S. at 29. Fourth, if there are only a few ways to design a product, the design is functional. Keene, 653 F.2d at 827. But the converse is not necessarily true: the existence of other workable designs is relevant evidence but not independently enough to make a design non-functional. Id.; 1 McCarthy § 7:75 (interpreting TrafFix, 532 U.S. at 33-34).

[32] Our list is not exhaustive; there may be other considerations. The Federal Circuit and other sister circuits also use similar inquiries. See, e.g., Georgia [33] With these definitions and inquiries in mind, we can now apply them to this case.

[34] To decide whether a trade dress is functional, we look at the usefulness of the exact feature or set of features claimed by the trade dress. See Am. Greetings, 807 F.2d at 1141. Ezaki Glico has two registered Pocky trade dresses, both broad. The first "comprises an elongated rod comprising biscuit or the like, partially covered with chocolate." App 10, 1448. The second consists of the same sort of snack, along with almonds on top of the chocolate or cream.

[35] In a picture, Ezaki Glico's trade dresses include all cookies like these: [36] Ezaki Glico argues that none of these features is essential to make the snack easy to eat. But that is the wrong test. Lotte has shown that Pocky's design is useful and thus functional.

A. Pocky's design makes it work better as a snack

[37] Every feature of Pocky's registration relates to the practical functions of holding, eating, sharing, or packing the snack. Consider each stick's uncoated handle. Ezaki Glico's internal documents show that it wanted to make a snack that people could eat without getting chocolate on their hands. Pocky was born when Ezaki Glico found that it could coat just part of a cookie stick, leaving people an uncoated place to hold it. So it designed Pocky's handle to be useful.

[38] The same is true of Pocky's stick shape. As Ezaki Glico recognizes, the stick shape makes it "easy to hold, so it c[an] be shared with others to enjoy as a snack." App. 595. It also lets people eat the cookie without having to open their mouths wide. And the thin, compact shape lets Ezaki Glico pack many sticks in each box, enough to share with friends.

[39] Viewed as a whole, Pocky's trade dress is functional. The claimed features are not arbitrary or ornamental flourishes that serve only to identify Ezaki Glico as the source. The design makes Pocky more useful as a snack, and its advantages make Pocky more appealing to consumers for reasons well beyond reputation. See Kellogg, 305 U.S. at 120. As Ezaki Glico's own documents acknowledge, "Pocky provides a functional value [Enjoy chocolate lightly]." App. 636 (bracketed material in original).

B. Ezaki Glico promotes Pocky's utilitarian advantages

[40] There is plenty of evidence that Ezaki Glico promotes Pocky's "convenient design." App. 646. Its ads tout all the useful features described above. It advertises "the no mess handle of the Pocky stick," which "mak[es] it easier for multi-tasking without getting chocolate on your hands." App. 648, 651. It also describes Pocky as "[p]ortable," since "one compact, easy-to-carry package holds plentiful amounts of Pocky." App. 648. "With plenty of sticks in each package, Pocky lends itself to sharing anytime, anywhere, and with anyone." App. 655. These promotions confirm that Pocky's design is functional.

C. There are alternative designs, but that does not make Pocky's design nonfunctional

[41] Lotte could have shaped its Pepero differently. Ezaki Glico offers nine examples of partly-chocolate-coated snacks that do not look like Pocky. That is hardly dispositive. As we noted in Keene, even when there are alternatives, the evidence can still show that a product design is functional. 653 F.2d at 827. That is true here. Every aspect of Pocky is useful. The nine other designs do not make it less so.

D. Ezaki Glico's utility patent for a manufacturing method is irrelevant

[42] Finally, Lotte argues that Ezaki Glico's utility patent for a "Stick Shaped Snack and Method for Producing the Same" proves functionality. It does not.

[43] As TrafFix explained, "[a] utility patent is strong evidence that the features therein claimed are functional." 532 U.S. at 29. This is because patented items must be "useful." 35 U.S.C. § 101. If a patentee relied on a product's feature to show that the product was patentable, that reliance is good evidence that the feature is useful. As TrafFix put it, the question is whether the "central advance" of the utility patent is also "the essential feature of the trade dress" that the owners want to protect. 532 U.S. at 30, 121 S.Ct. 1255. So Ezaki Glico's utility patent would be strong evidence of functionality if the features it claimed overlapped with its trade dress. But they do not.

[44] The trade dress that Ezaki Glico defends is a stick-shaped snack that is partly coated with chocolate or cream. Yet those features are not the "central advance" of its utility patent. Instead, the patent's innovation is a better method for making the snack's stick shape. The method is useful for making the shape whether or not the shape itself is useful for anything. Thus, the patent's mention of the shape says nothing about whether the shape is functional.

[45] The District Court erroneously considered the utility patent. But that error was immaterial. Even setting that aside, many other factors show that Pocky's trade dress is functional and so not protectable. Thus, the District Court properly granted summary judgment for Lotte. We need not reach other possible grounds for affirmance. * * * * * [46] Though Ezaki Glico created Pocky, it cannot use trade dress protection to keep competitors from copying it. The Lanham Act protects features that serve only to identify their source. It does not cover functional (that is, useful) features. That is the domain of patents, not trademarks. There is no real dispute that Pocky's design is useful, so the trade dress is not protectable. We will thus affirm. That's the way the cookie crumbles.

The following opinion references the "Louboutin test" for functionality that the Second Circuit set out in Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206 (2d Cir. 2012). Louboutin was essentially an aesthetic functionality case and is substantially excerpted below in Part I.B.1.b.

Sulzer Mixpac AG v. A&N Trading Company 988 F.3d 174 (2d Cir. 2021)

[1] If a product's trade dress is functional, there can be no trade dress protection. The functionality doctrine is at the core of the parties' dispute. Plaintiff-Counter-Defendant-Appellee Sulzer Mixpac AG ("Mixpac") and Defendants-Counter-Claimants-Appellants A&N Trading Company, A&N Trading Co., Ltd., and Sung Bin An, also known as Tony An (collectively, "A&N") are competitors in the U.S. market for mixing tips used by dentists to create impressions of teeth for dental procedures, such as crowns.

[2] A&N appeals from a final judgment and permanent injunction entered in the United States District Court for the Southern District of New York (Lewis A. Kaplan, J.) on Mixpac's claims of unfair competition, common law trademark infringement, and trademark infringement, trademark counterfeiting, and false designation of origin under the Trademark Act of 1946 (the "Lanham Act"), and on A&N's counterclaims seeking a declaratory judgment that Mixpac's trade dress is functional. The district court entered judgment for Mixpac on these counts. A&N argues on appeal that Mixpac's use of particular colors on mixing tips is functional because the colors serve as a color-coding scheme that signifies the size of a mixing tip.

[3] Following a one-day bench trial, the district court concluded that Mixpac's use of particular colors on mixing tips was not functional, as the colors add to manufacturing costs and other companies use different or no colors for their mixing tips. We disagree. The evidence establishes that the colors signify mixing tip sizes, enabling users to more easily match cartridges to the appropriate mixing tips. Therefore, we conclude that Mixpac's trade dress is functional. We reverse the judgment of the district court, and remand.

[4] Mixpac manufactures a system to mix adhesives for dental applications. The system consists of a dispenser-like caulking gun, a cartridge containing two cylinders, and a mixing tip. Mixpac manufactures all three parts of the system and is a leading supplier of mixing tips. A mixing tip is composed of a cylinder that contains helixes that blend components as they pass through the tip. The materials that are mixed come from a two-cylinder cartridge. The mixing tip is attached to the cartridge via the mixing tip's cap. The cartridge, in turn, is attached to the dispenser-like caulking gun. When the trigger of the caulking gun is pulled, the components inside the cartridge are pushed into the mixing tip for blending. To accommodate different types of dental procedures, mixing tips vary in their diameter, the length of the helixes that mix component materials, and cap sizes.

[5] Mixpac's customers are primarily dental material manufacturers such as 3M ESPE and Dentsply that buy Mixpac cartridges, fill them with their own dental materials, and sell sets of filled cartridges and mixing tips to dental distributors. The distributors, in turn, sell to dental professionals. Mixpac also sells mixing tips directly to dental distributors, such as Henry Schein.

[6] A&N Trading Company . . . distributes mixing tips that are manufactured by Seil Global Co., Ltd. ("Seil Global"). [7] Mixpac owns twelve U.S. trademark registrations for particular colors on mixing tips. On March 23, 2010, it obtained trademarks on the principal register for the use of yellow and teal on mixing tip caps. On June 14, 2011, it obtained trademarks on the principal register for the use of blue, pink, purple, and brown on mixing tip caps. In January 2015 and January 2016, it obtained registered marks on the principal register for these same colors as "applied to the lower portion of dental mixing tips." Mixpac also owns trademarks on the supplemental register for yellow, teal, blue, pink, purple, and brown (collectively, the "Candy Colors") as applied to mixing tip cylinders and helixes, which it obtained in July and November of 2017. 2 . . . .

II. Mixpac's Trademark Registrations and A&N's Alleged Infringement

[8] Notwithstanding Mixpac's trademark registrations, A&N displayed and advertised mixing tips with clear caps and colored helixes during the 2016 Greater New York Dental Meeting ("2016 GNYDM"), held from November 27-30, 2016. The colors were identical or nearly identical to the colors on Mixpac's mixing tips. . . . Market Segment Healthcare; and expert witness Dr. Howard S. Glazer, a dentist with a general dental practice in Fort Lee, New Jersey. [11] The witnesses testified as to the Candy Colors' purpose. Jutzi testified that applying Candy Colors to the mixing tips "adds time and significant cost" and it "would be less expensive for Mixpac to make clear mixing tips without any color." He testified that while "Mixpac makes mixing tips with different sizes and types in the same color, and also the same size in different colors . . . [it] provides cartridges and mixing tips that can be matched by the same color." His testimony on cross-examination (considered together with other evidence in the record) acknowledges that all yellow mixing tips are 4.2 millimeters in diameter, all teal mixing tips are 6.5 millimeters in diameter, and all blue mixing tips are 3.2 millimeters in diameter. Ferrari similarly testified on cross-examination that Mixpac's catalog identifies mixing tip diameters by color, where teal indicates 6.5 millimeters, pink indicates 5.4 millimeters, yellow indicates 4.2 millimeters, blue indicates 3.2 millimeters, and brown indicates 2.5 millimeters. Glazer testified that in dental practice he does "not use, or select, a replacement mixing tip based on [c]olor alone because each of the two-component materials used is unique."

[12] Additional evidence sheds light on the Candy Colors' purpose. In connection with the 2008 Litigation, Mixpac submitted declarations from its employees. In a declaration dated November 25, 2008, Richard J. Wilson, then Business Manager for Sulzer Mixpac USA, described that, "[t]o assist in identifying Mixpac's product and to enable users to quickly select a mixing tip that matches the proper cartridge, [Mixpac] chose a unique and arbitrary color coding system." Wilson further declared that the "colors of the cartridge cap are matched to the mixing tip to indicate the proper size and mixing ratio for the dental materials." . . . Further, Mixpac's advertising materials assert that "[i]n order to simplify handling MIXPAC is using color-coded mixers and outlet caps. The color of the outlet cap used for a certain dental product identifies the mixer best suited for th[e] product." [13] In addition to the bench trial testimony, the declarations of Mixpac employees, and Mixpac's advertising materials, websites advertise mixing tips based primarily on their color under Mixpac's system. A website for Dental City, for example, advertises a bag of 48 pink mixing tips with 5.4 millimeter diameters, the same diameter as Mixpac's pink mixing tips. Materials manufacturers also rely on Mixpac's color-coding scheme in their product use instructions. . . . [14] On August 14, 2019, the district court issued its findings of fact and conclusions of law, and a final judgment and permanent injunction in Mixpac's favor. The district court concluded that the Candy Colors are non-functional because Mixpac's use of the colors "adds to the cost to Mixpac of making . . . mixing tips" and "[o]ther companies in the industry use different colors or no colors for their dental products including dental mixing tips." . . .

[15] {W}ith respect to functionality, the district court applied the functionality standard as discussed in Fabrication Enterprises, Inc. v. Hygenic Corp., 64 F.3d 53, 59 (2d Cir. 1995). It found that it was "satisfied from Dr. Glazer's quite persuasive and credible testimony that the degree of functionality here is small" and that "[m]ost important of all with respect to functionality is the fact that alternative designs are obviously and clearly available without impairing the utility of the product." It thus rejected A&N's argument that color is a proxy for diameter. The district court acknowledged however, that "a small minority" of dentists "have [probably] asked for a yellow tip or a blue tip." . . . . 10 (1982)). Product features are essential when they are "dictated by the functions to be performed by the article." Id. (internal quotation marks omitted); accord Warner Bros., Inc. v. Gay Toys, Inc., 724 F.2d 327, 331 (2d Cir. 1983) ("[A] feature that merely accommodates a useful function is not enough."). A feature affects cost or quality when it "permits the article to be manufactured at a lower cost or constitutes an improvement in the operation of the goods." Louboutin, 696 F.3d at 219 (internal quotation marks omitted).

[17] A feature can still be functional even if it is not essential to a product's use or purpose and does not affect a product's cost or operation. This is referred to as aesthetic functionality, where "the aesthetic design of a product is itself the mark for which protection is sought." Id. at 219-20 (emphasis in original). In such instances, this Court considers whether "giving the markholder the right to use it exclusively would put competitors at a significant non-reputation-related disadvantage." Id. at 220 (internal quotation marks omitted).

[18] The district court did not apply the Louboutin test in either its oral statements on the record at the bench trial or in its findings of fact and conclusions of law. The district court's findings that Mixpac's use of colors for mixing tips adds to Mixpac's manufacturing costs and that some of Mixpac's competitors use different or no colors for their mixing tips are not clearly erroneous and are supported by the record. Jutzi testified that Mixpac incurs "significant cost" for adding Candy Colors to mixing tips. Ferrari testified that "[m]any other mixing tips use colors different from the Candy Colors" and discussed a colorless universal mixing tip that Coltene manufactures.

[19] A&N does not argue to the contrary. Instead, A&N argues that the mixing tips' color coding helps users identify useful product characteristics, such as diameter. Because the color coding aids users, A&N argues that it affects the quality of the mixing tips and is "essential to how they are intended to be used." The evidence elicited at the bench trial does not support A&N's argument that use of colors on mixing tips is essential to use of the product. Colorcoded mixing tips and cartridges are simply not akin to the "dual-spring" traffic sign design in TrafFix, where the dual-spring system afforded a "unique and useful mechanism to resist the force of the wind" and wind resistance is essential to a traffic sign's purpose of alerting drivers. TrafFix, 532 U.S. at 33. The district court did not make a factual finding that colors are essential to the use or purpose of mixing tips, and we decline to do so on this record. [20] The evidence elicited at the bench trial, however, firmly establishes that the colors signify diameter, which in turn assists users with selecting the proper cartridge for their needs. As Mixpac's own employees acknowledge, the colors enable users to quickly match the proper mixing tip with the proper cartridge, and thereby "improve[ ] the operation of the goods." Louboutin, 696 F.3d at 219 (internal quotation marks omitted). The colors on the mixing tips serve roughly the same purpose as the colors of the flash-frozen ice cream that the Eleventh Circuit considered in Dippin' Dots, Inc. v. Frosty Bites Distribution, LLC, where the ice cream's colors signified flavor, i.e., pink signified strawberry, white signified vanilla, and brown signified chocolate, and were therefore found to be functional. 369 F.3d 1197, 1203-04, 1207 (11th Cir. 2004); see also Inwood, 456 U.S. at 853, 856-58 (concluding that our Circuit erred when it set aside the district court's findings that colors of certain prescription drugs were functional, in part, because patients "associate[d] color with therapeutic effect" and "rel[ied] on color to differentiate one [drug] from another" because those facts were not clearly erroneous).

[21] The district court arguably came to this very conclusion when it acknowledged in its oral findings a "small" "degree of functionality," after noting that "there are probably cases in which some dentists have asked for a yellow tip or a blue tip." But its findings are unclear because it failed to apply the test set forth in Louboutin, and thus did not consider whether the colors affected the quality of the tips. Louboutin set out the three-step functionality test, where "[a]t the start, we address the two prongs of the Inwood test, asking whether the design feature is either essential to the use or purpose or affects the cost or quality of the product at issue. . . . Next, if necessary, we turn to a third prong, which is the competition inquiry . . . ." 696 F.3d at 220 (internal quotation marks omitted). We stressed that "if a design feature would, from a traditional utilitarian perspective, be considered essential to the use or purpose of the article, or to affect its cost or quality, then the design feature is functional under Inwood and our inquiry ends." Id. (internal quotation marks omitted). If and only if a design feature is not functional in the traditional sense, do we move to the fact-intensive test where the feature must be "shown not to have a significant effect on competition in order to receive trademark protection." Id. The district court erred because it did not apply this test when it considered only that Mixpac's use of the Candy Colors adds to manufacturing costs and that other companies use different or no colors [22] Mixpac does not refute by evidence or argument that, because the colors on the tip correspond to the tip sizes, the color affects the quality of the product. It argues only that Cisneros, A&N's expert witness, testified that choosing a mixing tip based on color alone would be "stupid." But that does nothing to counter A&N's argument because the functionality doctrine does not require that a product's functional feature be the only reason why relevant consumers purchase it. We thus conclude that the colors are functional, rendering Mixpac's trade dress unprotectible. Our finding of functionality means we need not reach A&N's arguments that the district court's counterfeiting and infringement analyses were fatally flawed. See TrafFix, 532 U.S. at 33 ("Functionality having been established, whether [the] design has acquired secondary meaning need not be considered. There is no need, furthermore, to engage . . . in speculation about other design possibilities . . . ."). . . . .

[1] The Supreme Court reversed {the Sixth Circuit in TrafFix}, finding that the court of appeals gave insufficient evidentiary weight to the expired utility patents in analyzing the functionality of the dual-spring design, and that it overread Qualitex: "the Court of Appeals . . . seemed to interpret {Qualitex} to mean that a necessary test for functionality is 'whether the particular product configuration is a competitive necessity.' . . . This was incorrect as a comprehensive definition." TrafFix, 121 S.Ct. at 1261. The Court then reaffirmed the "traditional rule" of Inwood that "a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." Id. The Court further held that once a product feature is found to be functional under this "traditional rule," "there is no need to proceed further to consider if there is competitive necessity for the feature," and consequently "[t]here is no need . . . to engage . . . in speculation about other design possibilities . . . . Other designs need not be attempted." Id. at 1262. 4[2] We do not understand the Supreme Court's decision in TrafFix to have altered the Morton-Norwich analysis. As noted above, the Morton-Norwich factors aid in the determination of whether a particular feature is functional, and the third factor focuses on the availability of "other alternatives." Morton-Norwich, 671 F.2d at 1341. We did not in the past under the third factor require that the opposing party establish that there was a "competitive necessity" for the product feature. Nothing in TrafFix suggests that consideration of alternative designs is not properly part of the overall mix, and we do not read the Court's observations in TrafFix as rendering the availability of alternative designs irrelevant. Rather, we conclude that the Court merely noted that once a product feature is found functional based on other considerationsfoot_6 there is no need to consider the availability of alternative designs, because the feature cannot be given trade dress protection merely because there are alternative designs available. But that does not mean that the availability of alternative designs cannot be a legitimate source of evidence to determine whether a feature is functional in the first place. We find it significant that neither party argues that TrafFix changed the law of functionality, and that scholarly commentary has reached exactly the same conclusion that we have:

In the author's view, the observations by the Supreme Court in TrafFix do not mean that the availability of alternative designs cannot be a legitimate source of evidence to determine in the first instance if a particular feature is in fact "functional." Rather, the Court merely said that once a design is found to be functional, it cannot be given trade dress status merely because there are alternative designs available . . . . . . . . . . . The existence of actual or potential alternative designs that work equally well strongly suggests that the particular design used by plaintiff is not needed by competitors to effectively compete on the merits.

[1] Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung Telecommunications America, LLC (collectively, "Samsung") appeal from a final judgment of the U.S. District Court for the Northern District of California in favor of Apple Inc. ("Apple").

[2] A jury found that Samsung infringed Apple's design and utility patents and diluted Apple's trade dresses. For the reasons that follow, we affirm the jury's verdict on the design patent infringements, the validity of two utility patent claims, and the damages awarded for the design and utility patent infringements appealed by Samsung. However, we reverse the jury's findings that the asserted trade dresses are protectable. We therefore vacate the jury's damages awards against the Samsung products that were found liable for trade dress dilution and remand for further proceedings consistent with this opinion.

[3] Apple sued Samsung in April 2011. On August 24, 2012, the first jury reached a verdict that numerous Samsung smartphones infringed and diluted Apple's patents and trade dresses in various combinations and awarded over $1 billion in damages.

[4] . . . The diluted trade dresses are Trademark Registration No. 3,470,983 ("′983 trade dress") and an unregistered trade dress defined in terms of certain elements in the configuration of the iPhone.

[5] Following the first jury trial, the district court upheld the jury's infringement, dilution, and validity findings over Samsung's post-trial motion [and a second post-trial motion]. On March 6, 2014, the district court entered a final judgment in favor of Apple, and Samsung filed a notice of appeal . . . .

[6] We review the denial of Samsung's post-trial motions under the Ninth Circuit's procedural standards . . . . The Ninth Circuit reviews de novo a denial of a motion for judgment as a matter of law . . . .

[7] The jury found Samsung liable for the likely dilution of Apple's iPhone trade dresses under the Lanham Act. When reviewing Lanham Act claims, we look to the law of the regional circuit where the district court sits. We therefore apply Ninth Circuit law. [8] The Ninth Circuit has explained that "[t]rade dress is the totality of elements in which a product or service is packaged or presented." Stephen W. Boney, Inc. v. Boney Servs., Inc., 127 F.3d 821, 828 (9th Cir. 1997). The essential purpose of a trade dress is the same as that of a trademarked word: to identify the source of the product. 1 McCarthy on Trademarks and Unfair Competition § 8:1 (4th ed.) ("[L]ike a word asserted to be a trademark, the elements making up the alleged trade dress must have been used in such a manner as to denote product source."). In this respect, "protection for trade dress exists to promote competition." TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 28, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001).

[9] The protection for source identification, however, must be balanced against "a fundamental right to compete through imitation of a competitor's product . . . ." Leatherman Tool Grp., Inc. v. Cooper Indus., Inc., 199 F.3d 1009, 1011-12 (9th Cir. 1999). This "right can only be temporarily denied by the patent or copyright laws." Id. In contrast, trademark law allows for a perpetual monopoly and its use in the protection of "physical details and design of a product" must be limited to those that are "nonfunctional." Id. at 1011-12; see also Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164-65 (1995) ("If a product's functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity)."). Thus, it is necessary for us to determine first whether Apple's asserted trade dresses, claiming elements from its iPhone product, are nonfunctional and therefore protectable.

[10] "In general terms, a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n. 10 (1982). "A product feature need only have some utilitarian advantage to be considered functional." Disc Golf Ass'n v. Champion Discs, Inc., 158 F.3d 1002, 1007 (9th Cir. 1998). A trade dress, taken as a whole, is functional if it is "in its particular shape because it works better in this shape." Leatherman, 199 F.3d at 1013.

[11] "[C]ourts have noted that it is, and should be, more difficult to claim product configuration trade dress than other forms of trade dress." Id. at 1012-13 (discussing cases). Accordingly, the Supreme Court and the Ninth Circuit have repeatedly found product configuration trade dresses functional and therefore non-protectable. See, e.g., TrafFix, 532 U.S. at 26-27, 35; Secalt S.A. v. Wuxi Shenxi Const. Mach. Co., 668 F.3d 677, 687 (9th Cir. 2012) (affirming summary judgment that a trade dress on a hoist design was functional); Disc Golf, 158 F.3d at 1006 (affirming summary judgment that a trade dress on a disc entrapment design was functional).

[12] Moreover, federal trademark registrations have been found insufficient to save product configuration trade dresses from conclusions of functionality. See, e.g., Talking Rain Beverage Co. v. S. Beach Beverage, 349 F.3d 601, 602 (9th Cir. 2003) (affirming summary judgment that registered trade dress covering a bottle design with a grip handle was functional); Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 782-83 (9th Cir. 2002) (affirming summary judgment that registered trade dress covering a handheld cutter design was functional). The Ninth Circuit has even reversed a jury verdict of non-functionality of a product configuration trade dress. See Leatherman, 199 F.3d at 1013 (reversing jury verdict that a trade dress on the overall appearance of a pocket tool was non-functional). Apple conceded during oral argument that it had not cited a single Ninth Circuit case that found a product configuration trade dress to be non-functional. Oral Arg. 49:0630, available at http://www.cafc.uscourts.gov/oral-argument-recordings/14-1335/all.

[13] The Ninth Circuit's high bar for non-functionality frames our review of the two iPhone trade dresses on appeal. While the parties argue without distinguishing the two trade dresses, the unregistered trade dress and the registered ′983 trade dress claim different details and are afforded different evidentiary presumptions under the Lanham Act. We analyze the two trade dresses separately below.

A. Unregistered Trade Dress [14] Apple claims elements from its iPhone 3G and 3GS products to define the asserted unregistered trade dress: a rectangular product with four evenly rounded corners; a flat, clear surface covering the front of the product; a display screen under the clear surface; substantial black borders above and below the display screen and narrower black borders on either side of the screen; and when the device is on, a row of small dots on the display screen, a matrix of colorful square icons with evenly rounded corners within the display screen, and an unchanging bottom dock of colorful square icons with evenly rounded corners set off from the display's other icons.

Appellee's Br. 10-11. As this trade dress is not registered on the principal federal trademark register, Apple "has the burden of proving that the claimed trade dress, taken as a whole, is not functional . . . ." See 15 U.S.C. § 1125(c)(4)(A).

[15] Apple argues that the unregistered trade dress is nonfunctional under each of the Disc Golf factors that the Ninth Circuit uses to analyze functionality: "(1) whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design, and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture." See Disc Golf, 158 F.3d at 1006. However, the Supreme Court has more recently held that "a feature is also functional . . . when it affects the cost or quality of the device." See TrafFix, 532 U.S. at 33. The Supreme Court's holding was recognized by the Ninth Circuit as "short circuiting some of the Disc Golf factors." Secalt, 668 F.3d at 686-87. Nevertheless, we explore Apple's contentions on each of the Disc Golf factors and conclude that there was insufficient evidence to support a jury finding in favor of non-functionality on any factor. 1. Utilitarian Advantage [16] Apple argues that "the iPhone's physical design did not 'contribute unusually . . . to the usability' of the device." Appellee's Br. 61. Apple further contends that the unregistered trade dress was "developed . . . not for 'superior performance.'" Id. at 62 n. 18. Neither "unusual usability" nor "superior performance," however, is the standard used by the Ninth Circuit to determine whether there is any utilitarian advantage. The Ninth Circuit "has never held, as [plaintiff] suggests, that the product feature must provide superior utilitarian advantages. To the contrary, [the Ninth Circuit] has suggested that in order to establish nonfunctionality the party with the burden must demonstrate that the product feature serves no purpose other than identification." Disc Golf, 158 F.3d at 1007 (internal quotation marks omitted).

[17] The requirement that the unregistered trade dress "serves no purpose other than identification" cannot be reasonably inferred from the evidence. Apple emphasizes a single aspect of its design, beauty, to imply the lack of other advantages. But the evidence showed that the iPhone's design pursued more than just beauty. Specifically, Apple's executive testified that the theme for the design of the iPhone was: to create a new breakthrough design for a phone that was beautiful and simple and easy to use and created a beautiful, smooth surface that had a touchscreen and went right to the rim with the bezel around it and looking for a look that we found was beautiful and easy to use and appealing.

[18] Moreover, Samsung cites extensive evidence in the record that showed the usability function of every single element in the unregistered trade dress. For example, rounded corners improve "pocketability" and "durability" and rectangular shape maximizes the display that can be accommodated. J.A. 40869-70; J.A. 42612-13. A flat clear surface on the front of the phone facilitates touch operation by fingers over a large display. J.A. 42616-17. The bezel protects the glass from impact when the phone is dropped. J.A. 40495. The borders around the display are sized to accommodate other components while minimizing the overall product dimensions. J.A. 40872. The row of dots in the user interface indicates multiple pages of application screens that are available. J.A. 41452-53. The icons allow users to differentiate the applications available to the users and the bottom dock of unchanging icons allows for quick access to the most commonly used applications. J.A. 42560-61; J.A. 40869-70. Apple rebuts none of this evidence.

[19] Apple conceded during oral argument that its trade dress "improved the quality [of the iPhone] in some respects." Oral Arg. 56:09-17. It is thus clear that the unregistered trade dress has a utilitarian advantage. See Disc Golf, 158 F.3d at 1007. [20] The next factor requires that purported alternative designs "offer exactly the same features" as the asserted trade dress in order to show non-functionality. Tie Tech, 296 F.3d at 786 (quoting Leatherman, 199 F.3d at 1013-14). A manufacturer "does not have rights under trade dress law to compel its competitors to resort to alternative designs which have a different set of advantages and disadvantages." Id.

[21] Apple, while asserting that there were "numerous alternative designs," fails to show that any of these alternatives offered exactly the same features as the asserted trade dress. Apple simply catalogs the mere existence of other design possibilities embodied in rejected iPhone prototypes and other manufacturers' smartphones. The "mere existence" of other designs, however, does not prove that the unregistered trade dress is non-functional. See Talking Rain, 349 F.3d at 604.

[22] "If a seller advertises the utilitarian advantages of a particular feature, this constitutes strong evidence of functionality." Disc Golf, 158 F.3d at 1009. An "inference" of a product feature's utility in the plaintiff's advertisement is enough to weigh in favor of functionality of a trade dress encompassing that feature. Id. [23] Apple argues that its advertising was "[f]ar from touting any utilitarian advantage of the iPhone design . . . ." Appellee's Br. 60. Apple relies on its executive's testimony that an iPhone advertisement, portraying "the distinctive design very clearly," was based on Apple's "product as hero" approach. Id. (quoting J.A. 40641-42; 40644:22). The "product as hero" approach refers to Apple's stylistic choice of making "the product the biggest, clearest, most obvious thing in [its] advertisements, often at the expense of anything else around it, to remove all the other elements of communication so [the viewer] see[s] the product most predominantly in the marketing." J.A. 40641-42.

[24] Apple's arguments focusing on its stylistic choice, however, fail to address the substance of its advertisements. The substance of the iPhone advertisement relied upon by Apple gave viewers "the ability to see a bit about how it might work," for example, "how flicking and scrolling and tapping and all these multitouch ideas simply [sic]." J.A. 40644:23-40645:2. Another advertisement cited by Apple similarly displayed the message, "[t]ouching is believing," under a picture showing a user's hand interacting with the graphical user interface of an iPhone. J.A. 24896. Apple fails to show that, on the substance, these demonstrations of the user interface on iPhone's touch screen involved the elements claimed in Apple's unregistered trade dress and why they were not touting the utilitarian advantage of the unregistered trade dress.

[25] The fourth factor considers whether a functional benefit in the asserted trade dress arises from "economies in manufacture or use," such as being "relatively simple or inexpensive to manufacture." Disc Golf, 158 F.3d at 1009.

[26] Apple contends that "[t]he iPhone design did not result from a 'comparatively simple or inexpensive method of manufacture'" because Apple experienced manufacturing challenges. Appellee's Br. 61 (quoting Talking Rain, 349 F.3d at 603). Apple's manufacturing challenges, however, resulted from the durability considerations for the iPhone and not from the design of the unregistered trade dress. According to Apple's witnesses, difficulties resulted from its choices of materials in using "hardened steel"; "very high, high grade of steel"; and, "glass that was not breakable enough, scratch resistant enough." Id. (quoting J.A. 40495-96, 41097). These materials were chosen, for example, for the iPhone to survive a drop:

If you drop this, you don't have to worry about the ground hitting the glass. You have to worry about the band of steel surrounding the glass hitting the glass . . . . In order to, to make it work, we had to use very high, high grade of steel because we couldn't have it sort of deflecting into the glass. J.A. 40495-96. The durability advantages that resulted from the manufacturing challenges, however, are outside the scope of what Apple defines as its unregistered trade dress. For the design elements that comprise Apple's unregistered trade dress, Apple points to no evidence in the record to show they were not relatively simple or inexpensive to manufacture. See Disc Golf, 158 F.3d at 1009 ("[Plaintiff], which has the burden of proof, offered no evidence that the [asserted] design was not relatively simple or inexpensive to manufacture.").

[27] In sum, Apple has failed to show that there was substantial evidence in the record to support a jury finding in favor of non-functionality for the unregistered trade dress on any of the Disc Golf factors. Apple fails to rebut the evidence that the elements in the unregistered trade dress serve the functional purpose of improving usability. Rather, Apple focuses on the "beauty" of its design, even though Apple pursued both "beauty" and functionality in the design of the iPhone. We therefore reverse the district court's denial of Samsung's motion for judgment as a matter of law that the unregistered trade dress is functional and therefore not protectable.

[28] In contrast to the unregistered trade dress, the ′983 trade dress is a federally registered trademark. The federal trademark registration provides "prima facie evidence" of non-functionality. Tie Tech, 296 F.3d at 782-83. This presumption "shift[s] the burden of production to the defendant . . . to provide evidence of functionality." Id. at 783. Once this presumption is overcome, the registration loses its legal significance on the issue of functionality. Id. ("In the face of sufficient and undisputed facts demonstrating functionality, . . . the registration loses its evidentiary significance.").

[29] The ′983 trade dress claims the design details in each of the sixteen icons on the iPhone's home screen framed by the iPhone's rounded-rectangular shape with silver edges and a black background:

The first icon depicts the letters "SMS" in green inside a white speech bubble on a green background;

. . . the seventh icon depicts a map with yellow and orange roads, a pin with a red head, and a red-and-blue road sign with the numeral "280" in white;

. . . the sixteenth icon depicts the distinctive configuration of applicant's media player device in white over an orange background.

′983 trade dress (omitting thirteen other icon design details for brevity).

[30] It is clear that individual elements claimed by the ′983 trade dress are functional. For example, there is no dispute that the claimed details such as "the seventh icon depicts a map with yellow and orange roads, a pin with a red head, and a red-and-blue road sign with the numeral '280' in white" are functional. See id. Apple's user interface expert testified on how icon designs promote usability. This expert agreed that "the whole point of an icon on a smartphone is to communicate to the consumer using that product, that if they hit that icon, certain functionality will occur on the phone." J.A. 41458-59. The expert further explained that icons are "[v]isual shorthand for something" and that "rectangular containers" for icons provide "more real estate" to accommodate the icon design. J.A. 41459, 41476. Apple rebuts none of this evidence.

[31] Apple contends instead that Samsung improperly disaggregates the ′983 trade dress into individual elements to argue functionality. But Apple fails to explain how the total combination of the sixteen icon designs in the context of iPhone's screen-dominated rounded-rectangular shape-all part of the iPhone's "easy to use" design theme-somehow negates the undisputed usability function of the individual elements. See J.A. 40722-23. Apple's own brief even relies on its expert's testimony about the "instant recognizability due to highly intuitive icon usage" on "the home screen of the iPhone." J.A. 41484; Appellee's Br. 43, 70, 71 (quoting J.A. 41484). Apple's expert was discussing an analysis of the iPhone's overall combination of icon designs that allowed a user to recognize quickly particular applications to use. J.A. 41484, 25487. The iPhone's usability advantage from the combination of its icon designs shows that the ′983 trade dress viewed as a whole "is nothing other than the assemblage of functional parts . . . ." See Tie Tech, 296 F.3d at 786 (quoting Leatherman, 199 F.3d at 1013). There is no "separate 'overall appearance' which is non-functional." Id. (quoting Leatherman, 199 F.3d at 1013). The undisputed facts thus demonstrate the functionality of the ′983 trade dress. "In the face of sufficient and undisputed facts demonstrating functionality, as in our case, the registration loses its evidentiary significance." See id. at 783.

[32] The burden thus shifts back to Apple. See id. But Apple offers no analysis of the icon designs claimed by the ′983 trade dress. Rather, Apple argues generically for its two trade dresses without distinction under the Disc Golf factors. Among Apple's lengthy citations to the record, we can find only two pieces of information that involve icon designs. One is Apple's user interface expert discussing other possible icon designs. The other is a citation to a print iPhone advertisement that included the icon designs claimed in the ′983 trade dress. These two citations, viewed in the most favorable light to Apple, would be relevant to only two of the Disc Golf factors: "alternative design" and "advertising." But the cited evidence suffers from the same defects as discussed in subsections I.A.2 and I.A.3. Specifically, the expert's discussion of other icon design possibilities does not show that the other design possibilities "offer[ed] exactly the same features" as the ′983 trade dress. See Tie Tech, 296 F.3d at 786 (quoting Leatherman, 199 F.3d at 1013-14). The print iPhone advertisement also fails to establish that, on the substance, it was not touting the utilitarian advantage of the ′983 trade dress. The evidence cited by Apple therefore does not show the non-functionality of the ′983 trade dress.

[33] In sum, the undisputed evidence shows the functionality of the registered ′983 trade dress and shifts the burden of proving non-functionality back to Apple. Apple, however, has failed to show that there was substantial evidence in the record to support a jury finding in favor of non-functionality for the ′983 trade dress on any of the Disc Golf factors. We therefore reverse the district court's denial of Samsung's motion for judgment as a matter of law that the ′983 trade dress is functional and therefore not protectable.

[34] Because we conclude that the jury's findings of non-functionality of the asserted trade dresses were not supported by substantial evidence, we do not reach Samsung's arguments on the fame and likely dilution of the asserted trade dresses, the Patent Clause of the Constitution, or the dilution damages.

{The Court went on to affirm all remaining district court holdings}.

Specialized Seating, Inc. v. Greenwich Industries, L.P. 616 F.3d 722 (7th Cir. 2010) {Declaratory defendant Greenwich Industries, L.P., doing business under the name Clarin, owned PTO Registration No. 2,803,875 for a trademark for folding chairs consisting of "a configuration of a folding chair containing an X-frame profile, a flat channel flanked on each side by rolled edges around the perimeter of the chair, two cross bars with a flat channel and rolled edges at the back bottom of the chair, one cross bar with a flat channel and rolled edges on the front bottom, protruding feet, and a back support, the outer sides of which slant inward." An image of the folding chair configuration is provided to the right. Specialized Seating, Inc. ("Specialized") sought a declaratory judgment that its folding chair design did not infringe Clarin's design. Specialized argued that Clarin's mark was functional. The district court held a bench trial and agreed, ordering that the registration be cancelled. Clarin appealed.} EASTERBROOK, Circuit Judge . . . .

[1] The [district] judge found that [Clarin's] x-frame construction is functional because it was designed to be an optimal tradeoff between a chair's weight (and thus its cost, since lighter chairs use less steel) and its strength; an x-frame chair also folds itself naturally when knocked over (an important consideration for large auditoriums, where it is vital that chairs not impede exit if a fire or panic breaks out); the flat channel at the seat's edge, where the attachment to the frame slides so that the chair can fold, was designed for strength and attaching hooks to link a chair with its nearest neighbor; the front and back cross bars contribute strength (and allow thinner tubing to be used in the rest of the frame); and the inward-sloping frame of the back support allows the chair to support greater vertical loads than Clarin's older "a-back" design, which the "b-back" design, depicted in the trademark registration, succeeded. The a-back design is on the left and the b-back on the right:

[2] Clarin chairs with a-back designs failed when the audience at rock concerts, seeking a better view, sat on top of the chairs' backs and put their feet on the seats. The tubing buckled at the bend in the frame. The b-back design is less likely to buckle when someone sits on it, and it also produces a somewhat wider back, which concert promoters see as a benefit. (Patrons sometimes try to get closer to the stage by stepping through rows of chairs. The gap between b-back chairs is smaller, so they are more effective at keeping crowds in place.)

[3] Having concluded not only that the overall design of Clarin's chair is functional, but also that each feature is functional, the district judge added that Clarin had defrauded the Patent and Trademark Office by giving misleadingly incomplete answers to the trademark examiner's questions. The examiner initially turned down Clarin's proposal to register the design as a trademark, observing that the design appeared to be functional. Clarin replied that the design was chosen for aesthetic rather than functional reasons. (This was not a complete answer, as attractiveness is a kind of function. See Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 860-61 (7th Cir. 2010). But we need not pursue that subject.) Clarin observed that a patent it held on an x-frame chair, No. 1,943,058, issued in 1934, did not include all of the features in the mark's design. What Clarin did not tell the examiner is that it held three other patents on x-frame designs: No. 1,600,248, issued in 1926; No. 2,137,803, issued in 1938; and No. 3,127,218, issued in 1964. The district judge concluded that the four patents collectively cover every feature of the design submitted for a trademark except the b-back, and that as the b-back is a functional improvement over the a-back Clarin should have disclosed all of these utility patents. Had it done so, the judge thought, the examiner would have refused to register the proposed mark. . . . .

[4] The district judge started from the proposition, which the Supreme Court articulated in TrafFix, that claims in an expired utility patent presumptively are functional. Since utility patents are supposed to be restricted to inventions that have utility, and thus are functional, that's a sensible starting point-and since inventions covered by utility patents pass into the public domain when the patent expires, it is inappropriate to use trademark law to afford extended protection to a patented invention. See also Jay Franco, 615 F.3d at 857-59. Clarin itself obtained four utility patents for aspects of the x-frame folding chair. These patents disclose every aspect of the asserted trademark design except for the b-back. And the district judge did not commit a clear error by concluding that the b-back design is a functional improvement over the a-back design. This means that the trademark design is functional as a unit, and that every important aspect of it is independently functional. It looks the way it does in order to be a better chair, not in order to be a better way of identifying who made it (the function of a trademark).

[5] We do not doubt that there are many other available functional designs. Sometimes the function of the functionality doctrine is to prevent firms from appropriating basic forms (such as the circle) that go into many designs. Our contemporaneous opinion in Jay Franco discusses that aspect of the functionality doctrine. This does not imply that preserving basic elements for the public domain is the doctrine's only role.

[6] Another goal, as TrafFix stressed, is to separate the spheres of patent and trademark law, and to ensure that the term of a patent is not extended beyond the period authorized by the legislature. A design such as Clarin's x-frame chair is functional not because it is the only way to do things, but because it represents one of many solutions to a problem. Clarin tells us that other designs are stronger, or thinner, or less likely to collapse when someone sits on the backrest, or lighter and so easier to carry and set up. Granted. But as Clarin's '248 patent states, the x-frame design achieves a favorable strength-to-weight ratio. Plastic chairs are lighter but weaker. Y-frame chairs are stronger but use more metal (and so are heavier and more expensive); some alternative designs must be made with box-shaped metal pieces to achieve strength, and this adds to weight and the cost of fabrication. The list of alternative designs is very long, and it is easy to see why hundreds of different-looking folding chairs are on the market. [7] What this says to us is that all of the designs are functional, in the sense that they represent different compromises along the axes of weight, strength, kind of material, ease of setup, ability to connect ("gang") the chairs together for maximum seating density, and so on. A novel or distinctive selection of attributes on these many dimensions can be protected for a time by a utility patent or a design patent, but it cannot be protected forever as one producer's trade dress. When the patent expires, other firms are free to copy the design to the last detail in order to increase competition and drive down the price that consumers pay. See, e.g., Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141(1989); Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964) . . . . [8] Because the district court did not commit clear error in finding Clarin's design to be functional, it is unnecessary to decide whether Clarin committed fraud on the Patent and Trademark Office . . . .

As the Supreme Court briefly explained in TrafFix, a product (or packaging) feature that performs no technical, mechanical function may nevertheless be barred from protection on the ground that it is "aesthetically functional." Under TrafFix, the test to determine whether a product feature is aesthetically functional is not the Inwood test. Instead, courts should ask whether there are a limited range of alternative designs available to competitors such that exclusive rights in the product feature would put competitors at a significant non-reputationrelated competitive disadvantage. What might have prompted courts to abandon the Inwood test in the aesthetic functionality context? A few classic illustrations of aesthetically functional product configuration from the Restatement (Third) of Unfair Competition may help to convey the general idea of aesthetic functionality: 8. A is the first seller to market candy intended for Valentine's Day in heartshaped boxes. Evidence establishes that the shape of the box is an important factor in the appeal of the product to a significant number of consumers. Because there are no alternative designs capable of satisfying the aesthetic desires of these prospective purchasers, the design of the box is functional . . . . 9. A manufactures outdoor lighting fixtures intended for mounting on the walls of commercial buildings to illuminate adjacent areas. The evidence establishes that architectural compatibility with the building is an important factor in the purchase of such fixtures and that A's product is considered to be aesthetically compatible with contemporary architecture. The evidence also establishes that only a limited number of designs are considered compatible with the type of buildings on which A's product is used. Because of the limited range of alternative designs available to competitors, a court may properly conclude that the design of the lighting fixture is functional under the rule stated in this Section.

RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 17.

A few examples from the aesthetic functionality case law may also help to introduce the doctrine:

• British Seagull Ltd. v. Brunswick Corp., 35 F.3d 1527 (Fed. Cir. 1994) (affirming the TTAB's refusal to register the color black for outboard marine engines and approving of the Board's reasoning that "although the color black is not functional in the sense that it makes these engines work better, or that it makes them easier or less expensive to manufacture, black is more desirable from the perspective of prospective purchasers because it is color compatible with a wider variety of boat colors and because objects colored black appear smaller than they do when they are painted other lighter or brighter colors.").

• In re Florists' Transworld Delivery, Inc., Serial No. 77590475 (TTAB Mar. 28, 2013) (precedential) (affirming examiner's rejection of application to register the color black for boxes containing flowers and floral arrangements; "[c]ompetitors who, for example, want to offer flowers for bereavement purposes, Halloween or to imbue an element of elegance or luxury to their presentations through packaging therefor will be disadvantaged if they must avoid using the color black in such packaging.").

• Deere's green and yellow color scheme to be non-functional and distinguishing Farmhand on grounds that (1) it was adjudicated before Qualitex, TrafFix, and the Sixth Circuit's establishment of the "comparable alternatives" and "effective competition" tests for aesthetic functionality, and (2) Deere sought in Farmhand to prevent competitors from using "John Deere green" either alone or in combination with any other color, whereas Deere seeks here merely to prevent competitors from using a combination of green and yellow).

• In re Ferris Corp., 59 U.S.P.Q.2d 1587 (TTAB 2000) (not citable as precedent) (affirming examiner's refusal to register the color pink for surgical bandages; the color is "de jure functional" in that it blends well with some individuals' skin tone and there are no viable alternative colors available).

[2] These criteria require the classification of the designs in question here as functional. Affidavits introduced by Wallace repeat over and over again that one of the essential selling features of hotel china, if, indeed, not the primary, is the design. The attractiveness and eyeappeal of the design sells the china. Moreover, from the standpoint of the purchaser china satisfies a demand for the aesthetic as well as for the utilitarian, and the design on china is, at least in part, the response to such demand. The granting of relief in this type of situation would render Wallace immune from the most direct and effective competition with regard to these lines of china. It seems clear that these designs are not merely indicia of source, as that one who copies them can have no real purpose other than to trade on his competitor's reputation. On the contrary, to imitate is to compete in this type of situation. Of course, Tepco can also compete by developing designs even more aesthetically satisfying, but the possibility that an alternative product might be developed has never been considered a barrier to permitting imitation competition in other types of cases. The law encourages competition not only in creativeness but in economy of manufacture and distribution as well. Hence, the design being a functional feature of the china, we find it unnecessary to inquire into the adequacy of the showing made as to secondary meaning of the designs.

{The Ninth Circuit ordered the district court's injunction to be modified to remove all reference to Tepco's use of designs similar to Wallace's.} ______________________________________________________________________________ Wallace "Grande Baroque" Silverware In reading Wallace Int'l Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76 (2d Cir. 1990), consider the following questions:

• How should a court define the relevant market for purposes of assessing competitive alternatives to the plaintiff's design? What exactly is wrong with Wallace's argument that it merely wants to claim the baroque style of silverware, and that countless other styles of silverware are still available for competitors to use?

• Even if we are able reliably to define the relevant marketplace, how many alternative designs should be available for a court to determine that the plaintiff's design is not aesthetically functional?

Wallace Int'l Silversmiths, Inc. v. Godinger Silver Art Co. 916 F.2d 76 (2d Cir. 1990) WINTER, Circuit Judge:

[1] Wallace International Silversmiths ("Wallace") appeals from Judge Haight's denial of its motion for a preliminary injunction under Section 43(a) of the Lanham Act, 15 U.S.C.

§ 1125(a) (1988), prohibiting Godinger Silver Art Co., Inc. ("Godinger") from marketing a line of silverware with ornamentation that is substantially similar to Wallace's GRANDE BAROQUE line. Judge Haight held that the GRANDE BAROQUE design is "a functional feature of 'Baroque' style silverware" and thus not subject to protection as a trademark. We affirm.

[2] Wallace, a Delaware corporation, has sold sterling silver products for over one hundred years. Its GRANDE BAROQUE pattern was introduced in 1941 and is still one of the best-selling silverware lines in America. Made of fine sterling silver, a complete place setting costs several thousand dollars. Total sales of GRANDE BAROQUE silverware have exceeded fifty million dollars. The GRANDE BAROQUE pattern is fairly described as "ornate, massive and flowery [with] indented, flowery roots and scrolls and curls along the side of the shaft, and flower arrangements along the front of the shaft." Wallace owns a trademark registration for the GRANDE BAROQUE name as applied to sterling silver flatware and hollowware. The GRANDE BAROQUE design is not patented, but on December 11, 1989, Wallace filed an application for trademark registration for the GRANDE BAROQUE pattern. This application is still pending.

[3] Godinger, a New York corporation, is a manufacturer of silver-plated products. The company has recently begun to market a line of baroque-style silver-plated serving pieces. The suggested retail price of the set of four serving pieces is approximately twenty dollars. Godinger advertised its new line under the name 20TH CENTURY BAROQUE and planned to introduce it at the Annual New York Tabletop and Accessories Show, the principal industry trade show at which orders for the coming year are taken. Like Wallace's silverware, Godinger's pattern contains typical baroque elements including an indented root, scrolls, curls, and flowers. The arrangement of these elements approximates Wallace's design in many ways, although their dimensions are noticeably different. The most obvious difference between the two designs is that the Godinger pattern extends further down the handle than the Wallace pattern does. The Wallace pattern also tapers from the top of the handle to the stem while the Godinger pattern appears bulkier overall and maintains its bulk throughout the decorated portion of the handle. Although the record does not disclose the exact circumstances under which Godinger's serving pieces were created, Godinger admits that its designers were "certainly inspired by and aware of [the Wallace] design when [they] created [the 20TH CENTURY BAROQUE] design."

[4] On the afternoon of April 23, 1990, Leonard Florence of Wallace learned from a wholesale customer, Michael C. Fina Company, that Godinger had placed an advertisement for its 20TH CENTURY BAROQUE serving pieces in an industry trade magazine. George Fina, the company's president, said that he was "confused" when he saw what he believed to be a pattern identical to GRANDE BAROQUE being advertised by another company. He asked Mr. Florence whether Wallace had licensed the design to Godinger or whether "the Godinger product was simply a 'knock-off.'" Two days after this conversation, Wallace filed the complaint in the instant matter stating various federal trademark and state unfair competition claims. Wallace also filed a motion for a temporary restraining order and sought a preliminary injunction prohibiting Godinger from using the mark 20TH CENTURY BAROQUE or infringing the trade dress of Wallace's GRANDE BAROQUE product.

[5] Due to the imminence of the trade show, the district court held a hearing on Wallace's application for preliminary relief the day after Wallace had filed its complaint. The record consisted of affidavits from Florence and Fina reciting the facts described supra, samples of the Wallace and Godinger pieces, and various photographs and catalogue illustrations of silverware from other manufacturers. Later that day, Judge Haight issued a Memorandum Opinion and Order in which he concluded that the GRANDE BAROQUE design was a "functional" feature of baroque-style silverware and thus ineligible for trade dress protection under Section 43(a) of the Lanham Act. . . . .

[6] Judge Haight found that the similarities between the Godinger and Wallace designs involved elements common to all baroque-style designs used in the silverware market. He noted that many manufacturers compete in that market with such designs and found that "[t]he 'Baroque' curls, roots and flowers are not 'mere indicia of source.' Instead, they are requirements to compete in the silverware market." Judge Haight concluded that "the 'Grande Baroque' design is a functional feature of 'Baroque' style silverware," relying on Pagliero v. Wallace China Co., 198 F.2d 339 (9th Cir. 1952).

[7] Although we agree with Judge Haight's decision, we do not endorse his reliance upon Pagliero. That decision allowed a competitor to sell exact copies of china bearing a particular pattern without finding that comparably attractive patterns were not available to the competitor. It based its holding solely on the ground that the particular pattern was an important ingredient in the commercial success of the china. Id. at 343-44. We rejected Pagliero in LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71 (2d Cir. 1985), and reiterate that rejection here. Under Pagliero, the commercial success of an aesthetic feature automatically destroys all of the originator's trademark interest in it, notwithstanding the feature's secondary meaning and the lack of any evidence that competitors cannot develop noninfringing, attractive patterns. By allowing the copying of an exact design without any evidence of market foreclosure, the Pagliero test discourages both originators and later competitors from developing pleasing designs. See Keene Corp. v. Paraflex Industries, Inc., 653 F.2d 822, 824-25 (3d Cir. 1981).

[8] Our rejection of Pagliero, however, does not call for reversal. Quite unlike Pagliero, Judge Haight found in the instant matter that there is a substantial market for baroque silverware and that effective competition in that market requires "use [of] essentially the same scrolls and flowers" as are found on Wallace's silverware. Based on the record at the hearing, that finding is not clearly erroneous and satisfies the requirement of Stormy Clime Ltd. v. Progroup, Inc., 809 F.2d 971 (2d Cir. 1987), that a design feature not be given trade dress protection where use of that feature is necessary for effective competition. Id. at 976-77.

2 The Restatement's Illustrations expressly reject Pagliero. Illustration 6 reads as follows:

A manufactures china. Among the products marketed by A is a set of china bearing a particular "overall" pattern covering the entire upper surface of each dish. Evidence indicates that aesthetic factors play an important role in the purchase of china, that A's design is attractive to a significant number of consumers, and that the number of alternative patterns is virtually unlimited. In the absence of evidence indicating that similarly attractive "overall" patterns are unavailable to competing manufacturers, A's pattern design is not functional under the rule stated in this Section.

3 Restatement Illustrations 7 and 8 reflect this aspect of the rule. They read as follows:

7. The facts being otherwise as stated in Illustration 6, A's design consists solely of a thin gold band placed around the rim of each dish. Evidence indicates that a significant number of consumers prefer china decorated with only a gold rim band. Because the number of alternative designs available to satisfy the aesthetic desires of these prospective purchasers is extremely limited, the rim design is functional under the rule stated in this Section.

A is the first seller to market candy intended for Valentine's Day in heart-shaped boxes. . . .

ii. Aesthetic Functionality and the Apparel Fashion Industry

In reading the excerpt below from Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., 696 F.3d 206 (2d Cir. 2012), consider the following question:

• Perhaps the Second Circuit is correct that there should be no per se rule against the trademark protection of individual colors with respect to apparel, but should there at least be a TrafFix-like "strong presumption" against such protection? {Since 1992, designer Christian Louboutin has painted the outsoles of his high-heeled women's shoes with a high-gloss red lacquer, specifically, Pantone 18-1663 TPX Chinese Red. In 2008, based on the secondary meaning he built up in the design, Plaintiff Christian Louboutin S.A. ("Louboutin") registered the red lacquered outsole as a trademark (see the original registration certificate below). In 2011, defendant Yves Saint Laurent America Holding, Inc. ("YSL") began marketing a line of monochrome shoes in, among other colors, red. YSL's red monochrome shoe bore a red insole, heel, upper, and outsole. Louboutin sued, claiming infringement of its registered mark. The district court found that the mark was aesthetically functional and, according to the Second Circuit's reading of the district court opinion, articulated a per se rule that a single color can never serve as a trademark in the fashion industry. Louboutin appealed. Excerpted below is the court's discussion of aesthetic functionality.} PER CURIAM: . . . .

[1] As the Supreme Court observed in Qualitex, aspects of a product that are "functional" generally "cannot serve as a trademark." Id. at 165. We have observed that "[t]he doctrine of functionality prevents trademark law from inhibiting legitimate competition by giving monopoly control to a producer over a useful product." Nora Beverages, Inc., 269 F.3d at 120 n. 4; see Genesee Brewing Co., 124 F.3d at 145 n. 5 (it is a "fundamental principle of trademark law that a trademark . . . does not grant a monopoly of production"). This is so because functional features can be protected only through the patent system, which grants a limited monopoly over such features until they are released into general use (typically after either 14 or 20 years, depending on the type of patent). See Fabrication Enters., Inc., 64 F.3d at 58-59 & n. 4 ("The Lanham Act is not concerned with protecting innovation by giving the innovator a monopoly, which is the function of patent law.") . . . .

[2] As noted above, two forms of the functionality doctrine are relevant to us today: "traditional" or "utilitarian" functionality, and "aesthetic" functionality. Both forms serve as an affirmative defense to a trademark infringement claim.

A. "Traditional" or "Utilitarian" Functionality

[3] According to our traditional understanding of functionality, a product feature is considered to be "functional" in a utilitarian sense 11 if it is (1) "essential to the use or purpose of the article," or if it (2) "affects the cost or quality of the article." Inwood Labs., 456 U.S. at 850 n. 10, 102 S.Ct. 2182. A feature is essential "'if [it] is dictated by the functions to be performed'" by the article. LeSportsac, Inc. v. K mart Corp., 754 F.2d 71, 76 (2d Cir. 1985) (quoting Warner Bros. Inc. v. Gay Toys Inc., 724 F.2d 327, 331 (2d Cir. 1983)). It affects the cost or quality of the article where it "'permits the article to be manufactured at a lower cost' or 'constitutes an improvement in the operation of the goods.'" 14 Id. (quoting Warner Bros., Inc., 724 F.2d at 331). A finding that a product feature is functional according to the Inwood test will ordinarily render the feature ineligible for trademark protection.

[4] Generally, "[w]here [a product's] design is functional under the Inwood formulation there is no need to proceed further." TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33 (2001) ("TrafFix "). Nevertheless, as the Supreme Court had held in 1995 in Qualitex, when the aesthetic design of a product is itself the mark for which protection is sought, we may also deem the mark functional if giving the markholder the right to use it exclusively "would put competitors at a significant non-reputation-related disadvantage," Qualitex, 514 U.S. at 165. This remains true even if there is "no indication that [the mark has] any bearing on the use or purpose of the product or its cost or quality." TrafFix, 532 U.S. at 33; see Landscape Forms, Inc. v. Colum. Cascade Co., 70 F.3d 251, 253 (2d Cir. 1995) (when evaluating design trademarks we consider whether "certain features of the design are essential to effective competition in [the] particular market").

[5] As set forth below, the test for aesthetic functionality is threefold: At the start, we address the two prongs of the Inwood test, asking whether the design feature is either "essential to the use or purpose" or "affects the cost or quality" of the product at issue. Next, if necessary, we turn to a third prong, which is the competition inquiry set forth in Qualitex. In other words, if a design feature would, from a traditional utilitarian perspective, be considered "essential to the use or purpose" of the article, or to affect its cost or quality, then the design feature is functional under Inwood and our inquiry ends. 15 But if the design feature is not "functional" from a traditional perspective, it must still pass the fact-intensive Qualitex test and be shown not to have a significant effect on competition in order to receive trademark protection.

i. The Development of the Aesthetic Functionality Doctrine

ii. A Modern Formulation of the Aesthetic Functionality Doctrine

[9] Although we have not recently had occasion to apply the doctrine of aesthetic functionality thus enunciated by the Supreme Court, it is clear that the combined effect of Qualitex and TrafFix was to validate the aesthetic functionality doctrine as it had already been developed by this Court in cases including Wallace International Silversmiths, Stormy Clime, and LeSportsac. See Yurman Design, Inc., 262 F.3d at 116 (confirming, five months after the TrafFix decision, that a putative design trademark is "aesthetic[ally] functional[ ]," and therefore barred from trademark protection, if granting "the right to use [the mark] exclusively 'would put competitors at a significant non-reputation-related disadvantage'" (quoting TrafFix, 532 U.S. at 32)).

[10] On the one hand, "'[w]here an ornamental feature is claimed as a trademark and trademark protection would significantly hinder competition by limiting the range of adequate alternative designs, the aesthetic functionality doctrine denies such protection.'" Forschner Grp., Inc. v. Arrow Trading Co., 124 F.3d 402, 409-10 (2d Cir. 1997) (quoting Wallace Int'l Silversmiths, Inc., 916 F.2d at 81). But on the other hand, "'distinctive and arbitrary arrangements of predominantly ornamental features that do not hinder potential competitors from entering the same market with differently dressed versions of the product are non-functional[,] and [are] hence eligible for [trademark protection].'" Fabrication Enters., Inc., 64 F.3d at 59 (quoting Stormy Clime, 809 F.2d at 977) (emphasis added). [11] In short, a mark is aesthetically functional, and therefore ineligible for protection under the Lanham Act, where protection of the mark significantly undermines competitors' ability to compete in the relevant market. See Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1006 (2d Cir. 1995) (linking aesthetic functionality to availability of alternative designs for children's fall-themed sweaters); Landscape Forms, Inc., 70 F.3d at 253 (holding that "in order for a court to find a product design functional, it must first find that certain features of the design are essential to effective competition in a particular market"). In making this determination, courts must carefully weigh "the competitive benefits of protecting the source-identifying aspects" of a mark against the "competitive costs of precluding competitors from using the feature." Fabrication Enters., Inc., 64 F.3d at 59.

[12] Finally, we note that a product feature's successful source indication can sometimes be difficult to distinguish from the feature's aesthetic function, if any. See, e.g., Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 857 (7th Cir. 2010) (noting that "[f]iguring out which designs [produce a benefit other than source identification] can be tricky"). Therefore, in determining whether a mark has an aesthetic function so as to preclude trademark protection, we take care to ensure that the mark's very success in denoting (and promoting) its source does not itself defeat the markholder's right to protect that mark. See Wallace Int'l Silversmiths, Inc., 916 F.2d at 80 (rejecting argument that "the commercial success of an aesthetic feature automatically destroys all of the originator's trademark interest in it, notwithstanding the feature's secondary meaning and lack of any evidence that competitors cannot develop non-infringing, attractive patterns").

[13] Because aesthetic function and branding success can sometimes be difficult to distinguish, the aesthetic functionality analysis is highly fact-specific. In conducting this inquiry, courts must consider both the markholder's right to enjoy the benefits of its effort to distinguish its product and the public's right to the "vigorously competitive market [ ]" protected by the Lanham Act, which an overly broad trademark might hinder. Yurman Design, Inc., 262 F.3d at 115 (internal quotation mark omitted). In sum, courts must avoid jumping to the conclusion that an aesthetic feature is functional merely because it denotes the product's desirable source. Cf. Pagliero, 198 F.2d at 343.

iii. Aesthetic Functionality in the Fashion Industry [14] We now turn to the per se rule of functionality for color marks in the fashion industry adopted by the District Court-a rule that would effectively deny trademark protection to any deployment of a single color in an item of apparel. As noted above, the Qualitex Court expressly held that "sometimes [ ] a color will meet ordinary legal trademark requirements[, a]nd, when it does so, no special legal rule prevents color alone from serving as a trademark." Qualitex, 514 U.S. at 161, 115 S.Ct. 1300. In other words, the Supreme Court specifically forbade the implementation of a per se rule that would deny protection for the use of a single color as a trademark in a particular industrial context. Qualitex requires an individualized, fact-based inquiry into the nature of the trademark, and cannot be read to sanction an industry-based per se rule. The District Court created just such a rule, on the theory that "there is something unique about the fashion world that militates against extending trademark protection to a single color." Louboutin, 778 F.Supp.2d at 451.

[15] Even if Qualitex could be read to permit an industry-specific per se rule of functionality (a reading we think doubtful), such a rule would be neither necessary nor appropriate here. We readily acknowledge that the fashion industry, like other industries, has special concerns in the operation of trademark law; it has been argued forcefully that United States law does not protect fashion design adequately. 19 Indeed, the case on appeal is particularly difficult precisely because, as the District Court well noted, in the fashion industry, color can serve as a tool in the palette of a designer, rather than as mere ornamentation. Louboutin, 778 F.Supp.2d at 452-53.

[17] In short, "[b]y focusing upon hindrances to legitimate competition, the [aesthetic] functionality test, carefully applied, can accommodate consumers' somewhat conflicting interests in being assured enough product differentiation to avoid confusion as to source and in being afforded the benefits of competition among producers." Stormy Clime, 809 F.2d at 978-79. . . . .

[18] Having determined that no per se rule governs the protection of single-color marks in the fashion industry, any more than it can do so in any other industry, we turn our attention to the Red Sole Mark. As we have explained, Part II.A, ante, we analyze a trademark infringement claim in two stages, asking first whether the mark "merits protection" and, second, whether the allegedly infringing use of the mark (or a similar mark) is "likely to cause consumer confusion." Louis Vuitton Malletier, 454 F.3d at 115. The functionality defense (including the tripartite aesthetic functionality test) is an affirmative defense that we consider at the second stage of this analysis. Stormy Clime, Ltd., 809 F.2d at 974. . . . . [19] Although, as set forth below, we determine that the Mark as it currently stands is ineligible for protection insofar as it would preclude competitors' use of red outsoles in all situations, including the monochromatic use now before us, we conclude that the Mark has acquired secondary meaning-and thus the requisite "distinctness" to merit protectionwhen used as a red outsole contrasting with the remainder of the shoe. Because in this case we determine that the Red Sole Mark merits protection only as modified, and because YSL's use of a red outsole on monochromatic red shoes does not infringe on the Mark as modified, we need not, and do not, reach the issues of customer confusion and functionality at the second stage of the trademark infringement analysis described above.

. . . . [20] We further hold that the record fails to demonstrate that the secondary meaning of the Red Sole Mark extends to uses in which the sole does not contrast with the upper-in other words, when a red sole is used on a monochromatic red shoe. As the District Court observed, "[w]hen Hollywood starlets cross red carpets and high fashion models strut down runways, and heads turn and eyes drop to the celebrities' feet, lacquered red outsoles on highheeled, black shoes flaunt a glamorous statement that pops out at once." Louboutin, 778 F.Supp.2d at 448 (emphasis added). As clearly suggested by the District Court, it is the contrast between the sole and the upper that causes the sole to "pop," and to distinguish its creator.

1. Are Louboutin's and YSL's shoes nevertheless confusingly similar? The Second Circuit's resolution of the dispute was unconventional, to say the least. Given the secondary meaning of Louboutin's mark, do you think the court was justified in finding that there would be no consumer confusion as to source between Louboutin's shoes bearing a red outsole with contrasting upper and YSL's shoes bearing both a red outsole and red upper? (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, . . .

(3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them.

(f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. . . . In determining whether marks are "deceptive" or "deceptively misdescriptive" with respect to the goods to which they are affixed, U.S. trademark law analyzes geographic marks (i.e., marks that convey a geographic meaning) differently from how it analyzes nongeographic marks. Before turning to the peculiar manner in which the law treats geographically deceptive or "primarily geographically deceptively misdescriptive" marks, Lanham Act § 2(e)(3), 15 U.S.C. § 1052(e)(3), we first consider the law's more straightforward analysis of the deceptiveness or deceptive misdescriptiveness of nongeographic marks.

a. Non-Geographic Deceptive and Deceptively Misdescriptive Marks

A non-geographic deceptive trademark cannot be registered or otherwise protected under federal trademark law. See Lanham Act § 2(a), 15 U.S.C. § 1052(a). By contrast, a nongeographic "deceptively misdescriptive" mark may be registered or otherwise protected under federal trademark law, but only if the mark is shown to have developed secondary meaning as a designation of source. See Lanham Act § § 2(e)(1) & 2(f), 15 U.S.C. § § 1052(e)(1) & 2(f).

The basic test for determining whether a non-geographic mark is deceptive or deceptively misdescriptive is relatively straightforward. In In re Budge Mfg. Co., 857 F.2d 773 (Fed. Cir. 1988), the Federal Circuit affirmed the TTAB's refusal to register the mark LOVEE LAMB for automobile seat covers that were not in fact made of lambskin on the ground that the mark was deceptive. In doing so, it established a three-step test for determining whether a mark is deceptive or deceptively misdescriptive. The TMEP summarizes the three steps as follows:

(1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?

(2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?

(3) If so, is the misdescription likely to affect a significant portion of the relevant consumers' decision to purchase? TMEP § 1203.02 (b). If the answer to each question is yes, then the mark is deceptive under Section 2(a) and cannot be protected. If the answer to question (2) is yes (consumers would likely believe that the misdescription actually describes the goods), but the answer to question (3) is no (the misdescription would nevertheless not affect their decision to purchase), then the mark is deceptively misdescriptive under Section 2(e)(1) and can be protected upon a showing of secondary meaning. (And if the answer to question (2) is no, then the mark is likely arbitrary and thus inherently distintive-e.g. DIAMOND pencils).

Thus, for non-geographic marks, the question of whether the mark's misdescription would be material to consumers' decisions to purchase the good is what separates an unprotectable deceptive mark from a potentially protectable deceptively misdescriptive mark. This can be a difficult question to answer. The TMEP instructs trademark examining attorneys to focus on "objective criteria" such as whether the misdescription conveys superior quality, enhanced performance or function, difference in price, health benefits, or conformity with meritorious religious practice or social policy. See TMEP § 1203.02(d)(i). The Federal Circuit has emphasized that the misdescription must be material to a "significant portion of relevant consumers." See In re Spirits Intern., N.V., 563 F.3d 1347, 1356 (Fed. Cir.

Examples of non-geographic marks found to be deceptive:

• In re White Jasmine LLC, 106 USPQ2d 1385 (TTAB 2013) (finding the term "white" in WHITE JASMINE to be deceptive for tea that did not include white tea, where "[t]he evidence establishes that consumers perceive that white tea has desirable health benefits. Thus, the misdescription is material to consumers interested in purchasing or drinking white tea to obtain these health benefits, and is likely to induce such purchasers to buy or drink the tea.").

• In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002) (finding SUPER SILK to be deceptive for clothing made of "silk-like" fabric, even where labeling indicated true fiber content of fabric).

• In re Shapely, Inc., 231 USPQ 72 (TTAB 1986) (holding SILKEASE deceptive for clothing not made of silk, even where hangtag claimed that the product has "the look and feel of the finest silks with the easy care of polyester").

• In re Organik Technologies, Inc., 41 USPQ2d 1690 (TTAB 1997) (holding ORGANIK deceptive for clothing and textiles made from cotton that is neither from an organically grown plant nor free of chemical processing or treatment).

Examples of non-geographic marks found to be deceptively misdescriptive:

• Gold Seal Co. v. Weeks, 129 F. Supp. 928 (D.D.C. 1955) (affirming TTAB's finding GLASS WAX to be deceptively misdescriptive for glass cleaner where "[t]he evidence does not show that the public has been influenced to purchase the product on account of believing that it contained wax, or that the product was simply a wax to be placed upon glass.").

• In re Berman Bros. Harlem Furniture Inc., 26 U.S.P.Q.2d 1514 (TTAB 1993) (affirming examiner's determination that FURNITURE MAKERS was deceptively misdescriptive for a retail furniture store that sells, but does not make furniture)

• In re Christopher C. Hinton, 116 U.S.P.Q.2d 1051 (TTAB 2015) (affirming examiner's determination that THCTea was deceptively misdescriptive for tea-based beverages not containing THC (tetrahydrocannabinol), the primary psychoactive ingredient in marijuana; TTAB repeatedly noted that the question of whether the mark was deceptive under Section 2(a) was not before it, since the examiner had stopped at a finding of deceptive misdescriptiveness under Section 2(e)(1)).

b. Geographic Deceptive and Deceptively Misdescriptive Marks

While trademark law's analysis of the deceptive misdescriptiveness and deceptiveness of non-geographic marks is relatively uncomplicated, the same cannot be said about the law's analysis of the deceptive misdescriptiveness and deceptiveness of geographic marks. American trademark law devotes special attention to geographic marks primarily because many foreign trading partners have significant economic and cultural interests in preserving the exclusivity of their geographic names (such as CHAMPAGNE, CAMEMBERT, or PARMA). In trade negotiations, particularly those leading to the North American Free Trade Agreement of 1992, the Americans agreed to amend the Lanham Act so that geographic marks that were merely deceptively misdescriptive would be treated the same as geographic marks that were outright deceptive-specifically, geographic marks that were merely deceptively misdescriptive would be unregistrable regardless of whether they possessed secondary meaning. The mechanics of this change in the Lanham Act took the form, in essence, of amending Lanham Act § 2(f) to exclude geographically deceptively misdescriptive marks from that subsection's mechanism by which certain otherwise defective marks can be registered upon a showing of secondary meaning. See Lanham Act § 2(f), 15 U.S.C. § 1052(f) (providing that marks that fall under the provision of § 2(e)(3), in that they are "primarily geographically deceptively misdescriptive," 11 do not qualify for registration upon a showing of secondary meaning).

Thus, we now have a scheme in which non-geographic marks that are merely deceptively misdescriptive can be registered upon a showing of secondary meaning while geographic marks that are merely deceptively misdescriptive cannot be registered, even if they possess secondary meaning. Meanwhile, any mark that is outright deceptive, be it non-geographic or geographic, is unregistrable. America's trading partners and perhaps even American trade negotiators at the time could be forgiven for having thought that the Americans had indeed made a significant trade concession, one that limited the ability of trademark applicants at the PTO to register even merely deceptively misdescriptive geographic terms.

Enter the Federal Circuit. In In re California Innovations, Inc. 329 F.3d 1334, 1336-1341 (Fed. Cir. 2003), the Federal Circuit reviewed the history of the amendment to the Lanham Act and reached the following conclusion: just as the Lanham Act now treats geographically deceptively misdescriptive terms and geographically deceptive terms the same way (neither is registrable under any circumstances), so the PTO should employ exactly the same test that it uses to determine if a geographic mark is outright deceptive under Lanham Act § 2(a) also to determine if a geographic mark is merely deceptively misdescriptive under Lanham Act § 2(e)(3). Specifically, a mark may be found to be geographically deceptively misdescriptive only if its misdescription is found to be material to consumers' decision to purchase. (Recall that materiality need not be shown for a non-geographic mark to be found deceptively misdescriptive.) See also In re Miracle Tuesday LLC, 695 F.3d 1339, 1343 (Fed. Cir. 2012); In re Spirits Int'l, N.V., 563 F.3d 1347, 1350-54 (Fed. Cir. 2009).

In summarizing the current test for geographic deceptive misdescriptiveness (and geographic deceptiveness), the Trademark Manual of Examining Procedure states that a mark will be found to be geographically deceptively misdescriptive (or geographically deceptive) if:

(1) The primary significance of the mark is a generally known geographic location;

(2) The goods or services do not originate in the place identified in the mark;

(3) Purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; and

(4) The misrepresentation would be a material factor in a significant portion of the relevant consumers' decision to buy the goods or use the services. 11 No one likes this statutory phrase "primarily geographically deceptively misdescriptive" from Section 2(e)(3), but we appear to be stuck with it. In her opinion in In re Miracle Tuesday, LLC, 695 F.3d 1339 (Fed. Cir. 2012), Judge O'Malley took pains to distance her own elegant prose from the statutory language: "The phrase 'primarily geographically deceptively misdescriptive' is a statutory term of art in the trademark context; we neither take responsibility for nor endorse the split infinitives or absence of necessary commas its use in this opinion requires." Id. at 1342 n. 2. Where possible, this casebook will drop "primarily" and simply speak of "geographically deceptively misdescriptive" marks.

TMEP § 1210.05(b). The result is that if all four elements of this test are met, then the mark may be geographically deceptive, geographically deceptively misdescriptive, or both geographically deceptive and geographically deceptively misdescriptive. In any of these cases the mark is unprotectable. For marks not claiming use in commerce or acquired distinctiveness prior to December 8, 1993 (the date of enactment of the NAFTA Implementation Act), the PTO will typically issue a refusal based on Section 2(e)(3) and Section 2(a). 12 See TMEP § 1210.05(d).

Consider the strange implications of the Federal Circuit's holding in California Innovations. Before the NAFTA amendments in 1993, geographically deceptively misdescriptive marks could be registered upon a showing of secondary meaning. The Americans then amended the Lanham Act to provide that any terms that qualify as geographically deceptively misdescriptive may not be registered. However, by adding a materiality requirement, California Innovations then made it much more difficult for terms to be classified as geographically deceptively misdescriptive. As a result, at least for certain marks, the U.S. has arguably adopted an even laxer standard for registration of geographically misdescriptive terms. If the misdescriptiveness of such terms is not material to the consumer's decision to purchase, then the term may be registrable, and now without any need to show secondary meaning. For if such terms are not geographically deceptively misdescriptive (because the materiality requirement is not satisfied), neither are they geographically descriptive, a status which would trigger the secondary meaning requirement. Instead, in the wake of California Innovations, it would appear that such terms are essentially suggestive or arbitrary, i.e., inherently distinctive. For a thorough discussion of this turn of events, see Robert Brauneis & Roger E. Schechter, Geographic Trademarks and the Protection of Competitor Communication, 96 TRADEMARK REP. 782 (2006).

1. Synthesizing the Tests. The tests for geographic descriptiveness, geographic deceptiveness, and geographic deceptive misdescriptiveness may appear quite complicated. Experience has shown that these tests distract the student from far more important issues in 12 The Gilson treatise explains why the difference between the two categories might matter:

The test for determining whether a mark is deceptive under Section 2(a) is now the same as that for determining whether a mark is primarily geographically deceptively misdescriptive under Section 2(e)(3). The difference comes with respect to registrability: Geographically deceptive marks cannot be registered on either the Principal or Supplemental Register, while primarily geographically deceptively misdescriptive marks may be registered on the Principal Register if the marks became distinctive of the goods or services before December 8, 1993, and they may be registered on the Supplemental Register if they have been in use in commerce since before December 8, 1993.

trademark law. To try to aid in understanding the tests, the flowchart below attempts to synthesize the tests into a series of questions (with thanks to Professor Jeremy Sheff).

Examples of marks held to be geographically deceptively misdescriptive.

There are many examples of marks held to be geographically deceptively misdescriptive. See, e.g, In re Miracle Tuesday LLC, 695 F3d 1339, 104 USPQ2d 1330 (Fed. Cir. 2012) (affirming the TTAB's refusal to register the composite mark consisting of JPK PARIS 75 and design as primarily geographically deceptively misdescriptive for apparel that did not originate in Paris; "Although [applicant's Miami-based designer] Mr. Klifa may still consider himself to be Parisian, the goods that applicant seeks to register are not because there is no current connection between the goods and Paris."); In re Premiere Distillery, LLC, 103 USPQ2d 1483 (TTAB 2012) (finding REAL RUSSIAN primarily geographically deceptively misdescriptive for vodka not made in Russia; "In view of this demonstrated fame and reputation of Russian vodka to the relevant public, we may infer that a substantial portion of consumers who encounter REAL RUSSIAN on applicant's vodka are likely to incorrectly believe that the vodka comes from Russia and that such mistaken belief would materially influence their decision to purchase the vodka"); In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841 (TTAB 2012) (finding OLD HAVANA primarily geographically deceptively misdescriptive for rum not made in Cuba); Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 102 USPQ2d 1085 (TTAB 2012) (finding GUANTANAMERA, a Spanish word literally meaning "girl from Guantanamo" or "of or from Guantanamo, Cuba," primarily geographically deceptively misdescriptive for cigars not made in Cuba).

3. Example of a mark held not to be geographically deceptively misdescriptive. For an example of a mark held not to be geographically deceptively misdescriptive, consider In re Glaze Inc., Serial No. 76565437 (TTAB Mar. 17, 2005) (not citable as precedent). In In re Glaze, the applicant sought to register the mark SWISSCELL for batteries not made in Switzerland. The examining attorney refused registration and the TTAB reversed. The Board found that because the mark incorporated the word "Swiss," the primary significance of the mark was a generally known geographic location. However, the Board found that consumers would not likely believe that the batteries originated in Switzerland:

Even when we view the evidence that perhaps two Swiss companies make different type of batteries and that Switzerland is a country with a prosperous and stable market economy, we hold that, as in California Innovations, 66 USPQ2d at 1859, this is tenuous evidence that purchasers would expect batteries for lighting to come from Switzerland . . . .

[H]ere the evidence of a goods/place association consists of a single battery company (Renata) and another company that makes vehicle batteries. Under the stricter California Innovations standards, we are constrained to find that the examining attorney has not established the required goods/place association between Switzerland and batteries for lighting.

Id. at *4. Finally, the Board found no evidence that the misrepresentation of the source of the batteries would influence consumers' decision to purchase them:

The few references in the retailers' advertisements to "Swiss quality" and "Swiss manufacture" in relation to {another Swiss company's Swiss-made} batteries do not show that prospective purchasers' decisions would be materially influenced by the term "Swiss" when purchasing batteries for lighting . . . . The only other evidence that could indicate that the term "Swiss" may materially impact purchasing decisions is the nebulous references to "Swiss quality." There is simply insufficient evidence to hold that the term "Swiss" applied to virtually any product materially influences purchasers.

Id. at *4-5. Thus, the mark was neither geographically descriptive nor geographically deceptively misdescriptive. Apparently, it therefore qualified as inherently distinctive.

Marks that May Falsely Suggest a Connection Lanham Act § 2; 15 U.S.C. § 1052

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it- Opinion by Bergsman, Administrative Trademark Judge:

[1] Nieves & Nieves LLC ("Applicant") filed an intent-to-use application to register the mark ROYAL KATE, in standard character form, for the following goods as amended: Cosmetics; fragrances; perfumes; . . . personal care products, namely, shampoo, body wash, conditioner, soap, shower gel, in Class 3; Watches; cufflinks; key fobs of precious metals; jewelry; jewelry boxes, in Class 14;

Pouches, namely leather pouches, pouches for holding makeup, keys and other personal items; purses; handbags; pocketbooks; clutches; backpacks . . . in Class 18;

Bedding, namely, bed sheets . . . ; bath towels; towels, in Class 24; and Apparel . . . ; bibs not of paper; cloth diapers, in Class 25.

The application includes a statement that "the name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual." [3] To determine whether Applicant's ROYAL KATE mark falsely suggests a connection with Kate Middleton under Section 2(a), the Board analyzes whether the evidence of record satisfies the following four-part test:

(1) Whether Applicant's mark ROYAL KATE is the same as or a close approximation of Kate Middleton's previously used name or identity;

(2) Whether Applicant's mark ROYAL KATE would be recognized as such by purchasers, in that the mark points uniquely and unmistakably to Kate Middleton;

(3) Whether Kate Middleton is not connected with the goods that will be sold by Applicant under its mark; and

(4) Whether Kate Middleton's name or identity is of sufficient fame or reputation that when Applicant's mark is used on Applicant's goods, a connection with Kate Middleton would be presumed. A. Whether Applicant's mark ROYAL KATE is the same as or a close approximation of the name or identity of Kate Middleton?

[4] Applicant argues that ROYAL KATE is not a close approximation of Kate Middleton's previously-used name or identity because there is no evidence that Kate Middleton herself used ROYAL KATE as her name or identity and because Kate Middleton is not officially a "royal."foot_12 Specifically, Applicant contends as follows:

Although some may argue that ROYAL KATE may be reasonably understood as referring to Kate Middleton, Duchess of Cambridge, by some persons, it is not a close approximation of her name because ROYAL is not part of Middleton's name or title.

[5] We reject Applicant's interpretation of the first prong of the test as inappropriately narrowing the scope of Section 2(a). The creation of a false suggestion of a connection results from an applicant's use of something that is closely "associated with a particular personality or 'persona' of someone other than the applicant. Notre Dame, 217 USPQ at 509; see also Pitts, 107 USPQ2d at 2024. The reason for the statutory prohibition is that the person identified loses the right to control his/her identity. Notre Dame, 217 USPQ at 509 ("There may be no likelihood of such confusion as to the source of goods even under a theory of "sponsorship" or "endorsement," and, nevertheless, one's right of privacy, or the related right of publicity, may be violated.").

[6] The statutory false suggestion of a connection refusal emerged from the right to privacy and right of publicity.

Evolving out of the rights of privacy and publicity, the false suggestion of a connection under § 2(a) of the Trademark Act was intended to preclude registration of a mark which conflicts with another's rights, even though not founded on the familiar test of likelihood of confusion. [Notre Dame 217 USPQ at 509]. An opposer may prevail on the false suggestion of a connection ground when its right to control the use of its identity is violated, even if the name claimed to be appropriated was never commercially exploited by the opposer as a trademark or in a manner analogous to trademark use. See Notre Dame, 703 F.2d at 1375, 217 USPQ at 508; Buffett, 226 USPQ at 429. However, while a party's interest in its identity does not depend for its existence on the adoption and use of a technical trademark, a party must nevertheless have a protectable interest in a name (or its equivalent). Thus, we focus on the key factor in the false suggestion analysis for this case: whether applicants' mark is a close approximation of opposers' name or identity, i.e., a right in which opposers possess a protectable interest.

[7] The right of publicity has developed to protect the commercial interest of celebrities in their identities. Under this right, the celebrity has an interest that may be protected from the unauthorized commercial exploitation of that identity. If the celebrity's identity is commercially exploited without the consent of the celebrity, there has been an invasion of his/her right, regardless of whether his/her "name or likeness" is used. Cf. Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831, 218 USPQ 1, 4 (6th Cir. 1983) (former late night television personality Johnny Carson's identity may be exploited even if his name or likeness is not used).

[8] The evidence reflects that Kate Middleton is a celebrity. That means her identity has value which the § 2(a) false suggestion refusal is intended to protect. See Notre Dame, 217 USPQ at 509 ("It is a right of this nature [that is, the right to privacy or right to publicity], a right to control the use of one's identity, which the University also asserts under § 2(a)."). Therefore, it is the right of publicity basis for the false suggestion of a connection refusal that applies in this case. [9] The fact that Kate Middleton, the Duchess of Cambridge, has never used ROYAL KATE as her name or identity does not obviate the false suggestion of a connection refusal. A term may be considered the identity of a person even if his or her name or likeness is not used. All that is required is that the mark sought to be registered clearly identifies a specific person (i.e., Kate Middleton). . . . See also In re Urbano, 51 USPQ2d 1776, 1779 (TTAB 1999) ("[W]hile the general public in the United States may or may not have seen the upcoming Olympic games referred to precisely as 'Sydney 2000,' we have no doubt that the general public in the United States would recognize this phrase as referring unambiguously to the upcoming Olympic Games in Sydney, Australia, in the year 2000."). [10] We take this opportunity to make explicit what was implicit in our prior decisions in Pitts and In re Urbano, 51 USPQ2d 1776 (TTAB 1999): the first prong of the false suggestion of a connection test inquires into whether applicant's mark is the same as or a close approximation of the name or identity of a particular person other than the applicant, whether or not the person actually "used" the name or identity himself or herself. . . . Therefore, in this case, we examine the evidence of record to determine whether it establishes that Applicant's mark ROYAL KATE would be understood by the relevant public as identifying Kate Middleton. [11] As noted above, the term "royal" refers to a member of the England's royal family. The mark ROYAL KATE creates a commercial impression that references Kate Middleton as a member of the royal family. This is corroborated by articles in the media referencing Kate Middleton as a "royal." . . . .

[12] In fact, Kate Middleton is referred to as "Her Royal Highness." Applicant submitted an excerpt from "The official website of The British Monarchy" (royal.gov.uk) which references Kate Middleton as "her Royal Highness." . . . . [13] The Trademark Examining Attorney submitted numerous examples of media coverage referring to Kate Middleton as ROYAL KATE. . . . [14] This evidence is sufficient to establish that the mark ROYAL KATE is a close approximation of the identity of Kate Middleton because American media uses the term ROYAL KATE to identify Kate Middleton and, therefore, the American public receives media reports identifying Kate Middleton as ROYAL KATE. In fact, because the American public receives reports that Kate Middleton will be referred to as Her Royal Highness the Duchess of Cambridge, there is a natural association between the mark ROYAL KATE and Kate Middleton regardless of whether she uses that moniker herself. See Bd. of Trustees of the Univ. of Ala. v. BAMA-Werke Curt Baumann, 231 USPQ 408 (TTAB 1986) ("BAMA" uniquely pointed to the identity of the University of Alabama even though the school had not adopted it as a trademark and had only sporadically referred to itself as BAMA, in large part due to the public's association of the term with the school).

B. Whether Applicant's mark ROYAL KATE would be recognized as a close approximation of Kate Middleton's identity by purchasers, in that the mark points uniquely and unmistakably to Kate Middleton?

[15] Applicant is seeking to register its mark for fashion products such as cosmetics, jewelry, handbags, bedding and clothing and Applicant characterized these products as "luxury items and home goods." The goods and services themselves serve, if anything, to reinforce that the Mark uniquely and unmistakably points to Kate Middleton. Kate Middleton, by virtue of her being a member of the British Royal family and wife of Prince William, the second in line to the English throne, has become a fashion trendsetter. As the evidence establishes, the media reports what she is wearing, where she goes and what she purchases . . . . [16] . . . Applicant has not come forward with any evidence that the name ROYAL KATE refers to anyone other than Kate Middleton.

C. Whether Kate Middleton is connected with the goods that are sold or will be sold by Applicant under its mark?

[17] Applicant acknowledges that Kate Middleton is not connected with the goods that are or will be sold by Applicant under the mark ROYAL KATE, and that Kate Middleton has not consented to Applicant's use of her persona.

D. Whether Kate Middleton's name or identity is of sufficient fame or reputation that when

Applicant's mark ROYAL KATE is used on Applicant's goods, a connection with Kate Middleton would be presumed?

[18] . . . The evidence discussed in Section B . . . demonstrates that Kate Middleton's identity is of sufficient renown that when Applicant's mark ROYAL KATE is used in connection with Applicant's goods, a connection with Kate Middleton will be presumed.

[19] "Applicant does not dispute that Catherine, Duchess of Cambridge, is a well-known figure, stemming from her well-publicized relationship with Prince William and her subsequent wedding." "Also, the Applicant does not dispute the . . . claim that Kate Middleton's fame is not temporary." However, Applicant argues that "while the Duchess of Cambridge is well-known, there is no evidence of a presumptive connection between Catherine and the specific goods upon which Applicant's mark will be used. Simply because Catherine is believed to have style and good taste does not mean that she is publicly perceived to be involved in the industry at all." We do not require proof that Kate Middleton is wellknown for cosmetics, jewelry, handbags, bedding and clothing. Our inquiry is whether Kate Middleton's renown is such that when the mark ROYAL KATE is used with those products, consumers will recognize ROYAL KATE as referring to Kate Middleton such that a connection with Kate Middleton will be presumed. As the Board held in In re Pedersen, 109 USPQ2d 1185, 1202 (TTAB 2013):

[T]he key is whether the name per se is unmistakably associated with a particular person or institution and, as used would point uniquely to the person or institution. In short, it is the combination of: (1) a name of sufficient fame or reputation and (2) its use on or in connection with particular goods or services, that would point uniquely to a particular person or institution. [Internal citation omitted]. Thus, our inquiry is whether consumers of medicinal herbal remedies would think only of the Lakota tribes when the LAKOTA name is used on such goods. Cf. Notre Dame, 217 USPQ 509 ("'Notre Dame' is not a name solely associated with the University. It serves to identify a famous and sacred religious figure and is used in the names of churches dedicated to Notre Dame, such as the Cathedral of Notre Dame in Paris."). [20] In view [of the record evidence], we find that Kate Middleton's identity is of sufficient fame or reputation that when Applicant's mark ROYAL KATE is used on Applicant's goods, a connection with Kate Middleton will be presumed.

[21] [W]e find that Applicant's mark ROYAL KATE for the goods listed in the application falsely suggests a connection with Kate Middleton. III. Whether the mark ROYAL KATE identifies a particular living individual whose written consent to register the mark is not of record? [22] Section 2(c) of the Trademark Act, 15 U.S.C. § 1052(c) provides the following:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.

[23] The purpose of requiring the consent of a living individual to the registration of his or her name, signature, or portrait is to protect rights of privacy and publicity that living persons have in the designations that identify them. In re Hoefflin, 97 USPQ2d 1174, 1176 (TTAB 2010); Martin v. Carter Hawley Hale Stores, Inc., 206 USPQ 931, 933 (TTAB 1979) (Section 2(c) was designed "to protect one who, for valid reasons, could expect to suffer damage from another's trademark use of his name.") . . . .

[24] Whether consent to registration is required depends on whether the public would recognize and understand the mark as identifying a particular living individual. A consent is required only if the individual bearing the name in the mark will be associated with the mark as used on the goods or services, either because: (1) the person is so well known that the public would reasonably assume a connection between the person and the goods or services; or (2) the individual is publicly connected with the business in which the mark is used . . . .

[25] For purposes of Section 2(c), a "name" does not have to be the full name of an individual. Section 2(c) applies not only to full names, but also first names, surnames, shortened names, pseudonyms, stage names, titles, or nicknames, if there is evidence that the name identifies a specific living individual who is publicly connected with the business in which the mark is used, or who is so well known that such a connection would be assumed. See In re Hoefflin, 97 USPQ2d at 1177-78 (holding registration of the marks OBAMA PAJAMA, OBAMA BAHAMA PAJAMAS, and BARACK'S JOCKS DRESS TO THE LEFT barred under Section 2(c) in the absence of consent to register, because they create a direct association with President Barack Obama); Krause v. Krause Publ'ns, Inc., 76 USPQ2d at 1909 ("the mark KRAUSE PUBLICATIONS, although it includes only the surname of petitioner, would fall within the provisions of Section 2(c) if petitioner establishes that KRAUSE, as used on or in connection with the goods or services set forth in the involved registration, points uniquely to him 'as a particular living individual."'); In re Sauer, 27 USPQ2d at 1074-75 (holding registration of a mark containing BO, used in connection with a sports ball, barred under Section 2(c) in the absence of consent to register, because BO is the nickname of a well-known athlete and thus use of the mark would lead to the assumption that he was associated with the goods) . . . .

[26] In re Steak & Ale Rest. of Am., Inc., 185 USPQ 447, 448 (TTAB 1975) is particularly analogous to the present case. In that decision, the Board affirmed a Section 2(c) refusal of the mark PRINCE CHARLES because the wording identifies a particular well-known living individual whose consent was not of record. The Board reasoned that "the addition of a given name or a surname to the word 'PRINCE' could well serve as a name or 'nickname' for a particular living individual who could be identified and referred to in the various walks of life with this appellation." We find that this same logic applies to the mark ROYAL KATE. Cf. Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192, 1196 (TTAB 1994) (evidence shows that "Duca D'Aosta" is a title and does not refer "unequivocally to a particular living individual.")

[27] While with lesser-known figures there may have to be evidence showing that the consuming public connects them with the manufacturing or marketing of the goods at issue, well-known individuals such as celebrities and world-famous political figures are entitled to the protection of Section 2(c) without having to demonstrate a connection with the involved goods or services. See In re Hoefflin, 97 USPQ2d at 1177 (because Barack Obama is the President of the United States, the purchasing public will reasonably assume that marks consisting of the names BARACK and OBAMA identify President Barack Obama); In re Masucci, 179 USPQ 829, 830 (TTAB 1973) (in spite of any common law rights applicant may have, EISENHOWER for greeting cards was refused on the ground that it consisted of the name of the late President Eisenhower during the life of his widow, and application for registration was filed without her consent).

[28] As we found in the previous section, ROYAL KATE identifies Kate Middleton whose identity is renowned. By any measure, she is a celebrity, and thus the term ROYAL KATE points uniquely and unmistakably to Kate Middleton. Although Kate Middleton, the Duchess of Cambridge, does not use the name ROYAL KATE, it has become an expression used by the American public (and media) to identify her. We find that the mark ROYAL KATE is the name of a particular living individual, namely, Kate Middleton, and because Kate Middleton has not consented to the use and registration of that name, the Section 2(c) refusal is affirmed.

[29] Decision: The refusals to register under Section 2(a) & (c) are affirmed.

1. Difference between § 2(a) false suggestion of a connection and § 2(c) identification of living individual without consent. Lanham Act § 2(c), 15 U.S.C. § 1052(c) prohibits the registration of a mark which "consists of or comprises a name . . . identifying a particular living individual except by his written consent . . ." This does not mean that, for example, every person bearing the surname Singh has the ability under § 2(c) to prohibit the registration of a mark incorporating the word Singh. On the contrary, A name is deemed to "identify" a particular living individual, for purposes of Section 2(c), only if the "individual bearing the name in question will be associated with the mark as used on the goods, either because that person is so well known that the public would reasonably assume the connection, or because the individual is publicly connected with the business in which the mark is used." for vodka; "we conclude that the evidence in this record is more than adequate to establish that the mark would be recognized as the name of the painter Marc Chagall and that the name is of sufficient fame or reputation that when the respondent's mark is used on the goods a connection with the painter Marc Chagall would be presumed").

3. For a comprehensive review of section 2(a) caselaw, see Anne Gilson LaLonde, Giving the Wrong Impression: Section 2(a)'s False Suggestion of a Connection, 110 TRADEMARK REP. 877 (2020).

Confusingly-Similar Marks Under Lanham Act § 2(d)

Lanham Act § 2(d), 15 U.S.C. § 1052 (d), prohibits the registration of a mark that: Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.

Because this particular statutory bar bears so much in common with the likelihood of confusion analysis reviewed at length below in Part II.B, we will discuss the § 2(d) bar in that section.

The American trademark system provides the benefits of trademark protection and trademark registration to certain kinds of marks but not to others. Furthermore, the government will censor certain uses of trademarks that it deems objectionable, such as those judged to be infringing of another's trademark rights. How is this consistent with the Free Speech Clause of the First Amendment that "Congress shall make no law . . . abridging the freedom of speech"? The cases that follow help to answer this question.

In Matal v. Tam, 582 U.S. 218 (2017), excerpted below, the Supreme Court held that the Lanham Act § 2(a) prohibition on the registration of marks that "may disparage . . . persons" was invalid under the Free Speech Clause. Tam is significant for a number of reasons specific to trademark law. First, it abrogated a half-century of PTO practice and federal court case law applying the § 2(a)'s "disparagement clause." Second, Tam also arguably raises significant questions about whether antidilution law, which we cover in Part II.C below, is constitutional. May the government constitutionally restrict non-deceptive speech that "impairs the distinctiveness of the famous mark," 15 U.S.C. § 1125(c)(2)(B), or that "harms the reputation of the famous mark," 15 U.S.C. § 1125(c)(2)(C)? Third, Tam brought to an end the appeal to the Fourth Circuit of Blackhorse v. Pro-Football, Inc., 111 U.S.P.Q.2d 1080, 2014 WL 2757516 (TTAB June 18, 2014). In Blackhorse, five Native Americans petitioned to cancel various trademark registrations consisting in whole or in part of the term REDSKINS for professional football-related services on the ground that at the time of their registration they were disparaging of Native Americans and thus obtained contrary to Lanham Act § § 14(c) and 2(a), 15 U.S.C. § § 1064(c) & 1052(a). (If you strongly support Tam's registration of THE SLANTS, what is your position on the government's registration of the term "redskins" by a professional football team in the nation's capital?)

Tam also prompted the question of whether the Lanham Act § 2(a) prohibition on the registration of any mark that "consists of or comprises . . . scandalous matter" is also unconstitutional. In Iancu v. Brunetti, 588 U.S. 388 (2019), excerpted below and involving the mark FUCT for athletic apparel, the Supreme Court found that the § 2 bar against the registration of scandalous matter is also unconstitutional. You will see, however, that the Court found Brunetti to be a much closer case than Tam.

Finally, in Vidal v. Elster, 602 U.S. 286 (2024), Elster sought to register the mark TRUMP TOO SMALL without Donald Trump's permission. The PTO refused registration on the ground that no mark may be registered that "[c]onsists of or comprises a name . . . identifying a particular living individual except by his written consent." Lanham Act § 2(c), 15 U. S. C. §1052(c). Elster claimed a violation of his First Amendment rights. The Court found none.

Beware that Tam and Brunetti as presented here have been severely edited-down to focus on the Justices' statements about the trademark system. The opinion excerpts provide in some instances only the gist (and few of the subtleties) of the Justices' First Amendment analyses. Students with a special interest in First Amendment doctrine would be better served taking the time to read the full opinions.

For a comprehensive study of the relationship between trademark law and free speech principles, see LISA RAMSEY, TRADEMARKS AND FREE SPEECH: CONFLICTS AND RESOLUTIONS (2025).

[1] Justice ALITO announced the judgment of the Court and delivered the opinion of the Court with respect to Parts I, II, and III-A, and an opinion with respect to Parts III-B, III-C, and IV, in which THE CHIEF JUSTICE, Justice THOMAS, and Justice BREYER join.

[2] This case concerns a dance-rock band's application for federal trademark registration of the band's name, "The Slants." "Slants" is a derogatory term for persons of Asian descent, and members of the band are Asian-Americans. But the band members believe that by taking that slur as the name of their group, they will help to "reclaim" the term and drain its denigrating force.

[8] Federal registration, however, "confers important legal rights and benefits on trademark owners who register their marks." B & B Hardware, 135 S.Ct., at 1317 (internal quotation marks omitted). Registration on the principal register (1) "serves as 'constructive notice of the registrant's claim of ownership' of the mark," ibid. (quoting 15 U.S.C. § 1072);

(2) "is 'prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner's ownership of the mark, and of the owner's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate,'" B & B Hardware, 135 S.Ct., at 1300 (quoting § 1057(b)); and (3) can make a mark "'incontestable'" once a mark has been registered for five years," ibid. C [9] The Lanham Act contains provisions that bar certain trademarks from the principal register. For example, a trademark cannot be registered if it is "merely descriptive or deceptively misdescriptive" of goods, § 1052(e)(1), or if it is so similar to an already registered trademark or trade name that it is "likely . . . to cause confusion, or to cause mistake, or to deceive," § 1052(d).

[10] At issue in this case is one such provision, which we will call "the disparagement clause." This provision prohibits the registration of a trademark "which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, 1 In the opinion below, the Federal Circuit opined that although "Section 43(a) allows for a federal suit to protect an unregistered trademark," "it is not at all clear" that respondent could bring suit under § 43(a) because "there is no authority extending § 43(a) to marks denied under § 2(a)'s disparagement provision." In re Tam, 808 F.3d 1321, 1344-1345, n. 11 (en banc), as corrected (Feb. 11, 2016). When drawing this conclusion, the Federal Circuit relied in part on our statement in Two Pesos that "the general principles qualifying a mark for registration under § 2 of the Lanham Act are for the most part applicable in determining whether an unregistered mark is entitled to protection under § 43(a)." 505 U.S., at 768. We need not decide today whether respondent could bring suit under § 43(a) if his application for federal registration had been lawfully denied under the disparagement clause.

or disrepute." § 1052(a).foot_14 This clause appeared in the original Lanham Act and has remained the same to this day. See § 2(a), 60 Stat. 428. [11] When deciding whether a trademark is disparaging, an examiner at the PTO generally applies a "two-part test." The examiner first considers "the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services." Trademark Manual of Examining Procedure § 1203.03(b)(i) (Apr. 2017), p. 1200-150, http://tmep.uspto.gov. "If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols," the examiner moves to the second step, asking "whether that meaning may be disparaging to a substantial composite 3 of the referenced group." Ibid. If the examiner finds that a "substantial composite, although not necessarily a majority, of the referenced group would find the proposed mark . . . to be disparaging in the context of contemporary attitudes," a prima facie case of disparagement is made out, and the burden shifts to the applicant to prove that the trademark is not disparaging. Ibid. What is more, the PTO has specified that "[t]he fact that an applicant may be a member of that group or has good intentions underlying its use of a term does not obviate the fact that a substantial composite of the referenced group would find the term objectionable." Ibid.

[12] Simon Tam is the lead singer of "The Slants." In re Tam, 808 F.3d 1321, 1331 (C.A.Fed. 2015) (en banc), as corrected (Feb. 11, 2016). He chose this moniker in order to "reclaim" and "take ownership" of stereotypes about people of Asian ethnicity. Ibid. (internal quotation marks omitted). The group "draws inspiration for its lyrics from childhood slurs and mocking nursery rhymes" and has given its albums names such as "The Yellow Album" and "Slanted Eyes, Slanted Hearts." Ibid.

[13] Tam sought federal registration of "THE SLANTS," on the principal register, but an examining attorney at the PTO rejected the request, applying the PTO's two-part framework and finding that "there is . . . a substantial composite of persons who find the term in the applied-for mark offensive." The examining attorney relied in part on the fact that "numerous dictionaries define 'slants' or 'slant-eyes' as a derogatory or offensive term." The examining attorney also relied on a finding that "the band's name has been found offensive numerous times"-citing a performance that was canceled because of the band's moniker and the fact that "several bloggers and commenters to articles on the band have indicated that they find the term and the applied-for mark offensive." [14] Tam contested the denial of registration before the examining attorney and before the PTO's Trademark Trial and Appeal Board (TTAB) but to no avail. Eventually, he took the case to federal court, where the en banc Federal Circuit ultimately found the disparagement clause facially unconstitutional under the First Amendment's Free Speech Clause. The majority found that the clause engages in viewpoint-based discrimination, that the clause regulates the expressive component of trademarks and consequently cannot be treated as commercial speech, and that the clause is subject to and cannot satisfy strict scrutiny. See 808 F.3d, at 1334-1339. The majority also rejected the Government's argument that registered trademarks constitute government speech, as well as the Government's contention that federal registration is a form of government subsidy. See id., at 1339-1355. And the majority opined that even if the disparagement clause were analyzed under this Court's commercial speech cases, the clause would fail the "intermediate scrutiny" that those cases prescribe. See id., at 1355-1357.

[15] Several judges wrote separately, advancing an assortment of theories. Concurring, Judge O'Malley agreed with the majority's reasoning but added that the disparagement clause is unconstitutionally vague. See id., at 1358-1363. Judge Dyk concurred in part and dissented in part. He argued that trademark registration is a government subsidy and that the disparagement clause is facially constitutional, but he found the clause unconstitutional as applied to THE SLANTS because that mark constitutes "core expression" and was not adopted for the purpose of disparaging Asian-Americans. See id., at 1363-1374. In dissent, Judge Lourie agreed with Judge Dyk that the clause is facially constitutional but concluded for a variety of reasons that it is also constitutional as applied in this case. See id., at 1374-1376. Judge Reyna also dissented, maintaining that trademarks are commercial speech and that the disparagement clause survives intermediate scrutiny because it "directly advances the government's substantial interest in the orderly flow of commerce." See id., at 1376-1382.

[16] The Government filed a petition for certiorari, which we granted in order to decide whether the disparagement clause "is facially invalid under the Free Speech Clause of the First Amendment." Pet. for Cert. i; see sub. nom. Lee v. Tam, 579 U.S. ----, 137 S.Ct. 30 (2016). II {Tam argued that Lanham Act § 2(a) prohibits the registration of marks that disparage only "persons," which, Tam argued, "includes only natural and juristic persons," not "nonjuristic entities such as racial and ethnic groups." The Court rejected this argument.} III [17] Because the disparagement clause applies to marks that disparage the members of a racial or ethnic group, we must decide whether the clause violates the Free Speech Clause of the First Amendment. And at the outset, we must consider three arguments that would either eliminate any First Amendment protection or result in highly permissive rational-basis review. Specifically, the Government contends (1) that trademarks are government speech, not private speech, (2) that trademarks are a form of government subsidy, and (3) that the constitutionality of the disparagement clause should be tested under a new "governmentprogram" doctrine. We address each of these arguments below.

[18] The First Amendment prohibits Congress and other government entities and actors from "abridging the freedom of speech"; the First Amendment does not say that Congress and speech and thus eliminates all First Amendment protection, would the registration of the copyright for a book produce a similar transformation? See 808 F.3d, at 1346 (explaining that if trademark registration amounts to government speech, "then copyright registration" which "has identical accoutrements" would "likewise amount to government speech").

[23] The Government attempts to distinguish copyright on the ground that it is "'the engine of free expression,'" Brief for Petitioner 47 (quoting Eldred v. Ashcroft, 537 U.S. 186, 219, 123 S.Ct. 769, 154 L.Ed.2d 683 (2003)), but as this case illustrates, trademarks often have an expressive content. Companies spend huge amounts to create and publicize trademarks that convey a message. It is true that the necessary brevity of trademarks limits what they can say. But powerful messages can sometimes be conveyed in just a few words.

[24] Trademarks are private, not government, speech. . . . . {The Court further rejected the Government's government subsidy and governmentprogram arguments.} IV [25] Having concluded that the disparagement clause cannot be sustained under our government-speech or subsidy cases or under the Government's proposed "governmentprogram" doctrine, we must confront a dispute between the parties on the question whether trademarks are commercial speech and are thus subject to the relaxed scrutiny outlined in Central Hudson Gas & Elec. Corp. v. Public Serv. Comm'n of N. Y., 447 U.S. 557 (1980). The Government and amici supporting its position argue that all trademarks are commercial speech. They note that the central purposes of trademarks are commercial and that federal law regulates trademarks to promote fair and orderly interstate commerce. Tam and his amici, on the other hand, contend that many, if not all, trademarks have an expressive component. In other words, these trademarks do not simply identify the source of a product or service but go on to say something more, either about the product or service or some broader issue. The trademark in this case illustrates this point. The name "The Slants" not only identifies the band but expresses a view about social issues.

[26] We need not resolve this debate between the parties because the disparagement clause cannot withstand even Central Hudson review. 17 Under Central Hudson, a restriction of speech must serve "a substantial interest," and it must be "narrowly drawn." Id., at 564-565 (internal quotation marks omitted). This means, among other things, that "[t]he regulatory technique may extend only as far as the interest it serves." Id., at 565. The disparagement clause fails this requirement. 17 As with the framework discussed in Part III-C of this opinion, we leave open the question whether Central Hudson provides the appropriate test for deciding free speech challenges to provisions of the Lanham Act. And nothing in our decision should be read to speak to the validity of state unfair competition provisions or product libel laws that are not before us and differ from § 1052(d)'s disparagement clause.

[27] It is claimed that the disparagement clause serves two interests. The first is phrased in a variety of ways in the briefs. Echoing language in one of the opinions below, the Government asserts an interest in preventing "'underrepresented groups'" from being "'bombarded with demeaning messages in commercial advertising.'" Brief for Petitioner 48 (quoting 808 F.3d, at 1364 (Dyk, J., concurring in part and dissenting in part)). An amicus supporting the Government refers to "encouraging racial tolerance and protecting the privacy and welfare of individuals." Brief for Native American Organizations as Amici Curiae 21. But no matter how the point is phrased, its unmistakable thrust is this: The has an interest in preventing speech expressing ideas that offend. And, as we have explained, that idea strikes at the heart of the First Amendment. Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express "the thought that we hate." United States v. Schwimmer, 279 U.S. 644, 655 (1929) (Holmes, J., dissenting).

[28] The second interest asserted is protecting the orderly flow of commerce. See 808 F.3d, at 1379-1381 (Reyna, J., dissenting); Brief for Petitioner 49; Brief for Native American Organizations as Amicus Curiae 18-21. Commerce, we are told, is disrupted by trademarks that "involv[e] disparagement of race, gender, ethnicity, national origin, religion, sexual orientation, and similar demographic classification." 808 F.3d, at 1380-1381 (opinion of Reyna, J.). Such trademarks are analogized to discriminatory conduct, which has been recognized to have an adverse effect on commerce. See ibid.; Brief for Petitioner 49; Brief for Native American Organizations as Amici Curiae 18-20.

[29] A simple answer to this argument is that the disparagement clause is not "narrowly drawn" to drive out trademarks that support invidious discrimination. The clause reaches any trademark that disparages any person, group, or institution. It applies to trademarks like the following: "Down with racists," "Down with sexists," "Down with homophobes." It is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.

[30] The clause is far too broad in other ways as well. The clause protects every person living or dead as well as every institution. Is it conceivable that commerce would be disrupted by a trademark saying: "James Buchanan was a disastrous president" or "Slavery is an evil institution"?

[31] There is also a deeper problem with the argument that commercial speech may be cleansed of any expression likely to cause offense. The commercial market is well stocked with merchandise that disparages prominent figures and groups, and the line between commercial and non-commercial speech is not always clear, as this case illustrates. If affixing the commercial label permits the suppression of any speech that may lead to political or social "volatility," free speech would be endangered.

[32] For these reasons, we hold that the disparagement clause violates the Free Speech Clause of the First Amendment. The judgment of the Federal Circuit is affirmed.

Justice GORSUCH took no part in the consideration or decision of this case.

Justice KENNEDY, with whom Justice GINSBURG, Justice SOTOMAYOR, and Justice KAGAN join, concurring in part and concurring in the judgment.

[1] The Patent and Trademark Office (PTO) has denied the substantial benefits of federal trademark registration to the mark THE SLANTS. The PTO did so under the mandate of the disparagement clause in 15 U.S.C. § 1052(a), which prohibits the registration of marks that may "disparage . . . or bring . . . into contemp[t] or disrepute" any "persons, living or dead, institutions, beliefs, or national symbols."

[2] As the Court is correct to hold, § 1052(a) constitutes viewpoint discrimination-a form of speech suppression so potent that it must be subject to rigorous constitutional scrutiny. The Government's action and the statute on which it is based cannot survive this scrutiny.

The Court is correct in its judgment, and I join Parts I, II, and III-A of its opinion. This separate writing explains in greater detail why the First Amendment's protections against viewpoint discrimination apply to the trademark here. It submits further that the viewpoint discrimination rationale renders unnecessary any extended treatment of other questions raised by the parties.

[4] Those few categories of speech that the government can regulate or punish-for instance, fraud, defamation, or incitement-are well established within our constitutional tradition. See United States v. Stevens, 559 U.S. 460, 468 (2010). Aside from these and a few other narrow exceptions, it is a fundamental principle of the First Amendment that the government may not punish or suppress speech based on disapproval of the ideas or perspectives the speech conveys. See Rosenberger v. Rector and Visitors of Univ. of Va., 515 U.S. 819, 828-829 (1995).

[5] The First Amendment guards against laws "targeted at specific subject matter," a form of speech suppression known as content based discrimination. Reed v. Town of Gilbert, 135 S. Ct. 2218Ct. , 2230Ct. (2015)). This category includes a subtype of laws that go further, aimed at the suppression of "particular views . . . on a subject." Rosenberger, 515 U.S., at 829. A law found to discriminate based on viewpoint is an "egregious form of content discrimination," which is "presumptively unconstitutional." Id., at 829-830.

[6] At its most basic, the test for viewpoint discrimination is whether-within the relevant subject category-the government has singled out a subset of messages for disfavor based on the views expressed. See Cornelius v. NAACP Legal Defense & Ed. Fund, Inc., 473 U.S. 788, 806 (1985) ("[T]he government violates the First Amendment when it denies access to a speaker solely to suppress the point of view he espouses on an otherwise includible subject"). In the instant case, the disparagement clause the Government now seeks to implement and enforce identifies the relevant subject as "persons, living or dead, institutions, beliefs, or national symbols." 15 U.S.C. § 1052(a). Within that category, an applicant may register a positive or benign mark but not a derogatory one. The law thus reflects the Government's disapproval of a subset of messages it finds offensive. This is the essence of viewpoint discrimination. . . . . II [7] The parties dispute whether trademarks are commercial speech and whether trademark registration should be considered a federal subsidy. The former issue may turn on whether certain commercial concerns for the protection of trademarks might, as a general matter, be the basis for regulation. However that issue is resolved, the viewpoint based discrimination at issue here necessarily invokes heightened scrutiny.

[8] "Commercial speech is no exception," the Court has explained, to the principle that the First Amendment "requires heightened scrutiny whenever the government creates a regulation of speech because of disagreement with the message it conveys." Sorrell v. IMS Health Inc., 564 U.S. 552, 566 (2011) (internal quotation marks omitted). Unlike content based discrimination, discrimination based on viewpoint, including a regulation that targets speech for its offensiveness, remains of serious concern in the commercial context. See Bolger v. Youngs Drug Products Corp., 463 U.S. 60, 65, 71-72 (1983).

[9] To the extent trademarks qualify as commercial speech, they are an example of why that term or category does not serve as a blanket exemption from the First Amendment's requirement of viewpoint neutrality. Justice Holmes' reference to the "free trade in ideas" and the "power of . . . thought to get itself accepted in the competition of the market," Abrams v. United States, 250 U.S. 616, 630 (1919) (dissenting opinion), was a metaphor. In the realm of trademarks, the metaphorical marketplace of ideas becomes a tangible, powerful reality.

Here that real marketplace exists as a matter of state law and our common-law tradition, quite without regard to the Federal Government. These marks make up part of the expression of everyday life, as with the names of entertainment groups, broadcast networks, designer clothing, newspapers, automobiles, candy bars, toys, and so on. See Brief for Pro-Football, Inc., as Amicus Curiae 8 (collecting examples). Nonprofit organizations-ranging from medical-research charities and other humanitarian causes to political advocacy groups-also have trademarks, which they use to compete in a real economic sense for funding and other resources as they seek to persuade others to join their cause. See id., at 8-9 (collecting examples). To permit viewpoint discrimination in this context is to permit Government censorship.

[10] This case does not present the question of how other provisions of the Lanham Act should be analyzed under the First Amendment. It is well settled, for instance, that to the extent a trademark is confusing or misleading the law can protect consumers and trademark owners. See, e.g., FTC v. Winsted Hosiery Co., 258 U.S. 483, 493 (1922) ("The labels in question are literally false, and . . . palpably so. All are, as the Commission found, calculated to deceive and do in fact deceive a substantial portion of the purchasing public"). This case also does not involve laws related to product labeling or otherwise designed to protect consumers. See Sorrell, supra, at 579, ("[T]he government's legitimate interest in protecting consumers from commercial harms explains why commercial speech can be subject to greater governmental regulation than noncommercial speech" (internal quotation marks omitted)). These considerations, however, do not alter the speech principles that bar the viewpoint discrimination embodied in the statutory provision at issue here. . . . . * * * [11] A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all. The First Amendment does not entrust that power to the government's benevolence. Instead, our reliance must be on the substantial safeguards of free and open discussion in a democratic society.

[12] For these reasons, I join the Court's opinion in part and concur in the judgment.

Justice THOMAS, concurring in part and concurring in the judgment. . . . .

[1] I also write separately because "I continue to believe that when the government seeks to restrict truthful speech in order to suppress the ideas it conveys, strict scrutiny is appropriate, whether or not the speech in question may be characterized as 'commercial. ' [2] Respondent Erik Brunetti is an artist and entrepreneur who founded a clothing line that uses the trademark FUCT. According to Brunetti, the mark (which functions as the clothing's brand name) is pronounced as four letters, one after the other: F-U-C-T. But you might read it differently and, if so, you would hardly be alone. See Tr. of Oral Arg. 5 (describing the brand name as "the equivalent of [the] past participle form of a well-known word of profanity"). That common perception caused difficulties for Brunetti when he tried to register his mark with the U.S. Patent and Trademark Office (PTO).

[3] Under the Lanham Act, the PTO administers a federal registration system for trademarks. See 15 U.S. C. § § 1051, 1052. Registration of a mark is not mandatory. The owner of an unregistered mark may still use it in commerce and enforce it against infringers. But registration gives trademark owners valuable benefits. For example, registration constitutes "prima facie evidence" of the mark's validity. § 1115(a). And registration serves as "constructive notice of the registrant's claim of ownership," which forecloses some defenses in infringement actions. § 1072. Generally, a trademark is eligible for registration, and receipt of such benefits, if it is "used in commerce." § 1051(a)(1). But the Act directs the PTO to "refuse[ ] registration" of certain marks. § 1052. For instance, the PTO cannot register a mark that "so resembles" another mark as to create a likelihood of confusion. § 1052(d). It cannot register a mark that is "merely descriptive" of the goods on which it is used. § 1052(e). It cannot register a mark containing the flag or insignia of any nation or State. See § 1052(b). There are five or ten more (depending on how you count). And until we invalidated the criterion two years ago, the PTO could not register a mark that "disparage[d]" a "person[ ], living or dead." § 1052(a); see Tam, 582 U.S. ___.

[4] This case involves another of the Lanham Act's prohibitions on registration-one applying to marks that "[c]onsist[ ] of or comprise[ ] immoral[ ] or scandalous matter."

§ 1052(a). The PTO applies that bar as a "unitary provision," rather than treating the two adjectives in it separately. In re Brunetti, 877 F. 3d 1330, 1336 (CA Fed. 2017). To determine whether a mark fits in the category, the PTO asks whether a "substantial composite of the general public" would find the mark "shocking to the sense of truth, decency, or propriety"; "giving offense to the conscience or moral feelings"; "calling out for condemnation"; "disgraceful"; "offensive"; "disreputable"; or "vulgar." 877 F. 3d, at 1336 (internal quotation marks omitted).

[5] Both a PTO examining attorney and the PTO's Trademark Trial and Appeal Board decided that Brunetti's mark flunked that test. The attorney determined that FUCT was "a total vulgar" and "therefore[ ] unregistrable." On review, the Board stated that the mark was "highly offensive" and "vulgar," and that it had "decidedly negative sexual connotations." As part of its review, the Board also considered evidence of how Brunetti used the mark. It found that Brunetti's website and products contained imagery, near the mark, of "extreme nihilism" and "anti-social" behavior. In that context, the Board thought, the mark communicated "misogyny, depravity, [and] violence." The Board concluded: "Whether one considers [the mark] as a sexual term, or finds that [Brunetti] has used [the mark] in the context of extreme misogyny, nihilism or violence, we have no question but that [the term is] extremely offensive."

[6] Brunetti then brought a facial challenge to the "immoral or scandalous" bar in the Court of Appeals for the Federal Circuit. That court found the prohibition to violate the First Amendment. As usual when a lower court has invalidated a federal statute, we granted certiorari. II [7] This Court first considered a First Amendment challenge to a trademark registration restriction in Tam, just two Terms ago. There, the Court declared unconstitutional the Lanham Act's ban on registering marks that "disparage" any "person[ ], living or dead."

§ 1052(a). The eight-Justice Court divided evenly between two opinions and could not agree on the overall framework for deciding the case. (In particular, no majority emerged to resolve whether a Lanham Act bar is a condition on a government benefit or simple restriction on speech.) But all the Justices agreed on two propositions. First, if a trademark registration bar is viewpoint-based, it is unconstitutional. And second, the disparagement bar was viewpointbased.

[8] The Justices thus found common ground in a core postulate of free speech law: The government may not discriminate against speech based on the ideas or opinions it conveys. See Rosenberger v. Rector and Visitors of Univ. of Va., 515 U.S. 819, 829-830 (1995) (explaining that viewpoint discrimination is an "egregious form of content discrimination" and is "presumptively unconstitutional"). In Justice Kennedy's explanation, the disparagement bar allowed a trademark owner to register a mark if it was "positive" about a person, but not if it was "derogatory." Tam (slip op., at 2). That was the "essence of viewpoint discrimination," he continued, because "[t]he law thus reflects the Government's disapproval of a subset of messages it finds offensive." Id. (slip op., at 2-3). JUSTICE ALITO emphasized that the statute "denie[d] registration to any mark" whose disparaging message was "offensive to a substantial percentage of the members of any group." Id. (slip op., at 22). The bar thus violated the "bedrock First Amendment principle" that the government cannot discriminate against "ideas that offend." Id. (slip op., at 1-2). Slightly different explanations, then, but a shared conclusion: Viewpoint discrimination doomed the disparagement bar.

[13] How, then, can the Government claim that the "immoral or scandalous" bar is viewpoint-neutral? The Government basically asks us to treat decisions like those described above as PTO examiners' mistakes. Still more, the Government tells us to ignore how the Lanham Act's language, on its face, disfavors some ideas. In urging that course, the Government does not dispute that the statutory language-and words used to define ithave just that effect. At oral argument, the Government conceded: "[I]f you just looked at the words like 'shocking' and 'offensive' on their face and gave them their ordinary meanings[,] they could easily encompass material that was shocking [or offensive] because it expressed an outrageous point of view or a point of view that most members" of society reject. Tr. of Oral Arg. 6. But no matter, says the Government, because the statute is "susceptible of" a limiting construction that would remove this viewpoint bias. Id., at 7 (arguing that the Court should "attempt to construe [the] statute in a way that would render it constitutional"). The Government's idea, abstractly phrased, is to narrow the statutory bar to "marks that are offensive [or] shocking to a substantial segment of the public because of their mode of expression, independent of any views that they may express." Id., at 11 (emphasis added). More concretely, the Government explains that this reinterpretation would mostly restrict the PTO to refusing marks that are "vulgar"-meaning "lewd," "sexually explicit or profane." Id., at 27, 30. Such a reconfigured bar, the Government says, would not turn on viewpoint, and so we could uphold it.

[14] But we cannot accept the Government's proposal, because the statute says something markedly different. This Court, of course, may interpret "ambiguous statutory language" to "avoid serious constitutional doubts." FCC v. Fox Television Stations, Inc., 556 U.S. 502, 516 (2009). But that canon of construction applies only when ambiguity exists. "We will not rewrite a law to conform it to constitutional requirements." United States v. Stevens, 559 U.S. 460, 481 (2010) (internal quotation marks and alteration omitted). So even assuming the Government's reading would eliminate First Amendment problems, we may adopt it only if we can see it in the statutory language. And we cannot. The "immoral or scandalous" bar stretches far beyond the Government's proposed construction. The statute as written does not draw the line at lewd, sexually explicit, or profane marks. Nor does it refer only to marks whose "mode of expression," independent of viewpoint, is particularly offensive. It covers the universe of immoral or scandalous-or (to use some PTO synonyms) offensive or disreputable-material. Whether or not lewd or profane. Whether the scandal and immorality comes from mode or instead from viewpoint. To cut the statute off where the Government urges is not to interpret the statute Congress enacted, but to fashion a new one. *

[15] And once the "immoral or scandalous" bar is interpreted fairly, it must be invalidated. The Government just barely argues otherwise. In the last paragraph of its brief, the Government gestures toward the idea that the provision is salvageable by virtue of its constitutionally permissible applications (in the Government's view, its applications to lewd, sexually explicit, or profane marks). In other words, the Government invokes our First Amendment overbreadth doctrine, and asks us to uphold the statute against facial attack because its unconstitutional applications are not "substantial" relative to "the statute's plainly legitimate sweep." Stevens, 559 U.S., at 473. But to begin with, this Court has never applied that kind of analysis to a viewpoint-discriminatory law. In Tam, for example, we did not pause to consider whether the disparagement clause might admit some permissible applications (say, to certain libelous speech) before striking it down. The Court's finding of viewpoint bias ended the matter. And similarly, it seems unlikely we would compare permissible and impermissible applications if Congress outright banned "offensive" (or to use some other examples, "divisive" or "subversive") speech. Once we have found that a law "aim[s] at the suppression of " views, why would it matter that Congress could have captured some of the same speech through a viewpoint-neutral statute? Tam (opinion of Kennedy, J.) (slip op., at 2). But in any event, the "immoral or scandalous" bar is substantially overbroad. There are a great many immoral and scandalous ideas in the world (even more than there are swearwords), and the Lanham Act covers them all. It therefore violates the First Amendment. * We reject the dissent's statutory surgery for the same reason. Although conceding that the term "immoral" cannot be saved, the dissent thinks that the term "scandalous" can be read as the Government proposes. See post, at 1-2 (SOTOMAYOR, J., concurring in part and dissenting in part). But that term is not "ambiguous," as the dissent argues, post, at 3; it is just broad. Remember that the dictionaries define it to mean offensive, disreputable, exciting reprobation, and so forth. See supra, at 5-6; post, at 3 (accepting those definitions). Even if hived off from "immoral" marks, the category of scandalous marks thus includes both marks that offend by the ideas they convey and marks that offend by their mode of expression. And its coverage of the former means that it discriminates based on viewpoint. We say nothing at all about a statute that covers only the latter-or, in the Government's more concrete description, a statute limited to lewd, sexually explicit, and profane marks. Nor do we say anything about how to evaluate viewpoint-neutral restrictions on trademark registration, see post, at 14-17-because the "scandalous" bar (whether or not attached to the "immoral" bar) is not one. [16] We accordingly affirm the judgment of the Court of Appeals.

[1] For the reasons explained in the opinion of the Court, the provision of the Lanham Act at issue in this case violates the Free Speech Clause of the First Amendment because it discriminates on the basis of viewpoint and cannot be fixed without rewriting the statute. Viewpoint discrimination is poison to a free society. But in many countries with constitutions or legal traditions that claim to protect freedom of speech, serious viewpoint discrimination is now tolerated, and such discrimination has become increasingly prevalent in this country. At a time when free speech is under attack, it is especially important for this Court to remain firm on the principle that the First Amendment does not tolerate viewpoint discrimination. We reaffirm that principle today.

[2] Our decision is not based on moral relativism but on the recognition that a law banning speech deemed by government officials to be "immoral" or "scandalous" can easily be exploited for illegitimate ends. Our decision does not prevent Congress from adopting a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas. The particular mark in question in this case could be denied registration under such a statute. The term suggested by that mark is not needed to express any idea and, in fact, as commonly used today, generally signifies nothing except emotion and a severely limited vocabulary. The registration of such marks serves only to further coarsen our popular culture. But we are not legislators and cannot substitute a new statute for the one now in force.

Chief Justice ROBERTS, concurring in part and dissenting in part.

[1] The Lanham Act directs the Patent and Trademark Office to refuse registration to marks that consist of or comprise "immoral, deceptive, or scandalous matter." 15 U.S. C.

§ 1052(a). Although the statute lists "immoral" and "scandalous" separately, the PTO has long read those terms together to constitute a unitary bar on "immoral or scandalous" marks.

[2] The Government concedes that the provision so read is broad enough to reach not only marks that offend because of their mode of expression (such as vulgarity and profanity) but also marks that offend because of the ideas they convey. The Government urges, however, that the provision can be given a narrowing construction-it can be understood to cover only marks that offend because of their mode of expression.

[3] The Court rejects that proposal on the ground that it would in effect rewrite the statute. I agree with the majority that the "immoral" portion of the provision is not susceptible of a narrowing construction that would eliminate its viewpoint bias. As JUSTICE SOTOMAYOR explains, however, the "scandalous" portion of the provision is susceptible of such a narrowing construction. Standing alone, the term "scandalous" need not be understood to reach marks that offend because of the ideas they convey; it can be read more narrowly to bar only marks that offend because of their mode of expression-marks that are obscene, vulgar, or profane. That is how the PTO now understands the term, in light of our decision in Matal v. Tam, 582 U.S. ___ (2017). I agree with JUSTICE SOTOMAYOR that such a narrowing construction is appropriate in this context.

[4] I also agree that, regardless of how exactly the trademark registration system is best conceived under our precedents-a question we left open in Tam-refusing registration to obscene, vulgar, or profane marks does not offend the First Amendment. Whether such marks can be registered does not affect the extent to which their owners may use them in commerce to identify goods. No speech is being restricted; no one is being punished. The owners of such marks are merely denied certain additional benefits associated with federal trademark registration. The Government, meanwhile, has an interest in not associating itself with trademarks whose content is obscene, vulgar, or profane. The First Amendment protects the freedom of speech; it does not require the Government to give aid and comfort to those using obscene, vulgar, and profane modes of expression. For those reasons, I concur in part and dissent in part.

Justice BREYER, concurring in part and dissenting in part. . . . .

[5] I would conclude that the prohibition on registering "scandalous" marks does not "wor[k] harm to First Amendment interests that is disproportionate in light of the relevant regulatory objectives." Reed, 576 U.S., at ___ (opinion of BREYER, J.) (slip op., at 4). I would therefore uphold this part of the statute. I agree with the Court, however, that the bar on registering "immoral" marks violates the First Amendment. Because JUSTICE SOTOMAYOR reaches the same conclusions, using roughly similar reasoning, I join her opinion insofar as it is consistent with the views set forth here.

Justice SOTOMAYOR, with whom Justice BREYER joins, concurring in part and dissenting in part.

[1] The Court's decision today will beget unfortunate results. With the Lanham Act's scandalous-marks provision, 15 U.S. C. § 1052(a), struck down as unconstitutional viewpoint discrimination, the Government will have no statutory basis to refuse (and thus no choice but to begin) registering marks containing the most vulgar, profane, or obscene words and images imaginable.

[2] The coming rush to register such trademarks-and the Government's immediate powerlessness to say no-is eminently avoidable. Rather than read the relevant text as the majority does, it is equally possible to read that provision's bar on the registration of "scandalous" marks to address only obscenity, vulgarity, and profanity. Such a narrowing construction would save that duly enacted legislative text by rendering it a reasonable, viewpoint-neutral restriction on speech that is permissible in the context of a beneficial governmental initiative like the trademark-registration system. I would apply that narrowing construction to the term "scandalous" and accordingly reject petitioner Erik Brunetti's facial challenge. I . . . .

[3] Here, Congress used not only the word "scandalous," but also the words "immoral" and "disparage," in the same block of statutory text-each as a separate feature that could render a mark unregistrable. See § 1052(a). Tam already decided that "disparage" served to prohibit marks that were offensive because they derided a particular person or group. See 582 U.S., at ___ (opinion of ALITO, J.) (slip op., at 22) ("It denies registration to any mark that is offensive to a substantial percentage of the members of any group"); id., at ___ (opinion of Kennedy, J.) (slip op., at 2) ("[A]n applicant may register a positive or benign mark but not a derogatory one"). That defines one of the three words. Meanwhile, as the majority explains, the word "immoral" prohibits marks that are offensive because they transgress widely held moral beliefs. See ante, at 5. That defines a second of the three words.

[4] With marks that are offensive because they are disparaging and marks that are offensive because they are immoral already covered, what work did Congress intend for "scandalous" to do? A logical answer is that Congress meant for "scandalous" to target a third and distinct type of offensiveness: offensiveness in the mode of communication rather than the idea. The other two words cover marks that are offensive because of the ideas they express; the "scandalous" clause covers marks that are offensive because of the mode of expression, apart from any particular message or idea.

[5] To be sure, there are situations in which it makes sense to treat adjoining words as expressing the same or highly similar concepts (even at the risk of some redundancy). Cf. Swearingen v. United States, 161 U.S. 446, 450 (1896) (construing "'obscene, lewd or lascivious'" to have a unified meaning). That is essentially the approach that the majority takes. See ante, at 6.foot_15 But that is not the approach that Congress appears to have intended here. For example, "scandalous" does not serve as a broader catchall at the end of a list of similar words that all point in one direction. E.g., Washington State Dept. of Social and Health Servs. v. Guardianship Estate of Keffeler, 537 U.S. 371, 384 (2003). Nor is "scandalous" simply grouped among a number of closely related terms that help define its meaning. E.g., Gustafson v. Alloyd Co., 513 U.S. 561, 575 (1995).

[6] The text of § 1052, instead, is a grab bag: It bars the registration of marks featuring "immoral, deceptive, or scandalous matter," as well as, inter alia, disparaging marks, flags, insignias, mislabeled wines, and deceased Presidents. See § § 1052(a)-(e). This is not, in other words, a situation in which Congress was simply being "verbos[e] and proli[x]," Bruesewitz v. Wyeth LLC, 562 U.S. 223, 236 (2011), using two synonyms in rapid-fire succession when one would have done fine. Instead, "scandalous" and "immoral" are separated by an unrelated word ("deceptive") and mixed in with a lengthy series of other, unrelated concepts. The two therefore need not be interpreted as mutually reinforcing under the Court's precedents. See save a statute from unconstitutionality"). In directing the PTO to deny the ancillary benefit of registration to trademarks featuring "scandalous" content, Congress used a word that is susceptible of different meanings. The majority's reading would render the provision unconstitutional; mine would save it. Under these circumstances, the Court ought to adopt the narrower construction, rather than permit a rush to register trademarks for even the most viscerally offensive words and images that one can imagine. 13 [13] That said, I emphasize that Brunetti's challenge is a facial one. That means that he must show that "'a substantial number of [the scandalous-marks provision's] applications are unconstitutional, judged in relation to the [provision's] plainly legitimate sweep.'" United States v. Stevens, 559 U.S. 460, 473 (2010). With "scandalous" narrowed to reach only obscene, profane, and vulgar content, provision would not be overly broad. Cf. Frisby, 487 U.S., at 488 (rejecting a facial challenge after adopting a limiting construction); Boos, 485 U.S., at 331 (same). Even so, hard cases would remain, and I would expect courts to take seriously as-applied challenges demonstrating a danger that the provision had been used to restrict speech based on the views expressed rather than the mode of expression. 14 Cf. Finley, 524 U.S., at 587 (reserving the possibility of as-applied challenges).

[14] Freedom of speech is a cornerstone of our society, and the First Amendment protects Brunetti's right to use words like the one at issue here. The Government need not, however, be forced to confer on Brunetti's trademark (and some more extreme) the ancillary benefit of trademark registration, when "scandalous" in § 1052(a) can reasonably be read to bar the registration of only those marks that are obscene, vulgar, or profane. Though I concur as to the unconstitutionality of the term "immoral" in § 1052(a), I respectfully dissent as to the term "scandalous" in the same statute and would instead uphold it under the narrow construction discussed here.

The opinions that make up Vidal v. Elster are quite lengthy. Justice Thomas's opinion for the majority of the Court is especially extra. It has been included here largely as is because part of its rhetorical strategy appears to be to project, like the "Wall of Sound" style of music, a "wall of history." Justice Barrett's and Justice Sotomayor's concurrences have been more 13 As noted above, I agree with the majority that § 1052(a)'s bar on the registration of "immoral" marks is unconstitutional viewpoint discrimination. See supra, at 2. I would simply sever that provision and uphold the bar on "scandalous" marks. See Reno v. American Civil Liberties Union, 521 U. S. 844, 882-883 (1997); Brockett v. Spokane Arcades, Inc., 472 U. S. 491, 504-507 (1985); see also Tam, 582 U. S., at ___ (slip op., at 26) (striking down only the disparagement clause). 14 The majority adverts to details in the record that could call into question whether the PTO engaged in viewpoint discrimination in this very case. See ante, at 3. Because a facial challenge is the only challenge before the Court, I do not address whether an as-applied challenge could have merit here.

[5] Steve Elster sought to register the trademark "Trump too small," accompanied by an illustration of a hand gesture, to use on shirts and hats. The mark draws on an exchange between then-candidate Donald Trump and Senator Marco Rubio during a 2016 Presidential primary debate.

[6] The PTO examiner refused registration under the names clause because the mark used President Trump's name without his consent. The Trademark Trial and Appeal Board affirmed, and it also rejected Elster's argument that the names clause violates his First Amendment right to free speech. 1 The Federal Circuit reversed, holding that the names clause violated the First Amendment. In re Elster, 26 F. 4th 1328 (CA Fed. 2022). The court first concluded that the names clause is a viewpoint-neutral, content-based restriction on speech subject to at least intermediate scrutiny. See id., at 1331, 1333-1334. It next concluded that the Government could not satisfy even intermediate scrutiny because the names clause does not advance any substantial governmental interest. See id., at 1339. [7] We granted certiorari to resolve whether the Lanham Act's names clause violates the First Amendment. 598 U. S. ___, 143 S. Ct. 2579, 216 L. Ed. 2d 1192 (2023). II A [8] The First Amendment provides that "Congress shall make no law . . . abridging the freedom of speech." In general, we have held that the First Amendment prohibits the Government from restricting or burdening "expression because of its message, its ideas, its subject matter, or its content." Ashcroft v. American Civil Liberties Union, 535 U. S. 564, 573 (2002) (internal quotation marks omitted). "When enforcing this prohibition, our precedents distinguish between content-based and content-neutral regulations of speech." National Institute of Family and Life Advocates v. Becerra, 585 U. S. 755, 766 (2018). A content-based regulation "target[s] speech based on its communicative content," restricting discussion of a subject matter or topic. Reed v. Town of Gilbert, 576 U. S. 155, 163 (2015). "As a general matter," a content-based regulation is "'presumptively unconstitutional and may be justified only if the government proves that [it is] narrowly tailored to serve compelling state interests.'" National Institute of Family and Life Advocates, 585 U. S., at 766. Our precedents distinguish further a particularly "egregious form of content discrimination"-viewpoint discrimination. Rosenberger v. Rector and Visitors of Univ. of Va., 515 U. S. 819, 829 (1995). A viewpoint-based regulation targets not merely a subject matter, "but particular views taken by speakers on a subject." Ibid. It is also generally subject to heightened scrutiny, though viewpoint discrimination's "violation of the First Amendment is . . . more blatant." Ibid. Because our precedents dictate that these distinctions inform our assessment under the First Amendment, we start with them to evaluate the names clause.

[17] Although there was an early push for federal legislation to protect trademarks, no such law was enacted during our country's infancy. See B. Paster, Trademarks-Their Early History, 59 Trademark Rep. 551, 565-566 (1969); see also F. Schechter, Historical Foundations of the Law Relating to Trade-Marks 131 (1925) (Schechter). Instead, trademark law fell largely within "the province of the States" for the 18th and most of the 19th century. Tam, 582 U. S., at 224. For example, Massachusetts passed a private bill incorporating a cotton corporation on the condition that it affix a label to its goods "with the seal of the said Corporation." 1 Mass. Private and Special Laws, 1789, ch. 43, §5, p. 226 (1805). The law also prevented others from "us[ing] a like seal or label" by subjecting them to treble damages. Ibid. To be sure, for most of our first century, most commerce was local and most consumers therefore knew the source of the goods they purchased. See R. Bone, Hunting Goodwill: A History of the Concept of Goodwill in Trademark Law, 86 B. U. L. Rev. 547, 575 (2006). "[E]ven as late as 1860 the term 'trademark' really denoted only the name of the manufacturer." B. Pattishall, Two Hundred Years of American Trademark Law, 68 Trademark Rep. 121, 128 (1978). There was nonetheless "a certain amount of litigation in the state courts in the early nineteenth century," though it went unrecorded. Schechter 133.

[18] The "first reported American decision that may be described as a trademark case" involved a dispute over the content of a mark-and in particular, the use of a person's name. Pattishall, Constitutional Foundations, at 460. In Thomson v. Winchester, 36 Mass. 214, 216, 19 Pick. 214 (1837), Samuel Thomson-who sold a medicine under the name "Thomsonian Medicines"-brought suit against another Massachusetts druggist who sold an allegedly inferior product under the same name. The court held that the druggist could be liable for fraud if he passed the medicine off as that of Thomson. Ibid. [19] In a similar vein, the first reported trademark case in federal court revolved around a trademark's content. Justice Story, sitting as Circuit Justice, granted an injunction to prohibit a seller of spools from infringing on the plaintiff 's trademark of "Taylor's Persian Thread." Taylor v. Carpenter, 23 F. Cas. 742 (D. Mass. 1844). Justice Story explained that, by using the trademark, the seller "imitated . . . both descriptions of spools and labels, red and black, of the plaintiffs," and that the principles prohibiting such infringement were at that time "very familiar to the profession" and not "susceptible of any judicial doubt." Id., at 464. [20] Recorded trademark law began to take off in the last decades of the 19th centuryafter the ratification of the Fourteenth Amendment in 1868-and its established contentbased nature continued. See Schechter 134; Pattishall, Two Hundred Years, at 133. American commerce became more national in character, and, perhaps because of this shift, Congress enacted the first federal trademark law in 1870. Although States retained their important role, "Congress stepped in to provide a degree of national uniformity" for trademark protection. Tam, 582 U. S., at 224 (citing Act of July 8, 1870, § §77-84).foot_17 [21] This first law contained prohibitions on what could be protected as a trademark. For example, the law would not protect a trademark that contained "merely the name of a person . . . only, unaccompanied by a mark sufficient to distinguish it from the same name when used by other persons." Id., at 211. It thus restricted a trademark based upon its content (i.e., whether it contained more than a name). As trademark disputes increased, courts continued to assess trademarks based on their content. For example, this Court's first trademark decision explained that a trademark cannot consist of a purely geographical name, rejecting an attempt by one of several coal producers in Pennsylvania's Lackawanna Valley to trademark "Lackawanna coal." Canal Co. v. Clark, 80 U.S. 311 (1872). Throughout its development, trademark law has required content-based distinctions.

[22] That did not change when Congress enacted the Lanham Act in 1946. The Act's comprehensive system for federal registration of trademarks continues to distinguish based on a mark's content. See Restatement (Third) of Unfair Competition §9, Comment e (1993) (Restatement) ("The Lanham Act is generally declarative of existing law, incorporating the principal features of common law trademark protection"). The Act defines a trademark to include "any word, name, symbol, or device, or any combination thereof " that a person uses "to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods." §1127. When the Government defines what may be registered as a trademark, it necessarily decides that some words or images cannot be used in a mark. To take one example, the Lanham Act bars the registration of "a mark which so resembles [another's] mark . . . as to be likely . . . to cause confusion, or to cause mistake, or to deceive." §1052(d). It is impossible to determine whether one trademark is the same as (or confusingly similar to) another without looking at the content of the two marks. [23] This history, reflected in the Lanham Act still today, demonstrates that restrictions on trademarks have always turned on a mark's content. But, despite its content-based nature, trademark law has existed alongside the First Amendment from the beginning. That longstanding, harmonious relationship suggests that heightened scrutiny need not always apply in this unique context.

[24] The content-based nature of trademark protection is compelled by the historical rationales of trademark law. A trademark has generally served two functions: "indicating ownership of the goods to which it [is] affixed" and "indicating the source or origin of manufacture." Schechter 122. Indicating ownership of a good was needed in part to "fi[x] responsibility for defective merchandise." Restatement §9, Comment b. And, indicating the source of the good helped "prospective purchasers . . . make their selections based upon the reputation, not merely of the immediate vendor, but also of the manufacturer." Ibid. Both goals thus reflect that trademarks developed historically to identify for consumers who sold the goods (the vendor) and who made the goods (the manufacturer). See ibid. In that vein, a Court held that the law exceeded Congress's power under the Commerce Clause. See Trade-Mark Cases, 100 U. S. 82, 99, 25 L. Ed. 550, 1879 Dec. Comm'r Pat. 619 (1879). The law drew no challenge under the First Amendment.

basic function of trademark law has always been to "prohibi[t] confusion as to the source of good or services." Pattishall, Constitutional Foundations, at 458; see also Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U. S. 140, 147 (2023) ("Confusion as to source is the bête noire of trademark law"). Indicating ownership and the manufacturing source touch on the content of the mark-i.e., from whom the product came. And, as we have explained, policing trademarks so as to prevent confusion over the source of goods requires looking to the mark's content. Supra, at 10.

[25] Because of the uniquely content-based nature of trademark regulation and the longstanding coexistence of trademark regulation with the First Amendment, we need not evaluate a solely content-based restriction on trademark registration under heightened scrutiny. See R. A. V., 505 U. S., at 387 ("Even the prohibition against content discrimination that we assert the First Amendment requires is not absolute"); Jack Daniel's, 599 U. S., at 159 (explaining that, in some circumstances, "trademark law [can] prevai[l] over the First Amendment" (internal quotation marks omitted)); post, at 6 (opinion of Sotomayor, J.); post, at 6-7 (opinion of Barrett, J.).

[26] We have acknowledged that trademark rights and restrictions can "play well with the First Amendment." Jack Daniel's, 599 U. S., at 159 (internal quotation marks omitted). In this case, we do not delineate an exhaustive framework for when a content-based trademark restriction passes muster under the First Amendment. But, in evaluating a solely contentbased trademark restriction, we can consider its history and tradition, as we have done before when considering the scope of the First Amendment. See City of Austin v. Reagan Nat. Advertising of Austin, LLC, 596 U. S. 61, 75 (2022); id., at 101 (Thomas, J., dissenting); R. A. V., 505 U. S., at 382-383; Roth v. United States, 354 U. S. 476, 482-483 (1957).

[27] The Lanham Act's names clause has deep roots in our legal tradition. Our courts have long recognized that trademarks containing names may be restricted. And, these name restrictions served established principles. This history and tradition is sufficient to conclude that the names clause-a content-based, but viewpoint-neutral, trademark restriction-is compatible with the First Amendment. We need look no further in this case.

[28] Restrictions on trademarking names have a long history. See generally 2 McCarthy §13:5. Such restrictions have historically been grounded in the notion that a person has ownership over his own name, and that he may not be excluded from using that name by another's trademark. As the Court has explained, "[a] man's name is his own property, and he has the same right to its use and enjoyment as he has to that of any other species of property." Brown Chemical Co. v. Meyer, 139 U. S. 540, 544 (1891). It is therefore "an elementary principle that every man is entitled to the use of his own name in his own business." F. Treadway, Personal Trade-Names, 6 Yale L. J. 141, 143-144 (1897) (Treadway); see also A. Greeley, Foreign Patent and Trademark Laws §138, p. 135 (1899) ("The right of any one to place his own name on goods sold by him is recognized as a natural right and cannot be interfered with"). "The notion that people should be able to use their own name to identify their goods or business is deeply rooted in American mores." B. Pattishall, D. Hilliard, & J. Welch, Trademarks and Unfair Competition §2.06 (2001).

[29] Recognizing a person's ownership over his name, the common law restricted the trademarking of names. It prevented a person from trademarking any name-even his ownby itself. In "the early years of trademark law," courts recognized that " there can be no trademark in the name of a person, because . . . every person has the right to use his own name for the purposes of trade." 2 McCarthy §13:5 (internal quotation marks omitted); see also Restatement §14, Comment e ("[A]t early common law, the recognition of an unencumbered right to use one's name in trade effectively precluded the existence of trademark or trade name rights in personal names"); W. Browne, Law of Trade-Marks §206, p. 219 (2d ed. 1885) ("The rule is, that a man cannot turn his mere name into a trade-mark"); McLean v. Fleming, 96 U. S. 245, 252, 24 L. Ed. 828, 1878 Dec. Comm'r Pat. 262 (1878) (explaining that a person cannot obtain "the exclusive use of a name, merely as such, without more").

[30] The common law did, however, allow a person to obtain a trademark containing his own name-with a caveat: A person could not use a mark containing his name to the exclusion of a person with the same name. "A corollary of the right to use one's own name and identity in trade is the right to stop others from doing so-at least those who don't share the same name." J. Rothman, Navigating the Identity Thicket, 135 Harv. L. Rev. 1271, 1306 (2022); see also Treadway 143-144. In other words, a person's right to his name cannot be exclusive as to other people bearing the same name: John Smith cannot acquire a trademark that prohibits other John Smiths from using their own names. See McLean, 96 U. S., at 252 ("[H]e cannot have such a right, even in his own name, as against another person of the same name, unless such other person uses a form of stamp or label so like that used by the complaining party as to represent that the goods of the former are of the latter's manufacture"); accord, Brown Chemical, 139 U. S., at 542; MeNeely v. MeNeely, 62 N. Y. 427, 432 (Ct. App. 1875); see also Treadway 143; accord, post, at 10 (opinion of Barrett, J.). Consider the case of John L. Faber and John H. Faber, two men who independently manufactured lead pencils near Nuremberg, Germany. Both men stamped the pencils they manufactured with their shared surname. After recognizing that each man "had the right to put his own name on his own pencils," the New York Supreme Court declined to allow one man to effectively trademark the other man's name. Faber v. Faber, 3 Abb. Pr. (N. S.) 115, 116 (1867).

[31] We see no evidence that the common law afforded protection to a person seeking a trademark of another living person's name. To the contrary, English courts recognized that selling a product under another person's name could be actionable fraud. See, e.g., Singleton, 3 Dougl. 293, 99 Eng. Rep. 661; Croft v. Day, 7 Beav. 84, 88, 49 Eng. Rep. 994, 996 (1843) ("[N]o man has a right to sell his goods as the goods of another"). This recognition carried over to our country. See McLean, 96 U. S., at 252 ("[I]t is doubtless correct to say that a person may have a right in his own name as a trade-mark as against a trader or dealer of a different name"); see also Faber, 3 Abb. Pr. (N. S.), at 116. Even in the absence of fraud, it would be difficult, if not impossible, to square such a right to trademark another person's name with our established understanding that "[a] person may have a right in his own name as a trade-

Slokevage admits that the configuration she is seeking to protect is "trade dress" and thus we will accept for purposes of this appeal that the configuration is "trade dress."

The interrelationship between these inquiries is also reflected in Professor McCarthy's discussion of common geometric shapes:Most common geometric shapes are regarded as not being inherently distinctive, in view of the common use of such shapes in all areas of advertising. Thus, such ordinary shapes as circles, ovals, squares, etc., either when used alone or as a background for a word mark, cannot function as a separate mark unless (1) the shape is likely to create a commercial impression on the buyer separate from the word mark or any other indicia and (2) the shape is proven to have secondary meaning . . . . The rationale is that such designs have been so widely and commonly used as mere decorative graphic elements that the originindicating ability of such designs has been diminished. 1 MCCARTHY ON TRADEMARKS § 7:29, at 7-73-74 (footnotes omitted).

{Note that the prohibition on the registration of marks that "may disparage . . . persons" was held to be invalid under the Free Speech Clause of the First Amendment in Matal v. Tam, 582 U.S. 218 (2017) and the prohibition of the registration of marks that are "immoral . . . or scandalous" was held to be invalid under the same constitutional provision in Iancu v. Brunetti, 588 U.S. 388 (2019)}.

Additionally, Eppendorf's experts concede that some of the suggested alternative designs would slightly increase the cost of the product. This provides further support for the conclusion that the fins are functional under the traditional definition of functionality.

TrafFix suggests that there may be a requirement under Qualitex to inquire into a "significant non-reputation-related disadvantage" in aesthetic functionality cases, because aesthetic functionality was "the question involved in Qualitex." 121 S.Ct. at 1262. This statement has been criticized because "aesthetic functionality was not the central question in the Qualitex case." J. Thomas McCarthy, 1 McCarthy on Trademarks and Unfair Competition § 7:80,7-198 (4th ed. 2001). We need not decide what role, if any, the determination of a "significant non-reputation-related disadvantage" plays in aesthetic functionality cases, because aesthetic functionality is not at issue here.

For example, a feature may be found functional where the feature "affects the cost or quality of the device." TrafFix, 121 S.Ct. at 1263.

See Wallace Int'l Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76, 80 (2d Cir. 1990) (noting that the term "functionality" as commonly understood seems to imply "only utilitarian considerations").

In Warner Brothers, we cited as examples Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 122, 59 S.Ct. 109, 83 L.Ed.73 (1938), in which the pillow shape of a shredded wheat biscuit was deemed functional because the cost of the cereal would be increased and its quality lessened by any other form, and Fisher Stoves Inc. v. All Nighter StoveWorks, Inc., 626 F.2d 193, 195 (1st Cir. 1980), in which a twotier woodstove design was deemed functional because it improved the operation of the stove. See Warner Bros., Inc., 724 F.2d at 331.

See, e.g., Industria Arredamenti Fratelli Saporiti v. Charles Craig, Ltd., 725 F.2d 18, 19 (2d Cir. 1984) (interlocking design of couch cushions was a visual "label" but served a utilitarian purpose by keeping cushions in place and was therefore functional).

The intellectual property protection of fashion design has been for years a subject of controversy among commentators. Some have proposed working within the confines of the current

15 U.S.C. § 1119 provides that "[i]n any action involving a registered mark the court may determine the right to registration, order the cancellation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action. Decrees and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Patent and Trademark Office, and shall be controlled thereby." (emphasis added).

"Royal" is defined, inter alia, as "of or pertaining to a king, queen, other sovereign" and informally as "a royal person; member of the royalty," or "a member of England's royal family." The Random House Dictionary of the English Language (Unabridged), p. 1677 (2nd ed. 1977). The Board may take judicial notice of dictionary definitions., Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co.,

USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). See also Dictionary.com attached to the October 27, 2011 Office Action.

The disparagement clause also prevents a trademark from being registered on the supplemental register. § 1091(a).

That interpretive move appears to accord with the Federal Circuit and the PTO's past practice. Ante, at 2-3. Nevertheless, it is by no means the only reasonable way to read this text, and indeed some courts have suggested that "scandalous" can and should be applied independently of "immoral," see, e.g., In re McGinley, 660 F. 2d 481, 485, n. 6 (CCPA 1981).

The Board declined to reach the PTO examiner's alternative ground for refusing registrationthat Elster's mark "falsely suggest[s] a connection with persons, living or dead." 15 U. S. C. §1052(a). We focus only on the names clause and express no opinion about whether Elster's mark fails to meet other requirements for federal registration.

This first federal trademark law "provided for the registration of trademarks generally without regard to whether they were used in interstate or foreign commerce." 1 McCarthy §5:3, at 188. This

See Wal-Mart Stores, Inc., 529 U.S. at 210 (noting that the Abercrombie spectrum of distinctiveness is properly applied to word marks); see also 1 McCarthy on Trademarks § 8:13 (4th ed. 2010) (commenting that Seabrook test is preferred for classifying inherently distinctive trade dress in packaging and containers); DCNL, Inc. v. Almar Sales Co., 47 U.S.P.Q.2d 1406, 1997 WL 913941 (N.D.Cal. 1997), aff'd without opinion, 178 F.3d 1308 (9th Cir. 1998).

mark, as against a person of a different name." Gilman v. Hunnewell, 122 Mass. 139, 148 (1877); see also Thaddeus Davids Co. v. Davids Mfg. Co., 233 U. S. 461, 472 (1914) (highlighting persons' "right to use their own name in trade"); Faber, 3 Abb. Pr. (N. S.), at 116 ("[T]he maker had the right to put his own name on his own pencils"). Relatedly, one could contract for the use of another person's name in his business. See, e.g., McLean, 96 U. S., at 249 (explaining that a "physician whose name the pills bear . . . sold the right to use the same" to another); see also L. E. Waterman Co. v. Modern Pen Co., 235 U. S. 88, 96 (1914); Meriden Britannia Co. v. Parker, 39 Conn. 450, 453 (1872) ("[T]hey made a contract with the petitioners, by which, and by subsequent contracts, the petitioners acquired the right . . . to manufacture and sell plated spoons and forks with the name 'Rogers' stamped thereon as a component part of a trade mark"). Such contracts would make little sense if one could use another living person's name in business at will. The common-law approach to trademarking names thus protected only a person's right to use his own name.

[32] This common-law understanding carried over into federal statutory law. The first federal trademark law contained a requirement that a trademark contain more than merely a name. See Act of July 8, 1870, §79, 16 Stat. 211. That requirement remains largely intact. See §1052(e)(4) (prohibiting registration of a trademark if it "is primarily merely a surname"). A few decades later, federal trademark law emphasized "'[t]hat nothing herein shall prevent the registration of a trade-mark otherwise registerable because of its being the name of the applicant.'" Act of Feb. 18, 1911, ch. 113, 36 Stat. 918 (emphasis added). And, the Lanham Act later "incorporat[ed] the principal features of common law trademark protection," thereby "declar[ing] . . . existing law" rather than writing trademark law from scratch. Restatement §9, Comment e; see also W. Derenberg, Trade-Mark Protection and Unfair Trade 22 (1936) (explaining that the "function [of federal trademark law] is essentially an evidential one, reflecting the underlying common law trade-mark right with the existence of which it rises and falls"). It is thus unsurprising that the Lanham Act included the names clause, prohibiting the registration of a mark containing "a name . . . identifying a particular living individual except by his written consent." §1052(c). The names clause reflects the common law's careful treatment of names when it comes to trademarks.

[33] The restriction on trademarking names also reflects trademark law's historical rationale of identifying the source of goods. See Hanover Star Milling Co. v. Metcalf, 240 U. S. 403, 412 (1916) ("The primary and proper function of a trade-mark is to identify the origin or ownership of the article to which it is affixed"); accord, post, at 8 (opinion of Barrett, J.). Trademark protection ensures that consumers know the source of a product and can thus evaluate it based upon the manufacturer's reputation and goodwill. See Restatement §9, Comment b; see also Powell v. Birmingham Vinegar Brewery Co., 13 Rep. Pat. Cas. 235, 250 (Ct. App. 1896) (Lindley, L. J.) ("His mark, as used by him, has given a reputation to his goods. His trade depends greatly on such reputation. His mark sells his goods"). By barring a person from using another's name, the names clause reflects the traditional rationale of ensuring that consumers make no mistake about who is responsible for a product. See also Hanover Star Milling Co., 240 U. S., at 412-413 ("The essence of the wrong [for trademark infringement] consists in the sale of the goods of one manufacturer or vendor for those of another").

[34] Moreover, the names clause respects the established connection between a trademark and its protection of the markholder's reputation. We have long recognized that a trademark protects the markholder's reputation. See McLean, 96 U. S., at 254 (explaining that a trademark "enable[s a mark-holder] to secure such profits as result from his reputation for skill, industry, and fidelity"); see also Hanover Star Milling Co., 240 U. S., at 412-413, 414; Celluloid Mfg. Co. v. Cellonite Mfg. Co., 32 F. 94, 97 (CC NJ 1887) (Bradley, J.). This protection reflects that a mark may "acquir[e] value" from a person's "expenditure of labor, skill, and money." San Francisco Arts & Athletics, Inc. v. United States Olympic Comm., 483 U. S. 522, 532 (1987) (internal quotation marks omitted); accord, McLean, 96 U. S., at 251. Accordingly, when a person uses another's mark, "the owner is robbed of the fruits of the reputation that he had successfully labored to earn." Amoskeag Mfg. Co. v. Spear & Ripley, 2 Sandf. 599, 606 (NY Super. Ct. 1849). A person's trademark is "his authentic seal," and "[i]f another uses it, he borrows the owner's reputation, whose quality no longer lies within his own control." Yale Elec. Corp. v. Robertson, 26 F. 2d 972, 974 (CA2 1928) (Hand, J.). "This is an injury, even though the borrower does not tarnish it, or divert any sales by its use; for a reputation, like a face, is the symbol of its possessor and creator, and another can use it only as a mask." Ibid.

[35] This connection between a trademark and reputation is even stronger when the mark contains a person's name. " [I]s not a man's name as strong an instance of trade-mark as can be suggested?" Ainsworth v. Walmsley, 1 L. R., Eq. 518, 525 (1866). In fact, the English common law of trademarks arose from the fact that "those who sold goods . . . that were the fruit of their own labor or craftsmanship [began to] identif[y] those products . . . with their own names." Pattishall, Constitutional Foundations, at 457. As we have explained, virtually up until the Fourteenth Amendment's adoption, a trademark "really denoted only the name of the manufacturer." Pattishall, Two Hundred Years, at 128. And, this Court has long associated names with the good will they may bear. See McLean, 96 U. S., at 252; L. E. Waterman Co., 235 U. S., at 96 ("He purported to transfer to the partnership the good will attaching to his name"). The names clause thus protects "the reputation of the named individual" by preventing another person from using his name. Post, at 9 (opinion of Barrett, J.).

[36] Applying these principles, we have recognized that a party has no First Amendment right to piggyback off the goodwill another entity has built in its name. In San Francisco Arts & Athletics, Inc., the Court upheld a provision of the Amateur Sports Act of 1978 that prohibited "'any person'" from using the word "'Olympic'" for certain purposes "'[w]ithout the consent'" of the U. S. Olympic Committee (USOC), and subjected violations to "'the remedies provided in the Lanham Act.'" 483 U. S., at 528 (quoting 36 U. S. C. §380(a); alteration omitted). The Court rejected the argument that the consent requirement violated the First Amendment because "Congress reasonably could conclude" that the value of the word "'Olympic' was the product of the USOC's 'own talents and energy.'" 483 U. S., at 532-533 (quoting Zacchini v. Scripps-Howard Broadcasting Co., 433 U. S. 562, 575 (1977)). Although the petitioner certainly had a First Amendment right to speak on political matters, it lacked the right to "exploit the commercial magnetism" of the word "Olympic" and the USOC's hard-won efforts in giving that word value. 483 U. S., at 539 (internal quotation marks omitted). The names clause guards a similar interest. By protecting a person's use of his name, the names clause "secur [es] to the producer the benefits of [his] good reputation." Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U. S. 189, 198 (1985); see also Pattishall, Two Hundred Years, at 121 (explaining how trademark law protects a person's "commercial identity, thereby [allowing him] to enjoy the fruits of his own labor").

[37] We conclude that a tradition of restricting the trademarking of names has coexisted with the First Amendment, and the names clause fits within that tradition. Though the particulars of the doctrine have shifted over time, the consistent through line is that a person generally had a claim only to his own name. The names clause reflects this common-law tradition by prohibiting a person from obtaining a trademark of another living person's name without consent, thereby protecting the other's reputation and goodwill. 4 [38] None of this is to say that the Government cannot innovate when it comes to trademark law. A firm grounding in traditional trademark law is sufficient to justify the content-based trademark restriction before us, but we do not opine on what may be required or sufficient in other cases. To be sure, as Justice Barrett observes, a case presenting a content-based trademark restriction without a historical analogue may require a different approach. Post, at 15. But, we need not develop such a comprehensive theory to address the relatively simple case before us today. See post, at 1 (Kavanaugh, J., concurring in part).

[39] We conclude that the names clause is of a piece with a common-law tradition regarding the trademarking of names. We see no reason to disturb this longstanding tradition, which supports the restriction of the use of another's name in a trademark.

[40] Our colleagues would address the names clause with two analogies. Neither is compelling in this case. Under both analogies, the test would boil down to what a judge 4 JUSTICE BARRETT takes a different approach, suggesting that a historical rule that mirrors the names clause is required. See post, at 11. But, history-focused approaches to constitutional scrutiny do not typically require a historical twin. Cf. New York State Rifle & Pistol Assn., Inc. v. Bruen, 597 U. S. 1, 30 (2022). Nor do Justice Barrett's examples undercut the names clause's historical grounding, as they raise different aspects of trademarking names. For example, she relies upon cases that concern trademarks containing "the name of a famous person, long since dead." Barrows v. Knight, 6 R. I. 434, 438 (1860); see also Stephano Bros., Inc. v. Stamatopoulos, 238 F. 89, 93 (CA2 1916) ("In this case the name adopted is a famous Egyptian historical character, who lived at least 1,000 years before the Christian era"). The part of the names clause that we address concerns only "a particular living individual['s]" name. §1052(c) (emphasis added). And, her other examples concern names that had become generic or descriptive words. See Messerole v. Tynberg, 4 Abb. Pr. (N. S.) 410, 414 (NY Ct. Com. Pl. 1868) (treating "the word 'Bismarck'" as "a popular term and one in general use"); Medlar & Holmes Shoe Co. v. Delsarte Mfg. Co., 68 N.J. Eq. 706, 46 A. 1089, 1091 (CC NJ 1900) (treating the name of the deceased French artist Delsarte as "a generic or descriptive term").

believes is "reasonable in light of the purpose" of trademark law. Post, at 5 (opinion of Sotomayor, J.); see post, at 7-8 (opinion of Barrett, J.). But, no matter the approach taken, we all agree that the names clause does not violate the First Amendment.

[41] Justice Sotomayor would pull "strands of precedent" together to conclude that heightened scrutiny does not apply to trademark registration because it is a Government initiative or benefit. Post, at 8. This conclusion rests primarily upon cases in which the Government provides a cash subsidy or conditions the use of a public payroll to collect union dues. See ibid. But, those cases "occupy a special area of First Amendment case law, and they are far removed from the registration of trademarks." Tam, 582 U. S., at 241 (plurality opinion). The Government benefit cases are an ill fit for the names clause, and we would not graft this precedent, which Justice Sotomayor acknowledges is not controlling, onto this trademark dispute. Post, at 8-9.

[42] Justice Barrett, echoed by Justice Sotomayor, would import the test that we have used for a "limited public forum." Our precedents hold that the Government "may create a forum that is limited to use by certain groups or dedicated solely to the discussion of certain subjects." Pleasant Grove City v. Summum, 555 U. S. 460, 470 (2009). Justice Barrett provides little explanation for why that approach makes sense in the trademark context-she simply declares that the limited public forum framework "is apt" due to the content-based nature of trademark law. Post, at 7. Although she attempts to cabin the analogy to the content-based nature, the limited public forum test is quite obviously about creating a forum. And, there is reason to doubt that the federal trademark register is analogous to a limited public forum. To start, unlike a speaker in a limited public forum, a markholder does not communicate with customers on the register. Rather, as the Government acknowledges, the register "is a way of warning potential infringers that they risk liability if they use the same or confusingly similar marks." Tr. of Oral Arg. 19. The Government has also previously asserted that it did not create a forum for speech by providing for the federal registration of trademarks. See Reply Brief in Matal v. Tam, O. T. 2016, No. 15-1293, p. 4 ("[T]he government has not created a forum here"); Tr. of Oral Arg. in Iancu v. Brunetti, O. T. 2018, No. 18-302, p. 27 ("[W]e don't regard it as a limited public forum"). Without an analogous forum, it is hard to see why the test for a limited public forum should apply. We see no need to adopt a potentially fraught analogy to resolve the names clause's constitutionality.

[43] Despite the differences in methodology, both Justice Sotomayor and Justice Barrett reach the same conclusion that the names clause does not violate the First Amendment. On the bottom line, there is no dispute. Rather than adopt a reasonableness test premised upon loose analogies, however, we conclude that the names clause is grounded in a historical tradition sufficient to demonstrate that it does not run afoul of the First Amendment.

[44] Our decision today is narrow. We do not set forth a comprehensive framework for judging whether all content-based but viewpoint-neutral trademark restrictions are constitutional. Nor do we suggest that an equivalent history and tradition is required to uphold every content-based trademark restriction. We hold only that history and tradition establish that the particular restriction before us, the names clause in §1052(c), does not violate the First Amendment. Although an occasion may arise when history and tradition cannot alone answer whether a trademark restriction violates the First Amendment, that occasion is not today. In a future case, we can address the "distinct question" whether "a viewpoint-neutral, content-based trademark restriction" is constitutional without "such a historical pedigree." Post, at 1 (opinion of Kavanaugh, J.). The judgment of the Court of Appeals is

Justice KAVANAUGH, with whom THE CHIEF JUSTICE joins, concurring in part.

[45] I join all but Part III of the Court's opinion. I agree with the Court that the names clause is constitutional, particularly in light of the long history of restricting the use of another's name in a trademark. In my view, a viewpoint-neutral, content-based trademark restriction might well be constitutional even absent such a historical pedigree. We can address that distinct question as appropriate in a future case. Cf., e.g., post, at 7-9 (Barrett, J., concurring in part).

Justice BARRETT, with whom Justice KAGAN joins, with whom Justice SOTOMAYOR joins as to Parts I, II, and III-B, and with whom Justice Jackson joins as to Parts I and II, concurring in part.

[46] While I agree with the Court that the names clause does not violate the First Amendment, I disagree with some of its reasoning. The Court claims that "history and tradition" settle the constitutionality of the names clause, rendering it unnecessary to adopt a standard for gauging whether a content-based trademark registration restriction abridges the right to free speech. That is wrong twice over. First, the Court's evidence, consisting of loosely related cases from the late-19th and early-20th centuries, does not establish a historical analogue for the names clause. Second, the Court never explains why hunting for historical forebears on a restriction-by-restriction basis is the right way to analyze the constitutional question. I would adopt a standard, grounded in both trademark law and First Amendment precedent, that reflects the relationship between content-based trademark registration restrictions and free speech. In my view, such restrictions, whether new or old, are permissible so long as they are reasonable in light of the trademark system's purpose of facilitating source identification. . . . .

[47] Rather than adopt a generally applicable principle, the Court assesses the names clause in isolation, treating the supposed history and tradition of the clause as determinative. In my view, the historical record does not alone suffice to demonstrate the clause's constitutionality. For one thing, the record does not support the Court's conclusion. For another, I disagree with its choice to treat tradition as dispositive of the First Amendment issue.

[48] First, the Court's history. It is true that "a tradition of restricting the trademarking of names" arose in the late 19th century. Ante, at 19. As the Court says, a personal name by itself, without any accompanying words or symbols, did not typically qualify as a trademark. See McLean v. Fleming, 96 U. S. 245, 252-253 (1878); ante, at 13. And a person could not always enforce a trademark including her own name against another with the same name. See Brown Chemical Co. v. Meyer, 139 U. S. 540, 542 (1891); ante, at 14. 3 The first federal trademark statute reflected these principles, prohibiting the registration of a mark that was "merely the name of a person, firm, or corporation only, unaccompanied by a mark sufficient to distinguish it from the same name when used by other persons." §79, 16 Stat. 211. Today, the Lanham Act continues to bar the registration of a mark that is "primarily merely a surname." 15 U. S. C. §1052(e) (4).

[49] But the Court also claims that the common law did not afford protection to a person seeking a trademark including another living person's name (in other words, a rule akin to the names clause). Ante, at 14. I am less sure. In Thaddeus Davids Co. v. Davids Mfg. Co., 233 U.S. 461 (1914), this Court explained that the 1905 federal trademark statute contained "a fairly complete list of the marks used by dealers in selling their goods, which are not valid trademarks at common law." Id., at 467 (internal quotation marks omitted). Notably, this statute did not include the names clause or any rough equivalent. 4 And if such a common-law rule existed, the majority opinion does not identify it. Instead, the Court draws from sources suggesting that a person could not enforce a trademark with another individual's name against that individual. See ante, at 14-15. Nor could she fraudulently attempt to pass off her goods as those of another person, using that person's name. Ante, at 14. So far, so good. Yet the names clause prevents other uses of someone else's name that the common law may have allowed. And on that score, the Court does not fully grapple with countervailing evidence.

[50] In 1860, the Supreme Court of Rhode Island concluded that the phrase "'Roger Williams Long Cloth'" was "capable of distinguishing" the manufacturer's goods and thus qualified as a trademark. Barrows v. Knight, 6 R. I. 434, 438. "'Roger Williams,' though the name of a famous person," the Court explained, was, "as applied to cotton cloth, a fancy name," as would be the case with "any other her [o], living or dead." Ibid. (emphasis added). Likewise, a New York court upheld the plaintiffs' exclusive right to use the name "Bismarck" to designate their paper collars, as they were the first to "appropriate" the name for that purpose. Messerole v.Tynberg, 4 Abb. Pr. (N. S.) 410, 414 (Ct. Com. Pl. 1868). The court thus rejected the defendant's argument that the plaintiffs could not adopt "the name of a distinguished German citizen" as a trademark. Id., at 412. Summarizing, the Second Circuit explained that "[t]he law permits the adoption as a trade-mark of the name of a person who has achieved fame and distinction, provided the name is not descriptive of the quality or the character of the article or a geographical name." Stephano Bros., Inc. v. Stamatopoulos, 238 F. 89, 93 (1916). See also Medlar & Holmes Shoe Co. v. Delsarte Mfg. Co., 68 N.J. Eq. 706, 46 A. 1089 (N. J. Ch. Ct. 1900) ("The name of a famous person, used merely as a fancy name, may become an exclusive trade-mark"); W. Browne, Law of Trade-Marks §216, pp. 225-226 (2d ed. 1885) (same). 5[51] The legislative history of the Lanham Act also undercuts the Court's conclusion. If the names clause codified an existing common-law tradition, one might expect to see some reference to that tradition when the names clause was adopted. But proponents of the clause offered a different justification. Discussing a predecessor version of the clause, Edward Rogers, the Lanham Act's primary drafter, remarked that "[t]he idea of prostituting great names by sticking them on all kinds of goods is very distasteful to me." Trade-Marks: Hearings on H. R. 9041 before the Subcommittee on Trade-Marks, House Committee on Patents, 75th Cong., 3d Sess., 79 (1938) (H. R. 9041); see J. Litman, Keynote Address, 39 Cardozo Arts & Ent. L. J. 855, 856 (2021). The Commissioner of the Patent Office agreed, noting the "shock to [his] sense of propriety to see liberty taken . . . with the names of celebrities of private life." H. R. 9041, at 79. He then referred to the attempted registration of "the name of the Duchess of Windsor for brassieres and ladies' underwear." Ibid. They did not suggest that the common law would already prevent those uses of another's name as a trademark. On the contrary, they seemed most concerned about the types of marks that the common law appeared to allow. See supra, at 11.

[52] It is thus difficult to say that the names clause is constitutional solely because of its historical pedigree. 6 Perhaps recognizing that reality, the Court relies not only on the purported common-law tradition restricting the trademarking of names, but also points to the names clause's relation to trademark's historical purposes. Ante, at 16-18. The latter argument is quite similar to my own-I agree that the names clause helps to ensure that the proposed mark functions as a source identifier and to guard against reputational consequences, serving trademark's historical goals.

[53] But I cannot agree with the Court that the existence of a "common-law tradition" and a "historical analogue" is sufficient to resolve this case. Ante, at 19-20. Even if the Court's evidence were rock solid, I still would not adopt this approach. To be sure, tradition has a legitimate role to play in constitutional adjudication. For instance, the longstanding practice of the political branches can reinforce our understanding of the Constitution's original meaning. Consumer Financial Protection Bureau v. Community Financial Services Assn. of America, Ltd., 601 U. S. 416, 442 (2024) (Kagan, J., concurring). A course of deliberate practice might liquidate ambiguous constitutional provisions. See The Federalist No. 37, p. 229 (C. Rossiter ed. 1961). The views of preceding generations can persuade, and, in the realm of stare decisis, even bind. But tradition is not an end in itself-and I fear that the Court uses it that way here.

[54] The Court does not (and could not) argue that the late-19th and early-20th century names-restriction tradition serves as evidence of the original meaning of the Free Speech Clause. Cf. Samia v. United States, 599 U. S. 635, 655-656, 143 S. Ct. 2004, 216 L. Ed. 2d 597 (2023) (Barrett, J., concurring in part and concurring in judgment). Nor does it treat the history it recites as a persuasive data point. Instead, it presents tradition itself as the constitutional argument; the late-19th and early-20th century evidence is dispositive of the First Amendment issue. Yet what is the theoretical justification for using tradition that way?

[55] Relying exclusively on history and tradition may seem like a way of avoiding judgemade tests. But a rule rendering tradition dispositive is itself a judge-made test. And I do not see a good reason to resolve this case using that approach rather than by adopting a generally applicable principle. (After all, there is a tradition of the latter approach too. See, e.g., McCulloch v. Maryland, 17 U.S. 316 (1819) (adopting standard for application of the Necessary and Proper Clause).) In the course of applying broadly worded text like the Free Speech Clause, courts must inevitably articulate principles to resolve individual cases. I do not think we can or should avoid doing so here. As I explained in Part I-B, the takeaway from history is that content-based trademark restrictions have long been central to trademark's purpose of facilitating source identification, and they have not posed a serious risk of censorship. This principle offers a generally applicable way to think about whether registration restrictions "'play well with the First Amendment.'" Ante, at 12. We should bring clarity to the law by adopting it.

[56] In my view, the Court's laser-like focus on the history of this single restriction misses the forest for the trees. It gives secondary billing to what I think is the central point: that the names clause "reflects trademark law's historical rationale of identifying the source of goods." Ante, at 16. I see no reason to proceed based on pedigree rather than principle. Besides, as the Court admits, its approach merely delays the inevitable: Eventually, the Court will encounter a restriction without a historical analogue and be forced to articulate a test for analyzing it. Ante, at 19-20.

[57] Trademark protection cannot exist without content discrimination. So long as content-based registration restrictions reasonably relate to the purposes of the trademark system, they are constitutional. The names clause clears this bar. I respectfully concur in part.

Justice Sotomayor, with whom Justice Kagan and Justice Jackson join, concurring in the judgment.

[58] This case involves a free-speech challenge to a viewpoint-neutral, content-based condition on trademark registration. In deciding how to evaluate this kind of challenge, the Court faces two options: Either look only to the history and tradition of the condition, or look to trademark law and settled First Amendment precedent. The first option, which asks whether the history of a particular trademark registration bar plays well with the First Amendment, leads this Court into uncharted territory that neither party requests. The other guides it through well-trodden terrain. I would follow the well-trodden path.

[59] In assessing the constitutionality of the names clause and other trademark registration provisions, I would rely on this Court's tried-and-tested First Amendment precedent. This Court has held in a variety of contexts that withholding benefits for contentbased, viewpoint-neutral reasons does not violate the Free Speech Clause when the applied criteria are reasonable and the scheme is necessarily content based. That is the situation here. Content discrimination is an inescapable feature of the trademark system, and federal trademark registration only confers additional benefits on trademark holders. The denial of trademark registration is therefore consistent with the First Amendment if it turns on "reasonable, viewpoint-neutral content regulations." Iancu v. Brunetti, 588 U. S. 388, 424 (2019) (Sotomayor, J., concurring in part and dissenting in part). Because the names clause satisfies that test, I would uphold the constitutionality of the provision on that ground alone.

[60] This case is the latest in a trilogy of challenges to the constitutionality of trademark registration bars in the Lanham Act. See id., at 390 (2017). In the first two cases, the Court struck down as unconstitutional certain registration bars that discriminated based on viewpoint. Ante, at 4-5 (majority opinion) (citing Brunetti, 588 U. S., at 390, 393-394; Tam, 582 U. S., at 243 (plurality opinion); id., at 248-249 (Kennedy, J., concurring in part and concurring in judgment). Because those cases involved viewpoint-based provisions, there was no occasion to consider the framework for "how to evaluate viewpoint-neutral restrictions on trademark registration." Brunetti, 588 U. S., at 398, n. This case, by contrast, presents that very circumstance-a viewpoint-neutral, content-based condition on trademark registration.

[61] The names clause prohibits registration of a mark that "[c]onsists of or comprises a name . . . identifying a particular living individual except by his written consent." 15 U. S. C. §1052(c). No one disputes that the names clause is content based. Its application turns, after all, on the mark's content, i.e., whether it identifies by name a particular living individual without his or her written consent. See City of Austin v. Reagan Nat. Advertising of Austin, LLC, 596 U. S. 61, 69 (2022) (explaining that a regulation is content based if its application turns on "'the topic discussed or the idea or message expressed'"). The names clause is also viewpoint neutral because it is agnostic as to how the name in the mark is being used and does not "distinguis[h] between two opposed sets of ideas." Brunetti, 588 U. S., at 394; see ante, at 5 and n. 2 (majority opinion) (holding that the clause is viewpoint neutral both on its face and in practice). On these points, and on the conclusion that the names clause is constitutional, we all agree. Our disagreement boils down primarily to methodology.

[62] Those familiar with this trilogy of First Amendment challenges to the Lanham Act may be surprised, perhaps even disappointed, to learn that, although this case presents the "situation we did not address in Tam or Brunetti," the Court has shied away from setting forth a "framework 'for deciding free speech challenges to provisions of the Lanham Act.'" Ante, at 6 (majority opinion) (quoting Tam, 582 U. S., at 245, n. 17 (plurality opinion)). Yet perhaps the biggest surprise (and disappointment) of today's five-Justice majority opinion is its reliance on history and tradition as a dispositive test to resolve this case.

[63] In holding that the names clause is constitutional, that majority asserts that one need look only to the "history and tradition" of the clause and "no further." Ante, at 12. Why look to history and tradition alone? Because, the majority says, it "is sufficient to conclude that the names clause . . . is compatible with the First Amendment." Ibid. Considering this Court has never applied this kind of history-and-tradition test to a free-speech challenge, and that "[n]o one briefed, argued, or even hinted at the rule that the Court announces today," one would have expected a more satisfactory explanation. Lozman v. Riviera Beach, 585 U. S. 87, 102 (2018) (Thomas, J., dissenting). There is none grounded in our First Amendment doctrine and precedent.

[64] Justice Barrett questions the majority's because-it-is-sufficient explanation in part by claiming that, if anything, the Court's evidence "does not establish a historical analogue for the names clause." Ante, at 1 (opinion concurring in part). That may well be true. Yet this back-and-forth highlights the indeterminacy of the Court's history-and-tradition inquiry, which one might aptly describe as the equivalent of entering a crowded cocktail party and looking over everyone's heads to find your friends. Cf. Conroy v. Aniskoff, 507 U. S. 511, 519 (1993) (Scalia, J., concurring in judgment). To make matters worse, the five-Justice majority that undertakes this tradition-as-dispositive inquiry found its friends in a crowded party to which it was not invited. That majority has drawn conclusive inferences from its historical evidence, all without any guidance from the litigants or the court below. That stark departure from settled principles of party presentation and adversarial testing in favor of in-chambers historical research by nonhistorians raises more questions than answers. Cf. Maslenjak v.

United States, 582 U. S. 335, 354 (2017) (Gorsuch, J., joined by Thomas, J., concurring in part and concurring in judgment) ("[T]he crucible of adversarial testing on which we usually depend, along with the experience of our thoughtful colleagues on the district and circuit benches, could yield insights (or reveal pitfalls) we cannot muster guided only by our own lights").

[65] It is not appropriate, much less necessary, to find common-law analogues to settle the constitutionality of the names clause or any other trademark registration provision. I agree with Justice Barrett that, even if the majority's historical "evidence were rock solid," there is no good reason to believe that "hunting for historical forebears on a restriction-byrestriction basis is the right way to analyze the constitutional question." Ante, at 1, 13. The majority attempts to reassure litigants and the lower courts that a "history-focused approac[h]" here is sensible and workable, by citing to New York State Rifle & Pistol Assn., Inc. v. Bruen, 597 U.S. 1 (2022). Ante, at 19, n. 4. To say that such reassurance is not comforting would be an understatement. One need only read a handful of lower court decisions applying Bruen to appreciate the confusion this Court has caused. Cf. Brief for Second Amendment Law Scholars as Amici Curiae in United States v. Rahimi, O. T. 2023, No. 22-915, pp. 4

-6 (discussing examples of confusion among lower courts applying Bruen).

[66] Ultimately, I am reluctant to go further down this precipice of looking for questionable historical analogues to resolve the constitutionality of Congress's legislation. To borrow Justice Scalia's criticism from a different context, such hunting "far into the dimmy past" is not just "a waste of research time and ink" but also "a false and disruptive lesson in the law . . . that . . . condemns litigants (who, unlike us, must pay for it out of their own pockets) to subsidizing historical research by lawyers." Conroy, 507 U. S., at 519 (opinion concurring in judgment). I would instead apply this Court's First Amendment precedent, just as the parties did in arguing this case.

[67] The most straightforward way to resolve this and other free-speech challenges to trademark registration criteria is through a doctrinal framework drawn from this Court's First Amendment precedent. The analysis should proceed in two steps. First ask whether the challenged provision targets particular views taken by speakers on a given subject. If the trademark registration bar is viewpoint based, it is presumptively unconstitutional and heightened scrutiny applies; if it is viewpoint neutral, however, the trademark registration bar need only be reasonable in light of the purpose of the trademark system. Specifically, the trademark registration bar must reasonably serve its purpose of identifying and distinguishing goods for the public. If the challenged provision is both viewpoint neutral and reasonable, then it does not violate the Free Speech Clause.

[68] This Court has applied strict constitutional scrutiny to viewpoint-neutral content classifications on some occasions, and thus treated them as "presumptively unconstitutional." Reed v. Town of Gilbert, 576 U. S. 155, 163 (2015). It has declined to do so, however, when any "risk" that such classification "will impermissibly interfere with the marketplace of ideas" is "attenuated"; that is, when "'there is no realistic possibility that official suppression of ideas is afoot.'" Davenport v. Washington Ed. Assn., 551 U. S. 177, 188-189 (2007) (quoting R. A. V. v. St. Paul, 505 U. S. 377, 390 (1992)). In those cases, "the difference between viewpoint-based and viewpoint-neutral content discrimination can be decisive." Brunetti, 588 U. S., at 421 (opinion of Sotomayor, J.). This is such a case: Whereas the denial of trademark registration under viewpoint-and content-based criteria is presumptively unconstitutional under heightened scrutiny, a denial under viewpoint-neutral, content-based criteria is not constitutionally suspect and does not trigger the same exacting scrutiny. See ante, at 3-12 (majority opinion).

[69] In explaining why the difference is decisive in this context, the Court and Justice Barrett emphasize that trademarks are inherently content based, yet have long coexisted with the First Amendment. Ante, at 6-11 (majority opinion); ante, at 2-7 (opinion of Barrett, J.). I agree with the use of historical evidence to support this point. History informs the understanding that content-based distinctions are an intrinsic feature of trademarks, and that the marks' purpose is to identify and distinguish goods for the public. See ante, at 2-6 (opinion of Barrett, J.). That use of history is legitimate and in fact valuable, just as evidence of a longstanding practice of government can inform the meaning of constitutional provisions in appropriate cases. See ante, at 13-15 (opinion of Barrett, J.); cf. Consumer Financial Protection Bureau v. Community Financial Services Assn. of America, Ltd., 601 U. S. 416, 442 (2024) (Kagan, J., concurring); The Pocket Veto Case, 279 U. S. 655, 689 (1929). That is not how the five-Justice majority is using history, however. The majority instead treats a disputed (and isolated) account of the history and tradition of the names clause as determinative of its constitutionality. Cf. ante, at 12-20 (applying new history-and-tradition test). It is that "judgemade test" that is unmoored from constitutional text and precedent, and which I repudiate as unhelpful. Ante, at 14 (opinion of Barrett, J.).

[70] Even then, history does not give us the full story. The assertion that content-based distinctions in trademark law have long played well with the First Amendment, although true, requires a more fulsome explanation, particularly as applied to the trademark registration system. The primary reason why viewpoint-neutral trademark registration criteria easily coexist with the Free Speech Clause is that they do not burden expression. Instead, a denial of registration withholds ancillary benefits that might bolster someone's expression. When a government confers a benefit that supports some forms of expressive activity, the decision to withhold that benefit on viewpoint-neutral grounds "'cannot be equated with the imposition of a "penalty" on that activity,'" which would trigger heightened scrutiny. Rust v. Sullivan, 500 U. S. 173, 193 (1991)

[71] "The First Amendment protects the freedom of speech; it does not require the Government to give aid and comfort to those using" particular "modes of expression." Brunetti, 588 U. S., at 401 (Roberts, C. J., concurring in part and dissenting in part). Indeed, this Court has recognized repeatedly that the First Amendment permits governmental bodies to rely on reasonable, viewpoint-neutral, content-based criteria when deciding to benefit certain communicative activities. See, e.g., National Endowment for Arts v. Finley, 524 U. S. 569, 587-588 (1998) ("[T]he Government may allocate competitive funding according to criteria that would be impermissible were direct regulation of speech or a criminal penalty at stake"). . . . .

[72] Someone with a federally registered mark enjoys certain benefits by virtue of that registration. Even so, free speech is not abridged when these benefits are denied to someone based on reasonable, viewpoint-neutral criteria.

[73] Consider three basic tenets of trademark law, each of which the Court rightly acknowledges. See ante, at 1-2. First, "every trademark's 'primary' function" is to tell the public who is responsible for a particular product, that is, to serve as a source identifier. Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U. S. 140, 146 (2023). Although trademarks may also communicate a "message," that message is only incidental to "what a trademark is and does." Id., at 145-146. Second, "federal law does not create trademarks." B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U. S. 138, 142 (2015). Rather, by virtue of common law, the first person to use a "distinct mark in commerce . . . acquires rights to that mark," including exclusivity rights to "preven[t] others from using the mark." Ibid. Third, federal registration provides increased trademark protection only by conferring additional benefits on trademark holders. See ibid. For example, it (1) provides "nationwide constructive notice of the registrant's claim of ownership of the mark," which forecloses some defenses in infringement actions; and (2) constitutes "prima facie evidence" of the mark's validity and exclusivity in commerce. Ante, at 2 (citing 15 U. S. C. § §1072, 1115(a)). To be sure, nothing in the Constitution requires these predominantly commercial benefits.

[74] One conclusion follows from these three principles: By prohibiting trademark registration for viewpoint-neutral, content-based reasons, Congress simply denies an applicant the opportunity to include his mark on a list and secure "certain benefits" that are "useful in infringement litigation." Jack Daniel's, 599 U. S., at 146. The risk of speech suppression is therefore "attenuated" because denying a trademark holder these ancillary benefits does not prevent him from using his mark in commerce or communicating any message incidental to the mark. Davenport, 551 U. S., at 188; see Brunetti, 588 U. S., at 421-422 (opinion of Sotomayor, J.); id., at 401 (opinion of Roberts, C. J.) ("Whether . . . marks can be registered does not affect the extent to which their owners may use them in commerce to identify goods. No speech is being restricted; no one is being punished. The owners of such marks are merely denied certain additional benefits associated with federal trademark registration").

[75] Now consider the facts of this case. Respondent Steve Elster wants to sell shirts with the phrase TRUMP TOO SMALL on them. He also wants increased trademark protection by federally registering the phrase. In the registration request, Elster explained that the phrase "invokes a memorable exchange between President Trump and Senator Marco Rubio from a 2016 presidential primary debate, and aims to 'convey[ ] that some features of President Trump and his policies are diminutive.'" In re Elster, 26 F. 4th 1328, 1330 (CA Fed. 2022) (alteration in original).

[76] When the U. S. Patent and Trademark Office rejected the registration request, it denied Elster the opportunity to secure the Government-bestowed benefits associated with registration. Critically, the denial did not prevent Elster from communicating his message. It also did not restrict his preferred mode of expression. Elster can still sell shirts displaying the same message. Elster could also use a different phrase (such as ELSTER APPAREL) as a source identifier to obtain the desired benefits of registration while continuing to sell shirts with his preferred message across the front. See Tr. of Oral Arg. 23-24 (discussing "Elster Apparel" example). Put simply, the denial only barred Elster from registering a mark asserting exclusive rights in another person's name without their written consent.

[77] Because trademark registration criteria limit statutory benefits in a necessarily content-based scheme, the First Amendment requires the criteria to be viewpoint neutral and reasonable. Supra, at 5-9; Brunetti, 588 U. S., at 424 (opinion of Sotomayor, J.). From this Court's analogous nonpublic-forum and limited-public-forum cases, it is clear that "reasonable" means that the challenged provision must reasonably serve the purpose of the content-based scheme. On this point, I agree with Justice Barrett that the challenged trademark registration criteria must be "reasonable in light of the trademark system's purpose of facilitating source identification." Ante, at 2; see ante, at 7-9.

[78] In Cornelius, for example, the Court confronted a free-speech challenge to the Government's decision to exclude "legal defense and political advocacy organizations from participation in the Combined Federal Campaign (CFC or Campaign), a charity drive aimed at federal employees." 473 U. S., at 790. After concluding that the CFC was a nonpublic forum "not dedicated to general debate or the free exchange of ideas," the Court held that the First Amendment permits content-and speaker-based "distinctions" so long as they are "reasonable in light of the purpose served by the forum and are viewpoint neutral." Id., at 806, 811. Importantly, the "decision to restrict access . . . need not be the most reasonable or the only reasonable limitation." Id., at 808-809. Based on this test, the Court ultimately concluded that the Government acted reasonably, and consistent with the Free Speech Clause, in "limit[ing] participation in the CFC in order to minimize disruption to the federal workplace, to ensure the success of the fundraising effort, or to avoid the appearance of political favoritism without regard to the viewpoint of the excluded groups." Id., at 813.

[79] Justice Thomas (joined by two Justices) rejects this test, implying that it is subjective because it supposedly turns on what a given judge might think is reasonable. Ante, at 20. That statement misunderstands the inquiry. As just discussed, a trademark registration condition is reasonable if it serves as a source identifier, a concept that is familiar to anyone who has worked on a trademark case. See Jack Daniel's, 599 U. S., at 146; 1 J. McCarthy, Trademarks and Unfair Competition §3:1 (5th ed. 2023). More generally, this kind of reasonableness inquiry appears in every limited public (or nonpublic) forum case. Far from being subjective and unworkable, this kind of test goes to the very core of what judges and lawyers do every day. When contrasted to their preferred history-driven approach, the criticism of the reasonableness inquiry is even more unpersuasive. As discussed above, the history-andtradition approach is not just flawed as a matter of first principles, but also highly indeterminate and unfamiliar to judges and litigants in this area of the law. See supra, at 3-5. How much history is enough to clear the historical analogue bar the five-Justice majority set up? What does that look like in this context? When it comes to subjectivity, their preferred approach empowers judges to pick their friends in a crowded party. See supra, at 4. When faced with the two options, I choose the test that is rooted in this Court's First Amendment doctrine and precedent, is attuned to what judges and lawyers are properly trained to do, and does not limit Congress from dealing with modern-day conditions based on the foresight of yesterday's generation.

[80] "Content-based criteria for trademark registration do not abridge the right to free speech so long as they reasonably relate to the preservation of the markowner's goodwill and the prevention of consumer confusion," "goals" that a "particular restriction will serve . . . if it helps ensure that registered marks actually function as source identifiers." Ante, at 8 (opinion of Barrett, J.) The names clause easily passes this reasonableness test. Source identification is, after all, at the heart of what the names clause does.

[81] Imagine someone who wants to manufacture and sell the best bats and catchers' mitts in baseball. Unsurprisingly, that person wants to use the names of Derek Jeter and Jorge Posada to capitalize on their goodwill to promote the products. So, the manufacturer lands on JETER OUT OF THE PARK and CATCH LIKE POSADA as marks. The names clause bars registration of these phrases without the named individuals' written consent. It does so for good reason: Jeter and Posada may not want consumers to misattribute these products to them, just as consumers may not want to buy products under the false pretense that these goods somehow are connected to the players. 3 Source identification is especially important when, for example, the named individual produces similar products-say, Jeter and Posada sell their own baseball goods under the marks MR. NOVEMBER BATS BY JETER and CHAMP'S MITTS BY POSADA. They would not want manufacturers to dilute the commercial value of their name and reputation. Nor would Jeter and Posada want a Boston Red Sox fan 3 Other Lanham Act provisions prohibit the registration of marks that deceive or falsely suggest a connection to a person or entity. See 15 U. S. C. §1052(a). That there is some overlap between the false suggestion and names clauses does not change the fact that the names clause reasonably serves the purpose of source identification. When heightened scrutiny is not in play, Congress is free to use belts and suspenders to support an asserted interest. I therefore also agree with JUSTICE BARRETT that "Congress is entitled to make [the] categorical judgmen[t] . . . that, on the whole, protecting marks that include another living person's name without consent risks undermining the goals of trademark." Ante, at 9. to manufacture cheaper goods and use their names to promote second-rate products. The names clause prevents that from happening.

[82] Congress was entitled to make this legislative judgment. The Government, after all, "has a reasonable interest in refraining from lending its ancillary support to marks" that use an unconsenting individual's name for commercial gain. Brunetti, 588 U. S., at 425 (opinion of Sotomayor, J.); cf. id., at 401 (opinion of Roberts, C. J.) ("The Government, meanwhile, has an interest in not associating itself with trademarks whose content is obscene, vulgar, or profane"). In sum, the names clause is constitutional because it is a viewpoint-neutral, reasonable limitation on a trademark's registration.

[83] The Court's "decision today is narrow," and its history-and-tradition test is good only for "the relatively simple case before us today." Ante, at 20, 22. Ultimately, all nine Justices agree that Congress can innovate when it comes to trademark law, and we further agree that nothing in today's opinion calls into question the constitutionality of viewpointneutral provisions lacking a historical pedigree. See ibid.; ante, at 1 (Kavanaugh, J., concurring in part); ante, at 1-2 (opinion of Barrett, J.); supra, at 3-6.

[84] For the reasons set forth above, I respectfully concur in the judgment.

1. "Trademark rights are primarily a matter of state law." So wrote Justice Thomas early on in his Elster opinion. Does this strike you as an accurate description of the U.S. trademark system? 2. Marijuana marks. To qualify for federal registration, a mark must be used in commerce for goods or services that are legal under federal law. For this reason, the TTAB has affirmed the refusal of registration of the mark HERBAL ACCESS for "retail store services featuring herbs" when such services consisted of the sale of marijuana in Washington state, under whose law such sales are legal.

C. Use in Commerce as a Prerequisite for Trademark Rights

As stated at the beginning of this Part, a trademark must be used in commerce to qualify for protection. See Lucent Info. Mgmt. v. Lucent Techs., Inc., 186 F.3d 311, 319 (3d Cir. 1999) ("It is axiomatic that if there is 'no trade -no trademark.'" (quoting La Société Anonyme des Parfums le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1274 (2d Cir. 1974)). In this subsection, we consider the nature of this "use in commerce" requirement.

To avoid ambiguity, it may be useful to recognize from the start the several different aspects of the concept of "use in commerce" in U.S. trademark law, only one of which we will focus on in this subsection. • "Use in commerce" for purposes of establishing trademark rights. This is the focus of this subsection.

• "Use in commerce" for purposes of determining whether a trademark owner has abandoned its rights. If a trademark owner ceases to use its trademark in commerce without an intent to resume use, it may be deemed to have "abandoned" its mark. See Lanham Act § 45, 15 U.S.C. § 1127 (defining when a mark shall be deemed "abandoned"). We will address the doctrine of trademark abandonment in Part III.D below.

• "Commercial use" of a mark for purposes of determining whether a defendant has made an infringing "actionable use" of the plaintiff's mark. Lanham Act § § 32, 43(a), and 43(c) appear to require that for a defendant's conduct to be infringing, the defendant must be using the mark "in connection with the sale, distribution, or advertising of any goods or services." Lanham Act § 32(1)(a), 15 U.S.C. § 1114(1)(a). Defendants engaged in non-profit, expressive uses of marks (such as internet gripe sites that do not sell any goods) have argued that their conduct does not constitute "commercial use" and is thus not infringing. We will address this issue in Part II.A.1 below.

• "Use in commerce," also known as "use as a mark," for purposes of determining whether a defendant has made an infringing "actionable use" of the plaintiff's mark. In several high-profile internet-related cases in the early years of the century, defendants argued that they could be liable for infringement only if they were making a "use in commerce" of the plaintiff's mark as that term is defined under Lanham Act § 45. This came to be known as the "use as a mark" requirement for liability. We will address the case law on this issue in Part II.A.2 below.

The student is strongly advised to distinguish between these various aspects of "use in commerce" as we proceed, particularly the difference between (a) "use in commerce" by the plaintiff for purposes of establishing the plaintiff's trademark rights and (b) "use in commerce" or "commercial use" by the defendant for purposes of establishing the defendant's trademark infringement.

With respect to the plaintiff's use in commerce for purposes of establishing trademark rights, a further distinction should be drawn from the start. Though the two areas of law are closely related, there are nevertheless important differences between (1) the extent of "use in commerce" that a mark owner must make for the mark to qualify for federal registration, and (2) the extent of "use in commerce" that a mark owner must make of a mark to establish unregistered, "common law" priority over subsequent users of the same mark. In general, the quantum of use necessary for registration is a stricter requirement than that necessary for purposes of establishing unregistered common law priority. See MCCARTHY § 16:12-16:14.

In Part I.C.1, we address the use-in-commerce requirement for federal registration. As you will see, Aycock Engineering, Inc. v. Airflite, Inc., 560 F.3d 1350 (Fed. Cir. 2009), and Couture v. Playdom, Inc., 778 F.3d 1379 (Fed. Cir. 2015), make clear that the owner of a mark must complete the sale of goods or services bearing the mark to customers for the mark to qualify for federal registration. 13 Mere advertising or other promotional conduct without actual sales will not support federal registration. By contrast, in Part I.C.2, Cosmic Crusaders LLC v. Andrusiek, No. 2023-1150, 2023WL 6889054 (Fed. Cir. Oct. 19, 2023), shows that for purposes of establishing unregistered, common law priority in a mark, advertising and other promotional conduct prior to actual sales may be sufficient to support a priority claim.

In reading through these two subsections, consider whether the distinction between use for purposes of registration and use for purposes of common law priority makes sense as a matter of sound policy.

Use in Commerce as a Prerequisite for Federal Trademark Registration

The term "use in commerce" means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce-(1) on goods when-(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce, and

(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more 13 There is a minor exception to the general rule that a trademark owner must make use in commerce of its mark in order for the mark to qualify for federal registration. As discussed more fully in Part I.D below, Lanham Act § 44(e), 15 U.S.C. § 1126(e), provides that foreign applicants applying under a § 44 filing basis need not show actual use in commerce prior to obtaining registration. See MCCARTHY § 29:14. O'GRADY, District Judge: [1] In 1970, Respondent-Appellant Aycock Engineering, Inc. ("Aycock Engineering") applied for a service mark, which was registered at the United States Patent and Trademark Office ("USPTO") in 1974 after examination. In 2007, however, the USPTO Trademark Trial and Appeal Board ("TTAB") declared the registration void because it failed to meet the "use in commerce" element of the Lanham Act. Aycock Engineering now appeals the TTAB's ruling. The question presented herein is whether the use in commerce requirement is met when an applicant uses a service mark in the preparatory stages of a service's development, but never offers the service to the public. We hold that it is not. I. BACKGROUND [2] In the late 1940s, William Aycock conceived of and began work on a service involving chartering flights in the air taxi industry. At that time, the common practice for air taxi companies was to lease entire airplanes, not individual seats. Consequently, individual passengers not belonging to a larger party faced more difficulty and expense in chartering a flight. Mr. Aycock intended, through his service, to allow solo passengers to arrange flights on chartered aircraft for less cost.

[3] Mr. Aycock did not plan on operating the chartered air taxi services himself. Instead, his goal was to develop a system where he would serve his customers by acting as the middleman, or "communication link," between the customer and one of the air taxi service operators he contracted with to provide flights on an individual seat basis. Mr. Aycock planned to advertise his service, which he called the AIRFLITE service, to the public and to have those interested in using the service call a toll-free phone number to schedule reservations. After learning of customers' travel plans, Mr. Aycock would then arrange for the air taxi service to fly his customers with similar travel plans to their destinations. Mr. Aycock believed that in order for his service to become operational, he needed at least 300 air taxi operators in the United States to agree to participate in his air-taxi-operator network. 2 [4] In the years after conceiving of the idea for his service, Mr. Aycock worked toward offering the service to the public. In the mid-1960s, he formed Aycock Engineering-the corporate entity under which his service would operate. He also sought and obtained two toll-free telephone numbers that the public could use to make reservations. In March of 1970, Mr. Aycock invited virtually all air taxi operators certified by the Federal Aviation Administration ("FAA") to join his operation by, inter alia, distributing flyers with in-depth information about his AIRFLITE service. He eventually entered into contracts with some of those air taxi service operators. 3 Under these contracts, air taxi operators agreed to participate in the AIRFLITE service and even paid modest initiation fees to Mr. Aycock. Furthermore, Mr. Aycock filed a service mark application on August 10, 1970 for the term AIRFLITE.

[5] Despite his efforts, Mr. Aycock's operation never got off the ground. While he estimated that he needed at least 300 air service operators under contract to make his service operational, Mr. Aycock never had more than twelve (4% of his minimum goal) under contract at any time throughout his company's history. And while Mr. Aycock advertised to air taxi operators, he never marketed the AIRFLITE service to the general public. More specifically, the record does not suggest that Mr. Aycock ever gave the public an opportunity to use the toll-free phone numbers to book reservations, or that he ever spoke with a member of the general public about making a reservation. Finally, and most notably, Mr. Aycock never arranged for a single passenger to fly on a chartered flight. 4 [6] Mr. Aycock's AIRFLITE mark, which he applied for on August 10, 1970, was registered by the USPTO on April 30, 1974 on the Supplemental Register * after a prosecution that involved considerable negotiation between Mr. Aycock and the trademark examining 2 Mr. Aycock stated in his deposition, "We start this when 300 air taxi operators in the United States have signed on to provide the transportation." J.A. 1942.

3 Some of the contracts originated in the 1970s, and some came as late as 2001. 4 When asked at his deposition whether he had ever arranged for an individual to fly on an airplane, Mr. Aycock stated, "I had never made a-any arrangement . . . I had never had a talk with the customer then talked with the air taxi operator and reached any agreement on them carrying the customer." attorney . . . . The recitation of services for the AIRFLITE service mark eventually agreed upon by the USPTO and Mr. Aycock was "[a]rranging for individual reservations for flights on airplanes." Id. at 729. Mr. Aycock's application to renew his AIRFLITE service mark was granted by the USPTO on April 27, 1994.

[7] In 2001, Airflite, Inc., the Petitioner-Appellee, filed a petition for cancellation alleging, inter alia, that Aycock Engineering did not use its AIRFLITE mark prior to registration in connection with the services identified in its registration. In that proceeding, the TTAB agreed with Airflite, Inc. and cancelled the AIRFLITE registration, finding that Mr. Aycock failed to render the service described in its registration in commerce. Airflite, Inc. v. Aycock Eng'g, Inc., Cancellation 92032520, 2007 WL 2972237, at *7 (TTAB Oct. 4, 2007) ("TTAB Decision ").

[8] Under § 45 of the Lanham Act, a service mark is any "word, name, symbol or device, or any combination thereof used by a person, or which a person has a bona fide intention to use in commerce . . . to identify and distinguish the services of one person . . . from the services of others." 15 U.S.C. § 1127 (2006). The definition of "service mark" is virtually identical to the definition of "trademark." But while service marks apply to intangible services, trademarks are used to distinguish tangible goods. See Chance v. Pac-Tel Teletrac Inc., 242 F.3d 1151, 1156 (9th Cir. 2001).

[9] "It is clear from the wording of the Lanham Act that applications for service mark registrations are subject to the same statutory criteria as are trademarks." 3 J. [10] Despite the seeming harmony and simplicity in the application of the use requirement to trademarks and service marks, opportunity exists for confusion in this area of the law. Different statutory requirements apply to applications filed before November 16, 1989, as compared to those filed after. This is because in 1988, Congress passed the Trademark Law Revision Act ("TLRA"). The TLRA altered the burden that applicants must meet before satisfying the use element by requiring an applicant to make a "bona fide use of [11] This "bona fide use" language was intended to eliminate "token uses," which occurred when applicants used marks in conjunction with selling goods or offering services for the sole purpose of obtaining registration, and with no intention of legitimately using the mark in commerce until a later date. See Blue Bell, Inc. v. Jaymar-Ruby, Inc., 497 F.2d 433, 437 (2d Cir. 1974). Before 1989, a "token use" was sufficient to satisfy the use requirement and qualify a mark for registration. See Id.

[12] In addition to eliminating token uses, the 1988 TLRA made other changes to the use requirement. Before 1989, an applicant only qualified for registration if he was using his mark in commerce at the time he filed his application at the USPTO. WarnerVision Entm't Inc. v. Empire of Carolina, Inc., 101 F.3d 259, 260 (2d Cir. 1996). But after 1989, an applicant could begin the registration process even when his mark was not in use in commerce at the time of the filing, so long as he had a "bona fide intention to use the mark in commerce" at a later date. 15 U.S.C. § 1051(b) (2006). Applicants filing these "intent to use" applications are only granted registration, however, if they file a verified statement of commercial use proving eventual use of the mark in commerce. Id. § 1051(d).

[13] Because the mark at issue here is a service mark, the use requirement relating to service mark applications, as opposed to trademark applications, guides our analysis. Furthermore, the application at issue in this case was filed in 1970. Therefore, this case must be decided according to the service mark use requirement that appeared in the Lanham Act in 1970 (i.e., the pre-1989 version). See 3 McCarthy § 19:112. However, for the reasons stated below, our holding in this case also applies to the current (and post-1989) service mark use requirement.

[14] With the exception of the 1988 TLRA statutory language eliminating token uses and permitting intent-to-use applications, the service mark use requirement as it appeared in 1970 is materially identical to the post-1989 version. The use provision of the Lanham Act in force in 1970 stated that a service mark was in use in commerce "when it is used or displayed in the sale or advertising of services, and the services are rendered in commerce, or the services are rendered in more than one State or in this and a foreign country and the person rendering the services is engaged in commerce in connection therewith." Pub.L. No. 87-772, 76 Stat. 769 (1962). Therefore, like the current use requirement, a service mark applicant seeking to meet the pre-1989 version had to (1) use the mark in the sale or advertising of a service and (2) show that the service was either rendered in interstate commerce or rendered in more than one state or in this and a foreign country by a person engaged in commerce.

[15] Courts, as well as the TTAB, have interpreted the pre-1989 statutory language in analogous cases. Without question, advertising or publicizing a service that the applicant intends to perform in the future will not support registration. (TTAB 1982). Instead, the advertising or publicizing must relate to "an existing service which has already been offered to the public." Greyhound, 214 USPQ at 474. Furthermore, "[m]ere adoption (selection) of a mark accompanied by preparations to begin its use are insufficient . . . for claiming ownership of and applying to register the mark." Intermed, 197 USPQ at 507; see Blue Bell, 497 F.2d at 437. "At the very least," in order for an applicant to meet the use requirement, "there must be an open and notorious public offering of the services to those for whom the services are intended." Intermed, 197 USPQ at 507.

[16] In Intermed, the TTAB rejected a service mark application for failing to meet the use in commerce requirement even where the applicant had performed many pre-application service-oriented activities involving the public. Id. at 508-09. The applicant in that case sought to register a mark intended to identify an international medical services operation. Id. at 502. The applicant's plan was to build the international service from an already operating United States-based medical service. Id. at 503. The applicant intended to, and did use the United States-based operation as a fundraising affiliate of the new international operation. Id. at 504. Additionally, the applicant communicated with and solicited the support of the Iranian government regarding the service before the application was filed. Id. The applicant also issued a detailed announcement using the service mark term before the filing date designed to inform and update individuals about the service's status. Id. Finally, and also before the date of application, the applicant hired a fundraising firm to raise money for the service. Id. at 508.

[17] Despite these activities, the TTAB held that the applicant failed to meet the use requirement because the services described in the application were not "offered, promoted, advertised or rendered . . . in commerce." Intermed, 197 USPQ at 504. The TTAB stated that "[t]he statute requires not only the display of the mark in the sale or advertising of services but also the rendition of those services in order to constitute use of the service mark in commerce." Id. At 507-08. The TTAB further explained that adopting a mark accompanied by mere "preparations to begin its use" is insufficient for service mark registration, and that in order for the use requirement to be met, there must be "an open and notorious public offering of the services to those for whom the services are intended." Id. at 507.

[18] In 1983, the TTAB again rejected a service mark application because it failed to meet the use requirement. Cedar Point, 220 USPQ at 533. In Cedar Point, the Cedar Point amusement park, which had been in business for decades, was preparing to open a new water park addition in mid-May of 1980. Id. at 535. One preparatory step taken by Cedar Point before opening day was the filing of a service mark application to register the mark "OCEANA" for its new water park service. Id. Cedar Point also distributed nearly 700,000 water park advertisement brochures containing the OCEANA mark during the months preceding the grand opening. Id.

[19] The TTAB emphasized the fact that Cedar Point filed its service mark application with the USPTO before it opened the water park's doors and offered those services to the public. Id. at 535-36. The TTAB then explained that the use of a mark in connection with the advertising of services intended to be "available at some time in the future, but not yet available at the time of filing" does not qualify the mark for registration. Id. at 535. Therefore, Cedar Point's water park advertising campaign, which was ongoing at the time the application was filed, was insufficient on its own to support registration. Id. As a result, the TTAB held that the "applicant's mark 'OCEANA' was not in 'use in commerce' . . . at the time of the filing of [the] application" and that the application was thus void ab initio. Id. at 537.

[20] Interestingly, Cedar Point filed for its service mark roughly one month before the scheduled opening of the new water park. Id. at 535. With the application date being so close to the opening date, it is indisputable that Cedar Point had taken numerous steps toward constructing the water park by the time the application was filed. Nevertheless, the TTAB found none of these preparatory steps sufficient to satisfy the use in commerce requirement. . . . .

[21] We find the reasoning of these cases persuasive. The language of the statute, by requiring that the mark be "used or displayed in the sale or advertising of services, and the services are rendered in commerce," makes plain that advertisement and actual use of the mark in commerce are required; mere preparations to use that mark sometime in the future will not do. Thus, we hold that an applicant's preparations to use a mark in commerce are insufficient to constitute use in commerce. Rather, the mark must be actually used in conjunction with the services described in the application for the mark. F. Analysis . . . .

[22] {Aycock's} activities, even taken together, do not constitute a service that falls within the scope of our definition of the recitation of services. As mentioned earlier, it is our view that the service described in Mr. Aycock's service mark application covers only the arranging of flights between an air taxi operator and a passenger, and not preparatory efforts to arrange a network of air taxi operators. The activities described above, however, were merely preparatory steps that Mr. Aycock took toward his goal of one day, as he described, operating a "communication service between persons desiring to charter aircraft" that "put[ ] individuals desiring air transportation in contact with people rendering that service." J.A. 736, 749. [23] In order for Mr. Aycock to satisfy the use requirement, more was required. Mr. Aycock had to develop his company to the point where he made an open and notorious public offering of his AIRFLITE service to intended customers. See Intermed, 197 USPQ at 507. However, at no point in time did Mr. Aycock give a potential customer the chance to use his AIRFLITE service. He never arranged for a single flight between a customer and an air taxi operator. This is because Mr. Aycock, as stated in his deposition, believed he needed at least 300 air taxi operators under contract before his service could become operational. Reasonably, because he never had more than twelve air taxi operators under contract at any one time, Mr. Aycock chose not to open his doors to the public. {The court affirmed the TTAB's cancellation of Aycock's mark. Judge Newman dissented on the ground that, notwithstanding the description of services listed in the registration that was finally agreed to by Aycock, "it is inappropriate now to construe the registration so as to exclude the actual use of the mark as was explained in the examination, shown in the specimens, and fully explored in the public record of the prosecution." Aycock Eng'g, 560 F.3d at 1365 (Newman, J., dissenting).}

1. Use of a mark "merely to reserve a right in a mark." In Social Technologies LLC v. Apple Inc., 4 F.4th 811 (9th Cir. 2021), Social Technologies filed an intent-to-use application in April, 2016 for the mark MEMOJI in connection with a mobile phone application, but it had not yet launched the application and thus had not yet made actual use of the mark in commerce. Apple then announced that it was adopting the mark also for a mobile phone application. Social Technologies then had one job. All it needed to do was launch its application as planned and thus make a legitimate use of its mark in commerce, which, as we will discuss further in sections I.D and I.E below, would complete the registration process and enable it to claim its intent to use application date as its priority date. But in the process of preparing to make actual use of the mark, Social Technologies' co-founder and president wrote a series of disastrous emails to his employees. The Ninth Circuit cited these emails to conclude that Social Technologies had ultimately launched its product merely to reserve a right in the MEMOJI mark and hold Apple hostage. For example, the co-founder made clear that they should now design the app purely to support the trademark application. He insisted to his engineers that "the editing feature [was] vital" to "satisfy the 'editing' requirement of the trademark." Id. at 815 (emphasis in original). As the Ninth Circuit noted, he also emailed his employees: "We are lining up all of our information, in preparation for a nice lawsuit against Apple, Inc! We are looking REALLY good. Get your Lamborghini picked out!" Id. (emphasis in original). The Ninth Circuit affirmed summary judgment in favor of Apple on the ground that Social Technologies failed to satisfy the Lanham Act § 45 requirement that its use be a "bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. DYK, Circuit Judge:

[1] David Couture ("appellant") appeals from a decision of the Trademark Trial and Appeal Board (the "Board") granting a petition by Playdom, Inc. ("appellee") to cancel appellant's PLAYDOM service mark. We affirm.

[2] On May 30, 2008, appellant filed an application to register the service mark PLAYDOM pursuant to Lanham Act § 1(a), 15 U.S.C. § 1051(a). As a specimen showing use of the mark, appellant submitted a "[s]creen capture of [a] website offering Entertainment Services in commerce." Also on May 30, 2008, appellant had created the website, which was hosted at www.playdominc.com. As of May 30, 2008, the website included only a single page, which stated: "[w]elcome to PlaydomInc.com. We are proud to offer writing and production services for motion picture film, television, and new media. Please feel free to contact us if you are interested:playdominc@gmail.com." The webpage included the notice: "Website Under Construction." No services under the mark were provided until 2010, well after the application was filed. The PLAYDOM mark was registered by the United States Patent and Trademark Office ("PTO") on January 13, 2009, as registration no. 3,560,701.

[3] On February 9, 2009, appellee filed an application to register the identical mark-PLAYDOM. Appellant's registered mark was cited by the examining attorney as a ground for rejecting appellee's application under Lanham Act § 2(d), 15 U.S.C. § 1052(d). On June 15, 2009, appellee filed a petition to cancel the registration of appellant's mark, arguing, inter alia, that appellant's registration was void ab initio because appellant had not used the mark in commerce as of the date of the application. On February 3, 2014, the Board granted the cancellation petition, stating that appellant "had not rendered his services as of the filing date of his application" because he had "merely posted a website advertising his readiness, willingness and ability to render said services," and the registration was therefore void ab initio. DISCUSSION . . . . I . . . . [4] We have not previously had occasion to directly address whether the offering of a service, without the actual provision of a service, is sufficient to constitute use in commerce under Lanham Act § 45, 15 U.S.C. § 1127. In Aycock, we stated that, "[a]t the very least, in order for an applicant to meet the use requirement, there must be an open and notorious public offering of the services to those for whom the services are intended." 560 F.3d at 1358 (internal quotation marks and citation omitted). The applicant in Aycock had not made such an "open and notorious public offering of his . . . service to intended customers," and the registration was therefore void ab initio. Id. at 1361-62 (citation omitted). But we did not suggest in Aycock that an open and notorious public offering alone is sufficient to establish use in commerce. And appellant does not point to any decision by the Board which found mere offering of a service to be sufficient. [5] On its face, the statute is clear that a mark for services is used in commerce only when both [1] "it is used or displayed in the sale or advertising of services and [2] the services are rendered . . . ." 15 U.S.C. § 1127 (emphasis added). This statutory language reflects the nature of trademark rights:

There is no such thing as property in a trademark except as a right appurtenant to an established business or trade in connection with which the mark is employed . . . . [T]he right to a particular mark grows out of its use, not its mere adoption . . . . . . . .

[7] Here, there is no evidence in the record showing that appellant rendered services to any customer before 2010, and the cancellation of appellant's registration was appropriate.

[8] Appellant also argues that the Board erred in failing to allow him to amend the basis of the application to Lanham Act § 1(b), which provides for requesting registration where "[a] person . . . has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce . . . ." 15 U.S.C. § 1051(b)(1).

[9] 37 C.F.R. § 2.35(b) provides procedures for substitution of a basis in an application either before or after publication. 37 C.F.R. § 2.35(b)(1)- (2). But that provision contemplates substitution during the pendency of an application, not after registration. See TMEP § 806.03(j) (Jan. 2015) ("Any petition to change the basis must be filed before issuance of the registration."). Therefore, the Board did not err in not granting appellant's request to amend the basis of the application.

1. Amending the application to seek registration under section 1(b)'s intent to use provision. In In re Alessandra Suuberg, Serial No. 88234650, 2021 TTAB LEXIS 459 (TTAB 2021) [precedential], the Board, citing Couture, affirmed the examiner's refusal to register the mark where "the applicant's activities were preliminary and had not resulted in any use of the mark in commerce prior to the filing of the application." Id. at *8-9. In a footnote, the Board took pains to point out that "[t]he Examining Attorney suggested on two occasions that Applicant amend her application to seek registration under the intent-to-use provisions of Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). . . . Had Applicant done so, she would have had the chance to preserve her application and its filing date, and at a later date, if bona fide use of her mark had begun, make the necessary showing of use to obtain a registration. Id." Id. at *11 n. 13. In contrast, because Mr. Couture had already completed registration of the mark, he could not amend the basis of the registration.

Use in Commerce as a Prerequisite for Unregistered "Common Law" Priority

The following opinion is nonprecedential, meaning that it should not be cited as precedent to any court. It is included here because it presents a good, simple teaching case with memorable facts showing that a claimant's pre-sales activity may form the basis for that claimant's unregistered common law priority in a mark. Trademark law refers to such activity as "use analogous" to trademark use or "analogous use." See, e.g., American Express Co. v. Goetz, 515 F.3d 156, 161 (2d Cir. 2008) ("[T]he analogous use doctrine, where it applies, eases the technical requirements for trademarks and services marks in favor of a competing claimant who asserts priority on the basis of earlier analogous use of the mark."); id. at 161-62 ("At the very least analogous use must be use that is open and notorious. In other words, analogous use must be of such a nature and extent that the mark has become popularized in the public mind so that the relevant segment of the public identifies the marked goods with the mark's adopter." (citations and quotation marks omitted)).

An example of Andrusiek's use of the mark is shown on the left, Cosmic Crusaders' on the right. [2] Appellants argue that the Board procedurally erred by considering Andrusiek's allegedly unpled theory of priority (based on his own prior use of the same mark), and alternatively urge that substantial evidence does not support the Board's finding that Andrusiek had priority over Appellants. Because the Board did not abuse its discretion in construing Andrusiek's petition, and because substantial evidence supports the Board's findings regarding Andrusiek's prior use, we affirm. BACKGROUND [3] Both Andrusiek and Appellants "sell[ ] comic books under the mark CAPTAIN CANNABIS, which also serves as the name of a fictitious character." Decision, 2022 WL 4103636, at *5. On April 2, 2014, Appellants filed for and eventually received Registration No. 4,782,920 for the mark CAPTAIN CANNABIS on comic books in International Class 16. Id. at *1, *7.

[4] After learning of Appellants' registration, Andrusiek filed a petition for cancellation pursuant to 15 U.S.C. § 1052(d), citing his own prior use of the same mark reaching back into the 1970s and asserting that Appellants' later use was likely to confuse consumers. Id. at *1. Given that both parties used the same mark on the same goods, the parties agreed that "the only issue in dispute under Trademark Act Section 2(d) is priority." Id. If Andrusiek could prove that he had priority based on his earlier use of the trademark, Appellants' registration would be canceled. Id. Conversely, if Andrusiek failed to show he had priority, his petition for cancellation would be denied. Id. [5] As relevant to this appeal, Appellants relied on their April 2014 registration date to prove their priority date. Id. at *7. Because Andrusiek "does not own an existing registration," his amended petition instead detailed his prior use of the CAPTAIN CANNABIS mark, alleging priority based on his: common law usage of the CAPTAIN CANNABIS trademark in U.S. interstate trade since at least January 25, 1999 when [Andrusiek] engaged in sales activities at the NATPE trade fair in New Orleans, Louisiana and bona fide commercial trade in Comic Books starting September 25, 2006 by way of direct sale of a 420/Captain Cannabis comic book to a customer in the state of Florida.

Id. at *6. Andrusiek "also claimed priority based on his alleged 'sales and marketing activities through his CAPTAINCANNABIS.COM web portal since April 22, 1999.'" Id.

[6] On October 12, 2020, Andrusiek filed a trial brief detailing his theories of priority and evidence therefor. He expressly and repeatedly asserted that he "may prove priority by proving prior trademark (or analogous) use of the CAPTAIN CANNABIS mark in the United States." In response, Appellants' trial brief set forth positions on the merits and asked the Board to strike certain portions of Andrusiek's evidence as procedurally improper, but did not challenge Andrusiek's reliance on, or the evidence underlying, his analogous use theory.

[7] In its final decision, the Board first found that the petition's priority claim rested on two separate arguments: actual trademark use and use of the mark analogous to trademark use. Decision, 2022 WL 4103636, at *6. The Board alternatively found that the parties had tried the analogous use issue "by implied consent," citing Fed. R. Civ. P. 15(b). Id. at *6 n.6.

[8] As to analogous use, the Board recognized that Andrusiek had to prove not only analogous use, but also actual trademark use within a commercially reasonable time of the analogous uses. Id. at *8-12. Relying on Andrusiek's testimony and extensive corroborative documentation, the Board found Andrusiek engaged in analogous use of the mark from "2006 to the present, including during 2013-14," and engaged in "actual trademark use in 2017." Id. at *12. The Board also found Andrusiek's trademark use "to be within a commercially reasonable period of time following his analogous use in 2013-14 so as to create a 'continuing association of the mark' with Petitioner's goods." Id.

[9] The Board thus resolved the priority dispute in favor of Andrusiek. Id. at *12-13. Given Appellants' concession that there was a likelihood of confusion between Andrusiek's mark and Appellants' mark, the Board canceled Appellants' mark. Id.

[10] Appellants timely appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(B).

[11] "Decisions related to compliance with the Board's procedures are reviewed for an abuse of discretion." Intelligent Bio-Sys., Inc. v party petitioning for cancellation under section 2(d) must show that it had priority and that registration of the [new] mark creates a likelihood of confusion" with the petitioner's earlier mark. Id. at 1162. "To establish priority, the petitioner must show" certain "proprietary rights" in its mark. Id. Those rights may be demonstrated by "a prior registration, prior trademark or service mark use, [or] prior use as a trade name." Id.

[13] A party may also try to show that it acquired the relevant proprietary rights as a result of "prior use analogous to trademark or service mark use." Id. Analogous uses are those which "create an association in the minds of the purchasing public between the mark and the petitioner's goods," but which do not constitute "technical" or "actual" trademark uses. Id. "Examples of use analogous to trademark use . . . include prior use of a term: in advertising brochures; in catalogues and newspaper ads; on a sample displayed at a trade show; and in press releases and trade publications." 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 20:16 (5th ed.). These are not examples of "technical" or "actual" trademark uses because the mark is affixed to something other than the actual trade good-e.g., affixed to a press release promoting a comic book, rather than a comic book itself. Herbko, 308 F.3d at 1162. However, our precedent considers these uses sufficient to establish priority if they "create such an association" that it "must reasonably be expected to have a substantial impact on the purchasing public before a later user acquires proprietary rights in a mark." Id.

[14] Our precedent also imposes "a reasonable timeliness requirement" on analogous uses. Id. at 1162-63. Following an analogous use, the party must then actually use the mark in connection with goods within a commercially reasonable timeframe. Id.

[15] We review the Board's factual findings underlying a finding of analogous use and reasonable timeliness for substantial evidence. See Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1371 (Fed. Cir. 2018); 5 U.S.C. § 706(2)(E). . . .

A. The Board did not abuse its discretion by considering analogous use.

[16] Appellants have not shown that the Board abused its discretion when it found that Andrusiek adequately pled analogous use. The Board explained that Andrusiek's petition gave fair notice of his analogous use argument when the petition distinguished between two distinct bases for Andrusiek's claim: Andrusiek's "marketing activities" on the one hand (which correspond to analogous use), and his "bona fide commercial trade" on the other (which correspond to actual use). Decision, 2022 WL 4103636, at *6. Since Andrusiek's petition explicitly distinguished between these two bases for priority, the Board concluded that it gave fair notice of both distinct theories. Id. Moreover, the parties' conduct below suggests that Appellants had notice of the analogous use issue. Andrusiek's trial brief before the Board expressly and repeatedly asserted priority based on "analogous use," citing much of the same evidence referenced in his petition. Appellants did seek to exclude this expresslyasserted "analogous use" theory, even as they successfully sought to exclude other portions of Andrusiek's trial evidence as untimely. Decision, 2022 WL 4103636, at *2-3.

[17] Appellants' reliance on Andrusiek's reference to "common-law usage" fares little better. Whatever the meaning of "common-law usage" is in the abstract, the Board read Andrusiek's use of that phrase in context of the entire petition and concluded that it was sufficiently clear that Andrusiek alleged both actual and analogous use for the reasons described above. Reading the petition as a whole, we find no abuse of discretion in the Board's conclusion.

[18] While we understand Appellants' argument that Andrusiek's pro se pleading could have been more precise, the Board emphasized that it would afford Andrusiek (and all parties) "reasonable latitude" in pleading, as long the responding party received "fair notice" of the claims at issue. Decision, 2022 WL 4103636, at *6. We find no abuse of discretion in that decision.

B. Substantial evidence supports the Board's findings regarding analogous use.

[19] Appellants also challenge the Board's findings that (i) Andrusiek's prior analogous use was sufficient to impact the purchasing public, and (ii) that Andrusiek engaged in actual trademark use within a reasonable time of the relevant analogous use. Substantial evidence supports both Board findings.

[20] On the challenge to Andrusiek's impact on the applicable market, Appellants assert that Andrusiek presented "no evidence regarding the actual perception of any potential consumers" and assert that the Board did not make sufficient findings about the specific "size of the comic book market or number of marijuana consumers," which the parties appear to agree is the relevant market. Appellants' Br. 20; Decision, 2022 WL 4103636, at *11 & n.13 (noting that the parties both targeted the "niche" market of "marijuana-related goods and services"). Appellants cite our decision in T.A.B., asserting that we found no analogous use on a record with more evidence than Andrusiek allegedly offered in this case (citing T.A.B. Sys. v. Pactel Teletrac, 77 F.3d 1372, 1374-75 (Fed. Cir. 1996)).

[21] We disagree that T.A.B requires reversal here. T.A.B. vacated a grant of summary judgment in favor of analogous use when the applicable mark was actually displayed only to "seven customers," without "any evidence that any air time or any newspaper space was purchased"-nor evidence of any "advertisements," nor "any indication of 'readership'" for the handful of single-run print news articles relied upon by the Board there. T.A.B., 77 F.3d at 1375, 1377. Without some indication that the seven customers constituted a substantial portion of the market, we could not conclude that the evidence of record, without more, justified granting summary judgment in favor of analogous use. Id. at 1377. But T.A.B. itself emphasized that we do not require "direct evidence" of public association. Id. at 1375. Instead, public association may be inferred by the fact finder "on the basis of indirect evidence regarding the opposer's use of the word or phrase in advertising brochures, catalogs, newspaper ads, and articles in newspapers and trade publications." Id.

[22] That is what the Board did in the case before us-it cited Andrusiek's extensive public usage of CAPTAIN CANNABIS to promote comic books, which was well supported by the record. Decision, 2022 WL 4103636, at *9 (the Board citing registration and maintenance of captaincanabis.com); id. at *9-10 (citing Andrusiek's attendance at multiple trade shows and conventions and distribution of materials at each event); id. (citing attachment of photocopies of the "premier issue" of the comic book titled "420," which included explicit references to "Captain Cannabis" as the "star attraction" of the comic as well as the captaincanabis.com URL); id. at *10 (citing Andrusiek's shipping records of "420" comic books featuring "Captain Cannabis"); id. (citing statement from a publishing house reflecting Andrusiek's comic book sales); id. (citing active social media, including www.facebook.com/pages/Captain-Cannabis, which uses as its profile picture an image of the screenplay Captain Cannabis: The Ultimate Hit); id. at *10-11 (citing multiple interviews and profiles in trade press, including one which called Andrusiek "the George Lucas of the comic world" and one which announced him as the "creator of CAPTAIN CANNABIS," describing a photo of the Captain Cannabis character as a "comic book alter ego").

[23] Critically, the Board relied also on multiple news and magazine articles associating CAPTAIN CANNABIS with Andrusiek's comic books, in periodicals whose apparentlyundisputed readership totaled approximately 750,000 people per month. Id. at *11 (citing High Times Magazine, with an undisputed estimated circulation of ~236,000 per month, and Culture Magazine, with an undisputed estimated circulation of ~500,000 per month).

[24] The record here is amply greater than the comparatively more modest record in T.A.B. In the deferential posture of our present review, we cannot say there is such a failure of proof here. Given the additional evidence cited by the Board, substantial evidence supports the Board's findings that "more than a negligible portion of the relevant market" associated Andrusiek with CAPTAIN CANNABIS at the relevant times, which is all T.A.B. requires. T.A.B., 77 F.3d at 1377.

[25] We similarly reject Appellants' argument that the Board did not make substantively sufficient findings about the applicable market. T.A.B. criticized a party who conducted "utterly" no analysis of the market size. T.A.B., 77 F.3d at 1377. But here, the Board expressly found that the "market for marijuana-related goods and services" was, at the relevant time, a "small" and "niche" market because of then-existing federal and state criminal penalties related to marijuana and drug paraphernalia. Decision, 2022 WL 4103636, at *11 & n.13. Appellants do not present any reason why, in the context of this case, the Board's findings are not adequately specific to sustain the Board's reasoned determination that enough of the consuming public associates Andrusiek's comic books with CAPTAIN CANNABIS.

[26] Appellants' second argument is that the Board lacked substantial evidence to conclude that Andrusiek ever used "the CAPTAIN CANNABIS mark as a trademark," and therefore he did not engage in trademark use within a reasonable time from the analogous use. Appellants' Br. at 22. Appellants claim that the Board relied on "a single comic book" to show actual use and assert that "the title of a single book cannot serve as a source identifier" as a matter of law, citing our decision in Herbko. Id. (citing Herbko Int'l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162 (Fed. Cir. 2002)). Accordingly, Appellants assert that even if Andrusiek showed analogous use, he did not show a subsequent actual use, and therefore cannot show priority.

[27] The primary issue with Appellants' position is that it misstates the record. Rather than merely relying on the "title" of "a single comic book," the Board relied on multiple independent pieces of evidence showing Andrusiek's trademark usage. Decision, 2022 WL 4103636, at *12-13 (citing "all of the testimony and documentary evidence . . . considered together," including Andrusiek's evidence of actual use of the mark in connection with a related series of goods: a movie, a screenplay, and a comic book called "Captain Cannabis: 40th Anniversary"). Appellants do not grapple with the screenplay; the animated video; or any of the evidence or testimony supporting the same. They simply do not acknowledge that the evidence exists.

[28] Our review of the Board's decision and record confirms that it does. Id. Substantial evidence thus supports the Board's finding that Andrusiek engaged in trademark uses with the CAPTAIN CANNABIS mark.

We have considered Appellants' remaining arguments and find them unpersuasive. For the reasons above, we affirm the Board's cancellation of Appellants' mark.

Comments and Questions 1. The "totality of the circumstances" test. What kind and degree of pre-sales and/or sales activity can satisfy the use in commerce requirement for purposes of common law priority? Most courts have adopted some form of a "totality of the circumstances" test, sometimes heavily influenced by the equities of the case. See La SociétéAnonyme des Parfums Le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1274 n. 11 (2d Cir. 1974) ("[T]he balance of the equities plays an important role in deciding whether defendant's use is sufficient to warrant trademark protection."). In Chance v. Pac-Tel Teletrac Inc., 242 F.3d 1151 (9th Cir. 2001), for example, the Ninth Circuit summarized the factors that might be relevant to a totality of the circumstances analysis of use in commerce sufficient to justify rights: Accordingly, we hold that the totality of the circumstances must be employed to determine whether a service mark has been adequately used in commerce so as to gain the protection of the Lanham Act. In applying this approach, the district courts should be guided in their consideration of non-sales activities by factors we have discussed, such as the genuineness and commercial character of the activity, the determination of whether the mark was sufficiently public to identify or distinguish the marked service in an appropriate segment of the public mind as those of the holder of the mark, the scope of the non-sales activity relative to what would be a commercially reasonable attempt to market the service, the degree of ongoing activity of the holder to conduct the business using the mark, the amount of business transacted, and other similar factors which might distinguish whether a service has actually been "rendered in commerce".

Id. at 1159. Applying these factors, the Ninth Circuit found that the October 1989 mailing by Allen Chance ("Chance") of 35,000 postcards promoting his TELETRAC tracking service that led to 128 telephone responses but no sales was not sufficient to establish use in commerce. Meanwhile, Pac-Tel, in contrast, had significant activities even prior to [Chance's] post card mailing. The record demonstrates that as early as June 1989, Pac-Tel began using the mark on a continuous basis. As early as 1984, a Pac-Tel predecessor company was using the mark as part of its business name. Pac-Tel began a public relations campaign using the mark to introduce its new service in July 1989. In September 1989, it sent out brochures to potential customers. In early fall 1989, it conducted interviews with major newspapers including the Wall Street Journal, Washington Post and Chicago Tribune which resulted in a number of stories that mentioned the service mark. During this time the service was marketed to potential customers who managed large vehicle fleets through a slide presentation using the mark. While the district court found that Pac-Tel's first use was in April 1990, when it began making its service available on a commercial basis for the first time on the Los Angeles school buses, the totality of the record demonstrates that its first use of the mark was significantly earlier and clearly predated [Chance]'s first use Id. at 1160.

Another example of the application of the totality of the circumstances test, along with a strong grounding in the balance of the equities, is Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d 427 (7th Cir. 1999). When the Los Angeles Rams announced that they were moving to St. Louis, Rodney Rigsby, proprietor of Johnny Blastoff, Inc., had the bright idea somehow to claim ownership of the ST. LOUIS RAMS mark before the football team could. He filed a State of Wisconsin trademark application on February 22, 1995, and two federal intent-to-use registration applications on March 10, 1995. The court found that the football team's use in commerce preceded these dates. Here is the core of the court's analysis:

On January 17, 1995, Georgia Frontiere, the owner of the Rams, and St. Louis Mayor Freeman Bosley held a press conference at which they announced the Rams' intention to relocate from Los Angeles to St. Louis. The press conference story received extensive national and local press, including the St. Louis Dispatch's publication, on January 18, 1995, of a sixteen-page pullout section of the newspaper entitled "St. Louis Rams." Vendors sold unlicensed "St. Louis Rams" merchandise in the St. Louis area in January of 1995, and by February of 1995, more than 72,000 personal seat licenses for the St. Louis Rams' home games had been received. By the time Blastoff registered the "St. Louis Rams" mark in Wisconsin in February of 1995, a significant portion of the public associated the mark with the Rams football club. However, Blastoff asserts that the defendants had not sufficiently used the mark "St. Louis Rams" to be given priority. Blastoff argues that at the January 17, 1995, press conference, none of the defendants used the words "St. Louis Rams," and thus, this term was rendered an "unarticulated idea for a team name," which is not protectable. Blastoff also states that newspaper and media coverage is insufficient to establish priority. Finally, Blastoff contends that the football club "operated publicly and exclusively as [the] 'L.A. Rams'" as late as February 8, 1995.

For the purpose of establishing public identification of a mark with a product or service, the fact-finder may rely on the use of the mark in "advertising brochures, catalogs, newspaper ads, and articles in newspapers and trade publications," T.A.B. Systems v. Pactel Teletrac, 77 F.3d 1372, 1375 (Fed. Cir. 1996), as well as in media outlets such as television and radio. See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1125 (Fed. Cir. 1985). In addition, courts have recognized that "abbreviations and nicknames of trademarks or names used only by the public give rise to protectable rights in the owners of the trade name or mark which the public modified." Nat'l Cable Television Assoc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1577 (Fed. Cir. 1991). Such public use of a mark is deemed to be on behalf of the mark's owners. See id. Blastoff has failed to demonstrate any equivalent use of the mark "St. Louis Rams" by February of 1995, when the defendants established, by use and public association, their priority in the mark. Blastoff's insignificant and very limited use of the mark prior to February of 1995, consisting of the development of the "Tower City Rams" design, along with the production of a swatch of material with "St. Louis Rams" embroidery, is insufficient to establish a link between the mark and its products. Furthermore, the owner's use of a trademark is relevant in establishing public identification of a mark with a product or service. Georgia Frontiere, owner of the Rams, in announcing her intention to move the franchise to St. Louis from Los Angeles, implicitly adopted the exact phrase "St. Louis Rams" on the date of her press conference. This Court's decision in Indianapolis Colts, Inc. v. Metropolitan Baltimore Football Club Ltd., 34 F.3d 410, 413 (7th Cir. 1994), is strong support for the proposition that the Rams organization and the NFL had a longestablished priority over the use of the "Rams" name in connection with the same professional football team, regardless of urban affiliation.

Stealing" someone else's idea for a trademark. Because use, rather than invention, is the basis for trademark rights under the Lanham Act, there is no remedy under the Act for the "theft" of an idea for a trademark. In American Express Co. v. Goetz, 515 F.3d 156 (2d Cir. 2008), cert. denied, 129 S. Ct. 176 (U.S. 2008), the declaratory defendant Stephen Goetz developed the slogan "My Life. My Card." for a credit card and sought to interest various credit card providers in using it and his consulting services. On July 30, 2004, Goetz mailed a proposal to American Express urging American Express to adopt the mark. American Express never responded. In November, 2004, however, American Express launched a global campaign based on the phrase "My Life. My Card." When Goetz threatened suit, American Express filed for a declaration of noninfringement. Documents produced in the litigation showed that the advertising firm Ogilvy Group first proposed the mark to American Express on July 22, 2004, and Goetz eventually conceded that Ogilvy had developed and American Express had adopted the mark without any knowledge of his proposal.

The district court granted summary judgment to American Express and the Second Circuit affirmed. What drove the outcome of the litigation was not the priority of invention issue, however. Instead, it was the simple fact that Goetz never made a qualifying use in commerce of the mark: "[C]onstruing all the facts in Goetz's favor, the only reasonable conclusion that can be drawn is that My Life, My Card was a component of Goetz's business proposal to the credit card companies rather than a mark designating the origin of any goods or services he offered to them." Id. at 160.

Trademark trolls and the use in commerce requirement.

The use in commerce prerequisite for trademark rights has the salutary effect of limiting the ability of bad faith agents to exploit the trademark registration system in the way that some "non-practicing entities" arguably exploit the patent system. In Central Mfg., Inc. v. Brett, 492 F.3d 876 (9th Cir. 2007), the defendant George Brett (and brothers) manufactured a hybrid wood-metal bat under the trademark STEALTH. Plaintiff Central Mfg., of which the then-notorious trademark troll Leo Stoller was president and sole shareholder, sued for infringement of its own mark STEALTH, which it had registered in 1985 for "[s]porting goods, specifically, tennis rackets, golf clubs, tennis balls, basketballs, baseballs, soccer balls, golf balls, cross bows, tennis racket strings and shuttle cocks." When Brett challenged Stoller to produce any evidence of use in commerce of the mark, Stoller's documents failed to persuade the district court. For example: "Plaintiffs produced a table of 'Stealth Brand Baseball Sales' between 1996 and 2003, but could provide absolutely no information to justify the lump sum 'sales' figures listed. There is no way for this Court to know that this alleged sales sheet bears any relation to reality and is not simply something Plaintiffs generated on a home computer for the purposes of this litigation." Stoller has repeatedly sought ways to get around trademark law's prohibition on the stockpiling of unused marks, and this case is no different. It is unfathomable that a company claiming to have engaged in thousands of dollars of sales of a product for more than a decade would be unable to produce even a single purchase order or invoice as proof. Self-serving deposition testimony is not enough to defeat a motion for summary judgment. By exposing Central's failure to make bona fide use of the "Stealth" mark for baseballs, Brett Brothers met its burden to overcome the presumption afforded by the 1985 registration, and summary judgment in its favor was the appropriate course.

Id. at 883. Brett was also awarded attorney fees. In December 2010, Stoller was indicted on fraud charges related to statements made in his bankruptcy filings. In November 2014, he was sentenced to 20 months in a federal prison. See http://en.wikipedia.org/ wiki/Leo_Stoller. For a more recent example of behavior possibly akin to trademark trolling, see Eric Goldman, My Declaration Identifying Emoji Co. GmbH as a Possible Trademark Troll, TECH. & MARKETING L. BLOG, Sept. 20, 2021, https://perma.cc/L4YN-X89U (discussing the highvolume litigation behavior of Emoji Co. GmbH).

Use, rather than registration, is the basis of federal trademark rights in the United States. See In re Int'l Flavors & Fragrances, Inc., 183 F.3d 1361, 1366 (Fed. Cir. 1999) ("The federal registration of a trademark does not create an exclusive property right in the mark. The owner of the mark already has the property right established by prior use․ However, those trademark owners who register their marks with the PTO are afforded additional protection not provided by the common law."). As explained previously in this Part, the Lanham Act will protect a trademark owner's exclusive rights in any trademark it is using in commerce regardless of whether the mark is registered provided that the unregistered mark meets the various substantive requirements for registration established by the Act. In other words, if the mark as used in commerce could be registered, it will be protected even if it is not registered. Conversely, the Lanham Act will not protect a trademark registrant's exclusive rights in its registered mark if it no longer uses its mark in commerce and cannot prove an intent to resume use in the near future. On this basis, it is often said that the U.S. trademark system is a "use-based" system in contrast to the "registration-based" systems more common around the world. 14 In the United States, registration merely records the preexistence of externally established rights. 15 The U.S. registration system is different in another significant respect. Unlike many foreign registration systems, which review applications only for compliance with formal requirements, the PTO reviews applications to ensure that they meet both formal requirements (which are largely set forth in Lanham Act § 1) and substantive requirements (largely found in Lanham Act § 2). These substantive requirements include both "absolute grounds" for refusal of registration, such as that the mark is deceptive, and "relative grounds" for refusal, such as that the mark is confusingly similar with a previously registered mark.

A trademark applicant at the PTO must claim at least one "filing basis" for its application among the five that are provided by the Lanham Act. These filing bases are:

1. Lanham Act § 1(a): the applicant is already making actual use of the mark in commerce;

2. Lanham Act § 1(b): the applicant has a bona fide intent to use the mark in commerce in the near future;

3. Lanham Act § 44(d): the applicant filed a foreign application to register the mark within six months prior to its application to the PTO and claims the priority date of that prior foreign application;

4. Lanham Act § 44(e): the applicant possesses a registration of the mark in the applicant's country of origin; to other nations' registration-based systems and concluding that the former is more economically efficient). 15 See, e.g., Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 372 (1st Cir. 1980) ("[F]ederal registration . . . does not create the underlying right in a trademark. That right, which accrues from the use of a particular name or symbol, is essentially a common law property right . . . .").

5. Lanham Act § 66(a): the applicant requests extension of protection of an international registration under the Madrid System for the international registration of trademarks.

The first four filing bases are not mutually exclusive; the § 66(a) filing basis, by contrast, may not be combined with other filing bases. While the § § 1(a), 44(d), and 44(e) filing bases have been available since the effective date of the original Lanham Act on July 5, 1947, the § 1(b), or "ITU," filing basis became available with the effective date of the Trademark Law Revision Act (TLRA) on November 16, 1989,foot_5 and the § 66(a) filing basis became available with the effective date of the Madrid Protocol Implementation Act on November 2, 2003. 17 Most trademark applications at the PTO are now filed under the Lanham Act § 1(b) intent to use basis.

Lanham Act § § 44 & 66(a), 15 U.S.C. § § 1126 & 1141(f), set forth important though relatively obscure exceptions to the general rule that a trademark must be used in commerce for it to be federally registered. See, e.g., Lanham Act § 44(e), 15 U.S.C. § 1126(e) ("The application must state the applicant's bona fide intention to use the mark in commerce, but use in commerce shall not be required prior to registration."). As noted in In re Cyber-Blitz Trading Services, 47 U.S.P.Q.2d 1638 (Comm'r Pats. 1998),

[o]ne significant difference between Section 1(b) and 44 of the Trademark Act is that Applicants who rely on Section 1(b) as a filing basis must establish use of the mark prior to registration, or the application will become abandoned. In contrast, Applicants who rely solely on Section 44 are not required to demonstrate use in order to obtain registration. Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984). In fact, the first time evidence of use usually is required for Section 44 Applicants is upon the filing of an Affidavit of Continued Use under Section 8 of the Trademark Act, 15 U.S.C. § 1058. This does not occur until five to six years after registration.

Id. at 1639-40. See also TMEP § 1009. The reasoning of Cyber-Blitz also applies to § 66(a) applications. 18 (2025) (describing Amazon's Brand Registry as a "shadow trademark system" and analyzing its impact on trademark application practices at the PTO and branding practices more generally).

By the end of 2023, there were 3.1 million live trademark registrations on the PTO's Principal Register. See USPTO Trademark Case Files Dataset 2023. Of these,

• 71.6% consisted only of "standard character" marks, meaning that the registrant was claiming a mark consisting only of text and was claiming that text in any font; • 5.8% consisted of "stylized character" marks, meaning that the registrant was claiming a mark consisting only of text in a particular font; • 3.7% consisted only of an image with no textual component; • 18.9% consisting of text and image; and • 0.01% (or 252 total registrations) consisted of "non-traditional marks" such as smells or textures.

Benefits and Costs of Trademark Registration a. Registration on the Principal Register

Registration on the Principal Register confers significant, substantive advantages on the registered mark. First and perhaps most importantly, under Lanham Act § 7(c), 15 U.S.C.

§ 1057, registration confers on the registrant nationwide priority in the mark as of the date of application. Section 7(c) reads as follows:

(c) Application to register mark considered constructive use. Contingent on the registration of a mark on the principal register provided by this Act, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except for a person whose mark has not been abandoned and who, prior to such filing-

(2) has filed an application to register the mark which is pending or has resulted in registration of the mark; or

(3) has filed a foreign application to register the mark on the basis of which he or she has acquired a right of priority, and timely files an application under section 44(d) [15 USC 1126(d)] to register the mark which is pending or has resulted in registration of the mark.

15 U.S.C § 1057. This right of priority extends nationwide even if, as is often the case, the registrant has not itself used the mark throughout the nation. And in the case of ITU applications, the intent to use applicant enjoys nationwide priority as of its ITU application date even if several years pass before the applicant finally makes an actual use of its mark and completes its registration. (We will address the geographic scope of trademark rights in more detail in Part I.E).

Second, registration is prima facie evidence of the validity of the mark and of the registrant's ownership of the mark. Lanham Act § § 7(b) & 33(a), 15 U.S.C. § § 1057(b) & 1115(a). The curcuits vary on whether these provisions shift the burden of persuasion to the defendant to disprove the validity of a registered mark or merely shift the burden of production to the defendant to come forward with evidence of invalidity. Compare, e.g., Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206, 216 n.10 (2d Cir. 2012) ("In order to rebut the presumption of validity, the allegedly infringing party must show, by a preponderance of the evidence, . . . that the mark is ineligible for protection.") with OBX-Stock, Inc. v. Bicast, Inc., 558 F.3d 334, 342 (4th Cir. 2009) ("[E]ntry on the Principal Register does not shift the burden of persuasion on validity, merely the burden of production."); Custom Vehicles, Inc. v. Forest River, Inc., 476 F.3d 481, 486 (7th Cir. 2007) ("[T]he presumption of validity that registration creates is easily rebuttable, since it merely shifts the burden of production to the alleged infringer."); and Door Systems, Inc. v. Pro-Line Door Systems, Inc., 83 F.3d 169, 172 (7th Cir. 1996) ("The presumption of validity that federal registration confers evaporates as soon as evidence of invalidity is presented. Its only function is to incite such evidence and when the function has been performed the presumption drops out of the case." See also Charles L. Cook & Theodore H. Davis, Jr., Litigating the Meaning of "Prima Facie Evidence" under the Lanham Act: The Fog and Art of War, 103 TRADEMARK REP. 437 (2013).

Third, only marks registered on the Principal Register may achieve incontestable status, which confers a significant benefit on descriptive marks. Lanham Act § § 15 and 33, 15 U.S.C.

§ § 1065 & 1115, set out the main requirements a registrant must meet to file a Declaration of Incontestability of a Mark Under Section 15: (1) the mark must have been in continuous use for any period of five consecutive years after the date of registration and must still be in use at the time of filing, (2) there has been no final decision adverse to the registrant's ownership of or validity of the registration of the mark, and (3) there is no proceeding involving the registrant's ownership of or validity of the registration of the mark pending at the PTO or in any court. Lanham Act § 15, 15 U.S.C. § 1065.

Incontestable status limits the grounds on which the registered mark's validity may be contested for the remaining life of the registration (which may be renewed in perpetuity). Lanham Act § § 15 and 33(b) explicitly list out these grounds; any that are not listed are foreclosed. One ground not listed is that the mark lacks secondary meaning. Thus, the validity of descriptive marks that have achieved incontestable status may not be challenged on the ground that they lack secondary meaning-though they may be challenged on the ground that they are generic. 19 Another ground not listed is that the mark fails to function as a mark. See Lisa P. Ramsey, Using Failure to Function Doctrine to Protect Free Speech and Competition in Trademark Law, 104 IOWA L. REV. ONLINE 70 (2020) (advocating that § 14 and § 15 be amended to allow any mark to be cancelled at any time on the ground that it fails to function as a mark).

• Owners of registered marks may obtain statutory damages against counterfeiters.

See Lanham Act § 35(c) (statutory damages available in "cases involving the use of a counterfeit mark"), 15 U.S.C. 1117(c), and Lanham Act § 34(d)(1)(B)(i) (defining "counterfeit mark" as "counterfeit of a mark that is registered on the principal register"), 15 U.S.C. § 1116(d)(1)(B)(i). Owners of registered marks may also benefit from criminal prosecution of trademark counterfeiters. See 18 U.S.C. § 2320.

• Owners of registered marks enjoy the right to request customs officials to bar the importation of goods bearing infringing trademarks under Lanham Act § 42, 15 U.S.C. § 1124.

• In the case of registered trade dress, owners do not bear the burden of establishing the non-functionality of their trade dress. Under Lanham Act § 43(a)(3), 15 U.S.C. § 1125(a)(3), owners of unregistered trade dress bear this burden.

• A mark's registered status may serve a powerful rhetorical function in front of juries. Note that it is often still said, incorrectly, that only owners of registered marks may seek treble damages and attorney fees in exceptional cases under Lanham Act § 35(a). In fact, the TLRA of 1988 amended Section § 35(a) to reference any "violation under section 43(a)," thus providing enhanced damages and attorney fees in exceptional cases to owners of unregistered marks.

b. Registration on the Supplemental Register

Non-inherently distinctive marks that fail to qualify for Principal Register registration because they are determined to lack acquired distinctiveness may nevertheless seek registration on the Supplemental Register. Specifically, Lanham Act Section 23(a), 15 U.S.C.

All marks capable of distinguishing applicant's goods or services and not registerable on the principal register provided in this chapter, except those declared to be unregisterable under subsections (a), (b), (c), (d), and (e)(3) of section 1052 [Lanham Act § 2] of this title, which are in lawful use in commerce by the owner thereof, on or in connection with any goods or services may be registered on the supplemental register upon the payment of the prescribed fee and compliance with the provisions of subsections (a) and (e) of section 1051 [Lanham Act § 1] of this title so far as they are applicable.

Id. Principal Register applicants typically seek Supplemental Register registration (by amending their application) only after the PTO has refused registration on the Principal Register on the ground that the applied-for mark is descriptive and lacks secondary meaning.

As the language of § 23(a) establishes ("which are in lawful use in commerce"), only usebased applications can be converted into supplemental registrations; intent to use applications do not have this option.

There are several benefits to Supplemental Register registration:

• Examiners may cite the supplemental registration against future applications for either Principal or Supplemental Register registration where the future applied-for mark would be confusingly similar under § 2(d) with the supplemental registration mark. • Relatedly, the mark registered on the Supplemental Register is more likely to be detected in search reports prepared for others contemplating the registration of similar marks.

• Supplemental registration may form the basis for registration of certain marks (particularly those that are descriptive or take the form of product configuration or packaging) in certain foreign countries and regions. The Supplemental Register was originally established for this purpose.

Current PTO fees for the registration of a trademark range begin at $350 per Nice class of goods or services. (The Nice classification scheme is discussed below.) Experienced trademark prosecutors will generally estimate that the cost to register a trademark at the PTO, including both filing fees and attorney's fees, starts at approximately $2,000 for a simple use-based single-class word mark application, with the addition of perhaps $500 per additional Nice class. Attorney's fees may vary by the quality of counsel. More complex applications, including those filed on an intent to use basis or for non-verbal marks, may cost considerably more.

Lanham Act § 1(b) Intent to Use Applications and the Bona Fide Intent to Use Requirement

As the figure above shows, by 1993, over half of all trademark applications filed annually at the PTO were filed on a § 1(b) intent to use filing basis. The ITU filing basis allows an applicant to begin the trademark registration process before it has used its mark in commerce provided that it has a "a bona fide intention, under circumstances showing the good faith of such person, to use [the] trademark in commerce." Lanham Act § 1(b)(1), 15 U.S.C.

§ 1051(b) (1). The ITU filing basis greatly benefits firms that wish to establish the registrability of and priority rights in their marks before actually using their marks in commerce. However, the ITU system is also open to abuse from firms who have at the time of filing no real intention to use the mark but rather wish merely to establish an option to use the mark sometime in the future. It is also open to abuse from "meme mark" filers who rush to file a § 1(b) application for the latest cultural catchphrase but have at the time of filing no reasonably well-developed plan to use that phrase on or in connection with goods or services.

See Barton Beebe, Is the Trademark Office a Rubber Stamp?, 48 HOUSTON L. REV. 751, 757 (2011) (discussing "meme mark" filings associated with September 11 such as "Let's Roll" and "Seal Team 6").

The following opinion grew out of a priority battle between two claimants to the trademark WORKWIRE.

Kelly Services, Inc. v. Creative Harbor, LLC 846 F.3d 857 (6th Cir. 2017)

[1] Defendant Creative Harbor, LLC ("Creative Harbor") appeals the judgment entered by the district court on February 1, 2016, voiding Creative Harbor's trademark applications numbered 86198230 and 86198309, respectively. Creative Harbor challenges the district court's determinations that: (1) Creative Harbor lacked a bona fide intention to use its requested mark in commerce with respect to some of the goods and services identified in its trademark applications, in violation of § 1(b) of the Lanham Act, 15 U.S.C. § 1051(b); and (2) if Creative Harbor lacked such intent with respect to any of the goods and services, the applications must be voided in their entirety. We have jurisdiction over this appeal pursuant to 28 U.S.C. § 1291. For the reasons set forth below, we AFFIRM IN PART and VACATE IN PART the district court's judgment. We REMAND for further proceedings consistent with this opinion. BACKGROUND I. Factual History [2] We present the facts in the light most favorable to Creative Harbor, against whom the district court entered summary judgment.

[3] Defendant Creative Harbor is a California-based technology startup purportedly "engaged in the business of original content creation and concept development for all media, including but not limited to, internet, mobile, photography, film, and TV." (Answer.) Creative Harbor was founded in 2014 by Christian Jurgensen ("Jurgensen"), who serves as Creative Harbor's owner, sole manager, and CEO.

[4] Plaintiff Kelly Services, Inc. is a Michigan-based company that is allegedly "one of the world's largest providers of personnel and managed business services -staffing 99% of Fortune 100 companies and 90% of Fortune 500 companies." (Complaint.) Plaintiff Kelly Properties, LLC, is an affiliated entity of Kelly Services, Inc. Because Plaintiffs do not assert separate claims or arguments, and have identical interests for the purposes of this appeal, we refer to them collectively as "Kelly Services." [5] In essence, the parties dispute which of them should have priority to the trademark WORKWIRE ("the Mark"), which both wish to use in connection with their competing employment-based software applications. In September 2013, Jurgensen allegedly developed an idea for a mobile application designed to connect employers with prospective employees. Jurgensen decided to call the application "WorkWire," and formed Creative Harbor in February 2014 to develop the WorkWire application. In early 2014, Creative Harbor hired an intellectual property attorney to explore obtaining the WORKWIRE trademark. That attorney allegedly advised Creative Harbor that the Mark was available.

[6] However, in early 2013, Kelly Services allegedly began developing its own employment-based iPad application, which it intended to distribute through the Apple App Store. Kelly Services also decided to name its application "WorkWire." Kelly Services allegedly completed this iPad application on February 4, 2014, and submitted the application to Apple for its approval and eventual distribution. On February 17, 2014, Apple approved Kelly Services' application, but did not release it on the App Store immediately.

[7] On February 19, 2014, Creative Harbor filed two trademark applications seeking rights to the Mark with the United States Patent and Trademark Office at 6:28 p.m. and 7:56 p.m. Eastern Standard Time, respectively ("the Applications"). The Applications sought the right to use the Mark in connection with thirty-six individually identified goods and services. Creative Harbor affirmed under penalty of perjury that it possessed a bona fide intention to use the Mark in commerce on or in connection with each of the goods and services listed in the Applications. On the same day, at approximately 8:11 p.m. Eastern Standard Time, Kelly Services' iPad application became available on the Apple App Store. A customer first downloaded the Kelly Services application on February 20, 2014.

[8] On March 10, 2014, Creative Harbor sent Kelly Services a cease and desist letter asserting its right to use the Mark, and demanding that Kelly Services cease using the WORKWIRE name in connection with Kelly Services' Apple App Store iPad application.

Sixteen days later, Kelly Services responded to that letter by bringing suit against Creative Harbor in the United States District Court for the Eastern District of Michigan. In its complaint, Kelly Services sought a declaratory judgment, inter alia, that: (1) it possessed superior rights to the Mark; (2) it had not infringed on Creative Harbor's rights to the Mark; and (3) Creative Harbor's rights to the Mark were invalid.

[9] On May 2, 2014, Creative Harbor answered the complaint and filed counterclaims against Kelly Services. Relevant to this appeal, Creative Harbor sought a declaratory judgment that it had priority rights to the Mark over Kelly Services because it filed the Applications before Kelly Services began using the Mark in commerce. . . . .

[10] Kelly Services sought discovery related to various issues in the case, including Creative Harbor's intent to use the Mark in commerce with respect to each of the goods and services listed in the Applications. In response to Kelly Services' document requests, Creative Harbor produced a PowerPoint presentation that included mock-up "wireframes" (a concept map outlining the elements of a software application) for a potential iPhone application.

[11] Kelly Services also deposed Jurgensen as Creative Harbor's representative pursuant to Federal Rule of Civil Procedure 30(b)(6). During the deposition, Kelly Services asked Jurgensen a number of questions related to Creative Harbor's plans to use the Mark in connection with the thirty-six goods and services identified in the Applications. In response to these questions, Jurgensen testified that Creative Harbor's outside attorney, David Sharifi, prepared the Applications under Jurgensen's instructions to "protect the mark" as to different products and services for which the Mark "could" eventually be used "in case the brand got bigger." (Deposition transcript.) Accordingly, Jurgensen testified that he was not personally aware of the particular reasons why Sharifi included particular goods and services in the Applications. Jurgensen elaborated that "some of these services might be of future importance. Some of these terms might protect my endeavors in the future that I have . . . with the brand . . . . We can go through every single [item], but I can also say to some of them this would have been a future use." (Id.)

[12] Additionally, Jurgensen made several statements concerning the goods and services identified in the Applications. {These statements are discussed below}.

[13] On May 14, 2015, Creative Harbor moved for partial summary judgment seeking a declaration that it had priority to the Mark based on the Applications. Kelly Services opposed Creative Harbor's motion on the ground that the Applications were invalid because Creative Harbor lacked bona fide intent to use the Mark on some of the goods and services listed in the Applications, as required by § 1(b) of the Lanham Act. The district court construed Kelly Services' opposition as a cross-motion for summary judgment on the priority issue. . . . .

[14] On October 16, 2015, the district court granted Kelly Services' cross-motion for summary judgment, voiding the Applications in their entirety. Kelly Servs. II, 140 F.Supp.3d at 623. The district court concluded that there was no genuine issue of material fact that Creative Harbor lacked a bona fide intent to use the Mark as to some of the goods and services listed in its Applications. Id. at 618-19. After surveying TTAB precedent, the district court concluded that Creative Harbor's lack of bona fide intent as to some of the goods and services necessitated voiding the Applications in their entirety. Id. at 622. . . . .

[15] On appeal, Creative Harbor argues that: (1) the district court erred in concluding that it lacked a bona fide intent to use the Mark in commerce with respect to some of the goods and services listed in the Applications at the time the Applications were filed; and (2) even if Creative Harbor did lack bona fide intent as to certain goods and services, the Applications should not have been voided in their entirety. We address each of these arguments in turn. (1). We therefore join the Federal and D.C. Circuits and hold that a lack of bona fide intent is a proper ground on which to oppose an ITU application. M.Z. Berger, 787 F.3d at 1375; Aktieselskabet, 525 F.3d at 21.

[18] Although the Lanham Act does not define what constitutes a bona fide intent to later use a mark in commerce, the Federal Circuit has explained "that the applicant's intent must be demonstrable and more than a mere subjective belief." M.Z. Berger, 787 F.3d at 1375; 3 McCarthy on Trademarks § 19.14, at 19.48 ("Congress did not intend the issue to be resolved simply by an officer of the applicant later testifying, 'Yes, indeed, at the time we filed that application, I did truly intend to use the mark at some time in the future.'"). Accordingly, "whether an applicant had a 'bona fide intent' to use the mark in commerce at the time of the application requires objective evidence of intent." M.Z. Berger, 787 F.3d at 1376 (emphasis added). "Although the evidentiary bar is not high, the circumstances must indicate that the applicant's intent to use the mark was firm and not merely intent to reserve a right in the mark." Id. (emphasis added). This determination must be made on a "case-by-case basis considering the totality of the circumstances," and may be assessed as of the time the application was filed. Id . . . .

[19] "Neither the [Lanham Act] nor [its] legislative history indicates the specific quantum or type of objective evidence required to meet the bar" to show bona fide intent. M.Z. Berger, 787 F.3d at 1376. Drawing from the relevant legislative history, however, the TTAB has provided "several specific examples of objective circumstances which, if proven, 'may cast doubt on the bona fide nature of the intent or even disprove it entirely.'" Lane, 1994 WL 740491, at *6 (quoting S. Rep. No. 100-515, at 23 (1988)).

For example, the applicant may have filed numerous intent-to-use applications to register the same mark for many more new products than are contemplated, numerous intent-to-use applications for a variety of desirable trademarks intended to be used on [a] single new product, numerous intent-to-use applications to register marks consisting of or incorporating descriptive terms relating to a contemplated new product, numerous intent-to-use applications to replace applications which have lapsed because no timely declaration of use has been filed, an excessive number of intent-to-use applications to register marks which ultimately were not actually used, an excessive number of intent-to-use applications in relation to the number of products the applicant is likely to introduce under the applied-for marks during the pendency of the applications, or applications unreasonably lacking in specificity in describing the proposed goods. Other circumstances may also indicate the absence of genuine bona fide intent to actually use the mark.

[20] Further, one prominent practitioner has recently compiled a list of "affirmative activities that have been deemed indicative of the presence of a bona fide intent to use," including:

• performing preparatory graphic design work or labeling on sales material for a product;

• testimony regarding informal, unwritten business plans or market research;

• obtaining a correlative domain name for the mark or setting up a website;

• making contacts with individuals who might help develop a business;

• correspondence mentioning the planned use of the mark;

• attempts to find licensees, including ones outside of the U.S.; [and]

• obtaining commercial space in which to perform the services. See Sandra Edelman, Proving Your Bona Fides-Establishing Bona Fide Intent to Use Under the U.S. Trademark (Lanham) Act, 99 TRADEMARK RPTR. 763, 781-82 (2009) (footnotes omitted) (emphasis in original).

[21] On a motion for summary judgment in an action challenging an ITU application for lack of bona fide intent, the party opposing the application ("opposing party" or "opposer") "has the initial burden of demonstrating by a preponderance of the evidence that [

[22] Creative Harbor argues that the evidence in the record shows that it had a bona fide intent to use the Mark in connection with each and every one of the thirty-six goods and services listed in the Applications at the time they were filed. We disagree.

1. Prime Facie Showing of Lack of Bona Fide Intent [23] As the party challenging Creative Harbor's Applications, Kelly Services bore "the initial burden of demonstrating by a preponderance of the evidence that [Creative Harbor] lacked a bona fide intent to use the mark on the identified goods." Bos. Red Sox, 2008 WL 4149008, at *6. We hold that Kelly Services met this initial burden.

[24] As the district court correctly found, Jurgensen's deposition testimony on behalf of Creative Harbor was sufficient to demonstrate by a preponderance of the evidence that Creative Harbor lacked bona fide intent to use the Mark as to at least some of the goods and services identified in the Applications at the time the Applications were filed. The district court and Kelly Services specifically reference the following portions of Jurgensen's deposition:

• Mr. Jurgensen testified that he asked his attorney to file the [Applications] in order 'to protect this brand . . . in case the brand got bigger; in case it diversifies a little bit.' (Deposition testimony.);

• Mr. Jurgensen said that the services and goods listed on the [Applications] 'were defined with the idea of protecting my present and future exploration of this nameof this brand.' (Id.);

• Mr. Jurgensen conceded that at the time his attorney drafted the [Application] he (Jurgensen) 'had clear ideas for some of them, and some of them were meant for future exploration.' (Id.);

• Mr. Jurgensen acknowledged that some of the listed 'services might be of future importance' and that they 'might protect my endeavors in the future that I have . . . .' (Id.); [25] These excerpts establish that Creative Harbor did not have a "firm" intention to use the Mark in connection with computer software games, professional credentialing verification services, employee relations information services, employment staffing consultation services, and business consulting services-all goods and services listed in the Applications. See M.Z. Berger, 787 F.3d at 1376. Moreover, several of Jurgensen's other statements strongly suggest that Creative Harbor included some goods and services in the Applications merely to "reserve a right in the mark" in case it ever decided to expand its commercial activities into those areas. Id. Jurgensen's statement that, at the time the Applications were filed, Creative Harbor "had clear ideas for some of [the goods and services], and some of them were meant for future exploration" is particularly indicative of Creative Harbor's lack of firm intent. Creative Harbor was not permitted to claim the Mark for uses that might only materialize after some unspecified "future exploration"-it was required to have firm plans to use the Mark at the time the Applications were filed. M.Z. Berger, 787 F.3d at 1376. Taking all of Jurgensen's statements together, we are persuaded that the district court was correct in concluding that Kelly Services carried its initial burden in showing that it was more likely than not that Creative Harbor lacked bona fide intent as to some of the goods and services listed in the Applications. . . . .

[26] Accordingly, we hold that Kelly Services met its initial burden of production to show that Creative Harbor lacked bona fide intent as to some of the goods and services listed in the Applications.

[27] Once Kelly Services met its initial burden of production, Creative Harbor was required to come forward with either objective documentary evidence establishing its bona fide intent, or facts supporting a sound explanation as to why such evidence was lacking. Honda Motor Co., 2009 WL 962810, at *2. We hold that Creative Harbor provided sufficient objective evidence as to some of the goods and services listed in the Applications, but not others.

[28] In its summary judgment briefing, and again on appeal, Creative Harbor marshals significant evidence demonstrating its bona fide intent. A representative sample of Creative Harbor's evidence includes:

• Its hiring of a computer program development firm to develop an employment-based software application for Apple's "App Store." (App Developer Agreement);

• A trademark search it purportedly conducted to determine whether the WORKWIRE name was available. (Deposition testimony);

• The wireframes it developed for its proposed employment-based software application. (Id.);

• Its business plans for the proposed application. (5 Year Business Plan);

• Its obtaining of the www.work-wire.com domain name. (Domain Registration); and

• Its press release regarding its employment-based software application. (Press Release.)

[29] The district court correctly acknowledged that Creative Harbor's evidence "makes clear" that Creative Harbor had a bona fide intent as to some of the goods and services listed in the Applications. Kelly Servs. II, 140 F.Supp.3d at 618. For example, the district court noted "that Creative Harbor had a 'firm' intent to use the Mark in connection with an iPhone application that connected job seekers with employers." Id. We agree with the district court, however, that Creative Harbor's evidence ultimately "misses the mark." Id.

[30] As the district court correctly noted, "evidence that Creative Harbor intended to use the Mark with respect to some of the goods and services listed in the [Applications] does not contradict Kelly [Services'] evidence that Creative Harbor lacked a firm intent to use the Mark on several of the other services and goods listed in the [Applications.]" Id. (emphasis in original). Creative Harbor, for example, failed to come forward with any objective evidence showing a bona fide intent to use the Mark in connection with computer software games, professional credentialing verification services, employee relations information services, employment staffing consultation services, and business consulting services-the goods and services most fatally undermined by Jurgensen's deposition testimony. Nor did Creative Harbor offer any reasons excusing its failure to come forward with such objective evidence . . . .

[31] Accordingly, we hold that Creative Harbor lacked a bona fide intent to use the Mark in connection with at least some of the goods and services listed in the Applications. II. Remedy . . . .

[32] Finally, the district court's interpretation {of Spirits International, B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 U.S.P.Q.2d 1545, 2011 WL 2909909 (T.T.A.B. 2011)} would lead to perverse results. Imagine a hypothetical § 1(b) ITU applicant who submits an application listing 100 goods associated with the requested mark with a subjective intention to use the mark in connection with all of the goods. The hypothetical applicant has at least some objective documentary evidence supporting its bona fide intent as to all 100 goods, but a competitor nevertheless challenges the applicant's bona fide intent as to ten of the goods in a declaratory action in federal district court. Under the district court and Kelly Services' interpretation of Spirits International, the applicant is put in quite a quandary: he must either (1) voluntarily delete the challenged goods, even if the challenges lack merit; or (2) risk having his entire application voided if the district court determines that he lacked bona fide intent for even a single item. If the applicant lacks ironclad documentary evidence for even one item-which is likely in circumstances where the application lists a large number of goods and services-his incentive is to delete the challenged goods rather than risk losing the entire application. Similarly, his competitor is incentivized to bring bona fide intent challenges to all of the applicant's future applications, because the competitor can likely bully the applicant into at least some concessions, and the only consequence for the competitor if it loses is legal fees, which may be a relative pittance depending on the industry and the value of the mark . . . . . . . .

[33] Accordingly, we hold that when a § 1(b) ITU applicant lacks bona fide intent as to some, but not all, of the goods and services listed in her application, the application should not be voided in its entirety absent fraud or other egregious conduct. Grand Canyon, 2006 WL 802407, at *1-3. Rather, the court should determine as to which goods and services the applicant lacked bona fide intent, and excise the overbroad portions of the application. We thus hold that the district court erred in voiding Creative Harbor's Applications in their entirety. III. Remand . . . .

[34] On remand, the district court should evaluate each of the thirty-six goods and services listed in the Applications, and make individualized determinations as to whether Creative Harbor's objective documentary evidence establishes a bona fide intention to eventually use those items in commerce. The district court may wish to conduct an evidentiary hearing in service of this inquiry, although we do not require it to do so. . . . . ALICE M. BATCHELDER, Circuit Judge, concurring in part and dissenting in part and dissenting from the judgment. . . . .

[35] TTAB precedent suggests that it is incumbent upon the applicant to amend its application to eliminate portions of its § 1(b) ITU application for which it cannot demonstrate bona fide intent, or else risk having the entire application voided. Creative Harbor refused to take advantage of this remedy. The district court therefore correctly voided both of Creative Harbor's applications ab initio. Because my colleagues reach the opposite conclusion, I respectfully dissent.

For marks already being used in commerce, a successful application proceeds though at least five basic stages: (1) application, (2) examination, (3) publication in the PTO's Official Gazette, (4) opposition, and ( 5) registration.

Intent-to-use applications proceed through certain additional stages (shown in italics):

(1) application, (2) examination, (3) publication in the PTO's Official Gazette, (4) opposition, (5) the issuance by the PTO of a Notice of Allowance, (6) the filing by the applicant of a Statement of Use showing that the applicant has begun to make actual use of the mark in commerce; and (7) registration.

The PTO provides excellent annotated flowcharts of the registration process for each of the five filing bases on its website at: https://www.uspto.gov/trademark/trademark-timelines/trademark-application-and-post-registration-process-timelines. The reader is strongly encouraged to consult these flow charts while reviewing the following information.

The application is relatively simple. See Lanham Act § § 1(a) & 1(b) (setting out the required contents of use-based and intent-to-use applications, respectively). The following are the most important elements of the application:

• Filing Basis: As mentioned above, the applicant must specify at least one of the five filing bases provided for in the Lanham Act.

• Designation of Goods and Services: The applicant must identify the particular goods or services on or in connection with which it uses or intends to use the mark. The U.S. Acceptable Identification of Goods and Services Manual, available online, provides a listing of acceptable identifications of goods and services. The applicant should also identify the international class number(s) of the identified goods or services as established by the Nice International Classification of Goods and Services for the Purposes of the Registration of Trademarks. ("Nice" after the French city where the Nice Agreement was reached, and pronounced to rhyme with "peace"). The 45 classes of the Nice Classification are listed below. In principle, the identification of goods or services does not limit the breadth of the applicant's registered exclusive rights. The sole purpose of the identification of goods and services is to aid the PTO in internal administration and review of applications. However, litigants sometimes cite a registered mark's identification of goods and services to support their particular view of the scope of the registered rights at issue-and courts sometimes treat the identification as relevant, though not binding, on the question.

• Drawing: The applicant must submit a drawing of the trademark. As of 2003, if the mark consists of colors, the drawing must as well. For word marks, a typed representation of the mark is sufficient. For nonvisual marks, such as sound or scent marks, the applicant need not submit a drawing. The PTO relies instead on the applicant's description of the mark given elsewhere in the application and on the applicant's specimen of use. TMEP § 807.09.

• Specimen of Use: Applicants filing a "1(a)" use-based application must submit one specimen of use of the mark in commerce for each international class in which the applicant seeks registration. This specimen typically takes the form of digital photographs of the mark attached to goods or .pdf images of materials promoting services. Applicants filing a "1(b)" intent-to-use application need not (because they very likely cannot) submit a specimen of use with their application, but must do so instead when they file their Statement of Use.

For applications filed under Lanham Act § 1 or § 44, the PTO will grant a filing date to the application according to the date on which all of the following "minimum requirements" are received at the PTO: (1) name of the applicant, ( 2 As of August 3, 2019, foreign-domiciled entities must file their applications through a U.S.-licensed attorney. U.S-domiciled entities may continue to file their applications without an attorney-though, as discussed in Comment 2 at the end of this section, applications filed by specialist trademark attorneys tend to do significantly better.

Over 99% of trademark applications are filed electronically at the PTO. Paper applications may be filed only in limited circumstances and incur significantly higher filing fees. See TMEP § 301.01.

Typically within about eight to twelve months from the application's filing date, an examining attorney will engage in a substantive examination of the application to determine if there are any absolute or relative grounds for refusal. See Lanham Act § 12(a), 15 U.S.C.

§ 1062(a). With respect to relative grounds for refusal, the examining attorney will search the PTO's X-Search and Trademark Search databases (the latter of which is available online at no charge) to determine if any marks have already been filed that may be confusingly similar with the applied-for mark under Lanham Act §2(d), 15 U.S.C. § 1052(d). 21 Estimates based on data from the mid-2010s indicate that almost half of applications receive such § 2(d) refusals. 22 If the examining attorney finds no grounds for refusal, the attorney will approve the mark for publication in the PTO's Official Gazette. One study suggests that only about 15% of use-based applications and 21% of ITU applications proceed directly from application to approval for publication without any grounds for refusal being identified by an examining attorney. 23If the examining attorney finds grounds for refusal, the attorney will send an "office action" to the applicant to explain the grounds for refusal. Effective December 3, 2022, the applicant has a maximum of three months to respond (applicants previously had six months) and, if appropriate, to amend the application to satisfy the examiner's objections. 24 If the applicant fails to respond, the application will be deemed abandoned. See Lanham Act § 12(b), 15 U.S.C. § 1062(b). Correspondence between the office and the applicant will continue until either (1) the examining attorney approves the application for publication, (2) the examining attorney issues a final office action refusing registration of the mark, or (3) the applicant abandons the application. See id. The applicant may appeal the final office action to the Trademark Trial and Appeal Board.

Marks approved for publication are published in the PTO's Official Gazette (OG), a weekly online publication. See Lanham Act § 12(a), 15 U.S.C. § 1062(a). Publication in the OG gives notice to the public that the PTO plans to register the mark. For a 30-day period following the date of the mark's publication in the OG, any party that believes it would be harmed by the registration, including as a result of dilution, may file an opposition to the registration of the mark. See Lanham Act § 13, 15 U.S.C. § 1063.

d. Opposition and the Trademark Trial and Appeal Board

Oppositions are rare. 10% were opposed and only 0.90% were opposed successfully"). Those few oppositions that are filed are heard by the Trademark Trial and Appeal Board. The TTAB is an administrative board within the PTO that acts in the capacity of a trial court of first instance in opposition, cancellation, interference, and concurrent use proceedings and in the capacity of an appellate body in ex parte appeals from final office actions. Created in 1958, the TTAB consists of the Director of the PTO, the Commissioner for Patents, the Commissioner for Trademarks, and Administrative Judges appointed by the Secretary of Commerce in consultation with the Director. The Director and Commissioners rarely sit on TTAB panels. At this writing, there are 24 Administrative Judges on the TTAB, all of whom are highly experienced in trademark matters. The TTAB sits in panels of three judges. The Trademark Trial and Appeal Board Manual of Procedure, available online, details all aspects of TTAB procedure. Proceedings before the TTAB are conducted in writing (though counsel may request oral argument). There is no live testimony, though transcribed testimony, taken under oath and subject to cross-examination, may be submitted. Note that only those TTAB opinions that are explicitly labeled as "citable as precedent" should be cited to the TTAB in subsequent proceedings.

Under the terms of Lanham Act § 21, 15 U.S.C. § 1071, TTAB judgments may be appealed either to a federal district court or to the Court of Appeals for the Federal Circuit. There are two advantages of the district court route. First, the record in the case may be supplemented with additional evidence. Second, the district court's rulings may be appealed to its reviewing appellate court, thus making it possible to avoid the Federal Circuit; for example, if the applicant appeals the PTO's decision to the Eastern District of Virginia, Fourth Circuit case law would control. 25The TTAB and Issue Preclusion. TTAB proceedings may gain substantially increased importance in certain situations in light of the Supreme Court opinion in B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293Ct. (2015)). In 1993, B & B registered the mark SEALTIGHT in connection with metal fasteners for use in the aerospace industry. In 1996, Hargis sought to register the mark SEALTITE in connection with metal fasteners for use in building construction. B & B opposed on the ground that Hargis's mark was confusingly similar to B & B's mark. The TTAB found a likelihood of confusion and refused registration. Hargis did not appeal this decision. While the TTAB opposition proceeding was pending, B & B sued Hargis in federal district court, arguing that Hargis's mark infringed B & B's. Before the district court could rule, the TTAB announced its finding of a likelihood of confusion. B & B argued to the district court that the TTAB's decision should be given preclusive effect. The district court disagreed and the jury ultimately found no likelihood of confusion. The Eighth Circuit affirmed.

The Supreme Court reversed and remanded. It held: "So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply." Id. at 1310. For an example of the effect of B & B outside of the likelihood of confusion context, see Ashe v. PNC Financial Services Group, Inc., 165 F. Supp. 3d 357 (D. Md. 2015) (holding that TTAB's prior determination that defendant had priority of use of mark SPENDOLOGY collaterally estopped plaintiff from asserting that defendant's use infringed on plaintiff's identical mark).

Standing to Oppose. Lanham Act § 13, 15 U.S.C. § 1063, states that "[a]ny person who believes that he would be damaged by the registration of a mark upon the principal register" may file an opposition. In Ritchie v. Simpson, 170 F.3d 1092 (Fed. Cir. 1999), the Federal Circuit interpreted this language liberally: "an opposer must meet two judicially-created requirements in order to have standing-the opposer must have a 'real interest' in the proceedings and must have a 'reasonable' basis for his belief of damage." Id. at 1095. "In no case has this court ever held that one must have a specific commercial interest, not shared by the general public, in order to have standing as an opposer . . . . The crux of the matter is not how many others share one's belief that one will be damaged by the registration, but whether that belief is reasonable and reflects a real interest in the issue." Id. at 1096-97. In Ritchie, the Federal Circuit held that Mr. Ritchie, who "described himself as a 'family man' who believes that the 'sanctity of marriage requires a husband and wife who love and nurture one another,'" id. at 1097, had standing to oppose O.J. Simpson's application to register the marks O.J. SIMPSON, O.J., and THE JUICE.

However, in Curtin v. United Trademark Holdings Inc., 137 F.4th 1359 (Fed. Cir. 2025), the Federal Circuit held that Professor Rebecca Curtin did not have standing to oppose the registration of RAPUNZEL for dolls. Professor Curtin asserted standing on the basis of her status as a consumer and argued that the asserted mark failed to function as a mark, was generic, and would deny to consumers the benefit of healthy competition in the market for dolls depicting the public domain Rapunzel character. Citing Lexmark Int'l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014), the Federal Circuit found, in essence, that standing under the opposition provisions of the Lanham Act is available only to those with "commercial interests" that could be damaged by the registration, such as competitors in the market for dolls. See Curtin, 137 F.4th at 1367 ("Under the Lexmark framework, a plaintiff may oppose registration of a mark when (1) her interests are within the zone of interests protected by the statute and (2) she has a reasonable belief in damage that would be proximately caused by registration of the mark in violation of the opposition statute."). Curtin, following Lexmark, represents a repudiation of Ritchie and a substantial narrowing of standing under the Lanham Act (even if one of the leading justifications for trademark law is supposedly the protection of consumers).

With respect to use-based applications, if no opposition is filed within thirty days or if the opposition fails, then the PTO issues a certificate of registration and notice of the registration is published in the Official Gazette.

With respect to intent-to-use applications that are either unopposed or unsuccessfully opposed, the PTO issues a Notice of Allowance. The applicant then has six months (extendable for a total of three years) to file a Statement of Use showing that it is making use of the mark in commerce. See Lanham Act § 2(d), 15 U.S.C. § 1052(d); TMEP § 1106. Upon acceptance of the Statement of Use, the PTO issues a certificate of registration and notice of the registration is published in the Official Gazette.

Post-Registration Maintenance of the Registration

The term of registration is ten years. Lanham Act § 8, 15 U.S.C. § 1058. The registration may be renewed indefinitely provided that the registrant complies with the requirements of Lanham Act § § 8 & 9, 15 U.S.C. § § 1058 & 1059. Section 8 requires the registrant to file an Affidavit of Continuing Use "(1) on or after the fifth anniversary and no later than the sixth anniversary of the date of registration . . . and (2) within the year before the end of every tenyear period after the date of registration." TMEP § 1604.04. Thus, the registrant must file a "Section 8 affidavit" in the sixth year of the registration, the tenth year, the twentieth year, the thirtieth year, etc. Section 8 adds a six-month grace period to this deadline. See Lanham Act § 8(c), 15 U.S.C. § 1058(c). See also TMEP § 1604.04 ("Example: For a registration issued on Nov. 1, 2005, a six-year affidavit or declaration may be filed as early as Nov. 1, 2010, and may be filed as late as Nov. 1, 2011, before entering the six-month grace period.").

Section 9 requires the registrant to file a Renewal Application every tenth year following the date of registration. Registrants typically file the Section 8 Affidavit of Continuing Use and the Section 9 Renewal Application as a single document. Section 9 also adds a sixth-month grace period. See Lanham Act § 9(a), 15 U.S.C. § 1059(a). See also TMEP § 1606.03 ("Example: For a registration issued on November 5, 1998, an application for renewal may be filed as early as November 5, 2007, and as late as November 5, 2008, before entering the six-month grace period.").

Registrants are also strongly advised to file an Affidavit of Incontestability under Lanham Act § 15 (15 U.S.C. § 1065) within one year after any five-year period of continuous use of the mark. In practice, sophisticated trademark owners typically combine their first § 8 Affidavit of Continuing Use (filed in the sixth year following registration) with a § 15 Affidavit of Incontestability. A § 15 affidavit may be filed at any time during the duration of the registration of the mark, however, provided that it is filed within the year following five years' continuous use of the mark. See TMEP § 1605.03.

Lanham Act § 29, 15 U.S.C. § 1111, provides: Notwithstanding the provisions of section 22 hereof {15 USC § 1072}, a registrant of a mark registered in the Patent and Trademark Office, may give notice that his mark is registered by displaying with the mark the words "Registered in U.S. Patent and Trademark Office" or "Reg. U.S. Pat. & Tm. Off." or the letter R enclosed within a circle, thus ®; and in any suit for infringement under this Act by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the provisions of this Act unless the defendant had actual notice of the registration.

Id. The latter part of § 29 is generally understood to establish that in situations where the registrant has not provided statutory notice of the registration of its mark, that registrant may only win profits and damages from a period after the defendant had actual notice of the registration status of the mark. See MCCARTHY § 19:144. 26The ® or "r in a circle" designation indicates that the mark is registered on either the Principal or Supplemental Register. A "TM" or "SM" designation indicates that the mark is unregistered, but that the owner is claiming property rights in the mark. Firms may sometimes use the "TM" or "SM" designations in an attempt to educate consumers that the mark at issue is a designation of source rather than simply a description, decoration, or feature of the product.

Lanham Act § 14, 15 U.S.C. § 1064, addresses the circumstances under which a third party may petition to cancel a registration. It provides, in essence, that for the five year period following the date of registration, a third party may petition to cancel the registration for any

The more problematic question is whether a registrant who proves infringement under both § 32(1) (registered mark) and § 43(a) (unregistered mark) can avoid the notice limitation imposed by § 29 by claiming all of its damages fall under the § 43(a) count. A strict reading of the statutory language of § 29 would, in the author's opinion, lead to the conclusion that such a registrant cannot avoid the § 29 damage limitation by using § 43(a). Section 29 does not distinguish between the kind of statutory infringement that a registrant proves. Rather, § 29 simply states that no profits and damages shall be recovered "under the provisions of this Act" unless statutory or actual notice was given.

reason. See Lanham Act § 14(1), 15 U.S.C. § 1064 (1). After five years have passed from the date of registration, a third party may petition to cancel a registration for only a limited number of reasons expressly enumerated in Lanham Act § 14(3), 15 U.S.C. § 1064 (3). Here is the relevant statutory language:

A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905:

(1) Within five years from the date of the registration of the mark under this chapter.

Lanham Act § 37. Lanham Act § 37, 15 U.S.C. § 1119, provides federal courts with broad powers over registrations:

In any action involving a registered mark the court may determine the right to registration, order the cancelation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action. Decrees and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Patent and Trademark Office, and shall be controlled thereby.

Id. The Fourth Circuit has determined, however, that § 37 does not allow federal courts to override the time limits built in to § 14. See Shakespeare Co. v. Silstar Corp. of Am., 9 F.3d 1091 (4th Cir. 1993).

The United States has been a member of the "Madrid System" for the international registration of trademarks since November 2, 2003, which was the effective date of the Madrid Protocol Implementation Act ("MPIA"), 116 Stat. 1758, 1913 Pub. L. 107-273. 28 The Madrid System provides an efficient means by which trademark applicants or registrants may apply to register their marks at multiple foreign trademark offices through a single application filed at (and a single fee paid to) their home trademark office. For example, a trademark applicant or registrant at the PTO may file a single application and pay a single fee to register its trademark at any or all of the 131 countriesfoot_17 within the Madrid Union; the fee increases with the number of countries. The PTO will forward any such application to the International Bureau administering the Madrid System (based in Geneva at the World Intellectual Property Organization ("WIPO")), which will then forward the application in turn to all countries selected by the applicant. This can result in significant cost savings for the applicant because it need not hire foreign local counsel to prosecute its application unless the local trademark office rejects or otherwise demands some response relating to the application. Furthermore, the Madrid registrant need only file a single form and pay a single fee to renew its mark across multiple foreign countries.

For U.S. applicants, there are certain drawbacks to using Madrid. First, many foreign trademark offices permit relatively broad definitions of the goods or services with which the mark will be used. The PTO, however, does not. As a result, the U.S. applicant must file a narrow definition of the applied-for mark's goods in order to satisfy the PTO but will then be required to use that definition when it seeks to extend its protection abroad. For this reason, some U.S. applicants seek to file in foreign countries locally rather than through Madrid.

A second disadvantage of Madrid is that all international trademark registrations filed through Madrid remain dependent on the applicant's home (or "basic") registration for five years from the date of that home registration. If the home registration fails during that five year period (as a result of a "central attack" from a third party opposer or for any other reason), then all international registrations will fail as well. However, within three months from the date of the cancellation of its home registration, the Madrid registrant may file to "transform" its international registrations into local registrations.

Trademark registration rates at the PTO. The PTO's release of data concerning the registration process has made it possible to estimate the overall trademark registration rate at the PTO, i.e., the proportion of trademark applications that result in registration. For usebased applications filed at the PTO from 1981 through 2007, the overall registration rate was .75. See Barton Beebe, Is the Trademark Office a Rubber Stamp?, 48 HOUSTON L. REV. 751, 762 (2011). For ITU-based applications filed from November 16, 1989 through 2007, the registration rate was .37. Id. What might explain this significant difference in registration rates between use-based and ITU-based applications? Consider the publication rates of such applications, i.e., the proportion of applications that the PTO approved for publication. For other major economies (such as the U.K. and Japan), into the Madrid System. Both the Agreement and the Protocol are filing treaties rather than substantive harmonization treaties. 2013). They note in particular that for the period 1984 through 2012, the publication rate for applications filed by attorneys was 82% while the publication rate for applications filed by non-attorneys was 60%. Id. at 606. They also reported significant differences in the publication rates of applications depending on the experience of the attorney filing the application. Id. at 610. See the article for a consideration of factors that may explain these differences.

Trademark registrations as an index of innovation?

Scholarship has focused on the question of whether trademark registration data may be used to measure the rate of "nontechnological" innovation, specifically, innovation in the service and marketing sectors (sectors about which patent data often has very little to say). Under the law of forty-five states, registrations provide registrants with no significant, enforceable substantive rights beyond those awarded under state common law or under the federal statute protecting unregistered common law trademarks. In five states certain substantive rights can accrue to an owner through state registration, although those rights are limited by competing rights held by certain common law owners or federal registrants.

Id. at 598-99. Lockridge observes that in five states (Massachusetts, Minnesota, Rhode Island, Texas, and Washington), state law provides that a state trademark registration will create constructive notice of the registrant's claim of ownership as of the date of state registration, which impairs the ability of a common law adopter of the mark to claim good faith adoption of the mark after that date (or good faith geographic expansion within the state of its prior continuing use). Id. at 624. This benefit arises only under state law, however, and has no bearing on claims brought under federal law. Id. In the face of a subsequent third party federal registration, a state trademark registrant is typically treated no better than a § 7(c) prior "common law" user.

McCarthy proposes one way in which state registration may provide a slight advantage in federal litigation: State registrations in most states have little legal significance other than serving as proof that on a certain date the registrant filed a claim that it was using a certain mark. This gives a slight procedural advantage of proving priority compared to merely relying upon a trademark owner's inherent common-law right of priority as proven by business records.

MCCARTHY at § 22:1 (footnote omitted). Note, however, that before the TTAB, state trademark registrations are not competent evidence of use by the state registrant of the mark. McKenna argues that "the persistent sense that federal and state law regulate concurrently has masked a significant federalization of trademark and unfair competition law over the last forty to fifty years." Id. at 289. McKenna goes so far as to call for the explicit federal preemption of state trademark and unfair competition law. Id. at 298.

E. The Geographic Extent of Trademark Rights

We consider in this section the geographical extent of trademark rights within the territorial borders of the United States. Under the common law, priority of usage has long been the basis of the geographic extent of a claimant's rights; first in time is first in right. The Lanham Act provides registered marks with the benefit of very important exceptions to this common law principle. We begin first with the geographic extent of rights in unregistered, common law marks. We then turn to the geographic extent of rights in federally registered marks.

The Geographic Extent of Rights in Unregistered Marks

A classic hypothetical in American trademark law involves the question of whether the owner of an unregistered mark used in, say, Anchorage, Alaska, can assert exclusive rights in that mark beyond the borders of Anchorage. Can the proprietor of the unregistered mark ARCTIC COFFEE for a caféin Anchorage, Alaska prevent someone in Miami, Florida from later opening a café under the same name? And should it make a difference if the proprietor of the Miami coffee shop knew of the existence of the ARCTIC COFFEE café in Anchorage when she opened her café in Miami?

In the cases Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916) (commonly known as the Tea Rose case), and United Drug Co. v. Theodore Rectanus, 248 U.S. 90 (1918), the Supreme Court established the so-called "Tea Rose-Rectanus rule," which holds that:

(1) The territorial scope of an unregistered mark is limited to the territory in which the mark is known and recognized by relevant consumers in that territory.

(2) The senior user of an unregistered mark cannot stop the use of a territorially remote good faith junior user who was first to use the mark in that remote territory. MCCARTHY § 26.2. The result of the Tea Rose-Rectanus rule is that, for unregistered marks, the first person to adopt the mark in the United States and subsequent good faith remote junior users may end up coexisting in the national marketplace, with each entity claiming exclusive rights in the mark in the geographic area in which each was the first to use the mark. Thus, the Anchorage and Miami cafés both using the mark ARCTIC COFFEE may coexist, provided that the Miami café adopted its mark in good faith (the standard for which we will consider below). Furthermore, barring federal registration by either the Anchorage or the Miami café, the two firms' exclusive rights will expand across the country only in those areas in which each firm is the first to use the mark in good faith.

The case below, Nat'l Ass'n for Healthcare Commc'ns, Inc. v. Cent. Arkansas Area Agency on Aging, Inc., 257 F.3d 732, 734 (8th Cir. 2001), offers a relatively straightforward example of the application of the Tea Rose-Rectanus doctrine.

a. The Tea Rose-Rectanus Doctrine Applied

The six counties where Central Arkansas Area Agency on Aging, Inc. used its mark.

National Association for Healthcare Communications, Inc. v. Central Arkansas Area Agency on Aging, Inc. 257 F.3d 732 (8th Cir. 2001)

[1] This is an action under the Lanham Act and state law to determine which party has the superior right to use the service mark "CareLink" in Arkansas. The National Association for Healthcare Communications, Inc. ("Healthcom") was the first to use the mark nationally. It has a federal service mark registration pending but must rely in this case on its common law trademark rights as enforced under the Lanham Act. See 15 U.S.C. § 1125(a). The Central Arkansas Area Agency on Aging, Inc. ("CA") was the first to use the mark in six counties in central Arkansas and has registered its mark under the Arkansas trademark statutes. See Ark.Code Ann. Tit. 4, Ch. 71 (Michie Supp. 1999). The district court held that CA as first user prevailed in its six-county trade area and that CA's state registration entitled it to statewide relief. Accordingly, the court enjoined Healthcom from using the CareLink mark anywhere in Arkansas. National Ass'n for Healthcare Commun., Inc. v. Central Ark. Area Agency on Aging, Inc., 119 F.Supp.2d 884 (E.D.Ark. 2000). Healthcom appeals. Agreeing that CA is entitled to injunctive relief, but limited to the six Arkansas counties where it has used the mark, we remand to the district court with instructions to modify the injunction.

[2] The Parties' Use of the CareLink Mark. Healthcom is an Illinois corporation that provides remote electronic monitoring devices and emergency response services for at-home clients in twenty-five States, including Arkansas. Healthcom solicits local hospitals and home health care agencies to become members of Healthcom's National Association for Emergency Response, Inc. Each member's subscribers (individual clients or patients) are then offered a variety of CareLink at-home emergency response services. A CareLink program typically consists of monitoring equipment, usually leased by Healthcom to the member health care provider or directly to the subscriber, plus a round-the-clock support center operated by Healthcom, which responds to the subscriber's emergency calls in a prearranged fashion and may monitor medical equipment in the subscriber's home or monitor the whereabouts of an at-risk subscriber, such as one suffering from Alzheimer's disease. Each provider-member markets CareLink programs and equipment to its patients, bills the patients, and pays Healthcom a monthly fee for each patient using CareLink services.

[3] CA is a private, nonprofit Arkansas corporation organized in 1979 to provide a broad range of support services to elderly and disabled persons in a six-county region in central Arkansas. CA's mission is to provide cost-effective, community-based alternatives to nursing home care. CA has 750 employees and 300 volunteers who assist some 10,000 elderly persons in the region. CA has never provided personal emergency response services, but it has occasionally paid for such services being provided to CA clients. In January 1995, CA adopted the trade name "CareLink" to use in lieu of its corporate name, which had proved awkward and hard to remember, and which created the mis-impression that CA is a government agency.

[4] Facts relating to first usage. Healthcom began marketing emergency response services under the CareLink service mark in 1991 or early 1992. From 1992 to 1995, Healthcom spent an estimated $50,000 attempting to sell its services in Arkansas. Despite these efforts, during this period Healthcom made only one $385 sale in Arkansas, to an end user who stopped using its CareLink service in April 1994. Healthcom had no Arkansas customers from April 1994 to September 1995, when it entered into a contract with North Arkansas Regional Medical Center in Harrison. By July 1999, Healthcom had contracts with seven Arkansas health care providers and served 350 individual subscribers. Healthcom estimated that its total Arkansas revenues in 1999 would be just over $82,000. Healthcom has never had a customer for its CareLink services located within the six-county region served by CA. Healthcom applied for federal trademark registration on May 4, 1999, and its application is pending.

[5] CA adopted the CareLink trade name and logo in early 1995 and has prominently displayed the logo on stationery, business cards, client information materials, and other publicity materials. CA registered its CareLink mark with the Arkansas Secretary of State on March 23, 1995, and has used the mark in promoting all of its services, except hospice care. CA's annual revenues grew from $5,000,000 to $12,000,000 from early 1995 to mid-1999. Although CA derives most of its revenues from government grants, in 1999 it received approximately $138,000 in private donations and an estimated $250,000 from clients able to pay for its services. All of CA's clients reside in its six-county region, but its activities are publicized beyond central Arkansas through news coverage, telephone listings, advertisements, and a monthly column in an Arkansas newspaper for the elderly.

[6] CA did not know of Healthcom's prior usage when it adopted the CareLink name and logo and received a state registration in early 1995. When CA learned that the North Arkansas Regional Medical Center was using Healthcom's CareLink mark for emergency response services in northern Arkansas, CA sent a cease-and-desist letter to that provider. The parties were unable to resolve the resulting dispute. Healthcom then commenced this action, alleging common law trademark infringement and unfair competition in violation of the Lanham Act, 15 U.S.C. § 1125(a), and seeking an injunction barring CA from using the mark and cancellation of CA's state registration. CA counterclaimed, alleging unfair competition under the Lanham Act and trademark infringement under Ark.Code Ann. § 4-71-212, and seeking an injunction prohibiting Healthcom from using its CareLink mark in Arkansas or, alternatively, in CA's six-county region.

[7] Deciding the case on cross motions for summary judgment, the district court dismissed Healthcom's claims because its use of the CareLink mark in Arkansas prior to CA's state registration was de minimis. The court granted CA a permanent injunction prohibiting Healthcom from using the mark anywhere in Arkansas because CA's use of the mark has been substantial, because a statewide injunction is necessary "to prevent confusion among consumers and to prevent Healthcom from passing off its services as those of [CA]," and because CA's state registration entitles it to a statewide injunction. Healthcom appeals, arguing that its common law trademark is entitled to priority because it first used the mark in Arkansas. Alternatively, Healthcare argues the district court abused its discretion in granting CA an overly broad injunction.

[8] Nearly a century ago, the Supreme Court established what is now called the Tea Rose/Rectanus doctrine-the first user of a common law trademark may not oust a later user's good faith use of an infringing mark in a market where the first user's products or services are not sold. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 100-01 (1918); Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 415 (1916). The rationale is a core principle of trademark law: the owner of a mark may not "monopolize markets that his trade has never reached and where the mark signifies not his goods but those of another." Hanover Star Milling, 240 U.S. at 416. That essential principle applies even when the first user has federally registered its mark under the Lanham Act, with one important modification: the owner of a registered mark has the right to expand its use into a new market unless an infringing user had penetrated that market prior to registration. See Natural Footwear Ltd. v. Hart, Schaffner & Marx, 760 F.2d 1383, 1395 (3d Cir.); 15 U.S.C. § 1072.

[9] In this case we must apply the Tea Rose/Rectanus doctrine in resolving two distinct inquiries. First, we must determine whether Healthcom, as the first user of a CareLink common law mark elsewhere in the country, is entitled by reason of its own market penetration to oust CA from any area in Arkansas. Second, to the extent Healthcom failed to prove first use in Arkansas, we must determine whether CA, as owner of a state-registered mark used only in six counties, is entitled to statewide injunctive relief against Healthcom's present use of its mark.

[10] It is undisputed that, in early 1995, CA adopted the CareLink mark in good faith, without knowledge of Healthcom's prior use. To be entitled to injunctive relief against CA's subsequent good faith use, Healthcom must prove that its prior use of the mark penetrated the geographic market in question. In determining whether Healthcom achieved the necessary market penetration, we apply the factors identified in our often-cited Sweetarts cases: [Healthcom's] dollar value of sales at the time [CA] entered the market, number of customers compared to the population of the state, relative and potential growth of sales, and length of time since significant sales. Though the market penetration need not be large to entitle [Healthcom] to protection, it must be significant enough to pose the real likelihood of confusion among the consumers in that area. Sweetarts v. Sunline, Inc., 380 F.2d 923, 929 (8th Cir. 1967); Sweetarts v. Sunline, Inc., 436 F.2d 705, 708 (8th Cir. 1971) (citation omitted). Where the first user's activities in a remote area are "so small, sporadic, and inconsequential" that its market penetration is de minimis, the first user is not entitled to protection against a later user's good faith adoption of the mark in that area. Sweetarts, 380 F.2d at 929.

[11] Healthcom argues that it penetrated the Arkansas market through its one sale to an end user in 1992, its seven provider-member contracts and 350 subscribers since the fall of 1995, and its continuous advertising and marketing efforts beginning in 1992. Healthcom errs in assuming without proof that the entire State of Arkansas is a single geographic market for these purposes. CA adopted its CareLink mark for use in six counties in central Arkansas, not the entire State. Healthcom has never made a sale in that area, nor has it even attempted to prove that CA's use of the mark in its region is causing a likelihood of confusion elsewhere in the State. For this reason alone, Healthcom has not penetrated CA's six-county trade area, and the district court properly denied Healthcom injunctive relief against CA's use in that area.

[12] This leaves the question whether Healthcom is entitled to injunctive relief as a prior user with market penetration in any other part of Arkansas. We agree with the district court that Healthcom's one $385 sale long before CA's adoption of its mark was de minimis market penetration. That leaves Healthcom's reliance on later sales and continuous advertising. CA argues that sales in Arkansas after CA began using the mark are irrelevant, and that Healthcom's prior advertising may not be used to satisfy the Sweetarts market penetration test. Those are strong arguments. The issue is whether they warrant summary judgment.

[13] Sweetarts expressly recognized that the market penetration issue is focused on the time when the later user entered the market. However, subsequent sales by the first user may establish a trend of increased sales justifying a finding of market penetration. See Natural Footwear, 760 F.2d at 1401. Likewise, while "advertising alone is not sufficient to satisfy the significant market penetration test of Sweetarts," Flavor Corp. of Am. v. Kemin Indus., Inc., 493 F.2d 275, 284 (8th Cir. 1974), we are not prepared to say as a matter of law that a first user's highly focused local advertising, followed by initial sales shortly after a later user enters the market, may never satisfy the Sweetarts test. Compare Natural Footwear, 760 F.2d at 1402-03; Nutri/System, Inc. v. Con-Stan Indus., Inc., 809 F.2d 601, 604 (9th Cir. 1987). Nevertheless, we need not decide whether CA is entitled to summary judgment on the market penetration issue statewide because Healthcom presented no evidence that CA is presently likely to enter areas of Arkansas beyond its six-county region, and no evidence that any customers or potential customers of Healthcom are actually confused, or likely to be confused, by CA's use of its CareLink mark in serving a six-county region where Healthcom does no business. In these circumstances, the district court properly dismissed all of Healthcom's claims for relief. See generally Gaston's White River Resort v. Rush, 701 F.Supp. 1431, 1435 (W.D.Ark. 1988).

[14] Having concluded that Healthcom is not entitled to injunctive relief, we turn to CA's counterclaim for injunctive relief and the district court's grant of a statewide injunction. As we have explained, CA has superior common law rights in its six-county region, and it is a state-registered user of the CareLink mark. Therefore, under both the Lanham Act and the Arkansas trademark statute, CA is entitled to an injunction against an infringing use that is likely to cause confusion as to origin. See 15 U.S.C. § 1125(a)(1)(A); Ark.Code Ann. § 4-71-212(1). . . . . . . .

[15] In summary, the absence of concrete evidence of likelihood of confusion outside of CA's six-county region makes it improvident to grant a statewide injunction on this record. Healthcom is now enjoined from using its CareLink mark in CA's trade area. If CA never expands beyond that area, this injunction may be all the judicial action that is required. If CA does decide to expand, its statewide registration puts Healthcom at risk of being ousted. But any future prayer by CA for a broader injunction may raise issues that would be better resolved on a fuller fact record, such as whether Healthcom was the first user in any local market; whether the CareLink mark is descriptive and, if so, whether CA's mark has become incontestable or has acquired secondary meaning; precisely what services CA claims its registration covers; and whether there is likelihood of confusion between users of those services and users of Healthcom's emergency response services. . . . Additional issues would be raised if Healthcom's mark is granted federal registration. See Spartan Food Sys., Inc. v. HFS Corp., 813 F.2d 1279, 1284 (4th Cir. 1987); Burger King of Fla., Inc. v. Hoots, 403 F.2d 904, 906-07 (7th Cir. 1968).

[16] We affirm the dismissal of Healthcom's claims and the grant of a permanent injunction barring Healthcom's use of its CareLink mark in CA's six-county trade area. We reverse the grant of a statewide injunction and remand to the district court for an appropriate modification of its Judgment dated January 31, 2000.

1. The geographic scope of rights in unregistered descriptive marks. If the senior user's unregistered mark is a non-inherently distinctive mark, then the geographic scope of the senior's rights are limited to the area in which the mark possesses secondary meaning. A junior user will be enjoined from using the mark in areas in which the senior user has already established secondary meaning. See, e.g., Katz Drug Co. v. Katz, 188 F.2d 696 (8th Cir. 1951). More generally, competitors using unregistered confusingly-similar descriptive marks may end up in a "race to secondary meaning," MCCARTHY § 26:25, in which each competitor seeks to be the first to establish secondary meaning-and thus exclusive rights-in the descriptive term in any particular area where the competitors are competing.

2. What about internet use of the mark? Does the commercial use of a mark on an internet website accessible anywhere in the country establish national geographic common law rights for the mark? Courts have reasoned that common law rights based only on internet use should extend geographically only so far as the mark owner can show actual market penetration. The owner can do so through evidence consisting of the internet protocol addresses of website visitors, the geographic location of online buyers of goods or services bearing the mark, and other evidence that the website is not merely accessible, but has been accessed by consumers in any geographic areas at issue. See, e.g., Optimal Pets, Inc. v. Nutri-Vet, LLC, 877 F. Supp. 2d 953, 962 (C.D. Cal. 2012) ("In considering the adequacy of {the plaintiff's} proof of sufficient market penetration, evidence regarding internet sales and internet advertising will be considered together with the evidence of sales and advertising in geographic areas. Thus, a sale to a customer through the internet will be considered a sale in the geographical area in which the customer is located."); id. at 964 (granting judgment as a matter of law to defendant on ground that "[t]here could be no reasonable finding that [the plaintiff] has proven legally sufficient market penetration to establish a common law trademark as to the entire United States or any geographical area").

Tacking. Can a trademark owner modify the mark over time without loss of priority? If a newly modified mark continues to create the "same, continuing commercial impression" as the previous mark (be it registered or unregistered) such that "consumers generally would regard them as essentially the same," then the mark owner may claim the priority date of the previous mark. Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1048 (9th Cir. 1999). In such a situation, the priority date of the previous mark is "tacked" on to the new mark. The standard for tacking is "exceedingly strict." Id. See also Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 760 (9th Cir. 2006) (holding that the plaintiff could not tack earlier use of QUIKSILVER ROXY onto later use of ROXY because the marks did not create the same continuing commercial impression). In Hana Financial, Inc. v. Hana Bank, 135 S. Ct. 907 (2015), the Supreme Court held that the question of whether an earlier mark may be tacked on to a later mark is an issue of fact to be determined by the jury.

b. The Good Faith Standard in the Tea Rose-Rectanus Doctrine

When a mark is being used on an unregistered basis by a common law senior user, what constitutes good faith adoption of the same mark (for the same or confusingly-similar goods) by a junior user? All courts agree that if, as in the Central Arkansas case above, the junior user of an unregistered mark had no knowledge of the senior user's use at the time that the junior user adopted its mark, then the junior user adopted its mark in good faith. But what if the junior user did have knowledge of the senior user's use? As discussed below in Stone Creek, Inc. v. Omnia Italian Design, Inc., 875 F.3d 426 (9th Cir. 2017), the circuits are split on this question. The district court found no likelihood of confusion largely on the basis that the parties operated in geographically separate marketing channels. Reversing, the Ninth Circuit found a likelihood of confusion. It then turned to the issue of good faith under the Tea Rose-Rectanus doctrine.

Note that, in essence, Omnia was an "intermediate junior user" of the mark-i.e., it adopted the mark at a time intermediate between Stone Creek's first use of the mark and its eventual application to register the mark. As we will discuss further in the next section, Lanham Act § 33(b)(5), 15 U.S.C. § 1115(b) (5), allows such intermediate junior users to continue to use their mark after the senior user has registered it, but only if the intermediate junior user adopted the mark "without knowledge of the registrant's prior use." Because Omnia clearly had knowledge of Stone Creek's prior unregistered use, it could not take advantage of § 33(b) (5) and instead sought to retreat back to the residual common law Tea Rose-Rectanus doctrine (through Lanham Act § 33(a), 15 U.S.C. § 1115(a)). This forced the Ninth Circuit to decide if the Tea Rose-Rectanus doctrine applied only to those remote junior users who lacked knowledge of the senior user's use.}

[1] Our determination of a likelihood of confusion with respect to the STONE CREEK mark does not end the infringement analysis. The Tea Rose-Rectanus doctrine is an affirmative defense separate and apart from the underlying infringement claim. 5 McCarthy, supra, § 26:4. Omnia asserts that its use of Stone Creek's mark is protected under that doctrine and argues that we may affirm the district court's judgment of no liability on this alternative basis.

[2] The Tea Rose-Rectanus doctrine has its roots in the common law: it is named for a pair of Supreme Court cases, Hanover Star Milling Co. v. Metcalf, 240 403 (1916) ("Tea Rose"), and United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). The central proposition underlying the two cases is that common-law trademark rights extend only to the territory where a is known and recognized, so a later user may sometimes acquire rights in pockets geographically remote from the first user's territory. The question we address is whether Omnia acquired common-law rights in the Midwest under the Tea Rose-Rectanus doctrine.

[3] Omnia's common-law rights, if they exist, are not wiped out merely because Stone Creek later filed a federal registration. Although federal registration presumptively entitles the senior user to nationwide protection, 15 U.S.C. § 1057(b), the Lanham Act preserves legal and equitable defenses that could have been asserted prior to registration, id. § 1115(a). Under this rule, already-established common-law rights are carved out of the registrant's scope of protection. Id. § 1115(b)(5); Johnny Blastoff, Inc. v. L.A. Rams Football Co., 188 F.3d 427, 435 (7th Cir. 1999). In other words, the geographic scope of a senior user's rights in a registered trademark looks like Swiss cheese: it stretches throughout the United States with holes cut out where others acquired common-law rights prior to the registration. Because Omnia began using the mark in 2008, well before Stone Creek's federal registration in 2012, the Tea Rose-Rectanus defense is available to Omnia if it is applicable. [4] To take advantage of the Tea Rose-Rectanus doctrine, the junior user must establish good faith use in a geographically remote area. See Rectanus, 248 U.S. at 100, 39 S.Ct. 48; cf. Grupo Gigante SA De CV v. Dallo & Co., 391 F.3d 1088, 1096 & n.26 (9th Cir. 2004). Like the district court, we limit our discussion to the question of good faith because it is dispositive.

[5] The varying descriptions of good faith in the leading Supreme Court cases have spawned a circuit split, and our circuit has not yet weighed in. See Grupo Gigante, 391 F.3d at 1096 n.26. On one side, some circuits have held that the junior user's knowledge of the senior user's prior use of the mark destroys good faith. See, e.g., Nat'l Ass'n for Healthcare Commc'ns, Inc. v. Cent. Ark. Area Agency on Aging, Inc., 257 F.3d 732, 735 (8th Cir. 2001); Money Store v. Harriscorp Fin., Inc., 689 F.2d 666, 674-75 (7th Cir. 1982). In contrast, other circuits have held that knowledge is a factor informing good faith, but the "focus is on whether the [junior] user had the intent to benefit from the reputation or goodwill of the [senior] user." GTE Corp. v. Williams, 904 F.2d 536, 541 (10th Cir. 1990); see C.P. Interests, Inc. v. Cal. Pools, Inc., 238 F.3d 690, 700 (5th Cir. 2001). We conclude that the better view is that there is no good faith if the junior user had knowledge of the senior user's prior use.

[6] Looking back to the origins of the Tea Rose-Rectanus doctrine informs why knowledge defeats a claim of good faith use. In Tea Rose, the senior user began selling "Tea Rose" flour in approximately 1872; many years later, the junior user began selling "Tea Rose" flour without any knowledge of the senior user's prior use. 240 U.S. at 407-08. At the time that the trademark infringement action was filed, the senior user had made sales in Massachusetts, Ohio, and Pennsylvania, while the junior user's sales had reached Mississippi, Alabama, Georgia, and Florida. Id. at 408-10. Rectanus arose on similar facts: the senior user began selling "Rex" drugs around 1877 and operated in New England, while the junior user selling "Rex" drugs around 1883 and operated in Kentucky, with neither party being aware of the other's use of the "Rex" mark for more than twenty years. 248 U.S. at 94-96. In both cases, the Supreme Court held that the senior user could not enjoin the junior user's use of the same mark because the junior user adopted the mark in good faith and had developed a local reputation in an area where the mark was not recognized as designating the senior user. See id. at 103-04; Tea Rose, 240 U.S. at 415-16.

[7] When describing good faith, the Supreme Court emphasized that the junior user had no awareness of the senior user's use of the mark. The Court in Tea Rose states that the junior user "adopted and used [the trademark] in good faith without knowledge or notice that the name 'Tea Rose' had been adopted or used . . . by anybody else." 240 U.S. at 410. The Court also refers to the situation as one where the two parties "independently" employ the same mark. Id. at 41. And the Court's reasoning concentrates on knowledge:

Under the circumstances that are here presented, to permit the [senior user] to use the mark in Alabama, to the exclusion of the [junior user], would take the trade and good will of the latter company-built up at much expense and without notice of the former's rights-and confer it upon the former, to the complete perversion of the proper theory of trademark rights.

[8] The same focus on notice emerges in Rectanus, which grants protection for an "innocent" junior user who has "hit upon" the same mark and avers that the parties acted "in perfect good faith; neither side having any knowledge or notice of what was being done by the other." 248 U.S. at 96, 103. The Court also relies on a case that says that the defendants there acted in good faith because they "believ [ed] [their] use to be original with them." Richter v. Anchor Remedy Co, 52 F. 455, 455 (C.C.W.D. Pa. 1892), aff'd sub nom. Richter v. Reynolds, 59 F. 577 (3d Cir. 1893). Seventy years later, Justice Brennan stressed that application of the Tea Rose-Rectanus doctrine requires an absence of knowledge. See K Mart Corp. v. Cartier, Inc., 486 U.S. 281, 314 n.8 (1988) (Brennan, J., concurring in part and dissenting in part) ("[A] firm can develop a trademark that is identical to a trademark already in use in a geographically distinct and remote area if the firm is unaware of the identity.").

[9] The Seventh and Eighth Circuits and the Trademark Trial and Appeal Board ("TTAB") agree with this reading. The Seventh Circuit put it explicitly: "A good faith junior user is one who begins using a mark with no knowledge that someone else is already using it." Money Store, 689 F.2d at 674. The court went on to analyze whether the junior user in that case had constructive or actual knowledge of the senior user's use. Id. at 675. The Eighth Circuit follows the same approach, parroting the language from Tea Rose and Rectanus. See Nat'l Ass'n for Healthcare Commc'ns, 257 F.3d at 735 ("adopted the [mark] in good faith, without knowledge of [the] prior use"). And the TTAB, the administrative board charged with deciding certain trademark disputes and appeals, similarly holds that "appropriat[ing] a mark with knowledge that it is actually being used by another" means "that use is not believed to be a good faith use." Woman's World Shops Inc. v. Lane Bryant Inc., 5 U.S.P.Q.2d 1985, 1988 (T.T.A.B. 1988).

[10] The courts that have ruled the other way have latched on to one line in the Tea Rose case which reads:

[W]here two parties are employing the same mark upon goods of the same class, but in separate markets wholly remote the one from the other, the question of prior appropriation is legally insignificant; unless, at least, it appear that the second adopter has selected the mark with some design inimical to the interests of the [senior] user, such as to take the benefit of the reputation of his goods, to forestall the extension of his trade, or the like. 240 U.S. at 415 (emphasis added). But this brief reference to "design inimical" does not override the central focus on knowledge; it is not without significance that "design inimical" does not appear anywhere else in the opinion. The Court in Rectanus repeats the "design inimical" language as a direct quote of the language from the Tea Rose case and mentions offhand that the junior user did not have a "sinister purpose." 248 U.S. at 101. More salient are the various points in the leading opinions that draw a close connection between "good faith" and "knowledge" or "notice." See, e.g., id. at 96 ("in perfect good faith; neither side having any knowledge or notice of what was being done by the other"); id. at 103 ("in good faith, and without notice of any prior use by others, selected and used the 'Rex' mark"); Tea Rose, 240 U.S. at 410 ("trademark was adopted and used [by the junior user] in good faith without knowledge or notice that the name 'Tea Rose' had been adopted or used by the [senior user]"); id. at 419 ("in good faith and without notice of the [senior user's] mark").

[11] Tying good faith to knowledge makes sense in light of the policy underlying the doctrinal framework. As the Supreme Court explained, the Tea Rose-Rectanus doctrine operates to protect a junior user who unwittingly adopted the same mark and invested time and resources into building a business with that mark. Rectanus, 248 U.S. at 103; Tea Rose, 240 U.S. at 419. A junior user like Omnia who has affirmative knowledge of the senior user's mark has not serendipitously chosen the same mark and independently built up its own brand. Instead, a user like Omnia knows that its actions come directly at the expense of the senior user, potentially blocking the senior user from entering into the new market. Viewed in this light, the junior user has acted in bad faith, which "serve[s] as evidence that the [senior] user's mark, at least in reputation, has extended to the new area." Developments in the Law Trade-Marks and Unfair Competition, 68 Harv. L. Rev. 814, 859 (1955); 5 McCarthy, supra, § 26:12.

[12] The knowledge standard also better comports with the Lanham Act. The statutory section preserving the Tea Rose-Rectanus defense for junior users acting pre-registration requires that the junior user's mark "was adopted without knowledge of the registrant's prior use." 15 U.S.C. § 1115(b)(5) (emphasis added). More broadly, one major change effected by the Lanham Act is that securing federal registration affords nationwide rights regardless of where the registrant has used the mark, a result accomplished by a provision that puts wouldbe users on constructive notice. See id. § § 1057(b), 1072; 5 McCarthy, supra, § 26:32. In other words, the Lanham Act displaces the Tea Rose-Rectanus defense by charging later users with knowledge of a mark listed on the federal register. If constructive notice is sufficient to defeat good faith, it follows that actual notice should be enough too.

[13] Once knowledge is accepted as a determinative factor in deciding good faith, the Tea Rose-Rectanus doctrine has no applicability here. The district court found that "[Omnia] was a non-innocent remote user" who "acquired no common law trademark rights in the [Midwest]." That conclusion flows from the parties' agreement that Omnia adopted Stone Creek's mark with knowledge of Stone Creek's previous use. The Tea Rose-Rectanus doctrine provides no shelter to Omnia for infringement of Stone Creek's mark.

{The Ninth Circuit then held, among other things, that Stone Creek must show intentional or willful infringement before disgorgement of Omnia's profits could be awarded. The Ninth Circuit remanded the case back to the district court to determine whether Omnia willfully infringed.}

Is Stone Creek bad policy in the age of internet search? Consider the following oftquoted language from the Supreme Court's Rectanus opinion:

There is no such thing as property in a trade-mark except as a right appurtenant to an established business or trade in connection with which the mark is employed. The law of trade-marks is but a part of the broader law of unfair competition; the right to a particular mark grows out of its use, not its mere adoption; its function is simply to designate the goods as the product of a particular trader and to protect his good will against the sale of another's product as his; and it is not the subject of property except in connection with an existing business. Hanover Milling Co. v. Metcalf, 240 U. S. 403, 412-414.

The owner of a trade-mark may not, like the proprietor of a patented invention, make a negative and merely prohibitive use of it as a monopoly. . . . . It results that the adoption of a trade-mark does not, at least in the absence of some valid legislation enacted for the purpose, project the right of protection in advance of the extension of the trade, or operate as a claim of territorial rights over areas into which it thereafter may be deemed desirable to extend the trade. And the expression, sometimes met with, that a trade-mark right is not limited in its enjoyment by territorial bounds, is true only in the sense that wherever the trade goes, attended by the use of the mark, the right of the trader to be protected against the sale by others of their wares in the place of his wares will be sustained.

United Drug Co. v. Theodore Rectanus, 248 U.S. 90, 97-98 (1918). In effect, under Stone Creek, the senior user of an unregistered mark enjoys exclusive rights in the mark against any other person in the nation who is aware of the senior user's use, even if the senior user has not yet used the mark in that person's particular remote location. Is this outcome consistent with the principles articulated in Rectanus? Imagine you wish to open a cafe in New York City under the service mark ARCTIC COFFEE. You google the term and discover that a cafe in Anchorage, Alaska is already using the mark. You then search the mark on the PTO's Trademark Electronic Search System and learn that the Anchorage cafe has not applied to register the mark. Under Stone Creek, you cannot adopt the mark in good faith, and if the Anchorage cafe eventually expands into New York City, it may assert priority over your use. Is this sound policy?

The Geographic Extent of Rights in Registered Marks

Unless the Lanham Act states otherwise, the common law norms of Tea Rose-Rectanus apply as much to registered marks as they do to unregistered marks. But crucially, the Lanham Act states otherwise extensively, primarily through the operation of Lanham Act § § 7(c), 15, 22, and 33 (15 U.S.C. § § 1057(c), 1065, 1072, & 1115). Indeed, these sections depart so dramatically from the common law norms that it is easy to forget that at least in theory they form merely an overlay on those underlying norms. The statutory sections grant registered marks important privileges in the form of exceptions to the Tea Rose-Rectanus doctrine. We consider these exceptions here.

In what follows, for the sake of explication, we will assume priority conflicts between parties using the identical mark on identical goods or services. But the principles also apply in situations where there is no such "double identity" but there is consumer confusion, that is, in situations where the parties are using confusingly-similar (but non-identical) marks on confusingly-similar (but non-identical) goods or services.

a. Applications Filed on or after November 16, 1989: Constructive Use Priority as of Date of Application

The Trademark Law Revision Act of 1988 (TLRA) created Lanham Act § 7(c), 15 U.S.C. § 1057(c), which applies to all applications filed on or after the November 16, 1989 effective date of the TLRA. 30 Section 7(c) reads as follows: 30 The Lanham Act does not explicitly state that the benefits of § 7(c) should be available only to applications filed on or after the effective date of the TLRA. However, as McCarthy notes, "Lanham Act § 33(b)(5), 15 U.S.C. § 1115(b) (5) distinguishes between the application date creating constructive use on the one hand and the registration date creating constructive notice [under § 22] on the other hand, limiting the later to a case where "the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988." This indicates a legislative intent to restrict the benefits of (c) Application to register mark considered constructive use. Contingent on the registration of a mark on the principal register provided by this Act, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except for a person whose mark has not been abandoned and who, prior to such filing-

(2) has filed an application to register the mark which is pending or has resulted in registration of the mark; or (3) has filed a foreign application to register the mark on the basis of which he or she has acquired a right of priority, and timely files an application under section 44(d), 15 USC § 1126(d), to register the mark which is pending or has resulted in registration of the mark.

Id. Section 7(c) thus confers on the successful registrant nationwide "constructive use" priority in the registered mark as of the date of application, and does so regardless of whether the registrant has in fact made or is in fact making actual nationwide use of the mark. See Humanoids Group v. Rogan, 375 F.3d 301, 305 n.3 (4th Cir. 2004) ("Constructive use establishes a priority date with the same legal effect as the earliest actual use of a trademark at common law." (citation omitted)). Note that until the registration issues, this priority is merely "contingent" nationwide priority. The applicant may not use § 7(c) to enjoin others' conduct until the registration issues, at which time the registrants' constructive use priority is the date of application.

To appreciate the practical significance of § 7(c), imagine the following course of events: Time 1: A files a § 1(b) intent-to-use application for registration of the mark. Time 2: B subsequently begins to make actual use of the mark throughout the U.S. (on goods or services confusingly similar to A's). Under the terms of § 7(c), registration confers on A nationwide priority as of Time 1 even though A did not make actual use of the mark until Time 3. At Time 4, A may enjoin B's use. Meanwhile, even though B was the first to make actual use of the mark, B cannot on that basis enjoin A from making its own actual use and thereby completing the ITU process. application. Of course, this right or privilege is not indefinite; it endures only for the time allotted by the statute. But as long as an ITU applicant's privilege has not expired, a court may not enjoin it from making the use necessary for registration on the grounds that another party has used the mark subsequent to the filing of the ITU application. To permit such an injunction would eviscerate the ITU provisions and defeat their very purpose.").

As the statutory language makes clear, § 7(c) nationwide constructive use priority is subject to certain important limitations. Most significantly, constructive use priority does not apply to any entity that began use of the mark at issue somewhere in the United States prior to the registrant's own use and date of application. For example: Time 1: A begins actual use of the mark in Area A. Time 2: B begins actual use of the mark in Area B (on goods or services confusingly similar to A's). On these simple facts, A qualifies as a "senior common law user" of the mark, because its unregistered use preceded B's unregistered use and date of application for registration. Once B has registered its mark, A may continue to use its mark, but this raises a difficult question: exactly where may A continue to do so?

The answer is that A may continue to use its mark anywhere it was using the mark at the date of B's registration (not the date of B's application). In the senior common law user scenario, the statutory basis for A's frozen area of use is not § 7(c) and its provision of nationwide constructive use at the date of application, because by the clear terms of the section, nationwide constructive use priority does not apply to senior common law users. So what provision does apply to such users? It is Lanham Act § 22, 15 U.S.C. § 1072, that freezes the senior common law user. Section 22 provides that "Registration of a mark on the principal register provided by this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, shall be constructive notice of the registrant's claim of ownership thereof." See also Lanham Act § 15, 15 U.S.C. § 1065 (providing incontestable marks with incontestable rights "except to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration under this chapter of such registered mark"). Section 22's constructive notice at the date of registration is understood to be nationwide in effect and strips the senior common law user of any claim to good faith expansion in the use of its mark after that date. See Allard Enterprises v. Advanced Programming Res., Inc. 249 F.3d 564 (6th Cir. 2001). See also Geisha LLC v. Tuccillo, No. 05 Civ. 5529, 2009 U.S. Dist. LEXIS 20300 (N.D. Ill. March 13, 2009) (citing Allard) (stating that rights are frozen at registration but finding that the senior user had actual notice of junior's federal trademark application before expansion, which prevented the senior user's rights from expanding).

ii. The Intermediate Junior User Scenario

Lanham Act § 33(b)(5), 15 U.S.C. § 1115(b) (5), establishes a so-called "intermediate junior user" defense against registered marks that are incontestable and, through § 33(a), registered marks that are contestable. Section 33(b) (5) provides that the registrant's rights are subject to the defense (5) That the mark whose use by a party is charged as an infringement was adopted without knowledge of the registrant's prior use and has been continuously used by such party or those in privity with him from a date prior to (A) the date of constructive use of the mark established pursuant to section 7(c) {15 USC § 1057(c)}, (B) the registration of the mark under this Act if the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988, or (C) publication of the registered mark under subsection (c) of section 12 of this Act {15 USC § 1062(c)}: Provided, however, That this defense or defect shall apply only for the area in which such continuous prior use is proved. But what if the intermediate junior user adopted the mark at issue with knowledge of the registrant's senior common law use? Section 33(b) (5) would not apply (because it explicitly requires adoption "without knowledge"), but is § 7(c) any help? In contrast with § 33(b)(5), § 7(c) makes no mention of knowledge, nor does it explicitly limit itself only to senior common law users or exclude intermediate junior users. Instead, § 7(c) simply refers to any person who "prior to such filing . . . has used the mark." Can an intermediate junior user who adopted with knowledge before the registrant's application date thus retreat back to § 7(c) and claim the same right as a senior common law user to continue to use its mark in an area frozen as of the date of the registrant's registration?

The law is not clear on this question, and it was never raised in the Stone Creek case above, but experience has shown that especially attentive students tend to ask it. The answer is almost certainly that the intermediate junior user with knowledge cannot work around § 33(b)( 5) by resorting to § 7(c). For prior common law users of the registrant's mark, be they senior common law users or intermediate junior (common law) users, Section provides no independent basis for freezing any such user's prior rights. It states only that the registrant's nationwide constructive use as of the date of application does not apply to anyone who used the mark before the registrant's date of application. Instead, in general, § 22 would freeze the rights of all such prior users at the latest at the date of the registrant's registration, with the exception that under the more specific provisions of § 33(b) (5) This "constructive notice" disables any person who adopts the mark after the registrant's date of registration from claiming that it did so in good faith. See MCCARTHY § 26:32.

With respect to applications filed before November 16, 1989, senior common law users (those who adopted the mark before the registrant began actual use of the mark) are frozen to their area of use as of the date of registration.

Lanham Act § 2(d), 15 U.S.C. § 1052(d), provides that two or more parties may use or register similar or identical marks for similar or identical goods provided that their respective uses of the marks will be sufficiently geographically distinct as not to cause consumer confusion. The text of § 2(d) provides as follows:

Though concurrent registrations are an interesting phenomenon, they are exceedingly rare. The PTO's data indicate that among all 2.65 million live trademark registrations on the Principal Register in 2020, only 332 consisted of registrations subject to concurrent use. See USPTO, Case Files Dataset, https://www.uspto.gov/ip-policy/economic-research/research-datasets/trademark-case-files-dataset (concur_use_in).

In Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959), the Second Circuit established a significant geographic limitation on a federal registrant's ability to enjoin confusingly-similar uses by those over whom the registrant has priority. The Dawn Donut court held that though registration confers on the registrant nationwide priority, mere registration without more does not entitle the registrant to nationwide injunctive relief. Instead, the registrant must show that it is likely to make (or is already making) an actual use of the mark in any post-registration junior user's area of trade before the registrant will be entitled to enjoin the junior use. The Dawn Donut rule does not present a problem for a registrant making nationwide use of its mark. But for a registrant making only a local or regional use of its mark, the registrant cannot enjoin uses in different geographic areas until it can show that it is actually using or is likely imminently to use its mark in those areas or its reputation has spread to those areas.

In the Dawn Donut case itself, the plaintiff was the senior user and registrant of the mark DAWN for doughnuts, which it had registered in 1927 and renewed under the Lanham Act in 1947. In 1951, the defendant began to use the same mark for doughnuts in Rochester, New York. At the time of the suit, the plaintiff was not using or advertising its mark in the Rochester area. The Second Circuit held that there was thus no likelihood of confusion that could form the basis of injunctive relief:

[I]f the use of the marks by the registrant and the unauthorized user are confined to geographically separate markets, with no likelihood that the registrant will expand his use into the defendant's market, so that no public confusion is possible, then the registrant is not entitled to enjoin the junior user's use of the mark.

Dawn Donut, 267 F. 2d at 364. The plaintiff could seek relief at a later date if it could show an intent to expand into the defendant's area of use:

[B]ecause of the effect we have attributed to the constructive notice provision of the Lanham Act, the plaintiff may later, upon a proper showing of an intent to use the mark at the retail level in defendant's market area, be entitled to enjoin defendant's use of the mark.

Id. at 365. To emphasize, the strange effect of the Dawn Donut rule is that even though a registrant may have nationwide priority in its registered mark, the registrant may not be able to prevent others from using that mark in regions in which the registrant is not yet itself using the mark or has established a reputation. Those others are, however, living on "borrowed time." MCCARTHY, § 26.33. The junior user's "use of the mark can continue only so long as the federal registrant remains outside the market area. But once the federal registrant shows a likelihood of entry, the junior user must stop use of the mark." Id.

Dawn Donut remains good law. In the remarkable case of What-A-Burger of Virginia, Inc. v. Whataburger, Inc. of Corpus Christi, Texas, 357 F.3d 441 (4th Cir. 2004), the declaratory defendant Whataburger-Texas registered the mark WHATABURGER for restaurant services in September, 1957. By the time of the suit, Whataburger-Texas was using the mark in connection with over 500 locations in various southern states but not in Virginia. The declaratory plaintiff What-A-Burger-Virginia began to use the mark WHAT-A-BURGER in Newport News, Virginia in August, 1957, and subsequently expanded its use to various other locations in Virginia in the following years. In 1970, Whataburger-Texas became aware of What-A-Burger-Virginia's use in Virginia and proposed a licensing arrangement. There was no further communication between the parties until 2002, when Whataburger-Texas contacted What-A-Burger-Virginia to determine if What-A-Burger-Virginia's use was infringing on Whataburger-Texas's registered mark. What-A-Burger-Virginia asserted, among other things, that Whataburger-Texas was barred by the doctrine of laches from asserting infringement because it had waited nearly thirty years to do so. Whataburger-Texas successfully argued that laches could not apply because, under the principles established in Dawn Donut, Whataburger-Texas could not have sought during that thirty year period to enjoin What-A-Burger-Virginia's use of the mark in Virginia. The Fourth Circuit explained: "There is nothing in this case to indicate a likelihood of entry into the local Virginia market by {Whataburger-Texas} (in fact, {Whataburger-Texas} specifically disavows any such intention) or that the likelihood of confusion otherwise looms large, triggering the obligation for {Whataburger-Texas} to initiate an action for trademark infringement." Id. at 451.

Courts are growing increasingly wary of Dawn Donut however. For example, in Westmont Living, Inc. v. Ret. Unlimited, Inc., 132 F.4th 288 (4th Cir. 2025), the plaintiff operated numerous retirement communities in California and Oregon under the registered mark WESTMONT LIVING. The defendant then opened a retirement community in Virginia named "Westmont at Short Pump." On cross-motions for summary judgment, the district court considered only the Dawn Donut rule to find that the parties "operate in entirely distinct geographic markets and therefore there is no likelihood of consumer confusion." Westmont Living, Inc. v. Ret. Unlimited, Inc., No. 22 Civ. 811, 2023 WL 7285420, at *12 (E.D. Va. Nov. 3,2023). The Fourth Circuit remanded. It emphasized that both parties advertised nationally:

While Westmont Living operates facilities on the West Coast and RUI operates facilities on the East Coast, they both advertise nationally, and with good success. Westmont Living's online advertising has produced tens of thousands of affirmative responses, including inquiries from every State, which have yielded numerous customers and contributed millions of dollars to Westmont Living's gross revenue. RUI likewise advertises nationally on the Internet, and presumably also with good results. Thus, when a person searches the Internet for "Westmont," he or she will encounter both Westmont Living's site and RUI's site for The Westmont at Short Pump.

Westmont Living, Inc. v. Ret. Unlimited, Inc., 132 F.4th at 298. The Fourth Circuit explained more generally:

{B}oth Dawn Donut and What-A-Burger recognize the commonsense proposition that when two local businesses operate with the same mark in entirely distinct geographical markets, including their advertising and marketing, a likelihood of confusion will not arise. But those circumstances are present far less frequently today, in light of increased mobility, the Internet, and the reduced influence of local radio and newspaper advertising. See Cir. City Stores, Inc. v. CarMax, Inc., 165 F.3d 1047, 1057 (6th Cir. 1999) (Jones, J., concurring) (observing that "[t]he Dawn Donut Rule was enunciated in 1959" and that "our society is far more mobile than it was four decades ago," with "the Internet . . . increasingly deconstructing geographical barriers for marketing purposes").

Westmont Living, Inc. v. Ret. Unlimited, Inc., 132 F.4th at 298. See also Guthrie Healthcare Sys. v. ContextMedia, Inc., 826 F.3d 27, 48 (2d Cir. 2016) (aggressively distinguishing away Dawn Donut on the basis that "Dawn Donuts {sic} did not present the problem, like this case, of a plaintiff who has shown entitlement to an injunction in one geographic area and seeks to have the injunction extend beyond as well. It therefore has pertinence to the question at issue here.").

For an excellent (and brief) practical overview of the Dawn Donut rule, see Christopher P. Bussert, Trademark Enforcement in Distinct Geographic Territories: Is the Infringement Case "Ripe"?, FRANCHISE LAWYER, Summer 2019, at 3.

1. Consent to use agreements. Two users of similar marks may reach an agreement in which they promise not to sue each other for trademark infringement provided that each complies with the limitations on use set forth in the agreement. These limitations may limit use to, among other things, specific geographical areas, specific goods or services, or specific mark formats. See Brennan's Inc. v. Dickie Brennan & Co. Inc., 376 F.3d 356, 364 (5th Cir. 2004) (discussing consent to use agreements); MCCARTHY § 18:79 (same). See also Eric Pfanner, British Judge Allows Apple to Keep Logo on iTunes, NY TIMES, May 9, 2006 (discussing litigation between Apple Computer and Apple Corps, the Beatles' corporate entity, concerning the former's alleged breach of the 1991 consent to use agreement between the two firms). Courts (and examiners) typically give great weight to consent to use agreements, but they sometimes nevertheless find a likelihood of confusion. For example, in In re Ye Mystic Krewe of Gasparilla, Serial No. 90522364 (TTAB Oct. 14, 2025), the TTAB affirmed the examiner's section 2(d) refusal to register the applied-for mark GASPARILLA in certain classes of goods in light of the already-registered mark GASPARILLA TREASURES in those same classes even though the applicant submitted a consent agreement signed by the registrant:

As for the Consent Agreement, while we "recognize the Federal Circuit's instruction that consent agreements are frequently entitled to great weight," Bay State Brewing Co., 2016 TTAB LEXIS 46, at *32-and we accordingly give some weight to the existence of the Consent Agreement, the parties' acknowledgement that confusion has not occurred (although the relevant time period is brief), and their agreement that steps will be taken to address any actual confusion-we find that the Consent Agreement as a whole suffers from multiple failings. . . . Notably, there is no sufficient basis in the Consent Agreement explaining why confusion is unlikely where identical and legally identical goods are sold to identical potential consumers in identical channels of trade under highly similar marks. See In re Am. Cruise Lines, 2018 TTAB LEXIS 363, at *18 ("A 'naked consent agreement' is an agreement that contains little more than the registrant's consent to registration and perhaps a statement that confusion is believed to be unlikely. TRADEMARK MANUAL OF EXAMINING PROCEDURE § 1207.01(d)(viii)"). The Consent Agreement simply does not rise to the level of one of the "more detailed agreements" to be given "substantial" weight, DuPont, 476 F.2d at 1362."

In re Mystic Krewe of Gasparilla, Serial No. 90522364, at 20. But see In re American Cruise Lines, Inc., 128 U.S.P.Q.2d 1157 (TTAB 2018) (reversing examiner's Lanham Act § 2(d) refusal even though consent agreement between CONSTELLATION and AMERICAN CONSTELLATION for cruise ships contained no provisions requiring parties to seek to avoid confusion, reasoning that "[w]hile the inclusion of provisions to avoid any potential confusion are preferred and probative in consent agreements, they are not mandatory.").

Secondary meaning in only one part of the United States.

To register a non-inherently distinctive mark, the mark owner need only show that the mark has secondary meaning in some part of the United States. But see MCCARTHY 15:72 (citing a 1963 TTAB opinion for the proposition that "the law is unclear [on this issue], with a hint that proving secondary meaning in only a small part of the United States might not be sufficient."). Yet the priority rights that stem from registration are nationwide in scope. Does this make sense as a policy matter? Cf. Société des produits Nestlé v. Mondelez UK Holdings & Services, C-84/17 P, C-85/17 P and C-95/17 P, ECLI:EU:C:2018:596, ¶ 83 (CJEU, July 25, 2018) (holding that for purposes of registering an EU trademark that is not inherently distinctive anywhere in the European Union, the applicant must show that the mark has acquired secondary meaning throughout the European Union).

We have focused so far on trademark uses within the territorial borders of the U.S. and the geographical extent of rights established by such uses. We turn now to trademark uses outside the territorial borders of the U.S. and to the question of whether such uses can form the basis for exclusive rights within the U.S.

As set forth below in Part I.E.3.a and as exemplified in Person's Co., Ltd. v. Christman, 900 F.2d 1565 (Fed. Cir. 1990), the traditional view has long been that trademark rights are generally limited to national borders and that foreign uses of trademarks generally do not confer exclusive rights within the U.S. However, as discussed in Part I.E.3.b, the "well-known marks doctrine" holds that foreign uses of trademarks that become very well-known in the U.S. may form the basis for exclusive rights within the U.S. even when the foreign user is not making any actual use of the mark within the U.S. Finally, as presented in Part I.E.3.c, a more recent opinion from the Fourth Circuit, Belmora LLC v. Bayer Consumer Care AG, 819 F.3d 697 (4th Cir. 2016), cert. denied, 137 S. Ct. 1202 (U.S. 2017), has the potential profoundly to change our traditional understanding of the national limits of trademark rights (and of the relation between Lanham Act § § 32 and 43(a)). Belmora was denied certiorari review. If its reasoning is adopted by other circuits, it may significantly lessen the importance of much of the doctrine discussed in Parts I.E.3.a & b.

a. National-Border Limits on Trademark Rights

The opinion below, Person's Co., Ltd. v. Christman, 900 F.2d 1565 (Fed. Cir. 1990), is frequently cited as standing for the proposition that foreign uses do not establish exclusive rights within the In reading through the opinion, consider the following questions:

• Does the outcome in Person's strike you as fair?

• Alternatively, has the Federal Circuit chosen the economically efficient outcome? If not, what would that outcome be? [1] Person's Co., Ltd. appeals from the decision of the Patent and Trademark Office Trademark Trial and Appeal Board (Board) which granted summary judgment in favor of Larry Christman and ordered the cancellation of appellant's registrationfoot_18 for the mark "PERSON'S" for various apparel items. Appellant Person's Co. seeks cancellation of Christman's registration 3 for the mark "PERSON'S" for wearing apparel on the following grounds: likelihood of confusion based on its prior foreign use, abandonment, and unfair competition within the meaning of the Paris Convention. We affirm the Board's decision.

[6] In early 1986, appellant's advertising in the U.S. became known to Christman and both parties became aware of confusion in the marketplace. Person's Co. initiated an action to cancel Christman's registration on the following grounds: (1) likelihood of confusion; (2) abandonment; and (3) unfair competition within the meaning of the Paris Convention. Christman counterclaimed and asserted prior use and likelihood of confusion as grounds for cancellation of the Person's Co. registration.

[7] After some discovery, Christman filed a motion with the Board for summary judgment on all counts. In a well reasoned decision, the Board held for Christman on the grounds that Person's use of the mark in Japan could not be used to establish priority against a "good faith" senior user in U.S. commerce. The Board found no evidence to suggest that the "PERSON'S" mark had acquired any notoriety in this country at the time of its adoption by Christman. Therefore, appellant had no reputation or goodwill upon which Christman could have intended to trade, rendering the unfair competition provisions of the Paris Convention inapplicable. The Board also found that Christman had not abandoned the mark, although sales of articles bearing the mark were often intermittent. The Board granted summary judgment to Christman and ordered appellant's registration cancelled.

[8] The Board held in its opinion on reconsideration that Christman had not adopted the mark in bad faith despite his appropriation of a mark in use by appellant in a foreign country. The Board adopted the view that copying a mark in use in a foreign country is not in bad faith unless the foreign mark is famous in the United States or the copying is undertaken for the purpose of interfering with the prior user's planned expansion into the United States. Person's Co. appeals and requests that this court direct the Board to enter summary judgment in its favor.

[9] 1. Does knowledge of a mark's use outside U.S. commerce preclude good faith adoption and use of the identical mark in the United States prior to the entry of the foreign user into the domestic market?

[10] 2. Did the Board properly grant summary judgment in favor of on the issue of abandonment?

[11] The Board may properly cancel a trademark registration within five years of issue when, e.g. ( 1) there is a valid ground why the trademark should not continue to be registered and ( 2) the party petitioning for cancellation has standing. Such cancellation of the marks' registrations may be based upon any ground which could have prevented registration initially. The legal issue in a cancellation proceeding is the right to register a mark, which may be based on either (1) ownership of a foreign registration of the mark in question or (2) use of the mark in United States commerce.

[12] The first ground asserted for cancellation in the present action is § 2(d) of the Lanham Act; each party claims prior use of registered marks which unquestionably are confusingly similar and affixed to similar goods.

[13] Section 1 of the Lanham Actfoot_19 states that "[t]he owner of a trademark used in commerce may register his trademark . . . ." The term "commerce" is defined in Section 45 of the Act as ". . . all commerce which may be lawfully regulated by Congress." No specific Constitutional language gives Congress power to regulate trademarks, so the power of the federal government to provide for trademark registration comes only under its commerce power. The term "used in commerce" in the Lanham Act refers to a sale or transportation of goods bearing the mark in or having an effect on: (1) United States interstate commerce; (2) United States commerce with foreign nations; or (3) United States commerce with the Indian Tribes.

[14] In the present case, appellant Person's Co. relies on its use of the mark in Japan in an attempt to support its claim for priority in the United States. Such foreign use has no effect on U.S. commerce and cannot form the basis for a holding that appellant has priority here. The concept of territoriality is basic to trademark law; trademark rights exist in each country solely according to that country's statutory scheme. Christman was the first to use the mark in United States commerce and the first to obtain a federal registration thereon. Appellant has no basis upon which to claim priority and is the junior user under these facts. 16 Bad Faith

[15] Appellant vigorously asserts that Christman's adoption and use of the mark in the United States subsequent to Person's Co.'s adoption in Japan is tainted with "bad faith" and that the priority in the United States obtained thereby is insufficient to establish rights superior to those arising from Person's prior adoption in a foreign country. Relying on Woman's World Shops, Inc. v. Lane Bryant, Inc., 5 USPQ2d 1985 (TTAB 1988), Person's Co. argues that a "remote junior user" of a mark obtains no right superior to the "senior user" if the "junior user" has adopted the mark with knowledge of the "senior user's" prior use. 18 In Woman's World, the senior user utilized the mark within a limited geographical area. A junior user from a different geographical area of the United States sought unrestricted federal registration for a nearly identical mark, with the exception to its virtually exclusive rights being those of the known senior user. The Board held that such an appropriation with knowledge failed to satisfy the good faith requirements of the Lanham Act and denied the concurrent use rights sought by the junior user. 5 USPQ2d at 1988. Person's Co. cites Woman's World for the proposition that a junior user's adoption and use of a mark with knowledge of another's prior use constitutes bad faith. It is urged that this principle is equitable in nature and should not be limited to knowledge of use within the territory of the United States.

[16] While the facts of the present case are analogous to those in Woman's World, the case is distinguishable in one significant respect. In Woman's World, the first use of the mark by both the junior and senior users was in United States commerce. In the case at bar, appellant Person's Co., while first to adopt the mark, was not the first user in the United States. Christman is the senior user, and we are aware of no case where a senior user has been charged with bad faith. The concept of bad faith adoption applies to remote junior users seeking concurrent use registrations; in such cases, the likelihood of customer confusion in the remote area may be presumed from proof of the junior user's knowledge. 20 In the present case, when Christman initiated use of the mark, Person's Co. had not yet entered U.S. commerce. The Person's Co. had no goodwill in the United States and the "PERSON'S" mark had no reputation here. Appellant's argument ignores the territorial nature of trademark rights.

alleging actual use in U.S. commerce. If a U.S. application is filed within six months of the filing of the foreign application, such U.S. registration will be accorded the same force and effect as if filed in the United States on the same date on which the application was first filed in the foreign country. The statutory scheme set forth in § 44 is in place to lower barriers to entry and assist foreign applicants in establishing business goodwill in the United States. Person's Co. does not assert rights under § 44, which if properly applied, might have been used to secure priority over Christman.

[17] Appellant next asserts that Christman's knowledge of its prior use of the mark in Japan should preclude his acquisition of superior trademark rights in the United States. The Board found that, at the time of registration, Christman was not aware of appellant's intention to enter the U.S. clothing and accessories market in the future. Christman obtained a trademark search on the "PERSON'S" mark and an opinion of competent counsel the mark was "available" in the United States. Since Appellant had taken no steps to secure registration of the mark in the United States, Christman was aware of no basis for Person's Co. to assert superior rights to use and registration here. Appellant would have us infer bad faith adoption because of Christman's awareness of its use of the mark in Japan, but an inference of bad faith requires something more than mere knowledge of prior use of a similar mark in a foreign country.

[18] As the Board noted below, Christman's prior use in commerce cannot be discounted solely because he was aware of appellant's use of the mark in Japan. While adoption of a mark with knowledge of a prior actual user in U.S. commerce may give rise to cognizable equities as between the parties, no such equities may be based upon knowledge of a similar mark's existence or on a problematical intent to use such a similar mark in the future. Knowledge of a foreign use does not preclude good faith adoption and use in the United States. While there is some case law supporting a finding of bad faith where (1) the foreign mark is famous here 23 or (2) the use is a nominal one made solely to block the prior foreign user's planned expansion into the United States, 24 as the Board correctly found, neither of these circumstances is present in this case.

[19] We agree with the Board's conclusion that Christman's adoption and use of the mark were in good faith. Christman's adoption of the mark occurred at a time when appellant had not yet entered U.S. commerce; therefore, no prior user was in place to give Christman notice of appellant's potential U.S. rights. Christman's conduct in appropriating and using appellant's mark in a market where he believed the Japanese manufacturer did not compete can hardly be considered unscrupulous commercial conduct. Christman adopted the trademark being used by appellant in Japan, but appellant has not identified any aspect of U.S. trademark law violated by such action. Trademark rights under the Lanham Act arise solely out of use of the mark in U.S. commerce or from ownership of a foreign registration thereon; "[t]he law pertaining to registration of trademarks does not regulate all aspects of business morality." [citation omitted] When the law has been crafted with the clarity of crystal, it also has the qualities of a glass slipper: it cannot be shoe-horned onto facts it does not fit, no matter how appealing they might appear. [20] In United Drug Co. v. Rectanus Co., 248 U.S. 90 (1918), the Supreme Court of the United States determined that "[t]here is no such thing as property in a trademark except as a right appurtenant to an established business or trade in connection with which the mark is employed . . . . [I]ts function is simply to designate the goods as the product of a particular trader and to protect his goodwill against the sale of another's product as his; and it is not the subject of property except in connection with an existing business." 36 In the present case, appellant failed to secure protection for its mark through use in U.S. commerce; therefore, no established business or product line was in place from which trademark rights could arise. Christman was the first to use the mark in U.S. commerce. This first use was not tainted with bad faith by Christman's mere knowledge of appellant's prior foreign use, so the Board's conclusion on the issue of priority was correct . . . . Accordingly, the grant of summary judgment was entirely in order, and the Board's decision is affirmed. AFFIRMED.

Though it is rarely invoked, the well-known marks doctrine constitutes an important exception to-or variation on-the territoriality principle in trademark law. It is also the source of a basic split between the Ninth and Second Circuits on whether U.S. federal trademark law incorporates well-known marks protection. As you read through the opinions below, consider the following questions:

• As a policy matter, for a foreign mark not used in the U.S., how well-known should such a mark be in the U.S. for it to qualify for protection in the U.S.? Should mere secondary meaning in a particular geographic location be sufficient? "Secondary meaning plus"? Nationwide fame?

• What is the particular statutory or common law basis for the Ninth Circuit's application of the well-known marks doctrine?

• Is the New York Court of Appeals approach to the issue persuasive?

• Is the well-known marks doctrine simply a transnational extension of the Tea Rose-Rectanus doctrine? Is there any way in which the well-known marks doctrine is different? 36 248 U.S. at 97. It goes without saying that the underlying policy upon which this function is grounded is the protection of the public in its purchase of a service or product. See, e.g. In re Canadian Pacific Ltd., 754 F.2d 992, 994 (Fed. Cir. 1985).

[1] This is a trademark case. The contest is between a large Mexican grocery chain that has long used the mark, but not in the United States, and a small American chain that was the first to use the mark in the United States, but did so, long after the Mexican chain began using it, in a locality where shoppers were familiar with the Mexican mark.

[2] Grupo Gigante S.A. de C.V. ("Grupo Gigante") operates a large chain of grocery stores in Mexico, called "Gigante," meaning "Giant" in Spanish. Grupo Gigante first called a store "Gigante" in Mexico City in 1962. In 1963, Grupo Gigante registered the "Gigante" mark as a trade name in Mexico, and has kept its registration current ever since. The chain was quite successful, and it had expanded into Baja California, Mexico by 1987. By 1991, Grupo Gigante had almost 100 stores in Mexico, including six in Baja, all using the mark "Gigante." Two of the Baja stores were in Tijuana, a city on the U.S.-Mexican border, just south of San Diego.

[3] As of August 1991, Grupo Gigante had not opened any stores in the United States. That month, Michael Dallo began operating a grocery store in San Diego, using the name "Gigante Market." In October 1996, Dallo and one of his brothers, Chris Dallo, opened a second store in San Diego, also under the name Gigante Market. The Dallo brothers-who include Michael, Chris, and their two other brothers, Douray and Rafid-have since controlled the two stores through various limited liability corporations. [4] In 1995, which was after the opening of the Dallos' first store and before the opening of their second, Grupo Gigante began exploring the possibility of expanding into Southern California. It learned of the Dallos' Gigante Market in San Diego. Grupo Gigante decided against entering the California market at that time. It did nothing about the Dallos' store despite Grupo Gigante's knowledge that the Dallos were using "Gigante" in the store's name. [5] In 1998, Grupo Gigante decided that the time had come to enter the Southern California market. It arranged a meeting with Michael Dallo in June 1998 to discuss the Dallos' use of the name "Gigante." Grupo Gigante was unsuccessful at this meeting in its attempt to convince Dallo to stop using the "Gigante" mark. Also in June 1998, Grupo Gigante registered the "Gigante" mark with the state of California. The Dallos did likewise in July 1998. Neither has registered the mark federally.

[6] About one year later, in May 1999, Grupo Gigante opened its first U.S. store. That store was followed by a second later that year, and then by a third in 2000. All three stores were in the Los Angeles area. All were called "Gigante," like Grupo Gigante's Mexican stores.

[7] In July 1999, after learning of the opening of Grupo Gigante's first U.S. store, the Dallos sent Grupo Gigante a cease-and-desist letter, making the same demand of Grupo Gigante that Grupo Gigante had made of them earlier: stop using the name Gigante. Grupo Gigante responded several days later by filing this lawsuit. Its claim was based on numerous federal and state theories, including trademark infringement under the Lanham Act. 3 It sought compensatory and punitive damages, a declaratory judgment that it had the superior right to the Gigante mark, and an injunction against the Dallos' use of the mark. The Dallos counterclaimed, on similar theories, asserting it had the superior right to the mark in Southern California. 4 The Dallos sought a declaratory judgment, injunctive relief, damages, and cancellation of Grupo Gigante's California registration of the mark.

[8] The district court disposed of the case in a published decision on cross motions for summary judgment. 5 The court recognized that under the "territoriality principle," use of a mark in another country generally does not serve to give the user trademark rights in the United States. Thus, the territoriality principle suggests that the Dallos' use of the mark, which was the first in the United States, would entitle them to claim the mark. But it held that because Grupo Gigante had already made Gigante a well-known mark in Southern California by the time the Dallos began using it, an exception to the territoriality principle applied. As the district court interpreted what is known as the "famous-mark" or "well-known mark" exception to the territoriality principle, Grupo Gigante's earlier use in Mexico was sufficient to give it the superior claim to the mark in Southern California. The court held, therefore, that Grupo Gigante was entitled to a declaratory judgment that it had a valid, protectable interest in the Gigante name. Nevertheless, the court held that laches barred Grupo Gigante from enjoining the Dallos from using the mark at their two existing stores. The Dallos appeal the holding that Grupo Gigante has a protectable right to use the mark in Southern California. Grupo Gigante appeals the laches holding. We agree in large part with the district court's excellent opinion, but some necessary qualifications to it require a remand.

The exception for famous and well-known foreign marks [9] We review the summary judgment decision de novo.

[10] A fundamental principle of trademark law is first in time equals first in right. But things get more complicated when to time we add considerations of place, as when one user is first in time in one place while another is first in time in a different place. The complexity swells when the two places are two different countries, as in the case at bar.

[11] Under the principle of first in time equals first in right, priority ordinarily comes with earlier use of a mark in commerce. It is "not enough to have invented the mark first or even to have registered it first." If the first-in-time principle were all that mattered, this case would end there. It is undisputed that Grupo Gigante used the mark in commerce for decades before the Dallos did. But the facts of this case implicate another well-established principle of trademark law, the "territoriality principle." The territoriality principle, as stated in a treatise, says that "[p]riority of trademark rights in the United States depends solely upon priority of use in the United States, not on priority of use anywhere in the world."foot_25 Earlier use in another country usually just does not count.foot_26 Although we have not had occasion to address this principle, it has been described by our sister circuits as "basic to trademark law," in large part because "trademark rights exist in each country solely according to that country's statutory scheme."foot_27 While Grupo Gigante used the mark for decades before the Dallos used it, Grupo Gigante's use was in Mexico, not in the United States. Within the San Diego area, on the northern side of the border, the Dallos were the first users of the "Gigante" mark. Thus, according to the territoriality principle, the Dallos' rights to use the mark would trump Grupo Gigante's.

[12] Grupo Gigante does not contest the existence of the territoriality principle. But like the first-in-time, first-in-right principle, it is not absolute. The exception, as Grupo Gigante presents it, is that when foreign use of a mark achieves a certain level of fame for that mark within the United States, the territoriality principle no longer serves to deny priority to the earlier foreign user. The Dallos concede that there is such an exception, but dispute what it takes for a mark to qualify for it. Grupo Gigante would interpret the exception broadly, while the Dallos would interpret it narrowly.

[13] Grupo Gigante does not argue to this court that it used the mark in the United States in a way that qualifies for protection regardless of the territoriality principle and any exception to it. While the district court opinion suggests that Grupo Gigante made an alternative argument of this sort below, its argument on appeal is limited to whether the mark has become well-known enough to overcome the territoriality principle. For example, while the statement of facts in Grupo Gigante's brief claims that Grupo Gigante engaged in advertising in Mexico that reached United States consumers, Grupo Gigante does not assert that this advertising, combined with other activities, constitutes domestic use of the mark. 13 Thus, while Grupo Gigante does not appear to concede explicitly that application of the famous-mark exception is necessary to its success on appeal, the structure of its argument suggests as much. Since the district court based its holding on an interpretation of the exception, and since Grupo Gigante does not urge us to consider alternative ways it might be eligible for protection, we have no occasion to decide, and do not decide, whether Grupo Gigante could establish protection for its mark apart from application of the famous-mark exception to the territoriality principle.

[14] There is no circuit-court authority-from this or any other circuit-applying a famous-mark exception to the territoriality principle. At least one circuit judge has, in a dissent, called into question whether there actually is any meaningful famous-mark exception. 14 We hold, however, that there is a famous mark exception to the territoriality principle. While the territoriality principle is a long-standing and important doctrine within trademark law, it cannot be absolute. An absolute territoriality rule without a famous-mark exception would promote consumer confusion and fraud. Commerce crosses borders. In this nation of immigrants, so do people. Trademark is, at its core, about protecting against consumer confusion and "palming off." 15 There can be no justification for using trademark law to fool immigrants into thinking that they are buying from the store they liked back home.

[15] It might not matter if someone visiting Fairbanks, Alaska from Wellington, New Zealand saw a cute hair-salon name-"Hair Today, Gone Tomorrow," "Mane Place," "Hair on Earth," "Mary's Hair'em," or "Shear Heaven"-and decided to use the name on her own salon back home in New Zealand. The ladies in New Zealand would not likely think they were going to a branch of a Fairbanks hair salon. But if someone opened a high-end salon with a red door in Wellington and called it Elizabeth Arden's, women might very well go there because they thought they were going to an affiliate of the Elizabeth Arden chain, even if there had not been any other Elizabeth Ardens in New Zealand prior to the salon's opening. If it was not an affiliate, just a local store with no connection, customers would be fooled. The real Elizabeth Arden chain might lose business if word spread that the Wellington salon was nothing special.

[16] The most cited case for the famous-mark exception is Vaudable v. Montmartre, Inc., a 1959 trial court decision from New York. 16 A New York restaurant had opened under the name "Maxim's," the same name as the well-known Parisian restaurant in operation since 1893, and still in operation today. The New York Maxim's used similar typography for its sign, as well as other features likely to evoke the Paris Maxim's-particularly among what the court called "the class of people residing in the cosmopolitan city of New York who dine out" 17 (by which it apparently meant the sort of people who spend for dinner what some people spend for a month's rent). The court enjoined the New York use, even though the Paris restaurant did not operate in New York, or in the United States, because the Maxim's mark was "famous." 18 [17] While Vaudable stands for the principle that even those who use marks in other countries can sometimes-when their marks are famous enough-gain exclusive rights to the marks in this country, the case itself tells us little about just how famous or well-known the foreign mark must be. The opinion states in rather conclusory terms that the Paris Maxim's "is, of course, well known in this country," and that "[t]here is no doubt as to its unique and eminent position as a restaurant of international fame and prestige." 19 This language suggests that Maxim's had achieved quite a high degree of fame here, and certainly enough to qualify for the exception to the territoriality principle, but it suggests nothing about just how much fame was necessary. It does not suggest where the line is between "Shear Heaven" and Maxim's.

[18] The Patent and Trademark Office's Trademark Trial and Appeal Board, whose expertise we respect and whose decisions create expectations, has recognized the validity of the famous-mark exception. 20 But as with Vaudable, none of these cases helps us to establish a clear threshold for just how famous a mark must be to qualify for the exception.

[19] Grupo Gigante urges us to adopt the approach the district court took. The district court held that the correct inquiry was to determine whether the mark had attained secondary meaning in the San Diego area. Secondary meaning refers to a mark's actual ability to trigger in consumers' minds a link between a product or service and the source of that product or service. That is, a mark has secondary meaning "when, in the minds of the public, the primary significance of a mark is to identify the source of the product rather than the product itself."foot_31 Determining whether a mark has secondary meaning requires taking into account at least seven considerations, which the district court did in this case. 22 [20] Applying its interpretation of the famous-mark exception, the district court concluded that Grupo Gigante's use of the mark had achieved secondary meaning in the San Diego area by the time the Dallos opened their first store, and thus the court held that Grupo Gigante's use was eligible for the exception to the territoriality principle. Grupo Gigante asserts that we, too, should adopt secondary meaning as the definition of the exception. We decline to go quite this far, however, because following the district court's lead would effectively cause the exception to eclipse the territoriality rule entirely. 18 Id. at 335. 19 Id. at 334 (emphasis added). 20 See, e.g., The All England Lawn Tennis Club (Wimbledon) Ltd. [21] Secondary meaning has two functions. First, it serves to determine whether certain marks are distinctive enough to warrant protection. Some marks-those that are arbitrary, fanciful, or suggestive-are deemed inherently distinctive. Others-including those that are descriptive of some feature of the products or services to which they are attached-require some indication of distinctiveness before trademark protection is available. That required indication is that the mark have acquired secondary meaning. Thus, before Grupo Gigante (or for that matter the Dallos) could have a protectable interest in "Gigante" at all, Grupo Gigante would have to show that the mark has acquired secondary meaning by demonstrating that it has come to identify to consumers Grupo Gigante's particular brand of store, not merely a characteristic of Grupo Gigante's stores and others like them.

[22] Second, and most relevant to this case, secondary meaning defines the geographic area in which a user has priority, regardless of who uses the mark first. Under what has become known as the Tea Rose-Rectanus doctrine, priority of use in one geographic area within the United States does not necessarily suffice to establish priority in another area. Thus, the first user of a mark will not necessarily be able to stop a subsequent user, where the subsequent user is in an area of the country "remote" from the first user's area. 26 The practical effect is that one user may have priority in one area, while another user has priority over the very same mark in a different area. The point of this doctrine is that in the remote area, where no one is likely to know of the earlier user, it is unlikely that consumers would be confused by the second user's use of the mark. Secondary meaning comes into play in determining just how far each user's priority extends. Courts ask whether the first, geographically limited use of the mark is well-known enough that it has gained secondary meaning not just within the area where it has been used, but also within the remote area, which is usually the area where a subsequent user is claiming the right to use the mark.

[23] Assume, for example, that Grupo Gigante had been using the mark in Arizona as well as in various parts of Mexico, and that it had met all the other requirements of having a protectable interest in the mark, including having established secondary meaning throughout Arizona. If the Dallos later began using the same mark in San Diego without knowledge of Grupo Gigante's earlier "remote" use in Arizona, whether Grupo Gigante could stop them would depend on what the mark meant to consumers in San Diego. Under the Tea Rose-Rectanus doctrine, Grupo Gigante would have priority in San Diego, and thus be able to stop the Dallos' use of the mark, only if the secondary meaning from Grupo Gigante's use of the mark in Arizona extended to San Diego as well. If, on the other hand, the secondary meaning from Grupo Gigante's use were limited to Arizona, then the Dallos might be free to continue using the mark in San Diego.

[24] Thus, if the dispute before us were between a Mexican and Arizonan Grupo Gigante on the one hand, and the Dallos on the other, we would analyze, under the Tea Rose-Rectanus doctrine, whether Grupo Gigante's use of the mark had achieved secondary meaning in San Diego. This is how the district court analyzed the actual dispute, as a result of having defined the exception to the territoriality principle in terms of secondary meaning. In other words, the district court treated Grupo Gigante's use of the mark exactly as it would have had Grupo Gigante used the mark not only in Mexico, but also in another part of the United States. Under the district court's interpretation of the exception to the territoriality principle, the fact that Grupo Gigante's earlier use of the mark was entirely outside of the United States becomes irrelevant.

[25] The problem with this is that treating international use differently is what the territoriality principle does. This interpretation of the exception would effectively eliminate the territoriality principle by eliminating any effect of international borders on protectability. We would end up treating foreign uses of the mark just as we treat domestic uses under the Tea Rose-Rectanus doctrine, asking in both cases whether the use elsewhere resulted in secondary meaning in the local market.

[26] We would go too far if we did away with the territoriality principle altogether by expanding the famous-mark exception this much. The territoriality principle has a long history in the common law, 30 and at least two circuits have described it as "basic to trademark law." 31 That status reflects the lack of a uniform trademark regime across international borders. What one must do to acquire trademark rights in one country will not always be the same as what one must do in another. And once acquired, trademark rights gained in other countries are governed by each country's own set of laws. 32 Furthermore, we are arguably required by the Paris Convention, of which the United States is a signatory, to preserve the territoriality principle in some form. 33 Thus, we reject Grupo Gigante's argument that we should define the well-known mark exception as merely an inquiry into whether the mark 30 As McCarthy has noted, traces of the territoriality principle appear in Justice Holmes's opinion for the U.S. Supreme Court in A. Bourjois & Co. v. Katzel, 260 U.S. 689, 692 (1923). McCarthy, supra, at § 29:1, p. 29-4; see also Philip Morris Inc. v. Allen Distribs., Inc., 48 F.Supp.2d 844, 850 (S.D.Ind. 1999) (identifying Bourjois as marking the shift from "the 'universality' principle [to] a 'territoriality principle' that recognizes a separate legal existence for a trademark in each country whose laws afford protection to the mark").

31 Fuji Photo, 754 F.2d at 599; Person's, 900 F.2d at 1569. 32 See Ingenohl v. Walter E. Olsen & Co., Inc., 273 U.S. 541, 544, (1927) ("A trademark started elsewhere would depend for its protection in Hongkong upon the law prevailing in Hongkong and would confer no rights except by the consent of that law."); Fuji Photo, 754 F.2d at 599 ("[T]rademark rights exist in each country solely according to that country's statutory scheme.").

has achieved secondary meaning in the area where the foreign user wishes to assert protection.

[27] To determine whether the famous-mark exception to the territoriality rule applies, the district court must determine whether the mark satisfies the secondary meaning test. The district court determined that it did in this case, and we agree with its persuasive analysis. But secondary meaning is not enough.

[28] In addition, where the mark has not before been used in the American market, the court must be satisfied, by a preponderance of the evidence, that a substantial percentage of consumers in the relevant American market is familiar with the foreign mark. The relevant American market is the geographic area where the defendant uses the alleged infringing mark. In making this determination, the court should consider such factors as the intentional copying of the mark by the defendant, and whether customers of the American firm are likely to think they are patronizing the same firm that uses the mark in another country. While these factors are not necessarily determinative, they are particularly relevant because they bear heavily on the risks of consumer confusion and fraud, which are the reasons for having a famous-mark exception.

[29] Because the district court did not have the benefit of this additional test, we vacate and remand so that it may be applied. We intimate no judgment on whether further motion practice and some additions to what the district court has already written in its published opinion will suffice, or whether trial will be needed to apply this new test. Nor do we intimate what the result should be. The concurring opinion is incorrect in its suggestion that the case necessarily must go to trial because distinctiveness of a mark is a question of fact and defendants have contested the reliability of plaintiffs' survey evidence. That conclusion flies in the face of the 1986 triumvirate of summary judgment cases. 34 Regardless of whether questions are factual, there is nothing to try unless there is a genuine issue of material fact. One survey that is impeachable, but still good enough to get to a jury, weighed against no survey evidence at all on the other side, along with all the other evidence in the record, does not necessarily add up to a genuine issue of fact. . . .

[30] I concur in the majority's opinion because I agree that a foreign owner of a supposedly famous or well-known foreign trademark must show a higher level of "fame" or recognition than that required to establish secondary meaning. Ultimately, the standard for famous or well-known marks is an intermediate one. To enjoy extraterritorial trademark protection, the owner of a foreign trademark need not show the level of recognition necessary to receive nation-wide protection against trademark dilution. On the other hand, the foreign trademark owner who does not use a mark in the United States must show more than the level of recognition that is necessary in a domestic trademark infringement case.

[31] Nonetheless, I write separately to express my view that the evidence that Plaintiffs have presented thus far is insufficient as a matter of law to establish that their mark is famous or well-known. The survey population and the survey's results establish little more than the fact that Plaintiffs' customers are familiar with Plaintiffs' stores. In an abundance of caution, the majority does not intimate whether that evidence is sufficient to warrant a grant of summary judgment in Plaintiffs' favor on the issue of the famous mark exception. I would go beyond intimation and hold directly that Plaintiffs' evidence is insufficient to support a grant of summary judgment in its favor. I would further hold that, unless the district court entertains a renewed motion for summary judgment on a considerably expanded record, this case should proceed to trial.

[32] The district court, relying entirely on survey evidence, concluded that Plaintiffs' trademark had acquired secondary meaning and was thus entitled to protection from domestic users. 1 The survey population consisted of only 78 people in San Diego County who were "Spanish-speaking, and had recently purchased Mexican-style food at a supermarket or other food store." Grupo Gigante S.A. de C.V. v. Dallo & Co., Inc., 119 F.Supp.2d 1083, 1093 (C.D.Cal. 2000). Twenty-four respondents from that population "(1) had recently shopped at a Gigante store in Mexico; (2) believed that the Gigante name was affiliated with an entity that had at least one store located in Mexico; or (3) were aware of a Gigante supermarket located in Mexico." Id. However, the survey was conducted in 2000, nine years after Defendants first began using the Gigante name in the United States. When testing for awareness of the Gigante mark before Defendants' entry into the San Diego market in 1991, the awareness level dropped to 20 to 22 percent of the respondents. Id. That is, the district court based its conclusion that Plaintiffs' mark was well known on a survey that turned up just seventeen people who had heard of Gigante before 1991.

[33] That evidence is insufficient in two important respects. First, the survey result is highly questionable in view of its narrowly defined survey population. Plaintiffs' own description of their stores makes clear that the goods sold are little different from those available in any large retail grocery store: "Product offerings in the Gigante stores generally include a complete selection of perishable and non-perishable foods and a wide selection of general merchandise, as well as clothing and fashion items." Further, Plaintiffs admit in their briefs that the clientele of their Mexican stores includes "both Hispanic and non-Hispanic" customers. Consequently, nothing about either the nature of the goods sold by Plaintiffs or its customer base warrants limiting the relevant public to Mexican-Americans. 1 Expert surveys can provide the most persuasive evidence of secondary meaning. Comm. for Idaho's High Desert, Inc. v. Yost, 92 F.3d 814, 822 (9th Cir. 1996). "However, survey data is not a requirement and secondary meaning can be, and often is, proven by circumstantial evidence. . . . .

[34] Because Plaintiffs sell widely-available, non-specialized goods to the general public, it is uninformative to focus exclusively on Mexican-Americans living in San Diego County. The district court's reliance on Plaintiffs' survey is especially problematic because its population was limited to Mexican-Americans who had recently purchased Mexican-style food at a supermarket or grocery store. That survey is only very slightly more informative than the study whose probative value we dismissed entirely in Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999), because it focused exclusively on the plaintiff's existing customers: "Avery Dennison's marketing reports are comparable to a survey we discussed in Anti-Monopoly, Inc. v. General Mills Fun Group, Inc., 684 F.2d 1316 (9th Cir. 1982), proving only the near tautology that consumers already acquainted with Avery and Avery Dennison products are familiar with Avery Dennison." 189 F.3d at 879.

[35] Because a conclusion that Plaintiffs have a protectable interest would prohibit Defendants from selling groceries under that mark to any residents of San Diego Countynot just to Mexican-Americans-it makes little sense to define the relevant public so narrowly. Comprised of all grocery shoppers, the "relevant sector of the public" in this case is the very antithesis of a specialized market; because everyone eats, the relevant sector of the public consists of all residents of San Diego County, without qualification.

[36] Second, in view of the standard we announce today, I do not believe that a showing that 20 to 22 percent of the relevant market is familiar with the foreign mark establishes that a "significant" or "substantial" percentage of that market is familiar with the foreign mark. On that ground alone, I would conclude that Plaintiffs have failed, so far, to show that their mark is famous or well-known.

[37] In terms of the level of fame, trademark dilution cases often speak of a "significant percentage of the defendant's market." Mead Data Cent., Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1031 (2d Cir. 1989). Discussing the level of recognition required to establish "niche fame," McCarthy argues that "a mark should not be categorized as 'famous' unless it is known to more than 50 percent of the defendant's potential customers." 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 24:112, at 24-271 (4th ed. 2002).

[38] I would adopt a similar standard for the exception for famous or well-known foreign marks. When a foreign mark has not been used in the United States, I would require the owner of the foreign mark to show, through surveys and other evidence, that a majority of the defendant's customers and potential customers, on aggregate, were familiar with the foreign mark when the defendant began its allegedly infringing use. Admittedly, that is a high standard. However, I believe that a stringent standard is required when conferring trademark protection to a mark that has never been, and perhaps never may be, used in this country. A conclusion that Plaintiffs' mark is well-known in the relevant sector brings with it the right to oust Defendants from their own market, notwithstanding the fact that they have established priority of use. A bare showing of acquired distinctiveness should not suffice to invert the ordinary allocation of trademark rights.

[39] Of course, I recognize that the doctrine of "niche fame" has received heavy, and in the context of domestic trademark law, deserved criticism. However, the niche fame cases may provide the district court with an instructive benchmark against which to measure an intermediate standard of fame. 2 [40] In summary, I agree with the majority's conclusion that this case must be remanded and the evidence reevaluated under a heightened standard for the famous or well-known marks exception. However, I would hold directly that the evidence presented thus far does not meet that standard and thus does not suffice to warrant protection for Plaintiff's mark. Finally, in determining whether a foreign mark has met the standard for famous or wellknown foreign trademarks, I would look to precedent from this court and others addressing whether a mark has become famous in its market niche. [1] This case requires us to decide, among other things, the applicability of the "famous marks" doctrine to a claim for unfair competition under federal and state law. Plaintiffs ITC Limited and ITC Hotels Limited (collectively "ITC") held a registered United States trademark for restaurant services: "Bukhara." They sued defendants, Punchgini, Inc., Bukhara Grill II, Inc., and certain named individuals associated with these businesses, in the United States District Court for the Southern District of New York (Gerard E. Lynch, Judge ) claiming that defendants' use of a similar mark and related trade dress constituted trademark infringement, unfair competition, and false advertising in violation of federal and state law. ITC now appeals from the district court's award of summary judgment in favor of defendants on all claims. See ITC Ltd. v. Punchgini, Inc., 373 F.Supp.2d 275 (S.D.N.Y. 2005).

[2] Having reviewed the record de novo, we affirm the award of summary judgment on ITC's infringement claim, concluding, as did the district court, that ITC abandoned its Bukhara mark for restaurant services in the United States. To the extent ITC insists that the "famous marks" doctrine nevertheless permits it to sue defendants for unfair competition because its continued international use of the mark led to a federally protected right, we conclude that 2 There are no other cases that directly guide us here. Although international trademark law has recognized both the territoriality principle and the exception for famous and well-known marks since 1925, remarkably, no case addressed meaningfully the exception before the district court's decision below. Since that decision, only one case has confronted the issue. Empresa Cubana del Tabaca v. Culbro Corp., 70 U.S.P.Q.2d 1650, 2004 WL 602295 (S.D.N.Y. 2004). Empresa Cubana adhered closely to the reasoning and conclusion of the district court in this case. Id. at 1676-77.

has not yet incorporated that doctrine into federal trademark law. 2 Therefore, we affirm the award of summary judgment on ITC's federal unfair competition claim. Whether the famous marks doctrine applies to a New York common law claim for unfair competition and, if so, how famous a mark must be to trigger that application, are issues not easily resolved by reference to existing state law. Accordingly, we certify questions relating to these issues to the New York Court of Appeals, reserving our decision on this part of ITC's appeal pending the state court's response.

A. The Bukhara Restaurant in New Delhi [3] ITC Limited is a corporation organized under the laws of India. Through its subsidiary, ITC Hotels Limited, it owns and operates the Maurya Sheraton & Towers, a fivestar hotel in New Delhi, India. One of the restaurants in the Maurya Sheraton complex is "Bukhara." Named after a city in Uzbekistan on the legendary Silk Road between China and the West, Bukhara offers a cuisine and decor inspired by the northwest frontier region of India. Since its opening in 1977, the New Delhi Bukhara has remained in continuous operation, acquiring a measure of international renown. 4[4] Over the past three decades, ITC has sought to extend the international reach of the Bukhara brand. At various times, it has opened or, through franchise agreements, authorized Bukhara restaurants in Hong Kong, Bangkok, Bahrain, Montreal, Bangladesh, Singapore, Kathmandu, Ajman, New York, and Chicago. As of May 2004, however, ITC-owned or -authorized Bukhara restaurants were in operation only in New Delhi, Singapore, Kathmandu, and Ajman. [5] In 1986, an ITC-owned and -operated Bukhara restaurant opened in Manhattan. In 1987, ITC entered into a franchise agreement for a Bukhara restaurant in Chicago. Shortly after opening its New York restaurant, ITC sought to register the Bukhara mark with the United States Patent and Trademark Office ("Patent and Trademark Office"). On October 13, 1987, ITC obtained United States trademark registration for the Bukhara mark in connection with "restaurant services." See United States Trademark Registration No. 1,461,445 (Oct. 13, 1987). The Manhattan restaurant remained in operation for only five years, closing on 2 Although the term "famous marks" is often used to describe marks that qualify for protection under the federal anti-dilution statute, see 15 U.S.C. § 1125(c), the "famous marks" doctrine is, in fact, a different and distinct "legal concept under which a trademark or service mark is protected within a nation if it is well known in that nation even though the mark is not actually used or registered in that nation," 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 29.2, at 29-164 (4th ed. 2002). Thus, the famous marks doctrine might more aptly be described as the famous foreign marks doctrine. It is in this latter sense that we reference the famous marks doctrine on this appeal. December 17, 1991. On August 28, 1997, after a decade in business, ITC cancelled its Chicago franchise. Notwithstanding its registration, ITC concedes that it has not owned, operated, or licensed any restaurant in the United States using the Bukhara mark since terminating the Chicago restaurant franchise.

[6] Over three years later, in 2001, ITC commissioned a marketing study to determine the viability of selling packaged food products in the United States under the Bukhara label, including "Dal Bukhara." 5 In that same year, ITC filed an application with the Patent and Trademark Office to register a "Dal Bukhara" mark in connection with packaged, ready-toserve foods. In May 2003, ITC sold packaged Dal Bukhara food products to two distributors, one in California and the other in New Jersey. One month later, in June 2003, ITC exhibited Dal Bukhara products at the International Fancy Foods Show in New York City.

[7] Meanwhile, in 1999, named defendants Raja Jhanjee, Vicky Vij, Dhandu Ram, and Paragnesh Desai, together with Vijay Roa, incorporated "Punchgini, Inc." for the purpose of opening an Indian restaurant in New York City. Jhanjee, Vij, and Ram had all previously worked at the New Delhi Bukhara, and Vij had also previously worked at ITC's New York Bukhara. In selecting a name for their restaurant, the Punchgini shareholders purportedly considered "Far Pavilions" and "Passage to India" before settling on "Bukhara Grill." As Vij candidly acknowledged at his deposition, there was then "no restaurant Bukhara in New York, and we just thought we will take the name." Vij Dep. 25:7-11, May 5, 2004. After some initial success with "Bukhara Grill," several Punchgini shareholders, with the support of two additional partners, defendants Mahendra Singh and Bachan Rawat, organized a second corporation, "Bukhara Grill II, Inc.," in order to open a second New York restaurant, "Bukhara Grill II."

[8] When the record is viewed in the light most favorable to ITC, numerous similarities suggestive of deliberate copying can readily be identified between the defendants' Bukhara Grill restaurants and the Bukhara restaurants owned or licensed by ITC. Quite apart from the obvious similarity in name, defendants' restaurants mimic the ITC Bukharas' logos, decor, staff uniforms, wood-slab menus, and red-checkered customer bibs. Indeed, the similarities were sufficiently obvious to be noted in a press report, wherein defendant Jhanjee is quoted acknowledging that the New York Bukhara Grill restaurant "is quite like Delhi's Bukhara."

[9] By letter dated March 22, 2000, ITC, through counsel, demanded that defendants refrain from further use of the Bukhara mark. The letter accused defendants of unlawfully appropriating the reputation and goodwill of ITC's Bukhara restaurants in India and the United States by adopting a virtually identical name for their New York Bukhara Grill restaurants. It further demanded, under threat of legal action, that defendants acknowledge ITC's exclusive rights to the Bukhara mark, disclose the period for which defendants had used the mark, and remit to ITC any profits derived therefrom.

[10] In a response dated March 30, 2000, defendants' counsel expressed an interest in avoiding litigation. Nevertheless, counsel observed that ITC appeared to have abandoned the Bukhara mark by not using it in the United States for several years. Receiving no reply, defendants' counsel sent a second letter to ITC dated June 22, 2000, stating that, if no response was forthcoming "by June 28, 2000, we will assume that ITC Limited has abandoned rights it may have had in the alleged mark and any alleged claim against our client." Marsh Letter to Horwitz, June 22, 2000. The record indicates no timely reply.

[11] Instead, almost two years later, on April 15, 2002, ITC's counsel wrote to defendants reiterating the demands made in March 2000 and complaining of defendants' failure formally to respond to that initial letter. Defendants' counsel promptly challenged the latter assertion; faulted ITC for failing to reply to his March 22, 2000 letter; and reasserted his abandonment contention, a position that he claimed was now bolstered by the passage of additional time. There was apparently no further communication among the parties until this lawsuit.

[12] On February 26, 2003, ITC filed the instant lawsuit. In the amended complaint that is the controlling pleading for purposes of our review, ITC charged defendants with trademark infringement under section 32(1)(a) of the Lanham Act, see 15 U.S.C. § 1114(1)(a), as well as unfair competition and false advertising under sections 43(a) and 44(h) of the Lanham Act, see 15 U.S.C. § § 1125(a), 1126(h). ITC also pursued parallel actions under New York common law. 6 As an affirmative defense, defendants charged ITC with abandonment of its United States rights to the Bukhara mark and, on that ground, they filed a counterclaim seeking cancellation of the ITC registration.

[13] Following discovery, defendants successfully moved for summary judgment. In a detailed published decision, the district court ruled that ITC could not pursue an infringement claim because the record conclusively demonstrated its abandonment of the Bukhara mark as applied to restaurants in the United States. See ITC Ltd. v. Punchgini, Inc., 373 F.Supp.2d at 285. To the extent ITC asserted that its continued operation of Bukhara restaurants outside the United States allowed it to sue defendants for unfair competition under the famous marks doctrine, the district court was not convinced. It observed that, even if it were to assume the applicability of the famous marks doctrine, ITC had failed to adduce sufficient evidence to permit a reasonable jury to conclude that the name or trade dress of its foreign restaurants had attained the requisite level of United States recognition to trigger the doctrine. See id. at 291. Finally, the district court found that ITC lacked standing to pursue its false advertising claim. See id. at 291-92. This appeal followed.

[14] Before this court, ITC advances essentially three arguments. It submits that (1) the record does not conclusively establish its abandonment of United States rights in the Bukhara mark, (2) the district court misapplied applicable federal and state law regarding the famous marks doctrine, and (3) it has standing to sue defendants for false advertising.

{The court determined that ITC had abandoned its registered Bukhara mark. We will address abandonment in Part III of the casebook below.}

C. Unfair Competition 1. Federal Claim Under Section 43(a)(1)(A) of the Lanham Act

[15] ITC claims that defendants violated section 43(a)(1)(A) of the Lanham Act by engaging in unfair competition in the use of its Bukhara mark and its related trade dress. Section 43(a)(1)(A) allows the producer of a product or service to initiate a cause of action against a person who uses "any word, term name, symbol, or device, or any combination thereof . . . which . . . is likely to cause confusion . . . as to the origin, sponsorship, or approval of [the producer's] . . . services." 15 U.S.C. § 1125(a)(1)(A). This protection is broader than that afforded by section 32(1)(a), which prohibits only infringement of marks actually registered with the Patent and Trademark Office. See Two Pesos v. Taco Cabana, 505 U.S. 763, 768 (1992) ("Section 43(a) prohibits a broader range of practices than does § 32, which applies to registered marks, but it is common ground that § 43(a) protects qualifying unregistered trademarks" (internal citations and quotation marks omitted)); accord Chambers v. Time Warner, Inc., 282 F.3d 147, 155 (2d Cir. 2002).

[16] To succeed on a section 43(a)(1)(A) claim, a plaintiff must prove (1) that the mark or dress is distinctive as to the source of the good or service at issue, and (2) that there is the likelihood of confusion between the plaintiff's good or service and that of the defendant. [17] In light of our conclusion that, as a matter of law, ITC abandoned its registered Bukhara mark as of August 28, 2000, ITC confronts a high hurdle in demonstrating that, at the time of defendants' challenged actions, it possessed a priority right to the use of the Bukhara mark and related trade dress for restaurants in the United States. See Vais Arms, Inc. v. Vais, 383 F.3d at 292 n. 8 (noting that "abandonment results in a break in the chain of priority") (quoting 2 McCarthy, supra, § 17:4); Emergency One, Inc. v. American Fire Eagle Engine Co., 332 F.3d 264, 268 (4th Cir. 2003) ("The priority to use a mark . . . can be lost through abandonment."). To clear this hurdle, ITC invokes the famous marks doctrine. It submits that, because (1) since 1977, it has continuously used its Bukhara mark and trade dress outside the United States; and (2) that mark was renowned in the United States before defendants opened their first Bukhara Grill restaurant in New York in 1999, it has a priority right to the mark sufficient to claim section 43(a)(1)(A) protection in this country.

[18] To explain why we disagree, we begin by discussing the principle of trademark territoriality. We then discuss the famous marks exception to this principle and the international treaties, implementing legislation, and policy concerns relied on by ITC in urging the application of this exception to this case.

[19] The principle of territoriality is basic to American trademark law. Cir. 1990). As our colleague, Judge Leval, has explained, this principle recognizes that a trademark has a separate legal existence under each country's laws, and that its proper lawful function is not necessarily to specify the origin or manufacture of a good (although it may incidentally do that), but rather to symbolize the domestic goodwill of the domestic markholder so that the consuming public may rely with an expectation of consistency on the domestic reputation earned for the mark by its owner, and the owner of the mark may be confident that his goodwill and reputation (the value of the mark) will not be injured through use of the mark by others in domestic commerce. [20] Precisely because a trademark has a separate legal existence under each country's laws, ownership of a mark in one country does not automatically confer upon the owner the exclusive right to use that mark in another country. Rather, a mark owner must take the proper steps to ensure that its rights to that mark are recognized in any country in which it seeks to assert them. Cf. Barcelona.com, Inc. v [21] As we have already noted, United States trademark rights are acquired by, and dependent upon, priority of use. See supra at 146-47. The territoriality principle requires the use to be in the United States for the owner to assert priority rights to the mark under the Lanham Act. See Buti v. Impressa Perosa, S.R.L., 139 F.3d at 103 (noting that "Impressa's 14 The "territoriality principle" stands in contrast to the so-called "universality principle," which posits that "if a trademark [is] lawfully affixed to merchandise in one country, the merchandise would carry that mark lawfully wherever it went and could not be deemed an infringer although transported to another country where the exclusive right to the mark was held by someone other than the owner of the merchandise. States combined with rendering of services abroad to American customers). Thus, absent some use of its mark in the United States, a foreign mark holder generally may not assert priority rights under federal law, even if a United States competitor has knowingly appropriated that mark for his own use. See Person's Co. v. Christman, 900 F.2d at 1569-70 (holding that foreign use is not sufficient to establish priority rights even over a United States competitor who took mark in bad faith).

b. The Famous Marks Doctrine as an Exception to the Territoriality Principle

[22] ITC urges us to recognize an exception to the territoriality principle for those foreign marks that, even if not used in the United States by their owners, have achieved a certain measure of fame within this country.

(1) Origin of the Famous Marks Doctrine [23] The famous marks doctrine is no new concept. It originated in the 1925 addition of Article 6bis to the Paris Convention for the Protection of Industrial Property, Mar. 20, 1883, as rev. at Stockholm, July 14, 1967, 21 U.S.T. 1583, 828 U.N.T.S. 305 ("Paris Convention"). Article 6bis, which by its terms applies only to trademarks, requires member states ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.

Paris Convention, art. 6bis. 15 One commentator has observed that the "purpose" of Article 6bis "is to avoid the registration and use of a trademark, liable to create confusion with another mark already well known in the country of such registration or use, although the latter wellknown mark is not, or not yet, protected in that country by a registration which would normally prevent the registration or use of the conflicting mark." G.H.C. Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property 90 (1968). The New York restaurant had apparently adopted both the Paris restaurant's name and slogan ("Tout ce qui vient de la mer" 16 ) and boldly advertised itself as "The Famous French Sea Food Restaurant." While the French plaintiff conceded that it had never operated a restaurant in the United States, it nevertheless sought relief for the unauthorized use of its name and mark under the common law of unfair competition.

[25] In ruling in favor of the plaintiff, the trial court first observed that "the right of a French corporation to sue here for protection against unfair competition was expressly granted in [Article 10bis of] the [Paris] convention between the United States and various other powers for the protection of industrial property." Id. at 554, 288 N.Y.S. at 532. 17 It then ruled that "actual competition in a product is not essential to relief under the doctrine of unfair competition." Id. at 555, 288 N.Y.S. at 533. The plaintiff was entitled to protection from "'any injury which might result to it from the deception of the public through the unauthorized use of its trade name, or a trade name which would lead the public to believe that it was in some way connected with the plaintiff. ' to protection against unfair competition because its trademark enjoyed "wide repute" and the facts of the case indicated a total lack of good faith on the part of the defendants. Id. at 559, 288 N.Y.S. at 537. The basis of this holding, it should be noted, was not Article 6bis of the Paris Convention. Instead, the holding was based entirely on New York common law principles of unfair competition.

[26] More than twenty years later, in Vaudable v. Montmartre, Inc., 20 Misc.2d 757, 193 N.Y.S.2d 332 (N.Y.Sup.Ct. 1959), another New York trial court granted a different Paris restaurant, "Maxim's," injunctive relief against a New York City restaurant that had appropriated its name, decor, and distinctive script style, all without permission. The court concluded that the lack of direct competition between the two restaurants was "immaterial" to a common law claim for unfair competition. Id. at 759, 193 N.Y.S.2d at 335. The only relevant question was whether "there had been a misappropriation, for the advantage of one person, of a property right belonging to another." Id. at 759, 193 N.Y.S.2d at 335. Noting that the Paris Maxim's had been in continuous operation since 1946, when it reopened after World War II, the court concluded that its owners had priority rights as against the junior American user by virtue of (1) their uninterrupted use of the mark abroad, and (2) the fame of the "Maxim's" mark among "the class of people residing in the cosmopolitan city of New York who dine out." Id. at 758, 193 N.Y.S.2d at 334.

(b) Federal Actions (i) Trademark Board Rulings

[27] A quarter century later, the federal Trademark Trial and Appeal Board ("Trademark Board") invoked Vaudable's recognition of the famous marks doctrine in several inter partes proceedings. 18 In Mother's Rests., Inc. v. Mother's Other Kitchen, Inc., the Trademark Board stated in dictum that:

[I]t is our view that prior use and advertising of a mark in connection with goods or services marketed in a foreign country (whether said advertising occurs inside or outside the United States) creates no priority rights in said mark in the United States as against one who, in good faith, has adopted the same or similar mark for the same or similar goods or services in the United States prior to the foreigner's first use of the mark on goods or services sold and/or offered in the United States at least unless it can be shown that the foreign party's mark was, at the time of the adoption and first use of a similar mark by the first user in the United States, a "famous" mark within the meaning of Vaudable v. Montmartre, Inc. 218 U.S.P.Q 1046, at *8 (TTAB 1983) (concluding that customers would be likely to confuse the "Mother's Pizza Parlour" trademark with the "Mother's Other Kitchen" trademark) (internal citation omitted). 18 The Trademark Board's primary function is to determine whether trademarks are registerable and to conduct opposition and cancellation proceedings by which interested parties can dispute the claims of applicants and registrants. See 15 U.S.C. § § 1051, 1063-64.

[28] That same year, the Trademark Board applied the same reasoning in All England Lawn Tennis Club, Ltd. v. Creations Aromatiques, 220 U.S.P.Q. 1069 (1983), granting plaintiff's request to block registration of a trademark for "Wimbledon Cologne" even though plaintiff was not itself using the Wimbledon mark on any product sold in the United States. The Trademark Board observed that the Wimbledon mark had "acquired fame and notoriety as used in association with the annual championships within the meaning of Vaudable" and that "purchasers of applicant's cologne would incorrectly believe that said product was approved by or otherwise associated with the Wimbledon tennis championships and that allowance of the application would damage opposer's rights to the mark." Id. at *10.

Recently, the Trademark Board has reiterated in dicta that owners of well known foreign marks need not use those marks in the United States to challenge the registration of marks likely to promote confusion on the part of consumers. (Fed. Cir. 1987). In applying this principle to this case, however, we identify a significant concern: nowhere in the three cited rulings does the Trademark Board state that its recognition of the famous marks doctrine derives from any provision of the Lanham Act or other federal law. Indeed, the federal basis for the Trademark Board's recognition of the famous marks doctrine is never expressly stated. Its reliance on Vaudable suggests that recognition derives from state common law. At least one Trademark Board member, however, has questioned whether state common law can support recognition of the famous marks doctrine as a matter of federal law:

[I]t seems to me that the Vaudable decision according protection to the famous Maxim's restaurant in the United States . . . is inapplicable in this case since that decision was based on a theory of unfair competition, namely misappropriation, under the law of the State of New York. Under Federal law, it seems to me that application of the well-known marks doctrine depends on whether the applicable text of the Paris Convention . . . and, in particular, Article 6bis of that Convention, is self-executing [so as to become part of federal law].

Mother's Rests., Inc. v. Mother's Other Kitchen, Inc., 218 U.S.P.Q 1046, at *21 (Allen, concurring in part, dissenting in part) (internal citations omitted). Because we conclude that the Trademark Board's reliance on state law to recognize the famous marks doctrine falls outside the sphere to which we owe deference, we consider de novo the question of that doctrine's existence within federal trademark law.

[31] To date, the Ninth Circuit Court of Appeals is the only federal appeals court to have recognized the famous marks doctrine as a matter of federal law. See Grupo Gigante S.A. De C.V. v. Dallo & Co., 391 F.3d at 1088; cf. International Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Estrangers a Monaco, 329 F.3d at 389 n. 9 (Motz, J., dissenting) (noting that the famous marks doctrine has been applied so infrequently that its viability is uncertain). In Grupo Gigante, 391 F.3d at 1088, the Ninth Circuit considered whether the "Gigante" markregistered and used by a large chain of grocery stores in Mexico since 1963-was sufficiently well known among Mexican-Americans in Southern California to afford it priority over a competing "Gigante" mark used by a separate chain of Los Angeles grocery stores. In resolving this question, the court ruled:

[T]here is a famous mark exception to the territoriality principle. While the territoriality principle is a long-standing and important doctrine within trademark law, it cannot be absolute. An absolute territoriality rule without a famous-mark exception would promote consumer confusion and fraud. Commerce crosses borders. In this nation of immigrants, so do people. Trademark is, at its core, about protecting against consumer confusion and "palming off." There can be no justification for using trademark law to fool immigrants into thinking that they are buying from the store they liked back home.

[32] In Grupo Gigante, the Ninth Circuit did not reference either the language of the Lanham Act nor Article 6bis of the Paris Convention to support recognition of the famous marks doctrine. Indeed, elsewhere in its opinion, the court specifically stated that the Paris Convention creates no "additional substantive rights" to those provided by the Lanham Act. Id. at 1100. The court also acknowledged that the famous marks doctrine is not recognized by California state law. See id. at 1101 (observing that cases cited by plaintiff "provide no support for the conclusion that use anywhere in the world suffices to establish priority in California"). Thus, it appears that the Ninth Circuit recognized the famous marks doctrine as a matter of sound policy: "An absolute territoriality rule without a famous marks exception would promote customer confusion and fraud." Id. at 1094.

[33] This court has twice referenced the famous marks doctrine, but on neither occasion were we required to decide whether it does, in fact, provide a legal basis for acquiring priority rights in the United States for a foreign mark not used in this country. See Buti v. Impressa Perosa, S.R.L., 139 F.3d at 104 n. 2 (referencing Mother's Restaurant and Vaudable but, in the end, concluding that famous marks doctrine "has no application here given that Impressa has made no claim under that doctrine"); see also Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d at 481 (declining to decide whether famous marks doctrine should be recognized because "even assuming that the famous marks doctrine is otherwise viable and applicable, the [Cuban] embargo bars [plaintiff] from acquiring property rights in the . . . mark through the doctrine"). 19. . . . 1994)) (stating that TRIPs and other GATT agreements "are not self-executing and thus their legal effect in the United States is governed by implementing legislation"). While Congress has amended numerous federal statutes to implement specific provisions of the TRIPs agreement, it appears to have enacted no legislation aimed directly at Article 16(2). 23 [36] ITC nevertheless submits that Lanham Act sections 44(b) and (h) effectively incorporate the protections afforded famous marks by the Paris Convention and TRIPs. {In a lengthy analysis, the court concluded that § § 44(b) & (h) do not provide a basis for famous marks protection.} (d) Policy Rationales Cannot, by Themselves, Support Judicial Recognition of the Famous Marks Doctrine Under Federal Law

(c) Treaties Protecting Famous Marks and United States Implementing Legislation

[37] Even if the Lanham Act does not specifically incorporate Article 6bis and Article 16(2) protections for famous foreign marks, ITC urges this court to follow the Ninth Circuit's lead and to recognize the famous marks doctrine as a matter of sound policy. See Grupo Gigante S.A. De C.V. v. Dallo & Co., 391 F.3d at 1094 (recognizing famous marks doctrine because "[t]here can be no justification for using trademark law to fool immigrants into thinking that they are buying from the store they liked back home"). ITC argues that the United States cannot expect other nations to protect famous American trademarks if United States courts decline to afford reciprocal protection to famous foreign marks.

[38] We acknowledge that a persuasive policy argument can be advanced in support of the famous marks doctrine. See, e.g., De Beers LV Trademark Ltd. v. DeBeers Diamond Syndicate, Inc., 2005 U.S. Dist. LEXIS 9307, at *25 (noting that "[r]ecognition of the famous marks doctrine is particularly desirable in a world where international travel is commonplace and where the Internet and other media facilitate the rapid creation of business goodwill that transcends borders") . . . . The fact that a doctrine may promote sound policy, however, is not a sufficient ground for its judicial recognition, particularly in an area regulated by statute. See, e.g., Badaracco v. Comm'r, 464 U.S. 386, 398 (1984) ("The relevant question is not whether, as an abstract matter, the rule advocated by petitioners accords with good policy. The question we must consider is whether the policy petitioners favor is that which Congress effectuated by its enactment of [the statute]."). In light of the comprehensive and frequently modified federal statutory scheme for trademark protection set forth in the Lanham Act, we conclude that any policy arguments in favor of the famous marks doctrine must be submitted to Congress for it to determine whether and under what circumstances to accord federal recognition to such an exception to the basic principle of territoriality. See Almacenes Exito S.A. v. El Gallo Meat Mkt., Inc., 381 F.Supp.2d at 326-28. Absent such Congressional recognition, we must decline ITC's invitation to grant judicial recognition to the famous marks doctrine simply as a matter of sound policy.

[39] For all these reasons, we affirm the district court's award of summary judgment in favor of defendants on ITC's federal unfair competition claim.

State Common Law Claim for Unfair Competition a. ITC's Reliance on the Famous Marks Doctrine to Sue for Unfair Competition Under New York Law

[40] ITC submits that, even if we affirm the district court's dismissal of its federal unfair competition claim, we must reverse the dismissal of its parallel state law claim. As it correctly observes, New York common law allows a plaintiff to sue for unfair competition where a "property right or a commercial advantage" has been "misappropriated." Flexitized, Inc. v. National Flexitized Corp., 335 F.2d 774, 781-82 (2d Cir. 1964). Nevertheless, in light of ITC's abandonment of the Bukhara mark and dress for restaurants in the United States, its common law assertion of a "property right or a commercial advantage" in these designations based on their foreign use depends on whether New York recognizes the famous marks doctrine in the circumstances here at issue.

[ (2) Certified Question 1: Does New York Recognize the Famous Marks Doctrine?

[43] In this case, we conclude that these factors weigh in favor of certifying the question of New York's recognition of the famous marks doctrine. First, the only New York cases to address the question of whether state common law recognizes the famous marks doctrine, Vaudable and Prunier, are decades-old trial court decisions. While these decisions are routinely cited by non-New York courts as accurate statements of the state's common law of unfair competition, 28 and while commentators routinely identify the cases as foundational in the development of the famous marks doctrine, 29 the lack of authoritative adoption of the famous marks doctrine by New York's highest court weighs in favor of certification. Second, recognition of the famous marks doctrine as part of New York common law is plainly an important policy issue for a state that plays a pivotal role in international commerce. This factor strongly counsels in favor of our soliciting the views of the New York Court of Appeals. See generally Board of Regents v. Roth, 408 U.S. 564, 577, 92 S.Ct. 2701, 33 L.Ed.2d 548 (1972) (observing that property interests "are created and their dimensions are defined by existing rules or understandings that stem from an independent source such as state law"). Finally, certification will conclusively resolve the question of whether ITC's state unfair competition claim was, in fact, properly dismissed.

[44] Accordingly, we certify the following question to the New York Court of Appeals: "Does New York common law permit the owner of a famous mark or trade dress to assert property rights therein by virtue of the owner's prior use of the mark or dress in a foreign country?"

(3) Certified Question 2: How Famous Must a Mark Be to Come Within the Famous Marks Doctrine?

[45] If the New York Court of Appeals were to answer the first certified question in the affirmative, we ask it to consider a second query: "How famous must a foreign mark or trade dress be to permit its owner to sue for unfair competition?" 30 Although we have had no prior occasion to address this question, we note the availability of a number of possible standards.

[46] If New York were inclined to recognize a broad famous marks doctrine, the Court of Appeals might conclude that a foreign mark's acquisition of "secondary meaning" in the state was sufficient to accord it common law protection. "Secondary meaning" is a term of art referencing a trademark's ability to "'identify the source of the product rather than the product itself.'" Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. at 766 n. 4 [47] The Court of Appeals might note, however, that in Grupo Gigante the Ninth Circuit specifically rejected "secondary meaning" as the appropriate standard for application of the famous marks doctrine. That federal court explained that such an interpretation of the 30 In formulating both certified questions, we do not intend to limit the Court of Appeals' analysis or its response. That court may expand or modify the certified questions as it deems appropriate to indicate whether state common law recognizes the famous marks doctrine and the scope of that recognition.

famous marks doctrine went "too far" because it effectively eliminated the territoriality principle that itself "has a long history in the common law." Id. at 1097-98.

[48] Instead, the Court of Appeals might consider the Ninth Circuit's compromise standard, which can be described as "secondary meaning plus." See id. at 1098 (holding that "secondary meaning is not enough"). Under this test, "where the mark has not before been used in the American market,foot_43 the court must be satisfied, by a preponderance of the evidence, that a substantial percentage of consumers in the relevant American market is familiar with the foreign mark." Id. (emphasis added); see also 4 McCarthy, supra, § 29:4, at 29-17 (suggesting that a "substantial" percentage of consumers in the relevant American market would be at least 50%).

[49] Judge Graber, concurring in Grupo Gigante, emphasized the intermediate character of this standard: I agree that a foreign owner of a supposedly famous or well-known foreign trademark must show a higher level of "fame" or recognition than that required to establish secondary meaning. Ultimately, the standard for famous or wellknown marks is an intermediate one. To enjoy extraterritorial trademark protection, the owner of a foreign trademark need not show the level of recognition necessary to receive nation-wide protection against trademark dilution. On the other hand, the foreign trademark owner who does not use a mark in the United States must show more than the level of recognition that is necessary in a domestic trademark infringement case. 391 F.3d at 1106 (Graber, J., concurring).

[50] Precisely because "secondary meaning plus" is an intermediate standard, the Court of Appeals might also consider the high standard of recognition established by section 43(c) of the Lanham Act, the federal anti-dilution statute. See 15 U.S.C. § 1125(c). Under that federal law, four non-exclusive factors are relevant when determining whether a mark is sufficiently famous for anti-dilution protection:

(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties;

(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark;

(iii) The extent of actual recognition of the mark;

(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.

[51] Under the federal anti-dilution statute, the holder of a mark deemed famous under this test may seek an injunction against another person who, "at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury." Id. § 1125(c)(1). ITC does not sue for dilution in this case. Nevertheless, the Court of Appeals might consider whether the factors set out in the statute provide a useful guide for defining famous marks generally.

(d) Recommendation of the World Intellectual Property Organization

[52] Finally, should the Court of Appeals decide to articulate an entirely new and different standard of recognition for the application of the famous marks doctrine, among the factors it might consider are those identified as relevant in the non-binding "Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks," adopted by the World Intellectual Property Organization in 1999:

(1) the degree of knowledge or recognition of the mark in the relevant sector of the public;

(2) the duration, extent and geographical area of any use of the mark;

(3) the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, or the goods and/or services to which the mark applies;

(4) the duration and geographical area of any registrations, and/or any application for registration, of the mark, to the extent that they reflect use or recognition of the mark;

(5) the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities; [and] (6) the value associated with the mark. World Intellectual Property Organization, Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks (Sept. 1999), available at http:// www. wipo. int/ about-ip/ en/ development iplaw/ pub 833.htm.

[53] We express no view as to how New York should define its state common law. We simply reserve decision on ITC's challenge to the district court's dismissal of its state common law claim for unfair competition pending the New York Court of Appeals response to our certified questions.

and that it has a substantial following in New York city and in other parts of the world" was proved (id. at 559 [emphasis added]).

[6] In Vaudable, the plaintiff's restaurant in Paris-Maxim's-was internationally famous "in the high-class restaurant field" (20 Misc 2d at 758-759). The defendants "appropriate[d] the good will plaintiffs [had] created in the name Maxim's as a restaurant," and were therefore held liable for unfair competition based on misappropriation even though the parties were "not in present actual competition" (id. at 759). "The trend of the law, both statutory and decisional," the court "has been to extend the scope of the doctrine of unfair competition, whose basic principle is that commercial unfairness should be restrained whenever it appears that there has been a misappropriation, for the advantage of one person, of a property right belonging to another" (id. at 759 [ famous examples" of the "well known" marks doctrine]), Prunier and Vaudable themselves in no way explain or proclaim-let alone rely on-any famous or well-known marks doctrine for their holdings. Instead, Prunier and Vaudable fit logically and squarely within our time-honored misappropriation theory, which prohibits a defendant from using a plaintiff's property right or commercial advantage-in Prunier and Vaudable, the goodwill attached to a famous name-to compete unfairly against the plaintiff in New York.

[8] Under New York law, "[a]n unfair competition claim involving misappropriation usually concerns the taking and use of the plaintiff's property to compete against the plaintiff's own use of the same property" (Roy Export, 672 F2d at 1105). The term "commercial advantage" has been used interchangeably with "property" within the meaning of the misappropriation theory (see Flexitized, Inc. v National Flexitized Corp., 335 F2d 774, 781-782 [2d Cir 1964]). What Prunier and Vaudable stand for, then, is the proposition that for certain kinds of businesses (particularly cachet goods/services with highly mobile clienteles), goodwill can, and does, cross state and national boundary lines.

[9] Accordingly, while we answer "Yes" to the first certified question, we are not thereby recognizing the famous or well-known marks doctrine, or any other new theory of liability under the New York law of unfair competition. Instead, we simply reaffirm that when a business, through renown in New York, possesses goodwill constituting property or a commercial advantage in this state, that goodwill is protected from misappropriation under New York unfair competition law. This is so whether the business is domestic or foreign.

[10] "How famous must a foreign mark or trade dress be to permit its owner to sue for unfair competition?"

[11] Protection from misappropriation of a famous foreign mark presupposes the existence of actual goodwill in New York (see e.g. Roy Export, 672 F2d at 1105 [misappropriation under New York law usually requires use in state of plaintiff's property or commercial advantage to compete against plaintiff]). If a foreign plaintiff has no goodwill this state to appropriate, there can be no viable claim for unfair competition under a theory of misappropriation. At the very least, a plaintiff's mark, when used in New York, must call to mind its goodwill. Otherwise, a plaintiff's property right or commercial advantage based on the goodwill associated with its mark is not appropriated in this state when its unregistered mark is used here. Thus, at a minimum, consumers of the good or service provided under a certain mark by a defendant in New York must primarily associate the mark with the foreign plaintiff (cf. Allied Maintenance Corp. v Allied Mech. Trades, 42 NY2d 538, 545 [1977]).

[12] Whether consumers of a defendant's goods or services primarily associate such goods or services with those provided by a foreign plaintiff is an inquiry that will, of necessity, vary with the facts of each case. Accordingly, we cannot-and do not-provide an exhaustive list of the factors relevant to such an inquiry. That said, some factors that would be relevant include evidence that the defendant intentionally associated its goods with those of the foreign plaintiff in the minds of the public, such as public statements or advertising stating or implying a connection with the foreign plaintiff; direct evidence, such as consumer surveys, indicating that consumers of defendant's goods or services believe them to be associated with the plaintiff; and evidence of actual overlap between customers of the New York defendant and the foreign plaintiff.

[13] If the customers of a New York defendant do not identify a mark with the foreign plaintiff, then no use is being made of the plaintiff's goodwill, and no cause of action lies under New York common law for unfair competition. As a result, to prevail against defendants on an unfair competition theory under New York law, ITC would have to show first, as an independent prerequisite, that defendants appropriated (i.e., deliberately copied), ITC's Bukhara mark or dress for their New York restaurants. If they successfully make this showing, plaintiffs would then have to establish that the relevant consumer market for New York's Bukhara restaurant primarily associates the Bukhara mark or dress with those Bukhara restaurants owned and operated by ITC.

[14] Accordingly, the certified questions should be answered in accordance with this opinion.

1. The final disposition of ITC v. Punchgini. The case returned to the Second Circuit, which affirmed the district court's initial grant of summary judgment to the defendant on the ground, among others, that BUKARA for restaurant services had no secondary meaning in New York. ITC Ltd. v. Punchgini, Inc., 518 F.3d 159 (2d Cir. 2008), aff'g 373 F.Supp.2d 275 (S.D.N.Y. 2005).

2. "Well-known marks doctrine" or "famous marks doctrine"? In a footnote in a portion of the New York Court of Appeals opinion not included in the excerpt above, the court addressed the terminological ambiguity over the correct name of the doctrine at issue: There is some ambiguity regarding the proper name for what has been variously called the "famous marks doctrine," the "well-known marks doctrine" and the "famous mark doctrine" (see e.g. 5 McCarthy on Trademarks and Unfair Competition § 29:4 [4th ed 2007] [using the above names interchangeably]). Apparently, the use of "well-known" in place of "famous" took hold after the Lanham Act was amended by passage of the Federal Trademark Anti-Dilution Act of 2006, which uses "famous" as a term of art (see 15 USC § 1125 [c]). At any rate, "famous" and "well-known," "mark" and "marks," have been used interchangeably to describe the putative doctrine, and no distinction is intended by our choice of words here.

c. Belmora and the End of Territorial Limits on Trademark Rights?

As stated above, the Fourth Circuit's opinion in Belmora LLC v. Bayer Consumer Care AG, 819 F.3d 697 (4th Cir. 2016), cert. denied, 137 S. Ct. 1202, (U.S. 2017), represents a significant break with much of our traditional understanding of the national limits of trademark rights and with the requirement that a plaintiff use a mark in commerce in the U.S. (or otherwise own a mark that qualifies as a well-known mark in the U.S.) in order to assert exclusive rights in the mark.

Two noteworthy cases form the basis of Belmora. The first is International Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Etrangers à Monaco, 329 F.3d 359 (4th Cir. 2003). The mark at issue was CASINO DE MONTE CARLO. The declaratory plaintiffs operated various websites whose domain names and content incorporated at least "some portion", id. at 361, of the term CASINO DE MONTE CARLO and various images of the declaratory defendant's casino in Monte Carlo, which has operated under the CASINO DE MONTE CARLO mark since 1863. The defendant advertised its casino in the U.S. but rendered its services only abroad. In a controversial opinion, the Fourth Circuit found infringement. Judge Luttig reasoned, in short, that the defendant had shown "use in commerce" because (1) U.S. consumers' purchase of casino services from the defendant constituted trade with a foreign nation that Congress was empowered to regulate, and (2) the defendant's advertising of its mark in the U.S. had made the mark distinctive as a designation of source in the U.S. In a thorough and well-reasoned opinion, Judge Motz dissented. Id. at 383-398 (Motz, J., dissenting).

The second is Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014). Static Control Components (SCC) produced components that various companies employed in the remanufacture and refurbishing of used toner cartridges for Lexmark printers. Such remanufacturers were significantly disrupting Lexmark's own sales of replacement toner cartridges for its printers. SCC alleged that Lexmark engaged in false advertising (1) by informing certain Lexmark toner cartridge end-users that they were contractually required to return used cartridges to Lexmark and (2) by informing remanufacturing companies that it was illegal to refurbish certain Lexmark toner cartridges and to use SCC's components in doing so. Id. at 122-23. The district court granted Lexmark's motion to dismiss on the ground that SCC lacked standing. Id. at 123-24. The Sixth Circuit reversed. Id. at 124-25. As explained in Belmora, the Supreme Court clarified in Lexmark what the plaintiff must show to have standing to sue for false advertising.

Two final notes: First, the Belmora opinion makes no reference whatsoever to the wellknown marks doctrine. As you will see, Belmora's facts cry out for application of the doctrine. But early on in the litigation, the TTAB determined that Article 6bis of the Paris Convention "do[es] not afford an independent cause of action for parties in Board proceedings," nor does any section of the Lanham Act establish such a cause of action. AGEE, Circuit Judge: [1] In this unfair competition case, we consider whether the Lanham Act permits the owner of a foreign trademark and its sister company to pursue false association, false advertising, and trademark cancellation claims against the owner of the same mark in the United States. Bayer Consumer Care AG ("BCC") owns the trademark "FLANAX" in Mexico and has sold naproxen sodium pain relievers under that mark in Mexico (and other parts of Latin America) since the 1970s. Belmora LLC owns the FLANAX trademark in the United States and has used it here since 2004 in the sale of its naproxen sodium pain relievers. BCC and its U.S. sister company Bayer Healthcare LLC ("BHC," and collectively with BCC, "Bayer") contend that Belmora used the FLANAX mark to deliberately deceive Mexican-American consumers into thinking they were purchasing BCC's product.

[2] BCC successfully petitioned the U.S. Trademark Trial and Appeal Board ("TTAB") to cancel Belmora's registration for the FLANAX mark based on deceptive use. Belmora appealed the TTAB's decision to the district court. In the meantime, BCC filed a separate complaint for false association against Belmora under § 43 of the Lanham Act, 15 U.S.C.

§ 1125, and in conjunction with BHC, a claim for false advertising. After the two cases were consolidated, the district court reversed the TTAB's cancellation order and dismissed the false association and false advertising claims.

[3] Bayer appeals those decisions. For the reasons outlined below, we vacate the judgment of the district court and remand this case for further proceedings consistent with this opinion. I. Background [4] This appeal comes to us following the district court's grant of Belmora's Federal Rule of Civil Procedure 12(b)(6) motion to dismiss Bayer's complaint and Belmora's Rule 12(c) motion for judgment on the pleadings on the trademark cancellation claim. . . . Belmora later modified its packaging (below), but the color scheme, font size, and typeface remain similar to that of BCC's FLANAX packaging.

[7] In addition to using similar packaging, Belmora made statements implying that its FLANAX brand was the same FLANAX product sold by BCC in Mexico. For example, Belmora circulated a brochure to prospective distributors that stated, For generations, Flanax has been a brand that Latinos have turned to for various common ailments. Now you too can profit from this highly recognized topselling brand among Latinos. Flanax is now made in the U.S. and continues to show record sales growth everywhere it is sold. Flanax acts as a powerful attraction for Latinos by providing them with products they know, trust and prefer.

Belmora also employed telemarketers and provided them with a script containing similar statements. This sales script stated that Belmora was "the direct producers of FLANAX in the US" and that "FLANAX is a very well known medical product in the Latino American market, for FLANAX is sold successfully in Mexico." Belmora's "sell sheet," used to solicit orders from retailers, likewise claimed that "Flanax products have been used [for] many, many years in Mexico" and are "now being produced in the United States by Belmora LLC."

[8] Bayer points to evidence that these and similar materials resulted in Belmora's distributors, vendors, and marketers believing that its FLANAX was the same as or affiliated with BCC's FLANAX. For instance, Belmora received questions regarding whether it was legal for FLANAX to have been imported from Mexico. And an investigation of stores selling Belmora's FLANAX "identified at least 30 [purchasers] who believed that the Flanax products . . . were the same as, or affiliated with, the Flanax products they knew from Mexico." B. Proceedings Below 1.

[9] In 2007, BCC petitioned the TTAB to cancel Belmora's registration for the FLANAX mark, arguing that Belmora's use and registration of the FLANAX mark violated Article 6bis of the Paris Convention "as made applicable by Sections 44(b) and (h) of the Lanham Act." BCC also sought cancellation of Belmora's registration under § 14(3) of the Lanham Act because Belmora had used the FLANAX mark "to misrepresent the source of the goods . . .

[on] which the mark is used." Lanham Act § 14(3), 15 U.S.C. § 1064(3).

[10] The TTAB dismissed BCC's Article 6bis claim, concluding that Article 6bis "is not self-executing" and that § 44 of the Lanham Act did not provide "an independent basis for cancellation." However, the TTAB allowed Bayer's § 14(3) claim to proceed. In 2014, after discovery and a hearing, the TTAB ordered cancellation of Belmora's FLANAX registration, concluding that Belmora had misrepresented the source of the FLANAX goods and that the facts "d[id] not present a close case." The TTAB noted that Belmora 1) knew the favorable reputation of Bayer's FLANAX product, 2) "copied" Bayer's packaging, and 3) "repeatedly invoked" that reputation when marketing its product in the United States.

[11] Shortly after the TTAB's ruling, Bayer filed suit in the Southern District of California, alleging that 1) BCC was injured by Belmora's false association with its FLANAX product in violation of Lanham Act § 43(a)(1)(A), and 2) BCC and BHC were both injured by Belmora's A. False Association and False Advertising Under Section 43(a)

[17] The district court dismissed Bayer's false association 4 and false advertising claims because, in its view, the claims failed to satisfy the standards set forth by the Supreme Court in Lexmark. At the core of the district court's decision was its conclusion that 1) Bayer's claims fell outside the Lanham Act's "zone of interests"-and are not cognizable-"because Bayer does not possess a protectable interest in the FLANAX mark in the United States," and 2) that a "cognizable economic loss under the Lanham Act" cannot exist as to a "mark that was not used in United States commerce."

[18] On appeal, Bayer contends these conclusions are erroneous as a matter of law because they conflict with the plain language of § 43(a) and misread Lexmark.

[19] "While much of the Lanham Act addresses the registration, use, and infringement of trademarks and related marks, § 43(a) . . . goes beyond trademark protection." Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 28-29 (2003). Written in terms of the putative defendant's conduct, § 43(a) sets forth unfair competition causes of action for false association and false advertising: 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) [False Association:] 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, or (B) [False Advertising:] in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, 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.

Lanham Act § 43(a)(1), 15 U.S.C. § 1125(a) (1). Subsection A, which creates liability for statements as to "affiliation, connection, or association" of goods, describes the cause of action known as "false association." Subsection B, which creates liability for "misrepresent[ing] the nature, characteristics, qualities, or geographic origin" of goods, defines the cause of action for "false advertising."

[20] Significantly, the plain language of § 43(a) does not require that a plaintiff possess or have used a trademark in U.S. commerce as an element of the cause of action. Section 43(a) stands in sharp contrast to Lanham Act § 32, which is titled as and expressly addresses "infringement." 15 U.S.C. § 1114 (requiring for liability the "use in commerce" of "any reproduction, counterfeit, copy, or colorable imitation of a registered mark " (emphasis added)). Under § 43(a), it is the defendant's use in commerce-whether of an offending "word, term, name, symbol, or device" or of a "false or misleading description [or representation] of fact"-that creates the injury under the terms of the statute. And here the alleged offending "word, term, name, symbol, or device" is Belmora's FLANAX mark.

[21] What § 43(a) does require is that Bayer was "likely to be damaged" by Belmora's "use[ ] in commerce" of its FLANAX mark and related advertisements. The Supreme Court recently considered the breadth of this "likely to be damaged" language in Lexmark, a false advertising case arising from a dispute in the used-printer-cartridge market. 134 S.Ct. at 1383, 1388. The lower courts in Lexmark had analyzed the case in terms of "prudential standing"-that is, on grounds that are "prudential" rather than constitutional. Id. at 1386. The Supreme Court, however, observed that the real question in Lexmark was "whether Static Control has a cause of action under the statute." Id. at 1387. This query, in turn, hinged on "a straightforward question of statutory interpretation" to which it applied "traditional principles" of interpretation. Id. at 1388. As a threshold matter, the Supreme Court noted that courts must be careful not to import requirements into this analysis that Congress has not included in the statute:

We do not ask whether in our judgment Congress should have authorized Static Control's suit, but whether Congress in fact did so. Just as a court cannot apply its independent policy judgment to recognize a cause of action that Congress has denied, it cannot limit a cause of action that Congress has created merely because 'prudence' dictates.

Id. The Court concluded that § 43(a)'s broad authorization-permitting suit by "any person who believes that he or she is or is likely to be damaged"-should not be taken "literally" to reach the limits of Article III standing, but is framed by two "background principles," which may overlap. Id.

[22] First, a plaintiff's claim must fall within the "zone of interests" protected by the statute. Id. The scope of the zone of interests is not "especially demanding," and the plaintiff receives the "benefit of any doubt." Id. at 1389. Because the Lanham Act contains an "unusual, and extraordinarily helpful" purpose statement in § 45, identifying the statute's zone of interests "requires no guesswork." Id. Section 45 provides:

The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition entered into between the United States and foreign nations.

Lanham Act § 45, 15 U.S.C. § 1127. 5 [23] The Supreme Court observed that "[m]ost of the enumerated purposes are relevant to a false-association case," while "a typical false-advertising case will implicate only the Act's goal of 'protecting persons engaged in commerce within the control of Congress against unfair competition.'" Lexmark, 134 S.Ct. at 1389. The Court concluded "that to come within the zone of interests in a suit for false advertising under [ § 43(a)], a plaintiff must allege an injury to a commercial interest in reputation or sales." Id. at 1390.

[24] The second Lexmark background principle is that "a statutory cause of action is limited to plaintiffs whose injuries are proximately caused by violations of the statute." Id. The injury must have a "sufficiently close connection to the conduct the statute prohibits." Id. In the § 43(a) context, this means "show[ing] economic or reputational injury flowing directly from the deception wrought by the defendant's advertising; and that that occurs when deception of consumers causes them to withhold trade from the plaintiff." Id. at 1391.

[25] The primary lesson from Lexmark is clear: courts must interpret the Lanham Act according to what the statute says. To determine whether a plaintiff, "falls within the class of plaintiffs whom Congress has authorized to sue," we "apply traditional principles of statutory interpretation." Id. at 1387. The outcome will rise and fall on the "meaning of the congressionally enacted provision creating a cause of action." Id. at 1388.

[26] We now turn to apply these principles to the case before us.

[27] We first address the position, pressed by Belmora and adopted by the district court, that a plaintiff must have initially used its own mark in commerce within the United States as a condition precedent to a § 43(a) claim. In dismissing BCC's § 43(a) claims, the district court found dispositive that "Bayer failed to plead facts showing that it used the FLANAX mark in commerce in [the] United States." Upon that ground, the district court held "that Bayer does not possess a protectable interest in the [FLANAX] mark."

[28] As noted earlier, such a requirement is absent from § 43(a)'s plain language and its application in Lexmark. Under the statute, the defendant must have "use [d] in commerce" the 5 In the same section, the Lanham Act defines "commerce" as "all commerce which may lawfully be regulated by Congress." Lanham Act § 45, 15 U.S.C. § 1127. We have previously construed this phrase to mean that the term is "coterminous with that commerce that Congress may regulate under the Commerce Clause of the United States Constitution." Int'l Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Etrangers a Monaco, 329 F.3d 359, 363-64 (4th Cir. 2003). "Commerce" in Lanham Act context is therefore an expansive concept that "necessarily includes all the explicitly identified variants of interstate commerce, foreign trade, and Indian commerce." Id. at 364 (citing U.S. Const. art. I, § 8, cl.

offending "word, term, name, [or] symbol," but the plaintiff need only "believe[ ] that he or she is or is likely to be damaged by such act." Lanham Act § 43(a), 15 U.S.C. § 1125(a).

[29] It is important to emphasize that this is an unfair competition case, not a trademark infringement case. Belmora and the district court conflated the Lanham Act's infringement provision in § 32 (which authorizes suit only "by the registrant," and thereby requires the plaintiff to have used its own mark in commerce) with unfair competition claims pled in this case under § 43(a). Section 32 makes clear that Congress knew how to write a precondition of trademark possession and use into a Lanham Act cause of action when it chose to do so. It has not done so in § 43(a). See Russello v. United States, 464 U.S. 16, 23 (1983) ("[W]here Congress includes particular language in one section of a statute but omits it in another section of the same Act, it is generally presumed that Congress acts intentionally and purposely in the disparate inclusion or exclusion.").

[30] Given that Lexmark advises courts to adhere to the statutory language, "apply[ing] traditional principles of statutory interpretation," Lexmark, 134 S.Ct. at 1388, we lack authority to introduce a requirement into § 43(a) that Congress plainly omitted. Nothing in Lexmark can be read to suggest that § 43(a) claims have an unstated requirement that the plaintiff have first used its own mark (word, term, name, symbol, or device) in U.S. commerce before a cause of action will lie against a defendant who is breaching the statute.

[31] The district court thus erred in requiring Bayer, as the plaintiff, to have pled its prior use of its own mark in U.S. commerce when it is the defendant's use of a mark or misrepresentation that underlies the § 43(a) unfair competition cause of action. Having made this foundational error, the district court's resolution of the issues requires reversal. 6 [32] Admittedly, some of our prior cases appear to have treated a plaintiff's use of a mark in United States commerce as a prerequisite for a false association claim. See Lamparello v. Falwell, 420 F. 6 Even though the district court's error in transposing § 43(a)'s requirements for a defendant's actions upon the plaintiff skews the entire analysis, the district court also confused the issues by ill-defining the economic location of the requisite unfair competition acts. As noted earlier, supra n. 5, a defendant's false association or false advertising conduct under § 43(a) must occur in "commerce within the control of Congress." Such commerce is not limited to purchases and sales within the territorial limits of the United States as the district court seems to imply at times with regard to § 43(a) and § 14(3) claims. See J.A. 483, 506 (as to § 14(3), stating that "Bayer did not use the FLANAX mark in the United States"); J.A. 487 (as to § 43(a), stating that "Bayer failed to plead facts showing that it used the FLANAX mark in commerce in [the] United States"). Instead, as we explained in International Bancorp, Lanham Act "commerce" includes, among other things, "foreign trade" and is not limited to transactions solely within the borders of the United States. Int'l Bancorp, 329 F.3d at 364. Of course, any such "foreign trade" must satisfy the Lexmark "zone of interests" and "proximate cause" requirements to be cognizable for Lanham Act purposes. identical."); Lone Star Steakhouse & Saloon v. Alpha of Va., Inc., 43 F.3d 922, 930 (4th Cir. 1995) ("[T]o prevail under § § 32(1) and 43(a) of the Lanham Act for trademark infringement and unfair competition, respectively, a complainant must demonstrate that it has a valid, protectible trademark[.]"). However, none of these cases made that consideration the ratio decidendi of its holding or analyzed whether the statute in fact contains such a requirement. See, e.g., 5 J. Thomas McCarthy, Trademarks and Unfair Competition § 29:4 (4th ed. 2002) (observing that International Bancorp merely "assumed that to trigger Lanham Act § 43(a), the plaintiff's mark must be 'used in commerce'"). Moreover, all of these cases predate Lexmark, which provides the applicable Supreme Court precedent interpreting § 43(a). See U.S. Dep't of Health & Human Servs. v. Fed. Labor Relations Auth., 983 F.2d 578, 581 (4th Cir. 1992) ("A decision by a panel of this court, or by the court sitting en banc, does not bind subsequent panels if the decision rests on authority that subsequently proves untenable.").

[33] Although the plaintiffs' use of a mark in U.S. commerce was a fact in common in the foregoing cases, substantial precedent reflects that § 43(a) unfair competition claims come within the statute's protectable zone of interests without the preconditions adopted by the district court and advanced by Belmora. As the Supreme Court has pointed out, § 43(a) "goes beyond trademark protection." Dastar Corp., 539 U.S. at 29. For example, a plaintiff whose mark has become generic-and therefore not protectable-may plead an unfair competition claim against a competitor that uses that generic name and "fail[s] adequately to identify itself as distinct from the first organization" such that the name causes "confusion or a likelihood of confusion." Blinded Veterans Ass'n v. Blinded Am. Veterans Found., 872 F.2d 1035, 1043 (D.C. Cir. 1989); see also Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111, 118-19 (1938) (requiring the defendant to "use reasonable care to inform the public of the source of its product" even though the plaintiff's "shredded wheat" mark was generic and therefore unprotectable); Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 203-04 (1896) (same, for "Singer" sewing machines).

[34] Likewise, in a "reverse passing off" case, the plaintiff need not have used a mark in commerce to bring a § 43(a) action.foot_46 A reverse-passing-off plaintiff must prove four elements: "(1) that the work at issue originated with the plaintiff; (2) that origin of the work was falsely designated by the defendant; (3) that the false designation of origin was likely to cause consumer confusion; and (4) that the plaintiff was harmed by the defendant's false designation of origin." Universal Furniture Int'l, Inc. v. Collezione Europa USA, Inc., 618 F.3d 417, 438 (4th Cir. 2010). Thus, the plaintiff in a reverse passing off case must plead and prove only that the work "originated with" him-not that he used the work (which may or may not be associated with a mark) in U.S. commerce. Id.

[35] The generic mark and reverse passing off cases illustrate that § 43(a) actions do not require, implicitly or otherwise, that a plaintiff have first used its own mark in United States commerce. If such a use were a condition precedent to bringing a § 43(a) action, the generic mark and reverse passing off cases could not exist.

[36] In sum, the Lanham Act's plain language contains no unstated requirement that a § 43(a) plaintiff have used a U.S. trademark in U.S. commerce to bring a Lanham Act unfair competition claim. The Supreme Court's guidance in Lexmark does not allude to one, and our prior cases either only assumed or articulated as dicta that such a requirement existed. Thus, the district court erred in imposing such a condition precedent upon Bayer's claims. 8 [37] As Bayer is not barred from making a § 43(a) claim, the proper Lexmark inquiry is twofold. Did the alleged acts of unfair competition fall within the Lanham Act's protected zone of interests? And if so, did Bayer plead proximate causation of a cognizable injury? We examine the false association and false advertising claims in turn. b.

[38] As to the zone of interests, Lexmark advises that "[m]ost of the [Lanham Act's] enumerated purposes are relevant to false-association cases." 134 S.Ct. at 1389. One such enumerated purpose is "making actionable the deceptive and misleading use of marks" in "commerce within the control of Congress." Lanham Act § 45, 15 U.S.C. § 1127; see also Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 784 n. 19 (1992) (Stevens, J., concurring) ("Trademark law protects the public by making consumers confident that they can identify brands they prefer and can purchase those brands without being confused or misled."). As pled, BCC's false association claim advances that purpose.

[39] The complaint alleges Belmora's misleading association with BCC's FLANAX has caused BCC customers to buy the Belmora FLANAX in the United States instead of purchasing BCC's FLANAX in Mexico. For example, the complaint alleges that BCC invested heavily in promoting its FLANAX to Mexican citizens or Mexican-Americans in border areas. Those consumers cross into the United States and may purchase Belmora FLANAX here before 8 A plaintiff who relies only on foreign commercial activity may face difficulty proving a cognizable false association injury under § 43(a). A few isolated consumers who confuse a mark with one seen abroad, based only on the presence of the mark on a product in this country and not other misleading conduct by the mark holder, would rarely seem to have a viable § 43(a) claim.

The story is different when a defendant, as alleged here, has-as a cornerstone of its businessintentionally passed off its goods in the United States as the same product commercially available in foreign markets in order to influence purchases by American consumers. See M. Kramer Mfg. Co. v. Andrews, 783 F.2d 421, 448 (4th Cir. 1986) ("[E]vidence of intentional, direct copying establishes a prima facie case of secondary meaning sufficient to shift the burden of persuasion to the defendant on that issue."). Such an intentional deception can go a long way toward establishing likelihood of confusion. See Blinded Veterans, 872 F.2d at 1045 ("Intent to deceive . . . retains potency; when present, it is probative evidence of a likelihood of confusion.").

Lanham Act unfair competition by using deceptive advertisements that capitalized on BCC's goodwill. . . . If not for Belmora's statements that its FLANAX was the same one known and trusted in Mexico, some of its consumers could very well have instead purchased BHC's ALEVE brand. These lost customers likewise satisfy Lexmark's second prong: they demonstrate an injury to sales or reputation proximately caused by Belmora's alleged conduct.

[45] BCC's false advertising claim is perhaps not "typical" as BCC is a foreign entity without direct sales in the territorial United States. Nonetheless, BCC's claim advances the Act's purpose of "making actionable the deceptive and misleading use of marks." Lanham Act § 45, 15 U.S.C. § 1127. As alleged, Belmora's advertising misrepresents the nature of its FLANAX product in that Belmora implies that product is the same as consumers purchased in Mexico from BCC and can now buy here.

[46] To be sure, BCC's false advertising claim overlaps to some degree with its false association claim, but the two claims address distinct conduct within the two subsections of § 43(a). Belmora's alleged false statements go beyond mere claims of false association; they parlay the passed-off FLANAX mark into misleading statements about the product's "nature, characteristics, qualities, or geographic origin," all hallmarks of a false advertising claim. Lanham Act 43(a)(1)(B), 15 U.S.C. 1125(a)(1)(B).

[47] Belmora's alleged false statements intertwine closely with its use of the FLANAX mark. The FLANAX mark denotes history: Belmora claims its product has been "used [for] many, many years in Mexico" and "Latinos have turned to" it "[f]or generations." FLANAX also reflects popularity: Belmora says the product is "highly recognized [and] top-selling." And FLANAX signifies a history of quality: Belmora maintains that Latinos "know, trust and prefer" the product. Each of these statements by Belmora thus directly relates to the "nature, characteristics, qualities, or geographic origin" of its FLANAX as being one and the same as that of BCC. Lanham Act § 43(a)(1)(B), 15 U.S.C. § 1125(a)(1)(B). Because these statements are linked to Belmora's alleged deceptive use of the FLANAX mark, we are satisfied that BCC's false advertising claim, like its false association claim, comes within the Act's zone of interests. As we can comfortably infer that the alleged advertisements contributed to the lost border sales pled by BCC, the claim also satisfies Lexmark's proximate cause prong (for the same reasons discussed above regarding the false association claim). d.

[48] We thus conclude that the Lanham Act permits Bayer to proceed with its claims under § 43(a)-BCC with its false association claim and both BCC and BHC with false advertising claims. It is worth noting, as the Supreme Court did in Lexmark, that "[a]lthough we conclude that [Bayer] has alleged an adequate basis to proceed under [ § 43(a)], it cannot obtain relief without evidence of injury proximately caused by [Belmora's alleged misconduct]. We hold only that [Bayer] is entitled to a chance to prove its case." 134 S.Ct. at 1395.

[49] In granting Bayer that chance, we are not concluding that BCC has any specific trademark rights to the FLANAX mark in the United States. Belmora owns that mark. But 2. The ongoing saga of Belmora. After the Supreme Court denied certiorari review of the 2016 Fourth Circuit opinion in Belmora, the case returned to the Eastern District of Virginia. In September, 2016, the district court affirmed the PTO's cancellation of Belmora's registration but granted Belmora's motion for summary judgment on Bayer's unfair competition claim on the ground that Bayer had waited too long to file suit. See Belmora, LLC v. Bayer Consumer Care AG, 338 F. Supp. 3d 477, 484 (E.D. Va. 2018) ("Whether a three or four-year statute of limitations is applied in this case is immaterial. That is because Bayer's filing of this action misses the statute of limitations by almost a decade."). In May, 2021, the Fourth Circuit reversed the district court's grant of summary judgment to Belmora on Bayer's unfair competition claim, holding that the district court should have applied laches rather than any state-law statute of limitations. See Belmora LLC v. Bayer Consumer Care AG, 987 F.3d 284 (4th Cir. 2021). The Fourth Circuit once again remanded the case back to the district court. Id.

In this Part, we consider the infringement of trademark rights under certain sections of the Lanham Act: The test for likelihood of confusion under § 32 is now essentially the same as the test for likelihood of confusion under § 43(a), and courts often cite to case law under one section interchangeably with case law under the other. When owners of registered marks plead likelihood of confusion, they typically do so under both § 32 and § 43(a) in the event that some defect is discovered in their registration. Such plaintiffs may also plead under both sections in order to avail themselves of the slightly broader language of § 43(a), though, again, courts have come to treat § 32 and § 43(a) as essentially interchangeable.

Courts have set forth the elements of a trademark infringement claim in a variety of ways. For example, with respect to a claim based on a likelihood of confusion under either or both of § 32 and § 43(a), courts have stated:

• "[T]o succeed in a Lanham Act suit for trademark infringement, a plaintiff has two obstacles to overcome: the plaintiff must prove that its mark is entitled to protection and, even more important, that the defendant's use of its own mark will likely cause confusion with plaintiff's mark." Gruner + Jahr USA Publ'g v. Meredith Corp., 991 F.2d 1072, 1074 (2d Cir. 1993).

• "To prevail on a claim of trademark infringement under the Lanham Act, 15 U.S.C. § 1114, a party must prove: (1) that it has a protectible ownership interest in the mark; and (2) that the defendant's use of the mark is likely to cause consumer confusion." Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137, 1144 (9th Cir. 2011) (citations omitted).

• "To establish trademark infringement under the Lanham Act, a plaintiff must prove:

(1) that it owns a valid mark; (2) that the defendant used the mark 'in commerce' and without plaintiff's authorization; (3) that the defendant used the mark (or an imitation of it) 'in connection with the sale, offering for sale, distribution, or advertising' of goods or services; and (4) that the defendant's use of the mark is likely to confuse consumers." Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 152 (4th Cir. 2012) (citations omitted).

• "Both infringement and false designation of origin have five elements. To prevail under either cause of action, the trademark holder must prove: (1) that it possesses a mark; (2) that the [opposing party] used the mark; (3) that the [opposing party's] use of the mark occurred 'in commerce'; (4) that the [opposing party] used the mark 'in connection with the sale, offering for sale, distribution, or advertising' of goods or services; and (5) that the [opposing party] used the mark in a manner likely to confuse consumers." Lamparello v. Falwell, 420 F.3d 309, 313 (4th Cir. 2005) (citations omitted).

Though the enumerations vary in their level of detail, these statements of the elements of a likelihood of confusion claim are all essentially the same. The plaintiff must prove that (1) it possesses exclusive rights in a mark and (2) the defendant has infringed those exclusive rights. Our focus in Part I was on the first of these two basic elements-whether there is a property right. Our focus in this Part is on the second of these elements-whether that right has been infringed.

We begin in Part II.A by reviewing the requirement that, in order to be liable for trademark infringement, a defendant must "use in commerce" the plaintiff's mark "in connection with the sale . . . of any goods or services." We then turn in Part II.B to forms of infringement that are based on the likelihood of consumer confusion as to the source or sponsorship of the defendant's goods. In Part II.C, we consider forms of infringement that are not based on consumer confusion, most notably trademark dilution. In Part II.D, we turn to forms of relief for cybersquatting. Finally, in Part II.E, we review the doctrine of secondary liability in trademark law.

1. Do individual consumers or groups of consumers have standing to sue under the Lanham Act's infringement sections? In short, no. Lanham Act § 32(1), 15 U.S.C. § 1114 (1), which applies to registered marks, provides that an infringing party "shall be liable in a civil action by the registrant for the remedies hereafter provided" (emphasis added). Lanham Act § 43(a), 15 U.S.C. § 1125(a), which applies to both registered and unregistered marks, provides that an infringing party "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" (emphasis added). Though broad, this language has been construed to exclude consumers. See Lexmark Int'l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 132 (2014) ("A consumer who is hoodwinked into purchasing a disappointing product may well have an injury-in-fact cognizable under Article III, but he cannot invoke the protection of the Lanham Act-a conclusion reached by every Circuit to consider the question . . . . Even a business misled by a supplier into purchasing an inferior product is, like consumers generally, not under the Act's aegis."). See also id. at 140 ("To invoke the Lanham Act's cause of action for false advertising, a plaintiff must plead (and ultimately prove) an injury to a commercial interest in sales or business reputation proximately caused by the defendant's misrepresentations."). Does this make sense as a matter of sound policy? See also Curtin v. United Trademark Holdings Inc., 137 F.4th 1359 (Fed. Cir. 2025).

In order to prove infringement, a plaintiff is required to show that the alleged infringer made an "actionable use" of the plaintiff's trademark (or of a confusingly-similar approximation of the mark). Specifically, the plaintiff must show that the defendant made a "use in commerce" of the mark "in connection with" goods or services. We saw various statements of this requirement above. See, e.g., Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 152 (4th Cir. 2012) (citations omitted) ("(2) that the defendant used the mark 'in commerce' and without plaintiff's authorization; (3) that the defendant used the mark (or an imitation of it) 'in connection with the sale, offering for sale, distribution, or advertising' of goods or services").

The statutory basis for this requirement is found in Lanham Act § 32 and § 43(a), in the italicized language: Lanham Act § 32, 15 U.S.C. § 1114 (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 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 . . . shall be liable in a civil action by the registrant for the remedies hereinafter provided.

(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 . . . 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.

In a high proportion of trademark infringement disputes, the plaintiff easily meets the actionable use requirement, and courts often do not even bother mentioning it. But in some cases, the actionable use requirement can be dispositive of the outcome of the dispute. Consider, for example, a defendant who is a political speaker making information freely available online that refers to the plaintiff by its trademark. This defendant is not selling goods or services and so would likely fall outside of the statutory language quoted above. Or consider a defendant who is an artist selling a painting that includes an image of the plaintiff's trademark but the artist is not using that mark as a designation of source for the painting. Relatedly, consider a newspaper who refers to the plaintiff by the plaintiff's trademark in an editorial critical of the plaintiff. Here, the artist and the newspaper may be able to avoid liability on the basis that they are not making a "trademark use" of the plaintiff's trademarkthat is, use of the mark as a designation of source of the defendant's goods.

In circumstances like these, the actionable use requirement allows courts to decide a case without ever having to proceed to the potentially messy, expensive, and fact-intensive issue of whether the defendant's conduct confuses consumers as to source. In other words, if the defendant can prevail on the actionable use issue, it will not need to expend the resources necessary to contend with "(4) that the defendant's use of the mark is likely to confuse consumers." Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 152 (4th Cir. 2012) (citations omitted). The actual use requirement can thus be especially helpful (perhaps even at the motion to dismiss stage) for defendants making artistic, expressive, or political uses of others' trademarks.

We consider below two forms of the actionable use requirement. We turn first, in Part II.A.1, to the "in connection with" goods or services requirement, which is sometimes called the "commercial use" requirement. We then turn in Part II.A.2 to a troubled area of trademark doctrine known as the "trademark use" requirement.

As the following opinion explains, during the early days of the internet courts expanded what qualified as a commercial use by a defendant-that is, what qualified as an actionable use in connection with goods or services under Lanham Act § 32 or § 43(a). They did so in order to enjoin the conduct of clearly bad faith internet defendants. Courts bent the doctrine to reach what they thought was the right result. For example, in People for Ethical Treatment of Animals, Inc. v. Doughney, 263 F.3d 359 (4th Cir. 2001), the defendant owned a wide variety of domain names, including many that resembled others' trademarks. He registered peta.org and created a website entitled "People Eating Tasty Animals." The organization People for the Ethical Treatment of Animals sued for trademark infringement. The defendant claimed no use of the mark "in connection with the sale" of goods or services because he sold no goods or services on his website. The Fourth Circuit found such a connection on the ground that the defendant's use interfered with internet users' efforts to reach PETA's website. Id. at 365. Furthermore, the defendant's website linked to "more than 30 commercial operations offering goods and services." Id. at 366. See also Planned Parenthood Federation of America, Inc. v. Bucci, No. 97 Civ. 0629, 1997 WL 133313 (S.D.N.Y. 1997), aff'd without opinion, 152 F.3d 920 (2d Cir. 1998) (reasoning similarly with respect to defendant's domain name plannedparenthood.com); Jews For Jesus v. Brodsky, 993 F. Supp. 282, 46 U.S.P.Q.2d 1652 (D.N.J. 1998), judgment aff'd, 159 F.3d 1351 (3d Cir. 1998) (reasoning similarly with respect to defendant's domain names jewsforjesus.org and jews-for-jesus.org).

Radiance Foundation, Inc. v. National Association for the Advancement of Colored People, 786 F.3d 316 (4th Cir. 2015), finally presented circumstances that forced a retreat from this previous case law's overly expansive, plaintiff-friendly reading of the "in connection with the sale" requirement.

By the early-20th century, however, courts enforced personal-name marks even against "newcomer[s] with the same name when confusion over source[was] the likely result." 2 McCarthy §13:8; see L. E. Waterman Co. v. Modern Pen Co., 235 U. S. 88 (1914).

The Thaddeus Court referred specifically to the statute's prohibition on the registration of marks that "consis[t] merely of individual, firm or corporate names, not written or printed in a distinctive manner, or of designations descriptive of the character or quality of the goods with which they are used, or of geographical names or terms." 233 U. S., at 467.

The Court dismisses my examples as irrelevant because several involve the names of dead individuals. Ante, at 19, n. 4. But "[t]he exclusive right to grace paper collars with Bismarck's name was granted while he was still alive." J. Pike, Personal Names as Trade Symbols, 3 Mo. L. Rev. 93, 101 (1938) (Pike). And the other authorities either expressly recognized that the names of famous living persons could be trademarked, see Barrows,

R. I., at 438, or did not indicate whether the rule differed for dead versus living individuals, see Stephano Bros., 238 F., at 92-93. Indeed, "[t]he authorities [were] somewhat meagre" as to "the rule . . . . where the notable person [was] still alive," Pike 100, undercutting the notion that the common law contained a clear rule one way or the other.6 The Court characterizes my critique as a demand for a "historical twin." Ante, at 19, n. 4. On the contrary, my point is that the Court has not cleared the "historical analogue" bar it sets for itself. The existence of closely analogous historical counterexamples surely complicates the argument that "history and tradition" alone establish the clause's constitutionality. By presenting its evidence as conclusive, "the Court overclaims." Samia v. United States, 599 U. S. 635, 657 (2023) (BARRETT, J., concurring in part and concurring in judgment).

Although these other circuit cases involve infringement, they address the same language in Lanham Act § 45.

Trademark Law Revision Act of 1988, Pub. L. No. 100-667, 102 Stat. 3935 (codified as amended in scattered sections of the U.S.C.).

Madrid Protocol Implementation Act, Pub. L. No. 107-273, 116 Stat. 1913 (2002) (codified as amended at 15 U.S.C. § § 1141-1141 (2006)).

However, as is suggested by Dragon Bleu (SARL) v. VENM, LLC, 112 U.S.P.Q.2d

(TTAB 2014), which dealt with § 66(a) registrations, if the § 44 or § 66(a) registrant is accused of having abandoned its mark in the U.S., the registrant may be required to present evidence of use sooner than five years after the date of registration. On the issue of trademark abandonment, see Part III.D.

At the examination stage, an examiner may not refuse registration on the ground that the applied-for mark will dilute another mark. See Lanham Act § 2(f), 15 U.S.C. § 1052(f) ("A mark which when used would cause dilution under section 43(c) may be refused registration only pursuant to a[n opposition] proceeding brought under section 13.").

See Barton Beebe & Jeanne Fromer, Are We Running Out of Trademarks? An Empirical Study of Trademark Depletion and Congestion, 131 HARV. L. REV. 945, 1005 (2018)

See Barton Beebe, Is the Trademark Office a Rubber Stamp?: Trademark Registration Rates at the PTO, 1981-2010, 48 HOUSTON L. REV. 752 (2012).

Applicants whose filing basis is §66(a) under the Madrid Protocol continue to have six months to respond to an office action.

Formerly, a disadvantage of the district court route was that the applicant was required to pay the government's expenses in defending any ex parte PTO decision before the district court, including prorated salaries of the government attorneys, regardless of whether the applicant prevailed. This rule was based on Lanham Act § 21(b)(3), 15 U.S.C. § 1071(b)(3): "[U]nless the court finds the expenses to be unreasonable, all the expenses of the proceeding shall be paid by the [appealing] party bringing the case, whether the final decision is in favor of such party or not." However, in Peter v. NantKwest, 140 S.Ct. 365 (2019), the Supreme Court determined that similar language from the Patent Act did not override "the bedrock principle known as the '"American Rule"': Each litigant pays his own attorney's fees, win or lose, unless a statute or contract provides otherwise." Id. at 370. Thus, applicants challenging ex parte PTO decisions at a district court need not pay the government's attorney's fees.

May registrants take advantage of their rights under Lanham Act § 43(a), dealing with unregistered marks, to claim profits and damages even where the registrant did not provide statutory notice? McCarthy suggests that the answer is no:

Note that Lanham Act § 14 can be read only to apply to cancellation petitions brought before the PTO. If the registrant has not obtained incontestable status for the mark, challengers in federal court are arguably not limited by Lanham Act § 14 in the grounds on which they can challenge the validityor at least the enforceability-of the mark. But see MCCARTHY § 30:112 (arguing that § 14's five-year limit on grounds for cancellation applies to federal courts as well).

The Madrid System functions under two international instruments, the Madrid Agreement Concerning the International Registration of Marks of 1891, which the U.S. has never joined, and the 1989 Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (generally referred to as the "Madrid Protocol"), which was developed primarily to bring the U.S. and

As of May 2025. See http://www.wipo.int/madrid/en/members/. Canada became a party to the Madrid Protocol in June 2019, and Brazil did so in October 2019.

Registration No. 1,354,062, issued August 13, 1985.

The case at bar is decided under the provisions of the Act in force prior to the enactment of the Trademark Law Revision Act of 1988.16 Section 44 of the Lanham Act, 15 U.S.C. §

(1982), permits qualified foreign applicants who own a registered mark in their country of origin to obtain a U.S. trademark registration without

Appellant repeatedly makes reference to a "world economy" and considers Christman to be the remote junior user of the mark. Although Person's did adopt the mark in Japan prior to Christman's use in United States commerce, the use in Japan cannot be relied upon to acquire U.S. trademark rights. Christman is the senior user as that term is defined under U.S. trademark law.20 See 2 J. McCarthy, Trademarks and Unfair Competition § 26:4 (2d ed.

1984); Restatement of Torts § 732 comment a (1938).

The Dallos asserted the following causes of action: (1) trademark infringement, under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (2) false designation of origin, misrepresentation, and unfair competition, under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) common law unfair competition; (4) trademark infringement and unfair competition under California law; (5) dilution under California law; and (6) common law misappropriation.

Grupo Gigante S.A. de C.V. v. Dallo & Co., Inc., 119 F.Supp.2d 1083 (C.D.Cal. 2000).

J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 29:2, at 29-6 (4th ed. 2002) (internal footnote omitted).

See Person's Co., Ltd. v. Christman, 900 F.2d 1565, 1569-70 (Fed. Cir. 1990); Buti v. Perosa, S.R.L., 139 F.3d 98, 103-05 (2d Cir. 1998); Fuji Photo Film Co., Inc. v. Shinohara Shoji Kabushiki Kaisha, 754 F.2d 591, 599 (5th Cir. 1985).

Fuji Photo, 754 F.2d at 599; see also Person's, 900 F.2d at 1569.

Int'l Bancorp, 329 F.3d at 389 n. 9 (Motz, J., dissenting) ("Nor does the 'famous marks' doctrine provide SBM any refuge. That doctrine has been applied so seldom (never by a federal appellate court and only by a handful of district courts) that its viability is uncertain.").

See Thane Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 901 (9th Cir. 2002).

Vaudable v. Montmartre, Inc., 20 Misc.2d 757, 193 N.Y.S.2d 332 (N.Y.Sup.Ct. 1959).

Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211 (2000) (internal quotation and editing omitted).

Good faith may also be an issue in such cases. See Hanover Star, 240 U.S. at 415, 36 S.Ct. 357 (excepting from the general Tea Rose-Rectanus principle cases in which "the second adopter has selected the mark with some design inimical to the interests of the first user, such as to take the benefit of the reputation of his goods, to forestall the extension of his trade, or the like."). Good faith is not raised in this appeal (perhaps because the appeal comes up on summary judgment) and is irrelevant to our analysis.

Paris Convention for the Protection of Industrial Property, Mar. 20, 1883, as revised at Stockholm, July 14, 1967, art. 6(3), 21 U.S.T. 1583, § 6(3) ("A mark duly registered in a country of the Union shall be regarded as independent of marks registered in the other countries of the Union, including the country of origin.").

See Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986); Matsushita Elec. Indus. Co. v. Zenith Radio, 475 U.S. 574 (1986).

The record indicates that in 2002 and 2003, the New Delhi Bukhara was named one of the world's fifty best restaurants by London-based "Restaurant" magazine.

This product takes its name from a lentil dish served at the New Delhi Bukhara restaurant.

ITC's amended complaint also charged defendants with false designation of origin in violation of the Lanham Act, 15 U.S.C. § 1125(a), and deceptive acts and practices in violation of New York General Business Law § 349, but it appears to have abandoned those claims in otherwise opposing defendants' motion for summary judgment. See ITC Ltd. v. Punchgini, Inc., 373 F.Supp.2d at 278.

The reach of Article 6bis was extended to service marks by Article

16(2) of the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPs"), see generally Uruguay Round

In Empresa Cubana, however, we did observe, in dictum, that "[t]o the extent that a foreign entity attempts to utilize the famous marks doctrine as [a] basis for its right to a U.S. trademark and seeks to prevent another entity from using the mark in the United States, the claim should be brought under Section 43(a)." Id. at 480 n. 10.

See, e.g., Grupo Gigante S.A. De C.V. v. Dallo & Co., 391 F.3d at 1095; Buti v. Impressa Perosa, S.R.L., 139 F.3d at 104; Person's Co. v. Christman, 900 F.2d at 1570; Almacenes Exito S.A. v. El Gallo Meat Mkt., Inc., 381 F.Supp.2d at 328; De Beers LV Trademark Ltd. v. DeBeers Diamond Syndicate, Inc., 2005 U.S. Dist. LEXIS 9307 at *21-22.

See, e.g., 4 McCarthy, supra, § 29:4, at 29-12; Graeme B. Dinwoodie et al., International Intellectual Property Law and Policy 108 (2001).

New York could, of course, conclude that a "secondary meaning plus" standard also applied to a foreign mark or dress that had previously been used in the United States where, as in this case, such domestic use had been abandoned.

The district court had agreed with the TTAB that Article 6bis does not create an independent cause of action for the cancellation of Belmora's FLANAX registration. Because Bayer appears to have abandoned its treaty claims on appeal and their resolution is not necessary to our decision, we do not address any issue regarding the Paris Convention arguments.

As the district court pointed out, we have sometimes denominated Lanham Act § 43(a)(1)(A) claims as "false designation" claims. We think it preferable to follow the Supreme Court's terminology in Lexmark and instead refer to such claims as those of "false association," although the terms can often be used interchangeably.

Reverse passing off occurs when a "producer misrepresents someone else's goods or services as his own," in other words, when the defendant is selling the plaintiff's goods and passing them off as originating with the defendant. Universal Furniture Int'l, Inc. v. Collezione Europa USA, Inc., 618 F.3d 417, 438 (4th Cir. 2010) (quoting Dastar Corp., 539 U.S. at 28 n. 1).

• In the [Applications], Creative Harbor said that it intended to use the Mark in connection with 'employment staffing consultation services,' and Mr. Jurgensen explained that Creative Harbor included this service because 'maybe at some point [the WorkWire application] would have consulting in there, maybe some kind of career advisor, something like this.' (Id.); • In the [Applications], Creative Harbor said that it intended to use the Mark in connection with 'business consulting' services, but Mr. Jurgensen conceded that he 'wanted to make sure [that] was there included' because the company 'could' perhaps perform those services 'at some point' in the future. (Id.) Kelly Servs. II, 140 F.Supp.3d at 617-18 (emphasis in original) (record citations altered).

, the rights of good faith intermediate junior users in particular are frozen earlier at the registrant's date of application. What then of intermediate junior users who did not adopt in good faith (i.e., who adopted with knowledge of the registrant's prior use)? It would be at odds with the purposes of the Lanham Act (among them, to promote good faith conduct) to leave bad faith intermediate junior users better off than good faith intermediate junior users by treating the former as if they were senior common law users under § 7(c) and § 22. Instead, once the registrant's registration issues, the intermediate junior user who adopted with knowledge of the registrant's prior use would almost certainly be required to cease all use of its mark (subject to the Dawn Donut rule, discussed below).b.

[13] At the very least, reading the "in connection with" element to take in broad swaths of noncommercial speech would be an "overextension" of the Lanham Act's reach that would "intrude on First Amendment values." Rogers v. Grimaldi, 875 F.2d 994, 998 (2d Cir. 1989); see also Taubman, 319 F.3d at 774 (stating that the "Lanham Act is constitutional because it only regulates commercial speech"). It is true that neither of the Lanham Act's infringement provisions explicitly mentions commerciality. Lamparello, 420 F.3d at 314. Still, this provision must mean something more than that the mark is being used in commerce in the constitutional sense, because the infringement provisions in § 1114(1)(a) and § 1125(a) ( [14] Although this case does not require us to hold that the commercial speech doctrine is in all respects synonymous with the "in connection with" element, we think that doctrine provides much the best guidance in applying the Act. The "in connection with" element in fact reads very much like a description of different types of commercial actions: "in connection with the sale, offering for sale, distribution, or advertising of any goods or services." 15 U.S.C.

[15] Use of a protected mark as part of "speech that does no more than propose a commercial transaction" thus plainly falls within the Lanham Act's reach. United States v. United Foods, Inc., 533 U.S. 405, 409 (2001). Courts also look to the factors outlined in Bolger v. Youngs Drug Products Corp., 463 U.S. 60, 66-67 (1983): whether the speech is an advertisement; whether the speech references a particular good or service; and whether the speaker (the alleged infringer) has a demonstrated economic motivation for his speech. Greater Balt. Ctr. for Pregnancy Concerns, Inc. v. Mayor of Balt., 721 F.3d 264, 285 (4th Cir. 2013) (en banc). These are not exclusive factors, and the presence or absence of any of them does not necessitate a particular result.

[16] In the context of trademark infringement, the Act's purpose . . . is to protect consumers from misleading uses of marks by competitors. Thus if in the context of a sale, distribution, or advertisement, a mark is used as a source identifier, we can confidently state that the use is "in connection with" the activity. Even the Second Circuit, which rejected noncommerciality as an invariable defense to Lanham Act liability, conceded that a "crucial" factor is that the infringer "us [ed] the Mark not as a commentary on its owner, but instead as a source identifier." United We Stand, 128 F.3d at 92. The danger of allowing the "in connection with" element to suck in speech on political and social issues through some strained or tangential association with a commercial or transactional activity should thus be evident. Courts have uniformly understood that imposing liability under the Lanham Act for such speech is rife with the First Amendment problems.

[17] Finally, in order to determine whether the use is "in connection with" goods or services, we must consider what qualifies as a good or service. The Lanham Act does not directly define either term, but we can deduce their meaning from other defined terms and common usage. A "good" is best understood as a valuable product, physical or otherwise, that the consumer may herself employ. See 15 U.S.C. § 1127 (noting that a mark may be used in commerce in relation to a good when placed on a good, its container, its tag, or its associated documents); Black's Law Dictionary 809 (10th ed. 2014) (defining "goods" as "[t]hings that have value, whether tangible or not"). A service is a more amorphous concept, "denot[ing] an intangible commodity in the form of human effort, such as labor, skill, or advice." Black's Law Dictionary 1576. Because Congress intended the Lanham Act to protect consumers from confusion in the marketplace, it is probable that the Act is meant to cover a wide range of products, whether "goods" or "services." See Yates v. United States, ---U.S. ----, 135 S.Ct. 1074, 1082 (2015) ("Ordinarily, a word's usage accords with its dictionary definition. In law as in life, however, the same words, placed in different contexts, sometimes mean different things.").

[18] It is clear, therefore, that despite the need to reconcile the reach of the Lanham Act with First Amendment values, "goods or services" remains a broad and potentially fuzzy concept. That is yet another reason why the "in connection with" language must denote a real nexus with goods or services if the Act is not to fatally collide with First Amendment principles. III. . . . . A. [19] In finding that Radiance's use of the NAACP's marks was "in connection with" goods or services, the district court erred in several respects. To begin, the court held that because the Radiance article appeared in a Google search for the term "NAACP," it diverted "Internet users to Radiance's article as opposed to the NAACP's websites," which thereby created a connection to the NAACP's goods and services. Radiance Found., Inc. v. NAACP, 25 F.Supp.3d 865, 884 (E.D.Va. 2014). But typically the use of the mark has to be in connection with the infringer's goods or services, not the trademark holder's. See Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045, 1053-54 (10th Cir. 2008) (stating that "the defendant in a trademark infringement . . . case must use the mark in connection with the goods or services of a competing producer, not merely to make a comment on the trademark owner's goods or services").

[20] If the general rule was that the use of the mark merely had to be in connection with the trademark holder's goods or services, then even the most offhand mention of a trademark holder's mark could potentially satisfy the "in connection with" requirement. That interpretation would expand the requirement to the point that it would equal or surpass the scope of the Lanham Act's "in commerce" jurisdictional element. This would not only make the jurisdictional element superfluous, but would hamper the ability of the "in connection with" requirement to hold Lanham Act infractions within First Amendment limits.

[21] In People for the Ethical Treatment of Animals v. Doughney, we stated that an infringer "need only have prevented users from obtaining or using [the trademark holder's] goods or services, or need only have connected the [infringing] website to other's goods or services" in order to satisfy the "in connection with" requirement. 263 F.3d 359, 365 (4th Cir. 2001). But that rule applies specifically where the infringer has used the trademark holder's mark in a domain name. Id. at 365-66. Neither of Radiance's websites used an NAACP mark in its domain name. Rather, Radiance used the NAACP's marks only in the title and body of an article criticizing the NAACP. Nothing in PETA indicates that the use of a mark in the course of disseminating such an idea is on that account sufficient to establish the requisite relationship to goods or services. PETA simply does not govern the application of the "in connection with" element in this case. [22] The district court proceeded to find that Radiance's use of the NAACP's marks was also in connection with Radiance's goods or services. Radiance Found., 25 F.Supp.3d at 884-85. But the court's analysis failed to demonstrate a sufficient nexus between the specific use of the marks and the sale, offer for sale, distribution, or advertisement of any of the goods or services that the court invoked. The court first found that there was a sufficient nexus "with Radiance's own information services" because Radiance "provided information" on its website. Id. at 884. That ruling, however, neuters the First Amendment. The provision of mere "information services" without any commercial or transactional component is speechnothing more.

[23] In the alternative, the court held that Radiance's use of the NAACP's marks was in connection with goods or services, because the use was "part of social commentary or criticism for which they solicit donations and sponsorship." Id. The NAACP echoes the district court, arguing that the transactional nature of the billboard campaign and Radiance's fundraising efforts place Radiance's use of the marks "comfortably within" the reach of the "in connection with" element. Appellee's Br. at 24-26.

[24] We need not address this point with absolute pronouncements. Suffice it to say that the specific use of the marks at issue here was too attenuated from the donation solicitation and the billboard campaign to support Lanham Act liability. Although present on the article page, the Donate button was off to the side and did not itself use the NAACP's marks in any way. The billboard campaign was displayed on a different page altogether. A visitor likely would not perceive the use of the NAACP's marks in the article as being in connection with those transactional components of the website. It is important not to lose perspective. The article was just one piece of each Radiance website's content, which was comprised of articles, videos, and multimedia advocacy materials. That the protected marks appear somewhere in the content of a website that includes transactional components is not alone enough to satisfy the "in connection with" element. To say it was would come too close to an absolute rule that any social issues commentary with any transactional component in the neighborhood enhanced the commentator's risk of Lanham Act liability.

[25] The Supreme Court has warned "that charitable appeals for funds . . . involve a variety of speech interests . . . that are within the protection of the First Amendment." Vill. of Schaumburg v. Citizens for a Better Env't, 444 U.S. 620, 632 (1980). Such solicitation, the Court stated, is not a "variety of purely commercial speech." Id. Courts are thus well-advised to tread cautiously when a trademark holder invokes the Lanham Act against an alleged non-profit infringer whose use of the trademark holder's marks may be only tenuously related to requests for money. Again, this is not to say that in all instances a solicitation by a non-profit is immune from Lanham Act liability. A solicitation may satisfy the "in connection with" element if the trademark holder demonstrates a sufficient nexus between the unauthorized use of the protected mark and clear transactional activity. Such a nexus may be present, for example, where the protected mark seems to denote the recipient of the donation. However, where, as here, the solicitations are not closely related to the specific uses of the protected marks, we are compelled to conclude that the district court erred in ruling that the "in connection element" was met. . . . .

1. The difference in the language of Lanham Act § 32 and § 43(a). You may have noticed that the two likelihood of confusion sections formulate the commercial use requirement slightly differently. Compare Lanham Act § 32(1)(a), 15 U.S.C. § 1114(1)(a) (establishing liability for "[a]ny person who shall use in commerce" the plaintiff's mark "in connection with the sale, offering for sale, distribution, or advertising of any goods or services" in a manner that is confusing) to Lanham Act § 43(a) (1), 15 U.S.C. § 1125(a)(1) (establishing liability for "[a]ny person who, on or in connection with any goods or services, or any container for goods, uses in commerce" the plaintiff's mark in a manner that is confusing). In practice, courts have read both statements of the commercial use requirement to mean the same thing.

We now briefly turn to a considerably more unsettled area of actionable use doctrine known as the "trademark use" or "use as a mark" requirement. The Sixth Circuit is the only circuit that has consistently applied this requirement. See Sazerac Brands, LLC v. Peristyle It is necessary to be familiar with the doctrine because, as discussed below, the Supreme Court relied heavily on it in Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023), and the Court further committed itself to the doctrine in Abitron Austria Gmbh v. Hetronic International, Inc., 600 U.S. 412 (2023).

According to "use as a mark" doctrine, to prove infringement, the plaintiff must show as a threshold matter that the defendant is using the accused designation "as a trademark," that is, as a designation of source of the defendant's goods or services. Thus, for example, in Rupp v. Courier Journal, Inc., No. 18 Civ. 277, 2020 WL 1310491 (W.D. Ky. Mar. 19, 2020), the plaintiff owned the mark DERBY-PIE for chocolate nut pies. The defendant newspaper used the term "Derby pie" in the title of a recipe for chocolate-walnut pies, as shown above. The newspaper moved for dismissal of the plaintiff's claim of trademark infringement on the ground that the newspaper did not use the term as a designation of source for its own goods or services. The court granted the motion, finding that "the Complaint fails to plausibly establish that Defendant used Plaintiff's Mark in any other way than a non-trademark one." Id. at *3. See also Rigsby v. GoDaddy Inc., 59 F.4th 998, 1005 (9th Cir. 2023) (in case in which defendant domain name registrar transferred plaintiff's lapsed domain name to a third party, granting motion to dismiss trademark infringement claim on ground that plaintiff "has not adequately alleged that {defendant} 'used' his mark, let alone 'in commerce,' sufficient to state a claim under § 1125(a)"); Naked Cowboy v. CBS, 844 F. Supp. 2d 510, 515 (S.D.N.Y. 2012) (granting defendant's motion to dismiss in part on the ground that defendant's references to Times Square's Naked Cowboy in connection with soap opera The Bold and the Beautiful did not constitute "use in commerce" as defined in § 45); id. at 515 ("None of the contents of the Episode could have violated Plaintiff's trademark rights because the word mark 'Naked Cowboy' does not appear anywhere in it. Similarly, inclusion of 'naked' and 'cowboy' as separate tags associated with the YouTube video clips is not 'use' of Plaintiff's word mark 'Naked Cowboy.'").

In theory, the use as a mark requirement is separate from the requirement that the plaintiff also show that the defendant's accused use is likely to confuse consumers as to the source of the defendant's goods or services. As the Sixth Circuit has explained:

In our circuit, plaintiffs carry a threshold burden to show that the defendant is using a mark "in a '[ ]trademark' way" that "identifies the source of their goods." Interactive Prods. Corp. v. a2z Mobile Office Sols., Inc., 326 F.3d 687, 695 (6th Cir. 2003); see Grubbs v. Sheakley Grp., Inc., 807 F.3d 785, 793-94 (6th Cir. 2015); Hensley Mfg. v. ProPride, Inc., 579 F.3d 603, 610-12 (6th Cir. 2009). Otherwise the "trademark infringement and false designation of origin laws do not apply." Interactive Prods. Corp., 326 F.3d at 695. Only if the plaintiff clears this threshold test do we proceed to the conventional likelihood-of-confusion analysis and fair use defense, among other defenses. Sazerac Brands, LLC v. Peristyle, LLC, 892 F.3d 853, 859 (6th Cir. 2018). On this reasoning, if the plaintiff is unable to prove that the defendant's accused use constitutes a "use as a mark" for its own goods or services, then that would decide the case. There would thus be no need to move on to the often more difficult, unpredictable, and costly-to-litigate question of whether that use is likely to confuse consumers. As in Rupp v. Courier Journal, courts and defendants could utilize the use as a mark requirement to quickly dispense with especially dumb claims of infringement.

For its advocates, the statutory basis for the use as a mark requirement is found in Lanham Act § 32(1), 15 U.S.C. § 1114 (1), ("Any person who shall . . . use in commerce"), and in Lanham Act § 43(a) (1), 15 U.S.C. § 1125(a) (1), ("Any person who . . . uses in commerce"). As we saw above in Part I.C, the Lanham Act defines "use in commerce" in Lanham Act § 45, 15 U.S.C. § 1127:

The term "use in commerce" means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce- (1) on goods when-(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce, and

(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

For advocates of the use as a mark requirement, a defendant can be held liable only if its conduct satisfies the terms of the Lanham Act § 45 definition of "use in commerce." See, e.g., Naked Cowboy, 844 F. Supp. 2d at 515 ("The purchase from YouTube of adword advertising for the term 'naked cowboy' likewise does not constitute 'use in commerce' because Defendants did not place [the 'naked cowboy' term] on any goods or containers or displays or associated documents, nor do they use them in any way to indicate source or sponsorship." (citation omitted)).

Critics of use as a mark doctrine make several arguments. First, they argue that there is in fact no statutory basis for it. In their view, the § 45 definition of "use in commerce" describes the kind of "use in commerce" necessary to establish trademark rights rather than the kind of "use in commerce" necessary to infringe those rights. Cf. Rescuecom Corp. v. Google Inc., 562 F.3d 123, 134-39 (2d Cir. 2009) (reviewing the legislative history of the Lanham Act to determine that "Congress did not intend that this definition apply to the sections of the Lanham Act which define infringing conduct," but nevertheless expressing doubt as to whether at least part of the definition should apply to defendants' conduct). Second, if the § 45 definition of "use in commerce" applies to defendants' conduct, then defendants could escape liability by avoiding the conduct described in the definition, for example, by using the accused mark in advertising but not placing the mark on its goods. See Rescuecom, 562 F.3d at 139 ("It is easy to imagine perniciously confusing conduct involving another's mark which does not involve placement of the mark in the manner specified in the definition."). See also Tiffany & Co. v. Costco Wholesale Corp., 971 F.3d 74, 95 (2d Cir. 2020) ("Terms not used as a mark may still generate confusion as to 'affiliation, connection, . . . association [,] . . . sponsorship or approval," § 1125(a)(1)(A), and therefore constitute trademark infringement."). Third and more fundamentally, to determine if a defendant's use qualifies as a "use as a mark," a court must ask: do consumers perceive the defendant's use as a designation of the source of the defendant's goods? But this question comes very close to the question of whether consumers are confused as to source by the defendant's use. The "use as a mark" test purports to be a threshold requirement prior to the fact-intensive confusion inquiry, but in operation, it typically simply begs the question of whether consumers are confused. See McKenna, Trademark Use and the Problem of Source, at 777 ("[P]recisely because trademark use is not separable from consumer understanding, proponents cannot articulate the doctrine without lapsing into claims about likelihood of confusion").

By the 2010s, the "use as a mark" doctrine appeared to have fallen into disfavor and, outside of the Sixth Circuit, it was appearing less and less in case law. Then came two Supreme Court cases, Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023), and Abitron Gmbh v. Hetronic International, Inc., 600 U.S. 412 (2023), which have given new life to the doctrine.

We will devote substantial attention to Jack Daniel's below in Part III.C.2, but it is enough to explain here that in Jack Daniel's VIP produced a dog toy mimicking the shape and appearance of a Jack Daniel's whiskey bottle. Jack Daniel's sent a cease-and-desist letter. VIP then sued for a declaratory judgment of non-infringement. VIP argued that its conduct should be analyzed under the Rogers v. Grimaldi test, which, as we will see, is an extremely parodistfriendly test for whether an expressive use of a mark is infringing. The Supreme Court held otherwise. It reasoned that "the Rogers test has applied only to cases involving 'nontrademark uses'-or otherwise said, cases in which 'the defendant has used the mark' at issue in a 'non-source-identifying way.' S. Dogan & M. Lemley, Grounding Trademark Law Through Trademark Use, 92 Iowa L. Rev. 1669, 1684 (2007); see id., at 1683-1684, and n. 58." Jack Daniel's, 590 U.S. at 155. The problem for VIP was that in its complaint seeking declaratory judgment it had asserted trademark rights in the appearance of its dog toy. Id. at 150. More generally, Jack Daniel's now stands for the proposition that for a defendant to benefit from the Rogers v. Grimaldi test, the defendant must not be using the accused expression "as a mark." As explained in Part III.C.2, the "use as a mark" inquiry has now come to play a central role in trademark infringement litigation over unauthorized expressive uses of marks.

Abitron then followed Jack Daniel's. Abitron held that the main infringement sections of the Lanham Act ( § § 32(1)(a) & 43(a)(1)) do not apply extraterritorially. In the opinion for the Court, Justice Alito read the Lanham Act § 45 definition of "use in commerce" to apply to the type of conduct necessary to infringe trademark rights. (Recall that this was the definition that most lower courts had recognized applied only to the type of conduct necessary to establish trademark rights.) Thus, Abitron now apparently stands for the proposition that for a defendant to be liable for trademark infringement, its conduct must fulfill the various requirements built in to the definition of "use in commerce" quoted above-including apparently that it be making a "bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark."

It is not clear that the Court in Jack Daniel's or Abitron was aware of all the past controversy that has swirled around the doctrines it was resuscitating. Cf. Lerner & Rowe PC v. Brown Engstrand & Shely LLC, 119 F.4th 711, 727 (9th Cir. 2024) (Desai, J., concurring) (fully aware of the past controversy but urging the Ninth Circuit "to reconsider whether keyword bidding and purchasing constitutes a 'use in commerce' under the Lanham Act. Our binding precedent says it does, Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137, 1144-45 (9th Cir. 2011), but I am not convinced that we got it right or that our holding withstands the test of time and recent advancements in technology.").

In conclusion: first, it is worth remembering that in the vast majority of trademark cases, it is obvious that the defendant is making a "use as a mark" of its accused designation, so the "use as a mark" doctrine plays no significant role and typically is not even referenced. But second, in a small subset of fact patterns-involving, for example, parodic or other expressive uses, keyword advertising, uses in computer code, and uses outside of the United States-"use as a mark" or "use in commerce" doctrine may play a role. In these situations, the defendant may seek to show that its conduct is a "non-trademark use" or does not constitute "use in commerce" as that term is defined in Lanham Act § 45.

1. The leading advocates of the use as a mark requirement, Professors Stacey Dogan and Mark Lemley, argue that the doctrine serves a crucial limiting function:

The speech-oriented objectives of the trademark use doctrine protect more than just intermediaries; they prevent trademark holders from asserting a generalized right to control language, an interest that applies equally-and sometimes especially-when the speaker competes directly with the trademark holder. The trademark use doctrine has broad application-because of it, newspapers aren't liable for using a trademarked term in a headline, even if the use is confusing or misleading. Writers of movies and books aren't liable for using trademarked goods in their stories. Makers of telephone directories aren't liable for putting all the ads for taxi services together on the same page. Marketing surveyors aren't liable for asking people what they think of a competitor's brand-name product. Magazines aren't liable for selling advertisements that relate to the content of their special issues, even when that content involves trademark owners. Gas stations and restaurants aren't liable for locating across the street from an established competitor, trading on the attraction the established company has created or benefiting from the size of the sign the established company has put up. Individuals aren't liable for their use of a trademark in conversation, even in an inaccurate or misleading way (referring to a Puffs brand facial tissue as a "Kleenex," or a competing cola as a "Coke," for example). Generic drug manufacturers aren't liable for placing their drugs near their brand-name equivalents on drug store shelves, and the stores aren't liable for accepting the placement. They may be making money from their "uses" of the trademark, and the uses may be ones the trademark owner objects to, but they are not trademark uses and therefore are not within the ambit of the statute.

Dogan & Lemley, Trademarks and Consumer Search Costs, supra, at 809. What is your intuition as to what drives non-liability in the scenarios Dogan & Lemley set out? Are the potential defendants not liable because, as a formal matter, they do not use the mark "as a mark" or because, as an empirical matter, their use would simply not cause confusion as to source? At the same time, however, in scenarios like Rupp v. Courier Journal, isn't it sensible to provide defendants with an efficient means of getting abusive and speech-chilling infringement claims dismissed before they reach the likelihood of confusion analysis?

The overriding question in most federal trademark infringement litigation is a simple one: is the defendant's trademark, because of its similarity to the plaintiff's trademark, causing or likely to cause consumer confusion as to the source or sponsorship of the defendant's goods? Each of the circuits requires that, in answering this question, the district court conduct a multifactor analysis of the likelihood of consumer confusion according to the factors set out by that circuit. As the Seventh Circuit has explained, the multifactor test operates "as a heuristic device to assist in determining whether confusion exists." Sullivan v. CBS Corp., 385 F.3d 772, 778 (7th Cir. 2004). In Section II.B.1, we will briefly review the peculiar history of the multifactor test approach to the likelihood of confusion (or "LOC") question. In Section II.B.2, we will focus on a particularly rich application of the multifactor test in Virgin Enterprises Ltd. v. Nawab, 335 F.3d 141 (2d Cir. 2003). Section II.B.4 will address the use of survey evidence in the LOC context. Sections II.B.5 through II.B.9 will address various modes of consumer confusion such as "sponsorship or affiliation" confusion, "initial interest" confusion, "post-sale" confusion, and "reverse" confusion. Section II.B.10 will return briefly to the Lanham Act § 2(d) bar to registration of a mark that is confusingly-similar to a previously registered mark.

The History of the Confusion-Based Cause of Action for Trademark Infringement a. The Early-Twentieth Century Approach to the Likelihood of Confusion

In the following opinion, Borden Ice Cream Co. v. Borden's Condensed Milk Co., 201 F. 510 (7th Cir. 1912), the appellee Borden Condensed Milk Co. was the well-known manufacturer of, among other things, milk products under the trademark BORDEN. However, the only ice cream appellee had ever made was a specialized product made from malted milk and sold only to hospitals. The appellant Borden Ice Cream Co. commenced use of the BORDEN mark for ice cream -after finding someone named Borden to join its application for a corporate charter in Illinois. Under current trademark law, this would be a clear case of trademark infringement. As you will see, the Borden Ice Cream court saw things differently at the time.

[13] A personal name, such as 'Borden,' is not susceptible of exclusive appropriation, and even its registration in the Patent Office cannot make it a valid trade-mark. [14] There is no charge made in the bill that the appellants are infringing, or propose to infringe, upon any technical trade-mark of the appellee, so we may dismiss any claim for relief upon that score.

[15] The only theory upon which the injunction in this case can be sustained is upon that known as unfair competition. Relief against unfair competition is granted solely upon the ground that one who has built up a good will and reputation for his goods or business is entitled to all of the resultant benefits. Good will or business popularity is property, and, like other property, will be protected against fraudulent invasion. . . . .

[16] It has been said that the universal test question in cases of this class is whether the public is likely to be deceived as to the maker or seller of the goods. This, in our opinion, is not the fundamental question. The deception of the public naturally tends to injure the proprietor of a business by diverting his customers and depriving him of sales which otherwise he might have made. This, rather than the protection of the public against imposition, is the sound and true basis for the private remedy. That the public is deceived may be evidence of the fact that the original proprietor's rights are being invaded. If, however, the rights of the original proprietor are in no wise interfered with, the deception of the public is no concern of a court of chancery. American Washboard Co. v. Saginaw Mfg. Co., 103 Fed. 281.

[17] Doubtless it is morally wrong for a person to proclaim, or even intimate, that his goods are manufactured by some other and well-known concern; but this does not give rise to a private right of action, unless the property rights of that concern are interfered with. The use by the new company of the name 'Borden' may have been with fraudulent intent; and, even assuming that it was, the trial court had no right to interfere, unless the property rights of the old company were jeopardized. Nothing else being shown, a court of equity cannot punish an unorthodox or immoral, or even dishonest, trader; it cannot enforce as such the police power of the state.

[18] In the case now under our consideration the old company (the appellee) never has manufactured what is known as commercial ice cream. The new company (the appellant) was incorporated for the sole purpose of manufacturing and putting on the market such an article. . . . . [19] The secondary meaning of a name . . . has no legal significance, unless the two persons make or deal in the same kind of goods. Clearly the appellants here could make gloves, or plows, or cutlery, under the name 'Borden' without infringing upon any property right of the old company. If that is true, they can make anything under the name 'Borden' which the appellee has not already made and offered to the public. George v. Smith (C.C.) 52 Fed. 830.

[20] The name 'Borden,' until appellants came into the field, never had been associated with commercial ice cream. By making commercial ice cream the appellants do not come into competition with the appellee. In the absence of competition, the old company cannot assert the rights accruing from what has been designated as the secondary meaning of the word 'Borden.' The phrase 'unfair competition' presupposes competition of some sort. In the absence of competition the doctrine cannot be invoked.

[21] There being no competition between the appellants and appellee, we are confronted with the proposition that the appellee, in order to succeed on this appeal, has and can enforce a proprietary right to the name 'Borden' in any kind of business, to the exclusion of all the world. [22] It is urged that appellee has power, under its charter, to make commercial ice cream, and that it intends some day to do so. If such intention can be protected at this time, it might well be that appellee, having enjoined appellants from making commercial ice cream, would rest content with selling its evaporated milk to ice cream dealers, and never itself manufacture the finished product. But, as was well stated by Judge Coxe, in George v. Smith, supra:

'It is the party who uses it first as a brand for his goods, and builds up a business under it, who is entitled to protection, and not the one who first thought of using it on similar goods, but did not use it. The law deals with acts and not intentions.'

[23] Appellee also urges that it makes and sells large quantities of evaporated or condensed milk to manufacturers of ice cream, and that if the appellants are permitted to use the name 'Borden' in the ice cream business dealers probably will believe that its ice cream is made by appellee, and will in consequence buy the finished product rather than the component parts, and that appellee's sales of evaporated or condensed milk will fall off, to its manifest damage. Such result would be too speculative and remote to form the basis of an order restraining men from using in their business any personal name, especially their own.

[24] Appellee is in this position: If it bases its right to an injunction upon the doctrine of unfair competition, no competition of any kind has been shown by the record. If it relies upon some supposed damage which may result from appellants' use of the name 'Borden' in connection with inferior goods, the action is premature, because the appellants, as yet, have neither sold nor made anything.

[25] The order of the District Court must be reversed; and it is so ordered.

b. The Development of the Modern Multifactor Test

The idiosyncrasies of tradition rather than of reason drove the development of the multifactor tests across the circuits. Each of the circuits' current multifactor tests originated either directly or indirectly from the 1938 Restatement (First) of the Law of Torts. The Restatement (First) failed to set forth a single, unified multifactor test for trademark infringement. Instead, it proposed four factors that courts should consider in all cases and nine more factors that courts should additionally consider only when the parties' goods were noncompeting with each other, i.e., not substitutable for each other. Section 729 of the Restatement (First) set out the four factors courts should always consider:

In determining whether the actor's designation is confusingly similar to the other's trade-mark or trade name, the following factors are important:

(a) the degree of similarity between the designation and the trade-mark or trade name in (i) appearance;

(iii) verbal translation of the pictures or designs involved;

(b) the intent of the actor in adopting the designation;

(c) the relation in use and manner of marketing between the goods or services marketed by the actor and those marketed by the other;

(d) the degree of care likely to be exercised by purchasers.

RESTATEMENT FIRST OF TORTS § 729 (1939). Section 731 set out the additional nine factors that courts should additionally consider only in cases involving noncompetitive goods:

In determining whether one's interest in a trade-mark or trade name is protected, under the rules stated in § § 717 and 730, with reference to the goods, services or business in connection with which the actor uses his designation, the following factors are important:

(a) the likelihood that the actor's goods, services or business will be mistaken for those of the other;

(b) the likelihood that the other may expand his business so as to compete with the actor;

(c) the extent to which the goods or services of the actor and those of the other have common purchasers or users;

(d) the extent to which the goods or services of the actor and those of the other are marketed through the same channels;

(e) the relation between the functions of the goods or services of the actor and those of the other;

(f) the degree of distinctiveness of the trademark or trade name;

(g) the degree of attention usually given to trade symbols in the purchase of goods or services of the actor and those of the other;

(h) the length of time during which the actor has used the designation;

(i) the intent of the actor in adopting and using the designation.

Through the course of the mid-twentieth century, the federal courts lost track of the distinction between the two sets of factors, and the circuits each began to use a single, unified multifactor test regardless of whether the parties' goods were competing. Each circuit developed its own test, and for the most part, the peculiarities of the particular cases in which the circuit's multifactor test first coalesced determined which factors are still considered in that circuit today. A good example of this is found in the following opinion, Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 402 (2d Cir. 1961), which is the origin of the Second Circuit's "Polaroid factors." Despite Judge Friendly's clear statement that his test was meant for situations "[w]here the products are different," id. at 495, Second Circuit courts routinely apply the Polaroid factors in competing goods cases. The opinion is presented here primarily for its historical significance as one of the most influential opinions in U.S. trademark law, but also to show, in the final paragraph of the opinion excerpt, how much trademark infringement doctrine had evolved since Borden's Ice Cream.

[4] If defendant's sole business were the manufacture and sale of microwave equipment, we should have little difficulty in approving the District Court's conclusion that there was no such likelihood of confusion as to bring into play either the Lanham Act, 15 U.S.C.A. § 1114 (1), or New York General Business Law, § 368-b, or to make out a case of unfair competition under New York decisional law, see Avon Shoe Co. v. David Crystal, Inc., supra, at page 614, footnote 11. What gives us some pause is defendant's heavy involvement in a phase of electronics that lies closer to plaintiff's business, namely, television. Defendant makes much of the testimony of plaintiff's executive vice president that plaintiff's normal business is 'the interaction of light and matter.' Yet, although television lies predominantly in the area of electronics, it begins and ends with light waves. {The court went on to reject the plaintiff's attempts to overcome the defendant's defense of laches.}

Is there a statute of limitations in federal trademark law?

There is no statute of limitations provision in the Lanham Act. Federal courts instead recognize the equitable defense of laches, which will bar a plaintiff's claim if the plaintiff unreasonably delayed asserting the claim resulting in significant prejudice to the defendant. Courts may look to the analogous state statute of limitations period in the forum state to determine who bears the initial burden of proof in establishing laches. See, e.g., Conopco Inc. v. Campbell Soup Co., 95 F.3d 187, 191 (2d Cir. 1996). Gilson explains: "The {state law} limitations period is often used to shift the initial burden of proof for the laches defense. If the case was filed within the relevant statute of limitations, the burden will be on the defendant to show that laches applies, but if the case was filed after the limitations period expired, then the burden will be on the plaintiff to show why it would be inequitable to apply laches." However, it has of recent years been recognized that a merchant may have a sufficient economic interest in the use of his mark outside the field of his own exploitation to justify interposition by a court. His mark is his authentic seal; by it he vouches for the goods which bear it; it carries his name for good or ill. If another uses it, he borrows the owner's reputation, whose quality no longer lies within his own control. This is an injury, even though the borrower does not tarnish it, or divert any sales by its use; for a reputation, like a face, is the symbol of its possessor and creator, and another can use it only as a mask. And so it has come to be recognized that, unless the borrower's use is so foreign to the owner's as to insure against any identification of the two, it is unlawful.

Id. at 974. If the defendant's conduct "does not tarnish [the plaintiff's reputation], or divert any sales by its use," then what exactly is the harm to the plaintiff?

Contemporary Applications of the Multifactor Test for the Likelihood of Consumer Confusion

Each circuit has developed its own multifactor test for the likelihood of consumer confusion. Here are the multifactor tests from certain leading circuits. As you will see, they are roughly similar:

• The Second Circuit's "Polaroid factors": Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961) ("Where the products are different, the prior owner's chance of success is a function of many variables: the strength of his mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of defendant's good faith in adopting its own mark, the quality of defendant's product, and the sophistication of the buyers. Even this extensive catalogue does not exhaust the possibilities-the court may have to take still other variables into account. American Law Institute, Restatement of Torts, § § 729, 730, 731."). In Virgin Enterprises Ltd. v. Nawab, 335 F.3d 141 (2d Cir. 2003), the Second Circuit applied its Polaroid test to determine if consumers would likely mistake the goods and services of the defendant, operating under the mark VIRGIN WIRELESS, for those of the plaintiff, the owner of the VIRGIN mark for a wide variety of goods and services. The opinion is exceptional for its thorough analysis of the factors. In reading through Virgin Enterprises, consider the following questions:

• Which of the Polaroid factors are likely the most important to courts' adjudication of the likelihood of confusion question?

• In practice, is intent likely as unimportant to courts' determinations as the Virgin Enterprises opinion suggests?

• Why should strong marks receive a wider scope of protection than weak marks?

• Why should inherent strength be more important to the multifactor inquiry than acquired strength? Relatedly, why should fanciful marks receive a wider scope of protection than arbitrary or suggestive marks?

• Does the court make any basic mistakes of doctrine in its discussion of the Abercrombie spectrum? LEVAL, Circuit Judge.

[1] Plaintiff Virgin Enterprises Limited ("VEL" or "plaintiff") appeals from the denial of its motion for a preliminary injunction. This suit, brought under § 32 of the Lanham Act, 15 U.S.C. § 1114(1), alleges that defendants infringed plaintiff's rights in the registered mark VIRGIN by operating retail stores selling wireless telephones and related accessories and services under the trade name VIRGIN WIRELESS. The United States District Court for the Eastern District of New York (Sifton, J.) denied plaintiff's motion for a preliminary injunction, based upon its finding that plaintiff's registration did not cover the retail sale of wireless telephones and related products, and that plaintiff failed to show a likelihood of consumer confusion.

BACKGROUND [2] Plaintiff VEL, a corporation with its principal place of business in London, owns U.S. Registration No. 1,851,817 ("the 817 Registration"), filed on May 5, 1991, and registered on August 30, 1994, for the VIRGIN mark as applied to "retail store services in the fields of . . . computers and electronic apparatus " (emphasis added). . . . Plaintiff also owns U.S. Registration No. 1,852,776 ("the 776 Registration"), filed on May 9, 1991, and registered on September 6, 1994, for a stylized version of the VIRGIN mark for use in connection with "retail store services in the fields of . . . computers and electronic apparatus," and U.S. Registration No. 1,863,353 ("the 353 Registration"), filed on May 19, 1992, and registered on November 15, 1994, for the VIRGIN MEGASTORE mark. It is undisputed that these three registrations have become incontestable pursuant to 15 U.S.C. § 1065.

[3] VEL, either directly or through corporate affiliates, operates various businesses worldwide under the trade name VIRGIN, including an airline, large-scale record stores called Virgin Megastores, and an internet information service. Plaintiff or its affiliates also market a variety of goods branded with the VIRGIN name, including music recordings, computer games, books, and luggage. Three of plaintiff's megastores are located in the New York area. According to an affidavit submitted to the district court in support of plaintiff's application for preliminary injunction, Virgin Megastores sell a variety of electronic apparatus, including video game systems, portable CD players, disposable cameras, and DVD players. These stores advertise in a variety of media, including radio.

[4] Defendants Simon Blitz and Daniel Gazal are the sole shareholders of defendants Cel-Net Communications, Inc. ("Cel-Net"); The Cellular Network Communications, Inc., doing business as CNCG ("CNCG"); and SD Telecommunications, Inc. ("SD Telecom"). Blitz and Gazal formed Cel-Net in 1993 to sell retail wireless telephones and services in the New York area. Later, they formed CNCG to sell wireless phones and services on the wholesale level. CNCG now sells wireless phones and services to more than 400 independent wireless retailers. In 1998, Cel-Net received permission from New York State regulators to resell telephone services within the state.

[5] Around 1999, Andrew Kastein, a vice-president of CNCG, began to develop a Cel-Net brand of wireless telecommunications products. In early 1999, Cel-Net entered into negotiations with the Sprint PCS network to provide telecommunications services for resale by Cel-Net. In August 1999, Cel-Net retained the law firm Pennie & Edmonds to determine the availability of possible service marks for Cel-Net. Pennie & Edmonds associate Elizabeth Langston researched for Kastein a list of possible service marks; among the marks Cel-Net asked to have researched was VIRGIN. Defendants claim that Langston told Cel-Net officer Simon Corney that VIRGIN was available for use in the telecommunications field. Plaintiff disputed this, offering an affidavit from Langston that she informed defendants that she would not search the VIRGIN mark because her firm represented plaintiff. [6] According to defendants, in December 1999, Cel-Net retained Corporate Solutions, LLC and its principals Nathan Erlich and Tahir Nawab as joint venture partners to help raise capital to launch Cel-Net's wireless telephone service. On December 2, 1999, Erlich and Nawab filed four intent-to-use applications with the U.S. Patent and Trademark Office ("PTO") to register the marks VIRGIN WIRELESS, VIRGIN MOBILE, VIRGIN COMMUNICATIONS, and VIRGIN NET in the field of telecommunications services, class 38. On December 24, 1999, Corporate Solutions incorporated defendant Virgin Wireless, Inc. ("VWI") and licensed to VWI the right to use the marks VIRGIN WIRELESS and VIRGIN MOBILE. Meanwhile, one of plaintiff's affiliates had begun to offer wireless telecommunication services bearing the VIRGIN mark in the United Kingdom. A press release dated November 19, 1999, found on plaintiff's website, stated that its Virgin Mobile wireless services were operable in the United States.

[7] On June 23, 2000, defendant Blitz signed a lease under the name Virgin Wireless for a kiosk location in South Shore Mall in Long Island from which to re-sell AT&T wireless services, telephones, and accessories under the retail name Virgin Wireless. Defendants Cel-Net and VWI later expanded their telecommunications re-sale operations to include two retail stores and four additional retail kiosks in malls in the New York area and in Pennsylvania. All of these stores have been run by VWI under the trade name VIRGIN WIRELESS. VWI also has leases and bank accounts in its name, and has shown evidence of actual retail transactions and newspaper advertisements. [8] In August 2000, plaintiff licensed Virgin Mobile USA, LLC, to use the VIRGIN mark for wireless telecommunications services in the United States. On August 10, 2000, plaintiff filed an intent-to-use application with the PTO for use of the VIRGIN mark in the United States on telecommunications services and mobile telephones. On October 11, 2001, the PTO suspended this mark's registration in international class 9, which covers wireless telephones, and class 38, which covers telecommunications services, because the VIRGIN mark was already reserved by a prior filing, presumably defendants'. On August 16, 2001, plaintiff filed another intent-to-use application for the mark VIRGIN MOBILE to brand telecommunications services. The PTO issued a non-final action letter for both of plaintiff's pending new registrations on October 31, 2001, which stated that defendant Corporation Solutions' pending applications for similar marks in the same class could give rise to "a likelihood of confusion." The PTO suspended action on plaintiff's application pending the processing of Corporation Solutions' applications. [9] In October 2001, plaintiff issued a press release announcing that it was offering wireless telecommunications services and mobile telephones in the United States.

[10] Plaintiff became aware of Corporation Solutions' application for registration of the VIRGIN WIRELESS and VIRGIN MOBILE marks by May 2000. In October 2001 and December 2001, defendant VWI filed suits against plaintiff in the federal district courts in Arizona and Delaware, alleging that plaintiff was using VWI's mark. Plaintiff maintains (and the district court found) that it learned in January 2002 that VWI and Cel-Net were operating kiosks under the VIRGIN WIRELESS name and two days later filed the present suit seeking to enjoin defendants from selling mobile phones in VIRGIN-branded retail stores.

[11] On May 2, 2002, the district court considered plaintiff's application for a preliminary injunction. It found that no essential facts were in dispute, and therefore no evidentiary hearing was required. It was uncontested (and the district court accordingly found) that plaintiff sold "electronic apparatus" in its stores, including "various video game systems, portable cassette tape, compact disc, mp3, and mini disc players, portable radios, and disposable cameras," but not including telephones or telephone service, and that the only products the defendants sold in their stores were wireless telephones, telephone accessories, and wireless telephone services . . . . [12] Arguing against plaintiff's likelihood of success, the court noted that plaintiff's registrations did not claim use of the VIRGIN mark "in telecommunications services or in the associated retail sale of wireless telephones and accessories." While plaintiff's 817 and 776 Registrations covered the retail sale of "computers and electronic apparatus," they did not extend to telecommunications services and wireless phones.

[13] The court noted that the defendants were the first to use the VIRGIN mark in telecommunications, and the first to attempt to register VIRGIN for telecommunications and retail telephone sales . . . .

[14] A claim of trademark infringement, whether brought under 15 U.S.C. § 1114(1) (for infringement of a registered mark) or 15 U.S.C. § 1125(a) (for infringement of rights in a mark acquired by use), is analyzed under the familiar two-prong test described in Gruner + Jahr USA Publ'g v. Meredith Corp., 991 F.2d 1072 (2d Cir. 1993). See Time, Inc. v. Petersen Publ'g Co. L.L.C., 173 F.3d 113, 117 (2d Cir. 1999) (noting that Gruner test is applicable to claims brought under § 1114(1) and § 1125(a)). The test looks first to whether the plaintiff's mark is entitled to protection, and second to whether defendant's use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant's goods. Gruner, 991 F.2d at 1074. Examining the question as the test dictates, we have no doubt that plaintiff was entitled to a preliminary injunction.

[15] We believe the district court accorded plaintiff too narrow a scope of protection for its famous, arbitrary, and distinctive mark. There could be no dispute that plaintiff prevailed as to the first prong of the test-prior use and ownership. For years, plaintiff had used the VIRGIN mark on huge, famous stores selling, in addition to music recordings, a variety of consumer electronic equipment. At the time the defendants began using VIRGIN, plaintiff owned rights in the mark. The focus of inquiry thus turns to the second prong of the testwhether defendants' use of VIRGIN as a mark for stores selling wireless telephone services and phones was likely to cause confusion. There can be little doubt that such confusion was likely.

[16] The landmark case of Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961) (Friendly, J.), outlined a series of nonexclusive factors likely to be pertinent in addressing the issue of likelihood of confusion, which are routinely followed in such cases. . .

[17] Six of the Polaroid factors relate directly to the likelihood of consumer confusion. These are the strength of the plaintiff's mark; the similarity of defendants' mark to plaintiff's; the proximity of the products sold under defendants' mark to those sold under plaintiff's; where the products are different, the likelihood that plaintiff will bridge the gap by selling the products being sold by defendants; the existence of actual confusion among consumers; and the sophistication of consumers. Of these six, all but the last (which was found by the district court to be neutral) strongly favor the plaintiff. The remaining two Polaroid factors, defendants' good or bad faith and the quality of defendants' products, are more pertinent to issues other than likelihood of confusion, such as harm to plaintiff's reputation and choice of remedy. We conclude that the Polaroid factors powerfully support plaintiff's position.

[20] The second aspect of efficiency that justifies according broader protection to marks that are inherently distinctive relates directly to the likelihood of confusion. If a mark is arbitrary or fanciful, and makes no reference to the nature of the goods it designates, consumers who see the mark on different objects offered in the marketplace will be likely to assume, because of the arbitrariness of the choice of mark, that they all come from the same source. For example, if consumers become familiar with a toothpaste sold under an unusual, arbitrary brand name, such as ZzaaqQ, and later see that same inherently distinctive brand name appearing on a different product, they are likely to assume, notwithstanding the product difference, that the second product comes from the same producer as the first. The more unusual, arbitrary, and fanciful a trade name, the more unlikely it is that two independent entities would have chosen it. In contrast, every seller of foods has an interest in calling its product "delicious." Consumers who see the word delicious used on two or more different food products are less likely to draw the inference that they must all come from the same producer. Cf. Streetwise Maps, 159 F.3d at 744 (noting that several map producers use "street" in product names; thus plaintiff's mark using "street" was not particularly distinctive); W. Publ'g, 910 F.2d at 61 (noting numerous registrations of marks using word "golden"). In short, the more distinctive the mark, the greater the likelihood that the public, seeing it used a second time, will assume that the second use comes from the same source as the first. The goal of avoiding consumer confusion thus dictates that the inherently distinctive, arbitrary, or fanciful marks, i.e., strong marks, receive broader protection than weak marks, those that are descriptive or suggestive of the products on which they are used. See Abercrombie, 537 F.2d at 9-11; TCPIP, 244 F.3d at 100-01.

[21] The second sense of trademark strength, fame, or "acquired distinctiveness," also bears on consumer confusion. See TCPIP, 244 F.3d at 100-01; Streetwise Maps, 159 F.3d at 744. If a mark has been long, prominently and notoriously used in commerce, there is a high likelihood that consumers will recognize it from its prior use. Widespread consumer recognition of a mark previously used in commerce increases the likelihood that consumers will assume it identifies the previously familiar user, and therefore increases the likelihood of consumer confusion if the new user is in fact not related to the first. See Nabisco, 191 F.3d at 216-17. A mark's fame also gives unscrupulous traders an incentive to seek to create consumer confusion by associating themselves in consumers' minds with a famous mark. The added likelihood of consumer confusion resulting from a second user's use of a famous mark gives reason for according such a famous mark a broader scope of protection, at least when it is also inherently distinctive. See McGregor, 599 F.2d at 1132 (noting that secondary meaning may further enlarge the scope of protection accorded to inherently distinctive marks).

[22] Plaintiff's VIRGIN mark undoubtedly scored high on both concepts of strength. In relation to the sale of consumer electronic equipment, the VIRGIN mark is inherently distinctive, in that it is arbitrary and fanciful; the word "virgin" has no intrinsic relationship whatsoever to selling such equipment. Because there is no intrinsic reason for a merchant to use the word "virgin" in the sale of consumer electronic equipment, a consumer seeing VIRGIN used in two different stores selling such equipment will likely assume that the stores are related.

[23] Plaintiff's VIRGIN mark was also famous. The mark had been employed with worldwide recognition as the mark of an airline and as the mark for megastores selling music recordings and consumer electronic equipment. The fame of the mark increased the likelihood that consumers seeing defendants' shops selling telephones under the mark VIRGIN would assume incorrectly that defendants' shops were a part of plaintiff's organization. See Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 873 (2d Cir.

[24] There can be no doubt that plaintiff's VIRGIN mark, as used on consumer electronic equipment, is a strong mark, as the district court found. It is entitled as such to a broad scope of protection, precisely because the use of the mark by others in connection with stores selling reasonably closely related merchandise would inevitably have a high likelihood of causing consumer confusion.

[25] Similarity of marks. When the secondary user's mark is not identical but merely similar to the plaintiff's mark, it is important to assess the degree of similarity between them in assessing the likelihood that consumers will be confused. See McGregor, 599 F.2d at 1133. Plaintiff's and defendants' marks were not merely similar; they were identical to the extent that both consisted of the same word, "virgin."

[26] The district court believed this factor did not favor plaintiff because it found some differences in appearance. Defendants' logo used a different typeface and different colors from plaintiff's. While those are indeed differences, they are quite minor in relation to the fact that the name being used as a trademark was the same in each case.

[27] Advertisement and consumer experience of a mark do not necessarily transmit all of the mark's features. Plaintiff, for example, advertised its Virgin Megastores on the radio. A consumer who heard those advertisements and then saw the defendants' installation using the name VIRGIN would have no way of knowing that the two trademarks looked different. See Sports Auth., Inc. v. Prime Hospitality Corp., 89 F.3d 955, 962 (2d Cir. 1996). A consumer who had visited one of plaintiff's Virgin Megastores and remembered the name would not necessarily remember the typeface and color of plaintiff's mark. The reputation of a mark also spreads by word of mouth among consumers. One consumer who hears from others about their experience with Virgin stores and then encounters defendants' Virgin store will have no way knowing of the differences in typeface. See Hills Bros. Coffee, Inc. v. Hills Supermarkets, Inc., 428 F.2d 379, 381 (2d Cir. 1970) (per curiam ).

[28] In view of the fact that defendants used the same name as plaintiff, we conclude the defendants' mark was sufficiently similar to plaintiff's to increase the likelihood of confusion. This factor favored the plaintiff as a matter of law. We conclude that the district court erred in concluding otherwise on the basis of comparatively trivial and often irrelevant differences.

[29] Proximity of the products and likelihood of bridging the gap. The next factor is the proximity of the products being sold by plaintiff and defendant under identical (or similar) marks. See Arrow Fastener, 59 F.3d at 396. This factor has an obvious bearing on the likelihood of confusion. When the two users of a mark are operating in completely different areas of commerce, consumers are less likely to assume that their similarly branded products come from the same source. In contrast, the closer the secondary user's goods are to those the consumer has seen marketed under the prior user's brand, the more likely that the consumer will mistakenly assume a common source. See Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 480-81 (2d Cir. 1996).

[30] While plaintiff had not sold telephones or telephone service prior to defendant's registration evincing intent to sell those items, plaintiff had sold quite similar items of consumer electronic equipment. These included computer video game systems, portable cassette-tape players, compact disc players, MP3 players, mini-disc players, and disposable cameras. Like telephones, many of these are small consumer electronic gadgets making use of computerized audio communication. They are sold in the same channels of commerce. Consumers would have a high expectation of finding telephones, portable CD players, and computerized video game systems in the same stores. We think the proximity in commerce of telephones to CD players substantially advanced the risk that consumer confusion would occur when both were sold by different merchants under the same trade name, VIRGIN.

[31] Our classic Polaroid test further protects a trademark owner by examining the likelihood that, even if the plaintiff's products were not so close to the defendants' when the defendant began to market them, there was already a likelihood that plaintiff would in the reasonably near future begin selling those products. See Cadbury Beverages, 73 F.3d at 482. VEL's claim of proximity was further strengthened in this regard because, as the district court expressly found, "plans had been formulated [for VEL] to enter [the market for telecommunications products and services] shortly in the future." VEL had already begun marketing telephone service in England which would operate in the United States, and, as the district court found, had made plans to sell telephones and wireless telephone service under the VIRGIN name from its retail stores.

[32] The district court, nonetheless, found in favor of the defendants with respect to the proximity of products and services. We would ordinarily give considerable deference to a factual finding on this issue. Here, however, we cannot do so because it appears the district court applied the wrong test. The court did not assess the proximity of defendants' VIRGINbranded retail stores selling telephone products to plaintiff's VIRGIN-branded retail stores selling other consumer electronic products. It simply concluded that, because defendants were selling exclusively telephone products and services, and plaintiff's electronic products did not include telephones or related services, the defendants must prevail as to the proximity factor.

[33] This represents a considerable misunderstanding of the Polaroid test. The famous list of factors of likely pertinence in assessing likelihood of confusion in Polaroid was specially designed for a case like this one, in which the secondary user is not in direct competition with the prior user, but is selling a somewhat different product or service. In Polaroid, the plaintiff sold optical and camera equipment, while the defendant sold electronic apparatus. The test the court discussed was expressly addressed to the problem "how far a valid trademark shall be protected with respect to goods other than those to which its owner has applied it." 287 F.2d at 495 (emphasis added); see also Arrow Fastener, 59 F.3d at 396 (noting that products need not actually compete with each other). The very fact that the test includes the "proximity" between the defendant's products and the plaintiff's and the likelihood that the plaintiff will "bridge the gap" makes clear that the trademark owner does not lose, as the district court concluded, merely because it has not previously sold the precise good or service sold by the secondary user.

[34] In our view, had the district court employed the proper test of proximity, it could not have failed to find a high degree of proximity as between plaintiff VEL's prior sales of consumer electronic audio equipment and defendants' subsequent sales of telephones and telephone services, which proximity would certainly contribute to likelihood of consumer confusion. And plaintiff was all the more entitled to a finding in its favor in respect of these matters by virtue of the fact, which the district court did find, that at the time defendants began using the VIRGIN mark in the retail sale of telephones and telephone services, plaintiff already had plans to bridge the gap by expanding its sales of consumer electronic equipment to include sales of those very goods and services in the near future. Consumer confusion was more than likely; it was virtually inevitable.

[35] Actual confusion. It is self-evident that the existence of actual consumer confusion indicates a likelihood of consumer confusion. Nabisco, 191 F.3d at 228. We have therefore deemed evidence of actual confusion "particularly relevant" to the inquiry. Streetwise Maps, 159 F.3d at 745.

[36] Plaintiff submitted to the district court an affidavit of a former employee of defendant Cel-Net, who worked at a mall kiosk branded as Virgin Wireless, which stated that individuals used to ask him if the kiosk was affiliated with plaintiff's VIRGIN stores. The district court correctly concluded that this evidence weighed in plaintiff's favor.

[37] Sophistication of consumers. The degree of sophistication of consumers can have an important bearing on likelihood of confusion. Where the purchasers of products are highly trained professionals, they know the market and are less likely than untrained consumers to be misled or confused by the similarity of different marks. The district court recognized that "[r]etail customers, such as the ones catered to by both the defendants and [plaintiff], are not expected to exercise the same degree of care as professional buyers, who are expected to have greater powers of discrimination." On the other hand, it observed that purchasers of cellular telephones and the service plans were likely to give greater care than self-service customers in a supermarket. Noting that neither side had submitted evidence on the sophistication of consumers, the court made no finding favoring either side. We agree that the sophistication factor is neutral in this case.

[38] Bad faith and the quality of the defendants' services or products. Two factors remain of the conventional Polaroid test: the existence of bad faith on the part of the secondary user and the quality of the secondary user's products or services. Polaroid, 287 F.2d at 495. Neither factor is of high relevance to the issue of likelihood of confusion. A finding that a party acted in bad faith can affect the court's choice of remedy or can tip the balance where questions are close. It does not bear directly on whether consumers are likely to be confused. See TCPIP, 244 F.3d at 102. The district court noted some evidence of bad faith on the defendants' part, but because the evidence on the issue was scant and equivocal, the court concluded that such a finding "at this stage [would be] speculative." The court therefore found that this factor favored neither party.

[39] The issue of the quality of the secondary user's product goes more to the harm that confusion can cause the plaintiff's mark and reputation than to the likelihood of confusion. See Arrow Fastener, 59 F.3d at 398 (noting that first user's reputation may be harmed if secondary user's goods are of poor quality). In any event, the district court found this factor to be "neutral" with respect to likelihood of confusion.

[40] In summary we conclude that of the six Polaroid factors that pertain directly to the likelihood of consumer confusion, all but one favor the plaintiff, and that one-sophistication of consumers-is neutral. The plaintiff is strongly favored by the strength of its mark, both inherent and acquired; the similarity of the marks; the proximity of the products and services; the likelihood that plaintiff would bridge the gap; and the existence of actual confusion. None of the factors favors the defendant. The remaining factors were found to be neutral. Although we do not suggest that likelihood of confusion may be properly determined simply by the number of factors in one party's favor, the overall assessment in this case in our view admits only of a finding in plaintiff's favor that defendants' sale of telephones and telephone-related services under the VIRGIN mark was likely to cause substantial consumer confusion.

[41] One issue remains. Defendants argue that plaintiff should be barred by laches from seeking injunctive relief. They contend that because of plaintiff's delay after learning of the defendants' applications to register the VIRGIN marks, they expended considerable sums and developed goodwill in their use of the VIRGIN marks before plaintiff brought suit. Because the district court ruled in the defendants' favor it made no express finding on the issue of laches. But the district court explicitly found that plaintiff first learned of defendants' use of the name VIRGIN in commerce only two days before plaintiff instituted this suit. Given that finding, plaintiff could not be chargeable with laches.

[42] We conclude that, as a matter of law, plaintiff demonstrated irreparable harm and likelihood of success on the merits and was entitled to a preliminary injunction.

Comments and Questions 1. The Abercrombie spectrum. In its discussion of inherent distinctiveness, the court divides the Abercrombie spectrum into inherently and non-inherently distinctive marks: "This inquiry distinguishes between, on the one hand, inherently distinctive marks-marks that are arbitrary or fanciful in relation to the products (or services) on which they are usedand, on the other hand, marks that are generic, descriptive or suggestive as to those goods." Do you detect an error in this division? Later in the opinion, the court refers to the Virgin mark as "arbitrary and fanciful." Should we treat these two Abercrombie categories as indistinguishable for purposes of the inherent distinctiveness analysis? Why might we seek to accord a greater scope of protection to fanciful marks than to arbitrary marks?

2. Are all factors equally important? In order to prevail in the overall likelihood of confusion multifactor test, must a plaintiff win all of the factors, a majority of them, some of them? Is the outcome of any particular factor necessary or sufficient to trigger a particular overall test outcome? Empirical work offers some insight into these questions. See Barton Beebe, An Empirical Study of the Multifactor Tests for Trademark Infringement, 94 CALIF. L. REV. 1581 (2006). The author's evidence suggests that five core factors drive the outcome of the likelihood of confusion test. In order of importance, these factors are the similarity of the marks, the defendant's intent, the proximity of the goods, evidence of actual confusion, and the strength of the plaintiff's mark. Certain factor outcomes correlate nearly perfectly with the overall outcome of the test. A finding that the marks are not similar is nearly always associated with a finding of no likelihood of confusion, while a finding that the defendant acted in bad faith is nearly always associated with a finding of likelihood of confusion. The remaining factors appear, in practice, to be largely irrelevant to the outcome of the test. See also Thomas Reichert, "Decoding DuPont: A Large-Scale Empirical Study of Trademark Confusion at the TTAB" (working paper, February 11, 2026); Daryl Lim, Trademark Confusion Revealed: An Empirical Analysis, 71 AM. U. L. REV. 1285 (2022).

Why should strong marks receive more protection?

The conventional rationale for according a greater scope of protection to strong marks is that, due to their notoriety, they are more easily called to mind by similar marks. See Jacob Jacoby, The Psychological Foundations of Trademark Law: Secondary Meaning, Genericism, Fame, Confusion and Dilution, 91 TRADEMARK REP. 1013, 1038-42 (2001). But shouldn't strong marks actually require less protection? Consider the example of COKE. Having been exposed to the COKE mark countless times throughout their lives, are American consumers more or less likely to detect slight differences between the COKE mark and other similar marks? Some foreign courts have had the temerity to suggest that exceptionally strong marks are less likely to be confused with other marks. See, e.g., Baywatch Production Co. Inc 4. Sophistication of the relevant consumers. Courts assess the likelihood of confusion by the "reasonably prudent" consumer of the goods or services at issue. Consumers of more expensive or more technically sophisticated goods are understood to exercise greater care in their purchasing decisions, and thus to be comparatively less likely to be confused. See, e.g., Florida Int'l Univ. Bd. of Trustees v. Florida Nat'l Univ., Inc., 830 F.3d 1242, 1256 (11th Cir. 2016) (in finding no likelihood of confusion between FLORIDA INTERNATIONAL UNIVERSITY and FLORIDA NATIONAL UNIVERSITY, observing that "students looking for a college to attend are likely to be relatively sophisticated and knowledgeable because of the nature, importance, and size of the investment in a college education"); Heartsprings, Inc. v. Heartspring, Inc., 143 F.3d 550, 557 (10th Cir. 1998) (finding that consumers would not likely confuse defendant's mark HEARTSPRING for a residential school for physically disabled children with plaintiff's mark HEARTSPRINGS for printed materials teaching children to resolve conflicts non-violently where tuition for defendant's school ranged from $90,000 to $150,000 per year). See also M Welles & Assocs., Inc. v. Edwell, Inc., 69 F.4th 723, 736 (10th Cir. 2023) (citing Heartsprings in support of and affirming magistrate judge's bench trial ruling that EDWELL for nonprofit organization dedicated to improving schoolteachers' mental health was not confusingly similar with EDWEL for provider of classes and certification workshops for project management professionals); but see id. at 737 (Thmokovich, J., dissenting) ("The majority . . . overlooks the likelihood of confusion as to affiliation between the two.").

A Canadian case captured this aspect of consumer sophistication doctrine quite memorably. In Atomic Energy of Canada Limited v. Areva NP Canada Ltd., 2009 FC 980 (2009), the plaintiff used a stylized "A" (shown below on the left) as its trademark for services relating to the design and construction of nuclear reactors while the defendant also used a stylized "A" (shown below on the right) in connection with the sale of nuclear reactor parts and components. The court noted: "All of [the plaintiff's] experts acknowledged in crossexamination that the relevant consumers would not be confused into purchasing the wrong nuclear reactor." Id. at ¶19. Citing English case law, the court recognized that "[I]t is not sufficient that the only confusion would be to a very small, unobservant section of society; or as Foster J. put it recently, if the only person who would be misled was a 'moron in a hurry.'" Id. at ¶28. Mr. Justice Zinn added: "In this industry, the fact that Homer Simpson may be confused is insufficient to find confusion." Id.

Are relatively poor individuals less sophisticated consumers and thus more easily confused? One S.D.N.Y. judge seemed to think so. See Schieffelin & Co. v. The Jack Co., 1994 WL 144884 at *55 (S.D.N.Y. 1994) ("Even if some of the prospective purchasers of Dom Perignon are from low income groups, and are therefore less sophisticated shoppers than wealthier purchasers, . . ."). A later court took exception to the Schieffelin Court's assumption. See Reebok Intern. Ltd. v. K-Mart Corp., 849 F.Supp. 252, 268 (S.D.N.Y. 1994) ("[T]he court expressly disagrees with this statement's implication that there is a direct relationship between income and consumer intelligence. Careless shopping habits are not a necessary byproduct of a low income."). Indeed, couldn't an argument be made that low-income groups would typically give more care to their purchases? Trademark litigation typically unfolds as a battle between competing sellers who argue over whether the defendant's conduct is likely to confuse consumers. This is an unfair fight. In the traditional narrative, the plaintiff defends her trademark while simultaneously protecting consumers at risk for confusion. The defendant, relatively speaking, stands alone. The resulting "two-against-one" storyline gives short shrift to the interests of nonconfused consumers who may have a stake in the defendant's conduct. As a result, courts are too receptive to nontraditional trademark claims where the case for consumer harm is questionable. Better outcomes are available by appreciating trademark litigation's parallel status as a conflict between consumers. This view treats junior and senior trademark users as proxies for different consumer classes and recognizes that remedying likely confusion among one group of consumers may cause harm to others. Focusing on the interests of benefited and harmed consumers also minimizes the excessive weight given to moral rhetoric in adjudicating trademark cases. Consideration of trademark's consumer-conflict dimension is therefore a useful device for critiquing trademark's expansion and assessing future doctrinal developments.

Id. at 60. Should courts be more solicitous of the interests of sophisticated consumers who are in fact not confused and may benefit from the information provided by the defendant's conduct? 6. Is it necessary for courts explicitly to consider each factor? District courts are generally required explicitly to address each of the factors listed in their circuit's multifactor test. If a factor is irrelevant, the court must explain why. Failure to do so can result in remand. See, for example, Sabinsa Corp. v. Creative Compounds, 609 F.3d 175 (3d Cir. 2010), which reviewed a district court opinion that addressed only three of the ten Lapp factors used by the Third Circuit. The Third Circuit explained: "[W]hile it is true that a district court may find that certain of the Lapp factors are inapplicable or unhelpful in a particular case, the court must still explain its choice not to employ those factors. Here, the District Court failed to explain whether it viewed these remaining factors as neutral or irrelevant or how it weighed and balanced the combined factors." Id. at 183. Finding that the facts were "largely undisputed," id., the Third Circuit declined to remand. Instead, it considered each of the ten Lapp factors and reversed.

A two-dimensional model of trademark scope. Trademark lawyers typically speak of trademarks in two dimensions, as in the trademark "FORD for cars" or the trademark "ACE for hardware, but not for bandages." From this we can derive a simple two-dimensional model of trademark infringement, as in the figure below. See Barton Beebe, The Semiotic Analysis of Trademark Law, 51 UCLA L. REV. 621, 654-655 (2004). This model conceives of any given trademark as forming a point in a two-dimensional features space consisting of a trademark dimension and a goods/services dimension. The trademark dimension consists of a collapsed, one-dimensional continuum of all possible marks arranged according to similarities of "sound, sight, and meaning." The goods/services dimension similarly consists of a one-dimensional continuum of all possible goods and services arranged according to their degree of similarity.

Distance in this feature space is a measure of two concepts. First, distance is a measure of difference. The distance between any two points represents the degree of difference between them. Second, and related, distance is a measure of the likelihood of consumer confusion. The closer two points are in features space, the greater the proportion of consumers in the relevant consumer population who will likely confuse them.

As we have seen, in order to prevent consumer confusion as to source, trademark law invests a trademark-product combination with some broader scope of protection extending out from the point the combination forms in this features space. Otherwise, a competitor could come very near to that point, as in (stout, BASS) or (ale, BOSS) in the above figure and, by confusing some proportion of consumers as to source, unfairly appropriate as to those consumers the goodwill of the BASS ale brand. The closer a junior user's trademark-product combination comes to the trademark-product combination of a senior user, the greater the proportion of consumers who will confuse the junior's with the senior's use. At some proximity to the senior's use, trademark law declares that too high a proportion of consumers are or will be confused, and establishes a border, a property line, inside of which no competitor may come. This border, enveloping any given trademark, describes the scope of that trademark's protection and the extent of the producer's property right.

For exceptionally well-known marks, what might be the shape of the mark's scope in this features space? Would it matter where the mark falls on the Abercrombie spectrum? What would be the shape of the scope of protection for COCA-COLA? Can any other firm reasonably use that mark on any other good or service? What would be the shape of the scope of FORD for automobiles or APPLE for high technology goods and services?

Further Examples of the Application of the Multifactor Test for the Likelihood of Consumer Confusion

The application of the multifactor test for the likelihood of confusion is often highly factspecific. String citations of cases finding confusion and other seemingly similar cases finding no confusion may give the impression that the test is unpredictable. Adding to the difficulty is that there are no clear rules for when marks are too similar or not similar enough to trigger liability. Good trademark lawyers tend to build up over time a feel for what courts will likely find infringing in light of all the facts of the case. Provided below are brief summaries of a few more cases in which courts found or did not find confusion to try to impart to those new to trademark law some further sense of the diverse variety of considerations that can enter into a court's application of the multifactor test. In finding no confusion after a bench trial, the court summarized its multifactor analysis:

The balance of the Sleekcraft factors does not demonstrate a likelihood of confusion between Hero's marks and Nutraceutical's use of "Yummy Gummy." Hero's marks are weak and entitled only to a narrow scope of protection. Although the words "Yummy" and "yummi" are similar, the overall impression of the marks, including the packaging, labeling, designs, and house marks, are dissimilar. Consumers of children's vitamins at health food stores tend to be more careful and discriminating than the average shopper. Despite years of coexistence in the market, there was no showing of actual confusion, nor has Hero offered a survey to show actual confusion. Other than knowledge of the YUMMI BEARS mark, Hero has made no showing that Nutraceutical's use of "Yummy Gummy" was done in bad faith with an intent to trade off of Hero's good will. Although the products at issue are competitive and are generally sold in the same trade channel, these factors do not outweigh the other considerations leading to the ultimate conclusion that there is no likelihood of confusion.

In Spangler Candy Co. v. Tootsie Roll Indus., LLC, 372 F. Supp. 3d 588 (N.D. Ohio 2019), the defendant Tootsie Roll developed a new, red trade dress for its CHARMS MINI POPS lollipops product, shown immediately below on the right. This new trade dress was suspiciously similar to the red trade dress of the plaintiff Spangler's DUM DUMS, which had been gaining market share, shown immediately below on the left. The defendant Tootsie Roll's previous trade dress was yellow, shown below. The court found a likelihood of confusion and summarized its reasoning as follows:

The Dum Dums trade dress is not strong and there is no evidence of actual confusion. But the two companies used the same marketing channels to sell the same product. While the Charms Mini Pops trade dress is distinguishable when seen alone, Tootsie intends the product to be sold side-by-side on the shelf with Dum Dums, which would increase the likelihood of confusion due to the low degree of purchaser care. This intent along with other evidence also supports a conclusion that Tootsie acted with the intent to deceive. Therefore, considering all the factors, I find the evidence suggests the red Charms Mini Pops packaging is confusingly similar to the Dum Dums trade dress.

3. In Eli Lilly & Co. v. Nat. Answers, Inc., 86 F. Supp. 2d 834 (S.D. Ind.), aff'd, 233 F.3d 456 (7th Cir. 2000), the plaintiff produced an antidepressant under the registered mark PROZAC. The defendant produced an herbal drug under the name HERBROZAC that it claimed promoted "mood elevation." In finding a likelihood of confusion and granting the plaintiff's motion for a preliminary injunction, the district court summarized its multifactor analysis: Considering all the factors as set forth above, the court concludes that Lilly has shown an unusually strong case on the issue of likelihood of confusion. Most important here are the unusual strength of Lilly's PROZAC® mark, the strong similarity between PROZAC® and HERBROZAC, and defendant's intentional selection of the HERBROZAC name precisely because of its similarity to PROZAC® for the purpose of suggesting an association or affiliation between the products. Add to this mixture the fairly close "competitive proximity" of the two products, especially as pharmaceutical companies expand into the herbal and dietary supplement business, and Lilly has made a powerful showing of likelihood of success on its claim for trademark infringement.

Id. at 846. In finding no likelihood of confusion after a bench trial, the court summarized its multifactor analysis:

After considering and weighing each of the Polaroid factors, I conclude that Saturdays Surf NYC has not shown a likelihood of confusion by a preponderance of the credible evidence. I am particularly persuaded by the relative weakness of the word that the two marks share, the significant distance between the men's and women's products, and the consistent inclusion of the famous house mark, Kate Spade, in its Kate Spade Saturday mark.

Id. at 648 5. In the relatively straightforward case of Nikon, Inc. v. Ikon Corp., 987 F.2d 91 (2d Cir. 1993), the plaintiff was a world-famous producer of high-quality cameras under the mark NIKON. The defendant was a lesser known seller of low-cost cameras under the mark IKON. The court found confusion: "Applying the facts found by the court, each factor, with the exception of actual confusion, weighs heavily in favor of Nikon. And there was some evidence of actual confusion." Id. at 96. 6. In Alliance for Good Gov't v. Coalition for Better Gov't, 901 F.3d 498 (5th Cir. 2018), the plaintiff had been using the mark below on the left since the 1960s to promote political candidates in Louisiana. The defendant organization subsequently developed its own logo, below on the right, in the early 1980s or 1990s to promote political candidates in New Orleans. The district court found a likelihood of confusion and the Fifth Circuit affirmed.

Of special interest is the Fifth Circuit's analysis of the similarity of the marks, and in particular its reference to the defendant's attorney's ignoble attempt (basically a failed con) to distinguish the marks:

Finally, we observe that Coalition attempted to distinguish the two logosnot by appearance, design, color, or font-but by the birds' species: DISTRICT COURT: They look exactly alike to me, the two birds.

COUNSEL: [. . .] [N]o, they really aren't, your Honor, if you look at the wing span. The wing span of the eagle is different from the hawk. It's much larger and it fans out, and that's just the way the hawk looks.

COURT: I'll tell you, unless my eyes are deceiving me, . . . those two look exactly alike. They even look like the same feathers, same number of feathers, same arrangement, head is facing the same way, the same beak. I don't know if you call them-I don't know technically what kind of bird it is, but whatever they are, they look exactly alike to me. COUNSEL: Well, they're both birds of prey; one is an eagle and one is a hawk. COURT: Okay.

COUNSEL: And when we filed with the Secretary of State to get our font, we said it was a hawk. We were represented by a hawk, not an eagle.

We agree with the district court: the birds are identical. Whether that bird is a haliaeetus leucocephalus (bald eagle), a buteo jamaicensis (red-tailed hawk), or some other bird, we need not determine.

Id. at 511-12. The plaintiff was subsequently awarded attorney's fees in the dispute. See Alliance for Good Gov't v. Coalition for Better Gov't, 919 F.3d 291 (5th Cir. 2019). (For more on fee shifting in trademark disputes, see Part VI).

Survey Evidence and the Likelihood of Confusion

It is often said that survey evidence is routinely submitted in trademark litigation, particularly on the issue of consumer confusion. In a statement before Congress, the American Bar Association offered a typical expression of this view: "survey evidence is traditionally one of the most classic and most persuasive and most informative forms of trial evidence that trademark lawyers utilize in both prosecuting and defending against trademark claims of various sorts." Committee Print to Amend the Federal Trademark Dilution Act: Hearing Before the Subcomm. on Courts, the Internet, and Intellectual Property of the Comm. on the Judiciary, 108th Cong. 14 (2004) (statement of Robert W. Sacoff, Chair, Section of Intellectual Property Law, American Bar Association). In fact, empirical work suggests that survey evidence plays a surprisingly small role in deciding most trademark cases. See Barton Beebe, An Empirical Study of the Multifactor Tests for Trademark Infringement, 94 CALIF. L. REV. 1581, 1641-42 (2006). The author studied all federal court opinions applying a likelihood of confusion multifactor test over a five-year period from 2000 through 2004 and found that only 65 (20%) of the 331 opinions addressed survey evidence, 34 (10%) credited the survey evidence, and 24 (7%) ultimately ruled in favor of the outcome that the credited survey evidence itself favored. Eleven (24%) of the 46 bench trial opinions addressed survey evidence (with eight crediting it), while 24 (16%) of the 146 preliminary injunction opinions addressed survey evidence (with 12 crediting it). Id. See also Robert C. Bird & Joel H. Steckel, The Role of Consumer Surveys in Trademark Infringement: Empirical Evidence from the Federal Courts, 14 PENN. J. BUS. L. 1013 (2012) (finding that survey evidence is infrequently used in trademark litigation and suggesting that "the mere submission of a survey by a defendant appears to help its case, while a plaintiff-submitted survey can potentially hurt its case if the court deems it flawed"). But see Dan Sarel & Howard Marmorstein, The Effect of Consumer Surveys and Actual Confusion Evidence in Trademark Litigation: An Empirical Assessment, 99 TRADEMARK REP. 1416 (2009) (finding survey evidence presented in one-third of the opinions studied and that survey evidence had a substantial impact in cases involving dissimilar goods). Cf. Shari Seidman Diamond & David Franklyn, Trademark Surveys: An Undulating Path, 92 TEXAS L. REV. 2029 (2014) (concluding based on a survey of trademark practitioners that surveys can perform a significant role in settlement negotiations).

Nevertheless, in the small subset of trademark cases involving high-stakes litigation or one or more well-funded parties, survey evidence is customary, so much so that courts will sometimes draw an "adverse inference" against a party for failing to present it. See, e.g., Eagle Snacks, Inc. v. Nabisco Brands, Inc., 625 F. Supp. 571, 583 (D.N.J. 1985) ("Failure of a trademark owner to run a survey to support its claims of brand significance and/or likelihood of confusion, where it has the financial means of doing so, may give rise to the inference that the contents of the survey would be unfavorable, and may result in the court denying relief."); but see, e.g., Tools USA and Equipment Co. v. Champ Frame Straightening Equipment Inc., 87 F.3d 654, 661 (4th Cir. 1996) ("Actual confusion can be demonstrated by survey evidence, but contrary to [defendant's] suggestion, survey evidence is not necessarily the best evidence of actual confusion and surveys are not required to prove likelihood of confusion.").

When litigants do present survey evidence, courts' analysis of this evidence can be painstaking, especially when the litigants present dueling survey experts. In the following opinion, Smith v. Wal-Mart Stores, Inc., 537 F.Supp.2d 1302 (N.D. Ga. 2008), the declaratory plaintiff Charles Smith sought to criticize Wal-Mart's effect on American communities and workers by likening the retailer to the Nazi regime and, after Wal-Mart sent Smith two cease and desist letters, to Al Qaeda. Smith created and sold online through CafePress.com t-shirts and other merchandise incorporating the term "Walocaust" and various Nazi insignia (shown below) or the term "Wal-Qaeda" and various slogans and images (shown below). Wal-Mart produced survey evidence to support the proposition that American consumers would believe that Wal-Mart was selling the t-shirts or had otherwise authorized their sale, or that in any case, Smith's conduct tarnished Wal-Mart's trademark. Both parties moved for summary judgment. Excerpted below is Judge Timothy Batten, Sr.'s extraordinarily fine analysis of the surveys before him, which he conducted under the "actual confusion" factor of the multifactor test for the likelihood of consumer confusion. The analysis is lengthy and very detailed, but it addresses a variety of survey-related issues with which a serious student of trademark litigation should be familiar. (For another exemplary judicial analysis of survey evidence, see Snap Inc. v. Vidal, 750 F. Supp. 3d 1120 (C.D. Cal. 2024) (Magistrate Judge Steve Kim)).

A few additional preliminary comments. First, the surveys at issue in Smith v. Wal-Mart are modified forms of the "Eveready format" for likelihood of confusion surveys, based on the case Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366 (7th Cir. 1976), in which the Seventh Circuit credited two surveys as strong evidence of the likelihood of confusion. (Despite the spelling of "Ever-Ready" in the caption of the case, most commentators, including McCarthy, refer to the survey format as the "Eveready format.") Second, the excerpt below addresses, in addition to the likelihood of confusion issue, a cause of action for dilution by tarnishment of Wal-Mart's mark. We will address dilution more fully in Part II.C.

In reading through the excerpt, consider the following question:

• Do you find the Eveready format persuasive? How else might you design a likelihood of confusion survey?

• The "third set of questions" in the surveys, "aimed at testing for confusion as to authorization or sponsorship, asked whether the company that 'put out' the shirt needed permission from another company to do so, and if so, which company." Is this an appropriate survey question to ask consumers?

[1] Proof of actual confusion is considered the best evidence of likelihood of confusion. Roto-Rooter Corp. v. O'Neal, 513 F.2d 44, 45-46 (5th Cir. 1975). A claimant may present anecdotal evidence of marketplace confusion, and surveys, when appropriately and accurately conducted and reported, are also widely and routinely accepted as probative of actual confusion. See, e.g., AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1544 (11th Cir. 1986) (considering the proffered survey but giving it little weight); SunAmerica Corp. v. Sun Life Assurance Co. of Canada, 890 F.Supp. 1559, 1576 (N.D.Ga. 1994) (viewing the proffered survey as confirmation of consistent anecdotal evidence).

[2] Wal-Mart concedes that it has no marketplace evidence of actual consumer confusion. Instead, it presents two consumer research studies conducted by Dr. Jacob Jacoby that purport to prove that consumer confusion and damage to Wal-Mart's reputation are likely.

[9] The first three sets of questions were designed to test for consumer confusion. The interviewers were directed to ask each of the "likelihood of confusion" questions sequentially unless the respondent answered "Sears," "Wal-Mart," "Youngblood's" or "K-Mart," in which case the interviewer was to record the answer, skip the remaining confusion questions, and go directly to the tarnishment questions.

[10] In the consumer confusion series, the first set of questions tested for confusion as to source. The interviewer would ask "which company or store" the respondent thought "put out" the shirt, and if the respondent named a company or store, the interviewer then asked what about the shirt made the respondent think the shirt was "put out" by that company or store. The second set of questions, which dealt with confusion as to connection or relationship, asked the respondent whether the company or store that "put out" the shirt had some "business connection or relationship with another company" and if so, with what company. The respondent was then asked why he or she believed the companies had a business connection or relationship. A third set of questions, aimed at testing for confusion as to authorization or sponsorship, asked whether the company that "put out" the shirt needed permission from another company to do so, and if so, which company. [11] Finally, if the respondent had not yet answered "Sears," "Wal-Mart," "Youngblood's" or "K-Mart" to any of the first three sets of questions, he or she was then asked what the shirt made him or her "think of" and then "which company or store" the shirt brought to mind. [12] The fifth set of questions, which tested for dilution by tarnishment, were asked in reference to any company or store the respondent mentioned in his or her answers to the first four sets of questions. The first question asked whether seeing the shirt made the respondent more or less likely to shop at the store he or she had named, and the second question asked whether the perceived association with the store made the respondent more or less likely to buy the shirt.

[13] The interviews for the website study were much like those for the product study, except that instead of being shown the actual shirts, the respondents were exposed to a simulation of Smith's Walocaust CafePress homepage, his Wal-Qaeda CafePress homepage or the associated control homepage. 20 In each of the simulations, all of the hyperlinks were removed from the homepages except for the one hyperlink associated with the t-shirt that Jacoby had decided to test.

[14] Jacoby directed the interviewers to begin each website interview by providing a URL to the respondent and asking the respondent to imagine that the URL was a search term the respondent had heard or seen somewhere and wanted to look up on the Internet. The interviewer would then have the respondent sit at a computer and type the URL into the browser. The URL would take the respondent to the simulated home page for testing.

[15] The interviewer would then direct the respondent to look at the screen and scroll down the page "as [he or she] normally would" and click through to the first t-shirt on the screen. The respondent was then directed to click on the "view larger" box and look at the shirt as though he or she "found it interesting and [was] considering whether or not to order it . . . ." The interviewer would then ask the respondent exactly the same series of questions posed in the product study, including the same skip pattern to be applied in the event that the respondent mentioned Sears, Wal-Mart, Youngblood's or K-Mart in response to any of the consumer confusion questions.

[16] In order to be tallied as "confused," the respondent had to meet two tests. First, the respondent had to indicate either that the shirt came from Wal-Mart (first confusion series), came from a company that had some business connection or relationship with Wal-Mart (second confusion series), or came from a source that required or obtained permission from Wal-Mart (third confusion series). Second, the respondent had to indicate that his or her reason for that understanding was either because of the prefix "Wal," the name (or equivalent), the smiley face, or the star after the prefix "Wal." Thus, a respondent who believed that there was a connection between Wal-Mart and the t-shirt that he or she was shown but who did not mention the prefix "Wal," the name (or equivalent), the smiley face, or the star, would not be counted as "confused."

[17] Any respondent who perceived an association between Wal-Mart and the t-shirt that he or she was shown and reported that the perceived association either made the respondent less likely to shop at Wal-Mart or more likely to buy that t-shirt was deemed to satisfy the requirement for dilution.

[18] The field interviewers returned 322 completed interviews for the product study and 335 for the website study. Three responses were eliminated from the sample after the research company conducted a review to ensure that each respondent was qualified to participate in the study and that the questionnaires had been completed properly. The research company then sent the name and phone number of each of the interview respondents to an independent telephone interviewing service for validation, which consisted of calling each mall-intercept respondent to ensure that the respondent had actually participated in the study and that his or her answers were accurately recorded. [19] In the product study, 181 respondents (fifty-six percent of the usable sample) were positively validated, and sixteen respondents (about five percent) reported either different answers to the survey questions or claimed not to have participated in the study. The remainder either could not be reached during the twenty days Jacoby allocated for the validation or refused to respond to the validation survey.

[20] Jacoby reported the results of those respondents who were positively validated plus the results from the respondents who could not be reached or would not respond to the validation survey, and he eliminated the results of the respondents who provided nonaffirming answers during the validation process. This resulted in 305 reported responses to the product study: seventy-three for the Wal*ocaust concept, seventy-six for the Wal-Qaeda concept, seventy-nine for the Zal-ocaust concept, and seventy-seven for the Zal-Qaeda concept.

[21] In the website study, 169 respondents (fifty-one percent of the usable sample) were positively validated, and forty-six respondents (about fourteen percent) reported either different answers to the survey questions or claimed not to have participated in the study. The remainder either could not be reached during the twenty days Jacoby allocated for the validation or refused to respond to the validation survey. [22] As he did in the product study, Jacoby reported the results of those respondents who were positively validated plus the results from the respondents who could not be reached or would not respond to the validation survey, and he eliminated the results of the respondents who provided non-affirming answers during the validation process. This resulted in 287 reported responses to the {website} study: seventy for the Wal*ocaust concept, seventy-eight for the Wal-Qaeda concept, sixty-nine for the Zal-ocaust concept, and seventy for the Zal-Qaeda concept.

[23] Jacoby reported that the survey reflected high levels of consumer confusion and dilution by tarnishment. He claimed that the post-purchase confusion "product study" indicated a likelihood of confusion in nearly forty-eight percent of the respondents and that the point-of-sale confusion "website" study indicated a likelihood of confusion in almost forty-one percent of the respondents. 21 Jacoby also claimed that the "dilution" study indicated that almost twelve percent of the respondents were less likely to shop at Wal-Mart after seeing Smith's designs.

[24] Smith moves to exclude Wal-Mart's expert report. He claims that Jacoby did not have the requisite Internet expertise to conduct the web-based "point-of-sale" portion of this particular study and that several aspects of Jacoby's methodology affecting both portions of the study were faulty; thus, he contends, Jacoby's study is "too deeply flawed to be considered . . . ."

[25] Wal-Mart argues that the Jacoby test was performed by a competent expert according to industry standards and therefore is valid. Wal-Mart further contends that the expert witnesses Smith presents in rebuttal are not experts in the area of consumer-goods "likelihood of confusion" trademark studies, and therefore their testimony is irrelevant and should be excluded.

[26] Whether a given survey constitutes acceptable evidence depends on the survey's ability to satisfy the demands of Federal Rule of Evidence 703, which requires consideration of the "validity of the techniques employed." 233-34 FED. JUD. CTR., REFERENCE MANUAL ON SCI. EVIDENCE (2d ed. 2002) (explaining that in the context of surveys for litigation purposes, "[t]he inquiry under Rule 703[, which] focuses on whether facts or data are 'of a type reasonably relied upon by experts in the particular field in forming opinions or inferences upon the subject' . . . becomes, 'Was the . . . survey conducted in accordance with generally accepted survey principles, and were the results used in a statistically correct way?'"). See also BFI Waste Sys. of N. Am. v. Dekalb County, 303 F.Supp.2d 1335,1346 (N.D.Ga. 2004) (noting that the opposing party could have challenged an expert witness's reference to a recent survey by questioning whether the survey methodology satisfied Rule 703).

[27] The Eleventh Circuit has held that alleged technical deficiencies in a survey presented in a Lanham Act action affect the weight to be accorded to the survey and not its admissibility. Jellibeans, Inc. v. Skating Clubs of Ga., Inc., 716 F.2d 833, 844 (11th Cir. 1983). Other courts have held that a significantly flawed survey may be excludable as evidence under either Rule 403 (the rule barring evidence that is more prejudicial than probative) or Rule 702 (the rule barring unreliable expert testimony). Citizens Fin. Group, Inc. v. Citizens Nat'l Bank, 383 F.3d 110, 188-21 (3d Cir. 2004) (finding that the district court properly excluded survey evidence under Rules 702 and 403 where the survey contained flaws that were not merely technical, but were so damaging to the reliability of the results as to be "fatal": the survey relied on an improper universe and its questions were imprecise); Malletier v. Dooney & Bourke, Inc., 525 F.Supp.2d 558, 562-63 (S.D.N.Y. 2007). Even when a party presents an admissible survey purporting to show consumer confusion, however, the survey "does not itself create a triable issue of fact." Mattel, Inc. v. MCA Records, Inc., 28 F.Supp.2d 1120, 1133 (C.D. Cal. 1998) (citing Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112, 118 (2d Cir. 1984), which found a survey "so badly flawed that it cannot be used to demonstrate the existence of a question of fact of the likelihood of consumer confusion"). . . .

[28] To ground a survey as trustworthy, its proponent must establish foundation evidence showing that (1) the 'universe' was properly defined, (2) a representative sample of that universe was selected, (3) the questions to be asked of interviewees were framed in a clear, precise and non-leading manner, (4) sound interview procedures were followed by competent interviewers who had no knowledge of the litigation or the purpose for which the survey was conducted, (5) the data gathered was accurately reported, (6) the data was analyzed in accordance with accepted statistical principles and ( 7) objectivity of the entire process was assured. Failure to satisfy any of the listed criteria may seriously compromise the survey's impact on a court's likelihood of confusion evaluation. Id.

[29] Smith cites several grounds for excluding the Jacoby survey. He argues that the survey is inadmissible because it (1) failed to identify the relevant consumer universe or used a consumer universe that was substantially overbroad; (2) failed to replicate shopping conditions as consumers would encounter them in the marketplace; (3) was improperly leading; (4) violated the survey structure protocol necessary to comply with double-blind standards; and (5) failed to establish a relevant factual basis for Wal-Mart's dilution by tarnishment claims. Smith further argues that even if the Court admits the survey, its consideration should be limited to only the two tested designs, despite Jacoby's claim that they are representative of all the designs Wal-Mart seeks to enjoin.

[30] As an initial matter, the Court observes that Smith does not take issue with Jacoby's qualifications to design and conduct a consumer confusion survey and to analyze its results. It is undisputed that Jacoby is a nationally renowned trademark survey expert who has testified hundreds of times. Smith contends, however, that Jacoby was unqualified to conduct this particular survey because he "lacks knowledge, experience, [and] sophistication" with regard to products marketed exclusively over the Internet and that as a result Jacoby's survey protocol contained significant flaws.

[31] Based upon its own review of Jacoby's education and experience, the Court concludes that Jacoby is qualified to design and conduct a consumer survey and to testify about its results. To the extent that Jacoby's purported lack of experience with surveys concerning goods sold exclusively online may have led him to test the wrong universe or to fail to replicate the shopping experience, as Smith has alleged, these factors will be examined when the Court evaluates the trustworthiness of the survey.

[32] In undertaking to demonstrate likelihood of confusion in a trademark infringement case by use of survey evidence, the "appropriate universe should include a fair sampling of those purchasers most likely to partake of the alleged infringer's goods or services." Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 264 (5th Cir. 1980). Selection of the proper universe is one of the most important factors in assessing the validity of a survey and the weight that it should receive because "the persons interviewed must adequately represent the opinions which are relevant to the litigation." Id. . . . . [34] Smith hired Dr. Alan Jay Rosenblatt as a rebuttal witness to point out Internetrelated deficiencies in Jacoby's survey methodology-particularly deficiencies in universe selection and replication of marketplace conditions-that he claims resulted from Jacoby's erroneous assumptions about how people reach and interact with websites. . . . .

[35] . . . . Wal-Mart maintains that Jacoby's universe selection was proper. Smith counters that it was overly broad.

[36] Although the universe Jacoby selected would include purchasers of Smith's Walocaust or Wal-Qaeda merchandise, the Court finds that it is significantly overbroad. Because Smith's merchandise was available only through his CafePress webstores and the links to his CafePress webstores from his Walocaust and Wal-Qaeda websites, it is likely that only a small percentage of the consumers in the universe selected by Jacoby would be potential purchasers of Smith's products. A survey respondent who purchases bumper stickers, t-shirts or coffee mugs with words, symbols or designs on them may buy such merchandise because the imprint represents his or her school, company, favorite sports team, cartoon character, social group, or any of hundreds of other interests or affiliations; he or she may have no interest at all in purchasing merchandise containing messages about Wal-Mart, pro or con. The respondent may buy from brick-and-mortar stores or well-known retailers with Internet storefronts without being aware of Smith's website or CafePress, or may have little interest in buying such merchandise over the Internet at all. Therefore, a respondent who clearly falls within Jacoby's survey universe may nevertheless have no potential to purchase Smith's imprinted products. See Leelanau Wine Cellars, 452 F.Supp.2d at 782.

[37] Other courts have similarly criticized surveys-including surveys Jacoby conducted in other trademark infringement cases-that failed to properly screen the universe to ensure that it was limited to respondents who were potential purchasers of the alleged infringer's product.

[38] For example, in Weight Watchers Int'l, Inc. v. Stouffer Corp., 744 F.Supp. 1259 (S.D.N.Y. 1990), Weight Watchers sued Stouffer for trademark infringement after Stouffer launched an advertising campaign that suggested that new exchange listings on Stouffer's Lean Cuisine packages would allow adherents to the Weight Watchers program to use Lean Cuisine entrees in their diets. Id. at 1262. Stouffer's likelihood of confusion survey, also conducted by Jacoby, identified the universe as "women between the ages of 18 and 55 who have purchased frozen food entrees in the past six months and who have tried to lose weight through diet and/or exercise in the past year." Id. at 1272. The court found that the universe was overbroad because the screener had not limited it to dieters, but also had included respondents who may have tried to lose weight by exercise only. The court concluded that as a result the survey likely included respondents who were not potential consumers, and because "[r]espondents who are not potential consumers may well be less likely to be aware of and to make relevant distinctions when reading ads than those who are potential consumers," that portion of the survey universe may have failed to make "crucial" distinctions in the likelihood of confusion testing. Id. at 1273. . . . .

[39] To be valid for the purposes of demonstrating actual confusion in a trademark infringement suit, it is necessary for a survey's protocol to take into account marketplace conditions and typical consumer behavior so that the survey may as accurately as possible measure the relevant "thought processes of consumers encountering the disputed mark . . . as they would in the marketplace." Simon Prop. Group, 104 F.Supp.2d at 1038; accord WE Media, Inc. v. Gen. Elec. Co., 218 F.Supp.2d 463, 474 (S.D.N.Y. 2002).

[40] Smith contends that Jacoby's point-of-purchase study, which purported to measure consumer confusion over merchandise that Smith sold exclusively online, was improperly designed because it failed to take into account typical consumer Internet behavior. Wal-Mart does not contradict the expert testimony Smith proffers regarding consumer Internet behavior but instead maintains that it is irrelevant.

[41] Jacoby's point-of-purchase survey called for interviewers to provide each respondent with specific "search terms" that would take the respondent to a simulation of one of Smith's websites. The respondent was asked to pretend that the resulting web page was of interest and to act accordingly (looking at the page and scrolling through it as the respondent would "normally" do), and then was directed to scroll down the page, below the first screen, and click on a specific t-shirt link. The respondent was not asked what message he or she took from the website or whether the website was in fact of interest. The survey protocol also gave the respondent no choice but to scroll down to the next screen and click on the t-shirt link, the only live link in the simulation.

[42] In presenting Smith's website and directing the survey respondents to click on one specific t-shirt link, Jacoby's survey design presumed that all consumers who might be interested in a printed t-shirt, mug or bumper sticker would be equally likely to happen across Smith's designs, regardless of the respondent's level of interest in the messages on Smith's webpage.

[43] Although, as Wal-Mart points out, it is possible that some consumers may view web pages randomly and may scroll through and clink on links on pages that are not of interest to them, the Court finds that the survey protocol did not sufficiently reflect actual marketplace conditions or typical consumer shopping behavior and therefore was unlikely to have elicited a shopping mindset that would have allowed Jacoby to accurately gauge actual consumer confusion.

[44] Because Smith's merchandise was available only through his CafePress webstores and the links to his CafePress webstores from his Walocaust and Wal-Qaeda websites, it is unlikely that many consumers randomly happen across Smith's products. According to Rosenblatt's uncontroverted testimony, people do not come to websites randomly, and they do not move within websites randomly. A great majority of Internet users arrive at a particular website after searching specific terms via an Internet search engine or by following links from another website. The user makes a judgment based on contextual cues-what is shown about a prospective website from the text of a search result or what is said about a prospective website in the hyperlinked words and surrounding text of the website currently being viewed-in determining where to surf next. He moves from website to website, he moves within websites, and he performs actions such as signing a petition-or buying a product-by making choices based on what he sees and whether what he sees leads him to believe that going to the next page or following a link to another website will bring him to something he is interested in seeing, doing or buying.

[45] In the marketplace, the visitor would be presented with a screen full of Smith's anti-Wal-Mart messages. Consumers who were interested in the messages on Smith's web pages would be motivated to choose the links that would eventually lead to his products, while those who were uninterested in Smith's messages would simply leave the page. Because the survey protocol directed the respondents to "pretend" to be interested in Smith's anti-Wal-Mart homepages and then directed them to click on a specific link, there is no assurance that the respondent actually read the homepage or would have been interested enough in it to be motivated to click on the t-shirt link. See Gen. Motors Corp. v. Cadillac Marine & Boat Co., 226 F.Supp. 716, 737 (D.C.Mich. 1964) (observing that because survey respondents had little interest the allegedly infringing product, it followed that their inspection of the advertisement shown to them as part of the survey protocol was "casual, cursory and careless" and therefore of little probative value).

[46] Other courts have similarly criticized surveys that failed to adequately replicate the shopping experience. In Gen. Motors Corp., 226 F.Supp. at 737, the court criticized the proffered survey because it did not take into account typical consumer behavior: Actual purchasers of a boat would not hastily read an advertisement, nor would a potential purchaser read it carelessly. A reasonable man, anticipating the purchase of a boat, would peruse the material at least well enough to note the manufacturer as being "Cadillac Marine & Boat Company, 406 Seventh Street, Cadillac, Michigan." Also, most buyers would want to see the boat itself before making a purchase.

Although the purchase of a t-shirt obviously does not involve the same level of financial consideration a consumer typically makes when buying a boat, a consumer is likely to consider the meaning of an imprinted t-shirt such as Smith's before wearing it in public. A reasonable person who was considering buying a t-shirt that references Al-Qaeda or the Holocaust would likely read the associated webpage at least well enough to see the harsh criticism of Wal-Mart and the prominent disclaimer dispelling any notion of a possible association with the company.

(c) Impact of Internet-Related Flaws on Survey's Evidentiary Value

[47] For all of these reasons, the survey Jacoby conducted for Wal-Mart is of dubious value as proof of consumer confusion both because its survey universe was overinclusive and because its design failed to approximate real-world marketplace conditions. Jacoby's survey is subject to the same criticisms as his Weight Watchers survey . . . : Jacoby failed to screen the respondents to ensure that they would likely be aware of and make relevant distinctions concerning the specific product. See Weight Watchers, 744 F.Supp. at 1273. By failing to approximate actual market conditions, Jacoby further ensured that the survey would not "replicate the thought processes of [likely] consumers [of the junior user's merchandise] encountering the disputed mark . . . as they would in the marketplace." See Simon Prop. Group, 104 F.Supp.2d at 1038; accord Gen. Motors Corp., 226 F.Supp. at 737. Therefore, the Court must consider these flaws in determining whether the survey is admissible and, if so, what evidentiary weight to afford it.

[48] Smith further alleges that the Jacoby study suffers from several structural flaws that diminish the trustworthiness of the results of both the web-based point-of-sale portion and the post-purchase t-shirt portion of the survey. He contends that (1) both the structure of the survey and the wording of several questions suggested the answers Wal-Mart wanted, and (2) the survey results should not be presumed to represent consumer reaction to any of the challenged merchandise that was not actually tested.

[49] Smith hired Dr. Richard Teach as a rebuttal witness to point out deficiencies in Jacoby's website study survey methodology. Teach is an emeritus marketing professor and former dean at the Georgia Tech School of Business who has designed and conducted over one hundred surveys, including about fifty buyer surveys, and has taught survey methodology, statistics and related courses. Teach testifies that he agrees with Rosenblatt's testimony and also offers criticisms of his own. Smith uses Teach's survey expertise to support his Daubert argument that because the survey protocol contains multiple technical flaws, the results are unreliable and hence should be afforded very light evidentiary value if not completely excluded from evidence.

[50] Wal-Mart moves to exclude Teach's testimony, supporting its motion with arguments much like those it used in its motion to exclude Rosenblatt's testimony . . . .

[51] The Court finds . . . that his extensive experience designing and evaluating surveys qualifies him to provide testimony about technical flaws in the design of Jacoby's study and the impact of those flaws on the trustworthiness of Jacoby's reported results.

[52] [T]o the extent that Teach's testimony focuses on general survey methodology, whether Jacoby's survey protocol deviated from standard methodology, and what impact any deviations may have had on the trustworthiness of Jacoby's reported results, Wal-Mart's motion to exclude it is DENIED.

(a) Leading Survey Structure and Questions

[53] Smith argues that both the structure of the survey and the wording of several questions suggested the answers Wal-Mart wanted. Wal-Mart, of course, contends that Jacoby's survey presented no such risk.

[54] To ensure objectivity in the administration of the survey, it is standard practice to conduct survey interviews in such a way as to ensure that "both the interviewer and the respondent are blind to the sponsor of the survey and its purpose." REFERENCE MANUAL at 266. The parties agree that double-blind conditions are essential because if the respondents know what the interviewer wants, they may try to please the interviewer by giving the desired answer, and if the interviewer knows what his employer wants, he may consciously or unconsciously bias the survey through variations in the wording or the tone of his questions. See id.

[55] Smith argues that the skip pattern included in Jacoby's survey hinted to the interviewers that Wal-Mart was the survey's sponsor. The survey protocol directed the interviewers to skip to the final tarnishment question, question five, if the respondent gave any one of four specific store names-Sears, Wal-Mart, K-Mart or Youngblood's-to any of the first three questions. Similarly, if the respondent did not give any of those four names in response to the first three questions, the interviewer was directed to ask "what other companies or stores" the stimulus t-shirt brought to mind, and only if the respondent answered with one of the four names was the interviewer to ask question five, the dilution question. The text on both of the tested t-shirts began with the prefix "Wal," and Wal-Mart was the only one of the four listed names that began with that prefix.

[56] Smith argues that this series of questions combined with the t-shirt stimulus subtly informed the interviewers not only that a store name was desired, but also that a particular store name-Wal-Mart-was sought. Thus, Smith contends, because the survey failed to meet the double-blind requirement, it was not conducted in an objective manner and must be excluded for what must therefore be biased results. See REFERENCE MANUAL at 248 (noting that poorly formed questions may lead to distorted responses and increased error and therefore may be the basis for rejecting a survey).

[57] Wal-Mart argues that the skip patterns followed proper protocol and that even if the interviewers guessed that Wal-Mart was involved, there could be no risk of bias because (1) interviewers are professionally trained and adhere to extremely high ethical standards, and (2) it was impossible to determine from the design of the study who sponsored the study and for which side of a dispute the survey evidence was to be proffered.

[58] Based on the facts that (1) both of the tested t-shirts include the prefix "Wal" and (2) the only store on the specified list of four that included that same prefix was Wal-Mart, it is safe to surmise that the interviewers at least suspected that Wal-Mart was involved in the survey in some manner. Aside from a common sense assumption that the party with deep pockets and reason to be insulted by the tested concepts was likely to have sponsored the research, however, the interviewers had no way to know who was the proponent of the research and who was the opponent. Thus, although the survey design may have breached generally accepted double-blind protocol to some degree, because the breach offered little risk of bias toward one party or the other the Court finds this issue to be of little import in its trustworthiness determination.

[59] Smith also argues that the wording of Jacoby's confusion questions was improperly leading. Although the challenged t-shirts were created and offered for sale by Charles Smith, an individual, via his CafePress webstore, the survey asked about sponsorship only in the context of companies or stores, such as in the survey's lead question, which asked, "[W]hich company or store do you think puts out this shirt?" Smith contends that this wording suggested to the respondent that the interviewer was looking for the name of a company or store, which would lead the respondent away from the answer that the shirt was put out by an individual who was criticizing a company. Wal-Mart counters that because Smith's merchandise was sold through his CafePress webstores, the questions were accurately worded and thus not misleading.

[60] The Court agrees with Smith that the disputed questions improperly led respondents to limit their answers to companies or stores. Though Smith did offer his merchandise through his CafePress webstore, as Wal-Mart argues, the Court finds this characterization disingenuous; the party Wal-Mart sued for offering the Walocaust and Wal-Qaeda merchandise for sale is not a company or a store, but instead Charles Smith, an individual. Furthermore, Wal-Mart has failed to point to any authority supporting the use of the "company or store" language in a consumer "likelihood of confusion" apparel survey or any such surveys previously conducted by Jacoby. Thus, the Court must consider this weakness in determining the admissibility or evidentiary weight to be accorded the survey.

(b) Representativeness (i) Testing Stimuli

[61] Smith also argues that the Jacoby survey results should not be presumed to represent consumer reaction to any of the challenged merchandise that was not actually tested. Jacoby limited his surveys to testing two specific t-shirts (the Wal*ocaust smiley eagle shirt and the "SUPPORT OUR TROOPS" Wal-Qaeda shirt), and the conclusions stated in his report were narrowly drawn to refer to the tested t-shirts. At his deposition, however, he stated that because the tested shirts were "reasonably representative" of all the shirts that included the prefix "Wal" and the star, as in Wal*ocaust, or the prefix "Wal" and a hyphen, as in Wal-Qaeda, his results could be extrapolated from the tested t-shirts to all of the challenged t-shirts that shared those features.

[62] Jacoby's own deposition testimony supplies a fitting framework for analyzing this issue. When declining to offer an opinion about whether consumers would also be confused over the sponsorship of Smith's Walocaust website, Jacoby stated that consumers respond differently to a given stimulus depending on the context in which is it presented, and because his survey tested only Smith's CafePress webstores, his survey provided him with no data upon which to answer the question about consumer confusion regarding Smith's website.

[63] Applying the same reasoning, the Court finds that test results from one Walocaust or Wal-Qaeda t-shirt provide no data upon which to estimate consumer confusion regarding another Walocaust or Wal-Qaeda t-shirt. A consumer confused about the sponsorship of a shirt that says "SUPPORT OUR TROOPS [.] BOYCOTT WAL-QAEDA" may easily grasp the commentary in the more straightforwardly derogatory "WAL-QAEDA[.] Freedom Haters ALWAYS" concept. Similarly, a consumer confused over the sponsorship of a "Walocaust" shirt paired with an eagle and a smiley face might have a crystal clear understanding of the word's meaning when it is superimposed over a drawing of a Wal-Mart-like building paired with a sign that advertises family values and discounted alcohol, firearms, and tobacco or when it is presented along with the additional text "The World is Our Labor Camp. Walmart Sucks." As a result, this weakness will also impact the Court's assessment of the survey's evidentiary value.

[64] Smith also challenges the survey's small sample size; the Court additionally notes that Jacoby's study employed mall-intercept methodology, which necessarily results in a nonrandom survey sample.

[65] It is true that the majority of surveys presented for litigation purposes do, in fact, include small and non-random samples that are not projectible to the general population or susceptible to evaluations of statistical significance. 6 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 32:165 (4th ed. 2006). Courts have found that "nonprobability 'mall intercept' surveys are sufficiently reliable to be admitted into evidence," reasoning that because "nonprobability surveys are of a type often relied upon by marketing experts and social scientists in forming opinions on customer attitudes and perceptions," they may be admitted into evidence under Federal Rule of Evidence 703 as being "of a type reasonably relied upon by experts in the particular field in forming opinions or inferences upon the subject." Id.

[66] However, probability surveys are preferred to non-probability surveys. Id. ( Inc. 1973) and quoting its comment that "nonprobability samples do not represent the population truly, and the inapplicability of probability models as well as the impossibility of measuring or controlling random sampling error makes them even less attractive for scientific studies."). Jacoby has similarly noted that although the vast majority of in-person surveys conducted for marketing purposes employ non-probability design, marketers more typically use telephone interviews, a "sizable proportion" of which employ probability designs. Jacoby & Handlin, 81 TRADEMARK REP. at 172 & Table 1 (estimating that sixty-nine percent of commercial marketing and advertising research is conducted by telephone).

[67] Although courts typically admit nonprobability surveys into evidence, many recognize that "the results of a nonprobability survey cannot be statistically extrapolated to the entire universe," and they consequently discount the evidentiary weight accorded to them. Id.; accord Am. Home Prods. Corp. v. Barr Labs., Inc., 656 F.Supp. 1058, 1070 (D.N.J. 1987) (criticizing a Jacoby survey and noting, "While non-probability survey results may be admissible, they are weak evidence of behavior patterns in the test universe.") Similarly, "[c]onducting a survey with a number of respondents too small to justify a reasonable extrapolation to the target group at large will lessen the weight of the survey." 6 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 32:171.

[68] This Court finds troubling the Jacoby survey's implicit assumption that a study protocol insufficient for many marketing purposes and heavily criticized for behavioral science purposes is nevertheless sufficient to aid a factfinder in a legal action challenging free speech. Therefore, this factor will also affect the Court's assessment of the survey's evidentiary value.

[69] Having identified numerous substantial flaws in Jacoby's survey, the Court must now determine whether the flaws limit the survey's evidentiary weight or are so substantial as to render the survey irrelevant or unreliable and therefore inadmissible under Federal [70] Courts in the Eleventh Circuit typically decline to exclude likelihood of confusion surveys and instead consider a survey's technical flaws when determining the amount of evidentiary weight to accord the survey. See, e.g., Jellibeans, 716 F.2d at 845; Nightlight Sys., Inc. v. Nitelites Franchise Sys., Inc., 2007 WL 4563873 at *5 (N.D.Ga. Jul.17, 2007). Consequently, although this is a close case, the Court concludes that the better option is to admit the survey evidence and to consider the survey's flaws in determining the evidentiary weight to assign the survey in the likelihood of confusion analysis.

[71] The Court finds, however, that because the survey tested only the "SUPPORT OUR TROOPS[.] BOYCOTT WAL-QAEDA" t-shirt and the Walocaust eagle t-shirt, it has no relevance to any of Smith's other Wal-Mart-related concepts. The Court agrees with Jacoby that context matters-a lot-and therefore will not consider Jacoby's survey as evidence of likelihood of confusion with regard to the words "Walocaust" and "Wal-Qaeda" in general; the study is admissible only as to the two concepts that Jacoby actually tested. See Fed.R.Evid. 702 (limiting expert testimony to that "based upon sufficient facts or data").

[72] Even with regard to the tested concepts, the Court finds that the survey was so flawed that it does not create a genuine issue of material fact. See Spraying Sys. Co. v. Delavan, Inc., 975 F.2d 387, 394 (7th Cir. 1992) (recognizing that if a proffered survey is severely and materially flawed, it may not be sufficient to establish a genuine issue of material fact even if it purports to show evidence of actual confusion). Jacoby surveyed an overbroad universe, failed to adequately replicate the shopping experience, and asked leading questions. He also surveyed a non-random sample that in any case was too small to allow the results to be projected upon the general market. Thus, the Court finds that the Jacoby survey is so flawed that it does not establish a genuine issue of material fact with regard to actual confusion, much less prove actual confusion.

[73] Lack of survey evidence showing consumer confusion is not dispositive, however; the Eleventh Circuit has moved away from relying on survey evidence. Frehling Enters. v. Int'l Select Group, Inc., 192 F.3d 1330, 1341 n. 5 (11th Cir. 1999). In fact, a court may find a likelihood of confusion in the absence of any evidence of actual confusion, even though actual confusion is the best evidence of likelihood of confusion. E. Remy Martin & Co. v. Shaw-Ross Int'l Imps., Inc., 756 F.2d 1525, 1529 (11th Cir. 1985). Accordingly, the Court will now consider the remaining likelihood of confusion factors.

{The court ultimately granted summary judgment to Smith on Walmart's confusion and dilution claims.}

1. The authorization or permission question. You will recall that the third group of questions in the surveys at issue in Smith v. Wal-Mart asked respondents if they thought the company that "put out" the defendant's products needed permission from another company to do so, and if so, which company. Isn't this the very question that the judge is trying to decide in the case? Why should we ask survey respondents for their view on what is in essence a legal question? 2. Confusion by whom? What is the appropriate consumer population to survey, the defendant's and/or the plaintiff's? McCarthy sets forth the conventional wisdom: "In a traditional case claiming 'forward' confusion, not 'reverse' confusion, the proper universe to survey is composed of the potential buyers of the junior user's goods or services. However, in a 'reverse confusion' case, the relevant group to be surveyed is the senior user's customer base." MCCARTHY, at § 32:159 (citations omitted).

3. Alternative survey formats. Two other methods of surveying for the likelihood of consumer confusion are of particular interest. "What is the first thing that comes to mind when looking at this sign?," and "What was there about the sign that made you say that?" If the respondents did not name a company in response to the first set of questions, they were then asked: "What is the first company that comes to mind when you look at this sign?" (emphasis in original survey script) and "What was there about the sign that made you mention (COMPANY)?" Courts have proven to be less receptive to this "word association" method of surveying for consumer confusion. 2017) (proposing and testing a "survey interpretation method" of contractual interpretation in which "interpretation disputes are resolved through large surveys of representative respondents, by choosing the meaning that a majority supports").

As the surveys at issue in Smith v. Wal-Mart Stores suggested, trademark law may find infringement when the defendant's conduct leads consumers mistakenly to believe that there is a relation of "sponsorship" or "affiliation" between the plaintiff and the defendant. In this excerpt from Int'l Info. Sys {The plaintiff developed a certification program and the certification mark CISSP to denote a "Certified Information Systems Security Professional" who has passed the plaintiff's certification exam. The defendant offered various courses to prepare individuals for the plaintiff's exam. It was undisputed that the defendant could use the plaintiff's mark to indicate that the courses were directed towards preparing students to take the plaintiff's exam. However, the defendant advertised its courses as taught by "Master CISSP Clement Dupuis", allegedly suggesting that Mr. Dupuis had obtained some higher, "Master" level of certification from the plaintiff. Both parties moved for summary judgment.} . . . .

A. Types of Confusion Relevant to Infringement Claims

[1] The district court held that the only type of confusion relevant in determining infringement is confusion as to source. This is incorrect; protection is not exclusively limited for any type of mark to cases in which there may be confusion as to source. Rather, "[t]he modern test of infringement is whether the defendant's use [is] ("Appellants read the confusion requirement too narrowly. In order to be confused, a consumer need not believe that the owner of the mark actually produced the item and placed it on the market. The public's belief that the mark's owner sponsored or otherwise approved the use of the trademark satisfies the confusion requirement." (citations omitted)); see also Team Tires Plus, Ltd. v. Tires Plus, Inc., 394 F.3d 831, 835 (10th Cir. 2005) ("[T]he relevant confusion under trademark law is not limited to confusion of consumers as to the source of the goods, but also includes confusion as to sponsorship or affiliation, such as a consumer's mistaken belief that a retailer is part of a larger franchising operation.") . . . . [2] This broader prohibition on consumer confusion as to sponsorship or approval is also made explicit in Section 43 of the Lanham Act, which prohibits false advertising and false designation of origin by providing for civil penalties to a person injured by: Any person who, on or in connection with any goods or services, . . . 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, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities . . . . 15 U.S.C. § 1125(a)(1) (emphases added).

[3] Indeed, our case law demonstrates that consumer confusion is plainly not limited to source confusion. For example, in Weight Watchers International, Inc. v. Luigino's, Inc., 423 F.3d 137 (2d Cir. 2005), we recognized that Weight Watchers was likely to succeed on its claim that a frozen food manufacturer had infringed its registered trademark in the term "Points" by prominently displaying the Weight Watchers points value on the packages of its frozen meals. In that case, it was clear from the packaging that Luigino's was the source of the actual goods-i.e. the frozen meals. Nonetheless, Weight Watchers could succeed on its claim for trademark infringement by showing "that the use of the term 'Points' on the front of the package was likely to confuse consumers into believing that Weight Watchers had determined the point values or otherwise endorsed the Luigino's products." Id. at 144 (emphasis added). Moreover, we have held that there may be consumer confusion based on the misuse of a trademark, even where it is conceded that the plaintiff's mark accurately designated the source of goods. See Original Appalachian Artworks, Inc. v. Granada Electronics, Inc., 816 F.2d 68, 73 (2d Cir. 1987) (holding unauthorized importation and sale of Cabbage Patch dolls manufactured in Spain with the foreign language adoption papers and birth certificate infringed the plaintiff's trademark in Cabbage Patch dolls "even though the goods do bear [plaintiff's] trademark and were manufactured under license with [the plaintiff]," because plaintiff's "domestic good will is being damaged by consumer confusion caused by the importation of the [Spanish] dolls," which were materially different from American dolls). The district court therefore erred in applying its narrow conception of confusion relevant to infringement claims. [I]t is helpful to distinguish between two fundamentally different and mutually exclusive forms of consumer confusion, which we term signifier confusion and affiliation confusion. Signifier confusion denotes those situations in which a consumer fails to detect the difference between two different marks and perceives each mark to be identical to the other. For example, a consumer may be exposed to the mark STARLUCKS and simply mistakenly read or hear the mark as STARBUCKS.

14 Am. Dairy Queen Corp. v. New Line Prods., Inc., 35 F. Supp. 2d 727, 728 (D. Minn. 1998).

Though many of the examples provided in the Lemley & McKenna excerpt show severe overreach by trademark owners, there are of course counterexamples in which most would agree that trademark owners should have every right to seek to prevent association or affiliation confusion. For example, consumers might care strongly about whether a company is truthfully declaring itself to be an "Official Sponsor of the United States Olympic Team" or an "Official Sponsor of the United States Women's National Team."

In the following case, Board of Supervisors for Louisiana State University Agricultural & Mechanical College v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008), parts of which were excerpted in Part I.A.1.b, the Fifth Circuit addressed the argument that consumers do not care if the merchandise they purchase is authorized. The plaintiffs Louisiana State University, the University of Oklahoma, Ohio State University, the University of Southern California, and Collegiate Licensing Company (the official licensing agent for the universities) brought suit against defendant Smack Apparel for its unauthorized sale of apparel bearing the universities' colors and various printed messages associated with the universities. The Eastern District of Louisiana granted the plaintiffs' motion for summary judgment on the issue of trademark infringement. The Fifth Circuit affirmed. Excerpted here is the Fifth Circuit's discussion of sponsorship confusion and whether consumers prefer authorized merchandise in certain situations. Do you find it persuasive? Note that the apparel at issue, further examples of which are given below, did not bear the universities' full names or mascots.

[5] The second digit is the similarity of the marks. This factor requires consideration of the marks' appearance, sound, and meaning. The district court held that the marks at issue are virtually identical. Smack argues that there was no evidence that any of its shirts were identical to any shirts licensed by the Universities and that its t-shirt designs are not at all similar to any of the Universities' licensed products. Smack's contention is belied by the record, and even a cursory comparison of Smack's designs with the plaintiffs' licensed products reveals striking similarity.

[13] The sixth digit of confusion further supports a likelihood of confusion. Although not necessary to a finding of likelihood of confusion, a defendant's intent to confuse may alone be sufficient to justify an inference that there is a likelihood of confusion. As noted by the district court, Smack admitted that it "'used school colors and "other indicia" with the intent of identifying the university plaintiffs as the subject of the message expressed in the shirt design.'" Curtiss testified that it was "no coincidence" that Smack's shirts incorporated the color schemes of the plaintiff Universities and that he designed the shirts to make people think of the particular school that each shirt targeted. Smack asserts that its intent to copy is not the same as an intent to confuse. The circumstances of this case show, however, that Smack intended to capitalize on the potential for confusion. Smack knew that its shirts were sold in the same venues as and sometimes alongside officially licensed merchandise, and it intentionally incorporated color marks to create the kind of association with the Universities that would influence purchasers.

[14] The Eleventh Circuit found a likelihood of confusion based on a similar intent by the defendant to capitalize on the popularity of a college sports team. Univ. of Ga. Athletic Ass'n v. Laite. 59 In Laite, the defendant used school colors and a mark strikingly similar to the University of Georgia's bulldog mascot on cans to sell "Battlin' Bulldog Beer." After concluding that the defendant's bulldog mark was similar to the university's mark, the court turned to the defendant's intent, concluding "there can be no doubt that Laite hoped to sell 'Battlin' Bulldog Beer' not because the beer tastes great, but because the cans would catch the attention of University of Georgia football fans." 61 Significantly, the court found "the defendant's intent and the similarity of design between the two marks sufficient to support the district court's finding of a 'likelihood of confusion . . . .'" 62 The same is true here. Smack did not hope to sell its t-shirts because of some competitive difference in quality or design compared with the Universities' licensed products, but rather it intended to take advantage of the popularity of the Universities' football programs and the appearance of the school teams in the college bowl games. We have previously said that when a "mark was adopted with the intent of deriving benefit from the reputation of [the mark holder] that fact alone 'may be sufficient to justify the inference that there is confusing similarity.'" Amstar Corp. v. Domino's Pizza, Inc. 63 We believe that Smack's admitted intent and the similarity in appearance between Smack's shirts and the Universities' licensed products is strong evidence of a likelihood of confusion.

[15] Smack argues that an intent to confuse is negated by its use of its own logo and the words "Talkin' the Talk," which it maintains identifies it as the source of the shirt. We are not persuaded. Smack's logo appears in a space that is only 2.5 inches wide. We cannot conclude, without more, that this small and inconspicuous placement of the logo would disabuse consumers of a mistaken belief that the Universities sponsored, endorsed or were otherwise affiliated with the t-shirts. 64 Smack has not pointed to evidence that its own logo is recognizable by consumers or that it was acting to trade off its own reputation as a producer of specialty t-shirts. Nor are we convinced that Smack's logo on the shirts acts as a disclaimer. The Universities point out that they require all licensed products to contain the licensee's name. Therefore, a consumer could believe that Smack's logo merely indicated that it was a 59 756 F.2d 1535 (11th Cir. 1985).

62 Id. at 1545. 63 615 F.2d 252, 263 (5th Cir. 1980) (quoting RESTATEMENT OF TORTS § 729, comment f (1938)). 64 See Pebble Beach, 155 F.3d at 552 (noting that "conspicuous disclaimers that disclaim affiliation may reduce or eliminate confusion"). licensee. 66 We conclude that the intent digit weighs in favor of a conclusion that there is a likelihood of confusion.

[16] The seventh digit is evidence of actual confusion. Evidence that consumers have been actually confused in identifying the defendant's use of a mark as that of the plaintiff may be the best evidence of a likelihood of confusion. It is well established, however, that evidence of actual confusion is not necessary for a finding of a likelihood of confusion. The district court did not resolve whether there was sufficient evidence of actual confusion, and because such evidence is not required we also find it unnecessary to pass on the question further. 69 [17] With respect to the eighth digit of confusion-the degree of care exercised by potential purchasers-the district court held that the t-shirts at issue are relatively inexpensive impulse items that are not purchased with a high degree of care. Where items are relatively inexpensive, a buyer may take less care in selecting the item, thereby increasing the risk of confusion. Smack contends there was insufficient evidence for the district court's conclusion. In response, the Universities note Curtiss' testimony that he hoped customers' decisions to purchase Smack's shirts would be "quick," and they point out that the shirts sell for less than $18. Smack cites no evidence to demonstrate an issue of fact on this point, and we agree with the district court that this digit weighs in favor of a likelihood of confusion.

[18] After reviewing the record, we conclude that there is no genuine issue of fact that Smack's use of the Universities' color schemes and other identifying indicia creates a likelihood of confusion as to the source, affiliation, or sponsorship of the t-shirts. As noted above, the digits of confusion-particularly the overwhelming similarity of the marks and the defendant's intent to profit from the Universities' reputation-compel this conclusion. This is so, we have noted, because Smack's use of the Universities' colors and indicia is designed to create the illusion of affiliation with the Universities and essentially obtain a "free ride" by profiting from confusion among the fans of the Universities' football teams who desire to show support for and affiliation with those teams. 72 This creation of a link in the consumer's mind between the t-shirts and the Universities and the intent to directly profit therefrom results in "an unmistakable aura of deception" and likelihood of confusion. 66 See A.T. Cross Co. v. Jonathan Bradley Pens, Inc., 470 F.2d 689, 692 (2d Cir. 1972) (defendant's placement of its own name on pen also bearing mark similar to plaintiff's mark "does not save the day; a purchaser could well think plaintiff had licensed defendant as a second user and the addition is thus 'an aggravation, and not a justification' " (citation omitted)). 69 The Universities contend that there was evidence of actual confusion consisting of consumer surveys concerning two of the six t-shirt designs and testimony from Curtiss that "I have had people come up and go-at the booth and go, 'Are these licensed?' " The evidence is arguably minimal, see Amstar, 615 F.2d at 263, but as discussed we need not resolve the matter. 72 See Boston Athletic Ass'n v. Sullivan, 867 F.2d 22, 33 (1st Cir. 1989) ("Defendants' shirts are clearly designed to take advantage of the Boston Marathon and to benefit from the good will associated with its promotion by plaintiffs. Defendants thus obtain a 'free ride' at plaintiffs' expense.").

[19] Smack contends that there is no evidence that consumers care one way or the other whether t-shirts purchased for wear at a football game are officially licensed and that, absent evidence that consumers prefer licensed merchandise, it was error for the district court to conclude there was a likelihood of confusion. Smack relies in part on our decision in Supreme Assembly, Order of Rainbow for Girls v. J.H. Ray Jewelry Company. 74 The context of that case is different from the instant case.

[20] In Rainbow for Girls, a fraternal organization and its official jeweler sued a retailer for trademark infringement based on the retailer's sale of jewelry bearing the organization's registered mark. Purchasers in the fraternal-organization jewelry market bought jewelry to show membership and status in the organization. We upheld the district court's finding of no likelihood of confusion, concluding that "[t]he fact that purchasers purchased Rainbow jewelry as a direct result of the presence of the Rainbow emblem does not compel the conclusion that they did so believing that the jewelry was in any way endorsed, sponsored, approved or otherwise associated with Rainbow, given the court's findings." 76 The district court had held that there was no historic custom or practice specific to Rainbow jewelry or to the fraternal jewelry industry that Rainbow jewelry could be manufactured only with Rainbow's sponsorship or approval. Instead, the court noted that fraternal organizations exercised little control over the manufacture of jewelry bearing their emblems. Furthermore, the court had held that because Rainbow's "official jeweler" was itself well-advertised and used its own distinctive mark on the jewelry, any jewelry without that distinctive mark could not cause confusion. We noted that the district court's findings distinguished the case from our decision in Boston Professional Hockey Association v. Dallas Cap & Emblem Manufacturing.

[21] In Boston Hockey, we held that the defendant infringed the plaintiff's trademark rights by selling embroidered patches containing the emblems of professional hockey teams. 81 There, the emblems were sold for use by the public to show "allegiance to or identification with the teams." 82 We held that the likelihood of confusion requirement was met because the defendant duplicated and sold the emblems "knowing that the public would identify them as being the teams' trademarks" and because the public's "certain knowledge . . . that the source and origin of the trademark symbols were in plaintiffs satisfies the requirements of the act." 83 [22] Subsequently, in Kentucky Fried Chicken Corporation v. Diversified Packaging Corporation, we recognized that Boston Hockey might be read to dispose of the confusion issue when buyers undoubtedly know that the plaintiff is the source and origin of a mark. 84 We reiterated that a showing of likelihood of confusion was still required. But we noted that 74 676 F.2d 1079 (5th Cir. 1982).

76 Id. at 1084 (emphasis added). 81 510 F.2d 1004 (5th Cir. 1975). 82 Id. at 1011. 83 Id. at 1012. the circumstances in Boston Hockey supported the likelihood of confusion there insofar as the sale of products "universally associated" with the hockey team "supported the inescapable inference that many would believe that the product itself originated with or was somehow endorsed by Boston Hockey." In Rainbow for Girls, the district court opinion, which we upheld, also recognized in reference to Boston Hockey that "'(i)t is not unreasonable to conclude, given the degree to which sports emblems are used to advertise teams and endorse products, that a consumer seeing the emblem or name of a team on or associated with a good or service would assume some sort of sponsorship or association between the product's seller and the team.'" 87

[23] We agree with this reasoning as applied to this case, which is more like Boston Hockey than Rainbow for Girls. We hold that given the record in this case and the digits of confusion analysis discussed above-including the overwhelming similarity between the defendant's t-shirts and the Universities' licensed products, and the defendant's admitted intent to create an association with the plaintiffs and to influence consumers in calling the plaintiffs to mind-that the inescapable conclusion is that many consumers would likely be confused and believe that Smack's t-shirts were sponsored or endorsed by the Universities. The Universities exercise stringent control over the use of their marks on apparel through their licensing program. It is also undisputed that the Universities annually sell millions of dollars worth of licensed apparel. We further recognize the public's indisputable desire to associate with college sports teams by wearing team-related apparel. We are not persuaded that simply because some consumers might not care whether Smack's shirts are officially licensed the likelihood of confusion is negated. Whether or not a consumer cares about official sponsorship is a different question from whether that consumer would likely believe the product is officially sponsored. For the foregoing reasons, we conclude that a likelihood of confusion connecting the presence of the Universities' marks and the Universities' themselves was demonstrated in this case. . . . .

Materiality and consumer confusion. How might courts constrain the enormous expansion of "sponsorship or affiliation" confusion? Lemley & McKenna write:

[W]e argue that courts can begin to rein in some of these excesses by focusing their attention on confusion that is actually relevant to purchasing decisions. Uses of a trademark that cause confusion about actual source or about responsibility for quality will often impact purchasing decisions, so courts should presume materiality and impose liability when there is evidence such confusion is likely. Uses alleged to cause confusion about more nebulous relationships, on the other hand, are more analogous to false advertising claims, and those uses should be actionable only when a plaintiff can prove the alleged confusion is material to consumers' decision making. Th[e] reality of modern brand extensions raises the "circularity" question. If consumers think that most uses of a trademark require authorization, then in fact they will require authorization because the owner can enjoin consumer confusion caused by unpermitted uses or charge for licenses. And if owners can sue to stop unauthorized uses, then only authorized uses will be seen by consumers, creating or reinforcing their perception that authorization is necessary. This is a "chicken and the egg" conundrum. Which comes first? The trademark right on far-flung items or the license? Licensing itself may affect consumer perception if consumers see a plethora of items with the mark perhaps accompanied by an "authorized by" label. MCCARTHY § 24:9. See also Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 YALE L.J. 1687, 1708 (1999) ("Ironically, having accepted the merchandising rationale for certain sorts of trademarks, we may find it hard to undo. It is possible that consumers have come to expect that 'Dallas Cowboys' caps are licensed by the Cowboys, not because they serve a trademark function, but simply because the law has recently required such a relationship. If this expectation exists, consumers may be confused if the law changes."). Cf. Vornado Air Circulation Sys., Inc. v. Duracraft Corp., 58 F.3d 1498, 1509 (10th Cir. 1995) ("We recognize also that consumer confusion resulting from the copying of product features is, in some measure, a self-fulfilling prophecy. To the degree that useful product configurations are protected as identifiers, consumers will come to rely on them for that purpose, but if copying is allowed, they will depend less on product shapes and more on labels and packaging.").

Trademark lawyers sometimes speak of the entity referenced on merchandise (such as apparel) as the "secondary source" of the merchandise:

The "ornamentation" of a T-shirt can be of a special nature which inherently tells the purchasing public the source of the T-shirt, not the source of manufacture but the secondary source. Thus, the name "New York University" . . . , albeit it will serve as ornamentation on a T-shirt will also advise the purchaser that the university is the secondary source of that shirt. It is not imaginable that Columbia University will be the source of an N.Y.U. T-shirt. Where the shirt is distributed by other than the university the university's name on the shirt will indicate the sponsorship or authorization by the university.

In re Olin Corp., 181 U.S.P.Q. 182, 182, (TTAB 1973).

Trademark rights in fictional elements of expressive works?

In Lucasfilm Ltd. LLC v. Ren Ventures Ltd., No. 17 Civ. 07249, 2018 WL 2392963 (N.D. Cal. Apr. 24, 2018), the defendants produced a mobile game app entitled "Sabacc-The High Stakes Card Game," which was based on the card game Sabacc described in several novels from the fictional Star Wars universe (and which was featured in the Star Wars film Solo: A Star Wars Story). The plaintiff asserted trademark rights in the name. In denying the defendants' motion to dismiss, the Northern District of California cited several previous cases in which courts recognized trademark rights in fictional elements of expressive works: Defendants next contend that the name of a fictional good or service in an expressive work does not function as a mark for the expressive work in which the fictional good or service appears. On the contrary, courts have long held that fictional elements of expressive works can function as trademarks when those elements symbolize the plaintiff or its product to the consuming public. See DC Comics, Inc. v. Filmation Assocs., 486 F. Supp. 1273, 1277 (S.D.N.Y. 1980). Following this principle, courts have extended trademark protection to the "General Lee" car from the television series "The Dukes of Hazzard," see Warner Bros., Inc. v. Gay Toys, Inc., 658 F.2d 76, 78 (2d Cir. 1981), the fictional restaurant "The Krusty Krab" from the "SpongeBob SquarePants" television series, see Viacom Int'l Inc. v. IJR Capital Invs., LLC, 242 F. Supp. 3d 563, 569 (S.D. Tex. 2017), the "Hobbit" characters from J.R.R. Tolkien ' In the face of this weight of authority, defendants point to several administrative decisions from the Trademark Trial and Appeal Board (TTAB) where the Board refused to recognize certain fictional elements as being trademarks. See Mot. to Dismiss at 17-18. Yet these decisions merely suggest that fanciful elements do not always function as marks for the expressive works in which they appear, not that they may never do so. For example, in Paramount Pictures Corp. v. Romulan Invasions, 7 U.S.P.Q.2d 1897 (T.T.A.B. Mar. 31, 1988), Paramount sought to enjoin a rock band from registering "The Romulans" as the group's name, on the grounds that "Romulans" are a fictional alien race appearing in the Star Trek franchise. While the Board provided no explanatory reasoning for its conclusion that Paramount's use of the name did not confer trademark rights, a reasonable consumer would not likely assume the rock band was affiliated with the Star Trek franchise on account of its name alone. Thus, the Board concluded Paramount's use of "Romulans" should not preclude registration of the rock band's name.

Lucasfilm Ltd. LLC, 2018 WL 2392963, at *3-4. See also Lisa Pearson, The Real Life of Fictional Trademarks, 100 TRADEMARK REP. 839 (2020).

Virgin Enterprises focused on "point of sale" confusion, i.e., consumer confusion as to source at the moment when the consumer purchases the defendant's goods or services. We turn now to other modes of confusion. We consider first "initial interest confusion," which "occurs when a customer is lured to a product by the similarity of the mark, even if the customer realizes the true source of the goods before the sale is consummated." Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808, 812 (7th Cir. 2002), as amended (Oct. 18, 2002) (citation omitted). See also Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 523 F.2d 1331, 1342 (2d Cir. 1975) (finding "initial confusion" when the declaratory plaintiff used the mark GROTRIAN-STEINWEG for pianos even if no consumers ultimately purchased the plaintiff's pianos believing them to be STEINWAY pianos).

Select Comfort Corporation v. Baxter 996 F.3d 925 (8th Cir. 2021)

[1] Plaintiffs and Defendants sell competing adjustable air mattresses and related products. Plaintiffs' registered trademarks include "SLEEP NUMBER", "WHAT'S YOUR SLEEP NUMBER", "SELECT COMFORT", and "COMFORTAIRE". Plaintiffs allege Defendants used similar and identical marks in several different capacities online to sell competing products. . . . At summary judgment the district court rejected as a matter of law an infringement theory based on presale or initial-interest confusion. 4 J. McCarthy, Trademarks and Unfair Competition, § 23:6 (4th Ed. 2010) (hereinafter McCarthy) (initial-interest confusion is "confusion that creates initial customer interest, even though no actual sale is finally completed as a result of the confusion"). The case proceeded to a trial on trademark infringement and dilution claims and on unfair competition and false advertising claims. Consistent with the summary judgment ruling, the district court instructed the jury that infringement liability depended on a showing of a likelihood of confusion at the time of purchase. The trial resulted in a mixed verdict.

[2] Both sides appeal. . . . Because we conclude the district court erred by finding as a matter of law that the relevant consumers were sophisticated and that a theory of initialinterest confusion could not apply, we reverse. . . . I. Background [3] Plaintiffs are the owners of the heavily advertised Select Comfort and Sleep Number brands of adjustable air mattresses sold online, over the phone, and (primarily) through hundreds of company-owned stores nationwide. Defendant Dires, LLC, and its principals and predecessor or affiliated companies, actually made adjustable air beds at an earlier date. Defendants have evolved into an online retailer ("personalcomfortbed.com") that utilizes internet advertising and a call-center-based sales model to sell their own brand of lowerpriced adjustable air beds. The individual defendants are executives or owners of Dires or related companies, all of whom had input into marketing strategy and advertising design. Defendants are a distant second to Plaintiffs in adjustable-bed sales volume.

[4] Plaintiffs' overall theory of the case alleges Defendants employed words or phrases identical or confusingly similar to Plaintiffs trademarks in various online advertising formats including: website urls; search inquiry paid terms; embedded links in third-party sites; and general use of identical or similar phrases in text advertisements or combined graphic-andtext advertisements that could be viewed by users or detected organically by search engines. According to Plaintiffs, Defendants used these means to divert customers to their own website and phone lines where Defendants (1) failed to dispel consumer confusion or made statements that caused further source confusion and (2) made false representations about their own products and Plaintiffs' products in order to promote their own products. In this way, Plaintiffs assert trademark infringement, trademark dilution, and false-advertising theories that rely upon common facts.

[5] As relevant to claims on appeal, Plaintiffs asserted federal trademark infringement and dilution claims based on their registered trademarks, federal unfair competition and false advertising claims, and a state law deceptive trade practices claim. In a declaratory judgment counterclaim, Defendants . . . argued Plaintiffs could not maintain an infringement claim based on presale or initial-interest confusion. Both parties sought summary judgment. [6] In summary judgment rulings, the district court found . . . [r]egarding trademark infringement . . that outstanding questions of fact precluded summary judgment. Regarding the specific question of trademark infringement in the form of initial-interest confusion, the district court first noted that Plaintiffs expressly disavowed any theory of trademark infringement that relied exclusively on Defendants' use of Plaintiffs' trademarks as paid search terms with search engine providers such as Google. Rather, Plaintiffs alleged infringement based on that use coupled with Defendants' several and varied other uses of similar and identical trademarks in multiple forms of online advertising. The district court then relied on our case, Sensient Techs. Corp. v. SensoryEffects Flavor Co., 613 F.3d 754 (8th Cir. 2010), noting that the Eighth Circuit had neither expressly adopted nor rejected a theory of initial-interest confusion as a general matter, but had refused to apply the theory in a case where consumers were sophisticated.

[7] The District Court next held as a matter of law that retail purchasers of mattresses were sophisticated consumers because mattresses are expensive. As a result, the District Court held as a matter of law that a claim alleging initial-interest confusion could not proceed and Plaintiffs would have to show a likelihood of confusion at the time of purchase. . . . [8] At trial, Plaintiffs presented evidence which showed Defendants had used Plaintiffs' actual trademarks as paid search terms and as identical phrases in their own web-based advertising in text pages, combined text and graphical pages, as terms embedded in linked internet address urls, and in other fashions. Examples included website links that presented Plaintiffs' trademarks as identical phrases (e.g. personalcomfortbed.com/vSleepNumber or www.personalcomfortbed.com/ cComfortaire). In addition, Defendants used phrases similar to Plaintiffs' trademarks, often with words broken up in a grammatically non-sensical fashion. Examples included the use of terms such as "Sleep 55% Off Number Beds" and "Comfort Air Beds on Sale" in online advertisements. Survey evidence demonstrated actual consumer confusion, although the parties disputed the relevancy and value of the survey evidence based on percentages of participants who were confused, whether the survey participants were actual or potential consumers, and how the questions were presented. Evidence also included instances of actual confusion, often from transcripts of call-center interactions, messages from customers, or messages from call-center employees. The transcripts and recordings of call-center interactions appeared to show that Defendants' call-center employees at times attempted to promote confusion and at other times attempted to dispel confusion. Finally, evidence included statements from Defendants' principals in which they described confusion as between Plaintiffs' and Defendants' brands as a "good thing" and, in response to reports of confusion, indicated that their advertisements were "working." [9] At the end of the day, the district court submitted the case to the jury. Based on the summary judgment ruling, the district court instructed the jury that a likelihood of confusion must exist at the time of purchase to support a trademark infringement claim. . . . [10] The jury rejected the trademark infringement claims as to the registered trademarks based on the jury instruction that limited the possibility of a likelihood of confusion to the time of purchase. . . .

A. Initial-Interest Confusion [11] The primary issue in this appeal is the availability of a theory of initial-interest confusion on the trademark infringement claim and the resulting limitation in the instruction requiring any likelihood of confusion to exist at the time of purchase. As noted, initial-interest confusion is "confusion that creates initial customer interest, even though no actual sale is finally completed as a result of the confusion." 4 McCarthy § 23:6. Most circuits that have addressed the question "recognize the initial interest confusion theory as a form of likelihood of confusion which can trigger a finding of infringement." Id. (collecting cases). In general, the theory of initial-interest confusion recognizes that a senior user's goodwill holds value at all times, not merely at the moment of purchase. The theory protects against the threat of a competitor "receiving a 'free ride on the goodwill' of [an] ). This free ride may result in the consumer falsely inferring an affiliation between the junior and senior users, provide the junior user with an opportunity it otherwise would not have achieved, or deprive the senior user of an actual opportunity. Id. at 293-95. At least one circuit has "equated initial interest confusion to a 'bait and switch scheme.'" Id. at 294 (quoting Dorr-Oliver, Inc. v. Fluid Quip, Inc., 94 F.3d 376, 382 (7th Cir. 1996)). [12] In the present case, the parties dispute as a general matter whether a theory of initial-interest confusion is a viable theory of infringement in our circuit. They also dispute whether the relevant consumers-consumers investigating mattresses and online shoppers in general-are so sophisticated that the issue of consumer sophistication could properly be removed from the jury. To address these questions, it is necessary first to review more generally the test for confusion and what our Court has said about when confusion must exist. . . . .

[13] To assess the likelihood of confusion as required for a showing of infringement, our circuit employs a list of nonexclusive factors for addressing a core inquiry: whether the relevant average consumers for a product or service are likely to be confused as to the source of a product or service or as to an affiliation between sources based on a defendant's use. . . . The factors we consider come from SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980). . . .

[14] This flexible, context-specific, and relative-rather-than-mechanical approach makes sense because the general function of the likelihood-of-confusion factors is to guide the finder of fact towards considerations generally thought to be material to the consuming public's understanding of product source or affiliation. . . .

[15] Although our test for a likelihood of confusion is well-developed, some uncertainty remains as to when confusion must exist in order to support a trademark infringement claim. Sensient, 613 F.3d at 766. Although not addressing initial-interest confusion specifically, our Court has clearly established that claims of infringement are not limited solely to a likelihood of confusion at the time of purchase. See Insty*Bit, Inc. v. Poly-Tech Indus., 95 F.3d 663, 671-72 (8th Cir. 1996). In Insty*Bit, our Court recognized that a 1962 amendment to the Lanham Act eliminated reference to "purchasers" when describing actionable confusion. Id. (quoting Pub. L. No. 87-772, 76 Stat. 769, 773 (1962)). We interpreted this statutory amendment as permitting claims for post-sale confusion among nonpurchasers-generally "consumers"who witnessed a confusingly marked product. Id.

[16] Fourteen years later, however, our Court indicated that it was unclear as a general matter whether initial-interest or presale confusion was actionable. See Sensient Tech., 613 F.3d at 766. There, over a dissent, our circuit identified the theory, but neither rejected nor adopted it for general application. Instead, we held that the theory did not apply on the facts of the case because the consumers at issue were sophisticated commercial purchasers of inputs for industrial food production who goods with a high degree of care "after a collaborative process." Id. at 769.

[17] The general question of whether presale, initial-interest confusion is actionable, therefore, seemingly pits two opposing views of trademark law against one another. On the one hand, through our application and review of the likelihood of confusion factors, we recognize the varied landscape of commercial transactions and leave the jury to sort through the details. Our factors provide guidance but do not draw bright lines that might constrain the general test for confusion. Similarly, the Court in Insty*Bit refused to place firm constraints on the question of when confusion must exist. On the other hand, in Sensient, our Court acknowledged the possibility of cabining the likelihood-of-confusion test to a particular moment in time, at least under certain circumstances.

[18] We now address the issue left open in Sensient and hold that a theory of initialinterest confusion may apply in our circuit. We are, of course, bound by Sensient. But, when the particular conditions of Sensient are not present, i.e., when a jury question exists as to the issue of consumer sophistication, a plaintiff should not be barred from proving presale, initial-interest confusion. In reaching this conclusion we find the Lanham Act itself and amendments to its language as cited in Insty*Bit particularly compelling. Other courts addressing the question of initial-interest confusion have relied on this language. Checkpoint, 269 F.3d at 295 (noting that as originally enacted, "the Lanham Act only applied where the use of similar marks was 'likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods or services'" (quoting 1946 Lanham Act) (accord Esercizio v. Roberts, 944 F.2d 1235, 1244 (6th Cir. 1991))); see generally, 4 McCarthy § 23:7 (collecting cases) (noting that several courts have interpreted this amendment as expanding trademark protection beyond point-of-sale confusion to reach presale confusion (including initialinterest confusion) and post-sale confusion). And, in general, adoption of the theory is consistent with the overall practice of recognizing the varied nature of commercial interactions and the importance of not cabining the jury's analysis of the likelihood of confusion factors. If we do not generally impose strict constraints on the jury's nuanced assessment of how or whether the consuming public might be confused, it would be odd to presume that all commercial interactions are alike or that, in all settings, trademarks are worthy of protection only in the few moments before the consummation of a transaction. [19] Of course, as per Sensient, the theory of initial-interest confusion cannot apply in our Circuit where the relevant average consumers are sophisticated at the level of the careful professional purchasers who were at issue in Sensient. In this regard, however, we find several comments by the dissent in Sensient compelling, and we note that a finding of customer sophistication typically will rest with the jury.

[20] In reaching its conclusion, the Court in Sensient relied upon Checkpoint Systems for the proposition that "courts look to factors such as product relatedness and the level of care exercised by customers to determine whether initial interest confusion exists." Sensient, 613 F.3d at 766. Sensient was an appeal from a grant of summary judgment, and on the summary judgment record, our Court indicated the parties agreed the relevant consumers were sophisticated. The dissent in Sensient accurately noted, however, that in Checkpoint Systems, the Third Circuit had been reviewing the issue after trial, not making a determination as to consumer sophistication as a matter of law (or making any likelihood of confusion determinations) at the summary judgment stage. Id. at 773 (Colloton, J, dissenting). The dissent described the theory of initial-interest confusion and emphasized that, even if customers are sophisticated, that fact alone should not automatically defeat the theory. In advocating for this no-blanket-rule point, the dissent cited a Second Circuit case involving professional buyers in a lawsuit between Mobil Oil and an entity that was marketing products under the name "Pegasus Petroleum." The dissent noted that "[w]hether or not a sophisticated customer eventually would sort out the difference, the doctrine of initial interest confusion prevents an infringer from using another's mark to gain 'crucial credibility during the initial phases of a deal.'" Id. at 773 (quoting Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 258 (2d Cir. 1987)). And, the dissent also emphasized that the Third Circuit in Checkpoint specifically disclaimed any categorical rule, stating instead that the "significance [of customer sophistication] will vary, and must be determined on a case-bycase basis." Sensient, 613 F.3d at 773 (quoting Checkpoint, 269 F.3d at 297).

[21] Regardless of the relative merits of the positions reflected in Sensient, our general adoption of the theory of initial-interest confusion forecloses summary judgment where a question of fact exists as to the level of consumer sophistication. Here, the parties dispute the issue of consumer sophistication both in reference to shopping for mattresses and shopping online. They also dispute whether consumer sophistication should be measured at the "point of click" for an online shopper, at the point of sale upon final purchase, or at points in between. For the reasons previously discussed, we do not believe it is appropriate to cabin the analysis to any one point in time. And, in any event, authority is mixed as to whether mattress shoppers and online shoppers should be deemed careful, sophisticated consumers. [22] On the one hand, mattresses are relatively expensive among most consumers' purchases. See Sleepmaster Prods. Co. v. Am. Auto-Felt Corp., 241 F.2d 738, 741 (C.C.P.A. 1957) ("[T]he average purchaser will exercise such care in the selection of a mattress as to minimize the possibility of confusion as to the origin of the goods."). On the other hand, most people buy mattresses infrequently, so they enter the marketplace uneducated and susceptible to fast-talking sales people and brand confusion. See Friedman v. Sealy, Inc., 274 F.2d 255, 261-62 (10th Cir. 1959) ("[S]ince a mattress or box spring requires an investment . . ., the degree of care which a customer might be expected to exercise is somewhat greater than if he were buying 5-cent candies. [But] the construction of sleep equipment is not a matter of common knowledge and the consumer buys infrequently. He is thus forced to rely on his memory, more than his inspection, for the recall of names, guarantees, and endorsements. Under such circumstances, confusion can easily arise.").

[23] Authority is also mixed as to the level of sophistication web-based shoppers bring to the table and ], reasonable, prudent and experienced internet consumers are accustomed to such exploration by trial and error. They skip from site to site, ready to hit the back button whenever they're not satisfied with a site's contents. They fully expect to find some sites that aren't what they imagine based on a glance at the domain name or search engine summary."). See also Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137, 1152 (9th Cir. 2011) (noting that although "'there is generally a low degree of care exercised by Internet consumers' . . . the degree of care analysis cannot begin and end at the marketing channel. We still must consider the nature and cost of the goods, and whether 'the products being sold are marketed primarily to expert buyers.'" (quoting Brookfield Comm'ns, Inc. v. West Coast Ent. Corp., 174 F.3d 1036, 1060 (9th Cir. 1999))).

[24] At the end of the day, this mix of authority regarding consumer confusion in the context of internet shopping and mattress purchases demonstrates well why a jury rather than a judge should assess the level of consumer sophistication. This point is particularly strong in a case which, like the present case, enjoys a full record including highly detailed descriptions of Plaintiffs' and Defendants' customers' experience and ample evidence of (1) actual confusion including transcripts of potential customers who called Defendants' call centers and believed they were calling Plaintiffs, and (2) statements by Defendants' principals describing the actual confusion as evidence that their own advertising was working. See Kemp, 398 F.3d at 1058 (evidence of actual confusion, while not required, is strong evidence of a likelihood of confusion); SquirtCo, 628 F.2d at 1091 ("Likewise, actual confusion is not essential to a finding of trademark infringement, although it is positive proof of likelihood of confusion.").

[25] Against this backdrop, we conclude a jury question existed as to the issue of consumer sophistication and summary judgment on the theory of initial-interest confusion was error. For the same reasons, and based on Insty*Bit, we conclude that limiting the infringement instruction to require confusion at the time of purchase was error. Finally, given the strength of the Plaintiffs' evidence on the issue of confusion, we cannot conclude that the summary judgment and instructional errors were harmless. See Fed. R. Civ. P. 61. In so ruling, we make no comment as to how a finding of confusion at times other than the moment of purchase might affect the analysis of remedies and the determination of damages. [1] "What's in a name?" William Shakespeare, Romeo and Juliet act 2, sc. 2, l. 46. According to Juliet Capulet, not much. Romeo Montague's last name, though charged with meaning, does not confuse her about who he is. In this keyword advertising trademark dispute, the district court saw most consumers as discerning Juliets. Appellant, however, likens them to the larger Capulet clan, a group more prone to confusion. As explained below, we disagree and affirm the district court's grant of summary judgment. [3] Since its founding in 2015 until 2021, ALG purchased the term "Lerner & Rowe" as a Google Ads keyword, which prompted ALG's advertisements to appear near the top of Google's search results list whenever someone searched for "Lerner & Rowe." This strategy, known as "conquesting," is a common internet marketing tool by which companies promote their services to potential customers who might be searching for a competitor. In fact, Lerner & Rowe has engaged in conquesting in other contexts. Importantly, while the format and copy of ALG's advertisements varied from search to search, they never included or referenced the term "Lerner & Rowe." [4] On September 8, 2021, Lerner & Rowe filed a complaint alleging claims for (1) trademark infringement, unfair competition, false designation of origin, and false description under the Lanham Act; (2) state trademark infringement and unfair competition; and (3) unjust enrichment. In a May 18, 2023, order, the district court granted summary judgment in favor of ALG on the trademark infringement and unjust enrichment claims but denied summary judgment on the unfair competition claims. ALG moved for reconsideration, and the district court subsequently entered summary judgment as to all claims. Lerner & Rowe timely appealed that ruling. . . . [5] . . . . Because the parties do not dispute that Lerner & Rowe has a protectible interest in its mark, this case concerns only the likelihood of confusion element. [6] When assessing the likelihood of confusion in the keyword advertising context, we primarily consider the following non-exhaustive list of factors:

(1) the strength of the mark; (2) the evidence of actual confusion; (3) the type of goods and degree of care likely to be exercised by the purchaser; and (4) the labeling and appearance of the advertisements and the surrounding context on the screen displaying the results page.

Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1154 (9th Cir. 2011). Other, less relevant factors include the "proximity of the goods, similarity of the marks, marketing channels used, defendant's intent in selecting the mark, and likelihood of expansion of the product lines." Id. at 1145 (quoting AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979)) (cleaned up). These factors are "not a rote checklist," and we must be flexible when analyzing them. Id. Depending on the circumstances of a given case, certain factors may be more important than others. Id. at 1148; see also Multi Time Mach., 804 F.3d at 937, 939 (affirming grant of summary judgment based on two factors: "evaluation of the web page at issue and the relevant consumer").

[7] This case primarily concerns "initial interest confusion," which occurs when an alleged infringer uses a competitor's mark to direct consumer attention to its product. 1 See Playboy Enters., Inc. v. Netscape Commc'ns Corp., 354 F.3d 1020, 1025 (9th Cir. 2004). "Although dispelled before an actual sale occurs, initial interest confusion impermissibly capitalizes on the goodwill associated with a mark and is therefore actionable trademark infringement." Id. Such a claim applies, however, only to "misleading and deceptive" uses of a mark, not to "legitimate comparative and contextual advertising." Network Automation, 638 F.3d at 1148. Therefore, in the keyword advertising context, we have emphasized that, "the owner of the mark must demonstrate likely confusion, not mere diversion." Id. at 1149; see also Playboy Enters., 354 F.3d at 1035 (Berzon, J., concurring) ("There is a big difference between hijacking a customer to another website by making the customer think he or she is visiting the trademark holder's website (even if only briefly) ... and just distracting a potential customer with another choice, when it is clear that it is a choice."). 1 Lerner & Rowe also advanced a theory of source confusion, which occurs when consumers purchase services from an alleged infringer due to confusion about the actual provider of those services. . . . This does not, however, affect our analysis, because both theories turn on the same likelihood of confusion test. [8] Strong trademarks receive greater protection because "a user searching for a distinctive term is more likely to be looking for a particular product, and therefore, could be more susceptible to confusion when sponsored links appear that advertise a similar product from a different source." Network Automation, 638 F.3d at 1149. . . . [9] The district court correctly found, and ALG does not dispute, that Lerner & Rowe's mark is strong. Not only is the mark federally registered, but Lerner & Rowe has spent millions of dollars advertising it, garnering the business of over 100,000 clients. This factor weighs in favor of Lerner & Rowe.

. . . . [10] Here, Lerner & Rowe's proffer of actual confusion consists of 236 phone calls that ALG's intake department received during which the caller mentioned Lerner & Rowe by name when responding to a question about how the caller found ALG's phone number. 2 Data from Google shows that, between 2017 and 2021, searches for "Lerner & Rowe" returned results featuring ALG's advertisement 109,322 times. Evidence of 236 instances of actual confusion, therefore, constitutes only 0.216% of the total number of users exposed to the challenged advertisements. Moreover, users clicked on ALG's advertisements 7,452 times, or just 6.82% of the time Google displayed them. ALG separately commissioned an expert survey concluding that ALG's advertisements confused between 0% and 3% of consumers. The district court dismissed this evidence of actual confusion as de minimis and concluded that this factor favored ALG. [11] Lerner & Rowe does not dispute these statistics. Nor did it commission its own survey. Rather, it relies on cases like Ironhawk Technologies, Inc. v. Dropbox, Inc., 2 F.4th 1150 (9th Cir. 2021), for the proposition that even one or two instances of actual confusion should weigh in the plaintiff's favor on summary judgment. In Ironhawk, we weighed two instances of actual confusion in favor of the plaintiff, concluding that "it is evidence a reasonable jury could rely on to support a finding of actual confusion or when assessing a likelihood of confusion under the totality of the circumstances." 2 F.4th at 1166; see also Entrepreneur Media, 279 F.3d at 1151 (holding that, while a jury could disregard as de minimis a single incident of actual confusion, such evidence still weighed slightly in favor of plaintiff's 2 The district court concluded that most of these call log entries were too ambiguous to constitute reliable evidence of actual confusion. The entries are indeed terse, and many do not convey any apparent impression of customer confusion. For example, some callers mentioned Lerner & Rowe because the firm had referred them to ALG. This is not evidence of confusion at all. Other entries-like one that states, "Google. Thought we were L&R"-more likely express confusion. Most of the entries fall somewhere between these two poles in terms of the clarity with which they convey customer confusion. Nevertheless, for the sake of brevity, we will treat all 236 call log entries as evidence of actual confusion because, as discussed below, even that total, under the particular facts of this case, represents only de minimis evidence of actual confusion.

infringement claim for purposes of summary judgment). In Lerner & Rowe's view, its proffer of 236 instances of actual confusion easily meets Ironhawk's standard regardless of the number of times consumers viewed ALG's advertisements.

[12] Typically, instances of actual confusion present a numerator with no denominator, saying little or nothing about the actual proportion of the consumer population that is confused. In such cases, we see the tip of an iceberg and have no ability to speculate about how much lies below the surface. Here, however, no speculation is necessary-we can see the entire iceberg. Because we have both the numerator-the 236 calls representing actual confusion-and the denominator-the 109,322 consumers who saw the advertisementswe can discern with a high degree of precision the proportion of all consumers who were actually confused. See 3

J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition

§ 23:14 (5th ed.) ("Evidence of the number of instances of actual confusion must be placed against the background of the number of opportunities for confusion before one can make an informed decision as to the weight to be given the evidence."). The resulting 0.216% confusion rate is direct evidence of the likelihood of confusion comparable to, but more complete than, survey evidence. No reasonable jury would conclude that this percentage is anything but de minimis and fails to support a finding of likelihood of confusion. . . .

[13] Our conclusion does not conflict with cases like Ironhawk, where we weighed individual instances of confusion without the benefit of knowing the total number of opportunities consumers had for confusion. See 2 F.4th at 1165-66. We surmised that a reasonable jury would likely find the proffered evidence of actual confusion in Ironhawk de minimis, but we could not make that determination ourselves without more data. See id. at 1166. Here, on the other hand, we know how many times consumers searched for "Lerner & Rowe" on Google and saw an ALG advertisement. We also know how many of those consumers called ALG and, in a potential expression of confusion, referenced "Lerner & Rowe." The resulting calculation is simple and telling: unlike in Ironhawk, the evidence of actual confusion here is demonstrably de minimis.

[14] While evidence showing the actual proportion of confused consumers is important, we do not suggest that courts should automatically discount de minimis instances of actual confusion when the record contains additional evidence of consumer confusion. The Fourth Circuit's decision in Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144 (4th Cir. 2012), is instructive. There, the district court disregarded five depositions from confused consumers because there had been more than 100,000 opportunities for confusion over a period of six years. Id. at 157-58. The Fourth Circuit noted that, if the depositions had been the only evidence of actual confusion before the district court, disregarding them would not have been improper. Id. at 158. But the plaintiff had presented other evidence, including records of 262 customer complaints, in-house studies from Google about the likelihood that the defendant's advertising strategy could confuse consumers, testimony from Google's in-house trademark attorneys who were themselves unable to distinguish between the links at issue in the case, and an expert survey demonstrating a net confusion rate among consumers of 17%. Id. at 158-59. Here, by contrast, Lerner & Rowe's de minimis actual confusion evidence stands alone. In fact, ALG presented the only other evidence of confusion-an expert survey showing a customer confusion rate of 0% to 3% and evidence of a 6.82% click-thru rate 4 -which bolsters the de minimis nature of Lerner & Rowe's actual confusion evidence. See 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 32:189 ed.) ("When the percentage of confusion survey below 10%, they become evidence will indicate confusion is not likely.").

[15] Having determined that Lerner & Rowe's evidence of actual confusion is de minimis, we must now decide how to weigh it. In one sense, the evidence Lerner & Rowe has presented is so slight it may as well have presented none at all. Due to the difficulties in gathering evidence of actual confusion, we have noted that "its absence [is] generally unnoteworthy." Brookfield Commc'ns, 174 F.3d at 1050. . . . Here, however, the nature of the actual confusion evidence paints a picture that affirmatively contradicts Lerner & Rowe's assertions that ALG's advertisements were likely to confuse an appreciable number of consumers, compelling us to conclude that this factor should weigh substantially in favor of ALG. See Surfvivor Media, 406 F.3d at 633 (weighing de minimis actual confusion evidence against plaintiff when defendant presented consumer survey showing "an absence of significant confusion"). . . .

C. The Reasonably Prudent Consumer's Degree of Care

[16] Sophisticated consumers and those shopping for high-value products are likely to exercise a higher degree of care while shopping and are, therefore, less likely to be confused by similar marks. See Network Automation, 638 F.3d at 1152. Additionally, when it comes to online shopping, "the default degree of consumer care is becoming more heightened as the novelty of the Internet evaporates and online commerce becomes commonplace." Id. The district court weighed this factor in favor of ALG because acquiring legal services can be expensive and important and because those accustomed to online shopping are typically savvy enough to differentiate between search engine results.

[17] We agree that this factor weighs in ALG's favor. Since at least 2010, we have recognized that "[c]onsumers who use the internet for shopping are generally quite sophisticated about" how the internet functions. Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1178 (9th Cir. 2010). For example, regular internet users can readily distinguish domain names associated with the companies they are searching for from those they are not. See id. Additionally, Google's search engine is so ubiquitous that we can be confident that the reasonably prudent online shopper is familiar with its layout and function, knows that it orders results based on relevance to the search term, and understands that it produces sponsored links along with organic search results. Moreover, in this case, the relevant consumers specifically typed in "Lerner & Rowe" as a search term, suggesting that they would be even more discerning of the results they received. Therefore, because this case involves search results did not include an entry for Lerner & Rowe after the ALG advertisement, our conclusion would remain the same. Indeed, we find it difficult to believe that consumers searching for the phrase "Lerner & Rowe" would not choose to click on the link that matches their search query word for word.

[24] Nor do we think that ALG's advertisements are so confusing as to lure reasonably prudent online shoppers into unwittingly clicking on them in search of Lerner & Rowe's website. Lerner & Rowe attempts to demonstrate confusion by distinguishing Multi Time Machine v. Amazon.com, where we held that Amazon's search results page was so clearly labeled that no reasonable consumer would find it confusing. See 804 F.3d at 937-38. That case involved Amazon searches for the MTM Special Ops watch, a product that the manufacturer did not sell on Amazon. Id. at 933. When someone searched for "mtm special ops" on Amazon, the results page listed the search query twice above a "Related Searches" field that contained alternative search queries that might help the consumer find a related product. Id. Below the "Related Searches" field, separated by a gray bar, was a list of products available on Amazon that were similar to the MTM Special Ops watch. Id. at 934. The entry for each of these products included a photograph and listed the name of the product and the manufacturer in "large, bright, bold letters." Id. at 938.

[25] Lerner & Rowe notes that, unlike in Multi Time Machine, Google's search results do not contain a "Related Results" field and do not separate advertisements from organic results with "borders, bars, or shading." First, it is not surprising that Google styles its search results differently from Amazon; they are distinct search engines with distinct functions. Second, Multi Time Machine did not elucidate a list of features that a search engine must incorporate in order for their results to be clearly labeled. Analyzing the search results in the context of the Google results at issue here, we conclude that the bolded "Ad" designation next to each of ALG's advertisements sufficiently distinguishes ALG's advertisements from the search's organic results. Moreover, the fact that ALG's advertisements sometimes appear above organic results for Lerner & Rowe does not change this analysis. We think that reasonably prudent consumers shopping on Google would be accustomed to scrolling past advertisements at the top of a list of search results to find the organic result relevant to their query.

[26] We acknowledge that some of ALG's advertisements are not models of clarity. As Lerner & Rowe points out, sometimes the content of an advertisement contains generic statements that could apply to any personal injury law firm-for example, "Your Personal Injury Attorney-We Don't Win-You Don't Pay." In such cases, the only feature identifying ALG as the source of the advertisement is the URL, which is in a smaller, lighter font. While these features could possibly cause confusion in isolation, our job is to analyze the advertisements within the context of the entire search results page. That page invariably contains a result for Lerner & Rowe that includes the precise search term at issue, dispelling any confusion ALG's advertisements might cause. The parties' presentation of de minimis evidence of actual confusion only bolsters our conclusion that it is only the "[u]nreasonable, imprudent and inexperienced web-shoppers" who might find the search results pages confusing. Tabari, 610 F.3d at 1176.

[27] While the factors above are the most relevant to trademark infringement claims based on keyword advertising, other factors can also be helpful. See Network Automation, 638 F.3d at 1149-54 (weighing nine factors and finding four to be the most relevant to the court's analysis). Here, however, our assessment of these other factors does nothing to change our conclusion that Lerner & Rowe has failed to establish a genuine dispute of material fact regarding the likelihood of confusion element.

[28] When companies provide similar services, consumers are more likely to confuse them. See Network Automation, 638 F.3d at 1150. Nevertheless, "the proximity of the goods . . . become[s] less important if advertisements are clearly labeled or consumers exercise a high degree of care, because rather than being misled, the consumer would merely be confronted with choices among similar products." Id. The district court correctly noted that, even though ALG and Lerner & Rowe are direct competitors offering similar services, savvy online shoppers would be able to differentiate between the parties' links on Google. If it has any weight at all, this factor falls in favor of ALG.

[29] This factor might be relevant if ALG's advertisements appeared on a lesser-known or product-specific search engine, but "[t]oday, it would be the rare commercial retailer that did not advertise online, and the shared use of a ubiquitous marketing channel does not shed much light on the likelihood of consumer confusion." Network Automation, 638 F.3d at 1151. Lerner & Rowe cites a case from the year 2000 to argue that online marketing increases the likelihood of confusion. While that may have been true over twenty years ago when internet advertising was new, our precedent acknowledges that advertising on Google is commonplace today. The district court properly accorded this factor little to no weight.

[30] "Where the two marks are entirely dissimilar, there is no likelihood of confusion." Brookfield Commc'ns, 174 F.3d at 1054. Lerner & Rowe argues that this factor favors it because ALG's use of Lerner & Rowe's mark as a keyword means that ALG uses a mark identical to Lerner & Rowe's. Network Automation rejected this exact reasoning, holding that this factor should reflect "what consumers 'encountered in the marketplace,' " not what Google's algorithm uses to churn out search results. 638 F.3d at 1151. In this case, ALG does not display Lerner & Rowe's mark in its advertisements. In fact, the URL above each advertisement displays ALG's own mark, albeit in a lower-case, condensed form. These two marks-"Lerner & Rowe" and "Accident Law Group"-are in no way similar. This factor favors ALG.

[31] "When the alleged infringer knowingly adopts a mark similar to another's, reviewing courts presume that the defendant can accomplish his purpose: that is, that the public will be deceived." Network Automation, 638 F.3d at 1153. Apart from an affirmative intent to confuse, an alleged infringer's failure to take remedial steps when faced with evidence of confusion can cause a likelihood of confusion. See Playboy Enters., 354 F.3d at 1028-29. We agree with the district court that, because Lerner & Rowe's evidence of intent is identical to the evidence it offered to support its likelihood of confusion argument generally, it has failed to distinguish between an intent to deceive and an intent to compete on the part of ALG. Accordingly, this factor bears little to no weight. . . . .

[32] The district court was correct to conclude that this is one of the rare trademark infringement cases susceptible to summary judgment. The generally sophisticated nature of online shoppers, the evidence demonstrating that there is not an appreciable number of consumers who would find ALG's use of the mark confusing, and the clarity of Google's search results pages, convince us that ALG's use of the "Lerner & Rowe" mark is not likely to cause consumer confusion. The district court's judgment is affirmed.

Initial interest confusion and trade dress. In Gibson Guitar Corp. v. Paul Reed Smith

Guitars, LP, 423 F.3d 539 (6th Cir. 2005), Gibson and Paul Reed Smith both manufactured single cutaway guitars, the shape of which is shown below in Gibson's trademark registration for its product configuration. Gibson conceded that there was no likelihood of point-of-sale confusion due to Paul Reed Smith's prominent labelling, but argued that there was a likelihood of initial interest confusion in that consumers would see a PRS single cutaway guitar from across a store and believe it to be a Gibson guitar. The Sixth Circuit declined to apply initial interest confusion to trade dress. It reasoned:

The potential ramifications of applying this judicially created doctrine to product-shape trademarks are different from the ramifications of applying the doctrine to trademarks on a product's name, a company's name, or a company's logo. Cf. Versa Prods. Co. v. Bifold Co., 50 F.3d 189, 201-03, 207, 209, 212-13, 215 (3rd Cir. 1995) (discussing the related context of product-configuration trade dress). Specifically, there are only a limited number of shapes in which many products can be made. A product may have a shape which is neither functional nor generic (and hence which can be trademarked) but nonetheless is still likely to resemble a competing product when viewed from the far end of a store aisle. Thus, many legitimately competing product shapes are likely to create some initial interest in the competing product due to the competing product's resemblance to the better-known product when viewed from afar. In other words, application of the initial-interest-confusion doctrine to product shapes would allow trademark holders to protect not only the actual product shapes they have trademarked, but also a "penumbra" of more or less similar shapes that would not otherwise qualify for trademark protection.

Id. at 551. (In ruling in favor of Paul Reed Smith on all surviving claims brought against it, the court ruled that Paul Reed Smith's functionality objection to the validity of Gibson's mark was moot.) 2. When do courts find initial interest confusion? Initial interest confusion remains a highly controversial basis for a finding of infringement, one which courts typically resort to only in a limited set of contexts. Courts appear to be more likely to find initial interest confusion if the defendant has engaged in patently bad faith "bait and switch" sales practices or in conduct akin to intentional cybersquatting, if the relevant consumers are unsophisticated, or if the defendant competes directly with the plaintiff. See, e.g., Epic Sys. Corp. v. YourCareUniverse, Inc., 244 F. Supp. 3d 878, 902 (W.D. Wisc. 2017) ("Courts are most likely to apply the doctrine of initial interest confusion doctrine in circumstances involving directly competing products, particularly when the potential purchasers are lay consumers making decisions in a relatively short amount of time with limited information."). But see Multi Time Mach., Inc. v. Amazon.com, Inc., 804 F.3d 930 (9th Cir. 2015). In Multi Time Machine, when consumers entered the plaintiff's trademark in Amazon's search box, they were not shown the plaintiff's products, which Amazon did not carry, but were instead shown competing products. The Ninth Circuit found no likelihood of initial interest confusion, reasoning that "[t]he search results page makes clear to anyone who can read English that Amazon carries only the brands that are clearly and explicitly listed on the web page. The search results page is unambiguous-not unlike when someone walks into a diner, asks for a Coke, and is told 'No Coke. Pepsi.'" Id. at 938. Furthermore, in reviewing the initial interest confusion case law, Gilson concludes that to prevail on an initial interest confusion basis, the plaintiff must show that it has been economically damaged by the defendant's conduct. See GILSON § 5.14[01] [1][a]. See also Lamparello v. Falwell, 420 F.3d 309, 317 (4th Cir. 2005) ("The few appellate courts that have . . . imposed liability under [the initial interest confusion] theory for using marks on the Internet have done so only in cases involving . . . one business's use of another's mark for its own financial gain. . . . Profiting financially from initial interest confusion is . . . a key element for imposition of liability under this theory.").

In general, it appears that courts have developed initial interest confusion doctrine to provide them with some degree of flexibility to reach what they deem to be the right result as a matter of equity in situations where there is no consumer confusion at the point of sale.

Critiquing initial interest confusion. For a thorough critique of initial interest confusion doctrine, see Jennifer E. Rothman, Initial Interest Confusion: Standing at the Crossroads of

Trademark Law, 27 CARDOZO L. REV. 105 (2005). Rothman observes: "The courts' initial motivation for adopting initial interest confusion was a legitimate effort to prevent baiting and switching practices. However, since then courts have unreasonably stretched the doctrine to cover many circumstances which should be considered fair competition or which are better addressed by other existing statutes." Id. at 113.

Mastercrafters' clock (left) and LeCoultre's clock (right) *

While initial interest confusion addresses the likelihood of confusion before the point of sale, post-sale confusion, as its name suggests, addresses confusion after the point of sale. One of the first cases to recognize some form of post-sale confusion was Mastercrafters Clock & Radio Co. v. Vacheron & Constantin-LeCoultre Watches, Inc., 221 F.2d 464 (2d Cir. 1955). In Mastercrafters, the declaratory plaintiff Mastercrafters produced an electric clock made to look like the declaratory defendant's expensive and prestigious Atmos table clock, a non-electric clock that wound itself from changes in atmospheric pressure. Mastercrafters sold its clock for about $30; LeCoultre sold the Atmos clock for not less than $175 (about $2,000 in today's money). Mastercrafters sought a declaration that its conduct did not constitute unfair competition. Judge Frank held in favor of LeCoultre. Though there was no point-of-sale confusion, there was nevertheless unfair competition: True, a customer examining plaintiff's clock would see from the electric cord, that it was not an 'atmospheric' clock. But, as the {district} judge found, plaintiff copied the design of the Atmos clock because plaintiff intended to, and did, attract purchasers who wanted a "luxury design" clock. This goes to show at least that some customers would buy plaintiff's cheaper clock for the purpose of acquiring the prestige gained by displaying what many visitors at the customers' homes would regard as a prestigious article. Plaintiff's wrong thus consisted of the fact that such a visitor would be likely to assume that the clock was an Atmos clock. Neither the electric cord attached to, nor the plaintiff's name on, its clock would be likely to come to the attention of such a visitor; the likelihood of such confusion suffices to render plaintiff's conduct actionable.

Id. at 464. The post-sale confusion theory has been controversial, as the dissent in the following case suggests. In reading through Ferrari S.P.A. v. Roberts, 944 F.2d 1235 (6th Cir. 1991), which involves the unauthorized production of "Fauxrraris," consider the following questions:

• Should courts take into account the confusion as to source of consumers who would never actually purchase the plaintiff's goods (or the defendant's goods for that matter)?

• Should trademark law be used to protect the exclusivity of status goods? If it should not be so used, how can we make sure that we design trademark law so that it will not protect the exclusivity of status goods but will nevertheless continue to protect the traditional source-denoting function of trademarks for non-status goods?

• Who decides which goods are status goods? Is a pickup truck a status good? [1] This is a trademark infringement action brought pursuant to the Lanham Act, 15 U.S.C. § 1051, et seq. The principal issue is whether the district court correctly concluded that plaintiff Ferrari enjoyed unregistered trademark protection in the exterior shape and appearance of two of its automobiles and, if so, whether defendant Roberts' replicas of Ferrari's designs infringed that protection, in violation of section 43(a) of the Lanham Act . . . . [2] We hold that the district court properly decided all of the issues and, therefore, we shall affirm. Because Ferrari intentionally limits production of its cars in order to create an image of exclusivity, only 1400 Daytonas were built; of these, only 100 were originally built as Spyders, soft-top convertibles. Daytona Spyders currently sell for one to two million dollars. Although Ferrari no longer makes Daytona Spyders, have continuously produced mechanical parts and body panels, and provided repair service for the cars.

[4] Ferrari began producing a car called the Testarossa in 1984. To date, Ferrari has produced approximately 5000 Testarossas. Production of these cars is also intentionally limited to preserve exclusivity: the entire anticipated production is sold out for the next several years and the waiting period to purchase a Testarossa is approximately five years. A new Testarossa sells for approximately $230,000.

[5] Roberts is engaged in a number of business ventures related to the automobile industry. One enterprise is the manufacture of fiberglass kits that replicate the exterior features of Ferrari's Daytona Spyder and Testarossa automobiles. Roberts' copies are called the Miami Spyder and the Miami Coupe, respectively. The kit is a one-piece body shell molded from reinforced fiberglass. It is usually bolted onto the undercarriage of another automobile such as a Chevrolet Corvette or a Pontiac Fiero, called the donor car. Roberts marketed the Miami Spyder primarily through advertising in kit-car magazines. Most of the replicas were sold as kits for about $8,500, although a fully accessorized "turnkey" version was available for about $50,000. refers to "the image and overall appearance of a product." Allied Mktg. Group, Inc. v. CDL Mktg., Inc., 878 F.2d 806, 812 (5th Cir. 1989) . . . . [11] Ferrari's Lanham Act claim in this case is a "trade dress" claim. Ferrari charges, and the district court found, that the unique and distinctive exterior shape and design of the Daytona Spyder and the Testarossa are protected trade dress which Roberts has infringed by copying them and marketing his replicas.

[12] Roberts asserts that there has been no infringement under section 43(a) for a number of reasons: (1) the design of Ferrari's vehicles are protected only under design patent law, see 35 U.S.C. § 171, and not the Lanham Act; (2) there is no actionable likelihood of confusion between Ferrari's vehicles and Roberts' replicas at the point of sale; and (3) the "aesthetic functionality doctrine" precludes recovery.

[14] To prove a violation of section 43(a), Ferrari's burden is to show, by a preponderance of the evidence: 1) that the trade dress of Ferrari's vehicles has acquired a "secondary meaning,"

2) that there is a likelihood of confusion based on the similarity of the exterior shape and design of Ferrari's vehicles and Roberts' replicas, and 3) that the appropriated features of Ferrari's trade dress are primarily nonfunctional.

See Kwik-Site Corp. v. Clear View Mfg. Co., Inc., 758 F.2d 167, 178 (6th Cir. 1985).

[15] Ferrari's vehicles would not acquire secondary meaning merely because they are unique designs or because they are aesthetically beautiful. The design must be one that is instantly identified in the mind of the informed viewer as a Ferrari design. The district court found, and we agree, that the unique exterior design and shape of the Ferrari vehicles are their "mark" or "trade dress" which distinguish the vehicles' exterior shapes not simply as distinctively attractive designs, but as Ferrari creations.

[16] We also agree with the district court that Roberts' admission that he intentionally copied Ferrari's design, the survey evidence introduced by Ferrari, and the testimony of {various witnesses} amount to abundant evidence that the exterior design features of the Ferrari vehicles are "trade dress" which have acquired secondary meaning. . . . .

[17] The district court found, based upon an evaluation of the eight Frisch factors, that the similarity of the exterior design of the Ferrari vehicles and the Roberts replicas was likely to confuse the public. The court noted that while no evidence was offered on two of the factors, evidence of actual confusion and likelihood of expansion of the product lines, two others, marketing channels and purchaser care, favored Roberts and the remaining factors "radically favor[ed] Ferrari." Summarized, the district court's findings on the Frisch "likelihood of confusion" factors are as follows:

[18] Recalling that the claimed mark involved here is the trade dress-the exterior shape and design of the Ferrari vehicles-it is clear that Ferrari's mark is very strong. The strength of the mark is its distinctiveness and Ferrari's designs are unquestionably distinctive. The survey evidence we have discussed, as well as the testimony that the shape of the plaintiff's vehicles "says Ferrari," is evidence of that distinctiveness. Indeed, Roberts' purposeful effort to copy the Ferrari designs is strong circumstantial evidence of the distinctiveness of the originals.

[19] There is no dispute about the relatedness of the goods factor. The products produced by both parties are sports cars.

[20] Likewise, the similarity of the marks-the exterior designs of the vehicles-is indisputable. Ferrari offered survey evidence which showed that 68% of the respondents could not distinguish a photograph of the McBurnie replica, upon which Roberts' Miami Spyder is based, from a photograph of the genuine Ferrari Daytona Spyder. In these photographs, the cars were shown without identifying insignia. Drawings for Roberts' cars show identifying insignia, an "R" on the parking lens and vent window, but the cars produced at the time of trial did not include the "R". Because the survey respondents saw photographs of the McBurnie cars, and because all of the identifying insignia were removed, the survey has limited value in showing the likelihood of confusion between the Roberts and Ferrari vehicles if displayed with identifying emblems. The survey, however, does show that the trade dress of the two car designs, the shapes and exteriors, were quite similar. An examination of the photographs of the cars which are in evidence confirms the striking similarity of the dress of the originals and the replicas. They are virtually indistinguishable.

[21] Finally, Roberts conceded that his intent in replicating the exterior design of Ferrari's vehicles was to market a product that looked as much as possible like a Ferrari original, although Roberts made no claim to his customers that his replicas were Ferraris. "'[The] intent of [a party] in adopting [another's mark] is a critical factor, since if the mark was adopted with the intent of deriving benefit from the reputation of [the plaintiff,] that fact alone may be sufficient to justify the inference that there is confusing similarity.'" Frisch's Restaurants, 670 F.2d at 648 (emphasis in original) (quoting Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 263 (5th Cir.), cert. denied, 449 U.S. 899, 101 S.Ct. 268, 66 L.Ed.2d 129 (1980)); see also Mastercrafters, 221 F.2d at 467. This is especially true in cases, such as this one, where the defendant sold a comparatively cheap imitation of an expensive, exclusive item. As the court in Rolex Watch explained: By selling the bogus watches, only one inference may be drawn: the Defendants intended to derive benefit from the Plaintiff's reputation. This inference is no less reasonable when weighed against the Defendants' assertion that in selling these watches, they did not fail to inform the recipients that they were counterfeits.

Rolex Watch, U.S.A., Inc. v. Canner, 645 F.Supp. 484, 492 (S.D.Fla. 1986). Intentional copying, however, is not actionable under the Lanham Act "absent evidence that the copying was done with the intent to derive a benefit from the reputation of another." Zin-Plas Corp. v. Plumbing Quality AGF Co., 622 F.Supp. 415, 420 (W.D. Mich. 1985). "Where the copying by one party of another's product is not done to deceive purchasers and thus derive a benefit from another's name and reputation, but rather to avail oneself of a design which is attractive and desirable, a case of unfair competition is not made out." West Point Mfg., 222 F.2d at 586. In this case, where Ferrari's design enjoyed strong secondary meaning and Roberts admitted that he designed his cars to look like Ferrari's, the intent to copy was clear. [22] We conclude that aside from the presumption of likelihood of confusion that follows from intentional copying, Ferrari produced strong evidence that the public is likely to be confused by the similarity of the exterior design of Ferrari's vehicles and Roberts' replicas.

[23] Roberts disagrees with the legal significance of the district court's findings of likelihood of confusion. He argues that for purposes of the Lanham Act, the requisite likelihood of confusion must be confusion at the point of sale-purchaser confusion-and not the confusion of nonpurchasing, casual observers. The evidence is clear that Roberts assured purchasers of his replicas that they were not purchasing Ferraris and that his customers were not confused about what they were buying. . . . .

[24] Roberts argues that his replicas do not violate the Lanham Act because he informed his purchasers that his significantly cheaper cars and kits were not genuine Ferraris and thus there was no confusion at the point of sale. The Lanham Act, however, was intended to do more than protect consumers at the point of sale. When the Lanham Act was enacted in 1946, its protection was limited to the use of marks "likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods or services." In 1967 {recte 1962}, Congress deleted this language and broadened the Act's protection to include the use of marks "likely to cause confusion or mistake or to deceive." Thus, Congress intended "to regulate commerce within [its control] by making actionable the deceptive and misleading use of marks in such commerce; [and] . . . to protect persons engaged in such commerce against unfair competition . . . ." 15 U.S.C. § 1127. Although, as the dissent points out, Congress rejected an anti-dilution provision when recently amending the Lanham Act, it made no effort to amend or delete this language clearly protecting the confusion of goods in commerce. The court in Rolex Watch explicitly recognized this concern with regulating commerce:

The real question before this Court is whether the alleged infringer has placed a product in commerce that is "likely to cause confusion, or to cause mistake, or to deceive." . . . The fact that an immediate buyer of a $25 counterfeit watch does not entertain any notions that it is the real thing has no place in this analysis. Once a product is injected into commerce, there is no bar to confusion, mistake, or deception occurring at some future point in time.

Rolex Watch, 645 F.Supp. at 492-93 (emphasis in original). The Rolex Watch court noted that this interpretation was necessary to protect against the cheapening and dilution of the genuine product, and to protect the manufacturer's reputation. Id. at 495; see also Mastercrafters, 221 F.2d at 466. As the court explained: Individuals examining the counterfeits, believing them to be genuine Rolex watches, might find themselves unimpressed with the quality of the item and consequently be inhibited from purchasing the real time piece. Others who see the watches bearing the Rolex trademarks on so many wrists might find themselves discouraged from acquiring a genuine because the items have become too common place and no longer possess the prestige once associated with them.

Rolex Watch, 645 F.Supp. at 495; see also Mastercrafters, 221 F.2d at 466. Such is the damage which could occur here. As the district court explained when deciding whether Roberts' former partner's Ferrari replicas would be confused with Ferrari's cars:

Ferrari has gained a well-earned reputation for making uniquely designed automobiles of quality and rarity. The DAYTONA SPYDER design is well-known among the relevant public and exclusively and positively associated with Ferrari. If the country is populated with hundreds, if not thousands, of replicas of rare, distinct, and unique vintage cars, obviously they are no longer unique. Even if a person seeing one of these replicas driving down the road is not confused, Ferrari's exclusive association with this design has been diluted and eroded. If the replica Daytona looks cheap or in disrepair, Ferrari's reputation for rarity and quality could be damaged . . . . Ferrari, 11 U.S.P.Q.2d at 1848. The dissent argues that the Lanham Act requires proof of confusion at the point of sale because the eight factor test used to determine likelihood of confusion focuses on the confusion of the purchaser, not the public. The dissent submits that three of the factors, marketing channels used, likely degree of purchaser care and sophistication, and evidence of actual confusion, specifically relate to purchasers. However, evidence of actual confusion is not limited to purchasers. The survey evidence in this case showed that members of the public, but not necessarily purchasers, were actually confused by the similarity of the products. Moreover, the other five factors, strength of the mark, relatedness of the goods, similarity of the marks, defendant's intent in selecting the mark, and likelihood of product expansion, do not limit the likelihood of confusion test to purchasers.

[25] Since Congress intended to protect the reputation of the manufacturer as well as to protect purchasers, the Act's protection is not limited to confusion at the point of sale. Because Ferrari's reputation in the field could be damaged by the marketing of Roberts' replicas, the district court did not err in permitting recovery despite the absence of point of sale confusion. . . . . KENNEDY, Circuit Judge, dissenting.

[26] I respectfully dissent because the majority opinion does more than protect consumers against a likelihood of confusion as to the source of goods; it protects the source of the goods, Ferrari, against plaintiff's copying of its design even if the replication is accompanied by adequate labelling so as to prevent consumer confusion. I believe the majority commits two errors in reaching this result. The majority first misconstrues the scope of protection afforded by the Lanham Act by misapplying the "likelihood of confusion" test and reading an anti-dilution provision into the language of section 43(a). The majority then affirms an injunction that is overbroad . . . .

I. Section 43(a) and Trade Dress Protection

[27] The majority invokes the appropriate test to determine whether protection is available for an unregistered trademark pursuant to section 43(a) of the Lanham Act. Kwik-Site Corp. v. Clear View Mfg. Co., 758 F.2d 167 (6th Cir. 1985) (secondary meaning; likelihood of confusion; and nonfunctionality of trade dress). While I agree that Ferrari's designs have acquired secondary meaning and are primarily nonfunctional, I disagree with the majority's construction and application of the likelihood of confusion test and their conclusion that the Lanham Act protects against dilution of a manufacturer's goods.

[28] This Circuit applies an eight-factor test to determine whether relevant consumers in the marketplace will confuse one item with another item. Frisch's Restaurants, Inc. v. Elby's Big Boy, Inc., 670 F.2d 642 (6th Cir.), cert. denied, 459 U.S. 916 (1982). The majority correctly points out one purpose this test is not designed to accomplish: "Where the copying by one party of another's product is not done to deceive purchasers and thus derive a benefit from another's name and reputation, but rather to avail oneself of a design which is attractive and desirable, a case of unfair competition is not made out." West Point Mfg. v. Detroit Stamping Co., 222 F.2d 581, 586 (6th Cir.) (emphasis added), cert. denied, 350 U.S. 840 (1955). This passage properly notes that the statute is triggered when a copier attempts to "palm off" his replica as an original. In other words, the protection afforded by the Lanham Act is primarily to potential purchasers. The protection accruing to a producer is derivative of and only incidental to this primary protection: a producer can market his goods with the assurance that another may not market a replica in a manner that will allow potential purchasers to associate the replica with the producer of the original. Unfortunately, the majority merely pays lip service to this fundamental tenet in its application of the eight-factor test.

[29] The majority never clearly defines the target group that is likely to be confused. Although West Point counsels that purchasers must be deceived, the majority concludes that the target group is the "public." The majority errs to the extent that its analysis shifts from potential purchasers to the broader more indefinite group of the "public."

[30] The eight-factor test contemplates that the target group is comprised of potential purchasers. For example, the importance of one factor-evidence of actual confusion-is determined by the kinds of persons confused and degree of confusion. "Short-lived confusion or confusion of individuals casually acquainted with a business is worthy of little weight . . . ." Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1110 (6th Cir. 1991) (quoting Safeway Stores, Inc. v. Safeway Discount Drugs, Inc., 675 F.2d 1160, 1167 (11th Cir. 1982)). Two other factors obviously refer to potential purchasers: the marketing channels used and the likely degree of purchaser care and sophistication. Thus, three of the eight factors expressly focus on the likelihood of confusion as to potential purchasers.

[31] Other courts have made clear that section 43(a) is concerned with the welfare of potential purchasers in the marketplace. See Kwik-Site, 758 F.2d at 178 (referring to "intending purchasers" when discussing likelihood of confusion); see also Coach Leatherware Co. v. AnnTaylor, Inc., 933 F.2d 162, 168 (2d Cir. 1991) (stating that plaintiff must prove that "purchasers are likely to confuse the imitating goods with the originals"); West Point, 222 F.2d at 592 (referring to "purchasers exercising ordinary care to discover whose products they are buying . . . ." (quoting Reynolds & Reynolds Co. v. Norick, 114 F.2d 278 (10th Cir. 1940))).

[32] Plaintiff's replicas are not likely to confuse potential purchasers. Plaintiff's vehicles display an "R" on the parking lenses and vent windows. No symbols or logos affiliated with Ferrari are displayed. Roberts informs all purchasers that his product is not affiliated with Ferrari. In light of these distinctions, and the high degree of customer care and sophistication that normally accompanies such a purchase-defendant's vehicles at issue sell for a minimum of $230,000, as well as the distinctly different marketing channels employed by the parties, I find the evidence insufficient to prove a likelihood of confusion by potential purchasers in the marketplace.

[33] To be sure, some courts have expanded the application of the likelihood of confusion test to include individuals other than point-of-sale purchasers. These courts have included potential purchasers who may contemplate a purchase in the future, reasoning that in the pre-sale context an "observer would identify the [product] [34] In applying the test in this manner, these courts appear to recognize that the deception of a consumer under these circumstances could dissuade such a consumer from choosing to buy a particular product, thereby foreclosing the possibility of point-of-sale confusion but nevertheless injuring the consumer based on this confusion. The injury stems from the consumer's erroneous conclusion that the "original" product is poor quality based on his perception of a replica that he thinks is the original. These cases protect a potential purchaser against confusion as to the source of a particular product. Hence, even when expanding the scope of this test, these courts did not lose sight of the focus of section 43(a): the potential purchaser. The majority applies the likelihood of confusion test in a manner which departs from this focus.

[35] The cases which have expanded the scope of the target group are distinguishable from the instant case, however. In Rolex, the counterfeit watches were labelled "ROLEX" on their face. Similarly, the Mastercrafters court found that the clock was labelled in a manner that was not likely to come to the attention of an individual. It is also noteworthy that the Second Circuit has limited Mastercrafters "by pointing out that '[i]n that case there was abundant evidence of actual confusion, palming off and an intent to deceive.'" Bose Corp. v. Linear Design Labs, Inc., 467 F.2d 304, 310 n. 8 (2d Cir. 1972) (quoting Norwich Pharmacal Co. v. Sterling Drug, Inc., 271 F.2d 569 (2d Cir. 1959), cert. denied, 362 U.S. 919 (1960)). No evidence was introduced in the instant case to show actual confusion, palming off or an intent to deceive and, as previously noted, plaintiff does not use any name or logo affiliated with Ferrari on its replicas.

[36] Further, these cases conclude that the proper remedy is to require identification of the source of the replica, not prohibit copying of the product. See West Point, 222 F.2d at 589 (stating that under such circumstances "the only obligation of the copier is to identify its product lest the public be mistaken into believing that it was made by the prior patentee"); see also Coach Leatherware, 933 F.2d at 173 (Winter, J., dissenting in part) (stating that "[a copier] thus has every right to copy [a product] so long as consumers know they are buying [the copied product]"). Accordingly, even if I were to conclude that plaintiff's copies created confusion in the pre-sale context, I would tailor the remedy to protect only against such confusion; this would best be accomplished through adequate labelling. The majority's remedy goes well beyond protection of consumers against confusion as to a product's source. It protects the design itself from being copied. See supra at 1239.

[37] In sum, the relevant focus of the eight-factor test should be upon potential purchasers in the marketplace. Plaintiff's replicas present no likelihood of confusion because plaintiff provides adequate labelling so as to prevent potential purchasers, whether in the pre-sale or point-of-sale context, from confusing its replicas with Ferrari's automobiles. The majority errs by expanding the target group to include the "public," an expansion unsupported by the language and purpose of the Lanham Act. To the extent that the majority expands the target group, the test increasingly protects the design from replication and the producer from dilution, rather than the potential purchaser from confusion. 1 [38] The majority does more than implicitly recognize a dilution cause of action by its misapplication of the eight-factor test; it expressly reads such a cause of action into the statute. To justify this interpretation, the majority points out that Congress deleted the word "purchasers" from the statutory language in 1967 {recte 1962}. According to the majority, this congressional act demonstrates that Congress intended "to protect against the cheapening and dilution of the genuine product, and to protect the manufacturer's reputation." I fail to see how this one congressional act leads to such a conclusion.

[39] As an initial matter, the majority's method of reasoning should compel it to reach a different conclusion. In 1989, Congress specifically considered and rejected adding an antidilution provision to the Lanham Act. 2 This action, it can be asserted, demonstrates that Congress does not now consider the protection of the Lanham Act to encompass injuries to a manufacturer based on dilution. The majority cannot look to one action of Congress to bolster its position, but ignore other actions which undercut its position.

[40] More importantly, the language of the Lanham Act does not afford such protection to producers of goods. As noted in the previous section, the Lanham Act's protection runs to relevant consumers in the marketplace; its protection to producers is incidental to this primary protection. Requiring adequate labelling ensures that a producer will not have the 1 I also note that the survey relied upon by the majority to prove a likelihood of confusion is fatally flawed. Generally, "[i]n assessing the likelihood of confusion, a court's concern is 'the performance of the marks in the commercial context.'" Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1106 (6th Cir. 1991) (quoting Frisch's Restaurants, Inc. v. Shoney's, Inc., 759 F.2d 1261, 1266 (6th Cir. 1985)). "It is the overall impression of the mark, not an individual feature, that counts." Id. at 1109. Applied to the instant case, this means that the analysis must be based on the products as they appear in the marketplace. The ultimate question is "whether relevant consumers are likely to believe that the products or services offered by the parties are affiliated in some way." Id. at 1107. The survey lacks any probative value on the issue of consumer confusion because of the manner in which it was conducted. The survey was conducted by showing photographs of Ferrari's cars and Roberts' replicas stripped of their identifying badges. By conducting the survey in this manner, no assessment could be made of the likelihood of confusion in the "commercial context." Purchasers of plaintiff's cars are not purchasing from photographs. Accordingly, the survey is meaningless as to the likelihood of confusion. 2 The most recent amendment to the Lanham Act, the Trademark Law Revision Act of 1988, Pub.L. No. 100-667, 102 Stat. 3935 (1988) (effective Nov. 16, 1989), as originally introduced in both houses of Congress, permitted separate causes of action for dilution, disparagement and tarnishment. All of these provisions were deleted from the legislation which eventually was enacted. House Rep. 100-1028 (Oct. 3, 1988), reprinted in United States Trademark Ass'n, The Trademark Law Revision Act of 1988, The Legislative History, Reports, Testimony, and Annotated Statutory Text 277, 278 (1989); Cong.Rec. H10411, H10421 (Oct. 19, 1988). {As Part II.C discusses, Congress eventually created Lanham Act § 43(c) in 1995 to provide for federal antidilution protection and amended § 43(c) in 2006.} poor quality of a replica imputed to its product by a confused potential purchaser. This is the only benefit accruing to a producer. Trademark dilution is not a cause of action under the Lanham Act. See Eveready Battery Co. v. Adolph Coors Co., 765 F.Supp. 440 (N.D.Ill. 1991). . . . .

1. Are the Ferrari exterior designs functional? The district court found that they were not and the Sixth Circuit affirmed:

The district court found that Ferrari proved, by a preponderance of the evidence, that the exterior shapes and features of the Daytona Spyder and Testarossa were nonfunctional. The court based this conclusion on the uncontroverted testimony of Angelo Bellei, who developed Ferrari's grand touring cars from 1964-75, that the company chose the exterior designs for beauty and distinctiveness, not utility.

Ferrari S.P.A., 944 at 1246. Does this strike you as an adequate consideration of the issue?

Consider a quick example of a claim of "reverse confusion." In Dreamwerks Production, Inc. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1998), the plaintiff had been using the mark DREAMWERKS since 1984 in connection with services for organizing science fiction conventions in the Northeast and Midwest of the U.S. In 1994, Steven Spielberg, Jeffrey Katzenberg and David Geffen established the massive Hollywood studio known as DreamWorks SKG. The plaintiff sued for "reverse confusion." It argued that consumers would now believe that the plaintiff's services somehow originated in the defendant. In the Dreamwerks case, the Ninth Circuit reversed the district court's summary judgment in favor of the defendant and held that the matter should go to trial. The court observed: "Dreamwerks notes that whatever goodwill it has built now rests in the hands of DreamWorks; if the latter should take a major misstep and tarnish its reputation with the public, Dreamwerks too would be pulled down." Id. at 1130. The case eventually settled.

In many typical "forward confusion" cases, such as in the Virgin Wireless case above, the senior user of the mark is a much larger company than the junior user of the mark. Thus, the senior Goliath claims that the junior David's use of the mark will likely confuse consumers into believing that the junior's goods are coming from the senior user, the company with which consumers are much more familiar. By contrast, reverse confusion typically involves a situation in which the senior user of the mark is a small company and the junior user is an enormous company with the resources to extensively advertise its use of the mark. The risk is that the meaning of the senior David's mark will be overwhelmed by the junior Goliath's use, so that consumers will believe that the senior user's goods are coming from the junior user. This was exactly the claim the plaintiff made in the following opinion, Wreal, LLC v. Amazon.com, Inc.

Note, importantly, how certain of the factors in the multifactor test for the likelihood of consumer confusion change in a reverse confusion analysis. (And incidentally, do you agree with the court's treatment of the plaintiff's evidence of actual confusion?) Wreal, LLC v. Amazon.com, Inc. 38 F.4th 114 (11th Cir. 2022) Lagoa, Circuit Judge: [1] This appeal asks us to address the doctrine of reverse-confusion trademark infringement. Reverse confusion is not a standalone claim in trademark law; rather, it is a theory of how trademark infringement can occur. In reverse-confusion cases, the plaintiff is usually a commercially smaller, but more senior, user of the mark at issue. The defendant tends to be a commercially larger, but more junior, user of the mark. The plaintiff thus does not argue that the defendant is using the mark to profit off plaintiff's goodwill; instead, the plaintiff brings suit because of the fear that consumers are associating the plaintiff's mark with the defendant's corporate identity. It is this false association and loss of product control that constitutes the harm in reverse-confusion cases. [2] In this case, the plaintiff is Wreal, LLC, a Miami-based pornography company, which has been using the mark "FyreTV" in commerce since 2008. The defendant is Amazon.com, Inc., the largest online purveyor of goods and services in the United States, which has been using the mark "Fire TV" (or "fireTV") in commerce since 2012. Wreal does not claim that Amazon, by using the "Fire TV" mark, is attempting to profit off Wreal's good name, as would be typical in a forward-confusion case. Instead, Wreal contends that Amazon's allegedly similar mark is causing consumers to associate its mark-"FyreTV"-with Amazon.

[3] The resolution of this appeal turns on the likelihood of confusing Amazon's "Fire TV" with Wreal's "FyreTV." In forward-confusion cases, we determine likelihood of confusion by applying a well-established seven-factor test. See Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1360 (11th Cir. 2007). Applying those seven factors, the district court found that consumers were unlikely to confuse "Fire TV" with "FyreTV" and granted summary judgment to Amazon on Wreal's trademark infringement claims. [4] We have not had the opportunity to delineate how this seven-factor test applies in reverse-confusion cases. As discussed below, there are several important differences in how the seven likelihood-of-confusion factors apply in reverse-confusion cases versus forwardconfusion cases. When applied specifically to the issues presented here, we conclude that the district court erred in granting summary judgment and should have allowed the case to proceed to trial. We therefore reverse the district court's order.

A. Wreal, LLC, and FyreTV [5] Wreal is a "Miami-based technology company that was formed in 2006 with the goal of developing a platform for streaming [pornographic] video content over the internet." Wreal, LLC, v. Amazon.com, Inc. (Wreal I), 840 F.3d 1244, 1246 (11th Cir. 2016). In 2007, Wreal launched "FyreTV," an online streaming service that Wreal markets as the "Netflix of Porn," "The Ultimate Adult Video On Demand Experience," and a "porn pay per view service." That same year, Wreal began using in commerce the marks "FyreTV" and "FyreTV.com"foot_9 the latter of which represents the website where users can access the FyreTV service. See id. In order to access the FyreTV service, potential consumers must first go to FyreTV.com to sign up for an account. Once on the website, potential consumers must first verify they are at least eighteen years old and interested in viewing adult content before accessing the homepage, which displays several rows of pornographic images. [6] In order to make accessing its FyreTV service easier, Wreal also sells a set-top box, 2 called the FyreBoXXX, which allows consumers to access FyreTV on their television sets. To purchase a FyreBoXXX, a potential consumer must first travel to the FyreTV.com site and set up an account. In fact, the FyreBoXXX has never been sold in any store or website save for the online store at FyreTV.com. Between October 2012 and April 2014, Wreal suspended sales of the FyreBoXXX on its website. Indeed, by the end of 2012, Wreal had suspended all forms of print, radio, trade show, and television advertising for either the FyreBoXXX or FyreTV-Wreal's only two products. As of today, Wreal advertises its products only on other adult websites.

[7] Apart from the FyreBoXXX and FyreTV.com, Wreal's customers also have other methods available to access the FyreTV service. For example, both Apple TV and Roku-two commercial set-top boxes that offer a host of general interest channels and media-support FyreTV. Thus, after signing up for an account at FyreTV.com, Wreal's customers can watch its content from their television set through a computer, a smartphone, a FyreBoXXX, an Apple TV, or a Roku.

[8] Amazon is the largest online purveyor of goods in the United States. In 2011, Amazon "started using the mark 'Fire' in connection with its Kindle tablets . . . to highlight the new model's ability to stream video over the internet." Id. at 1247. In late 2012 and early 2013, Amazon was gearing up to launch several new products, including a phone, a new tablet, and a set-top box. Id. It decided to use the "Fire" brand, as well as its housemark, "amazon," on these products, with the set-top box being called "fireTV." 3 Id. During its branding discussions for the set-top box, Amazon learned about Wreal and its FyreTV products, but it never contacted Wreal about the set-top box's name and decided to use the "Fire" mark without Wreal's knowledge. Id.

[9] Amazon launched fireTV in April 2014 with a nationwide advertising campaign covered by major magazines and television networks. The fireTV is a streaming-only set-top box; it does not contain a DVD tray and cannot play DVDs. Amazon markets the product as a set-top box for general interest content, including "instant access to Netflix, Prime Instant Video, WatchESPN," and more. It is not marketed as a device for streaming pornography. Amazon advertises the device on amazon.com, as well as on television, in print media, and using in-store displays at retailers like Best Buy and Staples. When Amazon began its searchengine-optimization efforts (to help fireTV appear on the internet), it bought ads for keywords related to fireTV, but not for FyreTV or anything related to pornography. Oftenbut not always-Amazon will market its "Fire" products with its housemark, "amazon." In the graphics and advertisements for the device, the device is sometimes referred to as one word, i.e., "fireTV," and sometimes it appears as two words, i.e., "Fire TV."

[10] Amazon's fireTV does not broadcast any hardcore pornographic material. 4 But the fireTV does have apps for Showtime and HBO GO, and both of those content providers broadcast softcore pornography as part of their after-hours programming. It is unclear, however, whether those providers had any such material on their apps that link to fireTV at the time of the lawsuit. [11] It is undisputed that Amazon's policies for Amazon Prime Instant Video, which is Amazon's own streaming service and streams on the fireTV, prohibit the sale and consumption of hardcore pornography on the set-top box. However, the record evidence suggests that hardcore pornographic DVDs are available for purchase on amazon.com. The record evidence also suggests that two films with highly suggestive names were available for streaming on the fireTV through Amazon Prime Instant Video, though the record does not establish whether those films would be categorized as hardcore or softcore pornography.

[12] Moreover, Amazon does not advertise the fireTV on any pornographic websites and, as such, there is no overlap between the marketing schemes for FyreTV and fireTV. Nor does Amazon sell the fireTV on any pornographic websites. Thus, there is no overlap of the sales outlets utilized by Amazon and Wreal.

[13] In order to prevail on its trademark claims, Wreal must show a "likelihood of confusion." Forman, 509 F.3d at 1360. We therefore summarize the record evidence relevant to this issue, as presented by Wreal at the preliminary injunction hearing and by both parties as part of their summary judgment briefing. Below are screenshots of the marks at issue as they appear in internet advertising for the set-top boxes:

[14] As noted above, the two products are neither advertised nor sold in the same outlets. A consumer cannot buy a fireTV at the same place where he could buy a FyreTV, and vice versa. Thus, no consumer will come across the products or marks in the same locationwhether over the internet or in person at a brick-and-mortar location-save for an internet search engine like google.com. Additionally, Wreal's own evidence supports the proposition that mine-run internet consumers would not confuse Amazon's amazon.com website with Wreal's FyreTV.com website.

[15] Over the course of the litigation, both Wreal and Amazon sought to present evidence relevant to the issue of actual consumer confusion. Amazon, for its part, produced in discovery "tens of thousands" of customer service inquiries related to the fireTV. In one of those inquiries, an Amazon customer asked whether he could access adult content on the Amazon "fyreTV." 6 Wreal points to record evidence showing a number of customer service inquiries it received in which customers asked Wreal if the FyreTV streaming service would be available on Amazon's fireTV set-top box. Significantly, Wreal also produced in discovery a tweet directed to Wreal's Twitter account in which the sender asked, "Did you guys just merge with Amazon?"

[16] Both parties also presented expert testimony regarding the level of confusion between the marks-Wreal at the preliminary injunction hearing and Amazon at the summary judgment stage. Amazon's expert, Dr. Dan Sarel, conducted a consumer survey that showed a "confusion rate of one percent," which he described as "statistically insignificant" and "nonexistent." That conclusion was bolstered by Wreal's own expert-Dr. Thomas Maronick-who conducted his own consumer surveys in April 2014 and testified at the preliminary injunction hearing that he found "very low" levels of consumer confusion. 7

[17] Wreal filed this lawsuit against Amazon about two weeks after the fireTV's product launch. In its complaint, Wreal sought treble damages and injunctive relief for reverseconfusion trademark infringement under the Lanham Act, the Florida Deceptive and Unfair Trade Practices Act, and Florida common law. 8 Five months after filing suit, Wreal moved for a preliminary injunction, which the district court referred to the magistrate judge and ultimately denied. We affirmed that denial. See Wreal I, 840 F.3d at 1246.

[18] After the close of discovery, Amazon moved for summary judgment. The district court again referred the motion to the magistrate judge for a report and recommendation, and the magistrate judge recommended granting the motion. Over Wreal's objections, the district court adopted the report and recommendation and granted summary judgment to Amazon. Wreal then timely appealed. . . . . (and, by adoption, the district court) did not believe that the sender was confused. Credibility determinations like this, however, are inappropriate at the summary judgment stage. . . . Here, for example, a reasonable juror could view the same evidence and come to the opposite conclusion reached by the magistrate judge and the district court. Because this credibility determination improperly invaded the province of the jury, it must be disregarded. 7 Wreal complains about both studies, arguing that the Amazon study was conducted too early to be relevant to the issue of consumer confusion and that its own study was conducted for a separate purpose altogether. Absence of evidence for a proposition, however, is not affirmative evidence to the contrary. And the only survey evidence available to us is not in dispute-both surveys show that there was no consumer confusion. Nevertheless, we accord this evidence relatively little weight, as "[t]his Circuit . . . has moved away from relying on survey evidence" in trademark cases. Frehling Enters., Inc. v. Int'l Select Grp., Inc., 192 F.3d 1330, 1341 n.5 (11th Cir. 1999). [19] Wreal argues that Amazon's use of the mark fireTV infringed its trademark FyreTV under a reverse-confusion theory-the resolution of which boils down to the likelihood of confusion between the two marks. . . . .

[20] In order to resolve this appeal, we must determine how these seven likelihood-ofconfusion factors {from Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1360 (11th Cir. 2007)} apply in the context of reverse-confusion trademark infringement. The "paradigm case [of reverse confusion] is that of a knowing junior user with much greater economic power who saturates the market with advertising of a confusingly similar mark, overwhelming the marketplace power and value of the senior user's mark." 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:10 (5th ed.); see also Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 957 (7th Cir. 1992) ("Reverse confusion occurs when a large junior user saturates the market with a trademark similar or identical to that of a smaller, senior user. In such a case, the junior user does not seek to profit from the good will associated with the senior user's mark.") Because both the harm and the theory of infringement in a reverse-confusion case differ from what is claimed in a forward-confusion case, the analysis and application of the seven likelihood-of-confusion factors differ as well.

[21] In a reverse-confusion case, the harms that can occur are varied. For example, consumers may come to believe the smaller, senior user of the mark is itself a trademark infringer, see Banff, Ltd. v. Federated Dep't Stores, Inc., 841 F.2d 486, 490 (2d Cir. 1988), or that the defendant's use of the mark diminishes the value of the plaintiff's mark as a source indicator, see Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270, 301-02 (3d Cir. 2001). As our sister court, the Sixth Circuit has stated in a reverse confusion case:

[t]he public comes to assume the senior user's products are really the junior user's or that the former has become somehow connected to the latter. 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. goodwill and reputation. And here, the district court did assess the conceptual strength of Wreal's "FyreTV" mark and found it distinctive and strong.

[24] But in a reverse-confusion case, the plaintiff is not arguing that the defendant is attempting to profit off the plaintiff's goodwill. Rather, the plaintiff asserts that the defendant-the junior but more powerful mark user-has been able to commercially overwhelm the market and saturate the public conscience with its own use of the mark, thereby weakening and diminishing the value of the senior user's mark. See, e.g., Checkpoint Sys., 269 F.3d at 302-03. Thus, in this situation, the conceptual strength of the plaintiff's mark is necessarily less important to the analysis. See Com. Nat'l Ins. Servs., Inc. v. Com. Ins. Agency, Inc., 214 F.3d 432, 444 (3d Cir. 2000) (noting that "it is the strength of the larger, junior user's mark which results in reverse confusion"). Accordingly, when assessing the distinctiveness of the mark in a reverse-confusion case, the district court should consider both the conceptual strength of the plaintiff's mark and the relative commercial strength of the defendant's mark. See . . . A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 231 (3d Cir. 2000) (noting that a plaintiff is more likely to succeed when "pitted against a defendant with a far stronger mark" in reverse confusion cases); Checkpoint Sys., 269 F.3d at 303 ("But in a reverse confusion situation, the senior user's claim may be strengthened by a showing that the junior user's mark is commercially relatively strong. The greater relative strength of the junior mark allows the junior user to 'overwhelm' the marketplace, diminishing the value of the senior user's mark."). . . .

[25] Here, the district court did not consider the commercial strength of Amazon's mark because it found that Wreal waived the argument by failing to raise it in its response to Amazon's motion for summary judgment and instead raised it for the first time in its objections to the magistrate judge's report and recommendation. 12 The district court erred in that finding. At the summary judgement stage, it was Amazon's burden, as the movant, to show that it was entitled to judgment as a matter of law, and the parties cannot "waive the application of the correct law or stipulate to an incorrect legal test." Jefferson v. Sewon Am., Inc., 891 F.3d 911, 923 (11th Cir. 2018).

[26] The commercial strength of Amazon's mark is manifest and appears in the record. Amazon admitted in its answer that the fireTV was launched with a major advertising campaign, was covered by major magazines and television networks, and that it was a bestseller. Amazon also admits that it advertises the fireTV in multiple brick-and-mortar locations, as well as on amazon.com, one of the most visited online shopping sites in the United States. In short, Amazon's overwhelming commercial success with the fireTV mark, coupled with the conceptual strength of Wreal's mark, pushes this factor firmly in Wreal's favor.

[27] The similarity-of-the-marks analysis is, with one exception related to housemarks noted below, the same in both forward-confusion and reverse-confusion cases. We compare "the marks and consider[ ] the overall impressions that the marks create, including the sound, appearance, and manner in which they are used." Frehling, 192 F.3d at 1337. In doing so, we determine similarity based on "the total effect of the designation, rather than on a comparison of individual features." Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 260-61 (5th Cir. 1980). . . . Similarity in any of these elements-appearance, sound, connotation, and commercial impression-may be sufficient to find the marks similar. See Stone Lion Cap. Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 1321 (Fed. Cir. 2014).

[28] The district court concluded that the marks at issue-fireTV and FyreTV-were not similar. It reached this conclusion mainly by focusing on the fact that the marks were spelled differently and used different fonts, as well as the fact that they were used differently in commerce. The district court also noted that one of Wreal's experts, Dr. Linda Williams, testified that visitors to FyreTV.com would not confuse it with amazon.com. The inquiry under this factor, however, is the similarity of the marks, not the similarity of the services or the similarity of the sales methods-each of which has their own factor and should thus be considered separately.

[29] When the focus is on the similarity of the marks themselves, the result is clear-FyreTV and fireTV are nearly identical. "Fire" is the first and only dominant word in both marks, and it is presented in a phonetically and connotatively identical fashion. It is also an abstract term, and thus the only term in either mark that gives the mark meaning. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1372 (Fed. Cir. 2005) (finding similarity between "VEUVE ROYALE" and "VEUVE CLICQUOT" because "VEUVE . . . remains a 'prominent feature' as the first word in the mark and the first word to appear on the label"); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876 (Fed Cir. 1992) (finding similarity between "CENTURY 21" and "CENTURY LIFE OF AMERICA" in part because "consumers must first notice th[e] identical lead word"). . . . By contrast, the secondary word in the marks-"TV"-is merely descriptive of or generic for the goods and services sold-i.e., streaming services. See Frehling, 192 F.3d at 1337 (noting that "a mark may be surrounded by additional words of lesser importance and not have its strength diluted").

[30] Moreover, the marks need not be identical, as the "purpose in considering the similarity of marks as an indicator of likelihood of confusion is that the closer the marks are, the more likely reasonable consumers will mistake the source of the product that each mark represents." Id. Thus, while "Fyre" and "fire" are spelled differently, and one is capitalized, the words have the same connotation and pronunciation, and the differences in font, color, and capitalization are not dispositive.

[31] The Ninth Circuit's decision in Dreamwerks Production Group, Inc. v. SKG Studio, 142 F.3d 1127, 1130 (9th Cir. 1998) is instructive on this point. In that case, the court had to assess the similarity of the marks "Dreamwerks" and "DreamWorks," which, like the marks at issue here, utilized different spellings and capitalization. Id. The Ninth Circuit concluded that the marks were similar, noting the obvious "perfect similarity of sound" and "similarity of meaning" while determining that even the similarity of sight also weighed in favor of a finding of similarity, as consumers "might shrug off the difference [in spelling and capitalization] as an intentional modification." Id. at 1131. Our decision in Frehling is also instructive. There, we said that the marks "BELL' OGGETTI" and "Tavola Collection by OGGETTI" were similar because the presence of the dominant and protected "OGGETTI" in both was likely to be confusing. Frehling, 192 F.3d at 1337. Each of these conclusions applies here.

[32] Amazon's pervasive use of its "amazon" housemark alongside "fireTV" in advertisements warrants separate discussion. In forward-confusion cases-where a commercially superior plaintiff with a strong conceptual mark sues a defendant for attempting to profit off its goodwill-the presence of a housemark is indeed likely to dispel confusion in ordinarily prudent consumers. See, e.g., Custom Mfg., 508 F.3d at 652 n.10. But in reverse-confusion cases, this presumption is reversed; because the harm is false association of the plaintiff's mark with the defendant's corporate identity, the defendant's use of a housemark alongside the mark is more likely to cause confusion. See, e.g., A & H Sportswear, 237 F.3d at 230 (noting that there is a "possibility that the [housemark] will aggravate, rather than mitigate, reverse confusion, by reinforcing the association of the [trademark] exclusively with [the housemark]") (emphasis added); Attrezzi, LLC v. Maytag Corp., 436 F.3d 32, 39 (1st Cir. 2006) ("Yet since the alleged harm is reverse confusion, to the extent [the defendant's housemark] is itself the more recognized label the linkage could actually aggravate the threat to [the plaintiff].") . . .

[33] Amazon's use of its housemark alongside advertisements for the "fireTV" does exactly what one might expect it to do: it causes consumers to associate Amazon with fireTV. Because this is a reverse-confusion case asserting that Amazon's use of fireTV causes consumers to associate FyreTV with Amazon instead of Wreal, Amazon's use of the housemark supports Wreal's theory of recovery. The district court erred in concluding otherwise.

[34] In short, the parties' marks are nearly identical. Both use the same words, are pronounced the same, and have the same meaning. While they are spelled slightly differently and use different fonts, this is not enough to conclude that the marks are dissimilar. Moreover, Amazon's pervasive use of its housemark alongside "fireTV" pushes this factor even further in favor of Wreal, as it is likely to confuse consumers into believing that Amazon is the origin of the FyreTV mark. Thus, the similarity-of-the-marks factor weighs heavily in favor of Wreal.

[35] The analysis of this factor is the same regardless of the theory of confusion, and "requires a determination as to whether the products are the kind that the public attributes to a single source, not whether or not the purchasing public can readily distinguish between the products of the respective parties." Frehling, 192 F.3d at 1338 . . . . In reverse-confusion cases, it also is relevant to ask whether consumers might expect the defendant to "bridge the gap" and enter the plaintiff's market. See Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 480 (3d Cir. 1994).

[36] Here, many pieces of record evidence are relevant to the question of whether the fireTV set-top box is similar to the FyreBoXXX. The record evidence presented in the district court established that consumers were already able to stream softcore pornography on Amazon's fireTV through content providers like HBO GO and Showtime. The record evidence also established that Amazon Prime Instant Video-Amazon's own streaming service, which, like HBO GO and Showtime, is available on the fireTV-offered consumers softcore pornography. And the record evidence also established that: (1) Amazon already offered the sale of hardcore pornographic DVDs and magazines on its related consumer website, amazon.com; (2) the parties' devices are visually similar-both are plain black set-top boxes that come with a small remote; and (3) direct competitors in the mainstream settop box market-Roku and Apple TV-already provided access to hardcore pornography, including FyreTV.

[37] The question therefore is whether this record evidence would suggest to an ordinarily prudent consumer that a do-it-all giant like Amazon-which already sells a set-top box that streams softcore pornography and which competes against other set-top boxes that stream hardcore pornography-would "bridge the gap" to hardcore pornography streaming and release a set-top box that streams exclusively pornographic content. We answer that question in the affirmative. Amazon is a company that already sells hardcore pornography on its website and offers softcore pornography on its set-top box. And it competes in a market in which its direct competitors offer hardcore pornography streaming directly on their settop boxes. Given this information, a reasonable juror could conclude that Amazon decided to "bridge the gap" and offer a standalone set-top box dedicated to streaming hardcore pornography. See id. The two products at issue therefore "are the kind the public attributes to a single source." E. Remy Martin, 756 F.2d at 1530.

[38] Our caselaw provides ample support for this conclusion. In E. Remy Martin, a trademark dispute between a wine company and a liquor company, this Court concluded that cognac and brandy-the products sold by the liquor company-were distilled from wine and that, as a result, it was "quite likely that, even assuming a sophisticated consumer from the drinking world, such a consumer could easily conclude that [the liquor company] had undertaken the production and sale of wine and that its name and goodwill therefore attached to [the wine company's] product." 756 F.2d at 1530. . . .

[39] Decisions from our sister circuits in reverse-confusion cases lend further support to our conclusion here. In Attrezzi, the First Circuit held that the products of two "small electric appliance" manufacturers were similar even though one manufacturer also used the mark on its gourmet foods and dinnerware. 436 F.3d at 39. In Dreamwerks, the Ninth Circuit concluded that a movie studio and a convention holder had similar products because it would not be unreasonable for consumers to presume that the production company behind Star Trek decided to bridge the gap to convention holding and had begun to host Star Trek conventions. See 142 F.3d at 1131 ("[M]ovies and sci-fi merchandise are now as complementary as baseball and hot dogs. The main products sold at Dreamwerks conventions are movie and TV collectibles and memorabilia; the lectures, previews and appearances by actors which attract customers to Dreamwerks conventions are all dependent, in one way or another, on the output of entertainment giants like DreamWorks.").

[40] Here, as in E. Remy Martin and Dreamwerks, a reasonable juror could conclude that Amazon was likely to market and sell a product like Wreal's. Indeed, to see a do-it-all giant like Amazon enter the pornographic streaming industry requires no more of an inferential leap than seeing a movie studio begin holding public conventions (as in Dreamwerks) or a liquor company begin selling wine (as in E. Remy Martin). Amazon already offers at least some softcore pornography on its streaming services and competes with other general-interest settop boxes that offer hardcore pornography content on theirs, including the FyreTV streaming service at issue here. Amazon also sells hardcore pornographic materials on its website. It would not be unreasonable for a reasonable consumer to see FyreTV and think Amazon was the source.

[41] Finally, we note that "the more similar the marks are, the less necessary it is that the products themselves be very similar to create confusion." Attrezzi, 436 F.3d at 39. Accordingly, we conclude that this factor favors Wreal.

D. Similarity of Sales Outlets and Customer Bases

[42] As for the "similarity of sales outlets" factor, we have held:

This factor takes into consideration where, how, and to whom the parties' products are sold. Direct competition between the parties is not required for this factor to weigh in favor of a likelihood of confusion, though evidence that the products are sold in the same stores is certainly strong. The parties' outlets and customer bases need not be identical, but some degree of overlap should be present.

Frehling, 192 F.3d at 1339 (citations omitted). The analysis of this factor is the same in forward-confusion and reverse-confusion cases.

[43] Here, the district court concluded that the "similarity of sales outlets" factor weighs in favor of Amazon. Amazon's fireTV is available everywhere-on multiple internet sites and in brick-and-mortar locations around the world. Wreal's FyreTV, on the other hand, is available in only one place and can only be purchased one way-a consumer must make his way to FyreTV.com, navigate through an eighteen-year-olds-only banner, certify that he is interested in purchasing pornography, and find the product on the website. And crucially, Amazon's fireTV is unavailable on FyreTV.com. Both where the products are sold and how the products are sold are thus different. Only to whom the products are sold is arguably similar, as the record evidence shows that both companies target twenty-to fifty-year-old men with disposable income. The difference, however, is that Wreal targets only individuals who "are interested in purchasing pornography"-a uniquely identifiable subset of Amazon's customer base. Cf. Amstar, 615 F.2d at 262 (noting that Domino Sugar and Domino's Pizza had different sales outlets and customer bases because they were distributed through different outlets despite the fact both were "in the restaurant business"). We therefore conclude that this factor favors Amazon.

[44] This similarity of advertising "factor looks to each party's method of advertising." Frehling, 192 F.3d at 1339. "[T]he standard is whether there is likely to be significant enough overlap in the readership of the publications in which the parties advertise that a possibility of confusion could result." Id. at 1340. This inquiry is the same in both forward-and reverseconfusion cases.

[45] There is no dispute in this case that the parties advertise in completely different media. Amazon advertises the fireTV on the amazon.com homepage, on television, in print media, and on in-store displays. Wreal stopped advertising on television and in print in 2012, two years before Amazon launched the fireTV. In fact, at all times relevant to the lawsuit, Wreal advertised the FyreTV and FyreBoXXX only through pornographic websites, social media, and newsletters-i.e., only on the internet or other media dedicated to similarly prurient content.

[46] Wreal nonetheless argues that this factor favors it because, very broadly speaking, both the fireTV and the FyreBoXXX advertise through search engines, word of mouth, and social media. But Wreal presented no record evidence of audience overlap. Nor does Wreal identify any website (outside of search engines like Google) where both the fireTV and the FyreBoXXX are advertised. As we explained in Tana, rejecting a similar argument: "[T]he only similarity in the advertising channels used by the two parties is their maintenance of websites on the World Wide Web. This similarity would dispel rather than cause confusion, however, because the websites are separate and distinct, suggesting two completely unrelated business entities." 611 F.3d at 778; see also Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623, 637 (6th Cir. 2002) (noting that the availability of information about the parties' goods on the internet does not lead to the conclusion that they use the same marketing channels).

[47] We therefore conclude that this factor weighs heavily in Amazon's favor.

[48] In the forward-confusion context, the intent factor asks whether the "defendant adopted [the] plaintiff's mark with the intention of deriving a benefit from the plaintiff's business reputation." Frehling, 192 F.3d at 1340. This is because in forward-confusion cases, "customers mistakenly think that the junior user's goods or services are from the same source as or are connected with the senior user's goods or services." 4 McCarthy, supra, § 23:10. Without precedent pointing in any other direction, the district court understandably applied this test for intent and found that Amazon did not adopt the fireTV mark with any intent to derive a benefit from Wreal's FyreTV mark.

[49] But reverse-confusion cases are different. In this context, the concern is that customers will "purchase the senior user's goods under the mistaken impression that they are getting the goods of the junior user." Id. In other words, that "the junior user's advertising and promotion so swamps the senior user's reputation in the market that customers are likely to be confused into thinking that the senior user's goods are those of the junior user."

Id. In this case, Wreal is not suggesting that Amazon chose the fireTV mark with the intention of siphoning Wreal's goodwill; instead, Wreal claims that, by Amazon's use of the fireTV mark, Wreal has lost control over its own, more senior mark.

[50] Courts have responded to this problem in varying ways. The Seventh Circuit, for example, has eliminated the intent element from its likelihood-of-confusion test in reverseconfusion cases. See Sands, 978 F.2d at 961. The Third Circuit has acknowledged that evidence of intent to infringe is not expected in reverse-confusion cases, but continues to consider such evidence if it exists. See A & H Sportswear, 237 F.3d at 232. And the Tenth Circuit, while similarly discounting the importance of the intent factor in reverse-confusion cases, has continued to apply it in the same manner in both forward-and reverse-confusion cases. See Universal Money Ctrs., Inc. v. Am. Tel. & Tel. Co., 22 F.3d 1527, 1531-32 (10th Cir. 1994). Finally, the Ninth Circuit applies a modified version of the intent factor in reverse-confusion cases, under which indicia of intent may come from a variety of sources: At one extreme, intent could be shown through evidence that a defendant deliberately intended to push the plaintiff out of the market by flooding the market with advertising to create reverse confusion. Intent could also be shown by evidence that, for example, the defendant knew of the mark, should have known of the mark, intended to copy the plaintiff, failed to conduct a reasonably adequate trademark search, or otherwise culpably disregarded the risk of reverse confusion. The tenor of the intent inquiry shifts when considering reverse confusion due to the shift in the theory of confusion, but no specific type of evidence is necessary to establish intent, and the importance of intent and evidence presented will vary by case.

Marketquest Grp., Inc. v. BIC Corp., 862 F.3d 927, 934-35 (9th Cir. 2017) (citations omitted).

[51] We agree with and adopt the Ninth Circuit's approach. Evidence of a specific intent to deceive is not a prerequisite to establish intent in reverse-confusion cases, as it is in forward-confusion cases. Indicia of intent can come from a wide variety of sources, including a more generalized intent to obtain market saturation or to proceed with the adoption of a mark in circumstances where the defendant had constructive knowledge of the plaintiff's mark. The facts of each case will vary, and district courts should accord the intent factor whatever weight it is due under the circumstances.

[52] Here, applying this standard, the evidence of intent is strong. First, Amazon has admitted that, before launching the fireTV, it had actual knowledge of both the FyreBoXXX and Wreal's FyreTV trademark registration. Wreal I, 840 F.3d at 1247 ("Amazon was aware of Wreal's FyreTV mark when it launched Fire TV but did not contact Wreal before launching Fire TV."). Amazon's Vice President of Marketing further testified in his deposition that Amazon not only chose to proceed with its usage of the fireTV mark after becoming aware of the FyreTV registration, but that his "goal was customers . . . if they search for Amazon Fire TV, if they search for our product I did not want them to first come across a porn site and have that experience." The district court, upon reviewing that testimony, concluded that no reasonable juror could view it and conclude that Amazon had any "bad faith (or other) intent to deceive consumers or drive Wreal out of the market." That conclusion was erroneous. The record evidence established that when Amazon launched the fireTV, it specifically tried to flood the market with advertising in an attempt to lower awareness of Wreal's similarly named mark. We take Amazon at its word, and we therefore conclude that the intent factor weighs heavily in favor of Wreal.

[53] "[E]vidence of actual confusion is the best evidence of a likelihood of confusion." Frehling 192 F.3d at 1340. But the presence of such evidence is obviously not a prerequisite to a finding of likelihood of confusion, as it is one of seven factors considered in the likelihoodof-confusion determination. Id. Indeed, "it is not necessary to show actual confusion. One merely has to show that the likelihood of confusion exists." World Carpets, Inc. v. Dick Littrell's New World Carpets, 438 F.2d 482, 489 (5th Cir. 1971). But in assessing the quantum of actual confusion required for a finding in the plaintiff's favor, even a "very little" amount of actual confusion is highly probative. See id.

[54] "The strength of such evidence depends on 'the number of instances of confusion,' 'the kinds of persons confused' and the 'degree of confusion.'" Sovereign Mil. Hospitaller v. Fla. Priory of the Knights, 809 F.3d 1171, 1189 (11th Cir. 2015). But even more important than the number of persons confused is the type of person confused; our "caselaw makes plain that the consumers of the relevant product or service, especially the mark holder's customers, turn the key." Caliber Auto. Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 936 (11th Cir. 2010). Indeed, we have accorded "substantial weight" to any instances of "evidence that actual customers were confused by the use of a mark as opposed to other categories of people." Aronowitz v. Health-Chem Corp., 513 F.3d 1229, 1240 (11th Cir. 2008).

[55] In reverse-confusion cases, evidence of forward confusion will usually be probative. See Freedom Card, Inc. v. JPMorgan Chase & Co., 432 F.3d 463, 473 (3d Cir. 2005). But even more relevant is direct evidence of reverse confusion-i.e., evidence that consumers of the plaintiff's more senior mark became confused as to its source following the launch of the defendant's more junior mark. See Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 741 (2d Cir. 1994) (noting that, in a reverse-confusion claim, "the relevant issue is whether consumers mistakenly believe that the senior user's products actually originate with the junior user" and that "it is appropriate to survey the senior user's customers"). Survey evidence-while perhaps more accurately described as circumstantial evidence of confusion 16 rather than direct evidence-is, of course, admissible. But because the theory of reverse confusion depends on market saturation by the defendant's mark, a reliable survey "cannot be run in a reverse confusion case prior to the junior user's saturation of the market with its mark because, until that time, consumers have not been exposed to the relatively large advertising 16 and promotion of the junior user that is the hallmark of a reverse confusion case." 4 McCarthy, supra, § 23:10.

[56] The record evidence here contains some evidence of actual confusion. For example, Wreal introduced evidence that one of its customers asked over Twitter, "Did you guys just merge with Amazon?" And one of Amazon's customers communicated with Amazon to ask whether he could access "adult content" on his Amazon "fyre" TV. Both instances directly suggest reverse confusion; the first consumer believed Amazon had purchased Wreal's trademark, and the second consumer contacted Amazon to inquire about Wreal's product.foot_15 But these are the only two true instances of confusion present in the record. 18 [57] Amazon and Wreal both also introduced survey evidence regarding the rate of confusion. Dr. Thomas Maronick, who testified for Wreal at the preliminary injunction hearing, conducted a preliminary survey in April 2014 and found "very low consumer confusion" between FyreTV and fireTV. Dr. Maronick also testified that awareness of the FyreTV mark was "very low." In a similar vein, Dr. Dan Sarel, Amazon's expert, conducted a consumer survey and found a confusion rate of one percent, which he testified was "nonexistent" and "statistically insignificant."

[58] We hesitate to give significant weight to either the specifically identified instances of actual confusion or the surveys. Amazon introduced evidence from an expert witness, Peter Lehman, that tended to suggest that watching pornography is an inherently shameful act, and that consumers of pornography are less likely to report their consumption than consumers of other media. With this testimony in mind, we turn first to the first two instances of actual confusion.

[59] Our caselaw is clear that the "the quantum of evidence needed to show actual confusion is relatively small." Jellibeans, Inc., 716 F.2d at 845. But our caselaw imposes no hard-and-fast rule regarding the number of instances required to prevail. See Caliber Auto. Liquidators, 605 F.3d at 937. "Rather, the court must evaluate the evidence of actual confusion in the light of the totality of the circumstances involved." AmBrit, 812 F.2d at 1543; accord World Carpets, 438 F.2d at 489 (5th Cir. 1971) ("[R]eason tells us that while very little proof of actual confusion would be necessary to prove the likelihood of confusion, an almost overwhelming amount of proof would be necessary to refute such proof.").

[60] Our previous decisions serve as guides. In Safeway Stores, when reviewing a district court's findings following a bench trial, we held that a mere two instances of confusion from relevant consumers was worthy of consideration. 675 F.2d at 1166-67, abrogation recognized on other grounds, PlayNation Play Sys., Inc. v. Velex Corp., 924 F.3d 1159, 1166 (11th Cir. 2019). Additionally, in Caliber Automotive, we stated that two instances of confusion among professional buyers weighed in the plaintiff's favor at the summary judgment stage. 605 F.3d at 937-38. In contrast, in Frehling, when reversing the district court's entry of judgment for the defendant following a bench trial, we concluded that a single instance of actual confusion from a "professional buyer" while "sufficient to raise an inference of actual confusion" was "not sufficiently dispositive so as to favor either side in an appreciable fashion." 192 F.3d at 1341.

[61] Perhaps most analogous are our decisions in AmBrit and PlayNation. In AmBrit as in this case, the relevant products (ice cream novelties there and set-top boxes, here) were sold to the general public, not professional buyers, and had a "high volume of sales" (at least, such is the case for the fireTV here). See 812 F.2d at 1544. The district court in AmBrit, after a bench trial, found that four instances of actual confusion supported a finding of actual confusion in favor of the plaintiff. See id. And we, reviewing for clear error, affirmed. See id. at 1544-45. Similarly, in PlayNation, the products at issue were playground equipment and pullup bars which, like ice cream novelties and set-top boxes, are sold to the general public rather than to professional buyers. See 924 F.3d at 1164. Following a bench trial, the district court found that just two instances of actual confusion-in which the plaintiff's customers contacted the defendant for customer support-were sufficient to support a finding of actual confusion. See id. at 1167. On appeal, we affirmed the ruling. See id. at 1167-68.

[62] As in AmBrit and PlayNation, the reported instances of confusion in this case are relatively few. Even after years of litigation, Wreal is able to identify only two instances of potential or actual Wreal consumers being confused as to the source of its product. But the record also contains expert testimony that consumers of pornography are less likely to report their consumption than consumers of other media. Given that we are obliged to "evaluate the evidence of actual confusion in the light of the totality of the circumstances involved," AmBrit, 812 F.2d at 1543, we find it appropriate here to take that expert testimony into account when considering the number of reported instances of actual confusion. Although a close call, we conclude that the two reported instances of actual confusion here are sufficient to make the issue one of triable fact and thus weighs in Wreal's favor.

[63] Turning to the survey evidence, both parties advance a number of arguments either for or against the consideration of the surveys. But given that we conclude that the instances of actual confusion present in the record are sufficient to push this factor in Wreal's favor, we conclude that it is unnecessary to also address the issue of survey evidence especially as a plaintiff need not present survey evidence in a trademark claim in order to escape summary judgment. See PlayNation, 924 F.3d at 1169 ("Lack of survey evidence does not weigh against the plaintiff when determining likelihood of confusion.") . . . . And, as already noted above, at least in our circuit, survey evidence in trademark actions has always been viewed with a skeptical eye. See Frehling, 192 F.3d at 1341 n.5 ("This Circuit . . . has moved away from relying on survey evidence [in trademark cases]."); Safeway Stores, 675 F.2d at 1167 n.10 (noting that our circuit has "followed the trend of cases in the former Fifth Circuit, in which market surveys have not fared well as evidence in trademark cases").

[64] This case addresses the application of the seven likelihood-of-confusion factors to a reverse-confusion trademark infringement case. Although some of those factors are analyzed and applied in the same way in both reverse-confusion cases and the more familiar forwardconfusion cases, there are important differences in how other factors are analyzed and applied that stem from the fact that the harm and the theory of infringement differ between forward and reverse confusion.

[65] Here, the record evidence establishes that Amazon acquired actual knowledge of Wreal's registered trademark and still launched a product line with a phonetically similar name. The two marks at issue are nearly identical, the commercial strength of Amazon's mark is consistent with Wreal's theory of recovery, the parties' services are the kind that a reasonable consumer could attribute to a single source, and the record establishes that Amazon intended to swamp the market with its advertising campaign. Furthermore, Wreal has identified two consumers who a reasonable juror could conclude were confused by Amazon's chosen mark.

[66] As noted throughout our decision, there is no mechanical formula for applying the seven factors relating to likelihood of confusion. But when considering all seven factors as they apply to a theory of reverse confusion and taking all the circumstances of this case into account on the record before us, we conclude that they weigh heavily in favor of Wreal and that the district court erred when it entered summary judgment in Amazon's favor. We therefore reverse the district court's order. This is not to say that Amazon may not ultimately prevail on the merits; rather, it must do so before a jury.

"Reverse passing off" generally involves situations in which a "defendant falsely takes credit for another's goods or services," MCCARTHY § 25.6. More specifically, reverse passing off occurs when the defendant unauthorizedly passes off as its own product (or service) what was in fact made (or performed) by the plaintiff, perhaps to gain the goodwill that the plaintiff's product might generate for the defendant, perhaps to charge a higher price to unsuspecting consumers, or perhaps simply to meet a production deadline. For example, a defendant who unauthorizedly rebottles (or simply relabels) a plaintiff's shampoo under a new brand name could be liable for reverse passing off. Who does this sort of thing? See, for a recent example, DJ Direct, Inc. v. Margaliot, 512 F. Supp. 3d 396 (E.D.N.Y. 2021), in which the defendant hot glued a metallic "Amasing" label directly over the plaintiff's KARAOKING mark on karaoke machines and then listed those rebranded machines on Amazon:

The court found reverse passing off and granted the plaintiff's motion for a preliminary injunction. Id. at 414-417. Cf. id. at 415 ("Although, as Defendants argue, Plaintiff's supplier manufactured the tangible goods offered for sale in this case, the fact that Plaintiff ordered the machines in question to be built to its specifications and to bear the KaraoKing mark, and that it provided customer service and support through its website, www.karaoking.net, supports the conclusion that Plaintiff commissioned the machines and stood behind their production."). For another example, see Industria de Diseo Textil SA. v. Thiliko LLC, No. 23 Civ. 47 (S.D.N.Y.) (complaint filed Jan. 4, 2023), in which the global fast-fashion retailer Zara sued the defendant Thilikó for, among other things, purchasing Zara's goods, replacing all Zara labelling with defendant's own labelling, and reselling those goods as its own (at significantly higher prices). The defendant also used on its webpage Zara's copyrighted images, as shown below. The court eventually issued a default judgment against the defendant.

Reverse passing off is a very rare cause of action, even more so after the case below, Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003). We consider reverse passing off and the Dastar case because of the profound policy questions implicated by the cause of action and the facts of the Dastar case. It is one thing to provide a reverse passing off cause of action when someone unauthorizedly rebottles or relabels someone else's shampoo without attribution, but what about when someone unauthorizedly restates someone else's ideas or expression without attribution? Should trademark law and specifically the concept of "reverse passing off" provide a cause of action for plagiarism? If not, why should we treat ideas and expression differently? Consider a related problem. One advantage that trademark protection enjoys over copyright or patent protection is that trademark protection is unlimited in time, provided that the trademark owner continue to use the mark in commerce. Thus, when patent or copyright protection of a product feature expires, the patent or copyright owner may continue to exert control over that feature through trademark law (if the feature satisfies the various requirements of trademark protection). This raises significant concerns. For example, Disney owns the Mickey Mouse image mark, whose registration is shown below: At some point, Disney's copyright rights in the countless cartoons in which Mickey Mouse is depicted will begin to expire. See Brooks Barnes, Mickey's Copyright Adventure: Early Disney Creation Will Soon Be Public Property, N.Y. TIMES, Dec. 27, 2022 (discussing the legal aspects of the expiration beginning in 2024 of Disney's copyright rights in Steamboat Willie and subsequent incarnations of Mickey Mouse). But can Disney then use its trademark rights in the image of the character to prevent others from reproducing these cartoons? With copyright law, the public agrees to grant short-term exclusive rights to the author of a work in order to incentivize authorship, but an exceedingly important part of that bargain is that these rights will eventually expire and the work will be dedicated to the public domain, free for anyone to use in any way. Should trademark rights be allowed to trump this basic bargain? As you read through the Dastar opinion, consider whether it resolves the question of whether Disney may continue to assert exclusive rights through trademark law after its copyright rights have expired.

Crusade in Europe series created by Twentieth Century Fox, labeled the resulting product with a different name and marketed it without attribution to Fox[, and] therefore committed a 'bodily appropriation' of Fox's series." Id., at 314. It concluded that "Dastar's 'bodily appropriation' of Fox's original [television] series is sufficient to establish the reverse passing off." Ibid. 2 The court also affirmed the District Court's award under the Lanham Act of twice Dastar's profits. We granted certiorari. 537 U.S. 1099 (2003). II [8] The Lanham Act was intended to make "actionable the deceptive and misleading use of marks," and "to protect persons engaged in . . . . . [9] Thus, as it comes to us, the gravamen of respondents' claim is that, in marketing and selling Campaigns as its own product without acknowledging its nearly wholesale reliance on the Crusade television series, Dastar has made a "false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which . . . is likely to cause confusion . . . as to the origin . . . of his or her goods." § 43(a). That claim would undoubtedly be sustained if Dastar had bought some of New Line's Crusade videotapes and merely repackaged them as its own. Dastar's alleged wrongdoing, however, is vastly different: It took a creative work in the public domain-the Crusade television series-copied it, made modifications (arguably minor), and produced its very own series of videotapes. If "origin" refers only to the manufacturer or producer of the physical "goods" that are made available to the public (in this case the videotapes), Dastar was the origin. If, however, "origin" includes the creator of the underlying work that Dastar copied, then someone else (perhaps Fox) was the origin of Dastar's product. At bottom, we must decide what § 43(a)(1)(A) of the Lanham Act means by the "origin" of "goods." III [10] The dictionary definition of "origin" is "[t]he fact or process of coming into being from a source," and "[t]hat from which anything primarily proceeds; source." Webster's New International Dictionary 1720-1721 (2d ed. 1949). And the dictionary definition of "goods" (as relevant here) is "[w]ares; merchandise." Id., at 1079. We think the most natural understanding of the "origin" of "goods"-the source of wares-is the producer of the tangible product sold in the marketplace, in this case the physical Campaigns videotape sold by Dastar. The concept might be stretched . . . to include not only the actual producer, but also the trademark owner who commissioned or assumed responsibility for ("stood behind") production of the physical product. But as used in the Lanham Act, the phrase "origin of goods" is in our view incapable of connoting the person or entity that originated the ideas or communications that "goods" embody or contain. Such an extension would not only stretch the text, but it would be out of accord with the history and purpose of the Lanham Act and inconsistent with precedent.

[11] Section 43(a) of the Lanham Act prohibits actions like trademark infringement that deceive consumers and impair a producer's goodwill. It forbids, for example, the Coca-Cola Company's passing off its product as Pepsi-Cola or reverse passing off Pepsi-Cola as its product. But the brand-loyal consumer who prefers the drink that the Coca-Cola Company or PepsiCo sells, while he believes that that company produced (or at least stands behind the production of) that product, surely does not necessarily believe that that company was the "origin" of the drink in the sense that it was the very first to devise the formula. The consumer who buys a branded product does not automatically assume that the brand-name company is the same entity that came up with the idea for the product, or designed the product-and typically does not care whether it is. The words of the Lanham Act should not be stretched to cover matters that are typically of no consequence to purchasers. [12] It could be argued, perhaps, that the reality of purchaser concern is different for what might be called a communicative product-one that is valued not primarily for its physical qualities, such as a hammer, but for the intellectual content that it conveys, such as a book or, as here, a video. The purchaser of a novel is interested not merely, if at all, in the identity of the producer of the physical tome (the publisher), but also, and indeed primarily, in the identity of the creator of the story it conveys (the author). And the author, of course, has at least as much interest in avoiding passing off (or reverse passing off) of his creation as does the publisher. For such a communicative product (the argument goes) "origin of goods" in § 43(a) must be deemed to include not merely the producer of the physical item (the publishing house Farrar, Straus and Giroux, or the video producer Dastar) but also the creator of the content that the physical item conveys (the author Tom Wolfe, or-assertedlyrespondents).

[13] The problem with this argument according special treatment to communicative products is that it causes the Lanham Act to conflict with the law of copyright, which addresses that subject specifically. The right to copy, and to copy without attribution, once a copyright has expired, like "the right to make [an article whose patent has expired]including the right to make it in precisely the shape it carried when patented-passes to the public." Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 230 (1964); see also Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 121-122 (1938). "In general, unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying." TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29 (2001). The rights of a patentee or copyright holder are part of a "carefully crafted bargain," Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 150-151 (1989), under which, once the patent or copyright monopoly has expired, the public may use the invention or work at will and without attribution. Thus, in construing the Lanham we have been "careful to caution against misuse or over-extension" of trademark and related protections into areas traditionally occupied by patent or copyright. TrafFix, 532 U.S., at 29. "The Lanham Act," we have said, "does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity." Id., at 34. Federal trademark law "has no necessary relation to invention or discovery," In re Trade-Mark Cases, 100 U.S. 82, 94 (1879), but rather, by preventing competitors from copying "a source-identifying mark," "reduce[s] the customer's costs of shopping and making purchasing decisions," and "helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product," Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 163-164 (1995) (internal quotation marks and citation omitted). Assuming for the sake of argument that Dastar's representation of itself as the "Producer" of its videos amounted to a representation that it originated the creative work conveyed by the videos, allowing a cause of action under § 43(a) for that representation would create a species of mutant copyright law that limits the public's "federal right to 'copy and to use'" expired copyrights, Bonito Boats, supra, at 165, 109 S.Ct. 971.

[14] When Congress has wished to create such an addition to the law of copyright, it has done so with much more specificity than the Lanham Act's ambiguous use of "origin. [15] Reading "origin" in § 43(a) to require attribution of uncopyrighted materials would pose serious practical problems. Without a copyrighted work as the basepoint, the word "origin" has no discernable limits. A video of the MGM film Carmen Jones, after its copyright has expired, would presumably require attribution not just to MGM, but to Oscar Hammerstein II (who wrote the musical on which the film was based), to Georges Bizet (who wrote the opera on which the musical was based), and to Prosper Merimee (who wrote the novel on which the opera was based). In many cases, figuring out who is in the line of "origin" would be no simple task. Indeed, in the present case it is far from clear that respondents have that status. Neither SFM nor New Line had anything to do with the production of the Crusade television series-they merely were licensed to distribute the video version. While Fox might have a claim to being in the line of origin, its involvement with the creation of the television series was limited at best. Time, Inc., was principal, if not the exclusive, creator, albeit under arrangement with Fox. And of course it was neither Fox nor Time, Inc., that shot the film used in the Crusade television series. Rather, that footage came from the United States Army, Navy, and Coast Guard, the British Ministry of Information and War Office, the National Film Board of Canada, and unidentified "Newsreel Pool Cameramen." If anyone has a claim to being the original creator of the material used in both the Crusade television series and the Campaigns videotapes, it would be those groups, rather than Fox. We do not think the Lanham Act requires this search for the source of the Nile and all its tributaries.

[16] Another practical difficulty of adopting a special definition of "origin" for communicative products is that it places the manufacturers of those products in a difficult position. On the one hand, they would face Lanham Act liability for failing to credit the creator of a work on which their lawful copies are based; and on the other hand they could face Lanham Act liability for crediting the creator if that should be regarded as implying the creator's "sponsorship or approval" of the copy, 15 U.S.C. § 1125(a)(1)(A). In this case, for example, if Dastar had simply "copied [the television series] as Crusade in Europe and sold it as Crusade in Europe," without changing the title or packaging (including the original credits to Fox), it is hard to have confidence in respondents' assurance that they "would not be here on a Lanham Act cause of action," Tr. of Oral Arg. 35.

[17] Finally, reading § 43(a) of the Lanham Act as creating a cause of action for, in effect, plagiarism-the use of otherwise unprotected works and inventions without attributionwould be hard to reconcile with our previous decisions. For example, in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000), we considered whether product-design trade dress can ever be inherently distinctive. Wal-Mart produced "knockoffs" of children's clothes designed and manufactured by Samara Brothers, containing only "minor modifications" of the original designs. Id., at 208. We concluded that the designs could not be protected under § 43(a) without a showing that they had acquired "secondary meaning," id., at 214, so that they "'identify the source of the product rather than the product itself,'" id., at 211 (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851, n. 11 (1982)). This carefully considered limitation would be entirely pointless if the "original" producer could turn around and pursue a reverse-passing-off claim under exactly the same provision of the Lanham Act. Samara would merely have had to argue that it was the "origin" of the designs that Wal-Mart was selling as its own line. It was not, because "origin of goods" in the Lanham Act referred to the producer of the clothes, and not the producer of the (potentially) copyrightable or patentable designs that the clothes embodied.

[18] Similarly under respondents' theory, the "origin of goods" provision of § 43(a) would have supported the suit that we rejected in Bonito Boats, 489 U.S. 141, where the defendants had used molds to duplicate the plaintiff's unpatented boat hulls (apparently without crediting the plaintiff). And it would have supported the suit we rejected in TrafFix, 532 U.S. 23: The plaintiff, whose patents on flexible road signs had expired, and who could not prevail on a trade-dress claim under § 43(a) because the features of the signs were functional, would have had a reverse-passing-off claim for unattributed copying of his design. [19] In sum, reading the phrase "origin of goods" in the Lanham Act in accordance with the Act's common-law foundations (which were not designed to protect originality or creativity), and in light of the copyright and patent laws (which were), we conclude that the phrase refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods. Cf. 17 U.S.C. § 202 (distinguishing between a copyrighted work and "any material object in which the work is embodied"). To hold otherwise would be akin to finding that § 43(a) created a species of perpetual patent and copyright, which Congress may not do. See Eldred v. Ashcroft, 537 U.S. 186, 208 (2003).

[20] The creative talent of the sort that lay behind the Campaigns videos is not left without protection. The original film footage used in the Crusade television series could have been copyrighted, see 17 U.S.C. § 102(a)(6), as was copyrighted (as a compilation) the Crusade television series, even though it included material from the public domain, see § 103(a). Had Fox renewed the copyright in the Crusade television series, it would have had an easy claim of copyright infringement. And respondents' contention that Campaigns infringes Doubleday's copyright in General Eisenhower's book is still a live question on remand. If, moreover, the producer of a video that substantially copied the Crusade series were, in advertising or promotion, to give purchasers the impression that the video was quite different from that series, then one or more of the respondents might have a cause of actionnot for reverse passing off under the "confusion . . . as to the origin" provision of § 43(a)(1)(A), but for misrepresentation under the "misrepresents the nature, characteristics [or] qualities" provision of § 43(a)(1)(B). For merely saying it is the producer of the video, however, no Lanham Act liability attaches to Dastar.

[21] Because we conclude that Dastar was the "origin" of the products it sold as its own, respondents cannot prevail on their Lanham Act claim. We thus have no occasion to consider whether the Lanham Act permitted an award of double petitioner's profits. The judgment of the Court of Appeals for the Ninth Circuit is reversed, and the case is remanded for further proceedings consistent with this opinion.

Justice BREYER took no part in the consideration or decision of this case. Lapine sued for, among other things, copyright infringement and reverse passing off. The court found no copyright infringement on the ground that the "total concept and feel" of the two cookbooks was dissimilar. Id. at *12. On the reverse passing off claim, the court explained: In Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 123 S.Ct. 2041, 156 L.Ed.2d 18 (2003), the Supreme Court defined the "origin of goods" for section 43(a) purposes, holding that the phrase "refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods." Id. at 37. 9 To do otherwise would place the Lanham Act in conflict with the copyright [and patent] law and "be akin to finding that § 43(a) created a species of perpetual patent and copyright, which Congress may not do." Id. The Court recognized that the Lanham Act was not intended to protect originality or creativity. Id.

Following Dastar, a plaintiff may able to bring a section 43(a) violation based on a defendant's repackaging of plaintiff's material as its own. Id. at 31 (the claim "would undoubtedly be sustained if Dastar had bought some of New Line's Crusade videotapes and merely repackaged them as its own"); see also Flaherty Plaintiffs have not alleged that Defendants took Plaintiffs' cookbook and repackaged it as their own, nor could the evidentiary record sustain such a claim because, as explained above, the works are not substantially similar.

Although Plaintiffs did not identify in the Complaint the Section 43 subdivision under which they assert their Lanham Act unfair competition claim, Plaintiffs argue that they are asserting a claim under Section 43(a)(1)(B), the false advertising subsection, and that Dastar does not foreclose that claim. This argument is unavailing. Plaintiffs' Lanham Act unfair competition claim is, at its core, the same as Plaintiffs' copyright claim-that Defendants took Plaintiff Lapine's ideas and used them in Deceptively Delicious without Plaintiffs' permission and without any attribution as to the source of the ideas and the work.

Plaintiffs' Section 43(a) claim is premised on their allegations that Seinfeld misappropriated Lapine's work in preparing Deceptively Delicious and that, consequently, Seinfeld's statements that Deceptively Delicious is the product of her own work and Defendants' claim of a copyright in that work constitute falsities because they "assign the entire credit for [Deceptively Delicious] and Lapine's property contained therein, to themselves, and fail to credit Lapine or her Book." (Compl. ¶ ¶ 73-75.) Plaintiffs assert that the alleged misrepresentations that are likely to cause confusion or deception "as to the origin of [Deceptively Delicious] and Lapine's property contained therein." (Id. ¶ 76 (emphasis supplied).) This is precisely the type of claim that is precluded by Dastar, and the Court finds persuasive those decisions holding that "a failure to attribute authorship to Plaintiff does not amount to misrepresentation of the nature, characteristics, qualities, or geographic origin of . . . Id. at *14-15.

3. Dastar and products other than "communicative products". Courts have similarly held that short of the mere "repackaging" of another's products as one's own, the "origin of goods" provision of Lanham Act § 43(a) will not prevent the unattributed use of someone else's products as components in one's own products. Consider, for example, Bretford Mfg., Inc. v. Smith System Mfg. Corp., 419 F.3d 576 (7th Cir. 2005). The plaintiff and defendant were competing table manufacturers. When one of its suppliers failed to produce satisfactory parts, the defendant incorporated some of the plaintiff's hardware in its sample table that it showed to purchasing officials from a school district, who placed an order. The tables the defendant ultimately delivered to the school district contained none of the plaintiff's hardware. Judge Easterbrook held for the defendant:

Passing off or palming off occurs when a firm puts someone else's trademark on its own (usually inferior) goods; reverse passing off or misappropriation is selling someone else's goods under your own mark. See Roho, Inc. v. Marquis, 902 F.2d 356, 359 (5th Cir. 1990). It is not clear what's wrong with reselling someone else's goods, if you first buy them at retail. If every automobile sold by DeLorean includes the chassis and engine of a Peugeot, with DeLorean supplying only the body shell, Peugeot has received its asking price for each car sold and does not suffer any harm. Still, the Supreme Court said in Dastar that "reverse passing off" can violate the Lanham Act if a misdescription of goods' origin causes commercial injury. Our opinion in Peaceable Planet, Inc. v. Ty, Inc., 362 F.3d 986 (7th Cir. 2004), shows how this could occur.

Dastar added that the injury must be a trademark loss-which is to say, it must come from a misrepresentation of the goods' origin. Dastar thus had the right (so far as the Lanham Act is concerned) to incorporate into its videos footage taken and edited by others, provided that it manufactured the finished product and did not mislead anyone about who should be held responsible for shortcomings. No one makes a product from scratch, with trees and iron ore entering one end of the plant and a finished consumer product emerging at the other. Ford's cars include Fram oil filters, Goodyear tires, Owens-Corning glass, Bose radios, Pennzoil lubricants, and many other constituents; buyers can see some of the other producers' marks (those on the radio and tires for example) but not others, such as the oil and transmission fluid. Smith System builds tables using wood from one supplier, grommets (including Teflon from du Pont) from another, and vinyl molding and paint and bolts from any of a hundred more sources-the list is extensive even for a simple product such as a table. If Smith System does not tell du Pont how the Teflon is used, and does not inform its consumers which firm supplied the wood, has it violated the Lanham Act? Surely not; the statute does not condemn the way in which all products are made.

Legs are a larger fraction of a table's total value than grommets and screws, but nothing in the statute establishes one rule for "major" components and another for less costly inputs. The right question, Dastar holds, is whether the consumer knows who has produced the finished product. In the Dastar case that was Dastar itself, even though most of the product's economic value came from elsewhere; just so when Smith System includes components manufactured by others but stands behind the finished product. The portion of § 43(a) that addresses reverse passing off is the one that condemns false designations of origin. "Origin" means, Dastar holds, "the producer of the tangible product sold in the marketplace". 539 U.S. at 31. As far as Dallas was concerned, the table's "origin" was Smith System, no matter who made any component or subassembly.

Much of Bretford's argument takes the form that it is just "unfair" for Smith System to proceed as it did, making a sale before its subcontractor could turn out acceptable leg assemblies. Businesses often think competition unfair, but federal law encourages wholesale copying, the better to drive down prices. Consumers rather than producers are the objects of the law's solicitude. If Smith System misled Dallas into thinking that it could supply high-quality tables, when its subcontractor could not match Bretford's welds and other attributes of Bretford's V-shaped leg assemblies, then the victim would be the Dallas school system. (As far as we are aware, however, Dallas is happy with the quality of the tables it received; it has not complained about a bait and switch.) As the Court observed in Dastar, creators of certain artistic works are entitled (along the lines of the European approach to moral rights) to control how their work is presented or altered by others. See 539 U.S. at 34-35, citing 17 U.S.C. § 106A. See also Lee v. A.R.T. Co., 125 F.3d 580 (7th Cir. 1997). Bretford's table is not a "work of visual art" under § 106A (and the definition in 17 U.S.C. § 101). Once Bretford sold its goods, it had no control over how customers used their components: the Lanham Act does not include any version of the "derivative work" right in copyright law. See 17 U.S.C. § 106 (2).

4. Non-attribution versus misattribution. In Gilliam v. American Broadcasting Companies, Inc., 538 F.2d 14 (2d Cir. 1976), the plaintiffs were a highly successful British comedy group known as "Monty Python." They sought to enjoin the ABC television network from broadcasting edited versions of three 30-minute Monty Python programs. Though ABC had validly obtained the rights to broadcast the programs, ABC replaced approximately 24 minutes of the total of 90 minutes of Monty Python material with television commercials. Some of ABC's edits destroyed the comedic content of the work. The plaintiffs argued among other things that, in essence, their Monty Python trademark was being placed on work that should no longer be attributed to them. The Ninth Circuit explained: {T}he appellants claim that the editing done for ABC mutilated the original work and that consequently the broadcast of those programs as the creation of Monty Python violated the Lanham Act § 43(a), 15 U.S.C. § 1125(a). This statute, the federal counterpart to state unfair competition laws, has been invoked to prevent misrepresentations that may injure plaintiff's business or personal reputation, even where no registered trademark is concerned. It is sufficient to violate the Act that a representation of a product, although technically true, creates a false impression of the product's origin . . . . We find that the truncated version at times omitted the climax of the skits to which appellants' rare brand of humor was leading and at other times deleted essential elements in the schematic development of a story line. We therefore agree with {the district court's} conclusion that the edited version broadcast by ABC impaired the integrity of appellants' work and represented to the public as the product of appellants what was actually a mere caricature of their talents.

Id. at 24-25 (citations and footnotes omitted). 1 Is a claim akin to the plaintiffs' claim in Gilliam still viable after Dastar? (To be clear, Gilliam was not a reverse passing off case, but what about its facts makes it at least problematic in light of Dastar?) 1 The specifics of the injunctive relief granted to the plaintiffs are more complicated. The plaintiffs filed their complaint on December 15, 1976, seeking to prevent the airing of the episodes eleven days later on December 26. For various reasons, the district court ordered ABC only to broadcast a disclaimer during the December 26 broadcast stating that the plaintiffs disassociated themselves form the program because of their editing. By the time it heard the appeal of the case in April, 1977, the Ninth Circuit was left to preliminarily enjoin ABC from any further airing of the episodes in their mutilated form. 5. Do data or computer software qualify as protectable tangible goods or unprotectable intangible "communicative products" under Dastar? The answer to this question appears to be highly fact-specific. 6. What about "forward passing off"? Dastar may be read to establish the proposition that there is no liability for reverse passing off under the Lanham Act when a defendant reproduces the plaintiff's "communicative products" and relabels those non-physical products as originating in the defendant. But does Dastar go too far? Does it further establish the proposition that there is no liability when a defendant places on its own "communicative products" a trademark confusingly similar with the plaintiff's mark (the standard "forward passing off" scenario)? For example, if an entity creates non-fungible tokens that explicitly reference a famous trademark and then sells those NFTs, is the entity liable for trademark infringement? Aren't the NFTs (and any images they may link to) non-physical "comunicative products" akin to those at issue in Dastar, the origin of which "are typically of no consequence to purchasers"? Apparently not, at least according to Hermès Int'l v. Rothschild, 590 F. Supp. 3d 647, 654 (S.D.N.Y. 2022) (finding that "Dastar said nothing at all about the general applicability of the Lanham Act to intangible goods"). See also Yuga Labs, Inc. v. Ripps, No. 22 Civ. 4355, 2023 WL 3316748, at *5 (C.D. Cal. Apr. 21, 2023) (agreeing with Hermès and concluding that "although NFTs are virtual goods, they are, in fact, goods for purposes of the Lanham Act").

Recall that a registration application at the PTO may be rejected on the basis that the applied-for mark will create a likelihood of confusion with an already registered mark. The PTO's test for determining whether Lanham Act § 2(d) bars a registration is essentially the same as the multifactor test for the likelihood of confusion in the federal court litigation context. See B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293 (2015). Excerpted below is the discussion of the § 2(d) bar in the Trademark Manual of Examining Procedure. [1] In the ex parte examination of a trademark application, a refusal under § 2(d) is normally based on the examining attorney's conclusion that the applicant's mark, as used on or in connection with the specified goods or services, so resembles a registered mark as to be likely to cause confusion. See TMEP § 1207.02 concerning application of the § 2(d) provision relating to marks that so resemble another mark as to be likely to deceive, and TMEP § 1207.03 concerning § 2(d) refusals based on unregistered marks (which generally are not issued in ex parte examination).

[2] The examining attorney must conduct a search of USPTO records to determine whether the applicant's mark so resembles any registered mark(s) as to be likely to cause confusion or mistake, when used on or in connection with the goods or services identified in the application. The examining attorney also searches pending applications for conflicting marks with earlier effective filing dates . . . . The examining attorney must place a copy of the search strategy in the record. [3] If the examining attorney determines that there is a likelihood of confusion between applicant's mark and a previously registered mark or marks, the examining attorney refuses registration of the applicant's mark under § 2(d). Before citing a registration, the examining attorney must check the automated records of the USPTO to confirm that any registration that is the basis for a § 2(d) refusal is an active registration . . . . • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

• The relatedness of the goods or services as described in the application and registration(s).

See (3) the applicant's prior registration has co-existed for at least five years with the registration being considered as the basis for the Section 2(d) refusal. See Id. at 1400.

[9] The determination of likelihood of confusion under § 2(d) in an intent-to-use application under § 1(b) of the Trademark Act does not differ from the determination in any other type of application.

TMEP § 1207.03 Marks Previously Used in United States but Not Registered

As a basis for refusal, § 2(d) refers not only to registered marks but also to "a mark or trade name previously used in the United States by another and not abandoned." Refusal on the basis of an unregistered mark or trade name has sometimes been referred to as refusal on the basis of a "known mark." This provision is not applied in ex parte examination because of the practical difficulties with which an examining attorney is faced in locating "previously used" marks, and determining whether anyone has rights in them and whether they are "not abandoned."

1. Lanham Act § 2(d) and unregistered marks. Note that § 2(d) not only prohibits the registration of a mark that is confusingly similar with any previously registered mark, but also prohibits the registration of a mark that is confusingly similar with an unregistered "mark or tradename previously used in the United States by another and not abandoned." Lanham Act § 2(d), 15 U.S.C. § 1052 (d). In practice, "[t]his provision is not applied in ex parte examination because of the practical difficulties with which an examining attorney is faced in locating 'previously used' marks, and determining whether anyone has rights in them and whether they are 'not abandoned.'" TMEP § 1207.03 (Jan. 2015).

Lanham Act § 43(c)foot_20 provides protection for trademarks against "dilution," which is probably the single most muddled concept in all of trademark doctrine. Of the many reasons for this, perhaps the most significant-and avoidable-is that trademark courts and commentators tend to speak of several different species of trademark dilution without identifying them any more specifically than by the generic name "dilution." From the very beginning of your study of dilution, it may be worthwhile to distinguish among three specific species of dilution: (1) dilution of uniqueness, (2) dilution by "blurring," and (3) dilution by "tarnishment." Because dilution is so easily misunderstood, each form of dilution is briefly discussed below before we turn to the representative case law. Note that, strictly speaking, U.S. trademark law protects against only dilution by blurring and dilution by tarnishment. A brief description of dilution of a trademark's uniqueness is offered because it is arguably what the trademark practitioner and scholar Frank Schechter had in mind when he first spoke of the concept of trademark dilution in the 1920s.

In his seminal 1927 article The Rational Basis of Trademark Protection, 40 HARV. L. REV. 813 (1927), Schechter introduced to American law the concept of trademark dilution. Schechter used the term "dilution" to refer to the impairment of a trademark's uniqueness, or what modern marketing doctrine would term its "brand differentiation."foot_21 His primary concern was to preserve what he variously termed a mark's "arresting uniqueness," its "singularity," "identity," and "individuality," its quality of being "unique and different from other marks." 4 Schechter was not so much concerned with a trademark's distinctiveness of source, but with a trademark's distinctiveness from other marks, not its "source distinctiveness," but its "differential distinctiveness." 5 In Schechter's view, trademark uniqueness was worth protecting because it generated "selling power." Certain very strong marks were not simply a means of identifying and advertising source. In a new age of mass production, they were also a means of endowing the goods to which they were attached with the characteristic of uniqueness as against the crowds of other massproduced goods in the marketplace, a characteristic for which consumers would pay a premium.

Schechter believed, quite rightly at the time, that antidilution protection was necessary because anti-infringement protection, based on consumer confusion as to source, would not fully preserve the uniqueness of famous marks. In situations where a defendant used a famous mark on goods unrelated to those on which the famous mark normally appeared (e.g., NIKE pianos, ROLLS-ROYCE chewing gum, CHANEL waste disposal services), consumers would not likely assume that the defendant's product had the plaintiff as its source. Thus, no cause of action for consumer confusion as to source would lie.

The beauty of Schechter's original conception of antidilution protection was that it was relatively easy to put into practice. Uniqueness is an absolute concept. A mark is either unique or it is not. If a senior mark is unique in the marketplace and a junior mark appears that is identical to it, then the junior mark will destroy the senior mark's uniqueness. Thus, the test for dilution was an essentially formal one. The judge need only consider the identity or close similarity of the parties' marks. If they were identical or closely similar, then the loss of uniqueness could be presumed. See Eli Lilly & Co. v. Natural Answers, Inc. 233 F.3d 456, 468-69 (7th Cir. 2000) (considering only similarity of the parties' marks and the "renown" of the senior mark in finding a likelihood of dilution); Ringling Bros-Barnum & Bailey Combined Shows, Inc. v. Utah Division of Travel Development, 170 F.3d 449, 464 (4th Cir. 1999) ("[O]nly mark similarity and, possibly, degree of 'renown' of the senior mark would appear to have trustworthy relevance under the federal Act."). Where the consumer confusion test was a messy and unpredictable empirical analysis centered on the consumer, the trademark dilution test was a simple and relatively predictable analysis centered on the trademark.

Note that Schechter's original conception has never been enacted into law, and the language of Lanham Act § 43(c) is careful to steer clear of it. Indeed, in the early stages of the drafting of the Act, a form of antidilution protection based on "uniqueness" was proposed and rejected. 6 Dilution by blurring. The idea underlying the concept of trademark "blurring" is that the defendant's use of a mark similar or identical to the plaintiff's mark, though perhaps not confusing as to source, will nevertheless "blur" the link (a) between the plaintiff's mark and the plaintiff or (b) between the plaintiff's mark and the goods or services to which the plaintiff's mark is traditionally attached. In modern marketing parlance, anti-blurring protection seeks to preserve a brand's "typicality," the brand's "ability to conjure up a particular product category." Alexander F. Simonson, How and When Do Trademarks Dilute: A Behavioral Framework to Judge "Likelihood of Dilution", 83 TRADEMARK REP. 149, 152-53 (1993). In Ty Inc. v. Perryman, 306 F.3d 509 (7th Cir. 2002), Judge Posner provided a hypothetical example of blurring: [T]here is concern that consumer search costs will rise if a trademark becomes associated with a variety of unrelated products. Suppose an upscale restaurant calls itself "Tiffany." There is little danger that the consuming public will think it's dealing with a branch of the Tiffany jewelry store if it patronizes this restaurant. But when consumers next see the name "Tiffany" they may think about both the restaurant and the jewelry store, and if so the efficacy of the name as an identifier of the store will be diminished. Consumers will have to think harder-incur as it were a higher imagination cost-to recognize the name as the name of the store. So "blurring" is one form of dilution.

Id. at 511 (citations omitted). As Judge Posner's description suggests, the increase in "imagination cost" that blurring is thought to cause forms the basis of the economic rationale underlying antidilution protection. As Judge Posner explained, "[a] trademark seeks to economize on information costs by providing a compact, memorable and unambiguous identifier of a product or service. The economy is less when, because the trademark has other associations, a person seeing it must think for a moment before recognizing it as the mark of the product or service." Richard Posner, When Is Parody Fair Use?, 21 J. LEGAL STUDIES 67, 75 (1992). 7 The blurring theory of dilution is highly empirical in orientation. For the judge to find that a junior mark "blurs" a senior mark, the judge must find that the junior mark is causing consumers to "think for a moment" before recognizing that the senior mark refers to the goods of the senior mark's owner. 8 A merely formal analysis of the similarity of the marks is insufficient. The judge must evaluate the likely effect of the junior mark on the perceptions of actual consumers and must in the process take into account such factors as the degree of distinctiveness-or typicality-of the senior mark. The analysis is once again centered on the consumer.

The concept of trademark blurring is controversial. In his treatise, Tom McCarthy memorably observes: 7 The Restatement (Third) of Unfair Competition provides an alternative account of dilution by blurring, one that the student may find more persuasive:

[A] mark may be so highly distinctive and so well advertised that it acts as a powerful selling tool. Such a mark may evoke among prospective purchasers a positive response that is associated exclusively with the goods or services of the trademark owner. To the extent that others use the trademark to identify different goods, services, or businesses, a dissonance occurs that blurs this stimulant effect of the mark. The antidilution statutes protect against this dilution of the distinctiveness and selling power of the mark. RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 25 (1995). However, Judge Posner's "imagination cost" account of blurring has proven to be far more influential in the courts and commentary, for better or worse.

Commentators almost uniformly contend that dilution by blurring is a purely theoretical hypothesis and rarely, if ever, happens in the real world. That is, the argument is that impairment of the distinctiveness of a trademark by blurring is like Bigfoot, the Himalayan Yeti or the Loch Ness Monster: a theoretical construct never proven to exist by incontrovertible evidence. MCCARTHY § 24:15. For example, Christine Haight Farley defies proponents of the blurring theory to provide even one concrete (and not hypothetical) example of a famous mark that has been significantly damaged through blurring. See Christine Haight Farley, Why We Are Confused about the Trademark Dilution Law, 16 FORDHAM INTELL. PROP. MEDIA & ENTER. L. J. 1175, 1184-85 (2006). Yet as will see, courts continue to rule in favor of blurring plaintiffs, particularly when the defendant has acted in clear bad faith.

Dilution by tarnishment. Dilution by tarnishment is fundamentally different from dilution by blurring (and arguably has nothing to do with "dilution" as Schechter originally formulated the concept). Tarnishment describes damage to the positive associations or connotations of a trademark. See Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 43 (2d Cir. 1994) ("'Tarnishment' generally arises when the plaintiff's trademark is linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context likely to evoke unflattering thoughts about the owner's product[s]."). For example, in New York Stock Exchange, Inc. v. New York, New York Hotel, LLC, 293 F.3d 550 (2d Cir. 2002), a Las Vegas casino called its players club the "New York $lot Exchange." Owners of the NEW YORK STOCK EXCHANGE trademark took offense at the suggestion that their stock exchange was in some sense a venue for gambling, if not also for stacked odds, and sued. The district court granted summary judgment to the casino. New York Stock Exch., Inc. v. New York, New York Hotel, LLC, 69 F. Supp. 2d 479, 482 (S.D.N.Y. 1999). On appeal, the Second Circuit reversed and remanded on certain of the dilution claims. Among other things it found, with respect to the plaintiff's New York state law tarnishment claim, that "[a] reasonable trier of fact might . . . find that the Casino's humorous analogy would injure NYSE's reputation." New York Stock Exch., Inc. v. New York, New York Hotel LLC, 293 F.3d 550, 558 (2d Cir. 2002) (analyzing the issue under New York state anti-tarnishment law).

The difference between trademark confusion and trademark dilution.

In principle, trademark confusion and trademark dilution are starkly different. When a consumer experiences trademark confusion, the similarity of the plaintiff's and the defendant's marks leads the consumer to believe that both the plaintiff's and the defendant's products are coming from the same company. The consumer believes that one company is the source of both parties' marks and products. By contrast, when a consumer experiences dilution, the similarity between the parties' marks leads the consumer to associate the two marks with each other, but the consumer does not believe that they are coming from the same company. She knows that there are two different companies. (e.g., FOUR SEASONS for hotel services and FOUR SEASONS for landscaping services). The harm in dilution by blurring is that whenever the consumer sees either the plaintiff's or the defendant's mark, she is compelled to think for a moment to determine to which of those two different companies the mark is referring. The harm in dilution by tarnishment is that any negative connotations of one of the marks may

The research company conducted the surveys in malls in Trumbull, Connecticut; Philadelphia, Pennsylvania; Youngstown, Ohio; Chicago Ridge, Illinois; Louisville, Kentucky; San Antonio, Texas; Colorado Springs, Colorado; and Northridge, California. The website survey was also conducted in Portland, Oregon.

Because CafePress allowed only consumers over the age of thirteen to purchase from its site, Jacoby similarly limited his universe of respondents.

Respondents who worked at an advertising agency, a market research firm or a business located in the mall (or had an immediate family member who did) were excluded, as were people who normally wore eyeglasses or contact lenses but were not wearing them at the time of the screening.

The screening questionnaire provided to the Court indicates that the respondents who then participated in the surveys were given a monetary reward. Neither Jacoby's report nor any of the supporting survey documents disclosed the amount of the reward.

The simulations were reproduced on a compact disc; the respondents did not view Smith's actual web pages on the Internet.

Jacoby arrived at these numbers by averaging the net survey results for the Walocaust and Wal-Qaeda t-shirts.

See Paul R. La Monica, NBC Sued over 'Heroes' Scene by Garbage Disposal Maker, CNNMoney.com,

As one circuit has recognized, a click-thru rate represents the upper limit of initial interest confusion. See 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229, 1244 (10th Cir. 2013). But we cannot know how many, if any, consumers clicked on ALG's advertisements out of confusion rather than mere diversion.

* Courtesy of Rebecca Tushnet & Georgetown Law Library, Intellectual Property Teaching Resources (2020).

2008, Wreal registered both of its marks-"FyreTV" and "FyreTV.com"-with the U.S. Patent and Trademark Office. Wreal I, 840 F.3d at 1246.2 A "set-top box" is "a device that is connected to a television so that the television can receive digital signals." Set-top Box, Merriam-Webster Online Dictionary, https://www.merriamwebster.com/dictionary/set-top% 20box (last visited June 19, 2022).3 The record shows that Amazon has alternatively used "Fire TV" or "fireTV" in its graphics and advertisements for its set-top box. For purposes of this opinion, we use the stylization of "fireTV," because Wreal highlighted the inconsistency in its response disputing Amazon's statement of undisputed facts. However, we emphasize that we make no ultimate conclusion on whether Amazon's mark is stylized as "Amazon Fire TV" or "fireTV."

Generally, hardcore pornography refers to "scenes of actual sex acts." Hardcore, Merriam-Webster Online Dictionary, https://www.merriam-webster.com/dictionary/hard-core (last visited June 19, 2022). Softcore pornography refers to "scenes of sex acts that are less explicit than hard-core material."Soft-core, Merriam-Webster Online Dictionary, https://www.merriamwebster.com/dictionary/soft-core (last visited June 19, 2022).

The district court adopted the magistrate judge's determination that, while this inquiry appears to show confusion, the sender was not confused. The magistrate judge based its conclusion solely on the text of the inquiry itself, and not on any other record evidence. In other words, the magistrate judge

As noted by the district court, the protection that these three bodies of law provide is coextensive. . . .

The district court also noted that the presence of Amazon's "amazon" housemark alongside "fireTV" in advertisements pushed the distinctiveness-of-the-mark factor further in Amazon's favor. As we discuss below, however, the presence of a housemark should be assessed in reference to the second factor in the analysis-the similarity of the marks. See A & H Sportswear, 237 F.3d at 229-30.

The magistrate judge (and, by its adoption, the district court) discounted both pieces of evidence, concluding that neither consumer was actually confused. As already discussed in footnote 5, supra, this amounted to an improper credibility determination that invaded the province of the jury.

Wreal identified other pieces of evidence to the district court, but our review of the record indicates that they do not represent direct evidence of actual confusion. For example, one of Wreal's customers said, "I plan to buy the new Amazon FireTV box (I know it is NOT related to you guysalthough confusion over the name may bring Fyretv some more customers and maybe a domain name sale windfall-more power to you!) Will this new Amazon streaming device have a private channel installation of FyreTV in the near future?"

As for the copyright claim, the Ninth Circuit held that the tax treatment General Eisenhower sought for his manuscript of the book created a triable issue as to whether he intended the book to be a work for hire, and thus as to whether Doubleday properly renewed the copyright in 1976. See

Fed.Appx., at 314. The copyright issue is still the subject of litigation, but is not before us. We express no opinion as to whether petitioner's product would infringe a valid copyright in General Eisenhower's book.

Although Dastar involved copying of uncopyrighted work, subsequent decisions have recognized its applicability to copyrighted work as well. See, e.g., Atrium Group De Ediciones Y Publicaciones, S.L. v. Harry N. Abrams, Inc., 565 F.Supp.2d 505, 512-13 (S.D.N.Y. 2008) (discussing cases).

The current version of § 43(c) is sometimes referred to as the Trademark Dilution Revision Act or "TDRA," which became effective on October 6, 2006 (and which replaced the old language of § 43(c) that was established by the Federal Trademark Dilution Act of 1995 or "FTDA").

For an important alternative reading of Schechter, which asserts that he sought to provide antidilution protection only to marks which are "synonymous with a single product or product class," see Sara Stadler Nelson, The Wages of Ubiquity in Trademark Law, 88 IOWA L.REV. 731 (2003).

Frank I. Schechter, The Rational Basis of Trademark Protection, 40 HARV. L. REV. 813, 830, 831, 827, 830, 831 (1927).

See Barton Beebe, The Semiotic Analysis of Trademark Law, 51 UCLA L. REV.

(2004) (distinguishing between source distinctiveness and "differential distinctiveness," or in semiotic terms, between "signification" and "value").

For a strong critique of this conception of blurring, see Rebecca Tushnet, Gone in 60 Milliseconds: Trademark Law and Cognitive Science, 86 TEXAS L. REV. 507 (2008).

3 GILSON ON TRADEMARKS § 13.21 (2026). Different states' limitations periods can run anywhere from about two to six years. See MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 31:23 (2026).For an impressive application of the laches defense, see Dropbox,Inc. v. Thru Inc.,

• The "Exxon format". In Exxon Corp. v. Texas Motor Exchange of Houston, Inc., 628 F.2d 500 (5th Cir. 1980), survey respondents were shown a photograph of one of the defendant's signs bearing its TEXON trademark. The respondents were then asked:

See, e.g., Major League Baseball Properties v. Sed Non Olet Denarius, Ltd., 817 F. Supp. 1103, 1122 (S.D.N.Y. 1993) ("[T]he issue here is not whether defendants' name brings to mind any other name . . . . Rather, the issue here is one of actual confusion. Plaintiff's survey questions regarding association are irrelevant to the issue of actual confusion.").In Itamar Simonson, The Effect of Survey Method on Likelihood of Confusion Estimates:

omitted). That provision now penalizes a person who use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any

damage by association the reputation of the other mark, even when the consumer knows that the two companies are commercially unrelated.

Though trademark confusion and trademark dilution are different, a population of relevant consumers may contain some consumers who are confused as to source and some other consumers (perhaps the more sophisticated in the population) who are not confused as to source but rather experience dilution. See MCCARTHY § 24:72 ("A given unauthorized use by defendant can cause confusion in some people's minds and in other people's minds cause dilution by blurring, but in no one person's mind can both perceptions occur at the same time."). See also RESTATMENT (THIRD) OF UNFAIR COMPETITION § 25, comment f (1995), Reporter's Note ("Although in a particular case the use of another's mark may confuse some consumers and dilute the value of the mark in the minds of other consumers, the state of mind required for confusion and dilution are distinct and inconsistent. The confused consumer believes that the actor's use of the mark is connected with the trademark owner, and thus for such consumers the use does not dilute the distinctiveness of the mark.").

Though distinct in theory, the processes of trademark confusion and trademark dilution are sometimes treated as interchangeable by careless lawyers and courts. This can be frustrating. See MCCARTHY § 24:72.

In Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007), the Fourth Circuit set forth the main elements of a federal claim for dilution by blurring or dilution by tarnishment. The plaintiff must show:

(1) that the plaintiff owns a famous mark that is distinctive;

(2) that the defendant has commenced using a mark in commerce that allegedly is diluting the famous mark;

(3) that a similarity between the defendant's mark and the famous mark gives rise to an association between the marks; and

(4) that the association is likely to impair the distinctiveness of the famous mark or likely to harm the reputation of the famous mark.

Id. at 264-65. Not made explicit in this listing of the elements is the important detail that the plaintiff's mark must have become famous before the defendant began use of its allegedly diluting mark. See Lanham Act § 43(c)(1), 15 U.S.C. § 1125(c)(1) ("at any time after the owner's mark has become famous").

In light of the above, the statutory language of § 43(c) excerpted below will reward a close reading. We then turn first, in section II.C.1, to the fame requirement for antidilution protection and then, in section II.C.2, to anti-blurring protection and, in section II.C.3, to antitarnishment protection.foot_0

Lanham Act § 43(c), 15 U.S.C. § 1125(c) (c) Dilution by blurring; dilution by tarnishment (1) Injunctive relief. Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

(2) Definitions (A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:

(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.

(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.

(iii) The extent of actual recognition of the mark.

(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.

(B) For purposes of paragraph (1), "dilution by blurring" is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:

(i) The degree of similarity between the mark or trade name and the famous mark.

(ii) The degree of inherent or acquired distinctiveness of the famous mark.

(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.

(iv) The degree of recognition of the famous mark.

(v) Whether the user of the mark or trade name intended to create an association with the famous mark.

(vi) Any actual association between the mark or trade name and the famous mark.

(C) For purposes of paragraph (1), "dilution by tarnishment" is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.

(3) Exclusions. The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:

(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person's own goods or services, including use in connection with-(i) advertising or promotion that permits consumers to compare goods or services; or (ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.

(B) All forms of news reporting and news commentary.

The Fame Requirement for Antidilution Protection

To qualify for federal anti-blurring and anti-tarnishment protection under § 43(c), a mark must be "widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner." Lanham Act § 43(c)(2)(A), 15 U.S.C. § 1125(c)(2)(A). Furthermore, the mark must have become famous before the defendant began its allegedly diluting use. Lanham Act § 43(c)(1), 15 U.S.C. § 1125(c) (1). Among the marks that have failed to meet the fame requirement are the "longhorn" logo of the University of Texas, Board of Regents v. KST In the opinion excerpt that follows, the Federal Circuit considered the fame of the mark COACH. Coach Services, Inc. ("CSI"), the proprietor of COACH leather goods stores, opposed Triumph Learning, LLC's application to register the mark COACH for educational materials used to prepare students for standardized tests. (Does CSI's opposition strike you as a reasonable assertion of CSI's rights in its COACH mark?) In affirming the TTAB's finding of no likelihood of confusion or dilution, the Federal Circuit found that CSI had failed to establish that its mark was "widely recognized by the general consuming public of the United States" at the time that Triumph Learning adopted its mark. Triumph filed its applications to register the COACH word mark, a stylized COACH mark, and a COACH mark and design (shown below) in December 2004. The applications were published for opposition on September 20, 2005.

mark are now eclipsed by the owner's use of the mark." Toro, 61 U.S.P.Q.2d at 1180. An opposer must show that, when the general public encounters the mark "in almost any context, it associates the term, at least initially, with the mark's owner." Id. at 1181. In other words, a famous mark is one that has become a "household name." Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1012 (9th Cir. 2004) (quoting Thane Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 911 (9th Cir. 2002)). With this framework in mind, we turn to CSI's evidence of fame.

CSI Failed to Introduce Sufficient Evidence of Fame for Dilution

[4] The Board found that CSI's evidence of fame was insufficient to support a dilution claim. On appeal, CSI argues that the same evidence establishing fame for likelihood of confusion also establishes fame for dilution purposes. Specifically, CSI argues that the Board disregarded: (1) sales and advertising figures for years 2000-2008; (2) its sixteen federal trademark registrations; (3) unsolicited media attention; (4) joint marketing efforts; (5) two Second Circuit decisions finding the Coach hangtag, which features the COACH mark, to be famous; and (6) CSI's internal brand awareness survey showing awareness among 18-24 year old consumers. We address each category of evidence in turn. For the reasons set forth below, we find substantial evidence supporting the Board's decision that CSI failed to show the requisite level of fame for dilution. [5] Turning first to CSI's evidence of sales and advertising expenditures, CSI argues that the Board erred when it ignored the annual reports that were attached to a Notice of Reliance. As previously discussed, however, the Board correctly held that these reports were unauthenticated and thus inadmissible. The only sales and advertising figures in the record via Ms. Sadler's testimony were for one year-2008-which, notably, is after Triumph filed its use-based applications in December 2004. We agree with the Board that this limited evidence of sales and advertising is insufficient to show fame. Even if the Board had considered the annual reports, moreover, such evidence, standing alone, would be insufficient. See Toro, 61 U.S.P.Q.2d at 1181 ("Merely providing evidence that a mark is a topselling brand is insufficient to show this general fame without evidence of how many persons are purchasers."). [6] With respect to CSI's registrations, the Board found that the mere existence of federally registered trademarks is insufficient to show that the mark is famous for purposes of dilution because ownership of a registration is not proof of fame. On appeal, CSI argues that the Board erred in this determination because one of the statutory factors a court can consider in the fame analysis is whether the mark is registered on the principal register. See 15 U.S.C. § 1125(c)(2)(A)(iv). As Triumph points out, however, "[o]ne cannot logically infer fame from the fact that a mark is one of the millions on the Federal Register." 4 McCarthy, § 24:106 at 24-310. While ownership of a trademark registration is relevant to the fame inquiry, and-to the extent the Board decision implies otherwise-the Board erred on this point, proof of registration is not conclusive evidence of fame.

[7] With respect to media attention, the Board found that CSI's evidence fell short of showing "widespread recognition of opposer's mark [by] the general population." Board Decision, 96 U.S.P.Q.2d at 1611. Specifically, the Board found that: the vast majority of unsolicited media recognition for opposer's COACH mark comprises a reference to one of opposer's products as one of many different fashion buys or trends, and the news articles noting opposer's renown are too few to support a finding that opposer's mark has been transformed into a household name.

Id. On appeal, CSI argues that the Board ignored hundreds of unsolicited articles mentioning the COACH mark over the years. CSI points to several examples, including the following:

• "In fact, Coach's growth . . . has been phenomenal. When Sara Lee acquired the firm in 1985, its volume was about $18 million. In Sara Lee's latest fiscal year, which ended last June 30, Coach's sales exceeded $500 million. The name also resonates with consumers. The brand ranked eighth among the top 10 in accessories firms in the latest Fairchild 100 consumer survey of fashion labels, in 1995." J.A. 3607 (Women's Wear Daily, May 5, 1997).

• "Coach, one of the top makers of status handbags in the United States . . ." J.A. 3598 (The New York Times, Jan. 27,1999).

• "Coach's creative director has helped transform the 60-year old company into a must-have American icon." J.A. 3156 (Women's Wear Daily, June 2001).

• "Will Coach Become Too Popular? . . . Coach, the maker and retailer of stylish handbags, just had a blowout season . . . . Clearly Coach has recorded some of the best growth numbers of any retailer or accessories maker in recent years." J.A. 3543 (Business Week, Jan. 24, 2007). [8] Looking at the media attention in the record, there is certainly evidence that CSI's COACH mark has achieved a substantial degree of recognition. That said, many of the articles submitted are dated after Triumph filed its registration applications and thus do not show that CSI's mark was famous prior to the filing date. See Toro, 61 U.S.P.Q.2d at 1174 ("an owner of an allegedly famous mark must establish that its mark had become famous prior to the filing date of the trademark application" which it opposes). And, there is substantial evidence supporting the Board's determination that many of the references are limited to mentioning one of CSI's COACH products among other brands. Accordingly, even though there is some evidence of media attention, substantial evidence supports the Board's conclusion that the media evidence submitted fails to show widespread recognition.

1. The importance of the timing of fame evidence. Courts appear to be applying quite strictly the requirement that the plaintiff show fame before defendant began use. Consider the case of Inter IKEA Systems B.V. v. Akea, LLC, 110 U.S.P.Q.2d 1734 (TTAB 2014). In June 2009, Akea filed an intent-to-use application for the mark AKEA for nutritional supplements in international class 5, retail services in class 35, and advice and information services relating to diet in class 44. Ikea opposed under § 2(d), claiming likelihood of confusion, and under § 13 and § 43(c), claiming likelihood of dilution. Almost all of Ikea's evidence of fame was dated after June 2009. "For example, opposer's evidence that the IKEA brand was ranked No. 28 on the Business Week/Interbrand 2012 list of the Top 100 Brands worldwide, with an estimated brand value of $12,808,000,000 is subsequent to the filing date of applicant's application and, therefore, is not relevant." Id. at 1745. Ikea's dilution claim therefore failed. What result? Akea's registration was refused in class 35 for retail services where the TTAB found a likelihood of confusion, but allowed in classes 5 and 44, for nutritional supplements and for information services relating to diet respectively, where the TTAB found no likelihood of confusion (but might very well have found a likelihood of dilution had Ikea's lawyers submitted, for example, evidence that in 2008, Interbrand ranked Ikea as the 35th most valuable brand in the world worth $10.9 billion).

In Diageo North America, Inc. v. W.J. Deutsch & Sons Ltd., No. 22-2106, 2024 WL 2712636 (2d Cir. May 28, 2024), the Second Circuit affirmed in a summary order the district court's denial of the defendant's motion for judgment as a matter of law in Diageo North America, Inc. v. W.J. Deutsch & Sons Ltd., 626 F. Supp. 3d 635 (S.D.N.Y. 2022). The jury found that the defendant's bottle design, shown below on the right, would not create a likelihood of confusion as to its source with the plaintiff's bottle design shown on the left. However, the jury found that the plaintiff's bottle design qualified as a famous mark under federal antidilution law, id. at 645, and that the defendant's design diluted by blurring the distinctiveness of the plaintiff's design. Id. at 645-46. As to the issue of fame, the Second Circuit explained in its order:

Here, the jury was presented with evidence that: (1) Diageo had marketed Bulleit in the Bulleit Packaging Design since 1999; (2) between 2011 and 2016, Diageo spent $56 million on advertising and promotion for Bulleit, which featured the Bulleit Packaging Design, including almost $20 million in 2016; (3) between 2005 and November 2016, the Bulleit Packaging Design was featured in at least sixteen television show episodes and four movies; (4) beginning in 2012, the Bulleit Packaging Design was featured in the magazines GQ and Esquire, among others; (5) from 2014 to November 2016, Diageo made over $100 million in sales of Bulleit each year, and surpassed $220 million in sales of Bulleit in the fiscal year that the Redemption Packaging Design was released; (6) some market research showed that Bulleit was mentioned in the same category as Jack Daniels and Jim Beam, and one of Diageo's witnesses stated that Jack Daniels was "the most famous"; and (7) the Bulleit Packaging Design was registered with the Patent and Trademark Office in 2006. Although not an exhaustive list of the evidence presented to the jury, the above evidence alone refutes any suggestion that there was a complete absence of evidence supporting the verdict such that the jury's findings could only have been the result of conjecture. As such, we reject Deutsch's challenge to the jury's verdict regarding the federal dilution claim.

Diageo North America, Inc., 2024 WL 2712636, at *2.

Recall that to qualify as a famous mark for purposes of federal antidilution protection, the mark must be "widely recognized by the general consuming public of the United States as a designation of source." Lanham Act § 43(c)(2)(a), 15 U.S.C. § 1125(c)(2)(a).

The following opinion, Nike, Inc. v. Nikepal Intern., Inc., 84 U.S.P.Q.2d 1820 (E.D. Cal. 2007), was one of the first opinions thoroughly to analyze a claim of dilution by blurring under the new § 43(c) established by the TDRA. In reading Nikepal, consider the following questions;

• What is the nature of the harm to the NIKE mark? Is it reasonable to argue that Nikepal's use of the NIKEPAL mark could harm in any significant way a mark as strong as NIKE?

• Does the survey method described in the opinion strike you as valid?

• Though the opinion never addresses the likelihood of consumer confusion as to source, do you think some consumers might be confused as to source by the NIKEPAL mark? Could Nike have prevailed on a simple likelihood of confusion claim?

Nike, Inc. v. Nikepal Intern., Inc. 84 U.S.P.Q.2d 1820 (E.D. Cal. 2007) GARLAND E. BURRELL, JR., United States District Judge.

[1] The following findings of fact and conclusions of law issue as a result of a bench trial conducted in this trademark action. Plaintiff Nike, Inc. ("Nike"), a company headquartered in Beaverton, Oregon which uses the mark NIKE, contests the use of the mark NIKEPAL by Defendant Nikepal International, Inc. ("Nikepal"), a company located in Sacramento, California. Nike initially contested Nikepal's registration of the NIKEPAL mark at the Trademark Trial and Appeal Board ("TTAB") of the United States Patent and Trademark Office ("PTO"); however, the TTAB denied Nike's opposition to Nikepal's registration of the NIKEPAL mark. Nike subsequently appealed the TTAB's ruling to this court under 15 U.S.C. § 1071 and brought additional claims for federal and state trademark dilution under 15 U.S.C.

§ 1125(c) and California Business and Professions Code section 14330; for trademark infringement under 15 U.S.C. § 1114; and for unfair competition under 15 U.S.C. § 1125(a).foot_1 [2] Nike seeks an injunction preventing Nikepal from using the term "Nike" (or any term confusingly similar thereto) alone or as part of any trademark, domain name or business name under which Nikepal offers goods or services in commerce. Nike also seeks a reversal of the TTAB's ruling allowing Nikepal to register the NIKEPAL mark. Nikepal seeks an affirmation of the TTAB's April 21, 2005 order. (TTAB's April 21, 2005 Order ("TTAB Decision").)

Findings of Fact I. The Parties and their Businesses

A. Nike [3] Nike was incorporated in 1968 under the original company name Blue Ribbon Sports. In 1971, it adopted the NIKE mark to brand its footwear products and in May 1978, the company's name was officially changed to "Nike, Inc." Today, Nike is the largest seller of athletic footwear and apparel in the world. Nike sells around 180 million pairs of shoes annually in the United States alone. Nike's principal business activity is the design, development, and worldwide marketing and distribution of high quality and technologically advanced footwear, apparel, equipment, and accessories. Nike has continuously used the NIKE mark on and in connection with the various products offered by the company since the 1970s. Sometimes, the word mark NIKE is the only brand used; sometimes, Nike's Swoosh design mark (i.e. the logo which frequently appears on products along with NIKE, and in some instances alone) is also placed on the product.

[4] Nikepal was incorporated on May 18, 1998 by the company's founder and president, Palminder Sandhu ("Mr. Sandhu"), who then began using the NIKEPAL mark in commerce. Nikepal provides services and products to analytical, environmental, and scientific laboratories. Nikepal's trademark application to the PTO requested registration for: "import and export agencies and wholesale distributorships featuring scientific, chemical, pharmaceutical, biotechnology testing instruments and glassware for laboratory use, electrical instruments, paper products and household products and cooking appliances." (Application Serial No. 76123346, filed September 6, 2000) Nikepal distributes glass syringes in varying volumes and other laboratory products to testing and power companies and also distributes paper boxes (syringe carrying cases) and nylon valves and caps for use with the syringes. Nikepal only distributes its products to laboratories, not to individuals. [5] Nikepal does not have a retail office, but operates its business through its website (located at www.nikepal.com), via email, and via telephone. Nikepal is run by Mr. Sandhu, who also works as a transportation engineer. Currently, Nikepal has one other part-time employee. Nikepal has only a few hundred customers, but it has a list of thousands of prospective customers, some of whom receive materials from Nikepal advertising its product and service offerings under the mark NIKEPAL.

[14] Once survey respondents were screened to confirm that they were the persons most responsible for ordering laboratory equipment at their business, they were asked: "What if anything, came to your mind when I first said the word Nikepal?" Many survey respondents who were not actually confused about the source of the Nikepal website nonetheless identified Nike. Mr. Johnson testified that his survey revealed that the vast majority of respondents, 87%, associated Nikepal with Nike; that is, when they encounter the mark NIKEPAL, they think of Nike and/or its offerings.

[15] Evidence of actual association of the NIKEPAL mark with the NIKE mark also exists beyond the results demonstrated in Mr. Johnson's survey. Mr. Sandhu registered the domain names nikepal.biz, nikepal.us, nikepal.tv, nikepal.net, and nikepal.info with Network Solution, and until just prior to trial, those websites were inactive. Mr. Sandhu testified that at the time he registered those domains he chose not to link them to an active website. As a result, Network Solutions assigned those domains an "under construction" page and then associated with that page promotions and advertisement links to product and service offerings of its choice. These promotions and advertisements all referred to NIKE products or those of one of its competitors. Thus, when accessing Nikepal's NIKEPAL domain names (other than nikepal.com), users received information about Nike or its competitors, but not Nikepal. [16] Under the Federal Trademark Dilution Revision Act, 6 . . . 15 U.S.C. § 1125(c)(1) ("TDRA"){, t}o prevail on its dilution claim, Nike must prove 1) that its mark was famous as of a date prior to the first use of the NIKEPAL mark and 2) that Nikepal's use of its allegedly diluting mark creates a likelihood of dilution by blurring or tarnishment. 7 A. Whether NIKE Was Famous Prior to the First Use of NIKEPAL [17] . . . Since Nikepal's first use of NIKEPAL commenced in May 1998, Nike must show that NIKE was famous before that date.

{The court applied the four factors listed in Lanham Act § 43(c)(2)(A), 15 U.S.C. 1125(c)(2)(A), to find that the NIKE mark was famous before May 1998}. [18] The TDRA defines dilution by blurring as an "association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:

(i) The degree of similarity between the mark or trade name and the famous mark.

(ii) The degree of inherent or acquired distinctiveness of the famous mark.

(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark. 6 The TDRA, signed into law on October 6, 2006, amended the previous federal anti-dilution statute (the Federal Trademark Dilution Act ("FTDA")). The TDRA revises the FTDA in three ways: it establishes that likelihood of dilution, and not actual dilution, is a prerequisite to establish a dilution claim; it sets forth four relevant factors courts may consider in determining famousness; and it also lists six relevant factors that courts may consider in determining whether a likelihood of dilution exists. Century 21 Real Estate LLC v. Century Surety Co., 2007 WL 433579, at *1 (D.Ariz. Feb.6, 2007). 7 California's anti-dilution statute, under which Nike also brings a claim, prescribes: Likelihood of injury to business reputation or a dilution of the distinctive quality of a mark registered under this chapter, or a mark valid at common law, or a trade name valid at common law, shall be a ground for injunctive relief notwithstanding the absence of competition between parties or the absence of confusion as to the source of goods or services.

Cal. Bus. & Prof.Code § 14330. If Nike prevails on its federal dilution claim, it will also prevail on its dilution claim under California law. See Jada Toys, Inc. v. Mattel, Inc., 496 F.3d 974 (9th Cir. Aug. (iv) The degree of recognition of the famous mark.

(v) Whether the user of the mark or trade name intended to create an association with the famous mark.

(vi) Any actual association between the mark or trade name and the famous mark.

[19] Marks in a dilution analysis must be "identical" or "nearly identical." 8 Thane Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 906 (9th Cir. 2002). "For marks to be nearly identical to one another, they 'must be similar enough that a significant segment of the target group of customers sees the two marks as essentially the same.'" Playboy Enters., Inc. v. Welles, 279 F.3d 796, 806 n. 41 (9th Cir. 2002) (internal citation omitted).

[20] The parties' marks are nearly identical. The NIKEPAL mark is a composite of the word "Nike" with the term of affinity, "pal." The composite nature of the NIKEPAL mark is evident in the logo selected by the company which clearly features an "N" and a "P." In each case the dominant feature of the mark is the term "Nike." In addition, the term "Nike" in both marks is pronounced identically with an "i" like in "bike" and an "e" like in "key." See Porsche Cars N. Am., Inc., 2000 WL 641209, at *3, (finding that the trademark PORSCHE was diluted by PORCHESOURCE.COM); see also Jada Toys, Inc., 496 F.3d 974, 2007 WL 2199286, at *4 (concluding "that a reasonable trier of fact could find that the HOT WHEELS and HOT RIGZ marks are nearly identical.").

[21] Further, as shown by Mr. Johnson's survey, the vast majority of the survey respondents, representing a significant segment of Nikepal's target customer group, associate Nike and/or its products and services when they encounter the mark NIKEPAL, thus perceiving the two marks as essentially the same. See Thane Int'l, Inc., 305 F.3d at 906 ("The marks must be of sufficient similarity so that, in the mind of the consumer, the junior mark will conjure an association with the senior.") (citing Nabisco, Inc. v. PF Brands, 191 F.3d 208 (2d Cir. 1999)). Accordingly, this factor favors Nike.

[22] Nikepal does not dispute that NIKE is, at the very least, suggestive. (See Nikepal's Proposed Findings and Recommendations at 42 ("[Nike's] mark is suggestive when used in 8 Nike argues that the TDRA does not require that the marks be identical or nearly identical. However, the enactment of the TDRA did "not eliminate the requirement that the mark used by the alleged diluter be 'identical,' or 'nearly identical,' or 'substantially similar,' to the protected mark." Century 21 Real Estate LLC, 2007 WL 433579, at *2 (citing House Report on Trademark Dilution Act of 2005 at 8, 25). {Note that the Ninth Circuit subsequently explicitly rejected this "identical or nearly identical" standard. See the casebook note following the opinion.} connection with Plaintiff's products.").) Accordingly, NIKE is inherently distinctive and this factor favors Nike.

(iii) Substantially Exclusive Use [23] The law does not require that use of the famous mark be absolutely exclusive, but merely "substantially exclusive." See L.D.Kichler Co. v. Davoil Inc., 192 F.3d 1349, 1352(Fed. Cir. 1999) (holding that in the trademark context, "substantially exclusive" use does not mean totally exclusive use). Therefore, a limited amount of third party use is insufficient to defeat a showing of substantially exclusive use. See Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 878 (9th Cir. 1999) (finding that use of the mark was not substantially exclusive when the words "Avery" and "Dennison" were "commonly used as trademarks, both on and off of the Internet, by parties other than Avery Dennison." (emphasis added)).

[24] Nike asserts that its use of the NIKE mark is substantially exclusive. Nikepal introduced evidence of use of the term "Nike" in the company name "Nike Hydraulics, Inc.," through a bottle jack purchased from the company and a 1958 trademark registration for "Nike" owned by Nike Hydraulics. However, this evidence is insufficient to disprove Nike's claim that its use of NIKE is substantially exclusive. Even Nikepal's witness, Roger Smith, admitted that he had not encountered Nike Hydraulics before hearing that name in connection with this action. Accordingly, the court finds that Nike's use of the NIKE mark is substantially exclusive and this factor therefore favors Nike. 10

[25] The degree of recognition of NIKE is quite strong. Millions of NIKE products are sold in the United States annually and the evidence demonstrates that NIKE is readily recognized. This factor therefore favors Nike.

[26] Mr. Sandhu admitted that he was aware of the existence of the NIKE mark before he adopted the company name. Although he testified at trial that he came up with the term Nikepal by opening the dictionary to a random page and essentially finding that word by "fate," his testimony was not credible. Therefore, this factor favors Nike.

(vi) Actual Association [27] Nikepal registered the domain names nikepal.biz, nikepal.net, nikepal.us, nikepal.info and nikepal.tv. The evidence shows that the domain registrar assigned the domain names an "under construction" page and then associated with that page promotions and advertisement links to a number of web pages that offered NIKE products (or products 10 Nikepal also introduced evidence that the term "Nike" appears in dictionaries referring to the Greek goddess of victory, that the image of Nike the goddess appeared on some Olympic medals, and that the United States Government named one of its missile programs "Nike." However, Nikepal did not show that these uses were made in commerce in association with the sale or marketing of goods or services as required under the TDRA. (See 15 U.S.C. § 1125(c) (1) (providing that under the TDRA, only "use of a mark or trade name in commerce" is actionable as diluting a famous mark.).) of Nike's competitors in the shoe and apparel field). Thus, in the internet context, there is actual association between NIKEPAL and NIKE.

[28] Further, Mr. Johnson's survey also evinced that there is a strong degree of association between NIKEPAL and NIKE. Mr. Johnson's survey showed over 87% of the people in Nikepal's own customer pool associated the stimulus "Nikepal" with NIKE. The survey presents ample proof of association between the marks to support a finding that such exists in the general public. Accordingly, the court finds that there is actual association between the NIKEPAL and NIKE marks and this factor favors Nike. [29] In conclusion, since the six factors considered in the likelihood of dilution analysis favor Nike, there is a likelihood that NIKE will suffer dilution if Nikepal is allowed to continue its use of NIKEPAL. Accordingly, Nike prevails on its federal and state dilution claims. . . . . CONCLUSION [30] For the reasons stated, Nike prevails on its federal and state dilution claims, the decision of the TTAB is reversed, and the opposition to Nikepal's registration of the NIKEPAL mark is sustained. Further, Nikepal is permanently enjoined from using NIKEPAL in connection with the offering of goods or services in commerce, including its use in domain names, on web pages, in printed matter, and on products, and shall cease any such uses of NIKEPAL within sixty days of the date on which this order is filed. Nikepal may continue to use its numeric telephone number, but may not advertise or associate it with the designation "1-877-NIKEPAL."

In reading the following opinion, consider how the Wolfe's Borough analysis of the blurring issue differs from the analysis undertaken by the Nikepal court. Does the Wolfe's Borough court simply assume, as does the Nikepal court, that association necessarily impairs the distinctiveness of the plaintiff's mark, or does the Wolfe's Borough court require an additional showing of impairment?

LOHIER, Circuit Judge: [1] Starbucks Corporation and Starbucks U.S. Brands LLC (together, "Starbucks") appeal from a judgment of the United States District Court for the Southern District of New York (Swain, J.) denying Starbucks' request for an injunction pursuant to the Federal Trademark Dilution Act of 1995 ("FTDA"), 15 U.S.C. § 1125(c), prohibiting Wolfe's Borough Coffee, Inc., doing business as Black Bear Micro Roastery ("Black Bear"), from using Black Bear's "Mister Charbucks," "Mr. Charbucks," and "Charbucks Blend" marks (the "Charbucks Marks"). After a bench trial followed by additional briefing from the parties upon remand from this Court, the District Court concluded that Starbucks failed to prove that the Charbucks Marks are likely to dilute Starbucks' famous "Starbucks" marks (the "Starbucks Marks") and denied Starbucks' request for an injunction.

[2] On appeal, Starbucks argues that the District Court erred in finding only minimal similarity and weak evidence of actual association between the Charbucks Marks and the Starbucks Marks. Starbucks also contends that the District Court erred in balancing the statutory dilution factors by giving no weight at all to three of the factors-the strong distinctiveness, exclusive use, and high degree of recognition of the Starbucks Marks-and placing undue weight on the minimal similarity between the marks.

[3] For the following reasons, we conclude that the District Court did not err in its factual findings, and, balancing the statutory factors de novo, we agree with the District Court that Starbucks failed to prove a likelihood of dilution. We therefore affirm.

[4] We assume familiarity with the underlying facts and long procedural history of the case, which are set forth in our previous opinions, Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 477 F.3d 765 (2d Cir. 2007) ("Starbucks II "), and Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009) ("Starbucks IV "). We recount them here only as necessary to explain our disposition of this appeal.

[5] As of 2005, when the bench trial occurred, Starbucks had grown from a single coffee shop in Seattle in 1971 to a singularly prominent global purveyor of specialty coffee and coffee products, with 8,700 retail locations worldwide and revenues of $5.3 billion for fiscal year 2004. Starbucks U.S. Brands is the owner, and Starbucks Corporation a licensee, of at least 56 valid United States trademark registrations that include the Starbucks Marks. The Starbucks Marks are displayed on signs and at multiple locations in each Starbucks store, as well as on the Starbucks website. [6] Starbucks has devoted substantial time, effort, and money to advertising and promoting the Starbucks Marks. From fiscal year 2000 to 2003, Starbucks spent over $136 million on advertising, promotion, and related marketing activities, essentially all of which featured the Starbucks Marks. Starbucks actively polices the Starbucks Marks, demanding that infringing uses be terminated and, where necessary, commencing litigation. Well before Black Bear used the term "Charbucks" as part of any product name, the Starbucks Marks were "famous" within the meaning of the FTDA. See 15 U.S.C. § 1125(c)(2)(A).

[7] Black Bear manufactures and sells roasted coffee beans and related goods via mail and internet order, at a limited number of New England supermarkets, and at a single New Hampshire retail outlet. In 1997 Black Bear developed a coffee blend named "Charbucks Blend"; it now sells a dark-roast coffee called "Mister Charbucks" or "Mr. Charbucks." When Black Bear began manufacturing coffee using the Charbucks Marks, it was aware of the Starbucks Marks. One of the reasons Black Bear used the term "Charbucks" was the public perception that Starbucks roasted its beans unusually darkly. Soon after Black Bear began to sell Charbucks Blend, Starbucks demanded that it cease using the Charbucks Marks. Black Bear nevertheless continued to sell coffee under the Charbucks Marks, and in 2001 Starbucks started this action claiming, among other things, trademark dilution in violation of 15 U.S.C. § § 1125(c), 1127. 3[8] The District Court held a two-day bench trial in March 2005. At trial, two matters of significance to this appeal occurred. First, Black Bear's founder, James O. Clark III, testified that the name "Charbucks" had previously been used during "the coffee wars in Boston between Starbucks and the Coffee Connection," a Boston-based company. Second, Starbucks introduced the testimony of Warren J. Mitofsky, a scientist in the field of consumer research and polling. Mitofsky explained the results of a telephone survey he had conducted of six hundred participants, designed to be representative of the United States population. The survey found that when asked, "What is the first thing that comes to your mind when you hear the name 'Charbucks,' spelled C-H-A-R-B-U-C-K-S?," 30.5 percent of participants answered "Starbucks," while 9 percent answered "coffee." 5 When the participants were asked, "Can you name any company or store that you think might offer a product called 'Charbucks'?," 3.1 percent responded "Starbucks," and another 1.3 percent responded "coffee house." 6 Mitofsky concluded that "[t]he number one association of the name 'Charbucks' in the minds of consumers is with the brand 'Starbucks.'" Commenting on the scope of his survey, Mitofsky also stated: "[I]f you want to know the reaction to the name Charbucks, then the telephone is perfectly adequate. If you want to measure the reaction or the familiarity with other visual cues, then it's not the right method." Starbucks IV, 588 F.3d at 104. ). The District Court determined that there was neither actual dilution, which would establish a violation of federal trademark law, 7 nor a likelihood of dilution, which would establish a violation of New York trademark law.

[14] Emphasizing that the analysis of a dilution by blurring claim must ultimately focus on "whether an association, arising from the similarity between the subject marks, 'impairs the distinctiveness of the famous mark,'" id. (quoting 15 U.S.C. § 1125(c)(2)(B)), we vacated the judgment of the District Court and remanded for reconsideration of the claim in light of our discussions of the first, fifth, and sixth statutory factors, id. at 109-10. [15] In its opinion and order following that remand, see Starbucks Corp. v. Wolfe's Borough Coffee, Inc., No. 01 Civ. 5981, 2011 WL 6747431 (S.D.N.Y. Dec. 23, 2011) ("Starbucks V "), the District Court recognized that the second through fifth statutory factors 8 favored Starbucks. Id. at *3 (citing Starbucks IV, 588 F.3d at 106-10). But the court again found that the first factor (the similarity of the marks) favored Black Bear because the marks were only minimally similar when presented in commerce-that is, when the Charbucks Marks are viewed on the packaging, which includes the phrases "Charbucks Blend" or "Mister Charbucks." Id. [16] As for the sixth factor (actual association), the District Court acknowledged that the results of the Mitofsky survey "constitute evidence of actual association," id. at *4, but it then significantly discounted those results on the ground that the survey inquired into associations only with the isolated word "Charbucks" and failed to present the Charbucks Marks in full context, id. The court also compared the survey results in this case with those in other cases. Here, it noted, only 30.5 percent of respondents associated "Charbucks" with "Starbucks," while in other trade dilution cases 70 percent to 90 percent of survey respondents associated the relevant marks. Id. The District Court also compared the 3.1 percent of respondents who thought a product called "Charbucks" would be made by Starbucks to the 28 percent of respondents who made a similar origin association in a Ninth Circuit trademark dilution case. Id. (citing Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 636 (9th Cir. 2008)). With the benefit of these comparisons, the District Court found that the actual association factor weighs "no more than minimally" in Starbucks' favor. Id. [17] In evaluating the likelihood of dilution, the District Court emphasized the "association" and "similarity" factors. Citing the TDRA's definition of dilution by blurring as "association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark," the District Court explained that "[t]he statutory language leaves no doubt" that these two factors are "obviously important." Id. at *5 (quoting 15 U.S.C. § 1125(c)(2)(B)). 1 After balancing all six factors, the District Court held that Starbucks had failed to meet its burden of showing that it was entitled to injunctive relief:

[T]he Charbucks marks are only weakly associated with the minimally similar Starbucks marks and, thus, are not likely to impair the distinctiveness of the famous Starbucks marks. In other words, [Starbucks] has failed to carry its burden of proving that [Black Bear's] use of its marks, as evidenced on the record before the Court, is likely to cause dilution by blurring.

[18] On appeal, Starbucks challenges both the factual findings of minimal similarity and weak association and the conclusion that it failed to demonstrate a likelihood of dilution.

[19] After a bench trial on a claim for trademark dilution by blurring, where the district court evaluates and balances the factors listed in the TDRA, we review the court's determinations as to each factor for clear error and its balancing of those factors de novo. See Tiffany, 600 F.3d at 101; Starbucks IV, 588 F.3d at 105. 10 . . . . 10 We employ the same standard here that we use in the context of trademark infringement, where a district court evaluates and then balances the eight factors set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961), to determine whether there is a likelihood of confusion. See, e.g., Star Indus. v. Bacardi & Co., 412 F.3d 373, 384 (2d Cir. 2005). The statutory factors enumerated in § 1125(c)(2)(B) are similar in kind to the Polaroid factors. For example, both lists include the "similarity between" the two marks; "strength" of the mark in Polaroid is akin to "distinctiveness" in § 1125; and "actual confusion" in Polaroid mirrors "actual association" in § 1125. See Polaroid, 287 F.2d at 495. . . . .

[20] We previously have declined to treat the factors pertinent to a trademark dilution analysis as an inflexible, mechanical test, suggesting instead that the importance of each factor will vary with the facts. Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 227-28 (2d Cir. 1999), abrogated on other grounds by Moseley, 537 U.S. at 433, 123 S.Ct. 1115. Accordingly, we need not consider all six statutory factors listed in 15 U.S.C. § 1125(c)(2)(B)(i)-(vi) if some are irrelevant to the ultimate question; nor are we limited to those six factors. . . . Instead, we employ a "cautious and gradual approach," which favors the development of a nonexclusive list of trademark dilution factors over time. Nabisco, 191 F.3d at 217.

C. Factual Findings: The Statutory Factors

[21] On appeal, Starbucks challenges two of the District Court's findings: (1) that there is only a minimal degree of similarity between the Starbucks Marks and the Charbucks Marks; and (2) that Starbucks demonstrated only a weak association between the marks. The District Court did not clearly err with regard to either finding.

[22] In Starbucks IV we held that "[w]ith respect to the first factor-the degree of similarity between the marks-the District Court did not clearly err in finding that the Charbucks Marks were minimally similar to the Starbucks Marks." 588 F.3d at 106. We highlighted the difference between the Starbucks Marks and Charbucks Marks when the latter are placed in the context of Black Bear's packaging and the word "Charbucks" is incorporated into the phrases "Charbucks Blend" and "Mister Charbucks." Id. . . . Starbucks advances no compelling reason for us to revisit our ruling on the issue of similarity. . . . [23] Starbucks next contends that the District Court's finding that actual association "weighs no more than minimally" in Starbucks' favor, Starbucks V, 2011 WL 6747431, at *4, was error for two reasons. First, Starbucks argues, Black Bear's admitted intent to create an association-the fifth statutory factor-raises a "presumption of association," or at least is strong evidence of actual association-the sixth statutory factor. Second, it argues that the District Court improperly discounted the Mitofsky survey evidence, which, in Starbucks' view, proves a high degree of actual association. We reject both arguments.

[24] As an initial matter, an intent to create an association is a separate factor under the TDRA and does not constitute per se evidence that the actual association factor weighs in favor of the owner of the famous mark. In support of its argument to the contrary, Starbucks quotes McCarthy's treatise, which states, "If the junior [user] intended to create an association, the law may assume that it succeeded." McCarthy § 24:119. Starbucks similarly relies on Federal Express Corp. v. Federal Espresso, Inc., 201 F.3d 168 (2d Cir. 2000), a dilution case in which we stated that the trier of fact "may well find that the marks are of sufficient similarity so that, in the mind of the consumer, the junior mark will conjure an association with the senior, especially in light of the testimony of [Federal Espresso's founder] that she chose the name Federal Espresso, in part, precisely because it would call to mind Federal Express." Id. at 177 (quotation marks omitted).

[25] Both Federal Espresso and McCarthy's treatise acknowledge the importance of the intent factor in determining likelihood of dilution. This makes sense, as district courts must evaluate whether a junior mark is "likely to cause" "association arising from the similarity" between the marks "that impairs the distinctiveness of the famous mark," 15 U.S.C. § § 1125(c)(1), (c)(2)(B), and the intent to associate may bear directly on the likelihood that the junior mark will cause such an association.

[26] That said, "we interpret statutes to give effect, if possible, to every clause and word and to avoid statutory interpretations that render provisions superfluous." United States v. Al Kassar, 660 F.3d 108, 124-25 (2d Cir. 2011) (quotation marks omitted). Adopting Starbucks' presumption argument would effectively merge the intent to associate and the actual association factors, by making the former determinative of the latter, rather than treating them as distinct but related considerations. We therefore conclude that the District Court did not clearly err in finding that Clark's testimony concerning the origin of the Charbucks Marks was not an "admission" of actual association and that his intentions were not definitive proof of an actual association between the marks. [27] Nor did the District Court err when it discounted the Mitofsky survey evidence because the survey measured only how respondents reacted to the isolated word "Charbucks," rather than to the Charbucks Marks in context, and because the share of respondents who indicated an association between the marks was "relatively small." Starbucks V, 2011 WL 6747431, at *4. We arrive at this conclusion for two reasons.

[28] First, it coheres with our decision in Starbucks IV, in which we discerned no clear error in the District Court's consideration of context-including the addition of "Mister" or "Blend" to "Charbucks" and Black Bear's packaging-in assessing the marks' similarity, as consumers are likely to experience the product only in the context of those full phrases and Black Bear's packaging or website. Starbucks IV, 588 F.3d at 106. In our analysis of Starbucks' infringement claim, we similarly determined that the District Court did not clearly err when it found (1) that the survey failed to demonstrate significant actual confusion, "[p]articularly in light of the fact that the survey was administered by telephone and did not present the term 'Charbucks' in the context in which Black Bear used it," id. at 117, and (2) that the survey should have examined the effects of "a hypothetical coffee named either 'Mister Charbucks' or 'Charbucks Blend'" on the respondents' impressions of Starbucks coffee as a measure of dilution by tarnishment, id. at 110.

[29] Second, our conclusion also comports with our prior precedents and other cases unrelated to Starbucks. In Playtex Products, Inc. v. Georgia-Pacific Corp., 390 F.3d 158 (2d Cir. 2004), a case interpreting the pre-revision FTDA, we held that the results of a consumer survey showing an association between the marks "Moist-Ones" and "Wet Ones" were inadmissible as evidence of actual dilution because the defendant's product was "presented and packaged" as "Quilted Northern Moist-Ones." Id. at 168 (emphasis added). . . . In the dilution context, the language of the FTDA, which requires a plaintiff to show the defendant's "use of a mark . . . in commerce that is likely to cause dilution by blurring . . . ," 15 U.S.C.

§ 1125(c)(1) (emphasis added), clarifies that the way the defendant's mark is used in commerce is central to the dilution inquiry. As in Playtex, the District Court was within its rights to conclude that the Mitofsky survey had limited probative value because the defendant's marks were not presented to survey respondents as they are actually "presented and packaged" in commerce.

[30] Citing our decision in Nabisco, Starbucks nevertheless argues that consumers are likely to hear and view the term "Charbucks" outside the context of Black Bear's packaging and without the full phrases "Mister Charbucks" and "Charbucks Blend." Nabisco, 191 F.3d at 218 (rejecting an argument under the pre-revision FTDA that packaging made two marks dissimilar, because many consumers would see the marks outside of the packaging). But Starbucks presented no record evidence that "Charbucks" is ever read or heard in isolation, 13 and in the absence of such evidence, we are not persuaded by the argument. . . . [31] Starbucks also challenges the District Court's finding that the association between "Charbucks" and Starbucks was "relatively small." It contends that the Mitofsky survey in fact provided evidence of substantial actual association. We disagree. [32] It is true that in response to Mitofsky's question most probative of actual association-"What is the FIRST THING that comes to your mind when you hear the name 'Charbucks,' spelled C-H-A-R-B-U-C-K-S?"-30.5 percent of respondents said "Starbucks," and 9 percent said "coffee." Both of these responses suggest an association between "Charbucks" and the Starbucks Marks. In Jada Toys, 518 F.3d at 636, for example, the Ninth Circuit held that a survey demonstrated actual association because it showed that 28 percent of respondents thought Jada's product was made by Mattel when asked who they thought produced the item. Here, however, the equivalent question in Mitofsky's survey was: "Can you name any company or store that you think might offer a product called 'Charbucks'?" 14 In response to that question concerning source on the Mitofsky survey, however, only 3.1 percent of respondents answered "Starbucks" and 1.3 percent answered "coffee house." These percentages are far below that for the equivalent question in Jada Toys and fail to 13 Although the name "Mr. Charbucks" is presented in plain text on at least one page of Black Bear's website, all other record uses of the Charbucks Marks situate them in Black Bear's distinct color scheme, font, and layout. 14 Both that question and the question discussed in Jada Toys test not merely association but also source confusion. Source confusion may be probative of association, because to confuse Charbucks with Starbucks, the word "Charbucks" must call "Starbucks" to mind. See Nabisco, 191 F.3d at 221 ("Confusion lessens distinction.").

demonstrate anything more than minimal actual association. 15 See Starbucks V, 2011 WL 6747431, at *4. [33] Ultimately, on this factor, we consider only whether the District Court clearly erred when it found that the Mitofsky survey tilts the "actual association" factor "no more than minimally in [Starbucks'] favor." Id. Had the Mitofsky survey presented the Charbucks Marks as they appear in commerce, we might well conclude that the District Court erred. But the word "Charbucks" was presented outside of its marketplace context, and Starbucks, which bears the burden of proof, see Jada Toys, 518 F.3d at 634, failed to show that this flaw did not materially impact the survey results. We therefore conclude that the record supports the District Court's decision to discount the survey and consider the actual association factor as weighing only minimally in Starbucks' favor.

[34] We next balance the factors enumerated in § 1125(c)(2)(B), along with any other factors that bear on a likelihood of dilution, de novo. . . .

[35] We have already affirmed the District Court's finding of minimal similarity between the Charbucks Marks and the Starbucks Marks. That finding weighs heavily in Black Bear's favor. Certainly, a plaintiff may show a likelihood of dilution notwithstanding only minimal similarity. But here, minimal similarity strongly suggests a relatively low likelihood of an association diluting the senior mark . . . . {I}n Starbucks IV, we stated that "'similarity' is an integral element in the definition of 'blurring'" under the TDRA and suggested that, without any similarity, there could be no dilution by blurring. 588 F.3d at 108-09. 17 [36] The next three factors-the degrees of distinctiveness, exclusive use, and recognition-are features of the senior mark itself that do not depend on the use of the junior mark . . . .

[37] Although the three factors of distinctiveness, recognition, and exclusivity favor Starbucks and bear to some degree on our assessment of the likelihood of dilution by blurring, the more important factors in the context of this case are the similarity of the marks and actual association. We agree with the District Court that the distinctiveness, recognition, and exclusive use of the Starbucks Marks do not overcome the weak evidence of actual association between the Charbucks and Starbucks marks. To the contrary, viewed in light of Starbucks' fame, both globally and among the Mitofsky survey participants more particularly, the fact that more survey participants did not think of "Starbucks" upon hearing "Charbucks" reinforces the District Court's finding that the marks are only minimally similar, and therefore unlikely to prompt an association that impairs the Starbucks Marks. Likewise, although the distinctiveness and exclusive use of the Starbucks Marks help Starbucks prove susceptibility to dilution by association arising from similarity between the Charbucks and Starbucks marks, they do not demonstrate that such an association is likely to arise, as Starbucks needed to show to obtain an injunction. Accordingly, these factors weigh only weakly in Starbucks' favor.

[38] In this case, we attribute a moderate amount of significance to the fifth factor, intent to create an association . . . .

[39] The final, disputed factor, actual association, is highly relevant to likelihood of association. In the analogous context of determining the "likelihood of confusion" for trademark infringement claims, we have noted that "[t]here can be no more positive or substantial proof of the likelihood of confusion than proof of actual confusion," even though a showing of actual confusion is not necessary to prevail on such a claim. Savin Corp. v. Savin Grp., 391 F.3d 439, 459 (2d Cir. 2004). The same principle obtains with respect to proof of actual association in dilution claims. And as noted, the Mitofsky survey demonstrated weak actual association, at best.

[40] Weighing the factors above de novo, we agree with the District Court that Starbucks did not demonstrate a likelihood of dilution by blurring. Ultimately what tips the balance in this case is that Starbucks bore the burden of showing that it was entitled to injunctive relief on this record. Because Starbucks' principal evidence of association, the Mitofsky survey, was fundamentally flawed, and because there was minimal similarity between the marks at issue, we agree with the District Court that Starbucks failed to show that Black Bear's use of its Charbucks Marks in commerce is likely to dilute the Starbucks Marks.

[41] We have considered all of Starbucks' contentions on this appeal and have concluded that they are without merit. For the foregoing reasons, we AFFIRM the judgment of the District Court.

1. How similar must the parties' marks be to show dilution? The Nikepal court applied an "identical or nearly identical" standard of similarity in its blurring analysis, following Thane Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d 894 (9th Cir. 2002). The Second Circuit, however, has rejected this approach. In Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009), it emphasized that the new statute "does not use the words 'very' or 'substantial' in connection with the similarity factor," id. at 108, and reasoned that if courts were to impose a heightened similarity standard, this would give undue weight to the similarity factor-by turning the heightened similarity requirement into a threshold requirement that would short-circuit the six-factor multifactor balancing test for blurring. (The Second Circuit found that New York state anti-dilution law, by contrast, does impose a requirement that the marks be "'substantially' similar," id. at 114). In Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d 1158 (9th Cir. 2011), the Ninth Circuit subsequently followed the Second Circuit's reasoning:

Turning to the language of subsection (c)(2)(B), the TDRA defines "dilution by blurring" as the "association arising from the similarity between a mark and a trade name and a famous mark that impairs the distinctiveness of the famous mark." Id. § 1125(c)(2)(B) (emphasis added). Congress did not require an association arising from the "substantial" similarity, "identity" or "near identity" of the two marks. The word chosen by Congress, "similarity," sets forth a less demanding standard than that employed by many courts under the FTDA.

Id. at 1171. Do you find the Second and Ninth Circuits' reasoning persuasive? As a matter of sound policy, should courts require a heightened standard of similarity when analyzing a blurring claim? And in any case, are you persuaded that Nike and Nikepal are nearly identical? 2. Mere association or association that impairs distinctiveness? Recall that the TDRA defines dilution by blurring as "association. . .that impairs the distinctiveness of the famous mark." The Nikepal court found evidence of association, but it never addressed the question of whether this association "impairs the distinctiveness of the famous mark." Can we assume, as the Nikepal court appears to do, that any association necessarily impairs the distinctiveness of the plaintiff's mark? Consider what the Supreme Court said in Moseley:

We do agree, however, with {the} conclusion that, at least where the marks at issue are not identical, the mere fact that consumers mentally associate the junior user's mark with a famous mark is not sufficient to establish actionable dilution. {S}uch mental association will not necessarily reduce the capacity of the famous mark to identify the goods of its owner, the statutory requirement for dilution under the FTDA. For even though Utah drivers may be reminded of the circus when they see a license plate referring to the "greatest snow on earth," it by no means follows that they will associate "the greatest show on earth" with skiing or snow sports, or associate it less strongly or exclusively with the circus. "Blurring" is not a necessary consequence of mental association. (Nor, for that matter, is "tarnishing.") Cir. 2016) (rejecting the Hyundai reasoning, stating "association is a necessary, but not sufficient, condition for a finding of dilution by blurring"). See also Barton Beebe, Roy Germano, Christopher Jon Sprigman, & Joel Steckel, Testing for Trademark Dilution in Court and the Lab, 86 U. CHI. L. REV. 611 (2019) (presenting experimental evidence that "even when consumers associate a junior mark with a famous senior mark, this association does not necessarily result in any impairment of the ability of the senior mark to identify its source and associations").

In the registration context, it appears that antidilution law has been largely irrelevant. In 2014, Jeremy Sheff reported the results of a wide-ranging empirical study of the effect of antidilution law on registration practice at the PTO. See Jeremy N. Sheff, Dilution at the Patent and Trademark Office, 21 MICH. TELECOMM. & TECH. L. REV. 79 (2014). Among other things, Sheff developed and hand-coded a dataset of all 453 TTAB dispositions of dilution claims from the January 16, 1996 effective date of the FTDA through June 30, 2014. He found only three TTAB cases over that 18-year period in which anti-dilution claims made any difference to the outcome of a TTAB adjudication. In one of these, Sheff argues, a likelihood of confusion claim could have been used to reach the same outcome, but having found dilution, the board declined to consider the confusion claim. The TDRA contains no such prohibition against the misappropriation of a mark's "selling power." David Franklyn has argued that dilution is essentially a form of "free-riding", that courts often hold in favor of plaintiffs alleging dilution in an effort to punish free-riding, and that "it would be better to scrap dilution altogether and replace it with an independent cause of action that explicitly prevents free-riding in appropriate circumstances." David J. Franklyn, Debunking Dilution Doctrine: Toward a Coherent Theory of the Anti-Free-Rider Principle in American Trademark Law, 56 HASTINGS L.J. 117 (2004) MERRITT, Circuit Judge. [1] In this trademark "dilution by tarnishment" case, brought under the Trademark Dilution Revision Act of 2006, the question is whether the plaintiff, an international lingerie company that uses the trade name designation "Victoria's Secret" has a valid suit for injunctive relief against the use of the name "Victor's Little Secret" or "Victor's Secret" by the defendants, a small retail store in a mall in Elizabethtown, Kentucky, that sells assorted merchandise, including "sex toys" and other sexually oriented products. The District Court issued the injunction. Since then the shop has been operating under the name of "Cathy's Little Secret." The District Court concluded that even though the two parties do not compete in the same market, the "Victor's Little Secret" mark-because it is sex related-disparages and tends to reduce the positive associations and the "selling power" of the "Victoria's Secret" mark. The question is whether the plaintiff's case meets the definitions and standards for "dilution by tarnishment" set out in the new Act which amended the old Act, i.e., the Federal Trademark Dilution Act of 1995.

[2] The new Act was expressly intended to overrule the Supreme Court interpretation of the old Act in this very same case, Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003), rev'g 259 F.3d 464 (6th Cir. 2001), aff'g 54 U.S.P.Q.2d 1092 (W.D. Ky. 2000). The Supreme Court reversed a panel of this Court that had affirmed an injunction against "Victor's Little Secret" issued by the District Court. On remand to the District Court from the Supreme Court after the 2003 reversal, no new evidence was introduced, and the District Court reconsidered the case based on the same evidence but used the new language in the new Act which overrules the Supreme Court in this case. We will first brief the Supreme Court opinion and the reasons Congress overruled the Supreme Court in this case. We will then outline our understanding of the new standards for measuring trademark "dilution by tarnishment" and apply them to this case. We conclude that the new Act creates a kind of rebuttable presumption, or at least a very strong inference, that a new mark used to sell sex related products is likely to tarnish a famous mark if there is a clear semantic association between the two. That presumption has not been rebutted in this case.

I. The Supreme Court Opinion and the New Act

[3] The Supreme Court explained that this case started when an Army Colonel at Fort Knox saw an ad for "Victor's Secret" in a weekly publication. It advertised that the small store in Elizabethtown sold adult videos and novelties and lingerie. 3 There was no likelihood of confusion between the two businesses or the two marks, but the Army Colonel was offended because the sexually-oriented business was semantically associating itself with "Victoria's Secret." The Court explained that the concepts of "dilution by blurring" and "dilution by tarnishment" originated with an article in the Harvard Law Review, Frank Schechter, "Rational Basis of Trademark Protection," 40 HARV. L. REV. 813 (1927), and that the history and meaning of the concepts were further well explained in Restatement (Third) of Unfair Competition, Section 25 (1995). The Restatement section referred to by the Supreme Court explains this new intellectual property tort and contains in § 25 a comprehensive statement of "Liability Without Proof of Confusion: Dilution and Tarnishment." "Tarnishment," as 3 The Supreme Court explained:

In the February 12, 1998, edition of a weekly publication distributed to residents of the military installation at Fort Knox, Kentucky, petitioners advertised the "GRAND OPENING just in time for Valentine's Day!" of their store "VICTOR'S SECRET" in nearby Elizabethtown. The ad featured "Intimate Lingerie for every woman," "Romantic Lighting"; "Lycra Dresses"; "Pagers"; and "Adult Novelties/Gifts." An army colonel, who saw the ad and was offended by what he perceived to be an attempt to use a reputable company's trademark to promote the sale of "unwholesome, tawdry merchandise," sent a copy to respondents. Their counsel then wrote to petitioners stating that their choice of the name "Victor's Secret" for a store selling lingerie was likely to cause confusion with the well-known VICTORIA'S SECRET mark and, in addition, was likely to "dilute the distinctiveness" of the mark. They requested the immediate discontinuance of the use of the name "and any variations thereof." In response, petitioners changed the name of their store to "Victor's Little Secret." Because that change did not satisfy respondents, they promptly filed this action in Federal District Court.

distinguished from "dilution by blurring" was the only claim before the Supreme Court and is the only claim before us in this new appeal. We quote at length the relevant Restatement explanation of "tarnishment" in the footnote below. 4 [4] After reviewing a number of secondary sources other than the Harvard Law Review article and the Restatement, including state statutes on dilution and a Fourth Circuit case, the 4 c. Interests protected. The antidilution statutes have been invoked against two distinct threats to the interests of a trademark owner. First, a mark may be so highly distinctive and so well advertised that it acts as a powerful selling tool. Such a mark may evoke among prospective purchasers a positive response that is associated exclusively with the goods or services of the trademark owner. To the extent that others use the trademark to identify different goods, services or businesses, a dissonance occurs that blurs this stimulant effect of the mark. The antidilution statutes protect against this dilution of the distinctiveness and selling power of the mark.

The selling power of a trademark also can be undermined by a use of the mark with goods or services such as illicit drugs or pornography that "tarnish" the mark's image through inherently negative or unsavory associations, or with goods or services that produce a negative response when linked in the minds of prospective purchasers with the goods or services of the prior user, such as the use on insecticide of a trademark similar to one previously used by another on food products.

Tarnishment and dilution of distinctiveness, although conceptually distinct, both undermine the selling power of a mark, the latter by disturbing the conditioned association of the mark with the prior user and the former by displacing positive with negative associations. Thus, tarnishment and dilution of distinctiveness reduce the value of the mark to the trademark owner. . . . . g. Tarnishment. The antidilution statutes have also been invoked to protect the positive associations evoked by a mark from subsequent uses that may disparage or tarnish those associations. The rule stated in Subsection (1)(b) applies to cases in which the tarnishment results from a subsequent use of the mark or a substantially similar mark in a manner that associates the mark with different goods, services, or businesses. Use of another's mark by the actor, not as a trademark or trade name, but in other ways that may disparage or tarnish the prior user's goods, services, business, or mark is governed by the rule stated in Subsection (2).

Any designation that is distinctive under the criteria established in § 13 is eligible for protection against disparaging or tarnishing use by others. Whenever the subsequent use brings to mind the goods, services, business, or mark of the prior user, there is potential for interference with the positive images associated with the mark. To prove a case of tarnishment, the prior user must demonstrate that the subsequent use is likely to come to the attention of the prior user's prospective purchasers and that the use is likely to undermine or damage the positive associations evoked by the mark.

3. A, a bank, uses the designation "Cookie Jar" to identify its automatic teller machine. B opens a topless bar across the street from A under the trade name "Cookie Jar." Although prospective customers of A are unlikely to believe that A operates or sponsors the bar, B is subject to liability to A for tarnishment under an applicable antidilution statute if the customers are likely to associate A's mark or A's business with the images evoked by B's use. Supreme Court held that "actual harm" rather than merely the "likelihood of tarnishment" is necessary and stated its conclusion as follows:

Noting that consumer surveys and other means of demonstrating actual dilution are expensive and often unreliable, respondents [Victoria's Secret] and their amici argue that evidence of an actual "lessening of the capacity of a famous mark to identify and distinguish goods or services," may be difficult to obtain. It may well be, however, that direct evidence of dilution such as consumer surveys will not be necessary if actual dilution can reliably be proved through circumstantial evidence-the obvious case is one where the junior and senior marks are identical. Whatever difficulties of proof may be entailed, they are not an acceptable reason for dispensing with proof of an essential element of a statutory violation. The evidence in the present record is not sufficient to support the summary judgment on the dilution count. The judgment is therefore reversed, and the case is remanded for further proceedings consistent with this opinion. 537 U.S. at 434, 123 S.Ct. 1115 (emphasis added).

[5] Thus, the Court held that "actual harm" rather than merely a "likelihood" of harm must be shown by Victoria's Secret in order to prevail and that this means that Victoria's Secret carries the burden of proving an actual "lessening of the capacity of the Victoria's Secret mark to identify and distinguish goods or services sold in Victoria's Secret stores or advertised in its catalogs." Id. In the new law Congress rejected the Court's view that a simple "likelihood" of an association in the consumer's mind of the Victoria's Secret mark with the sexually-oriented videos and toys of "Victor's Secret" is insufficient for liability.

[6] The House Judiciary Committee Report states the purpose of the new 2006 legislation as follows:

The Moseley standard creates an undue burden for trademark holders who contest diluting uses and should be revised. . . . . The new language in the legislation [provides] . . . specifically that the standard for proving a dilution claim is "likelihood of dilution" and that both dilution by blurring and dilution by tarnishment are actionable.

(Emphasis added.) U.S. Code Cong. & Adm. News, 109th Cong.2d Sess. 2006, Vol. 4, pp. 1091, 1092, 1097. . . . The drafters of the Committee Report also called special attention to the "burden" of proof or persuasion placed on "trademark holders" by the Supreme Court's opinion in Moseley, suggesting a possible modification in the burden of proof. The question for us then is whether "Victor's Little Secret" with its association with lewd sexual toys creates a "likelihood of dilution by tarnishment" of Victoria's Secret mark. [7] The specific question in this case is whether, without consumer surveys or polls or other evidence, a semantic "association" is equivalent to a liability-creating mental "association" of a junior mark like "Victor's Little Secret" with a famous mark like "Victoria's

Secret" that constitutes dilution by tarnishment when the junior mark is used to sell sexual toys, videos and similar soft-core pornographic products. There appears to be a clearly emerging consensus in the case law, aided by the language of § 25 of the Restatement of Trademarks 3d, quoted in footnote 4, supra, that the creation of an "association" between a famous mark and lewd or bawdy sexual activity disparages and defiles the famous mark and reduces the commercial value of its selling power. This consensus stems from an economic prediction about consumer taste and how the predicted reaction of conventional consumers in our culture will affect the economic value of the famous mark. [8] There have been at least eight federal cases in six jurisdictions that conclude that a famous mark is tarnished when its mark is semantically associated with a new mark that is used to sell sex-related products. We find no exceptions in the case law that allow such a new mark associated with sex to stand. See Pfizer Inc. v. Sachs, 652 F.Supp. [9] The phrase "likely to cause dilution" used in the new statute . . . significantly changes the meaning of the law from "causes actual harm" under the preexisting law. The word "likely" or "likelihood" means "probably," WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY 1310 (1963); BLACK'S LAW DICTIONARY 1076 (1968). It is important to note also that the Committee Report quoted above seeks to reduce the "burden" of evidentiary production on the trademark holder. The burden-of-proof problem, the developing case law, and the Restatement (Third) of Trademarks in § 25 (particularly subsection g) should now be interpreted, we think, to create a kind of rebuttable presumption, or at least a very strong inference, that a new mark used to sell sex-related products is likely to tarnish a famous mark if there is a clear semantic association between the two. This res ipsa loquitur-like effect is not conclusive but places on the owner of the new mark the burden of coming forward with evidence that there is no likelihood or probability of tarnishment. The evidence could be in the form of expert testimony or surveys or polls or customer testimony.

[10] In the present case, the Moseleys have had two opportunities in the District Court to offer evidence that there is no real probability of tarnishment and have not done so. They did not offer at oral argument any suggestion that they could make such a showing or wanted the case remanded for that purpose. The fact that Congress was dissatisfied with the Moseley result and the Moseley standard of liability, as well as apparently the Moseley burden of proof, supports the view of Victoria's Secret that the present record-in the eyes of the legislative branch-shows a likelihood of tarnishment. Without evidence to the contrary or a persuasive defensive theory that rebuts the presumption, the defendants have given us no basis to reverse the judgment of the District Court. We do not find sufficient the defendants' arguments that they should have the right to use Victor Moseley's first name and that the effect of the association is de minimis. The Moseleys do not have a right to use the word "secret" in their mark. They use it only to make the association with the Victoria's Secret mark. We agree that the tarnishing effect of the Moseley's mark on the senior mark is somewhat speculative, but we have no evidence to overcome the strong inference created by the case law, the Restatement, and Congressional dissatisfaction with the burden of proof used in this case in the Supreme Court. The new law seems designed to protect trademarks from any unfavorable sexual associations. Thus, any new mark with a lewd or offensive-tosome sexual association raises a strong inference of tarnishment. The inference must be overcome by evidence that rebuts the probability that some consumers will find the new mark both offensive and harmful to the reputation and the favorable symbolism of the famous mark.

[11] Our dissenting colleague, in relying on the Supreme Court treatment of the proof in this case-for example, the long quotation from the Supreme Court concerning the legal effect of the evidence-fails to concede what seems obvious: Congress overruled the Supreme Court's view of the burden of proof. As quoted above, it said, "the Moseley standard creates an undue burden for trademark holders who contest diluting uses." It seems clear that the new Act demonstrates that Congress intended that a court should reach a different result in this case if the facts remain the same. We do not necessarily disagree with our dissenting colleague that the policy followed by the Supreme Court in such cases may be better. We simply believe that the will of Congress is to the contrary with regard to the proof in this case and with regard to the method of allocating the burden of proof. . . . . JULIA SMITH GIBBONS, Circuit Judge, concurring.

[12] I fully concur in the majority opinion with the exception of one small quibble. I would not use the term "rebuttable presumption" to describe the inference that a new mark used to sell sex-related products is likely to tarnish a famous mark if there is a clear semantic association between the two. Practically speaking, what the inference is called makes little difference. I agree with the majority opinion that the inference is a strong one and that, to counter it, some evidence that there is no likelihood or probability of tarnishment is required. But because we are endeavoring to interpret a new law and because the legislative history is not explicit on the point of modification of the burden of proof, I think it best to end our analysis by characterizing the inference as an inference. KAREN NELSON MOORE, Circuit Judge, dissenting.

[13] Because I believe that Victoria's Secret has failed to produce sufficient evidence to show that the Moseleys' use of the name "Victor's Little Secret" is likely to tarnish the VICTORIA'S SECRET mark, I would reverse the judgment of the district court and must respectfully dissent.

[14] Under the Trademark Dilution Revision Act of 2006 ("TDRA"), Victoria's Secret is entitled to injunctive relief if the Moseleys' use of "Victor's Little Secret" as the name of their adult-oriented novelty store 1 "is likely to cause dilution . . . by tarnishment of the" VICTORIA'S SECRET mark. 15 U.S.C. § 1125(c) (1). "[D]ilution by tarnishment" is defined as an "association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark." Id. § 1125(c)(2)(C). Thus, under the terms of the statute, to determine whether the VICTORIA'S SECRET mark is likely to be tarnished by the Moseleys' use, this court must inquire as to both the "association" between the two marks and the "harm" that the association causes to the senior mark.

[15] Because I agree that there is a clear association between the two marks, the determinative inquiry in this dilution-by-tarnishment case is whether that association is likely to harm Victoria's Secret's reputation. See id. § 1125(c)(2)(C) ("that harms the reputation of the famous mark"). Contrary to the majority's conclusion, however, given the record before the panel, I would hold that Victoria's Secret has failed to meet its burden to show that the Moseleys' use of "Victor's Little Secret" is likely to dilute Victoria's Secret's mark. 2 1 Victor's Little Secret "sell[s] a wide variety of items, including adult videos, adult novelties, and lingerie." Moseley v. v. Secret Catalogue, Inc., 537 U.S. 418, 424, 123 S.Ct. 1115, 155 L.Ed.2d 1 (2003) (internal quotation marks omitted); see also id. at 424 n. 4, 123 S.Ct. 1115 (listing numerous other items sold). "Victor Moseley stated in an affidavit that women's lingerie represented only about five percent of their sales." Id. at 424, 123 S.Ct. 1115.

2 I respectfully disagree with the majority's conclusion that in dilution-by-tarnishment cases involving new marks "with lewd or offensive-to-some sexual association[s]" the TDRA establishes a presumption or inference of tarnishment that the Moseleys must rebut. Maj. Op. at 389, 390. To be sure, the House Judiciary Committee Report highlights Congress's concern with the pre-TDRA actualdilution standard, but I do not read its concern that the previous standard created "an undue burden" to mean that Congress envisioned a modification of the party that bears the burden of proof as opposed to simply a lightening of the evidentiary showing. [16] Victoria's Secret's evidence of tarnishment includes nothing more than the following: (1) an affidavit from Army Colonel John E. Baker stating that he "was . . . offended by [the] defendants' use of [Victoria's Secret's] trademark to promote . . . unwholesome, tawdry merchandise," such as "'adult' novelties and gifts," and that since his "wife . . . and . . . daughter . . . shop at Victoria's Secret, [he] was further dismayed by [the] defendants' effort to associate itself with, trade off on the image of, and in fact denigrate a store frequented by members of [his] family," Record on Appeal ("ROA") at 267 (Baker Aff.); and (2) a statement from one of Victoria's Secret's corporate officers that Victoria's Secret strives to "maintain[ ] an image that is sexy and playful" and one that "avoid[s] sexually explicit or graphic imagery." Id. at 90 (Kriss Aff.).

[17] Reviewing Baker's affidavit, I believe that it is plain that Baker made a "mental association" between "Victor's Little Secret" and "Victoria's Secret." Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 434, 123 S.Ct. 1115, 155 L.Ed.2d 1 (2003); see also ROA at 266 (Baker Aff.). It is also clear that Baker held a negative impression of "Victor's Little Secret." See Moseley, 537 U.S. at 434, 123 S.Ct. 1115; see also ROA at 267 (Baker Aff.). But despite the clear negative association of this one individual when confronted with "Victor's Little Secret," Victoria's Secret has presented no evidence that Baker's, or anyone else's, distaste or dislike of "Victor's Little Secret" is likely to taint their positive opinion or perception of Victoria's Secret. Yet evidence that the junior mark is likely to undermine or alter the positive associations of the senior mark-i.e., evidence that the junior mark is likely to harm the reputation of the senior mark-is precisely the showing required under the plain language of 15 U.S.C. § 1125(c)(2)(C) to prove dilution by tarnishment. As the Second Circuit recently noted in Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009):

That a consumer may associate a negative-sounding junior mark with a famous mark says little of whether the consumer views the junior mark as harming the reputation of the famous mark. The more relevant question, for purposes of tarnishment, would have been how a hypothetical coffee [with a negativesounding name] would affect the positive impressions about the coffee sold by Starbucks.

Starbucks Corp., 588 F.3d at 110; see also J. Thomas McCarthy, 4 McCarthy on Trademarks and

Unfair Competition § 24:89 (4th ed.) [hereinafter McCarthy on Trademarks] (discussing tarnishment claims as being premised on the notion that "positive associations" of the senior mark will be displaced or degraded by the negative associations of the junior mark); Restatement (Third) of Unfair Competition § 25 cmt. g (1995) ("To prove a case of tarnishment, the prior user must demonstrate that the subsequent use is likely to . . . undermine or damage the positive associations evoked by the mark."). In fact, when reviewing the exact same evidentiary record, the Supreme Court explicitly noted that Victoria's Secret's offer of proof included no evidence that "Victor's Little Secret" affected Baker's positive impressions of Victoria's Secret:

The record in this case establishes that an army officer . . . did make the mental association with "Victoria's Secret," but it also shows that he did not therefore form any different impression of the store that his wife and daughter had patronized. There is a complete absence of evidence of any lessening of the capacity of the VICTORIA'S SECRET mark to identify and distinguish goods or services sold in Victoria's Secret stores or advertised in its catalogs. The officer was offended by the ad, but it did not change his conception of Victoria's Secret. His offense was directed entirely at [the Moseleys], not at [Victoria's Secret]. Moreover, the expert retained by respondents had nothing to say about the impact of [the Moseleys'] name on the strength of [Victoria's Secret's] mark.

Moseley, 537 U.S. at 434, 123 S.Ct. 1115 (emphases added). 3 3 The majority mischaracterizes my citation to the Supreme Court's decision as evidencing a refusal to follow the "will of Congress" and a desire to follow the pre-TDRA "policy [of the] . . . Supreme Court." Maj. Op. at 389. My citation to the Supreme Court's decision, however, does no such thing. First, as stated previously, I believe that the majority's conclusion that Congress intended to change which party has the burden of proof-i.e., the framework governing which party must put forth evidence in support of its position-as opposed to the standard of harm-i.e., actual harm versus a likelihood of harm-is not supported by the statute or the legislative history. In fact, the only evidence that the majority cites in support of its belief that Congress intended to place the burden of proof on the defendant is the House Committee Report, but even that Report undercuts the majority's argument. The full paragraph from which the majority draws its quotation states:

[19] Certainly, it is possible that the Moseleys' use of "Victor's Little Secret" to sell adultoriented material and other novelties could reflect poorly on the VICTORIA'S SECRET mark and could cause Victoria's Secret to suffer damage to its "sexy and playful" reputation, but the evidentiary standard set forth in the statute is one of likelihood not mere possibility. Likelihood is based on probable consequence and amounts to more than simple speculation as to what might possibly happen. See McCarthy on Trademarks § 24:115 n. 2 (indicating that "'likelihood' in the dilution part of the Lanham Act has the same meaning as it does in the traditional infringement sections of the Lanham Act: as synonymous with 'probability'"); see also Parks v. LaFace Records, 329 F.3d 437, 446 (6th Cir. 2003) ("A 'likelihood' means a 'probability' rather than a 'possibility' of confusion."). Yet, as the majority notes, on the instant record, the "tarnishing effect of the Moseley's mark on the senior mark" is nothing more than "speculative." Maj. Op. at 388-89.

[20] Despite the absence of evidence, the majority is willing to assume that Victoria's Secret has met its burden to prove the essential element of "harm to reputation" based on the fact that numerous cases from other jurisdictions conclude, without much inquiry, "that a famous mark is tarnished when its mark is semantically associated with a new mark that is used to sell sex-related products." Id. at 388. I do not agree. Although it is true that courts have concluded that a finding of tarnishment is likely when a mark's "likeness is placed in the reputation of its mark, I am doing nothing more than applying the plain language of the statute that Congress enacted after the Supreme Court's decision. This approach certainly reflects the "will of Congress." Maj. Op. at 389. context of sexual activity, obscenity, or illegal activity," Hormel Foods Corp., 73 F.3d at 507, a court cannot ignore the showing of reputational harm that the statute requires. 4 [21] Even assuming that "Victor's Little Secret" is plainly unwholesome when compared to Victoria's Secret and that this case is completely analogous to those cases on which the majority relies, I still maintain that it is improper simply to assume likelihood of harm to the reputation of a senior mark when dealing with a junior mark of sexual character. As recounted above, there is no evidence connecting Victor's Little Secret's "unwholesome" or "tawdry" sexual character to the senior mark's reputation, and there is nothing in the language of the TDRA that would allow the court to forgive a party's obligation to present proof as to an element of the tarnishment cause of action-i.e., the likelihood of harm to 4 Nor can the court ignore the character of the senior mark when applying the majority's "rule." Victoria's Secret sells women's lingerie, and, as Victoria's Secret readily admits, its own mark is already associated with sex, albeit not with sex novelties. See ROA at 90 (Kriss Aff.) (noting that Victoria's Secret attempts to maintain a "sexy and playful" image); see also, e.g., id. at 156-57 (depicting Victoria's Secret advertisements for "sexy little things" lingerie, which urge customers to "[b]e bad for goodness sake[ ] [i]n peek-a-boo's, bras and sexy Santa accessories," to "[g]ive flirty panties" as gifts, and participate in the store's "panty fantasy," which it describes as "Very racy. Very lacy"); id. at 209 (reproducing an article in Redbook magazine entitled "46 Things to Do to a Naked Man," which highlights Victoria's Secret's role in the sexual activities of one of the contributors).

In essence, the VICTORIA'S SECRET mark is not entirely separate from the sexual context within which the junior mark, "Victor's Little Secret," operates. This fact makes the instant case unlike many of the cases that the majority cites. reputation. 5 See McCarthy on Trademarks § 24:115 ("Even after the 2006 revision when only a likelihood of dilution is required, . . . judges should demand persuasive evidence that dilution is likely to occur. Even the probability of dilution should be proven by evidence, not just by theoretical assumptions about what possibly could occur or might happen.").

[22] With its conclusion that there is sufficient evidence of harm to the reputation of the VICTORIA'S SECRET mark based solely on the sexual nature of the junior mark, the majority sanctions an almost non-existent evidentiary standard and, in the process, essentially eliminates the requirement that a plaintiff provide some semblance of proof of likelihood of reputational harm in order to prevail on a tarnishment claim, despite the plain language of 15 U.S.C. § 1125(c) (2). Because I believe that Victoria's Secret has not met its burden to show that "Victor's Little Secret" is likely to dilute the famous mark by way of tarnishment, I respectfully dissent.

1. Criticisms of the Sixth Circuit majority opinion in V Secret. Leading voices in trademark law have strongly criticized the majority opinion. See, e.g., MCCARTHY § 24:89 (condemning the V Secret presumption as "wildly misguided" and observing that "[t]he majority's presumption certainly sounds like the judiciary is making value judgments about what is unacceptably 'sexy,' a highly subjective and very slippery slope, allowing courts to censor uses they personally find 'sex-related.'"). McCarthy further notes a fundamental problem with the plaintiff's evidence of tarnishment (and perhaps with the theory of dilution by tarnishment more broadly): "I find very troubling that the district court based its finding of a likelihood of tarnishment upon the very same testimony that the Supreme Court in 2003 had characterized as not being evidence of tarnishment." Id. McCarthy explains:

The district court relied on the same Army officer's testimony that the Supreme Court characterized in its opinion. That is, an Army Officer was offended by the junior user's use of its name on what he considered to be tasteless goods. The Supreme Court said that the officer "did not therefore form any different impression of the store that his wife and daughter had patronized … . The officer was offended by the ad, but it did not change his conception of Victoria's Secret. His offense was directed entirely at [the junior user], not at [the senior user Victoria's Secret]." Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 434 (2003). Yet, on remand, the district court said this same testimony "suggests the likelihood that the reputation and standing of the VICTORIA'S SECRET mark would be tarnished."

In Matal v. Tam, 582 U.S. 218 (2017), excerpted above in Part I.B.5, the Supreme Court ruled that the Lanham Act § 2(a) prohibition on the registration of marks that "may disparage . . . persons" was invalid under the Free Speech Clause of the First Amendment. What are the implications of the Court's reasoning in Tam for antidilution law, and particularly for anti-tarnishment law? 3. Tarnishment or "burnishment"? See Jake Linford, Justin Sevier & Allyson Willis, Trademark Tarnishmyths, 55 ARIZ. ST. L.J. 609 (2023) (reporting the results of a series of experiments that suggest that purportedly tarnishing conduct associating a targeted mark with sex, narcotics, or sacrilege does not harm the reputation and may even result in the "burnishment" of the mark).

There are three main methods by which a trademark owner may seek to prevent thirdparty unauthorized uses of its trademark as part of an internet domain name: ( 1 Roslyn O. Silver, Senior United States District Judge:

[1] Defendant Automobili Lamborghini ("Lamborghini") manufactures cars sometimes referred to as "Lambos." Plaintiff Richard Blair is the current owner of the domain name <lambo.com> ("Disputed Domain"). Lamborghini believes it is entitled to own that domain name and an international arbitration panel agreed. Blair filed this suit seeking a judgment that he is allowed to retain ownership of <lambo.com>. Lamborghini filed a motion for summary judgment on all claims. Because Blair has failed to demonstrate genuine issues of material fact, the Court will grant Lamborghini's motion. BACKGROUND . . . . [2] Lamborghini is an Italian manufacturer of luxury sports cars. Richard Blair is an investor and developer of domain names. On January 16,1990, Lamborghini filed an application, Serial No. 74019105, with the United States Patent and Trademark Office ("USPTO") to register the LAMBORGHINI mark. On November 13, 1990, the USPTO granted Lamborghini's application and the LAMBORGHINI mark received its federal registration, U.S. Registration No. 1622382. The domain <lambo.com> was registered on March 5, 2000. On February 16, 2018, Blair purchased the Disputed Domain for $10,000 from John Lambeth. When Blair acquired the Disputed Domain, neither Blair nor Lamborghini had any trademark rights in the word LAMBO. 1[3] On April 29, 2022, Lamborghini filed a Complaint with the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center seeking a transfer of domain name under the Uniform Domain Name Dispute Resolution Policy (the "UDRP"). On August 3, 2022, the panel determined (with one dissenting panelist) the domain was "confusingly similar" to the LAMBORGHINI mark and Blair was using the mark in bad faith. The panel ordered Blair to transfer the domain to Lamborghini. After Lamborghini filed its WIPO complaint, Blair redirected visitors to the <lambo.com> domain to a third-party website called NamePros.com wherein Blair stated, among other things, he would "defend, defeat, and humiliate" Lamborghini, accused Lamborghini of "theft," and provided a link to the UDRP proceedings in his blog post.

[4] Blair has listed the Disputed Domain for sale at different prices at various times as follows: August 6, 2020-$1,129,298.00; December 23, 2020-$1.5 million; January 27, 2021-$3.3 million; September 23, 2021-$12 million; August 11, 2022-€50 million; September 7, 2023 and currently-$75 million. Blair received several offers and inquiries from others seeking to buy <lambo.com> at various different prices, but he declined them all. Blair has not used the Disputed Domain-neither commercially nor non-commercially-and claims he purchased it because he saw <lambo.com> as a "brandable, pronounceable, singleword dot-com domain name" that fit with his existing portfolio of around 130 other domain names. Blair claims he planned to "develop" the Disputed Domain but had abandoned those plans due to "limited personal capacity." Finally, Blair claims he will seek to later resume development of the website. Lamborghini argues Blair's ownership of the Disputed Domain violates the Anti-Cybersquatting Consumer Protection Act ("ACPA").

. . . . [5] To establish a cybersquatting violation under the ACPA, a mark owner must prove "(1) the [domain name owner] registered, trafficked in, or used a domain name; (2) the domain name is identical or confusingly similar to a protected mark owned by the [mark owner]; and (3) the [domain name owner] acted with bad faith intent to profit from that mark." DSPT Intern., Inc. v. Nahum, 624 F.3d 1213, 1218-19 (9th Cir. 2010) (internal quotations omitted). The ACPA lists nine non-exhaustive factors a court may consider in determining bad faith:

(I) the trademark or other intellectual property rights of the person, if any, in the domain name;

(II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;

(III) the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;

(IV) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name;

(V) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;

(VI) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct;

(VII) the person's provision of material and misleading false contact information when applying for the registration of the domain name, the person's intentional failure to maintain accurate contact information, or the person's prior conduct indicating a pattern of such conduct;

(VIII) the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and

(IX) the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c). [6] The plain language of the ACPA requires not just proof of "bad faith" in a generalized sense. Rather, "[a] defendant is liable only where a plaintiff can establish that the defendant had a 'bad faith intent to profit. ' [8] Defendant Automobili Lamborghini moves for summary judgment on its cybersquatting claim under 15 U.S.C. § 1125(d). Blair concedes (i) he is the current registrant of the domain name <lambo.com>; (ii) the LAMBORGHINI mark was distinctive prior to both the initial registration of the Disputed Domain and as of the date Blair purchased the Disputed Domain; and (iii) <lambo.com> is confusingly similar to the LAMBORGHINI mark. This leaves at issue only whether Blair acted with bad faith intent to profit from the mark. Lamborghini's motion analyzes several of the ACPA bad faith factors, arguing they are undisputed and leave no genuine issue of material fact whether Blair acted with bad faith intent to profit. Blair's response argues disputes exist regarding his lack of bad faith that render summary judgment inappropriate. The Court will analyze each of the nine factors and conclude that no genuine issues of material fact exist with respect to Blair's bad faith intent to profit.

A. Intellectual Property Rights in the Domain Name (Factor I)

[9] Lamborghini first asserts Blair has no trademark or other intellectual property rights in <lambo.com>. Blair admits he has no trademark rights in the word LAMBO. This factor clearly favors Lamborghini. See Sporty's Farm L.L.C., 202 F.3d at 498 (finding Factor I favored the mark holder where the alleged cybersquatter had no property rights in the mark at the time of registration).

[10] Lamborghini next asserts "Lambo" is not Blair's legal name nor a name "commonly used to identify" Blair. Lamborghini offers evidence in the form of several email exchanges where Blair and others refer to him as "Richard" or "Richard Blair." Blair argues he has used "Lambo," "Lambo.com," and "Lambodotcom" as a moniker in multiple online communities and in the field of domain name investment and development. Somewhat perplexing, Blair claims he was drawn to the name "Lambo" as a play on the word "Lamb," with an outlier generic aptitude and intelligence, hence "Lambo-O", and the name "Lambo" "resonated with him on a personal level and perfectly encapsulated his identity and ethos." Lamborghini asserts Blair only began referring to himself as "Lambo" after he acquired <lambo.com> which disqualifies Blair from protection under this factor. Lamborghini cites a legislative report and a well-known trademark law treatise as support for this contention. See Reply at 2 (citing H.R.Rep. No. 106-412, at *10 ("This factor is not intended to suggest that domain name registrants may evade the application of this act by merely adopting Exxon, Ford, Bugs Bunny or other well-known marks as their nicknames.") and 5 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 25A:55).

[11] Blair argues he adopted the "Lambo" moniker before Lamborghini commenced the UDRP proceeding. This is immaterial. The fact that a party used the domain name as a nickname is only probative of good faith if the usage occurred prior to Plaintiff's acquisition of the domain name. See Sporty's Farm, 202 F.3d at 499 (finding that although the domain name included part of Plaintiff's name, the Plaintiff-entity "did not exist at the time the domain name was registered"). To suggest otherwise would render the import of this factor meaningless. See H.R.Rep. No. 106-412, at *10. Blair fails to provide evidence that he adopted the moniker "Lambo" before purchasing the Disputed Domain. Accordingly, Factor II clearly favors Lamborghini.

C. Use of the Domain Name (Factors III and IV)

[12] Lamborghini next asserts Blair has not made use of the Disputed Domain "whether that be a bona fide commercial, noncommercial, or fair use." Blair fails to respond to or dispute this assertion. Indeed, Blair never developed <lambo.com> beyond a landing page, which, since mid-2020, has been replaced with a "For Sale" page allowing web users to purchase, or make an offer to purchase, the Disputed Domain. This factor clearly favors Lamborghini. See Porsche Cars N. Am., Inc. v. Spencer, No. CIV. S-00-471 GEB PA, 2000 WL 641209, at *4 (E.D. Cal. May 18, 2000) (finding no prior use of the domain name in connection with the bona fide offering of goods and services when the webpage at issue solicited offers to purchase the domain name).

[13] The evidence presented with respect to Factors I through IV make clear Blair did not acquire the Disputed Domain in good faith.

[14] Lamborghini asserts Blair acted with bad-faith intent when-after Lamborghini filed its UDPR Complaint-Blair redirected visitors to the <lambo.com> domain to a thirdparty website "where Mr. Blair disparaged Lamborghini's actions against him." The thirdparty website, NamePros.com, contained a blog post published by Plaintiff under the alias "lambo.com." The blog post, among other things, (1) stated "I AM LAMBO of LAMBO.com and I will defend, defeat and humiliate those endeavouring to steal any of my domain name brands -including my moniker," (2) accused Lamborghini of "THEFT of my asset, nomenclature, and taxonomy they possess ZERO rights to," (3) contained the link to the UDRP proceedings, and (4) stated "[c]ountermeasures to humiliate such endeavours are afoot. Unlawful theft will be duly punished through legal and commensurate counter efforts including any coerced and submissive accomplices." [15] Blair, in response, asserts Lamborghini "misrepresents the import of Factor V, and the ACPA overall" because Lamborghini's interpretation of the factor effectively eliminates the "intent to profit" language in the "bad faith intent to profit" requirement. Blair argues his statements in the blog post regarding defending, defeating, and humiliating Lamborghini do not evince an intent to profit and are not emblematic of the "essence of the wrong" the ACPA was enacted to combat.

[16] Blair's actions in diverting <lambo.com> users to his blog post are not as clearly synonymous with bad faith intent to profit as the cases cited by Lamborghini. Morrison & Foerster, LLP v. Wick, 94 F.Supp.2d 1125, 1131-32 (D. Colo. 2000) (finding when alleged cybersquatter acquired domain names identical to the marks owned by a prominent law firm and the websites contained highly offensive and derogatory content regarding the legal profession, "a user may wonder about [the law firm's] affiliation with the sites or endorsement of the sites"); E. & J. Gallo Winery v. Spider Webs Ltd., 129 F. Supp. 2d 1033, 1045 (S.D. Tex. 2001) (finding when alleged cybersquatter acquired a domain name confusingly similar to the mark owned by a winery and the website contained commentary on the instant lawsuit and the unfairness of the ACPA, coupled with a strongly-worded campaign about the evils of alcohol consumption, the conduct "placed [the winery] at risk of losing business and of having its business reputation tarnished."). Both of these cases illustrate examples of highly offensive conduct, wherein the central purpose of acquiring the domain names was to harass the mark holders. That blatant harassment formed the basis of the Wick and Spider Webs decisions; Blair's conduct here does not conclusively project a primary motivation to harass Lamborghini, but rather to voice his grievances regarding the ongoing dispute.

[17] However, the Court notes Blair's conduct in redirecting web users to his blog post while clearly painting Lamborghini in a negative light does not bolster his assertion that he acted without bad faith intent to profit. It does the opposite. Construing this factor liberally, any disparagement of a mark by an alleged cybersquatter carries inherent negative commercial consequences-especially given Blair's platform and the substantial number of views and comments received by his blog post. Thus, although Blair's behavior in response to the UDRP proceedings is not given substantial weight in this analysis, this factor marginally weighs in Lamborghini's favor.

E. Offers to Sell the Domain Name (Factor VI)

[18] Lamborghini next asserts this factor weighs in its favor because Blair listed, and continues to list, the Disputed Domain at exorbitant prices with a current list price of $75 million, and he has entertained multiple offers from prospective buyers. Blair argues although he has received multiple inquiries from third parties seeking the asking price of <lambo.com>, he never made any attempt to negotiate a sale price with them. Instead, Blair directed the inquirers back to the exorbitant price(s) listed at the time and even increased the price of the Disputed Domain several times purportedly to discourage people from making offers, "as the Disputed Domain because more valuable to him as a part of his identity."

[19] Further, Lamborghini asserts Blair, in his Amended Complaint, admitted though he initially planned on developing a website at the Disputed Domain, "those plans were subsequently delayed and abandoned." ("Compl." at 3-4). In his affidavit, Blair states his "work and interests were scheduled to be showcased on <lambo.com>" and he completed a WordPress installation and a landing page on May 2, 2019. However, he subsequently decided to focus on developing another website at <ceec.com> due to limited personal capacity, and to resume development of <lambo.com> later. Blair states once <ceec.com> reaches certain developmental milestones, he plans to build <lambo.com> into a blog and Ceec founder's website that "will offer tips, tricks, and inspiration to others in the Ceec community, sharing insights from my experiences and fostering a supportive environment for individuals pursuing similar endeavors." Lamborghini contends Blair's statements are no more than an attempt to walk back on his prior statement that his plans to develop the Disputed Domain were "abandoned" in order "to manufacture a dispute of fact regarding his intentions with the <lambo.com> domain."

[20] Blair has not offered a credible response to substantiate his claim that he intends to make legitimate use of the Disputed Domain. He has owned <lambo.com> for over six years, and over the course of his ownership, has made no bona fide use of the website. In fact, since mid-2020, the Disputed Domain has platformed a "For Sale" page. Blair asserts he listed <lambo.com> for sale at an "unreasonably high price . . . to discourage prospective purchasers." An offer to sell an item necessarily requires an intention to sell that item. To contend otherwise would defy all common sense and well-settled principles of law. Blair provides no explanation as to how listing the Disputed Domain for sale discourages prospective purchasers. Not only did he receive numerous inquiries and offers to purchase the Disputed Domain, but he responded to and engaged with these prospective purchasers. If <lambo.com> was truly "valuable to him as part of his identity," and he intended to "resume development of <lambo.com> at a later date," the (seventy-five) million-dollar question is why Blair would offer it for sale in the first place-let alone consistently over the past four years.

[21] Further, Blair asserts he did not register <lambo.com> with the intent to sell it to Lamborghini, nor has he ever offered to sell the Disputed Domain to Lamborghini. However, an explicit offer to sell to the mark owner is not required. DSPT Int'l, Inc. v. Nahum, 624 F.3d 1213, 1221 (9th Cir. 2010). As an experienced domain name investor, Blair would know better than to directly extort Lamborghini. His conduct is indirectly extortionate because Lamborghini would have no other way to acquire the Disputed Domain besides forking over $75 million-or whatever ludicrous amount Blair decided on at any given day. Blair indisputably offered to sell the Disputed Domain-without any genuine intent to use it-for his own financial gain. This factor clearly favors Lamborghini. See Prudential Ins. Co. of Am. v. PRU.COM, 546 F. Supp. 3d 476, 490 (E.D. Va. 2021) (finding Factor VI weighed in favor of mark owner when alleged cybersquatter "used the domain name to procure a six figure sum"); cf. Lamparello v. Falwell, 420 F.3d 309, 321-22 (4th Cir. 2005) (finding Factor VI weighed in favor of alleged cybersquatter where he used the domain name to engage in permissible "comment and criticism" and never attempted to transfer it "for valuable consideration").

F. Misleading Contact Information (Factor VII)

[22] Blair asserts he did not provide false contact information for his acquisition and management of the Disputed Domain, nor did he fail to maintain accurate contact information. Lamborghini does not respond to or dispute this assertion. This factor favors Blair.

G. History of Cybersquatting (Factor VIII)

[23] Blair further asserts he does not have a history of cybersquatting because he has invested in domain names since 2009 and maintains a portfolio of around 130 domain names, several of which he has developed, and none of which infringe upon the marks of others. Blair's domain name portfolio includes two categories of name types: (1) short domain names consisting of a randomized combination of letters and numbers, such as <11215.com>, <wywy.com>, <ceec.com>, and <nyip.com>; and (2) names consisting of combinations of commonly used words, such as <AsbestosLitigation.com>, <CigarRoller.com>, <ComputerCase.com>, and <InternetFilter.com>. Blair asserts he "conscientiously avoids targeting established trademarks before he acquires a domain name." Moreover, prior to this dispute, Blair has never been accused of cybersquatting, been a party to a UDPR proceeding, or been a party to an action under the ACPA.

[24] Lamborghini disputes Blair's contention that none of the domain names in his portfolio infringe upon the marks of others, arguing at least two of the domain names owned by Blair are trademarked word marks not owned by Blair: DNAS and PHARMACORE. Blair provides a list of the domain names he owned or owns, along with the dates of purchase and/or sale, and the purchase or sale prices. Lamborghini provides the registration information for the trademarked word marks DNAS and PHARMACORE. The registration date of the DNAS mark is listed as May 4, 2021. Blair's purchase of <dnas.com> on June 2, 2018, however, predated the mark's registration. Thus, this example does not support cybersquatting because the trademark did not exist "at the time of registration" of <dnas.com>. See 15 U.S.C. § 1125(d)(1)(B)(i)(VIII). Although the PHARMACORE mark was registered on May 18, 2004, the record does not contain acquisition information for <pharmacore.com>, such as the date of purchaser and the vendor, which is essential in determining Blair's intent. Moreover, there is no evidence to support a finding that the PHARMACORE mark is "distinctive" or "famous" as stated in factor eight and that Blair's acquisition of <pharmacore.com> was made with bad faith intent to profit. See 15 U.S.C. § 1125(d)(1)(B)(i)(VIII).

[25] The Court notes is it significant that Blair has engaged in the business of acquiring, developing, investing in, and selling domain names for 15 years. "The ACPA was not enacted to put an end to the sale of all domain names." Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264, 270 (4th Cir. 2001); see also 5 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 25A:61 ("[T]he mere registration of multiple domain names for resale does not per se mark one as a cybersquatter. One may be in a justifiable business of reserving many domain names."). However, that Blair does not have a history of cybersquatting is not in itself enough to absolve him of an ill-intent to profit from Lamborghini's mark. Nevertheless, this factor weighs in Blair's favor.

H. Distinctive and Famous Mark (Factor IX)

[26] The final bad faith intent to profit factor "simply directs the court's attention to the strength of the [senior] mark." 5 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 25A:62 ("[The] more distinctive the senior mark, the greater the chance that there will be a likelihood of confusion."). Blair argues this factor weighs in his favor because "Lambo" is not distinctive and "not exclusively used by the public as a shorthand for Lamborghini." (Resp. at 9). However, this factor refers to the distinctiveness and famousness of the senior mark, i.e., LAMBORGHINI, not LAMBO. 15 U.S.C. § 1125(d)(1)(B)(i)(IX); see H.R. Rep. No. 106-412, at *13 (October 25, 1999) ("The more distinctive or famous a mark has become, the more likely the owner of that mark is deserving of the relief available under this act.").

[27] Blair admits "[t]he LAMBORGHINI mark was distinctive prior to both the initial registration of the domain name and as of the date Blair purchased the domain name" and "<lambo.com> is confusingly similar to the LAMBORGHINI mark." (Resp. at 7). There is no doubt the LAMBORGHINI mark is distinctive and famous as defined in 15 U.S.C. § 1125(c)as Blair concedes-because it is widely recognized by the general public in association with the world-famous automobiles it manufactures. This factor clearly favors Lamborghini.

[28] The evidence presented with respect to Factors V through IX, on balance, indisputably shows Blair evinces a bad faith intent to profit from the Disputed Domain.

[29] "The ACPA allows a court to view the totality of the circumstances in making the bad faith determination." Virtual Works, 238 F.3d at 270. The only two factors weighing in Blair's favor-Factors VII and VIII-do not overcome the strength of the remaining factors supporting his bad faith intent to profit from the Disputed Domain. While it may be true that (1) Blair initially acquired <lambo.com> for bona fide reasons to expand his domain name portfolio and eventually develop the website into a blog and (2) he has no prior history of cybersquatting, the conclusion of any reasonable factfinder can only be that Blair's actions with respect to the Disputed Domain to date were made with a bad faith intent to profit from the goodwill of Lamborghini. [30] Blair has no legal rights in the mark LAMBO. He only began adopting the moniker "Lambo" after acquiring the Disputed Domain. He has made no bona fide use of the Disputed Domain. Blair disparaged Lamborghini by redirecting <lambo.com> users to a blog post where he threatened to "humiliate" Lamborghini following its success in the UDRP proceedings. Since as early as mid-2020, Blair has listed the Disputed Domain for sale at exorbitant sums. Its current list price of $75 million marks a 749,900% increase from the price for which Blair purchased <lambo.com>. Blair claims he intends to develop <lambo.com> into a personal blog at an unspecified point in time, without presenting any concrete plans to do so.

[31] Moreover, LAMBORGHINI is a highly famous and distinctive mark, and Blair concedes LAMBO is confusingly similar to it. The Court notes the general public may not exclusively associate LAMBO with LAMBORGHINI. However, it is obvious the public's strong association of LAMBO with LAMBORGHINI is the most enticing reason for a prospective buyer's acquisition of the Disputed Domain. Profiteering on the goodwill of another's mark is exactly what the ACPA intended to prevent. See Lucas Nursery & Landscaping, Inc., 359 F.3d at 810 (citing S.Rep. No. 106-140, at *9). The sole reasonable inference from the facts and circumstances presented is that Blair acted with bad faith intent to profit from the LAMBORGHINI mark. Based on the totality of the circumstances and the admissible evidence presented, the Court finds there are no genuine disputes of material fact with respect to the cybersquatting claim. Therefore, the Court grants Lamborghini's motion. Because Blair's claims for injunctive relief under the ACPA necessarily fail, Blair's Complaint is dismissed with prejudice.

[32] Accordingly, IT IS ORDERED Defendant's motion for summary judgment is GRANTED. Plaintiff's Complaint is dismissed in its entirety with prejudice.

Lamparello v. Falwell 420 F.3d 309 (4th Cir. 2005)

[1] Christopher Lamparello appeals the district court's order enjoining him from maintaining a gripe website critical of Reverend Jerry Falwell. For the reasons stated below, we reverse.

[2] Reverend Falwell is "a nationally known minister who has been active as a commentator on politics and public affairs." Hustler Magazine v. Falwell, 485 U.S. 46, 47, 108 S.Ct. 876, 99 L.Ed.2d 41 (1988). He holds the common law trademarks "Jerry Falwell" and "Falwell," and the registered trademark "Listen America with Jerry Falwell." Jerry Falwell Ministries can be found online at "www.falwell.com," a website which receives 9,000 hits (or visits) per day.

[3] Lamparello registered the domain name "www.fallwell.com" on February 11, 1999, after hearing Reverend Falwell give an interview "in which he expressed opinions about gay people and homosexuality that [Lamparello] considered . . . offensive." Lamparello created a website at that domain name to respond to what he believed were "untruths about gay people." Lamparello's website included headlines such as "Bible verses that Dr. Falwell chooses to ignore" and "Jerry Falwell has been bearing false witness (Exodus 20:16) against his gay and lesbian neighbors for a long time." The site also contained in-depth criticism of Reverend Falwell's views. For example, the website stated:

Dr. Falwell says that he is on the side of truth. He says that he will preach that homosexuality is a sin until the day he dies. But we believe that if the reverend were to take another thoughtful look at the scriptures, he would discover that they have been twisted around to support an anti-gay political agenda . . . at the expense of the gospel.

[4] Although the interior pages of Lamparello's website did not contain a disclaimer, the homepage prominently stated, "This website is NOT affiliated with Jerry Falwell or his ministry"; advised, "If you would like to visit Rev. Falwell's website, you may click here"; and provided a hyperlink to Reverend Falwell's website.

[5] At one point, Lamparello's website included a link to the Amazon.com webpage for a book that offered interpretations of the Bible that Lamparello favored, but the parties agree that Lamparello has never sold goods or services on his website. The parties also agree that "Lamparello's domain name and web site at www.fallwell.com," which received only 200 hits per day, "had no measurable impact on the quantity of visits to [Reverend Falwell's] web site at www.falwell.com." [6] Nonetheless, Reverend Falwell sent Lamparello letters in October 2001 and June 2003 demanding that he cease and desist from using www.fallwell.com or any variation of Reverend Falwell's name as a domain name. Ultimately, Lamparello filed this action against Reverend Falwell and his ministries (collectively referred to hereinafter as "Reverend Falwell"), seeking a declaratory judgment of noninfringement. Reverend [7] The parties stipulated to all relevant facts and filed cross-motions for summary judgment. The district court granted summary judgment to Reverend Falwell, enjoined Lamparello from using Reverend Falwell's mark at www.fallwell.com, and required Lamparello to transfer the domain name to Reverend Falwell. Lamparello, 360 F.Supp.2d at 773, 775. However, the court denied Reverend Falwell's request for statutory damages or attorney fees, reasoning that the "primary motive" of Lamparello's website was "to put forth opinions on issues that were contrary to those of [Reverend Falwell]" and "not to take away monies or to profit." Id. at 775. [8] Lamparello appeals the district court's order; Reverend Falwell cross-appeals the denial of statutory damages and attorney fees. We review de novo a district court's ruling on cross-motions for summary judgment. See People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 364 (4th Cir. 2001) [hereinafter "PETA "].

{In analyzing Falwell's likelihood of confusion claims under Lanham Act § § 32 and 43(a), the court addressed without deciding the issue of whether Lamparello was engaging in commercial speech or using Falwell's mark "in connection with the sale, offering for sale, distribution, or advertising of any goods or services." Instead, the court simply found no likelihood of confusion as to the true source of Lamparello's website, explaining that "to determine whether a likelihood of confusion exists as to the source of a gripe site like that at issue in this case, a court must look not only to the allegedly infringing domain name, but also to the underlying content of the website." As for the issue of initial interest confusion, the court stated that "even if we did endorse the initial interest confusion theory, that theory would not assist Reverend Falwell here because it provides no basis for liability in circumstances such as these. The few appellate courts that have followed the Ninth Circuit and imposed liability under this theory for using marks on the Internet have done so only in cases involving a factor utterly absent here-one business's use of another's mark for its own financial gain . . . . This critical element-use of another firm's mark to capture the markholder's customers and profits-simply does not exist when the alleged infringer establishes a gripe site that criticizes the markholder."} III.

[9] We evaluate Reverend Falwell's cybersquatting claim separately because the elements of a cybersquatting violation differ from those of traditional Lanham Act violations. To prevail on a cybersquatting claim, Reverend Falwell must show that Lamparello: (1) "had a bad faith intent to profit from using the [www.fallwell.com] domain name," and (2) the domain name www.fallwell.com "is identical or confusingly similar to, or dilutive of, the distinctive and famous [Falwell] mark." PETA, 263 F.3d at 367 (citing 15 U.S.C.

[14] Equally important, Lamparello has not engaged in the type of conduct described in the statutory factors as typifying the bad faith intent to profit essential to a successful cybersquatting claim. First, we have already held, supra Part III.B, that Lamparello's domain name does not create a likelihood of confusion as to source or affiliation. Accordingly, Lamparello has not engaged in the type of conduct-"creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site," 15 U.S.C.

§ 1125(d)(1)(B)(i)(V) -described as an indicator of a bad faith intent to profit in factor V of the statute.

[15] Factors VI and VIII also counsel against finding a bad faith intent to profit here. Lamparello has made no attempt-or even indicated a willingness-"to transfer, sell, or otherwise assign the domain name to [Reverend Falwell] or any third party for financial gain." 15 U.S.C. § 1125(d)(1)(B)(i)(VI). Similarly, Lamparello has not registered "multiple domain names," 15 U.S.C. § 1125(d)(1)(B)(i)(VIII); rather, the record indicates he has registered only one. Thus, Lamparello's conduct is not of the suspect variety described in factors VI and VIII of the Act.

[16] Notably, the case at hand differs markedly from those in which the courts have found a bad faith intent to profit from domain names used for websites engaged in political commentary or parody. For example, in PETA we found the registrant of www.peta.org engaged in cybersquatting because www.peta.org was one of fifty to sixty domain names Doughney had registered, PETA, 263 F.3d at 362, and because Doughney had evidenced a clear intent to sell www.peta.org to PETA, stating that PETA should try to "'settle' with him and 'make him an offer.'" Id. at 368. See also Virtual Works, 238 F.3d at 269-70. Similarly, in Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004), the Eighth Circuit found an anti-abortion activist who had registered domain names incorporating famous marks such as "Washington Post" liable for cybersquatting because he had registered almost seventy domain names, had offered to stop using the Washington Post mark if the newspaper published an opinion piece by him on its editorial page, and posted content that created a likelihood of confusion as to whether the famous markholders sponsored the anti-abortion sites and "ha[d] taken positions on hotly contested issues." Id. at 786. In contrast, Lamparello did not register multiple domain names, he did not offer to transfer them for valuable consideration, and he did not create a likelihood of confusion.

[17] Instead, Lamparello, like the plaintiffs in two cases recently decided by the Fifth and Sixth Circuits, created a gripe site. Both courts expressly refused to find that gripe sites located at domain names nearly identical to the marks at issue violated the ACPA. In TMI, Inc. v. Maxwell, 368 F.3d 433, 434-35 (5th Cir. 2004), Joseph Maxwell, a customer of homebuilder TMI, registered the domain name "www.trendmakerhome.com," which differed by only one letter from TMI's mark, TrendMaker Homes, and its domain name, "www.trendmakerhomes.com." Maxwell used the site to complain about his experience with TMI and to list the name of a contractor whose work pleased him. After his registration expired, Maxwell registered "www.trendmakerhome.info." TMI then sued, alleging cybersquatting. The Fifth Circuit reversed the district court's finding that Maxwell violated the ACPA, reasoning that his site was noncommercial and designed only "to inform potential customers about a negative experience with the company." Id. at 438-39. [18] Similarly, in Lucas Nursery & Landscaping, a customer of Lucas Nursery registered the domain name "www.lucasnursery.com" and posted her dissatisfaction with the company's landscaping services. Because the registrant, Grosse, like Lamparello, registered a single domain name, the Sixth Circuit concluded that her conduct did not constitute that which Congress intended to proscribe-i.e., the registration of multiple domain names. Lucas Nursery & Landscaping, 359 F.3d at 810. Noting that Grosse's gripe site did not create any confusion as to sponsorship and that she had never attempted to sell the domain name to the markholder, the court found that Grosse's conduct was not actionable under the ACPA. The court explained: "One of the ACPA's main objectives is the protection of consumers from slick internet peddlers who trade on the names and reputations of established brands. The practice of informing fellow consumers of one's experience with a particular service provider is surely not inconsistent with this ideal." Id. at 811.

[19] Like Maxwell and Grosse before him, Lamparello has not evidenced a bad faith intent to profit under the ACPA. To the contrary, he has used www.fallwell.com to engage in the type of "comment[ ][and] criticism" that Congress specifically stated militates against a finding of bad faith intent to profit. See S. Rep. No. 106-140, 1999 WL 594571, at *14. And he has neither registered multiple domain names nor attempted to transfer www.fallwell.com for valuable consideration. We agree with the Fifth and Sixth Circuits that, given these circumstances, the use of a mark in a domain name for a gripe site criticizing the markholder does not constitute cybersquatting.

[20] For the foregoing reasons, Lamparello, rather than Reverend Falwell, is entitled to summary judgment on all counts. 8 Accordingly, the judgment of the district court is reversed and the case is remanded for entry of judgment for Lamparello. REVERSED AND REMANDED.

WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP)

What is the Uniform Domain Name Dispute Resolution Policy?

The Uniform Domain Name Dispute Resolution Policy (the UDRP Policy) sets out the legal framework for the resolution of disputes between a domain name registrant and a third party (i.e., a party other than the registrar) over the abusive registration and use of an Internet domain name in the generic top level domains or gTLDs (e.g., .biz, .com, .info, .mobi, .name, .net, .org), and those country code top level domains or ccTLDs that have adopted the UDRP Policy on a voluntary basis. At its meetings on August 25 and 26, 1999 in Santiago, Chile, the ICANN * Board of Directors adopted the UDRP Policy, based largely on the recommendations contained in the Report of the WIPO Internet Domain Name Process, as well as comments submitted by registrars and other interested parties. All ICANN-accredited registrars that are authorized to register names in the gTLDs and the ccTLDs that have adopted the Policy have agreed to abide by and implement it for those domains. Any person or entity wishing to register a domain name in the gTLDs and ccTLDs in question is required to consent to the terms and conditions of the UDRP Policy.

What are the advantages of the UDRP Administrative Procedure?

The main advantage of the UDRP Administrative Procedure is that it typically provides a faster and cheaper way to resolve a dispute regarding the registration and use of an Internet domain name than going to court. In addition, the procedures are considerably more informal than litigation and the decision-makers are experts in such areas as international trademark law, domain name issues, electronic commerce, the Internet and dispute resolution. It is also international in scope: it provides a single mechanism for resolving a domain name dispute regardless of where the registrar or the domain name holder or the complainant are located.

What are the WIPO Center's fees for a domain name dispute? For a case involving between 1 and 5 domain names, the fee for a case that is to be decided by a single Panelist is USD1500 and USD4000 for a case that is to be decided by 3 Panelists.

For a case involving between 6 and 10 domain names, the fee for a case that is to be decided by a single Panelist is USD2000 and USD5000 for a case that is to be decided by 3 Panelists.

The Complainant is responsible for paying the total fees. The only time the Respondent has to share in the fees is when the Respondent chooses to have the case decided by 3 Panelists and the Complainant had chosen a single Panelist.

In exceptional circumstances, either the Panel or the WIPO Center may ask the parties to make additional payments to defray the costs of the administrative procedure.

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.

b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented outof-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain

Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. d. Selection of Provider. The complainant shall select the Provider from among those approved by ICANN by submitting the complaint to that Provider. The selected Provider will administer the proceeding, except in cases of consolidation as described in Paragraph 4(f).

e. Initiation of Proceeding and Process and Appointment of Administrative Panel.

The Rules of Procedure state the process for initiating and conducting a proceeding and for appointing the panel that will decide the dispute (the "Administrative Panel"). f. Consolidation. In the event of multiple disputes between you and a complainant, either you or the complainant may petition to consolidate the disputes before a single Administrative Panel. This petition shall be made to the first Administrative Panel appointed to hear a pending dispute between the parties. This Administrative Panel may consolidate before it any or all such disputes in its sole discretion, provided that the disputes being consolidated are governed by this Policy or a later version of this Policy adopted by ICANN.

All fees charged by a Provider in connection with any dispute before an Administrative Panel pursuant to this Policy shall be paid by the complainant, except in cases where you elect to expand the Administrative Panel from one to three panelists as provided in Paragraph 5(b)(iv) of the Rules of Procedure, in which case all fees will be split evenly by you and the complainant. h. Our Involvement in Administrative Proceedings. We do not, and will not, participate in the administration or conduct of any proceeding before an Administrative Panel. In addition, we will not be liable as a result of any decisions rendered by the Administrative Panel. i. Remedies. The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant.

j. Notification and Publication. The Provider shall notify us of any decision made by an

Administrative Panel with respect to a domain name you have registered with us. All decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision. k. Availability of Court Proceedings. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel's decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel's decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name.

All other disputes between you and any party other than us regarding your domain name registration that are not brought pursuant to the mandatory administrative proceeding provisions of Paragraph 4 shall be resolved between you and such other party through any court, arbitration or other proceeding that may be available.

Our Involvement in Disputes. We will not participate in any way in any dispute between you and any party other than us regarding the registration and use of your domain name. You shall not name us as a party or otherwise include us in any such proceeding. In the event that we are named as a party in any such proceeding, we reserve the right to raise any and all defenses deemed appropriate, and to take any other action necessary to defend ourselves.

Maintaining the Status Quo. We will not cancel, transfer, activate, deactivate, or otherwise change the status of any domain name registration under this Policy except as provided in Paragraph 3 above.

. . . . 9. Policy Modifications. We reserve the right to modify this Policy at any time with the permission of ICANN. We will post our revised Policy at <URL> at least thirty (30) calendar days before it becomes effective. Unless this Policy has already been invoked by the submission of a complaint to a Provider, in which event the version of the Policy in effect at the time it was invoked will apply to you until the dispute is over, all such changes will be binding upon you with respect to any domain name registration dispute, whether the dispute arose before, on or after the effective date of our change. In the event that you object to a change in this Policy, your sole remedy is to cancel your domain name registration with us, provided that you will not be entitled to a refund of any fees you paid to us. The revised Policy will apply to you until you cancel your domain name registration. [2] The Respondent is Pinerest.com c/o Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Ian Townsend of Madrid, Spain.

[3] The disputed domain name <pinerest.com> is registered with Fabulous.com (the "Registrar").

[4] The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 20, 2015. On October 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 27, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 27, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on October 29, 2015.

[5] The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). [6] In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 5, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 26, 2015.

[7] The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on December 2, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. [8] To the Panel's knowledge (on which subject see section 6A below), the Complainant is a provider of online services via its website and mobile applications under the PINTEREST trademark, providing a facility whereby Internet users may gather images and content and organize this into themed collections on a "pinboard".

[9] The Complainant is the owner of a variety of registered trademarks for the word mark PINTEREST in a range of different jurisdictions including, for example, United States registered trademark No. 4145087 registered on May 22, 2012 in international classes 42 and 45.

[10] According to WhoIs records the disputed domain name was created on February 25, 1998. Little is known regarding the Respondent, who appears from the WhoIs to be an individual with an address in Spain. The Complainant submits that the Respondent is not the original registrant of the disputed domain name and notes that, according to historic WhoIs records, that entity was a memorial park and funeral home in Alabama, United States. The Complainant says that the disputed domain name has more recently been transferred to the Respondent. The probable date for such transfer, according to the Complainant, is August 24, 2015, which is the "last updated" date shown on the WhoIs record of October 13, 2015.

[11] Screenshots produced by the Complainant illustrate its assertion that the disputed domain name cycles through to a number of different unconnected websites, one of which invites users to participate in a survey purporting to be run by the Complainant, which produces a popup window on entry stating "Congratulations Pinterest Visitor!", and another of which directs users to malware.

A. Complainant [12] The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name has been registered and is being used in bad faith. [13] The Complainant submits that it satisfies the threshold requirement of having trademark rights under the Policy and that its PINTEREST trademark is incorporated in the disputed domain name with the omission of a single character. The Complainant asserts that its mark is well known and that the omission of a single character from such mark constitutes "type squatting" [sic] and renders the disputed domain name confusingly similar to such mark.

[14] The Complainant contends that it has not authorized the Respondent to register or use its PINTEREST mark or any confusingly similar variant thereof, that the Respondent has not been commonly known by the disputed domain name and that the Respondent is not making a noncommercial or fair use of the disputed domain name. The Complainant asserts that as the disputed domain name cycles through unconnected websites or popups and directs users to malware this cannot be described as a bona fide offering of goods or services. The Complainant submits that the purpose of the disputed domain name is to capture users who mistakenly enter it when attempting to visit the Complainant's website for the Respondent's commercial gain and that accordingly the Respondent cannot claim rights or legitimate interests therein. [15] The Complainant submits that the Respondent acquired the disputed domain name from the original registrant in bad faith in order to use the disputed domain name in bad faith by creating confusion with the Complainant's PINTEREST mark. The Complainant contends that the Octogen trio of cases (City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643; Phillip Securities Pte Ltd v. Yue Hoong Leong,ADNDRC Decision DE-0900226; and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786) are applicable in the scenario where the Respondent is not the original registrant of the disputed domain name but subsequently acquired this in bad faith and demonstrably uses it in bad faith. The Complainant also asserts that the date of registration for the purposes of the Complaint should be the date of acquisition of the disputed domain name by the Respondent and not the original creation date.

[16] The Complainant asserts that the date of acquisition of the disputed domain name by the Respondent is August 2015 and that the Respondent would have been aware of the Complainant's rights by that date. The Complainant also argues that the Respondent must have been fully aware of such rights by virtue of its use of its PINTEREST mark on the surveys to which the disputed domain name points. The Complainant also describes and illustrates the use of the disputed domain name to point to sale items on a popular auction website together with popup advertisements stating that users have downloaded malware. The Complainant asserts that the use of the disputed domain name in this manner constitutes use in bad faith within the meaning of the Policy.

[17] The Respondent did not reply to the Complainant's contentions. [18] To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith. . . . .

[19] Having found that the Complainant has rights in the PINTEREST trademark, the Panel observes that the disputed domain name is identical to such mark, subject to the omission of the initial letter "t" in the disputed domain name. The Panel accepts the Complainant's submission that the omission of a single letter in the disputed domain name is insufficient to distinguish it from the Complainant's mark and accordingly finds that the disputed domain name is confusingly similar thereto. Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

[20] Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name . . . .

[21] As paragraph 2.1 of the WIPO Overview 2.0 notes, a consensus view among panelists in cases under the Policy has emerged that a complainant is required to make out a prima facie case that the respondent has no rights or legitimate interests in a domain name and that once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating such rights or legitimate interests.

[22] In the present proceeding, the Panel is satisfied that the Complainant has made out the requisite prima facie case by way of its submissions that the Respondent was not authorized by the Complainant to use the Complainant's PINTEREST mark or a confusingly similar variant, that the Respondent has not been commonly known by the disputed domain name and that the Respondent is not making a noncommercial or fair use thereof. Furthermore, the Complainant's evidence regarding the use to which the disputed domain name has been put, which appears to target the Complainant's PINTEREST trademark by way of a survey addressed to the "Pinterest Visitor" is also supportive of the notion that the Respondent lacks rights or legitimate interests in the disputed domain name, which is itself a close typographical variant of such mark. [23] In these circumstances the burden of production shifts to the Respondent to bring forward evidence or allegations demonstrating rights or legitimate interests in the disputed domain name. The Respondent, however, has chosen not to file a Response in these proceedings or otherwise to communicate anything which might point towards it having such rights or legitimate interests. The Panel does note that the disputed domain name might also be read as the two words "pine" and "rest", which might well have been the intent of the original registrant of the disputed domain name but the Panel accepts the Complainant's contention that the Respondent is not the original registrant and is a more recent acquirer. In contrast to the original registrant, the Respondent has used the disputed domain name not in connection with any meaning of the words "pine" and "rest" but rather to address the viewer of the associated website as "Pinterest Visitor", that is, the typographical variant representing the Complainant's trademark, and thereafter to deliver to such viewer a variety of unrelated websites or malware. In the Panel's opinion, no rights or legitimate interests can vest in the Respondent by virtue of such activity.

[24] Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and therefore that the requirements of paragraph 4(a)(ii) of the Policy have been met.

[25] Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith . . . .

[26] Typically, a complainant would not prevail on this aspect of the Policy if its trademark rights post-date the creation date of the disputed domain name because the registrant could not have contemplated the complainant's then non-existent right and thus could not have registered the domain name in bad faith (see the discussion at paragraph 3.1 of the WIPO Overview 2.0). In the present case, the Complainant anticipates that difficulty by referencing the Octogen line of decisions, supra, in order to assert that the Policy does not require a complainant to show the conjunctive requirement of both bad faith registration and bad faith use. This Panel subscribes to the traditional and generally accepted view of the conjunctive requirement within this element of the Policy and, rather than rehearsing at length the arguments for and against the alternative interpretation provided by the Octogen trio, simply notes for the sake of brevity that it endorses the detailed analysis on this topic provided by the panel in Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716.

[27] Despite this, there are exceptions to the general rule regarding a post-dating trademark, including the circumstance where a domain name has been transferred between unrelated registrants after its creation date, as is alleged here. In such a circumstance, UDRP panels typically assess the registration in bad faith requirement as at the date when the respondent took possession of the disputed domain name and not at its original creation date. In the present matter, the Complainant asserts that the Respondent acquired the disputed domain name in August 2015, thus post-dating the registration of the Complainant's trademark by almost three years. The Complainant bases its assertion on the fact that this is the "last updated" date shown on the corresponding WhoIs record.

[28] The Panel is aware that while a change in the "last updated" date on a WhoIs record might indicate a registrant transfer of a domain name, such changes can also be triggered by a renewal or indeed by the making of a variety of different types of amendments to the WhoIs data. Accordingly, the Complainant's case would have been better served by producing entries from historic WhoIs records which might have shown a change of registrants on successive records and thus have placed the matter beyond doubt. In the absence of such records, the Panel has come to the conclusion that it may nevertheless accept the Complainant's assertion on the following basis: First, the Panel considers that it is not wholly improbable that the "last updated" date on a WhoIs record represents the date of transfer to the present holder and, as such, it is not unreasonable to accept that allegation in the absence of countervailing evidence, the majority of which would necessarily be in the hands of the Respondent in its capacity as holder of the disputed domain name. In other words, once such an allegation has been made and the matter is clearly placed in issue by a complainant, the respondent is the party best able to bring forward evidence, which may come from a wide variety of sources, supporting a contrary proposition that it has been the holder of the domain name concerned for a longer period (as this Panel encountered in Qwalify, Inc. v. Domain Administrator, Fundacion Private Whois / Gregory Ricks, WIPO Case No. D2014-0313).

[29] Secondly, while the present Complaint lacks the detailed evidence which historic WhoIs records would have provided, the Complainant's averments regarding the identity of the original registrant of the disputed domain name and its past use are also supportive, albeit to a limited degree, of the notion that a transfer has taken place. Taking these two aspects together, the Panel finds on the balance of probabilities, and in particular on the basis of the present record, that the Respondent received a transfer of the disputed domain name after the Complainant's rights in its trademark came into being, notwithstanding the original date of creation of the disputed domain name. While the disputed domain name may have been created by its original registrant for purposes unrelated to the Complainant or its trademark, the Panel is satisfied on the balance of probabilities that the transferee and present Respondent knew of the Complainant's online fame when taking a transfer of the disputed domain name and took such transfer with intent to target the Complainant's trademark. [30] Turning to the present use of the disputed domain name, there is little doubt in the Panel's mind that this constitutes use in bad faith within the meaning of the Policy. In the Panel's opinion, the disputed domain name is being used to capture Internet traffic generated by users of the Complainant's services, in order to deploy malware and gain customer data through confusion generated by the typographical variant of the Complainant's trademark contained within the disputed domain name. That the Respondent deliberately intended to target the Complainant by taking advantage of such typographical variant is demonstrated by its use of the correct spelling of the Complainant's trademark in the legend "Congratulations Pinterest Visitor!" displayed on the associated website. Accordingly, there can be no suggestion that the Respondent acquired the disputed domain name with a good faith motivation associated with the dictionary words "pine" and "rest" which are contained therein. Furthermore, the Respondent has chosen not to answer the Complainant's allegations or provide evidence of any alleged good faith motivation in taking a transfer of or using the disputed domain name. [31] In all of these circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been met. [32] For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <pinerest.com> be transferred to the Complainant.

In 2011, ICANN's Board of Directors approved an enormous expansion of the generic top-level domain (gTLD) system beyond the 22 gTLDsfoot_13 then operating. In January, 2012, ICANN began accepting applications from private companies or organizations that wished to administer new gTLDs consisting essentially of any string of characters, including non-Latin characters. In October, 2013, ICANN "delegated" the first new gTLDs: شبكة (Arabic for "web/network", International Domain Registry Pty. Ltd), онлайн (Cyrillic for "online", CORE Association), сайт (Cyrillic for "site", CORE Association) and 游戏 (Chinese for "game(s)", Spring Fields, LLC). From October 2013 through 2022, ICANN delegated over 1,200 new gTLDs. 11 ICANN has established a sophisticated process very much akin to a national trademark registration process for the evaluation of new gTLD applications (which cost $185,000 per gTLD). Objections can be raised against a new gTLD application on the ground, among others, that it conflicts with preexisting trademark rights. Students wishing to know more about this process should consult the ICANN gTLD Applicant Guidebook.

Our focus here, however, is not on the implications for trademark owners of the ICANN new gTLD delegation process (though those implications can be profound), but rather on a new system by which trademark owners can oppose the registration of second-level domains within these new gTLDs. For example, if a third-party seeks to register the second-level domain "microsoft" within the شبكة gTLD, (thus microsoft.شبكة ), Microsoft may avail itself of a new means of opposing the registration that is even faster and less expensive that the UDRP. This new process is the Uniform Rapid Suspension System (URS), which largely applies only to second-level domains within new gTLDs established since 2013 and to ccTLDs (country code top-level domains such as .us) that have adopted some variation of the URS. Cf. ECR European Consumer Rights GmbH v. WhoisGuard, Inc., Claim No. FA2012001924132 (Nat'l Arb. Forum, Dec. 30, 2020) (applying the URS to the .org TLD and suspending the domain name verbraucherritter.org). Students wishing to read the URS Procedure may find the document at http://newgtlds.icann.org/en/applicants/urs.

The URS is designed for especially clear, essentially "slam-dunk" cases of bad faith second-level domain registration. The URS specifies that the complainant must show: [1] that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed. a. Use can be shown by demonstrating that evidence of use -which can be a declaration and one specimen of current use in commerce -was submitted to, and validated by, the Trademark Clearinghouse.

b. Proof of use may also be submitted directly with the URS Complaint. and [2] that the Registrant has no legitimate right or interest to the domain name; and [3] that the domain was registered and is being used in bad faith. URS, 1.2.6.1-1.2.6.3. Note that the URS Procedure explicitly states that "[t]he burden of proof shall be clear and convincing evidence." Id. at 8.2

The URS process is very fast. The URS provider (such as the National Arbitration Forum) must review the complaint within two business days from the filing of the complaint. If the complaint complies with all filing requirements, the URS provider notifies the relevant registry operator, who must "lock" the targeted domain within 24 hours (locking a domain in this context merely means that the registrant cannot make any changes to registration data; the domain still resolves to a website). Within 24 hours of locking the domain, the registry operator must notify the registrant of the complaint. The registrant then has 14 days to file a response of no more than 2,500 words. If the registrant defaults on that 14 day period, the registrant still has six months from the date of a Notice of Default to reopen proceedings de novo.

The remedy available to the successful complainant is suspension of the domain name and resolution of the domain to an informational page stating that the domain name has been suspended after a URS proceeding. Unlike the UDRP, the successful complainant cannot win transfer of the domain.

The fee for a URS proceeding, which is conducted entirely electronically and only in English, is $375 to $500, depending on the number of domain names complained of. By comparison, UDRP filing fees start at $1500.

Below is the first URS decision ever issued, with respect to the domain name facebok.pw. (.pw is the TLD of the Pacific nation of Palau and was the first TLD to adopt the URS). Default Date: September 26, 2013 [2] Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .

RELIEF SOUGHT [3] Complainant requests that the domain name be suspended for the life of the registration.

[5] Complainant is Facebook Inc. which lists its address as Menlo Park, CA, USA. Complainant states that since it began doing business in 2004 it has become the world's leading provider of online social networking services with more than 1.11 billion registered users around the world. Complainant also asserts that "it is ranked as the first most visited website in the world, and has the second highest traffic in Slovakia (where the Respondent is based)." Complainant owns numerous domestic and international registrations for its FACEBOOK mark including; FACEBOOK -Community Trade Mark No. 006455687 registered on 07 October 2008. [6] Complainant contends that domain name, <facebok.pw>, is confusingly similar to its FACEBOOK mark, and was registered and is being used in bad faith by the Respondent who has no rights or legitimate interests in the domain name. [7] Respondent is Radoslav Stach whose address is listed as Presnov, Slovakia. Respondent registered the disputed domain name on or about March 26, 2013. Respondent did not provide a response to the Complaint in accordance with the URS rules of procedure; however Respondent did provide correspondence which stated, "Im was offline, could you pleas tell me what I have doing ? I want removed this domain from my account!" IDENTICAL OR CONFUSINGLY SIMILAR [8] The only difference between the Domain Name, <facebok.pw>, and the Complainant's FACEBOOK mark is the absence of one letter ("o") in the Domain Name. In addition, it is well accepted that the top level domain is irrelevant in assessing identity or confusing similarity, thus the ".pw" is of no consequence here. The Examiner finds that the Domain Name is confusingly similar to Complainant's FACEBOOK mark.

[9] To the best of the Complainant's knowledge, the Respondent does not have any rights in the name FACEBOOK or "facebok" nor is the Respondent commonly known by either name. Complainant has not authorized Respondent's use of its mark and has no affiliation with Respondent. The Domain Name points to a web page listing links for popular search topics which Respondent appears to use to generate click through fees for Respondent's personal financial gain. Such use does not constitute a bona fide offering of goods or services and wrongfully misappropriates Complainant's mark's goodwill. The Examiner finds that the Respondent has established no rights or legitimate interests in the Domain Name.

[10] The Domain Name was registered and is being used in bad faith. [11] The Domain Name was registered on or about March 26, 2013, nine years after the Complainant's FACEBOOK marks were first used and began gaining global notoriety. [12] The Examiner finds that the Respondent has engaged in a pattern of illegitimate domain name registrations (See Complainant's exhibit URS Site Screenshot) whereby Respondent has either altered letters in, or added new letters to, well-known trademarks. Such behavior supports a conclusion of Respondent's bad faith registration and use. Furthermore, the Complainant submits that the Respondent is using the Domain Name in order to attract for commercial gain Internet users to its parking website by creating a likelihood of confusion as to the source, sponsorship or affiliation of the website. The Examiner finds such behavior to further evidence Respondent's bad faith registration and use. DETERMINATION [13] After reviewing the Complainant's submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration. Questions and Comments 1. The Trademark Clearinghouse. To help trademark owners cope with the challenges presented by a greatly expanded domain name system, ICANN oversaw the development of the Trademark Clearinghouse, www.trademark-clearinghouse.com. Trademark owners that register their trademarks with the Clearinghouse (and pay the associated fees) may benefit from two main services. First, the Clearinghouse gives Clearinghouse registrants access to the "Sunrise period" for every new gTLD. During this period (which must last at least 30 days), Clearinghouse registrants enjoy priority registration of their marks as domain names within the new gTLD before that gTLD's domain name registration process is opened up to the general public. To qualify for the Sunrise Service, Clearinghouse registrants must submit proof that they are actually using the mark they have registered with the Clearinghouse. Second, the Clearinghouse will notify Clearinghouse registrants on an ongoing basis of any third-party attempt to register (or eventual success in registering) within a new gTLD a domain name that matches the Clearinghouse registrant's trademark. It is then left to the trademark owner to decide whether to pursue an infringement claim against the third-party domain name applicant or registrant.

E. Secondary Liability 1. Service Provider Secondary Liability

The Lanham Act does not explicitly provide for secondary liability. Instead, as the court in Tiffany (NJ) Inc. v. eBay Inc. explains, secondary liability in trademark law is an entirely judge-made doctrine. Both of the opinions that follow address secondary liability for providers of services. The first, Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010), has essentially become the law of the land for online auction site liability for infringing conduct occurring on those sites. It focuses on the nature of the knowledge requirement in contributory liability doctrine. The second, Gucci America, Inc. v. Frontline Processing Corp., 721 F.Supp.2d 228 (S.D.N.Y. 2010), involved providers of credit card services. It is a decidedly less influential case, but engages the important issue of how much control a service provider must have over the direct infringer's conduct to be liable for contributory infringement.

In reading through Tiffany v. eBay, consider the following questions:

• As a policy matter, has the court chosen the most efficient result? Who can more efficiently bear the burden of policing eBay's website for counterfeit Tiffany merchandise?

• Are you persuaded that eBay was not willfully blind to the sale of counterfeits on its auction site? Tiffany (NJ) Inc. v. eBay Inc. 600 F.3d 93 (2d Cir. 2010)

[1] eBay, Inc. ("eBay"), through its eponymous online marketplace, has revolutionized the online sale of goods, especially used goods. It has facilitated the buying and selling by hundreds of millions of people and entities, to their benefit and eBay's profit. But that marketplace is sometimes employed by users as a means to perpetrate fraud by selling counterfeit goods.

[2] Plaintiffs Tiffany (NJ) Inc. and Tiffany and Company (together, "Tiffany") have created and cultivated a brand of jewelry bespeaking high-end quality and style. Based on Tiffany's concern that some use eBay's website to sell counterfeit Tiffany merchandise, Tiffany has instituted this action against eBay, asserting various causes of action-sounding in trademark infringement, trademark dilution and false advertising-arising from eBay's advertising and listing practices. For the reasons set forth below, we affirm the district court's judgment with respect to Tiffany's claims of trademark infringement and dilution but remand for further proceedings with respect to Tiffany's false advertising claim.

[3] By opinion dated July 14, 2008, following a week-long bench trial, the United States District Court for the Southern District of New York (Richard J. Sullivan, Judge) set forth its findings of fact and conclusions of law. Tiffany (NJ) Inc. v. eBay, Inc., 576 F.Supp.2d 463 (S.D.N.Y. 2008) ("Tiffany"). When reviewing a judgment following a bench trial in the district court, we review the court's findings of fact for clear error and its conclusions of law de novo. Giordano v. Thomson, 564 F.3d 163, 168 (2d Cir. 2009). Except where noted otherwise, we conclude that the district court's findings of fact are not clearly erroneous. We therefore rely upon those non-erroneous findings in setting forth the facts of, and considering, this dispute.

[4] eBay 1 is the proprietor of www.ebay.com, an Internet-based marketplace that allows those who register with it to purchase goods from and sell goods to one another. It "connect[s] buyers and sellers and [ ] enable[s] transactions, which are carried out directly between eBay members." Tiffany, 576 F.Supp.2d at 475. 2 In its auction and listing services, it "provides the venue for the sale [of goods] and support for the transaction[s], [but] it does not itself sell the items" listed for sale on the site, id. at 475, nor does it ever take physical possession of them, id. Thus, "eBay generally does not know whether or when an item is delivered to the buyer." Id.

[5] eBay has been enormously successful. More than six million new listings are posted on its site daily. Id. At any given time it contains some 100 million listings. Id.

[6] eBay generates revenue by charging sellers to use its listing services. For any listing, it charges an "insertion fee" based on the auction's starting price for the goods being sold and ranges from $0.20 to $4.80. Id. For any completed sale, it charges a "final value fee" that ranges from 5.25% to 10% of the final sale price of the item. Id. Sellers have the option of purchasing, at additional cost, features "to differentiate their listings, such as a border or bold-faced type." Id.

[7] eBay also generates revenue through a company named PayPal, which it owns and which allows users to process their purchases. PayPal deducts, as a fee for each transaction that it processes, 1.9% to 2.9% of the transaction amount, plus $0.30. Id. This gives eBay an added incentive to increase both the volume and the price of the goods sold on its website. Id. Tiffany [8] Tiffany is a world-famous purveyor of, among other things, branded jewelry. Id. at 471-72. Since 2000, all new Tiffany jewelry sold in the United States has been available exclusively through Tiffany's retail stores, catalogs, and website, and through its Corporate Sales Department. Id. at 472-73. It does not use liquidators, sell overstock merchandise, or put its goods on sale at discounted prices. Id. at 473. It does not-nor can it, for that mattercontrol the "legitimate secondary market in authentic Tiffany silvery jewelry," i.e., the market for second-hand Tiffany wares. Id. at 473. The record developed at trial "offere[d] little basis from which to discern the actual availability of authentic Tiffany silver jewelry in the secondary market." Id. at 474.

[9] Sometime before 2004, Tiffany became aware that counterfeit Tiffany merchandise was being sold on eBay's site. Prior to and during the course of this litigation, Tiffany conducted two surveys known as "Buying Programs," one in 2004 and another in 2005, in an attempt to assess the extent of this practice. Under those programs, Tiffany bought various items on eBay and then inspected and evaluated them to determine how many were counterfeit. Id. at 485. Tiffany found that 73.1% of the purported Tiffany goods purchased in the 2004 Buying Program and 75.5% of those purchased in the 2005 Buying Program were counterfeit. Id. The district court concluded, however, that the Buying Programs were "methodologically flawed and of questionable value," id. at 512, and "provide[d] limited evidence as to the total percentage of counterfeit goods available on eBay at any given time," id. at 486. The court nonetheless decided that during the period in which the Buying Programs were in effect, a "significant portion of the 'Tiffany' sterling silver jewelry listed on the eBay website . . . was counterfeit," id., and that eBay knew "that some portion of the Tiffany goods sold on its website might be counterfeit," id. at 507. The court found, however, that "a substantial number of authentic Tiffany goods are [also] sold on eBay." Id. at 509. [10] Reducing or eliminating the sale of all second-hand Tiffany goods, including genuine Tiffany pieces, through eBay's website would benefit Tiffany in at least one sense: It would diminish the competition in the market for genuine Tiffany merchandise. See id. at 510 n. 36 (noting that "there is at least some basis in the record for eBay's assertion that one of Tiffany's goals in pursuing this litigation is to shut down the legitimate secondary market in authentic Tiffany goods"). The immediate effect would be loss of revenue to eBay, even though there might be a countervailing gain by eBay resulting from increased consumer confidence about the bona fides of other goods sold through its website.

Anti-Counterfeiting Measures [11] Because eBay facilitates many sales of Tiffany goods, genuine and otherwise, and obtains revenue on every transaction, it generates substantial revenues from the sale of purported Tiffany goods, some of which are counterfeit. "eBay's Jewelry & Watches category manager estimated that, between April 2000 and June 2004, eBay earned $4.1 million in revenue from completed listings with 'Tiffany' in the listing title in the Jewelry & Watches category." Id. at 481. Although eBay was generating revenue from all sales of goods on its site, including counterfeit goods, the district court found eBay to have "an interest in eliminating counterfeit Tiffany merchandise from eBay . . . to preserve the reputation of its website as a safe place to do business." Id. at 469. The buyer of fake Tiffany goods might, if and when the forgery was detected, fault eBay. Indeed, the district court found that "buyers . . . complain [ed] to eBay" about the sale of counterfeit Tiffany goods. Id. at 487. "[D]uring the last six weeks of 2004, 125 consumers complained to eBay about purchasing 'Tiffany' items through the eBay website that they believed to be counterfeit." Id. [12] Because eBay "never saw or inspected the merchandise in the listings," its ability to determine whether a particular listing was for counterfeit goods was limited. Id. at 477-78. Even had it been able to inspect the goods, moreover, in many instances it likely would not have had the expertise to determine whether they were counterfeit. Id. at 472 n. 7 ("[I]n many instances, determining whether an item is counterfeit will require a physical inspection of the item, and some degree of expertise on the part of the examiner.").

[13] Notwithstanding these limitations, eBay spent "as much as $20 million each year on tools to promote trust and safety on its website." Id. at 476. For example, eBay and PayPal set up "buyer protection programs," under which, in certain circumstances, the buyer would be reimbursed for the cost of items purchased on eBay that were discovered not to be genuine. Id. at 479. eBay also established a "Trust and Safety" department, with some 4,000 employees "devoted to trust and safety" issues, including over 200 who "focus exclusively on combating infringement" and 70 who "work exclusively with law enforcement." Id. at 476.

[14] By May 2002, eBay had implemented a "fraud engine," "which is principally dedicated to ferreting out illegal listings, including counterfeit listings." Id. at 477. eBay had theretofore employed manual searches for keywords in listings in an effort to "identify blatant instances of potentially infringing . . . activity." Id. "The fraud engine uses rules and complex models that automatically search for activity that violates eBay policies." Id. In addition to identifying items actually advertised as counterfeit, the engine also incorporates various filters designed to screen out less-obvious instances of counterfeiting using "data elements designed to evaluate listings based on, for example, the seller's Internet protocol address, any issues associated with the seller's account on eBay, and the feedback the seller has received from other eBay users." Id. In addition to general filters, the fraud engine incorporates "Tiffany-specific filters," including "approximately 90 different keywords" designed to help distinguish between genuine and counterfeit Tiffany goods. Id. at During the period in dispute, eBay also "periodically conducted [manual] reviews of listings in an effort to remove those that might be selling counterfeit goods, including Tiffany goods." Id.

[15] For nearly a decade, including the period at issue, eBay has also maintained and administered the "Verified Rights Owner ('VeRO') Program"-a "'notice-and-takedown' system" allowing owners of intellectual property rights, including Tiffany, to "report to eBay any listing offering potentially infringing items, so that eBay could remove such reported listings." Id. at 478. Any such rights-holder with a "good-faith belief that [a particular listed] item infringed on a copyright or a trademark" could report the item to eBay, using a "Notice Of Claimed Infringement form or NOCI form." Id. During the period under consideration, eBay's practice was to remove reported listings within twenty-four hours of receiving a NOCI, but eBay in fact deleted seventy to eighty percent of them within twelve hours of notification. Id.

[16] On receipt of a NOCI, if the auction or sale had not ended, eBay would, in addition to removing the listing, cancel the bids and inform the seller of the reason for the cancellation. If bidding had ended, eBay would retroactively cancel the transaction. Id. In the event of a cancelled auction, eBay would refund the fees it had been paid in connection with the auction. Id. at 478-79. [17] In some circumstances, eBay would reimburse the buyer for the cost of a purchased item, provided the buyer presented evidence that the purchased item was counterfeit. Id. at 479. 4 During the relevant time period, the district court found, eBay "never refused to remove a reported Tiffany listing, acted in good faith in responding to Tiffany's NOCIs, and always provided Tiffany with the seller's contact information." Id. at 488. [18] In addition, eBay has allowed rights owners such as Tiffany to create an "About Me" webpage on eBay's website "to inform eBay users about their products, intellectual property rights, and legal positions." Id. at 479. eBay does not exercise control over the content of those pages in a manner material to the issues before us.

[19] Tiffany, not eBay, maintains the Tiffany "About Me" page. With the headline "BUYER BEWARE," the page begins: "Most of the purported TIFFANY & CO. silver jewelry and packaging available on eBay is counterfeit." Pl.'s Ex. 290 (bold face type in original). It also says, inter alia:

The only way you can be certain that you are purchasing a genuine TIFFANY & CO. product is to purchase it from a Tiffany & Co. retail store, via our website (www. tiffany. com) or through a Tiffany & Co. catalogue. Tiffany & Co. stores do not authenticate merchandise. A good jeweler or appraiser may be able to do this for you.

[20] In 2003 or early 2004, eBay began to use "special warning messages when a seller attempted to list a Tiffany item." Tiffany, 576 F.Supp.2d at 491. These messages "instructed the seller to make sure that the item was authentic Tiffany merchandise and informed the seller that eBay 'does not tolerate the listing of replica, counterfeit, or otherwise unauthorized items' and that violation of this policy 'could result in suspension of [the seller's] account.'" Id. (alteration in original). The messages also provided a link to Tiffany's "About Me" page with its "buyer beware" disclaimer. Id. If the seller "continued to list an item despite the warning, the listing was flagged for review." Id.

[21] In addition to cancelling particular suspicious transactions, eBay has also suspended from its website "'hundreds of thousands of sellers every year,' tens of thousands of whom were suspected [of] having engaged in infringing conduct." Id. at 489. eBay primarily employed a "'three strikes rule'" for suspensions, but would suspend sellers after the first violation if it was clear that "the seller 'listed a number of infringing items,' and '[selling counterfeit merchandise] appears to be the only thing they've come to eBay to do.'" Id. But if "a seller listed a potentially infringing item but appeared overall to be a legitimate seller, the 'infringing items [were] taken down, and the seller [would] be sent a warning on the first offense and given the educational information, [and] told that . . . if they do this again, they will be suspended from eBay.'" Id. (alterations in original). 5 [22] By late 2006, eBay had implemented additional anti-fraud measures: delaying the ability of buyers to view listings of certain brand names, including Tiffany's, for 6 to 12 hours 5 According to the district court, "eBay took appropriate steps to warn and then to suspend sellers when eBay learned of potential trademark infringement under that seller's account." Tiffany, 576 F.Supp.2d at 489. The district court concluded that it was understandable that eBay did not have a "hard-and-fast, one-strike rule" of suspending sellers because a NOCI "did not constitute a definitive finding that the listed item was counterfeit" and because "suspension was a very serious matter, particularly to those sellers who relied on eBay for their livelihoods." Id. The district court ultimately found eBay's policy to be "appropriate and effective in preventing sellers from returning to eBay and re-listing potentially counterfeit merchandise." Id. so as to give rights-holders such as Tiffany more time to review those listings; developing the ability to assess the number of items listed in a given listing; and restricting one-day and three-day auctions and cross-border trading for some brand-name items. Id. at 492. [23] The district court concluded that "eBay consistently took steps to improve its technology and develop anti-fraud measures as such measures became technologically feasible and reasonably available." Id. at 493.

[24] At the same time that eBay was attempting to reduce the sale of counterfeit items on its website, it actively sought to promote sales of premium and branded jewelry, including Tiffany merchandise, on its site. Id. at 479-80. Among other things, eBay "advised its sellers to take advantage of the demand for Tiffany merchandise as part of a broader effort to grow the Jewelry & Watches category." Id. at 479. And prior to 2003, eBay advertised the availability of Tiffany merchandise on its site. eBay's advertisements trumpeted "Mother's Day Gifts!," Pl.'s Exs. 392, 1064, a "Fall FASHION BRAND BLOWOUT," Pl.'s Ex. 392, "Jewelry Best Sellers," id., "GREAT BRANDS, GREAT PRICES," Pl.'s Ex. 1064, or "Top Valentine's Deals," Pl.'s Ex. 392, among other promotions. It encouraged the viewer to "GET THE FINER THINGS." Pl.'s Ex. 392. These advertisements provided the reader with hyperlinks, at least one of each of which was related to Tiffany merchandise-"Tiffany," "Tiffany & Co. under $150," "Tiffany & Co," "Tiffany Rings," or "Tiffany & Co. under $50." Pl.'s Exs. 392, 1064. eBay also purchased sponsored-link advertisements on various search engines to promote the availability of Tiffany items on its website. Tiffany, 576 F.Supp.2d at 480. In one such case, in the form of a printout of the results list from a search on Yahoo! for "tiffany," the second sponsored link read "Tiffany on eBay. Find tiffany items at low prices. With over 5 million items for sale every day, you'll find all kinds of unique [unreadable] Marketplace. www.ebay.com." Pl.'s Ex. 1065 (bold face type in original). Tiffany complained to eBay of the practice in 2003, and eBay told Tiffany that it had ceased buying sponsored links. Tiffany, 576 F.Supp.2d at 480. The district court found, however, that eBay continued to do so indirectly through a third party. Id.

[25] By amended complaint dated July 15, 2004, Tiffany initiated this action. It alleged, inter alia, that eBay's conduct-i.e., facilitating and advertising the sale of "Tiffany" goods that turned out to be counterfeit-constituted direct and contributory trademark infringement, trademark dilution, and false advertising. On July 14, 2008, following a bench trial, the district court, in a thorough and thoughtful opinion, set forth its findings of fact and conclusions of law, deciding in favor of eBay on all claims.

[26] Tiffany appeals from the district court's judgment for eBay. DISCUSSION [27] We review the district court's findings of fact for clear error and its conclusions of law de novo. Giordano v. Thomson, 564 F.3d 163, 168 (2d Cir. 2009).

{The court found that eBay did not directly infringe Tiffany's trademark when it used the mark on its website "to describe accurately the genuine Tiffany goods offered for sale on its website" and when it purchased sponsored links on Google and Yahoo! triggered by the Tiffany mark.}

[28] The more difficult issue, and the one that the parties have properly focused our attention on, is whether eBay is liable for contributory trademark infringement-i.e., for culpably facilitating the infringing conduct of the counterfeiting vendors. Acknowledging the paucity of case law to guide us, we conclude that the district court correctly granted judgment on this issue in favor of eBay.

[29] Contributory trademark infringement is judicially created doctrine that derives from the common law of torts. See, e.g., Hard Rock Cafe Licensing Corp. v. Concession Servs., Inc., 955 F.2d 1143, 1148 (7th Cir. 1992); cf. Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005) ("[T]hese doctrines of secondary liability emerged from common law principles and are well established in the law.") (citations omitted). The Supreme Court most recently dealt with the subject in Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982). There, the plaintiff, Ives, asserted that several drug manufacturers had induced pharmacists to mislabel a drug the defendants produced to pass it off as Ives'. See id. at 847-50. According to the Court, "if a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorially responsible for any harm done as a result of the deceit." Id. at 854. 8 The Court ultimately decided to remand the case to the Court of Like Inwood, Eli Lilly involved an allegation by a plaintiff drug manufacturer that a defendant drug manufacturer had intentionally induced distributors to pass off the defendant's drug to purchasers as the plaintiff's. 265 U.S. at 529-30. The Supreme Court granted the plaintiff's request for an injunction, stating that "[o]ne who induces another to commit a fraud and furnishes the means of consummating it is equally guilty and liable for the injury." Id. at 530-31.

In Snow Crest, the Coca-Cola Company claimed that a rival soft drink maker had infringed Coca-Cola's mark because bars purchasing the rival soft drink had substituted it for Coca-Cola when patrons requested a "rum (or whiskey) and Coca-Cola." 64 F.Supp. at 982, 987. Judge Wyzanski entered Appeals after concluding it had improperly rejected factual findings of the district court favoring the defendant manufacturers. Id. at 857-59.

[30] Inwood's test for contributory trademark infringement applies on its face to manufacturers and distributors of goods. Courts have, however, extended the test to providers of services. [31] The Seventh Circuit applied Inwood to a lawsuit against the owner of a swap meet, or "flea market," whose vendors were alleged to have sold infringing Hard Rock Café T-shirts. See Hard Rock Café, 955 F.2d at 1148-49. The court "treated trademark infringement as a species of tort," id. at 1148, and analogized the swap meet owner to a landlord or licensor, on whom the common law "imposes the same duty . . . [as Inwood] impose[s] on manufacturers and distributors," id. at 1149; see also Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259 (9th Cir. 1996) (adopting Hard Rock Cafe's reasoning and applying Inwood to a swap meet owner).

[32] Speaking more generally, the Ninth Circuit concluded that Inwood's test for contributory trademark infringement applies to a service provider if he or she exercises sufficient control over the infringing conduct. Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 984 (9th Cir. 1999); see also id. ("Direct control and monitoring of the instrumentality used by a third party to infringe the plaintiff's mark permits the expansion of Inwood Lab.'s 'supplies a product' requirement for contributory infringement."). [33] We have apparently addressed contributory trademark infringement in only two related decisions, see Polymer Tech. Corp. v. Mimran, 975 F.2d 58, 64 (2d Cir. 1992) ("Polymer I"); Polymer Tech. Corp. v. Mimran, 37 F.3d 74, 81 (2d Cir. 1994) ("Polymer II"), and even then in little detail. Citing Inwood, we said that "[a] distributor who intentionally induces another to infringe a trademark, or continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, is contributorially liable for any injury." Polymer I, 975 F.2d at 64.

[34] The limited case law leaves the law of contributory trademark infringement illdefined. Although we are not the first court to consider the application of Inwood to the Internet, see, e.g., Lockheed, 194 F.3d 980, supra (Internet domain name registrar), we are apparently the first to consider its application to an online marketplace.foot_20 judgment in favor of the defendant primarily because there was insufficient evidence of such illicit substitutions taking place. Id. at 990. In doing so, the court stated that "[b]efore he can himself be held as a wrongdoer o[r] contributory infringer one who supplies another with the instruments by which that other commits a tort, must be shown to have knowledge that the other will or can reasonably be expected to commit a tort with the supplied instrument." Id. at 989.

[35] In the district court, the parties disputed whether eBay was subject to the Inwood test. See Tiffany, 576 F.Supp.2d at 504. eBay argued that it was not because it supplies a service while Inwood governs only manufacturers and distributors of products. Id. The district court rejected that distinction. It adopted instead the reasoning of the Ninth Circuit in Lockheed to conclude that Inwood applies to a service provider who exercises sufficient control over the means of the infringing conduct. Id. at 505-06. Looking "to the extent of the control exercised by eBay over its sellers' means of infringement," the district court concluded that Inwood applied in light of the "significant control" eBay retained over the transactions and listings facilitated by and conducted through its website. Id. at 505-07.

[36] On appeal, eBay no longer maintains that it is not subject to Inwood. 10 We therefore assume without deciding that Inwood's test for contributory trademark infringement governs.

[37] The question that remains, then, is whether eBay is liable under the Inwood test on the basis of the services it provided to those who used its website to sell counterfeit Tiffany products. As noted, when applying Inwood to service providers, there are two ways in which a defendant may become contributorially liable for the infringing conduct of another: first, if the service provider "intentionally induces another to infringe a trademark," and second, if the service provider "continues to supply its [service] to one whom it knows or has reason to know is engaging in trademark infringement." Inwood, 456 U.S. at 854. Tiffany does not argue that eBay induced the sale of counterfeit Tiffany goods on its website-the circumstances addressed by the first part of the Inwood test. It argues instead, under the second part of the Inwood test, that eBay continued to supply its services to the sellers of counterfeit Tiffany 10 Amici do so claim. See Electronic Frontier Foundation et al. Amici Br. 6 (arguing that Inwood should "not govern where, as here, the alleged contributory infringer has no direct means to establish whether there is any act of direct infringement in the first place"). We decline to consider this argument. "Although an amicus brief can be helpful in elaborating issues properly presented by the parties, it is normally not a method for injecting new issues into an appeal, at least in cases where the parties are competently represented by counsel." Universal City Studios, Inc. v. Corley, 273 F.3d 429, 445 (2d Cir. 2001).

goods while knowing or having reason to know that such sellers were infringing Tiffany's mark.

[38] The district court rejected this argument. First, it concluded that to the extent the NOCIs that Tiffany submitted gave eBay reason to know that particular listings were for counterfeit goods, eBay did not continue to carry those listings once it learned that they were specious. Tiffany, 576 F.Supp.2d at 515-16. The court found that eBay's practice was promptly to remove the challenged listing from its website, warn sellers and buyers, cancel fees it earned from that listing, and direct buyers not to consummate the sale of the disputed item. Id. at 516. The court therefore declined to hold eBay contributorially liable for the infringing conduct of those sellers. Id. at 518. On appeal, Tiffany does not appear to challenge this conclusion. In any event, we agree with the district court that no liability arises with respect to those terminated listings.

[39] Tiffany disagrees vigorously, however, with the district court's further determination that eBay lacked sufficient knowledge of trademark infringement by sellers behind other, non-terminated listings to provide a basis for Inwood liability. Tiffany argued in the district court that eBay knew, or at least had reason to know, that counterfeit Tiffany goods were being sold ubiquitously on its website. Id. at 507-08. As evidence, it pointed to, inter alia, the demand letters it sent to eBay in 2003 and 2004, the results of its Buying Programs that it shared with eBay, the thousands of NOCIs it filed with eBay alleging its good faith belief that certain listings were counterfeit, and the various complaints eBay received from buyers claiming that they had purchased one or more counterfeit Tiffany items through eBay's website. Id. at 507. Tiffany argued that taken together, this evidence established eBay's knowledge of the widespread sale of counterfeit Tiffany products on its website. Tiffany urged that eBay be held contributorially liable on the basis that despite that knowledge, it continued to make its services available to infringing sellers. Id. at 507-08.

[40] The district court rejected this argument. It acknowledged that "[t]he evidence produced at trial demonstrated that eBay had generalized notice that some portion of the Tiffany goods sold on its website might be counterfeit." Id. at 507 (emphasis in original). The court characterized the issue before it as "whether eBay's generalized knowledge of trademark infringement on its website was sufficient to meet the 'knowledge or reason to know' prong of the Inwood test." Id. at 508 (emphasis in original). eBay had argued that "such generalized knowledge is insufficient, and that the law demands more specific knowledge of individual instances of infringement and infringing sellers before imposing a burden upon eBay to remedy the problem." Id.

[41] The district court concluded that "while eBay clearly possessed general knowledge as to counterfeiting on its website, such generalized knowledge is insufficient under the Inwood test to impose upon eBay an affirmative duty to remedy the problem." Id. at 508. The court reasoned that Inwood's language explicitly imposes contributory liability on a defendant who "continues to supply its product [-in eBay's case, its service-] to one whom it knows or has reason to know is engaging in trademark infringement." Id. at 508 (emphasis in original). The court also noted that plaintiffs "bear a high burden in establishing 'knowledge' of contributory infringement," and that courts have been reluctant to extend contributory trademark liability to defendants where there is some uncertainty as to the extent or the nature of the infringement. In Inwood, Justice White emphasized in his concurring opinion that a defendant is not "require [d] . . . to refuse to sell to dealers who merely might pass off its goods."

Id. at 508-09 (quoting Inwood, 456 U.S. at 861, 102 S.Ct. 2182) (White, J., concurring) (emphasis and alteration in original). 11[42] Accordingly, the district court concluded that for Tiffany to establish eBay's contributory liability, Tiffany would have to show that eBay "knew or had reason to know of specific instances of actual infringement" beyond those that it addressed upon learning of them. Id. at 510. Tiffany failed to make such a showing.

[43] On appeal, Tiffany argues that the distinction drawn by the district court between eBay's general knowledge of the sale of counterfeit Tiffany goods through its website, and its specific knowledge as to which particular sellers were making such sales, is a "false" one not required by the law. Appellants' Br. 28. Tiffany posits that the only relevant question is "whether all of the knowledge, when taken together, puts [eBay] on notice that there is a substantial problem of trademark infringement. If so and if it fails to act, [eBay] is liable for contributory trademark infringement." Id. at 29.

[44] We agree with the district court. For contributory trademark infringement liability to lie, a service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods. Some contemporary knowledge of which particular listings are infringing or will infringe in the future is necessary.

[45] We are not persuaded by Tiffany's proposed interpretation of Inwood. Tiffany understands the "lesson of Inwood" to be that an action for contributory trademark infringement lies where "the evidence [of infringing activity]-direct or circumstantial, taken as a whole-. . . provide[s] a basis for finding that the defendant knew or should have known that its product or service was being used to further illegal counterfeiting activity." Appellants' Br. 30. We think that Tiffany reads Inwood too broadly. Although the Inwood Court articulated a "knows or has reason to know" prong in setting out its contributory liability test, the Court explicitly declined to apply that prong to the facts then before it. See Inwood, 456 U.S. at 852 n. 12, 102 S.Ct. 2182 ("The District Court also found that the petitioners did not continue to provide drugs to retailers whom they knew or should have known were engaging in trademark infringement. The Court of Appeals did not discuss that finding, and we do not address it.") (internal citation omitted). The Court applied only the inducement prong of the test. See id. at 852-59.

[46] We therefore do not think that Inwood establishes the contours of the "knows or has reason to know" prong. Insofar as it speaks to the issue, though, the particular phrasing that the Court used-that a defendant will be liable if it "continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement," id. at 854, 102 S.Ct. 2182 (emphasis added)-supports the district court's interpretation of Inwood, not Tiffany's.

[47] We find helpful the Supreme Court's discussion of Inwood in a subsequent copyright case, Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984). There, defendant Sony manufactured and sold home video tape recorders. Id. at 419. Plaintiffs Universal Studios and Walt Disney Productions held copyrights on various television programs that individual television-viewers had taped using the defendant's recorders. Id. at 419-20. The plaintiffs contended that this use of the recorders constituted copyright infringement for which the defendants should be held contributorily liable. Id. In ruling for the defendants, the Court discussed Inwood and the differences between contributory liability in trademark versus copyright law. If Inwood's narrow standard for contributory trademark infringement governed here, [the plaintiffs'] claim of contributory infringement would merit little discussion. Sony certainly does not 'intentionally induce[ ]' its customers to make infringing uses of [the plaintiffs'] copyrights, nor does it supply its products to identified individuals known by it to be engaging in continuing infringement of [the plaintiffs'] copyrights.

Id. at 439 n. 19 (quoting Inwood, 456 U.S. at 855; emphases added).

[48] Thus, the Court suggested, had the Inwood standard applied in Sony, the fact that Sony might have known that some portion of the purchasers of its product used it to violate the copyrights of others would not have provided a sufficient basis for contributory liability. Inwood's "narrow standard" would have required knowledge by Sony of "identified individuals" engaging in infringing conduct. Tiffany's reading of Inwood is therefore contrary to the interpretation of that case set forth in Sony.

[49] Although the Supreme Court's observations in Sony, a copyright case, about the "knows or has reason to know" prong of the contributory trademark infringement test set forth in Inwood were dicta, they constitute the only discussion of that prong by the Supreme Court of which we are aware. We think them to be persuasive authority here. 12[50] Applying Sony's interpretation of Inwood, we agree with the district court that "Tiffany's general allegations of counterfeiting failed to provide eBay with the knowledge required under Inwood." Tiffany, 576 F.Supp.2d at 511. Tiffany's demand letters and Buying Programs did not identify particular sellers who Tiffany thought were then offering or would offer counterfeit goods. Id. at 511-13. 13 And although the NOCIs and buyer complaints gave eBay reason to know that certain sellers had been selling counterfeits, those sellers' listings were removed and repeat offenders were suspended from the eBay site. Thus Tiffany failed to demonstrate that eBay was supplying its service to individuals who it knew or had reason to know were selling counterfeit Tiffany goods.

[51] Accordingly, we affirm the judgment of the district court insofar as it holds that eBay is not contributorially liable for trademark infringement.

[52] Tiffany and its amici express their concern that if eBay is not held liable except when specific counterfeit listings are brought to its attention, eBay will have no incentive to root out such listings from its website. They argue that this will effectively require Tiffany and similarly situated retailers to police eBay's website-and many others like it-"24 hours a day, and 365 days a year." Council of Fashion Designers of America, Inc. Amicus Br. 5. They urge that this is a burden that most mark holders cannot afford to bear.

[53] First, and most obviously, we are interpreting the law and applying it to the facts of this case. We could not, even if we thought it wise, revise the existing law in order to better serve one party's interests at the expense of the other's.

[54] But we are also disposed to think, and the record suggests, that private market forces give eBay and those operating similar businesses a strong incentive to minimize the counterfeit goods sold on their websites. eBay received many complaints from users claiming to have been duped into buying counterfeit Tiffany products sold on eBay. Tiffany, 576 F.Supp.2d at 487. The risk of alienating these users gives eBay a reason to identify and remove counterfeit listings. 14 Indeed, it has spent millions of dollars in that effort.

[55] Moreover, we agree with the district court that if eBay had reason to suspect that counterfeit Tiffany goods were being sold through its website, and intentionally shielded itself from discovering the offending listings or the identity of the sellers behind them, eBay might very well have been charged with knowledge of those sales sufficient to satisfy Inwood's "knows or has reason to know" prong. Tiffany, 576 F.Supp.2d at 513-14. A service provider is not, we think, permitted willful blindness. When it has reason to suspect that users of its service are infringing a protected mark, it may not shield itself from learning of the particular infringing transactions by looking the other way. See, e.g., Hard Rock Café, 955 F.2d at 1149 ("To be willfully blind, a person must suspect wrongdoing and deliberately fail to investigate."); Fonovisa, 76 F.3d at 265 (applying Hard Rock Café's reasoning to conclude that "a swap meet can not disregard its vendors' blatant trademark infringements with impunity"). 15 In the words of the Seventh Circuit, "willful blindness is equivalent to actual knowledge for purposes of the Lanham Act." Hard Rock Café, 955 F.2d at 1149. 16 [56] eBay appears to concede that it knew as a general matter that counterfeit Tiffany products were listed and sold through its website. Tiffany, 576 F.Supp.2d at 514. Without more, however, this knowledge is insufficient to trigger liability under Inwood. The district court found, after careful consideration, that eBay was not willfully blind to the counterfeit sales. Id. at 513. That finding is not clearly erroneous. 17 eBay did not ignore the information it was given about counterfeit sales on its website.

{The Court went on to find that eBay was not diluting Tiffany's marks and did not engage in false advertising.} ______________________________________________________________________________ In Perfect 10, Inc. v. Visa Intern. Service Ass'n, 494 F.3d 788 (9th Cir. 2007), the Ninth Circuit declined to hold credit card providers liable for providing payment services to websites that infringed the plaintiff's copyrights in pornographic images. Judge Kozinski dissented. See id. at 810 (Kozinski, J., "dissenting for the most part"). In the following opinion, the S.D.N.Y. considered whether to hold credit card processors liable for trademark counterfeiting on the ground that they provided credit card payment services to website operators that sold counterfeit merchandise. 15 To be clear, a service provider is not contributorially liable under Inwood merely for failing to anticipate that others would use its service to infringe a protected mark. Inwood, 456 U.S. at 854 n. 13, 102 S.Ct. 2182 (stating that for contributory liability to lie, a defendant must do more than "reasonably anticipate" a third party's infringing conduct (internal quotation marks omitted)). But contributory liability may arise where a defendant is (as was eBay here) made aware that there was infringement on its site but (unlike eBay here) ignored that fact. 16 The principle that willful blindness is tantamount to knowledge is hardly novel. See, e.g. Harte-Hanks Commc'ns, Inc. v. Connaughton, 491 U.S. 657, 659, 692, 109 S.Ct. 2678, 105 L.Ed.2d 562 (1989) (concluding in public-official libel case that "purposeful avoidance of the truth" is equivalent to "knowledge that [a statement] was false or [was made] with reckless disregard of whether it was false" (internal quotation marks omitted)); United States v. Khorozian, 333 F.3d 498, 504 (3d Cir. 2003) (acting with willful blindness satisfies the intent requirement of the federal bank fraud statute) . . . . 17 Tiffany's reliance on the "flea market" cases, Hard Rock Café and Fonovisa, is unavailing. eBay's efforts to combat counterfeiting far exceeded the efforts made by the defendants in those cases. See Hard Rock Café, 955 F.2d at 1146 (defendant did not investigate any of the seizures of counterfeit products at its swap meet, even though it knew they had occurred); Fonovisa, 76 F.3d at 265 (concluding that plaintiff stated a claim for contributory trademark infringement based on allegation that swap meet "disregard[ed] its vendors' blatant trademark infringements with impunity"). Moreover, neither case concluded that the defendant was willfully blind. The court in Hard Rock Café remanded so that the district court could apply the correct definition of "willful blindness," 955 F.2d at 1149, and the court in Fonovisa merely sustained the plaintiff's complaint against a motion to dismiss, 76 F.3d at 260-61, 265.

HAROLD BAER, JR., District Judge: [1] Gucci America, Inc. is a well-known manufacturer of luxury goods. The company holds a variety of trademarks in its products and designs, and invests substantial capital in ensuring that the marks maintain a reputation for quality. Seeking to capitalize on the popularity of Gucci products, certain internet merchants have sold "replica," counterfeit Gucci products that infringe Gucci marks at significantly lower prices and of lower quality. Gucci recently concluded a successful litigation against one such merchant that operated a website called TheBagAddiction.com. The owners of the website admitted that they sold counterfeit Gucci products to customers across the country through the website. In its continuing effort to root out and prevent infringement of its trademarks, Gucci now brings suit against three entities, which while a step down in the "food chain," allegedly ensured that TheBagAddiction.com was able to sell these counterfeit products. These defendants allegedly established the credit card processing services used to complete the online sales of fake Gucci items. The three defendants have jointly moved to dismiss the case for lack of personal jurisdiction and for failure to state a claim. For the reasons that follow, the defendants' motion to dismiss is DENIED.

[2] Gucci America, Inc. ("Plaintiff" or "Gucci") is a New York company, with its principal place of business in New York City. Compl. ¶ 11. It is the sole, exclusive distributor in the United States of items labeled with the "Gucci Marks," including leather goods, jewelry, home products, and clothing. Id. The Gucci Marks are a series of marks-the Gucci name, the Gucci crest, the "non-interlocking GG monogram," the "repeating GG design," etc.-registered by Gucci with the United States Patent and Trademark Office. See Compl. ¶ ¶ 24-25 (reproduction of marks), Ex. 1 (Patent Office registration certificates). According to Plaintiff, the marks are well-known and recognizable in the United States and around the world. Gucci promotes the marks widely, and relies on "strict quality control standards" for its products, and as a result has achieved and retains a reputation for quality. Id. ¶ 28. The company spends hundreds of millions of dollars to advertise and promote its products and marks, and enjoys billions in sales of the Gucci products. "Based on the extensive sales of the Gucci [p]roducts and such products' wide popularity," claims Plaintiff, "the Gucci Marks have developed a secondary meaning and significance in the minds of the purchasing public, and the services and products utilizing and/or bearing such marks and names are immediately identified by the purchasing public with Plaintiff." Id. ¶ 30.

[3] This case arises out of Plaintiff's attempts to eliminate online sales of counterfeit products and the unauthorized use of the Gucci Marks. In Gucci America, Inc., et al. v. Laurette Company, Inc., et al., No. 08 Civ. 5065(LAK), Gucci brought suit in this District against certain defendants, collectively known as the "Laurette Counterfeiters" or "Laurette," for the sale of counterfeit Gucci products on a website called "TheBagAddiction.com."foot_25 Through this website, the Laurette Counterfeiters sold a variety of "replica" luxury products, and, in particular, sold replica Gucci products under the Gucci name, with the various Gucci registered trademarks, and at fractions of the retail price for an authentic version. See Compl.

¶ ¶ 33-36 (describing and providing images of counterfeit Gucci products sold on TheBagAddiction.com). The website itself was replete with the use of the Gucci name and trademarks. See id. ¶ 41 (image of TheBagAddiction.com website). According to Plaintiff, the Laurette Counterfeiters "openly boasted" about the sale of counterfeit products, because the website expressly noted that the products were not authentic but rather "mirror images" of Gucci products. See id. ¶ 32. Though they are inferior in quality and workmanship, they appear to the naked eye to be similar if not identical to Gucci products. Gucci claims that, as a result of the sale of these counterfeit products, customers were deceived and misled "into believing that the products sold by the Laurette Counterfeiters on TheBagAddiction.com were authorized or sponsored by the Plaintiff." Id. ¶ 40. Eventually, Laurette consented to the entry of judgment and admitted liability for counterfeiting activities. According to Plaintiff, "the Laurette [c]ounterfeiters admitted . . . that, without authorization or license . . . they willfully and intentionally used, reproduced and/or copied the Gucci [m]arks in connection with their manufacturing, distributing, exporting, importing, advertising, marketing, selling and/or offering to sell their [c]ounterfeit [p]roducts." Id. ¶ 31.

[4] Plaintiff now seeks to bring the present action against three companies, Durango Merchant Services, Frontline Processing Corporation, and Woodforest National Bank, 2 who allegedly assisted the Laurette Counterfeiters and other similar website operators. Durango Merchant Services ("Durango") is a Wyoming corporation with its business address in Durango, Colorado. . . . Durango's business is predicated on assisting merchants in setting up credit card processing services with institutions that provide credit card merchant accounts. . . . Frontline Processing Corporation ("Frontline") is a Nevada corporation with its principal place of business in Bozeman, Montana. Frontline is a "nationwide provider of credit card processing and electronic payment services for merchants, banks, and sales agents," and is an "Independent Service Organization" and "Merchant Service Provider" with Visa and MasterCard, respectively. Compl. ¶ 58. . . . Finally, Woodforest National Bank ("Woodforest") is a bank organized under the laws of the United States, with its business address in The Woodlands, Texas. Similar to Frontline, Woodforest also "provides certain credit card processing services." Id. ¶ 14. . . . [5] To understand the roles of the three defendants and their alleged liability, a summary explanation of the credit card transaction process is necessary. A customer will initiate the process when he or she purchases a product from the merchant with a credit card. Once the credit card information is "swiped" on a terminal, or entered on a website, the merchant terminal transmits an authorization request to the merchant's "acquiring bank," who in this case was Frontline and Woodforest. The acquiring bank sends the credit card request through an electronic network to the cardholder's issuing bank. Based on the cardholder's credit limit or other factors, the issuing bank will send a message back through the network to the acquiring bank, who forwards it back to the merchant, which states that the merchant should either approve or decline the transaction. If approved, the merchant will complete the transaction and the acquiring bank will credit the merchant's account with the appropriate amount of funds. This entire process typically takes a matter of seconds. Some days to months after the sale is completed, the acquiring bank will submit the transaction information to the issuing bank, which will seek payment from the cardholder and settle with the acquiring bank.

[6] Gucci's overarching theory of the case is that Durango arranged for web companies that sold counterfeit Gucci products to establish credit card processing services with companies like Woodforest and Frontline. These processors then provided the credit card services necessary for the sale of the faux Gucci items. The complaint focuses largely on the allegedly representative conduct of Defendants with the Laurette Counterfeiters. According to Plaintiff, Durango acted as an agent for the defendant credit card processing companies 3 to locate potential customers, including the Laurette Counterfeiters and other similar infringing online operations. Durango collected a referral fee for bringing together these online merchants with banks and companies like Frontline and Woodforest. Durango's website billed the company as specializing in services for "High Risk Merchant Accounts," including those who sell "Replica Products." Compl. ¶ 48. Gucci alleges that the Laurette Counterfeiters entered into a "Merchant Service Agreement" with Durango through one of its sales representatives, Nathan Counley and, through this relationship, "procur[ed] merchant accounts with credit card processing agencies, including Defendants Frontline and Woodforest." Id. ¶ 51. Gucci asserts that, through email and other documents, Durango was aware that TheBagAddiction.com sold counterfeit "replica" Gucci products and nevertheless chose to do business with them. . . . . [7] Gucci maintains that the credit card processing services established by these three defendants was essential to the Laurette Counterfeiters' sale of counterfeit Gucci products. These services "facilitated the Laurette Counterfeiters ability to quickly and efficiently 3 Neither party has provided sufficiently clear terminology to describe Woodforest or Frontline. For the purposes of this opinion, terms like "acquiring bank" and "credit card processors" are intended to have the same meaning and do not imply anything about their services beyond what is alleged in the complaint. transact sales for [c]ounterfeit [p]roducts through their website by enabling customers to use personal credit cards to pay for purchases on TheBagAddiction.com." Compl. ¶ 87. Without credit card processing, Plaintiff claims, websites like TheBagAddiction.com could not operate or functionally exist. As such, Gucci believes that Durango, Frontline, and Woodforest are equally responsible for the infringement and counterfeiting engaged in by Laurette through their website. Based on these allegations, Plaintiff brings causes of action for (1) trademark infringement and counterfeiting under the Lanham Act, 15 U.S.C. § § 1114, 1125, 1116, 1117;

(2) contributory trademark infringement and counterfeiting pursuant to the Lanham Act; (3) vicarious liability for trademark infringement and counterfeiting under the Lanham Act; and (4) trademark infringement and unfair competition under New York state law, see N.Y. Gen. Bus. Law § § 360-k, 360-o. Defendants jointly moved to dismiss these claims based on a purported lack of personal jurisdiction, and because Plaintiff has failed to state a claim, pursuant to Rule 12(b)( 2) and ( 6) of the Federal Rules of Civil Procedure.

A. Personal Jurisdiction {The court found personal jurisdiction over the defendants.} B. Trademark Infringement Liability 1. Standard of review [8] To survive a motion to dismiss, a plaintiff must "plead enough facts to state a claim to relief that is plausible on its face." Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). A facially plausible claim is one where "the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Ashcroft v. Iqbal, ---U.S. ----, 129 S. Ct. 1937Ct. , 1949Ct. (2009)). . . .

[9] . . . Gucci offers three theories of liability to hold Defendants accountable for the infringing sales of counterfeit products by others: direct, vicarious, and contributory liability. 62. Direct and Vicarious Liability [10] Gucci has not put forth sufficient factual allegations to support trademark infringement claims based on either direct or vicarious theories of liability. . . . The problem for Gucci is that there is no indication that any of the defendants actually "used the mark in commerce." Knowledge alone of another party's sale of counterfeit or infringing items is insufficient to support direct liability, see eBay, 600 F.3d at 103, and there are otherwise no factual allegations that Durango, Woodforest, or Frontline themselves advertised or sold infringing goods.

[11] Gucci's allegations are also unable to support a claim for vicarious liability. Vicarious trademark infringement, a theory of liability considered elsewhere but not yet the subject of a decision by this Circuit, "requires a finding that the defendant and the infringer have an apparent or actual partnership, have authority to bind one another in transactions with third parties or exercise joint ownership or control over the infringing product." Hard Rock Cafe Licensing Corp. v. Concession Servs., Inc., 955 F.2d 1143, 1150 (7th Cir. 1992); Perfect 10, Inc. v. Visa Intern. Serv. Ass'n, 494 F.3d 788, 807 (9th Cir. 2007) . . . . Though Gucci has raised a number of factual allegations that indicate that Defendants' services were crucial to a website like TheBagAddiction.com's sale of infringing goods, there is insufficient evidence to plausibly infer an actual or apparent partnership. The vague, puffery-like references to a "partnership" between these companies and website merchants are not enough to support vicarious liability. See Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 591 F.Supp.2d 1098, 1113 (N.D.Cal. 2008) ("off-hand references to customers as 'partners' is insufficient to exhibit the type of behavior and relationship that can be considered an actual or apparent partnership."). While Defendants may have sufficient control over the sale of counterfeit goods to support contributory liability, see infra, the facts alleged do not support an inference that they had the type of control over a company like Laurette as a whole, i.e. akin to joint ownership, necessary for vicarious liability.

[12] Gucci's only plausible theory of liability here is contributory trademark infringement. The Supreme Court has determined that liability can extend "beyond those who actually mislabel goods with the mark of another." Inwood Lab., Inc. v. Ives Lab., Inc., 456 U.S. 844, 853 (1982) . . . . As the Seventh Circuit noted, however, the Supreme Court's test for contributory liability is not as easily applied to service providers as it is to a manufacturer. See Hard Rock, 955 F.2d at 1148 ("it is not clear how the doctrine applies to people who do not actually manufacture or distribute the good that is ultimately palmed off as made by someone else"); see also Tiffany Inc. v. eBay, Inc., 576 F.Supp.2d 463, 504 (S.D.N.Y. 2008) (reversed on other grounds). While the "intentional inducement" prong of the Inwood test still applies, see eBay, 600 F.3d at 106, courts have crafted a slightly different test for service providers that "continue [ ] to supply its [services] to one whom it knows or has reason to know is engaging in trademark infringement." Inwood, 456 U.S. at 853. To avoid imputing liability on truly ancillary figures like a "temporary help service" that may set up a flea market stand for a counterfeiting merchant, see Hard Rock, 955 F.2d at 1148, courts in other circuits have determined that a plaintiff must also show "direct control and monitoring of the instrumentality used by a third party to infringe the plaintiff's mark." See, e.g., Perfect 10, 494 F.3d at 807; Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 984 (9th Cir. 1999). While the Second Circuit has yet to directly contemplate the validity of this modified part of the Inwood test, I concur with Judge Sullivan that this is a "persuasive synthesis." See eBay, 576 F.Supp.2d at 505-06. As such, Gucci can proceed with its action against Defendants if it can show that they (1) intentionally induced the website to infringe through the sale of counterfeit goods or (2) knowingly supplied services to websites and had sufficient control over infringing activity to merit liability.

(a) Intentional Inducement [13] A party can be held liable for trademark infringement if it intentionally induces another to engage in trademark infringement. With regards to the role played by Durango, Plaintiff's inducement theory is supported by sufficient factual allegations. Durango's website reaches out to "high risk merchant accounts," including those who sell "replica products." Id.

¶ 48. The website further boasts that 95% of merchant accounts are approved and that Durango "specialize[s] in hard to acquire accounts." See Coyle Decl., Ex. 10 (printed copies of Durango website pages). Similar to the companies that promise the extension of credit or loans to those who are rejected by traditional lending institutions for having bad credit, Gucci's complaint suggests that Durango bills itself as a company that sets up a certain quality of business with credit card processing services that accept these "high risk" clients. These allegations can fairly be construed as Durango's attempt to induce less savory businesses, like those who sell counterfeit "replicas" of luxury goods. Moreover, Gucci alleges that Durango's sales representative, Nathan Counley, specifically discussed Laurette's difficulty in finding a credit card processor because they were "replica" merchants, which Gucci argues was synonymous on the internet for a counterfeiter. 7 Durango "communicated an inducing message to [its] . . . users," and while there is of yet no evidence that they expressly sought out counterfeiters, Gucci has pled sufficient facts to infer that Durango crafted "advertisement[s] or solicitation[s] that broadcast[ ] a message designed to stimulate others to commit violations." Perfect 10, 494 F.3d at 801 (discussing contributory copyright infringement, but suggesting later that the analysis applies to trademark infringement as well). Finally, Gucci alleges that Counley and Durango helped the Laurette Counterfeiters set up a system to avoid chargebacks, which required customers to check a box that said "I understand these are replicas." This suggests "affirmative steps taken to foster infringement" or "that Defendants promoted their payment system as a means to infringe." Id. at 800-01.

[14] On the other hand, Gucci has failed to plausibly support a claim that either Woodforest or Frontline intentionally induced Laurette to sell counterfeit products. Durango, not Woodforest or Frontline, helped set up the Laurette Counterfeiters with credit card processing services. Though both companies allegedly advertised for high risk merchants, they did not bring Laurette to the table the way Durango allegedly did. Gucci notes that they both charged higher fees for processing high risk merchants, and that Frontline reviewed the language of the aforementioned acknowledgement of receipt of a replica product. These 7 Defendants challenge the meaning of both "replica" and "high risk," and claim that both are much more innocuous terms than Gucci suggests. First, "replica" is in fact often used in conjunction, or interchangeably, with the term "counterfeit" in case law on trademark infringement. See, e.g., Hermes Int'l v. Lederer de Paris Fifth Ave., Inc., 219 F.3d 104, 106 (2d Cir. 2000) ("Appellees Lederer and Artbag sell replicas of various Hermès products"); eBay, 600 F.3d at 100 (Defendant internet auction house has disclaimer that it "does not tolerate" replicas); Akanoc, 591 F.Supp.2d at 1103 ("Plaintiff believes that each of them is a counterfeit replica of Plaintiff's products which infringe Plaintiff's copyrights and trademarks."). Second, the precise meaning of the term is a fact-specific issue that can be dealt with through discovery, and I may rely on Gucci's pleadings at this stage of the litigation.

[19] The most significant dispute between the parties with regard to contributory liability is whether any or all of the Defendants had sufficient control over Laurette and TheBagAddiction.com website to render them liable for the web merchant's counterfeiting practices. As noted above, the control element was incorporated by the Seventh Circuit to establish a limiting principle that would exclude those service providers that do not really contribute to the infringing conduct; this Circuit has yet to directly consider the merits or contours of this modified form of the Inwood test. See eBay, 600 F.3d at 105-06 (noting control element but "assum[ing] without deciding that Inwood 's test for contributory trademark infringement governs"). Although the concept of control arose out of the flea market context and is based on common law landlord-tenant tort principles, see Hard Rock, 955 F.2d at 1149-50, the concept of control is not limited to that context. Inwood "laid down no limiting principle that would require defendant to be a manufacturer or distributor," and "whether the venue is online or in brick and mortar is immaterial." eBay, 576 F.Supp.2d at 505; see also Fonovisa, Inc. v [20] Here, Plaintiff provides sufficient factual allegations to establish a claim that Woodforest and Frontline had some control over the directly infringing third-party, but fails to provide enough facts to show control on the part of Durango. Though Gucci has made an adequate showing of intentional inducement by Durango, there is little indication that they had much control over the website's sales process. Durango appears to be the veritable middleman in this case. Though there allegedly was an ongoing relationship between Durango and the Laurette Counterfeiters, Gucci provides little indication that once Laurette received services from Frontline and Woodforest, Durango had any particular ability to stop or prohibit sales. Plaintiff's allegations suggest both inducement and knowledge, but "procuring merchant accounts with credit card processing agencies," Compl. ¶ 51, does not demonstrate that Durango could thereafter prevent the sale of any or all of the counterfeit products.

[21] In contrast, Gucci's complaint indicates that Frontline and Woodforest's credit card processing services are a necessary element for the transaction of counterfeit goods online, and were essential to sales from TheBagAddiction.com. Although other methods of online payment exist, such as online escrow-type services like PayPal, generally speaking "credit cards serve as the primary engine of electronic commerce." Perfect 10, 494 F.3d at 794. Indeed, Gucci points out that Durango's website claims that "9 out of 10 people use a credit card for their online orders." Compl. ¶ 3. As such, without the credit card processing operation set up by these two defendants, Gucci alleges that TheBagAddiction.com would largely have been unable to sell its counterfeit Gucci products. They further support this claim with an affidavit by one of the website owners, who states that "[a]pproximately 99% of payments from my customers were made using credit cards." Kirk Decl. ¶ 1. Both Frontline and Woodforest processed transactions for cardholders with major credit card institutions-Visa, MasterCard, and so forth-and, according to Gucci, Laurette sold over $500,000 in counterfeit products "during the time they utilized Defendants' merchant bankcard services." Compl. ¶ 44. By processing these transactions, both companies allegedly earned significant revenue from the transaction fees they charged. Put another way, "[t]hey knowingly provide a financial bridge between buyers and sellers of [counterfeit products], enabling them to consummate infringing transactions, while making a profit on every sale." Perfect 10, 494 F.3d at 810-11 (Kozinski, J., dissenting). 9 Though both Frontline and Woodforest insist they are middlemen with no ability to prevent a transaction, they do not dispute that they could have simply refused to do business with "replica" internet merchants, just like the flea market purveyor who refuses to provide a booth to a counterfeiter. See Compl. ¶ ¶ 87-89 (Woodforest and Frontline "facilitated the Laurette Counterfeiters ability to quickly and efficiently transact sales for Counterfeit Products through their website by enabling customers to use personal credit cards to pay for purchases on TheBagAddiction.com"). According to one of the website operators, "[i]f I did not receive an approval for a credit card charge, I would not ship the customer's order." Kirk Decl. ¶ 2. These allegations indicate that the infringing products "are delivered to the buyer only after defendants approve the transaction . . . This is not just an economic incentive for infringement; it's an essential step in the infringement process." Perfect 10, 494 F.3d at 811-12 (Kozinski, J., dissenting).

[22] Frontline and Woodforest insist that these allegations are insufficient because they do not allege direct or complete control over the website itself. However, the ability to literally shut down the website is not needed given the facts of this case. The circuits that have considered this issue look for control and monitoring over the "instrumentality used . . . to infringe the plaintiff's mark." Perfect 10, 494 F.3d at 807. Based on Gucci's claims, the instrumentality in this case is the combination of the website and the credit card network, since both are allegedly necessary elements for the infringing act-the sale and distribution of the counterfeit good. 10 Defendants' rely on the fact that, in Perfect 10, the Ninth Circuit declined to hold certain credit card processors liable for a website's trademark infringement. There, however, the infringing conduct was the publication on the website of trademarked images of nude models, and the distribution occurred via individuals viewing and taking the image directly from the website. See Perfect 10, 494 F.3d at 796 ("the infringement rests on the reproduction, alteration, display and distribution of Perfect 10's images over the internet"); Perfect 10, Inc. v. Visa Inter. Serv. Assoc., No. C 04-00371, 2004 WL 3217732 (N.D.Cal. Dec. 3, 2004) ("Plaintiff alleges that a number of websites routinely and illicitly publish Plaintiff's images-and thereby infringe."). Plaintiff in that case failed or perhaps was unable to allege that the credit card service providers had the "power to remove infringing material" or "directly stop their distribution" because the infringement occurred on the website itself and a credit card transaction was not needed for the website to continue to infringe. See Perfect 10, 494 F.3d at 807. This is not the case here.

[23] Rather, Gucci's allegations indicate that they are concerned primarily with the sale of tangible counterfeit goods to customers around the country, which allegedly could not be accomplished without Woodforest and Frontline's ability to process the credit card-based purchases. In the words of the Supreme Court, these defendants "furnish[ed] the means of consummating" the trademark infringement. See eBay, 600 F.3d at 104 (quoting William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 530, 44 S.Ct. 615, 68 L.Ed. 1161 (1924)). While in Perfect 10 the credit card services may not have been needed for a website to display infringing photographs, the infringement here occurred through the sale of the counterfeit products. "It's not possible to distribute by sale without receiving compensation, so payment is in fact part of the infringement process." Perfect 10, 494 F.3d at 814 (Kozinski, J., dissenting). This action resembles cases with defendants who helped consummate infringing transactions by delivering the counterfeit or infringing goods to the customer. In Getty Petroleum Corp. v. Aris Getty, Inc., the First Circuit found a defendant common carrier contributorily liable because it delivered unbranded gasoline to gas stations it knew would re-sell the gasoline under the Getty brand name. See 55 F.3d 718, 719 (1st Cir. 1995). Lack of title to the gasoline did not matter; the defendant "supplied[ ] an essential factor-physical possession of the property to which the trademark was to be attached." Id. at 720. Similarly, these defendants allegedly provided an "essential factor" to the infringement because the goods could not be sold and shipped without their credit card services. "[I]t makes no difference that defendants control only the means of payment, not the mechanics of transferring the material . . . In a commercial environment, distribution and payment are . . . like love and marriage-you can't have one without the other. If cards don't process payments, pirates don't deliver booty." Perfect 10, 494 F.3d at 818 (Kozinski, J., dissenting). If, as Gucci alleges, the Laurette website was functionally dependent upon Woodforest and Frontline's credit card processing services to sell counterfeit Gucci products, it would be sufficient to demonstrate the control needed for liability.

[24] Gucci has sufficiently alleged facts to support personal jurisdiction and its trademark claims against Durango, Woodforest, and Frontline. Although Plaintiff has not sufficiently pled facts to support either direct or vicarious theories of liability, claims against all three defendants may proceed based on a contributory liability theory. The factual allegations are sufficient to infer that Durango intentionally induced trademark infringement, and that Woodforest and Frontline exerted sufficient control over the infringing transactions and knowingly provided its services to a counterfeiter.

[25] For the foregoing reasons, Defendant's motion to dismiss is DENIED. SO ORDERED.

Since Tiffany v. eBay, non-internet, brick-and-mortar defendants have sought to take advantage of Tiffany v. eBay's defendant-friendly reformulation of contributory liability doctrine in trademark law. As the following case demonstrates, they have not been successful.

Luxottica Group, S.P.A. v. Airport Mini Mall, LLC 932 F.3d 1303 (11th Cir. 2019)

JILL PRYOR, Circuit Judge: [1] Luxury eyewear manufacturers holding registered trademarks brought a contributory trademark infringement action under the Lanham Act against owners of a discount mall whose subtenants were selling counterfeit eyewear. At trial, the jury returned a verdict in the plaintiffs' favor. After careful review and with the benefit of oral argument, we conclude that none of the issues the defendants raise on appeal demonstrates reversible error, so we affirm the jury's verdict.

[2] Plaintiffs Luxottica Group, S.p.A. and its subsidiary Oakley, Inc. (collectively and individually "Luxottica") manufacture and sell luxury eyewear and own registered trademarks for the Ray-Ban and Oakley brands. Defendants Jerome and Jenny Yeh own defendant Yes Assets, LLC. In 2004, Yes Assets purchased the Old National Village Shopping Center in College Park, Georgia. The Shopping Center included about 30 store fronts as well as an approximately 79,000-square-foot indoor space (the "Mall"), which contained between 120 and 130 booths to lease to individual vendors. Defendant Alice Jamison, the Yehs' daughter, managed the Shopping Center. Her responsibilities included reviewing leases, collecting rent, and visiting the Shopping Center and Yes Assets' tenants, including the lessee of the Mall.

[3] Until December 1, 2009, Yes Assets leased the Mall to a tenant, who assigned it to a subtenant, who subleased it to former Georgia congressman Pat Swindall, who in turn subleased the booths to vendors. From December 1, 2009 forward, Yes Assets leased the Mall to defendant Airport Mini Mall, LLC ("AMM"), a company Jerome and Jenny created and later gave to their son, defendant Donald Yeh, and the Mall became known as the International Discount Mall, AMM's tradename. Under the lease agreement, Yes Assets provided AMM and its subtenants (the vendors in the 120 to 130 booths) with a variety of services-including lighting, water, sewerage, maintenance and repairs, painting, and cleaning-and a parking area for customers. Greg Dickerson, whom Jerome hired as AMM's property manager, subleased the booths to vendors and reported to Jamison and Jerome until 2013, when Jerome had a stroke, and to Jamison and Donald afterward.

[4] AMM's tenure as the Mall's landlord saw three law enforcement raids there, during which officers executed search warrants, arrested subtenants, and seized alleged counterfeits of Luxottica eyewear and other brands' products. After the first raid, law enforcement left a copy of the search warrant and a list of items seized, including eyewear bearing Luxottica's marks, at the raided booth. The second raid lasted more than 14 hours and involved approximately 30 federal and local law enforcement agents who shut down the Mall to execute search warrants, arrested subtenants for selling counterfeit goods, seized thousands of counterfeit items bearing Luxottica's marks, and loaded the items onto a tractor-trailer parked in front of the Shopping Center. Dickerson witnessed the second raid from the Shopping Center's parking lot and notified Jamison, Donald, and Jerome and Jenny's attorney, Louis Bridges. Dickerson later walked through the Mall to compile a list of the booths where law enforcement had seized goods and informed Jamison, Jerome, and Bridges about his inquiries of subtenants regarding the raid and whether they were selling counterfeit items. Each subtenant denied selling counterfeit merchandise, but Jamison admitted that she would expect the subtenants to lie if they were selling counterfeit goods. On Bridges' advice, the defendants decided to take no action against the subtenants unless the subtenants were convicted of a crime. More than a year after Luxottica filed this lawsuit, police executed several more search warrants at the Mall and seized additional counterfeit items bearing Luxottica's marks. [5] Luxottica twice sent letters notifying the defendants that their subtenants were not authorized to sell Luxottica's eyewear and that any mark resembling Ray-Ban or Oakley marks would indicate that the glasses were counterfeit. The second letter also identified specific booths Luxottica suspected of selling counterfeit eyewear. Jamison and Donald were aware of both letters. Dickerson visited the booths named in the second letter but made no attempt to determine whether those vendors' eyewear products were counterfeit or to terminate their leases. After Luxottica filed this lawsuit, Jamison and Bridges attended a meeting at the College Park Police Department to discuss the unlawful selling of counterfeit products at the Mall.

[6] Despite the raids, letters, and meeting with law enforcement, the defendants took no steps to evict the infringing subtenants; they even renewed leases with several of the subtenants who had been arrested during the 14-plus-hour raid. In the month leading up to the filing of this lawsuit, Isabel Rozo, an employee of Luxottica's private investigator Geanie Johansen, purchased and photographed $15 and $20 counterfeit Ray-Ban glasses at several booths. Ray-Ban glasses normally retail for $140 to $220 a pair. [7]. . . After an 11-day trial, the jury returned a special verdict holding all defendants except Jenny liable for contributory trademark infringement and assessing $100,000 in damages for each infringed trademark, totaling $1.9 million in damages. Having moved for judgment as a matter of law after the close of all the evidence, the defendants renewed their motion, which the district court denied.

Contributory Liability Under the Lanham Act

. . . . [8] In support of its theory that the defendants had at least constructive knowledge of their subtenants' infringement, Luxottica presented evidence tending to show that the defendants exhibited willful blindness to the subtenants' unlawful conduct. Across the circuits, a consensus has developed that willful blindness is one way to show that a defendant had constructive knowledge in cases of contributory trademark infringement. . . . {S}ee also United States v. Baxter Int'l, Inc., 345 F.3d 866, 902 (11th Cir. 2003) (holding, in the context of the Medicare Secondary Payer statute, that "[a] party that willfully blinds itself to a fact . . . can be charged with constructive knowledge of that fact"). Willful blindness occurs when a person "suspect[s] wrongdoing and deliberately fail[s] to investigate." Hard Rock Cafe, 955 F.2d at 1149. We agree with the other circuits that willful blindness is a form of constructive knowledge for contributory trademark infringement. We evaluate the strength of Luxottica's evidence regarding willful blindness and constructive knowledge in Part III.A.3. . . . .

The Evidence Was Sufficient to Prove That the Defendants Had at Least Constructive Knowledge of Specific Acts of Infringement.

[9] Pursuing a knowledge theory of contributory trademark infringement, Luxottica sought to prove that the defendants knew or had reason to know that their subtenants were selling counterfeit items yet continued to supply services (space, utilities, maintenance, and parking) that enabled the subtenants to sell their goods. The question that arises-[ ] one of first impression for this Court-is whether the knowledge theory of contributory liability requires the plaintiff to prove that the defendant had actual or constructive knowledge of specific infringing acts. We need not answer this question, however, because even if liability for contributory trademark infringement requires the defendant to have knowledge of specific acts of direct infringement, the evidence in this case was sufficient for a reasonable jury to find that the defendants had at least constructive knowledge of (or were willfully blind to) specific acts of direct infringement by their subtenants.

[13] What's more, previously we have held that evidence of "serious and widespread" infringement makes it more likely that a defendant knew about the infringement. Mini Maid Servs. Co. v. Maid Brigade Sys., Inc., 967 F.2d 1516, 1522(11th Cir. 1992). The three law enforcement raids-one of which lasted over 14 hours and required a tractor-trailer to haul away the seized merchandise-evidenced "serious and widespread" violations that gave the defendants at least constructive knowledge that their subtenants were selling counterfeit goods. Id. After the 14-plus-hour raid, Dickerson, the defendants' property manager, walked through the Mall; compiled a list of booths where law enforcement had seized goods; and informed Jerome, Jamison, and Bridges about his conversations with subtenants regarding the raid and whether they were selling counterfeit products. The record evidence of (1) the raids, arrests, and seizures, (2) the meeting at the College Park Police Department Jamison and Bridges attended where they discussed the sale of counterfeit goods at the Mall, and (3) the defendants' ability to visually inspect the approximately 130 booths was, taken together, sufficient to support a jury finding that the defendants had at least constructive knowledge of, or were willfully blind to learning, which subtenants were directly infringing Luxottica's trademarks.

[14] In sum, evidence of the defendants' knowledge of specific infringing acts by subtenants who relied on the services the defendants provided (including space, utilities, and maintenance) amply supported the jury verdict.

1. Tiffany v. eBay and Canal Street. A Canal Street landlord sought to use the specific knowledge standard in Tiffany v. eBay to escape secondary liability for the continuing sale of counterfeit OMEGA watches by unnamed individuals operating out of its building as either tenants or subtenants. (Canal Street is a major street in New York City at the northern edge of Manhattan's Chinatown.) As the defendants would in Luxottica, the landlord 375 Canal argued that while it had been made aware of previous unnamed individuals selling counterfeits from its building, it did not have specific knowledge of the counterfeit sales that were the subject of the current suit, which were made by different unnamed individuals (whom the landlord basically claimed not to be able to tell apart). Omega argued before the jury that 375 Canal was willfully blind to the identities of its tenants and the jury agreed, finding that 375 Canal was contributorily liable (and awarding $1.1 million in statutory damages). Finding no error in the jury instructions, the Second Circuit distinguished eBay's conduct in Tiffany:

Omega introduced evidence from which a jury could find that Canal had a history of turning a blind eye toward counterfeiting at 375 Canal Street and that Canal had taken insufficient steps to root out the counterfeiting it knew or should have known was occurring . . . . Canal insists that the verdict below portends widespread liability even for innocent actors. But Tiffany made clear that contributory trademark infringement based on willful blindness does not create liability simply because of a defendant's "general knowledge as to counterfeiting on its" property, id. at 107, or because a defendant "fail [ed] to anticipate that others would use its service to infringe a protected mark," id. at 110 n.15. Tiffany provided a test for identifying which scenarios could result in liability: "[C]ontributory liability may arise where a defendant is . . . made aware that there was infringement on its site but . . . ignored that fact." Id. There is no inherent duty to look for infringement by others on one's property. Indeed, the district court's jury instructions correctly stated that Canal had no affirmative duty to police trademarks: "Even if 375 Canal has control over the premises, 375 Canal has no affirmative duty to take precautions against the sale of counterfeit goods or to seek out and prevent alleged trademark violations, and cannot be found liable if it simply fails to take reasonable preemptive precautions against sales of counterfeit items." J. App'x 2629. But where a defendant knows or should know of infringement, whether that defendant may be liable for contributory infringement turns on what the defendant does next. If it undertakes bona fide efforts to root out infringement, such as eBay did in Tiffany, that will support a verdict finding no liability, even if the defendant was not fully successful in stopping infringement. But if the defendant decides to take no or little action, it will support a verdict finding liability. See Coach, Inc. v. Goodfellow, 717 F.3d 498, 505 (6th Cir. 2013) (upholding liability because the defendant knew or had reason to know of infringement yet continued to lease vending space "without undertaking a reasonable investigation or taking other appropriate remedial measures").

Omega SA v. 375 Canal, LLC, 984 F.3d 244, 254-55 (2d Cir. 2021). Earlier in the opinion, the court referenced such reasonable precautions as "posting anti-counterfeiting signs, conducting walk-throughs, or inspecting the property for hidden compartments that could contain counterfeit goods." Id. at 249.

III. Defenses to Trademark Infringement and Related Limitations on Trademark Rights

Trademark rights are subject to a number of limitations. Certain of these take the form of affirmative defenses on which the defendant bears the ultimate burden of persuasion. For example, even if a court finds that a defendant is causing a likelihood of confusion, the defendant may escape liability if it can show by a preponderance of the evidence that it was engaging in descriptive fair use (Part III.A) or that the plaintiff has abandoned its mark (Part III.D).

Other limitations on trademark rights are implemented through modifications to the likelihood of confusion test that tend to shield the defendant from liability. For example, if the defendant's conduct qualifies as a nominative fair use (Part III.B) or an expressive use such as a parody (Part III.C), a court may add additional, defendant-friendly factors to the standard multifactor test for the likelihood of consumer confusion or replace the multifactor test outright with an alternative test. Though trademark lawyers may speak loosely of these doctrines as "defenses," they are not true affirmative defenses. Instead they are modifications of the test for infringement. In such situations, the plaintiff typically continues to bear the ultimate burden of persuasion on the question of whether the defendant has infringed the plaintiff's mark.

In a typical descriptive fair use situation, the plaintiff uses a term as a trademark (e.g., SWEETARTS for candy) that the defendant also uses merely to describe its own goods (e.g., "sweet-tart" to describe the taste of OCEAN SPRAY cranberry juice). See Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055 (7th Cir. 1995) (finding defendant's descriptive, nontrademark use of the term "sweet-tart" to be a descriptive fair use); Sorensen v. WD-40 Co., 792 F.3d 712, 722 (7th Cir. 2015) ("The hypothetical producer of 'Crunchy' brand potato chips, for example, cannot block its competitors from describing their chips as crunchy. It may, though, be able to block its competitors from selling chips that are branded 'Crunchy.'"). The affirmative defense of descriptive fair use (sometimes called "classic" fair use) is based on Lanham Act § 33(b)(4), 15 U.S.C. § 1115(b)(4), which establishes a defense to trademark infringement on the ground:

(4) That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin;

We begin our review of descriptive fair use in Part III.A.1 with KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U. S. 111 (2004). KP Permanent does not apparently set forth any specific test that the circuits should apply to adjudicate a descriptive fair use claim. The opinion is included here primarily because of the importance of the Court's clear holding that in analyzing descriptive fair use, a court may find the defendant's conduct to be a descriptive fair use even if that conduct causes some degree of consumer confusion as to source.

We then turn in Part III.A.2 to the basic three-step test that most courts apply to evaluate a claim of descriptive fair use.

Descriptive Fair Use and Consumer Confusion

In KP Permanent, the declaratory plaintiff KP Permanent Make-Up, Inc. used the term "microcolor" in advertisements for its "permanent makeup" (shown below on the right). The defendant had previously registered the trademark MICRO COLORS at the PTO (on the left). In the excerpt that follows, the Supreme Court finally overruled the Ninth Circuit's bizarre doctrine that any likelihood of consumer confusion defeats a defense of descriptive fair use.

[4] Starting from these textual fixed points, it takes a long stretch to claim that a defense of fair use entails any burden to negate confusion. It is just not plausible that Congress would have used the descriptive phrase "likely to cause confusion, or to cause mistake, or to deceive" in § 1114 to describe the requirement that a markholder show likelihood of consumer confusion, but would have relied on the phrase "used fairly" in § 1115(b)(4) in a fit of terse drafting meant to place a defendant under a burden to negate confusion. "'[W]here Congress includes particular language in one section of a statute but omits it in another section of the same Act, it is generally presumed that Congress acts intentionally and purposely in the disparate inclusion or exclusion.'" Russello v. United States, 464 U.S. 16, 23 (1983) (quoting United States v. Wong Kim Bo, 472 F.2d 720, 722 (C.A.5 1972); alteration in original). 4[5] Nor do we find much force in Lasting's suggestion that "used fairly" in § 1115(b)(4) is an oblique incorporation of a likelihood-of-confusion test developed in the common law of unfair competition. Lasting is certainly correct that some unfair competition cases would stress that use of a term by another in conducting its trade went too far in sowing confusion, and would either enjoin the use or order the defendant to include a disclaimer. See, e.g., Baglin v. Cusenier Co., 221 U.S. 580, 602 (1911) ("[W]e are unable to escape the conclusion that such use, in the manner shown, was to serve the purpose of simulation . . ."); Herring-Hall-Marvin Safe Co. v. Hall's Safe Co., 208 U.S. 554, 559 (1908) ("[T]he rights of the two parties have been reconciled by allowing the use, provided that an explanation is attached"). But the common law of unfair competition also tolerated some degree of confusion from a descriptive use of words contained in another person's trademark. See, e.g., William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 528 (1924) (as to plaintiff's trademark claim, "[t]he use of a similar name by another to truthfully describe his own product does not constitute a legal or moral wrong, even if its effect be to cause the public to mistake the origin or ownership of the product"); Canal Co. v. Clark, 13 Wall. 311, 327, 20 L.Ed. 581 (1872) ("Purchasers may be mistaken, but they are not deceived by false representations, and equity will not enjoin against telling the truth"); see also 3 L. Altman, Callmann on Unfair Competition, Trademarks and Monopolies § 18:2, pp. 18-8 to 18-9, n. 1 (4th ed. 2004) (citing cases). While these cases are consistent with taking account of the likelihood of consumer confusion as one consideration in deciding whether a use is fair, see Part II-B, infra, they do not stand for the proposition that an assessment of confusion alone may be dispositive. Certainly one cannot get out of them any defense burden to negate it entirely.

[8] While we thus recognize that mere risk of confusion will not rule out fair use, we think it would be improvident to go further in this case, for deciding anything more would take us beyond the Ninth Circuit's consideration of the subject. It suffices to realize that our holding that fair use can occur along with some degree of confusion does not foreclose the relevance of the extent of any likely consumer confusion in assessing whether a defendant's use is objectively fair. Two Courts of Appeals have found it relevant to consider such scope, and commentators and amici here have urged us to say that the degree of likely consumer confusion bears not only on the fairness of using a term, but even on the further question whether an originally descriptive term has become so identified as a mark that a defendant's use of it cannot realistically be called descriptive. [9] Since we do not rule out the pertinence of the degree of consumer confusion under the fair use defense, we likewise do not pass upon the position of the United States, as amicus, that the "used fairly" requirement in § 1115(b)(4) demands only that the descriptive term describe the goods accurately. Tr. of Oral Arg. 17. Accuracy of course has to be a consideration in assessing fair use, but the proceedings in this case so far raise no occasion to evaluate some other concerns that courts might pick as relevant, quite apart from attention to confusion. The Restatement raises possibilities like commercial justification and the strength of the plaintiff's mark. Restatement § 28. As to them, it is enough to say here that the door is not closed. III [10] In sum, a plaintiff claiming infringement of an incontestable mark must show likelihood of consumer confusion as part of the prima facie case, 15 U.S.C. § 1115(b), while the defendant has no independent burden to negate the likelihood of any confusion in raising the affirmative defense that a term is used descriptively, not as a mark, fairly, and in good faith, § 1115(b)(4).

[11] Because we read the Court of Appeals as requiring KP to shoulder a burden on the issue of confusion, we vacate the judgment and remand the case for further proceedings consistent with this opinion. 6

The Three-Step Test for Descriptive Fair Use

In your view, was summary judgment appropriate in both of the following cases? Solid 21, Inc. v. Breitling U.S.A., Inc. 96 F.4th 265 (2d Cir. 2024) Wesley, Circuit Judge: [1] This is a trademark case about wristwatches and "red gold." Defendant-Appellee Breitling, a luxury watch manufacturer, uses the term "red gold" in its advertisements, product listings, and catalogues. Plaintiff-Appellant Solid 21, a luxury jewelry and watch business, has owned a trademark in RED GOLD® since 2003, using it since 1989. The question in this case is whether Breitling's use of the term "red gold" constitutes fair usegood faith use of a trademark to describe a Breitling product. We hold that Breitling established its fair use defense as a matter of law. BACKGROUND [2] Gold wristwatches come in different colors, usually occurring when manufacturers combine pure gold with other metals like and silver, changing their overall appearance. Left untouched, pure gold is yellow. With the addition of silver, gold takes on a whiter tone; copper creates a reddish or pinkish color.

[3] Beginning as early as the mid-nineteenth century, trade dictionaries, jewelry makers, and newspapers referred to these combinations with terms like "yellow gold," "white gold," "red gold," "blue gold," and "pink gold." Throughout the twentieth century, many newspapers, advertisements, magazines, textbooks, and other reference materials used the term "red gold" to describe the gold-copper combination. Though the term "rose gold" is commonly used today, references to "red gold" continue; from 2001 to 2017, the Wristwatch Annual included more than 1,300 references to "red gold" by fifty-three different watchmakers.

[4] Appellant Solid 21 is a luxury watch and jewelry business founded by Chris Aire, a high-profile jeweler; his roster of celebrity clients call him "Iceman" and the "King of Bling." In 2002, Aire filed a trademark application for "RED GOLD®" with the United States Patent and Trademark Office ("USPTO") for "[f]ine jewelry made of a special alloying of gold with a distinct color made into fine jewelry." It was registered as a trademark in 2003. Today, RED GOLD® is a collection of jewelry under the Solid 21 name-a "brand" which includes some products made of what Solid 21 describes as "amber hue gold," and is meant to "appeal in particular to male clients." Solid 21 proclaims that its RED GOLD® mark is "pure genius." that Lasting made those concessions only as to KP's use of "microcolor" on bottles and flyers in the early 1990's, not as to the stylized version of "microcolor" that appeared in KP's 1999 brochure. See Opposition to Motion for Summary Judgment/Adjudication in Case No. SA CV 00-276-GLT (EEx) (CD Cal.), pp. 18-19; Appellants' Opening Brief in No. 01-56055(CA9), pp. 31-32. We also note that the fair use analysis of KP's employment of the stylized version of "microcolor" on its brochure may differ from that of its use of the term on the bottles and flyers. and social media posts:

[9] In Breitling's print advertisement above, the words "[available in stainless steel or 18k red gold" appear in lowercase and in small font at the bottom right of the advertisement, directly under an enlarged picture of the reddish and pinkish watch. In one of the product listings on Breitling's website, the words "18k Red Gold -Silver" appear in smaller font directly under the model name of the watch, "NAVITIMER AUTOMATIC 41." Other website listings display the words "Stainless Steel & 18k Red Gold" under the bolded, larger model name "NAVITIMER B01 CHRONOGRAPH 46." Breitling's social media posts use the term as well; "red[ ]gold" appears in hashtags after other words like "breitling," "navitimer," "automatic," "diamonds," and "steel," and directly next to a picture of a watch with a reddish/pinkish hue.

[10] Solid 21 and Aire accused Breitling of stealing their business by using the term "red gold" to confuse customers over the source of Breitling's products. In 2010 and 2011, Solid 21 originally filed trademark infringement suits against Breitling and several other watch companies in the Central District of California. Pursuant to a tolling agreement, Solid 21 refiled this suit against Breitling in 2019 in the District of Connecticut, asserting claims for trademark infringement under the Lanham Act, along with related claims under state law. Solid 21's complaint alleged that Breitling's use of the term "red gold" was "likely to cause confusion, reverse confusion, mistake, and/or deception as to the source" of Breitling's watches, and that consumers would mistakenly believe that Solid 21 was affiliated with Breitling's products.

[11] Breitling moved for summary judgment on the grounds that the term "red gold" was generic and the trademark registration was invalid, or alternatively, that Breitling's use of the term fell under the Lanham Act's "fair use" defense, which permits the use of a protected mark to describe one's goods so long as the use is in good faith and not as a mark. See 15 U.S.C. § 1115(b)(4). After first denying Breitling's motion for summary judgment, the district court granted Breitling's reconsideration motion and entered judgment for Breitling on the fair use defense. 7[12] Though the district court found in its initial decision that Breitling did not carry its burden of showing descriptive use because Breitling could have used alternative terms like "rose gold" in lieu of "red gold,"foot_36 on reconsideration, the court reexamined our precedents and determined that the mere existence of alternative terms did not preclude summary judgment, and that the images of Breitling's product materials made clear that it was using the term "red gold" descriptively. 9 The court also determined that Breitling satisfied the good faith element of its fair use defense. The district court cited our Circuit's law that "knowledge alone is insufficient for a finding of bad faith," and found that, even if Breitling knew about Solid 21's prior use of the mark, there was "no other evidence of bad faith." The district court granted summary judgment for Breitling, and this appeal followed. We affirm.

[13] { } "Fair use is a defense to liability under the Lanham Act even if a defendant's conduct would otherwise constitute infringement of another's trademark." Cosmetically Sealed Indus., Inc. v. Chesebrough-Pond's USA Co., 125 F.3d 28, 30 (2d Cir. 1997). This defense permits "use . . . otherwise than as a mark . . . of a term . . . which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin." 15 U.S.C. § 1115(b)(4). The underlying principle of fair use is that it "protects the right of society at large to use words or images in their primary descriptive sense, as against the claims of a trademark owner to exclusivity." Car-Freshner Corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267, 269 (2d Cir. 1995). "In order to assert a successful fair use defense to a trademark infringement claim, the defendant must prove three elements: that the use was made (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith." Kelly-Brown v. Winfrey, 717 F.3d 295, 308 (2d Cir. 2013).

[14] We review a grant of summary judgment de novo and affirm only if there are no genuine issues of material fact and the moving party establishes its right to judgment as a advertising materials leave no dispute that Breitling uses "red gold" to describe its watches' materials and appearance, not as an indication of source.

[19] We conclude for the same reasons that Breitling does not use the term "red gold" as a mark. We equate "use as a mark" with the use of a term "as a symbol to attract public attention," or "to identify and distinguish . . . goods [or services] . . . and to indicate [their] source." Tiffany, 971 F.3d at 92 (quoting 15 U.S.C. § 1127). Breitling uses the term "red gold" in smaller print, near other descriptive terms, and near its own Breitling trademark. There is no indication that Breitling uses the term on products themselves. Even in rare instances where Breitling capitalizes "Red Gold" in its social media posts, it also capitalizes the descriptor "Steel." Its "#redgold" tag is likewise buried in a long list of other terms, most of which are descriptive. Though Breitling uses "red gold" in multiple instances, it does so only as often as referring to its watches with red/pink hues. Cf. Kelly-Brown, 717 F.3d at 308-10 (holding that, at the motion-to-dismiss stage, plaintiffs sufficiently alleged that "defendants were trying to create, through repetition across various forms of media, a[n] association between [defendants] and the [trademarked] phrase" where "use was far more . . . varied" involving "wide-ranging content").

[20] Solid 21 argues that Breitling's use is not descriptive because Breitling could have used alternative terms to describe its watches. In Solid 21's telling, "rose gold" is a superior description because it is "a term that is commonly understood and in popular usage among consumers." Appellant's Br. at 39-40. Citing our decision in EMI Catalogue, Solid 21 argues that the availability of alternative and superior terms forecloses summary judgment for Breitling.

[21] In EMI Catalogue, a music publisher sued a defendant golf club manufacturer for infringing its trademark in the classic Benny Goodman jazz song, "Sing, Sing, Sing (With a Swing)." 228 F.3d at 59. The defendant ran a television advertisement for a line of golf clubs featuring swing-style stock music along with the words "Swing Swing Swing." Id. at 59-60. Noting that the defendant could have used other terms like "hit," "stroke," "shot," or even the single word "swing" instead of the alliterative "Swing Swing Swing," our Court concluded that summary judgment for the defendant was inappropriate on its fair use defense. Id. at 65-66. sufficed, EMI Catalogue might be decisive. The availability of an alternative does not necessarily neutralize the descriptive meaning "red gold" already engenders.

[24] Our conclusion that Breitling used the term "red gold" descriptively is undisturbed by evidence that Breitling once used "rose gold" and "red gold" to describe the same watch. This is not evidence that Breitling's use of either was anything but descriptive. While it undercuts a suggestion that Breitling used the term "red gold" only to describe a watch darker in color (containing more copper) than one in "rose gold," the exact chemical composition and degree of reddish tint in Breitling's watches is not material. "The test of descriptiveness is the meaning attached to the designation by prospective purchasers rather than the scientific meaning" given by chemists and metallurgists. Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 699 (2d Cir. 1961). Unlike the word "gold"-which describes the watch's precious metal-the word "red" describes to consumers only the watch's general color, rather than an exact mixture of copper/gold. Because "red gold" describes Breitling's watches "in a broad sense," accurately "identify[ing] some information" about appearance, it is descriptive. Tiffany, 971 F.3d at 93. 12[25] The availability of alternative terms does not preclude summary judgment here. Concluding otherwise would undermine fair use principles, which recognize the "undesirability of allowing anyone to obtain a complete monopoly on use of a descriptive term simply by grabbing it first." KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122 (2004). Solid 21 trademarked the name of a color-red-coupled with the name of a metal: gold. It cannot now "deprive commercial speakers," like Breitling, "of the ordinary utility of descriptive words" by requiring the use of synonyms or alternatives. Id. To the extent this may lead to some consumer confusion, that "is a risk [Solid 21] accepted" when it chose to trademark a descriptive term. Id.

[26] The final element of fair use is a showing that the defendant used the mark in good faith. See Kelly-Brown, 717 F.3d at 312. The good faith requirement is not litigated frequently. EMI Catalogue, 228 F.3d at 66. We equate it with "the subsequent user's intent to trade on the good will of the trademark holder by creating confusion as to source or sponsorship." Kelly-Brown, 717 F.3d at 312. "Any evidence that is probative of intent to trade on the protected mark would be relevant to the good faith inquiry," EMI Catalogue, 228 F.3d at 66, including whether the defendant used a term "reflect[ing] the product's characteristics," Sports Auth., 89 F.3d at 964, and whether the "source of the defendants' product is clearly identified by the prominent display of the defendants' own trademarks," Cosmetically Sealed, 125 F.3d at 30.

[32] Further, the availability of alternative terms, in this case, does not create a triable issue with respect to good faith. In EMI Catalogue, we noted that "[t]he availability of other descriptive terms and a decision not to use one of those terms is also evidence suggesting bad faith." 228 F.3d at 67. We did not, however, say that the availability of alternatives necessarily precludes summary judgment. More importantly, the term "red gold"-unlike "Swing Swing Swing"-is inherently descriptive, and evidence that Breitling used one inherently descriptive term over another is not evidence that Breitling intended to trade on Solid 21's name.

[33] Solid 21's evidence falls short of the kind we previously found to have created triable issues in fair use defenses. In EMI Catalogue, there was evidence that the defendant first "contemplated paying for the right" to license the plaintiff's song, determined the cost of doing so was too high, and then asked its sound studio to find a similar song instead. See id. In Tiffany, the plaintiff (Tiffany) submitted as evidence an internal email from an employee of the defendant (Costco) "indicating that Costco's jewelry boxes should have a more 'Tiffany or upscale look,'" testimony that a Costco employee ignored emails indicating customer and employee confusion over the source of its jewelry, and evidence that Costco shared links to Tiffany's website in communications with vendors. See 971 F.3d at 88; see also Inst. for Sci. Info., Inc. v. Gordon & Breach, Sci. Publishers, Inc., 931 F.2d 1002, 1009 (3d Cir. 1991) (defendant breached agreement with plaintiff not to use plaintiff's mark). There is no similar evidence here that Breitling intended to mislead its customers as to the source of its products or reap the benefits of any goodwill Solid 21 purportedly created surrounding the term "red gold." 13 [34] Lastly, Solid 21 cites as evidence that Breitling did not begin using the term "red gold" until 2010-over two decades after Aire first used it. Even viewed in a light most favorable to Solid 21, this evidence does not show that Breitling intended to confuse its customers as to source or sponsorship. Solid 21 submitted no evidence that Breitling was actually aware of Solid 21's trademark. In any event, constructive or actual knowledge "has no tendency to show bad faith" where Breitling was "fully entitled to use"-and did use-"red gold" descriptively. Car-Freshner, 70 F.3d at 270. There is no genuine issue of fact as to Breitling's good faith; it has met its burden on each of the elements of fair use.

[35] Finally, a few words regarding our colleague's dissenting view. The dissent states that our analysis "effectively eliminates the good-faith prong," such that if "a defendant's use is descriptive . . . it is also in good faith." Dissent at 282. Not so. As demonstrated above, a defendant's descriptive use does not end the fair use inquiry. See supra at 278-81. We simply 13 There is evidence to the contrary. In the handful of instances when consumers asked Breitling about the meaning of "red gold," Breitling did not indicate Solid 21 as a source or sponsor. Rather, Breitling described "red gold" as an attribute. See JA at 4720 (Q: "Whats [sic] the difference between rose gold and red gold" A: "They are both a rose gold color") (emphasis added)).

recognize that the defendant's burden to establish both descriptiveness and good faith does not come with an additional requirement to categorize evidence as exclusively relevant to one or the other. See supra at 279. That there was also no genuine issue of fact as to Breitling's good faith in this case does not foreclose a genuine issue of fact as to a defendant's good faith in other cases. Despite the dissent's concern, summary judgment is always a matter of the record.

[36] We have examined Solid 21's remaining arguments and conclude that they are without merit. We AFFIRM the judgment of the district court.

Park, Circuit Judge, dissenting: [1] We don't know why Breitling began using the disputed "red gold" mark in 2010. But the majority still concludes that Breitling proved good-faith fair use, and to get there, it resolves factual disputes about Breitling's mental state at summary judgment. I respectfully dissent because those are issues for a jury to decide.

[2] A trademark defendant raising a fair-use defense has the burden to show that it did not act in bad faith-i.e., that it lacked "the intent to sow confusion between the two companies' products." Tiffany & Co. v. Costco Wholesale Corp., 971 F.3d 74, 88 (2d Cir. 2020). This turns on a fact-intensive, totality-of-the-circumstances judgment; the jury must consider "[a]ny evidence that is probative of intent to trade on the protected mark." EMI Catalogue P'ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 66 (2d Cir. 2000) (emphasis added). So "we have consistently observed" that the good-faith element is "singularly inappropriate for . . . summary judgment." Tiffany & Co., 971 F.3d at 88. The majority sees this as a case in which "there can be but one reasonable conclusion as to the verdict." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986). I disagree.

[3] The main question on good faith is why Breitling decided to start using "red gold" instead of "rose gold" to sell some of its watches, which otherwise remained the same. This apparently occurred in 2010, well after Solid 21 trademarked the term. And "where the allegedly infringing mark is identical to the registered mark, and its use began subsequent to the plaintiff's trade-mark registration, the defendant must carry the burden of explanation." Tiffany & Co., 971 F.3d at 88. Neither Breitling nor the majority has even attempted to provide a plausible explanation for the sudden change. 1[4] Against the backdrop of this unanswered question, Breitling admits that it began its "red gold" marketing without conducting a trademark search. To be sure, this failure was not per se bad faith. But in general, and particularly when there is uncertainty, a trademark search is consistent with good faith, and the lack of it is consistent with bad faith. See Sports Auth., Inc. v. Prime Hosp. Corp., 89 F.3d 955, 964 (2d Cir. 1996) (reversing a grant of summary judgment to a defendant who "neither consulted with an attorney nor conducted a trademark search").foot_41 [5] There are more reasons why a jury might not give Breitling the benefit of the doubt. It could find that Breitling had actual or constructive knowledge of Solid 21's "red gold" mark, which was repeatedly covered in trade and popular publications before Breitling's use. Again, everything is relevant, and nothing is dispositive. See, e.g., Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 398 (2d Cir. 1995) ("Prior knowledge of a senior user's trade mark does not necessarily give rise to an inference of bad faith." (emphasis added)). A reasonable jury could find that Breitling knew about the "red gold" mark and used it anyway, which would undercut its claim of good faith. See Kelly-Brown v. Winfrey, 717 F.3d 295, 313 (2d Cir. 2013) (collecting cases).

[6] Finally, there is evidence that Breitling's prior use of "rose gold" was not just an adequate substitute for "red gold," but a superior one. For example, Solid 21 presented an affidavit from a former senior executive at competitor watchmakers stating that "red gold" is not a term used by luxury-watch consumers, as well as survey evidence that consumers do not consider "red gold" a potential watch material. "The availability of other descriptive terms and a decision not to use one of those terms is . . . evidence of bad faith." EMI, 228 F.3d at 67. This is especially true when the alternative is both known to the defendant and a better descriptor.

[7] In short, the record shows that Breitling (1) relatively recently began using the "red gold" mark, (2) without conducting a trademark search, (3) possibly knowing of Solid 21's use, (4) despite previously using a substitute, "rose gold." In response, Breitling offers no explanation for the change whatsoever. To my mind, a reasonable jury could find bad faith based on those facts.

[8] The majority reasons that Breitling acted in good faith because its use was descriptive. See Maj. Op. at 279. But this sequencing effectively eliminates the good-faith prong. Under the majority's reading, either (1) the defendant's use is descriptive, in which case it is also in good faith, or (2) the defendant's use is not descriptive, in which case it cannot show fair use and its good faith doesn't matter. This approach minimizes good faith as an independent element of a fair-use defense. See, e.g., Tiffany & Co., 971 F.3d at 92.

[9] In any case, the descriptiveness question also should go to the jury. First, we "more readily find a phrase descriptive when it is in common usage," Kelly-Brown, 717 F.3d at 311, and Solid 21's evidence tends to show that "red gold" lacks a meaning to consumers. For example, its witness opined that "'Red Gold' is not a metal, but a marketing tool" associated uniquely with Solid 21 and not otherwise used in the industry. Second, the availability of "other terms . . . to describe the pertinent characteristic" counsels against finding a use descriptive. EMI, 228 F.3d at 65. As discussed above, Breitling in fact used the common term "rose gold" to describe its watches (rather than Solid 21's "red gold" mark) up until its unexplained change in 2010.

[10] The fair-use analysis in this case is not obvious. The parties briefed it exhaustively. The district court itself was of two minds-it initially denied summary judgment, then granted it on reconsideration. A different district court in this circuit recently denied summary judgment on fair use in a related case. And now we do not agree either. We have counseled district courts to use summary judgment with restraint in cases involving questions of good faith. See Tiffany & Co., 971 F.3d at 88. We should follow our own advice. I respectfully dissent. ______________________________________________________________________________ SportFuel, Inc. v. Pepsico, Inc. 932 F.3d 589 Cir. 2019) Kanne, Circuit Judge.

[1] SportFuel appeals the district court's grant of summary judgment for Gatorade and its parent company, PepsiCo. SportFuel brought this suit against Gatorade alleging violations of its trademark after Gatorade rebranded itself with the slogan, "Gatorade The Sports Fuel Company." The district court deemed Gatorade's slogan a fair use protected by the Lanham Act. We affirm. BACKGROUND [2] SportFuel is a Chicago-based sports nutrition and wellness consulting firm whose clients include several of Chicago's prominent professional sports teams and their athletes. The company provides personalized nutrition consulting services to professional and amateur athletes, but also sells SportFuel-branded dietary supplements. SportFuel holds two registered trademarks for "SportFuel." It registered the first for "food nutrition consultation, nutrition counseling, and providing information about dietary supplements and nutrition." After several years of use, SportFuel's trademark became "incontestable" in 2013 under 15 U.S.C. § 1065. SportFuel also registered a trademark in 2015 for "goods and services related to dietary supplements and sports drinks enhanced with vitamins." [3] Gatorade was created in 1965 at the University of Florida College of Medicine and public sales began several years later. Undoubtedly, Gatorade is more widely known. It is the official sports drink of the NBA, PGA, MLB, MLS, and many other professional and collegiate organizations. Whether by television imagery of victorious athletes drenching their coaches or teammates with a Gatorade shower from a distinctive cooler, or through aggressive national media marketing campaigns, Gatorade became a household name.

[4] In addition to its traditional sports drinks, Gatorade now customizes its sports drink line by selling formulas that are tailored to the nutritional needs of individual professional athletes. The company also sells numerous other sports nutrition products beyond sports drinks. It began to publicly describe its products as sports fuels in 2013. Seeking to broaden its public image to reflect its expanded variety of products, Gatorade began a rebranding effort. In 2016 it registered the trademark "Gatorade The Sports Fuel Company" with the United States Patent and Trademark Office ("PTO"). Notably, Gatorade disclaimed the exclusive use of "The Sports Fuel Company" after the PTO advised the company that the phrase was merely descriptive of its products. . . . . [6] On June 14, 2018, the district court granted Gatorade's motion for summary judgment after finding that SportFuel failed to produce evidence that demonstrated a factual dispute on any of the three elements of Gatorade's fair use defense. The court also determined that because it found that Gatorade successfully raised the Act's fair use defense, it need not conduct a risk of confusion analysis for SportFuel's claims. Similarly, because the court determined that SportFuel's claims under Illinois law were subject to the same analysis as its federal claims, it did not separately consider those claims. SportFuel appeals.

. . . . [8] SportFuel claims that the district court erred in finding that Gatorade did not use the term "Sports Fuel" as a trademark. SportFuel supports its argument with three factors: Gatorade uses the slogan as an "attention getting symbol," it placed a trademark indication after the slogan, and it sought to trademark the slogan. . . . .

[9] As here, Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 953 (7th Cir. 1992), involved a suit over Gatorade's use of a slogan in an advertising campaign. 978 F.2d at 953-trademark use. And as the district court pointed out, Gatorade's chief marketing officer stated in his deposition that he viewed the whole phrase-including the protected house mark-as a trademark.

[14] Thus, even construing the record in SportFuel's favor on summary judgment, insufficient evidence supports SportFuel's claim. Accordingly, we do not believe the district court erred in determining that Gatorade never employed the term "Sports Fuel" as a trademark in its "Gatorade The Sports Fuel Company" slogan.

B. Gatorade Used "Sports Fuel" Descriptively. [15] The district court also found that Gatorade used "Sports Fuel" descriptively, rather than suggestively, and therefore not as a trademark. SportFuel maintains that the district court erred in this determination. We review the district court's classification de novo. Quaker Oats, 978 F.2d at 952.

[16] Suggestive marks . . . do not "directly and immediately describe an aspect of the goods," rather they "require[ ] an observer or listener to use imagination and perception to determine the nature of the goods." Uncommon, LLC v. Spigen, Inc., 926 F.3d 409, 421 (7th Cir. 2019) (quotations omitted). However, just because a phrase is unfamiliar and "requires a hearer to think about its meaning" does not necessarily mean it is suggestive. Quaker Oats, 978 F.2d at 953. Courts look to a variety of factors to distinguish between descriptive and suggestive terminology, but we find two factors particularly helpful in this instance. 2 "First, we can look to how, and how often, the relevant market uses the word [or phrase] in question." Uncommon, 926 F.3d at 421. Second, we employ the "imagination test," where we ask whether the word or phrase imparts information about the product or service directly or rather requires "some operation of the imagination to connect it with the goods." Id. at 422 (quoting Platinum Home Mortg., 149 F.3d at 727). Both factors lead us to characterize the slogan here as descriptive.

[17] First, producers of nutritional products for athletes regularly invoke the "Sports Fuel" terminology to describe the products they sell. Gatorade provided numerous examples of this widespread industry use to the district court, including, for example, Twin Laboratories' "SPORT FUEL" and Trident Sports' "SPORTS FUEL." Similarly, the PTO recognized this point when it processed Gatorade's trademark application stating, "[a]s SPORTS FUEL is commonly used in reference to sports nutrition, consumers encountering the wording THE SPORTS FUEL COMPANY in the proposed mark would readily understand it to mean that the goods are provided by a company that provides sports nutrition." This widespread industry use, coupled with Gatorade's disclaimer of exclusive use of "The Sports Fuel Company," supports Gatorade's argument it used "Sports Fuel" descriptively.

[18] Second, SportFuel argues that Gatorade's use of "Sports Fuel" is suggestive-and not descriptive-of Gatorade's products because the term requires a mental leap to deduce that the company is really selling athletic nutrition products. To support this notion, SportFuel also points out that Gatorade's consumers, by and large, are not high-performance athletes. We find these arguments unpersuasive. The use of "Sports Fuel" in "Gatorade The Sports Fuel Company" clearly describes the category of goods that Gatorade produces. It requires no imaginative leap to understand that a company selling "Sports Fuel" is selling a variety of food products designed for athletes. That non-athletes regularly consume Gatorade's products has no bearing whether the term is descriptive. Just as the pervasive use of yoga pants and other activewear as casual clothing does not change the athletic characteristics of those products, the fact that Gatorade sells more sports drinks to average joes who limit their rigorous exercise to lawn mowing does not change the athletic characteristics of Gatorade's products.

[19] We conclude that Gatorade's slogan uses "Sports Fuel" in a descriptive sense.

C. Gatorade Uses "Sports Fuel" Fairly and in Good Faith.

[20] A party raising a fair use defense "must show that it used the plaintiff's mark fairly and in good faith." Sorensen, 792 F.3d at 725. Courts determine defendants' good faith by looking to their subjective purpose in using a slogan. Packman, 267 F.3d at 642. As an initial matter, we note that although the district court's analysis implicitly confirmed that Gatorade used "Sport Fuel" in good faith, it never stated its conclusion explicitly. Nonetheless, as we explain, we believe Gatorade produced sufficient evidence to show that it descriptively used the term "Sports Fuel" in its slogan fairly and in good faith. SportFuel insisted during summary judgment that the evidence, construed in its favor, demonstrated that Gatorade acted unfairly and in bad faith by using its slogan. But the district court rejected SportFuel's argument and explained why SportFuel failed to show that Gatorade acted in bad faith.

[21] On appeal, SportFuel challenges the district court's conclusion for three reasons. First, SportFuel claims that evidence produced during discovery justified inferring bad faith on Gatorade's part. Second, the district court purportedly erred in concluding that Gatorade used "Sports Fuel" fairly given the risk that reverse confusion posed to SportFuel. Third, Gatorade uses "Sports Fuel" in a trademark manner, beyond describing its goods or services.

SportFuel Provides Insufficient Evidence of Gatorade's Bad Faith.

[22] SportFuel alleges that the district court erred because it never properly considered evidence of Gatorade's bad faith. It provides four main examples to support this argument. First, it argues that Gatorade was aware of SportFuel's mark by virtue of Gatorade's previous working relationship with Julie Burns. Second, it suggests that Gatorade's continued use of "Sports Fuel" after SportFuel filed suit betrays its bad faith. Third, SportFuel points to a dearth of evidence concerning Gatorade's adoption of its new slogan. Fourth, SportFuel alludes to a falling out between Gatorade and Burns, suggesting that Gatorade adopted the new slogan to settle an old score.

[23] SportFuel alleges that Gatorade's bad faith is demonstrated by the fact that it began to use "Sports Fuel" even though it knew of SportFuel's mark. But the defendant's "mere knowledge" of the plaintiff's mark, without other evidence of subjective bad faith, is insufficient. Sorensen, 792 F.3d at 725. Accordingly, "[t]o survive summary judgment, a plaintiff must point to something more that suggests subjective bad faith." Id. Therefore, without other, substantial evidence, this factor provides no support for the claim that Gatorade used "Sports Fuel" in bad faith.

[24] SportFuel also points to Gatorade's continued use of "Sports Fuel," even after SportFuel filed this suit. But "it is lawful to use a mark that does not infringe some other; intentional infringement creates problems, but [a defendant's] intentional use of a mark that [it] had every right to use is not itself a ground on which to draw an adverse inference." M-F-G Corp. v. EMRA Corp., 817 F.2d 410, 412 (7th Cir. 1987). Gatorade believed it had every right to use "Sports Fuel" in a descriptive sense, so its continued use after SportFuel filed suit also fails to justify an inference of bad faith.

[25] Third, SportFuel suggests that Gatorade failed to produce evidence in discovery that must have existed. Specifically, Gatorade's production included no documentation related to its approval of the slogan "Gatorade The Sports Fuel Company." SportFuel argues that a company as large as Gatorade certainly required high-level approval before adopting a nation-wide rebranding campaign. And presumably Gatorade would possess documentation of that approval. Yet, "[s]peculation will not suffice" to defeat summary judgment. Borcky v. Maytag Corp., 248 F.3d 691, 695 (7th Cir. 2001); Amadio v. Ford Motor Co., 238 F.3d 919, 927 (7th Cir. 2001) ("It is well-settled that speculation may not be used to manufacture a genuine issue of fact."); Gorbitz v. Corvilla, Inc., 196 F.3d 879, 882 (7th Cir. 1999). SportFuel's argument relies on the assumption that something must have existed. But the time to pursue this idea was during discovery. SportFuel did not, and it cannot now avoid summary judgment with assumption or speculation. The record neither provides evidence to support the claim that Gatorade adopted the slogan in bad faith, nor indicates that Gatorade purposefully failed to produce such evidence.

[26] Fourth, SportFuel suggests that Gatorade's adoption of the slogan relates to a falling out between Burns and Gatorade. The problem with this claim-much like the last argument-is that SportFuel provides no relevant evidence as support. It relies on Burns's deposition testimony, where she stated that her relationship with Gatorade ended after she refused to endorse one of Gatorade's new sugary sports bar products. However, Burns's relationship with Gatorade ended more than a decade before the alleged infringement began. And the idea that a new slogan for a nation-wide rebranding campaign and stale antipathy towards Burns are connected is facially incredible when otherwise unsupported by the record. [27] We accordingly find none of these factors significant enough-individually or in the aggregate-to create an inference of Gatorade's bad faith.

The Risk of Reverse Confusion Does Not Demonstrate Gatorade's Bad Faith.

[28] Second, SportFuel claims that the district court conducted an insufficient analysis of Gatorade's intent in using "Sports Fuel" because its alleged infringement creates reverse confusion. . . . In this case, the alleged reverse confusion would occur when Gatorade used its house mark alongside the term "Sports Fuel," which would effectively coopt SportFuel's trademark and confuse consumers by leading them to believe the companies were related. USPS licensed ISA among others to create merchandise incorporating USPS's images. "Stamp images were transmitted to licensees in the form of transparencies, each marked as copyright protected and depicting the entire stamp including any perforated edges." Id. at 1272. USPS eventually began to produce its own line of stamp art cards, some of which incorporated the flat-edged perforated border design. ISA sued for trademark infringement. USPS claimed descriptive fair use.

Affirming the district court's grant of summary judgment, the Eleventh Circuit found descriptive fair use. The court devoted the bulk of its analysis to the third step, whether USPS's use was in good faith, i.e., "whether the alleged infringer intended to trade on the good will of the trademark owner by creating confusion as to the source of the goods or services." Id. at 1275. The court noted that "the overwhelming majority of stamps the Postal Service produces include perforated edges and have long done so," id.; that USPS "prominently places its own familiar Eagle trademark on the backs of its stamp art products thereby identifying them as Postal Service products," id.; and that "ISA has not identified any evidence that the Postal Service sought to mislead or confuse consumers into thinking that the source of the cards it produced was actually International Stamp Art," id.

§ 1115(b)(4) . . . . [A]lthough we accept some flexibility in what counts as descriptive, we reiterate that the scope of the fair use defense varies with the level of descriptive purity. Thus, as a defendant's use of a term becomes less and less purely descriptive, its chances of prevailing on the fair use defense become less and less likely.

Id. at 1041-42. The court also noted Victoria's Secret's lack of "precautionary measures" to dispel confusion and the "abundance of alternative words" that it could have used. Id. at 1042. On good faith, the court found that Victoria's Secret's failure to investigate whether anyone held a "delicious" trademark, combined with other evidence, suggested that a jury could reasonably find no good faith.

B. Nominative Fair Use 1. The Three-Step Test for Nominative Fair Use

In New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302 (9th Cir. 1992), the Ninth Circuit first developed the concept of nominative fair use. The defendants, two newspapers, conducted separate polls asking readers to call a 900 number to vote for their favorite member of the boy band New Kids on the Block. As The Star politely put it: "Which of the New Kids on the Block would you most like to move next door?" Id. at 305. The band sued for, among other things, trademark infringement. Affirming the district court's grant of summary judgment to the defendants, Judge Kozinski held that a "nominative use of a mark-where the only word reasonably available to describe a particular thing is pressed into service-lies outside the strictures of trademark law," id. at 308 (emphasis in original), and set out three "requirements" that a defendant's use must meet to qualify as nominative fair use: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; 7 and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

Id. at 307. The Lanham Act did not at the time explicitly include any basis for nominative fair use and even now it arguably only references nominative fair use in connection with dilution, see § 43(c)(3)(A), 15 U.S.C. § 1125(c)(3)(A). On the issue of confusion, nominative fair use remains essentially judge-made law.

Note the conceptual distinction between descriptive (or "classic") fair use and nominative fair use:

The nominative fair use analysis is appropriate where a defendant has used the plaintiff's mark to describe the plaintiff's product, even if the defendant's 7 Thus, a soft drink competitor would be entitled to compare its product to Coca-Cola or Coke, but would not be entitled to use Coca-Cola's distinctive lettering. See Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350, 352 (9th Cir. 1969) ("{In advertising that he specialized in Volkswagen repair,} Church did not use Volkswagen's distinctive lettering style or color scheme, nor did he display the encircled 'VW' emblem" {and was therefore not infringing}). . . . ultimate goal is to describe his own product. Conversely, the classic fair use analysis is appropriate where a defendant has used the plaintiff's mark only to describe his own product, and not at all to describe the plaintiff's product. Co., 292 F.3d 1139, 1151(9th Cir. 2002).

In the opinion below, Judge Kozinski returned to the concept of nominative fair use, this time in connection with domain names-and in light of KP Permanent. In reading through the opinion, consider the following questions:

• Why should the New Kids factors replace the Sleekcraft multifactor test for the likelihood of consumer confusion? Why shouldn't a court first work through the Sleekcraft test to determine if plaintiff has even made out its case and, if it has, then turn to the question of nominative fair use?

• What sense do you make of the final excerpted paragraphs of Judge Kozinski's opinion? How exactly should a Ninth Circuit court now proceed to evaluate a nominative fair use "defense"?

Toyota Motor Sales, U.S.A., Inc. v. Tabari 610 F.3d 1171 (9th Cir. 2010) KOZINSKI, Chief Judge: [1] In this trademark infringement case, we consider the application of the nominative fair use doctrine to internet domain names. Facts [2] Farzad and Lisa Tabari are auto brokers-the personal shoppers of the automotive world. They contact authorized dealers, solicit bids and arrange for customers to buy from the dealer offering the best combination of location, availability and price. Consumers like this service, as it increases competition among dealers, resulting in greater selection at lower prices. For many of the same reasons, auto manufacturers and dealers aren't so keen on it, as it undermines dealers' territorial exclusivity and lowers profit margins. Until recently, the Tabaris offered this service at buy-a-lexus.com and buyorleaselexus.com.

[3] Toyota Motor Sales U.S.A. ("Toyota") is the exclusive distributor of Lexus vehicles in the United States, and jealous guardian of the Lexus mark. A Toyota marketing executive testified at trial that Toyota spends over $250 million every year promoting the Lexus brand. In the executive's estimation, "Lexus is a very prestigious luxury brand and it is an indication of an exclusive luxury experience." No doubt true.

[4] Toyota objected to the Tabaris' use on their website of copyrighted photography of Lexus vehicles and the circular "L Symbol Design mark." Toyota also took umbrage at the Tabaris' use of the string "lexus" in their domain names, which it believed was "likely to cause confusion as to the source of [the Tabaris'] web site." The Tabaris removed Toyota's photography and logo from their site and added a disclaimer in large font at the top. But they refused to give up their domain names. Toyota sued, and the district court found infringement after a bench trial. It ordered the Tabaris to cease using their domain names and enjoined them from using the Lexus mark in any other domain name. Pro se as they were at trial, the Tabaris appeal. Nominative Fair Use [5] When customers purchase a Lexus through the Tabaris, they receive a genuine Lexus car sold by an authorized Lexus dealer, and a portion of the proceeds ends up in Toyota's bank account. Toyota doesn't claim the business of brokering Lexus cars is illegal or that it has contracted with its dealers to prohibit selling through a broker. Instead, Toyota is using this trademark lawsuit to make it more difficult for consumers to use the Tabaris to buy a Lexus.

[6] The district court applied the eight-factor test for likelihood of confusion articulated in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979), and found that the Tabaris' domain names-buy-a-lexus.com and buyorleaselexus.com-infringed the Lexus trademark. But we've held that the Sleekcraft analysis doesn't apply where a defendant uses the mark to refer to the trademarked good itself. See Playboy Enters., Inc. v. Welles, 279 F.3d 796, 801 (9th Cir. 2002); New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302, 308 (9th Cir. 1992). 1 The Tabaris are using the term Lexus to describe their business of brokering Lexus automobiles; when they say Lexus, they mean Lexus. We've long held that such use of the trademark is a fair use, namely nominative fair use. And fair use is, by definition, not infringement. The Tabaris did in fact present a nominative fair use defense to the district court. [7] In cases where a nominative fair use defense is raised, we ask whether (1) the product was "readily identifiable" without use of the mark; (2) defendant used more of the mark than necessary; or (3) defendant falsely suggested he was sponsored or endorsed by the trademark holder. Welles, 279 F.3d at 801 (quoting New Kids, 971 F.2d at 308-09). This test "evaluates the likelihood of confusion in nominative use cases." Id. It's designed to address the risk that nominative use of the mark will inspire a mistaken belief on the part of consumers that the speaker is sponsored or endorsed by the trademark holder. The third factor speaks directly to the risk of such confusion, and the others do so indirectly: Consumers may reasonably infer sponsorship or endorsement if a company uses an unnecessary trademark or "more" of a mark than necessary. But if the nominative use satisfies the threefactor New Kids test, it doesn't infringe. If the nominative use does not satisfy all the New Kids 1 This is no less true where, as here, "the defendant's ultimate goal is to describe his own product." Cairns v. Franklin Mint Co., 292 F.3d 1139, 1151 (9th Cir. 2002) (emphasis omitted). In Welles, for instance, we applied our nominative fair use analysis to a former playmate's use of the Playboy mark to describe herself and her website. 279 F.3d at 801. We observed that, in those circumstances, "application of the Sleekcraft test, which focuses on the similarity of the mark used by the plaintiff and the defendant, would lead to the incorrect conclusion that virtually all nominative uses are confusing." Id.

sponsorship or endorsement. See Welles, 279 F.3d at 803 n.26. In New Kids, for instance, we found that use of the "New Kids on the Block" mark in a newspaper survey did not infringe, even absent a disclaimer, because the survey said "nothing that expressly or by fair implication connotes endorsement or joint sponsorship." 971 F.2d at 309. Speakers are under no obligation to provide a disclaimer as a condition for engaging in truthful, non-misleading speech.

[12] Although our opinion in Volkswagenwerk Aktiengesellschaft v. Church remarked on that defendant's "prominent use of the word 'Independent' whenever the terms 'Volkswagen' or 'VW' appeared in his advertising," 411 F.2d 350, 352 (9th Cir. 1969), it isn't to the contrary. The inclusion of such words will usually negate any hint of sponsorship or endorsement, which is why we mentioned them in concluding that there was no infringement in Volkswagenwerk. Id. But that doesn't mean such words are required, and Volkswagenwerk doesn't say they are. Our subsequent cases make clear they're not. See Welles, 279 F.3d at 803 n.26; New Kids, 971 F.2d at 309. 3 [13] The district court reasoned that the fact that an internet domain contains a trademark will "generally" suggest sponsorship or endorsement by the trademark holder. When a domain name consists only of the trademark followed by .com, or some other suffix like .org or .net, it will typically suggest sponsorship or endorsement by the trademark holder. Cf. Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998). 4 This is because "[a] customer who is unsure about a company's domain name will often guess that the domain name is also the company's name." Id. (quoting Cardservice Int'l v. McGee, 950 F.Supp. 737, 741 (E.D.Va. 1997)) (internal quotation marks omitted); see also Brookfield Commc'ns, Inc. v. 3 The Sixth Circuit enjoined a domain name in part because it did "not include words like 'independent' or 'unaffiliated,'" but in that case there were additional factors indicating sponsorship or endorsement, including the use of stylized versions of the plaintiff's marks on the site. PACCAR Inc. v. TeleScan Techs., L.L.C., 319 F.3d 243, 256-57 (6th Cir. 2003). Where these or other factors suggest that nominative use is likely to cause confusion, a disclaimer may well be necessary. But a disclaimer is not required every time a URL contains a mark. 4 Of course, not every trademark.com domain name is likely to cause consumer confusion. See Interstellar Starship, 304 F.3d at 944-46. For instance, we observed in Interstellar Starship that an apple orchard could operate at the website apple.com without risking confusion with Apple Computers, in light of the vast difference between their products. Id. at 944. "If, however, the apple grower . . . competed directly with Apple Computer by selling computers, initial interest confusion probably would result," as the apple grower would be using the apple.com domain to appropriate the goodwill Apple Computer had developed in its trademark. Id.

When a website deals in goods or services related to a trademarked brand, as in this case, it is much closer to the second example, where apple.com competes with Apple Computers. If a company that repaired iPods, iPads and iPhones were to set up at apple.com, for instance, consumers would naturally assume that the company was sponsored or endorsed by Apple (or, more likely, that it was Apple). Where a site is used to sell goods or services related to the trademarked brand, a trademark.com domain will therefore suggest sponsorship or endorsement and will not generally be nominative fair use.

W. Coast Entm't Corp., 174 F.3d 1036, 1045 (9th Cir. 1999). If customers type in trademark.com and find the site occupied by someone other than the trademark holder, they may well believe it is the trademark holder, despite contrary evidence on the website itself. Alternatively, they may become discouraged and give up looking for the trademark holder's official site, believing perhaps that such a website doesn't exist. Panavision, 141 F.3d at 1327.

[20] Toyota asserts that, even if the district court's injunction is overbroad, it can be upheld if limited to the Tabaris' actual domain names: buyorleaselexus.com and buy-alexus.com. We therefore apply the three-part New Kids test to the domain names, and we start by asking whether the Tabaris' use of the mark was "necessary" to describe their business. Toyota claims it was not, because the Tabaris could have used a domain name that did not contain the Lexus mark. It's true they could have used some other domain name like autobroker.com or fastimports.com, or have used the text of their website to explain their business. But it's enough to satisfy our test for necessity that the Tabaris needed to communicate that they specialize in Lexus vehicles, and using the Lexus mark in their domain names accomplished this goal. While using Lexus in their domain names wasn't the only way to communicate the nature of their business, the same could be said of virtually any choice the Tabaris made about how to convey their message: Rather than using the internet, they could publish advertisements in print; or, instead of taking out print ads, they could rely on word of mouth. We've never adopted such a draconian definition of necessity, and we decline to do so here. In Volkswagenwerk, for instance, we affirmed the right of a mechanic to put up a sign advertising that he specialized in repairing Volkswagen cars, although he could have used a sandwich board, distributed leaflets or shouted through a megaphone. 411 F.2d at 352. 9 One way or the other, the Tabaris need to let consumers know that they are brokers of Lexus cars, and that's nearly impossible to do without mentioning Lexus, cf. Monte Carlo Shirt, Inc. v. Daewoo Int'l (Am.) Corp., 707 F.2d 1054, 1058 (9th Cir. 1983), be it via domain name, metatag, radio jingle, telephone solicitation or blimp.

[21] The fact that the Tabaris also broker other types of cars does not render their use of the Lexus mark unnecessary. 10 Lisa Tabari testified: "I in my conviction and great respect for the company always try to convince the consumer to first purchase a Lexus or Toyota product." If customers decide to buy some other type of car, the Tabaris may help with that, but their specialty is Lexus. The Tabaris are entitled to decide what automotive brands to emphasize in their business, and the district court found that the Tabaris do in fact specialize in Lexus vehicles. Potential customers would naturally be interested in that fact, and it was entirely appropriate for the Tabaris to use the Lexus mark to let them know it.

[22] Nor are we convinced by Toyota's argument that the Tabaris unnecessarily used domain names containing the Lexus trademark as their trade name. See Volkswagenwerk, 411 F.2d at 352. The Tabaris' business name is not buyorleaselexus.com or buy-a-lexus.com; it's Fast Imports. Toyota points out that the Tabaris' domain names featured prominently in their advertising, but that by no means proves the domain names were synonymous with the Tabaris' business. The Tabaris may have featured their domain names in their advertisements in order to tell consumers where to find their website, as well as to communicate the fact that they can help buy or lease a Lexus. Toyota would have to show significantly more than "prominent" advertisement to establish the contrary. We therefore conclude that the Tabaris easily satisfy the first New Kids factor. [23] As for the second and third steps of our nominative fair use analysis, Toyota suggests that use of the stylized Lexus mark and "Lexus L" logo was more use of the mark than necessary and suggested sponsorship or endorsement by Toyota. This is true: The Tabaris could adequately communicate their message without using the visual trappings of the Lexus brand. New Kids, 971 F.2d at 308 n.7. Moreover, those visual cues might lead some consumers to believe they were dealing with an authorized Toyota affiliate. Imagery, logos and other visual markers may be particularly significant in cyberspace, where anyone can convincingly recreate the look and feel of a luxury brand at minimal expense. It's hard to duplicate a Lexus showroom, but it's easy enough to ape the Lexus site.

[24] But the Tabaris submitted images of an entirely changed site at the time of trial: The stylized mark and "L" logo were gone, and a disclaimer appeared in their place. The disclaimer stated, prominently and in large font, "We are not an authorized Lexus dealer or affiliated in any way with Lexus. We are an Independent Auto Broker." While not required, such a disclaimer is relevant to the nominative fair use analysis. See Welles, 279 F.3d at 803. Toyota 10 Toyota doesn't suggest that the Tabaris used the Lexus mark to refer to those other cars, or that the Tabaris used the Lexus mark in order to redirect customers to those cars. See, e.g., Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1019 (9th Cir. 2004). Everyone seems to concede the Tabaris are bona fide Lexus brokers. We therefore do not consider whether the Tabaris used the Lexus mark in conjunction with brokering vehicles other than Lexus, or whether such use would be infringing.

claims the Tabaris' disclaimer came too late to protect against confusion caused by their domain names, as such confusion would occur before consumers saw the site or the disclaimer. See Brookfield, 174 F.3d at 1057. But nothing about the Tabaris' domains would give rise to such confusion; the Tabaris did not run their business at lexus.com, and their domain names did not contain words like "authorized" or "official." See pp. 1178-79 supra. Reasonable consumers would arrive at the Tabaris' site agnostic as to what they would find. Once there, they would immediately see the disclaimer and would promptly be disabused of any notion that the Tabaris' website is sponsored by Toyota. Because there was no risk of confusion as to sponsorship or endorsement, the Tabaris' use of the Lexus mark was fair.

[25] This makeover of the Tabaris' site is relevant because Toyota seeks only forwardlooking relief. In Volkswagenwerk, we declined to order an injunction where the defendant had stopped all infringing activities by the time of trial, 411 F.2d at 352, although we've said that an injunction may be proper if there's a risk that infringing conduct will recur, Polo Fashions, Inc. v. Dick Bruhn, Inc., 793 F.2d 1132, 1135-36 (9th Cir. 1986). Even assuming some form of an injunction is required to prevent relapse in this case, the proper remedy for infringing use of a mark on a site generally falls short of entirely prohibiting use of the site's domain name, as the district court did here. See Interstellar Starship, 304 F.3d at 948. "[O]nly upon proving the rigorous elements of cyber-squatting . . . have plaintiffs successfully forced the transfer of an infringing domain name." Id. Forced relinquishment of a domain is no less extraordinary.

[26] The district court is in a better position to assess in the first instance the timing and extent of any infringing conduct, as well as the scope of the remedy, if any remedy should prove to be required. We therefore vacate the injunction and remand for reconsideration. The important principle to bear in mind on remand is that a trademark injunction should be tailored to prevent ongoing violations, not punish past conduct. Speakers do not lose the right to engage in permissible speech simply because they may have infringed a trademark in the past.

C. [27] When considering the scope and timing of any infringement on remand, the district court must eschew application of Sleekcraft and analyze the case solely under the rubric of nominative fair use. Cairns, 292 F.3d at 1151. The district court treated nominative fair use as an affirmative defense to be established by the Tabaris only after Toyota showed a likelihood of confusion under Sleekcraft. This was error; nominative fair use "replaces" Sleekcraft as the proper test for likely consumer confusion whenever defendant asserts to have referred to the trademarked good itself. Id. (emphasis omitted); see also Welles, 279 F.3d at 801. [28] On remand, Toyota must bear the burden of establishing that the Tabaris' use of the Lexus mark was not nominative fair use. A finding of nominative fair use is a finding that the plaintiff has failed to show a likelihood of confusion as to sponsorship or endorsement. See Welles, 279 F.3d at 801; New Kids, 971 F.2d at 308 ("Because [nominative fair use] does not implicate the source-identification function that is the purpose of trademark, it does not

The student wishing to avoid madness may do well to avoid the term "dilution" altogether and simply refer to these two forms of protection as "anti-blurring protection" and "anti-tarnishment" protection.

For the reasons stated herein, Nike prevails on its federal and state dilution claims. Therefore, Nike's claims for trademark infringement and unfair competition need not be reached.

However, since both parties refer to "Nikepal" with a lowercase "p" in this action, the court adopts this spelling for the purposes of this order.

Starbucks also asserted claims of trademark infringement in violation of 15 U.S.C. § 1114(1); unfair competition in violation of 15 U.S.C. § 1125(a); trademark dilution in violation of New York General Business Law § 360-l; deceptive acts and business practices and false advertising in violation of New York General Business Law § § 349, 350; and unfair competition in violation of New York common law. All of these claims were dismissed during the course of this suit and are not the subject of this appeal.5 Other common responses included "barbeque" or "charcoal" (7.9 percent); "restaurant" or "grill" (7.5 percent); "meat," "steak," or "hamburger" (4.6 percent); and "money" (3.9 percent).6 More popular responses to this second question included: "grocery store" (18.3 percent); "discount store" (16.9 percent); "restaurant" (7.0 percent); "department store" (4.8 percent); and "hardware store" or "home improvement store" (3.7 percent).

At the time, federal law provided: "The owner of a famous mark shall be entitled . . . to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark . . . ."

For convenience, we repeat those factors here: (ii) the distinctiveness of the Starbucks Marks; (iii) the exclusivity of Starbucks' use of its marks; (iv) the high degree of recognition of the Starbucks Marks; and (v) Black Bear's intent to associate the Charbucks Marks with the Starbucks Marks.

Although some other respondents gave answers consistent with an association with Starbucks-18.3 percent answered "grocery store,"

16.9 percent answered "discount store," 7 percent answered "restaurant," and 4.8 percent answered "department store"-these responses are also consistent with other views of what "Charbucks" could be, including meat or a charcoal grilling product, as 38.5 percent of respondents suggested.17 Of course, in Starbucks IV, we rejected a per se or threshold requirement of "substantial similarity" between the marks at issue in federal dilution actions. 588 F.3d at 108-09. In doing so, however, we did not suggest that a finding of minimal similarity could not be highly probative of the likelihood of dilution.

The potential problem with simply assuming tarnishment when the junior mark places the senior mark in a sexual context becomes apparent if one considers a different case. What if the holder of a sex-related senior mark levied a claim of dilution by tarnishment against the holder of a junior mark that was similarly associated with sex? Would the court be willing to assume without further proof that despite their similar sexual origins the junior mark necessarily tarnishes the senior mark? Under the majority's reasoning, such an assumption would be appropriate. This cannot be the law.

According to the United States Patent and Trademark Office, Defendant Lamborghini filed an application for registration of the LAMBO mark on September

We note that factor IV does not protect a faux noncommercial site, that is, a noncommercial site created by the registrant for the sole purpose of avoiding liability under the FTDA, which exempts noncommercial uses of marks, see 15 U.S.C. § 1125(c)(4)(B), or under the ACPA. As explained by the Senate Report discussing the ACPA, an individual cannot avoid liability for registering and attempting to sell a hundred domain names incorporating famous marks by posting noncommercial content at those domain names. See S.Rep. No. 106-140, 1999 WL 594571, at *14 (citing Panavision Int'l v. Toeppen, 141 F.3d 1316 (9th Cir. 1998)). But Lamparello's sole purpose for registering www.fallwell.com was to criticize Reverend Falwell, and this noncommercial use was not a ruse to avoid liability. Therefore, factor IV indicates that Lamparello did not have a bad faith intent to profit.

Given our resolution of Lamparello's appeal, Reverend Falwell's cross-appeal with respect to statutory damages and attorney fees is moot.

These were: .aero, .arpa, .asia, .biz, .cat, .com, .coop, .edu, .gov, .info, .int, .jobs, .mil, .mobi, .names, .net, .org, .post, .pro, .tel, .travel and .xxx. See Jacqueline Lipton & Mary Wong, Trademark and Freedom of Expression in ICANN's New gTLD Process, 38 MONASH U. L. REV. 188, 192 (2012).

eBay appears to be short for Echo Bay-the name of eBay's founder's consulting firm was Echo Bay Technology Group. The name "EchoBay" was already in use, so eBay was employed as the name for the website. See http:// en. wikipedia. org/ wiki/ EBay# Origins_ and_ history (last visited Feb.

26, 2010); http:// news. softpedia. com/ news/ eBay-Turns-Ten-Happy-Birthday-7502. shtml (last visited Feb. 26, 2010).

In addition to providing auction-style and fixed-priced listings, eBay is also the proprietor of a traditional classified service. Id. at 474.

We note, however, that, Tiffany's "About Me" page on the eBay website states that Tiffany does not authenticate merchandise. Pl.'s Ex. 290.

The Supreme Court cited two cases in support of this proposition: William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526 (1924), and Coca-Cola Co. v. Snow Crest Beverages, Inc., 64 F.Supp.

(D.Mass. 1946) (Wyzanski, J.), aff'd, 162 F.2d 280 (1st Cir.), cert. denied, 332 U.S. 809 (1947).

European courts have done so. A Belgian court declined to hold eBay liable for counterfeit cosmetic products sold through its website. See Lancôme v. eBay, Brussels Commercial Court (Aug. 12, 2008), Docket No. A/07/06032. French courts, by contrast, have concluded that eBay violated applicable trademark laws. See, e.g., S.A. Louis Vuitton Malletier v. eBay, Inc., Tribunal de Commerce de Paris, Premiere Chambre B. (Paris Commercial Court), Case No. 200677799 (June 30, 2008); Hermes v.

The district court found the cases Tiffany relied on for the proposition that general knowledge of counterfeiting suffices to trigger liability to be inapposite. Id. at 510.

In discussing Inwood's "knows or has reason to know" prong of the contributory infringement test, Sony refers to a defendant's knowledge, but not to its constructive knowledge, of a third party's infringing conduct. Sony, 464 U.S. at 439 n. 19, 104 S.Ct. 774. We do not take the omission as altering the test Inwood articulates.

The demand letters did say that eBay should presume that sellers offering five or more Tiffany goods were selling counterfeits, id. at 511, but we agree with the district court that this presumption was factually unfounded, id. at 511-12.

At the same time, we appreciate the argument that insofar as eBay receives revenue from undetected counterfeit listings and sales through the fees it charges, it has an incentive to permit such listings and sales to continue.

See TheBagAddiction.com, http:// www. The Bag Addiction. com. This site can [no] longer be accessed because it was shut down following Gucci's lawsuit, but archived versions of the website can be browsed at The Internet Archive Wayback Machine. See http:// web. archive. org/ web/*/ http:// the bag addiction. com (last visited May

23, 2010).2 Gucci also brings suit against certain other "ABC Companies," unknown companies who engaged with the known defendants "in the manufacture, distribution, sale, and advertisement of [c]ounterfeit [p]roducts," Compl. ¶ 17, and "John Does," unknown individuals who also participated with the named defendants in the infringement and counterfeiting of Gucci products. Id. ¶ 18.

Federal law and state common law infringement claims are analyzed identically. See, e.g., eBay,

Judge Kozinski's analysis, like that of the majority in Perfect

10, is largely set in the context of copyright infringement. However, he later states that his dissent on trademark infringement is based on "precisely the same reasons." Perfect 10, 494 F.3d at 822.

Indeed, Frontline and Woodforest's credit card processing system were likely integrated to some degree, since some sort of credit card "portal" necessarily had to be embedded in the website for a customer to make a purchase.

Not only that, but the failure to say anything about a defendant's burden on this point was almost certainly not an oversight, not after the House Subcommittee on Trademarks declined to forward a proposal to provide expressly as an element of the defense that a descriptive use be "'[un]likely to deceive the public.'" Hearings on H.R. 102 et al. before the Subcommittee on Trade-Marks of the House Committee on Patents, 77th Cong., 1st Sess., 167-168 (1941) (hereinafter Hearings) (testimony of Prof. Milton Handler).

See also Hearings 72 (testimony of Wallace Martin, Chairman, American Bar Association Committee on Trade-Mark Legislation) ("Everybody has got a right to the use of the English language and has got a right to assume that nobody is going to take that English language away from him").

The record indicates that on remand the courts should direct their attention in particular to certain factual issues bearing on the fair use defense, properly applied. The District Court said that Lasting's motion for summary adjudication conceded that KP used "microcolor" descriptively and not as a mark. Case No. SA CV 00-276-GLT (EEx), at 8, App. to Pet. for Cert. 29a. We think it is arguable

Breitling also uses the term "red gold" in its website product listings

The district court also concluded that there was a genuine issue of fact as to whether Solid 21's mark was generic, and thus invalid. Breitling does not challenge this finding on appeal.

In all of its orders, the district court concluded that Breitling did not use the term "red gold" as a mark.

In its reconsideration decision, the district court suggested that Breitling's "rose gold" watch as portrayed on the Breitling website was a lighter shade than the watch listed as "red gold." This was, as the district court saw it, evidence that "Breitling was using 'red gold' in a descriptive sense to reflect the nuance of that particular color," and that it was a "different hue from 'rose gold.'" After Solid 21 moved for reconsideration partly on the basis that Breitling used both terms to describe the same watch, the district court clarified that its prior finding "was not essential" to its reconsideration because Breitling's use of both terms was always descriptive and was "paired with other color and material descriptors such as 'stainless steel' and 'mother-of-pearl.'"

The International Standards Organization ("ISO") created criteria for determining the chemical composition of gold alloys. Breitling contends that it complies with ISO Standard 8654. This standard specifies the composition of the "5N" alloy of gold, which the ISO calls "red." This is in contrast to the ISO's specification of a lighter "pink" gold alloy. For reasons stated above, whether Breitling complies with the ISO's exact metallurgical standards is immaterial to a descriptiveness analysis, but may have some bearing on the question of whether Breitling was acting in good faith when it employed the term "red gold."

The majority explains that "red gold" is a longstanding scientific description of a particular gold alloy. See Maj. Op. at

This has two problems. First, as a logical matter, it attempts to explain a change with a constant. And second, as a factual matter, the evidence shows that Breitling used "red gold" and "rose gold" interchangeably, not to describe two scientifically distinct alloys.

In the only case in which we appear to have affirmed a grant of summary judgment on good faith despite the lack of a trademark search, Savin Corp. v. Savin Grp.,

F.3d 439 (2d Cir. 2004), the failure to perform the search was harmless because the mark was registered for use only in a different industry, see id. at 460. That is not the case here.

Courts also occasionally find dictionary definitions and third-party patent registrations probative of whether a term or phrase is descriptive. See Uncommon, 926 F.3d at 422-23.

If defendants are unable or unwilling to modify their use of the mark to comply with New Kids, then the district court's order to modify may effectively enjoin defendants from using the mark at all.

By "word of mouth" we, of course, refer not merely to spoken recommendations from friends and acquaintances, but to the whole range of information available to online shoppers, including chat rooms, discussion forums, feedback and evaluation websites, and the like.

"Words . . . do not worm their way into our discourse by accident." Alex Kozinski, Trademarks Unplugged, 68 N.Y.U. L. Rev.

960, 975 (1993). Trademark holders engage in "well-orchestrated campaigns intended to burn them into our collective consciousness." Id. Although trademark holders gain something by pushing their trademark into the lexicon, they also inevitably lose a measure of control over their mark.9 The Seventh Circuit has similarly upheld the right of a seller of Beanie Babies to operate at "bargainbeanies.com" on the grounds that "[y]ou can't sell a branded product without using its brand name." Ty Inc., 306 F.3d at 512. In a prophetic choice of examples, Judge Posner remarked that prohibiting such a domain name "would amount to saying that if a used car dealer truthfully advertised that it sold Toyotas, or if a muffler manufacturer truthfully advertised that it specialized in making mufflers for installation in Toyotas, Toyota would have a claim of trademark infringement." Id.

This is necessarily so because, unlike classic fair use, nominative fair use is not specifically provided for by statute. A court may find classic fair use despite "proof of infringement" because the Lanham Act authorizes that result. See 15 U.S.C. § 1115(b)(4). Nominative fair use, on the other hand, represents a finding of no liability under that statute's basic prohibition of infringing use. See id. § 1114.

As discussed above, our Court's test for assessing likelihood of confusion is the Polaroid test . . . . This Court has repeatedly urged district courts to apply the Polaroid factors even "where a factor is irrelevant to the facts at hand." Arrow Fastener Co., 59 F.3d at 400 ("[I]t is incumbent upon the district judge to engage in a deliberate review of each factor, and, if a factor is inapplicable to a case, to explain why.").

[3] The district court, rather than applying the Polaroid factors, applied the Ninth Circuit's test which applies in cases of nominative use of marks. Nominative use is a "use of another's trademark to identify, not the defendant's goods or services, but the plaintiff's goods or services." McCarthy § 23:11. It is called "nominative" use "because it 'names' the real owner of the mark." Id. "The doctrine of nominative fair use allows a defendant to use a plaintiff's trademark to identify the plaintiff's goods so long as there is no likelihood of confusion about the source of the defendant's product or the mark-holder's sponsorship or affiliation." Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 102 (2d Cir. 2010) (alterations and internal quotation marks omitted). Because the Polaroid factors-or their analogues in other circuits-are not easily applied in cases of nominative use, various courts have created new tests to apply in such circumstances. The Ninth Circuit's nominative fair use doctrine stems from its decision in New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992) . . . . Other circuits have adopted variations of this test. See, e.g., Universal Commc'n Sys., Inc. v. Lycos, Inc., 478 F.3d 413, 424 (1st Cir. 2007); Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211, 220-22 (3d Cir. 2005); Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 546-47 (5th Cir. 1998). [4] In the Ninth Circuit, nominative fair use is not an affirmative defense because it does not protect a defendant from liability if there is, in fact, a likelihood of consumer confusion. Rather, the nominative fair use test replaces the multi-factor test that the Ninth Circuit typically employs to determine consumer confusion, i.e., it replaces the Ninth Circuit's analogue to the Polaroid test. See Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150-51 (9th Cir. 2002); accord Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1175 (9th Cir. 2010); see also McCarthy § 23:11 ("The Ninth Circuit, in crafting a separate category of a 'nominative fair use' analysis, created a specialized tool to analyze a certain class of cases of alleged infringement . . . . The Ninth Circuit did not intend nominative fair use to constitute an affirmative defense.").

[5] By contrast, the Third Circuit, another court to have developed a nominative fair use doctrine, affords defendants broader protection. The Third Circuit treats nominative fair use as an affirmative defense that may be asserted by the defendant despite a likelihood of consumer confusion. To be entitled to protection based on the affirmative defense, a defendant must show (1) that the use of plaintiff's mark is necessary to describe both the plaintiff's product or service and the defendant's product or service; (2) that the defendant uses only so much of the plaintiff's mark as is necessary to describe plaintiff's product; and (3) that the defendant's conduct or language reflect the true and accurate relationship between plaintiff and defendant's products or services.

[6] To this point, this Court has not adopted either the Ninth Circuit or the Third Circuit's rule on nominative fair use. Nonetheless, district courts within our Circuit frequently use the Ninth Circuit's formulation. See, e.g., Car-Freshner Corp. v. Getty Images, Inc., 822 F.Supp.2d 167, 177-78 (N.D.N.Y. 2011); Audi AG v. Shokan Coachworks, Inc., 592 F.Supp.2d 246, 269-70 (N.D.N.Y. 2008) (collecting cases). Further, as discussed below we have endorsed the principles underlying the nominative fair use doctrine. See Tiffany (NJ) Inc., 600 F.3d at 102-03; Dow Jones & Co. v. Int'l Sec. Exch., Inc., 451 F.3d 295, 308 (2d Cir. 2006).

[10] When assessing the second nominative fair use factor, courts are to consider whether the alleged infringer "step [ped] over the line into a likelihood of confusion by using the senior user's mark too prominently or too often, in terms of size, emphasis, or repetition." McCarthy § 23:11; see, e.g., PACCAR Inc. v. TeleScan Technologies, L.L.C., 319 F.3d 243, 256 (6th Cir. 2003) ("Using [the plaintiff's] trademarks in its domain names, repeating the marks in the main titles of the web sites and in the wallpaper underlying the web sites, and mimicking the distinctive fonts of the marks go beyond using the marks 'as is reasonably necessary to identify' [the plaintiff's] trucks, parts, and dealers."), abrogated on other grounds by KP Permanent Make-Up, Inc., 543 U.S. at 116-17; Brother Records, Inc. v. Jardine, 318 F.3d 900, 908 (9th Cir. 2003) (considering the fact that the defendant used the mark "'The Beach Boys' more prominently and boldly" than the rest of its name "The Beach Boys Family and Friends" such that event organizers and members of the audience were confused about who was performing); Playboy Enters., Inc. v. Welles, 279 F.3d 796, 804 (9th Cir. 2002) (holding that defendant's repeated use of the abbreviation "PMOY ′81" meaning "Playmate of the Year 1981" on the background/wallpaper of her website failed to establish nominative fair use because "[t]he repeated depiction of "PMOY ′81" is not necessary to describe [the defendant]"), abrogated on other grounds by Miller v. Gammie, 335 F.3d 889 (9th Cir. 2003); cf. Swarovski Aktiengesellschaft v. Building No. 19, Inc., 704 F.3d 44, 51-52 (1st Cir. 2013) (reversing preliminary injunction restricting discount retailer from using large size font in advertising sale of "Swarovski" crystal figurines because lower court erred by assuming that retailer used "more of the mark than necessary" without determining if large size font was likely to cause consumer confusion). [11] Additionally, when considering the third nominative fair use factor, courts must not, as the district court did here, consider only source confusion, but rather must consider confusion regarding affiliation, sponsorship, or endorsement by the mark holder. See Courtenay Commc'ns Corp. v. Hall, 334 F.3d 210, 213 n. 1 (2d Cir. 2003) (vacating dismissal of Lanham Act claims and holding nominative fair use did not supply alternative grounds for dismissal because defendant's "hyperlink connection to a page of endorsements suggests affiliation, sponsorship, or endorsement by" the plaintiff (internal quotation marks omitted)).

[12] We therefore remand for reconsideration of the Polaroid factors in addition to the nominative fair use factors . . . .

Further Examples of Nominative Fair Use Analyses

Liquid Glass Enterprises, Inc. v. Dr. Ing. h.c.F. Porsche AG 8 F. Supp. 2d 398 (D.N.J. 1998)

In Liquid Glass Enterprises, Inc. v. Dr. Ing. h.c.F. Porsche AG, the declaratory plaintiff Liquid Glass ran numerous advertisements incorporating Porsche automobiles. The court focused on two. The first was "an ad appearing in the May 1997 issue of a national car magazine, Motor Trend, which portrays a provocatively-dressed woman applying Liquid Glass car polish to a Porsche 911 with the trademark 'PORSCHE' prominently displayed on the car." Id. at 399. The second was a ten-minute video for use at trade shows that opens with a Porsche 911 (with the Porsche crest plainly visible) accelerating down a highway. Immediately following, the video cuts to a woman who is undressing and taking a shower. Thereafter, the video cuts alternately between a car (not a Porsche) being washed and polished and a woman showering, putting on her makeup and getting dressed. The video then illustrates Liquid Glass's uses on numerous expensive cars and ends with a shot of the Porsche 911 speeding down the road.

Id. at 400. Applying New Kids, the court found no nominative fair use and ultimately granted the declaratory defendant's preliminary injunction motion. As to the first factor, "Liquid Glass has asserted no reason why the Porsche trademark or trade dress is necessary in its promotion of Liquid Glass products." Id. at 402. As to the second factor, "[n]either does Liquid Glass use only so much of Porsche's trademarks and trade dress as is reasonably necessary. See, e.g., Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350, 352 (9th Cir. 1969) (repair shop can only use the word 'Volkswagen' but cannot use the distinctive lettering or the encircled 'VW' emblem)". Id. at 402-403. As to the third New Kids factor, the court then proceeded through the Third Circuit's Scott Paper multifactor test for consumer confusion to find that "Liquid Glass's advertisements could mislead the public into believing that Porsche endorsed Liquid Glass's products or at least approved of their use on Porsche automobiles." Id. at 403. The court also found dilution by blurring. The defendant planned to release a 227-page Godzilla compendium book entitled "Godzilla!", the title of which was "written in the distinctive lettering style used by Toho and its licensees in their merchandising activities." Id. at 1209. Toho moved for a preliminary injunction.

Applying New Kids, the court found, on factor one, that "[t]he product (the Godzilla character) is one not readily identifiable without the use of the trademark. A 'giant sized prehistoric dragon-like monster' may be an adequate description of Plaintiff's product, but use of the 'Godzilla' mark is required to readily identify Plaintiff's product." Id. at 1211. However, on factor two, "the cover of the Morrow Book contains Toho's trademark in bold orange lettering prominently displayed. This prong of the test does not appear to be satisfied because Morrow's use exceeds its legitimate referential purpose." Id. On the third New Kids factor, the court proceeded through the Ninth Circuit's Sleekcraft test for the likelihood of consumer confusion to find that "consumer confusion is likely." Id. at 1215. In a separate discussion (placed after its analysis of the first and second New Kids Factors but before its Sleekcraft analysis), the court found that the defendant's disclaimers on the front and back of the book were ineffective. The court described the disclaimers:

On the front cover, the word "UNAUTHORIZED" appears at the very top of the page, in relatively small lettering, surrounded by an orange bordering. On the back cover the following disclaimer appears, highlighted by its appearance against a blue background: "THIS BOOK WAS NOT This Court finds that the disclaimers do not alleviate the potential for consumer confusion. The word "UNAUTHORIZED" on the front cover only conveys a limited amount of information. It is not necessarily clear that alerting the average consumer to the word "UNAUTHORIZED" would negate consumer confusion as to Toho's sponsorship or endorsement of the Morrow Book. As the court in Twin Peaks Productions v. Publications Intern., 996 F.2d 1366, 1379 (2nd Cir. 1993) stated, the disclaimer would have been far more effective had it simply stated "that the publication has not been prepared, approved, or licensed by any entity that created or produced the" original Toho Godzilla films. That this information is conveyed on the back cover does not suffice. This Court is of the belief that most consumers look primarily at the front cover of a book prior to purchase. Moreover, the color of the disclaimer on the front cover does not effectively draw the attention of the average consumer as its bordering is in the same shade as the title. Further, the word is placed at the top of the page where most consumers' eyes are not likely to dwell. Perhaps if the information contained on the back cover were placed on the front cover, consumer confusion could be negated. The disclaimer is also not placed on the spine of the Morrow Book, a place where many consumers are likely to view before seeing the cover. Toho also asserts that the advertisement for the Morrow Book placed on the Internet at sites such as "Amazon.com" does not even contain the disclaimer. In summary, this Court finds that the disclaimers are ineffective.

Id. at 1213. Consider, by contrast, the approach taken by the following book: trade dress in the Superstar Barbie head and the doll's overall appearance. The district court concluded that there was no likelihood that the public would be misled into believing that Mattel endorsed Forsythe's photographs despite Forsythe's use of the Barbie figure.

[4] Arguably, the Barbie trade dress also plays a role in our culture similar to the role played by the Barbie trademark-namely, symbolization of an unattainable ideal of femininity for some women. Forsythe's use of the Barbie trade dress, therefore, presumably would present First Amendment concerns similar to those that made us reluctant to apply the Lanham Act as a bar to the artistic uses of Mattel's Barbie trademark in both MCA and this case. But we need not decide how the MCA/Rogers First Amendment balancing might apply to Forsythe's use of the Barbie trade dress because we find, on a narrower ground, that it qualifies as nominative fair use. . . . .

[5] Forsythe's use of the Barbie trade dress is nominative. Forsythe used Mattel's Barbie figure and head in his works to conjure up associations of Mattel, while at the same time to identify his own work, which is a criticism and parody of Barbie. See Cairns, 292 F.3d at 1151. Where use of the trade dress or mark is grounded in the defendant's desire to refer to the plaintiff's product as a point of reference for defendant's own work, a use is nominative.

[6] Fair use may be either nominative or classic. Id. at 1150. We recognize a fair use defense in claims brought under § 1125 where the use of the trademark "does not imply sponsorship or endorsement of the product because the mark is used only to describe the thing, rather than to identify its source." New Kids on the Block, 971 F.2d at 306. . . .

[7] Forsythe's use easily satisfies the first element {of the New Kids test}; his use of the Barbie figure and head are reasonably necessary in order to conjure up the Barbie product in a photographic medium. See id. at 1153 (" [T]here is no substitute for Franklin Mint's use of Princess Diana's likeness on its Diana-related products . . . ."). It would have been extremely difficult for Forsythe to create a photographic parody of Barbie without actually using the doll.

[8] Forsythe also satisfies the second element, which requires that a defendant only use so much of a trademark or trade dress as is reasonably necessary. As we recognized in Cairns, "[w]hat is 'reasonably necessary to identify the plaintiff's product' differs from case to case." Id. at 1154. Where identification "of the defendant's product depends on the description [or identification] of the plaintiff's product, more use of the plaintiff's trademark" or trade dress is reasonably necessary. Id. Given the photographic medium and Forsythe's goal of representing the social implications of Barbie, including issues of sexuality and body image, Forsythe's use of the Barbie torso and head is both reasonable and necessary. It would be very difficult for him to represent and describe his photographic parodies of Barbie without using the Barbie likeness.

[9] Though a "closer call than the first two elements" of the nominative fair use analysis, id. at 1155, the final element-that the user do nothing that would, in conjunction with use of the mark or dress, suggest sponsorship or endorsement by the trademark or trade dress holder-is satisfied here and weighs in Forsythe's favor. This element does not require that the defendant make an affirmative statement that their product is not sponsored by the plaintiff. Id. [10] Mattel attempts to argue that Forsythe suggested sponsorship by asserting to potential consumers that one of his photographs "hangs on the wall of the office of Mattel's President of Production," to whom Forsythe referred as "Joe Mattel." [11] One of the purchasers of Forsythe's work apparently told Forsythe that he had given the work to this Mattel senior executive as a gift. Forsythe repeated this fact in certain letters to galleries and friends. Forsythe claims that he had no intention of suggesting sponsorship and that he meant the statement humorously. In virtually every promotional packet in which Forsythe mentioned "Joe Mattel," he also included a copy of his biography in which he identified himself as "someone criticizing Mattel's Barbie and the values for which it stands." The letters in the packets asserted that Forsythe was attempting to "deglamourize[ ] Barbie," "skewer[ ] the Barbie myth," and expose an "undercurrent of dissatisfaction with consumer culture." A similar mission statement was prominently featured on his website.

[12] The rest of the materials in these promotional packets sent to galleries reduce the likelihood of any consumer confusion as to Mattel's endorsement of Forsythe's work. Any reasonable consumer would realize the critical nature of this work and its lack of affiliation with Mattel. Critical works are much less likely to have a perceived affiliation with the original work. New Kids on the Block, 971 F.2d at 309 (finding no suggested sponsorship in part because a poll in a magazine regarding the popularity of the New Kids asked if the New Kids had become a "turn off"). Moreover, even if "Joe Mattel" existed, we question whether possession by a third-party passive recipient of an allegedly infringing work can suggest sponsorship.

. . . . {The district court eventually ordered Mattel to pay Forsythe's legal fees in the amount of $1.9 million. See Mattel, Inc. v. Walking Mountain Productions, 2004 WL 1454100 (C.D.Cal., June 21, 2004). This was in addition to the Ninth Circuit's determination that Mattel should pay the costs of the appeal. See Mattel, Inc. v. Walking Mountain Productions, 353 F.3d 792, 816 (9th Cir. 2003).} ______________________________________________________________________________ You may recall the Smack Apparel case excerpted above in Parts I.A.1.b and II.B.5. Why weren't Smack Apparel's uses nominative uses? Excerpted here is the core of the Fifth Circuit's analysis, such as it is.

[1] Smack used the Universities' colors and indicia in more than a nominative sense. It did not incorporate the colors and other indicia to describe or compare its shirts with shirts licensed by the Universities, nor did it do so to tell the public what it had copied. Smack did incorporate the marks to identify the Universities as the subject of the shirts, but it did so in a way that improperly suggested affiliation, sponsorship, or endorsement.

[2] To take a simple example, two shirt designs targeted toward the fans of OSU and USC refer to the number of national championships those universities have won and ask, respectively, "got seven?" and "got eight?" Both shirts proclaim "WE DO!" and contain other specific indicia identifying the schools. Smack did not win any national championships-the respective Universities did. The use of the inclusive first-person personal pronoun "we" easily permits the inference that the schools are the speakers in the shirts and therefore endorsed the message. [3] As noted by the district court, Smack copied the mark with "an intent to rely upon the drawing power in enticing fans of the particular universities to purchase their shirts." Such an attempt to capitalize on consumer confusion is not a nominative fair use. 122 We conclude that the district court correctly granted summary judgment to the Universities on this issue. . . . .

We use the term "expressive" to denote the great variety of unauthorized uses of marks for purposes such as parody, criticism, or social commentary, be they for profit or entirely non-commercial in nature. Unlike copyright law and its doctrine of copyright fair use, trademark law has no one-size-fits-all doctrine to address the permissibility of such expressive uses. Further complicating matters is that any particular expressive use should be analyzed both (1) for the likelihood that the use will cause consumer confusion and (2), if the targeted mark qualifies for antidilution protection, for the likelihood that the use will cause trademark dilution.

In Part III.C.1, we turn first to a leading example of a court's analysis of a for-profit parodic use both under the multifactor test for the likelihood of consumer confusion and the test under Lanham Act § 43(c), 15 U.S.C. § 1125(c), for the likelihood of tradebark blurring and tarnishment. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007), is a lengthy opinion that is presented here almost in full, but it may reward a thorough reading. Not all courts follow the example of the Fourth Circuit's analysis in Haute Diggity Dog, however. Indeed, the case law on expressive uses and the likelihood of consumer confusion can be quite diverse. Part III.C.1 also offers a brief summary of a minor case, MPS Entm't, LLC v. Abercrombie & Fitch Stores, Inc., No. 11 Civ. 24110, 2013 WL 3288039 (S.D. Fla. June 28, 2013), in which the court engaged in a routine use of the multifactor test for the likelihood of confusion (without any special attention to the issue of parody) and simply found no likelihood of confusion.

We then turn in Part III.C.2 to the Rogers v. Grimaldi test for artistically relevant uses of trademarks. In recent years, this test has become increasingly influential as a replacement for the likelihood of confusion test in expressive use situations. However, in Jack Daniel's Props. v. VIP Prods. LLC, 599 U.S. 140 (2023), the Supreme Court significantly limited the reach of the test.

Note also that the Rogers v. Grimaldi test limits itself only to the question of consumer confusion. It does not address the additional question of whether the expressive use dilutes by blurring or tarnishment the targeted mark. On that issue, a typical defendant may seek to avail itself of the "Exclusions" from antidilution protection provided by Lanham Act § 43(c)(3), 15 U.S.C. 1125(c) (3). Accordingly, Part III.C.3 focuses on expressive uses and trademark dilution and considers further aspects of the Lanham Act § 43(c)(3) exclusions.

One final preliminary comment going to the realities of the reading in this subpart: for all of the elaborate doctrine that is meant to limit plaintiffs' trademark rights and allow defendants' expressive uses, the fact is that defendants often cannot afford to benefit from these limits. They often settle rather than bankrupt themselves through litigation. Consider one example of this sad reality: Seal Press, a small book publisher that specializes in non-fiction and fiction by women writers, published a book, "Adios, Barbie," that examined body image from a feminist perspective {image of first edition book cover shown below on left}. Seal was sued by Mattel for dilution. Commenting on the suit, the Seal Press publisher said "[w]e thought the First Amendment provided us with every right to evoke the outrageousness of tall, thin, and white being the only widely accepted body type." But Mattel overwhelmed the small press. In a settlement, Seal agreed to remove Barbie's name from the book's title and to remove images of the doll's clothing and accoutrements from its cover. "We are a small publisher," said the publisher. "We're not insured for the costs associated with this type of lawsuit." Julie Zando-Denis, Not Playing Around: The Chilling Power of the Federal Trademark Dilution Act of 1995, 11 CARDOZO WOMEN'S L.J. 599, 614 (2005)

There is simply no question that if Seal Press had had the resources to litigate the matter, it would have prevailed with respect to both confusion and dilution against Mattel -whose reputation for scorched-earth litigation tactics was matched at the time only by its reputation for almost always losing in court against those who stood up to its bullying. See, e.g., Mattel Inc. v. Walking Mountain Productions, 353 F.3d 792 (9th Cir. 2003); Mattel, Inc. v. Pitt, 229 F. Supp. 2d 315, 318 (S.D.N.Y. 2002). For more on the degree to which the mere threat of litigation can produce very strong "chilling effects" on expressive uses of trademarks, see Leah Chan Grinvald, Shaming Trademark Bullies, 2011 WISC. L. REV. 625 (2011). § 1125(c), copyright infringement under 17 U.S.C. § 501, and related statutory and common law violations. Haute Diggity Dog manufactures, among other things, plush toys on which dogs can chew, which, it claims, parody famous trademarks on luxury products, including those of Louis Vuitton Malletier. The particular Haute Diggity Dog chew toys in question here are small imitations of handbags that are labeled "Chewy Vuiton" and that mimic Louis Vuitton Malletier's LOUIS VUITTON handbags.

Louis Vuitton Malletier S.A. v. Haute Diggity

[2] On cross-motions for summary judgment, the district court concluded that Haute Diggity Dog's "Chewy Vuiton" dog toys were successful parodies of Louis Vuitton Malletier's trademarks, designs, and products, and on that basis, entered judgment in favor of Haute Diggity Dog on all of Louis Vuitton Malletier's claims. [3] On appeal, we agree with the district court that Haute Diggity Dog's products are not likely to cause confusion with those of Louis Vuitton Malletier and that Louis Vuitton Malletier's copyright was not infringed. On the trademark dilution claim, however, we reject the district court's reasoning but reach the same conclusion through a different analysis. Accordingly, we affirm. I [4] Louis Vuitton Malletier S.A. ("LVM") is a well known manufacturer of luxury luggage, leather goods, handbags, and accessories, which it markets and sells worldwide. In connection with the sale of its products, LVM has adopted trademarks and trade dress that are well recognized and have become famous and distinct. Indeed, in 2006, BusinessWeek ranked LOUIS VUITTON as the 17th "best brand" of all corporations in the world and the first "best brand" for any fashion business.

[5] LVM has registered trademarks for "LOUIS VUITTON," in connection with luggage and ladies' handbags (the "LOUIS VUITTON mark"); for a stylized monogram of "LV," in connection with traveling bags and other goods (the "LV mark"); and for a monogram canvas design consisting of a canvas with repetitions of the LV mark along with four-pointed stars, four-pointed stars inset in curved diamonds, and four-pointed flowers inset in circles, in connection with traveling bags and other products (the "Monogram Canvas mark"). In 2002, LVM adopted a brightly-colored version of the Monogram Canvas mark in which the LV mark and the designs were of various colors and the background was white (the "Multicolor design"), created in collaboration with Japanese artist Takashi Murakami. For the Multicolor design, LVM obtained a copyright in 2004. In 2005, LVM adopted another design consisting of a canvas with repetitions of the LV mark and smiling cherries on a brown background (the "Cherry design").

[6] The original LOUIS VUITTON, LV, and Monogram Canvas marks, however, have been used as identifiers of LVM products continuously since 1896.

[7] During the period 2003-2005, LVM spent more than $48 million advertising products using its marks and designs . . . . It sells its products exclusively in LVM stores and in its own in-store boutiques that are contained within department stores such as Saks Fifth Avenue, Bloomingdale's, Neiman Marcus, and Macy's. LVM also advertises its products on the Internet through the specific websites www.louisvuitton.com and www. eluxury. com. [8] Although better known for its handbags and luggage, LVM also markets a limited selection of luxury pet accessories-collars, leashes, and dog carriers-which bear the Monogram Canvas mark and the Multicolor design. These items range in price from approximately $200 to $1600. LVM does not make dog toys.

[9] Haute Diggity Dog, LLC, which is a relatively small and relatively new business located in Nevada, manufactures and sells nationally-primarily through pet stores-a line of pet chew toys and beds whose names parody elegant high-end brands of products such as perfume, cars, shoes, sparkling wine, and handbags. These include-in addition to Chewy Vuiton (LOUIS VUITTON)-Chewnel No. 5 (Chanel No. 5), Furcedes (Mercedes), Jimmy Chew (Jimmy Choo), Dog Perignonn (Dom Perignon), Sniffany & Co. (Tiffany & Co.), and Dogior (Dior). The chew toys and pet beds are plush, made of polyester, and have a shape and design that loosely imitate the signature product of the targeted brand. They are mostly distributed and sold through pet stores, although one or two Macy's stores carries Haute Diggity Dog's products. The dog toys are generally sold for less than $20, although larger versions of some of Haute Diggity Dog's plush dog beds sell for more than $100.

[10] Haute Diggity Dog's "Chewy Vuiton" dog toys, in particular, loosely resemble miniature handbags and undisputedly evoke LVM handbags of similar shape, design, and color. In lieu of the LOUIS VUITTON mark, the dog toy uses "Chewy Vuiton"; in lieu of the LV mark, it uses "CV"; and the other symbols and colors employed are imitations, but not exact ones, of those used in the LVM Multicolor and Cherry designs. [12] LVM appealed and now challenges, as a matter of law, virtually every ruling made by the district court.

[13] LVM contends first that Haute Diggity Dog's marketing and sale of its "Chewy Vuiton" dog toys infringe its trademarks because the advertising and sale of the "Chewy Vuiton" dog toys is likely to cause confusion. See 15 U.S.C. § 1114(1)(a). LVM argues:

The defendants in this case are using almost an exact imitation of the house mark VUITTON (merely omitting a second "T"), and they painstakingly copied Vuitton's Monogram design mark, right down to the exact arrangement and sequence of geometric symbols. They also used the same design marks, trade dress, and color combinations embodied in Vuitton's Monogram Multicolor and Monogram Cerises [Cherry] handbag collections. Moreover, HDD did not add any language to distinguish its products from Vuitton's, and its products are not "widely recognized." 1

[14] Haute Diggity Dog contends that there is no evidence of confusion, nor could a reasonable factfinder conclude that there is a likelihood of confusion, because it successfully markets its products as parodies of famous marks such as those of LVM. It asserts that "precisely because of the [famous] mark's fame and popularity . . . confusion is avoided, and it is this lack of confusion that a parodist depends upon to achieve the parody." Thus, responding to LVM's claims of trademark infringement, Haute Diggity Dog argues:

The marks are undeniably similar in certain respects. There are visual and phonetic similarities. [Haute Diggity Dog] admits that the product name and design mimics LVM's and is based on the LVM marks. It is necessary for the pet products to conjure up the original designer mark for there to be a parody at all. However, a parody also relies on "equally obvious dissimilarit[ies] between the marks" to produce its desired effect.

Concluding that Haute Diggity Dog did not create any likelihood of confusion as a matter of law, the district court granted summary judgment to Haute Diggity Dog. Louis Vuitton Malletier, 464 F.Supp.2d at 503, 508. We review its order de novo. See CareFirst of Md., Inc. v. First Care, P.C., 434 F.3d 263, 267 (4th Cir. 2006).

[15] To prove trademark infringement, LVM must show (1) that it owns a valid and protectable mark; (2) that Haute Diggity Dog uses a "re-production, counterfeit, copy, or colorable imitation" of that mark in commerce and without LVM's consent; and (3) that Haute Diggity Dog's use is likely to cause confusion. 15 U.S.C. § 1114(1)(a); CareFirst, 434 F.3d at 267. The validity and protectability of LVM's marks are not at issue in this case, nor is the fact 1 We take this argument to be that Haute Diggity Dog is copying too closely the marks and trade dress of LVM. But we reject the statement that LVM has a trademark consisting of the one word VUITTON. At oral argument, counsel for LVM conceded that the trademark is "LOUIS VUITTON," and it is always used in that manner rather than simply as "VUITTON." It appears that LVM has employed this technique to provide a more narrow, but irrelevant, comparison between its VUITTON and Haute Diggity Dog's "Vuiton." In resolving this case, however, we take LVM's arguments to compare "LOUIS VUITTON" with Haute Diggity Dog's "Chewy Vuiton."

that Haute Diggity Dog uses a colorable imitation of LVM's mark. Therefore, we give the first two elements no further attention. To determine whether the "Chewy Vuiton" product line creates a likelihood of confusion, we have identified several nonexclusive factors to consider:

(1) the strength or distinctiveness of the plaintiff's mark; (2) the similarity of the two marks;

(3) the similarity of the goods or services the marks identify; (4) the similarity of the facilities the two parties use in their businesses; (5) the similarity of the advertising used by the two parties; (6) the defendant's intent; and (7) actual confusion. See Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984). These Pizzeria Uno factors are not always weighted equally, and not all factors are relevant in every case. See CareFirst, 434 F.3d at 268.

[16] Because Haute Diggity Dog's arguments with respect to the Pizzeria Uno factors depend to a great extent on whether its products and marks are successful parodies, we consider first whether Haute Diggity Dog's products, marks, and trade dress are indeed successful parodies of LVM's marks and trade dress.

[17] For trademark purposes, "[a] 'parody' is defined as a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark's owner." People for the Ethical Treatment of Animals v. Doughney ("PETA "), 263 F.3d 359, 366 (4th Cir. 2001) (internal quotation marks omitted). "A parody must convey two simultaneous-and contradictory-messages: that it is the original, but also that it is not the original and is instead a parody." Id. (internal quotation marks and citation omitted). This second message must not only differentiate the alleged parody from the original but must also communicate some articulable element of satire, ridicule, joking, or amusement. Thus, "[a] parody relies upon a difference from the original mark, presumably a humorous difference, in order to produce its desired effect." Jordache Enterprises, Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1486 (10th Cir. 1987) (finding the use of "Lardashe" jeans for larger women to be a successful and permissible parody of "Jordache" jeans).

[18] When applying the PETA criteria to the facts of this case, we agree with the district court that the "Chewy Vuiton" dog toys are successful parodies of LVM handbags and the LVM marks and trade dress used in connection with the marketing and sale of those handbags. First, the pet chew toy is obviously an irreverent, and indeed intentional, representation of an LVM handbag, albeit much smaller and coarser. The dog toy is shaped roughly like a handbag; its name "Chewy Vuiton" sounds like and rhymes with LOUIS VUITTON; its monogram CV mimics LVM's LV mark; the repetitious design clearly imitates the design on the LVM handbag; and the coloring is similar. In short, the dog toy is a small, plush imitation of an LVM handbag carried by women, which invokes the marks and design of the handbag, albeit irreverently and incompletely. No one can doubt that LVM handbags are the target of the imitation by Haute Diggity Dog's "Chewy Vuiton" dog toys.

[19] At the same time, no one can doubt also that the "Chewy Vuiton" dog toy is not the "idealized image" of the mark created by LVM. The differences are immediate, beginning with the fact that the "Chewy Vuiton" product is a dog toy, not an expensive, luxury LOUIS VUITTON handbag. The toy is smaller, it is plush, and virtually all of its designs differ. Thus, "Chewy Vuiton" is not LOUIS VUITTON ("Chewy" is not "LOUIS" and "Vuiton" is not "VUITTON," with its two Ts); CV is not LV; the designs on the dog toy are simplified and crude, not detailed and distinguished. The toys are inexpensive; the handbags are expensive and marketed to be expensive. And, of course, as a dog toy, one must buy it with pet supplies and cannot buy it at an exclusive LVM store or boutique within a department store. In short, the Haute Diggity Dog "Chewy Vuiton" dog toy undoubtedly and deliberately conjures up the famous LVM marks and trade dress, but at the same time, it communicates that it is not the LVM product.

[20] Finally, the juxtaposition of the similar and dissimilar-the irreverent representation and the idealized image of an LVM handbag-immediately conveys a joking and amusing parody. The furry little "Chewy Vuiton" imitation, as something to be chewed by a dog, pokes fun at the elegance and expensiveness of a LOUIS VUITTON handbag, which must not be chewed by a dog. The LVM handbag is provided for the most elegant and well-to-do celebrity, to proudly display to the public and the press, whereas the imitation "Chewy Vuiton" "handbag" is designed to mock the celebrity and be used by a dog. The dog toy irreverently presents haute couture as an object for casual canine destruction. The satire is unmistakable. The dog toy is a comment on the rich and famous, on the LOUIS VUITTON name and related marks, and on conspicuous consumption in general. This parody is enhanced by the fact that "Chewy Vuiton" dog toys are sold with similar parodies of other famous and expensive brands-"Chewnel No. 5" targeting "Chanel No. 5"; "Dog Perignonn" targeting "Dom Perignon"; and "Sniffany & Co." targeting "Tiffany & Co." [21] We conclude that the PETA criteria are amply satisfied in this case and that the "Chewy Vuiton" dog toys convey "just enough of the original design to allow the consumer to appreciate the point of parody," but stop well short of appropriating the entire marks that LVM claims. PETA, 263 F.3d at 366 (quoting Jordache, 828 F.2d at 1486). [22] Finding that Haute Diggity Dog's parody is successful, however, does not end the inquiry into whether Haute Diggity Dog's "Chewy Vuiton" products create a likelihood of confusion. See 6 J. Thomas McCarthy, Trademarks and Unfair Competition § 31:153, at 262 (4th ed. 2007) ("There are confusing parodies and non-confusing parodies. All they have in common is an attempt at humor through the use of someone else's trademark"). The finding of a successful parody only influences the way in which the Pizzeria Uno factors are applied. See, e.g., Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316, 321 (4th Cir. 1992) (observing that parody alters the likelihood-of-confusion analysis). Indeed, it becomes apparent that an effective parody will actually diminish the likelihood of confusion, while an ineffective parody does not. We now turn to the Pizzeria Uno factors.

A [23] As to the first Pizzeria Uno factor, the parties agree that LVM's marks are strong and widely recognized. They do not agree, however, as to the consequences of this fact. LVM maintains that a strong, famous mark is entitled, as a matter of law, to broad protection. While it is true that finding a mark to be strong and famous usually favors the plaintiff in a trademark infringement case, the opposite may be true when a legitimate claim of parody is involved. As the district court observed, "In cases of parody, a strong mark's fame and popularity is precisely the mechanism by which likelihood of confusion is avoided." Louis Vuitton Malletier, 464 F.Supp.2d at 499 (citing Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 503-04 (2d Cir. 1996); Schieffelin & Co. v. Jack Co. of Boca, Inc., 850 F.Supp. 232, 248 (S.D.N.Y. 1994)). "An intent to parody is not an intent to confuse the public." Jordache, 828 F.2d at 1486.

[24] We agree with the district court. It is a matter of common sense that the strength of a famous mark allows consumers immediately to perceive the target of the parody, while simultaneously allowing them to recognize the changes to the mark that make the parody funny or biting. See Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F.Supp.2d 410, 416 (S.D.N.Y. 2002) (noting that the strength of the "TOMMY HILFIGER" fashion mark did not favor the mark's owner in an infringement case against "TIMMY HOLEDIGGER" novelty pet perfume). In this case, precisely because LOUIS VUITTON is so strong a mark and so well recognized as a luxury handbag brand from LVM, consumers readily recognize that when they see a "Chewy Vuiton" pet toy, they see a parody. Thus, the strength of LVM's marks in this case does not help LVM establish a likelihood of confusion.

[25] With respect to the second Pizzeria Uno factor, the similarities between the marks, the usage by Haute Diggity Dog again converts what might be a problem for Haute Diggity Dog into a disfavored conclusion for LVM.

[26] Haute Diggity Dog concedes that its marks are and were designed to be somewhat similar to LVM's marks. But that is the essence of a parody-the invocation of a famous mark in the consumer's mind, so long as the distinction between the marks is also readily recognized. While a trademark parody necessarily copies enough of the original design to bring it to mind as a target, a successful parody also distinguishes itself and, because of the implicit message communicated by the parody, allows the consumer to appreciate it. See PETA, 263 F.3d at 366 (citing Jordache, 828 F.2d at 1486); Anheuser-Busch, 962 F.2d at 321.

[27] In concluding that Haute Diggity Dog has a successful parody, we have impliedly concluded that Haute Diggity Dog appropriately mimicked a part of the LVM marks, but at the same time sufficiently distinguished its own product to communicate the satire. The differences are sufficiently obvious and the parody sufficiently blatant that a consumer encountering a "Chewy Vuiton" dog toy would not mistake its source or sponsorship on the basis of mark similarity.

[28] This conclusion is reinforced when we consider how the parties actually use their marks in the marketplace. See CareFirst, 434 F.3d at 267 (citing What-A-Burger of Va., Inc. v. Whataburger, Inc., 357 F.3d 441, 450 (4th Cir. 2004)); Lamparello v. Falwell, 420 F.3d 309, 316 (4th Cir. 2005); Hormel Foods, 73 F.3d at 503. The record amply supports Haute Diggity Dog's contention that its "Chewy Vuiton" toys for dogs are generally sold alongside other pet products, as well as toys that parody other luxury brands, whereas LVM markets its handbags as a top-end luxury item to be purchased only in its own stores or in its own boutiques within department stores. These marketing channels further emphasize that "Chewy Vuiton" dog toys are not, in fact, LOUIS VUITTON products.

[29] Nor does LVM find support from the third Pizzeria Uno factor, the similarity of the products themselves. It is obvious that a "Chewy Vuiton" plush imitation handbag, which does not open and is manufactured as a dog toy, is not a LOUIS VUITTON handbag sold by LVM. Even LVM's most proximate products-dog collars, leashes, and pet carriers-are fashion accessories, not dog toys. As Haute Diggity Dog points out, LVM does not make pet chew toys and likely does not intend to do so in the future. Even if LVM were to make dog toys in the future, the fact remains that the products at issue are not similar in any relevant respect, and this factor does not favor LVM.

[30] The fourth and fifth Pizzeria Uno factors, relating to the similarity of facilities and advertising channels, have already been mentioned. LVM products are sold exclusively through its own stores or its own boutiques within department stores. It also sells its products on the Internet through an LVM-authorized website. In contrast, "Chewy Vuiton" products are sold primarily through traditional and Internet pet stores, although they might also be sold in some department stores. The record demonstrates that both LVM handbags and "Chewy Vuiton" dog toys are sold at a Macy's department store in New York. As a general matter, however, there is little overlap in the individual retail stores selling the brands.

[31] Likewise with respect to advertising, there is little or no overlap. LVM markets LOUIS VUITTON handbags through high-end fashion magazines, while "Chewy Vuiton" products are advertised primarily through pet-supply channels.

[32] The overlap in facilities and advertising demonstrated by the record is so minimal as to be practically nonexistent. "Chewy Vuiton" toys and LOUIS VUITTON products are neither sold nor advertised in the same way, and the de minimis overlap lends insignificant support to LVM on this factor.

[33] The sixth factor, relating to Haute Diggity Dog's intent, again is neutralized by the fact that Haute Diggity Dog markets a parody of LVM products. As other courts have recognized, "An intent to parody is not an intent to confuse the public." Jordache, 828 F.2d at 1486. Despite Haute Diggity Dog's obvious intent to profit from its use of parodies, this action does not amount to a bad faith intent to create consumer confusion. To the contrary, the intent is to do just the opposite-to evoke a humorous, satirical association that distinguishes the products. This factor does not favor LVM.

[34] On the actual confusion factor, it is well established that no actual confusion is required to prove a case of trademark infringement, although the presence of actual confusion can be persuasive evidence relating to a likelihood of confusion. See CareFirst, 434 F.3d at 268.

[35] While LVM conceded in the district court that there was no evidence of actual confusion, on appeal it points to incidents where retailers misspelled "Chewy Vuiton" on invoices or order forms, using two Ts instead of one. Many of these invoices also reflect simultaneous orders for multiple types of Haute Diggity Dog parody products, which belies the notion that any actual confusion existed as to the source of "Chewy Vuiton" plush toys. The misspellings pointed out by LVM are far more likely in this context to indicate confusion over how to spell the product name than any confusion over the source or sponsorship of the "Chewy Vuiton" dog toys. We conclude that this factor favors Haute Diggity Dog.

[36] In sum, the likelihood-of-confusion factors substantially favor Haute Diggity Dog. But consideration of these factors is only a proxy for the ultimate statutory test of whether Haute Diggity Dog's marketing, sale, and distribution of "Chewy Vuiton" dog toys is likely to cause confusion. Recognizing that "Chewy Vuiton" is an obvious parody and applying the Pizzeria Uno factors, we conclude that LVM has failed to demonstrate any likelihood of confusion. Accordingly, we affirm the district court's grant of summary judgment in favor of Haute Diggity Dog on the issue of trademark infringement.

[37] LVM also contends that Haute Diggity Dog's advertising, sale, and distribution of the "Chewy Vuiton" dog toys dilutes its LOUIS VUITTON, LV, and Monogram Canvas marks, which are famous and distinctive, in violation of the Trademark Dilution Revision Act of 2006 ("TDRA"), 15 U.S.C.A. § 1125(c) (West Supp. 2007). It argues, "Before the district court's decision, Vuitton's famous marks were unblurred by any third party trademark use." "Allowing defendants to become the first to use similar marks will obviously blur and dilute the Vuitton Marks." It also contends that "Chewy Vuiton" dog toys are likely to tarnish LVM's marks because they "pose a choking hazard for some dogs."

[38] Haute Diggity Dog urges that, in applying the TDRA to the circumstances before us, we reject LVM's suggestion that a parody "automatically" gives rise to "actionable dilution." Haute Diggity Dog contends that only marks that are "identical or substantially similar" can give rise to actionable dilution, and its "Chewy Vuiton" marks are not identical or sufficiently similar to LVM's marks. It also argues that "[its] spoof, like other obvious parodies," "'tends to increase public identification' of [LVM's] mark with [LVM]," quoting Jordache, 828 F.2d at 1490, rather than impairing its distinctiveness, as the TDRA requires. As for LVM's tarnishment claim, Haute Diggity Dog argues that LVM's position is at best based on speculation and that LVM has made no showing of a likelihood of dilution by tarnishment. . . . .

[39] Thus, to state a dilution claim under the TDRA, a plaintiff must show:

(1) that the plaintiff owns a famous mark that is distinctive;

(2) that the defendant has commenced using a mark in commerce that allegedly is diluting the famous mark;

(3) that a similarity between the defendant's mark and the famous mark gives rise to an association between the marks; and (4) that the association is likely to impair the distinctiveness of the famous mark or likely to harm the reputation of the famous mark.

[40] In the context of blurring, distinctiveness refers to the ability of the famous mark uniquely to identify a single source and thus maintain its selling power. See N.Y. Stock Exch. v. N.Y., N.Y. Hotel LLC, 293 F.3d 550, 558 (2d Cir. 2002) (observing that blurring occurs where the defendant's use creates "the possibility that the [famous] mark will lose its ability to serve as a unique identifier of the plaintiff's product") (quoting Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 43 (2d Cir. 1994)); Playboy Enterprises, Inc. v. Welles, 279 F.3d 796, 805 (9th Cir. 2002) (same). In proving a dilution claim under the TDRA, the plaintiff need not show actual or likely confusion, the presence of competition, or actual economic injury. See 15 U.S.C.A.

[41] The TDRA creates three defenses based on the defendant's (1) "fair use" (with exceptions); (2) "news reporting and news commentary"; and (3) "noncommercial use." Id.

[42] We address first LVM's claim for dilution by blurring.

[43] The first three elements of a trademark dilution claim are not at issue in this case. LVM owns famous marks that are distinctive; Haute Diggity Dog has commenced using "Chewy Vuiton," "CV," and designs and colors that are allegedly diluting LVM's marks; and the similarity between Haute Diggity Dog's marks and LVM's marks gives rise to an association between the marks, albeit a parody. The issue for resolution is whether the association between Haute Diggity Dog's marks and LVM's marks is likely to impair the distinctiveness of LVM's famous marks.

[44] In deciding this issue, the district court correctly outlined the six factors to be considered in determining whether dilution by blurring has been shown. See 15 U.S.C.A.

§ 1125(c)(2) (B). But in evaluating the facts of the case, the court did not directly apply those factors it enumerated. It held simply:

[The famous mark's] strength is not likely to be blurred by a parody dog toy product. Instead of blurring Plaintiff's mark, the success of the parodic use depends upon the continued association with LOUIS VUITTON.

Louis Vuitton Malletier, 464 F.Supp.2d at 505. The amicus supporting LVM's position in this case contends that the district court, by not applying the statutory factors, misapplied the TDRA to conclude that simply because Haute Diggity Dog's product was a parody meant that "there can be no association with the famous mark as a matter of law." Moreover, the amicus points out correctly that to rule in favor of Haute Diggity Dog, the district court was required to find that the "association" did not impair the distinctiveness of LVM's famous mark.

LVM goes further in its own brief, however, and contends:

When a defendant uses an imitation of a famous mark in connection with related goods, a claim of parody cannot preclude liability for dilution.

The district court's opinion utterly ignores the substantial goodwill VUITTON has established in its famous marks through more than a century of exclusive use.

Disregarding the clear Congressional mandate to protect such famous marks against dilution, the district court has granted [Haute Diggity Dog] permission to become the first company other than VUITTON to use imitations of the famous VUITTON Marks.

[45] In short, LVM suggests that any use by a third person of an imitation of its famous marks dilutes the famous marks as a matter of law. This contention misconstrues the TDRA.

[46] The TDRA prohibits a person from using a junior mark that is likely to dilute (by blurring) the famous mark, and blurring is defined to be an impairment to the famous mark's distinctiveness. "Distinctiveness" in turn refers to the public's recognition that the famous mark identifies a single source of the product using the famous mark.

[47] To determine whether a junior mark is likely to dilute a famous mark through blurring, the TDRA directs the court to consider all factors relevant to the issue, including six factors that are enumerated in the statute . . . . Not every factor will be relevant in every case, and not every blurring claim will require extensive discussion of the factors. But a trial court must offer a sufficient indication of which factors it has found persuasive and explain why they are persuasive so that the court's decision can be reviewed. The district court did not do this adequately in this case. Nonetheless, after we apply the factors as a matter of law, we reach the same conclusion reached by the district court.

[48] We begin by noting that parody is not automatically a complete defense to a claim of dilution by blurring where the defendant uses the parody as its own designation of source, i.e., as a trademark. Although the TDRA does provide that fair use is a complete defense and allows that a parody can be considered fair use, it does not extend the fair use defense to parodies used as a trademark. As the statute provides:

The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:

(A) Any fair use . . . other than as a designation of source for the person's own goods or services, including use in connection with . . . parodying . . . . 15 U.S.C.A. § 1125(c)(3)(A)(ii) (emphasis added). Under the statute's plain language, parodying a famous mark is protected by the fair use defense only if the parody is not "a designation of source for the person's own goods or services." *

[49] The TDRA, however, does not require a court to ignore the existence of a parody that is used as a trademark, and it does not preclude a court from considering parody as part of the circumstances to be considered for determining whether the plaintiff has made out a claim for dilution by blurring. Indeed, the statute permits a court to consider "all relevant factors," including the six factors supplied in § 1125(c)(2)(B).

[50] Thus, it would appear that a defendant's use of a mark as a parody is relevant to the overall question of whether the defendant's use is likely to impair the famous mark's distinctiveness. Moreover, the fact that the defendant uses its marks as a parody is specifically relevant to several of the listed factors. For example, factor (v) (whether the defendant intended to create an association with the famous mark) and factor (vi) (whether there exists an actual association between the defendant's mark and the famous mark) directly invite inquiries into the defendant's intent in using the parody, the defendant's actual use of the parody, and the effect that its use has on the famous mark. While a parody intentionally creates an association with the famous mark in order to be a parody, it also intentionally communicates, if it is successful, that it is not the famous mark, but rather a satire of the famous mark. See PETA, 263 F.3d at 366. That the defendant is using its mark as a parody is therefore relevant in the consideration of these statutory factors.

[51] Similarly, factors (i), (ii), and (iv)-the degree of similarity between the two marks, the degree of distinctiveness of the famous mark, and its recognizability-are directly implicated by consideration of the fact that the defendant's mark is a successful parody. Indeed, by making the famous mark an object of the parody, a successful parody might actually enhance the famous mark's distinctiveness by making it an icon. The brunt of the joke becomes yet more famous. See Hormel Foods, 73 F.3d at 506 (observing that a successful parody "tends to increase public identification" of the famous mark with its source); see also Yankee Publ'g Inc. v. News Am. Publ'g Inc., 809 F.Supp. 267, 272-82 (S.D.N.Y. 1992) (suggesting that a sufficiently obvious parody is unlikely to blur the targeted famous mark).

[52] In sum, while a defendant's use of a parody as a mark does not support a "fair use" defense, it may be considered in determining whether the plaintiff-owner of a famous mark has proved its claim that the defendant's use of a parody mark is likely to impair the distinctiveness of the famous mark.

[53] In the case before us, when considering factors (ii), (iii), and (iv), it is readily apparent, indeed conceded by Haute Diggity Dog, that LVM's marks are distinctive, famous, and strong. The LOUIS VUITTON mark is well known and is commonly identified as a brand of the great Parisian fashion house, Louis Vuitton Malletier. So too are its other marks and designs, which are invariably used with the LOUIS VUITTON mark. It may not be too strong to refer to these famous marks as icons of high fashion.

[54] While the establishment of these facts satisfies essential elements of LVM's dilution claim, see 15 U.S.C.A. § 1125(c)(1), the facts impose on LVM an increased burden to demonstrate that the distinctiveness of its famous marks is likely to be impaired by a successful parody. Even as Haute Diggity Dog's parody mimics the famous mark, it communicates simultaneously that it is not the famous mark, but is only satirizing it. See PETA, 263 F.3d at 366. And because the famous mark is particularly strong and distinctive, it becomes more likely that a parody will not impair the distinctiveness of the mark. In short, as Haute Diggity Dog's "Chewy Vuiton" marks are a successful parody, we conclude that they will not blur the distinctiveness of the famous mark as a unique identifier of its source.

[55] It is important to note, however, that this might not be true if the parody is so similar to the famous mark that it likely could be construed as actual use of the famous mark itself. Factor (i) directs an inquiry into the "degree of similarity between the junior mark and the famous mark." If Haute Diggity Dog used the actual marks of LVM (as a parody or otherwise), it could dilute LVM's marks by blurring, regardless of whether Haute Diggity Dog's use was confusingly similar, whether it was in competition with LVM, or whether LVM sustained actual injury. See 15 U.S.C.A. § 1125(c)(1). Thus, "the use of DUPONT shoes, BUICK aspirin, and KODAK pianos would be actionable" under the TDRA because the unauthorized use of the famous marks themselves on unrelated goods might diminish the capacity of these trademarks to distinctively identify a single source. Moseley, 537 U.S. at 431 (quoting H.R.Rep. No. 104-374, at 3 (1995), as reprinted in 1995 U.S.C.C.A.N. 1029, 1030). This is true even though a consumer would be unlikely to confuse the manufacturer of KODAK film with the hypothetical producer of KODAK pianos.

[56] But in this case, Haute Diggity Dog mimicked the famous marks; it did not come so close to them as to destroy the success of its parody and, more importantly, to diminish the LVM marks' capacity to identify a single source. Haute Diggity Dog designed a pet chew toy to imitate and suggest, but not use, the marks of a high-fashion LOUIS VUITTON handbag. It used "Chewy Vuiton" to mimic "LOUIS VUITTON"; it used "CV" to mimic "LV"; and it adopted imperfectly the items of LVM's designs. We conclude that these uses by Haute Diggity Dog were not so similar as to be likely to impair the distinctiveness of LVM's famous marks.

[57] In a similar vein, when considering factors (v) and (vi), it becomes apparent that Haute Diggity Dog intentionally associated its marks, but only partially and certainly imperfectly, so as to convey the simultaneous message that it was not in fact a source of LVM products. Rather, as a parody, it separated itself from the LVM marks in order to make fun of them.

[58] In sum, when considering the relevant factors to determine whether blurring is likely to occur in this case, we readily come to the conclusion, as did the district court, that LVM has failed to make out a case of trademark dilution by blurring by failing to establish that the distinctiveness of its marks was likely to be impaired by Haute Diggity Dog's marketing and sale of its "Chewy Vuiton" products.

[59] LVM's claim for dilution by tarnishment does not require an extended discussion. To establish its claim for dilution by tarnishment, LVM must show, in lieu of blurring, that Haute Diggity Dog's use of the "Chewy Vuiton" mark on dog toys harms the reputation of the LOUIS VUITTON mark and LVM's other marks. LVM argues that the possibility that a dog could choke on a "Chewy Vuiton" toy causes this harm. LVM has, however, provided no record support for its assertion. It relies only on speculation about whether a dog could choke on the chew toys and a logical concession that a $10 dog toy made in China was of "inferior quality" to the $1190 LOUIS VUITTON handbag. The speculation begins with LVM's assertion in its brief that "defendant Woofie's admitted that 'Chewy Vuiton' products pose a choking hazard for some dogs. Having prejudged the defendant's mark to be a parody, the district court made light of this admission in its opinion, and utterly failed to give it the weight it deserved," citing to a page in the district court's opinion where the court states: At oral argument, plaintiff provided only a flimsy theory that a pet may some day choke on a Chewy Vuiton squeak toy and incite the wrath of a confused consumer against LOUIS VUITTON.

Louis Vuitton Malletier, 464 F.Supp.2d at 505. The court was referring to counsel's statement during oral argument that the owner of Woofie's stated that "she would not sell this product to certain types of dogs because there is a danger they would tear it open and choke on it." There is no record support, however, that any dog has choked on a pet chew toy, such as a "Chewy Vuiton" toy, or that there is any basis from which to conclude that a dog would likely choke on such a toy.

[60] We agree with the district court that LVM failed to demonstrate a claim for dilution by tarnishment. See Hormel Foods, 73 F.3d at 507. MPS Entm't, LLC v. Abercrombie & Fitch Stores, Inc. offers a good, quick, and perhaps memorable example of an expressive use case where the court did not trouble itself with any extended analysis of whether the parody at issue was successful or of the First Amendment aspects of the case. Instead, the court simply applied the multifactor test for the likelihood of consumer confusion and found no likelihood of confusion.

In February 2010, the clothing store Abercrombie & Fitch began selling a t-shirt (shown above on the left) bearing the phrase "The Fitchuation". The t-shirt referred to Michael Sorrentino, who starred as an antihero on the notorious reality television show of the time The Jersey Shore, whose nickname was "The Situation,"  and who wore without authorization Abercrombie & Fitch merchandise on the show (shown above on the right). Abercrombie & Fitch apparently feared that its brand would be tarnished by association with The Jersey Shore and Sorrentino. It had gone so far as to send a letter to MTV offering to pay up to $10,000 to cast members not to wear any clothing bearing its trademarks. The letter stated:

A & F obviously has not sought product placement on the show, and we believe that, since the character portrayed by Mr. Sorrentino is not brand appropriate, his display of A & F clothing could be misconstrued as an endorsement by him of our clothing or-worse-an endorsement by A & F of his wearing our clothing.

We have no interest at this point in pursuing any sort of legal action against MTV or the producers of "Jersey Shore." In fact, we would be willing to pay MTV or Mr. Sorrentino or other characters up to $10,000 NOT to wear any clothing bearing the "ABERCROMBIE & FITCH," "A & F," "FITCH," "MOOSE" or related trademarks. For additional episodes aired this season, we would appreciate it if you would ensure that our brands are pixilated or otherwise appropriately masked.

Id. at *2. Abercrombie & Fitch also issued a press release announcing its offer to the cast members of Jersey Shore and singled out Sorrentino by name: "We have therefore offered a substantial payment to Michael 'The Situation' Sorrentino and the producers of MTV's The Jersey Shore to have the character wear an alternate brand." Id. Apparently, Abercrombie & Fitch produced "The Fitchuation" t-shirt to mock and distance itself from Sorrentino. Meanwhile, Sorrentino, through the plaintiff, filed an application at the PTO to register the mark THE SITUATION for entertainment services and began selling t-shirts on his website displaying the words "The Situation" and "Official Situation Nation." Sorrentino sued Abercrombie & Fitch on the ground that "The Fitchuation" t-shirt and the press release violated his trademark rights. Granting Abercrombie & Fitch's motion for summary judgment, the court applied the Eleventh Circuit's multifactor test for the likelihood of consumer confusion to find that the t-shirt did not create a likelihood of confusion. As to the similarity of the marks factor, The target of A & F's parody is "The Situation." The t-shirt expresses "The Fitchuation" visually and phonetically different than "The Situation." There is no evidence of A & F "palming off" its t-shirt as that of the plaintiffs where, as here,  According to Wikipedia, "Sorrentino gained his nickname 'The Situation' when a girl complimented his abs while walking with her boyfriend on a beach in New Jersey. The girl's boyfriend was angered by her complimenting another guy, and Sorrentino's friend joked that his abs were causing a 'situation' between the couple." https://en.wikipedia.org/wiki/Michael_Sorrentino. the t-shirt has the A & F inside label and prominently uses A & F's own famous trademark "Fitch" as part of the parody.

Id. at *7. On the proximity of the goods or services, A & F's apparel goods are dissimilar to the plaintiffs' entertainment services. The plaintiffs concede that they did not offer apparel under a "Situation" mark until after A & F introduced "The Fitchuation" t-shirt. There is no evidence that the public attributes the parties' respective goods and services to the same single source.

Id. The court found in favor of the defendant on the intent and actual confusion factors as well.

As to the press release, the court found nominative fair use:

The Court finds that the use of Michael Sorrentino's name and nickname in the press release was a non-actionable fair use under trademark law. A & F used only so much of the plaintiff's name as was reasonably necessary to respond to his wearing A & F's brand on The Jersey Shore, and did not do anything that would suggest Sorrentino's sponsorship or endorsement. A & F's press release expressly disassociated Sorrentino from A & F, and the plaintiffs have conceded that no third party has expressed any confusion that the press release rejecting Sorrentino's image somehow suggested sponsorship or endorsement by Sorrentino.

Id. at *13. Do you think the court reached the right result in finding, on summary judgment, no likelihood of confusion?

The Rogers v. Grimaldi Test for Unauthorized "Artistic" Uses

In Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), Ginger Rogers (of the dance duo with Fred Astaire) sued the producers of the Federico Fellini film Ginger and Fred for using her name in the film's title. "The film tells the story of two fictional Italian cabaret performers, Pippo and Amelia, who, in their heyday, imitated Rogers and Astaire and became known in Italy as 'Ginger and Fred.' The film focuses on a televised reunion of Pippo and Amelia, many years after their retirement. Appellees describe the film as the bittersweet story of these two fictional dancers and as a satire of contemporary television variety shows." Id. at 996-97. The district court noted that "Rogers has submitted a market research survey dated July 1986 which reports that based on approximately 200 interviews in Boston and New York (Staten Island) 43% of those exposed to the Film's title only connected the Film with Rogers and that 27% of those exposed to the Film's advertisement connected the Film with Rogers." Rogers v. Grimaldi, 695 F. Supp. 112, 115 (S.D.N.Y. 1988). Nevertheless, the district court granted the defendants' motion for summary judgment and the Second Circuit affirmed.

In finding no violation of Rogers' Lanham Act § 43(a) rights, the Second Circuit sought to strike a balance between two competing policy objectives and in the process gave birth to the Rogers v. Grimaldi test:

We believe that in general the {Lanham} Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. In the context of allegedly misleading titles using a celebrity's name, that balance will normally not support application of the Act unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.

In the first opinion that follows, Gordon v. Drape Creative, 909 F.3d 257 (9th Cir. Nov. 20, 2018), we consider a controversial application of the Rogers test involving the meme "Honey Badger Don't Care." The Ninth Circuit had initially issued its opinion in Gordon in July 2018, but largely in response to an amicus brief filed by a group of intellectual property law professors, the court withdrew that opinion four months later and issued the opinion below, which represents a slight modification (too slight, some would say) of the previous opinion. Most previous applications of the Rogers test that are reviewed in Gordon were basically easy cases in which the defendant clearly should have prevailed. Gordon is significant because it presented a substantially harder set of facts, one involving a defendant arguably acting in bad faith and without artistic motive to misappropriate the plaintiff's trademark.

[1] Plaintiff Christopher Gordon is the creator of a popular YouTube video known for its catchphrases "Honey Badger Don't Care" and "Honey Badger Don't Give a S---." Gordon has trademarked the former phrase for various classes of goods, including greeting cards. Defendants Drape Creative, Inc. ("DCI"), and Papyrus-Recycled Greetings, Inc. ("PRG"), designed and produced greeting cards using both phrases with slight variations. Gordon brought this suit for trademark infringement, and the district court granted summary judgment for defendants, holding that Gordon's claims were barred by the test set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). [2] We use the Rogers test to balance the competing interests at stake when a trademark owner claims that an expressive work infringes on its trademark rights. The test construes the Lanham Act to apply to expressive works "only where the public interest in avoiding consumer confusion outweighs the public interest in free expression." Id. at 999. "[T]hat balance will normally not support application of the Act, unless the [use of the mark] has no artistic relevance to the underlying work whatsoever, or . . . explicitly misleads [consumers] as to the source or the content of the work." Id.

[3] The Rogers test is not an automatic safe harbor for any minimally expressive work that copies someone else's mark. Although on every prior occasion in which we have applied the test, we have found that it barred an infringement claim as a matter of law, this case presents a triable issue of fact. Defendants have not used Gordon's mark in the creation of a song, photograph, video game, or television show, but have largely just pasted Gordon's mark into their greeting cards. A jury could determine that this use of Gordon's mark is explicitly misleading as to the source or content of the cards. We therefore reverse the district court's grant of summary judgment and remand for further proceedings on Gordon's claims.

[4] Plaintiff Christopher Gordon is a comedian, writer, and actor, who commonly uses the name "Randall" as an alias on social media. Defendant DCI is a greeting-card design studio. DCI works exclusively with American Greetings Corporation and its subsidiaries, which include the other defendant in this case, PRG. PRG is a greeting-card manufacturer and distributor.

[5] In January 2011, under the name Randall, Gordon posted a video on YouTube titled The Crazy Nastyass Honey Badger, featuring National Geographic footage of a honey badger overlaid with Gordon's narration. In the video, Gordon repeats variations of the phrases "Honey Badger Don't Care" and "Honey Badger Don't Give a S---," as a honey badger hunts and eats its prey. The parties refer to these phrases as "HBDC" and "HBDGS," and we adopt their convention.

[6] Gordon's video quickly generated millions of views on YouTube and became the subject of numerous pop-culture references in television shows, magazines, and social media. As early as February 2011, Gordon began producing and selling goods with the HBDC or HBDGS phrases, such as books, wall calendars, t-shirts, costumes, plush toys, mouse pads, mugs, and decals. Some of the items were sold online; others were sold through national retailers such as Wal-Mart, Target, Urban Outfitters, and Hot Topic. In June 2011, Gordon copyrighted his video's narration under the title Honey Badger Don't Care, and in October 2011, he began filing trademark applications for the HBDC phrase for various classes of goods. The Patent and Trademark Office ("PTO") eventually registered "Honey Badger Don't Care" for International Classes 9 (audio books, etc.), 16 (greeting cards, etc.), 21 (mugs), 25 (clothing), and 28 (Christmas decorations, dolls, etc.). However, Gordon never registered the HBDGS phrase for any class of goods.

[7] At the peak of his popularity, Gordon promoted his brand on television and radio shows and in interviews with national publications such as Forbes, The Wall Street Journal, and The Huffington Post. His brand was further boosted by celebrities like Taylor Swift and Anderson Cooper quoting his video and by LSU football players tagging their teammate, Heisman Trophy finalist Tyrann Mathieu, with the moniker "Honey Badger" for his aggressive defensive play. In November 2011, Advertising Age referred to Gordon's brand as one of "America's Hottest Brands" in an article titled "Hot Brand? Honey Badger Don't Care." B [8] In January 2012, Gordon hired Paul Leonhardt to serve as his licensing agent. Soon thereafter, Leonhardt contacted Janice Ross at American Greetings-the parent company of defendant PRG-to discuss licensing honey-badger themed greeting cards. Leonhardt and Ross had multiple email exchanges and conversations over several weeks. Ross at one point expressed some interest in a licensing agreement, stating: "I think it's a really fun and irreverent property and would love to see if there's an opportunity on one of our distribution platforms. But in order to do that, I need to get some key colleagues of mine on board the Crazy Honey Badger Bandwagon." Nevertheless, neither American Greetings nor defendants ever signed a licensing agreement with Gordon.

[9] Leonhardt did eventually secure several licensing deals for Gordon. Between May and October 2012, Gordon's company-Randall's Honey Badger, LLC ("RHB")-entered into licensing agreements with Zazzle, Inc., and The Duck Company for various honey-badger themed products, including greeting cards. RHB also entered into licensing agreements with other companies for honey-badger costumes, toys, t-shirts, sweatshirts, posters, and decals, among other things. HBDC and HBDGS were the two most common phrases used on these licensed products. For example, two of Zazzle's best-selling honey-badger greeting cards stated on their front covers "Honey Badger Don't Care About Your Birthday." [10] At the same time that Gordon was negotiating licensing agreements with Zazzle and Duck, defendants began developing their own line of unlicensed honey-badger greeting cards. Beginning in June 2012, defendants sold seven different greeting cards using the HBDC or HBDGS phrases with small variations:

• The fronts of two "Election Cards" showed a picture of a honey badger wearing a patriotic hat and stated "The Election's Coming." The inside of one card said "Me and Honey Badger don't give a $#%@! Happy Birthday," and the inside of the other said "Honey Badger and me just don't care. Happy Birthday."

• The fronts of two "Birthday Cards" featured different pictures of a honey badger and stated either "It's Your Birthday!" or "Honey Badger Heard It's Your Birthday." The inside of both cards said "Honey Badger Don't Give a S---."

• The fronts of two "Halloween Cards" showed a picture of a honey badger next to a jack-o-lantern and stated "Halloween is Here." The inside of the cards said either "Honey Badger don't give a $#*%!" or "Honey Badger don't give a s---."

• A "Critter Card" employed a Twitter-style format showing a series of messages from "Honey Badger@don'tgiveas---." The front stated "Just killed a cobra. Don't give a s---"; "Just ate a scorpion. Don't give a s---"; and "Rolling in fire ants. Don't give a s---." 3 The inside said "Your Birthday's here. . . I give a s---." [11] The back cover of each card displayed the mark for "Recycled Paper Greetings" and listed the websites www.DCIStudios.com and www.prgreetings.com. DCI's President testified that he drafted all of the cards in question but could not recall what inspired the cards' designs. He claimed to have never heard of a video involving a honey badger. 3 Gordon's video refers to a honey badger getting stung by bees and eating a cobra-e.g., "Now look, here's a house full of bees. You think the honey badger cares? It doesn't give a s---. . . . But look the honey badger doesn't care, it's getting stung like a thousand times. It doesn't give a s---. . . . Look! Here comes a fierce battle between a king cobra and a honey badger. . . . And of course, what does a honey badger have to eat for the next few weeks? Cobra."

[12] In June 2015, Gordon filed this suit against DCI and PRG, alleging trademark infringement under the Lanham Act, among other claims. The district court granted summary judgment for defendants, holding that defendants' greeting cards were expressive works, and applying the Rogers test to bar all of Gordon's claims. Gordon timely appealed. II . . . . 5[13] In general, we apply a "likelihood-of-confusion test" to claims brought under the Lanham Act. [14] That said, where artistic expression is at issue, we have expressed concern that "the traditional test fails to account for the full weight of the public's interest in free expression." Id. The owner of a trademark "does not have the right to control public discourse" by enforcing his mark. Id. We have adopted the Second Circuit's Rogers test to strike an appropriate balance between First Amendment interests in protecting artistic expression and the Lanham Act's purposes to secure trademarks rights. Under Rogers, we read the Act "to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression." Id. at 901 (quoting Rogers, 875 F.2d at 999). More concretely, we apply the Act to an expressive work only if the defendant's use of the mark is (1) not artistically relevant to the work or (2) explicitly misleads consumers as to the source or the content of the work. See id. at 902. Effectively, Rogers employs the First Amendment as a rule of construction to avoid conflict between the Constitution and the Lanham Act.

[15] We pause here to clarify the burden of proof under the Rogers test. The Rogers test requires the defendant to make a threshold legal showing that its allegedly infringing use is part of an expressive work protected by the First Amendment. If the defendant successfully makes that threshold showing, then the plaintiff claiming trademark infringement bears a heightened burden-the plaintiff must satisfy not only the likelihood-of-confusion test but also at least one of Rogers's two prongs. Cf. Makaeff v. Trump Univ., LLC, 715 F.3d 254, 261 (9th Cir. 2013) (if a defendant meets its "initial burden" of showing a First Amendment interest, then a public-figure plaintiff claiming defamation must meet a "heightened standard of proof" requiring a showing of "actual malice"). That is, when the defendant demonstrates that First Amendment interests are at stake, the plaintiff claiming infringement must show (1) that it has a valid, protectable trademark, and (2) that the mark is either not artistically relevant to the underlying work or explicitly misleading consumers as to the source or content of the work. If the plaintiff satisfies both elements, it still must prove that its trademark has been infringed by showing that the defendant's use of the mark is likely to cause confusion. 7[16] . . . . When, as here, the defendant moves for summary judgment and has demonstrated that its use of the plaintiff's mark is part of an expressive work, the burden shifts to the plaintiff to raise a genuine dispute as to at least one of Rogers's two prongs. In other words, to evade summary judgment, the plaintiff must show a triable issue of fact as to whether the mark is artistically relevant to the underlying work or explicitly misleads consumers as to the source or content of the work.

[17] Before applying the Rogers test to the instant case, we briefly review the test's origin in the Second Circuit and development in our court. 8 We have applied the Rogers test on five separate occasions, and each time we have concluded that it barred the trademark infringement-claim as a matter of law. Three of those cases, like Rogers, involved the use of a trademark in the title of an expressive work. Two cases involved trademarks in video games and extended the Rogers test to the use of a trademark in the body of an expressive work.

[18] The Rogers case concerned the movie Ginger and Fred, a story of two fictional Italian cabaret performers who imitated the famed Hollywood duo of Ginger Rogers and Fred Astaire. 875 F.2d at 996-97. Rogers sued the film's producers under the Lanham Act, alleging that the film's title gave the false impression that the film-created and directed by well-known filmmaker Federico Fellini-was about her or sponsored by her. Id. at 997. The district court, however, granted summary judgment for the defendant film producers. Id.

[19] On appeal, the Second Circuit recognized that, "[t]hough First Amendment concerns do not insulate titles of artistic works from all Lanham Act claims, such concerns must nonetheless inform our consideration of the scope of the Act as applied to claims involving such titles." Id. at 998. The court said it would construe the Lanham Act "to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression." Id. at 999. Refining its inquiry, the court further held that, "[i]n the context of allegedly misleading titles using a celebrity's name, that balance will normally not support application of the Act unless [1] the title has no artistic relevance to the underlying work whatsoever, or, [2] if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work." Id.

[20] With respect to artistic relevance, the Second Circuit found that the names "Ginger" and "Fred" were "not arbitrarily chosen just to exploit the publicity value of their real life counterparts" but had "genuine relevance to the film's story." Id. at 1001. The film's title was "truthful as to its content" and conveyed "an ironic meaning that [was] relevant to the film's content." Id. On the second prong of its inquiry, the court held that the title was not explicitly misleading because it "contain[ed] no explicit indication that Rogers endorsed the film or had a role in producing it." Id. Any risk that the title would mislead consumers was "outweighed by the danger that suppressing an artistically relevant though ambiguous title will unduly restrict expression." Id. The Second Circuit therefore affirmed summary judgment for the defendant film producers. Id. at 1005. B [21] We first employed the Rogers test in MCA Records, 296 F.3d 894, which concerned the song "Barbie Girl" by the Danish band Aqua. The song-which lampooned the values and lifestyle that the songwriter associated with Barbie dolls-involved one band-member impersonating Barbie and singing in a high-pitched, doll-like voice. Id. at 899. Mattel, the manufacturer of Barbie dolls, sued the producers and distributors of "Barbie Girl" for infringement under the Lanham Act, and the district court granted summary judgment for the defendants. Id. Applying the Rogers test, we affirmed. Id. at 902. We held that the use of the Barbie mark in the song's title was artistically relevant to the underlying work because the song was "about Barbie and the values Aqua claims she represents." Id. In addition, the song "d[id] not, explicitly or otherwise, suggest that it was produced by Mattel." Id. "The only indication that Mattel might be associated with the song [was] the use of Barbie in the title," and if the use of the mark alone were enough to satisfy Rogers's second prong, "it would render Rogers a nullity." Id. Because the Barbie mark was artistically relevant to the song and not explicitly misleading, we concluded that the band could not be held liable for infringement. [22] We applied the Rogers test to another suit involving Barbie in Walking Mountain Prods., 353 F.3d 792. There, photographer Thomas Forsythe developed a series of photographs titled "Food Chain Barbie" depicting Barbie dolls or parts of Barbie dolls in absurd positions, often involving kitchen appliances. Id. at 796. Forsythe described the photographs as critiquing "the objectification of women associated with [Barbie]." Id. Mattel claimed that the photos infringed its trademark and trade dress, but we affirmed summary judgment for Forsythe because "[a]pplication of the Rogers test here leads to the same result as it did in MCA." Id. at 807. Forsythe's use of the Barbie mark was artistically relevant to his work because his photographs depicted Barbie and targeted the doll with a parodic message. Id. Moreover, apart from Forsythe's use of the mark, there was no indication that Mattel in any way created or sponsored the photographs. Id. [23] Most recently, we applied the Rogers test in Twentieth Century Fox Television, 875 F.3d 1192. Twentieth Century Fox produced the television show Empire, which revolved around a fictional hip-hop record label named "Empire Enterprises." Id. at 1195. Empire Distribution, an actual hip-hop record label, sent Twentieth Century Fox a cease-and-desist letter, and Twentieth Century Fox sued for a declaratory judgment that its show did not violate Empire's trademark rights. Id. In affirming summary judgment for Twentieth Century Fox, we rejected Empire's argument that "the Rogers test includes a threshold requirement that a mark have attained a meaning beyond its source-identifying function." 9 Id. at 1197. Whether a mark conveys a meaning beyond identifying a product's source is not a threshold requirement but only a relevant consideration: "trademarks that transcend their identifying purpose are more likely to be used in artistically relevant ways," but such transcendence is not necessary to trigger First Amendment protection. Id. at 1198 (quotation marks and citation omitted).

[24] We concluded that Empire could not satisfy Rogers's first prong because Twentieth Century Fox "used the common English word 'Empire' for artistically relevant reasons," namely, that the show's setting was New York (the Empire State) and its subject matter was an entertainment conglomerate (a figurative empire). Id. Finally, we resisted Empire's efforts to conflate the likelihood-of-confusion test with Rogers's second prong. To satisfy that prong, it is not enough to show that "the defendant's use of the mark would confuse consumers as to the source, sponsorship or content of the work;" rather, the plaintiff must show that the defendant's use "explicitly misl[ed] consumers." Id. at 1199. Because Twentieth Century Fox's Empire show contained "no overt claims or explicit references to Empire Distribution," we found that Empire could not satisfy Rogers's second prong. Id. Empire's inability to satisfy either of Rogers's two prongs meant that it could not prevail on its infringement claim. [26] We recognized that the Rogers test was developed in a case involving a title, and adopted by our court in a similar case, but we could find "no principled reason why it ought not also apply to the use of a trademark in the body of the work." Id. at 1099. With respect to Rogers's first prong, we explained that "[t]he level of relevance merely must be above zero" and the Pig Pen met this threshold by being relevant to Rockstar's artistic goal of creating "a cartoon-style parody of East Los Angeles." Id. at 1100. On the second prong, we concluded that the game did not explicitly mislead as to the source of the mark and would not "confuse its players into thinking that the Play Pen is somehow behind the Pig Pen or that it sponsors Rockstar's product. . . . A reasonable consumer would not think a company that owns one strip club in East Los Angeles . . . also produces a technologically sophisticated video game." Id. at 1100-01. Because ESS Entertainment 2000 could not demonstrate either of Rogers's two prongs, we affirmed summary judgment for Rockstar.

[27] Another video-game case dealt with the Madden NFL series produced by Electronic Arts, Inc. ("EA"). Brown v. Elec. Arts, Inc., 724 F.3d 1235 (9th Cir. 2013). Legendary football player Jim Brown alleged that EA violated § 43(a) of the Lanham Act by using his likeness in its games. Id. at 1238-39. The district court granted EA's motion to dismiss, and we affirmed. Id. at 1239. We reiterated E.S.S.'s holding that the level of artistic relevance under Rogers's first prong need only exceed zero and found it was "obvious that Brown's likeness ha [d] at least some artistic relevance to EA's work." Id. at 1243. We also found that Brown had not alleged facts that would satisfy Rogers's second prong: "EA did not produce a game called Jim Brown Presents Pinball with no relation to Jim Brown or football beyond the title; it produced a football game featuring likenesses of thousands of current and former NFL players, including Brown." Id. at 1244. We asked "whether the use of Brown's likeness would confuse Madden NFL players into thinking that Brown is somehow behind the games or that he sponsors EA's product," and held that it would not. Id. at 1245-47 (alterations omitted). As in E.S.S., the plaintiff could not satisfy either of Rogers's two prongs, and judgment for the defendant was proper.

[28] In each of the cases coming before our court, the evidence was such that no reasonable jury could have found for the plaintiff on either prong of the Rogers test, and we therefore concluded that the plaintiff's Lanham Act claim failed as a matter of law. This case, however, demonstrates Rogers's outer limits. Although defendants' greeting cards are expressive works to which Rogers applies, there remains a genuine issue of material fact as to Rogers's second prong-i.e., whether defendants' use of Gordon's mark in their greeting cards is explicitly misleading.

[29] As a threshold matter, we have little difficulty determining that defendants have met their initial burden of demonstrating that their greeting cards are expressive works protected under the First Amendment. As we have previously observed, "[a greeting] card certainly evinces '[a]n intent to convey a particularized message . . . , and in the surrounding circumstances the likelihood was great that the message would be understood by those who viewed it.'" Hilton v. Hallmark Cards, 599 F.3d 894, 904 (9th Cir. 2010) (quoting Spence v. Washington, 418 U.S. 405, 410-11, 94 S.Ct. 2727, 41 L.Ed.2d 842 (1974) (per curiam) ); see also Roth Greeting Cards v. United Card Co., 429 F.2d 1106, 1110 (9th Cir. 1970) (plaintiff's greeting cards, considered as a whole, "represent[ed] a tangible expression of an idea" and hence were copyrightable). Each of defendants' cards relies on graphics and text to convey a humorous message through the juxtaposition of an event of some significance-a birthday, Halloween, an election-with the honey badger's aggressive assertion of apathy. Although the cards may not share the creative artistry of Charles Schulz or Sandra Boynton, the First Amendment protects expressive works "[e]ven if [they are] not the expressive equal of Anna Karenina or Citizen Kane." Brown, 724 F.3d at 1241. Because defendants have met their initial burden, the burden shifts to Gordon to raise a triable issue of fact as to at least one of Rogers's two prongs.

[30] Rogers's first prong requires proof that defendants' use of Gordon's mark was not "artistically relevant" to defendants' greeting cards. We have said that "the level of artistic relevance of the trademark or other identifying material to the work merely must be above zero." Id. at 1243 (internal alterations omitted) (quoting E.S.S., 547 F.3d at 1100). Indeed, "even the slightest artistic relevance" will suffice; courts and juries should not have to engage in extensive "artistic analysis." Id. at 1243, 1245; see Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251, 23 S.Ct. 298, 47 L. Ed. 460 (1903) ("It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits.").

[31] Gordon's mark is certainly relevant to defendants' greeting cards; the phrase is the punchline on which the cards' humor turns. In six of the seven cards, the front cover sets up an expectation that an event will be treated as important, and the inside of the card dispels that expectation with either the HBDC or HBDGS phrase. The last card, the "Critter Card," operates in reverse: the front cover uses variations of the HBDGS phrase to establish an apathetic tone, while the inside conveys that the card's sender actually cares about the recipient's birthday. We thus conclude that Gordon has not raised a triable issue of fact with respect to Rogers's "artistic relevance" prong.

[32] Even if the use of the mark is artistically relevant to the work, the creator of the work can be liable under the Lanham Act if the creator's use of the mark is "explicitly misleading as to source or content." Rogers, 875 F.2d at 999. "This second prong of the Rogers test 'points directly at the purpose of trademark law, namely to avoid confusion in the marketplace by allowing a trademark owner to prevent others from duping consumers into buying a product they mistakenly believe is sponsored [or created] by the trademark owner.'" Brown, 724 F.3d at 1245 (quoting E.S.S., 547 F.3d at 1100). The "key here [is] that the creator must explicitly mislead consumers," and we accordingly focus on "the nature of the [junior user's] behavior" rather than on "the impact of the use." Id. at 1245-46.

[33] In applying this prong, however, we must remain mindful of the purpose of the Rogers test, which is to balance "the public interest in avoiding consumer confusion" against "the public interest in free expression." Rogers, 875 F.2d at 999. This is not a mechanical test-"all of the relevant facts and circumstances" must be considered. Id. at 1000 n.6. We therefore reject the district court's rigid requirement that, to be explicitly misleading, the defendant must make an "affirmative statement of the plaintiff's sponsorship or endorsement." Such a statement may be sufficient to show that the use of a mark is explicitly misleading, but it is not a prerequisite. See 2 MCCARTHY § 10:17.10 (noting that Rogers's second prong does not hinge on the junior user "falsely assert[ing] that there is an affiliation"). In some instances, the use of a mark alone may explicitly mislead consumers about a product's source if consumers would ordinarily identify the source by the mark itself. If an artist pastes Disney's trademark at the bottom corner of a painting that depicts Mickey Mouse, the use of Disney's mark, while arguably relevant to the subject of the painting, could explicitly mislead consumers that Disney created or authorized the painting, even if those words do not appear alongside the mark itself.

[34] To be sure, we have repeatedly observed that "the mere use of a trademark alone cannot suffice to make such use explicitly misleading." E.S.S., 547 F.3d at 1100 (citing MCA Records, 296 F.3d at 902). But each time we have made this observation, it was clear that consumers would not view the mark alone as identifying the source of the artistic work. No one would think that a song or a photograph titled "Barbie" was created by Mattel, because consumers "do not expect [titles] to identify" the "origin" of the work. MCA Records, 296 F.3d at 902. Nor would anyone "think a company that owns one strip club in East Los Angeles . . . also produces a technologically sophisticated video game." E.S.S., 547 F.3d at 1100-01. But this reasoning does not extend to instances in which consumers would expect the use of a mark alone to identify the source.

[35] A more relevant consideration is the degree to which the junior user uses the mark in the same way as the senior user. In the cases in which we have applied the Rogers test, the junior user has employed the mark in a different context-often in an entirely different market-than the senior user. In MCA Records and Walking Mountain, for example, Mattel's Barbie mark was used in a song and a series of photos. In E.S.S., the mark of a strip club was used in a video game. And in Twentieth Century Fox, the mark of a record label was used in a television show. In each of these cases, the senior user and junior user used the mark in different ways. This disparate use of the mark was at most "only suggestive" of the product's source and therefore did not outweigh the junior user's First Amendment interests. Rogers, 875 F.2d at 1000.

[36] But had the junior user in these cases used the mark in the same way as the senior user-had Twentieth Century Fox titled its new show Law & Order: Special Hip-Hop Unit 10 such identical usage could reflect the type of "explicitly misleading description" of source that Rogers condemns. 875 F.2d at 999-1000. Rogers itself makes this point by noting that "misleading titles that are confusingly similar to other titles" can be explicitly misleading, regardless of artistic relevance. Id. at 999 n.5 (emphasis added). Indeed, the potential for explicitly misleading usage is especially strong when the senior user and the junior user both use the mark in similar artistic expressions. Were we to reflexively apply Rogers's second prong in this circumstance, an artist who uses a trademark to identify the source of his or her product would be at a significant disadvantage in warding off infringement by another artist, merely because the product being created by the other artist is also "art." That would turn trademark law on its head.

[37] A second consideration relevant to the "explicitly misleading" inquiry is the extent to which the junior user has added his or her own expressive content to the work beyond the mark itself. As Rogers explains, the concern that consumers will not be "misled as to the source of [a] product" is generally allayed when the mark is used as only one component of a junior user's larger expressive creation, such that the use of the mark at most "implicitly suggest[s]" that the product is associated with the mark's owner. Id. at 998-99; see 6 MCCARTHY § 31:144.50 ("[T]he deception or confusion must be relatively obvious and express, not subtle and implied."). But using a mark as the centerpiece of an expressive work itself, unadorned with any artistic contribution by the junior user, may reflect nothing more than an effort to "induce the sale of goods or services" by confusion or "lessen[ ] the distinctiveness and thus the commercial value of" a competitor's mark. S.F. Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 539, 107 S.Ct. 2971, 97 L. Ed.2d 427 (1987).

[38] Our cases support this approach. In cases involving the use of a mark in the title of an expressive work-such as the title of a movie (Rogers), a song (MCA Records), a photograph (Walking Mountain), or a television show (Twentieth Century Fox)-the mark obviously served as only one "element of the [work] and the [junior user's] artistic expressions." Rogers, 875 F.2d at 1001. Likewise, in the cases extending Rogers to instances in which a mark was incorporated into the body of an expressive work, we made clear that the mark served as only one component of the larger expressive work. In E.S.S., the use of the Pig Pen strip club was "quite incidental to the overall story" of the video game, such that it was not the game's "main selling point." 547 F.3d at 1100-01. And in Brown, Jim Brown was one of "thousands of current and former NFL players" appearing in the game, and nothing on the face of the game explicitly engendered consumer misunderstanding. 724 F.3d at 1244-46. Indeed, EA altered Brown's likeness in certain versions of the game, an artistic spin that "made consumers less likely to believe that Brown was involved." Id. at 1246-47.

[39] In this case, we cannot decide as a matter of law that defendants' use of Gordon's mark was not explicitly misleading. There is at least a triable issue of fact as to whether defendants simply used Gordon's mark with minimal artistic expression of their own, and used it in the same way that Gordon was using it-to identify the source of humorous greeting cards in which the bottom line is "Honey Badger don't care." Gordon has introduced evidence that he sold greeting cards and other merchandise with his mark; that in at least some of defendants' cards, Gordon's mark was used without any other text; and that defendants used the mark knowing that consumers rely on marks on the inside of cards to identify their source. Gordon's evidence is not bulletproof; for example, defendants' cards generally use a slight variation of the HBDGS phrase, and they list defendants' website on the back cover. But a jury could conclude that defendants' use of Gordon's mark on one or more of their cards is "explicitly misleading as to [their] source." Rogers, 875 F.2d at 999.

[40] Because we resolve the first Rogers prong against Gordon as a matter of law, a jury may find for Gordon only if he proves by a preponderance of the evidence that defendants' use of his mark is explicitly misleading as to the source or content of the cards.foot_6

[41] For the foregoing reasons, we REVERSE and REMAND to the district court for further proceedings consistent with this opinion.

1. Do the trademarks in Gordon deserve protection? The protectability of Gordon's mark was never seriously in question in the case, but as a policy matter, are you persuaded that HONEY BADGER DON'T CARE should qualify as a protectable trademark for greeting cards?

2. Rogers' second prong. Much of the controversy surrounding the Gordon opinion is focused on its treatment of the second prong of the Rogers test, going to whether the defendant's conduct "explicitly misleads as to the source . . . of the work." Previous case law had adopted an exceedingly defendant-friendly approach to this prong. For example, in Brown v. Electronic Arts, 724 F.3d 1235 (9th Cir. 2013), the case involving the video game maker's use of Jim Brown's likeness, the Ninth Circuit explained that even persuasive survey evidence showing consumer confusion would not be enough to satisfy the prong:

The test requires that the use be explicitly misleading to consumers. To be relevant, evidence must relate to the nature of the behavior of the identifying material's user, not the impact of the use. Even if Brown could offer a survey demonstrating that consumers of the Madden NFL series believed that Brown endorsed the game, that would not support the claim that the use was explicitly misleading to consumers.

Id. at 1245-46 (emphasis in original). Gordon significantly modifies Rogers' second prong by adding two "consideration[s]", first, whether "the junior user uses the mark in the same way as the senior user," and second, "the extent to which the junior user has added his or her own expressive content to the work beyond the mark itself." If persuasive survey evidence showing consumer confusion is not enough to satisfy the "explicitly misleading" standard, then why would the defendant's use "in the same way" or in a non-additive manner satisfy the standard? Do these considerations address the question of whether the defendant's conduct explicitly misleads or are they ultimately concerned with other goals? Keep in mind that the Rogers test was originally designed as a balancing test intended to determine when "the public interest in avoiding consumer confusion outweighs the public interest in free expression." Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989).

3. The Rogers test and merchandising uses by the defendant. In Twentieth Century Fox Television v. Empire Distrib., Inc., 875 F.3d 1192 (9th Cir. 2017), the plaintiff Empire Distribution was a "well-known and respected record label that records and releases albums in the urban music genre." Id. at 1195. Not mentioned in Gordon's review of Empire was the fact that "Fox has also promoted the Empire show and its associated music through live musical performances, radio play, and consumer goods such as shirts and champagne glasses bearing the show's 'Empire' brand." Id. Empire Distribution asserted that this conduct should not be protected by Rogers. The Ninth Circuit disagreed:

Although it is true that these promotional efforts technically fall outside the title or body of an expressive work, it requires only a minor logical extension of the reasoning of Rogers to hold that works protected under its test may be advertised and marketed by name, and we so hold. Indeed, the Rogers case itself concerned both a movie with an allegedly infringing title and its advertising and promotion, although the majority opinion did not deal separately with the latter aspect. See Rogers, 875 F.2d at 1005 (Griesa, J., concurring in the judgment). The balance of First Amendment interests struck in Rogers and Mattel could be destabilized if the titles of expressive works were protected but could not be used to promote those works. In response, Empire Distribution raises the specter of a pretextual expressive work meant only to disguise a business profiting from another's trademark, but the record in this case makes clear that the Empire show is no such thing. Fox's promotional activities, including those that generate revenue, are auxiliary to the television show and music releases, which lie at the heart of its "Empire" brand.

Is this reasoning persuasive? Should Fox be allowed to sell music from its show under "its 'Empire' brand"? 4. Video games and trademark rights. Game designers seeking to accurately simulate nonvirtual reality face significant challenges as this reality consists more and more of valuable intellectual properties, whether they take the form of public advertisements incorporating trademarks, distinctive product designs, well-known human personalities, or other embodiments. A number of trademark cases have sought, not always consistently, to determine when the unauthorized simulation of a trademark-or purported trademarkconstitutes infringement. Justice Kagan delivered the opinion of the Court.

[1] This case is about dog toys and whiskey, two items seldom appearing in the same sentence. Respondent VIP Products makes a squeaky, chewable dog toy designed to look like a bottle of Jack Daniel's whiskey. Though not entirely. On the toy, for example, the words "Jack Daniel's" become "Bad Spaniels." And the descriptive phrase "Old No. 7 Brand Tennessee Sour Mash Whiskey" turns into "The Old No. 2 On Your Tennessee Carpet." The jokes did not impress petitioner Jack Daniel's Properties. It owns trademarks in the distinctive Jack Daniel's bottle and in many of the words and graphics on the label. And it believed Bad Spaniels had both infringed and diluted those trademarks. Bad Spaniels had infringed the marks, the argument ran, by leading consumers to think that Jack Daniel's had created, or was otherwise responsible for, the dog toy. And Bad Spaniels had diluted the marks, the argument went on, by associating the famed whiskey with, well, dog excrement.

[2] The Court of Appeals, in the decision we review, saw things differently. Though the federal trademark statute makes infringement turn on the likelihood of consumer confusion, the Court of Appeals never got to that issue. On the court's view, the First Amendment compels a stringent threshold test when an infringement suit challenges a so-called expressive work-here (so said the court), the Bad Spaniels toy. And that test knocked out Jack Daniel's claim, whatever the likelihood of confusion. Likewise, Jack's dilution claim failed-though on that issue the problem was statutory. The trademark law provides that the "noncommercial" use of a mark cannot count as dilution. 15 U. S. C. §1125(c)(3)(C). The Bad Spaniels marks, the court held, fell within that exemption because the toy communicated a message-a kind of parody-about Jack Daniel's.

[3] Today, we reject both conclusions. The infringement issue is the more substantial. In addressing it, we do not decide whether the threshold inquiry applied in the Court of Appeals is ever warranted. We hold only that it is not appropriate when the accused infringer has used a trademark to designate the source of its own goods-in other words, has used a trademark as a trademark. That kind of use falls within the heartland of trademark law, and does not receive special First Amendment protection. The dilution issue is more simply addressed. The use of a mark does not count as noncommercial just because it parodies, or otherwise comments on, another's products. I A [4] Start at square 1, with what a trademark is and does. The Lanham Act, the core federal trademark statute, defines a trademark as follows: "[A]ny word, name, symbol, or device, or any combination thereof " that a person uses "to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods." §1127. The first part of that definition, identifying the kind of things covered, is broad: It encompasses words (think "Google"), graphic designs (Nike's swoosh), and so-called trade dress, the overall appearance of a product and its packaging (a Hershey's Kiss, in its silver wrapper). See Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U. S. 205, 209-210 (2000). The second part of the definition describes every trademark's "primary" function: "to identify the origin or ownership of the article to which it is affixed." Hanover Star Milling Co. v. Metcalf, 240 U. S. 403, 412 (1916). Trademarks can of course do other things: catch a consumer's eye, appeal to his fancies, and convey every manner of message. But whatever else it may do, a trademark is not a trademark unless it identifies a product's source (this is a Nike) and distinguishes that source from others (not any other sneaker brand). See generally 1 J. McCarthy, Trademarks and Unfair Competition §3:1 (5th ed. 2023). In other words, a mark tells the public who is responsible for a product.

[5] In serving that function, trademarks benefit consumers and producers alike. A source-identifying mark enables customers to select "the goods and services that they wish to purchase, as well as those they want to avoid." Matal v. Tam, 582 U. S. 218, 224 (2017). The mark "quickly and easily assures a potential customer that this item-the item with this mark-is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past." Qualitex Co. v. Jacobson Products Co., 514 U. S. 159, 164 (1995). And because that is so, the producer of a quality product may derive significant value from its marks. They ensure that the producer itself-and not some "imitating competitor"-will reap the financial rewards associated with the product's good reputation. Ibid.

[6] To help protect marks, the Lanham Act sets up a voluntary registration system. Any mark owner may apply to the Patent and Trademark Office to get its mark placed on a federal register. Consistent with trademark law's basic purpose, the lead criterion for registration is that the mark "in fact serve as a 'trademark' to identify and distinguish goods." 3 McCarthy §19:10 (listing the principal register's eligibility standards). If it does, and the statute's other criteria also are met, the registering trademark owner receives certain benefits, useful in infringement litigation. See, e.g., Iancu v. Brunetti, 588 U. S. ___, ___, 139 S. Ct. 2294 (2019) (slip op., at 2) (noting that "registration constitutes 'prima facie evidence' of the mark's validity"). But the owner of even an unregistered trademark can "use [the mark] in commerce and enforce it against infringers." Ibid.

[7] The Lanham Act also creates a federal cause of action for trademark infringement. In the typical case, the owner of a mark sues someone using a mark that closely resembles its own. The court must decide whether the defendant's use is "likely to cause confusion, or to cause mistake, or to deceive." § §1114(1)(a), 1125(a)(1)(A). The "keystone" in that statutory standard is "likelihood of confusion." See 4 McCarthy §23:1. And the single type of confusion most commonly in trademark law's sights is confusion "about the source of a product or service." Moseley v. V Secret Catalogue, Inc., 537 U. S. 418, 428, 123 S. Ct. 1115, 155 L. Ed. 2d 1 (2003); see 4 McCarthy §23:5. Confusion as to source is the bête noire of trademark lawthe thing that stands directly opposed to the law's twin goals of facilitating consumers' choice and protecting producers' good will.

[8] Finally, the Lanham Act creates a cause of action for the dilution of famous marks, which can succeed without likelihood of confusion. See §1125(c); Moseley, 537 U. S., at 431. A famous mark is one "widely recognized" by the public as "designati[ng the] source" of the mark owner's goods. §1125(c)(2)(A). Dilution of such a mark can occur "by tarnishment" (as well as by "blurring," not relevant here). §1125(c)(1). As the statute describes the idea, an "association arising from the similarity between" two marks-one of them famous-may "harm[ ] the reputation of the famous mark," and thus make the other mark's owner liable.

§1125(c)(2)(C). But there are "[e]xclusions"-categories of activity not "actionable as dilution." §1125(c)(3). One exclusion protects any "noncommercial use of a mark." §1125(c)(3)(C). Another protects a "fair use" of a mark "in connection with . . . parodying, criticizing, or commenting upon the famous mark owner or [its] goods." §1125(c)(3)(A)(ii). The fair-use exclusion, though, comes with a caveat. A defendant cannot get its benefit-even if engaging in parody, criticism, or commentary-when using the similar-looking mark "as a designation of source for the [defendant's] own goods." §1125(c)(3)(A). In other words, the exclusion does not apply if the defendant uses the similar mark as a mark. B [9] A bottle of Jack Daniel's-no, Jack Daniel's Old No. 7 Tennessee Sour Mash Whiskeyboasts a fair number of trademarks. Recall what the bottle looks like (or better yet, retrieve a bottle from wherever you keep liquor; it's probably there):

[10] "Jack Daniel's" is a registered trademark, as is "Old No. 7." So too the arched Jack Daniel's logo. And the stylized label with filigree (i.e., twirling white lines). Finally, what might be thought of as the platform for all those marks-the whiskey's distinctive square bottleis itself registered. [11] VIP is a dog toy company, making and selling a product line of chewable rubber toys that it calls "Silly Squeakers." (Yes, they squeak when bitten.) Most of the toys in the line are designed to look like-and to parody-popular beverage brands. There are, to take a sampling, Dos Perros (cf. Dos Equis), Smella Arpaw (cf. Stella Artois), and Doggie Walker (cf. Johnnie Walker). VIP has registered trademarks in all those names, as in the umbrella term "Silly Squeakers."

[12] In 2014, VIP added the Bad Spaniels toy to the line. VIP did not apply to register the name, or any other feature of, Bad Spaniels. But according to its complaint (further addressed below), VIP both "own[s]" and "use[s]" the "'Bad Spaniels' trademark and trade dress." App. 3, 11; see infra, at 8, 17. And Bad Spaniels' trade dress, like the dress of many Silly Squeakers toys, is designed to evoke a distinctive beverage bottle-with-label. Even if you didn't already know, you'd probably not have much trouble identifying which one.

[13] Bad Spaniels is about the same size and shape as an ordinary bottle of Jack Daniel's. The faux bottle, like the original, has a black label with stylized white text and a white filigreed border. The words "Bad Spaniels" replace "Jack Daniel's" in a like font and arch. Above the arch is an image of a spaniel. (This is a dog toy, after all.) Below the arch, "The Old No. 2 On Your Tennessee Carpet" replaces "Old No. 7 Tennessee Sour Mash Whiskey" in similar graphic form. The small print at the bottom substitutes "43% poo by vol." and "100% smelly" for "40% alc. by vol. (80 proof )."

[14] The toy is packaged for sale with a cardboard hangtag (so it can be hung on store shelves). Here is the back of the hangtag:

[15] At the bottom is a disclaimer: "This product is not affiliated with Jack Daniel Distillery." In the middle are some warnings and guarantees. And at the top, most relevant here, are two product logos-on the left for the Silly Squeakers line, and on the right for the Bad Spaniels toy.

[16] Soon after Bad Spaniels hit the market, Jack Daniel's sent VIP a letter demanding that it stop selling the product. VIP responded by bringing this suit, seeking a declaratory judgment that Bad Spaniels neither infringed nor diluted Jack Daniel's trademarks. The complaint alleged, among other things, that VIP is "the owner of all rights in its 'Bad Spaniels' trademark and trade dress for its durable rubber squeaky novelty dog toy." App. 3; see supra, at 6. Jack Daniel's counterclaimed under the Lanham Act for both trademark infringement and trademark dilution by tarnishment.

[17] VIP moved for summary judgment on both claims. First, VIP argued that Jack Daniel's infringement claim failed under a threshold test derived from the First Amendment to protect "expressive works"-like (VIP said) the Bad Spaniels toy. When those works are involved, VIP contended, the so-called Rogers test requires dismissal of an infringement claim at the outset unless the complainant can show one of two things: that the challenged use of a mark "has no artistic relevance to the underlying work" or that it "explicitly misleads as to the source or the content of the work." Rogers v. Grimaldi, 875 F. 2d 994, 999 (CA2 1989) (Newman, J.). Because Jack Daniel's could make neither showing, VIP argued, the likelihoodof-confusion issue became irrelevant. Second, VIP urged that Jack Daniel's could not succeed on a dilution claim because Bad Spaniels was a "parody[ ]" of Jack Daniel's, and therefore made "fair use" of its famous marks. §1125(c)(3)(A)(ii).

[18] The District Court rejected both contentions for a common reason: because VIP had used the cribbed Jack Daniel's features as trademarks-that is, to identify the source of its own products. In the court's view, when "another's trademark is used for source identification"-as the court thought was true here-the threshold Rogers test does not apply. App. to Pet. for Cert. 89a. Instead, the suit must address the "standard" infringement question: whether the use is "likely to cause consumer confusion." Ibid. And likewise, VIP could not invoke the dilution provision's fair-use exclusion. Parodies fall within that exclusion, the court explained, only when the uses they make of famous marks do not serve as "a designation of source for the [alleged diluter's] own goods." Id., at 104a (quoting §1125(c)(3)(A)).

[19] The case thus proceeded to a bench trial, where Jack Daniel's prevailed. The District Court found, based largely on survey evidence, that consumers were likely to be confused about the source of the Bad Spaniels toy. See 291 F. Supp. 3d 891, 906-911 (D Ariz. 2018). And the court thought that the toy, by creating "negative associations" with "canine excrement," would cause Jack Daniel's "reputational harm." Id., at 903, 905.

[20] But the Court of Appeals for the Ninth Circuit reversed, ruling that the District Court had gotten the pretrial legal issues wrong. In the Ninth Circuit's view, the infringement claim was subject to the threshold Rogers test because Bad Spaniels is an "expressive work": Although just a dog toy, and "surely not the equivalent of the Mona Lisa," it "communicates a humorous message." 953 F. 3d 1170, 1175 (2020) (internal quotation marks omitted). The Court of Appeals therefore returned the case to the District Court to decide whether Jack Daniel's could satisfy either of Rogers' two prongs. And the Ninth Circuit awarded judgment on the dilution claim to VIP. The court did not address the statutory exclusion for parody and other fair use, as the District Court had. Instead, the Court of Appeals held that the exclusion for "noncommercial use" shielded VIP from liability. §1125(c)(3)(C). The "use of a mark may be 'noncommercial,'" the court reasoned, "even if used to sell a product." 953 F. 3d, at 1176 (internal quotation marks omitted). And here it was so, the court found, because it "parodies" and "comments humorously" on Jack Daniel's. Id., at 1175; see id., at 1176. [21] On remand, the District Court found that Jack Daniel's could not satisfy either prong of Rogers, and so granted summary judgment to VIP on infringement. Jack Daniel's appealed, and the Ninth Circuit summarily affirmed. [22] We then granted certiorari to consider the Court of Appeals' rulings on both infringement and dilution. 598 U. S. ___, 143 S. Ct. 476 (2022). II [23] Our first and more substantial question concerns Jack Daniel's infringement claim: Should the company have had to satisfy the Rogers threshold test before the case could proceed to the Lanham Act's likelihood-of-confusion inquiry? 1 The parties address that issue in the broadest possible way, either attacking or defending Rogers in all its possible applications. Today, we choose a narrower path. Without deciding whether Rogers has merit in other contexts, we hold that it does not when an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer's own goods. See §1127; supra, at 2-3. VIP used the marks derived from Jack Daniel's in that way, so the infringement claim here rises or falls on likelihood of confusion. But that inquiry is not blind to the expressive aspect of the Bad Spaniels toy that the Ninth Circuit highlighted. Beyond source designation, VIP uses the marks at issue in an effort to "parody" or "make fun" of Jack Daniel's. Tr. of Oral Arg. 58, 66. And that kind of message matters in assessing confusion because consumers are not so likely to think that the maker of a mocked product is itself doing the mocking.

[24] To see why the Rogers test does not apply here, first consider the case from which it emerged. The defendants there had produced and distributed a film by Federico Fellini titled "Ginger and Fred" about two fictional Italian cabaret dancers (Pippo and Amelia) who imitated Ginger Rogers and Fred Astaire. When the film was released in the United States, Ginger Rogers objected under the Lanham Act to the use of her name. The Second Circuit rejected the claim. It reasoned that the titles of "artistic works," like the works themselves, have an "expressive element" implicating "First Amendment values." 875 F. 2d, at 998. And at the same time, such names posed only a "slight risk" of confusing consumers about either "the source or the content of the work." Id., at 999-1000. So, the court concluded, a threshold filter was appropriate. When a title "with at least some artistic relevance" was not "explicitly misleading as to source or content," the claim could not go forward. Ibid. But the court made clear that it was not announcing a general rule. In the typical case, the court thought, the name of a product was more likely to indicate its source, and to be taken by consumers in just that way. See id., at 1000.

[25] Over the decades, the lower courts adopting Rogers have confined it to similar cases, in which a trademark is used not to designate a work's source, but solely to perform some other expressive function. So, for example, when the toymaker Mattel sued a band over the song "Barbie Girl"-with lyrics including "Life in plastic, it's fantastic" and "I'm a blond bimbo girl, in a fantasy world"-the Ninth Circuit applied Rogers. Mattel, Inc. v. MCA Records, Inc., 296 F. 3d 894, 901 (2002). That was because, the court reasoned, the band's use of the Barbie name was "not [as] a source identifier": The use did not "speak[ ] to [the song's] origin." Id., at 900, 902; see id., at 902 (a consumer would no more think that the song was "produced by Mattel" than would, "upon hearing Janis Joplin croon 'Oh Lord, won't you buy me a Mercedes Benz?,' . . . suspect that she and the carmaker had entered into a joint venture"). Similarly, the Eleventh Circuit dismissed a suit under Rogers when a sports artist depicted the Crimson Tide's trademarked football uniforms solely to "memorialize" a notable event in "football history." University of Ala. Bd. of Trustees v. New Life Art, Inc., 683 F. 3d 1266, 1279 (2012). And when Louis Vuitton sued because a character in the film The Hangover: Part II described his luggage as a "Louis Vuitton" (though pronouncing it Lewis), a district court dismissed the complaint under Rogers. See Louis Vuitton Mallatier S. A. v. Warner Bros. Entertainment Inc., 868 F. Supp. 2d 172 (SDNY 2012). All parties agreed that the film was not using the Louis Vuitton mark as its "own identifying trademark." Id., at 180 (internal quotation marks omitted). When that is so, the court reasoned, "confusion will usually be unlikely," and the "interest in free expression" counsels in favor of avoiding the standard Lanham Act test. Ibid.

[26] The same courts, though, routinely conduct likelihood-of-confusion analysis, without mentioning Rogers, when trademarks are used as trademarks-i.e., to designate source. See, e.g., JL (1997). True, that slogan had expressive content. But the defendant group, the court reasoned, was using it "as a mark," to suggest the "same source identification" as the original "political movement." Ibid. And similarly, the Second Circuit (indeed, the judge who authored Rogers) rejected a motorcycle mechanic's view that his modified version of Harley Davidson's bar-and-shield logo was an expressive parody entitled to Rogers' protection. See Harley-Davidson, Inc. v. Grottanelli, 164 F. 3d 806, 812-813 (1999). The court acknowledged that the mechanic's adapted logo conveyed a "somewhat humorous[ ]" message. Id., at 813. But his use of the logo was a quintessential "trademark use": to brand his "repair and parts business"-through signage, a newsletter, and T-shirts-with images "similar" to Harley-Davidson's. Id., at 809, 812-813.

[27] The point is that whatever you make of Rogers-and again, we take no position on that issue-it has always been a cabined doctrine. If we put this case to the side, the Rogers test has applied only to cases involving "non-trademark uses"-or otherwise said, cases in which "the defendant has used the mark" at issue in a "non-source-identifying way." S. Dogan & M. Lemley, Grounding Trademark Law Through Trademark Use, 92 Iowa L. Rev. 1669, 1684 (2007); see id., at 1683-1684, and n. 58. The test has not insulated from ordinary trademark scrutiny the use of trademarks as trademarks, "to identify or brand [a defendant's] goods or services." Id., at 1683.

[28] We offer as one last example of that limitation a case with a striking resemblance to this one. It too involved dog products, though perfumes rather than toys. Yes, the defendant sold "a line of pet perfumes whose names parody elegant brands sold for human consumption." Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 412 (SDNY 2002) (Mukasey, J.). The product at issue was named Timmy Holedigger-which Tommy Hilfiger didn't much like. The defendant asked for application of Rogers. The court declined it, relying on Harley-Davidson. See 221 F. Supp. 2d, at 414. Rogers, the court explained, kicks in when a suit involves solely "nontrademark uses of [a] mark-that is, where the trademark is not being used to indicate the source or origin" of a product, but only to convey a different kind of message. 221 F. Supp. 2d, at 414. When, instead, the use is "at least in part" for "source identification"-when the defendant may be "trading on the good will of the trademark owner to market its own goods"-Rogers has no proper role. 221 F. Supp. 2d, at 414-415. And that is so, the court continued, even if the defendant is also "making an expressive comment," including a parody of a different product. Id., at 415. The defendant is still "mak[ing] trademark use of another's mark," and must meet an infringement claim on the usual battleground of "likelihood of confusion." Id., at 416.

[29] That conclusion fits trademark law, and reflects its primary mission. From its definition of "trademark" onward, the Lanham Act views marks as source identifiers-as things that function to "indicate the source" of goods, and so to "distinguish" them from ones "manufactured or sold by others." §1127; see supra, at 2-3. The cardinal sin under the law, as described earlier, is to undermine that function. See supra, at 3. It is to confuse consumers about source-to make (some of ) them think that one producer's products are another's. And that kind of confusion is most likely to arise when someone uses another's trademark as a trademark-meaning, again, as a source identifier-rather than for some other expressive function. To adapt one of the cases noted above: Suppose a filmmaker uses a Louis Vuitton suitcase to convey something about a character (he is the kind of person who wants to be seen with the product but doesn't know how to pronounce its name). See supra, at 12. Now think about a different scenario: A luggage manufacturer uses an ever-so-slightly modified LV logo to make inroads in the suitcase market. The greater likelihood of confusion inheres in the latter use, because it is the one conveying information (or misinformation) about who is responsible for a product. That kind of use "implicate[s] the core concerns of trademark law" and creates "the paradigmatic infringement case." G. Dinwoodie & M. Janis, Confusion Over Use: Contextualism in Trademark Law, 92 Iowa L. Rev. 1597, 1636 (2007). So the Rogers test-which offers an escape from the likelihood-of-confusion inquiry and a shortcut to dismissal-has no proper application. 2[30] Nor does that result change because the use of a mark has other expressive content-i.e., because it conveys some message on top of source. Here is where we most dramatically part ways with the Ninth Circuit, which thought that because Bad Spaniels "communicates a humorous message," it is automatically entitled to Rogers' protection. 953 F. 3d, at 1175 (internal quotation marks omitted). On that view, Rogers might take over much of the world. For trademarks are often expressive, in any number of ways. Consider how one liqueur brand's trade dress (beyond identifying source) tells a story, with a bottle in the shape of a friar's habit connoting the product's olden monastic roots:

[31] Or take a band name that "not only identifies the band but expresses a view about social issues." Tam, 582 U. S., at 245 (opinion of Alito, J.) (discussing "The Slants"). Or note how a mark can both function as a mark and have parodic content-as the court found in the Hilfiger/Holedigger litigation. See supra, at 13-14. The examples could go on and on. As a leading treatise puts the point, the Ninth Circuit's expansion of Rogers "potentially encompasses just about everything" because names, phrases, symbols, designs, and their varied combinations often "contain some 'expressive' message" unrelated to source. 6 McCarthy §31:144.50. That message may well be relevant in assessing the likelihood of confusion between two marks, as we address below. See infra, at 18-19. But few cases would even get to the likelihood-of-confusion inquiry if all expressive content triggered the Rogers filter. In that event, the Rogers exception would become the general rule, in conflict with courts' longstanding view of trademark law.

[32] The Ninth Circuit was mistaken to believe that the First Amendment demanded such a result. The court thought that trademark law would otherwise "fail[ ] to account for the full weight of the public's interest in free expression." 953 F. 3d, at 1174. But as the Mattel (i.e., Barbie) court noted, when a challenged trademark use functions as "source-identifying," trademark rights "play well with the First Amendment": "Whatever first amendment rights you may have in calling the brew you make in your bathtub 'Pepsi'" are "outweighed by the buyer's interest in not being fooled into buying it." 296 F. 3d, at 900. Or in less colorful terms: "[T]o the extent a trademark is confusing" as to a product's source "the law can protect consumers and trademark owners." Tam, 582 U. S., at 252 (Kennedy, J., concurring in part and concurring in judgment); see Friedman v. Rogers, 440 U. S. 1, 15 (1979) (rejecting a First Amendment challenge to a law restricting trade names because of the "substantial" interest in "protecting the public from [their] deceptive and misleading use"). Or yet again, in an especially clear rendering: "[T]he trademark law generally prevails over the First Amendment" when "another's trademark (or a confusingly similar mark) is used without permission" as a means of "source identification." Yankee Publ'g, Inc. v. News Am. Publ'g, Inc., 809 F. Supp. 267, 276 (SDNY 1992) (Leval, J.) (emphasis deleted). So for those uses, the First Amendment does not demand a threshold inquiry like the Rogers test. When a mark is used as a mark (except, potentially, in rare situations), the likelihood-of-confusion inquiry does enough work to account for the interest in free expression.

[33] Here, the District Court correctly held that "VIP uses its Bad Spaniels trademark and trade dress as source identifiers of its dog toy." See App. to Pet. for Cert. 105a. In fact, VIP conceded that point below. In its complaint, VIP alleged that it both "own[s] and "use[s]" the "'Bad Spaniels' trademark and trade dress for its durable rubber squeaky novelty dog toy." App. 3, 11. The company thus represented in this very suit that the mark and dress, although not registered, are used to "identify and distinguish [VIP's] goods" and to "indicate [their] source." §1127. (Registration of marks, you'll recall, is optional. See supra, at 3-4.)

[34] In this Court, VIP says the complaint was a mere "form allegation"-a matter of "rote." Tr. of Oral Arg. 73. But even if we knew what that meant, VIP has said and done more in the same direction. First, there is the way the product is marketed. On the hangtag, the Bad Spaniels logo sits opposite the concededly trademarked Silly Squeakers logo, with both appearing to serve the same source-identifying function. See supra, at 7. And second, there is VIP's practice as to other products in the Silly Squeakers line. The company has consistently argued in court that it owns, though has never registered, the trademark and trade dress in dog toys like "Jose Perro" (cf. Jose Cuervo) and "HeinieSniff 'n" (cf. Heineken). 3 And it has chosen to register the names of still other dog toys, including Dos Perros (#6176781), Smella Arpaw (#6262975), and Doggie Walker (#6213816). See supra, at 6. Put all that together, and more than "form" or "rote" emerges: VIP's conduct is its own admission that it is using the Bad Spaniels (née Jack Daniel's) trademarks as trademarks, to identify product source.

[35] Because that is so, the only question in this suit going forward is whether the Bad Spaniels marks are likely to cause confusion. There is no threshold test working to kick out all cases involving "expressive works." But a trademark's expressive message-particularly a parodic one, as VIP asserts-may properly figure in assessing the likelihood of confusion. See, e.g., Louis Vuitton Malletier S. A. v. Haute Diggity Dog, LLC, 507 F. 3d 252, 265 (CA4 2007) (Parody "influences the way in which the [likelihood-of-confusion] factors are applied"); Brief for United States as Amicus Curiae 17-22 (same). A parody must "conjure up" "enough of [an] original to make the object of its critical wit recognizable." Campbell v. Acuff-Rose Music, Inc., 510 U. S. 569, 588 (1994) (internal quotation marks omitted). Yet to succeed, the parody must also create contrasts, so that its message of ridicule or pointed humor comes clear. And once that is done (if that is done), a parody is not often likely to create confusion. Self-deprecation is one thing; self-mockery far less ordinary. So although VIP's effort to ridicule Jack Daniel's does not justify use of the Rogers test, it may make a difference in the standard trademark analysis. Consistent with our ordinary practice, we remand that issue to the courts below. See Cutter v. Wilkinson, 544 U. S. 709, 718, n. 7 (2005) (noting that this Court is generally "a court of review, not of first view").

[36] Our second question, more easily dispatched, concerns Jack Daniel's claim of dilution by tarnishment (for the linkage of its whiskey to less savory substances). Recall that the Ninth Circuit dismissed that claim based on one of the Lanham Act's "[e]xclusions" from dilution liability-for "[a]ny noncommercial use of a mark." §1125(c)(3)(C); see supra, at 9. On the court's view, the "use of a mark may be 'noncommercial' even if used to sell a product." 953 F. 3d, at 1176 (internal quotation marks omitted). And VIP's use is so, the court continued, because it "parodies" and "convey[s] a humorous message" about Jack Daniel's.

Id., at 1175-1176. We need not express a view on the first step of that reasoning because we think the second step wrong. However wide the scope of the "noncommercial use" exclusion, it cannot include, as the Ninth Circuit thought, every parody or humorous commentary.

[37] To begin to see why, consider the scope of another of the Lanham Act's exclusionsthis one for "[a]ny fair use." As described earlier, the "fair use" exclusion specifically covers uses "parodying, criticizing, or commenting upon" a famous mark owner. §1125(c)(3)(A)(ii); see supra, at 5. But not in every circumstance. Critically, the fair-use exclusion has its own exclusion: It does not apply when the use is "as a designation of source for the person's own goods or services." §1125(c)(3)(A). In that event, no parody, criticism, or commentary will rescue the alleged dilutor. It will be subject to liability regardless.

[38] The problem with the Ninth Circuit's approach is that it reverses that statutorily directed result, as this case illustrates. Given the fair-use provision's carve-out, parody (and criticism and commentary, humorous or otherwise) is exempt from liability only if not used to designate source. Whereas on the Ninth Circuit's view, parody (and so forth) is exempt always-regardless whether it designates source. The expansive view of the "noncommercial use" exclusion effectively nullifies Congress's express limit on the fair-use exclusion for parody, etc. Just consider how the Ninth Circuit's construction played out here. The District Court had rightly concluded that because VIP used the challenged marks as source identifiers, it could not benefit from the fair-use exclusion for parody. See App. to Pet. for Cert. 105a; supra, at 8-9, 17-18. The Ninth Circuit took no issue with that ruling. But it shielded VIP's parodic uses anyway. In doing so, the court negated Congress's judgment about when-and when not-parody (and criticism and commentary) is excluded from dilution liability.

[39] Today's opinion is narrow. We do not decide whether the Rogers test is ever appropriate, or how far the "noncommercial use" exclusion goes. On infringement, we hold only that Rogers does not apply when the challenged use of a mark is as a mark. On dilution, we hold only that the noncommercial exclusion does not shield parody or other commentary when its use of a mark is similarly source-identifying. It is no coincidence that both our holdings turn on whether the use of a mark is serving a source-designation function. The Lanham Act makes that fact crucial, in its effort to ensure that consumers can tell where goods come from.

[40] For the reasons stated, we vacate the judgment below and remand for further proceedings consistent with this opinion.

Justice Sotomayor, with whom Justice Alito joins, concurring.

[41] I join the Court's opinion in full. I write separately to emphasize that in the context of parodies and potentially other uses implicating First Amendment concerns, courts should treat the results of surveys with particular caution. As petitioner did here, plaintiffs in trademark infringement cases often commission surveys that purport to show that consumers are likely to be confused by an allegedly infringing product. Like any other evidence, surveys should be understood as merely one piece of the multifaceted likelihood of confusion analysis. See, e.g., Uncommon, LLC v. Spigen, Inc., 926 F. 3d 409, 425 (CA7 2019). Courts should also carefully assess the methodology and representativeness of surveys, as many lower courts already do. See, e.g., Water Pik, Inc. v. Med-Systems, Inc., 726 F. 3d 1136, 1144-1150 (CA10 2013); Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97, 117 (CA2 2009).

[42] When an alleged trademark infringement involves a parody, however, there is particular risk in giving uncritical or undue weight to surveys. Survey answers may reflect a mistaken belief among some survey respondents that all parodies require permission from the owner of the parodied mark. Some of the answers to the survey in this case illustrate this potential. See App. 81-82, n. 25 ("'I'm sure the dog toy company that made this toy had to get [Jack Daniel's] permission and legal rights to essentially copy the[ir] product in dog toy form'"); ibid. ("'The bottle is mimicked after the Jack Daniel BBQ sauce. So they would hold the patent therefore you would have to ask permission to use the image'"); see also Anheuser-Busch, Inc. v. Balducci Publications, 28 F. 3d 769, 772-773, 775 (CA8 1994) (describing a similar situation). Plaintiffs can point to this misunderstanding of the legal framework as evidence of consumer confusion. Cleverly designed surveys could also prompt such confusion by making consumers think about complex legal questions around permission that would not have arisen organically out in the world.

[43] Allowing such survey results to drive the infringement analysis would risk silencing a great many parodies, even ones that by other metrics are unlikely to result in the confusion about sourcing that is the core concern of the Lanham Act. See ante, at 4, 10, 14. Well-heeled brands with the resources to commission surveys would be handed an effective veto over mockery. After all, "[n]o one likes to be the butt of a joke, not even a trademark." 6 J. McCarthy, Trademarks and Unfair Competition §31:153 (5th ed. 2023). This would upset the Lanham Act's careful balancing of "the needs of merchants for identification as the provider of goods with the needs of society for free communication and discussion." P. Leval, Trademark: Champion of Free Speech, 27 Colum. J. L. & Arts 187, 210 (2004). Courts should thus ensure surveys do not completely displace other likelihood-of-confusion factors, which may more accurately track the experiences of actual consumers in the marketplace. Courts should also be attentive to ways in which surveys may artificially prompt such confusion about the law or fail to sufficiently control for it.

Justice Gorsuch, with whom Justice Thomas and Justice Barrett join, concurring.

[44] I am pleased to join the Court's opinion. I write separately only to underscore that lower courts should handle Rogers v. Grimaldi, 875 F. 2d 994 (CA2 1989), with care. Today, the Court rightly concludes that, even taken on its own terms, Rogers does not apply to cases like the one before us. But in doing so, we necessarily leave much about Rogers unaddressed. For example, it is not entirely clear where the Rogers test comes from-is it commanded by the First Amendment, or is it merely gloss on the Lanham Act, perhaps inspired by constitutional-avoidance doctrine? Id., at 998. For another thing, it is not obvious that Rogers is correct in all its particulars-certainly, the Solicitor General raises serious questions about the decision. See Brief for United States as Amicus Curiae 23-28. All this remains for resolution another day, ante, at 13, and lower courts should be attuned to that fact.

1. The survey evidence in Jack Daniel's. In light of Justice Sotomayor's concerns about survey evidence in cases involving parodies, consider Chris Sprigman and Rebecca Tushnet's criticism of the survey evidence in Jack Daniel's:

Although the district court initially relied on JDI's survey showing 29% net confusion among survey respondents, that number combined perceptions of source, affiliation, and the belief that the toy was "put out with the authorization or approval of Jack Daniel's." The "source" confusion figure was only 11.8%which is low enough on its own that many courts would hold it to be a number showing that confusion is unlikely. VIP's expert stated that "it is clear that many respondents in fact recognized that the product is made or put out by VIP products, and yet were thinking that VIP would need to get authorization or approval from Jack Daniel's in order to sell such a parody product." That is, consumers were mistaken about the law, not about the facts.

Christopher Jon Sprigman & Rebecca Tushnet, "Twenty-First Century Trademark Surveys" (working paper, Feb. 24, 2026) (footnotes omitted).

2. The Jack Daniel's circularity. Is the following a fair summary of Jack Daniel's? Jack Daniel's held that the Rogers test may be applied only when the defendant is making a "nontrademark use" of the plaintiff's mark. In other words, Rogers applies only when the defendant is using the mark in a way that does not lead consumers to believe that the mark is identifying the source of the defendant's goods. But if the defendant's use is not perceived by consumers as identifying the source of its goods and is therefore not causing consumer confusion as to the source of those goods, doesn't that alone resolve the likelihood of confusion issue? What does Rogers add in such a situation? Doesn't the "non-trademark use" threshold inquiry already resolve the issue of confusion as to source? Has the Supreme Court made a mistake akin to the Ninth Circuit's in KP Permanent, in that the only scenarios in which the Rogers test may now be applied are scenarios in which the test is not even necessary? Considered differently, the Supreme Court's reasoning in Jack Daniel's appears to assume that there are scenarios in which a defendant's "non-trademark use" may nevertheless cause consumer confusion. Otherwise the threshold "non-trademark use" inquiry would resolve the confusion issue and there would be no need to proceed further to the special Rogers test. But what might such scenarios look like? Consider an unauthorized, incidental use of a trademark in a motion picture. The use will qualify as a "non-trademark use" only if viewers of the movie perceive the use as not designating the source of the movie. What further purpose does the additional Rogers test then serve? Is the Jack Daniel's court implicitly assuming some difference between (a) source confusion caused by "trademark uses" and (b) other forms of consumer confusion, such as affiliation or endorsement confusion, caused by "non-trademark uses"? If the answer is yes, then the Rogers test exists to address only scenarios involving (b). However, the district court found a likelihood of tarnishment. VIP Prods. LLC v. Jack Daniel's Props. Inc., 2025 WL 275909, at *19. The district court declined to consider whether the Lanham Act's anti-tarnishment provision violated the Free Speech Clause of the First Amendment because VIP did not raise the issue in its pleadings. Id. at *15.

A finding that Rogers v. Grimaldi does not apply is not fatal to the defendant. As in VIP Prods. LLC v. Jack Daniel's Props. Inc., even when a court determines that the defendant has made a "trademark use" of the accused expression and cannot therefore benefit from the Rogers v. Grimaldi test, a court may still find no likelihood of confusion. See, e.g., Punchbowl, Inc. v. AJ Press LLC, No. 21 Civ. 03010, 2024 WL 4005220 (C.D. Cal. Aug. 22, 2024), appeal dismissed, 2025 WL 899951 (9th Cir. Feb. 14, 2025). In Punchbowl, the plaintiff used the term "punchbowl" in its trademark for online greeting card services. The defendant used the term in its trademark for an online political news website. The district court had initially applied Rogers and found no infringement, and the Ninth Circuit affirmed. Punchbowl, Inc. v. AJ Press, LLC, 52 F.4th 1091 (9th Cir. 2022). The Supreme Court then issued its Jack Daniel's opinion, with the result that the Ninth Circuit withdrew its opinion affirming and instead remanded to the district court to "proceed to a likelihood-of-confusion analysis." Punchbowl, Inc. v. AJ Press, LLC, 90 F.4th 1022, 1032 (9th Cir. 2024). The district court then found no likelihood of confusion. We focus here on two of the exclusions listed in § 43(c)(3): the exclusion for "[a]ny noncommercial use of a mark" and the exclusion for uses "in connection with . . . identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner."

The noncommercial use exception has proven, where it applies, to be an extraordinarily powerful limitation on trademark dilution liability. The following brief overview of Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), shows why. If the so-called "Aqua Case" were litigated today, now after Jack Daniel's, would the Ninth Circuit be able to reach the same result? The Ninth Circuit affirmed the district court's grant of summary judgment to the defendant. On the issue of consumer confusion, Judge Kozinski applied the Rogers v. Grimaldi test and found:

The song title does not explicitly mislead as to the source of the work; it does not, explicitly or otherwise, suggest that it was produced by Mattel. The only indication that Mattel might be associated with the song is the use of Barbie in the title; if this were enough to satisfy this prong of the Rogers test, it would render Rogers a nullity.

As to blurring and tarnishment, Judge Kozinski determined that Aqua's conduct qualified under the "noncommercial use" exemption from liability in then § 43(c)(4) (B) . . . . { } Barbie Girl is not purely commercial speech, and is therefore fully protected. To be sure, MCA used Barbie's name to sell copies of the song. However, as we've already observed, the song also lampoons the Barbie image and comments humorously on the cultural values Aqua claims she represents. Use of the Barbie mark in the song Barbie Girl therefore falls within the noncommercial use exemption to the FTDA. For precisely the same reasons, use of the mark in the song's title is also exempted.

1. An alternative approach to the question of noncommercial uses. For a significantly more subtle (but less defendant-friendly) approach to the question of whether a use qualifies as non-commercial, see Jordan v. Jewel Food Stores, Inc., 743 F.3d 509 (7th Cir. 2014).

b. What Qualifies as Parody under § 43(c)(3)(A)(ii)?

The following two opinions count as relatively minor opinions in the case law on trademark dilution and parody. [1] During the post-game show of the 2010 Super Bowl, defendant Hyundai Motor America ("Hyundai") debuted a commercial that its counsel describes as "a humorous, socioeconomic commentary on luxury defined by a premium price tag, rather than by the value to the consumer." The ad, which would eventually air five times over the course of a month, included a one-second shot of a basketball decorated with a distinctive pattern resembling the famous trademarks of plaintiff Louis Vuitton Malletier, S.A. ("Louis Vuitton").

[2] Louis Vuitton has asserted trademark and unfair competition claims under New York and federal law, alleging that the commercial diluted and infringed its marks. . . . Louis Vuitton moves for summary judgment on its trademark dilution claims as to liability only, and Hyundai has moved for summary judgment in its favor on all claims.

[3] For the reasons explained, Louis Vuitton's motion is granted and Hyundai's motion is denied.

A. Hyundai's Use of Louis Vuitton Markings in the "Luxury" Ad.

[4] Hyundai's thirty-second commercial goes by the name "Luxury." It consists of brief vignettes that show "policemen eating caviar in a patrol car; large yachts parked beside modest homes; blue-collar workers eating lobster during their lunch break; a four-second scene of an inner-city basketball game played on a lavish marble court with a gold hoop; and a ten-second scene of the Sonata driving down a street lined with chandeliers and red-carpet crosswalks."

[5] The commercial's "scene of an inner-city basketball game" features "a basketball bearing marks similar, but not identical," to the Louis Vuitton marks. Louis Vuitton characterizes the vignette as "a street-yard basketball scene in which it would use a basketball with markings copied from the design and colors of the [Louis Vuitton] Marks, altering them only slightly."

[6] The Louis Vuitton marks are known as the "toile monogram." As described by Hyundai, it "consists of a repeating pattern design of the letters 'LV and flower-like symbols on a chestnut-brown background." In the cease-and-desist letter that it would send to Hyundai after the ad's initial broadcast, Louis Vuitton described the marks as having "three distinctive elemental designs-a pinwheel design, a diamond with an inset pinwheel design, and a circle with an inset flower design . . . . " Louis Vuitton first registered this mark with the United States Patent and Trademark Office in 1932, and subsequently registered the mark's individual elements. The most prominent alteration in the "Luxury" ad was the substitution of the letters "LZ" for "LV," although Hyundai made small modifications to the other elements of the mark, including slight alterations to their proportions.

[7] According to Hyundai, the commercial sought to "emphasize" the "style, quality and amenities" of the 2011 Sonata, "a mid-sized Sedan priced at approximately $20,000." As described by Hyundai, the "Luxury" ad sought to redefine the concept of luxury by communicating to consumers that Sonata offered "luxury for all." The Commercial attempted to accomplish this goal by poking fun at the silliness of luxury-as-exclusivity by juxtaposing symbols of luxury with everyday life (for example, large yachts parked beside modest homes). [8] As further explained by Hyundai, "The symbols of 'old' luxury, including the [Louis Vuitton] Marks, were used as part of the Commercial's humorous social commentary on the need to redefine luxury during a recession . . . . The commercial poked fun at these symbols of 'old' luxury to distinguish them from [Hyundai] in an effort to challenge consumers to rethink what it means for a product to be luxurious." In Hyundai's view, the ad sought "to distinguish [Louis Vuitton] from the common-sense Sonata." [9] Hyundai does not dispute that the Louis Vuitton marks "are famous and distinctive" as "widely recognized luxury marks," and are "viewed by some as the most valuable luxury brand in the world." While the parties set forth slight and immaterial differences in their characterizations of the basketball's design, they agree that the ball was intended to evoke "the original Louis Vuitton Toile Monogram . . . ." [10] Christopher J. Perry, a former marketing executive at Hyundai, confirmed in a Rule 30(b)(6) deposition that Hyundai worked to "genericize[ ] the Louis Vuitton marks" so "that they remained very similar" to the brown-and-gold marks of Louis Vuitton. Perry said that "the brown and gold of [Louis Vuitton]" were intended to give the basketball a "more stylized and luxurious look to it," and that these colors were "a distinctive special reference" that was "tied to Louis Vuitton." . . . . . . . . [11] The "Luxury" ad was motivated in part by a desire on the part of Hyundai to change its brand image among consumers. As described by Hyundai, "among those who highly considered but did not purchase an earlier model of the Sonata, brand reputation and resale value were the main reasons for rejection." . . . Ewanick, who had been at Hyundai at the time the ad was developed, testified that it was "[c]orrect" to say that Hyundai "used the Louis Vuitton[-]like marks in order to raise the image of the Hyundai brand in the mind of the consumer[.]" (Pl. 56.1 ¶ 69; Def. 56.1 Resp. ¶ 69.)

[12] Elsewhere, Hyundai states that it "objects to [Louis Vuitton's] implication that the sole and immediate purpose of the campaign was to sell cars. Rather, the admissible evidence demonstrates [Hyundai's] goal to build consideration and awareness and try to change the brand perception long term." (Def. 56.1 Resp. ¶ 3; quotation marks and alteration omitted.) B. Hyundai Previously Sought, But Did Not Receive, Permission to Display Several Luxury Marks in Its Commercial.

[13] Before going forward with the final version of "Luxury," Hyundai requested permission from numerous companies to display their luxury marks in a commercial. Hyundai's outside advertising firm contacted thirteen companies to see whether they would permit Hyundai to use their brands free of charge. In a never-broadcast vignette, Hyundai displayed "a vending machine that dispensed luxury handbags . . . ." Six brands (Chanel, Prada, Coach, Yves Saint Laurent, Chloe, Gucci and Ferragamo) expressly declined consent. Others (Fendi, Chloe, Dolce & Gabbana, Marc Jacobs, Burberry and Louis Vuitton) never responded to the request. As described by Hyundai's counsel, "it does not appear" that its outside advertising firm "ever spoke with anyone at [Louis Vuitton] about this Commercial." An e-mail of November 19, 2009 sent within Hyundai's outside advertising firm states that as to permission from Louis Vuitton: "have not been able to get a return phone call-email has not been sent." A separate e-mail in the chain states: "Unfortunately we have not found one who would be open to participating yet." C. Hyundai's Continued Airing of "Luxury."

[14] The "Luxury" ad first ran during the Superbowl post-game show of February 7, 2010, following the New Orleans Saints' 31-17 victory over the Indianapolis Colts. On February 12, 2010, Louis Vuitton sent Hyundai a cease-and-desist letter objecting to the inclusion of Louis Vuitton imagery in the "Luxury" ad. By then, Hyundai had already arranged for "Luxury" to air three times during the NBA All-Star Game weekend, over February 12-14, 2010. Hyundai executives decided to wait for an opinion from legal counsel before taking action on the ad, and went forward with the plan to run the ad during the NBA programming. [16] Through deposition testimony and in submissions by counsel, Hyundai has disclaimed any intention to parody, criticize or comment upon Louis Vuitton. Rather, it contends that the basketball design in the "Luxury" ad reflects a broader social comment, one that embodies "an effort to challenge consumers to rethink what it means for a product to be luxurious."

[17] The text of the TDRA expressly states that fair use applies if dilution has arisen due to "use in connection with . . . identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner." 15 U.S.C.

§ 1125(c)(3)(A)(ii) (emphasis added) {sic}. Because Hyundai has disclaimed any comment, criticism or parody of Louis Vuitton, the "Luxury" ad does not, as a matter of law, qualify for fair use under the TDRA.

[18] Louis Vuitton has directed the Court to deposition testimony in which individuals involved in the ad's creation state that the ad contains no comment on Louis Vuitton. In the Rule 30(b)(6) deposition, Perry testified as follows: Q. Okay. Why didn't you just use the [un-altered] Louis Vuitton marks?

A. I don't recall the -Innocean came back to us and suggested adjustments. Q. Well, why didn't you say, gee, to make the association even stronger, let's just use the Louis Vuitton marks?

A. The intent of the spot wasn't to -was to portray these over-the-top overwhelming luxury ideas. A. I suppose we could have. We opted not to. It wasn't the intent to try to -the intent wasn't specific to -the same reason why we didn't use specific brands on any of the other things we did. It was just to convey luxury. And to your point that the brown and gold conveyed luxury. * * * Q. In fact, you could have-had you wanted to, you could have continued to do the ad and have it make sense without any additional basketball scene at all; isn't that true? A. Yes.

[19] Boone, an account executive at the advertising firm that oversaw the "Luxury" ad, also testified that the ad contained no comment directed toward Louis Vuitton or its marks: Q. So what other than Louis Vuitton were you attempting to have consumers take away from the basketball with these markings on it? A. That was just one teeny, tiny piece of the commercial that was meant to signify luxury. . . . It was a 30-second commercial that in its totality at the end of watching that commercial they would say, oh, this commercial is about communicating that Hyundai is a vehicle that provides luxury to all, that we're bringing luxury -you don't have to spend gazillions of dollars to have luxury, that this car -it was about the car, about communicating the Hyundai product. We weren't trying to at all promote Louis Vuitton. That was not our objective. We wanted to sell Hyundais through this over-arching communication about that you can get luxury at an affordable price, that was what we were trying to do. Q. And it's your position that this wasn't about Louis Vuitton at all, this basketball, is that correct? A. Correct. [20] In opposition to Louis Vuitton's motion, Hyundai does not direct the Court to evidence that contradicts this testimony. It does not, for example, cite to testimony or other evidence in which other persons involved in the process explained an intention to parody or comment upon Louis Vuitton. Indeed, in its memorandum of law, Hyundai does not even address this evidence. Its opposition instead turns on discussion of legal authorities that do not apply the TDRA, with little engagement of the record cited by Louis Vuitton and minimal discussion of the statutory text.

[21] Moreover, Hyundai's counsel states that the "Luxury" ad makes no comment on Louis Vuitton: "The symbols of 'old' luxury, including the [Louis Vuitton] Marks, were used as part of the Commercial's humorous social commentary on the need to redefine luxury during a recession, even though the Commercial's overall intent was not to comment directly on [Louis Vuitton] or the other luxury symbols." (Def. Supplemental 56.1 ¶ 17; emphasis added.) It also states that "[a]lthough the Commercial was not intended as a direct attack on any of the luxury products shown, [Hyundai] used these items as part of a humorous social commentary on the current definition of luxury itself, which was a contrast to the 'luxury for all' offered by the Sonata." (Def. Supplemental 56 .1 ¶ 2; emphasis added.) [22] In its opposition brief, Hyundai's counsel also states: Surely the Commercial could have been made by evoking a different designer's marks on the basketball (e.g., Gucci, Fendi, etc.). Yet, some symbol of luxury had to be chosen to make the basketball an integral part of the basketball vignette; for commentary purposes, HMA chose LVM, the number one luxury brand in 2010.

Yet Hyundai does not suggest that Louis Vuitton or these other marks were the object of parody, comment or criticism, but instead that these brands were proxies for its broader observation about an "old" luxury that stands in contrast with the Sonata line. They were not comment, criticism or parody "upon the famous mark owner or the goods or services of the famous mark owner." 15 U.S.C. § 1125(c)(3)(A)(ii).

[23] Louis Vuitton has come forward with evidence that the "Luxury" ad is not a comment, criticism or parody of Louis Vuitton. Hyundai has cited no evidence to the contrary. In addition, even Hyundai's counsel states that "the Commercial's overall intent was not to comment directly on [Louis Vuitton] or the other luxury symbols," but rather, to make a generalized statement that contrasts the Sonata with "old" luxury.

[24] Based on this record, I conclude that no reasonable trier of fact could conclude that the Louis Vuitton-style marks shown in the "Luxury" ad could constitute "use in connection with . . . identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner." 15 U.S.C. § 1125(c)(3)(A)(ii). [1] Defendant My Other Bag, Inc. ("MOB") sells simple canvas tote bags with the text "My Other Bag . . ." on one side and drawings meant to evoke iconic handbags by luxury designers, such as Louis Vuitton, Chanel, and Fendi, on the other. MOB's totes-indeed, its very nameare a play on the classic "my other car . . . " novelty bumper stickers, which can be seen on inexpensive, beat up cars across the country informing passersby-with tongue firmly in cheek-that the driver's "other car" is a Mercedes (or some other luxury car brand). The "my other car" bumper stickers are, of course, a joke-a riff, if you will, on wealth, luxury brands, and the social expectations of who would be driving luxury and non-luxury cars. MOB's totes are just as obviously a joke, and one does not necessarily need to be familiar with the "my other car" trope to get the joke or to get the fact that the totes are meant to be taken in jest.

[2] Louis Vuitton Malletier, S.A. ("Louis Vuitton"), the maker of Louis Vuitton bags, is perhaps unfamiliar with the "my other car" trope. Or maybe it just cannot take a joke. In either case, it brings claims against MOB with respect to MOB totes that are concededly meant to evoke iconic Louis Vuitton bags. More specifically, Louis Vuitton brings claims against MOB for trademark dilution and infringement under the Lanham Act, 15 U.S.C. § 1125(c); a claim of trademark dilution under New York law; and a claim of copyright infringement. MOB now moves for summary judgment on all of Louis Vuitton's claims; Louis Vuitton cross moves for summary judgment on its trademark dilution claims and its copyright infringement claim, and moves also to exclude the testimony of MOB's expert and to strike the declarations (or portions thereof) of MOB's expert and MOB's founder and principal. For the reasons that follow, MOB's motion for summary judgment is granted and Louis Vuitton's motions are all denied. BACKGROUND [3] The relevant facts, taken from the Complaint and admissible materials submitted in connection with the pending motions, are either undisputed or described in the light most favorable to Louis Vuitton. . . . Louis Vuitton is a world-renowned luxury fashion house known for its high-quality handbags and other luxury goods. . . . By all accounts, and as the discussion below will make clear, Louis Vuitton aggressively enforces its trademark rights.

[4] MOB was founded by Tara Martin in 2011. As noted, the name "My Other Bag" was inspired by novelty bumper stickers, which can sometimes be seen on inexpensive cars claiming that the driver's "other car" is an expensive, luxury car, such as a Mercedes. MOB produces and sells canvas tote bags bearing caricatures of iconic designer handbags on one side and the text "My Other Bag . . ." on the other. Several of MOB's tote bags-one of which is depicted in the appendix to this Opinion-display images concededly designed to evoke classic Louis Vuitton bags. As the appendix illustrates, the drawings use simplified colors, graphic lines, and patterns that resemble Louis Vuitton's famous Toile Monogram, Monogram Multicolore, and Damier designs, but replace the interlocking "LV" and "Louis Vuitton" with an interlocking "MOB" or "My Other Bag." MOB markets its bags as "[e]co-friendly, sustainable tote bags playfully parodying the designer bags we love, but practical enough for everyday life." While Louis Vuitton sells its handbags for hundreds, if not thousands, of dollars apiece, MOB's totes sell at prices between thirty and fifty-five dollars. Its website and other marketing play up the idea that high-priced designer bags cannot be used to carry around, say, dirty gym clothes or messy groceries, while its casual canvas totes can. . . .

[5] {T}he Court concludes as a matter of law that MOB's bags are protected as fair usein particular, that its use of Louis Vuitton's marks constitutes "parody." As noted, a successful parody communicates to a consumer that "an entity separate and distinct from the trademark owner is poking fun at a trademark or the policies of its owner." 6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 31:153 (4th ed., updated Dec. 2015) ("McCarthy"). In other words, a parody clearly indicates to the ordinary observer "that the defendant is not connected in any way with the owner of the target trademark." Id. That is precisely what MOB's bags communicate. Indeed, the whole point is to play on the wellknown "my other car . . ." joke by playfully suggesting that the carrier's "other bag"-that is, not the bag that he or she is carrying-is a Louis Vuitton bag. That joke-combined with the stylized, almost cartoonish renderings of Louis Vuitton's bags depicted on the totes-builds significant distance between MOB's inexpensive workhorse totes and the expensive handbags they are meant to evoke, and invites an amusing comparison between MOB and the luxury status of Louis Vuitton. Further, the image of exclusivity and refinery that Louis Vuitton has so carefully cultivated is, at least in part, the brunt of the joke: Whereas a Louis Vuitton handbag is something wealthy women may handle with reverent care and display to communicate a certain status, MOB's canvas totes are utilitarian bags "intended to be stuffed with produce at the supermarket, sweaty clothes at the gym, or towels at the beach." (Mem. Law Def. My Other Bag, Inc. Supp. Mot. Summ. J ("MOB's Mem.") 24).

[6] Louis Vuitton protests that, even if MOB's totes are a parody of something, they are not a parody of its handbags and, relatedly, that MOB's argument is a post hoc fabrication for purposes of this litigation. The company notes that MOB's Chief Executive Officer, Tara Martin, has referred to its bags as "iconic" and stated that she never intended to disparage Louis Vuitton. (see Calhoun Decl., Ex. 25, MOB website describing its bags as "an ode to handbags women love"). Thus, Louis Vuitton argues, the "My Other Bag . . ." joke mocks only MOB itself or, to the extent it has a broader target, "any humor is merely part of a larger social commentary, not a parody directed towards Louis Vuitton or its products." (Louis Vuitton's Mem. at 19). In support of those arguments, Louis Vuitton relies heavily on its victory in an unpublished 2012 opinion from this District: Louis Vuitton Malletier, S.A. v. Hyundai Motor Am., No. 10-CV-1611 (PKC), 2012 WL 1022247 (S.D.N.Y. Mar. 22,2012). In that case, {t}he Court rejected Hyundai's parody defense based in large part on deposition testimony from Hyundai representatives that conclusively established that the car company had no intention for the commercial to make any statement about Louis Vuitton at all. See id. at *17-19 (excerpting deposition testimony establishing that Hyundai did not mean to "criticize" or "make fun of" Louis Vuitton, or even "compare the Hyundai with [Louis Vuitton]"). On the basis of that testimony, the Court concluded that Hyundai had "disclaimed any intention to parody, criticize or comment upon Louis Vuitton" and that the ad was only intended to make a "broader social comment" about "what it means for a product to be luxurious." Id. at *17 (internal quotation marks omitted).

[7] The Hyundai decision is not without its critics, see, e.g., 4 McCarthy § 24:120, but, in any event, this case is easily distinguished on its facts. Here, unlike in Hyundai, it is selfevident that MOB did mean to say something about Louis Vuitton specifically. That is, Louis Vuitton's handbags are an integral part of the joke that gives MOB its name and features prominently on every tote bag that MOB sells. In arguing otherwise, Louis Vuitton takes too narrow a view of what can qualify as a parody. The quip "My Other Bag . . . is a Louis Vuitton," printed on a workhorse canvas bag, derives its humor from a constellation of featuresincluding the features of the canvas bag itself, society's larger obsession with status symbols, and the meticulously promoted image of expensive taste (or showy status) that Louis Vuitton handbags have, to many, come to symbolize. The fact that MOB's totes convey a message about more than just Louis Vuitton bags is not fatal to a successful parody defense. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 580 (1994) (holding that a copyright parodist must show that his parody, "at least in part, comments on [the parodied] author's work" (emphasis added)); Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806, 813 (2d Cir. 1999) (applying that standard to trademark parody). And the fact that Louis Vuitton at least does not find the comparison funny is immaterial; Louis Vuitton's sense of humor (or lack thereof) does not delineate the parameters of its rights (or MOB's rights) under trademark law. See, e.g., Cliffs Notes, 886 F.2d at 495-96 ("[T]he district court apparently thought that the parody here had to make an obvious joke out of the cover of the original in order to be regarded as a parody. We do not see why this is so. It is true that some of the covers of the parodies brought to our attention, unlike that of [the defendant], contain obvious visual gags. But parody may be sophisticated as well as slapstick; a literary work is a parody if, taken as a whole, it pokes fun at its subject." (footnote omitted)); cf. Yankee Publ'g Inc. v. News Am. Publ'g Inc., 809 F.Supp. 267, 280 (S.D.N.Y. 1992) ("Although [the defendant's] position would probably be stronger if its joke had been clearer, the obscurity of its joke does not deprive it of First Amendment support. First Amendment protections do not apply only to those who speak clearly, whose jokes are funny, and whose parodies succeed."). 4[8] In those regards, another decision from this District, Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F.Supp.2d 410, 415 (S.D.N.Y. 2002), is more on point. That case involved a line of parody perfume products for use on pets. In particular, the defendant had created a pet perfume called Tommy Holedigger, which resembled a Tommy Hilfiger fragrance in name, scent, and packaging. See id. at 412-413. Hilfiger, like Louis Vuitton here, argued (albeit in connection with a claim of trademark infringement rather than dilution) that the defendant was not entitled to protection as a parody because "its product admittedly makes no comment about Hilfiger." Id. at 415. In support of that argument, Hilfiger cited testimony from the defendant's general partner that his product was not intended to make any comment about Hilfiger or its products. See id. Noting that the general partner had also testified that "he was intending to create a 'parody . . . target[ing] . . . Tommy Hilfiger,' 'a fun play on words,' or 'spoof . . . [t]o create enjoyment, a lighter side,'" Judge Mukasey rejected Hilfiger's argument as follows:

Although [the general partner] had difficulty expressing the parodic content of his communicative message, courts have explained that: Trademark parodies . . . do convey a message. The message may be simply that business and product images need not always be taken too seriously; a trademark parody reminds us that we are free to laugh at the images and associations linked with the mark. The message also may be a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark's owner.

Id. (quoting L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 34 (1st Cir. 1987)). He added, in a comment that applies equally well here: "One can readily see why high-end fashion brands would be ripe targets for such mockery." Id.

[9] Alternatively, relying principally on Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979), Louis Vuitton argues that MOB's totes cannot be a parody because they do not need to use Louis Vuitton's trademarks for the parody to make sense. Strictly speaking, that is true-to the extent that MOB could use any well-known luxury handbag brand to make its points. But, whereas the defendant in Dallas Cowboys Cheerleaders, a purveyor of a "gross and revolting sex film," 604 F.2d at 202, did not have to use anyone else's trademark-let alone the plaintiff's specific trademark-to make its point (allegedly, "comment[ing] on 'sexuality in athletics,'" id. at 206), the same cannot be said here. MOB's tote bags would not make their point, and certainly would not be funny, if the obverse of the tote merely depicted some generic handbag. Such a tote would confusingly communicate only that "my other bag . . . is some other bag." In other words, Louis Vuitton's argument distorts any "necessity" requirement beyond recognition, and myopically suggests that, where a parody must evoke at least one of a finite set of marks in order to make its point, it can evoke none of them because reference to any particular mark in the set is not absolutely necessary. The Court declines to create such an illogical rule. . . . .

A defendant may show that a mark has been abandoned and is thus unprotectable by showing that either (1) the plaintiff has ceased to use the mark with the intent not to resume use, or (2) the plaintiff has failed to control the use of the mark (for example, by licensing its use indiscriminately) with the result that the mark has lost its significance as a designation of a particular source. These two modes of abandonment are based on the definition of "abandoned" in Lanham Act § 45, 15 U.S.C. § 1127:

A mark shall be deemed to be "abandoned" if either of the following occurs:

(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

(2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.

The following excerpt is taken from ITC Ltd. v. Punchgini, Inc., 482 F.3d 135 (2d Cir. 2007), parts of which we have already considered in Part I.E.3 in connection with the wellknown marks doctrine. The reader will recall that, in 1986, the plaintiff ITC Ltd. opened a restaurant under the name Bukhara in New York City. In 1987, the plaintiff entered into a franchise agreement for a Bukhara restaurant in Chicago. Also in 1987, the plaintiff registered at the PTO the mark BUKHARA in connection with "restaurant services" See U.S. Trademark Registration No. 1,461,445 (Oct. 13, 1987). The New York City restaurant closed in 1991 and ITC cancelled its Chicago franchise in 1997. In 2000, the defendant Punchgini, Inc. opened the restaurant Bukhara Grill in New York City. In 2003, the plaintiff sued for trademark infringement. The district court had granted summary judgment in favor of the defendant.

In this case, the well-known marks issue related to the abandonment issue in the following respect. If ITC was found to have abandoned the BUKHARA mark in the United States, then the only good argument ITC had left was that even though it had ceased to use its mark in commerce in the United States, the mark's global reputation qualified it for protection as a "well-known mark" within the United States.

[1] . . . Even if a plaintiff makes the showing {of infringement} required by federal and state [trademark] law, however, the alleged infringer may nevertheless prevail if it can establish the owner's prior abandonment of the mark. See 15 U.S.C. § 1115(b)(2); Nercessian v. Homasian Carpet Enter., Inc., 60 N.Y.2d 875, 877, 470 N.Y.S.2d 363, 364, 458 N.E.2d 822 (1983) (holding that "rights in a trade name may be lost by abandonment"). Indeed, abandonment is not only an affirmative defense to an infringement action; it is a ground for cancelling a federally registered mark. See 15 U.S.C. § 1064(3).

[2] Relying on this principle, defendants submit that ITC's infringement claim is necessarily defeated as a matter of law by proof that, by the time they opened their Bukhara Grill restaurants in New York, ITC had effectively abandoned the Bukhara mark in the United States. Like the district court, we conclude that defendants successfully established abandonment as a matter of law, warranting both summary judgment in their favor and cancellation of ITC's registered mark. [3] The abandonment doctrine derives from the well-established principle that trademark rights are acquired and maintained through use of a particular mark. See Pirone v. MacMillan, Inc., 894 F.2d 579, 581 (2d Cir. 1990) ("'There is no such thing as property in a trade-mark except as a right appurtenant to an established business or trade in connection with which the mark is employed.'" (quoting United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918))). This is true even of marks that have been registered with the Patent and Trademark Office. See Basile, S.p.A. v. Basile, 899 F.2d 35, 37 n. 1 (D.C. Cir. 1990) ("Although [a mark's] registration is a predicate to its protection under [section 32(1)(a) of] the Lanham Act, the underlying right depends not on registration but rather on use."). Indeed, one of the fundamental premises underlying the registration provisions in the Lanham Act is that trademark rights flow from priority and that priority is acquired through use. See, e.g., 15 U.S.C. § 1057(c) (stating that registration of mark "shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect . . . against any other person except for a person whose mark has not been abandoned and who, prior to such filing [,] . . . has used the mark"). Thus, so long as a person is the first to use a particular mark to identify his goods or services in a given market, and so long as that owner continues to make use of the mark, he is "entitled to prevent others from using the mark to describe their own goods" in that market. Defiance Button Mach. Co

[5] The party asserting abandonment bears the burden of persuasion with respect to two facts: (1) non-use of the mark by the legal owner, and (2) lack of intent by that owner to resume use of the mark in the reasonably foreseeable future. See 15 U.S.C. § 1127; Stetson v. Howard D. Wolf & Assocs., 955 F.2d 847, 850 (2d Cir. 1992); Silverman v. CBS, Inc., 870 F.2d at 45; see also On-Line Careline, Inc. v. America Online, Inc., 229 F.3d 1080, 1087 (Fed. Cir. 2000) (placing burden of persuasion on party seeking cancellation on ground of abandonment); Warner Bros. Inc. v. Gay Toys, Inc., 724 F.2d 327, 334 (2d Cir. 1983) (placing burden of persuasion on party asserting abandonment as defense).

[6] ITC concedes that defendants satisfied the first element through proof that ITC has not used the Bukhara mark for restaurant services in the United States since August 28, 1997. Nevertheless, ITC insists that a triable issue of fact exists with respect to its intent to resume use of the service mark in the United States. To the extent the district court concluded otherwise, ITC submits the court applied an incorrect legal standard. To explain why we are not persuaded by this argument, we begin by discussing the particular legal significance of non-use of a registered mark for a period of at least three years.

[7] The Lanham Act expressly states that "[n]onuse" of a mark "for 3 consecutive years shall be prima facie evidence of abandonment." 15 U.S.C. § 1127. This court has explained that the term "prima facie evidence" in this context means "a rebuttable presumption of abandonment." Saratoga Vichy Spring Co. v. Lehman, 625 F.2d 1037, 1044 (2d Cir. 1980); accord Silverman v. CBS, Inc., 870 F.2d at 45.

The role played by such a presumption is best understood by reference to Rule 301 of the Federal Rules of Evidence:

In all civil actions and proceedings not otherwise provided for by Act of Congress or by these rules, a presumption imposes on the party against whom it is directed the burden of going forward with evidence to rebut or to meet the presumption, but does not shift to such party the burden of proof in the sense of the risk of non-persuasion, which remains throughout the trial upon the party on whom it was originally cast. Fed.R.Evid. 301. Although the term "presumption" is not specifically defined in the Rules of Evidence, it is generally understood to mean "an assumption of fact resulting from a rule of law which requires such fact to be assumed from another fact or group of facts found or otherwise established in the action." 21B Charles Alan Wright & Kenneth W. Graham, Jr., Federal Practice and Procedure § 5124 (2d ed. 2005); see also Texas Dep't of Cmty. Affairs v. Burdine, 450 U.S. 248, 256 n. 10 (1981) (describing presumption as "legally mandatory inference"). The assumption ceases to operate, however, upon the proffer of contrary evidence. See generally A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1037 (Fed. Cir. 1992) (observing that under Rule 301, a "presumption is not merely rebuttable but completely vanishes upon the introduction of evidence sufficient to support a finding of the nonexistence of the presumed fact"); Saratoga Vichy Spring Co. v. Lehman, 625 F.2d at 1043 (suggesting that presumption of abandonment "disappears when rebutted by contrary evidence").

[8] Thus, in this case, the statutory presumption of abandonment requires that one fact, i.e., abandonment, be inferred from another fact, i.e., non-use of the mark for three years or more. The significance of a presumption of abandonment is to shift the burden of production to the mark owner to come forward with evidence indicating that, despite three years of nonuse, it intended to resume use of the mark within a reasonably foreseeable time. See Imperial Tobacco, Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 1579 (Fed. Cir. 1990) (noting that triggering of presumption "eliminates the challenger's burden to establish the [lack of] intent [to resume use] element of abandonment as an initial part of its case"); see also Cumulus Media, Inc. v. Clear Channel Commc'ns, 304 F.3d 1167, 1176-77 (11th Cir. 2002); On-Line Careline, Inc. v. America Online, Inc., 229 F.3d at 1087. The ultimate burden of persuasion on the issue of abandonment, however, remains at all times with the alleged infringer. See Emergency One, Inc. v. American FireEagle, Ltd., 228 F.3d 531, 536 (4th Cir. 2000). [9] This court has observed that "to overcome a presumption of abandonment after a sufficiently long period of non-use, a defendant need show only an intention to resume use 'within the reasonably foreseeable future.'" Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d 462, 468 n. 2 (2d Cir. 2005) (quoting Silverman v. CBS, Inc., 870 F.2d at 45). ITC submits that the district court erred in imposing a stricter standard, specifically requiring ITC to adduce "'objective, hard evidence of actual concrete plans to resume use in the reasonably foreseeable future when the conditions requiring suspension abate'" to defeat defendants' summary judgment motion. ITC Ltd. v. Punchgini, Inc., 373 F.Supp.2d at 280 (quoting Emmpresa Cubana Del Tabaco v. Culbro Corp., 213 F.Supp.2d 247, 268-69 (S.D.N.Y. 2002)).

The Evidence Necessary to Defeat a Presumption of Abandonment

[10] This court has, in fact, criticized the particular language quoted by the district court, observing that such a "heavy burden" is not required by our precedent. See Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d at 467 n. 2. Courts and commentators are in general agreement that proffered evidence is "sufficient" to rebut a presumption as long as the evidence could support a reasonable jury finding of "the nonexistence of the presumed fact." Wanlass v. Fedders Corp., 145 F.3d 1461, 1464 (Fed. Cir. 1998) . . . . In short, upon defendants' presentation of evidence establishing a prima facie case of abandonment under the Lanham Act, ITC was required to come forward only with such contrary evidence as, when viewed in the light most favorable to ITC, would permit a reasonable jury to infer that it had not abandoned the mark. Specifically, it needed to adduce sufficient evidence to permit a reasonable jury to conclude that, in the three-year period of non-use-from August 28, 1997, when ITC terminated the Chicago Bukhara franchise, to August 28, 2000-ITC nevertheless maintained an intent to resume use of its registered mark in the reasonably foreseeable future. 9 See Silverman v. CBS, Inc., 870 F.2d at 47; accord Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d at 467 n. 2. Hard evidence of concrete plans to resume use of the mark would certainly carry this burden. But we do not foreclose the possibility that other circumstances, viewed in the light most favorable to the non-movant, might also support the necessary jury inference of intent. See, e.g., Geneva Pharms. Tech. Corp. v. Barr Labs., Inc., 386 F.3d 485, 506 (2d Cir. 2004) (looking to totality of circumstances to infer intent). 9 Although we have not previously stated specifically that a mark holder's intent to resume use of the mark must be formulated during the three-year period of non-use, we do so now, noting that two other circuit courts have also reached this conclusion. See, e.g., Imperial Tobacco, Ltd. v. Philip Morris, Inc., 899 F.2d at 1580-81 [Fed. Cir.] (expressly recognizing that intent must be formulated during nonuse period); Emergency One, Inc. v. American FireEagle, Ltd., 228 F.3d at 537 [4th Cir.] (same). Indeed, we think this conclusion follows naturally from the fact that an abandoned mark may be appropriated for use by other actors in the marketplace. An intent to resume use of the mark formulated after more than three years of non-use cannot be invoked to dislodge the rights of another party who has commenced use of a mark-thereby acquiring priority rights in that mark-after three years of nonuse. We do not, however, foreclose the use of evidence arising after the relevant three-year period to demonstrate an intent within that period to resume use.

b. ITC's Failure to Adduce Evidence from Which a Reasonable Jury Could Infer Intent to

Resume Use [11] As this court has recognized, "intent is always a subjective matter of inference and thus rarely amenable to summary judgment." Saratoga Vichy Spring Co. v. Lehman, 625 F.2d at 1044. At the same time, however, "'[t]he summary judgment rule would be rendered sterile . . . if the mere incantation of intent or state of mind would operate as a talisman to defeat an otherwise valid motion.'" Distasio v. Perkin Elmer Corp., 157 F.3d 55, 61-62 (2d Cir. 1998) (quoting Meiri v. Dacon, 759 F.2d 989, 997 (2d Cir. 1985)). The latter point is particularly relevant in the context of an abandonment dispute, because "[i]n every contested abandonment case, the respondent denies an intention to abandon its mark; otherwise there would be no contest." Imperial Tobacco, Ltd. v. Philip Morris, Inc., 899 F.2d at 1581. Thus, courts have generally held that a trademark owner cannot rebut a presumption of abandonment merely by asserting a subjective intent to resume use of the mark at some later date. . . . Emergency One, Inc. v. American FireEagle, Ltd., 228 F.3d at 537 ("[T]he owner of a trademark cannot defeat an abandonment claim . . . by simply asserting a vague, subjective intent to resume use of a mark at some unspecified future date.") . . . ; see also Silverman v. CBS, Inc., 870 F.2d at 47 ("A bare assertion of possible future use is not enough."). Rather, to rebut a presumption of abandonment on a motion for summary judgment, the mark owner must come forward with evidence "with respect to . . . what outside events occurred from which an intent to resume use during the nonuse period may reasonably be inferred." Imperial Tobacco, Ltd. v. Philip Morris, Inc., 899 F.2d at 1581; accord Emergency One, Inc. v. American FireEagle, Ltd., 228 F.3d at 537-38; see also Silverman v. CBS, Inc., 870 F.2d at 47 (noting that presumption of abandonment can be rebutted "by showing reasonable grounds for the suspension and plans to resume use in the reasonably foreseeable future when the conditions requiring suspension abate" 10 ).

[12] ITC argues that four facts would allow a reasonable factfinder to infer its intent to resume use of the Bukhara mark for restaurants in the United States: (1) the reasonable grounds for its suspension of use of the mark, (2) its efforts to develop and market a Dal Bukhara line of packaged food, (3) its attempts to identify potential United States restaurant 10 The two factors identified in Silverman are not distinct but intertwined. A mark owner's reason for suspending use of a mark is relevant to abandonment analysis only as circumstantial evidence shedding possible light on his intent to resume future use within a reasonable period of time. In short, not every "reasonable suspension" will necessarily rebut a presumption of abandonment. See Silverman v. CBS, Inc., 870 F.2d at 47 (observing that "however laudable one might think CBS's motives to be, such motives cannot overcome the undisputed fact that CBS has not used its mark for more than 20 years and that, even now, it has no plans to resume [its] use in the reasonably foreseeable future," and further noting that "we see nothing in the statute that makes the consequence of an intent not to resume use turn on the worthiness of the motive for holding such intent").

franchisees, and (4) its continued use of the Bukhara mark for restaurants outside the United States. We are not persuaded.

[13] ITC advances two reasons for suspending use of the Bukhara mark in the United States from 1997 to 2000: (a) Indian regulations requiring it to return profits earned abroad severely hindered its ability to open and operate profitable Bukhara restaurants in the United States, and (b) depressed market conditions in the hospitality industry from 1988 to 2003 inhibited its development of franchise partnerships in the United States. Because these reasons are unsupported by record evidence, they plainly cannot demonstrate the requisite intent. 11[14] As to the first point, the record indicates that many of the Indian regulations cited by ITC had been in effect since 1973. Clearly, these regulations did not prevent ITC from opening its Bukhara restaurant in New York in 1986 or from licensing a Bukhara restaurant in Chicago in 1987. Although ITC submits that the regulations were a significant factor in the failure of these two restaurants, no evidence was adduced to support this conclusory assertion. See generally Bridgeway Corp. v. Citibank, 201 F.3d 134, 142 (2d Cir. 2000) (holding that conclusory statements, conjecture, and inadmissible evidence are insufficient to defeat summary judgment). Indeed, the record is to the contrary. When, at deposition, an ITC corporate representative was asked why the New York Bukhara closed, he replied simply that the restaurant was highly leveraged and unable to meet its debt obligations. He made no mention of any Indian regulations. Similarly, the letter by which ITC terminated its Chicago license agreement referenced only the franchisee's failure to pay fees owed to ITC, making no mention of Indian regulations.

[15] Further, ITC fails to explain how Indian regulations, which ITC claims applied to any business operated outside India, hindered its use of the Bukhara mark for restaurants in the United States between 1997 and 2000 but permitted it to open a Bukhara restaurant in the United Arab Emirates in 1998. To the extent ITC argues that the regulations limited its options by effectively requiring it to partner exclusively with well-established hotels, it offers no evidence that hotels in the United States were unreceptive to such a partnership arrangement.

[16] With respect to ITC's argument that a market decline in the hospitality industry between 1988 and 2003 explains its non-use of the mark, the record indicates only a decline in India and the overseas market. ITC proffered no evidence demonstrating a decline in the United States hospitality market during the relevant 1997-2000 period of non-use.foot_13

[17] ITC points to only one piece of evidence during the relevant 1997-2000 period indicating its intent to use the name Bukhara in connection with packaged foods: the minutes from a July 27, 2000 corporate management committee meeting in India, which approved an initiative to market food products under the name "Bukhara Dal." Significantly, the minutes nowhere indicate ITC's intent to market this product in the United States, much less ITC's intent to resume use of the Bukhara mark for restaurants in this country. Accordingly, we conclude that the minutes, by themselves, are insufficient to create a genuine issue of material fact as to ITC's intent to resume use of its registered service mark in the United States.

[18] The remaining evidence adduced by ITC all post-dates the relevant 1997-2000 period of non-use. Specifically, in 2001, ITC commissioned a study regarding the marketing of packaged food bearing the Bukhara mark in the United States. That same year, ITC filed trademark applications for several marks containing the word "Bukhara" in relation to packaged food products. Not until 2003 did ITC actually showcase its packaged food line at a New York trade show or sell these products to two United States distributors. These acts, all occurring well after 2000 and suggesting future use of the Bukhara mark for a product other than restaurants, are insufficient to support the necessary inference that, in the non-use period, ITC maintained an intent to resume use of the mark for restaurants in the United States in the reasonably foreseeable future.

[19] ITC argues that evidence of its discussions with various persons about expanding the Bukhara restaurant franchise to New York, California, and Texas creates a jury issue as to its intent to resume use of its registered mark within a reasonably foreseeable time. In fact, the only evidence of these so-called "discussions" is a few facsimiles, e-mails, and letters sent to ITC over a five-year period from 1998 to 2002. There is no evidence that ITC initiated any of these contacts. More to the point, no evidence indicates that ITC responded to or seriously considered these unsolicited proposals in a manner that would permit a reasonable jury to infer its intent to resume use of its Bukhara mark for restaurants. As such, these communications, even when viewed in the light most favorable to ITC, do not give rise to a material question of fact on the issue of ITC's intent to resume use of its registered mark.

[20] ITC submits that record evidence also reveals its negotiations to expand the Bukhara restaurant brand into Starwood hotels. The proffered evidence consists of (1) a 2002 letter from Starwood's Asia-Pacific headquarters indicating a general interest in operating Bukhara restaurants in some of its hotels outside India, and (2) a 2004 story from an Indian newspaper about ITC's intent to open Bukhara restaurants in London and Tokyo. Neither document references the possible opening of a Bukhara restaurant in the United States.

See John Holusha, "Commercial Property; An Up Cycle Just Keeps Rolling," The New York Times 11:1 (Sept. 24, 2000) (noting historically high occupancy rates in city hotels with 13% growth in first half of year); cf. Marian Burros, "Waiter, Hold the Foie Gras: Slump Hits New York Dining," The New York Times A:1 (Sept. 4, 2001) (noting, in 2001, first signs of decline in city's 10-year restaurant boom).

Moreover, both the letter and the news story post-date the 1997-2000 period of non-use that gives rise to the presumption of abandonment, and they make no mention of any intent to resume use arising during this critical time frame. Accordingly, this evidence is insufficient to raise a material issue of fact.

(4) Bukhara Restaurants Outside the United States [21] Finally, ITC cites La Societe Anonyme des Parfums le Galion v. Jean Patou, Inc. to support its argument that the continued operation of its Bukhara restaurants outside the United States demonstrates "an ongoing program to exploit the mark commercially," giving rise to an inference of an intent to resume the mark's use in this country, 495 F.2d 1265, 1272 (2d Cir. 1974). In fact, ITC's reliance on Societe Anonyme is misplaced. In that case, this court ruled that a "meager trickle" of perfume sales within the United States-89 bottles sold over a period of 20 years-was insufficient to establish trademark rights in the United States. Id. Nothing in that case suggests that ongoing foreign use of a mark, by itself, supports an inference that the owner intends to re-employ a presumptively abandoned mark in the United States. Cf. id. at 1271 n. 4 (noting "well-settled" view "that foreign use is ineffectual to create trademark rights in the United States"). Indeed, we identify no authority supporting that conclusion.

[22] Accordingly, like the district court, we conclude that ITC's continued foreign use of the Bukhara mark for restaurants does not raise a material issue of fact regarding its intent to resume similar use of the mark in the United States. Because ITC plainly abandoned its right to the Bukhara mark for restaurant services in the United States, we affirm the award of summary judgment in favor of defendants on ITC's federal and state infringement claims. [1] The Trademark Trial and Appeal Board ("Board") sustained Mattel, Inc.'s ("Mattel") challenge to The Crash Dummy Movie, LLC's ("CDM") application to register the mark CRASH DUMMIES for a line of games and playthings. The record leaves no doubt that CDM's proposed mark is likely to cause confusion with Mattel's previously used marks CRASH DUMMIES and THE INCREDIBLE CRASH DUMMIES (collectively, "CRASH DUMMIES marks") for action figures and playsets. CDM asserts, however, that these marks were abandoned. Because substantial evidence supports the Board's finding that Mattel overcame the statutory presumption of abandonment of its CRASH DUMMIES marks, this court affirms.

[2] Mattel's predecessor-in-interest, Tyco Industries, Inc. ("Tyco"), first produced a line of toys under the CRASH DUMMIES marks in 1991. In 1993, Tyco obtained federal trademark registrations for the CRASH DUMMIES marks: CRASH DUMMIES (Registration No. 1809338) and THE INCREDIBLE CRASH DUMMIES (Registration No. 1773754). Tyco sold toys under the CRASH DUMMIES marks through at least 1994. In addition, Tyco entered into forty-nine licenses for use of the CRASH DUMMIES marks in connection with a variety of products. The licenses expired on December 31, 1995, with some licenses having a product sell-off period of four to six months following their expiration.

[3] On July 14, 1995, CDM entered into an option agreement with Tyco to produce a motion picture based on Tyco's line of toys sold under the CRASH DUMMIES marks. The option agreement expired on July 14, 1996. Although CDM attempted to renegotiate a license later that year, Tyco declined to enter into another option agreement with CDM. [4] In the mid-1990's, Tyco experienced financial difficulties and began negotiating an acquisition with Mattel. On February 12, 1997, Tyco assigned its trademark portfolio, including the CRASH DUMMIES marks, to Mattel. Mattel officially purchased Tyco on December 31, 1997. Mattel later recorded Tyco's assignment with the United States Patent Trademark Office ("USPTO") on February 13, 1998. Due to the size of the acquisition, the two businesses did not fully integrate until late 2004 or early 2005.

[5] In 1998, KB Toys approached Mattel, hoping to become the exclusive retailer of toys sold under the CRASH DUMMIES marks. Mattel declined the offer. Mattel needed to retool Tyco's CRASH DUMMIES toys in order to meet Mattel's stringent safety standards. Mattel determined that the cost of retooling was too significant in light of KB Toys's sales projections at the time. [7] On March 31, 2003, CDM filed an intent-to-use application for the mark CRASH DUMMIES for games and playthings. Mattel opposed CDM's application, claiming priority to Tyco's prior registration and use of the CRASH DUMMIES marks. Mattel and CDM agree that their respective marks are likely to cause confusion. The only disputed issue before the Board was whether Mattel was entitled to claim common law trademark rights to the CRASH DUMMIES marks predating CDM's March 2003 filing date. The Board found a prima facie abandonment of the CRASH DUMMIES marks based on three years of nonuse, beginning at the earliest on December 31, 1995, and ending at Mattel's actual shipment of CRASH DUMMIES toys in December 2003. However, the Board concluded that Mattel rebutted the presumption of abandonment of its common law trademark rights by showing "reasonable grounds for the suspension and plans to resume use in the reasonably foreseeable future when the conditions requiring suspension abate." CDM appeals the Board's decision sustaining Mattel's opposition. This court has jurisdiction under 28 U.S.C. § 1295(a)(4)(B).

[8] Abandonment of a trademark is a question of fact, which this court reviews for substantial evidence. On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1087 (Fed. Cir. 2000). The substantial evidence standard requires this court to ask whether a reasonable person might find that the evidentiary record supports the agency's conclusion. Id. at 1085. "[T]he possibility of drawing two inconsistent conclusions from the evidence does not prevent an administrative agency's finding from being supported by substantial evidence." Consolo v. Fed. Maritime Comm'n, 383 U.S. 607, 620 (1966).

[9] In addition, this court reviews evidentiary rulings for an abuse of discretion. Chen v. Bouchard, 347 F.3d 1299, 1307 (Fed. Cir. 2003) (citation omitted). This court reverses the Board's evidentiary rulings only if they: (1) were clearly unreasonable, arbitrary, or fanciful;

(2) were based on an erroneous conclusions of law; (3) rest on clearly erroneous findings of fact; or (4) follow from a record that contains no evidence on which the Board could rationally base its decision. Id. (citation omitted).

[10] A registered trademark is considered abandoned if its "use has been discontinued with intent not to resume such use." 15 U.S.C. § 1127 (2006). "Nonuse for 3 consecutive years shall be prima facie evidence of abandonment." Id. A showing of a prima facie case creates a rebuttable presumption that the trademark owner has abandoned the mark without intent to resume use. On-Line Careline, 229 F.3d at 1087. "The burden then shifts to the trademark owner to produce evidence that he either used the mark during the statutory period or intended to resume use." Id. "The burden of persuasion, however, always remains with the [challenger] to prove abandonment by a preponderance of the evidence." Id. [11] As an initial matter, CDM does not challenge the Board's finding that Tyco did not abandon the CRASH DUMMIES marks before the 1997 assignment. CDM only challenges the Board's factual finding regarding Mattel's intent to resume use after it acquired the marks in February 1997 until it began selling CRASH DUMMIES toys in December 2003.

[12] Substantial evidence supports the Board's finding that Mattel intended to resume use of the CRASH DUMMIES marks during the contested time period. First, in 1998, Mattel entered into discussions with KB Toys about becoming the exclusive retailer of CRASH DUMMIES toys. Mattel considered the relative merits of exclusive sales through KB Toys and the high cost of retooling Tyco's product line to meet Mattel's stringent safety standards. Mattel's analysis shows that it contemplated manufacturing toys under the CRASH DUMMIES marks at the time the discussion took place. Although Mattel did not ultimately enter into the KB Toys agreement, no evidence suggests that Mattel rejected the business opportunity because it decided to abandon the marks.

[13] Second, common sense supports the conclusion that Mattel would not have recorded Tyco's trademark assignment with the USPTO in 1998 unless it intended to use the CRASH DUMMIES mark within the foreseeable future. Although Mattel later allowed its trademark registrations to lapse, cancellation of a trademark registration does not necessarily translate into abandonment of common law trademark rights. Nor does it establish its owner's lack of intent to use the mark. See Miller Brewing Co. v. Oland's Breweries (1971), Ltd., 548 F.2d 349, 352 n. 4 (CCPA 1976) ("Although Oland & Son's registration was cancelled in January of 1968 for failure to file a continued use affidavit, this, in and of itself, does not show an intent to abandon.") (citation omitted). Therefore, Mattel's failure to file a timely Section 8 declaration of use and/or excusable nonuse for the marks does not negate Mattel's intent to resume use of the mark.

[14] Third, substantial evidence supports the Board's finding that Mattel's research and development efforts from 2000 to 2003 indicate its intent to resume use of the marks. Mattel relied on its internal documents and testimony by Peter Frank, Mattel's marketing manager, to describe its product development activities. Based on the documents, Frank testified that Mattel began brainstorming ideas for the CRASH DUMMIES toys in 2000, researched and tested them in 2001, and obtained concept approval in 2002. He also explained that Mattel began manufacturing the CRASH DUMMIES toys in October 2003, culminating in actual shipment in December 2003.

[15] In addition, Mattel's shipment of CRASH DUMMIES toys in December 2003 supports Frank's testimony about Mattel's research and development efforts in the early 2000's. This court does not disregard this record evidence because it falls outside of the three-year statutory period of nonuse. The Board may consider evidence and testimony regarding Mattel's practices that occurred before or after the three-year statutory period to infer Mattel's intent to resume use during the three-year period. See Miller Brewing Co. v. Oland's Breweries, 548 F.2d 349, 352 (CCPA 1976) (considering evidence beyond a statutory period to affirm the Board's decision to sustain opposition to a trademark application). Therefore, substantial evidence shows that Mattel continuously worked on developing CRASH DUMMIES toys from 2000 to 2003.

[16] Mattel needed sufficient time to research, develop, and market its retooled CRASH DUMMIES toys after acquiring Tyco's CRASH DUMMIES marks in 1997. Despite Mattel's delay in utilizing the marks for its toys, substantial evidence supports the Board's finding that Mattel rebutted the statutory presumption of abandonment of the marks. Accordingly, the Board correctly held that CDM may not register its proposed mark CRASH DUMMIES for a line of games and playthings.

[17] Because substantial evidence supports the Board's finding that Mattel intended to resume use of the CRASH DUMMIES marks during the period of non-use, this court affirms.

1. Why might a firm deliberately and formally abandon a mark? At least one reason is for tax write-off purposes. See, e.g., California Cedar Prod. Co. v. Pine Mountain Corp., 724 F.2d 827, 829 (9th Cir. 1984) (describing previous owner of DURAFLAME mark's "objective of withdrawing from the artificial fire log market and writing off for accounting purposes" the mark's goodwill); Manhattan Indus., Inc. v. Sweater Bee by Banff, Ltd., 627 F.2d 628, 630 n .2 (2d Cir. 1980) ("Although the record does not show General Mills' reason for abandoning the mark {KIMBERLY for women's apparel}, counsel suggested at oral argument, in answer to the court's question, that the abandonment might have been for tax purposes."). Cf. id. at 629 ("Upon the mark's abandonment, a free-for-all ensued" in which several different clothing manufacturers sought to claim rights in the mark).

2. Badwill? Trademark law enables firms to protect the goodwill they have developed in the various goods or services they provide. But what about trademarks that develop a reputation for severely defective goods and poor performance? It is apparently routine practice that after a commercial airliner crashes, airlines will rush to paint over any identifying trademarks appearing on the exterior of the wreckage if that wreckage is photographable. See Will Coldwell, Thai Airways and that logo -just part of post-plane-crash etiquette?, THE GUARDIAN, Sept. 9, 2013; Nick Squires, Alitalia paints over crashed plane's markings, THE TELEGRAPH, Feb. 4, 2013 (quoting a spokesman of Alitalia after it painted over its trademark on wreckage: "[t]his is something that is done by airline companies in many countries and we are surprised that such a fuss is being made. It is a matter of brand protection."). Cf. Reuters, AIG to Revive AIG Name; Drop Chartis, SunAmerica Names: Reuters, INSURANCE JOURNAL, June 28, 2012 (discussing AIG's efforts to rename itself, in part for the safety of its own employees, after the 2008 financial crisis and its subsequent decision to return to the AIG name).

Should trademark law (or some neighboring body of law) require that firms continue to use marks that have developed badwill? See Note, Badwill, 116 HARV. L. REV. 1845REV. (2003)). See also Matthew Sipe, Trademasks, 104 N.C. L. Rev. 719 (2026); Sonia Katyal & Brigitte Desnoes, "Source Distortion" (working paper).

Abandonment Through Failure to Control Use

FreecycleSunnyvale v. Freecycle Network 626 F.3d 509 (9th Cir. 2010) CALLAHAN, Circuit Judge:

[1] FreecycleSunnyvale ("FS") is a member group of The Freecycle Network ("TFN"), an organization devoted to facilitating the recycling of goods. FS filed a declaratory action against TFN arising from a trademark licensing dispute, alleging noninfringement of TFN's trademarks and tortious interference with FS's business relations. FS moved for partial summary judgment on the issue of whether its naked licensing defense to trademark infringement allowed it to avoid a finding of infringement as a matter of law. 1 TFN argued that it had established adequate quality control standards over its licensees' services and use of the trademarks to avoid a finding of naked licensing and abandonment of its trademarks. The district court granted summary judgment to FS. We hold that TFN (1) did not retain express contractual control over FS's quality control measures, (2) did not have actual controls over FS's quality control measures, and (3) was unreasonable in relying on FS's quality control measures. Because we find that TFN engaged in naked licensing and thereby abandoned its trademarks, we affirm. I A [2] In March 2003, Deron Beal ("Beal") founded TFN, an umbrella non-profit Arizona corporation dedicated to "freecycling." The term "freecycling" combines the words "free" and "recycling" and refers to the practice of giving an unwanted item to a stranger so that it can continue to be used for its intended purpose, rather than disposing of it. 2 As practiced by TFN, freecycling is primarily a local activity conducted by means of internet groups, which are created by volunteers through online service providers like Yahoo! Groups and Google Groups. 3 Although not required to do so, most TFN member groups use Yahoo! Groups as a 1 Naked licensing occurs when a licensor does not exercise adequate quality control over its licensee's use of a licensed trademark such that the trademark may no longer represent the quality of the product or service the consumer has come to expect. See Barcamerica Int'l USA Trust v. Tyfield Importers, Inc., 289 F.3d 589, 595-96 (9th Cir. 2002). By not enforcing the terms of the trademark's use, the licensor may forfeit his rights to enforce the exclusive nature of the trademark. The key question is therefore whether TFN produced any evidence to raise a material fact issue as to whether it: (1) retained contractual rights to control the quality of the use of its trademark; (2) actually controlled the quality of the trademark's use; or (3) reasonably relied on FS to maintain the quality. Barcamerica, 289 F.3d at 596-98 (upholding trademarks where a licensor is familiar with the licensee and reasonably relies on the licensee's own quality control efforts).

forum for members to coordinate their freecycling activities. TFN also maintains its own website, www.freecycle.org, which provides a directory of member groups as well as resources for volunteers to create new groups. The website also includes a section devoted to etiquette guidelines.

[3] TFN asserts that it maintains a "Freecycle Ethos"-a democratic leadership structure, in which decisions are made through a process of surveys and discussions among volunteer moderators. Local volunteer moderators are responsible for enforcing TFN's rules and policies, but the moderators have flexibility in enforcement depending on the moderators' assessment of their local communities.

[4] Since May 2003, TFN has been using three trademarks, FREECYCLE, THE FREECYCLE NETWORK, and a logo (collectively "the trademarks") to identify TFN's services and to identify member groups' affiliation with TFN. Federal registration of the trademarks is currently pending in the United States, but the trademarks have been registered in other countries. TFN permits member groups to use the trademarks. When TFN first started, Beal personally regulated the use of the trademarks but, as TFN has grown, it has relied on local moderators to regulate member groups' use of the trademarks.

[5] Lisanne Abraham ("Abraham") founded FS on October 7, 2003, in Sunnyvale, California, without TFN's knowledge or involvement. She established the group by entering into a service contract with Yahoo! Groups and becoming the group's moderator. Upon establishing FS, Abraham adapted etiquette guidelines and instructions for how to use FS from either TFN's or one of TFN's member group's website. On October 7, 2003, Abraham emailed Beal directly asking for a logo for FS, and they spoke over the phone within days of the email communication. After the phone conversation, Beal emailed Abraham on October 9, 2003, stating: "You can get the neutral logo from www.freecycle.org, just don't use it for commercial purposes or you [sic] maybe Mark or Albert can help you to do your own fancy schmancy logo!" 4 This email is the only record of a direct communication between FS and TFN regarding the use of any of the trademarks.

[6] Between October 7, 2003, and October 9, 2003, FS was added to TFN's list of online freecycling groups displayed on TFN's website. Then, on October 9, 2003, Abraham received an email from Beal addressed to nineteen moderators of new freecycle Yahoo! Groups which, among other things, welcomed them to TFN. The email did not discuss or include any restrictions or guidance on the use of TFN's trademarks. On October 13, 2003, Abraham received another email from TFN, this time an invitation to join the "freecyclemodsquad" Yahoo! Group ("modsquad group"), an informal discussion forum exclusively for the moderators of freecycle Yahoo! Groups to share ideas.

[7] Before 2004, TFN had only a few suggested guidelines in the etiquette section of its website, including a "Keep it Free" rule. Then, on January 4, 2004, Beal sent an email to the modsquad group, asking whether TFN should also limit listed items to those that were legal. Ultimately, Beal proposed the adoption of a "Keep it Free, Legal & Appropriate for All Ages" rule and asked "that all moderators vote on whether they feel this is the one rule that should apply to ALL local groups or not." Between January 4 and January 11, 2004, a majority of the modsquad group voted to require all local groups to adopt the rule and, on January 11, Beal informed the group that "I'm glad to say . . . we now have one true guiding principle." Although the moderators adopted the "Keep it Free, Legal & Appropriate for All Ages" rule, following its adoption, they frequently discussed what the actual meaning of the rule was and, ultimately, its definition and enforcement varied from group to group. [8] Although the underlying reason is not evident from the record or the parties' briefs, on November 1 and November 14, 2005, TFN sent emails to FS ordering the group to cease and desist using the Freecycle name and logo and threatening to have Yahoo! terminate FS's Yahoo! Group if FS did not comply. On November 5, FS emailed Yahoo! and disputed TFN's ability to forbid the use of the trademarks by informing Yahoo! of the license that TFN allegedly had granted FS in October 2003 (i.e., Beal's October 9, 2003 email authorizing Abraham to use the logo). On November 21, Yahoo! terminated the FS Yahoo! Group at TFN's request, after receiving a claim from TFN that FS was infringing on TFN's trademark rights.

[9] On January 18, 2006, FS filed a declaratory judgment action against TFN in the U.S. District Court for the Northern District of California, alleging noninfringement of TFN's trademarks and tortious interference with FS's business relations. TFN brought counterclaims for trademark infringement and unfair competition under the Lanham Act and California Business and Professions Code section 17200.

[10] FS then moved for summary judgment on the issue of whether its naked licensing defense to trademark infringement allowed it to avoid a finding of infringement as a matter of law. FS argued that TFN had abandoned its trademarks because it engaged in naked licensing when it granted FS the right to use the trademarks without either (1) the right to control or (2) the exercise of actual control over FS's activities. On March 13, 2008, the district court granted summary judgment in favor of FS, holding that TFN engaged in naked licensing and therefore abandoned its rights to the trademarks. The parties stipulated to dismiss the remaining claims, and final judgment was entered on May 20, 2008. TFN thereafter timely filed its appeal. II . . . . [11] In ruling on a motion for summary judgment, our inquiry "necessarily implicates the substantive evidentiary standard of proof that would apply at the trial on the merits." Id. at 252. We have held that the proponent of a naked license theory of trademark abandonment must meet a "stringent standard of proof." Barcamerica, 289 F.3d at 596; see also Prudential Ins. Co. of Am. v. Gibraltar Fin. Corp. of Cal., 694 F.2d 1150, 1156 (9th Cir. 1982) ("Abandonment of a trademark, being in the nature of forfeiture, must be strictly proved."). . . . [12] We have yet to determine, however, whether this high standard of proof requires "clear and convincing" evidence or a "preponderance of the evidence.". . . .

[13] A review of our sister circuits' decisions reveals that only two circuits have considered which standard to apply, with one reserving the issue and the other adopting a preponderance of the evidence standard. See Cumulus Media, Inc. v. Clear Channel Commcn's, Inc., 304 F.3d 1167, 1175 n. 12 (11th Cir. 2002) (declining to address the meaning of "strict burden" because the outcome of the case would be the same with either standard of proof); Cerveceria Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 1024 (Fed. Cir. 1989) (adopting the preponderance of the evidence standard). Most published lower court decisions that have reached this issue appear to have interpreted the "strictly proven" standard to require "clear and convincing" evidence of naked licensing. See [14] Here, we need not decide which standard of proof applies because, even applying the higher standard of proof-clear and convincing-and viewing the evidence in the light most favorable to TFN as the non-moving party, FS has demonstrated that TFN engaged in naked licensing and consequently abandoned the trademarks.

[15] An introduction to "naked licensing" of trademarks is in order, as this issue has seldom arisen in this circuit or in our sister circuits. Our only discussion of this subject is in Barcamerica, 289 F.3d at 598 (holding that Barcamerica, a vintner, engaged in naked licensing and abandoned its trademark by failing to retain or otherwise exercise adequate quality control over the trademark it had licensed to another company), and that decision informs and guides our discussion here.

[16] As a general matter, trademark owners have a duty to control the quality of their trademarks. McCarthy § 18:48. "It is well-established that '[a] trademark owner may grant a license and remain protected provided quality control of the goods and services sold under the trademark by the licensee is maintained.'" Barcamerica, 289 F.3d at 595-96 (quoting Moore Bus. Forms, Inc. v. Ryu, 960 F.2d 486, 489 (5th Cir. 1992)).

[17] "Naked licensing" occurs when the licensor "fails to exercise adequate quality control over the licensee." Id. at 596. Naked licensing may result in the trademark's ceasing to function as a symbol of quality and a controlled source. Id. (citing McCarthy § 18:48). We have previously declared that naked licensing is "inherently deceptive and constitutes abandonment of any rights to the trademark by the licensor." Id. at 598. "Consequently, where the licensor fails to exercise adequate quality control over the licensee, 'a court may find that the trademark owner has abandoned the trademark, in which case the owner would be estopped from asserting rights to the trademark.'" Id. at 596 (quoting Moore, 960 F.2d at 489).

[18] At issue here is whether there is clear and convincing evidence, viewed in the light most favorable to TFN, that TFN allowed FS to use the trademarks with so few restrictions as to compel a finding that TFN engaged in naked licensing and abandoned the trademarks. TFN contends that disputed issues of material fact remain as to whether TFN's quality control standards, during the relevant time period, were sufficient. Although TFN concedes that it did not have an express license agreement, it alleges that a reasonable jury could find that it had adequate quality control measures in place when FS was authorized to use the trademarks, making summary judgment inappropriate.

[19] When deciding summary judgment on claims of naked licensing, we first determine whether the license contained an express contractual right to inspect and supervise the licensee's operations. See Barcamerica, 289 F.3d at 596. The absence of an agreement with provisions restricting or monitoring the quality of goods or services produced under a trademark supports a finding of naked licensing. Id. at 597; see also Stanfield v. Osborne Indus., Inc., 52 F.3d 867, 871 (10th Cir. 1995) (granting summary judgment where license agreement lacked right to inspect or supervise licensee's operations and gave the licensee sole discretion to design the trademark).

[20] TFN concedes that it did not have an express license agreement with FS regarding FS's use of the trademarks. Without an express license agreement, TFN necessarily lacks express contractual rights to inspect and supervise FS. However, TFN argues that the October 9, 2003 email, in which Beal advised Abraham that: "You can get the neutral logo from www.freecycle.org, just don't use it for commercial purposes . . . .", reflects an implied license. Emphasis added. [21] Even assuming that Beal's emailed admonition to Abraham not to use the trademarks for commercial purposes constitutes an implied licensing agreement, it contained no express contractual right to inspect or supervise FS's services and no ability to terminate FS's license if FS used the trademarks for commercial purposes. See Barcamerica, 289 F.3d at 597 (determining that a license agreement lacking similar controls was insufficient). We therefore hold that, by TFN's own admission, there is no disputed issue of material fact as to whether TFN maintained an express contractual right to control quality.

[22] TFN next contends that, despite its lack of an express contractual right to control quality, a material issue of fact remains as to whether TFN maintained actual control over its member groups' services and use of the trademarks when FS was granted use of the trademarks in October 2003. "The lack of an express contract right to inspect and supervise a licensee's operations is not conclusive evidence of lack of control." Barcamerica, 289 F.3d at 596. However, where courts have excused the lack of a contractual right to control quality, they have still required that the licensor demonstrate actual control through inspection or supervision. . . . [23] TFN asserts that it exercised actual control over the trademarks because it had several quality control standards in place, specifically: (1) the "Keep it Free, Legal, and Appropriate for all Ages" standard and TFN's incorporation of the Yahoo! Groups' service terms; (2) the non-commercial services requirement (expressed in Beal's October 9, 2003 email); (3) the etiquette guidelines listed on TFN's website; and (4) TFN's "Freecycle Ethos" which, TFN contends, establishes policies and procedures for member groups, even if local member groups are permitted flexibility in how to apply those policies and procedures. In addition, TFN cites Birthright v. Birthright, Inc., 827 F.Supp. 1114 (D.N.J. 1993) for the principle that loosely organized non-profits like TFN and FS that share "the common goals of a public service organization" are subject to less stringent quality control requirements.

[24] First, we disagree with TFN's contentions that the "Keep it Free, Legal, and Appropriate for all Ages" standard and its incorporation of the Yahoo! Groups' service terms constituted actual controls over its member groups. 6 The undisputed evidence showed that TFN's licensees were not required to adopt the "Keep it Free, Legal, and Appropriate for all Ages" standard, nor was it uniformly applied or interpreted by the local groups. Similarly, FS was not required to use Yahoo! Groups and was not asked to agree to the Yahoo! Groups' service terms as a condition of using TFN's trademarks. Moreover, the Yahoo! Groups' service terms, which regulate generic online activity like sending spam messages and prohibiting harassment, cannot be considered quality controls over TFN's member groups' services and use of the trademarks. The service terms apply to every Yahoo! Group, and do not control the quality of the freecycling services that TFN's member groups provide. Thus, the "Keep it Free, Legal and Appropriate for All Ages" standard and the Yahoo! Groups' service terms were not quality controls over FS's use of the trademarks.

[25] Second, we conclude that TFN's non-commercial requirement says nothing about the quality of the services provided by member groups and therefore does not establish a control requiring member groups to maintain consistent quality. Thus, it is not an actual control in the trademark context. Third, because member groups may freely adopt and adapt TFN's listed rules of etiquette and because of the voluntary and amorphous nature of these rules, they cannot be considered an actual control. For example, FS modified the etiquette that was listed on TFN's website and TFN never required FS to conform to TFN's rules of etiquette. Fourth, TFN admits that a central premise of its "Freecycle Ethos" is local enforcement with local variation. By definition, this standard does not maintain consistency across member groups, so it is not an actual control.

[26] Even assuming that TFN's asserted quality control standards actually relate to the quality of its member groups' services, they were not adequate quality controls because they 6 Notably, Beal did not propose, and the modsquad did not adopt, this standard until January 2004, more than three months after Abraham founded FS in October 2003. The only standard listed in TFN's etiquette section on its website in 2003 was "Keep it Free," but there was no requirement that member groups adopt this standard. Similarly, TFN's incorporation of the Yahoo! Groups' service terms was not done until after FS was given use of the trademarks in October 2003. Because we hold that TFN did not exercise actual control no matter what time period is considered, we do not address whether actual supervision would be sufficient if it starts at some point after the granting of a license to use a trademark.

were not enforced and were not effective in maintaining the consistency of the trademarks. Indeed, TFN's alleged quality controls fall short of the supervision and control deemed inadequate in other cases in which summary judgment on naked licensing has been granted to the licensee. See, e.g., Barcamerica, 289 F.3d at 596-97 (finding no express contractual right to inspect and supervise the use of the marks coupled with licensor's infrequent wine tastings and unconfirmed reliance on the winemaker's expertise was inadequate evidence of quality controls to survive summary judgment); Stanfield, 52 F.3d at 871 (granting summary judgment to the licensee where the license agreement lacked a right to inspect or supervise licensee's operations, and alleged actual controls were that the licensor examined one swine heating pad, looked at other pet pads, and occasionally reviewed promotional materials and advertising).

[27] Moreover, even if we were inclined to accept the premise allegedly set forth in Birthright, that loosely organized non-profits that share common goals are subject to less stringent quality control requirements for trademark purposes, the result would be the same. In Birthright, the court held that the license was not naked because the licensor "monitored and controlled" its licensees' use of the trademarks. 827 F.Supp. at 1139-40; see also Barcamerica, 289 F.3d at 596 (holding that a licensor may overcome the lack of a formal agreement if it exercises actual control over its licensees). Here, TFN exercised no actual control over its licensees, so even under a less stringent standard, TFN has not raised a material issue of fact as to whether it exercised actual control over FS's use of the trademarks. See Barcamerica, 289 F.3d at 598.

[28] TFN contends that even if it did not exercise actual control, it justifiably relied on its member groups' quality control measures. Although "courts have upheld licensing agreements where the licensor is familiar with and relies upon the licensee's own efforts to control quality," Barcamerica, 289 F.3d at 596 (internal quotation marks and brackets omitted), we, like the other circuits that have considered this issue, have required that the licensor and licensee be involved in a "close working relationship" to establish adequate quality control in the absence of a formal agreement, id. at 597; accord Stanfield, 52 F.3d at 872; Taco Cabana Int'l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1121 (5th Cir. 1991). In Barcamerica, we cited four examples of "close working relationships" that would allow the licensor to rely on the licensee's own quality control: (1) a close working relationship for eight years; (2) a licensor who manufactured ninety percent of the components sold by a licensee and with whom it had a ten year association and knew of the licensee's expertise; (3) siblings who were former business partners and enjoyed a seventeen-year business relationship; and (4) a licensor with a close working relationship with the licensee's employees, and the pertinent agreement provided that the license would terminate if certain employees ceased to be affiliated with the licensee. 289 F.3d at 597.

[29] Here, TFN and FS did not enjoy the type of close working relationship that would permit TFN to rely on FS's quality control measures. TFN had no long term relationship with Abraham or the FS group. In fact, the October 9, 2003 email between Beal and Abraham, which mentions using the TFN logo, was the parties' first and only written communication about the trademarks prior to TFN's requests to stop using them in November 2006. In addition, TFN had no experience with FS that might have supported its alleged confidence in FS's quality control measures. Thus, even considered in a light most favorable to TFN, no evidence showed the type of close working relationship necessary to overcome TFN's lack of quality controls over FS. See id.

[30] Furthermore, we have held that, while reliance on a licensee's own quality control efforts is a relevant factor, such reliance is not alone sufficient to show that a naked license has not been granted. 7 See Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1017-18 (9th Cir. 1985) (noting that, although the licensor had worked closely with the licensee for ten years, the licensor did not rely solely on his confidence in the licensee, but exercised additional control by, inter alia, periodically inspecting those goods and was consulted regarding any changes in the product). Because sole reliance on a licensee's own control quality efforts is not enough to overcome a finding of naked licensing without other indicia of control, see id. at 1017-18, and because TFN lacked a close working relationship with FS and failed to show any other indicia of actual control, we conclude that TFN could not rely solely on FS's own quality control efforts. . . . .

[31] We determine, viewing the record in the light most favorable to TFN, that TFN (1) did not retain express contractual control over FS's quality control measures, (2) did not have actual control over FS's quality control measures, and (3) was unreasonable in relying on FS's quality control measures. Therefore, we conclude that TFN engaged in naked licensing and consequently abandoned the trademarks. The district court's grant of summary judgment in favor of FS and against TFN is AFFIRMED.

Trademark rights and open innovation. Linus Torvalds released the Linux operating system kernel in 1991 and has since overseen the development of Linux into one of the world's leading operating systems, particularly for servers, mainframes, supercomputers, and, through the Linux-derived Android mobile operating system, smartphones. Linux is open source software and Torvalds is an outspoken advocate for the open source movement. But Torvalds asserts tight control over the LINUX trademark. See https://www.linuxfoundation.org/about/linux-mark/. He does so in part to ensure that the trademark not be deemed abandoned and in part to control the development of the Linux 7 Other circuits have also relied on the licensor's confidence in the licensee only where there were additional indicia of control. See, e.g., Stanfield, 52 F.3d at 872 (holding summary judgment for the licensee appropriate where no special relationship between the parties existed and no evidence of actual control over the licensee existed); Land O'Lakes Creameries, Inc. v. Oconomowoc Canning Co., 330 F.2d 667 (7th Cir. 1964) (upholding trademark where licensor's name appeared on trademark product label, and product was sold under license for forty years without complaints about quality).

operating system itself. On the important role played by trademark rights (and moral rights) in open source software development, see Greg Vetter, The Collaborative Integrity of Open-Source Software, 2004 UTAH L. REV. 563 (2004).

2. Reclaiming abandoned marks. After a mark has been abandoned, anyone may establish rights in the mark by beginning to use the mark in commerce or filing an application to register the mark. In California Cedar Prod. Co. v. Pine Mountain Corp., 724 F.2d 827 (9th Cir. 1984), the Clorox Corporation was the owner through a subsidiary of the DURAFLAME mark. Clorox withdrew from the artificial firelog market and published a notice in the Wall Street Journal announcing its abandonment of the mark. Clorox did so for tax purposes; by abandoning the mark, it could write off the value of the mark. On the same day as the Wall Street Journal announcement, California Cedar, which manufactured fire logs for Clorox under the DURAFLAME mark, began selling DURAFLAME-branded fire logs in packaging that identified California Cedar as their source. Two other entities asserted rights in the mark. The defendant Pine Mountain had hurriedly begun to sell DURAFLAME-branded fire logs two days before the Wall Street Journal announcement. Another entity began selling such fire logs two days after the announcement. Affirming the district court's granting of a preliminary injunction to California Cedar, the Ninth Circuit determined that Pine Mountain's sales were "both premature and in bad faith." Id. at 830. "[S]ince California Cedar was the first to use the 'Duraflame' trademark and trade dress after its abandonment, it was likely to prevail on the merits." Id. at 831. The facts of California Cedar transpired before the Trademark Law Revision Act of 1989. In a comparable present-day situation, how might a sophisticated claimant establish rights in an abandoned mark? 3. Abandoned marks and "residual goodwill." After a prior owner has abandoned a mark, the mark may possess "residual goodwill" that points towards the prior owner. In very rare cases, this residual goodwill may defeat a finding of abandonment. See, e.g., Ferrari S.p.A. Esercizio Fabriche Automobili e Corse v. McBurnie, 11 U.S.P.Q.2d 1843, 1989 WL 298658, at *8 (S.D. Cal. 1989) (finding no abandonment where due to continuing very strong associations between Ferrari and the exterior design of the Daytona Spyder and Ferrari's continuing manufacture of spare parts, "Ferrari has not only achieved a strong existing goodwill but continues to maintain a residual goodwill in the unique design of the DAYTONA SPYDER"). But see Major League Baseball Props., Inc. v. Sed Non Olet Denarius, Ltd., 817 F. Supp. 1103, 1128-29 n. 20 (S.D.N.Y. 1993), vacated pursuant to settlement, 859 F. Supp. 80 (S.D.N.Y. 1994) (finding no residual goodwill in the abandoned "Brooklyn Dodgers" mark: "In the unique facts of this case . . . plaintiffs have not succeeded in demonstrating that much goodwill in Brooklyn survived Los Angeles' move in 1957. But more importantly . . . the claim to residual goodwill will not preclude a finding of abandonment where, as in this case, the owner unequivocally declares its intention to discontinue use." (citations omitted)). The new user of a mark that possesses "residual goodwill" may be required to take reasonable measures, such as the use of a disclaimer, to ensure that consumers do not mistakenly believe that the new user's products originate in the old user of the mark. See Jerome Gilson & Anne Gilson LaLonde, The Zombie Trademark: A Windfall and a Pitfall, 98 TRADEMARK REP. 1280 (2008).

A trademark may be assigned to another entity provided that the "goodwill" of the mark is assigned along with it. Lanham Act § 10, 15 U.S.C.A. § 1060. An assignment of the mark without its goodwill is deemed an invalid "assignment in gross." To determine if a such an "assignment in gross" has occurred, courts will typically focus on whether (1) the assignor assigned along with the trademark any additional assets associated with the trademark, such as manufacturing facilities, product design information, or customer lists, and (2) the assignee produces goods or services substantially similar to the assignor's such that consumers would not be deceived. Over time, courts have come to place greater emphasis on the second consideration. "The rule prohibiting an assignment in gross is now understood to require the seller and purchaser to to ensure the accuracy of the implied representation of continuity of the seller's quality control by taking steps to ensure that some facsimile of the seller's quality control remains in place through the closing and for some indefinite period thereafter." Neal R. Platt, Good Will Enduring: How to Ensure that Trademark Priority Will Not be Destroyed by the Sale of a Business, 99 TRADEMARK REP. 788 (2009). When a trademark owner engages in an "assignment in gross" of its mark, the trademark assignor may lose rights in its mark (through abandonment) and the assignee essentially receives nothing. In such situations, the assignee may claim exclusive rights in the mark, but the basis of and the priority date for those rights stem only from the assignee's new use of the mark, not from any previous use by the assignor. See generally Lynda Zadra-Symes & Jacob Rosenbaum, How Gross Is Your Assignment? Actions Speak Louder Than Words When Transferring Goodwill, 111 TRADEMARK REP. 838 (2021).

The following opinion involves a straightforward example of a successful trademark assignment. The background is that in 2018 prominent basketball players LeBron James and Kevin Durant responded to a podcast question asking them to describe the current climate for politically-engaged athletes. In response, a Fox News host declared that LeBron James should "shut up and dribble." Upon learning of this, James uploaded to Instagram an image that stated "I am more than an athlete" and accompanied the image with the hashtag "#wewillnotshutupanddribble." James went on to seek trademark rights in the phrase "I am more than an athlete" through his media company Uninterrupted IP, LLC.

Game Plan, Inc. v. Uninterrupted IP, LLC 160 F.4th 1377 (Fed. Cir. 2025)

[1] Game Plan, Inc. appeals a final decision of the Trademark Trial and Appeal Board cancelling its registration for its stylized mark-I AM MORE THAN AN ATHLETE. GP GAME PLAN-and dismissing Game Plan's opposition to Uninterrupted IP, LLC's six intent-to-use applications for marks containing I AM MORE THAN AN ATHLETE and MORE THAN AN ATHLETE. For the reasons explained below, we affirm.

and that it had priority over UNIP's proposed marks. Game Plan also asserted common law rights as a basis for its Section 2(d) claim against UNIP's applications.

[5] UNIP answered Game Plan's Amended Notice of Opposition on April 8, 2019. In its answer, UNIP denied any likelihood of confusion between the marks and alternatively counterclaimed to cancel Game Plan's registration under Section 2(d) of the Lanham Act. UNIP asserted that cancellation was proper because, if there was a likelihood of confusion, it had priority over Game Plan's mark based on its common law rights in the mark MORE THAN AN ATHLETE. However, UNIP acquired common law rights to the mark MORE THAN AN ATHLETE through an asset purchase agreement (the "2019 Assignment") that was executed on February 22, 2019, after Game Plan filed its Notice of Opposition. Relevant to this appeal, the 2019 Assignment transferred to UNIP both the mark MORE THAN AN ATHLETE and "all of the goodwill of the business related to" the mark. UNIP purchased the common law rights from DeAndra Alex and her company, More Than an Athlete, Inc. ("MTAA"), which had used the mark MORE THAN AN ATHLETE since at least 2012 in connection with clothing and community events.

[6] The case proceeded to trial before the Board, which issued findings and conclusions on the parties' claims. See Game Plan, Inc. v. Uninterrupted IP, LLC, No. 91244990, 2023 WL 8664497 (T.T.A.B. Dec. 14, 2023) ("Final Decision"). The Board's Final Decision addressed both evidentiary issues and the substantive merits of the parties' claims. First, the Board dismissed Game Plan's opposition because Game Plan had submitted no evidence at trial. Given the lack of evidence, the Board concluded that Game Plan could not maintain its Section 2(d) claims based on its common law rights alone, noting "[i]t is impossible to prevail based on a claim of common law rights in a Board proceeding without evidence or an admission in the record establishing prior use of the mark." Final Decision at *3.

[7] The Board next assessed UNIP's Section 2(d) counterclaim, focusing entirely on the issue of priority because Game Plan conceded likelihood of confusion. The Board found that UNIP acquired valid and enforceable common law rights in the mark MORE THAN AN ATHLETE from Ms. Alex and MTAA.

[8] The Board rejected Game Plan's arguments that the assignment of MORE THAN AN ATHLETE was invalid because the rights were assigned during the litigation. Game Plan argued this was improper "because UNIP made the purchase after the start of this action, in order to litigate from a changed position." Final Decision at *7. The Board cited persuasive authority for the proposition that motives for assignment during litigation are not dispositive. Id. (citing Dial-A-Mattress Operating Corp. v. Mattress Madness, Inc., 841 F. Supp. 1339, 1348 n.10 (E.D.N.Y. 1994) ("However, the motivation for a sale is irrelevant and senior user status may be properly achieved by assignment in anticipation or in the midst of litigation.")). The Board also rejected Game Plan's argument that UNIP's common law rights were unenforceable because it did not intend to offer certain services associated with the goodwill of the mark (e.g., publicity or charitable services). The Board explained that although UNIP may not have acquired enforceable rights in services for which it had no continuing use, the assignment of common law rights in connection with clothing was valid and sufficient to sustain its counterclaim. The Board accordingly held that UNIP had priority over Game Plan and canceled Game Plan's registration.

[9] Game Plan timely appealed. . . . Discussion [10] Game Plan, Inc. raises two issues on appeal. First, it argues that the Board erred in determining that UNIP had priority over Game Plan's mark based on the 2019 Assignment of common law trademark rights. Second, it argues that the Board failed to review evidence supporting its assertion that the 2019 Assignment is invalid. We address each argument in turn.

I. [11] Game Plan argues that the Board erred in determining that UNIP had priority over Game Plan's mark because the 2019 Assignment violates 15 U.S.C. § 1060(a)(1) and 37 C.F.R.

[12] Game Plan asserts that the 2019 Assignment violates the trademark antitrafficking rule under 15 U.S.C. § 1060(a)(1) for two reasons. First, Game Plan contends that the 2019 Assignment is an assignment in gross. An assignment in gross is a sale of a trade name or mark divorced from its goodwill. See Visa, U.S.A., Inc. v. Birmingham Tr. Nat'l Bank, 696 F.2d 1371, 1375 (Fed. Cir. 1982). Game Plan argues that such assignments violate § 1060(a)(1), which states "[a] registered mark or a mark for which an application to register has been filed shall be assignable with the good will of the business in which the mark is used." 15 U.S.C. § 1060(a)(1). Indeed, we have similarly noted that "a trademark cannot be validly assigned unless accompanied by its goodwill garnered in the marketplace." Gaia Techs., Inc. v. Reconversion Techs., Inc., 93 F.3d 774, 777 (Fed. Cir. 1996), amended on reh'g in part, 104 F.3d 1296 (Fed. Cir. 1996).

[13] However, the Board's conclusion that the 2019 Assignment is not an assignment in gross and satisfies the requirement to transfer goodwill under § 1060(a)(1) is supported by substantial evidence and is otherwise not contrary to the law. First, the 2019 Assignment expressly defined the purchased assets as trademarks, among other intellectual property, "together with the goodwill of the business associated therewith." This evidence supports the Board's determination that the mark MORE THAN AN ATHLETE was not divorced from its goodwill when assigned. The Board also determined that the 2019 Assignment was not in gross because UNIP's use of the mark was substantially similar to Ms. Alex's use, and UNIP and MTAA shared a common purpose and audience. Final Decision at *8. This finding was supported by evidence that both companies used the mark in connection with the sale of tshirts and similar clothing as "a part of a larger effort that relates to the well-being of athletes." The Board further noted that UNIP retained Ms. Alex as a consultant. Final Decision at *7. The Board found that this evidence demonstrated continuity of goodwill associated with the acquired mark. Id. at *8. We agree that the 2019 Assignment does not constitute an assignment in gross. . . . .

[14] In any event, we need not resolve this question {of whether UNIP's assignment violated a section of the C.F.R.} because Game Plan's argument fails for a more fundamental reason. That is, Game Plan's argument rests on the premise that the Board based its priority determination on UNIP's pending intent-to-use applications. It did not. Rather, the Board sustained UNIP's priority claim based on its ownership of common law rights in the mark MORE THAN AN ATHLETE, which independently predate Game Plan's filing date. . . .

We have considered Game Plan's remaining arguments and find them unpersuasive. For the reasons provided, we affirm the Board's decision canceling Game Plan's registration for the mark I AM MORE THAN AN ATHLETE. GP GAME PLAN and dismissing its opposition to UNIP's intent-to-use applications.

1. Assignment and the importance of due diligence. In 1998, Volkswagen AG purchased Rolls-Royce Motor Cars from Vickers PLC for £430 million ($712.7 million at the time), including Rolls-Royce Motor Cars' traditional manufacturing facility at Crewe, England.

Inexplicably, what Volkswagen failed to appreciate was that Rolls-Royce Motor Cars did not own the Rolls-Royce trademark for automobiles. Instead, Rolls-Royce PLC, the manufacturer of airplane engines, owned the mark for automobiles. Rolls-Royce PLC had licensed the mark to Rolls-Royce Motor Cars under a license that terminated in the event that Rolls-Royce Motor Cars was sold. When the sale of Rolls-Royce Motor Cars triggered the termination of the license to Rolls-Royce Motor Cars, Rolls-Royce PLC licensed the mark instead to Volkswagen's rival BMW, which was Rolls-Royce PLC's manufacturing partner for various aircraft engines (and the entity that Rolls-Royce PLC had hoped would purchase the automaker). Thus, Volkswagen had purchased the means to manufacture Rolls-Royce automobiles in all but name. In an effort to avoid litigation, Rolls-Royce PLC, Volkswagen, and BMW eventually reached an agreement in which BMW paid Rolls-Royce PLC £40 million in exchange for the assignment to BMW of the Rolls-Royce trademark for automobiles. BMW agreed to lease the mark to Volkswagen through 2002, after which Volkswagen would no longer be able to use the mark. On January 1, 2003, BMW-owned Rolls-Royce Motor Cars opened its new Goodwood manufacturing plant in England-thus freeing it of any need to rely on the Crewe, England plant. See Tom Buerkle, BMW Wrests Rolls-Royce Name Away from VW, N.Y. TIMES, July 29, 1998.

The first sale doctrine has been defined as follows:

The resale of genuine trademarked goods generally does not constitute infringement. This is for the simple reason that consumers are not confused as to the origin of the goods: the origin has not changed as a result of the resale. Under what has sometimes been called the "first sale" or "exhaustion" doctrine, the trademark protections of the Lanham Act are exhausted after the trademark owner's first authorized sale of that product. Therefore, even though a subsequent sale is without a trademark owner's consent, the resale of a genuine good does not violate the [Lanham] Act. This doctrine does not hold true, however, when an alleged infringer sells trademarked goods that are materially different than those sold by the trademark owner . . . . First sale cases typically present two crucial questions. First, are material differences between the goods first sold by the plaintiff trademark owner and those subsequently resold by the defendant? Second, if there are material differences, are those differences adequately disclosed to consumers of the goods resold by the defendant?

The first two opinions that follow focus on the question of whether there are material differences. Champion Spark Plug Co. v. Sanders, 331 U.S. 125 (1947), involving refurbished spark plugs, is one of the foundational first sale doctrine cases in U.S. trademark law. The second, Davidoff & CIE, S.A. v. PLD Int'l Corp., 263 F.3d 1297 (11th Cir. 2001), is an oft-cited opinion considering whether the scratching off of batch codes on bottles constitutes a material difference.

The third opinion, Hamilton International Ltd. v. Vortic LLC, 13 F.4th 264 (2d Cir. 2021), involving refurbished, "upcycled" watches, focuses on the question of whether material differences have been adequately disclosed.

Note that the first sale doctrine is not strictly speaking a defense to trademark infringement in which the defendant bears the burden of persuasion. The plaintiff bears the overall burden of persuading the court that consumers would be confused as to the true nature of the goods sold by the defendant.

Champion Spark Plug Co. v. Sanders 331 U.S. 125 (1947)

Mr. Justice DOUGLAS delivered the opinion of the Court.

[1] Petitioner is a manufacturer of spark plugs which it sells under the trade mark 'Champion.' Respondents collect the used plugs, repair and recondition them, and resell them. Respondents retain the word 'Champion' on the repaired or reconditioned plugs. The outside box or carton in which the plugs are packed has stamped on it the word 'Champion,' together with the letter and figure denoting the particular style or type. They also have printed on them 'Perfect Process Spark Plugs Guaranteed Dependable' and 'Perfect Process Renewed Spark Plugs.' Each carton contains smaller boxes in which the plugs are individually packed.

These inside boxes also carry legends indicating that the plug has been renewed. 1 But respondent company's business name or address is not printed on the cartons. It supplies customers with petitioner's charts containing recommendations for the use of Champion plugs. On each individual plug is stamped in small letters, blue on black, the word 'Renewed,' which at times is almost illegible.

[2] Petitioner brought this suit in the District Court, charging infringement of its trade mark and unfair competition. See Judicial Code s 24(1), (7), 28 U.S.C. s 41(1), (7), 28 U.S.C.A. s 41(1, 7). The District Court found that respondents had infringed the trade mark. It enjoined them from offering or selling any of petitioner's plugs which had been repaired or reconditioned unless (a) the trade mark and type and style marks were removed, (b) the plugs were repainted with a durable grey, brown, orange, or green paint, (c) the word 'Repaired' was stamped into the plug in letters of such size and depth as to retain enough white paint to display distinctly each letter of the word, (d) the cartons in which the plugs were packed carried a legend indicating that they contained used spark plugs originally made by petitioner and repaired and made fit for use up to 10,000 miles by respondent company. 2 The District Court denied an accounting. See 56 F.Supp. 782, 61 F.Supp. 247.

[3] The Circuit Court of Appeals held that respondents not only had infringed petitioner's trade mark but also were guilty of unfair competition. It likewise denied an accounting but modified the decree in the following respects: (a) it eliminated the provision requiring the trade mark and type and style marks to be removed from the repaired or reconditioned plugs; (b) it substituted for the requirement that the word 'Repaired' be stamped into the plug, etc., a provision that the word 'Repaired' or 'Used' be stamped and baked on the plug by an electrical hot press in a contrasting color so as to be clearly and distinctly visible, the plug having been completely covered by permanent aluminum paint or other paint or lacquer; and (c) it eliminated the provision specifying the precise legend to be printed on the cartons and substituted therefor a more general one. 3 The case is here on a petition for certiorari which we granted because of the apparent conflict between the decision below and Champion Spark Plug Co. v. Reich, 121 F.2d 769, decided by the Circuit Court of Appeals for the Eighth Circuit. [4] There is no challenge here to the findings as to the misleading character of the merchandising methods employed by respondents, nor to the conclusion that they have not only infringed petitioner's trade mark but have also engaged in unfair competition. The controversy here relates to the adequacy of the relief granted, particularly the refusal of the Circuit Court of Appeals to require respondents to remove the word 'Champion' from the repaired or reconditioned plugs which they resell.

[5] We put to one side the case of a manufacturer or distributor who markets new or used spark plugs of one make under the trade mark of another. See Bourjois & Co. v. Katzel, 260 U.S. 689; Old Dearborn Distributing Co. v. Seagram-Distillers Corp., 299 U.S. 183. Equity then steps in to prohibit defendant's use of the mark which symbolizes plaintiff's good will and 'stakes the reputation of the plaintiff upon the character of the goods.' Bourjois & Co. v. Katzel, supra, 260 U.S. at page 692 [6] We are dealing here with second-hand goods. The spark plugs, though used, are nevertheless Champion plugs and not those of another make. There is evidence to support what one would suspect, that a used spark plug which has been repaired or reconditioned does not measure up to the specifications of a new one. But the same would be true of a second-hand Ford or Chevrolet car. And we would not suppose that one could be enjoined from selling a car whose valves had been reground and whose piston rings had been replaced unless he removed the name Ford or Chevrolet. Prestonettes, Inc., v. Coty, 264 U.S. 359, was a case where toilet powders had as one of their ingredients a powder covered by a trade mark and where perfumes which were trade marked were rebottled and sold in smaller bottles. The Court sustained a decree denying an injunction where the prescribed labels told the truth. Mr. Justice Holmes stated, 'A trade-mark only gives the right to prohibit the use of it so far as to protect the owner's good will against the sale of another's product as his. * * * When the mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth. It is not taboo.' 264 U.S. at page 368.

[7] Cases may be imagined where the reconditioning or repair would be so extensive or so basic that it would be a misnomer to call the article by its original name, even though the words 'used' or 'repaired' were added. Cf. Ingersoll v. Doyle, D.C., 247 F. 620. But no such practice is involved here. The repair or reconditioning of the plugs does not give them a new design. It is no more than a restoration, so far as possible, of their original condition. The type marks attached by the manufacturer are determined by the use to which the plug is to be put. But the thread size and size of the cylinder hole into which the plug is fitted are not affected by the reconditioning. The heat range also has relevance to the type marks. And there is evidence that the reconditioned plugs are inferior so far as heat range and other qualities are concerned. But inferiority is expected in most second-hand articles. Indeed, they generally cost the customer less. That is the case here. Inferiority is immaterial so long as the article is clearly and distinctively sold as repaired or reconditioned rather than as new. The result is, of course, that the second-hand dealer gets some advantage from the trade mark. But under the rule of Prestonettes, Inc., v. Coty, supra, that is wholly permissible so long as the manufacturer is not identified with the inferior qualities of the product resulting from wear and tear or the reconditioning by the dealer. Full disclosure gives the manufacturer all the protection to which he is entitled.

[8] The decree as shaped by the Circuit Court of Appeals is fashioned to serve the requirements of full disclosure. We cannot say that of the alternatives available the ones it chose are inadequate for that purpose. We are mindful of the fact that this case, unlike Prestonettes, Inc., v. Coty, supra, involves unfair competition as well as trade mark infringement; and that where unfair competition is established, any doubts as to the adequacy of the relief are generally resolved against the transgressor. Warner & Co. v. Lilly & Co., 256 U.S. 526, 532. But there was here no showing of fraud or palming off. Their absence, of course, does not undermine the finding of unfair competition. Federal Trade Commission v. Winsted Hosiery Co., 258 U.S. 483, 493; G. H. Mumm Champagne v. Eastern Wine Corp., 2 Cir., 142 F.2d 499, 501. But the character of the conduct giving rise to the unfair competition is relevant to the remedy which should be afforded. See Jacob Siegel Co. v. Federal Trade Commission, 327 U.S. 608. We cannot say that the conduct of respondents in this case, or the nature of the article involved and the characteristics of the merchandising methods used to sell it, called for more stringent controls than the Circuit Court of Appeals provided. . . . . [1] This case appears to be the first time that this circuit has addressed the circumstances under which the resale of a genuine product with a registered trademark can be considered infringement. We recognize the general rule that a trademark owner's authorized initial sale of its product exhausts the trademark owner's right to maintain control over who thereafter resells the product; subsequent sales of the product by others do not constitute infringement even though such sales are not authorized by the trademark owner. However, we adopt from our sister circuits their exception to this general rule-i.e., the unauthorized resale of a materially different product constitutes infringement. Because we conclude that the resold products in the instant case are materially different, we affirm.

[2] Davidoff & Cie, S.A., a Swiss corporation, is the manufacturer of DAVIDOFF COOL WATER fragrance products and owns the U.S. trademark. Davidoff & Cie, S.A. exclusively licenses Lancaster Group US LLC (collectively "Davidoff") to distribute its products to retailers in the United States. Working outside of this arrangement, PLD International Corporation ("PLD") acquires DAVIDOFF fragrances that are intended for overseas sale or that are sold in duty-free sales. PLD then distributes them to discount retail stores in the United States.

[3] At the time that PLD acquires the product, the original codes on the bottom of the boxes are covered by white stickers, and batch codes on the bottles themselves have been obliterated with an etching tool. The etching leaves a mark on the bottle near its base on the side opposite the DAVIDOFF COOL WATER printing. The mark is approximately one and oneeighth inches in length and one-eighth of an inch wide. The batch codes are removed, according to PLD, to prevent Davidoff from discovering who sold the fragrances to PLD because Davidoff would stop selling to those vendors.

[4] [T]he district court granted a preliminary injunction, prohibiting PLD from selling, repackaging or altering any product with the name "DAVIDOFF" and/or "COOL WATER" with an obliterated batch code. This appeal followed.

B. Resale of a Genuine Trademarked Product and the Material Difference Exception

[5] The resale of genuine trademarked goods generally does not constitute infringement. See, e.g., Matrix Essentials, Inc. v. Emporium Drug Mart, Inc., 988 F.2d 587, 590 (5th Cir. 1993); NEC Electronics v. CAL Circuit Abco, 810 F.2d 1506, 1509 (9th Cir. 1987). This is for the simple reason that consumers are not confused as to the origin of the goods: the origin has not changed as a result of the resale. See Enesco Corp. v. Price/Costco Inc., 146 F.3d 1083, 1085 (9th Cir. 1998) (quoting NEC, 810 F.2d at 1509). Under what has sometimes been called the "first sale" or "exhaustion" doctrine, the trademark protections of the Lanham Act are exhausted after the trademark owner's first authorized sale of that product. See Iberia Foods, 150 F.3d at 301 n. 4; Enesco, 146 F.3d at 1085; Allison v. Vintage Sports Plaques, 136 F.3d 1443, 1447-48 (11th Cir. 1998). Therefore, even though a subsequent sale is without a trademark owner's consent, the resale of a genuine good does not violate the Act.

[6] This doctrine does not hold true, however, when an alleged infringer sells trademarked goods that are materially different than those sold by the trademark owner. Our sister circuits have held that a materially different product is not genuine and therefore its unauthorized sale constitutes trademark infringement. See Nestle, 982 F.2d at 644 (1st Cir.); Original Appalachian Artworks, 816 F.2d at 73 (2d Cir.); Iberia Foods, 150 F.3d at 302-3 (3d Cir.); Martin's Herend Imports, Inc. v. Diamond & Gem Trading USA, Co., 112 F.3d 1296, 1302 (5th Cir. 1997); cf. Enesco, 146 F.3d at 1087 (9th Cir.) (quoting Warner-Lambert Co. v. Northside Dev. Corp., 86 F.3d 3, 6 (2d Cir. 1996)) (noting that a non-conforming product is not genuine and "its distribution constitutes trademark infringement"). We follow our sister circuits and hold that the resale of a trademarked product that is materially different can constitute a trademark infringement. 5 This rule is consistent with the purposes behind the Lanham Act, because materially different products that have the same trademark may confuse consumers and erode consumer goodwill toward the mark. See Iberia Foods, 150 F.3d at 303; Nestle, 982 F.2d at 638.

[7] Not just any difference will cause consumer confusion. A material difference is one that consumers consider relevant to a decision about whether to purchase a product. See Martin's Herend Imports, 112 F.3d at 1302; Nestle, 982 F.2d at 641. Because a myriad of considerations may influence consumer preferences, the threshold of materiality must be kept low to include even subtle differences between products. See Iberia Foods, 150 F.3d at 304; Nestle, 982 F.2d at 641. [8] The caselaw supports the proposition that the resale of a trademarked product that has been altered, resulting in physical differences in the product, can create a likelihood of consumer confusion. Such alteration satisfies the material difference exception and gives rise to a trademark infringement claim. Nestle, 982 F.2d at 643-44 (applying the material difference exception, e.g., differences in the composition, presentation and shape of premium chocolates); Original Appalachian Artworks, 816 F.2d at 73 (applying the material difference exception where the infringing Cabbage Patch Kids dolls had Spanish language adoption papers and birth certificates, rather than English).

VI. APPLICATION OF THE EXCEPTION IN THIS CASE

[9] The district court found that etching the glass to remove the batch code degrades the appearance of the product and creates a likelihood of confusion. In addition, the court credited testimony of the marketing vice-president that the etching may make a consumer think that the product had been harmed or tampered with. We defer to the district court's finding that the etching degrades the appearance of the bottle. This finding is not clearly erroneous in light of the stylized nature of the fragrance bottle, which has an otherwise unblemished surface. Indeed, based on our own examination and comparison of the genuine fragrance bottle and the bottle sold by PLD, we agree with the district court that a consumer could very likely believe that the bottle had been tampered with. We agree with the district 5 PLD argues that the material difference test only applies to so-called gray-market goods: foreign made goods bearing a trademark and intended for sale in a foreign country, but that are subsequently imported into the United States without the consent of the U.S. trademark owner. We reject this argument and join the Third Circuit in noting that infringement by materially different products "is not limited to gray goods cases . . . . The same theory has been used to enjoin the sale of domestic products in conditions materially different from those offered by the trademark owner." Iberia Foods Corp. v. Romeo, 150 F.3d 298, 302 (3d Cir. 1998). Indeed, several courts have held that the purchase and resale of goods solely within the United States may constitute infringement when differences exist in quality control or the products themselves. See Enesco Corp. v court that this alteration of the product could adversely affect Davidoff's goodwill, creates a likelihood of consumer confusion, satisfies the material difference exception to the first sale doctrine, and thus constitutes a trademark infringement. We believe that the material difference in this case is comparable to, or more pronounced than, the product differences in Nestle and Original Appalachian Artworks where the First and Second Circuits applied the material difference exception and found trademark infringement.

[10] PLD directs us to two cases, Graham Webb International Ltd. Partnership v. Emporium Drug Mart, Inc., 916 F.Supp. 909 (E.D.Ark. 1995), and John Paul Mitchell Systems v. Randalls Food Markets, Inc., 17 S.W.3d 721 (Tex. App. 2000), where courts have held that the removal of batch codes on hair care products does not constitute infringement. They are both distinguishable from the instant case. Neither court found that the removal affected the overall appearance of the product to the extent that it might be material to a consumer decision to purchase the product. In Graham Webb, the court noted that the removal of batch codes resulted in "almost imperceptible scratches" that were not likely to confuse consumers. 916 F.Supp. at 916. And in Randalls Food Markets, the court stated that "there was no evidence that removal of the batch codes defaced the bottles." 17 S.W.3d at 736. In the instant case, the etching on the fragrance bottle is more than almost imperceptible scratches. Indeed, the district court credited testimony that consumers may regard the bottles as harmed or tampered with. We agree with the district court that the physical difference created by the obliteration of the batch code on PLD's product constitutes a material difference. See John Paul Mitchell Systems v. Pete-N-Larry's Inc., 862 F.Supp. 1020, 1027 (W.D.N.Y. 1994) (concluding that removal of batch codes from bottles of hair care products, leaving noticeable scars on the bottles and erasing some of the information printed, constitutes a material difference).

[11] PLD also attempts to cast the effect of the etching as minimal. PLD argues that the etching is on the back side of the bottle beneath several lines of printing that identifies the manufacturer and distributor, country of origin and volume, while the front side contains the trademarks in gold and black script letters. This may be true, but the etching is clearly noticeable to a consumer who examines the bottle. At oral argument, PLD argued that only the packaging but not the product itself-i.e., the liquid fragrance inside the bottle-had been altered by the etching. In marketing a fragrance, however, a vendor is not only selling the product inside the bottle, it is also selling the "commercial magnetism" of the trademark that is affixed to the bottle. Mishawaka Rubber, 316 U.S. at 205, 62 S.Ct. at 1024. The appearance of the product, which is associated with the trademark, is important to establishing this image. This makes the appearance of the bottle material to the consumer decision to purchase it. Because the etching degrades the appearance of the bottles, the DAVIDOFF fragrance that PLD distributes is materially different from that originally sold by Davidoff. Therefore, we agree with the district court that PLD's sale of this materially different product creates a likelihood of confusion, and satisfies Davidoff's burden of establishing a likelihood of success on the merits. . . . .

[5] Hamilton, or its predecessor,foot_18 has owned the "Hamilton" trademark since 1909. Prior to 1969, Hamilton manufactured pocket watches at its U.S. factory in Lancaster, Pennsylvania. Custer founded Vortic in 2013 and, seeking to "preserve American history," endeavored to make a watch that would be "100% Made in America." App'x at 82, 369-70. Custer discovered, however, that at the time, no active companies in the United States produced watch movements, i.e., "the gears and springs in a system needed to tell time." Id. at 370. As a result, Vortic salvaged and restored parts from antique American-made pocket watches originally manufactured in the late 1800s and early 1900s and then encased them in new wristwatches. Those included antique parts from watches bearing Hamilton's trademark.

[6] At issue is Vortic's line of wristwatches called "The Lancaster." Named after the Pennsylvania city where Hamilton was originally based, The Lancaster features restored antique pocket watch movements and front dials made by the Hamilton Watch Company between 1894 and 1950. The Lancaster has a large pocket watch-style knob located at the 12 o'clock position. The watch's wrist strap and the case surrounding its movements and dialas well as various internal engineering parts such as the crowns, screws, and inserts-were manufactured by Vortic or came from modern sources in the United States. Because Vortic used a restored original front dial, Hamilton's trademark is readily visible on the front of the watch. The back of The Lancaster is encased in a glass cover, revealing the watch's movements, which feature the engraved words, "Hamilton Watch Lancaster, PA." The back case is surrounded by a metal ring with the words "Vortic Watch Co." and "The Lancaster" engraved on it, along with Vortic's serial number for the watch. Below is a picture of the front and back of The Lancaster: been reincorporated into a new wristwatch." Id. at 663-64. The District Court noted that The Lancaster was bigger than a regular wristwatch, had a large knob located at the 12 o'clock position rather than the 3 o'clock position typical for wristwatches, and the "hands, face, and movement ha[d] a patina, style, and look that convey[ed] that they [were] restored antiques." Id. at 664. The District Court also found that an ordinary prudent purchaser viewing the watch in isolation would conclude "that the Hamilton mark is only displayed because Hamilton created the original movement, face, and hands that have subsequently been restored." Id. The District Court "note[d] that 'Vortic,' 'Lancaster,' and the serial number are all prominently engraved on the case while the Hamilton mark is only visible inside the glass case, on a movement and face that appear obviously antique." Id.

[12] The District Court then turned to the Polaroid factors. While the District Court discussed all of the factors, it noted that actual confusion, the defendant's good faith, and the sophistication of the buyers were the only "Polaroid factors that [were] indisputably relevant in this case." Id. at 666-67; see Hamilton Int'l Ltd., 414 F. Supp. 3d at 621 (on summary judgment, finding only these three factors to be relevant). The District Court found no evidence of actual confusion, discounting the only evidence that Hamilton offered at trialone potential customer's email to a Hamilton brand manager inquiring about a vintage Hamilton watch-because of concerns about the reliability of that email. See Hamilton Int'l Ltd., 486 F. Supp. 3d at 667. The District Court further found that Vortic and Custer demonstrated good faith in producing The Lancaster, crediting Custer's testimony and "concluding that he did not intend to cause consumer confusion but rather sought to 'preserve American history' by salvaging and restoring the hearts of antique pocket watches." Id. (citing Custer's testimony). Lastly, the District Court noted the highly sophisticated nature of the customer base. Id. at 668. For an expensive watch like The Lancaster, the District Court reasoned, potential customers "would be particularly attuned to the disclosure provided and would almost certainly seek out easily accessible information about the watch before making this substantial investment." Id.

[13] After weighing the full disclosure under Champion and the Polaroid factors, the District Court found no likelihood of confusion. Id. The District Court therefore entered judgment in favor of Vortic and Custer on Hamilton's federal trademark infringement claim, as well as on its other claims, each of which also required some degree of consumer confusion.

The District Court's Application of Champion

[14] We begin with Hamilton's argument that the District Court erred in applying Champion to assess whether there was a likelihood of consumer confusion. The District Court identified and applied the Polaroid factors, focusing on the ones that it found particularly relevant in this action. See Hamilton Int'l Ltd., 486 F. Supp. 3d at 666-68. But the District Court also correctly recognized that application of these non-exhaustive factors is not a "mechanical process," and "depending on the complexity of the issues, 'the court may have to take still other variables into account.'" Id. at 662. . . . {W}hile Polaroid articulated general standards to apply in assessing consumer confusion, particular situations may call for a more refined analysis. In its 1947 decision in Champion, the Supreme Court identified one such situation.

[15] In Champion, a manufacturer of spark plugs with the trademark "Champion" sued a second-hand dealer who collected used "Champion" plugs, refurbished them, and sold them. 331 U.S. at 126. . . . The takeaway from Champion is that, when a used "genuine product" is resold after being refurbished, the seller's disclosures and the extent of a product's modifications are significant factors to consider in whether that seller is liable for trademark infringement.

[16] Hamilton argues that the "reconditioning or repair" that went into The Lancaster was so extensive that the District Court erred in applying Champion in the first place. According to Hamilton, The Lancaster is not "a modified genuine Hamilton product," but rather a "new watch that contains various Hamilton parts." We find no error in the District Court's determination that the facts as found at trial brought this case under Champion.

[17] The District Court determined, with ample support from the evidence adduced at trial, that Vortic used genuine, original parts from pocket watches made by Hamilton, refurbished and repaired them, and modified them into a wristwatch. The only modification to the original movements was the replacement of a lever which makes it easier for users to change the time. Describing this as an "apparently slight modification," the District Court noted that Hamilton failed to put forth any reason why such a modification would have been "particularly significant to consumers or . . . somehow material to a likelihood of confusion." Hamilton Int'l Ltd., 486 F. Supp. 3d at 665. And after inspecting the watch, as well as viewing photographs of the watch, the District Court concluded that a consumer would view The Lancaster as an antique pocket watch modified into a wristwatch rather than an entirely new product. Id. at 664 ("[T]he Court finds that the watch obviously presents to a viewer as restored antique pocket watch movement, face, and hands . . . reincorporated into a new wristwatch. . . . [T]he hands, face, and movement have a patina, style, and look that convey that they are restored antiques."). In light of those findings, which were supported by the trial evidence and were not clearly erroneous, the District Court properly analyzed Hamilton's federal trademark infringement claim under the framework laid out in Champion.

Champion's Interaction with the Polaroid Factors and the Burden of Proof

[18] Hamilton also takes issue with the sequence in which the District Court considered Champion and Polaroid. Hamilton argues that the District Court erred by failing to first determine the likelihood of confusion under the Polaroid factors before turning to the "full disclosure" analysis under Champion. Hamilton contends that a defendant bears the burden of showing that Champion's "full disclosure" standard is met, and that the weight accorded this burden can only be determined by first measuring the level of confusion through an analysis of the Polaroid factors.

Court further found that The Lancaster "would convey to any ordinary prudent purchaser that the watch was made by Vortic and that the Hamilton mark is displayed only because Hamilton created the original movement, face, and hands that have subsequently been restored," "not[ing] that 'Vortic,' 'Lancaster,' and the serial number are all prominently engraved on the case while the Hamilton mark is only visible inside the glass case, on a movement and face that appear obviously antique." Id.

[24] These factual findings, all firmly grounded in the record, fully supported the District Court's conclusion that Vortic adequately disclosed the origin of The Lancaster and its lack of affiliation with Hamilton. And the District Court properly weighed Vortic's full disclosure heavily in its consumer confusion analysis. See id. at 663 (explaining that it would "give strong weight to the 'full disclosure' factor").

[25] Hamilton relies on three cases from other Circuits to argue that no disclosures could be adequate when watches are "extensively modified." See Rolex Watch, U.S.A., Inc. v 20 (7th Cir. 1964). To the extent Hamilton claims that these decisions found Champion inapplicable to modified watches, we disagree. All three cases applied Champion's reasoning to find that alterations made to the watches at issue resulted in new products, and that, under the facts presented, no disclosure could adequately dispel the likelihood of consumer confusion stemming from the modifications.

[26] The courts in Michel Co. and Bulova Watch Co. cited Champion before looking to the record to decide whether there was adequate disclosure. See Michel Co., 179 F.3d at 710 (explaining that the defendant's disclosure did not "convey[ ] basic changes that have been made to the watch" and that "the face of the watch" at issue could not "support a more adequate legend"); Bulova Watch Co., 328 F.2d at 24 (noting that "[i]t is obvious that the area of the exposed portion of the dial of the cased 6 ¾ X 8 ligne movement is such [that] no appropriate and readable legend could be placed thereon which would satisfy the disclosure requirements the facts and circumstances here demand"). Likewise, although the court in Meece did not cite Champion, it echoed Champion's reasoning when it relied on "case law interpreting the Lanham Act as prohibiting a party from making changes in integral parts of a product and then selling the modified product under the original trademark without full disclosure." Meece, 158 F.3d at 825 (emphasis added). And, just as in Bulova Watch Co. and Michel Co., the Meece court's finding of trademark infringement was tied to the circumstances of that case. See id. (basing its decision on "[c]onsider[ation] . . . of [all] the evidence and, especially, the district court's findings regarding the likelihood of confusion with respect to secondary purchasers").

[27] Thus, these decisions have little persuasive weight where, as here, adequate disclosures could be provided. For these reasons, we find no error in the District Court's factual findings or its conclusion that Vortic's disclosures were adequate under Champion.

[28] Nor was there any clear error in the District Court's factual findings as to the Polaroid factors. In light of its determination that Vortic provided full disclosure under Champion, the District Court found three Polaroid factors to be particularly significant in this case: actual confusion, the defendant's good faith in adopting the mark, and the product's customer base. Most of Hamilton's arguments on appeal as to these factors amount to disagreement with the District Court's credibility determinations. It is axiomatic, of course, that "[c]lear error review mandates that we defer to the District Court's factual findings, particularly those involving credibility determinations." Phoenix Glob. Ventures, LLC v. Phoenix Hotel Assocs., Ltd., 422 F.3d 72, 76 (2d Cir. 2005). And we do so here.

[29] The District Court first found that Hamilton failed to proffer any proof of actual confusion after declining to credit Hamilton's sole evidence on this point: an email from a prospective customer stating that her friend was "looking for a vintage Hamilton as per attached." App'x at 229-31. Hamilton attached to the exhibit pictures of two advertisements for The Lancaster, contending that they were attached to that email. Yet Hamilton's authenticating witness was unable to confirm at trial whether those advertisements were indeed attached to the email and, after observing this witness testify at trial, the District Court discounted this evidence. Similarly, the District Court's finding that Custer and Vortic did not act in bad faith was supported by Custer's trial testimony describing his intent in founding Vortic and manufacturing The Lancaster. Nor do we accept Hamilton's unsupported proposition that continued sales of The Lancaster after Vortic's receipt of a cease-and-desist letter necessarily demonstrates bad faith. See W.W.W. Pharm. Co. v. Gillette Co., 984 F.2d 567, 575 (2d Cir. 1993) ("[A]doption of a trademark with actual knowledge of another's prior registration of a very similar mark may be consistent with good faith." (quoting Lang v. Ret. Living Publ'g Co., 949 F.2d 576, 584 (2d Cir. 1991))). Finally, the District Court's finding as to the sophistication of the relevant consumer base was grounded in uncontroverted evidence that the average price of Vortic's watches ranged from $1,500 to $5,000, as well as Custer's testimony describing Vortic's customers as "college-educated men . . . with above-average income," most of whom "own multiple wristwatches." App'x at 113, 375; see Star Indus. Inc., 412 F.3d at 390 (explaining that proof of consumer sophistication is not limited to "expert opinions or surveys," and "a court is entitled to reach a conclusion about consumer sophistication based solely on the nature of the product or its price").

[30] We also find no error in the District Court's determination that the other Polaroid factors were less relevant in this case. 6 But regardless, the District Court considered each of 6 Indeed, the District Court's decision to place less emphasis on certain Polaroid factors is consistent with Champion. The defendant in Champion used the plaintiff's exact trademark, and the Supreme Court noted that while "inferiority is expected in most second-hand articles," it is "immaterial so long as the article is clearly and distinctively sold as repaired or reconditioned rather than as new." 331 U.S. at 129-30. Accordingly, the Court suggested that as long as there was full disclosure as to the refurbished nature of the item, factors such as the strength of the mark, similarity between marks, and quality of the products would be less relevant. Similarly, while a traditional Polaroid analysis instructs that closer competitive proximity of the products leads to a greater probability of consumer confusion, the analysis in Champion suggests that in the context of second-hand goods, similarity of the products the five remaining Polaroid factors and properly weighed them in accordance with the trial evidence.

[31] While the District Court determined that Hamilton's mark was "relatively strong," it found that the other factors supported entering judgment in favor of Vortic and Custer on Hamilton's federal trademark claim. Relying on the disclosures that it discussed in its Champion analysis, the District Court properly concluded that the "similarity of the marks" factor did not support a finding of confusion given the context in which the mark appeared on The Lancaster. . . .

[32] Nor do we find any error in the District Court's analysis of the "proximity of the products" factor. Hamilton argues that it competes in the same marketplace as Vortic, i.e., the watch market, and the District Court therefore should have found this factor to militate in favor of a likelihood of confusion. The District Court found, however, that the relevant market was one for antique or refurbished watches. This finding was supported by Custer's that Vortic catered to consumers interested in antiques related to American history, and Hamilton failed to provide any evidence that it sold similar types of watches or that both companies sold their products in the same channels of commerce.

[33] With regard to "the likelihood that the prior owner will 'bridge the gap,'" Hamilton failed to provide any evidence that it intended to enter Vortic's market by manufacturing and distributing restored watches with antique parts. Finally, the District Court weighed the trial testimony and found that Hamilton failed to demonstrate that The Lancaster was of a lower quality than Hamilton's products. Hamilton relied on a single online post in which Custer suggested that The Lancaster was not for everyday use because "wearing [the watches] on the wrist will jar them more than usual." App'x at 208-11. Custer, however, was extensively questioned about this post at trial, and testified that it was made during an early phase of The Lancaster's production and before any watches were sold to consumers. And Hamilton did not provide any proof as to the durability of their own products as a comparison. See Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 505 (2d Cir. 1996) (explaining that this factor looks to whether the defendant's product is inferior or equal in quality to the plaintiff's product).

[34] As the above discussion demonstrates, a common theme emerged from the bench trial: Hamilton-which bore the burden of establishing confusion-failed to come forward with any reliable evidence showing that consumers were likely to be misled. We find no clear error in the District Court's factual findings in connection with its analysis under Champion or in connection with the Polaroid factors. We further conclude that the District Court correctly applied Champion and Polaroid to these factual findings to conclude that there was no likelihood of consumer confusion.

1. What about postsale confusion? In its briefing before the Second Circuit, Hamilton argued that Vortic's conduct would cause post-sale confusion for potential consumers of Hamilton's watches that saw Vortic's product on the wrists of Vortic's customers. In its opinion, the Second Circuit ignored the argument. (Hamilton also argued initial interest confusion, which the Second Circuit also ignored).

A. False Advertising Under the Lanham Act

We turn now to federal false advertising law under Lanham Act § 43(a)(1)(B), 15 U.S.C. § 1125(a)(1) (B). Note from the very beginning that false advertising law covers much more than just § 43(a)(1) (B). Plaintiffs may seek redress from the Federal Trade Commission under the FTC Act, 15 U.S.C. § § 41-58, from the "little" or "baby" FTC Acts of the states, from the common law, and from alternative forms of dispute resolution such as the National Advertising Division. However, we cover here only false advertising law under the Lanham Act. (For a comprehensive treatment of false advertising, see REBECCA TUSHNET & ERIC GOLDMAN, ADVERTISING & MARKETING LAW: CASES AND MATERIALS).

As originally drafted, § 43(a) covered only an advertiser's "false description or representation" about itself; it did not cover "commercial disparagement," i.e., the advertiser's false representations about someone else. The Trademark Law Revision Act of 1988 significantly expanded the scope of § 43(a) and made clear its application to a defendant's false representations about itself and others. Here is § 43(a)(1) (B) in its current form:

(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-. . . . (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, 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. 15 U.S.C. § 1125(a)(1) (B).

In what follows, we will cover the various ways in which a statement may trigger liability under § 43(a)(1)(B): • Finally in Part IV.A.4, we will turn to the issue of substantiation, particularly in connection with advertisements that claim that "tests prove" or "studies show" some factual proposition.

The Basic Doctrine. Before we proceed, it may be helpful to set forth in somewhat mechanical fashion the basic blackletter doctrine that the following opinions will develop (and complicate).

Courts enumerate the elements of a false advertising cause of action under Lanham Act § 43(a)(1)(B), 15 U.S.C. § 1125(a)(1) (B), in a variety of ways, but the following is a good example of the five elements that the plaintiff must prove to prevail:

A prima facie case of false advertising under section 43(a) requires the plaintiff to establish:

(1) A false or misleading statement of fact about a product;

(2) Such statement either deceived, or had the capacity to deceive a substantial segment of potential consumers;

(3) The deception is material, in that it is likely to influence the consumer's purchasing decision;

(5) The plaintiff has been or is likely to be injured as a result of the statement at issue.

Pizza Hut, Inc. v. Papa John's Int'l, 227 F.3d 489, 495 (5th Cir. 2000).

As the first element suggests, there are two modes of false advertising under Lanham Act § 43(a)(1)(B): (1) advertising that is literally false, and (2) advertising that is misleading. This dichotomy makes good sense in light of the statutory reference to any "false or misleading description of fact, or false or misleading representation of fact." Id. (emphasis added). This dichotomy is very important because if a court finds an advertisement to be literally false under the first element, the court need not have recourse to extrinsic evidence (e.g., survey evidence) to determine whether the advertisement deceives the public under the second element. The court may presume deception. See Schering-Plough Healthcare Products, Inc. v. Schwarz Pharma, Inc., 586 F.3d 500, 512 (7th Cir. 2009) ("What the cases mean when they say that proof of literal falsity allows the plaintiff to dispense with evidence that anyone was misled or likely to be misled is that the seller who places an indisputably false statement in his advertising or labeling probably did so for a malign purpose, namely to sell his product by lies, and if the statement is false probably at least some people were misled, and since it was a lie why waste time on costly consumer surveys?"). By contrast, if a court finds an advertisement to be merely misleading, then it will require extrinsic evidence, typically in the form of survey evidence, to determine whether the advertisement deceives the public. Furthermore, if a court finds an advertisement to be literally false under the first element, the court will often also presume materiality under the third element and irreparable harm to the plaintiff under the fifth element. See MCCARTHY § 27.37.

In Time Warner Cable, Inc. v. DIRECTV, Inc. 497 F.3d 144 (2d Cir. 2007), excerpted below, the Second Circuit complicated the basic dichotomy between advertising that is literally false and advertising that is merely misleading by establishing that advertising that is "literally false by necessary implication" qualifies as literally false advertising-and thus triggers all the relevant presumptions under the other elements of a false advertising claim. What is the difference between advertising that is literally false by necessary implication and advertising that is merely misleading? As the DIRECTTV court seeks explain, advertising that is literally false by necessary implication conveys only one unambiguous false message, even if it does so implicitly. By contrast, advertising that is merely misleading may convey several messages, one of which may be false. Id. at 158 (paragraph 28 in the excerpted DIRECTTV opinion below). A court will require survey evidence to determine if consumers perceive that one false message. As you will see, the distinction between advertising that is literally false by necessary implication and advertising that is misleading, while relatively straightforward in theory, is far more subtle in practice. For more on this distinction, see 2 GILSON ON TRADEMARKS § 7.02 (2019).

Standing. Consumers do not have standing to bring suit under § 43(a)(1) (B). In Lexmark International, Inc. v. Static Components, Inc., 134 S. Ct. 1377 (2014), the Supreme Court held that plaintiffs under § 43(a)(1) (B) have standing if (1) their interests fall within the "zone of interests" protected by § 43(a)(1) (B), which consists of "protecting persons engaged in commerce within the control of Congress", id. at 1389 (brackets removed), and (2) their injuries are proximately caused by violations of the statute. Because consumers are not engaged in commerce, they are unable to bring suit under § 43(a)(1) (B). See MCCARTHY § 27.30. ). We conclude that the district court did not abuse its discretion in entering this injunction and accordingly affirm.

BACKGROUND [2] In August 1999, Clorox introduced a 15-second and a 30-second television commercial ("Goldfish I"), each depicting an S.C. Johnson Ziploc Slide-Loc resealable storage bag side-by-side with a Clorox Glad-Lock bag. The bags are identified in the commercials by brand name. Both commercials show an animated, talking goldfish in water inside each of the bags. In the commercials, the bags are turned upside-down, and the Slide-Loc bag leaks rapidly while the Glad-Lock bag does not leak at all. In both the 15-and 30-second Goldfish I commercials, the Slide-Loc goldfish says, in clear distress, "My Ziploc Slider is dripping. Wait a minute!," while the Slide Loc bag is shown leaking at a rate of approximately one drop per one to two seconds. In the 30-second Goldfish I commercial only, the Slide-Loc bag is shown leaking while the Slide-Loc goldfish says, "Excuse me, a little help here," and then, "Oh, dripping, dripping." At the end of both commercials, the Slide Loc goldfish exclaims, "Can I borrow a cup of water!!!" [3] On November 4, 1999, S.C. Johnson brought an action against Clorox under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), for false advertising in the Goldfish I commercials. After S.C. Johnson moved for a preliminary injunction, the district court converted the evidentiary hearing on the motion to a trial on the merits under Fed.R.Civ.P. 65(a)(2).

[4] Dr. Phillip DeLassus, an outside expert retained by S.C. Johnson, conducted "torture testing," in which Slide-Loc bags were filled with water, rotated for 10 seconds, and held upside-down for an additional 20 seconds. He testified about the results of the tests he performed, emphasizing that 37 percent of all Slide-Loc bags tested did not leak at all. Of the remaining 63 percent that did leak, only a small percentage leaked at the rate depicted in the Goldfish I television commercials. The vast majority leaked at a rate between two and twenty times slower than that depicted in the Goldfish I commercials.

[5] On January 7, 2000, the district court entered findings of fact and conclusions of law on the record in support of an Order permanently enjoining Clorox from disseminating the Goldfish I television commercials. Specifically, the district court found that S.C. Johnson had shown by a preponderance of the evidence that the Goldfish I commercials are "literally false in respect to its depiction of the flow of water out of the Slide-Loc bag. [6] The court found that "the commercial impermissibly exaggerates the facts in respect to the flow of water or the leaking of water out of a Slide-Loc bag." Id., at *1. The court further found that:

[t]he commercial shows drops of water coming out of the bag at what appears to be a rapid rate. In fact, the rate is about one fairly large drop per second. Moreover, there is a depiction of the water level in the bag undergoing a substantial and rapid decline. Finally, there is an image of bubbles going through the water.

Id. at *1, 2000 U.S. Dist. LEXIS 3621, at *2-*3. The district court found that "the overall depiction in the commercial itself is of a rapid and substantial leakage and flow of water out of the Slide-Loc bag." Id. at *1, 2000 U.S. Dist. LEXIS 3621, at *3. The court noted that "[t]his is rendered even more graphic by the fact that there is a goldfish depicted in the bag which is shown to be in jeopardy because the water is running out at such a rate." Id.

[7] The district court found "that when these bags are subjected to the same kind of quality control test as used by Clorox for the Glad bags, there is some leakage in about twothirds of the cases." Id. at *2, 2000 U.S. Dist. LEXIS 3621, at *4. However, the court found "that the great majority of those leaks are very small and at a very slow rate." Id. The court found that "[o]nly in about 10 percent of these bags is there leakage at the rate shown in the commercial, that is, one drop per second." Id. The district court further found that "[t]he problem with the commercial is that there is no depiction in the visual images to indicate anything else than the fact that the type of fairly rapid and substantial leakage shown in the commercial is simply characteristic of that kind of bag." Id.

[8] Accordingly, the court held that "the Clorox commercial in question misrepresents the Slide-Loc bag product," and that this "finding relates to the different sizes and types of the Slide-Loc bags because there is no attempt to limit the commercial to any particular category." Id. at *3, 2000 U.S. Dist. LEXIS 3621, at *7. The court entered an injunction, noting that S.C. Johnson had shown irreparable harm sufficient to support an injunction because, as the court found, the Goldfish I commercials are literally false. Id. The district court rejected S.C. Johnson's other theories of relief under section 43(a) of the Lanham Act, including a claim of implied falsity. Id. at *3, 2000 U.S. Dist. LEXIS 3621, at *6-*7. Clorox has not appealed this January 7 permanent injunction relating to the Goldfish I commercials. [9] In February 2000, Clorox released a modified version of the Goldfish I television commercials as well as a related print advertisement ("Goldfish II"). In the 15 second Goldfish II television commercial, a Ziploc Slide-Loc bag and Glad-Lock bag are again shown side-byside, filled with water and containing an animated, talking goldfish. The bags are then rotated, and a drop is shown forming and dropping in about a second from the Slide-Loc bag. During the approximately additional two seconds that it is shown, the Slide-Loc goldfish says, "My Ziploc slider is dripping. Wait a minute." The two bags are then off-screen for approximately eight seconds before the Slide-Loc bag is again shown, with a drop forming and falling in approximately one second. During this latter depiction of the Slide-Loc bag, the Slide-Loc goldfish says, "Hey, I'm gonna need a little help here." Both bags are identified by brand name, and the Glad-Lock bag does not leak at all. The second-to-last frame shows three puddles on an orange background that includes the phrase "Don't Get Mad." [10] In the print advertisement, a large drop is shown forming and about to fall from an upside-down Slide-Loc bag in which a goldfish is partially out of the water. Bubbles are shown rising from the point of the leak in the Slide-Loc bag. Next to the Slide-Loc bag is a Glad-Lock bag that is not leaking and contains a goldfish that is completely submerged. Under the Slide-Loc bag appears: "Yikes! My Ziploc© Slide-Loc™ is dripping!" Under the Glad-Lock bag is printed: "My Glad is tight, tight, tight." On a third panel, three puddles and the words "Don't Get Mad" are depicted on a red background. In a fourth panel, the advertisement recites: "Only Glad has the Double-Lock™ green seal. That's why you'll be glad you got Glad. Especially if you're a goldfish." [11] After these advertisements appeared, S.C. Johnson moved to enlarge the January 7 injunction to enjoin the airing and distribution of the Goldfish II advertisements. On April 6, 2000, after hearing oral argument, the district court entered another order on the record, setting forth further findings of fact and conclusions of law in support of an Order permanently enjoining the distribution of the Goldfish II television commercial and print advertisement. The district court explicitly noted that it was "in a position, in [its] view, to decide the case based on the existing evidence without further evidence." S.C. Johnson II, 2000 WL 423534, at *1, 2000 U.S. Dist. LEXIS 4977, at *1-*2.

[12] The court incorporated by reference its prior findings of fact from its January 7, 2000 Order, stating that it would "not attempt to repeat what was said in the earlier decision, although a great deal of it applies to the issue now presented to the court." Id. at *1, 2000 U.S. Dist. LEXIS 4977, *2. The court then stated its finding that, "[f]ocusing now on the new television commercial, in my view it has the essential problems of the earlier 15 second commercial." Id. The court observed that the Goldfish II commercial "does not literally portray a rate of leakage which was portrayed in the earlier ad and which was the subject of certain of my findings in the earlier decision." Id. at *1, 2000 U.S. Dist. LEXIS 4977, at *3. Instead, the court noted,

[t]here are two images shown of the slide-lock bag upside down with water coming out, two separate images. In each image a large drop immediately forms and the water drop falls. That is shown in the first image and then the commercial switches to some other subject and when the next image comes of the slide-lock bag there again is a large drop immediately forming and falling away.

Id. at *2, 2000 U.S. Dist. LEXIS 4977, at *4. The district court referenced its earlier finding that the Goldfish I commercials did not accurately depict either the rate or risk of leakage in Slide-Loc bags. Id. at *2, 2000 U.S. Dist. LEXIS 4977, at *4-*5. The court then found that:

[E]ssentially the same problem that I commented upon in the earlier decision exists with this commercial, with the present commercial. There is nothing to indicate that anything goes on with the slide-lock bags except the leaking of large drops as shown in the only two depictions that are relevant. There is nothing indicated about slow rate or rapid rate. There is nothing shown except one image and that is an image of a big drop of water falling out of the bag.

There is nothing to indicate that this kind of leakage occurs in only some particular percentage of bags, and there is nothing to indicate the degree of risk of such leakage. There is only one image, and that is of a big drop falling out.

[13] The court rejected Clorox's argument "that what is really shown [in the Goldfish II television commercial] is that the leakage occurs at a rather slow rate, perhaps about once every seven or eight seconds." Id. According to the court, Clorox "bases this argument on the fact that if you take the elapsed time between the leak or the drop in the first image and the drop in the second image, this amount of time elapses." Id. at *2, 2000 U.S. Dist. LEXIS 4977, at *5-*6. The district court found, however, that "[t]here is nothing visually or in words to indicate that what is being depicted is some kind of a continuum of the condition of the bag from one image to the other." Id. at *2, 2000 U.S. Dist. LEXIS 4977, at *6. Rather, "[a]ll that is depicted is two separate images, each of which shows the same thing." Id. The district found that "[w]hat is shown is the images, and what is omitted is any indication about the actual rates and degree and amount of leakage that the detailed evidence at the trial showed." Id. The court further found that the Goldfish II commercial "portray[s] . . . a goldfish in danger of suffocating in air because of the outflow of water from the bag." Id.

[14] The court concluded that the Goldfish II television commercial decidedly contrary to what was portrayed in the actual evidence about the bags at the first trial, and all in all the television commercial in my view is literally false." Id. at *3, 2000 U.S. Dist. LEXIS 4977, at *6. The court then addressed the Goldfish II print advertisement, which, it found "is, if anything, worse," because "[i]t has a single image of a Slide-Loc bag with a large drop about to fall away and a goldfish in danger of suffocating because the water is as portrayed disappearing from the bag." Id. at *3, 2000 U.S. Dist. LEXIS 4977, at *7. The district court concluded that the Goldfish II print advertisement "is literally false." Id. The court also found that the inability of a Ziploc Slide-Loc bag to prevent leakage is portrayed as an inherent quality or characteristic of that product. Accordingly, the court found that the Goldfish II television commercial and print advertisement "portray[ ] the leakage as simply an everpresent characteristic of the Slide-Loc bags." Id. at *3, 2000 U.S. Dist. LEXIS 4977, at *8.

[15] The district court found, in the alternative, that the Goldfish II ads were false by necessary implication, a doctrine this court has not yet recognized, because consumers would necessarily believe that more viscous liquids such as soups and sauces would leak as rapidly as water. Id. at *3, 2000 U.S. Dist. LEXIS 4977, at *6-*7.

[16] Clorox now appeals from this April 6, 2000 Order permanently enjoining the use of the Goldfish II television commercial and print advertisement.

[17] "We review the District Court's entry of a permanent injunction for abuse of discretion, which may be found where the Court, in issuing the injunction, relied on clearly erroneous findings of fact or an error of law." Knox v. Salinas, 193 F.3d 123, 128-29 (2d Cir. 1999) (per curiam). "[T]he district judge's determination of the meaning of the advertisement [is] a finding of fact that 'shall not be set aside unless clearly erroneous.'" Avis Rent A Car Sys., Inc. v. Hertz Corp., 782 F.2d 381, 384 (2d Cir. 1986) (quoting Fed.R.Civ.P. 52(a)).

[18] The district court found that the Goldfish II television commercial and print advertisement are literally false in violation of section 43(a). . . . "The Lanham Act does not prohibit false statements generally. It prohibits only false or misleading descriptions or false or misleading representations of fact made about one's own or another's goods or services." Id. at 1052.

[19] This court has recently restated the general requirements for a claim brought under section 43(a):

To establish a false advertising claim under Section 43(a), the plaintiff must demonstrate that the statement in the challenged advertisement is false. "Falsity may be established by proving that (1) the advertising is literally false as a factual matter, or (2) although the advertisement is literally true, it is likely to deceive or confuse customers."

Nat'l Basketball Ass'n v. Motorola, Inc., 105 F.3d 841, 855 (2d Cir. 1997) (quoting Lipton v. Nature Co., 71 F.3d 464, 474 (2d Cir. 1995)). It is also well-settled that, "in addition to proving falsity, the plaintiff must also show that the defendants misrepresented an 'inherent quality or characteristic' of the product. This requirement is essentially one of materiality, a term explicitly used in other circuits." Id. (citation and internal quotation marks omitted). [20] In considering a false advertising claim, "[f]undamental to any task of interpretation is the principle that text must yield to context." Avis, 782 F.2d at 385. Thus, we have emphasized that in reviewing FTC actions prohibiting unfair advertising practices under the Federal Trade Commission Act a court must "consider the advertisement in its entirety and not . . . engage in disputatious dissection. The entire mosaic should be viewed rather than each tile separately." Similar approaches have been taken in Lanham Act cases involving the claim that an advertisement was false on its face.

Id. (citations omitted). Moreover, we have explicitly looked to the visual images in a commercial to assess whether it is literally false. [21] "Where the advertising claim is shown to be literally false, the court may enjoin the use of the claim 'without reference to the advertisement's impact on the buying public.' Additionally, a plaintiff must show that it will suffer irreparable harm absent the injunction

I. The district court's findings of fact are not clearly erroneous.

[22] Clorox argues that the district court committed clear error in finding that its Goldfish II television commercial and print advertisement contain literal falsehoods. We find no clear error in the district court's findings of fact in support of its conclusion that the Goldfish II television commercial and print advertisement are literally false as a factual matter. We note that the court made its finding of literal falsity after a seven-day bench trial. The evidence presented at trial clearly indicates that, as the court found, only slightly more than one out of ten Slide-Loc bags tested dripped at a rate of one drop per second or faster, while more than one-third of the Slide-Loc bags tested leaked at a rate of less than one drop per five seconds. Over half of the Slide-Loc bags tested either did not leak at all or leaked at a rate no faster than one drop per 20 seconds. Moreover, less than two-thirds, or 63 percent, of Slide-Loc bags tested showed any leakage at all when subjected to the testing on which Clorox based its Goldfish I and II advertisements.

[23] The only Slide-Loc bag depicted in each of the two Goldfish II advertisements, on the other hand, is shown leaking and, when shown, is always leaking. Moreover, each time the Slide-Loc bag is on-screen, the Goldfish II television commercial shows a drop forming immediately and then falling from the Slide-Loc bag, all over a period of approximately two seconds. Accordingly, the commercial falsely depicts the risk of leakage for the vast majority of Slide-Loc bags tested.

[24] Clorox argues that, because approximately eight seconds pass between the images of the drops forming and falling in the Goldfish II television commercial, the commercial depicts an accurate rate of leakage. However, the commercial does not continuously show the condition of the Slide-Loc bag because the Slide-Loc bag is off-screen for eight seconds. Likewise, the print ad does not depict any rate of leakage at all, other than to indicate that the Slide-Loc bag is "dripping." Clorox's argument that its commercial shows a "continuum" also fails given that in each of the Goldfish II advertisements is a background image containing three puddles of water, when only two drops form and fall in the television commercial and just one drop forms and nearly falls in the print advertisement.

[25] Given the highly deferential standard of review accorded to the district court's findings entered after a bench trial, we cannot say that, having viewed the record in its entirety, we are left with the definite and firm conviction that a mistake has been committed. See Mobil Shipping and Transp. Co. v. Wonsild Liquid Carriers Ltd., 190 F.3d 64, 67-68 (2d Cir. 1999). We find no clear error in the district court's finding that the depiction of the risk of leakage from Slide-Loc bags in the Goldfish II television commercial and print advertisement is literally false as to an inherent quality or characteristic of Ziploc Slide-Loc storage bags.

II. The district court committed no error of law.

[26] Clorox alleges that the district court erred in finding literal falsity because "no facially false claim or depiction was present in the advertisements at issue in this case." As such, Clorox argues, the district court's finding of literal falsity "was based upon an interpretation of the ads that went beyond their facial or explicit claims." According to Clorox, the district court therefore must have based its injunction on the implied falsity of the ads. Clorox argues that the district court erred as a matter of law because "any alleged message beyond the literal claims in the advertisements [must] be proved by extrinsic evidence," upon which the district court undeniably did not rely in reaching its conclusions.

[27] We disagree. The district court properly concluded that the Goldfish II advertisements are literally false in violation of section 43(a) of the Lanham Act. The court looked at the Goldfish II television commercial and print advertisement in their entirety and determined that the risk of leakage from the Slide-Loc storage bag depicted in the ads is literally false based on the evidence presented at trial of the real risk and rate of leakage from explaining: "It's pure pasteurized juice as it comes from the orange." (See the storyboard below). The Second Circuit determined that the commercial was literally false:

We find, therefore, that the squeezing-pouring sequence in the Jenner commercial is false on its face. The visual component of the ad makes an explicit representation that Premium Pack is produced by squeezing oranges and pouring the freshly-squeezed juice directly into the carton. This is not a true representation of how the product is prepared. Premium Pack juice is heated and sometimes frozen prior to packaging. Additionally, the simultaneous audio component of the ad states that Premium Pack is "pasteurized juice as it comes from the orange." This statement is blatantly false-pasteurized juice does not come from oranges. Pasteurization entails heating the juice to approximately 200 degrees Fahrenheit to kill certain natural enzymes and microorganisms which cause spoilage. Moreover, even if the addition of the word "pasteurized" somehow made sense and effectively qualified the visual image, Tropicana's commercial nevertheless represented that the juice is only squeezed, heated and packaged when in fact it may actually also be frozen.

Another example of a literally false advertising message appears in Warner-Lambert Co. v. BreathAsure, Inc., 204 F.3d 87 (3d Cir. 2000). The court explained: BreathAsure's breath freshening products are capsules that are swallowed . . . . BreathAsure{} heavily promoted its BreathAsure products as being effective against bad breath. The theme of much of the advertising was that the capsules worked effectively at the source of bad breath and were, therefore, superior to products that simply masked or covered bad breath such as gum, mints and mouthwash. One such ad contained a series of photographs depicting food, a couple appearing to share a tender moment, and a package of BreathAsure. The following captions appear beneath those images: "if you eat and we all do," "and you want to get close," "you need BreathAsure the internal breath freshener," "BreathAsure for the confidence of clean fresh breath."

Id. at 89. However, on the third day of the district court bench trial, "BreathAsure stipulated that scientific evidence established that its 'BreathAsure' products were not effective against bad breath" and was subsequently permanently enjoined from advertising otherwise. Id. On appeal, the Third Circuit further determined that the name of the product, BreathAsure, was also literally false. "The name falsely tells the consumer that he or she has assurance of fresher breath when ingesting one of the defendant's capsules. That is not true." Id. at 97. Finally, other cases are perhaps more ridiculous than instructive. See, e.g., Hearst Bus. Pub. Inc. v. W.G. Nichols Inc., 76 F. Supp. 2d 459 (S.D.N.Y. 1999) (finding literal falsity where defendant stated that "Even our competition says Chilton's Professional Manuals are: '. . . the manuals which were established as the industry standard by decades of reliable accuracy . . . manuals that automotive repair professionals need or want,'" when competitor had in fact stated that defendant's manuals "are not the manuals which were established as the industry standard {and} are not the Chilton Profession{al} Repair Manuals that automative repair professionals need or want" (emphasis added)); Telebrands Corp. v. Wilton Indus., 983 F. Supp. 471 (S.D.N.Y. 1997) (finding literal falsity where defendant stated that its product was "As Seen On T.V." when in fact the defendant ran no significant television advertising for its product while the plaintiff ran extensive television advertising for its very similar product); Edmark Indus. Sdn. Bhd. v. South Asia Int'l (H.K.) Ltd., 89 F. Supp. 2d 840 (E.D. Tex. 2000) (finding literal falsity where defendant claimed that its food slicer "Features fine german [sic] surgical steel blades" when it fact the slicer used Japanese steel).

Can falsely claiming that a product feature is "patented" constitute false advertising? In short, yes. In its counterclaim in Crocs, Inc. v. Effervescent, Inc., 119 F.4th 1 (Fed. Cir. 2024), Effervescent claimed that Crocs falsely advertised its Croslite foam material for its shoes as "patented." "Crocs conceded in its briefing, and at oral argument before this court, that its statements that Croslite was covered by a patent are false." Id. at 4. Effervescent argued that Crocs thereby "misled current and potential customers to believe that 'Crocs' molded footwear is made of a material that is different than any other footwear'" and that "its competitors molded footwear products are 'made of inferior material compared to Crocs' molded footwear.'" Id. at 3 (quoting Effervescent's counterclaim). On this counterclaim, the district court granted summary judgment to Crocs. The Federal Circuit reversed and remanded: "We hold that a cause of action arises from Section 43(a)(1)(B) where a party falsely claims that it possesses a patent on a product feature and advertises that product feature in a manner that causes consumers to be misled about the nature, characteristics, or qualities of its product." Id. at 2. [2] This appeal requires us to clarify certain aspects of our false advertising doctrine. We make three clarifications in particular. First, we hold that an advertisement can be literally false even though it does not explicitly make a false assertion, if the words or images, considered in context, necessarily and unambiguously imply a false message. Second, we decide that the category of non-actionable "puffery" encompasses visual depictions that, while factually inaccurate, are so grossly exaggerated that no reasonable consumer would rely on them in navigating the marketplace. Third, we conclude that the likelihood of irreparable harm may be presumed where the plaintiff demonstrates a likelihood of success in showing that the defendant's comparative advertisement is literally false and that given the nature of the market, it would be obvious to the viewing audience that the advertisement is targeted at the plaintiff, even though the plaintiff is not identified by name. Reviewing the District Court's decision under these principles, we affirm in part, vacate in part, and remand for further proceedings consistent with this opinion.

A. The Parties [3] TWC and DIRECTV are major players in the multichannel video service industry. TWC is the second-largest cable company in the United States, serving more than 13.4 million subscribers. Like all cable providers, TWC must operate through franchises let by local government entities; it is currently the franchisee in the greater part of New York City. DIRECTV is one of the country's largest satellite service providers, with more than 15.6 million customers nationwide. Because DIRECTV broadcasts directly via satellite, it is not subject to the same franchise limitations as cable companies. As a result, in the markets where TWC is the franchisee, DIRECTV and other satellite providers pose the greatest threat to its market share. The competition in these markets for new customers is extremely fierce, a fact to which the advertisements challenged in this case attest.

[4] TWC offers both analog and digital television services to its customers. DIRECTV, on the other hand, delivers 100% of its programming digitally. Both companies, however, offer high-definition ("HD") service on a limited number of their respective channels. Transmitted at a higher resolution than analog or traditional digital programming, HD provides the home viewer with theater-like picture quality on a wider screen. The picture quality of HD is governed by standards recommended by the Advanced Television Systems Committee ("ATSC"), an international non-profit organization that develops voluntary standards for digital television. To qualify as HD under ATSC standards, the screen resolution of a television picture must be at least 720p or 1080i. 2 TWC and DIRECTV do not set or alter screen resolution for HD programming provided by the networks; instead, they make available sufficient bandwidth to permit the HD level of resolution to pass on to their customers. To view programming in HD format, customers of either provider must have an HD television set.

[5] There is no dispute, at least on the present record, that the HD programming provided by TWC and DIRECTV is equivalent in picture quality. In terms of non-HD programming, digital service generally yields better picture quality than analog service, because a digital signal is more resistant to interference. See Consumer Elecs. Ass'n v. F.C.C., 347 F.3d 291, 293-94 (D.C. Cir. 2003). That said, TWC's analog cable service satisfies the technical specifications, e.g. signal level requirements and signal leakage limits, set by the Federal Communications Commission ("FCC"). See 47 C.F.R. § 76.1, et seq. According to a FCC fact sheet, analog service that meets these specifications produces a picture that is "high enough in quality to provide enjoyable viewing with barely perceptible impairments."

[6] In the fall of 2006, DIRECTV launched a multimedia advertising campaign based on the theme of "SOURCE MATTERS." The concept of the campaign was to educate consumers that to obtain HD-standard picture quality, it is not enough to buy an HD television set; consumers must also receive HD programming from the "source," i.e., the television service provider.

[7] As part of its new campaign, DIRECTV began running a television commercial in October 2006 featuring celebrity Jessica Simpson. In the commercial, Simpson, portraying her character of Daisy Duke from the movie The Dukes of Hazzard, says to some of her customers at the local diner:

Simpson: Y'all ready to order? Hey, 253 straight days at the gym to get this body and you're not gonna watch me on DIRECTV HD? You're just not gonna get the best picture out of some fancy big screen TV without DIRECTV.

It's broadcast in 1080i. I totally don't know what that means, but I want it.

The original version of the commercial concluded with a narrator saying, "For picture quality that beats cable, you've got to get DIRECTV." [8] In response to objections by TWC, and pursuant to agreements entered into by the parties, DIRECTV pulled the original version of the commercial and replaced it with a revised one ("Revised Simpson Commercial"), which began airing in early December 2006. The Revised Simpson Commercial is identical to the original, except that it ends with a different tag line: "For an HD picture that can't be beat, get DIRECTV." The original version ended with the announcer saying, "For picture quality that beats cable, you've got to get DIRECTV." [10] DIRECTV agreed to stop running the Shatner commercial in November 2006. In January 2007, DIRECTV released a revised version of the commercial ("Revised Shatner Commercial") with the revamped tag line, "For an HD picture that can't be beat, get DIRECTV." [11] DIRECTV also waged its campaign in cyberspace, placing banner advertisements on various websites to promote the message that when it comes to picture quality, "source matters." The banner ads have the same basic structure. They open by showing an image that is so highly pixelated that it is impossible to discern what is being depicted. On top of this indistinct image is superimposed the slogan, "SOURCE MATTERS." After about a second, a vertical line splits the screen into two parts, one labeled "OTHER TV" and the other "DIRECTV." On the OTHER TV side of the line, the picture is extremely pixelated and distorted, like the opening image. By contrast, the picture on the DIRECTV side is exceptionally sharp and clear. The DIRECTV screen reveals that what we have been looking at all along is an image of New York Giants quarterback Eli Manning; in another ad, it is a picture of two women snorkeling in tropical waters. The advertisements then invite browsers to "FIND OUT WHY DIRECTV'S picture beats cable" and to "LEARN MORE" about a special offer. In the original design, users who clicked on the "LEARN MORE" icon were automatically directed to the HDTV section of DIRECTV's website.

[12] In addition to the banner advertisements, DIRECTV created a demonstrative advertisement that it featured on its own website. Like the banner ads, the website demonstrative uses the split-screen technique to compare the picture quality of "DIRECTV" to that of "OTHER TV," which the ad later identifies as representing "basic cable," i.e., analog cable. The DIRECTV side of the screen depicts, in high resolution, an image of football player Kevin Dyson making a touchdown at the Super Bowl. The portion of the image on the OTHER TV side is noticeably pixelated and blurry. This visual display is accompanied by the following text: "If you're hooking up your high-definition TV to basic cable, you're not getting the best picture on every channel. For unparalleled clarity, you need DIRECTV HD. You'll enjoy 100% digital picture and sound on every channel and also get the most sports in HD-including all your favorite football games in high definition with NFL SUNDAY TICKET."

[13] On December 7, 2006, TWC filed this action charging DIRECTV with, inter alia, false advertising in violation of § 43(a) of the Lanham Act. 15 U.S.C. § 1114, et seq. Initial negotiations led to the execution of a stipulation, in which DIRECTV agreed that pending final resolution of the action, it would stop running the original versions of the Simpson and Shatner commercials and also disable the link on the banner advertisements that routed customers to the HDTV page of its website. DIRECTV further stipulated that it would not claim in any advertisement, either directly or by implication, that "the picture quality presently offered by DIRECTV's HDTV service is superior to the picture offered presently by Time Warner Cable's HDTV service, or the present HDTV services of cable television providers in general." Finally, DIRECTV agreed that any breach of the stipulation would result in irreparable harm to TWC. The stipulation contained the caveat, however, that nothing in it "shall be construed to be a finding on the merits of this action." The District Court entered an order on the stipulation on December 12, 2006.

[14] The following week, on December 18, TWC filed a motion for a preliminary injunction against the Revised Simpson Commercial, as well as the banner advertisements and website demonstrative (collectively, "Internet Advertisements"), none of which were specifically covered by the stipulation. TWC claimed that each of these advertisements was literally false, obviating the need for extrinsic evidence of consumer confusion. TWC further argued that as DIRECTV's direct competitor, it was entitled to a presumption of irreparable injury. On January 4, 2007, after discovering that DIRECTV had started running the Revised Shatner Commercial, TWC filed supplemental papers requesting that this commercial also be preliminarily enjoined on literal falsity grounds.

[15] DIRECTV vigorously opposed the motion. It asserted that the Revised Simpson and Shatner Commercials were not literally false because no single statement in the commercials explicitly claimed that DIRECTV HD is superior to cable HD in terms of picture quality. DIRECTV did not deny that the Internet Advertisements' depictions of cable were facially false. Rather, it argued that the Internet Advertisements did not violate the Lanham Act because the images constituted non-actionable puffery. Finally, DIRECTV argued that irreparable harm could not be presumed because none of the contested advertisements identified TWC by name.

C. The District Court's February 5, 2007 Opinion and Order

[16] On February 5, 2007, the District Court issued a decision granting TWC's motion. The District Court determined that TWC had met its burden of showing that each of the challenged advertisements was likely to be proven literally false. Addressing the television commercials, the District Court held that the meaning of particular statements had to be determined in light of the overall context, and not in a vacuum as urged by DIRECTV. Given the commercials' obvious focus on HD picture quality, the District Court found that the Simpson's assertion that a viewer cannot "get the best picture out of some big fancy big screen TV without DIRECTV" and Shatner's quip that "settling for cable would be illogical" could only be understood as making the literally false claim that DIRECTV HD is superior to cable HD in picture quality. See Time Warner Cable, Inc., 475 F.Supp.2d at 305-06. As for the Internet Advertisements, the District Court found that the facially false depictions of cable's picture quality could not be discounted as mere puffery because it was possible that consumers unfamiliar with HD technology would actually rely on the images in deciding whether to hook up their HD television sets to DIRECTV or analog cable. See id. at 306-08.

[17] In assessing irreparable harm vel non, the District Court observed that under Second Circuit case law, irreparable harm could be presumed where the movant "demonstrates a likelihood of success in showing literally false defendant's comparative advertisement which mentions plaintiff's product by name." Id. at 308 (quoting Castrol, Inc. v. Quaker State Corp., 977 F.2d 57, 62 (2d Cir. 1992) (internal quotation marks omitted)). The District Court acknowledged that the Revised Shatner Commercial and the Internet Advertisements did not specifically name TWC, but concluded that a presumption of irreparable harm was nevertheless appropriate because the advertisements made explicit references to "cable," and in the markets where TWC is the franchisee, "cable" is functionally synonymous with "Time Warner Cable." See id. As for the Revised Simpson Commercial, the District Court reasoned that although the advertisement did not explicitly reference "cable," irreparable harm should be presumed because "TWC is DIRECTV's main competitor in markets served by TWC." Id. The District Court further noted that DIRECTV had breached the stipulation by continuing to run the contested commercials and that this breach also supported a finding of irreparable harm. See id. at n. 5.

[18] In accordance with its opinion, the District Court entered a preliminary injunction barring DIRECTV from disseminating, "in any market in which [TWC] provides cable service,"

(1) the Revised Simpson Commercial and Revised Shatner Commercial, "and any other advertisement disparaging the visual or audio quality of TWC or cable high-definition ("HDTV") programming as compared to that of DIRECTV or satellite HDTV programming"; and

(2) the Internet Advertisements "and any other advertisement making representations that the service provided by Time Warner Cable, or cable service in general, is unwatchable due to blurriness, distortion, pixellation or the like, or inaudible due to static or other interference."

[19] A party seeking preliminary injunctive relief must establish: (1) either (a) a likelihood of success on the merits of its case or (b) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in its favor, and (2) a likelihood of irreparable harm if the requested relief is denied. See Coca-Cola Co. v. Tropicana Prods., Inc., 690 F.2d 312, 314-15 (2d Cir. 1982), abrogated on other grounds by Fed.R.Civ.P. 52(a). We review the entry of a preliminary injunction for excess of discretion, which may be found where the district court, in issuing the injunction, relied upon clearly erroneous findings of fact or errors of law. A. Likelihood of Success on the Merits 1. Television Commercials . . . . [20] Two different theories of recovery are available to a plaintiff who brings a false advertising action under § 43(a) of the Lanham Act. First, the plaintiff can demonstrate that the challenged advertisement is literally false, i.e., false on its face. See GAC Int'l, Inc., 862 F.2d at 977. When an advertisement is shown to be literally or facially false, consumer deception is presumed, and "the court may grant relief without reference to the advertisement's [actual] impact on the buying public." Coca-Cola Co., 690 F.2d at 317. "This is because plaintiffs alleging a literal falsehood are claiming that a statement, on its face, conflicts with reality, a claim that is best supported by comparing the statement itself with the reality it purports to describe." Schering Corp. v. Pfizer Inc., 189 F.3d 218, 229 (2d Cir. 1999).

[21] Alternatively, a plaintiff can show that the advertisement, while not literally false, is nevertheless likely to mislead or confuse consumers. See Coca-Cola Co., 690 F.2d at 317. "[P]laintiffs alleging an implied falsehood are claiming that a statement, whatever its literal truth, has left an impression on the listener [or viewer] that conflicts with reality"-a claim that "invites a comparison of the impression, rather than the statement, with the truth." Schering Corp., 189 F.3d at 229. Therefore, whereas "plaintiffs seeking to establish a literal falsehood must generally show the substance of what is conveyed, . . . a district court must rely on extrinsic evidence [of consumer deception or confusion] to support a finding of an implicitly false message." Id. (internal quotation marks omitted).foot_21 [22] Here, TWC chose to pursue only the first path of literal falsity, and the District Court granted the preliminary injunction against the television commercials on that basis. In this appeal, DIRECTV does not dispute that it would be a misrepresentation to claim that the picture quality of DIRECTV HD is superior to that of cable HD. Rather, it argues that neither commercial explicitly makes such a claim and therefore cannot be literally false.

[23] DIRECTV's argument is easily dismissed with respect to the Revised Simpson Commercial. In the critical lines, Simpson tells audiences, "You're just not gonna get the best picture out of some fancy big screen TV without DIRECTV. It's broadcast in 1080i." These statements make the explicit assertion that it is impossible to obtain "the best picture"-i.e., a "1080i"-resolution picture-from any source other than DIRECTV. This claim is flatly untrue; the uncontroverted factual record establishes that viewers can, in fact, get the same "best picture" by ordering HD programming from their cable service provider. We therefore affirm the District Court's determination that the Revised Simpson Commercial's contention "that a viewer cannot 'get the best picture' without DIRECTV is . . . likely to be proven literally false." Time Warner Cable, Inc., 475 F.Supp.2d at 306.

[24] The issue of whether the Revised Shatner Commercial is likely to be proven literally false requires more analysis. When interpreting the controversial statement, "With what Starfleet just ponied up for this big screen TV, settling for cable would be illogical," the District Court looked not only at that particular text, but also at the surrounding context. In light of Shatner's opening comment extolling the "amazing picture quality of [ ] DIRECTV HD" and the announcer's closing remark highlighting the unbeatable "HD picture" provided by DIRECTV, the District Court found that the line in the middle-"settling for cable would be illogical"-clearly referred to cable's HD picture quality. Since it would only be "illogical" to "settle" for cable's HD picture if it was materially inferior to DIRECTV's HD picture, the District Court concluded that TWC was likely to establish that the statement was literally false.

[25] DIRECTV argues that the District Court's ruling was clearly erroneous because the actual statement at issue, "settling for cable would be illogical," does not explicitly compare the picture quality of DIRECTV HD with that of cable HD, and indeed, does not mention HD at all. In DIRECTV's view, the District Court based its determination of literal falsity not on the words actually used, but on what it subjectively perceived to be the general message as the basis of a literal falsity claim . . . ."). There may still be a "basis for a claim that the advertisement is misleading," Clorox Co. Puerto Rico, 228 F.3d at 35, but to resolve such a claim, the district court must look to consumer data to determine what "the person to whom the advertisement is addressed find[s] to be the message," Am. Home Prods., 577 F.2d at 166 (citation omitted). In short, where the advertisement does not unambiguously make a claim, "the court's reaction is at best not determinative and at worst irrelevant." Id.

[28] Here, the District Court found that Shatner's assertion that "settling for cable would be illogical," considered in light of the advertisement as a whole, unambiguously made the false claim that cable's HD picture quality is inferior to that of DIRECTV's. We cannot say that this finding was clearly erroneous, especially given that in the immediately preceding line, Shatner praises the "amazing picture clarity of DIRECTV HD." We accordingly affirm the District Court's conclusion that TWC established a likelihood of success on its claim that the Revised Shatner Commercial is literally false.

[29] We have made clear that a district court must examine not only the words, but also the "visual images . . . to assess whether [the advertisement] is literally false." S.C. Johnson & Son, Inc., 241 F.3d at 238. It is uncontroverted that the images used in the Internet Advertisements to represent cable are inaccurate depictions of the picture quality provided by cable's digital or analog service. The Internet Advertisements are therefore explicitly and literally false. See Coca-Cola Co., 690 F.2d at 318 (reversing the district court's finding of no literal falsity in an orange juice commercial where "[t]he visual component of the ad makes an explicit representation that Premium Pack is produced by squeezing oranges and pouring the freshly-squeezed juice directly into the carton. This is not a true representation of how the product is prepared. Premium Pack juice is heated and sometimes frozen prior to packaging.").

[30] DIRECTV does not contest this point. Rather, it asserts that the images are so grossly distorted and exaggerated that no reasonable buyer would take them to be accurate depictions "of how a consumer's television picture would look when connected to cable." Consequently, DIRECTV argues, the images are obviously just puffery, which cannot form the basis of a Lanham Act violation. Notably, TWC agrees that no Lanham Act action would lie against an advertisement that was so exaggerated that no reasonable consumer would rely on it in making his or her purchasing decisions. TWC contends, however, that DIRECTV's own evidence-which indicates that consumers are highly confused about HD technology-shows that the Internet Advertisements pose a real danger of consumer reliance.

[31] This Court has had little occasion to explore the concept of puffery in the false advertising context. In Lipton v. Nature Co., 71 F.3d 464 (2d Cir. 1995), the one case where we discussed the subject in some depth, we characterized puffery as "[s]ubjective claims about products, which cannot be proven either true or false." Id. at 474 (internal quotation marks omitted). We also cited to the Third Circuit's description of puffery in Pennzoil Co.: "Puffery is an exaggeration or overstatement expressed in broad, vague, and commendatory language. 'Such sales talk, or puffing, as it is commonly called, is considered to be offered and understood as an expression of the seller's opinion only, which is to be discounted as such by the buyer . . . . The 'puffing' rule amounts to a seller's privilege to lie his head off, so long as he says nothing specific.'" Pennzoil Co., 987 F.2d at 945 (quoting W. Page Keeton et al., Prosser and Keeton on the Law of Torts § 109, at 756-57 (5th ed. 1984)). Applying this definition, we concluded that the defendant's contention that he had conducted "thorough" research was just puffery, which was not actionable under the Lanham Act. See Lipton, 71 F.3d at 474.

[32] Lipton's and Pennzoil Co.'s definition of puffery does not translate well into the world of images. Unlike words, images cannot be vague or broad. Cf. Pennzoil Co., 987 F.2d at 945. To the contrary, visual depictions of a product are generally "specific and measurable," id. at 946, and can therefore "be proven either true or false," Lipton, 71 F.3d at 474 (internal quotation marks omitted), as this case demonstrates. Yet, if a visual representation is so grossly exaggerated that no reasonable buyer would take it at face value, there is no danger of consumer deception and hence, no basis for a false advertising claim. Cf. Johnson & Johnson Merck Consumer Pharm. Co. v. Smithkline Beecham Corp., 960 F.2d 294, 298 (2d Cir. 1992) ("[T]he injuries redressed in false advertising cases are the result of public deception. Thus, where the plaintiff cannot demonstrate that a statistically significant part of the commercial audience holds the false belief allegedly communicated by the challenged advertisement, the plaintiff cannot establish that it suffered any injury as a result of the advertisement's message. Without injury there can be no claim, regardless of commercial context, prior advertising history, or audience sophistication."); see also U.S. Healthcare, Inc. v. Blue Cross of Greater Philadelphia, 898 F.2d 914, 922 (3d Cir. 1990) ("Mere puffery, advertising that is not deceptive for no one would rely on its exaggerated claims, is not actionable under § 43(a)." (internal quotation marks omitted)).

[33] Other circuits have recognized that puffery can come in at least two different forms. See, e.g., Pizza Hut, Inc. v. Papa John's Int'l, Inc., 227 F.3d 489, 497 (5th Cir. 2000). The first form we identified in Lipton-"a general claim of superiority over comparable products that is so vague that it can be understood as nothing more than a mere expression of opinion." Id.; see Lipton, 71 F.3d at 474. The second form of puffery, which we did not address in Lipton, is "an exaggerated, blustering, and boasting statement upon which no reasonable buyer would be justified in relying." Pizza Hut, Inc., 227 F.3d at 497; accord United Indus. Corp. v. Clorox Co., 140 F.3d 1175, 1180 (8th Cir. 1998) ("Puffery is exaggerated advertising, blustering, and boasting upon which no reasonable buyer would rely and is not actionable under § 43(a)." (internal quotation marks omitted)). We believe that this second conception of puffery is a better fit where, as here, the "statement" at issue is expressed not in words, but through images.

[34] The District Court determined that the Internet Advertisements did not satisfy this alternative definition of puffery because DIRECTV's own evidence showed that "many HDTV equipment purchasers are confused as to what image quality to expect when viewing non-HD broadcasts, as their prior experience with the equipment is often limited to viewing HD broadcasts or other digital images on floor model televisions at large retail chains." Time Warner Cable, Inc., 475 F.Supp.2d at 307. Given this confusion, the District Court reasoned that "consumers unfamiliar with HD equipment could be led to believe that using an HD television set with an analog cable feed might result in the sort of distorted images showcased in DIRECTV's Internet Advertisements, especially since those advertisements make reference to 'basic cable.'" Id.

[35] Our review of the record persuades us that the District Court clearly erred in rejecting DIRECTV's puffery defense. The "OTHER TV" images in the Internet Advertisements are-to borrow the words of Ronald Boyer, TWC's Senior Network Engineer-"unwatchably blurry, distorted, and pixelated, and . . . nothing like the images a customer would ordinarily see using Time Warner Cable's cable service." Boyer further explained that the types of gross distortions shown in DIRECTV's Website Demonstrative and Banner Ads are not the type of disruptions that could naturally happen to an analog or non-HD digital cable picture. These advertisements depict the picture quality of cable television as a series of large colored square blocks, laid out in a grid like graph paper, which nearly entirely obscure the image. This is not the type of wavy or "snowy" picture that might occur from degradation of an unconverted analog cable picture, or the type of macro-blocking or "pixelization" that might occur from degradation of a digital cable picture. Rather, the patchwork of colored blocks that DIRECTV depicts in its advertisement appears to be the type of distortion that would result if someone took a low-resolution photograph and enlarged it too much or zoomed in too close. If DIRECTV intended the advertisement to depict a pixelization problem, this is a gross exaggeration of one.

[36] As Boyer's declaration establishes, the Internet Advertisements' depictions of cable are not just inaccurate; they are not even remotely realistic. It is difficult to imagine that any consumer, whatever the level of sophistication, would actually be fooled by the Internet Advertisements into thinking that cable's picture quality is so poor that the image is "nearly entirely obscure [d]." As DIRECTV states in its brief, "even a person not acquainted with cable would realize TWC could not realistically supply an unwatchably blurry image and survive in the marketplace."

[37] In reaching the contrary conclusion, the District Court relied heavily on the declaration of Jon Gieselman, DIRECTV's Senior Vice-President of Advertising and Public Relations. However, Gieselman merely stated that the common misconception amongst firsttime purchasers of HD televisions is that "they will automatically get exceptional clarity on every channel" just by plugging their new television sets into the wall. Nothing in Gieselman's declaration indicates that consumers mistakenly believe that hooking up their HD televisions to an analog cable feed will produce an unwatchably distorted picture. More importantly, the Internet Advertisements do not claim that the "OTHER TV" is an HD television set, or that the corresponding images represent what happens when an HD television is connected to basic cable. The Internet Advertisements simply purport to compare the picture quality of DIRECTV's programming to that of basic cable programming, and as discussed above, the comparison is so obviously hyperbolic that "no reasonable buyer would be justified in relying" on it in navigating the marketplace. Pizza Hut, Inc., 227 F.3d at 497.

[38] For these reasons, we conclude that the District Court exceeded its permissible discretion in preliminarily enjoining DIRECTV from disseminating the Internet Advertisements. . . . .

Literally True But Misleading Advertising

The following opinion, which emerged out of litigation between two companies that both claim to make pizza, is lengthy and detailed. It is included here because it covers a variety of important issues in false advertising law, such as what qualifies as a representation of fact (rather than as opinion or puffery) and what kind of evidence is necessary to prove that a misleading statement is material to consumers' decision to purchase. E. GRADY JOLLY, Circuit Judge:

[1] This appeal presents a false advertising claim under section 43(a) of the Lanham Act, resulting in a jury verdict for the plaintiff, Pizza Hut. At the center of this appeal is Papa John's four word slogan "Better Ingredients. Better Pizza." [2] The appellant, Papa John's International Inc. ("Papa John's"), argues that the slogan "cannot and does not violate the Lanham Act" because it is "not a misrepresentation of fact." The appellee, Pizza Hut, Inc., argues that the slogan, when viewed in the context of Papa John's overall advertising campaign, conveys a false statement of fact actionable under section 43(a) of the Lanham Act. The district court, after evaluating the jury's responses to a series of special interrogatories and denying Papa John's motion for judgment as a matter of law, entered judgment for Pizza Hut stating: When the "Better Ingredients. Better Pizza." slogan is considered in light of the entirety of Papa John's post-May 1997 advertising which violated provisions of the Lanham Act and in the context in which it was juxtaposed with the false and misleading statements contained in Papa John's print and broadcast media decided by the jury, while the equitable injunction claim and damages award were within the province of the court.

[12] The trial began on October 26, 1999, and continued for over three weeks. At the close of Pizza Hut's case, and at the close of all evidence, Papa John's moved for a judgment as a matter of law. The motions were denied each time. The district court, without objection, submitted the liability issue to the jury through special interrogatories. 5 The special issues submitted to the jury related to (1) the slogan and (2) over Papa John's objection, certain classes of groups of advertisements referred to as "sauce claims," "dough claims," "taste test claims," and "ingredients claims."

[13] On November 17, 1999, the jury returned its responses to the special issues finding that Papa John's slogan, and its "sauce claims" and "dough claims" were false or misleading and deceptive or likely to deceive consumers. 6 The jury also determined that Papa John's "taste test" ads were not deceptive or likely to deceive consumers, and that Papa John's "ingredients claims" were not false or misleading. 7 As to Papa John's counterclaims against 5 Although Papa John's did not object to the submission of the issue of Lanham Act liability to the jury via special interrogatories, it did object to the district court's refusal to submit special interrogatories on the essential elements of materiality and injury. Specifically, Papa John's submitted the following proposed jury interrogatories: (1) "Do you find that any false or misleading description or representation of fact in Papa John's Slogan 'Better Ingredients. Better Pizza.' are material in that they are likely to influence the purchasing decisions of prospective purchasers of pizza? " (emphasis added); and (2) "Do you find that any facts or misleading descriptions or representations of fact in Papa John's Slogan 'Better Ingredients. Better Pizza.' are likely to cause injury or damage to Pizza Hut in terms of declining sales or loss of good will?" The district court, without issuing written reasons, denied Papa John's request for special jury interrogatories on these two elements of Pizza Hut's prima facie case.

6 Specifically, the jury answered "Yes" to each of the following interrogatories: (1) Did you find that Papa John's "Better Ingredients. Better Pizza" slogan is false or misleading, and was a false or misleading description or representation of fact which deceived or was likely to deceive a substantial number of the consumers to whom the slogan was directed; (2) Did you find that Papa John's "sauce" claims are false or misleading, and was a false or misleading description or representation of fact which deceived or was likely to deceive a substantial number of the consumers to whom the slogan was directed; and (3) Did you find that Papa John's "dough" claims are false or misleading, and was a false or misleading description or representation of fact which deceived or was likely to deceive a substantial number of the consumers to whom the slogan was directed? Although the jury was specifically asked whether the advertisements were likely to deceive consumers, the interrogatories failed to ask whether the deception created by these advertisements was material to the consumers to which the ads were directed-that is, whether consumers actually relied on the misrepresentations in making purchasing decisions.

7 Specifically, the jury answered "No" to the following interrogatories: (1) Did you find that Papa John's "taste test" commercials are a false or misleading description or representation of fact which deceived or was likely to deceive a substantial number of the consumers to whom the slogan was directed; and (2) Did you find that Papa John's "ingredients" claims are false or misleading? The "ingredients" ads found not to be false or misleading did not include any of the "sauce" or "dough" ads.

Pizza Hut, the jury found that two of the three Pizza Hut television ads at issue were false or misleading and deceptive or likely to deceive consumers. 8[14] On January 3, 2000, the trial court, based upon the jury's verdict and the evidence presented by the parties in support of injunctive relief and on the issue of damages, entered a Final Judgment and issued a Memorandum Opinion and Order. The court concluded that the "Better Ingredients. Better Pizza." slogan was "consistent with the legal definition of nonactionable puffery" from its introduction in 1995 until May 1997. However, the slogan "became tainted . . . in light of the entirety of Papa John's post-May 1997 advertising." Based on this conclusion, the magistrate judge permanently enjoined Papa John's from "using any slogan in the future that constitutes a recognizable variation of the phrase 'Better Ingredients. Better Pizza.' or which uses the adjective 'Better' to modify the terms 'ingredients' and/or 'pizza'." Additionally, the court enjoined Papa John's from identifying Frank Carney as a cofounder of Pizza Hut, "unless such advertising includes a voice-over, printed statement or a superimposed message which states that Frank Carney has not been affiliated with Pizza Hut since 1980," and enjoined the dissemination of any advertising that was produced or disseminated prior to the date of this judgment and that explicitly or implicitly states or suggested that "Papa John's component is superior to the same component of Pizza Hut's pizzas." Finally, the court enjoined Papa John's from "explicitly or implicitly claim[ing] that a component of Papa John's pizza is superior to the same component of Pizza Hut's unless the superiority claim is supported by either (1) scientifically demonstrated attributes of superiority or (2) taste test surveys." Additionally, the injunction required that if the claim is supported by taste test surveys, the advertising shall include a printed statement, voice-over or "super," whichever is appropriate, stating the localities where the tests were conducted, the inclusive dates on which the surveys were performed, and the specific pizza products that were tested. The court also awarded Pizza Hut $467,619.75 in damages for having to run corrective ads.

[15] On January 20, 2000, Papa John's filed a notice of appeal with our court. On January 26, we granted Papa John's motion to stay the district court's injunction pending appeal.

[16] We review the district court's denial of a motion for judgment as a matter of law de novo applying the same standards as the district court. . . . Thus, for purposes of this appeal, we will review the evidence, in the most favorable light to Pizza Hut, to determine if, as a matter of law, it is sufficient to support a claim of false advertising under section 43(a) of the Lanham Act.

See New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302, 308 (9th Cir. 1992).

The district court declined to distinguish between HBDC, which is a registered trademark, and HBDGS, which is not. We assume for purposes of this decision that HBDC and HBDGS are both protected marks, even if HBDGS is not registered. See Matal v. Tam, ---U.S. ----, 137 S.Ct. 1744, 1752 (2017) (explaining that "an unregistered trademark can be enforced against would-be infringers" under 15 U.S.C. § 1125(a) ); Brown v. Elec. Arts, Inc., 724 F.3d 1235, 1241 (9th Cir. 2013) (noting that the Rogers test applies "in [ § 1125(a)] cases involving expressive works"). Gordon claimed infringement under § 1125(a) in his complaint, and defendants challenged Gordon's ownership of HBDGS as a protected mark in their motion for summary judgment. The district court is free to revisit this issue on remand.

We have been careful not to "conflate[ ] the ['explicitly misleading'] prong of the Rogers test with the general Sleekcraft likelihood-of-confusion test," Twentieth Century Fox,

F.3d at 1199, but it bears noting that Twentieth Century Fox made this distinction to ensure that the likelihood-ofconfusion test did not dilute Rogers's explicitly misleading prong. Other circuits have noted that Rogers's second prong is essentially a more exacting version of the likelihood-of-confusion test. See Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 665 (5th Cir. 2000); Twin Peaks Prods., Inc. v. Publ'ns Int'l, Ltd., 996 F.2d 1366, 1379 (2d Cir. 1993). A plaintiff who satisfies the "explicitly misleading" portion of Rogers should therefore have little difficulty showing a likelihood of confusion.8 The Rogers test has been adopted in other circuits as well. See Univ. of Ala.Bd. of Trs. v. New Life Art, Inc., 683 F.3d 1266, 1278 (11th Cir. 2012); Parks v. LaFace Records, 329 F.3d 437, 452 (6th Cir. 2003); Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 665 (5th Cir. 2000).

We explained in MCA Records that trademarks sometimes "transcend their identifying purpose" and "become an integral part of our vocabulary." 296 F.3d at 900. Examples include "Rolls Royce" as proof of quality or "Band-Aid" for any quick fix.

Cf. Law & Order: Special Victims Unit (NBC Universal).

We note that the district court has not yet addressed defendants' abandonment defense. We express no opinion on that issue and leave it for the district court to address in the first instance.

To be clear, when we refer to "the Rogers threshold test," we mean any threshold First Amendment filter.

That is not to say (far from it) that every infringement case involving a source-identifying use requires full-scale litigation. Some of those uses will not present any plausible likelihood of confusion-because of dissimilarity in the marks or various contextual considerations. And if, in a given case, a plaintiff fails to plausibly allege a likelihood of confusion, the district court should dismiss the complaint under Federal Rule of Civil Procedure 12(b)(6). See 6 McCarthy §32:121.75 (providing examples).

See, e.g., VIP Products, LLC v. Tequila Cuervo La Rojena, S. A. de C. V., No. 20-cv-0319 (D Ariz., Feb. 11, 2020), ECF Doc. 1, p. 3 ("Jose Perro"); VIP Products, LLC v. Heineken USA, Inc., No. 13-cv-0319 (D Ariz., Feb. 13, 2013), ECF Doc. 1, pp. 3-4 ("HeinieSniff 'n"); VIP Products, LLC v. Pabst Brewing Co., No. 14-cv-2084 (D Ariz., Sept. 19, 2014), ECF Doc. 1, pp. 3-4 ("Blue Cats Trippin") (cf. Pabst Blue Ribbon); VIP Products, LLC v. Champagne Louis Roederer, S. A., No. 13-cv-2365 (D Ariz., Nov. 18, 2013), ECF Doc. 1, pp. 3-4 ("Crispaw") (cf. Cristal).

Even if Hyundai were not distinguishable, this Court would decline to follow it. In the Court's view, the Hyundai Court blurred the distinction between association and dilution. As discussed in more detail below, association is a necessary, but not sufficient, condition for a finding of dilution by blurring. See, e.g., Moseley v. V Secret Catalogue, Inc.,

U.S.418, 433 (2003) ("[T]he mere fact that consumers mentally associate the junior user's mark with a famous mark is not sufficient to establish actionable dilution. . . . [S]uch mental association will not necessarily reduce the capacity of the famous mark to identify the goods of its owner.").

We do not decide whether such allegations, if supported by evidence, would permit any inference of ITC's intent to resume use of the Bukhara mark for restaurants in the foreseeable future. We note only that the conclusion is by no means obvious.

Indeed, there is no reason to think plaintiffs could make such a showing with respect to the New York hospitality market, which experienced considerable growth during the period 1997-2000.

Beal did not coin the word "freecycle" and TFN is not the first organization to promote freecycling.

In general, online discussion groups such as Yahoo! Groups and Google Groups allow individuals with a shared common interest to communicate by means of posting messages to the particular group's

online forum. Such groups may be subject to terms and conditions of the service provider. In addition, discussion groups often have volunteer group moderators who monitor the discussions, and each group may adopt and enforce rules and regulations (e.g., discussion etiquette) separate from whatever terms the online service provider imposes.4 Mark Messinger is the moderator for the Olympia, Washington, freecycle group. He helped Abraham fashion a unique freecycle logo for Sunnyvale. Albert Kaufman apparently introduced Abraham to freecycling.

'The process used in renewing this plug has been developed through 10 years continuous experience. This Spark Plug has been tested for firing under compression before packing.'

Before 1971, Hamilton's predecessor, the Hamilton Watch Company, manufactured watches in America. Hamilton is now owned by Swatch Group, Ltd., a Swiss company.

This factual background is derived from the District Court's findings of fact, which are not in dispute. See Time Warner Cable, Inc., 475 F.Supp.2d at 302-04.

The "p" and "i" designations stand for "progressive" and "interlaced." In the progressive format, the full picture updates every sixtieth of a second, while in the interlaced format, half of the picture updates every sixtieth of a second. The higher the "p" or "i" number, the greater the resolution and the better the picture will appear to the viewer.

Under either theory, the plaintiff must also demonstrate that the false or misleading representation involved an inherent or material quality of the product. See S.C. Johnson & Son, Inc., 241 F.3d at 238; Nat'l Basketball Ass'n v. Motorola, Inc., 105 F.3d 841, 855 (2d Cir. 1997). TWC has met this requirement, as it is undisputed that picture quality is an inherent and material characteristic of multichannel video service.

Several district courts in this Circuit have already embraced the doctrine. See, e.g., Johnson & Johnson-Merck Consumer Pharm. Co. v. Procter & Gamble Co., 285 F.Supp.2d 389, 391 (S.D.N.Y. 2003), aff'd, 90 Fed.Appx. 8 (2d Cir. 2003); Tambrands, Inc. v. Warner-Lambert Co., 673 F.Supp. 1190, 1193-

Pizza Hut has not sought to appeal the jury's verdict regarding its advertising.

The two most significant, both referenced in Gordon, are E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008), and Brown v. ______________________________________________________________________________ Jack Daniel's Props., Inc. v. VIP Prods. LLC 599 U.S. 140 (2023)

, 15 U.S.C. § 1125(c)(4)(B), which has been retained in the new § 43(c) as § 43(c)(3)(C), 15 U.S.C. § 1125(c)(3)(C). After reviewing the legislative history of the old Federal Trademark Dilution Act, Judge Kozinksi reasoned: '" Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180, 1184 (9th Cir. 2001) (quoting Bolger v. Youngs Drug Prod's Corp., 463 U.S. 60, 66, 103 S.Ct. 2875, 77 L.Ed.2d 469 (1983)). If speech is not "purely commercial"-that is, if it does more than propose a commercial transaction-then it is entitled to full First Amendment protection. Id. at 1185-86 (internal quotation marks omitted).

statements had on consumers. See Castrol, Inc. v. Quaker State Corp., 977 F.2d 57, 62 (2d Cir. 1992); Avila v. Rubin, 84 F.3d 222, 227 (7th Cir. 1996). In such a circumstance, the court will assume that the statements actually misled consumers. See American Council, 185 F.3d at 614;Johnson & Johnson, Inc. v. GAC Int'l, Inc., 862 F.2d 975, 977 (2d Cir. 1988); U-Haul Inter'l, Inc. v. Jartran, Inc., 793 F.2d 1034, 1040(9th Cir. 1986). On the other hand, if the statements at issue are either ambiguous or true but misleading, the plaintiff must present evidence of actual deception. See American Council, 185 F.3d at 616; Smithkline, 960 F.2d at 297 (stating that when a "plaintiff's theory of recovery is premised upon a claim of implied falsehood, a plaintiff must demonstrate, by extrinsic evidence, that the challenged commercials tend to mislead or confuse"); Avila, 84 F.3d at 227. The plaintiff may not rely on the judge or the jury to determine, "based solely upon his or her own intuitive reaction, whether the advertisement is deceptive." Smithkline, 960 F.2d at 297. Instead, proof of actual deception requires proof that "consumers were actually deceived by the defendant's ambiguous or truebut-misleading statements." American Council, 185 F.3d at 616 . . . .

[23] The type of evidence needed to prove materiality * also varies depending on what type of recovery the plaintiff seeks. Plaintiffs looking to recover monetary damages for false or misleading advertising that is not literally false must prove actual deception . . . . Plaintiffs attempting to prove actual deception have to produce evidence of actual consumer reaction to the challenged advertising or surveys showing that a substantial number of consumers were actually misled by the advertisements. See, e.g., PPX Enters., Inc. v. Audiofidelity Enters., Inc., 818 F.2d 266, 271 (2d Cir. 1987) ("Actual consumer confusion often is demonstrated through the use of direct evidence, e.g., testimony from members of the buying public, as well as through circumstantial evidence, e.g., consumer surveys or consumer reaction tests.").

[24] Plaintiffs seeking injunctive relief must prove that defendant's representations "have a tendency to deceive consumers." Balance Dynamics, 204 F.3d 683 at 690 . . . . Although this standard requires less proof than actual deception, plaintiffs must still produce evidence that the advertisement tends to deceive consumers . . . . To prove a tendency to deceive, plaintiffs need to show that at least some consumers were confused by the advertisements. See,e.g.,American Council,185 F.3d at 618 ("Although plaintiff need not present consumer surveys or testimony demonstrating actual deception, it must present evidence of some sort demonstrating that consumers were misled.") IV [25] We turn now to consider the case before us. Reduced to its essence, the question is whether the evidence, viewed in the most favorable light to Pizza Hut, established that Papa John's slogan "Better Ingredients. Better Pizza." is misleading and violative of section 43(a) of the Lanham Act. In making this determination, we will first consider the slogan "Better Ingredients. Better Pizza." standing alone to determine if it is a statement of fact capable of deceiving a substantial segment of the consuming public to which it was directed. Second, we will determine whether the evidence supports the district court's conclusion that after May 1997, the slogan was tainted, and therefore actionable, as a result of its use in a series of ads comparing specific ingredients used by Papa John's with the ingredients used by its "competitors."

A [26] The jury concluded that the slogan itself was a "false or misleading" statement of fact, and the district court enjoined its further use. Papa John's argues, however, that this statement "quite simply is not a statement of fact, [but] rather, a statement of belief or opinion, and an argumentative one at that." Papa John's asserts that because "a statement of fact is either true or false, it is susceptible to being proved or disproved. A statement of opinion or belief, on the other hand, conveys the speaker's state of mind, and even though it may be used to attempt to persuade the listener, it is a subjective communication that may be accepted or rejected, but not proven true or false." Papa John's contends that its slogan "Better Ingredients. Better Pizza." falls into the latter category, and because the phrases "better ingredients" and "better pizza" are not subject to quantifiable measures, the slogan is non-actionable puffery.

[27] We will therefore consider whether the slogan standing alone constitutes a statement of fact under the Lanham Act. Bisecting the slogan "Better Ingredients. Better Pizza.," it is clear that the assertion by Papa John's that it makes a "Better Pizza." is a general statement of opinion regarding the superiority of its product over all others. This simple statement, "Better Pizza.," epitomizes the exaggerated advertising, blustering, and boasting by a manufacturer upon which no consumer would reasonably rely. See, e.g., In re Boston Beer Co., 198 F.3d 1370, 1372(Fed. Cir. 1999) (stating that the phrase "The Best Beer in America" was "trade puffery" and that such a general claim of superiority "should be freely available to all competitors in any given field to refer to their products or services"); Atari Corp. v. 3D0 Co., 1994WL 723601, *2 (N.D.Cal. 1994) (stating that a manufacturer's slogan that its product was "the most advanced home gaming system in the universe" was non-actionable puffery); Nikkal Indus., Ltd. v. Salton, Inc., 735 F.Supp. 1227, 1234n. 3 (S.D.N.Y. 1990) (stating that a manufacturers claim that its ice cream maker was "better" than competition ice cream makers is non-actionable puffery). Consequently, it appears indisputable that Papa John's assertion "Better Pizza." is non-actionable puffery. 12[28] Moving next to consider separately the phrase "Better Ingredients.," the same conclusion holds true. Like "Better Pizza.," it is typical puffery. The word "better," when used in this context is unquantifiable. What makes one food ingredient "better" than another comparable ingredient, without further description, is wholly a matter of individual taste or preference not subject to scientific quantification. Indeed, it is difficult to think of any product, or any component of any product, to which the term "better," without more, is quantifiable. As our court stated in Presidio:

The law recognizes that a vendor is allowed some latitude in claiming merits of his wares by way of an opinion rather than an absolute guarantee, so long as he hews to the line of rectitude in matters of fact. Opinions are not only the lifestyle of democracy, they are the brag in advertising that has made for the wide dissemination of products that otherwise would never have reached the households of our citizens. If we were to accept the thesis set forth by the appellees, [that all statements by advertisers were statements of fact actionable under the Lanham Act,] the advertising industry would have to be liquidated in short order.

Presidio, 784 F.2d at 685. Thus, it is equally clear that Papa John's assertion that it uses "Better Ingredients." is one of opinion not actionable under the Lanham Act.

[29] Finally, turning to the combination of the two non-actionable phrases as the slogan "Better Ingredients. Better Pizza.," we fail to see how the mere joining of these two statements of opinion could create an actionable statement of fact. Each half of the slogan amounts to little more than an exaggerated opinion of superiority that no consumer would be justified in relying upon. It has not been explained convincingly to us how the combination of the two phrases, without more, changes the essential nature of each phrase so as to make it actionable. We assume that "Better Ingredients." modifies "Better Pizza." and consequently gives some expanded meaning to the phrase "Better Pizza," i.e., our pizza is better because our ingredients are better. Nevertheless, the phrase fails to give "Better Pizza." any more quantifiable meaning. Stated differently, the adjective that continues to describe "pizza" is "better," a term that remains unquantifiable, especially when applied to the sense of taste. Consequently, the slogan as a whole is a statement of non-actionable opinion. Thus, there is no legally sufficient basis to support the jury's finding that the slogan standing alone is a "false or misleading" statement of fact.

[30] We next will consider whether the use of the slogan "Better Ingredients. Better Pizza." in connection with a series of comparative ads found by the jury to be misleadingspecifically, ads comparing Papa John's sauce and dough with the sauce and dough of its competitors-"tainted" the statement of opinion and made it misleading under section 43(a) of the Lanham Act. Before reaching the ultimate question of whether the slogan is actionable under the Lanham Act, we will first examine the sufficiency of the evidence supporting the jury's conclusion that the comparison ads were misleading.

(1) [31] After the jury returned its verdict, Papa John's filed a post-verdict motion under Federal Rule of Civil Procedure 50 for a judgment as a matter of law. In denying Papa John's motion, the district court, while apparently recognizing that the slogan "Better Ingredients.

Better Pizza." standing alone is non-actionable puffery under the Lanham Act, concluded that after May 1997, the slogan was transformed as a result of its use in connection with a series of ads that the jury found misleading. These ads had compared specific ingredients used by Papa John's with the ingredients used by its competitors. 13 In essence, the district court held that the comparison ads in which the slogan appeared as the tag line gave objective, quantifiable, and fact-specific meaning to the slogan. Consequently, the court concluded that the slogan was misleading and actionable under section 43(a) of the Lanham Act and enjoined its further use.

(2) [32] We are obligated to accept the findings of the jury unless the facts point so overwhelmingly in favor of one party that no reasonable person could arrive at a different conclusion. See Scottish Heritable Trust v. Peat Marwick Main & Co., 81 F.3d 606, 610 (5th Cir. 1996). In examining the record evidence, we must view it the way that is most favorable to upholding the verdict. See Hiltgen v. Sumrall, 47 F.3d 695, 700 (5th Cir. 1995). Viewed in this light, it is clear that there is sufficient evidence to support the jury's conclusion that the sauce and dough ads were misleading statements of fact actionable under the Lanham Act.

[33] Turning first to the sauce ads, the evidence establishes that despite the differences in the methods used to produce their competing sauces: (1) the primary ingredient in both Pizza Hut and Papa John's sauce is vine-ripened tomatoes; (2) at the point that the competing sauces are placed on the pizza, just prior to putting the pies into the oven for cooking, the consistency and water content of the sauces are essentially identical; and (3) as noted by the district court, at no time "prior to the close of the liability phase of trial was any credible evidence presented [by Papa John's] to demonstrate the existence of demonstrable differences" in the competing sauces. Consequently, the district court was correct in concluding that: "Without any scientific support or properly conducted taste preference test, by the written and/or oral negative connotations conveyed that pizza made from tomato paste concentrate is inferior to the 'fresh pack' method used by Papa John's, its sauce 13 In its memorandum opinion addressing Papa John's post-verdict Rule 50 motion, the court stated:

Although Papa John's started in May 1995 with a slogan which was essentially ambiguous and self-laudatory, consistent with the legal definition of non-actionable puffery, Papa John's deliberately and intentionally exploited its slogan as a centerpiece of its subsequent advertising campaign after May 1997 which falsely portrayed Papa Johns's tomato sauce and pizza dough as being superior to the sauce and dough components used in Pizza Hut's pizza products. When the "Better Ingredients. Better Pizza." slogan is considered in light of the entirety of Papa John's post-May 1997 advertising which violated the provisions of the Lanham Act and in the context in which it was juxtaposed with the false and misleading statements contained in Papa John's print and broadcast media advertising, the slogan itself became tainted to the extent that its continued use should be enjoined.

advertisements conveyed an impression which is misleading . . . ." Turning our focus to the dough ads, while the evidence clearly established that Papa John's and Pizza Hut employ different methods in making their pizza dough, again, the evidence established that there is no quantifiable difference between pizza dough produced through the "cold or slowfermentation method" (used by Papa John's), or the "frozen dough method" (used by Pizza Hut). 14 Further, although there is some evidence indicating that the texture of the dough used by Papa John's and Pizza Hut is slightly different, this difference is not related to the manufacturing process used to produce the dough. Instead, it is due to a difference in the wheat used to make the dough. Finally, with respect to the differences in the pizza dough resulting from the use of filtered water as opposed to tap water, the evidence was sufficient for the jury to conclude that there is no quantifiable difference between dough produced with tap water, as opposed to dough produced with filtered water.

[34] We should note again that Pizza Hut does not contest the truthfulness of the underlying factual assertions made by Papa John's in the course of the sauce and dough ads. Pizza Hut concedes that it uses "remanufactured" tomato sauce to make its pizza sauce, while Papa John's uses "fresh-pack." Further, in regard to the dough, Pizza Hut concedes the truth of the assertion that it uses tap water in making its pizza dough, which is often frozen, while Papa John's uses filtered water to make its dough, which is fresh-never frozen. Consequently, because Pizza Hut does not contest the factual basis of Papa John's factual assertions, such assertions cannot be found to be factually false, but only impliedly false or misleading.

[35] Thus, we conclude by saying that although the ads were true about the ingredients Papa John's used, it is clear that there was sufficient evidence in the record to support the jury's conclusion that Papa John's sauce and dough ads were misleading-but not false-in their suggestion that Papa John's ingredients were superior.

[36] Thus, having concluded that the record supports a finding that the sauce and dough ads are misleading statements of fact, we must now determine whether the district court was correct in concluding that the use of the slogan "Better Ingredients. Better Pizza." in conjunction with these misleading ads gave quantifiable meaning to the slogan making a general statement of opinion misleading within the meaning of the Lanham Act.

[37] In support of the district court's conclusion that the slogan was transformed, Pizza Hut argues that "in construing any advertising statement, the statement must be considered in the overall context in which it appears." Building on the foundation of this basic legal principle, see Avis, 782 F.2d at 385, Pizza Hut argues that "[t]he context in which Papa John's slogan must be viewed is the 2 1/2 year campaign during which its advertising served as 'chapters' to demonstrate the truth of the 'Better Ingredients. Better Pizza.' book." Pizza Hut argues, that because Papa John's gave consumers specific facts supporting its assertion that its sauce and dough are "better"-specific facts that the evidence, when viewed in the light most favorable to the verdict, are irrelevant in making a better pizza-Papa John's statement of opinion that it made a "Better Pizza" became misleading. In essence, Pizza Hut argues, that by using the slogan "Better Ingredients. Better Pizza." in combination with the ads comparing Papa John's sauce and dough with the sauce and dough of its competitions, Papa John's gave quantifiable meaning to the word "Better" rendering it actionable under section 43(a) of the Lanham Act.

[38] We agree that the message communicated by the slogan "Better Ingredients. Better Pizza." is expanded and given additional meaning when it is used as the tag line in the misleading sauce and dough ads. The slogan, when used in combination with the comparison ads, gives consumers two fact-specific reasons why Papa John's ingredients are "better." Consequently, a reasonable consumer would understand the slogan, when considered in the context of the comparison ads, as conveying the following message: Papa John's uses "better ingredients," which produces a "better pizza" because Papa John's uses "fresh-pack" tomatoes, fresh dough, and filtered water. In short, Papa John's has given definition to the word "better." Thus, when the slogan is used in this context, it is no longer mere opinion, but rather takes on the characteristics of a statement of fact. When used in the context of the sauce and dough ads, the slogan is misleading for the same reasons we have earlier discussed in connection with the sauce and dough ads. 15Papa John's deliberately and intentionally exploited its slogan as a centerpiece of its subsequent advertising campaign after May 1997 which falsely portrayed Papa John's tomato sauce and pizza dough as being superior to the sauce and dough components used in Pizza Hut's products . . . . [Thus,] the slogan itself became tainted to the extent that its continued use should be enjoined.

Our review of the record convinces us that there is simply no evidence to support the district court's conclusion that the slogan was irreparably tainted as a result of its use in the misleading comparison sauce and dough ads. At issue in this case were some 249 print ads and 29 television commercials. After a thorough review of the record, we liberally construe eight print ads to be sauce ads, six print ads to be dough ads, and six print ads to be both sauce and dough ads. Further, we liberally construe nine television commercials to be sauce ads and two television commercials to be dough ads.

(4) [39] Concluding that when the slogan was used as the tag line in the sauce and dough ads it became misleading, we must now determine whether reasonable consumers would have a tendency to rely on this misleading statement of fact in making their purchasing decisions. We conclude that Pizza Hut has failed to adduce evidence establishing that the misleading statement of fact conveyed by the ads and the slogan was material to the consumers to which the slogan was directed. Consequently, because such evidence of materiality is necessary to establish liability under the Lanham Act, the district court erred in denying Papa John's motion for judgment as a matter of law.

[40] As previously discussed, none of the underlying facts supporting Papa John's claims of ingredient superiority made in connection with the slogan were literally false. Consequently, in order to satisfy its prima facie case, Pizza Hut was required to submit evidence establishing that the impliedly false or misleading statements were material to, that is, they had a tendency to influence the purchasing decisions of, the consumers to which they were directed. 16 See American Council, 185 F.3d at 614 (stating that "a plaintiff relying upon statements that are literally true yet misleading cannot obtain relief by arguing how consumers could react; it must show how consumers actually do react"); . . . see also 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 27:35 (4th ed. 1997)(stating that the "[p]laintiff must make some showing that the defendant's misrepresentation was 'material' in the sense that it would have some effect on consumers' purchasing decision"). 17 We conclude that the evidence proffered by Pizza Hut fails to make an adequate showing.

Consequently, out of a total of 278 print and television ads, the slogan appeared in only 31 ads that could be liberally construed to be misleading sauce or dough ads.

We find simply no evidence, survey or otherwise, to support the district court's conclusion that the advertisements that the jury found misleading-ads that constituted only a small fraction of Papa John's use of the slogan-somehow had become encoded in the minds of consumers such that the mention of the slogan reflectively brought to mind the misleading statements conveyed by the sauce and dough ads. Thus, based on the record before us, Pizza Hut has failed to offer sufficient evidence to support the district court's conclusion that the slogan had become forever "tainted" by its use as the tag line in the handful of misleading comparison ads.

Where, as here, a plaintiff's theory of recovery is premised upon a claim of implied falsehood, a plaintiff must demonstrate, by extrinsic evidence, that the challenged [41] In its appellate brief and during the course of oral argument, Pizza Hut directs our attention to three items of evidence in the record that it asserts establishes materiality to consumers. First, Pizza Hut points to the results of a survey conducted by an "independent expert" (Dr. Dupont) regarding the use of the slogan "Better Ingredients. Better Pizza." as written on Papa John's pizza box (the box survey). The results of the box survey, however, were excluded by the district court. 18 Consequently, these survey results provide no basis for the jury's finding.

[42] Second, Pizza Hut points to two additional surveys conducted by Dr. Dupont that attempted to measure consumer perception of Papa John's "taste test" ads. This survey evidence, however, fails to address Pizza Hut's claim of materiality with respect to the slogan. Moreover, the jury rejected Pizza Hut's claims of deception with regard to Papa John's "taste test" ads-the very ads at issue in these surveys.

[43] Finally, Pizza Hut attempts to rely on Papa John's own tracking studies and on the alleged subjective intent of Papa John's executives "to create a perception that Papa John's in fact uses better ingredients" to demonstrate materiality. Although Papa John's 1998 Awareness, Usage & Attitude Tracking Study showed that 48% of the respondents believe that "Papa John's has better ingredients than other national pizza chains," the study failed to indicate whether the conclusions resulted from the advertisements at issue, or from personal eating experiences, or from a combination of both. Consequently, the results of this study are not reliable or probative to test whether the slogan was material. Further, Pizza Hut provides no precedent, and we are aware of none, that stands for the proposition that the subjective intent of the defendant's corporate executives to convey a particular message is evidence of the fact that consumers in fact relied on the message to make their purchases. Thus, this evidence does not address the ultimate issue of materiality.

[44] In short, Pizza Hut has failed to offer probative evidence on whether the misleading facts conveyed by Papa John's through its slogan were material to consumers: that is to say, there is no evidence demonstrating that the slogan had the tendency to deceive consumers so as to affect their purchasing decisions. See American Council, 185 F.3d at 614;Blue Dane, 178 F.3d at 1042-43;Sandoz Pharm. Corp. v. Richardson-Vicks, Inc., 902 F.2d 222, 228-29 (3d commercials tend to mislead or confuse consumers. It is not for the judge to determine, based solely upon his or her own intuitive reaction whether the advertisement is deceptive. Rather, as we have reiterated in the past, "the question in such cases is-what does the person to whom the advertisement is addressed find to be the message?" That is, what does the public perceive the message to be.

The answer to this question is pivotal because, where the advertisement is literally true, it is often the only measure by which a court can determine whether a commercial's net communicative effect is misleading. Thus, the success of a plaintiff's implied falsity claim usually turns on the persuasiveness of a consumer survey.

Id. at 287-98. Cir. 1990). Thus, the district court erred in denying Papa John's motion for judgment as a matter of law.

[45] Additionally, we note that the district court erred in requiring Papa John's to modify the Carney ads and the taste test ads. The Carney ads were removed from the jury's consideration by Pizza Hut, and the jury expressly concluded that the taste test ads were not actionable under section 43(a) of the Lanham Act. Thus, the district court, lacking the necessary factual predicate, abused its discretion in ordering Papa John's to modify these ads.

V [46] In sum, we hold that the slogan "Better Ingredients. Better Pizza." standing alone is not an objectifiable statement of fact upon which consumers would be justified in relying. Thus, it does not constitute a false or misleading statement of fact actionable under section 43(a) of the Lanham Act.

[47] Additionally, while the slogan, when appearing in the context of some of the post-May 1997 comparative advertising-specifically, the sauce and dough campaigns-was given objectifiable meaning and thus became misleading and actionable, Pizza Hut has failed to adduce sufficient evidence establishing that the misleading facts conveyed by the slogan were material to the consumers to which it was directed. Thus, Pizza Hut failed to produce evidence of a Lanham Act violation, and the district court erred in denying Papa John's motion for judgment as a matter of law.

[48] Therefore, the judgment of the district court denying Papa John's motion for judgment as a matter of law is REVERSED; the final judgment of the district court is VACATED; and the case is REMANDED for entry of judgment for Papa John's. REVERSED, VACATED, and REMANDED with instructions.

1. Consumer deception as distinct from materiality. As stated in the introductory paragraphs of Part IV.A, among the five elements that a plaintiff must show to prevail on a false advertising claim are: (2) the advertising statement "either deceived or had the capacity to deceive a substantial segment of potential consumers" and (3) "[t]he deception is material, in that it is likely to influence the consumer's purchasing decision." Pizza Hut, Inc. v. Papa John's Int'l, 227 F.3d 489, 495 (5th Cir. 2000). In its discussion of materiality, and specifically in paragraphs 22, 23, and 44 of the opinion as excerpted, the Pizza Hut court merges these two elements together. See Johnson & Johnson Vision Care, Inc. v. 1-800 Contacts, Inc., 299 F.3d 1242, 1250(11th Cir. 2002) ("[I]t appears that the Fifth Circuit blurred the boundary between the two elements in its recent Pizza Hut decision."). It is worth keeping in mind that courts typically treat these two elements separately. As to the consumer deception element, literally false advertising (including advertising that is false by necessary implication) typically triggers a presumption of consumer deception, while true but misleading advertising typically requires extrinsic evidence (often in the form of survey evidence) to show that consumers are deceived. See DAVID H. BERNSTEIN & BRUCE P. KELLER, THE LAW OF ADVERTISING, MARKETING AND PROMOTIONS § 2.07 (2019). As to the materiality element, if an advertising statement is literally false, this typically triggers a presumption of materiality, while true but misleading advertising requires evidence that the statement is material to consumers' decision to purchase. See MCCARTHY § 27:35. Importantly, however, in certain circuits, even literally false advertising will not trigger a presumption of materiality, which must instead be independently shown in all cases. See, e.g., Johnson & Johnson Vision Care, Inc. v. 1-800 Contacts, Inc., 299 F.3d 1242, 1250-51 (11th Cir. 2002) ("To the extent that the Fifth Circuit {Pizza Hut} decision marks a circuit split, we stand with the First and Second Circuits, concluding that the plaintiff must establish materiality even when a defendant's advertisement has been found literally false.").

When the defendant represents that "tests prove," "studies show," or "surveys show" some asserted fact, special doctrinal rules apply under Lanham Act § 43(a)(1)(B), 15 U.S.C.

§ 1125(a)(1)(B). David Bernstein and Bruce Keller explain:

Under the Lanham Act, the plaintiff always has the burden of proving the defendant's claim false. If an advertisement asserts a fact, then it is not enough for a Lanham Act plaintiff to show that the claim was unsubstantiated. When, however, the defendant makes what is known as an "establishment claim," the plaintiff's burden to prove the claim false is reduced. An establishment claim conveys an express or implied message that "tests prove" a particular fact, or that "studies show" a particular claim, or any similar message indicating to the consumer that scientific or experimental evidence supports an advertising claim.

In order to prove that an establishment claim is literally false, the plaintiff need only prove that the tests cited by the advertiser do not establish the proposition for which they are cited . . . . Generally, a plaintiff may prove that the cited tests do not support the proposition for which they are cited in one of two ways. First, the plaintiff may show that the tests, even if valid, do not establish the claims actually made by an advertisement. Second, an alternative method of proof is to show that the advertiser's cited tests are invalid and objectively unreliable.

DAVID H. BERNSTEIN & BRUCE P. KELLER, THE LAW OF ADVERTISING, MARKETING AND PROMOTIONS § 2.07 (2019) (footnotes omitted).

Establishment claims may be express or implied. Even when an advertisement does not use the phrase "tests prove" or its equivalents, the advertisement may be held to convey the same meaning through non-verbal indicia, such as when it depicts graphs or diagrams or scientists at work in a laboratory setting. See, e.g., L & F Prod., a Div. of Sterling Winthrop, Inc. v. Procter & Gamble Co., 845 F. Supp. 984, 1000(S.D.N.Y. 1994), aff'd, 45 F.3d 709 (2d Cir. 1995) ("The commercials make no explicit reference to tests or studies. Nonetheless, a commercial may imply that tests or studies support a superiority claim. For example, a product comparison performed by actors dressed as scientists on a set appearing to be a laboratory may imply that tests or studies were conducted. Plaintiffs bear the burden of demonstrating that commercials convey such implied messages.").

The following case, Castrol Inc. v. Quaker State Corp., 977 F.2d 57 (2d Cir. 1992), remains one of the most important foundational cases setting forth establishment claim doctrine under Lanham Act § 43(a)(1)(B).

Castrol Inc. v. Quaker State Corp. 977 F.2d 57 (2d Cir. 1992) WALKER, Circuit Judge:

[1] A Quaker State television commercial asserts that "tests prove" its 10W-30 motor oil provides better protection against engine wear at start-up. In a thoughtful opinion reported at 1992 WL 47981 (S.D.N.Y. March 2, 1992), the United States District Court for the Southern District of New York (Charles S. Haight, Judge ) held that plaintiff-appellee Castrol, Inc. ("Castrol") had proven this advertised claim literally false pursuant to § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1988). The district court issued a March 20, 1992 Order preliminarily enjoining defendants-appellants Quaker State Corporation, Quaker State Oil Refining Corporation, and Grey Advertising Inc., ("Quaker State"), from airing the commercial. We agree that Castrol has shown a likelihood of success in proving the commercial literally false. We accordingly affirm.

[2] Judge Haight's March 2, 1992 opinion thoroughly recites the facts of this case. We describe only those facts essential to the disposition of this appeal.

The voiceover to Quaker State's 10W-30 motor oil commercial states:

Warning: Up to half of all engine wear can happen when you start your car.

At this critical time, tests prove Quaker State 10W-30 protects better than any other leading 10W-30 motor oil.

In an overwhelming majority of engine tests, Quaker State 10W-30 flowed faster to all vital parts. In all size engines tested, Quaker State protected faster, so it protected better.

Get the best protection against start up wear. Today's Quaker State! It's one tough motor oil.

[3] Visually, the commercial begins with a man entering a car and then shows a bottle of Quaker State 10W-30 motor oil. Large, block letters, superimposed over the bottle, "crawl" across the screen with the words: AT START UP QUAKER STATE 10W-30 PROTECTS BETTER THAN ANY OTHER LEADING 10W-30 MOTOR OIL.

Originally, this "crawl" used the words "tests prove" instead of "at start up," but shortly after the filing of the current lawsuit Quaker State revised the message. The commercial then shows an engine, superimposed over which are bottles of Quaker State and four competing motor oils (including Castrol GTX 10W-30) and a bar graph depicting the speed with which each oil flowed to components of a Chrysler engine. The Quaker State bar is higher than all four competitors indicating that it flowed faster. The commercial closes with the words: "ONE TOUGH MOTOR OIL."

[4] Polymethacrylate or "PMA," an additive intended to quicken oil flow to engine parts, is the source of Quaker State's superiority claim. The competitors listed in its commercial use olefin copolymer or "OCP," another additive. Two laboratory tests, the first run in 1987 and the second in 1991, have compared Quaker State's PMA-based oil with competing OCP-based oils. Rohm and Haas, the Pennsylvania corporation which manufactures PMA, conducted both tests.

[5] Rohm and Haas' 1987 tests measured two performance indicators: "oiling time," or the time it takes for oil to reach distant parts in a just-started engine, and engine wear, measured through the amount of metal debris observed in the oil after the engine had run. Rohm and Haas technicians filled engines, in all other respects similar, with either Quaker State's PMA-based 10W-30 oil, or with a generic OCP-based oil known as "Texstar." During numerous engine starts, Quaker State's oil demonstrated a substantially faster oiling time, reaching distant engine parts as much as 100 seconds earlier than the Texstar competitor. Contrary to expectations, however, this did not translate into reduced engine wear. A Rohm and Haas report stated that "[a]fter 64 starts . . . the Quaker State oil gave marginally better results, but there was no significant difference in wear metals accumulation between the two oils." [6] Rohm and Haas initially attributed the poor engine wear results to the presence of "residual oil" remaining from the prior engine starts. They theorized that this oil might be lubricating the engine in the period between ignition and arrival of the new oil, and so might be preventing the faster flowing Quaker State oil from demonstrating better protection that is statistically significant. To address this, they conducted additional engine starts with a warm-up between each run so as to burn off the residual oil. The Rohm and Haas report, however, concluded that "[w]ear metals analysis for this test cycle also failed to differentiate significantly between the two oils . . . ." Thus, while the 1987 Rohm and Haas tests demonstrated faster oil flow, they could not prove better protection against engine wear that is statistically significant. [7] The 1991 Rohm and Haas tests compared Quaker State's oiling time with that of four leading OCP-based competitors, including Castrol GTX 10W-30. Again, Quaker State's PMAbased oil flowed significantly faster to engine parts. Using a 1991 2.2 liter Chrysler engine with a sump temperature of minus 20 degrees Fahrenheit, for example, the Quaker State oiling time was 345 seconds, as compared to the competing oils' times of 430, 430, 505 and 510 seconds. In the 1991 tests, as opposed to the 1987 studies, Rohm and Haas made no attempt to measure whether this faster oiling time resulted in reduced engine wear. [8] Quaker State broadcast their commercial in November, 1991. On December 19, 1991, Castrol initiated the present action. Castrol asserted that no studies supported the commercial's claim that "tests prove" Quaker State's oil provides better protection, and that this claim of test-proven superiority constituted false advertising. It sought preliminary and permanent injunctive relief and damages pursuant to § 43(a) of the Lanham Act, 15 U.S.C.

§ 1125(a), New York General Business Law § § 349, 350, and common law unfair competition.

[9] At the hearing on the motion for a preliminary injunction, Quaker State relied on the Rohm and Haas tests. It argued that the Rohm and Haas oiling time findings support the advertised claim of better protection because oil which flows faster to engine parts necessarily protects them better. Dr. Elmer Klaus, Quaker State's sole expert witness, explained this "faster means better" theory as follows: Prior to start-up "the metal parts [of an engine] are not separated by a film of oil. The solid members are sitting on each other," a condition referred to as "boundary lubrication." Upon ignition, engine wear begins to occur. Soon, however, the movement of the parts generates a film of lubrication from the "residual oil" remaining from a prior running of the engine and engine wear ceases. But the heat of the running engine thins the residual oil which can no longer keep the parts sufficiently apart. The engine returns to a condition of boundary lubrication and wear again occurs until the arrival of the new oil. Dr. Klaus concluded that the faster the new oil flows to the engine parts, the better job it does of minimizing this second period of boundary lubrication. Faster oil flow, therefore, means better protection.

[10] Castrol's three experts focused on the role of residual oil. They testified that the small amount of residual oil left from a prior running of an engine provides more than adequate lubrication at the next start-up. Moreover, they asserted that this residual oil remains functional for a significant period of time so that both PMA-based and OCP-based 10W-30 motor oils reach the engine parts before this residual oil burns off. Thus, they maintained, there is no second boundary lubrication period and Quaker State's faster oiling time is irrelevant to engine wear. [11] Castrol's experts supported their residual oil theory with a Rohm and Haas videotape, produced in the course of its tests, which shows the residual oil present on the cam lobe interface of a Chrysler 2.2 liter engine. Dr. Hoult, who narrated the tape for the court, explained that "as the film goes on the lubricant there will never go away [,] which means it's lubricated throughout the starting process and that's the basic reason that the time for the replenishment oil to reach these parts is not related to wear [,] because the parts have already lubricated okay."

[12] The experts also cited the near absence of catastrophic engine failure since the imposition of mandatory "pumpability" standards, known as "J300" standards, in the early 1980's. Pumpability refers to the ease with which the pump can spread oil throughout the engine. As pumpability increases, oiling times decrease. Prior to the J300 standards, certain oils became unpumpable in cold weather. This, the experts testified, caused engines to suffer catastrophic failure within a "fraction" of a second after the residual oil had burned off. The J300 standards, however, required increased pumpability and have virtually eradicated reported cases of engine failure. The experts inferred that all 10W-30 oils, which are required to meet the J300 standards, must therefore be reaching the engine before the residual oil burns off. At best, there is only a "fraction" of a second between residual oil burn-off and catastrophic failure during which a faster flowing oil could conceivably reduce engine wear. [13] The district court assessed the parties' conflicting testimony in its March 2, 1991 opinion. Judge Haight credited the testimony of Castrol's three experts. In addition, he found their testimony corroborated by three key facts: (1) the failure of the 1987 Rohm and Haas tests to demonstrate reduced engine wear; (2) the Rohm and Haas technician's 1987 hypothesis that the presence of residual oil might be the reason for the failure to show better engine wear protection that is statistically significant; and (3) the virtual disappearance of catastrophic engine failure following the imposition of the J300 standards. Judge Haight accordingly "accept[ed]" the residual oil theory put forth by these experts. The court explained that an engine is like "a fort besieged by an encircling and encroaching enemy." The enemy is engine wear; the fort's supplies are residual oil; and a relief column on its way to reinforce the fort is the new oil. "If that relief column does not reach the bearing surfaces before the residual oil is burned away, the engine will suffer not only wear but catastrophic failure . . . . [T]he Quaker State commercial is false because the evidence shows that during the time differentials demonstrated by the [Rohm and Haas] oiling tests, residual oil holds the fort." [14] Judge Haight concluded that because residual oil "holds the fort," Rohm and Haas' faster oiling time findings did not necessarily prove better protection. He consequently held that "Castrol has established the likelihood of proving at trial the falsity of Quaker State's claim that tests prove its oil protects better against start-up engine wear." On March 20, 1992, 1992 WL 73569 the district court entered an Order granting preliminary injunctive relief. Quaker State appeals.

. . . . To succeed under § 43(a), a plaintiff must demonstrate that "an advertisement is either literally false or that the advertisement, though literally true, is likely to mislead and confuse consumers . . . . Where the advertising claim is shown to be literally false, the court may enjoin the use of the claim 'without reference to the advertisement's impact on the buying public. '" McNeil-P.C.C., Inc. v. Bristol-Myers Squibb Co., 938 F.2d 1544, 1549(2d Cir. 1991) (quoting Coca-Cola, 690 F.2d at 317) (citations omitted). Here, Castrol contends that the challenged advertisement is literally false. It bears the burden of proving this to a "likelihood of success" standard.

[15] As we have on two occasions explained, plaintiff bears a different burden in proving literally false the advertised claim that tests prove defendant's product superior, than it does in proving the falsity of a superiority claim which makes no mention of tests. In Procter & Gamble Co. v. Chesebrough-Pond's, Inc., 747 F.2d 114 (2d Cir. 1984), for example, Chesebrough alleged the literal falsity of Procter's advertised claim that "clinical tests" proved its product superior. Id. at 116. Procter, in return, challenged as literally false a Chesebrough commercial which, making no mention of tests, asserted that its lotion was equal in effectiveness to any leading brand. Id. We explained that in order to prove literally false Procter's claim of "test-proven superiority," Chesebrough bore the burden of "showing that the tests referred to by P & G were not sufficiently reliable to permit one to conclude with reasonable certainty that they established the proposition for which they were cited." Id. at 119. We held that Procter could prove false Chesebrough's advertisement, however, "only upon adducing evidence" that affirmatively showed Chesebrough's claim of parity to be false.

[16] We drew this same distinction in McNeil-P.C.C., Inc. v. Bristol-Myers Squibb Co., 938 F.2d 1544(2d Cir. 1991). Bristol-Myers initially advertised to trade professionals that "clinical studies" had shown its analgesic provided better relief than McNeil's. Id. at 1546. Bristol-Myers' later televised commercial made the product superiority claim but "did not refer to clinical studies." Id. We held that, with respect to the initial trade advertising, "McNeil could . . . meet its burden of proof by demonstrating that these studies did not establish that AF Excedrin provided superior pain relief." Id. at 1549. With respect to the televised commercial, however, McNeil bore the burden of generating "scientific proof that the challenged advertisement was false." Id.

[17] A plaintiff's burden in proving literal falsity thus varies depending on the nature of the challenged advertisement. Where the defendant's advertisement claims that its product is superior, plaintiff must affirmatively prove defendant's product equal or inferior. Where, as in the current case, defendant's ad explicitly or implicitly represents that tests or studies prove its product superior, plaintiff satisfies its burden by showing that the tests did not establish the proposition for which they were cited. McNeil, 938 F.2d at 1549. We have held that a plaintiff can meet this burden by demonstrating that the tests were not sufficiently reliable to permit a conclusion that the product is superior. Procter, 747 F.2d at 119 . . . . The Procter "sufficiently reliable" standard of course assumes that the tests in question, if reliable, would prove the proposition for which they are cited. If the plaintiff can show that the tests, even if reliable, do not establish the proposition asserted by the defendant, the plaintiff has obviously met its burden. In such a case, tests which may or may not be "sufficiently reliable," are simply irrelevant.

[18] The district court held that Castrol had met this latter burden, stating that "Castrol has established the likelihood of proving at trial the falsity of Quaker State's claim that tests prove its oil protects better . . . ." In this Lanham Act case, we will reverse the district court's order of preliminary injunctive relief "only upon a showing that it abused its discretion, which may occur when a court bases its decision on clearly erroneous findings of fact or on errors as to applicable law." Procter, 747 F.2d at 118. {The appellate court determined that the district court's findings of fact were not clearly erroneous and that the district court committed no errors of law.} . . . .

III. Is the district court's injunction overly broad?

[19] In a March 20, 1992 memorandum opinion accompanying its simultaneously-issued Order of Preliminary Injunction, the district court explained its intent "to enjoin preliminarily Quaker State from claiming 'that tests prove its oil protects better against start-up engine wear.'" The injunction, however, goes beyond this limited intent. Paragraph 2 of the injunction states that Defendants . . . are preliminarily enjoined from broadcasting, publishing or disseminating, in any manner or in any medium, any advertisement, commercial, or promotional matter . . . that claims, directly or by clear implication, that:

(a) Quaker State 10W-30 motor oil provides superior protection against engine wear at start-up;

(b) Quaker State 10W-30 motor oil provides better protection against engine wear at start-up than other leading 10W-30 motor oils, including Castrol GTX 10W-30; or (c) Castrol GTX 10W-30 motor oil provides inferior protection against engine wear at start-up. This paragraph enjoins Quaker State from distributing any advertisement claiming that its oil provides superior protection against engine wear at start-up, whether or not the ad claims test-proven superiority. As explained above, Castrol bears a different burden of proof with respect to this broader injunction than it does in seeking to enjoin only commercials which make the test-proven superiority claim.

[20] The district court expressly found that Castrol had met its burden with respect to any test-proven superiority advertisement. It stated that "Castrol has established the likelihood of proving at trial the falsity of Quaker State's claim that tests prove its oil protects better . . . ." Its injunction would be too broad, however, absent the additional finding that Castrol had met its burden with respect to superiority advertisements that omit the "tests prove" language. As we have noted above, Castrol meets this burden by adducing proof that Quaker State's oil is not, in fact, superior.

[21] Judge Haight made this additional finding. Castrol submitted the report from the 1987 Rohm and Haas tests as proof that Quaker State's oil did not protect better. This submission was proper under our holding that "[plaintiff can] rel[y] on and analy[se] data generated by [defendant] as scientific proof that the challenged advertisement was false." 938 F.2d at 1549. The district court, referring to this document, stated that "the record makes it crystal clear that to the extent tests were performed to demonstrate better wear protection (as opposed to faster flowing), the tests contradict, rather than support the claim. I refer to the 1987 Rohm and Haas tests . . . ." (emphasis added). The court went on to find that "Quaker State presents no convincing argument to counter the unequivocal conclusion of Roland [author of the 1987 report], a Rohm and Haas scientist, that the 1987 tests failed to demonstrate a superiority in protection against engine wear . . . ." These statements amount to a finding that Castrol has met the additional burden. The injunction is not overly broad. [22] Quaker State also asks us to limit the injunction to advertisements based on the 1987 and 1991 Rohm and Haas tests. It contends that it should not be barred from advertising a superiority claim if later tests should support it.

[23] Any time a court issues a preliminary injunction there is some chance that, after the issuance of the order but prior to a full adjudication on the merits, changes in the operative facts will undercut the court's rationale. We will not, however, require the district court to draft a technical and narrow injunction to address the possibility of additional tests which are, at this time, purely hypothetical. If tests supporting its claim do come to light, Quaker State may move to modify or dissolve the injunction. See Flavor Corp. of Am. v. Kemin Indus., Inc., 503 F.2d 729, 732 (8th Cir. 1974);11 C. Wright &A. Miller, Federal Practice andProcedure, § 2961 at 604 (1973). We will likely have jurisdiction to review the district court's disposition of such a motion, and can consider the issue at that point if necessary. Teamsters v. Western Penn. Motor Carriers Ass'n, 660 F.2d 76, 80 (3d Cir. 1981) (denial of motion to amend injunction is appealable).

[24] We affirm the district court's March 20, 1992 Order granting the preliminary injunction.

Firms often make comparative statements of fact (rather than mere subjective opinion or exaggerated puffery) about the merits of their products, and they often do so without reference to studies or any other kind of scientific basis for their claims. Such statements are not "establishment claims" but they are nevertheless subject to particular doctrinal rules. Bernstein and Keller explain:

Comparative claims are generally of two sorts: superiority and parity claims. Statements that consumers "prefer" a product or that it is "more effective" than its competitor's product are comparative superiority claims. Proving these claims false requires evidence that the competitor's product is superior or equivalent to the advertiser's product as to the claim at issue. A claim that consumers think that a product is "as good as" a competitor's, or that "nothing is Groupe SEB USA, Inc. v. Euro-Pro Operating LLC 774 F.3d 192 (3d Cir. 2014) FISHER, Circuit Judge.

[1] In this false advertising case, Euro-Pro Operating, LLC ("Euro-Pro") appeals the District Court's order granting a motion for a preliminary injunction brought by Groupe SEB USA, Inc. ("SEB"). The District Court found that two advertising claims on Euro-Pro's steam irons likely violated section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and enjoined Euro-Pro from using those claims. Euro-Pro raises several issues on appeal, but we principally consider how courts should interpret an advertising claim when the packaging or label unambiguously defines a claim term. The District Court decided that the packaging's definition of a claim term applies to the claim's explicit message. Based on this decision, the District Court disregarded consumer survey evidence offering alternative meanings for the claim term. We agree with the District Court and find its approach firmly based in false advertising law and logic. And because we conclude that the District Court did not otherwise abuse its discretion in granting the preliminary injunction, we will affirm.

[2] SEB distributes and sells various household consumer products under several brand names throughout the country. This case involves SEB's electric steam irons sold under the Rowenta brand name, namely the Rowenta Focus, Model No. DW5080 ("Rowenta DW5080"), and the Rowenta Steamium, Model No. DW9080 ("Rowenta DW9080"). Euro-Pro manufactures, markets, and distributes kitchen and household appliances. It sells these products under the Shark brand name. The dispute here arises from advertising claims on the packaging of two Shark steam irons, the Shark Professional, Model No. GI405-55 ("Shark 405"), and the Shark Ultimate Professional, Model No. GI505-55 ("Shark 505").

[3] The Shark 405 packaging includes two advertising claims. First, text on the bottom right of the front packaging asserts that the Shark 405 offers "MORE POWERFUL STEAM vs.

Rowenta® † † at half the price." J.A. at A3, A805. The " † †" characters refer to a fine-print footnote on the bottom of the packaging, which states that the claim is " † †[b]ased on independent comparative steam burst testing to Rowenta DW5080 (grams/shot)." Id. Text on the top right of the front packaging also asserts that the Shark 405 delivers "# 1 MOST POWERFUL STEAM*." Id. Again, there is a fine-print reference to this claim on the bottom of the packaging that states the Shark 405 " *[o]ffers more grams per minute (maximum steam setting while bursting before water spots appear) when compared to leading competition in the same price range, at time of printing." Id. The Shark 505 packaging makes substantially the same claims.

[4] Additionally, both the Shark 405 and the Shark 505 include hang tags on the steam irons for store displays. The hang tags claim that the Shark steam irons deliver "MORE POWERFUL STEAM vs. Rowenta . . . at half the price." J.A. at A4. The hang tags also include a reference stating that the claim is "[b]ased on independent comparative steam burst testing" to the respective Rowenta steam irons in "(grams/shot)." Id.

[5] SEB first learned of the comparative advertising claims on the Shark steam irons in October 2013. Soon thereafter, SEB directed its internal laboratory to conduct testing to determine whether the claims were true. The lab ran tests comparing the Shark 505 and the Rowenta DW9080. The tests measured (1) the variable steam rate in grams per minute according to International Electrical Corporation ("IEC") 60311 protocol and (2) the mass of a shot of steam in grams per shot according to IEC 60311 protocol. 2 The test results showed that the Rowenta DW9080 performed the same as the Shark 505 in terms of variable steam rate in grams per minute, with both measuring 37 grams per minute. In the test measuring grams per shot of steam, the Rowenta DW9080 outperformed the Shark 505, with measurements of 1.34 grams per shot and 1.00 grams per shot, respectively.

[6] Because SEB's internal test results were inconsistent with the Shark advertising claims, SEB commissioned SLG Prüfund Zertifizierungs GmbH ("SLG"), an independent laboratory based in Germany, to conduct independent tests based on the Shark claims. SLG tested three steam irons of each model in accordance with IEC 60311 protocol, and it delivered its findings to SEB in a comprehensive thirty-eight page report ("SLG Test Report"). The SLG Test Report showed that the Rowenta DW5080 and the Rowenta DW9080 outperformed the Shark 405 and the Shark 505, respectively, in terms of grams per minute. For the test measuring steam power in grams per shot, the SLG Test Report showed that two of the three Shark 405 steam irons performed worse than all three Rowenta DW5080 steam irons, but one Shark 405 steam iron outperformed all three Rowenta DW5080 steam irons. The Rowenta DW5080's average performance was higher than the Shark 405's average performance. 3 The SLG Test Report also showed that two of the three Rowenta DW9080 steam irons performed better in grams per shot than all three Shark 505 steam irons, and one Rowenta DW9080 performed worse than all three Shark 505 steam irons. The Rowenta DW9080's average performance was higher than the Shark 505's average performance.

B. [7] On January 29, 2014, SEB filed a complaint in the United States District Court for the Western District of Pennsylvania, asserting claims for false advertising under the Lanham Act, 15 U.S.C. § 1125(a), and for unfair competition under Pennsylvania common law. The following day, SEB moved for a preliminary injunction to enjoin Euro-Pro from making the claims on the Shark 405 and the Shark 505. [8] The District Court held an evidentiary hearing on March 19, 2014, to address SEB's motion for a preliminary injunction. At the hearing, SEB introduced the aforementioned internal test results and the independent SLG Test Report to show that the claims on the Shark steam irons are false. Euro-Pro introduced testimony and a study from its scientific expert, Dr. Abid Kemal (collectively referred to as the "Kemal Report"). According to the Kemal Report, steam power is the kinetic energy of a steam burst divided by the duration of the burst. Using this measurement for steam power, the Kemal Report showed that the Shark 405 and the Shark 505 deliver more powerful steam than the Rowenta DW5080 and the Rowenta DW9080, respectively. The Kemal Report also showed that "the mass of a shot of steam expelled from [the Shark steam irons] is comparable to the mass of a shot of steam (grams/shot) expelled from [the respective Rowenta steam irons]." Additionally, Euro-Pro introduced a consumer survey report prepared by Dr. Gary Ford ("the Ford Survey") showing that consumers do not have a uniform understanding of the meaning of the phrase "more powerful steam." . . . .

[9] A plaintiff can prevail in a false advertising action if it proves that the advertisement "is either (1) literally false or (2) literally true or ambiguous, but has the tendency to deceive consumers." Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharm. Co., 290 F.3d 578, 586 (3d Cir. 2002). Proof of literal falsity relieves the plaintiff of its burden to prove actual consumer deception. Id. Here, the only dispute is whether the Shark claims are literally false.

[10] "A determination of literal falsity rests on an analysis of the message in context." Johnson & Johnson-Merck Consumer Pharm. Co. v. Rhone-Poulenc Rorer Pharm., Inc., 19 F.3d 125, 129 (3d Cir. 1994). In deciding whether an advertising claim is literally false, a court must decide first whether the claim conveys an unambiguous message and second whether that unambiguous message is false. Novartis, 290 F.3d at 586. "A 'literally false' message may be either explicit or 'conveyed by necessary implication when, considering the advertisement in its entirety, the audience would recognize the claim as readily as if it had been explicitly stated. '" Id. at 586-87 (quoting Clorox Co. P.R. v. Proctor & Gamble Commercial Co., 228 F.3d 24, 35 (1st Cir. 2000)). Unless the claim is unambiguous, however, it cannot be literally false. Id. at 587. "'The greater the degree to which a message relies upon the viewer or consumer to integrate its components and draw the apparent conclusion . . . the less likely it is that a finding of literal falsity will be supported. '" Id. (quoting United Indus. Corp. v. Clorox Co., 140 F.3d 1175, 1181(8th Cir. 1998)). We review a district court's findings that an advertising claim is unambiguous and literally false for clear error. See id. at 589. [11] The District Court analyzed the two advertising claims at issue separately. It first determined that Euro-Pro's claim that the Shark steam irons offer "MORE POWERFUL STEAM vs. Rowenta" is unambiguous. The District Court found that the footnote reference to this claim governs the claim's meaning, as the packaging explicitly claims that the Shark steam irons offer more powerful steam measured in grams per shot than the respective Rowenta steam irons. The District Court also determined that the "# 1 MOST POWERFUL STEAM" claim is unambiguous but for different reasons. Recognizing that the reference to this claim explicitly restricts the claim to comparisons to steam irons in the same price range and that Rowenta steam irons are in a higher price range, the District Court still found an unambiguous message of superiority over Rowenta steam irons conveyed by necessary implication due to the claim's close proximity to the "MORE POWERFUL STEAM vs. Rowenta" claim.

[12] With respect to the question of falsity, the District Court found that both claims are false because all the scientific evidence that measured steam power in grams per shot and grams per minute-the measurements for steam power provided on the Shark packagingdisproved Euro-Pro's claims of superiority over Rowenta. The District Court rejected Euro-Pro's scientific evidence, the Kemal Report, as irrelevant because it did not measure steam power in grams per shot or grams per minute. The District Court also observed that Euro-Pro failed to come forward with any other evidence that actually supported its claims.

1. [13] We agree with the District Court that the "MORE POWERFUL STEAM vs. Rowenta" claim is unambiguous. When a product's packaging includes an advertising claim and unambiguously defines a claim term, the packaging's definition of the claim term applies to the claim's explicit message. As explained below, we think this rule is consistent with false advertising law and common sense. [14] In certain cases, determining the message conveyed by a claim is a simple exercise because the claim is explicit and unambiguous. See Novartis, 290 F.3d at 586. And so it is here. To make something explicit is to state it clearly and precisely. Therefore, when Euro-Pro took the affirmative step to include a reference on the Shark packaging that clearly defined the key term in its claim-that steam power is measured in grams per shot-it made an explicit claim. The claim is also unambiguous because grams per shot is a unit of measurement provided by the IEC, the leading independent publisher of standards for electrotechnology, including steam irons. Thus, there is no "'apparent conclusion'" to be drawn about this claim's meaning, id. at 587 (quoting United Indus., 140 F.3d at 1181), nor is its meaning "balanced between several plausible meanings," Clorox Co. P.R., 228 F.3d at 35. There is only one available conclusion and only one plausible meaning-the claim means exactly what the reference on the packaging says it does. [15] Moreover, as we previously discussed, courts deciding whether a claim is literally false must view the claim in the context of the entire advertisement. See Rhone-Poulenc, 19 F.3d at 129. Here, the reference that defines the meaning of steam power is on the Shark packaging, and the claim expressly links to the reference using a symbol-" † †" on the Shark 405 and " †" on the Shark 505. Thus, ignoring the reference in our analysis would be not only to read the claim out of context, but also to ignore part of the claim itself denoted by the symbol.

[16] Our holding is also consistent with other areas of the law where courts interpreting a term's meaning apply a specific definition if one is provided by the author. See, e.g., Meese v. Keene, 481 U.S. 465, 484, 107 S.Ct. 1862, 95 L.Ed.2d 415 (1987) ("It is axiomatic that the statutory definition of the term excludes unstated meanings of that term."); Phillips v. AWH Corp., 415 F.3d 1303, 1316(Fed. Cir. 2005) (en banc) ("[O]ur cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs."); J.C. Penney Life Ins. Co. v. Pilosi, 393 F.3d 356, 363 (3d Cir. 2004) (applying Pennsylvania law to interpret an insurance contract, and explaining that words expressly defined in a policy will be given that definition by courts interpreting the policy); 12 Richard A. Lord, Williston on Contracts, § 34:11, at 123 (4th ed. 2012) ("Another method for excluding usage is to have the contract define terms in a manner that is different from the industry or trade definitions for those terms. Then the contract definitions govern and usage is inapplicable. . . ."). We see no reason to depart from this principle here.

[17] We therefore agree entirely with the District Court that the reference's definition of steam power governs the term's meaning in the "MORE POWERFUL STEAM vs. Rowenta" claim. Accordingly, the claim's explicit and unambiguous message is that the Shark steam irons offer more powerful steam measured in grams per shot than the respective Rowenta steam irons.

[18] The fact that the references are in fine-print footnotes and presumably less likely to be read by consumers does not alter our analysis, as Euro-Pro urges it should. We understand that other courts have held that footnote disclaimers purporting to make a false or misleading claim literally true cannot cure the claim's false or misleading message. See, e.g., Am. Home Prods. Corp. v. Johnson & Johnson, 654 F.Supp. 568, 590 (S.D.N.Y. 1987). We have not addressed this issue, see Pernod, 653 F.3d at 252 n. 13 (declining to address the situation when an allegedly misleading claim is corrected by a true statement contained in fine print), and we do not decide it today. Our rather unremarkable holding here is analytically distinct. It is that what a product's packaging says a claim term means is in fact part of the claim's explicit message. If that explicit message is both unambiguous and false, the claim is literally false.

[19] Nor does the presence of consumer survey evidence showing alternative meanings for a defined term affect our holding. Euro-Pro would have us ignore the packaging's definition of steam power and instead credit consumer survey evidence demonstrating that the meaning of steam power is ambiguous. According to Euro-Pro, the District Court's decision to ignore the Ford Survey is inconsistent with our decision in Pernod Ricard USA, LLC v. Bacardi U.S.A., Inc., 653 F.3d 241 (3d Cir. 2011). The crux of Euro-Pro's argument is that consumer surveys must be considered by courts in determining whether a claim's message is ambiguous. As explained below, Euro-Pro's argument does not hold up.

[20] In Pernod, we addressed whether courts must always consider survey evidence showing that consumers are misled by an advertising claim. There, the appellant asserted that the name of a brand of rum, "Havana Club," misled consumers about the brand's geographic origin. Id. at 247. Beneath the "Havana Club" name, the label prominently stated that it was "Puerto Rican Rum," an accurate statement of where the rum was distilled. Id. at 245-46. The District Court found that the label made no false or misleading statement, so it disregarded consumer survey evidence showing that eighteen percent of consumers were confused about the brand's geographic origin. See id. at 247-48. [21] We held that the district court properly disregarded the consumer survey evidence. Our conclusion rested on the principle "that there is and must be a point at which language is used plainly enough that the question ceases to be 'what does this mean' and becomes instead 'now that it is clear what this means, what is the legal consequence.'" Id. at 251. Applying this principle, we observed that the label contained a "factually accurate, unambiguous statement of geographic origin," prominently stating that it was "Puerto Rican Rum." Id. at 252. As a consequence, we concluded that no reasonable consumer could be misled by the "Havana Club" name when it was considered in the context of this prominent truthful statement on the label. Id. at 252-53. Consumer survey evidence was therefore immaterial because the Lanham Act does not prohibit a claim that "reasonable people would have to acknowledge is not false or misleading." Id. at 253. But we cautioned that judges should not "lightly disregard" consumer surveys because they may reveal "potential ambiguities in an advertisement" that show reasonable consumers may in fact be misled by the advertisement. Id. at 254-55. Finally, we noted that "a district court's decision to disregard survey evidence is reviewable de novo, since it is founded on a legal conclusion based on underlying facts, that is that no reasonable consumer would be misled by an advertisement." Id. at 255 n. 18. [22] As our discussion of Pernod demonstrates, it is readily distinguishable from the issue before us here. Unlike Pernod, the case before us involves claims of literal falsity, so evidence of actual consumer deception is not required. See Novartis, 290 F.3d at 586. By disregarding the consumer survey evidence in this case, the District Court did not make the same legal conclusion we recognized in Pernod: that no consumers could be misled by the advertisement. The District Court instead made a factual finding about what the claim means and that its message is clear and unambiguous.

[23] Pernod does not license courts to use consumer survey evidence to define the meaning of words in an advertising claim. In fact, our analysis in Pernod recognized that words may be used plainly enough and carry baseline meanings such that consumer survey evidence is irrelevant. See 653 F.3d at 251 (discussing Mead Johnson & Co. v. Abbott Labs., 201 F.3d 883, 886 (7th Cir. 2000), opinion amended on denial of reh 'g, 209 F.3d 1032'g, 209 F.3d (7th Cir. 2000) ) (explaining that "never before has survey research been used to determine the meaning of words, or to set the standard to which objectively verifiable claims must be held")). In this case, Euro-Pro plainly explained on the packaging what it meant by its claim, so we are puzzled by Euro-Pro's characterization of the District Court's approach as a court inserting its "own perception" ahead of consumer perception. Far from using its own perception of the claim's meaning, the District Court used the definition provided by Euro-Pro in the reference, and, concluding that Euro-Pro's message was explicit and unambiguous, it reasonably declined to substitute the uninformed first impressions of consumers about the claim's meaning. See Mead Johnson, 201 F.3d at 886. Euro-Pro chose a definition for steam power and now must live with it. It cannot use a consumer survey to create an ambiguity out of whole cloth. Accordingly, we conclude that the District Court did not err in failing to consider the Ford Survey in its analysis.

[24] Turning to the "# 1 MOST POWERFUL STEAM" claim, we again agree with the District Court that this claim unambiguously conveys that Shark steam irons deliver more powerful steam than Rowenta steam irons. Unlike the "MORE POWERFUL STEAM vs. Rowenta" claim, however, the relevant message here is not explicit. The corresponding reference to the "# 1 MOST POWERFUL STEAM" claim states that the Shark steam irons "[o]ffer[ ] more grams per minute . . . when compared to leading competition in the same price range," and the parties agree that Rowenta steam irons are in a different price range. But, as we discussed earlier, a literally false claim may also be conveyed by necessary implication when considering the advertisement in its entirety. See Novartis, 290 F.3d at 586-87. The question here is whether, "based on a facial analysis of the product name or advertising, . . . the consumer will unavoidably receive a false message." Id. at 587. Here, the answer is yes. The "# 1 MOST POWERFUL STEAM" claim appears directly above the "MORE POWERFUL STEAM vs. Rowenta" claim, and the proximity of the two claims necessarily and unavoidably conveys a message that Shark steam irons offer the most powerful steam, even when compared to Rowenta steam irons. We therefore cannot say the District Court's finding is clearly erroneous.

[25] Having decided that the claims convey unambiguous messages, the next question is whether those messages are false. We find no clear error in the District Court's determination that the messages are false. The District Court reasonably relied on SEB's internal test results and the SLG Test Report. Both tests measured steam power in grams per shot and grams per minute-the measurements for steam power provided on the Shark packaging-in accordance with independent, objective standards promulgated by the IEC. Both tests also showed that the Rowenta steam irons either outperformed or performed as well as the Shark steam irons. Moreover, the Kemal Report acknowledged that there is no difference in grams per shot of steam between the Shark steam irons and the respective Rowenta steam irons.

Put simply, all the relevant evidence before the District Court refuted Euro-Pro's claims of superiority.

[26] Euro-Pro's final challenge is to the constitutionality and scope of the District Court's injunction. "District Courts are afforded considerable discretion in framing injunctions. " Meyer v. CUNA Mut. Ins. Soc., 648 F.3d 154, 169 (3d Cir. 2011). At the same time, an injunction "should be 'no more burdensome to the defendant than necessary to provide complete relief to plaintiffs. '" Novartis, 290 F.3d at 598 (quoting Califano v. Yamasaki, 442 U.S. 682, 702, 99 S.Ct. 2545, 61 L.Ed.2d 176 (1979)). "Moreover, because commercial speech is entitled to appropriate protection under the First Amendment, an injunction restraining allegedly false or misleading speech must be narrowly tailored to cover only the speech most likely to deceive consumers and harm [the plaintiff]." Id. (alteration in original) (internal quotation marks omitted).

[27] Here, the District Court's order granting the preliminary injunction requires Euro-Pro to place stickers over the "MORE POWERFUL STEAM vs. Rowenta" and the "# 1 MOST POWERFUL STEAM" claims on both the Shark 405 and the Shark 505. Also, the order directs Euro-Pro to remove the hang tags from the steam irons.

[28] Commercial speech conveying a literally false message is not protected by the First Amendment. See id. ("We conclude that the injunction does not violate the First Amendment . . . because each of these messages is false."). As we have explained, we agree with the District Court's conclusion that SEB will likely prevail on its false advertising claims. Therefore, we see no First Amendment violation.

[29] Euro-Pro contends that the District Court's injunction is overbroad because it requires Euro-Pro to cover the advertising claims themselves rather than only the references to the claims. Euro-Pro correctly points out that the references are critical to the literal falsity analysis. Without the definitions from the references, the claims about relative steam power may be considered ambiguous, and as such, could not be literally false. See id. at 587. Thus, Euro-Pro argues that the injunction should have targeted only the references.

[30] We disagree with Euro-Pro's narrow characterization of its advertising claims. Although the references provide the definition for steam power that the District Court appropriately adopted in this case, the references and the advertising claims together compose the literally false messages. Therefore, the injunction is not overbroad because it is limited to reaching claims that are literally false. See Castrol Inc. v. Pennzoil Co., 987 F.2d 939, 949 (3d Cir. 1993). Moreover, the logic underlying Euro-Pro's argument would create an unworkable framework. Under Euro-Pro's suggested approach, district courts could not just enjoin the dissemination of literally false advertising claims, but they also would need to parse each part of those literally false claims to see if the removal of a word or a portion here and there would render the remainder true. We cannot say that the District Court abused its discretion when it required Euro-Pro to place stickers over the entirety of the false advertising claims rather than only part of them. [1] The plaintiff, Schick Manufacturing Company ("Schick"), seeks a preliminary injunction enjoining the defendant, The Gillette Company ("Gillette"), from making certain claims about its M3 Power razor system ("M3 Power"). Schick contends that Gillette has made various false claims in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) and the Connecticut Unfair Trade Practices Act ("CUTPA"), Conn. Gen.Stat. § 42-110a, et seq.

[2] In order to succeed on its false advertising claim, Schick must prove five elements of this claim. Omega Engineering, Inc. v. Eastman Kodak Co., 30 F.Supp.2d 226, 255 (D.Conn. 1998) (citing various treatises and cases). These are the following:

(1) The defendant has made a false or misleading statement of fact. The statement must be (a) literally false as a factual matter or (b) likely to deceive or confuse. S.C. Johnson & Son, Inc. v. Clorox Company, 241 F.3d 232, 238 (2d Cir. 2001).

(2) The statement must result in actual deception or capacity for deception "Where the advertising claim is shown to be literally false, the court may enjoin the use of the claim without reference to the advertisement's impact on the buying public." Id. (internal quotations omitted).

(3) The deception must be material. "[I]n addition to proving falsity, the plaintiff must also show that the defendants misrepresented an inherent quality or characteristic of the product." Id. (internal quotations omitted).

(4) Schick must demonstrate that it has been injured because of potential decline in sales. Where parties are head-to-head competitors, the fact that the defendant's advertising is misleading presumptively injures the plaintiff. Coca-Cola Co. v. Tropicana Products, Inc., 690 F.2d 312, 317 (2d Cir. 1982) (abrogated on other grounds by statute as noted in Johnson & Johnson v. GAC Int'l, Inc., 862 F.2d 975, 979 (2d Cir. 1988)).

(5) The advertised goods must travel in interstate commerce.

[3] The court held a scheduling conference on the preliminary injunction motion on March 2, 2005. The court allowed the parties to conduct limited discovery prior to conducting a hearing on Schick's motion for a preliminary injunction. The hearing on the motion was conducted over four days: April 12, 13, 22, and May 2, 2005 [4] The men's systems razor and blade market is worth about $1.1 billion per year in the United States. Gillette holds about 90% of the dollar share of that market, while Schick holds about 10%. The parties are engaged in head-to-head competition and the court credits testimony that growth in the razor systems market results not from volume increases but "with the introduction of high price, new premium items." Hr'g Tr. 39:20-21.

[5] Schick launched its Quattro razor system in September of 2003 and expended many millions of dollars in marketing the product. Although Schick had projected $100 million in annual sales for the Quattro, its actual sales fell short by approximately $20 million. From May 2004 to December 2004, Quattro's market share fell from 21% of dollar sales to 13.9% of dollar sales. [6] Gillette launched the M3 Power in the United States on May 24, 2004. In preparation for that launch, it began advertising that product on May 17, 2004. The M3 Power is sold throughout the United States. The M3 Power includes a number of components including a handle, a cartridge, guard bar, a lubricating strip, three blades, and a battery-powered feature which causes the razor to oscillate. The market share of the M3 Power, launched in May 2004, was 42% of total dollar sales in December 2004.

[7] Gillette's original advertising for the M3 Power centered on the claim that "micropulses raise hair up and away from skin," thus allowing a consumer to achieve a closer shave. This "hair-raising" or hair extension claim was advertised in various media, including the internet, television, print media, point of sale materials, and product packaging. For example, Gillette's website asserted that, in order to combat the problem of "[f]acial hair grow [ing] in different directions," the M3 Power's "[m]icro-pulses raise hair up and away from skin . . . " PX 2,. Of Gillette's expenditures on advertising, 85% is spent on television advertising. At the time of the launch, the television advertising stated, "turn on the first micro-power shaving system from Gillette and turn on the amazing new power-glide blades. Micro-pulses raise the hair, so you shave closer in one power stroke." PX 14.2(C). The advertisement also included a 1.8 second-long animated dramatization of hairs growing. In the animated cartoon, the oscillation produced by the M3 Power is shown as green waves moving over hairs. In response, the hairs shown extended in length in the direction of growth and changed angle towards a more vertical position. [8] The court notes that eight months passed between the launch of the M3 Power and the date Schick initiated the instant suit. Schick maintains that there are two factors that excuse this delay. First, Schick invested time in developing a stroke machine and test protocol that would allow it to test the M3 Power with some degree of confidence and effectiveness.foot_7 Specifically, the development of a machine that would deliver a stroke of consistent pressure to a test subject's face took time. Second, after completing its first tests of Gillette's claims that the M3 Power raises hair in October, Schick chose to pursue its claims in Germany. In November of 2004, Schick sued Gillette in Germany to enjoin it from making claims that the M3 Power raised hairs. In late December of 2004, the Hamburg Regional Court affirmed the lower court's order enjoining Gillette from making such claims in Germany.

[9] While the court finds that it may have been possible to develop testing protocols in a quicker fashion, the court finds the M3 Power was a new product with a feature (the use of battery power) that had never before been present in wet shavers. The court finds the time Schick took to develop testing of and to test the M3 Power is excusable. The court has been presented with no evidence of bad faith or strategic maneuvering behind the timing of the instant lawsuit. [10] In late January of 2005, Gillette revised its television commercials for the M3 Power in the United States. It chose to do so based on both the German litigation as well as conversations between the parties about Schick's discomfort with certain claims made in the advertising. The animated product demonstration in the television commercials was revised so that the hairs in the demonstration no longer changed angle, and some of the hairs are shown to remain static. The voice-over was changed to say, "Turn it on and micropulses raise the hair so the blades can shave closer." PX 14.10C. The product demonstration in the revised advertisements depicts the oscillations to lengthen many hairs significantly. The depiction in the revised advertisements of how much the hair lengthens-the magnitude of the extension-is not consistent with Gillette's own studies regarding the effect of micropulses on hair. The animated product demonstration depicts many hairs extending, in many instances, multiple times the original length. Gillette began broadcasting the revised television commercials on or about January 31, 2005. Schick provided credible evidence, however, that the prior version of the advertisement is still featured on the Internet and on product packaging. [11] Television advertisements aim to provide consumers a "reason to believe," that is, the reason consumers should buy the advertised product. Because of the expense of television advertising, companies have a very short period of time in which to create a "reason to believe" and are generally forced to pitch only the key qualities and characteristics of the product advertised.

[12] Gillette conceded during the hearing that the M3 Power's oscillations do not cause hair to change angle on the face. Its original advertisements depicting such an angle change are both unsubstantiated and inaccurate. Gillette also concedes that the animated portion of its television advertisement is not physiologically exact insofar as the hairs and skin do not appear as they would at such a level of magnification and the hair extension effect is "somewhat exaggerated." Gillette Co. 's Prop. Findings of Fact [Dkt. No. 114] ¶ 33. The court finds that the hair "extension" in the commercial is greatly exaggerated. Gillette does contend, however, that the M3 Power's oscillations cause beard hairs to be raised out of the skin. Gillette contends that the animated product demonstration showing hair extension in its revised commercials is predicated on its testing showing that oscillations cause "trapped" facial hairs to lengthen from the follicle so that more of these hairs' length is exposed. Gillette propounds two alternative physiological bases for its "hair extension" theory. First, Gillette hypothesizes that a facial hair becomes "bound" within the follicle due to an accumulation of sebum and corneocytes (dead skin cells). Gillette contends that the oscillations could free such a "bound" hair. Second, Gillette hypothesizes that hairs may deviate from their normal paths in the follicle and become "trapped" outside the path until vibrations from the M3 Power restore them to their proper path.

[13] Schick's expert witness, Dr. David Leffell, Professor of Dermatology and Chief of Dermatologic Surgery at the Yale School of Medicine, testified that, based on his clinical and dermatological expertise, he is aware of no scientific basis for the claim that the oscillations of the M3 Power would result in hair extension, as Gillette contends. Dr. Leffell stated that Gillette's "hair extension" theory is inconsistent with his 20 years of experience in dermatology. He testified that he has never seen a hair trapped in a sub-clinical manner, as hypothesized by Gillette. Dr. Leffell testified that, in certain circumstances, trapped hairs will result in clinical symptoms, such as infection or inflammation. With respect to Gillette's hypothesis that the interaction between sebum and corneocytes trap hairs, however, Dr. Leffell stated, and the court credits, that in non-clinical circumstances, sebum and comeocytes do not accumulate sufficiently to inhibit hair growth. Moreover, everyday activities such as washing or shaving remove accumulations of sebum and corneocytes.

[14] Gillette's expert hair biologist, Dr. Michael Philpott, has studied hair biology for almost twenty years. He testified that, prior to his retention as an expert by Gillette, he had never seen a hair trapped in the manner posited by Gillette. Only after being retained by Gillette did Dr. Philpott first claim to have encountered this hair extension theory. Dr. Philpott acknowledged that neither of Gillette's two hypothesis of hair extension have any support in medical or scientific literature. With regard to Gillette's theory that hair could become bound in the follicle by sebum and corneocytes, Dr. Philpott admitted that no evidence supports that theory. Dr. Leffell testified that erector pili muscles, which cause hairs to stand up in response to various stimuli, as is commonly seen in the case of goosebumps, may also provide a biologicial mechanism for hair extension. Neither Dr. Leffell nor Dr. Philpott, however, testified on the relationship between the application of mechanical energy and the erector pili muscles, and neither party has contended that these muscles play a role in Gillette's hair extension theory. [15] In addition to positing biological mechanisms that might support the claim that the M3 Power's oscillations raise hairs, Gillette introduced evidence of experiments and testing to support those claims. Gillette provided summaries of said testing which were not prepared contemporaneously with the testing, conducted in the early 1990's, they purport to memorialize. Instead, they were prepared in anticipation of litigation in late 2004.

[16] Gillette performed experiments using oscillating razors in 1990, 1991and 2003. In 1990and 1991, Gillette performed studies using prototype oscillating razor handles fitted with razor systems other than the M3 Power, the Atra Plus and Sensor razor cartridge, two other Gillette products. In each of these initial experiments, a circle was drawn on a test subject's face. Twenty beard hairs within the circled region were measured with an imaging stereomicroscope manufactured by the Leica Company. That instrument measures hairs three-dimensionally to a resolution of three to four microns. The test subject then stroked the area using an oscillating razor with blunted blades. Then, twenty beard hairs within the circled region were again measured with a stereomicroscope. The same protocol was followed using a non-oscillating razor with blunted blades, and the changes in hair measurement were compared.

[17] The Atra Plus study was performed in 1990 and included 10 test subjects. The study results show that the panelists' average hair length increased by 83.3 microns after five strokes with the oscillating razor versus 6.3 microns with the non-oscillating razor. The Sensor study was performed from 1990 to 1991 and also involved 10 test subjects. The subjects' mean hair length increased by 27.9 microns versus 12.9 microns with the nonoscillating razor. While both tests provided some evidence of a hair extension effect and the magnitude of that effect, neither test indicated what percentage of hairs were lengthened.

[18] Notably, while Gillette found that use of both the oscillating Atra Plus and Sensor razors resulted in an increase in beard hair length, there was significant difference between the average increase caused by the Atra Plus and that caused by the Sensor. Furthermore, no evidence was presented to the court regarding similarities or differences between the M3 Power razor and the Atra Plus or Sensor. The sample size, ten test subjects per study, was small. The twenty beard hairs measured prior to stroking were not necessarily the same hairs measured after stroking. The test included no efforts to keep constant the variables of pressure on the razor or speed of the shaving stroke. In addition, Gillette's chief scientist, Kevin Powell, testified that the pressure or load applied by consumers co-varies to a statistically significant degree with whether a razor oscillates. All these deficiencies cause this court not to credit the studies' finding that oscillations cause hair lengthening. 3[19] In 2003, Gillette performed a study using a prototype of the M3 Power. In the fall of 2003, Gillette tested a Mach 3 cartridge fitted with an oscillating handle. That prototype was called the "Swan." The Swan prototype's motor, handle, and cartridge differ from those features of the actually-marketed M3 Power. Four test subjects were used. 4 The test protocol was identical to that used in 1990 and 1991 except that, instead of using blunted blades, Gillette removed the blades from the razor. The study results suggest that the oscillating-Swan-prototype produced an average increase in hair length of between 32 and 40 microns while the non-oscillating prototype yielded no average increase. That 32 to 40 micron increase represented an average of eight to ten percent increase in hair length. The test does not indicate what percentage of hairs experience any lengthening as a result of oscillations. The court does not credit Dr. Powell's opinion that the differences between the model used in the test and the marketed product has no impact on the testing. Failure to use the marketed product is critical. The court cites the varied results Gillette reports between the Atra Plus, Sensor, and "Swan" tests as only one reason to conclude that failure to use the market product undercuts the 2003 testing. Further, the test protocol and sample size cause the court to question the validity of these study findings.

[20] In addition to testing oscillating battery-powered razors, Gillette conducted what has been called the Microwatcher study. The Microwatcher is a commercially available product consisting of a miniature camera with an illumination system that channels light into an orifice at the tip of a transparent hemispherical dome. The device allows the user to impart mechanical energy into the top and underlying layers of the skin, which, according to Gillette, replicates the mechanical energy imparted by the oscillating razor. 5 The recorded video images introduced into evidence show individual hairs releasing from just below the skin surface. Gillette did not introduce evidence to describe what the various elements of the photo were. When asked by the court to identify the various elements appearing in the video were, Dr. Philpott could not identify or explain important skin features. For example, the court pointed to an area surrounding the individual hair, of darker hue than the rest of the skin, on the video, but Dr. Philpott could not explain what that area was or what might explain its coloration. The court further finds that Gillette provides no evidence to suggest the relationship between the amount of mechanical energy imparted by the Microwatcher and that imparted by the M3 Power.

[21] Schick performed its own study which it contends proves the falsity of Gillette's advertising with respect to claims regarding hair extension. 6 Schick's study took place over three days and included 37 test subjects. With respect to each test subject, twenty hairs were measured before and after strokes with an M3 Power razor with blunted blades in both the power-on and power-off modes. The strokes were taken using an automated shaving device developed specially by Schick for the purposes of testing the M3 Power razor and Gillette's claims with respect to it. Images of the hairs were taken before and after the razor strokes using a camera with a plate that flattened hair onto the face. The images were then downloaded to a computer and hair lengths were assessed using ImagePro software. An independent statistician evaluated the data for all three days. Schick argues that its data indicates that there was no statistically significant difference between the change in hair length with power off and the change in hair length with power on. [22] Again, however, the court finds the test protocol lacking and results questionable. Schick's testing shows that some hairs shrunk even in the absence of the use of water, which Gillette's testing has found to result in hair shrinkage. Schick's expert testified that this may have been the result of measurement error, and the court agrees. 7 Furthermore, Gillette provided expert testimony that the glass plate used to flatten hairs so that they could be measured would likely result in distortion, making it difficult to accurately measure hair lengths. Such flaws in Schick's testing cause the court to be skeptical of Schick's test results and the suggestion that these results demonstrate that the M3 Power does not cause hairs to extend.

[23] The flaws in testing conducted by both parties prevent the court from concluding whether, as a matter of fact, the M3 Power raises beard hairs.

[24] 1. Literal Falsity. "Falsity may be established by proving that (1) the advertising is literally false as a factual matter, or (2) although the advertising is literally true, it is likely to deceive or confuse customers." Nat'l Basketball Ass 'n v. Motorola, Inc., 105 F.3d 841, 855 (2d Cir. 1997). "A plaintiff's burden in proving literal falsity thus varies depending on the nature of the challenged advertisement." Castrol, Inc., 977 F.2d at 63. The Second Circuit has found that where an advertisement alleges that tests have established a product's superiority, a plaintiff must demonstrate that the tests or studies did not prove such superiority. " [A] plaintiff can meet this burden by demonstrating that the tests were not sufficiently reliable to permit a conclusion that the product is superior." Id. In addition, "[i]f the plaintiff can show that the tests, even if reliable, do not establish the proposition asserted by the defendant, the plaintiff has obviously met its burden." Id.

[25] Where, however, as here, the accused advertising does not allege that tests or clinical studies have proven a particular fact, the plaintiff's burden to come forward with affirmative evidence of falsity is qualitatively different. "To prove that an advertising claim is literally false, a plaintiff must do more than show that the tests supporting the challenged claim are unpersuasive." Mc-Neil-P.C.C., Inc. v. Bristol-Myers Squibb Co., 938 F.2d 1544, 1549(2d Cir. 1991). The plaintiff must prove falsity by a preponderance of the evidence, either using its own scientific testing or that of the defendant. If a plaintiff is to prevail by relying on the defendant's own studies, it cannot do so simply by criticizing the defendant's studies. It must prove either that "such tests 'are not sufficiently reliable to permit one to conclude with reasonable certainty that they established' the claim made" or that the defendant's studies establish that the defendant's claims are false. Id. at 1549-50. [26] The challenged advertising consists of two basic components: an animated representation of the effect of the M3 Power razor on hair and skin and a voice-over that describes that effect. The animation, which lasts approximately 1.8 seconds, shows many hairs growing at a significant rate, many by as much as four times the original length. During the animation, the voice-over states the following: "Turn it on and micropulses raise the hair so the blades can shave closer." Schick asserts that this M3 Power advertising is false in three ways: first, it asserts the razor changes the angle of beard hairs; second, it portrays a false amount of extension; and third, it asserts that the razor raises or extends the beard hair.

[27] With regard to the first claim of falsity, if the voiceover means that the razor changes the angle of hairs on the face, the claim is false. Although Gillette removed the "angle changing" claim from its television advertisements, it is unclear whether it has completely removed all material asserting this angle-change claim. The court concludes that the current advertising claim of "raising" hair does not unambiguously mean to changes angles. 19 See Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharmaceuticals Co., 290 F.3d 578, 587 (3d Cir. 2002) ("only an unambiguous message can be literally false"). Thus, the revised advertising is not literally false on this basis.

[28] With regard to the second asserted basis of falsity, the animation, Gillette concedes that the animation exaggerates the effect that the razor's vibration has on hair. Its own tests show hairs extending approximately 10% on average, when the animation shows a significantly greater extension. The animation is not even a "reasonable approximation," which Gillette claims is the legal standard for non-falsity. See Gillette's Prop. Conclusions of Law at ¶ 32,[37][38]]. Here, Schick can point to Gillette's own studies to prove that the animation is false. See Mc-Neil-P.C.C., Inc., 938 F.2d at 1549. [29] Gillette argues that such exaggeration does not constitute falsity. However, case law in this circuit indicates that a defendant cannot argue that a television advertisement is "approximately" correct or, alternatively, simply a representation in order to excuse a television ad or segment thereof that is literally false. S.C. Johnson & Son,Inc.,241 F.3d at 239-40 (finding that depiction of leaking plastic bag was false where rate at which bag leaked in advertisement was faster than rate tests indicated); Coca-Cola Co., 690 F.2d at 318 (finding that advertisement that displaced fresh-squeezed orange juice being poured into a Tropicana carton was false). Indeed, "[the Court of Appeals has] explicitly looked to the visual images in a commercial to assess whether it is literally false." S.C. Johnson, 241 F.3d at 238. 20 [30] Gillette's argument that the animated portion of its advertisement need not be exact is wrong as a matter of law. Clearly, a cartoon will not exactly depict a real-life situation, here, e.g., the actual uneven surface of a hair or the details of a hair plug. However, a party may not distort an inherent quality of its product in either graphics or animation. Gillette acknowledges that the magnitude of beard hair extension in the animation is false. The court finds, therefore, that any claims with respect to changes in angle and the animated portion of Gillette's current advertisement are literally false.

[31] The court does not make such a finding with respect to Schick's third falsity ground, Gillette's hair extension theory generally. Gillette claims that the razor's vibrations raise some hairs trapped under the skin to come out of the skin. While its own studies are insufficient to establish the truth of this claim, the burden is on Schick to prove falsity. Neither Schick's nor Gillette's testing can support a finding of falsity.

[32] While there can be no finding of literal falsity with respect to Gillette's hair extension claim at this stage in the instant litigation, the court expresses doubt about that claim. As described earlier, Gillette's own testing is suspect. Furthermore, Schick introduced expert testimony and elicited evidence from Gillette's expert regarding the lack of scientific foundation for any biological mechanism that would explain the effect described by Gillette in its advertising. Gillette's own expert, Dr. Philpott, testified that no scientific foundation exists to support Gillette's hypothesis that beard hairs might be trapped under the skin by sebum and comeocytes and that the application of mechanical energy might release such hairs. While Dr. Philpott put forward another hypothesis-that a hair's curliness might cause it to be trapped-he also conceded that, prior to his engagement as an expert on Gillette's behalf, in twenty years of studying hair, he had never come across such a phenomenon. The court credits the testimony of Schick's expert, Dr. Leffell, that while certain clinical conditions 20 At least one other circuit has held that picture depictions can constitute false advertising. Scotts Co. v. United Indus. Corp., 315 F.3d 264 (4th Cir. 2002) (finding that while ambiguous graphic on packaging did not constitute literally false advertising, an unambiguous graphic could do so).

are characterized by hairs trapped under the surface of the skin, there is no such non-clinical phenomenon.

[33] Nevertheless, putting forth credible evidence that there is no known biological mechanism to support Gillette's contention that the M3Power raises hairs is insufficient to meet Schick's burden. Such evidence is not affirmative evidence of falsity. Further, while Schick successfully attacked Gillette's testing, that attack did not result in evidence of falsity. Unlike in McNeil, here Gillette's own tests do not prove hair extension does not occur. Schick merely proved that Gillette's testing is inadequate to prove it does occur.

[34] 2. Actual Deception. Schick need not prove actual deception if Gilette's advertising is determined to be literally false. Inc.,938 F.2d at 1549 ("Where the advertising claim is shown to be literally false, the court may enjoin the use of the claim without reference to the advertisement's impact on the buying public." (internal quotation marks and citations omitted)). Because the court finds that claims regarding angle change and the magnitude and frequency of hair extension portrayed in the animated portion of Gillette's television advertisement are both literally false, it presumes that these claims result in actual deception.

[35] 3. Materiality. "It is also well-settled that, in addition to proving falsity, the plaintiff must also show that the defendants misrepresented an inherent quality or characteristic of the product. This requirement is essentially one of materiality, a term explicitly used in other circuits." S.C. Johnson & Son,Inc.,241 F.3d at 238 (internal quotation marks and citations omitted). In determining that certain allegedly false statements were not material, the Second Circuit considered the relevance of the statements and the fact that "[t]he inaccuracy in the statements would not influence customers." Nat'l Basketball Ass 'n v. Motorola, Inc., 105 F.3d 841, 855 (2d Cir. 1997).

[36] It is clear that whether the M3 Power raises hairs is material. Gillette's employees testified that television advertising time is too valuable to include things that are "unimportant". Furthermore, in this case, hair extension is the "reason to believe" that the M3 Power is a worthwhile product. The magnitude and frequency of that effect are also, therefore, material. Whether a material element of a product's performance happens very often and how often that element happens are, in themselves, material.

[37] 4. Injury. The court finds that, in light of the advertisement's literal falsity, the fact that the parties are head-to-head competitors, and recent declines in the sale of Schick's premiere wet shave system injury will be presumed. Coca-Cola Co., 690 F.2d at 316-317. While Schick has not submitted consumer surveys or market research, the fact that the parties are head-to-head competitors supports an inference of causation.

[38] 5. Interstate Commerce. The parties do not dispute that this element of the claim has been established.

[39] Accordingly, the court finds that Schick has established a likelihood of success on the merits of its claims insofar as Gillette's claims regarding changes in hair angle and its animation depicting an exaggerated amount of hair extension are literally false. The court finds that Schick has failed to establish a likelihood of success, or even serious questions going to the merits, on the claim of hair "extension."

[40] Gillette has requested a bond of $49,579,248. It contends that this amount represents estimated lost profits on future M3 Power sales, over a twelve-month period, if later found to have been wrongfully enjoined. Schick submits that a bond of $50,000 to $100,000 is appropriate.

[41] Gillette's calculations assume a precipitous drop in sales as a result of a mandate to correct two admitted falsities in its advertisement. 21 The court is skeptical that this calculation represents an appropriate bond amount. 22 Instead, the court imposes a bond of $200,000 on Schick. Absent a record created by Gillette, the court concludes this amount, generally in the range for false advertising cases, is sufficient to protect Gillette. Gillette may move to increase the bond amount upon a showing of likely injury.

[42] For the reasons stated above the Motion for Preliminary Injunction [Dkt. No. 7] is GRANTED in part and DENIED in part. The injunction is entered as stated in the accompanying order. Schick's Motion for Leave to Amend [Dkt. No. 103] is GRANTED.

B. Endorsements, Testimonials, and Reviews

The mission of the Federal Trade Commission (FTC) is to prevent "unfair methods of competition in or affecting commerce and unfair or deceptive acts or practices in or affecting commerce." FTC Act § 5(a)(2), 15 U.S.C. § 45(a)(2). As its name suggests, the FTC's Bureau of Competition focuses on "unfair methods of competition" and shares with the Antitrust Division of the Department of Justice authority to enforce American antitrust laws. The FTC's Bureau of Consumer Protection focuses on the protection of consumers from "unfair or deceptive acts or practices," including abusive lending and telemarketing practices, violation of data privacy laws, and false advertising. Due to the increasing prominence of endorsements and reviews in social media and on online marketplaces such as Amazon, this subpart briefly surveys FTC policies prohibiting deceptive endorsements and reviews, particularly in the online context.

The FTC Act empowers the FTC to investigate matters either sua sponte or in response to complaints submitted to the agency. Pursuant to FTC Act § 20, 15 U.S.C. § 57b-1, the FTC may issue a Civil Investigative Demand ("CID"), which is akin to a subpoena but may also require the recipient to "file written reports or answers to questions." 15 U.S.C. § 57b-1(c)(1). If the FTC has "reason to believe" that a violation of law has occurred, it may issue a complaint stating its charges. FTC Act § 5(a)(2), 15 U.S.C. § 45(a)(2). The respondent may settle and sign a consent order (which is subject to public comment) or contest the charges before an administrative law judge. The FTC typically seeks a cease and desist order, though it may also pursue injunctive relief such as an order for corrective advertising or consumer refunds. FTC Act § 5(l), 15 U.S.C. § 45(l). The FTC may also seek civil penalties. FTC Act § 5(m), 15 U.S.C. § 45(m). A losing respondent may appeal the ALJ's decision to the full Commission typically consisting of five Commissioners. The full Commission's decision may be appealed to any Court of Appeals that has personal jurisdiction and venue over the defendant. The FTC Act provides for no private right of action.

The FTC also engages in formal and informal rulemaking. Its informal rulemaking often takes the form of FTC Guides or FTC Policy Statements addressing conduct that the FTC considers to be permissible and impermissible. The FTC Guides Concerning Use of Endorsements and Testimonials in Advertising offers a comprehensive review of FTC guidelines with respect to endorsements, testimonials, and reviews. The FTC's Endorsement Guides: What People Are Asking focuses on conduct in social media, blogs, and other internet fora. (a) The Guides in this part represent administrative interpretations of laws enforced by the Federal Trade Commission for the guidance of the public in conducting its affairs in conformity with legal requirements. Specifically, the Guides address the application of section 5 of the FTC Act, 15 U.S.C. 45, to the use of endorsements and testimonials in advertising. The Guides provide the basis for voluntary compliance with the law by advertisers and endorsers. Practices inconsistent with these Guides may result in corrective action by the Commission under section 5 if, after investigation, the Commission has reason to believe that the practices fall within the scope of conduct declared unlawful by the statute. The Guides set forth the general principles that the Commission will use in evaluating endorsements and testimonials, together with examples illustrating the application of those principles. The examples in each section apply the principles of that section to particular factual scenarios but do not address every possible issue that the facts or principles might implicate. Nor do the Guides purport to cover every possible use of endorsements in advertising. [1] Whether a particular endorsement or testimonial is deceptive will depend on the specific factual circumstances of the advertisement at issue.

FTC Guides Concerning Use of Endorsements and Testimonials in

(b) For purposes of this part, an "endorsement" means any advertising, marketing, or promotional message for a product that consumers are likely to believe reflects the opinions, beliefs, findings, or experiences of a party other than the sponsoring advertiser, even if the views expressed by that party are identical to those of the sponsoring advertiser. Verbal statements, tags in social media posts, demonstrations, depictions of the name, signature, likeness or other identifying personal characteristics of an individual, and the name or seal of an organization can be endorsements. The party whose opinions, beliefs, findings, or experience the message appears to reflect will be called the "endorser" and could be or appear to be an individual, group, or institution.

(c) The Commission intends to treat endorsements and testimonials identically in the context of its enforcement of the Federal Trade Commission Act and for purposes of this part. The term endorsements is therefore generally used hereinafter to cover both terms and situations.

(d) For purposes of this part, the term "product" includes any product, service, brand, company, or industry.

(e) For purposes of this part, an "expert" is an individual, group, or institution possessing, as a result of experience, study, or training, knowledge of a particular subject, which knowledge is superior to what ordinary individuals generally acquire.

(f) For purposes of this part, "clear and conspicuous" means that a disclosure is difficult to miss ( i.e., easily noticeable) and easily understandable by ordinary consumers. If a communication's representation necessitating a disclosure is made through visual means, the disclosure should be made in at least the communication's visual portion; if the representation is made through audible means, the disclosure should be made in at least the communication's audible portion; and if the representation is made through both visual and audible means, the disclosure should be made in the communication's visual and audible portions. A disclosure presented simultaneously in both the visual and audible portions of a communication is more likely to be clear and conspicuous. A visual disclosure, by its size, contrast, location, the length of time it appears, and other characteristics, should stand out from any accompanying text or other visual elements so that it is easily noticed, read, and understood. An audible disclosure should be delivered in a volume, speed, and cadence sufficient for ordinary consumers to easily hear and understand it. In any communication using an interactive electronic medium, such as social media or the internet, the disclosure should be unavoidable. The disclosure should not be contradicted or mitigated by, or inconsistent with, anything else in the communication. When an endorsement targets a specific audience, such as older adults, "ordinary consumers" includes members of that group.

(1) Example 1. A film critic's review of a movie is excerpted in an advertisement placed by the film's producer. The critic's review is not an endorsement, but when the excerpt from the review is used in the producer's advertisement, the excerpt becomes an endorsement. Readers would view it as a statement of the critic's own opinions and not those of the producer. If the excerpt alters or quotes from the text of the review in a way that does not fairly reflect its substance, the advertisement would be deceptive because it distorts the endorser's opinion. ( See § 255.1(b)) (2) Example 2. A television commercial depicts two unidentified shoppers in a supermarket buying a laundry detergent. One comments to the other how clean the advertised brand makes the shopper's clothes. The other shopper then replies, "I will try it because I have not been fully satisfied with my own brand." This obviously fictional dramatization would not be an endorsement.

(3) Example 3. In an advertisement for a pain remedy, an announcer unfamiliar to consumers except as a spokesperson for the advertising drug company praises the drug's ability to deliver fast and lasting pain relief. The spokesperson does not purport to speak from personal experience, nor on the basis of their own opinions, but rather in the place of and on behalf of the drug company. The announcer's statements would not be considered an endorsement.

(4) Example 4. A manufacturer of automobile tires hires a well-known professional automobile racing driver to deliver its advertising message in television commercials. In these commercials, the driver speaks of the smooth ride, strength, and long life of the tires. Many consumers are likely to believe this message reflects the driver's personal views, even if the driver does not say so, because consumers recognize the speaker primarily as a racing driver and not merely as a product spokesperson. Accordingly, many consumers would likely believe the driver would not speak for an automotive product without actually believing in the product and having personal knowledge sufficient to form the beliefs expressed. The likely attribution of these beliefs to the driver makes this message an endorsement under the Guides.

(5) Example 5. (i) A television advertisement for a brand of golf balls includes a video of a prominent and well-recognized professional golfer practicing numerous drives off the tee. The video would be an endorsement even though the golfer makes no verbal statement in the advertisement.

(ii) The golfer is also hired to post the video to their social media account. The paid post is an endorsement if viewers can readily identify the golf ball brand, either because it is apparent from the video or because it is tagged or otherwise mentioned in the post.

(6) Example 6. (i) An infomercial for a home fitness system is hosted by a well-known actor. During the infomercial, the actor demonstrates the machine and states, "This is the most effective and easy-to-use home exercise machine that I have ever tried." Even if the actor is reading from a script, the statement would be an endorsement, because consumers are likely to believe it reflects the actor's personal views.

(ii) Assume that, rather than speaking about their experience with or opinion of the machine, the actor says that the machine was designed by exercise physiologists at a leading university, that it isolates each of five major muscle groups, and that it is meant to be used for fifteen minutes a day. After demonstrating various exercises using the machine, the actor finally says how much the machine costs and how to order it. As the actor does not say or do anything during the infomercial that would lead viewers to believe that the actor is expressing their own views about the machine, there is no endorsement.

(7) Example 7. (i) A consumer who regularly purchases a particular brand of dog food decides one day to purchase a new, more expensive brand made by the same manufacturer with their own money. The purchaser posts to their social media account that the change in diet has made their dog's fur noticeably softer and shinier, and that in their opinion, the new dog food definitely is worth the extra money. Because the consumer has no connection to the manufacturer beyond being an ordinary purchaser, their message cannot be attributed to the manufacturer and the post would not be deemed an endorsement under the Guides. The same would be true if the purchaser writes a consumer product review on an independent review website. But, if the consumer submits the review to the review section of the manufacturer's website and the manufacturer chooses to highlight the review on the homepage of its website, then the review as featured is an endorsement even though there is no connection between the consumer and the manufacturer.

(ii) Assume that rather than purchase the dog food with their own money, the consumer receives it for free because the store routinely tracks purchases and the dog food manufacturer arranged for the store to provide a coupon for a free trial bag of its new brand to all purchasers of its existing brand. The manufacturer does not ask coupon recipients for product reviews and recipients likely would not assume that the manufacturer expects them to post reviews. The consumer's post would not be deemed an endorsement under the Guides because this unsolicited review cannot be attributed to the manufacturer.

(iii) Assume now that the consumer joins a marketing program under which participants agree to periodically receive free products from various manufacturers and write reviews of them. If the consumer receives a free bag of the new dog food through this program, their positive review would be considered an endorsement under the Guides because of their connection to the manufacturer through the marketing program.

(iv) Assume that the consumer is the owner of a "dog influencer" (a dog with a social media account and a large number of followers). If the manufacturer sends the consumer coupons for a year's worth of dog food and asks the consumer to feature the brand in their dog's social media feed, any resulting posts that feature the brand would be considered endorsements even though the owner could have chosen not to endorse the product.

(8) Example 8. A college student, who has earned a reputation as an excellent video game player, live streams their game play. The developer of a new video game pays the student to play and live stream its new game. The student plays the game and appears to enjoy it. Even though the college student does not expressly recommend the game, the game play is considered an endorsement because the apparent enjoyment is implicitly a recommendation.

(9) Example 9. (i) An influencer who is paid to endorse a vitamin product in their social media posts discloses their connection to the product's manufacturer only on the profile pages of their social media accounts. The disclosure is not clear and conspicuous because people seeing their paid posts could easily miss the disclosure.

(ii) Assume now that the influencer discloses their connection to the manufacturer but that, in order to see the disclosures, consumers have to click on a link in the posts labeled simply "more." If the endorsement is visible without having to click on the link labeled "more," but the disclosure is not visible without doing so, then the disclosure is not unavoidable and thus is not clear and conspicuous.

(iii) Assume now that the influencer relies solely upon a social media platform's built-in disclosure tool for one of these posts. The disclosure appears in small white text, it is set against the light background of the image that the influencer posted, it competes with unrelated text that the influencer superimposed on the image, and the post appears for only five seconds. The disclosure is easy to miss and thus not clear and conspicuous.

(10) Example 10. A television advertisement promotes a smartphone app that purportedly halts cognitive decline. The ad presents multiple endorsements by older senior citizens who are represented as actual consumers who used the app. The advertisement discloses via both audio and visual means that the persons featured are actors. Because the advertisement is targeted at older consumers, whether the disclosure is clear and conspicuous will be evaluated from the perspective of older consumers, including those with diminished auditory, visual, or cognitive processing abilities. (11) Example 11. (i) A social media advertisement promoting a cholesterol-lowering product features a testimonialist who says by how much their serum cholesterol went down. The claimed reduction greatly exceeds what is typically experienced by users of the product and a disclosure of typical results is required. The marketer has been able to identify from online data collection individuals with high cholesterol levels who speak a particular foreign language and are unable to understand English. It microtargets a foreign-language version of the ad to them, disclosing users' typical results only in English. The adequacy of the disclosure will be evaluated from the perspective of the microtargeted individuals, and the disclosure must be in the same language as the ad.

(ii) Assume now that the ad has a disclosure that is clear and conspicuous when viewed on a computer browser but that it is not clear and conspicuous when the ad is rendered on a smartphone. Because some consumers will view the ad on their smartphones, the disclosure is inadequate.

(12) Example 12. An exterminator purchases fake negative reviews of competing exterminators. A paid or otherwise incentivized negative statement about a competitor's service is not an endorsement, as that term is used in the Guides. Nevertheless, such statements, e.g., a paid negative review of a competing product, can be deceptive in violation of section 5. ( See § 255.2.(e)(4)(v) regarding the purchase of a fake positive review for a product.) Fake positive reviews that are used to promote a product are "endorsements."

(13) Example 13. A motivational speaker buys fake social media followers to impress potential clients. The use by endorsers of fake indicators of social media influence, such as fake social media followers, is not itself an endorsement issue. The Commission notes, however, that it is a deceptive practice for users of social media platforms to purchase or create indicators of social media influence and then use them to misrepresent such influence to potential clients, purchasers, investors, partners, or employees or to anyone else for a commercial purpose. It is also a deceptive practice to sell or distribute such indicators to such users. § 255.1 General considerations.

(a) Endorsements must reflect the honest opinions, findings, beliefs, or experience of the endorser. Furthermore, an endorsement may not convey any express or implied representation that would be deceptive if made directly by the advertiser. ( See § 255.2(a) and (b) regarding substantiation of representations conveyed by consumer endorsements.) (b) An advertisement need not present an endorser's message in the exact words of the endorser unless the advertisement represents that it is presenting the endorser's exact words, such as through the use of quotation marks. However, the endorsement may not be presented out of context or reworded so as to distort in any way the endorser's opinion or experience with the product. An advertiser may use an endorsement of an expert or celebrity only so long as it has good reason to believe that the endorser continues to subscribe to the views presented. An advertiser may satisfy this obligation by securing the endorser's views at reasonable intervals where reasonableness will be determined by such factors as new information about the performance or effectiveness of the product, a material alteration in the product, changes in the performance of competitors' products, and the advertiser's contract commitments.

(c) When the advertisement represents that the endorser uses the endorsed product, the endorser must have been a bona fide user of it at the time the endorsement was given. Additionally, the advertiser may continue to run the advertisement only so long as it has good reason to believe that the endorser remains a bona fide user of the product. ( See paragraph (b) of this section regarding the "good reason to believe" requirement.) (d) Advertisers are subject to liability for misleading or unsubstantiated statements made through endorsements or for failing to disclose unexpected material connections between themselves and their endorsers. ( See § 255.5.) An advertiser may be liable for a deceptive endorsement even when the endorser is not liable. Advertisers should:

(1) Provide guidance to their endorsers on the need to ensure that their statements are not misleading and to disclose unexpected material connections;

(3) Take action sufficient to remedy non-compliance and prevent future noncompliance. While not a safe harbor, good faith and effective guidance, monitoring, and remedial action should reduce the incidence of deceptive claims and reduce an advertiser's odds of facing a Commission enforcement action.

(e) Endorsers may be liable for statements made in the course of their endorsements, such as when an endorser makes a representation that the endorser knows or should know to be deceptive, including when an endorser falsely represents that they personally used a product. Also, an endorser who is not an expert may be liable for misleading or unsubstantiated representations regarding a product's performance or effectiveness, such as when the representations are inconsistent with the endorser's personal experience or were not made or approved by the advertiser and go beyond the scope of the endorser's personal experience. (For the responsibilities of an endorser who is an expert, see § 255.3.) Endorsers may also be liable for failing to disclose unexpected material connections between themselves and an advertiser, such as when an endorser creates and disseminates endorsements without such disclosures.

(f) Advertising agencies, public relations firms, review brokers, reputation management companies, and other similar intermediaries may be liable for their roles in creating or disseminating endorsements containing representations that they know or should know are deceptive. They may also be liable for their roles with respect to endorsements that fail to disclose unexpected material connections, whether by disseminating advertisements without necessary disclosures or by hiring and directing endorsers who fail to make necessary disclosures.

(g) The use of an endorsement with the image or likeness of a person other than the actual endorser is deceptive if it misrepresents a material attribute of the endorser.

(1) Example 1. (i) A building contractor states in an advertisement disseminated by a paint manufacturer, "I use XYZ exterior house paint because of its remarkable quick drying properties and durability." This endorsement must comply with the pertinent requirements of § 255.3. Subsequently, the advertiser reformulates its paint to enable it to cover exterior surfaces with only one coat. Prior to continued use of the contractor's endorsement, the advertiser must contact the contractor in order to determine whether the contractor would continue to use the paint as reformulated and to subscribe to the views presented previously.

(ii) Assume that, before the reformulation, the contractor had posted an endorsement of the paint to their social media account. Even if the contractor would not use or recommend the reformulated paint, there is no obligation for the contractor or the manufacturer to modify or delete a historic post containing the endorsement as long as the date of that post is clear and conspicuous to viewers. If the contractor reposts or the advertiser shares the contractor's original endorsement after the reformulation, consumers would expect that the contractor holds the views expressed in the original post with respect to the reformulated product and the advertiser would need to confirm that with the contractor.

(2) Example 2. In a radio advertisement played during commercial breaks, a well-known DJ talks about how much they enjoy making coffee with a particular coffee maker in the morning. The DJ's comments likely communicate that they regularly use the coffee maker. If, instead, they used it only during a demonstration by its manufacturer, the ad would be deceptive.

(3) Example 3. (i) A dermatologist is a paid advisor to a pharmaceutical company and is asked by the company to post about its products on their professional social media account. The dermatologist posts that the company's newest acne treatment product is "clinically proven" to work. Before giving the endorsement, the dermatologist received a write-up of the clinical study in question, which indicates flaws in the design and conduct of the study that are so serious that they preclude any conclusions about the efficacy of the product. Given their medical expertise, the dermatologist should have recognized the study's flaws and is subject to liability for their false statements made in the advertisement. The advertiser is also liable for the misrepresentation made through the endorsement. ( See § 255.3 regarding the product evaluation that an expert endorser must conduct.) Even if the study was sufficient to establish the product's proven efficacy, the pharmaceutical company and the dermatologist are both potentially liable if the endorser fails to disclose their relationship to the company. ( See § 255.5 regarding the disclosure of unexpected material connections.) (ii) Assume that the expert had asked the pharmaceutical company for the evidence supporting its claims and there were no apparent design or execution flaws in the study shown to the expert, but that the pharmaceutical company had withheld a larger and better controlled, non-published proprietary study of the acne treatment that failed to find any statistically significant improvement in acne. The expert's "clinically proven" to work claim would be deceptive and the company would be liable for the claim, but because the dermatologist did not have a reason to know that the claim was deceptive, the expert would not be liable.

(4) Example 4. A well-known celebrity appears in an infomercial for a hot air roaster that purportedly cooks a chicken perfectly in twenty minutes. During the shooting of the infomercial, the celebrity watches five attempts to cook chickens using the roaster. In each attempt, the chicken is undercooked after twenty minutes and requires forty-five minutes of cooking time. In the commercial, the celebrity places an uncooked chicken in the roaster. The celebrity then takes from a second roaster what appears to be a perfectly cooked chicken, tastes the chicken, and says that if you want perfect chicken every time, in just twenty minutes, this is the product you need. A significant percentage of consumers are likely to believe the statement represents the celebrity's own view and experience even though the celebrity is reading from a script. Because the celebrity knows that their statement is untrue, the endorser is subject to liability. The advertiser is also liable for misrepresentations made through the endorsement.

(5) Example 5. A skin care products advertiser hires an influencer to promote its products on the influencer's social media account. The advertiser requests that the influencer try a new body lotion and post a video review of it. The advertiser does not provide the influencer with any materials stating that the lotion cures skin conditions and the influencer does not ask the advertiser if it does. However, believing that the lotion cleared up their eczema, the influencer says in their review, "This lotion cures eczema. All of my followers suffering from eczema should use it." The influencer, who did not limit their statements to their personal experience using the product and did not have a reasonable basis for their claim that the lotion cures eczema, is subject to liability for the misleading or unsubstantiated representation in the endorsement. If the advertiser lacked adequate substantiation for the implied claims that the lotion cures eczema, it would be liable regardless of the liability of the endorser. The influencer and the advertiser may also be liable if the influencer fails to disclose clearly and conspicuously being paid for the endorsement. ( See § 255.5.) In order to limit its potential liability, the advertiser should provide guidance to its influencers concerning the need to ensure that statements they make are truthful and substantiated and the need to disclose unexpected material connections and take other steps to discourage or prevent noncompliance. The advertiser should also monitor its influencers' compliance and take steps necessary to remove and halt the continued publication of deceptive representations when they are discovered and to ensure the disclosure of unexpected material connections. ( See paragraph (d) of this section and § 255.5.) (6) Example 6. (i) The website for an acne treatment features accurate testimonials of users who say that the product improved their acne quickly and with no side effects. Instead of using images of the actual endorsers, the website accompanies the testimonials with stock photos the advertiser purchased of individuals with near perfect skin. The images misrepresent the improvements to the endorsers' complexions.

(ii) The same website also sells QRS Weight-Loss shakes and features a truthful testimonial from an individual who says, "I lost 50 pounds by just drinking the shakes." Instead of accompanying the testimonial with a picture of the actual endorser, who went from 300 pounds to 250 pounds, the website shows a picture of an individual who appears to weigh about 100 pounds. By suggesting that QRS Weight-Loss shakes caused the endorser to lose one-third of their original body weight (going from 150 pounds to 100 pounds), the image misrepresents the product's effectiveness. Even if it is accompanied by a picture of the actual endorser, the testimonial could still communicate a deceptive typicality claim.

(7) Example 7. A learn-to-read program disseminates a sponsored social media post by a parent saying that the program helped their child learn to read. The picture accompanying the post is not of the endorser and their child. The testimonial is from the parent of a 7-yearold, but the post shows an image of a child who appears to be only 4 years old. By suggesting that the program taught a 4-year-old to read, the image misrepresents the effectiveness of the program. § 255.2 Consumer endorsements.

(a) An advertisement employing endorsements by one or more consumers about the performance of an advertised product will be interpreted as representing that the product is effective for the purpose depicted in the advertisement. Therefore, the advertiser must possess and rely upon adequate substantiation, including, when appropriate, competent and reliable scientific evidence, to support express and implied claims made through endorsements in the same manner the advertiser would be required to do if it had made the representation directly, i.e., without using endorsements. Consumer endorsements themselves are not competent and reliable scientific evidence.

(b) An advertisement containing an endorsement relating the experience of one or more consumers on a central or key attribute of the product will likely be interpreted as representing that the endorser's experience is representative of what consumers will generally achieve with the advertised product in actual, albeit variable, conditions of use. Therefore, an advertiser should possess and rely upon adequate substantiation for this representation. If the advertiser does not have substantiation that the endorser's experience is representative of what consumers will generally achieve, the advertisement should clearly and conspicuously disclose the generally expected performance in the depicted circumstances, and the advertiser must possess and rely on adequate substantiation for that representation. The disclosure of the generally expected performance should be presented in a manner that does not itself misrepresent what consumers can expect. To be effective, such disclosure must alter the net impression of the advertisement so that it is not misleading.

(c) Advertisements presenting endorsements by what are represented, expressly or by implication, to be "actual consumers" should utilize actual consumers in both the audio and video, or clearly and conspicuously disclose that the persons in such advertisements are not actual consumers of the advertised product.

(d) In procuring, suppressing, boosting, organizing, publishing, upvoting, downvoting, reporting, or editing consumer reviews of their products, advertisers should not take actions that have the effect of distorting or otherwise misrepresenting what consumers think of their products, regardless of whether the reviews are considered endorsements under the Guides.

(1) Example 1. (i) A web page for a baldness treatment consists entirely of testimonials from satisfied customers who say that after using the product, they had amazing hair growth and their hair is as thick and strong as it was when they were teenagers. The advertiser must have competent and reliable scientific evidence that its product is effective in producing new hair growth.

(ii) The web page will also likely communicate that the endorsers' experiences are representative of what new users of the product can generally expect. Therefore, even if the advertiser includes a disclaimer such as, "Notice: These testimonials do not prove our product works. You should not expect to have similar results," the ad is likely to be deceptive unless the advertiser has adequate substantiation that new users typically will experience results similar to those experienced by the testimonialists.

(2) Example 2. (i) An advertisement disseminated by a company that sells heat pumps presents endorsements from three individuals who state that after installing the company's heat pump in their homes, their monthly utility bills went down by $100, $125, and $150, respectively. The ad will likely be interpreted as conveying that such savings are representative of what consumers who buy the heat pump can generally expect. The advertiser does not have substantiation for that representation because, in fact, fewer than 20% of purchasers will save $100 or more. A disclosure such as, "Results not typical" or "These testimonials are based on the experiences of a few people and you are not likely to have similar results" is insufficient to prevent this ad from being deceptive because consumers will still interpret the ad as conveying that the specified savings are representative of what consumers can generally expect.

(A) In another context, the Commission tested the communication of advertisements containing testimonials that clearly and prominently disclosed either "Results not typical" or the stronger "These testimonials are based on the experiences of a few people and you are not likely to have similar results." Neither disclosure adequately reduced the communication that the experiences depicted are generally representative. Based upon this research, the Commission believes that similar disclaimers regarding the limited applicability of an endorser's experience to what consumers may generally expect to achieve are unlikely to be effective. Although the Commission would have the burden of proof in a law enforcement action, the Commission notes that an advertiser possessing reliable empirical testing demonstrating that the net impression of its advertisement with such a disclaimer is nondeceptive will avoid the risk of the initiation of such an action in the first instance.

(B) The advertiser should clearly and conspicuously disclose the generally expected savings and have adequate substantiation that homeowners can achieve those results. There are multiple ways that such a disclosure could be phrased, e.g., "the average homeowner saves $35 per month," "the typical family saves $50 per month during cold months and $20 per month in warm months," or "most families save 10% on their utility bills."

(ii) Disclosures like those in this Example 2, specifically paragraph (e)(2)(i)(B) of this section, could still be misleading, however, if they only apply to limited circumstances that are not described in the advertisement. For example, if the advertisement does not limit its claims by geography, it would be misleading if the disclosure of expected results in a nationally disseminated advertisement was based on the experiences of customers in a southern climate and the experiences of those customers was much better than could be expected by heat pump users in a northern climate.

(3) Example 3. An advertisement for a cholesterol-lowering product features individuals who claim that their serum cholesterol went down by 120 points and 130 points, respectively; the ad does not mention the endorsers having made any lifestyle changes. A well-conducted clinical study shows that the product reduces the cholesterol levels of individuals with elevated cholesterol by an average of 15% and the advertisement clearly and conspicuously discloses this fact. Despite the presence of this disclosure, the advertisement would be deceptive if the advertiser does not have competent and reliable scientific evidence that the product can produce the specific results claimed by the endorsers ( i.e., a 130-point drop in serum cholesterol without any lifestyle changes).

(4) Example 4. (i) An advertisement for a weight-loss product features an endorsement by a formerly obese person who says, "Every day, I drank 2 QRS Weight-Loss shakes, ate only raw vegetables, and exercised vigorously for six hours at the gym. By the end of six months, I had gone from 250 pounds to 140 pounds." The advertisement accurately describes the endorser's experience, and such a result is within the range that would be generally experienced by an extremely overweight individual who consumed QRS Weight-Loss shakes, only ate raw vegetables, and exercised as the endorser did. Because the endorser clearly describes the limited and truly exceptional circumstances under which they achieved the claimed results, the ad is not likely to convey that consumers who weigh substantially less or use QRS Weight-Loss under less extreme circumstances will lose 110 pounds in six months. If the advertisement simply says that the endorser lost 110 pounds in six months using QRS Weight-Loss together with diet and exercise, however, this description would not adequately alert consumers to the truly remarkable circumstances leading to the endorser's weight loss. The advertiser must have substantiation, however, for any performance claims conveyed by the endorsement ( e.g., that QRS Weight-Loss is an effective weight-loss product and that the endorser's weight loss was not caused solely by their dietary restrictions and exercise regimen).

(ii) If, in the alternative, the advertisement simply features "before" and "after" pictures of a woman who says, "I lost 50 pounds in 6 months with QRS Weight-Loss," the ad is likely to convey that the endorser's experience is representative of what consumers will generally achieve. Therefore, if consumers cannot generally expect to achieve such results, the ad would be deceptive. Instead, the ad should clearly and conspicuously disclose what they can expect to lose in the depicted circumstances ( e.g., "women who use QRS Weight-Loss for six months typically lose 15 pounds"). A disclosure such as "Average weight loss is 1-2 pounds per week" is inadequate because it does not effectively communicate the expected weight loss over six months. Furthermore, that disclosure likely implies that weight loss continues at that rate over six months, which would not be true if, for example, the average weekly weight loss over six months is .57 pounds.

(iii) If the ad features the same pictures but the testimonialist simply says, "I lost 50 pounds with QRS Weight-Loss," and QRS Weight-Loss users generally do not lose 50 pounds, the ad should disclose what results they do generally achieve ( e.g., "women who use QRS Weight-Loss lose 15 pounds on average"). A disclosure such as "most women who use QRS Weight-Loss lose between 10 and 50 pounds" is inadequate because the range specified is so broad that it does not sufficiently communicate what users can generally expect.

(iv) Assume that a QRS Weight-Loss advertisement contains a disclosure of generally expected results that is based upon the mean weight loss of users. If the mean is substantially affected by outliers, then the disclosure would be misleading. For example, if the mean weight loss is 15 pounds, but the median weight loss is 8 pounds, it would be misleading to say that the average weight loss was 15 pounds. In such cases, the disclosure's use of median weight loss instead could help avoid deception, e.g., "most users lose 8 pounds" or "the typical user loses 8 pounds."

(v) Assume that QRS Weight-Loss's manufacturer procured a fake consumer review, reading "I lost 50 pounds with QRS Weight-Loss," and had it published on a third-party review website. This endorsement is deceptive because it was not written by a bona fide user of the product ( see § 255.1(c)) and because it does not reflect the honest opinions, findings, beliefs, or experience of the endorser ( see § 255.1(a)). Moreover, the manufacturer would need competent and reliable scientific evidence that QRS Weight-Loss is capable of causing 50pound weight loss. (vii) Assume that QRS Weight-Loss's manufacturer forwards reviews for its product to a third-party review website. If it forwards only favorable reviews or omits unfavorable reviews, it is engaging in a misleading practice.

(5) Example 5. An advertisement presents the results of a poll of consumers who have used the advertiser's cake mixes as well as their own recipes. The results purport to show that the majority believed that their families could not tell the difference between the advertised mix and their own cakes baked from scratch. Many of the consumers are pictured in the advertisement along with relevant, quoted portions of their statements endorsing the product. This use of the results of a poll or survey of consumers represents that this is the typical result that ordinary consumers can expect from the advertiser's cake mix. ( 6) Example 6. An advertisement appears to show a "hidden camera" situation in a crowded cafeteria at breakfast time. A spokesperson for the advertiser asks a series of patrons of the cafeteria for their spontaneous, honest opinions of the advertiser's recently introduced breakfast cereal. Even though none of the patrons is specifically identified during the advertisement, the net impression conveyed to consumers may well be that these are actual customers. If actors have been employed, this fact should be clearly and conspicuously disclosed.

(7) Example 7. (i) An advertisement for a recently released motion picture shows three individuals coming out of a theater, each of whom gives a positive statement about the movie. These individuals are actual consumers expressing their personal views about the movie. The advertiser does not need to have substantiation that their views are representative of the opinions that most consumers will have about the movie. Because the consumers' statements would be understood to be the subjective opinions of only three people, this advertisement is not likely to convey a typicality message.

(ii) If the motion picture studio had approached these individuals outside the theater and offered them free tickets if they would talk about the movie on camera afterwards or post about it on social media, that arrangement should be clearly and conspicuously disclosed. ( See § 255.5.) (8) Example 8. (i) A camping goods retailer's website has various product pages. Each product page provides consumers with the opportunity to review the product and rate it on a five-star scale. Each such page displays the product's average star rating and a breakdown of the number of reviews with each star rating, followed by individual consumers' reviews and ratings. As such, the website is representing that it is providing an accurate reflection of the views of the purchasers who submitted product reviews to the website. If the retailer chose to suppress or otherwise not publish any reviews with fewer than four stars or reviews that contain negative sentiments, the product pages would be misleading as to purchasers' actual opinions of the products.

(ii) If the retailer chose not to post reviews containing profanity, that would not be unfair or deceptive even if reviews containing profanity tend to be negative reviews. However, it would be misleading if the retailer blocked negative reviews containing profanity, but posted positive reviews containing profanity. It would be acceptable for the retailer to have a policy against posting reviews unrelated to the product at issue or related services, for example reviews complaining about the owner's policy positions. But it would be misleading if the retailer chose to filter reviews based on other factors that are only a pretext for filtering them based on negativity. Sellers are not required to display customer reviews that contain unlawful, harassing, abusive, obscene, vulgar, or sexually explicit content; the personal information or likeness of another person; content that is inappropriate with respect to race, gender, sexuality, or ethnicity; or reviews that the seller reasonably believes are fake, so long as the criteria for withholding reviews are applied uniformly to all reviews submitted. Neither are sellers required to display reviews that are unrelated to their products or services. A particular seller's customer service, delivery, returns, and exchanges are related to its products and services.

(iii) Assume now that each product page starts with a glowing five-star review that is labeled as "the most helpful review." Labeling the review as the most helpful suggests it was voted most helpful by consumers visiting the website. If the initial review on each such page was selected by the retailer and was not selected as the most helpful review by other consumers, labeling it as the most helpful would be deceptive.

(9) Example 9. A manufacturer offers to pay genuine purchasers $20 each to write positive reviews of its products on third-party review websites. Such reviews are deceptive even if the payment is disclosed because their positive nature is required by, rather than being merely influenced by, the payment. If, however, the manufacturer did not require the reviews to be positive and the reviewers understood that there were no negative consequences from writing negative reviews, a clear and conspicuous disclosure of the material connection would be appropriate. ( See Example 6). (10) Example 10. (i) In an attempt to coerce them to delete their reviews, a manufacturer threatens consumers who post negative reviews of its products to third-party review websites, with physical threats, with the disclosure of embarrassing information, with baseless lawsuits (such as actions for defamation that challenge truthful speech or matters of opinion), or with lawsuits it actually does not intend to file. Such threats amount to an unfair or deceptive practice because other consumers would likely be deprived of information relevant to their decision to purchase or use the products, or be misled as to purchasers' actual opinions of the product. [2] (ii) Assume now that one of the third-party review websites has a reporting mechanism that allows businesses to flag suspected fake reviews. The manufacturer routinely flags negative reviews of its products as fake without a reasonable basis for believing that they actually are fake, resulting in truthful reviews being removed from the website. This misuse of the reporting option is an unfair or deceptive practice. (11) Example 11. A marketer contacts recent online, mail-order, and in-store purchasers of its products and asks them to provide feedback to the marketer. The marketer then invites purchasers who give very positive feedback to post online reviews of the products on thirdparty websites. Less pleased and unhappy purchasers are simply thanked for their feedback. Such a practice may be an unfair or deceptive practice if it results in the posted reviews being substantially more positive than if the marketer had not engaged in the practice. If, in the alternative, the marketer had simply invited all recent purchasers to provide feedback on third-party websites, the solicitation would not have been unfair or deceptive, even if it had expressed its hope for positive reviews. § 255.3 Expert endorsements.

(a) Whenever an advertisement represents, expressly or by implication, that the endorser is an expert with respect to the endorsement message, then the endorser's qualifications must in fact give the endorser the expertise that the endorser is represented as possessing with respect to the endorsement.

(b) Although an expert may, in endorsing a product, take into account factors not within the endorser's expertise (such as taste or price), the endorsement must be supported by an actual exercise of the expertise that the expert is represented as possessing in evaluating product features or characteristics which are relevant to an ordinary consumer's use of or experience with the product. This evaluation must have included an examination or testing of the product at least as extensive as someone with the same degree of represented expertise would normally need to conduct in order to support the conclusions presented in the endorsement. To the extent that the advertisement implies that the endorsement was based upon a comparison to another product or other products, such comparison must have been included in the expert's evaluation; and as a result of such comparison, the expert must have concluded that, with respect to those features on which the endorser is represented to be an expert and which are relevant and available to an ordinary consumer, the endorsed product is at least equal overall to the competitors' products. Moreover, where the net impression created by the endorsement is that the advertised product is superior to other products with respect to any such feature or features, then the expert must in fact have found such superiority. ( See § 255.1(e) regarding the liability of endorsers.) (c) Examples:

(1) Example 1. An endorsement of a particular automobile by one described as an "engineer" implies that the endorser's professional training and experience are such that the endorser is well acquainted with the design and performance of automobiles. If the endorser's field is, for example, chemical engineering, the endorsement would be deceptive.

(2) Example 2. An endorser of a hearing aid is simply referred to as a doctor during the course of an advertisement. The ad likely implies that the endorser has expertise in the area of hearing, as would be the case if the endorser is a medical doctor with substantial experience in audiology or a non-medical doctor with a Ph.D. or Au.D. in audiology. A doctor without substantial experience in the area of hearing might be able to endorse the product if the advertisement clearly and conspicuously discloses the nature and limits of the endorser's expertise.

(3) Example 3. A manufacturer of automobile parts advertises that its products are approved by the "American Institute of Science." From its name, consumers would infer that the "American Institute of Science" is a bona fide independent testing organization with expertise in judging automobile parts and that, as such, it would not approve any automobile part without first testing its performance by means of valid scientific methods. If the American Institute of Science is not such a bona fide independent testing organization ( e.g., if it was established and operated by an automotive parts manufacturer), the endorsement would be deceptive. Even if the American Institute of Science is an independent bona fide expert testing organization, the endorsement may nevertheless be deceptive unless the Institute has conducted valid scientific tests of the advertised products and the test results support the endorsement message.

(4) Example 4. A manufacturer of a non-prescription drug product represents that its product has been selected over competing products by a large metropolitan hospital. The hospital has selected the product because the manufacturer, unlike its competitors, has packaged each dose of the product separately. This package form is not generally available to the public. Under the circumstances, the endorsement would be deceptive because the basis for the hospital's choice-convenience of packaging-is neither relevant nor available to consumers, and the basis for the hospital's decision is not disclosed to consumers.

(5) Example 5. A person who is identified as the president of a commercial "home cleaning service" states in a television advertisement for a particular brand of cleanser that the service uses that brand instead of its leading competitors because of its performance. Because cleaning services extensively use cleansers in the course of their business, the ad likely conveys that the president has knowledge superior to that of ordinary consumers. Accordingly, the president's statement will be deemed to be an expert endorsement. The service must, of course, actually use the endorsed cleanser. In addition, because the advertisement implies that the cleaning service has experience with a reasonable number of leading competitors' brands available to consumers, the service must, in fact, have such experience, and have determined, based on its expertise, that the endorsed product's cleaning ability is at least equal (or superior, if such is the net impression conveyed by the advertisement) to that of the leading competitors' products available to consumers. Because in this example the cleaning service's president makes no mention that the endorsed cleanser was "chosen," "selected," or otherwise evaluated in side-by-side comparisons against its competitors, it is sufficient if the service has relied solely upon its accumulated experience in evaluating cleansers without having performed side-by-side or scientific comparisons.

(6) Example 6. A medical doctor states in an advertisement for a drug that the product will safely allow consumers to lower their cholesterol by 50 points. If the materials the doctor reviewed were merely letters from satisfied consumers or the results of a rodent study, the endorsement would likely be deceptive because those materials are not the type of scientific evidence that others with the represented degree of expertise would consider adequate to support this conclusion about the product's safety and efficacy. Under such circumstances, both the advertiser and the doctor would be liable for the doctor's misleading representation. ( See § 255.1(d) and (e)) § 255.4 Endorsements by organizations.

(a) Endorsements by organizations, especially expert ones, are viewed as representing the judgment of a group whose collective experience exceeds that of any individual member, and whose judgments are generally free of the sort of subjective factors that vary from individual to individual. Therefore, an organization's endorsement must be reached by a process sufficient to ensure that the endorsement fairly reflects the collective judgment of the organization. Moreover, if an organization is represented as being expert, then, in conjunction with a proper exercise of its expertise in evaluating the product under § 255.3, it must utilize an expert or experts recognized as such by the organization or standards previously adopted by the organization and suitable for judging the relevant merits of such products. ( See (1) Example 1. A mattress manufacturer advertises that its product is endorsed by a chiropractic association. Because the association would be regarded as expert with respect to judging mattresses, its endorsement must be supported by an evaluation by an expert or experts recognized as such by the organization, or by compliance with standards previously adopted by the organization and aimed at measuring the performance of mattresses in general and not designed with the unique features of the advertised mattress in mind.

(2) Example 2. A trampoline manufacturer sets up and operates what appears to be a trampoline review website operated by an independent trampoline institute. The site reviews the manufacturer's trampolines, as well as those of competing manufacturers. Because the website falsely appears to be independent, it is deceptive. ( See § 255.5.) (3) Example 3. (i) A third-party company operates a wireless headphone review website that provides rankings of different manufacturers' wireless headphones from most recommended to least recommended. The website operator accepts money from manufacturers in exchange for higher rankings of their products. Regardless of whether the website makes express claims of objectivity or independence, such paid-for rankings are deceptive and the website operator is liable for the deception. A headphone manufacturer who pays for a higher ranking on the website may also be held liable for the deception. A disclosure that the website operator receives payments from headphone manufacturers would be inadequate because the payments actually determine the headphones' relative rankings. If, however, the review website does not take payments for higher rankings, but receives payments from some of the headphone manufacturers, such as for affiliate link referrals, it should clearly and conspicuously disclose that it receives such payments. ( See § 255.5(k)( 11))

(ii) Assume that the headphone review website operator uses a ranking methodology that results in higher rankings for products whose sellers have a relationship to the operator because of those relationships. The use of such a methodology is also misleading. § 255.5 Disclosure of material connections.

(a) When there exists a connection between the endorser and the seller of the advertised product that might materially affect the weight or credibility of the endorsement, and that connection is not reasonably expected by the audience, such connection must be disclosed clearly and conspicuously. Material connections can include a business, family, or personal relationship. They can include monetary payment or the provision of free or discounted products (including products unrelated to the endorsed product) to an endorser, regardless of whether the advertiser requires an endorsement in return. Material connections can also include other benefits to the endorser, such as early access to a product or the possibility of being paid, of winning a prize, or of appearing on television or in other media promotions. Some connections may be immaterial because they are too insignificant to affect the weight or credibility given to endorsements. A material connection needs to be disclosed when a significant minority of the audience for an endorsement does not understand or expect the connection. A disclosure of a material connection does not require the complete details of the connection, but it must clearly communicate the nature of the connection sufficiently for consumers to evaluate its significance.

(1) Example 1. A drug company commissions research on its product by an outside organization. The drug company determines the overall subject of the research ( e.g., to test the efficacy of a newly developed product) and pays a substantial share of the expenses of the research project, but the research organization determines the protocol for the study and is responsible for conducting it. A subsequent advertisement by the drug company mentions the research results as the "findings" of that research organization. Although the design and conduct of the research project are controlled by the outside research organization, the weight consumers place on the reported results could be materially affected by knowing that the advertiser had funded the project. Therefore, the advertiser's payment of expenses to the research organization should be disclosed in the advertisement.

(2) Example 2. A film star endorses a particular food product in a television commercial. The endorsement regards only points of taste and individual preference. This endorsement must, of course, comply with § 255.1; but, regardless of whether the star's compensation for the commercial is a $1 million cash payment or a royalty for each product sold by the advertiser during the next year, no disclosure is required because such payments likely are ordinarily expected by viewers.

(3) Example 3. (i) During an appearance by a well-known professional tennis player on a television talk show, the host comments that the past few months have been the best of the player's career and during this time the player has risen to their highest level ever in the rankings. The player responds by attributing that improvement to seeing the ball better ever since having laser vision correction surgery at a specific identified clinic. The athlete continues talking about the ease of the procedure, the kindness of the clinic's doctors, the short recovery time, and now being able to engage in a variety of activities without glasses, including driving at night. The athlete does not disclose having a contractual relationship with the clinic that includes payment for speaking publicly about the surgery. Consumers might not realize that a celebrity discussing a medical procedure in a television interview has been paid for doing so, and knowledge of such payments would likely affect the weight or credibility consumers give to the celebrity's endorsement. Without a clear and conspicuous disclosure during the interview that the athlete has been engaged as a spokesperson for the clinic, this endorsement is likely to be deceptive. A disclosure during the show's closing credits would not be clear and conspicuous. Furthermore, if consumers are likely to take away from the interview that the athlete's experience is typical of those who undergo the same procedure at the clinic, the advertiser must have substantiation for that claim.

(ii) Assume that the tennis player instead touts the results of the surgery-mentioning the clinic by name-in the player's social media post. Consumers might not realize that the athlete is a paid endorser, and because that information might affect the weight consumers give to the tennis player's endorsement, the relationship with the clinic should be disclosedregardless of whether the clinic paid the athlete for that particular post. It should be disclosed even if the relationship involves no payments but only the tennis player getting the laser correction surgery for free or at a significantly reduced cost.

(iii)(A) Assume that the clinic reposts the tennis player's social media post to its own social media account and that the player's original post either-(1) Did not have a clear and conspicuous disclosure, or

(2) Had such a disclosure that does not appear clearly and conspicuously in the repost.

(B) Given the nature of the endorsement ( i.e., a personally created statement from the tennis player's social media account), the viewing audience of the clinic's social media account would likely reasonably not expect the tennis player to be compensated. The clinic should clearly and conspicuously disclose its relationship to the athlete in its repost.

(iv) Assume that during the appearance on the television talk show, the tennis player is wearing clothes bearing the insignia of an athletic wear company with which the athlete also has an endorsement contract. Although this contract requires wearing the company's clothes not only on the court but also in public appearances, when possible, the athlete does not mention the clothes or the company during the appearance on the show. No disclosure is required because no representation is being made about the clothes in this context.

(4) Example 4. (i) A television ad for an anti-snoring product features a physician who says, "I have seen dozens of products come on the market over the years, and in my opinion, this is the best ever." Consumers would expect the physician to be reasonably compensated for appearing in the ad. Consumers are unlikely, however, to expect that an expert endorser like the physician receives a percentage of gross product sales or owns part of the company, and either of these facts would likely materially affect the credibility that consumers attach to the endorsement. Accordingly, the advertisement should clearly and conspicuously disclose such a connection between the company and the physician.

(ii) Assume that the physician is instead paid to post about the product on social media. In that context, consumers might not expect that the physician was compensated and might be more likely than in a television ad to expect that the physician is expressing an independent, professional opinion. Accordingly, the post should clearly and conspicuously disclose the doctor's connection with the company.

(5) Example 5. (i) In a television advertisement, an actual patron of a restaurant, who is neither known to the public nor presented as an expert, is shown seated at the counter. The diner is asked for a "spontaneous" opinion of a new food product served in the restaurant. Assume, first, that the advertiser had posted a sign on the door of the restaurant informing all who entered that day that patrons would be interviewed by the advertiser as part of its television promotion of its new "meat-alternative" burger. A patron seeing such a sign might be more inclined to give a positive review of that item in order to appear on television. The advertisement should thus clearly and conspicuously inform viewers that the patrons on screen knew in advance that they might appear in a television advertisement because that information may materially affect the weight or credibility of the endorsement.

(ii) Assume, in the alternative, that the advertiser had not posted the sign and that patrons asked for their opinions about the burger did not know or have reason to believe until after their response that they were being recorded for use in an advertisement. No disclosure is required here, even if patrons were also told, after the interview, that they would be paid for allowing the use of their opinions in advertising.

(6) Example 6. (i) An infomercial producer wants to include consumer endorsements in an infomercial for an automotive additive product not yet on the market. The producer's staff selects several people who work as "extras" in commercials and asks them to use the product and report back, telling them that they will be paid a small amount if selected to endorse the product in the infomercial. Viewers would not expect that these "consumer endorsers" are actors who used the product in the hope of appearing in the commercial and receiving compensation. Because the advertisement fails to disclose these facts, it is deceptive.

(ii) Assume that the additive's marketer wants to have more consumer reviews appear on its retail website, which sells a variety of its automotive products. The marketer recruits ordinary consumers to get a free product ( e.g., a set of jumper cables or a portable air compressor for car tires) and a $30 payment in exchange for posting a consumer review of the free product on the marketer's website. The marketer makes clear and the reviewers understand that they are free to write negative reviews and that there are no negative consequences of doing so. Any resulting review that fails to clearly and conspicuously disclose the incentives provided to that reviewer is likely deceptive. When the resulting reviews must be positive or reviewers believe they might face negative consequences from posting negative reviews, a disclosure would be insufficient. ( See § § 255.2(d) and (e)(9).) Even if adequate disclosures appear in each incentivized review, the practice could still be deceptive if the solicited reviews contain star ratings that are included in an average star rating for the product and including the incentivized reviews materially increases that average star rating. If such a material increase occurs, the marketer likely would need to provide a clear and conspicuous disclosure to people who see the average star rating.

(7) Example 7. A woodworking influencer posts on-demand videos of various projects. A tool manufacturer sends the influencer an expensive full-size lathe in the hope that the influencer would post about it. The woodworker uses the lathe for several products and comments favorably about it in videos. If a significant minority of viewers are likely unaware that the influencer received the lathe free of charge, the woodworker should clearly and conspicuously disclose receiving it for free, a fact that could affect the credibility that viewers attach to the endorsements. The manufacturer should advise the woodworker at the time it provides the lathe that this connection should be disclosed, and it should have reasonable procedures in place to monitor the influencer's postings for compliance and follow those procedures. ( See § 255.1(d).) (8) Example 8. An online community has a section dedicated to discussions of robotic products. Community members ask and answer questions and otherwise exchange information and opinions about robotic products and developments. Unbeknownst to this community, an employee of a leading home robot manufacturer has been posting messages on the discussion board promoting the manufacturer's new product. Knowledge of this poster's employment likely would affect the weight or credibility of the endorsements. Therefore, the poster should clearly and conspicuously disclose their relationship to the manufacturer. To limit its own liability for such posts, the employer should engage in appropriate training of employees. To the extent that the employer has directed such endorsements or otherwise has reason to know about them, it should also be monitoring them and taking other steps to ensure compliance. ( See § 255.1(d).) The disclosure requirements in this example would apply equally to employees posting their own reviews of the product on retail websites or review platforms.

(9) Example 9. A college student signs up to be part of a program in which points are awarded each time a participant posts on social media about a particular advertiser's products. Participants can then exchange their points for prizes, such as concert tickets or electronics. These incentives would materially affect the weight or credibility of the college student's endorsements. They should be clearly and conspicuously disclosed, and the advertiser should take steps to ensure that these disclosures are being provided. (10) Example 10. Great Paper Company sells photocopy paper with packaging that has a seal of approval from the No Chlorine Products Association, a non-profit third-party association. Great Paper Company paid the No Chlorine Products Association a reasonable fee for the evaluation of its product and its manufacturing process. Consumers would reasonably expect that marketers have to pay for this kind of certification. Therefore, there is no unexpected material connection between the company and the association, and the use of the seal without disclosure of the fee paid to the association would not be deceptive. (11) Example 11. A coffee lover creates a blog that reviews coffee makers. The blogger writes the content independently of the marketers of the coffee makers but includes affiliate links to websites on which consumers can buy these products from their marketers.

Whenever a consumer clicks on such a link and buys the product, the blogger receives a portion of the sale. Because knowledge of this compensation could affect the weight or credibility site visitors give to the blogger's reviews, the reviews should clearly and conspicuously disclose the compensation.

(12) Example 12. (i) Near the beginning of a podcast, the host reads what is obviously a commercial for a product. Even without a statement identifying the advertiser as a sponsor, listeners would likely still expect that the podcaster was compensated, so there is no need for a disclosure of payment for the commercial. Depending upon the language of the commercial, however, the audience may believe that the host is expressing their own views in the commercial, in which case the host would need to hold the views expressed. ( See § 255.0(b).)

(ii) Assume that the host also mentions the product in a social media post. The fact that the host did not have to make a disclosure in the podcast has no bearing on whether there has to be a disclosure in the social media post.

(13) Example 13. An app developer gives a consumer a game app to review. The consumer clearly and conspicuously discloses in the review that they were given the app, which normally costs 99 cents, for free. That disclosure suggests that the consumer did not receive anything else for the review. If the app developer also gave the consumer $50 for the review, the mere disclosure that the app was free would be inadequate. ( 14) Example 14. Speed Ways, an internet Service Provider, advertises that it has the "Fastest ISP Service" as determined by the "Data Speed Testing Company." If Speed Ways commissioned and paid for the analysis of its and competing services, it should clearly and conspicuously disclose its relationship to the testing company because the relationship would likely be material to consumers in evaluating the claim. If the "Data Speed Testing Company" is not a bona fide independent testing organization with expertise in judging ISP speeds or it did not conduct valid tests that supported the endorsement message, the endorsement would also be deceptive. ( See § 255.3(c)(3)) § 255.6 Endorsements directed to children.

Endorsements in advertisements addressed to children may be of special concern because of the character of the audience. Practices that would not ordinarily be questioned in advertisements addressed to adults might be questioned in such cases.

The following is an example of a complaint issued by the FTC, this one in connection with a social media "product bomb" campaign launched by the department store Lord & Taylor. Excerpts from the exhibits referenced in the complaint appear after the text of the complaint. At the conclusion of the matter, Lord & Taylor agreed in a consent order in essence to follow the FTC's rules in the future. It received no other penalties. The FTC did not apparently contact the influencers cited in the complaint. Taylor-branded blog posts, photos, video uploads, native advertising editorials in online fashion magazines, and use of a team of fashion influencers recruited for their fashion style and extensive base of followers on social media platforms, all focused on a single article of clothing, the Design Lab Paisley Asymmetrical Dress.

Lord & Taylor gifted the Paisley Asymmetrical Dress to 50 select fashion influencers who were paid, in amounts ranging from $1,000 to $4,000, to post on the social media platform Instagram one photo of themselves wearing the Design Lab dress during a specified timeframe during the weekend of March 27-28, 2015. While the influencers were given the freedom to style the dress in any way they saw fit, Lord & Taylor contractually obligated them to exclusively mention the company using the "@lordandtaylor" Instagram user designation and the campaign hashtag "#DesignLab" in the photo caption.

The influencers also were required to tag their photos of the dress using the "@lordandtaylor" Instagram designation.

6. Although Lord & Taylor's Design Lab influencer contracts detailed the manner in which Respondent was to be mentioned in each Instagram posting, the contracts did not require the influencers to disclose in their postings that Respondent had compensated them, nor did Respondent otherwise obligate the influencers to disclose that they had been compensated.

The right of publicity protects a person's identity against unauthorized commercial exploitation. See JENNIFER E. ROTHMAN, THE RIGHT OF PUBLICITY: PRIVACY REIMAGINED FOR A PUBLIC WORLD (2022). See also J. THOMAS MCCARTHY, THE RIGHTS OF PUBLICITY AND PRIVACY § 1:3 (2d ed. Apr. 2014) (defining the right of publicity as "the inherent right of every human being to control the commercial use of his or her identity"). There is no federal right of publicity, though as we will see below, Lanham Act § 43(a), 15 U.S.C. § 1125(a), may form the basis for a cause of action akin to one that protects publicity rights. Right of publicity claims are typically pursued under state common law or state statutory law. Thirty-three of the fifty states provide some form of right of publicity protection,foot_16 either through common law protection, state statutory protection, or both.

Right of Publicity Law by State (as of May 2025)

Because of their importance to the entertainment and media industries, and because their differences are typical of the differences among the laws of the many states, California and New York's schemes of publicity rights protection are detailed below.

But before delving into the specifics of the right of publicity, it may be worthwhile to ask: why should we protect a person's identity from unauthorized commercial exploitation? This question is important because the answer we give may guide how we apply the doctrine and what exceptions we allow to publicity rights. Borrowing from trademark law, should we do so simply to prevent false endorsements that may mislead consumers as to who is actually endorsing a product? See generally Stacey L. Dogan & Mark A. Lemley, What the Right of Publicity Can Learn from Trademark Law, 58 STAN. L. REV. 1161REV. (2006)). Or are there further, independent justifications? Some commentators have proposed moral or ethical rationales for the right of publicity, based on an individual's human right to privacy or on an individual's right to autonomous that a sportsperson opposed to alcohol should not have to see their identity used to promote alcoholic beverages. See e.g., Mark McKenna, The Right of Publicity and Autonomous Self-Definition, 67 U. PITT. L. REV. 225 (2005); but see O 'Brien v. Pabst Sales Co., 124 F.2d 167 (5th Cir. 1941) (denying football player Davy O'Brien's privacy-based right of publicity claim against a beer producer). Others have proposed a "Lockean" justification for the right of publicity, in that the unauthorized exploitation of someone's identity constitutes a misappropriation of the fruits of the labor of whoever created that identity. See Michael Madow, Private Ownership of Public Image, 81 CAL. L. REV. 127 (1993) (discussing but not endorsing this view). Commentators have also proposed economic justifications for the right of publicity, based on the proposition that the right of publicity provides an economic incentive to celebrities to do more and better of whatever it is that makes them celebrities, or that the right of publicity prevents "congestion externalities," i.e., the dilution of the distinctiveness of a celebrity's identity that might occur if that identity is associated with too many products or services. See WILLIAM M. LANDES & RICHARD A. POSNER, THE ECONOMIC STRUCTURE OF INTELLECTUAL PROPERTY LAW 222-228 (2003). (Can antidilution law be understood as essentially a right of publicity scheme of protection for brand names?) Which of these rationales for the right of publicity strikes you as the most or least persuasive?

One other initial question: must a person be a celebrity to qualify for the right of publicity? The answer is that it depends on state law. Most states that recognize a right of publicity do not require that the plaintiff be a celebrity or have a commercially-valuable identity. See, e.g,. Onassis v. Christian Dior-New York, Inc., 472 N.Y.S.2d 254, 260 (Sup 1984) ("The principle to be distilled from a study of the statute and of the cases construing it is that all persons, of whatever station in life, from the relatively unknown to the world famous, are to be secured against rapacious commercial exploitation."); Fraley v. Facebook, 830 F.Supp. 2d 785, 807-08 (N.D. Cal. 2011) (declining to endorse a heightened pleading standard for non-celebrities asserting a misappropriation cause of action under California Civil Code § 3344); id. at 807 ("California courts have clearly held that 'the statutory right of publicity exists for celebrity and non-celebrity plaintiffs alike.'" (citing KNB Enterprises v. Matthews, 78 Cal. App. 4th 362, 373 n. 12 (2000)). For an example of a state statute that probably requires a showing that the plaintiff's identity have some preexisting commercial value, see Utah Code § 45-3-1 et seq. See also Cox v. Hatch, 761 P.2d 556, 564 (Utah 1988) ("[T]he complaint fails because it must allege that the plaintiffs' names or likenesses have some 'intrinsic value' that was used or appropriated for the defendants' benefit." (citations omitted)); id. at 566 (reasoning that "[f]or all practical purposes, the plaintiffs' pictures were wholly fungible with those of any other persons" in plaintiffs' position).

New York and California law offer typical examples of the elements that the plaintiff must prove to prevail on a right of publicity cause of action. Under New York statutory law, "[t]he elements of a cause of action for violation of the statutory right to privacy are: (1) the use of a person's name, portrait, picture or voice (2) within the State of New York (3) for advertising purposes or the purposes of trade, (4) without written consent. " Nussenzweig v. diCorcia, 38 A.D.3d 339, 346 n. 4 (2007). In California,

[t]o state a common law cause of action for misappropriation, a plaintiff must plead sufficient facts to establish (1) the defendant's use of the plaintiff's identity;

(2) the appropriation of plaintiff's name or likeness to defendant's advantage, commercially or otherwise; (3) lack of consent; and (4) resulting injury. To state a statutory cause of action under § 3344, a plaintiff must plead all the elements of the common law action and must also prove ( 5) a knowing use by the defendant, and ( 6) a direct connection between the alleged use and the commercial purpose.

New York's right of publicity statute is generally understood to be based on the individual's right to privacy. Yet in 2020, New York added N.Y. Civil Rights Law § 50-f (effective May 29, 2021) that recognizes post-mortem rights of publicity for "deceased performers" and "deceased personalities." The main provision of New York's right of publicity law, N.Y. Civil Rights Law § 51, is excerpted below.

California's statute, parts of which are also excerpted below, is generally understood to conceive of the right of publicity as a property right, which is descendible for 70 years after the death of the individual. CAL. CIV. CODE. § 3344.1(g). On the assignability of rights of publicity, see Jennifer E. Rothman, The Inalienable Right of Publicity, 101 GEO. L.J. 185 (2012).

(Note that N.Y. Civil Rights Law § 51 below appears in the statute as a single paragraph. Parts of its have been rendered here in indents to make it human-or at least law-studentreadable.)

N.Y. Civil Rights Law § 51. Action for injunction and for damages

Any person whose name, portrait, picture or voice is used within this state for advertising purposes or for the purposes of trade without the written consent first obtained as above provided may maintain an equitable action in the supreme court of this state against the person, firm or corporation so using his name, portrait, picture or voice, to prevent and restrain the use thereof; and may also sue and recover damages for any injuries sustained by reason of such use and if the defendant shall have knowingly used such person's name, portrait, picture or voice in such manner as is forbidden or declared to be unlawful by section fifty of this article, the jury, in its discretion, may award exemplary damages.

-But nothing contained in this article shall be so construed as to prevent any person, firm or corporation from selling or otherwise transferring any material containing such name, portrait, picture or voice in whatever medium to any user of such name, portrait, picture or voice, or to any third party for sale or transfer directly or indirectly to such a user, for use in a manner lawful under this article;

nothing contained in this article shall be so construed as to prevent any person, firm or corporation, practicing the profession of photography, from exhibiting in or about his or its establishment specimens of the work of such establishment, unless the same is continued by such person, firm or corporation after written notice objecting thereto has been given by the person portrayed;

and nothing contained in this article shall be so construed as to prevent any person, firm or corporation from using the name, portrait, picture or voice of any manufacturer or dealer in connection with the goods, wares and merchandise manufactured, produced or dealt in by him which he has sold or disposed of with such name, portrait, picture or voice used in connection therewith; or from using the name, portrait, picture or voice of any author, composer or artist in connection with his literary, musical or artistic productions which he has sold or disposed of with such name, portrait, picture or voice used in connection therewith.

-Nothing contained in this section shall be construed to prohibit the copyright owner of a sound recording from disposing of, dealing in, licensing or selling that sound recording to any party, if the right to dispose of, deal in, license or sell such sound recording has been conferred by contract or other written document by such living person or the holder of such right. Nothing contained in the foregoing sentence shall be deemed to abrogate or otherwise limit any rights or remedies otherwise conferred by federal law or state law.

California Civil Code § § 3344 & 3344.1. § 3344. Use of another's name, voice, signature, photograph, or likeness for advertising or selling or soliciting purposes (a) Any person who knowingly uses another's name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person's prior consent, or, in the case of a minor, the prior consent of his parent or legal guardian, shall be liable for any damages sustained by the person or persons injured as a result thereof. In addition, in any action brought under this section, the person who violated the section shall be liable to the injured party or parties in an amount equal to the greater of seven hundred fifty dollars ($750) or the actual damages suffered by him or her as a result of the unauthorized use, and any profits from the unauthorized use that are attributable to the use and are not taken into account in computing the actual damages. In establishing such profits, the injured party or parties are required to present proof only of the gross revenue attributable to such use, and the person who violated this section is required to prove his or her deductible expenses. Punitive damages may also be awarded to the injured party or parties. The prevailing party in any action under this section shall also be entitled to attorney's fees and costs.

(b) As used in this section, "photograph" means any photograph or photographic reproduction, still or moving, or any videotape or live television transmission, of any person, such that the person is readily identifiable.

(1) A person shall be deemed to be readily identifiable from a photograph when one who views the photograph with the naked eye can reasonably determine that the person depicted in the photograph is the same person who is complaining of its unauthorized use.

(2) If the photograph includes more than one person so identifiable, then the person or persons complaining of the use shall be represented as individuals rather than solely as members of a definable group represented in the photograph. A definable group includes, but is not limited to, the following examples: a crowd at any sporting event, a crowd in any street or public building, the audience at any theatrical or stage production, a glee club, or a baseball team.

(3) A person or persons shall be considered to be represented as members of a definable group if they are represented in the photograph solely as a result of being present at the time the photograph was taken and have not been singled out as individuals in any manner.

(c) Where a photograph or likeness of an employee of the person using the photograph or likeness appearing in the advertisement or other publication prepared by or in behalf of the user is only incidental, and not essential, to the purpose of the publication in which it appears, there shall arise a rebuttable presumption affecting the burden of producing evidence that the failure to obtain the consent of the employee was not a knowing use of the employee's photograph or likeness.

(d) For purposes of this section, a use of a name, voice, signature, photograph, or likeness in connection with any news, public affairs, or sports broadcast or account, or any political campaign, shall not constitute a use for which consent is required under subdivision (a).

(e) The use of a name, voice, signature, photograph, or likeness in a commercial medium shall not constitute a use for which consent is required under subdivision (a) solely because the material containing such use is commercially sponsored or contains paid advertising. Rather it shall be a question of fact whether or not the use of the person's name, voice, signature, photograph, or likeness was so directly connected with the commercial sponsorship or with the paid advertising as to constitute a use for which consent is required under subdivision (a).

(f) Nothing in this section shall apply to the owners or employees of any medium used for advertising, including, but not limited to, newspapers, magazines, radio and television networks and stations, cable television systems, billboards, and transit ads, by whom any advertisement or solicitation in violation of this section is published or disseminated, unless it is established that such owners or employees had knowledge of the unauthorized use of the person's name, voice, signature, photograph, or likeness as prohibited by this section.

(g) The remedies provided for in this section are cumulative and shall be in addition to any others provided for by law. § 3344.1. Deceased personality's name, voice, signature, photograph, or likeness; unauthorized use; damages and profits from use; protected uses; persons entitled to exercise rights; successors in interest or licensees; registration of claim . . . . (a)(2) For purposes of this subdivision, a play, book, magazine, newspaper, musical composition, audiovisual work, radio or television program, single and original work of art, work of political or newsworthy value, or an advertisement or commercial announcement for any of these works, shall not be considered a product, article of merchandise, good, or service if it is fictional or nonfictional entertainment, or a dramatic, literary, or musical work. . . . . (j) For purposes of this section, the use of a name, voice, signature, photograph, or likeness in connection with any news, public affairs, or sports broadcast or account, or any political campaign, shall not constitute a use for which consent is required under subdivision (a).

Provided below are opinions from two significant right of publicity cases. The first, older case is White v. Samsung Electronics America, Inc., 971 F.2d 1395 (9th Cir. 1992), which addressed television hostess Vanna White's claims that a series of Samsung advertisements featuring a robot likeness of her violated her intellectual property rights. Excerpted below is the Ninth Circuit's majority opinion in the case and Judge Kozinski's dissent from a denial of en banc review of that majority opinion. The second case, In re NCAA Student-Athlete Name & Likeness Licensing Litigation, 724 F.3d 1268 (9th Cir. 2013) (Bybee, J.), is of much more recent vintage and was issued on the same day as Brown v. Electronic Arts, 724 F.3d 1235 (9th Cir. 2013) (Bybee, J.). In Brown, the Ninth Circuit rejected retired football player Jim Brown's Lanham Act § 43(a) claim against a video game producer who used his likeness in a video game. By contrast, In re NCAA Student-Athlete Name & Likeness Licensing (sometimes known as the "Keller case"), the court addressed a California Civil Code § 3344 claim against the video game producer brought by a one-time college football player. As you will see, the California right of publicity claim was more successful than Jim Brown's Lanham Act § 43(a) claim.

As you read through the White v. Samsung opinions, consider the following questions:

• If you are persuaded by the simple false endorsement justification for right of publicity protection, then does White v. Samsung support that justification? Does Samsung's homage to Vanna White constitute false endorsement? How might a court properly determine the answer to this latter question? GOODWIN, Senior Circuit Judge:

[1] This case involves a promotional "fame and fortune" dispute. In running a particular advertisement without Vanna White's permission, defendants Samsung Electronics America, Inc. (Samsung) and David Deutsch Associates, Inc. (Deutsch) attempted to capitalize on White's fame to enhance their fortune. White sued, alleging infringement of various intellectual property rights, but the district court granted summary judgment in favor of the defendants. We affirm in part, reverse in part, and remand.

[2] Plaintiff Vanna White is the hostess of "Wheel of Fortune," one of the most popular game shows in television history. An estimated forty million people watch the program daily. Capitalizing on the fame which her participation in the show has bestowed on her, White markets her identity to various advertisers.

[3] The dispute in this case arose out of a series of advertisements prepared for Samsung by Deutsch. The series ran in at least half a dozen publications with widespread, and in some cases national, circulation. Each of the advertisements in the series followed the same theme. Each depicted a current item from popular culture and a Samsung electronic product. Each was set in the twenty-first century and conveyed the message that the Samsung product would still be in use by that time. By hypothesizing outrageous future outcomes for the cultural items, the ads created humorous effects. For example, one lampooned current popular notions of an unhealthy diet by depicting a raw steak with the caption: "Revealed to be health food. 2010 A.D." Another depicted irreverent "news"-show host Morton Downey Jr. in front of an American flag with the caption: "Presidential candidate. 2008 A.D."

[4] The advertisement which prompted the current dispute was for Samsung videocassette recorders (VCRs). The ad depicted a robot, dressed in a wig, gown, and jewelry which Deutsch consciously selected to resemble White's hair and dress. The robot was posed next to a game board which is instantly recognizable as the Wheel of Fortune game show set, in a stance for which White is famous. The caption of the ad read: "Longest-running game show. 2012 A.D." Defendants referred to the ad as the "Vanna White" ad. Unlike the other celebrities used in the campaign, White neither consented to the ads nor was she paid. I. Section 3344 [6] White first argues that the district court erred in rejecting her claim under section 3344. Section 3344(a) provides, in pertinent part, that "[a]ny person who knowingly uses another's name, voice, signature, photograph, or likeness, in any manner, . . . for purposes of advertising or selling, . . . without such person's prior consent . . . shall be liable for any damages sustained by the person or persons injured as a result thereof." [7] White argues that the Samsung advertisement used her "likeness" in contravention of section 3344. In Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988), this court rejected Bette Midler's section 3344 claim concerning a Ford television commercial in which a Midler "sound-alike" sang a song which Midler had made famous. In rejecting Midler's claim, this court noted that "[t]he defendants did not use Midler's name or anything else whose use is prohibited by the statute. The voice they used was [another person's], not hers. The term 'likeness' refers to a visual image not a vocal imitation." Id. at 463. [8] In this case, Samsung and Deutsch used a robot with mechanical features, and not, for example, a manikin molded to White's precise features. Without deciding for all purposes when a caricature or impressionistic resemblance might become a "likeness," we agree with the district court that the robot at issue here was not White's "likeness" within the meaning of section 3344. Accordingly, we affirm the court's dismissal of White's section 3344 claim.

[9] White next argues that the district court erred in granting summary judgment to defendants on White's common law right of publicity claim. In Eastwood v. Superior Court, 149 Cal.App.3d 409, 198 Cal.Rptr. 342 (1983), the California court of appeal stated that the common law right of publicity cause of action "may be pleaded by alleging (1) the defendant's use of the plaintiff's identity; (2) the appropriation of plaintiff's name or likeness to defendant's advantage, commercially or otherwise; (3) lack of consent; and (4) resulting injury." Id. at 417, 198 Cal.Rptr. 342 (citing Prosser, Law of Torts (4th ed. 1971) § 117, pp. 804-807). The district court dismissed White's claim for failure to satisfy Eastwood's second prong, reasoning that defendants had not appropriated White's "name or likeness" with their robot ad. We agree that the robot ad did not make use of White's name or likeness. However, the common law right of publicity is not so confined.

[10] The Eastwood court did not hold that the right of publicity cause of action could be pleaded only by alleging an appropriation of name or likeness. Eastwood involved an unauthorized use of photographs of Clint Eastwood and of his name. Accordingly, the Eastwood court had no occasion to consider the extent beyond the use of name or likeness to which the right of publicity reaches. That court held only that the right of publicity cause of action "may be" pleaded by alleging, inter alia, appropriation of name or likeness, not that the action may be pleaded only in those terms. [11] The "name or likeness" formulation referred to in Eastwood originated not as an element of the right of publicity cause of action, but as a description of the types of cases in which the cause of action had been recognized. The source of this formulation is Prosser, Privacy, 48 Cal.L. Rev. 383, 401-07 (1960), one of the earliest and most enduring articulations of the common law right of publicity cause of action. In looking at the case law to that point, Prosser recognized that right of publicity cases involved one of two basic factual scenarios: name appropriation, and picture or other likeness appropriation. Id. at 401-02, nn. 156-57.

[12] Even though Prosser focused on appropriations of name or likeness in discussing the right of publicity, he noted that "[i]t is not impossible that there might be appropriation of the plaintiff's identity, as by impersonation, without the use of either his name or his likeness, and that this would be an invasion of his right of privacy." Id. at 401, n. 155.foot_18 At the time Prosser wrote, he noted however, that "[n]o such case appears to have arisen." Id.

[13] Since Prosser's early formulation, the case law has borne out his insight that the right of publicity is not limited to the appropriation of name or likeness. In Motschenbacher v. R. J. Reynolds Tobacco Co., 498 F.2d 821 (9th Cir. 1974), the defendant had used a photograph of the plaintiff's race car in a television commercial. Although the plaintiff appeared driving the car in the photograph, his features were not visible. Even though the defendant had not appropriated the plaintiff's name or likeness, this court held that plaintiff's California right of publicity claim should reach the jury. [14] In Midler, this court held that, even though the defendants had not used Midler's name or likeness, Midler had stated a claim for violation of her California common law right of publicity because "the defendants . . . for their own profit in selling their product did appropriate part of her identity" by using a Midler sound-alike. Id. at 463-64. [15] In Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831 (6th Cir. 1983), the defendant had marketed portable toilets under the brand name "Here's Johnny"-Johnny Carson's signature "Tonight Show" introduction-without Carson's permission. The district court had dismissed Carson's Michigan common law right of publicity claim because the defendants had not used Carson's "name or likeness." Id. at 835. In reversing the district court, the sixth circuit found "the district court's conception of the right of publicity . . . too narrow" and held that the right was implicated because the defendant had appropriated Carson's identity by using, inter alia, the phrase "Here's Johnny." Id. at 835-37.

[16] These cases teach not only that the common law right of publicity reaches means of appropriation other than name or likeness, but that the specific means of appropriation are relevant only for determining whether the defendant has in fact appropriated the plaintiff's identity. The right of publicity does not require that appropriations of identity be accomplished through particular means to be actionable. It is noteworthy that the Midler and Carson defendants not only avoided using the plaintiff's name or likeness, but they also avoided appropriating the celebrity's voice, signature, and photograph. The photograph in Motschenbacher did include the plaintiff, but because the plaintiff was not visible the driver could have been an actor or dummy and the analysis in the case would have been the same.

[17] Although the defendants in these cases avoided the most obvious means of appropriating the plaintiffs' identities, each of their actions directly implicated the commercial interests which the right of publicity is designed to protect. As the Carson court explained:

[t]he right of publicity has developed to protect the commercial interest of celebrities in their identities. The theory of the right is that a celebrity's identity can be valuable in the promotion of products, and the celebrity has an interest that may be protected from the unauthorized commercial exploitation of that identity . . . . If the celebrity's identity is commercially exploited, there has been an invasion of his right whether or not his "name or likeness" is used.

Carson, 698 F.2d at 835. It is not important how the defendant has appropriated the plaintiff's identity, but whether the defendant has done so. Motschenbacher, Midler, and Carson teach the impossibility of treating the right of publicity as guarding only against a laundry list of specific means of appropriating identity. A rule which says that the right of publicity can be infringed only through the use of nine different methods of appropriating identity merely challenges the clever advertising strategist to come up with the tenth.

[18] Indeed, if we treated the means of appropriation as dispositive in our analysis of the right of publicity, we would not only weaken the right but effectively eviscerate it. The right would fail to protect those plaintiffs most in need of its protection. Advertisers use celebrities to promote their products. The more popular the celebrity, the greater the number of people who recognize her, and the greater the visibility for the product. The identities of the most popular celebrities are not only the most attractive for advertisers, but also the easiest to evoke without resorting to obvious means such as name, likeness, or voice.

[19] Consider a hypothetical advertisement which depicts a mechanical robot with male features, an African-American complexion, and a bald head. The robot is wearing black hightop Air Jordan basketball sneakers, and a red basketball uniform with black trim, baggy shorts, and the number 23 (though not revealing "Bulls" or "Jordan" lettering). The ad depicts the robot dunking a basketball one-handed, stiff-armed, legs extended like open scissors, and tongue hanging out. Now envision that this ad is run on television during professional basketball games. Considered individually, the robot's physical attributes, its dress, and its stance tell us little. Taken together, they lead to the only conclusion that any sports viewer who has registered a discernible pulse in the past five years would reach: the ad is about Michael Jordan.

[20] Viewed separately, the individual aspects of the advertisement in the present case say little. Viewed together, they leave little doubt about the celebrity the ad is meant to depict. The female-shaped robot is wearing a long gown, blond wig, and large jewelry. Vanna White dresses exactly like this at times, but so do many other women. The robot is in the process of turning a block letter on a game-board. Vanna White dresses like this while turning letters on a game-board but perhaps similarly attired Scrabble-playing women do this as well. The robot is standing on what looks to be the Wheel of Fortune game show set. Vanna White dresses like this, turns letters, and does this on the Wheel of Fortune game show. She is the only one. Indeed, defendants themselves referred to their ad as the "Vanna White" ad. We are not surprised. [21] Television and other media create marketable celebrity identity value. Considerable energy and ingenuity are expended by those who have achieved celebrity value to exploit it for profit. The law protects the celebrity's sole right to exploit this value whether the celebrity has achieved her fame out of rare ability, dumb luck, or a combination thereof. We decline Samsung and Deutch's invitation to permit the evisceration of the common law right of publicity through means as facile as those in this case. Because White has alleged facts showing that Samsung and Deutsch had appropriated her identity, the district court erred by rejecting, on summary judgment, White's common law right of publicity claim.

[22] White's final argument is that the district court erred in denying her claim under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). The version of section 43(a) applicable to this casefoot_19 provides, in pertinent part, that "[a]ny person who shall . . . use, in connection with any goods or services . . . any false description or representation . . . shall be liable to a civil action . . . by any person who believes that he is or is likely to be damaged by the use of any such false description or designation." 15 U.S.C. § 1125(a).

[23] To prevail on her Lanham Act claim, White is required to show that in running the robot ad, Samsung and Deutsch created a likelihood of confusion, Academy of Motion Picture Arts v. Creative House, 944 F.2d 1446, 1454(9th Cir. 1991);Toho Co. Ltd. v. Sears Roebuck & Co., 645 F.2d 788, 790 (9th Cir. 1981) New West Corp. v. NYM Co. of California, 595 F.2d 1194, 1201(9th Cir. 1979), over whether White was endorsing Samsung's VCRs. HMH Publishing Co. v. Brincat, 504 F.2d 713 (9th Cir. 1974);Allen v. National Video, Inc., 610 F.Supp. 612 (D.C.N.Y. 1985).

[24] This circuit recognizes several different multi-factor tests for determining whether a likelihood of confusion exists. See Academy, 944 F.2d at 1454, n. 3. None of these tests is correct to the exclusion of the others. Eclipse Associates Ltd. v. Data General Corp., 894 F.2d 1114, 1118(9th Cir. 1990). Normally, in reviewing the district court's decision, this court will look to the particular test that the district court used. Academy, 944 F.2d at 1454, n. 3; Eclipse, 894 F.2d at 1117-1118. However, because the district court in this case apparently did not use any of the multi-factor tests in making its likelihood of confusion determination, and because this case involves an appeal from summary judgment and we review de novo the district court's determination, we will look for guidance to the 8-factor test enunciated in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979). According to AMF, factors relevant to a likelihood of confusion include:

(5) marketing channels used; (6) likely degree of purchaser care;

(8) likelihood of expansion of the product lines. 599 F.2d at 348-49. We turn now to consider White's claim in light of each factor.

[25] In cases involving confusion over endorsement by a celebrity plaintiff, "mark" means the celebrity's persona. See Allen, 610 F.Supp. at 627. The "strength" of the mark refers to the level of recognition the celebrity enjoys among members of society. See Academy, 944 F.2d at 1455. If Vanna White is unknown to the segment of the public at whom Samsung's robot ad was directed, then that segment could not be confused as to whether she was endorsing Samsung VCRs. Conversely, if White is well-known, this would allow the possibility of a likelihood of confusion. For the purposes of the Sleekcraft test, White's "mark," or celebrity identity, is strong. [26] In cases concerning confusion over celebrity endorsement, the plaintiff's "goods" concern the reasons for or source of the plaintiff's fame. Because White's fame is based on her televised performances, her "goods" are closely related to Samsung's VCRs. Indeed, the ad itself reinforced the relationship by informing its readers that they would be taping the "longest-running game show" on Samsung's VCRs well into the future.

[27] The third factor, "similarity of the marks," both supports and contradicts a finding of likelihood of confusion. On the one hand, all of the aspects of the robot ad identify White; on the other, the figure is quite clearly a robot, not a human. This ambiguity means that we must look to the other factors for resolution.

[28] The fourth factor does not favor White's claim because she has presented no evidence of actual confusion.

[29] Fifth, however, White has appeared in the same stance as the robot from the ad in numerous magazines, including the covers of some. Magazines were used as the marketing channels for the robot ad. This factor cuts toward a likelihood of confusion.

[30] Sixth, consumers are not likely to be particularly careful in determining who endorses VCRs, making confusion as to their endorsement more likely. [31] Concerning the seventh factor, "defendant's intent," the district court found that, in running the robot ad, the defendants had intended a spoof of the "Wheel of Fortune." The relevant question is whether the defendants "intended to profit by confusing consumers" concerning the endorsement of Samsung VCRs. Toho, 645 F.2d 788. We do not disagree that defendants intended to spoof Vanna White and "Wheel of Fortune." That does not preclude, however, the possibility that defendants also intended to confuse consumers regarding endorsement. The robot ad was one of a series of ads run by defendants which followed the same theme. Another ad in the series depicted Morton Downey Jr. as a presidential candidate in the year 2008. Doubtless, defendants intended to spoof presidential elections and Mr. Downey through this ad. Consumers, however, would likely believe, and would be correct in so believing, that Mr. Downey was paid for his permission and was endorsing Samsung products. Looking at the series of advertisements as a whole, a jury could reasonably conclude that beneath the surface humor of the series lay an intent to persuade consumers that celebrity Vanna White, like celebrity Downey, was endorsing Samsung products. [32] Finally, the eighth factor, "likelihood of expansion of the product lines," does not appear apposite to a celebrity endorsement case such as this.

[33] Application of the Sleekcraft factors to this case indicates that the district court erred in rejecting White's Lanham Act claim at the summary judgment stage. In so concluding, we emphasize two facts, however. First, construing the motion papers in White's favor, as we must, we hold only that White has raised a genuine issue of material fact concerning a likelihood of confusion as to her endorsement. Cohen v. Paramount Pictures Corp., 845 F.2d 851, 852-53 (9th Cir. 1988). Whether White's Lanham Act claim should succeed is a matter for the jury. Second, we stress that we reach this conclusion in light of the peculiar facts of this case. In particular, we note that the robot ad identifies White and was part of a series of ads in which other celebrities participated and were paid for their endorsement of Samsung's products.

[34] In defense, defendants cite a number of cases for the proposition that their robot ad constituted protected speech. The only cases they cite which are even remotely relevant to this case are Hustler Magazine v. Falwell, 485 U.S. 46, 108 S. Ct. 876, 99 L.Ed.2d 41 (1988) andL.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir. 1987). Those cases involved parodies of advertisements run for the purpose of poking fun at Jerry Falwell and L.L. Bean, respectively. This case involves a true advertisement run for the purpose of selling Samsung VCRs. The ad's spoof of Vanna White and Wheel of Fortune is subservient and only tangentially related to the ad's primary message: "buy Samsung VCRs." Defendants' parody arguments are better addressed to non-commercial parodies. 3 The difference between a "parody" and a "knock-off" is the difference between fun and profit.

3 In warning of a first amendment chill to expressive conduct, the dissent reads this decision too broadly. See Dissent at 1407. This case concerns only the market which exists in our society for the exploitation of celebrity to sell products, and an attempt to take a free ride on a celebrity's celebrity value. Commercial advertising which relies on celebrity fame is different from other forms of expressive activity in two crucial ways.

First, for celebrity exploitation advertising to be effective, the advertisement must evoke the celebrity's identity. The more effective the evocation, the better the advertisement. If, as Samsung claims, its ad was based on a "generic" game-show hostess and not on Vanna White, the ad would not have violated anyone's right of publicity, but it would also not have been as humorous or as effective.

Second, even if some forms of expressive activity, such as parody, do rely on identity evocation, the first amendment hurdle will bar most right of publicity actions against those activities. Cf. Falwell, 485 U.S. at 46. In the case of commercial advertising, however, the first amendment hurdle is not so high. Central Hudson Gas & Electric Corp. v. Public Service Comm'n of New York, 447 U.S. 557, 566 (1980). Realizing this, Samsung attempts to elevate its ad above the status of garden-variety commercial speech by pointing to the ad's parody of Vanna White. Samsung's argument is unavailing. See Board of Trustees, State Univ. of N.Y. v. Fox, 492 U.S. 469, 474-75 (1988);Bolger v. Youngs Drug Products Corp., 463 U.S. 60, 67-68, (1983). Unless the first amendment bars all right of publicity actions-and it does not, see Zachini v. Scripps-Howard Broadcasting Co., 433 U.S. 562 (1977)-then it does not bar this case.

[35] In remanding this case, we hold only that White has pleaded claims which can go to the jury for its decision. [1] The panel has voted unanimously to deny the petition for rehearing. Circuit Judge Pregerson has voted to reject the suggestion for rehearing en banc, and Circuit Judge Goodwin so recommends. Circuit Judge Alarcon has voted to accept the suggestion for rehearing en banc.

[2] The full court has been advised of the suggestion for rehearing en banc. An active judge requested a vote on whether to rehear the en banc. The matter failed to receive a majority of the votes of the nonrecused active judges in favor of en banc consideration. Fed.R.App.P. 35.

[3] The petition for rehearing is DENIED and the suggestion for rehearing en banc is REJECTED. KOZINSKI, Circuit Judge, with whom Circuit Judges O'SCANNLAIN and KLEINFELD join, dissenting from the order rejecting the suggestion for rehearing en banc.

[4] Saddam Hussein wants to keep advertisers from using his picture in unflattering contexts. 1 Clint Eastwood doesn't want tabloids to write about him. 2 Rudolf Valentino's heirs want to control his film biography. 3 The Girl Scouts don't want their image soiled by association with certain activities. 4 George Lucas wants to keep Strategic Defense Initiative fans from calling it "Star Wars." 5 Pepsico doesn't want singers to use the word "Pepsi" in their songs. 6 Guy Lombardo wants an exclusive property right to ads that show big bands playing 1 See Eben Shapiro, Rising Caution on Using Celebrity Images, N.Y. Times, Nov. 4, 1992, at D20 (Iraqi diplomat objects on right of publicity grounds to ad containing Hussein's picture and caption "History has shown what happens when one source controls all the information").

2 Eastwood v. Superior Court, 149 Cal.App.3d 409, 198 Cal.Rptr. 342 (1983).

3 Guglielmi v. Spelling-Goldberg Prods., 25 Cal.3d 860, 160 Cal.Rptr. 352, 603 P.2d 454 (1979) (Rudolph Valentino); see also Maheu v. CBS, Inc., 201 Cal.App.3d 662, 668, 247 Cal.Rptr. 304 (1988) (aide to Howard Hughes). Cf. Frank Gannon, Vanna Karenina, in Vanna Karenina and Other Reflections (1988) (A humorous short story with a tragic ending. "She thought of the first day she had met VR__SKY. How foolish she had been. How could she love a man who wouldn't even tell her all the letters in his name?").

4 Girl Scouts v. Personality Posters Mfg., 304 F.Supp. 1228(S.D.N.Y. 1969) (poster of a pregnant girl in a Girl Scout uniform with the caption "Be Prepared"). 5 Lucasfilm Ltd. v. High Frontier, 622 F.Supp. 931 (D.D.C. 1985). 6 Pepsico Inc. claimed the lyrics and packaging of grunge rocker Tad Doyle's "Jack Pepsi" song were "offensive to [it] and [. . .] likely to offend [its] customers," in part because they "associate [Pepsico] and its Pepsi marks with intoxication and drunk driving." Deborah Russell, Doyle Leaves Pepsi Thirsty for Compensation, Billboard, June 15, 1991, at 43. Conversely, the Hell's Angels recently sued Marvel Comics to keep it from publishing a comic book called "Hell's Angel," starring a character of the same name. Marvel settled by paying $35,000 to charity and promising never to use the name "Hell's Angel" again in connection with any of its publications. Marvel, Hell's Angels Settle Trademark Suit, L.A. Daily J., Feb. 2, 1993, § II, at on New Year's Eve. 7 Uri Geller thinks he should be paid for ads showing psychics bending metal through telekinesis. 8 Paul Prudhomme, that household name, thinks the same about ads featuring corpulent bearded chefs. 9 And scads of copyright holders see purple when their creations are made fun of. 10 [5] Something very dangerous is going on here. Private property, including intellectual property, is essential to our way of life. It provides an incentive for investment and innovation; it stimulates the flourishing of our culture; it protects the moral entitlements of people to the fruits of their labors. But reducing too much to private property can be bad medicine. Private land, for instance, is far more useful if separated from other private land by public streets, roads and highways. Public parks, utility rights-of-way and sewers reduce the amount of land in private hands, but vastly enhance the value of the property that remains.

[6] So too it is with intellectual property. Overprotecting intellectual property is as harmful as underprotecting it. Creativity is impossible without a rich public domain. Nothing today, likely nothing since we tamed fire, is genuinely new: Culture, like science and technology, grows by accretion, each new creator building on the works of those who came before. Overprotection stifles the very creative forces it's supposed to nurture. 11 [7] The panel's opinion is a classic case of overprotection. Concerned about what it sees as a wrong done to Vanna White, the panel majority erects a property right of remarkable and dangerous breadth: Under the majority's opinion, it's now a tort for advertisers to remind The creators of some of these works might have gotten permission from the trademark owners, though it's unlikely Kool-Aid relished being connected with LSD, Hershey with homicidal maniacs, Disney with armed robbers, or Coca-Cola with cultural imperialism. Certainly no free society can demand that artists get such permission.

the public of a celebrity. Not to use a celebrity's name, voice, signature or likeness; not to imply the celebrity endorses a product; but simply to evoke the celebrity's image in the public's mind. This Orwellian notion withdraws far more from the public domain than prudence and common sense allow. It conflicts with the Copyright Act and the Copyright Clause. It raises serious First Amendment problems. It's bad law, and it deserves a long, hard second look. II [8] Samsung ran an ad campaign promoting its consumer electronics. Each ad depicted a Samsung product and a humorous prediction: One showed a raw steak with the caption "Revealed to be health food. 2010 A.D." Another showed Morton Downey, Jr. in front of an American flag with the caption "Presidential candidate. 2008 A.D." 12 The ads were meant to convey-humorously-that Samsung products would still be in use twenty years from now.

[9] The ad that spawned this litigation starred a robot dressed in a wig, gown and jewelry reminiscent of Vanna White's hair and dress; the robot was posed next to a Wheel-of-Fortunelike game board. See Appendix. The caption read "Longest-running game show. 2012 A.D."

The gag here, I take it, was that Samsung would still be around when White had been replaced by a robot.

[10] Perhaps failing to see the humor, White sued, alleging Samsung infringed her right of publicity by "appropriating" her "identity." Under California law, White has the exclusive right to use her name, likeness, signature and voice for commercial purposes. Cal.Civ. Code § 3344(a);Eastwood v. Superior Court, 149 Cal.App.3d 409, 417, 198 Cal.Rptr. 342, 347 (1983). But Samsung didn't use her name, voice or signature, and it certainly didn't use her likeness. The ad just wouldn't have been funny had it depicted White or someone who resembled her-the whole joke was that the game show host(ess) was a robot, not a real person. No one seeing the ad could have thought this was supposed to be White in 2012.

[11] The district judge quite reasonably held that, because Samsung didn't use White's name, likeness, voice or signature, it didn't violate her right of publicity. 971 F.2d at 1396-97. Not so, says the panel majority: The California right of publicity can't possibly be limited to name and likeness. If it were, the majority reasons, a "clever advertising strategist" could avoid using White's name or likeness but nevertheless remind people of her with impunity, "effectively eviscerat[ing]" her rights. To prevent this "evisceration," the panel majority holds that the right of publicity must extend beyond name and likeness, to any "appropriation" of White's "identity"-anything that "evoke[s]" her personality. Id. at 1398-99.

[12] But what does "evisceration" mean in intellectual property law? Intellectual property rights aren't like some constitutional rights, absolute guarantees protected against all kinds of interference, subtle as well as blatant. 13 They cast no penumbras, emit no emanations: The very point of intellectual property laws is that they protect only against certain specific kinds of appropriation. I can't publish unauthorized copies of, say, Presumed Innocent; I can't make a movie out of it. But I'm perfectly free to write a book about an idealistic young prosecutor on trial for a crime he didn't commit. 14 So what if I got the idea from Presumed Innocent? So what if it reminds readers of the original? Have I "eviscerated" Scott Turow's intellectual property rights? Certainly not. All creators draw in part on the work of those who came before, referring to it, building on it, poking fun at it; we call this creativity, not piracy. 15[13] The majority isn't, in fact, preventing the "evisceration" of Vanna White's existing rights; it's creating a new and broader property right, a right unknown in California law. 16 It's replacing the existing balance between the interests of the celebrity and those of the public by a different balance, one substantially more favorable to the celebrity. Instead of having an exclusive right in her name, likeness, signature or voice, every famous person now has an exclusive right to anything that reminds the viewer of her. After all, that's all Samsung Newton himself may have borrowed this phrase from Bernard of Chartres, who said something similar in the early twelfth century. Bernard in turn may have snatched it from Priscian, a sixth century grammarian. See Lotus Dev. Corp. v. Paperback Software Int'l, 740 F.Supp. 37, 77 n. 3 (D.Mass. 1990). 16 In fact, in the one California case raising the issue, the three state Supreme Court Justices who discussed this theory expressed serious doubts about it. Guglielmi v. Spelling-Goldberg Prods., 25 Cal.3d 860, 864 n. 5, 160 Cal.Rptr. 352, 355 n. 5, 603 P.2d 454, 457 n. 5 (1979) (Bird, C.J., concurring) (expressing skepticism about finding a property right to a celebrity's "personality" because it is "difficult to discern any easily applied definition for this amorphous term").

Neither have we previously interpreted California law to cover pure "identity. " Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988), and Waits v. Frito-Lay, Inc., 978 F.2d 1093(9th Cir. 1992), dealt with appropriation of a celebrity's voice. See id. at 1100-01 (imitation of singing style, rather than voice, doesn't violate the right of publicity). Motschenbacher v. R. J. Reynolds Tobacco Co., 498 F.2d 821 (9th Cir. 1974), stressed that, though the plaintiff's likeness wasn't directly recognizable by itself, the surrounding circumstances would have made viewers think the likeness was the plaintiff's. Id. at 827; see also Moore v. Regents of the Univ. of Cal., 51 Cal.3d 120, 138, 271 Cal.Rptr. 146, 157, 793 P.2d 479, 490 (1990) (construing Motschenbacher as "hold [ing] that every person has a proprietary interest in his own likeness").

did: It used an inanimate object to remind people of White, to "evoke [her identity]." 971 F.2d at 1399.foot_25 [14] Consider how sweeping this new right is. What is it about the ad that makes people think of White? It's not the robot's wig, clothes or jewelry; there must be ten million blond women (many of them quasi-famous) who wear dresses and jewelry like White's. It's that the robot is posed near the "Wheel of Fortune" game board. Remove the game board from the ad, and no one would think of Vanna White. See Appendix. But once you include the game board, anybody standing beside it-a brunette woman, a man wearing women's clothes, a monkey in a wig and gown-would evoke White's image, precisely the way the robot did. It's the "Wheel of Fortune" set, not the robot's face or dress or jewelry that evokes White's image. The panel is giving White an exclusive right not in what she looks like or who she is, but in what she does for a living. 18 [15] This is entirely the wrong place to strike the balance. Intellectual property rights aren't free: They're imposed at the expense of future creators and of the public at large. Where would we be if Charles Lindbergh had an exclusive right in the concept of a heroic solo aviator? If Arthur Conan Doyle had gotten a copyright in the idea of the detective story, or Albert Einstein had patented the theory of relativity? If every author and celebrity had been Note also that the majority's rule applies even to advertisements that unintentionally remind people of someone. California law is crystal clear that the common-law right of publicity may be violated even by unintentional appropriations. Id. at 417 n. 6, 198 Cal.Rptr. at 346 n. 6;Fairfield v. American Photocopy Equipment Co., 138 Cal.App.2d 82, 87, 291 P.2d 194 (1955). 18 Once the right of publicity is extended beyond specific physical characteristics, this will become a recurring problem: Outside name, likeness and voice, the things that most reliably remind the public of celebrities are the actions or roles they're famous for. A commercial with an astronaut setting foot on the moon would evoke the image of Neil Armstrong. Any masked man on horseback would remind people (over a certain age) of Clayton Moore. And any number of songs-"My Way," "Yellow Submarine," "Like a Virgin," "Beat It," "Michael, Row the Boat Ashore," to name only a few-instantly evoke an image of the person or group who made them famous, regardless of who is singing.

See also Carlos V. Lozano, West Loses Lawsuit over Batman TV Commercial, L.A. Times, Jan. 18, 1990, at B3 (Adam West sues over Batman-like character in commercial); Nurmi v. Peterson, 10 U.S.P.Q.2d 1775, 1989WL 407484 (C.D.Cal. 1989) (1950s TV movie hostess "Vampira" sues 1980s TV hostess "Elvira"); text accompanying notes 7-8 (lawsuits brought by Guy Lombardo, claiming big bands playing at New Year's Eve parties remind people of him, and by Uri Geller, claiming psychics who can bend metal remind people of him). Cf. Motschenbacher, where the claim was that viewers would think plaintiff was actually in the commercial, and not merely that the commercial reminded people of him.

given the right to keep people from mocking them or their work? Surely this would have made the world poorer, not richer, culturally as well as economically. 19[16] This is why intellectual property law is full of careful balances between what's set aside for the owner and what's left in the public domain for the rest of us: The relatively short life of patents; the longer, but finite, life of copyrights; copyright's idea-expression dichotomy; the fair use doctrine; the prohibition on copyrighting facts; the compulsory license of television broadcasts and musical compositions; federal preemption of overbroad state intellectual property laws; the nominative use doctrine in trademark law; the right to make soundalike recordings. 20 All of these diminish an intellectual property owner's rights. All let the public use something created by someone else. But all are necessary to maintain a free environment in which creative genius can flourish.

[17] The intellectual property right created by the panel here has none of these essential limitations: No fair use exception; no right to parody; no idea-expression dichotomy. It impoverishes the public domain, to the detriment of future creators and the public at large. Instead of well-defined, limited characteristics such as name, likeness or voice, advertisers will now have to cope with vague claims of "appropriation of identity," claims often made by people with a wholly exaggerated sense of their own fame and significance. See pp. 1512-13 & notes 1-10 supra. Future Vanna Whites might not get the chance to create their personae, because their employers may fear some celebrity will claim the persona is too similar to her own. 21 The public will be robbed of parodies of celebrities, and our culture will be deprived of the valuable safety valve that parody and mockery create.

[18] Moreover, consider the moral dimension, about which the panel majority seems to have gotten so exercised. Saying Samsung "appropriated" something of White's begs the question: Should White have the exclusive right to something as broad and amorphous as her "identity"? Samsung's ad didn't simply copy White's schtick-like all parody, it created something new. 22 True, Samsung did it to make money, but White does whatever she does to make money, too; the majority talks of "the difference between fun and profit," 971 F.2d at 1401, but in the entertainment industry fun is profit. Why is Vanna White's right to exclusive for-profit use of her persona-a persona that might not even be her own creation, but that of a writer, director or producer-superior to Samsung's right to profit by creating its own inventions? Why should she have such absolute rights to control the conduct of others, unlimited by the idea-expression dichotomy or by the fair use doctrine?

[19] To paraphrase only slightly Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991), it may seem unfair that much of the fruit of a creator's labor may be used by others without compensation. But this is not some unforeseen byproduct of our intellectual property system; it is the system's very essence. Intellectual property law assures authors the right to their original expression, but encourages others to build freely on the ideas that underlie it. This result is neither unfair nor unfortunate: It is the means by which intellectual property law advances the progress of science and art. We give authors certain exclusive rights, but in exchange we get a richer public domain. The majority ignores this wise teaching, and all of us are the poorer for it. 23

[20] The panel, however, does more than misinterpret California law: By refusing to recognize a parody exception to the right of publicity, the panel directly contradicts the federal Copyright Act. Samsung didn't merely parody Vanna White. It parodied Vanna White appearing in "Wheel of Fortune," a copyrighted television show, and parodies of copyrighted works are governed by federal copyright law. VI [22] Finally, I can't see how giving White the power to keep others from evoking her image in the public's mind can be squared with the First Amendment. Where does White get this right to control our thoughts? The majority's creation goes way beyond the protection given a trademark or a copyrighted work, or a person's name or likeness. All those things control one particular way of expressing an idea, one way of referring to an object or a person. But not allowing any means of reminding people of someone? That's a speech restriction unparalleled in First Amendment law. 28 [23] What's more, I doubt even a name-and-likeness-only right of publicity can stand without a parody exception. The First Amendment isn't just about religion or politics-it's also about protecting the free development of our national culture. Parody, humor, irreverence are all vital components of the marketplace of ideas. The last thing we need, the last thing the First Amendment will tolerate, is a law that lets public figures keep people from mocking them, or from "evok[ing]" their images in the mind of the public. 971 F.2d at 1399. 29 [24] The majority dismisses the First Amendment issue out of hand because Samsung's ad was commercial speech. Id. at 1401 & n. 3. So what? Commercial speech may be less protected by the First Amendment than noncommercial speech, but less protected means protected nonetheless. CentralHudson Gas & Elec. Corp. v. Public Serv. Comm'n, 447 U.S. 557, 100 S.Ct. 2343, 65 L.Ed.2d 341 (1980). And there are very good reasons for this. Commercial speech has a profound effect on our culture and our attitudes. Neutral-seeming ads influence 28 Just compare the majority's holding to the intellectual property laws upheld by the Supreme Court. The Copyright Act is constitutional precisely because of the fair use doctrine and the ideaexpression dichotomy, Harper & Row v. Nation Enterprises, 471 U.S. 539, 560, 105 S. Ct. 2218, 2230, 85 L.Ed.2d 588 (1985), two features conspicuously absent from the majority's doctrine. The right of publicity at issue in Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 576, 97 S.Ct. 2849, 2857-58, 53 L.Ed.2d 965 (1977), was only the right to "broadcast of petitioner's entire performance," not "the unauthorized use of another's name for purposes of trade." Id. Even the statute upheld in San Francisco Arts & Athletics, Inc. v. United States Olympic Comm., 483 U.S. 522, 530, 107 S.Ct. 2971, 2977, 97 L.Ed.2d 427 (1987), which gave the USOC sweeping rights to the word "Olympic," didn't purport to protect all expression that reminded people of the Olympics. 29 The majority's failure to recognize a parody exception to the right of publicity would apply equally to parodies of politicians as of actresses. Consider the case of Wok Fast, a Los Angeles Chinese food delivery service, which put up a billboard with a picture of then-L.A. Police Chief Daryl Gates and the text "When you can't leave the office. Or won't." (This was an allusion to Chief Gates's refusal to retire despite pressure from Mayor Tom Bradley.) Gates forced the restaurant to take the billboard down by threatening a right of publicity lawsuit. Leslie Berger, He Did Leave the Office-And Now Sign Will Go, Too, L.A. Times, July 31, 1992, at B2. See also Samsung Has Seen the Future: Brace Youself, Adweek, Oct. 3, 1988, at 26 (ER 72) (Samsung planned another ad that would show a dollar bill with Richard Nixon's face on it and the caption 'Dollar bill, 2025 A.D..,' but Nixon refused permission to use his likeness); Madow supra note 19, at 142-46 (discussing other politically and culturally charged parodies). 566. 34 These are all things the Supreme Court told us-in no uncertain terms-we must consider; the majority opinion doesn't even mention them. 35[27] Process matters. The Supreme Court didn't set out the Central Hudson test for its health. It devised the test because it saw lower courts were giving the First Amendment short shrift when confronted with commercial speech. See Central Hudson, 447 U.S. at 561-62, 567-68, 100 S. Ct. at 2348Ct. at -49, 2352. The Central Hudson test was an attempt to constrain lower courts' discretion, to focus judges' thinking on the important issues-how strong the state interest is, how broad the regulation is, whether a narrower regulation would work just as well. If the Court wanted to leave these matters to judges' gut feelings, to nifty lines about "the difference between fun and profit," 971 F.2d at 1401, it could have done so with much less effort.

[28] Maybe applying the test would have convinced the majority to change its mind; maybe going through the factors would have shown that its rule was too broad, or the reasons for protecting White's "identity" too tenuous. Maybe not. But we shouldn't thumb our nose at the Supreme Court by just refusing to apply its test.

[29] For better or worse, we are the Court of Appeals for the Hollywood Circuit. Millions of people toil in the shadow of the law we make, and much of their livelihood is made possible by the existence of intellectual property rights. But much of their livelihood-and much of the vibrancy of our culture-also depends on the existence of other intangible rights: The right to draw ideas from a rich and varied public domain, and the right to mock, for profit as well as fun, the cultural icons of our time.

[30] In the name of avoiding the "evisceration" of a celebrity's rights in her image, the majority diminishes the rights of copyright holders and the public at large. In the name of fostering creativity, the majority suppresses it. Vanna White and those like her have been given something they never had before, and they've been given it at our expense. I cannot agree.

1. What happened on remand in White? On remand, a jury awarded Vanna White $400,000 ($860,000 in current dollars) for Samsung's infringement of her right of publicity. 34 See also Board of Trustees v. Fox, 492 U.S. 469, 476-81, 109 S.Ct. 3028, 3032-35, 106 L.Ed.2d 388 (1989) (reaffirming "narrowly tailored" requirement, but making clear it's not a "least restrictive means" test).

The government has a freer hand in regulating false or misleading commercial speech, but this isn't such a regulation. Some "appropriations" of a person's "identity" might misleadingly suggest an endorsement, but the mere possibility that speech might mislead isn't enough to strip it of First Amendment protection. See Zauderer v. Office of Disciplinary Counsel, 471 U.S. 626, 644 (1985).

Ellen Joan Pollock, Vanna White Wins Suit, WALL ST. J., Jan. 24, 1994, at B2. See also JENNIFER E. ROTHMAN, THE RIGHT OF PUBLICITY: PRIVACY REIMAGINED FOR A PUBLIC WORLD 90 (2018).

In In re NCAA Student-Athlete Name & Likeness Licensing Litigation, the Ninth Circuit relies heavily on the transformative use test formulated by the Supreme Court of California in Comedy III Productions, Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387 (2001). Shown below on the right is the drawing of the Three Stooges at issue in that case. The Supreme Court of California found the drawing, as applied to various merchandise, not to be sufficiently transformative to avoid liability under Cal. Civ. [1] Video games are entitled to the full protections of the First Amendment, because "[l]ike the protected books, plays, and movies that preceded them, video games communicate ideas-and even social messages-through many familiar literary devices (such as characters, dialogue, plot, and music) and through features distinctive to the medium (such as the player's interaction with the virtual world)." Brown v. Entm't Merchs. Ass'n, ---U.S. --* All such images are taken from Wikipedia or Georgetown Law Intellectual Property Teaching Resources.

--, 131 S. Ct. 2729Ct. (2011)). 1 Such rights are not absolute, and states may recognize the right of publicity to a degree consistent with the First Amendment. Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562, 574-75, 97 S.Ct. 2849, 53 L.Ed.2d 965 (1977). In this case, we must balance the right of publicity of a former college football player against the asserted First Amendment right of a video game developer to use his likeness in its expressive works.

[2] The district court concluded that the game developer, Electronic Arts ("EA"), had no First Amendment defense against the right-of-publicity claims of the football player, Samuel Keller. We affirm. Under the "transformative use" test developed by the California Supreme Court, EA's use does not qualify for First Amendment protection as a matter of law because it literally recreates Keller in the very setting in which he has achieved renown. The other First Amendment defenses asserted by EA do not defeat Keller's claims either.

[3] Samuel Keller was the starting quarterback for Arizona State University in 2005 before he transferred to the University of Nebraska, where he played during the 2007 season. EA is the producer of the NCAA Football series of video games, which allow users to control avatars representing college football players as those avatars participate in simulated games. In NCAA Football, EA seeks to replicate each school's entire team as accurately as possible. Every real football player on each team included in the game has a corresponding avatar in the game with the player's actual jersey number and virtually identical height, weight, build, skin tone, hair color, and home state. EA attempts to match any unique, highly identifiable playing behaviors by sending detailed questionnaires to team equipment managers. Additionally, EA creates realistic virtual versions of actual stadiums; populates them with the virtual athletes, coaches, cheerleaders, and fans realistically rendered by EA's graphic artists; and incorporates realistic sounds such as the crunch of the players' pads and the roar of the crowd.

[4] EA's game differs from reality in that EA omits the players' names on their jerseys and assigns each player a home town that is different from the actual player's home town. However, users of the video game may upload rosters of names obtained from third parties so that the names do appear on the jerseys. In such cases, EA allows images from the game containing athletes' real names to be posted on its website by users. Users can further alter reality by entering "Dynasty" mode, where the user assumes a head coach's responsibilities 1 In Brown v. Electronic Arts, Inc., No. 09-56675, 724 F.3d 1235, 1241-42, 2013WL 3927736, at *3 (9th Cir. July 31, 2013), we noted that "there may be some work referred to as a 'video game' (or referred to as a 'book,' 'play,' or 'movie' for that matter) that does not contain enough of the elements contemplated by the Supreme Court [in Brown v. Entertainment Merchants Association] to warrant First Amendment protection as an expressive work," but asserted that "[e]ven if there is a line to be drawn between expressive video games and non-expressive video games, and even if courts should at some point be drawing that line, we have no need to draw that line here." The same holds true in this case.

for a college program for up to thirty seasons, including recruiting players from a randomly generated pool of high school athletes, or "Campus Legend" mode, where the user controls a virtual player from high school through college, making choices relating to practices, academics, and social life. [5] In the 2005 edition of the game, the virtual starting quarterback for Arizona State wears number 9, as did Keller, and has the same height, weight, skin tone, hair color, hair style, handedness, home state, play style (pocket passer), visor preference, facial features, and school year as Keller. In the 2008 edition, the virtual quarterback for Nebraska has these same characteristics, though the jersey number does not match, presumably because Keller changed his number right before the season started. [6] Objecting to this use of his likeness, Keller filed a putative class-action complaint in the Northern District of California asserting, as relevant on appeal, that EA violated his right of publicity under California Civil Code § 3344 and California common law.foot_29 EA moved to strike the complaint as a strategic lawsuit against public participation ("SLAPP") under California's anti-SLAPP statute, Cal.Civ.Proc. Code § 425.16, and the district court denied the motion. We have jurisdiction over EA's appeal pursuant to 28 U.S.C. § 1291. See Batzel v. Smith, 333 F.3d 1018, 1024-26 (9th Cir. 2003).foot_30 II [7] California's anti-SLAPP statute is designed to discourage suits that "masquerade as ordinary lawsuits but are brought to deter common citizens from exercising their political or legal rights or to punish them for doing so." Batzel, 333 F.3d at 1024 (internal quotation marks omitted). The statute provides:

A cause of action against a person arising from any act of that person in furtherance of the person's right of petition or free speech under the United States Constitution or the California Constitution in connection with a public issue shall be subject to a special motion to strike, unless the court determines that the plaintiff has established that there is a probability that the plaintiff will prevail on the claim. Cal.Civ.Proc. Code § 425.16(b)(1). We have determined that the anti-SLAPP statute is available in federal court. Thomas v. Fry 's Elecs., Inc., 400 F.3d 1206(9th Cir. 2005) (per curiam). [8] We evaluate an anti-SLAPP motion in two steps. First, the defendant must "make a prima facie showing that the plaintiff's suit arises from an act by the defendant made in connection with a public issue in furtherance of the defendant's right to free speech under the United States or California Constitution." Batzel, 333 F.3d at 1024. Keller does not contest that EA has made this threshold showing. Indeed, there is no question that "video games qualify for First Amendment protection," Entm't Merchs. Ass'n, 131 S.Ct. at 2733, or that Keller's suit arises from EA's production and distribution of NCAA Football in furtherance of EA's protected right to express itself through video games.

[9] Second, we must evaluate whether the plaintiff has "establish[ed] a reasonable probability that the plaintiff will prevail on his or her . . . claim." Batzel, 333 F.3d at 1024. "The plaintiff must demonstrate that the complaint is legally sufficient and supported by a prima facie showing of facts to sustain a favorable judgment if the evidence submitted by plaintiff is credited." Metabolife Int 'l, Inc. v. Wornick, 264 F.3d 832, 840 (9th Cir. 2001) (internal quotation marks omitted). The statute "subjects to potential dismissal only those actions in which the plaintiff cannot state and substantiate a legally sufficient claim." Navellier v. Sletten, 29 Cal.4th 82, 124 Cal.Rptr.2d 530, 52 P.3d 703, 711 (2002) (internal quotation marks omitted). EA did not contest before the district court and does not contest here that Keller has stated a right-of-publicity claim under California common and statutory law. 4 Instead, EA raises four affirmative defenses derived from the First Amendment: the "transformative use" test, the Rogers test, the "public interest" test, and the "public affairs" exemption. EA argues that, in light of these defenses, it is not reasonably probable that Keller will prevail on his right-of-publicity claim. This appeal therefore centers on the applicability of these defenses. We take each one in turn.foot_32 A [10] The California Supreme Court formulated the transformative use defense in Comedy III Productions, Inc. v. Gary Saderup, Inc., 25 Cal.4th 387, 106 Cal.Rptr.2d 126, 21 P.3d 797 (2001). The defense is "a balancing test between the First Amendment and the right of publicity based on whether the work in question adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation." Id. 106 Cal.Rptr.2d 126, 21 P.3d at 799. The California Supreme Court explained that "when a work contains significant transformative elements, it is not only especially worthy of First Amendment protection, but it is also less likely to interfere with the economic interest protected by the right of publicity." Id. 106 Cal.Rptr.2d 126, 21 P.3d at 808. The court rejected the wholesale importation of the copyright "fair use" defense into right-of-publicity claims, but recognized that some aspects of that defense are "particularly pertinent." Id.; see 17 U.S.C.

§ 107; see also SOFA Entm't, Inc. v. Dodger Prods., Inc., 709 F.3d 1273, 1277-78 (9th Cir. 2013) (discussing the "fair use" defense codified in 17 U.S.C. § 107).

[11] Comedy III gives us at least five factors to consider in determining whether a work is sufficiently transformative to obtain First Amendment protection. See J. Thomas McCarthy, The Rights of Publicity and Privacy § 8:72 (2d 2012). First, if "the celebrity likeness is one of the 'raw materials' from which an original work is synthesized," it is more likely to be transformative than if "the depiction or imitation of the celebrity is the very sum and substance of the work in question." Comedy III, 106 Cal.Rptr.2d 126, 21 P.3d at 809. Second, the work is protected if it is "primarily the defendant's own expression"-as long as that expression is "something other than the likeness of the celebrity." Id. This factor requires an examination of whether a likely purchaser's primary motivation is to buy a reproduction of the celebrity, or to buy the expressive work of that artist. McCarthy, supra, § 8:72. Third, to avoid making judgments concerning "the quality of the artistic contribution," a court should conduct an inquiry "more quantitative than qualitative" and ask "whether the literal and imitative or the creative elements predominate in the work." Comedy III, 106 Cal.Rptr.2d 126, 21 P.3d at 809. Fourth, the California Supreme Court indicated that "a subsidiary inquiry" would be useful in close cases: whether "the marketability and economic value of the challenged work derive primarily from the fame of the celebrity depicted." Id. 106 Cal.Rptr.2d 126, 21 P.3d at 810. Lastly, the court indicated that "when an artist's skill and talent is manifestly subordinated to the overall goal of creating a conventional portrait of a celebrity so as to commercially exploit his or her fame," the work is not transformative. Id.

[12] We have explained that "[o]nly if [a defendant] is entitled to the [transformative] defense as a matter of law can it prevail on its motion to strike," because the California Supreme Court "envisioned the application of the defense as a question of fact." Hilton, 599 F.3d at 910. As a result, EA "is only entitled to the defense as a matter of law if no trier of fact could reasonably conclude that the [game] [i]s not transformative." Id.

[13] California courts have applied the transformative use test in relevant situations in four cases. First, in Comedy III itself, the California Supreme Court applied the test to T-shirts and lithographs bearing a likeness of The Three Stooges and concluded that it could "discern no significant transformative or creative contribution." Id. 106 Cal.Rptr.2d 126, 21 P.3d at 811. The court reasoned that the artist's "undeniable skill is manifestly subordinated to the overall goal of creating literal, conventional depictions of The Three Stooges so as to exploit their fame." Id. "[W]ere we to decide that [the artist's] depictions were protected by the First Amendment," the court continued, "we cannot perceive how the right of publicity would remain a viable right other than in cases of falsified celebrity endorsements." Id. [14] Second, in Winter v. DC Comics, the California Supreme Court applied the test to comic books containing characters Johnny and Edgar Autumn, "depicted as villainous half-worm, half-human offspring" but evoking two famous brothers, rockers Johnny and Edgar Winter. 30 Cal.4th 881, 134 Cal.Rptr.2d 634, 69 P.3d 473, 476 (2003). {See relevant images below}. The court held that "the comic books are transformative and entitled to First Amendment protection." Id. 134 Cal.Rptr.2d 634, 69 P.3d at 480. It reasoned that the comic books "are not just conventional depictions of plaintiffs but contain significant expressive content other than plaintiffs' mere likenesses." Id. 134 Cal.Rptr.2d 634, 69 P.3d at 479. "To the extent the drawings of the Autumn brothers resemble plaintiffs at all, they are distorted for purposes of lampoon, parody, or caricature." Id. Importantly, the court relied on the fact that the brothers "are but cartoon characters . . . in a larger story, which is itself quite expressive." Id. [15] Third, in Kirby v. Sega of America, Inc., the California Court of Appeal applied the transformative use test to a video game in which the user controls the dancing of "Ulala," a reporter from outer space allegedly based on singer Kierin Kirby, whose "'signature' lyrical expression . . . is 'ooh la la. '" 144 Cal.App.4th 47, 50 Cal.Rptr.3d 607, 609-10 (2006). {See relevant images below}. The court held that "Ulala is more than a mere likeness or literal depiction of Kirby," pointing to Ulala's "extremely tall, slender computer-generated physique," her "hairstyle and primary costume," her dance moves, and her role as "a spaceage reporter in the 25th century," all of which were "unlike any public depiction of Kirby." Id. at 616. "As in Winter, Ulala is a 'fanciful, creative character' who exists in the context of a unique and expressive video game." Id. at 618.

[16] Finally, in No Doubt v. Activision Publishing, Inc., the California Court of Appeal addressed Activision's Band Hero video game. 192 Cal.App.4th 1018, 122 Cal.Rptr.3d 397, 400 (2011), petition for review denied, 2011 Cal. LEXIS 6100 (Cal. June 8, 2011) (No. B223996). {See relevant images below}. In Band Hero, users simulate performing in a rock band in time with popular songs. Id. at 401. Users choose from a number of avatars, some of which represent actual rock stars, including the members of the rock band No Doubt. Id. at 401. Activision licensed No Doubt's likeness, but allegedly exceeded the scope of the license by permitting users to manipulate the No Doubt avatars to play any song in the game, solo or with members of other bands, and even to alter the avatars' voices. Id. at 402. The court held that No Doubt's right of publicity prevailed despite Activision's First Amendment defense because the game was not "transformative" under the Comedy III test. It reasoned that the video game characters were "literal recreations of the band members," doing "the same activity by which the band achieved and maintains its fame." Id. at 411. According to the court, the fact "that the avatars appear in the context of a videogame that contains many other creative elements[ ] does not transform the avatars into anything other than exact depictions of No Doubt's members doing exactly what they do as celebrities." Id. The court concluded that "the expressive elements of the game remain manifestly subordinated to the overall goal of creating a conventional portrait of No Doubt so as to commercially exploit its fame." Id. (internal quotation marks omitted).

[17] We have also had occasion to apply the transformative use test. In Hilton v. Hallmark Cards, we applied the test to a birthday card depicting Paris Hilton in a manner reminiscent of an episode of Hilton's reality show The Simple Life. 599 F.3d at 899. {See relevant image below}. We observed some differences between the episode and the card, but noted that "the basic setting is the same: we see Paris Hilton, born to privilege, working as a waitress." Id. at 911. We reasoned that "[w]hen we compare Hallmark's card to the video game in Kirby, which transported a 1990s singer (catchphrases and all) into the 25th century and transmogrified her into a space-age reporter, . . . the card falls far short of the level of new expression added in the video game." Id. As a result, we concluded that "there is enough doubt as to whether Hallmark's card is transformative under our case law that we cannot say Hallmark is entitled to the defense as a matter of law." Id. 6 [18] With these cases in mind as guidance, we conclude that EA's use of Keller's likeness does not contain significant transformative elements such that EA is entitled to the defense as a matter of law. The facts of No Doubt are very similar to those here. EA is alleged to have replicated Keller's physical characteristics in NCAA Football, just as the members of No Doubt are realistically portrayed in Band Hero. Here, as in Band Hero, users manipulate the characters in the performance of the same activity for which they are known in real lifeplaying football in this case, and performing in a rock band in Band Hero. The context in which the activity occurs is also similarly realistic-real venues in Band Hero and realistic depictions of actual football stadiums in NCAA Football. As the district court found, Keller is represented as "what he was: the starting quarterback for Arizona State" and Nebraska, and "the game's setting is identical to where the public found [Keller] during his collegiate career: on the football field." Keller v. Elec. Arts, Inc., No. C 09-1967CW, 2010WL 530108, at *5 (N.D.Cal. Feb. 8, 2010).

[19] EA argues that the district court erred in focusing primarily on Keller's likeness and ignoring the transformative elements of the game as a whole. Judge Thomas, our dissenting colleague, suggests the same. See Dissent at 1285. We are unable to say that there was any error, particularly in light of No Doubt, which reasoned much the same as the district court in this case: "that the avatars appear in the context of a videogame that contains many other creative elements[ ] does not transform the avatars into anything other than exact depictions of No Doubt's members doing exactly what they do as celebrities." No Doubt, 122 Cal.Rptr.3d at 411. 7 EA suggests that the fact that NCAA Football users can alter the characteristics of the 6 We also briefly addressed the transformative use test in a footnote in Hoffman v. Capital Cities/ ABC, Inc., 255 F.3d 1180(9th Cir. 2001). We indicated that if we had considered the test, we would have concluded that an image of Dustin Hoffman from "Tootsie" that had been altered to make it appear like he was wearing fashions from a decade later "contained 'significant transformative elements.' " Id. at 1184 n. 2; 1182-83. "Hoffman's body was eliminated and a new, differently clothed body was substituted in its place. In fact, the entire theory of Hoffman's case rests on his allegation that the photograph is not a 'true' or 'literal' depiction of him, but a false portrayal." Id. at 1184 n. 2. 7 Judge Thomas argues that the "sheer number of virtual actors," the absence of "any evidence as to the personal marketing power of Sam Keller," and the relative anonymity of each individual player in NCAA Football as compared to the public figures in other California right-of-publicity cases all mitigate in favor of finding that the EA's First Amendment rights outweigh Keller's right of publicity.

avatars in the game is significant. Again, our dissenting colleague agrees. See Dissent at 1286-87. In No Doubt, the California Court of Appeal noted that Band Hero "d[id] not permit players to alter the No Doubt avatars in any respect." Id. at 410. The court went on to say that the No Doubt avatars "remain at all times immutable images of the real celebrity musicians, in stark contrast to the 'fanciful, creative characters' in Winter and Kirby." Id. The court explained further:

[I]t is the differences between Kirby and the instant case . . . which are determinative. In Kirby, the pop singer was portrayed as an entirely new character-the space-age news reporter Ulala. In Band Hero, by contrast, no matter what else occurs in the game during the depiction of the No Doubt avatars, the avatars perform rock songs, the same activity by which the band achieved and maintains its fame. Moreover, the avatars perform those songs as literal recreations of the band members. That the avatars can be manipulated to perform at fanciful venues including outer space or to sing songs the real band would object to singing, or that the avatars appear in the context of a videogame that contains many other creative elements, does not transform the avatars into anything other than exact depictions of No Doubt's members doing exactly what they do as celebrities. See Dissent at 1286-88. These facts are not irrelevant to the analysis-they all can be considered in the framework of the five considerations from Comedy III laid out above-but the fact is that EA elected to use avatars that mimic real college football players for a reason. If EA did not think there was value in having an avatar designed to mimic each individual player, it would not go to the lengths it does to achieve realism in this regard. Having chosen to use the players' likenesses, EA cannot now hide behind the numerosity of its potential offenses or the alleged unimportance of any one individual player.

Winter and Kirby. We believe No Doubt offers a persuasive precedent that cannot be materially distinguished from Keller's case. 8 , 9 [20] The Third Circuit came to the same conclusion in Hart v. Electronic Arts, Inc., 717 F. 3d 141 (3d Cir. 2013). In Hart, EA faced a materially identical challenge under New Jersey right-of-publicity law, brought by former Rutgers quarterback Ryan Hart. See id. at 163 n. 28 ("Keller is simply [Hart] incarnated in California."). Though the Third Circuit was tasked with interpreting New Jersey law, the court looked to the transformative use test developed in California. See id. at 158 n. 23 (noting that the right-of-publicity laws are "strikingly similar . . . and protect similar interests" in New Jersey and California, and that "consequently [there is] no issue in applying balancing tests developed in California to New Jersey"); see also id. at 165 (holding that "the Transformative Use Test is the proper analytical framework to apply to cases such as the one at bar"). Applying the test, the court held that "the NCAA Football . . . games at issue . . . do not sufficiently transform [Hart]'s identity to escape the right of publicity claim," reversing the district court's grant of summary judgment to EA. Id. at 170. [21] As we have, the Third Circuit considered the potentially transformative nature of the game as a whole, id. at 166, 169, and the user's ability to alter avatar characteristics, id. at 166-68. Asserting that "the lack of transformative context is even more pronounced here than in No Doubt," id. at 166, and that "the ability to modify the avatar counts for little where the appeal of the game lies in users' ability to play as, or alongside [,] their preferred players or team," id. at 168 (internal quotation marks omitted), the Third Circuit agreed with us that these changes do not render the NCAA Football games sufficiently transformative to defeat a right-of-publicity claim. [22] Judge Ambro dissented in Hart, concluding that "the creative components of NCAA Football contain sufficient expressive transformation to merit First Amendment protection." 8 EA further argues that No Doubt is distinguishable because the video game company in that case entered into a license agreement which it allegedly breached. However, the California Court of Appeal did not rely on breach of contract in its analysis of whether the game was transformative. 122 Cal.Rptr.3d at 412 n. 7. Keller asserts here that EA contracted away its First Amendment rights in a licensing agreement with the NCAA that purportedly prohibited the use of athlete likenesses. However, in light of our conclusion that EA is not entitled to a First Amendment defense as a matter of law, we need not reach this issue and leave it for the district court to address in the first instance on remand should the finder of fact determine in post-SLAPP proceedings that EA's use is transformative. 9 In dissent, Judge Thomas suggests that this case is distinguishable from other right-to-publicity cases because "an individual college athlete's right of publicity is extraordinarily circumscribed and, in practical reality, nonexistent" because "NCAA rules prohibit athletes from benefitting economically from any success on the field." Dissent at 1289. Judge Thomas commendably addresses the fairness of this structure, see Dissent at 1289 n. 5, but setting fairness aside, the fact is that college athletes are not indefinitely bound by NCAA rules. Once an athlete graduates from college, for instance, the athlete can capitalize on his success on the field during college in any number of ways. EA's use of a college athlete's likeness interferes with the athlete's right to capitalize on his athletic success once he is beyond the dominion of NCAA rule.

Id. at 175 (Ambro, J., dissenting). But in critiquing the majority opinion, Judge Ambro disregarded No Doubt and Kirby because "they were not decided by the architect of the Transformative Use Test, the Supreme Court of California." Id. at 172 n. 4. He thus "d[id] not attempt to explain or distinguish the[se cases'] holdings except to note that [he] believe [s] No Doubt, which focused on individual depictions rather than the work in its entirety, was wrongly decided in light of the prior precedent in Comedy III and Winter." Id. We recognize that we are bound only by the decisions of a state's highest court and not by decisions of the state's intermediate appellate court when considering state law issues sitting in diversity jurisdiction. See In re Kirkland, 915 F.2d 1236, 1238-39 (9th Cir. 1990). Nonetheless, where there is no binding precedent from the state's highest court, we "must predict how the highest state court would decide the issue using intermediate appellate court decisions, decisions from other jurisdictions, statutes, treatises, and restatements as guidance." Id. at 1239 (emphasis added). As stated above, we believe No Doubt in particular provides persuasive guidance. We do not believe No Doubt to be inconsistent with the California Supreme Court's relevant decisions, and we will not disregard a well-reasoned decision from a state's intermediate appellate court in this context. Like the majority in Hart, we rely substantially on No Doubt, and believe we are correct to do so.

[23] Given that NCAA Football realistically portrays college football players in the context of college football games, the district court was correct in concluding that EA cannot prevail as a matter of law based on the transformative use defense at the anti-SLAPP stage. Cf. Hilton, 599 F.3d at 910-11. 10

[24] EA urges us to adopt for right-of-publicity claims the broader First Amendment defense that we have previously adopted in the context of false endorsement claims under the Lanham Act: the Rogers test. See Brown v. Elec. Arts, 724 F.3d at 1239-41, 2013 WL 3927736, at *1-2 (applying the Rogers test to a Lanham Act claim brought by former NFL player Jim Brown relating to the use of his likeness in EA's Madden NFL video games). . . . . [25] In this case, EA argues that we should extend this test, created to evaluate Lanham Act claims, to apply to right-of-publicity claims because it is "less prone to misinterpretation" and "more protective of free expression" than the transformative use defense. Although we 10 Judge Thomas asserts that "[t]he logical consequence of the majority view is that all realistic depictions of actual persons, no matter how incidental, are protected by a state law right of publicity regardless of the creative context," "jeopardiz[ing] the creative use of historic figures in motion pictures, books, and sound recordings." Dissent at 1290. We reject the notion that our holding has such broad consequences. As discussed above, one of the factors identified in Comedy III "requires an examination of whether a likely purchaser's primary motivation is to buy a reproduction of the celebrity, or to buy the expressive work of that artist." McCarthy,supra,§ 8:72;see Comedy III,106 Cal.Rptr.2d 126,21 P.3d at 809. Certainly this leaves room for distinguishing between this casewhere we have emphasized EA's primary emphasis on reproducing reality-and cases involving other kinds of expressive works.

acknowledge that there is some overlap between the transformative use test formulated by the California Supreme Court and the Rogers test, we disagree that the Rogers test should be imported wholesale for right-of-publicity claims. Our conclusion on this point is consistent with the Third Circuit's rejection of EA's identical argument in Hart. See Hart, As the history and development of the Rogers test makes clear, it was designed to protect consumers from the risk of consumer confusion-the hallmark element of a Lanham Act claim. See Cairns v. Franklin Mint Co., 292 F.3d 1139, 1149(9th Cir. 2002). The right of publicity, on the other hand, does not primarily seek to prevent consumer confusion. See Hart,717 F. 3d at 158 ("[ T]he right of publicity does not implicate the potential for consumer confusion . . . ."). Rather, it primarily "protects a form of intellectual property [in one's person] that society deems to have some social utility." Comedy III, 106 Cal.Rptr.2d 126, 21 P.3d at 804. As the California Supreme Court has explained:

Often considerable money, time and energy are needed to develop one's prominence in a particular field. Years of labor may be required before one's skill, reputation, notoriety or virtues are sufficiently developed to permit an economic return through some medium of commercial promotion. For some, the investment may eventually create considerable commercial value in one's identity.

Id. 106 Cal.Rptr.2d 126, 21 P.3d at 804-05 (internal quotation marks and citations omitted). [26] The right of publicity protects the celebrity, not the consumer. Keller's publicity claim is not founded on an allegation that consumers are being illegally misled into believing that he is endorsing EA or its products. Indeed, he would be hard-pressed to support such an allegation absent evidence that EA explicitly misled consumers into holding such a belief. See Brown v. Elec. Arts, 724 F.3d at 1242-43, 2013 WL 3927736, at *4 (holding under the Rogers test that, since "Brown's likeness is artistically relevant to the [Madden NFL ] games and there are no alleged facts to support the claim that EA explicitly misled consumers as to Brown's involvement with the games," "the public interest in free expression outweighs the public interest in avoiding consumer confusion"). Instead, Keller's claim is that EA has appropriated, without permission and without providing compensation, his talent and years of hard work on the football field. The reasoning of the Rogers and Mattel courts-that artistic and literary works should be protected unless they explicitly mislead consumers-is simply not responsive to Keller's asserted interests here. Cf. Hart, 717 F. 3d at 157 ("Effectively, [EA] argues that [Hart] should be unable to assert a claim for appropriating his likeness as a football player precisely because his likeness was used for a game about football. Adopting this line of reasoning threatens to turn the right of publicity on its head."). . . . .

[27] Under California's transformative use defense, EA's use of the likenesses of college athletes like Samuel Keller in its video games is not, as a matter of law, protected by the First Amendment. We reject EA's suggestion to import the Rogers test into the right-of-publicity arena, and conclude that state law defenses for the reporting of information do not protect EA's use.

[1] Because the creative and transformative elements of Electronic Arts' NCAA Football video game series predominate over the commercial use of the athletes' likenesses, the First Amendment protects EA from liability. Therefore, I respectfully dissent.

[2] As expressive works, video games are entitled to First Amendment protection. Brown v. Entm't Merchs. Ass'n, ---U.S. ----, 131 S. Ct. 2729Ct. (2011)). The First Amendment affords additional protection to NCAA Football because it involves a subject of substantial public interest: collegiate football. Moore v. Univ. of Notre Dame, 968 F.Supp. 1330, 1337(N.D.Ind. 1997). Because football is a matter of public interest, the use of the images of athletes is entitled to constitutional protection, even if profits are involved. Montana v. San Jose Mercury News, Inc., 34 Cal.App.4th 790, 40 Cal.Rptr.2d 639, 643 n. 2 (1995); see also Cal. Civ. Code § 3344(d) (exempting from liability the "use of a name . . . or likeness in connection with any . . . public affairs, or sports broadcast or account").

[3] Where it is recognized, the tort of appropriation is a creature of common law or statute, depending on the jurisdiction. However, the right to compensation for the misappropriation for commercial use of one's image or celebrity is far from absolute. In every jurisdiction, any right of publicity must be balanced against the constitutional protection afforded by the First Amendment. Courts have employed a variety of methods in balancing the rights. See, e.g., Doe v. TCI Cablevision, 110 S.W.3d 363, 374 (Mo. 2003) (en banc). The California Supreme Court applies a "transformative use" test it formulated in Comedy III Productions, Inc. v. Gary Saderup, Inc., 25 Cal.4th 387, 106 Cal.Rptr.2d 126, 21 P.3d 797 (2001). 1 [4] As the majority properly notes, the transformative use defense is "a balancing test between the First Amendment and the right of publicity based on whether the work in question adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation." Comedy III, 106 Cal.Rptr.2d 126, 21 P.3d at 799. The rationale for the test, as the majority notes, is that "when a work contains significant 1 I agree with the majority that the test articulated in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), should not be employed in this context. The Rogers test is appropriately applied in Lanham Act cases, where the primary concern is with the danger of consumer confusion when a work is depicted as something it is not. 15 U.S.C. § 1125(a)(1). However, the right of publicity is an economic right to use the value of one own's celebrity. Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562, 576-77, 97 S.Ct. 2849, 53 L.Ed.2d 965 (1977). Therefore, a more nuanced balancing is required. In our context, I believe the transformative use test-if correctly applied to the work as a whole-provides the proper analytical framework.

transformative elements, it is not only especially worthy of First Amendment protection, but it is also less likely to interfere with the economic interest protected by the right of publicity." Id. 106 Cal.Rptr.2d 126, 21 P.3d at 808. [5] The five considerations articulated in Comedy III, and cited by the majority, are whether: (1) the celebrity likeness is one of the raw materials from which an original work is synthesized; (2) the work is primarily the defendant's own expression if the expression is something other than the likeness of the celebrity; (3) the literal and imitative or creative elements predominate in the work; (4) the marketability and economic value of the challenged work derives primarily from the fame of the celebrity depicted; and ( 5) an artist's skill and talent has been manifestly subordinated to the overall goal of creating a conventional portrait of a celebrity so as to commercially exploit the celebrity's fame. Id. 106 Cal.Rptr.2d 126, 21 P.3d at 809-10.

[6] Although these considerations are often distilled as analytical factors, Justice Mosk was careful in Comedy III not to label them as such. Indeed, the focus of Comedy III is a more holistic examination of whether the transformative and creative elements of a particular work predominate over commercially based literal or imitative depictions. The distinction is critical, because excessive deconstruction of Comedy III can lead to misapplication of the test. And it is at this juncture that I must respectfully part ways with my colleagues in the majority. [7] The majority confines its inquiry to how a single athlete's likeness is represented in the video game, rather than examining the transformative and creative elements in the video game as a whole. In my view, this approach contradicts the holistic analysis required by the transformative use test. See Hart v. Elec. Arts, Inc., 717 F. 3d 141, 170-76 (3d Cir. 2013) (Ambro, J., dissenting). 2 The salient question is whether the entire work is transformative, and whether the transformative elements predominate, rather than whether an individual persona or image has been altered. [8] When EA's NCAA Football video game series is examined carefully, and put in proper context, I conclude that the creative and transformative elements of the games predominate over the commercial use of the likenesses of the athletes within the games.

[9] The first step in conducting a balancing is to examine the creative work at issue. At its essence, EA's NCAA Football is a work of interactive historical fiction. Although the game changes from year to year, its most popular features predominately involve role-playing by the gamer. For example, a player can create a virtual image of himself as a potential college football player. The virtual player decides which position he would like to play, then participates in a series of "tryouts" or competes in an entire high school season to gauge his skill. Based on his performance, the virtual player is ranked and available to play at select colleges. The player chooses among the colleges, then assumes the role of a college football player. He also selects a major, the amount of time he wishes to spend on social activities, and practice-all of which may affect the virtual player's performance. He then plays his position on the college team. In some versions of the game, in another mode, the virtual player can engage in a competition for the Heisman Trophy. In another popular mode, the gamer becomes a virtual coach. The coach scouts, recruits, and develops entirely fictional players for his team. The coach can then promote the team's evolution over decades of seasons. [10] The college teams that are supplied in the game do replicate the actual college teams for that season, including virtual athletes who bear the statistical and physical dimensions of the actual college athletes. But, unlike their professional football counterparts in the Madden NFL series, the NCAA football players in these games are not identified. [11] The gamers can also change their abilities, appearances, and physical characteristics at will. Keller's impressive physical likeness can morphed by the gamer into an overweight and slow virtual athlete, with anemic passing ability. And the gamer can create new virtual players out of whole cloth. Players can change teams. The gamer could pit Sam Keller against himself, or a stronger or weaker version of himself, on a different team. Or the gamer could play the game endlessly without ever encountering Keller's avatar. In the simulated games, the gamer controls not only the conduct of the game, but the weather, crowd noise, mascots, and other environmental factors. Of course, one may play the game leaving the players unaltered, pitting team against team. But, in this context as well, the work is one of historic fiction. The gamer controls the teams, players, and games.

[12] Applying the Comedy III considerations to NCAA Football in proper holistic context, the considerations favor First Amendment protection. The athletic likenesses are but one of the raw materials from which the broader game is constructed. The work, considered as a whole, is primarily one of EA's own expression. The creative and transformative elements predominate over the commercial use of likenesses. The marketability and economic value of the game comes from the creative elements within, not from the pure commercial exploitation of a celebrity image. The game is not a conventional portrait of a celebrity, but a work consisting of many creative and transformative elements. [13] The video game at issue is much akin to the creations the California Supreme Court found protected in Winter v. DC Comics, 30 Cal.4th 881, 134 Cal.Rptr.2d 634, 69 P.3d 473, 476 (2003), where the two fabled guitarists Johnny and Edgar Winter were easily identifiable, but depicted as chimeras. It is also consistent with the California Court of Appeal's decision in Kirby v. Sega of America, Inc., 144 Cal.App.4th 47, 50 Cal.Rptr.3d 607, 609-10 (2006), where a character easily identified as singer Kierin Kirby, more popularly known as Lady Miss Kier, was transformed into a "'fanciful, creative character' who exists in the context of a unique and expressive video game." Id. at 618. So, too, are the virtual players who populate the world of the NCAA Football series. [14] No Doubt v. Activision Publishing, Inc., 192 Cal.App.4th 1018, 122 Cal.Rptr.3d 397 (2011), is not to the contrary. The literal representations in No Doubt were not, and could not be, transformed in any way. Indeed, in No Doubt, the bandmembers posed for motion-capture photography to allow reproduction of their likenesses, id. at 402, and the Court of Appeal underscored the fact that the video game did not "permit players to alter the No Doubt avatars in any respect" and the avatars remained "at all times immutable images of the real celebrity musicians," id. at 410. The Court of Appeal cited character immutability as a chief factor distinguishing that case from Winter and Kirby. Id. Unlike the avatars in No Doubt, the virtual players in NCAA Football are completely mutable and changeable at the whim of the gamer. The majority places great reliance on No Doubt as support for its proposition that the initial placement of realistic avatars in the game overcomes the First Amendment's protection, but the Court of Appeal in No Doubt rejected such a cramped construction, noting that "even literal reproductions of celebrities may be 'transformed' into expressive works based on the context into which the celebrity image is placed." Id. at 410 (citing Comedy III, 106 Cal.Rptr.2d 126, 21 P.3d at 797).foot_34 [15] Unlike the majority, I would not punish EA for the realism of its games and for the skill of the artists who created realistic settings for the football games. Majority op. at 1279 n. 10. That the lifelike roar of the crowd and the crunch of pads contribute to the gamer's experience demonstrates how little of NCAA Football is driven by the particular likeness of Sam Keller, or any of the other plaintiffs, rather than by the game's artistic elements.

[16] In short, considering the creative elements alone in this case satisfies the transformative use test in favor of First Amendment protection.

[17] Although one could leave the analysis with an examination of the transformative and creative aspects of the game, a true balancing requires an inquiry as to the other side of the scales: the publicity right at stake. Here, as well, the NCAA Football video game series can be distinguished from the traditional right of publicity cases, both from a quantitative and a qualitative perspective.

[18] As a quantitative matter, NCAA Football is different from other right of publicity cases in the sheer number of virtual actors involved. Most right of publicity cases involve either one celebrity, or a finite and defined group of celebrities. Comedy III involved literal likenesses of the Three Stooges. Hilton v. Hallmark Cards, 599 F.3d 894, 909-12 (9th Cir. 2009), involved the literal likeness of Paris Hilton. Winter involved the images of the rock star brother duo. Kirby involved the likeness of one singer. No Doubt focused on the likenesses of the members of a specific legendary band.

[19] In contrast, NCAA Football includes not just Sam Keller, but thousands of virtual actors. This consideration is of particular significance when we examine, as instructed by Comedy III, whether the source of the product marketability comes from creative elements or from pure exploitation of a celebrity image. 106 Cal.Rptr.2d 126, 21 P.3d at 810. There is not, at this stage of the litigation, any evidence as to the personal marketing power of Sam Keller, as distinguished from the appeal of the creative aspects of the product. Regardless, the sheer number of athletes involved inevitably diminish the significance of the publicity right at issue.

Comedy III involved literal depictions of the Three Stooges on lithographs and T-shirts. Winter involved characters depicted in a comic strip. Kirby and No Doubt involved pivotal characters in a video game. The commercial image of the celebrities in each case was central to the production, and its contact with the consumer was immediate and unavoidable. In contrast, one could play NCAA Football thousands of times without ever encountering a particular avatar. In context of the collective, an individual's publicity right is relatively insignificant. Put another way, if an anonymous virtual player is tackled in an imaginary video game and no one notices, is there any right of publicity infringed at all?

[20] The sheer quantity of the virtual players in the game underscores the inappropriateness of analyzing the right of publicity through the lens of one likeness only. Only when the creative work is considered in complete context can a proper analysis be conducted.

[21] As a qualitative matter, the essence of NCAA Football is founded on publicly available data, which is not protected by any individual publicity rights. It is true that EA solicits and receives information directly from colleges and universities. But the information is hardly proprietary. Personal vital statistics for players are found in college programs and media guides. Likewise, playing statistics are easily available. In this respect, the information used by EA is indistinguishable from the information used in fantasy athletic leagues, for which the First Amendment provides protection, C.B.C. Distribution & Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 505 F.3d 818, 823-24 (8th Cir. 2007), or much beloved statistical board games, such as Strat-O-Matic. An athlete's right of publicity simply does not encompass publicly available statistical data. See, e.g., IMS Health Inc. v. Sorrell, 630 F.3d 263, 271-72 (2d Cir. 2010) ("The First Amendment protects '[e]ven dry information, devoid of advocacy, political relevance, or artistic expression.'" (quoting Universal City Studios, Inc. v. Corley, 273 F.3d 429, 446 (2d Cir. 2001)) (alteration in original)).foot_35 [22] Further, the structure of the game is not founded on exploitation of an individual's publicity rights. The players are unidentified and anonymous. It is true that third-party software is available to quickly identify the players, but that is not part of the EA package. And the fact that the players can be identified by the knowledgeable user by their position, team, and statistics is somewhat beside the point. The issue is whether the marketability of the product is driven by an individual celebrity, or by the game itself. Comedy III, 106 Cal.Rptr.2d 126, 21 P.3d at 810. Player anonymity, while certainly not a complete defense, bears on the question of how we balance the right of publicity against the First Amendment. This feature of the game places it in stark contrast with No Doubt, where the whole point of the enterprise was the successful commercial exploitation of the specifically identified, world-famous musicians.

[23] Finally, as a qualitative matter, the publicity rights of college athletes are remarkably restricted. This consideration is critical because the "right to exploit commercially one's celebrity is primarily an economic right. " Gionfriddo v. Major League Baseball, 94 Cal.App.4th 400, 114 Cal.Rptr.2d 307, 318 (2001). NCAA rules prohibit athletes from benefitting economically from any success on the field. NCAA Bylaw 12.5 specifically prohibits commercial licensing of an NCAA athlete's name or picture. NCAA, 2012-13 NCAA Division I Manual § 12.5.2.1 (2012). Before being allowed to compete each year, all Division I NCAA athletes must sign a contract stating that they understand the prohibition on licensing affirming that they have not violated any amateurism rules. In short, even if an athlete wished to license his image to EA, the athlete could not do so without destroying amateur status. Thus, an individual college athlete's right of publicity is extraordinarily circumscribed and, in practical reality, nonexistent. 5 [24] In sum, even apart from consideration of transformative elements, examination of the right of publicity in question also resolves the balance in favor of the First Amendment. The quantity of players involved dilutes the commercial impact of any particular player and the scope of the publicity right is significantly reduced by the fact that: (1) a player cannot own the individual, publicly available statistics on which the game is based; (2) the players are not identified in the game; and (3) NCAA college athletes do not have the right to license their names and likenesses, even if they chose to do so. 6 5 The issue of whether this structure is fair to the student athlete is beyond the scope of this appeal, but forms a significant backdrop to the discussion. The NCAA received revenues of $871.6 million in fiscal year 2011-12, with 81% of the money coming from television and marketing fees. However, few college athletes will ever receive any professional compensation. The NCAA reports that in 2011, there were 67,887 college football players. Of those, 15,086 were senior players, and only 255 athletes were drafted for a professional team. Thus, only 1.7% of seniors received any subsequent professional economic compensation for their athletic endeavors. NCAA, Estimated Probability of Competing in Athletics Beyond the High School Interscholastic Level (2011), available at http:// www. ncaa. org/ wps/ wcm/ connect/ public/ ncaa/ pdfs/ 2011/ 2011+ probability+ of+ going+ pro.

And participation in college football can come at a terrible cost. The NCAA reports that, during a recent five-year period, college football players suffered 41,000 injuries, including 23 non-fatal catastrophic injuries and 11 fatalities from indirect catastrophic injuries. NCAA, Football Injuries: Data From the 2004/05 to 2008/09 Seasons, available at http:// www. ncaa. org/ wps/ wcm/ connect/ public/ ncaa/ health+ and+ safety/ sports+ injuries/ resources/ football+ injuries.

1. The defendant's "catch-22" in right of publicity actions: In 2017, FX Networks premiered the eight-episode docudrama Feud: Bette and Joan, which recounted the rivalry between Hollywood actors Joan Crawford (190?-1977) and Bette Davis (1908Davis ( -1989)). The critically-acclaimed series included an unflattering portrayal of actor Olivia De Havilland (1916-2020) The {trial} court concluded that, because Feud tried to portray de Havilland as realistically as possible, the program was not "transformative" under Comedy III Productions and therefore not entitled to First Amendment protection. As appellants and numerous amici curiae point out, this reasoning would render actionable all books, films, plays, and television programs that accurately portray real people. Indeed, the more realistic the portrayal, the more actionable the expressive work would be. The First Amendment does not permit this result. We reverse.

The trial court's ruling leaves authors, filmmakers, playwrights, and television producers in a Catch-22. If they portray a real person in an expressive work accurately and realistically without paying that person, they face a right of publicity lawsuit. If they portray a real person in an expressive work in a fanciful, imaginative-even fictitious and therefore "false"-way, they face a false light lawsuit if the person portrayed does not like the portrayal. "[T]he right of publicity cannot, consistent with the First Amendment, be a right to control the celebrity's image by censoring disagreeable portrayals." (Comedy III, 25 Cal.4th at p. 403.)

Id. at 870-71 (footnote omitted). The California Supreme Court denied review (July 11, 2018) and then the U.S. Supreme Court denied certiorari review. 139 S. Ct. 800 (2019) The several courts vested with jurisdiction of civil actions arising under this chapter shall have power to grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office or to prevent a violation under subsection (a), (c), or (d) of section 1125 of this title. A plaintiff seeking any such injunction shall be entitled to a rebuttable presumption of irreparable harm upon a finding of a violation identified in this subsection in the case of a motion for a permanent injunction or upon a finding of likelihood of success on the merits for a violation identified in this subsection in the case of a motion for a preliminary injunction or temporary restraining order. . . . The primary remedy that most trademark and false advertising plaintiffs seek is injunctive relief, often in the form of a preliminary injunction. Though the circuits' criteria for a preliminary (or permanent) injunction vary somewhat, most circuits have traditionally required the plaintiff to show: (1) a likelihood of success on the merits, (2) a likelihood of irreparable harm in the absence of the injunction, (3) that the balance of the hardships tip in the movant's favor, and (4) that the injunction would not be adverse to the public interest. The Second Circuit, by contrast, has formulated a different test: "A party seeking a preliminary injunction must establish (1) irreparable harm and (2) either (a) a likelihood of success on the merits or (b) a sufficiently serious question going to the merits and a balance of hardships tipping decidedly in the moving party's favor." Brennan's, Inc. v. Brennan's Rest., L.L.C., 360 F.3d 125, 129 (2d Cir. 2004).

The second sentence of Lanham Act § 34(a) provides that if a plaintiff establishes infringement (or in the case of a motion for a preliminary injunction, a likelihood of success on the merits), it is entitled to a rebuttable presumption of irreparable harm. This provision was added to the Lanham Act by the Trademark Modernization Act, Pub. L. No. 116-260, H.R. 133, 116th Cong. subtit. B, § § 221-26 (2020), which the President signed into law on December 27, 2020. Up until the Supreme Court's decision in the patent case eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006), most circuits traditionally held that a showing of a likelihood of confusion or dilution triggered a presumption of irreparable harm. See, e.g., Federal Exp. Corp. v. Federal Espresso, Inc., 201 F.3d 168, 174 (2d Cir. 2000) ("[P]roof of a likelihood of confusion would create a presumption of irreparable harm, and thus a plaintiff would not need to prove such harm independently"). But some circuits held that after eBay, this presumption was no longer tenable. For example, in Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc., 736 F.3d 1239(9th Cir. 2013), the Ninth Circuit reasoned:

In eBay, the Court held that the traditional four-factor test employed by courts of equity, including the requirement that the plaintiff must establish irreparable injury in seeking a permanent injunction, applies in the patent context. 547 U.S. at 391. Likening injunctions in patent cases to injunctions under the Copyright Act, the Court explained that it "has consistently rejected . . . a rule that an injunction automatically follows a determination that a copyright has been infringed," and emphasized that a departure from the traditional principles of equity "should not be lightly implied." Id. at 391-93 (citations omitted). The same principle applies to trademark infringement under the Lanham Act. Just as " [n] [1] Whether a federal court may issue an injunction against an allegedly infringing trademark can be a bit confusing. Responding, Congress passed the Trademark Modernization Act of 2020 ("TMA"). Nichino America Inc. says the District Court misapplied the TMA when it denied its motion for a preliminary injunction against Valent USA LLC's allegedly infringing mark. Finding no reversible error in the District Court's careful application of its discretion, we will affirm. Along the way, we explain how district courts should apply the rebuttable presumption of irreparable harm created by the TMA.

[2] Nichino and Valent sell pesticides for farming. Since 2004, Nichino has offered a trademarked product known as "CENTAUR." Valent trademarked a competing product called "SENSTAR" in 2019, giving it a logo resembling CENTAUR's colors, fonts, and arrow artwork. Both pesticides are used in the same geographic areas against many of the same insects, and both are sold to farmers through distributors. But there are differences. SENSTAR comes as a liquid and uses a unique combination of two active chemicals. It costs $425 per gallon, and ships in cases containing four one-gallon containers. CENTAUR is manufactured as a solid and sold by the pallet, with each containing 622 pounds of pesticide packed into bags and cases, for $24 per pound. Yet the similarities were enough for Nichino to sue Valent for trademark infringement, and ask for a preliminary injunction against SENSTAR's launch. A suit that would become one of the first to apply the newly effective TMA.

[3] Nichino argued that Valent's use of the SENSTAR mark would create confusion among consumers, a necessary element in a trademark infringement claim. See A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 210 (3d Cir. 2000). Confusion, said Nichino, likely to harm its reputation and goodwill, warranting injunctive relief.foot_39 That is where the TMA enters, creating a rebuttable presumption of irreparable harm favoring a plaintiff who has shown a likelihood of success on the merits of an infringement claim. 3 [4] The District Court found Nichino narrowly demonstrated its infringement claim would likely succeed, though "there is not an abundance of evidence of likelihood of confusion" between the products. (App. at 176.) The District Court reached that conclusion by consulting the "Lapp factors," our nearly forty-year-old, ten-part, yet non-exhaustive inquiry that guides analysis of likely confusion. See Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 462-63 (3d Cir. 1983); see also A & H Sportswear,Inc.,237 F.3d at 213 (prescribing use of the Lapp factors in all trademark cases). Weighing and balancing, the District Court tallied a final score of five factors favoring Nichino, two neutral, and three "very important factors" (overall degree of similarity, consumers' purchasing habits, and Valent's intent in selecting the mark) in Valent's column. Bringing us to the TMA, which the District Court applied to presume Nichino would suffer irreparable harm without an injunction. But that presumption is rebuttable, and the District Court credited Valent's evidence of a sophisticated consumer class that makes careful purchases, and noted the lack of any evidence of actual consumer confusion. Closing the circle, the District Court found Nichino failed to proffer evidence that it would likely suffer irreparable harm without immediate injunctive relief. 5 Finally, the District Court held that the balance of equities and public interest weigh against issuing a preliminary injunction. burden of persuasion, not just the burden of production. See Cappuccio, 649 F.3d at 189. Instead, courts must ask only whether the rebuttal evidence is enough to allow a reasonable factfinder to conclude that irreparable harm is unlikely. 10 With that guidance in hand, we sketch the steps for applying the TMA's rebuttable presumption.

[9] Step 1. The TMA's rebuttable presumption requires courts considering a trademark injunction to assess the plaintiff's evidence only as it relates to a likelihood of success on the merits. Consulting the Lapp factors to analyze likelihood of confusion, but only to determine whether the infringement claim is likely to succeed. Anything more, including commenting on whether the proffered evidence of consumer confusion could show irreparable harm, veers impermissibly into the burden of persuasion controlled by 301. If a court finds no likelihood of success on the merits, the inquiry ends and the injunction will be denied. See, e.g., Kos Pharms., Inc., 369 F.3d at 709;NutraSweet Co. v. Vit-Mar Enters., Inc., 176 F.3d 151, 153 (3d Cir. 1999) ("A plaintiff's failure to establish any element in its favor renders a preliminary injunction inappropriate."). [10] Step 2. If the plaintiff's evidence does establish likely trademark infringement, the TMA is triggered, and the burden of production shifts to the defendant to introduce evidence sufficient for a reasonable factfinder to conclude that the consumer confusion is unlikely to cause irreparable harm. See Cappuccio, 649 F.3d at 189. But note again the sequence. So far, the court has not assessed any of the evidence for likely irreparable harm. Rather, the TMA's presumption means the court assumes irreparable harm, even if the plaintiff has proffered nothing in support. The focus trains on the defendant's evidence, and whether it is sufficient to rebut the TMA's presumption. A meaningful consideration of the facts, not a box-checking review of the Lapp factors, is key, aimed at determining whether the defendant's offering allows a reasonable conclusion that the consumer confusion shown by the plaintiff will not cause irreparable harm. [11] Step 3. If a defendant successfully rebuts the TMA's presumption by making this slight evidentiary showing, the presumption has no further effect. It has done its work and simply disappears like a bursting bubble. See McCann v. Newman Irrevocable Trust, 458 F.3d 281, 287-88 (3d Cir. 2006). So the burden of production returns to the plaintiff to point to evidence that irreparable harm is likely absent an injunction. See id. ("Under Fed. R. Evid. 301 . . . the introduction of evidence to rebut a presumption destroys that presumption, leaving only that evidence and its inferences to be judged against the competing evidence and its inferences to determine the ultimate question at issue." (quoting McKenna v. Pac. Rail Serv., 10 That small quantum of evidence is all we have required to rebut Rule 301 presumptions. In Cappuccio, we held that a borrower's own testimony that her lender had not properly explained the right to cancel her home mortgage was enough to rebut the Truth in Lending Act's presumption that notice was received. 649 F.3d at 189-90. We held that such meager evidence as "a single, nonconclusory affidavit . . . based on personal knowledge" is enough "even if the affidavit is 'self-serving.' " Id. And in McCann, we applied the same standard to rebuttals of the common-law presumption in favor of established domicile, rejecting a more demanding "clear and convincing evidence" rebuttal standard. 458 F.3d at 287-88. 32 F.3d 820, 830 (3d Cir. 1994))). Here again, the evaluation outlined in Lapp may prove useful to assess whether consumer confusion will lead to irreparable harm.foot_41

B. The District Court's Rebuttal Analysis Follows Rule 301

[12] The District Court's finding that Valent rebutted the TMA's presumption follows the TMA and tracks Rule 301. The District Court began by using the Lapp factors to assess likelihood of consumer confusion to determine Nichino's likelihood of success on the merits without simultaneously considering irreparable harm.foot_42 Finding that Nichino would likely succeed on the merits, the District Court properly applied the TMA by presuming irreparable harm and turning its attention to Valent's rebuttal evidence. Here, the District Court again appropriately referenced the Lapp factors for consumer confusion, described them as "closely balanced," and found that Valent had rebutted the presumption by producing evidence of a sophisticated consumer class. (App. at 177-80.) A framework that anticipated the steps we provide today.

[13] Nichino is correct that the District Court erred by considering Nichino's failure to produce evidence of actual confusion at this stage, when the sole focus is whether Valent had adduced affirmative evidence that irreparable harm is unlikely. As explained, the TMA shifted the burden of production to Valent when Nichino showed likely success. And Valent cannot meet that production burden simply by pointing to Nichino's lack of evidence. Faulting Nichino improperly placed the burden of production on the plaintiff at the rebuttal stage. [14] But that slight error does not undermine the District Court's judgment. The Court also credited Valent's evidence that the relevant consumers are sophisticated buyers who exercise great care in purchasing pesticides. Among the facts noted by the Court: 1) the differing prices; 2) the expense of seasonal treatment; 3) regular reliance on expert recommendations; and 4) the consequences of misapplication, including crop destruction and corresponding disastrous economic consequences. All tending to heighten purchasing care, and all making it plausible to conclude that consumers will confirm their pesticide selection before staking their farms on an inadvertent purchase. As the District Court correctly held, this evidence meets the light burden of production that the TMA's presumption of irreparable harm placed on Valent. 13 [15] With the presumption rebutted, the burden of evidence production returned to Nichino to show likely irreparable harm absent an injunction. The District Court found that Nichino did not, and Nichino does not argue otherwise. That makes the District Court's conclusion, and its decision to deny injunctive relief, correct, as "[a] plaintiff's failure to establish any element in its favor renders a preliminary injunction inappropriate." NutraSweet Co., 176 F.3d at 153. 14

[16] For these reasons, we will affirm the District Court's order denying Nichino's motion for a preliminary injunction.

1. Not all courts are following the Third Circuit's lead in Nichino. See, for example, Hermes Int'l v. Rothschild, 678 F. Supp. 3d 475 (S.D.N.Y. 2023):

Because of the Trademark Modernization Act of 2020 ("TMA") Hermès is entitled to "a rebuttable presumption of irreparable harm" by virtue of the jury verdict in its favor on its trademark infringement claim. See 15 U.S.C. § 1116(a). . . . Rothschild's primary response is that the TMA presumption only shifts the "burden of production" to him, and that he has met that burden, thereby shifting the "burden of persuasion" to Hermès-a burden Rothschild claims Hermès has failed to satisfy. The meaning of the TMA presumption in trademark litigation is, indeed, a subject of lively debate among our fellow district courts and sister circuits. Some agree with Rothschild that this presumption "shifts [only] the evidentiary burden of production," leaving "the burden of persuasion" with the moving party. This position, championed by the Third Circuit, finds support in Federal Rule of Evidence 301, which provides that, absent statutory language to the contrary, presumptions are assumed to "not shift the burden of persuasion, which remains on the party who had it originally." Fed. R. Evid. 301; Nichino Am., 13 Nichino is right that "the standard of care [in purchasing] . . . will be equal to that of the least sophisticated consumer in the class," Ford Motor Co. v. Summit Motor Prods., 930 F.2d 277, 293 (3d Cir. 1991), but that is the standard that the District Court used by focusing on small commercial farmers, not large agribusiness operations. Nor does the sophistication of the farm workers applying the chemicals much matter, because they do not make the purchasing decisions, and we evaluate the sophistication of the "buyer class," not the broader class of all users. Id. 14 While unnecessary to our decision, we see no error in the District Court's balancing of equities. Ample evidence supports the Court's conclusion that an injunction would cause Valent to lose significant sales while it reapplied, and awaited approval, for a new trademark. Those amounts, using Valent's pre-release projections, measured in millions of lost dollars. Nor is there error in the Court's finding that the public interest "is better served by allowing continued access to an innovative product[, SENSTAR,] that can be used against all insect life stages." (App. at 181.) Inc. v. Valent U.S.A. LLC, 44 F.4th 180, 185 (3d Cir. 2022). This Court, however, joins the courts that have taken the opposite view, see, e.g., Guru Teg Holding, Inc. v. Maharaja Farmers Mkt., Inc., 581 F. Supp. 3d 460 (E.D.N.Y. 2021). This is because language from the statute's legislative history and a careful consideration of the context in which the statute was enacted both strongly suggest that Congress chose to place the burden of persuasion on the proven infringer.

Because the meaning of "presumption" in the statute is ambiguous, "we may consult" this "legislative history . . . to discern Congress's meaning. " See United States v. Gayle, 342 F.3d 89 (2d Cir. 2003); see generally Robert A. Katzmann, Judging Statutes (2014) (mapping the path judges should take to undertake a fair examination of legislative history in order to clarify ambiguous statutory language). The House Report accompanying the statute is particularly illuminating. Finding that, "[h]istorically, federal courts considering injunctive relief for trademark infringement claims had nearly uniformly held that success on the merits of a trademark claim . . . created a rebuttable presumption of irreparable harm that was sufficient to satisfy that prerequisite for relief," the statute aimed to restore that historical practice in the face of the "inconsistent and unpredictable approaches courts have taken in the post-eBay landscape." H.R. at 37. Given that eBay had invalidated the Federal Circuit's presumption "that courts will issue permanent injunctions against patent infringement absent exceptional circumstances"-a presumption that clearly modified the burden of persuasion, not just the burden of proof-the fact that Congress expressly aimed to reverse eBay's ruling in the trademark context makes it reasonably clear that Congress intended the TMA presumption to apply with respect to the burden of persuasion, and not just the burden of production.

Hermes Int 'l v. Rothschild, 2. Should eBay apply to trademark law? Mark Lemley has criticized the manner in which courts formerly applied eBay to trademark law: I think eBay was a good-indeed, great-development in patent law and copyright law.

Trademark, however, is different. The purposes of trademark law-and who it benefits-should lead us to treat trademark injunctions differently than patent and copyright injunctions. Further, trademark courts have misinterpreted eBay, treating each of the four factors as a requirement rather than a consideration. That is a particular problem in trademark law, where proof of future injury can be elusive. And perhaps most remarkably, courts have expanded eBay in trademark cases at the same time they have denied damages relief, with the result that trademark owners can and do win their case only to receive no remedy at all. The result is a very real risk that courts will hurt rather than help consumers by allowing confusion to continue. Mark A. Lemley, Did eBay Irreparably Injure Trademark Law?, 92 NOTRE DAME L. REV. 1795, 1796(2017). How does Lemley's reasoning affect your assessment of the outcome in Nichino? See also Jake Linford, The Path of the Trademark Injunction, in RESEARCH HANDBOOK ON THE LAW AND ECONOMICS OF TRADEMARKS (Glynn S. Lunney Jr. ed. 2022).

3. Injunctive relief and the right to a trial by jury. If only injunctive relief is sought, then the case is purely equitable and neither party has the right to a jury trial. For this reason, plaintiffs may sometimes seek only an injunction so that the defendant cannot demand a jury trial. See, e.g., Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1183-84 (9th Cir. 2010) ("Finally, we consider the Tabaris' claim that the district court deprived them of their right to a trial by jury when it failed to empanel a jury to decide Toyota's trademark claims. Because Toyota only sought an injunction, the district court did not err by resolving its claims in a bench trial. Nor were the Tabaris entitled to a jury trial on their equitable defenses to those claims, or their counterclaims seeking declarations of trademark invalidity and noninfringement." (citations omitted)). Why might a giant foreign multinational seek to avoid a jury trial in a case against a small business run by a local married couple?

Similarly, if the only monetary remedy that the plaintiff seeks is the disgorgement of the defendant's profits, then neither party has a right to a jury trial. See, e.g., Hard Candy, LLC v. Anastasia Beverly Hills, Inc., 921 F.3d 1343, 1359(11th Cir. 2019) ("All of this leads us to the conclusion that an accounting and disgorgement of a defendant's profits in a trademark infringement case is equitable in nature and does not carry with it a right to a jury trial."); Ferrari S.P. A. v. Roberts, 944 F.2d 1235, 1248(6th Cir. 1991) ("[W]e conclude . . . that Roberts was not entitled to a jury trial. Ferrari's complaint requested only equitable relief; an injunction and disgorgement of profits.").

B. Plaintiff's Damages and Defendant's Profits

Lanham Act § 35, 15 U.S.C. § 1117 (a) Profits; damages and costs; attorney fees When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 1125(a) or (d) of this title, or a willful violation under section 1125(c) of this title, shall have been established in any civil action arising under this chapter, the plaintiff shall be entitled, subject to the provisions of sections 1111foot_43 and 1114foot_44 of this title, and subject to the principles of equity, to recover (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. The court shall assess such profits and damages or cause the same to be assessed under its direction. In assessing profits the plaintiff shall be required to prove defendant's sales only; defendant must prove all elements of cost or deduction claimed. In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount. If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty. The court in exceptional cases may award reasonable attorney fees to the prevailing party. In a case involving a violation of section 1125(d)(1) of this title, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award of statutory damages in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just.

Recovery of Plaintiff's Damages a. Willful Intent and Damages

Courts typically do not require a showing of defendant's willful intent for damages to be awarded. See, e.g., Gen. Elec. Co. v. Speicher, 877 F.2d 531, 535 (7th Cir. 1989) ("[E]ven if he is an innocent infringer he ought at least reimburse the plaintiff's losses.").

Courts typically require a showing of actual confusion for damages to be awarded. See, e.g., Brunswick Corp. v. Spinit Reel Co., 832 F.2d 513, 523 (10th Cir. 1987) ("Likelihood of confusion is insufficient; to recover damages plaintiff must prove it has been damaged by actual consumer confusion or deception resulting from the violation . . . . Actual consumer confusion may be shown by direct evidence, a diversion of sales or direct testimony from the public, or by circumstantial evidence such as consumer surveys."); Int 'l Star Class Yacht Racing Ass'n v. Tommy Hilfiger, U.S.A., Inc., 80 F.3d 749, 753 (2d Cir. 1996) ("Proof of actual confusion is ordinarily required for recovery of damages for pecuniary loss sustained by the plaintiff."). "Such damages may include compensation for (1) lost sales or revenue; (2) sales at lower prices; (3) harm to market reputation; or (4) expenditures to prevent, correct, or mitigate consumer confusion." Id. "The apparent justification for making actual confusion a threshold requirement is that it is a proxy for actual marketplace damage that can be difficult to prove." 3 GILSON ON TRADEMARKS § 14.03 (2019).

Lanham Act § 35(a), 15 U.S.C. 1117(a), empowers the court to award an amount up to three times the plaintiff's actual damages and to award profits "for such sum as the court shall find to be just." Enhanced damages or profits cannot be punitive in nature. See Fifty-Six Hope Rd. Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d 1059, 1077(9th Cir. 2015) ("The district court ought to tread lightly when deciding whether to award increased profits, because granting an increase could easily transfigure an otherwise-acceptable compensatory award into an impermissible punitive measure. Generally, actual, proven profits will adequately compensate the plaintiff. Because the profit disgorgement remedy is measured by the defendant's gain, the district court should award actual, proven profits unless the defendant infringer gained more from the infringement than the defendant's profits reflect." (citation omitted)). Realistically, can an award of treble damages be anything other than punitive in nature?

Recovery of Defendant's Profits a. Willful Intent and Profits

The following opinion has proven to be controversial among remedies scholars, who criticize, among much else, its restrictive understanding of equitable doctrine and its highly selective reading of prior case law. See, e.g., Mark Lemley, The Imperial Supreme Court, 136 HARV. L. REV. FORUM 97, 105 n. 47 (2022). Are you persuaded by Justice Gorsuch's historical analysis and statutory interpretation? Romag Fasteners, Inc. v. Fossil, Inc. 590 U.S. 212 (2020)

Justice GORSUCH delivered the opinion of the Court.

[1] When it comes to remedies for trademark infringement, the Lanham Act authorizes many. A district court may award a winning plaintiff injunctive relief, damages, or the defendant's ill-gotten profits. Without question, a defendant's state of mind may have a bearing on what relief a plaintiff should receive. An innocent trademark violator often stands in very different shoes than an intentional one. But some circuits have gone further. These courts hold a plaintiff can win a profits remedy, in particular, only after showing the defendant willfully infringed its trademark. The question before us is whether that categorical rule can be reconciled with the statute's plain language.

[2] The question comes to us in a case involving handbag fasteners. Romag sells magnetic snap fasteners for use in leather goods. Fossil designs, markets, and distributes a wide range of fashion accessories. Years ago, the pair signed an agreement allowing Fossil to use Romag's fasteners in Fossil's handbags and other products. Initially, both sides seemed content with the arrangement. But in time Romag discovered that the factories Fossil hired in China to make its products were using counterfeit Romag fasteners-and that Fossil was doing little to guard against the practice. Unable to resolve its concerns amicably, Romag sued. The company alleged that Fossil had infringed its trademark and falsely represented that its fasteners came from Romag. After trial, a jury agreed with Romag, and found that Fossil had acted "in callous disregard" of Romag's rights. At the same time, however, the jury rejected Romag's accusation that Fossil had acted willfully, as that term was defined by the district court.

[3] For our purposes, the last finding is the important one. By way of relief for Fossil's trademark violation, Romag sought (among other things) an order requiring Fossil to hand over the profits it had earned thanks to its trademark violation. But the district court refused this request. The court pointed out that controlling Second Circuit precedent requires a plaintiff seeking a profits award to prove that the defendant's violation was willful. Not all circuits, however, agree with the Second Circuit's rule. We took this case to resolve that dispute over the law's demands. 139 S. Ct. 2778Ct. (2019)).

[4] Where does Fossil's proposed willfulness rule come from? The relevant section of the Lanham Act governing remedies for trademark violations, § 35, 60 Stat. 439-440, as amended, 15 U.S.C. § 1117(a), says this: "When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 1125(a) or (d) of this title, or a willful violation under section 1125(c) of this title, shall have been established . . ., the plaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 of this title, and subject to the principles of equity, to recover (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action."

Immediately, this language spells trouble for Fossil and the circuit precedent on which it relies. The statute does make a showing of willfulness a precondition to a profits award when the plaintiff proceeds under § 1125(c). That section, added to the Lanham Act some years after its initial adoption, creates a cause of action for trademark dilution-conduct that lessens the association consumers have with a trademark. But Romag alleged and proved a violation of § 1125(a), a provision establishing a cause of action for the false or misleading use of trademarks. And in cases like that, the statutory language has never required a showing of willfulness to win a defendant's profits. Yes, the law tells us that a profits award is subject to limitations found in § § 1111 and 1114. But no one suggests those cross-referenced sections contain the rule Fossil seeks. Nor does this Court usually read into statutes words that aren't there. It's a temptation we are doubly careful to avoid when Congress has (as here) included the term in question elsewhere in the very same statutory provision. [5] A wider look at the statute's structure gives us even more reason for pause. The Lanham Act speaks often and expressly about mental states. Section 1117(b) requires courts to treble profits or damages and award attorney's fees when a defendant engages in certain acts intentionally and with specified knowledge. Section 1117(c) increases the cap on statutory damages from $200,000 to $2,000,000 for certain willful violations. Section 1118 permits courts to order the infringing items be destroyed if a plaintiff proves any violation of § 1125(a) or a willful violation of § 1125(c). Section 1114 makes certain innocent infringers subject only to injunctions. Elsewhere, the statute specifies certain mens rea standards needed to establish liability, before even getting to the question of remedies. See, e.g., § § 1125(d)(1)(A)(i), (B)(i) (prohibiting certain conduct only if undertaken with "bad faith intent" and listing nine factors relevant to ascertaining bad faith intent). Without doubt, the Lanham Act exhibits considerable care with mens rea standards. The absence of any such standard in the provision before us, thus, seems all the more telling.

[6] So how exactly does Fossil seek to conjure a willfulness requirement out of § 1117(a)? Lacking any more obvious statutory hook, the company points to the language indicating that a violation under § 1125(a) can trigger an award of the defendant's profits "subject to the principles of equity." In Fossil's telling, equity courts historically required a showing of willfulness before authorizing a profits remedy in trademark disputes. Admittedly, equity courts didn't require so much in patent infringement cases and other arguably analogous suits. See, e.g., Dowagiac Mfg. Co. v. Minnesota Moline Plow Co., 235 U.S. 641, 644, 650-651 (1915). But, Fossil says, trademark is different. There alone, a willfulness requirement was so long and universally recognized that today it rises to the level of a "principle of equity" the Lanham Act carries forward.

[7] It's a curious suggestion. Fossil's contention that the term "principles of equity" includes a willfulness requirement would not directly contradict the statute's other, express mens rea provisions or render them wholly superfluous. But it would require us to assume that Congress intended to incorporate a willfulness requirement here obliquely while it prescribed mens rea conditions expressly elsewhere throughout the Lanham Act. That might be possible, but on first blush it isn't exactly an obvious construction of the statute. [8] Nor do matters improve with a second look. The phrase "principles of equity" doesn't readily bring to mind a substantive rule about mens rea from a discrete domain like trademark law. In the context of this statute, it more naturally suggests fundamental rules that apply more systematically across claims and practice areas. A principle is a "fundamental truth or doctrine, as of law; a comprehensive rule or doctrine which furnishes a basis or origin for others." Black's Law Dictionary 1417(3d ed. 1933);Black's Law Dictionary 1357(4th ed. 1951). And treatises and handbooks on the "principles of equity" generally contain transsubstantive guidance on broad and fundamental questions about matters like parties, modes of proof, defenses, and remedies. . . . Our precedent, too, has used the term "principles of equity" to refer to just such transsubstantive topics. See, e.g., eBay Inc. v. MercExchange, L. L. C., 547 U.S. 388, 391 (2006) . . . . Congress itself has elsewhere used "equitable principles" in just this way: An amendment to a different section of the Lanham Act lists "laches, estoppel, and acquiescence" as examples of "equitable principles." 15 U.S.C. § 1069. Given all this, it seems a little unlikely Congress meant "principles of equity" to direct us to a narrow rule about a profits remedy within trademark law.

[9] But even if we were to spot Fossil that first essential premise of its argument, the next has problems too. From the record the parties have put before us, it's far from clear whether trademark law historically required a showing of willfulness before allowing a profits remedy. The Trademark Act of 1905-the Lanham Act's statutory predecessor which many earlier cases interpreted and applied-did not mention such a requirement. It's true, as Fossil notes, that some courts proceeding before the 1905 Act, and even some later cases following that Act, did treat willfulness or something like it as a prerequisite for a profits award and rarely authorized profits for purely good-faith infringement. See, e.g., Horlick's Malted Milk Corp. v. Horluck's, Inc., 51 F.2d 357, 359 (W.D. Wash. 1931) (explaining that the plaintiff "cannot recover defendant's profits unless it has been shown beyond a reasonable doubt that defendant was guilty of willful fraud in the use of the enjoined trade-name"); see also Saxlehner v. Siegel-Cooper Co., 179 U.S. 42, 42-43 (1900) (holding that one defendant "should not be required to account for gains and profits" when it "appear [ed] to have acted in good faith"). But Romag cites other cases that expressly rejected any such rule. See, e.g., Oakes v. Tonsmierre, 49 F. 447, 453 (C.C.S.D. Ala. 1883); see also Stonebraker v. Stonebraker, 33 Md. 252, 268 (1870); Lawrence-Williams Co. v. Societe Enfants Gombault et Cie, 52 F.2d 774, 778 (C.A.6 1931).

[10] The confusion doesn't end there. Other authorities advanced still different understandings about the relationship between mens rea and profits awards in trademark cases. See, e.g., H. Nims, Law of Unfair Competition and Trade-Marks § 424 (2d ed. 1917) ("An accounting will not be ordered where the infringing party acted innocently and in ignorance of the plaintiff's rights"); N. Hesseltine, Digest of the Law of Trade-Marks and Unfair Trade 305 (1906) (contrasting a case holding "[n]o account as to profits allowed except as to user after knowledge of plaintiff's right to trademark" and one permitting profits "although defendant did not know of infringement" (emphasis added)). And the vast majority of the cases both Romag and Fossil cite simply failed to speak clearly to the issue one way or another. See, e.g., Hostetter v. Vowinkle, 12 F.Cas. 546, 547 (No. 6,714) (C.C.D. Neb. 1871);Graham v. Plate, 40 Cal. 593, 597-599 (1871);Hemmeter Cigar Co. v. Congress Cigar Co., 118 F.2d 64, 71-72 (C.A.6 1941). [11] At the end of it all, the most we can say with certainty is this. Mens rea figured as an important consideration in awarding profits in pre-Lanham Act cases. This reflects the ordinary, transsubstantive principle that a defendant's mental state is relevant to assigning an appropriate remedy. That principle arises not only in equity, but across many legal

1. What happened on remand in Romag? On remand, the district court awarded Romag only $90,759.36 in disgorged profits, far less than the $6.8 million the jury had originally advised. Romag Fasteners, Inc. v. Fossil, Inc., No. 10 Civ. 1827, 2021WL 1700695, at *1,*7 (D. Conn. Apr. 29, 2021). The court explained that "Fossil's mens rea was, at most, negligent," while Romag had engaged in "chicanery" in its litigation tactics and should not be rewarded for having chosen to forego statutory damages in "gambling" for a higher disgorgement award. Id.

Most circuits do not require a showing of actual confusion to trigger a disgorgement of defendant's profits. See, e.g., Web Printing Controls Co., Inc. v. Oxy-Dry Corp., 906 F.2d 1202, 1205(7th Cir. 1990) ("These remedies [including a recovery of defendant's profits] flow not from the plaintiff's proof of its injury or damage, but from its proof of the defendant's unjust enrichment or the need for deterrence, for example . . . . To collapse the two inquiries of violation and remedy into one which asks only of the plaintiff's injury, as did the district court, is to read out of the Lanham Act the remedies that do not rely on proof of 'injury caused by actual confusion.' And this, of course, is improper."); Gracie v. Gracie, 217 F.3d 1060, 1068(9th Cir. 2000) ("[A] showing of actual confusion is not necessary to obtain a recovery of profits.").

There has been considerable uncertainty over whether the Second Circuit requires a showing of actual confusion to support an award of profits. In 4 Pillar Dynasty LLC v. New York & Co., Inc., 933 F.3d 202, 212 (2d Cir. 2019), however, it explained: "To dispel any doubts as as amended (Apr. 15, 2015); Slep-Tone Entm 't Corp. v. Karaoke Kandy Store, Inc., 782 F.3d 313, 317-18 (6th Cir. 2015);Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303 (3d Cir. 2014). Baker v. DeShong, 821 F.3d 620 (5th Cir. 2016), provides an example of the factors a court may consider to determine if the case before it is an "exceptional case" under Lanham Act § 35(a):

We merge Octane Fitness's definition of "exceptional" into our interpretation of § 1117(a) and construe its meaning as follows: an exceptional case is one where (1) in considering both governing law and the facts of the case, the case stands out from others with respect to the substantive strength of a party's litigating position; or (2) the unsuccessful party has litigated the case in an "unreasonable manner." See Octane Fitness, 134 S.Ct. at 1756. The district court must address this issue "in the case-by-case exercise of their discretion, considering the totality of the circumstances." See id.

In essence, for the defendant's conduct to constitute counterfeiting, (1) the plaintiff's mark must be registered and in use at the time of the defendant's conduct, (2) the defendant's mark must be identical with or substantially indistinguishable from the plaintiff's mark, (3) the defendant must be using its mark in connection with goods or services for which the plaintiff's mark is registered, and (4) the defendant must be using its mark without authorization from the plaintiff. See generally Jessica Bromall Sparkman & Rod S. Berman, Inconsistency and Confusion in the Judicial Treatment of Counterfeiting Claims, 113 TRADEMARK REP. 553 (2023).

Lanham Act § 34(d)(1)(B), 15 U.S.C. § 1116(d)(1)(B), defines the term "counterfeit mark": (B) As used in this subsection the term "counterfeit mark" means-(i) a counterfeit of a mark that is registered on the principal register in the United States Patent and Trademark Office for such goods or services sold, offered for sale, or distributed and that is in use, whether or not the person against whom relief is sought knew such mark was so registered; or (ii) a spurious designation that is identical with, or substantially indistinguishable from, a designation as to which the remedies of this chapter are made available by reason of section 220506 of Title 36 {relating to Olympics designations}; but such term does not include any mark or designation used on or in connection with goods or services of which the manufacture or producer was, at the time of the manufacture or production in question authorized to use the mark or designation for the type of goods or services so manufactured or produced, by the holder of the right to use such mark or designation.

Lanham Act § 45, 15 U.S.C. § 1127, additionally provides a definition of "counterfeit": "A 'counterfeit' is a spurious mark which is identical with, or substantially indistinguishable from, a registered mark." The Lanham Act § 45 definition of "counterfeit" is largely subsumed under the Lanham Act § 34 definition of "counterfeit mark," but § 45 adds the important detail that the similarity standard for purposes of determining counterfeiting is identity or near identity ("substantially indistinguishable from").

The remedies for counterfeiting are severe. They may consist primarily of (1) mandatory treble damages or, at the plaintiff's election, statutory damages, (2) ex parte seizure of the counterfeit goods, (3) attorney's fees, (4) prejudgment interest, and ( 5 In assessing damages under subsection (a) for any violation of section 1114(1)(a) of this title or section 220506 of Title 36, in a case involving use of a counterfeit mark or designation (as defined in section 1116(d) of this title), the court shall, unless the court finds extenuating circumstances, enter judgment for three times such profits or damages, whichever amount is greater, together with a reasonable attorney's fee, if the violation consists of (1) intentionally using a mark or designation, knowing such mark or designation is a counterfeit mark (as defined in section 1116(d) of this title), in connection with the sale, offering for sale, or distribution of goods or services; or (2) providing goods or services necessary to the commission of a violation specified in paragraph (1), with the intent that the recipient of the goods or services would put the goods or services to use in committing the violation.

In such a case, the court may award prejudgment interest on such amount at an annual interest rate established under section 6621(a)(2) of Title 26, beginning on the date of the service of the claimant's pleadings setting forth the claim for such entry of judgment and ending on the date such entry is made, or for such shorter time as the court considers appropriate.

(c) Statutory damages for use of counterfeit marks

In a case involving the use of a counterfeit mark (as defined in section 1116(d) of this title) in connection with the sale, offering for sale, or distribution of goods or services, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits under subsection (a) of this section, an award of statutory damages for any such use in connection with the sale, offering for sale, or distribution of goods or services in the amount of-(1) not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just; or

It should be noted that Pizza Hut uses the slogan "The Best Pizza Under One Roof." Similarly, other nationwide pizza chains employ slogans touting their pizza as the "best": (1) Domino's Pizza uses the slogan "Nobody Delivers Better."; (2) Danato's uses the slogan "Best Pizza on the Block."; (3) Mr. Gatti's uses the slogan "Best Pizza in Town: Honest!"; and (4) Pizza Inn uses the slogans "Best Pizza Ever." and "The Best Tasting Pizza."

The testimony of Pizza Hut's expert, Dr. Faubion, established that although consumers stated a preference for fresh dough rather than frozen dough, when taste tests were conducted, respondents were unable to distinguish between pizza made on fresh as opposed to frozen dough.

The judgment of the district court enjoining the future use by Papa John's of the slogan "Better Ingredients. Better Pizza." did not simply bar Papa John's use of the slogan in future ads comparing its sauce and dough with that of its competitors. Rather, the injunction permanently enjoined any future use of the slogan "in association with the sale, promotion and/or identification of pizza products sold under the Papa John's name." Further, the injunction precluded Papa John's from using the "adjective 'better' to modify the terms 'ingredients' and/or 'pizza.' " While it is clear that the jury did not make any finding to support such a broad injunction, and Pizza Hut offered no survey evidence indicating how potential consumers viewed the slogan, the district court concluded that the evidence established that

Since Pizza Hut sought only equitable relief and no monetary damages, it was required to offer evidence sufficient to establish that the claims made by Papa John's had the "tendency to deceive consumers," rather than evidence indicating that the claims made by Papa John's actually deceived consumers. American Council, 185 F.3d at 606; see also Balance Dynamics, 204 F.3d at 690 (emphasis added).

In Johnson & Johnson v. Smithkline Beecham Corp., 960 F.2d 294 (2d Cir. 1992), the Second Circuit discussed this requirement in some detail:

Pizza Hut has not sought review on appeal of the district court's ruling that the results of the box survey were inadmissible.

As the District Court found, the IEC is the leading "international standards organization that prepares and publishes international standards for all electrical, electronic[,] and related technologies, collectively known as 'electrotechnology.' " J.A. at A5. The IEC standards for steam irons are laid out in IEC 60311.

The court also notes that time spent by Schick testing Gillette's "angle-change" claim, which claim Gillette abandoned in January of 2005.

In Gillette's testing, no effort was made to control for variables, such as pressure on, or speed of, the razor. Failure to control for variable makes Gillette's "results" unscientific and not supportive of any conclusion.

The sample size of four was chosen because the 2003 study, according to Gillette, was merely "confirmatory." Because the court finds the earlier tests deficient, the 2003 study cannot be "confirmatory."

Despite conducting the study on eighteen subjects, Gillette submitted only three short video clips and does not indicate that they are representative of the study results. Further, there is no indication of the length of the manipulation, the amount of pressure applied, or shave preparation. Without more information, the study cannot support the conclusion that the M3 Power extends hair.

Schick first performed tests to determine whether the M3 Power changes the angle of beard hairs.

It may also result from the application of a glass plate meant to flatten the hairs so that they could be measured in two dimensions.

It is the words "up and away" when combined with "raises" that suggest both extension and angle change.

While Gillette contends that the animated portion of its advertisement is not literally false as a matter of law, it has conceded that, as a factual matter, the animation represents an exaggerated hairextension effect.

Does it claim that it cannot sell one M3 Power razor without making false claims regarding angle change or the magnitude of hair extension? When it ceased television and print advertising with the "angle change," did its sales drop precipitously?

See J. THOMAS MCCARTHY, THE RIGHTS OF PUBLICITY AND PRIVACY § 6:2 (May 2025); Brill v. Walt Disney Co.,

P.3d 1099 (2010) (Court of Civil Appeals of Oklahoma); Jennifer E. Rothman, http://www.rightofpublicityroadmap.com/.

Under Professor Prosser's scheme, the right of publicity is the last of the four categories of the right to privacy. Prosser, 48 Cal.L.Rev. at 389.

The statute was amended after White filed her complaint. The amendments would not have altered the analysis in this case however.

I had never heard of Morton Downey, Jr., but I'm told he's sort of like Rush Limbaugh, but not as shy.

Cf., e.g., Guinn v. United States, 238 U.S. 347, 364-65 (1915) (striking down grandfather clause that was a clear attempt to evade the Fifteenth Amendment).

It would be called "Burden of Going Forward with the Evidence," and the hero would ultimately be saved by his lawyer's adept use of Fed.R.Evid. 301.

In the words of Sir Isaac Newton, "[i]f I have seen further it is by standing on [the shoulders] of Giants." Letter to Robert Hooke, Feb. 5,

Some viewers might have inferred White was endorsing the product, but that's a different story. The right of publicity isn't aimed at or limited to false endorsements, Eastwood v. SuperiorCourt, 149 Cal.App.3d 409, 419-20, 198 Cal.Rptr. 342, 348 (1983); that's what the Lanham Act is for.

See generally Gordon, supra note 11; see also Michael Madow, Private Ownership of Public Image: Popular Culture and Publicity Rights, 81 Cal.L.Rev. 125,

201-03 (1993) (an excellent discussion). 20 See 35 U.S.C. § 154 (duration of patent); 17 U.S.C. § § 302-305 (duration of copyright); 17 U.S.C. § 102(b) (idea-expression dichotomy); 17 U.S.C. § 107 (fair use);Feist Pubs., Inc. v. Rural Tel. Serv. Co.,

Neither does it discuss whether the speech restriction is unconstitutionally vague. Posadas de P.R.Assocs. v. Tourism Co., 478 U.S. 328, 347, 106 S.Ct. 2968, 2980, 92 L.Ed.2d 266 (1986).

There are actually nine named plaintiffs, all former National Collegiate Athletic Association ("NCAA") football or basketball players: Keller, Edward O'Bannon, Jr. (UCLA), Byron Bishop (University of North Carolina), Michael Anderson (University of Memphis), Danny Wimprine (University of Memphis), Ishmael Thrower (Arizona State University), Craig Newsome (Arizona State University), Damien Rhodes (Syracuse University), and Samuel Jacobson (University of Minnesota). EA's NCAA basketball games are also implicated in this appeal. Because the issues are the same for each plaintiff, all of the claims are addressed through our discussion of Keller and NCAA Football.

We review de novo the district court's denial of a motion to strike under California's anti-SLAPP statute. MindysCosmetics, Inc. v. Dakar, 611 F.3d 590, 595 (9th Cir. 2010).

The elements of a right-of-publicity claim under California common law are: "(1) the defendant's use of the plaintiff's identity; (2) the appropriation of plaintiff's name or likeness to defendant's advantage, commercially or otherwise; (3) lack of consent; and (4) resulting injury." Stewart v. Rolling Stone LLC, 181 Cal.App.4th 664, 105 Cal.Rptr.3d 98, 111 (internal quotation marks omitted). The same claim under California Civil Code § 3344 requires a plaintiff to prove "all the elements of the common law cause of action" plus "a knowing use by the defendant as well as a direct connection between the alleged use and the commercial purpose." Id.

Just as we did in Hilton v. Hallmark Cards, we reserve the question of whether the First Amendment furnishes a defense other than those the parties raise.599 F.3d 894, 909 n. 11 (9th Cir. 2010).

I agree fully with Judge Ambro's excellent dissent in Hart, which describes the analytic flaws of applying a transformative use test outside the context of the work as a whole.

Of course, to the extent that the Court of Appeal's opinion in No Doubt may be read to be in tension with the transformative use test as articulated by the California Supreme Court in Comedy III and Winter, it must yield.

Contrary to the majority's suggestion, I do not claim that any use of a likeness founded on publicly available information is transformative. Majority op. 1283-84 n. 12. The majority's analogy to a commercial featuring Tom Brady is inapposite for at least two reasons: (1) a commercial is not interactive in the same way that NCAA Football is, and (2) Brady's marketing power is well established, while that of the plaintiffs is not.

While acknowledging that these considerations are relevant to the Comedy III analysis, the majority says EA's use of realistic likenesses demonstrates that it sees "value in having an avatar designed to mimic each individual player." Majority op. at 1276 n.

But the same is true of any right of publicity case. The defendants in Winter saw value in using comic book characters that resembled the Winter brothers. Andy Warhol-whose portraits were discussed in Comedy III-saw value in using

Kirby v. Sega of America, Inc., 144 Cal.App.4th 47 (2006)

Injunctions require the familiar showing of a likelihood of success on the merits, irreparable harm that outweighs the burden on the nonmoving party, and benefit to the public interest. Kos Pharms.,Inc. v. Andrx Corp.,

F.3d 700, 708 (3d Cir. 2004). These burdens are all borne byNichino. Ferring Pharms., Inc. v. Watson Pharms., Inc., 765 F.3d 205, 210 (3d Cir. 2014).3 In relevant part, the TMA states that plaintiffs seeking an injunction "shall be entitled to a rebuttable presumption of irreparable harm . . . upon a finding of likelihood of success on the merits for a violation identified in this subsection in the case of a motion for a preliminary injunction or temporary restraining order.".5 Here, the District Court appropriately cited Nichino's evidence of likely consumer confusion. Evidence of consumer confusion is relevant to both likelihood of success and irreparable harm, so the evidence that plaintiffs offer to show one will often also tend to show the other.See Kos Pharms., Inc.,

Contrary to Nichino's argument, § 226(b) of the TMA does not fight this reading. A "Rule of Construction," § 226(b) states the Act "shall not be construed to mean that a plaintiff seeking an injunction was not entitled to a presumption of irreparable harm before the date of enactment of this Act.". Read in context, that means a plaintiff is always entitled to the newly codified presumption, even if the infringing conduct predated the TMA. Nichino enjoyed that benefit here.

Nichino contests the District Court's finding that the degree of similarity between the marks favored Valent, but that is not clearly erroneous. The District Court found that the auditory similarity of the marks' pronunciations favored Nichino, while the marks' visual dissimilarities leaned toward Valent. And the Court found appearance more important than sound. All questions of fact best weighed by the District Court, and we have no occasion to disturb that conclusion.

{15 U.S.C. § 1111 reads as follows: "Notwithstanding the provisions of section 1072 of this title, a registrant of a mark registered in the Patent and Trademark Office, may give notice that his mark is registered by displaying with the mark the words "Registered in U.S. Patent and Trademark Office" or "Reg. U.S. Pat. & Tm. Off." or the letter R enclosed within a circle, thus ®; and in any suit for infringement under this chapter by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the provisions of this chapter unless the defendant had actual notice of the registration."}

{15 U.S.C. § 1114 provides safe harbors for publishers and distributors of physical and electronic media, including those in which infringing advertisements appear, when they qualify as "innocent infringers".}

3. The acts and practices ofRespondent alleged in this complaint have been in or affecting commerce, as "commerce" is defined in Section 4 of the Federal Trade Commission Act. Lord & Taylor's Design Lab Instagram Campaign 4. In the Fall of 2014, Respondent Lord & Taylor developed plans to promote its new Design Lab collection, a private label clothing line aimed at women ages 18-35. Respondent's Design Lab marketing plan included a comprehensive social media campaign ("product bomb") launched at the end of March 2015. The campaign was comprised of Lord &

weekend. See Exhibit B (Nylon.com Design Lab Instagram Post). Although paid for, reviewed, and pre-approved by Lord & Taylor, Nylon's Instagram post failed to disclose that Lord & Taylor had paid for the posting.

• InMidler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988) and Waits v. Frito-Lay, Inc., 978 F.2d 1093(9th Cir. 1992), the defendants employed impersonators to mimic the singing styles of Bette Midler and Tom Waits, respectively, both of whom adamantly refuse to allow their art to be used to sell others' goods and services. Defendants were found liable under Lanham Act § 43(a) in both cases. If you are persuaded by Judge Kozinski's dissent, then how would you rule in Midler and Waits?White v.