USCA1 Opinion
August 10, 1993 UNITED STATES COURT OF APPEALS
FOR THE FIRST CIRCUIT
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No. 92-2388
AKTIEBOLAGET ELECTROLUX,
Plaintiff, Appellant,
v.
ARMATRON INTERNATIONAL, INC.,
Defendant, Appellee.
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No. 92-2439
AKTIEBOLAGET ELECTROLUX,
Plaintiff, Appellee,
v.
ARMATRON INTERNATIONAL, INC.,
Defendant, Appellant.
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ERRATA SHEET
The opinion of this Court issued on July 15, 1993, is
amended as follows:
Page 2, line 3 - insert "Aktiebolaget Electrolux" after the
word "Appellant";
Page 2, line 4 - insert "Armatron International, Inc." after
the word "Appellee";
Page 3, footnote 2, line 1 - insert word "separate" after
words "filed a";
Page 3, footnote 2, line 1 - insert phrase "docketed as
No. 92-2439," after word "appeal"; and
Page 3, footnote 2, line 2 - add additional sentence,
"Consequently Armatron will be referred to throughout this
opinion as Appellee."
UNITED STATES COURT OF APPEALS
FOR THE FIRST CIRCUIT
____________________
No. 92-2388
AKTIEBOLAGET ELECTROLUX,
Plaintiff, Appellant,
v.
ARMATRON INTERNATIONAL, INC.,
Defendant, Appellee.
____________________
No. 92-2439
AKTIEBOLAGET ELECTROLUX,
Plaintiff, Appellee,
v.
ARMATRON INTERNATIONAL, INC.,
Defendant, Appellant.
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APPEALS FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
[Hon. Douglas P. Woodlock, U.S. District Judge]
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Before
Torruella, Cyr and Boudin,
Circuit Judges.
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Paul J. Hayes, with whom Dean G. Bostock, and Weingarten,
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Schurgin, Gagnebin & Hayes, were on brief for plaintiff.
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Arnold E. Cohen, with whom Englander, Finks, Ross, Cohen &
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Pike, Inc., was on brief for defendant.
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July 15, 1993
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TORRUELLA, Circuit Judge. This is a trademark
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infringement and unfair competition action under the Lanham Act,
15 U.S.C. 1051 et seq.1 Appellant Aktiebolaget Electrolux
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holds a trademark for a line of gardening products called "Weed
Eater." Appellee Armatron International, Inc. subsequently sold
a gardening product variously called "Leef Eeter," "Leaf Eater,"
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1 The trademark infringement provision is 1114, which provides
in pertinent part:
any person who shall, without the consent
of the registrant --
(a) use in commerce any . . . colorable
imitation of a registered mark in
connection with the sale, offering for
sale, distribution, or advertising of
any goods or services . . . which 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 herein
provided.
The unfair competition provision is 1125(a)(1), titled "False
designations of origin and false descriptions forbidden." It
provides in relevant part:
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.
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"Flowtron Leaf Eater," and "Vornado Leaf Eater." For
convenience, we will refer to appellee's product as a Leaf Eater.
The district court, after a bench trial, issued an injunction
requiring appellee to use the term Leaf Eater only in conjunction
with the Flowtron or Vornado logos, but declined to award
appellant damages. Finding no error, we affirm.2
Appellant has used the Weed Eater trademark since 1972
to sell weed trimmers and blower/vacuums. Weed trimmers are
hand-held machines which use a rapidly spinning nylon string,
driven by a motor, to shave unwanted growth from gardens.
Blower/vacuums work much like normal household vacuum cleaners;
they suck loose debris, such as fallen leaves, from the garden
through a hose and deposit them in a bag. The leaves are
shredded by a nylon string mechanism before they arrive in the
bag. Blower/vacuums also may be used to blow loose debris away
from the garden or into manageable piles. The user walks along
the garden with both machines.
Appellee has sold Leaf Eaters since 1987. The product
consists of a free-standing barrel, into which the user pours
collected leaves. A nylon string mechanism in the barrel shreds
the leaves and ejects the fragments at the bottom. The shredded
leaves may be used as mulch. Alternatively, the entire apparatus
can be positioned over a garbage can, allowing the user to
dispose of the shredded leaves easily. Appellee boasts that the
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2 Armatron filed a separate notice of appeal docketed as No. 92-
2439, but ultimately did not attack the judgment. Consequently
Armatron will be referred to throughout this opinion as Appellee.
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Leaf Eater will convert eight bags of normal leaves into one bag
of shredded leaves. Leaf Eaters thus perform only one function:
they shred leaves.
Appellee contends that its use of the Leaf Eater name
flows naturally from the name of its previous product, the
Skeeter Eeter, which was used to control insects. Skeeter Eeter
was never challenged as an infringing mark. Prior to adopting
the Leaf Eater mark, however, appellee conducted a trademark
search to determine whether it was available legally. Appellee
learned, in fact, that Leaf Eater was trademarked by a company
called Idea Bank, but that the trademark had since lapsed.
Appellee also learned about the Weed Eater trademark, which
appellant trademarked even before Idea Bank trademarked Leaf
Eater. Appellee concluded that Leaf Eater was an unprotected
mark, available for use in connection with a leaf shredding
machine.
After appellant complained that Leaf Eater unlawfully
infringed on the Weed Eater mark, appellee attached the name
brands Flowtron or Vornado in front of Leaf Eater. The
injunction in this case essentially replicates this practice.
The district court ordered appellee to use Flowtron or Vornado in
the same or greater size type as Leaf Eater. Furthermore, the
district court required appellee to inform all distributors and
retailers of the injunction's dictates, so that all
advertisements would comply. If the advertisements nonetheless
do not comply, then appellee cannot reimburse the distributors or
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retailers for the cost of advertising.
The district court based the injunction on a series of
eight factual findings which we have deemed relevant in trademark
infringement suits. See Keds Corp. v. Renee International
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Trading Corp., 888 F.2d 215, 222 (1st Cir. 1989). The eight
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factors are aimed at establishing whether a likelihood of
confusion exists between the brands, which is the central inquiry
in a trademark infringement suit. 15 U.S.C. 1114(1)
(prohibiting the use of a mark that is "likely to cause
confusion, or to cause mistake, or to deceive"); see also Keds,
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888 F.2d at 222; Volkswagenwerk Aktiengesellschaft v. Wheeler,
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814 F.2d 812, 817 (1st Cir. 1987). No one factor is conclusive
as to likelihood of confusion, and the district court must
consider each. Keds, 888 F.2d at 222. We will not disturb the
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district court's findings on the eight factors unless they are
clearly erroneous. Id.
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The findings made by the district court in this case
are summarized as follows:
1) Similarity of Marks: The Leaf Eater mark is
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similar to the Weed Eater mark, but the similarity is diluted by
the frequent use of appellant's logos Vornado and Flowtron.
2) Similarity of Goods: The goods themselves are
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similar in only the broadest sense. The Weed Eater blower/vacuum
primarily collects leaves, while the Leaf Eater provides a
convenient method of disposal. They are in the same ball park,
but they are not precisely the same, sharing only the mulching
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function. Persons wishing to buy a Weed Eater would not buy a
Leaf Eater by mistake.
3, 4, 5) Channels of Trade, Advertising and Class of
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Prospective Purchasers:3 The products are sold side-by-side in
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the same stores and at the same price, advertised in the same
media, and aimed at similar consumers.
6) Evidence of Actual Confusion: Appellant made only
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a weak showing of actual confusion through an equivocal survey,
showing at best name association confusion. Appellant was unable
to produce any instances of actual consumer confusion after both
products coexisted on the market for six years.
7) Appellee's Intent in Adopting the Mark: Appellee
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did not act in bad faith in adopting the mark, but was aware of
appellant's strong trademark and the risk of legal challenge.
8) Strength of Mark: Weed Eater is a strong mark, but
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not one that occupies the field.
Appellant does not contest the district court's
findings seriously, and we do not find them clearly erroneous.
In light of its findings on these factors, the district court
found that appellee's use of the Leaf Eater mark by itself
infringed on appellant's Weed Eater mark, but use of Flowtron
Leaf Eater or Vornado Leaf Eater did not. We review the district
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3 Treating these factors together has become somewhat of a
pattern in this circuit. See Boston Athletic Ass'n v. Sullivan,
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867 F.2d 22, 30 (1st Cir. 1989); Volkswagenwerk
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Aktiengesellschaft v. Wheeler, 814 F.2d 812, 818 (1st Cir. 1987);
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Pignons S.A. v. Polaroid Corp., 657 F.2d 482, 488 (1st Cir.
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1981).
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court's injunction on a clearly erroneous standard, because it
reflects the district court's factual finding on likelihood of
confusion. Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366,
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377 (1st Cir. 1980). That factual finding, in turn, rests on the
district court's weighing of the eight factors discussed above.
Of the eight factors, the strongest tending towards
confusion in this case were the ones addressed together: the
similar channels of trade, advertising and class of prospective
purchasers. Appellant's strong mark also weighed in favor of a
finding of likelihood of confusion.
On the other hand, the weak evidence of actual
confusion weighs quite heavily against a finding of likelihood of
confusion. While a showing of actual confusion is not required
to establish infringement, an absence of actual confusion, or a
negligible amount of it, between two products after a long period
of coexistence on the market is highly probative in showing that
little likelihood of confusion exists. Pignons S.A. v. Polaroid
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Corp., 657 F.2d 482, 490 (1st Cir. 1981) (coexistence for four
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years); Keebler, 624 F.2d at 377 (coexistence for three and one
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half years). In this case, Weed Eaters and Leaf Eaters have
coexisted on the market for six years with little actual
confusion, twice the amount of time that we previously have found
convincing. Keebler, 624 F.2d at 377.
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Furthermore, the district court found that the goods
themselves are similar only in the broadest sense: they are
gardening equipment. The intended use and the cosmetics of the
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goods, however, reveal significant differences in the two
products, negating any significant possibility of confusion.
The remaining two factors present inconclusive evidence
as to likelihood of confusion. First, although appellee did not
act in bad faith by designating its product Leaf Eater, appellee
knew about the Weed Eater mark and the possibility of a legal
contest. Second, the district court found that the words Leaf
Eater, standing alone, could cause confusion but the use of
Flowtron or Vornado in conjunction with Leaf Eater reduced that
likelihood.
Taken together, the factors suggest little likelihood
of confusion. Only two clearly weigh in favor of it, but their
importance in this case is lessened by the lack of actual
confusion. Indeed, it seems to us that the lack of actual
confusion is all the more persuasive because the products are
sold side-by-side, at the same price, using the same advertising
media, and to the same consumers.
In this circumstance, we cannot conclude that the
district court clearly erred in finding infringement when
appellee used the term Leaf Eater alone, but no infringement when
appellee used the term Flowtron Leaf Eater or Vornado Leaf Eater.
To the contrary, the district court properly crafted the
injunction to fit the relevant facts.
The mandates of the injunction are not novel. We
previously have found that "otherwise similar marks are not
likely to be confused where used in conjunction with the clearly
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displayed name and/or logo of the manufacturer." Astra
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Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., 718
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F.2d 1201, 1205 (1st Cir. 1983) (citing Pignons, 657 F.2d at 487;
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Fisher Stoves, Inc. v. All Nighter Stove Works, Inc., 626 F.2d
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193, 194-95 (1st Cir. 1980)). Appellant contends that we cannot
rely on this principle in the present case because those cases
involved such well-known names as Polaroid. In contrast,
appellant argues, Flowtron and Vornado are unknown marks,
meaningless in the minds of the consumers. They do not dilute
the infringing aspects of Leaf Eater.
Nothing in those cases, however, indicates that the
relative fame of the manufacturer's name only serves to sanitize
an otherwise infringing mark. Indeed, when measuring the marks,
we look at "the total effect of the designation, rather than a
comparison of the individual features." Pignons, 657 F.2d at
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487. The relative fame of the terms Flowtron or Vornado may be
one ingredient that is added to the mixture, but it is not the
only one that arises from the use of those words. The district
court found that appellant's survey showed at best a kind of name
association confusion between the Weed Eater and Leaf Eater
products. When asked who manufactured the Leaf Eater,
respondents answered with the names of various prominent
manufacturers of gardening equipment, including Weed Eater.
Interestingly, twice as many respondents believed that Toro,
rather than Weed Eater, manufactured the Leaf Eater. We cannot
find any error in the district court's conclusion that the use of
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Flowtron or Vornado, as the manufacturer's trade name, clarifies
this confusion.
Relying on Volkswagenwerk, 814 F.2d at 819, appellant
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argues that "strong" marks are entitled to "broad" protection.
Because the district court found that Weed Eater is a strong
mark, the injunction should have bestowed upon it broad
protection, such as forbidding the use of the Leaf Eater mark
absolutely.
Appellant mischaracterizes our statements in
Volkswagenwerk. We said there that "'[s]trong' marks are
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accorded broader protection against infringement than are 'weak'
marks." The statement is framed in relative terms, as it must
be. A victim of infringement is entitled to as much protection
as is required to stop the infringement. 15 U.S.C. 1116 (court
shall "grant injunctions, according to the principles of equity
and upon such terms as the court may deem reasonable, to prevent
the violation" of trademark rights). Strong marks are more
easily infringed than weak marks, and require stronger measures
to remedy infringement. Whether a victim holds a strong or a
weak mark, however, he still is entitled only to such protection
as will eliminate the likelihood of confusion.
We come now to the district court's conclusion that
appellant was not entitled to monetary damages. The relevant
statute is 15 U.S.C. 1117. It provides, in relevant part, that
when a trademark violation occurs, the victim shall be entitled,
"subject to the principles of equity, to recover (1) defendant's
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profits, (2) any damages sustained by the plaintiff, and (3) the
costs of the action." Appellant essentially contends that this
section automatically requires damages when a trademark violation
occurs. Thus, because the district court found that a violation
occurred and issued an injunction to prevent it from recurring,
appellant contends that it is entitled also to money.
We cannot accept this argument. We have found "a clear
distinction between the showing required to establish a right to
injunctive relief and that required to establish a right to
damages." Camel Hair and Cashmere Inst. v. Associated Dry Goods
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Corp., 799 F.2d 6, 12 (1st Cir. 1986). The district court
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summarized the additional showing required for monetary damages
in four rules. These are: 1) a plaintiff seeking damages must
prove actual harm, such as the diversion of sales to the
defendant; 2) a plaintiff seeking an accounting of defendant's
profits must show that the products directly compete, such that
defendant's profits would have gone to plaintiff if there was no
violation; 3) the general rule of direct competition is loosened
if the defendant acted fraudulently or palmed off inferior goods,
such that actual harm is presumed; and 4) where defendant's
inequitable conduct warrants bypassing the usual rule of actual
harm, damages may be assessed on an unjust enrichment or
deterrence theory.
We find the district court's four part formula to be a
concise distillation of our case law on 1117. Our decision in
Valmor Products Co. v. Standard Products Corp., 464 F.2d 200, 204
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(1st Cir. 1972), reflects the first three rules in a brief
passage. We explained that
[s]ince [defendant's] products do not,
concededly, compete with [plaintiff's],
[defendant] can hardly be thought, in the
absence of fraud or palming off, to be a
trustee for profits which but for the
infringement would have been
[plaintiff's], nor, when given the
opportunity at several points, was
[plaintiff's] president able to specify
any damages which his company had
suffered.
Id. In that case, we denied a request for an accounting, even
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though we upheld an injunction to stem a trademark violation,
because of a lack of actual damages, direct competition, and
culpable behavior by the plaintiff. Those factors are thus
relevant to an award of damages or an accounting of profits. In
Raxton Corp. v. Anania Associates, Inc., 668 F.2d 622, 625 (1st
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Cir. 1982), we did not authorize an accounting for profits when
"the two companies do not compete directly for business . . . and
[plaintiff] offered no proof of actual damages."
The district court's fourth rule essentially derives
from a footnote in Quabaug Rubber Co. v. Fabiano Shoe Co. 567
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F.2d 154, 161 n.15 (1st Cir. 1977), in which we recognized that
other circuits granted damages based on deterrence or unjust
enrichment theories. In Baker v. Simmons Co., 325 F.2d 580, 582
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(1st Cir. 1963), we also granted damages on an unjust enrichment
theory when the products did not directly compete, but the
defendant was guilty of fraud and palming-off. Thus, under our
case law damages have never been allowed under the deterrence or
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unjust enrichment theories absent some form of fraud.
In addition to restating our law on damages correctly,
the district court applied the law to the facts correctly.
First, appellant failed to establish actual damages.
Appellant asks us to give one sentence uttered during one
deposition of an officer of appellee conclusive weight in this
regard. Appellant's lawyer asked "[s]o the term Leaf Eater has,
as you said, a monumental and significant effect on your ability
to sell your product; is that right?" The officer, namely the
Vice-President of Sales and Marketing, responded simply "[y]es."
The district court gave little weight to this statement because
it was in response to a leading question, and more importantly,
because it did not show that appellant lost any sales due to the
infringing aspects of appellee's own mark. Appellant also
presented a survey purporting to show some confusion over the
name Leaf Eater. The survey did not show appellant actually lost
sales due to that confusion, however. We agree with the district
court that appellant's evidence did not present a colorable claim
of actual damages.
Second, Weed Eater and Leaf Eater products do not
directly compete, which forecloses one avenue in the quest for an
accounting of appellee's profits. As the district court noted, a
purchaser of one product would not think that he had just bought
the other product. The products serve different functions and
are designed with these differences in mind. The greatest
similarity between the products is the nylon string mechanism;
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the execution of that mechanism, however, is sufficiently
different to place the products in different categories of
consumer goods. Thus, when publications such as Consumer Reports
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rate leaf shredders, they discuss the Leaf Eater and various
other machines, but do not mention appellant's Weed Eater
products. Given the lack of direct competition, we cannot assume
thatthe saleof LeafEaters hasappropriatedany ofappellant's sales.
Third, appellee did not act in bad faith so as to
loosen the direct competition or actual harm rule, foreclosing
the other avenue in the quest for an accounting of defendant's
profits. As the district court found, appellee chose Leaf Eater
as a natural extension of its previous mark, Skeeter Eeter, not
to take advantage of Weed Eater's reputation and good will in the
market. Indeed, appellee did so only after its attorney
conducted a search to determine Leaf Eater's trademark status,
and concluded that Leaf Eater was available for use. Thus, while
appellee may have been aware of a challenge, appellee did not act
in bad faith in using a mark that it believed available.
For the same reasons, the fourth avenue for relief,
involving considerations of deterrence and unjust enrichment, has
no place in this situation.
We are sensitive to appellant's claim that it has spent
a considerable amount of money over the course of years to
promote the Weed Eater line of products. In sum, however, we
find no justification to award damages under our 1117
jurisprudence. Contrary to appellant's assertions, the equities
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in this case simply do not favor an award of money. Rather, they
are satisfied with the injunction entered by the district court.
Affirmed.
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