Equine v. Equitechnology

Opinion

USCA1 Opinion

UNITED STATES COURT OF APPEALS

                                FOR THE FIRST CIRCUIT

                                 ____________________



          No. 95-1098



                              EQUINE TECHNOLOGIES, INC.,



                                Plaintiff - Appellee,



                                          v.



                             EQUITECHNOLOGY, INCORPORATED

                                 AND RONALD LAROCHE,



                               Defendants - Appellants.



                                 ____________________



                     APPEAL FROM THE UNITED STATES DISTRICT COURT



                          FOR THE DISTRICT OF MASSACHUSETTS



                      [Hon. Patti B. Saris, U.S. District Judge]
                                            ___________________



                                 ____________________



                                        Before



                               Torruella, Chief Judge,
                                          ___________



                           Campbell, Senior Circuit Judge,
                                     ____________________



                               and Cyr, Circuit Judge.
                                        _____________



                                _____________________



               Scott  J.  Fields,  with  whom Duane,  Morris  &  Heckscher,
               _________________              ____________________________

          Lawrence G.  Green and Perkins, Smith  & Cohen were  on brief for
          __________________     _______________________

          appellants.

               Victor H. Polk, Jr., with whom Bingham,  Dana & Gould was on
               ___________________            ______________________

          brief for appellee.


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                                   November 3, 1995

                                 ____________________



TORRUELLA,  Chief  Judge.   Plaintiff-appellee,  Equine
                    TORRUELLA,  Chief  Judge.
                                ____________



          Technologies,  Inc.,  brought  a  trademark  infringement  action



          against defendants-appellants, Equitechnology,  Inc., and  Ronald



          Larouche (its  founder).  The district  court granted plaintiff's



          motion for a preliminary injunction,  and defendant appeals.   We



          affirm.



                                      BACKGROUND
                                      BACKGROUND
                                      __________



                    Plaintiff  is  a  Massachusetts  corporation  which has



          developed and  patented a line  of specialized "hoof  pads" which



          act as shock absorbers for horses.   Plaintiff has sold its  hoof



          pads  under  the  trademark  "EQUINE  TECHNOLOGIES"1 since  1989.



          Plaintiff also sells a  hoof cleanser called CLEAN TRAX  which is



          also  sold under the EQUINE  TECHNOLOGIES mark.  Plaintiff's mark



          has been registered  on the  Primary Register of  the Patent  and



          Trademark Office ("PTO") since March 1993.



                    Defendant, a Florida  corporation, began marketing  and



          selling hoof  care products using the  mark "EQUITECHNOLOGIES" in



          1993.   In its promotion  efforts, defendant has  stated that the



          "shock absorption qualities" of  its product make it "ideal  as a



          custom   hoof   pad."     Defendant's   petition  for   trademark



          registration was preliminarily rejected by the PTO on the grounds



          that  it  was confusingly  similar  to  the  mark  registered  by



          plaintiff.  Notwithstanding the ruling of the  PTO, defendant has



          continued to  append the  official trademark registration  to its



          mark.

                              
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          1  The "u" in EQUINE is in the form of a horseshoe.



                                         -2-



Plaintiff sued defendant in  the United States District



          Court  for Massachusetts  alleging  federal and  state claims  of



          trademark infringement  and unfair  competition, and moved  for a



          preliminary injunction  to enjoin  defendant from using  the mark



          Equitechnologies  during  the  pendency  of  the  lawsuit.    The



          district  court granted the preliminary injunction, and defendant



          appeals.



                                      DISCUSSION
                                      DISCUSSION
                                      __________



                    "Trademark law  seeks to prevent one  seller from using



          the  same 'mark' as--or one  similar to--that used  by another in



          such a way that he confuses the  public about who really produced



          the goods (or service)."  DeCosta v. Viacom Int'l, Inc., 981 F.2d
                                    _______    __________________



          602, 605 (1st Cir.  1992); WCVB-TV v. Boston Athletic  Ass'n, 926
                                     _______    ______________________



          F.2d  42,  43 (1st  Cir. 1991).   A  district  court may  grant a



          preliminary injunction in a trademark case when it concludes that



          the  plaintiff   has  demonstrated   (1)  that  it   will  suffer



          irreparable injury if the injunction is not granted; (2) that any



          such  injury outweighs  any  harm which  granting the  injunction



          would cause the  defendant; (3)  a likelihood of  success on  the



          merits;  and (4) that the  public interest will  not be adversely



          affected by the  granting of the injunction.  Keds Corp. v. Renee
                                                        __________    _____



          Int'l Trading  Corp., 888  F.2d 215,  220 (1989) (citing  Planned
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          Parenthood League  of Massachusetts  v. Bellotti, 641  F.2d 1006,
          ___________________________________     ________



          1009 (1st Cir.  1981)).  The central issue in  this case, as with



          most preliminary injunction trademark  cases, see id., is whether
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          plaintiff demonstrated a likelihood of success on the merits.


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Defendant's first contention is that the district court



          erred  in  finding  a likelihood  of  success  on  the merits  of



          plaintiff's  claims  because the  mark  "EQUINE  TECHNOLOGIES" is



          "merely  descriptive"   of  the  horse  hoof   pads  produced  by



          plaintiff,  and therefore invalid.   See  15 U.S.C.    1052(e)(1)
                                               ___



          (proscribing registration of merely descriptive marks).  While we



          think plaintiff's mark is  "suggestive" of its product,  we agree



          with  the district court that the mark EQUINE TECHNOLOGIES is not



          "merely descriptive" of hoof pads for horses.2



                    "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



                              
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          2  We have explained the significance of  the classification of a

          mark as either "descriptive" or "suggestive."



                      A court's  inquiry  into whether  a  term

                      merits  trademark protection  starts with

                      the classification of that term along the

                      spectrum  of  "distinctiveness."   At one

                      end  of  the spectrum  there  are generic

                      terms that have  passed into common usage

                      to  identify a product,  such as aspirin,

                      and  can  never  be  protected.    In the

                      middle  there  are so-called  descriptive

                      terms, such as a geographical term, which

                      can  be  protected, but  only  if  it has

                      acquired a "secondary  meaning" by  which

                      consumers associate it with  a particular

                      product or  source.  At the  other end of

                      the   spectrum,  there   are  suggestive,

                      arbitrary and fanciful terms that  can be

                      protected  without   proof  of  secondary

                      meaning.    These  terms  are  considered

                      "inherently distinctive."



          Boston Beer Co. v. Slesar Bros. Brewing Co., 9 F.3d 175, 180 (1st
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          Cir. 1993) (internal citations omitted).


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immediate idea  of the ingredients, qualities  or characteristics



          of  the goods."  Blinded  Veterans Ass'n v.  Blinded Am. Veterans
                           _______________________     ____________________



          Found.,  872 F.2d 1035, 1040 (D.C. Cir. 1989) (citing Stix Prods.
          ______                                                ___________



          Inc. v.  United Merchants &  Mfrs., Inc., 295  F. Supp. 479,  488
          ____     _______________________________



          (S.D.N.Y. 1968)).  See also Union Nat'l Bank of Texas (Laredo) v.
                             ________ __________________________________



          Union  Nat'l Bank of Texas (Austin),  909 F.2d 839, 844 (5th Cir.
          ___________________________________



          1990).  Merely  descriptive terms generally  are not entitled  to



          protection  under trademark  law "both  because  they are  a poor



          means of distinguishing  one source of services  from another and



          because  they are often necessary to the description of all goods



          or services of  a similar  nature."   A.J. Canfield  Co. v.  Vess
                                                __________________     ____



          Beverages, Inc., 796 F.2d 903, 906 (7th Cir. 1986).
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                    In  determining  whether a  particular  mark is  merely



          descriptive  of a product,  a reviewing  court must  consider the



          mark in its  entirety, with  a view toward  "what the  purchasing



          public would think when confronted with the mark as a whole."  In
                                                                         __



          re  Hutchinson Technology Inc.,  852 F.2d 552,  552-54 (Fed. Cir.
          ______________________________



          1988).  The district  court's determination that plaintiff's mark



          is not  merely descriptive of  its product  is a finding  of fact



          which we  review only for clear error.  Boston Beer Co. v. Slesar
                                                  _______________    ______



          Bros. Brewing  Co., 9 F.3d 175,  180 (1st Cir. 1993).   The clear
          __________________



          error hurdle is "quite high."  Id. (citation omitted).  Moreover,
                                         __



          because  plaintiff's mark has been  registered by the  PTO on the



          Principal Register,  it is  entitled to  a  legal presumption  of



          validity.    See 15  U.S.C.    1115(a)  (registration of  mark on
                       ___



          Principal Register "shall be prima facie evidence of the validity


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of the registered mark . . . and of the registrant's right to use



          the  registered mark  in commerce  on or  in connection  with the



          goods  or  services  specified  in the  certificate").    Section



          1115(a)  entitles  the  plaintiff   to  a  presumption  that  its



          registered  trademark is  inherently  distinctive, as  opposed to



          merely  descriptive.  See Quabaug Rubber Co. v. Fabiano Shoe Co.,
                                ___ __________________    ________________



          567 F.2d 154, 161 (1st Cir. 1977) (federal registration "is prima



          facie evidence that such mark has become distinctive of the goods



          in commerce"); Liquid Controls Corp. v. Liquid Control Corp., 802
                         _____________________    ____________________



          F.2d 934, 936  (7th Cir. 1986).3  That said, we turn to the facts



          at issue in this case.



                    There is no dispute in this case that the term "equine"



          is descriptive  of horses.4   The  question, however, is  whether



          the mark, in its entirety,  is merely descriptive of  plaintiff's



          product -- hoof pads for horses.  Defendant's argument boils down



          to its contention  that "[a]  consumer (i.e.,  farrier or  equine



          veterinarian)  would  naturally expect  a  company  called EQUINE



          TECHNOLOGIES to make high-tech  hoof pads for horses."   Like the



          district court, we  find this argument  unsupported by case  law,

                              
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          3  Defendant argues that plaintiff's mark is somehow not entitled

          to  this presumption  because plaintiff's  first  application for

          trademark protection was rejected.  Defendant seems to ignore the

          fact that plaintiff,  as it was entitled, amended its application

          and its mark was subsequently placed on the registry  by the PTO.

          Plaintiff's mark  is therefore fully entitled  to the presumption

          of validity.     



          4  When registering  its mark with the PTO,  plaintiff disclaimed

          any  exclusive  rights  to  the  term  "EQUINE"  because  of  its

          descriptive  nature.     As   plaintiff  correctly   points  out,

          trademarks may properly incorporate  descriptive terms for a non-

          descriptive whole.    



                                         -6-



and lacking in basic common sense.



                    The district court concluded:



                         Plaintiff is likely  to prevail on its

                      claim   that  the  mark   is  not  merely

                      descriptive    because   it    does   not

                      immediately conjure up the thought of the

                      subject  goods.  Simply  hearing the name

                      gives  virtually no  idea of  the product

                      except that  it has  to  do with  horses.

                      Seeing the mark provides a better clue as

                      it transforms the  "u" into a  horseshoe.

                      However,  the  viewing public  still does

                      not  know  if  the product  is  itself  a

                      horseshoe, or a horseshoe related product

                      like a  hoof pad, or if  the enlarged "u"

                      is  simply a  graphic technique  to evoke

                      the idea of horses.



                    The  court's  finding  of  non-descriptiveness  is  not



          clearly  erroneous.     The  term   "Equine  Technologies"  might



          reasonably be thought  to suggest  that the product  to which  it



          applies has  to do with horses.  The addition of the upturned "u"



          might  also suggest, to the  perceptive consumer, that  it has do
                      _______



          with  hooves  or  horseshoes.   But  we  think  the mark  clearly



          "requires  the consumer to  exercise the imagination  in order to



          draw a conclusion as to the nature of goods and services."  Union
                                                                      _____



          Nat'l Bank, 909 F.2d 839, 844 (5th Cir. 1990) (quoting Zatarains,
          __________                                             __________



          Inc. v.  Oak Grove Smokehouse, Inc., 698  F.2d 786, 790 (5th Cir.
          ____     __________________________



          1983)).   The  mark  itself  does not  convey  information  about



          plaintiff's  product  or  its   intended  consumers;  rather,  it



          requires imagination to connect the term "Equine Technologies" to



          hoof care products, in general, and to the plaintiff's product in



          particular.  We  find no  error in the  district court's  holding



          that plaintiff's mark was not merely descriptive of its product.


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Before moving on to defendant's argument concerning the



          likelihood of confusion  between the two marks,  we pause briefly



          to address defendant's contention that the district court applied



          the wrong  legal standard  in analyzing the  "merely descriptive"



          question.     Defendant   maintains   that  the   district  court



          incorrectly  analyzed  only  the  question of  whether  the  mark



          immediately   describes   the  actual   product,   and  therefore



          implicitly  rejected the concept  that a trademark  may be merely



          descriptive if it describes the intended purpose, function or use



          of  the goods,  the class  of  user of  the  goods, or  desirable



          characteristics  of the goods.  See 1 J. McCarthy, Trademarks and
                                          ___



          Unfair  Competition,     11.5  (1994).    The  problem with  this



          argument is  that defendant  consistently argued to  the district



          court  that plaintiff's  mark  was invalid  precisely because  it



          merely described plaintiff's product; i.e., hoof pads for horses.



          The  district  court  was  therefore  responding  to  defendant's



          specific  contention.    Defendant   is  not  entitled  to  raise



          arguments on appeal  that it  failed to present  to the  district



          court.  See Boston Beer, 9 F.3d at 180 ("a  litigant's failure to
                  ___ ___________



          explicitly raise  an issue  before the district  court forecloses



          that party from  raising the issue for the first time on appeal")



          (citing McCoy v.  Massachusetts Inst. of Technology, 950 F.2d 13,
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          22 (1st  Cir. 1981), cert. denied,  112 S. Ct. 1939  (1992)).  We
                               _____ ______



          therefore treat these new arguments as waived.  See id. at 181.
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                    Defendant's  second contention  is  that  the  district



          court  erred in finding a likelihood of confusion between the two


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marks.   "Once the  determination has been  made that  a term  is



          entitled  to trademark  protection, the  pivotal inquiry  becomes



          whether the allegedly infringing mark is likely to cause consumer



          confusion."  Boston Beer, 9 F.3d at 180.  See 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").   In  this



          circuit, this determination  is based upon  an analysis of  eight



          separate  factors,  each  of   which  requires  its  own  factual



          findings.  See, e.g.,  Aktiebolaget Electrolux v. Armatron Int'l,
                     ___  ____   _______________________    _______________



          Inc., 999 F.2d 1, 2-3 (1st Cir. 1993); DeCosta, 981  F.2d at 606;
          ____                                   _______



          Keds Corp., 888 F.2d at  222.  The determination as to  whether a
          __________



          likelihood  of confusion exists is  a question of  fact, which we



          review only for clear error.  See Aktiebolaget, 999 F.2d at 3.
                                        ___ ____________



                    The  findings made by  the district court  in this case



          are summarized below:



                    1) Similarity of  Marks:  The  impressions made on  the



          ear and the mind by  the two marks are quite close,  although, to



          the eye, the  two marks are not  so close.   Based on the  "total



          effect" of the  marks, the  similarity between the  two marks  is



          strong.



                    2) Similarity  of Goods:   Both products belong  to the



          narrow category of  hoof care  products.  Even  assuming a  price



          differential  between the  products, the  similarity between  the



          goods  is  strong.    Moreover,  even  assuming  that  the  prime



          purchasers  of   the   goods  are   sophisticated  farriers   and



          veterinarians, the goods are similar enough to create confusion.


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3,4,5)  Channels of  Trade, Advertising,  and Class  of



          Prospective Purchasers:5   The parties present  their products at



          the same trade shows, and advertise in the same magazines, to the



          same target groups of consumers.



                    6) Evidence  of Actual Confusion:   Plaintiff made more



          than  a  minimal  showing  of actual  confusion,  citing  several



          instances of  consumer and promotional confusion  between the two



          companies and their products.



                    7) Defendant's Intent in Adopting the Mark:  The record



          is  inadequate  to make  a  finding with  respect  to defendant's



          intent in adopting the mark.



                    8)  Strength of the Mark:  Defendant failed to overcome



          the   presumption  of  validity  attached  to  registered  marks.



          Plaintiff's mark is moderately strong.



                    The district  court meticulously  analyzed each  of the



          eight  factors,  and  it is  only  with  respect  to the  court's



          analysis of  the last  factor that the  defendant asserts  error.



          Defendant  contends  that the  district  court  erred in  finding



          plaintiff's mark  to be moderately strong, and  asserts that this



          erroneous finding  fatally infects  the  court's conclusion  that



          there is a likelihood of confusion between the two products.



                    We reject this  argument for two  reasons.  First,  the



          strength of a mark is  but one of eight factors to  be considered



          in  analyzing the likelihood of confusion issue.  See Keds Corp.,
                                                            ___ __________

                              
          ____________________



          5 As  is the custom in this  circuit, the district court analyzed

          these  factors together.   See  Aktiebolaget, 999  F.2d at  3 n.3
                                     ___  ____________

          (collecting cases).



                                         -10-



888 F.2d at 222 ("No one factor is necessarily determinative, but



          each must be considered.") (citing  Volkswagen AG v. Wheeler, 814
                                              _____________    _______



          F.2d  812, 817 (1st Cir. 1987)).  The district court's subsidiary



          findings that  six  of  the seven  other  factors  demonstrate  a



          likelihood of confusion -- the intent factor being inconclusive -



          - are  sufficient to sustain the court's ultimate conclusion that



          such confusion exists.



                    Second,   the   district   court's    conclusion   that



          plaintiff's mark was moderately  strong is not clearly erroneous.



          In determining  a trademark's  relative strength, this  court has



          examined  "the  length of  time  a  mark has  been  used  and the



          relative  renown  in  its field;  the  strength  of  the mark  in



          plaintiff's  field of  business;  and the  plaintiff's action  in



          promoting the mark."  Keds Corp., 888 F.2d at 222 (quoting Boston
                                __________                           ______



          Athletic Ass'n v. Sullivan, 867 F.2d 22, 32 (1st Cir. 1989)).  In
          ______________    ________



          this  case,  the district  court noted  the following  factors in



          support of  its conclusion: (1) the mark has been in use for four



          years; (2)  plaintiff has actively  marketed goods with  the mark



          affixed, including  74 print advertisements  promoting the  mark;



          (3)  plaintiff  has received  favorable  publicity  in the  horse



          world; (4)  plaintiff has  successfully compelled one  infringing



          competitor to change  its name; and (5)  the PTO has rejected  at



          least one attempt  by a  competitor to register  a similar  name.



          Moreover, the  plaintiff's mark has  been registered by  the PTO,



          which provides additional support for the court's conclusion that



          the mark  is moderately strong.   See DeCosta,  981 F.2d at  606.
                                            ___ _______


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These findings, which defendant  has not challenged as erroneous,



          sufficiently support the court's conclusion that plaintiff's mark



          is moderately strong.



                    Finally,  defendant contends that "the Court completely



          ignored the relevance of the fact that numerous companies in this



          industry  use a  combination  of Equi,  Equine,  Eque, Eques  and



          'Technology.'"   This  assertion is  belied by  the record.   The



          district court  opinion expressly  cites each of  these examples,



          but notes that only one of those companies directly competes with



          plaintiff,  and concludes  that  "its  mark  is not  as  similar,



          visually or  aurally, as  defendants' trademark."   Defendant has



          not argued that this factual finding is clearly erroneous.



                    We have considered  all of defendant's  other arguments



          and find them without merit.  The district  court opinion in this



          case is detailed and comprehensive.  The court carefully reviewed



          the evidence, made specific findings of  fact which are supported



          by  the record, and resolved the question of injunctive relief in



          accordance with  the proper legal  standard.  The  district court



          correctly  found that  it  was  likely  that consumers  would  be



          confused by the two marks, and that plaintiff is therefore likely



          to succeed on  the merits of its  infringement claim.   The court



          also  correctly  ruled that  the  other factors  relevant  to the



          issuance  of   a  preliminary   injunction  weighed   heavily  in



          plaintiff's  favor.  We find no basis for disturbing the district



          court decision.



                                      CONCLUSION
                                      CONCLUSION
                                      __________


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For  the reasons  stated  herein, the  judgment of  the



          district court is affirmed.  Costs to appellee.
                            affirmed.


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