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.
____________________
November 3, 1995
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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.
____________________
1 The "u" in EQUINE is in the form of a horseshoe.
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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 ____________________ _______
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 ___ __
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
____________________
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 _______________ ________________________
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). _______________
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,
____________________
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.
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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, _____ _________________________________
22 (1st Cir. 1981), cert. denied, 112 S. Ct. 1939 (1992)). We _____ ______
therefore treat these new arguments as waived. See id. at 181. ___ __
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).
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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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