Oriental Financial Group, Inc. v. Cooperativa De Ahorro Y Crédito Oriental

United States Court of Appeals
For the First Circuit

No. 15-1009

ORIENTAL FINANCIAL GROUP, INC., ORIENTAL FINANCIAL SERVICES
CORP., ORIENTAL BANK AND TRUST,

Plaintiffs, Appellants,

v.

COOPERATIVA DE AHORRO Y CRÉDITO ORIENTAL,

Defendant, Appellee.

APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF PUERTO RICO

[Hon. José Antonio Fusté, U.S. District Judge]

Before

Barron, Hawkins,* and Lipez,
Circuit Judges.

Roberto C. Quiñones-Rivera, with whom Leslie Yvette Flores
and McConnell Valdés LLC were on brief, for appellants.
Carla Ferrari-Lugo, with whom Veronica Ferraiuoli-Hornedo was
on brief, for appellee.

August 3, 2016

* Of the Ninth Circuit, sitting by designation.
 LIPEZ, Circuit Judge. Four years ago, we affirmed a

judgment that a Puerto Rico credit union (in Spanish, a

"cooperativa") infringed on the trademark rights of a competing

bank by adopting a confusingly similar logo and trade dress.

Oriental Fin. Grp., Inc. v. Cooperativa de Ahorro y Crédito

Oriental, 698 F.3d 9 (1st Cir. 2012) ("Oriental I"). In this

subsequent appeal, we consider whether the credit union also

infringed the bank's word mark and trade name ORIENTAL with its

competing marks COOP ORIENTAL, COOPERATIVA ORIENTAL, ORIENTAL POP,

and CLUB DE ORIENTALITO. Notwithstanding the similarity between

them, the district court found that the latter marks did not

infringe upon the former, and refused to enjoin their use.

With regard to COOP ORIENTAL, COOPERATIVA ORIENTAL, and

ORIENTAL POP, the district court's determination of non-

infringement was clearly erroneous. We reverse that portion of

the judgment and remand for reconsideration of whether the

injunction should be expanded to remedy the infringing use of those

marks. We conclude, however, that the district court's

determination is supportable as to CLUB DE ORIENTALITO, and affirm

that portion of the judgment.

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 I.

A. Competing financial institutions

Plaintiffs-appellants Oriental Financial Group, Inc.,1

Oriental Bank and Trust, and Oriental Financial Services Corp.

(collectively, "Oriental Group") originated in eastern Puerto Rico

and expanded to offices and retail locations throughout the island.

It has used the word mark ORIENTAL to market its financial services

since 1964.2 The mark means "eastern" in both Spanish and English.

Although it originally signaled Oriental Group's geographic

origins, it is now used as an arbitrary mark3 to distinguish its

1 Oriental Financial Group, Inc. changed its name to OFG
Bancorp on April 25, 2013, during the pendency of this litigation.
2 We use "word mark" herein to refer to a standard character
mark, not limited to "any particular font style, size or color,"
Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344,
1353 (Fed. Cir. 2011) (quoting 37 C.F.R. § 2.52(a)), or other
design elements, see Igloo Prods. Corp. v. Brantex, Inc., 202 F.3d
814, 815, 817 (5th Cir. 2000) (distinguishing trademark protection
for "a words-only trademark" from "a trademark including both words
and images in a distinct manner").
3 As an arbitrary mark, ORIENTAL does not convey to the
consumer that Oriental Group's financial services are somehow
"eastern" in their character. ORIENTAL, "when used with the . . .
services in issue, neither suggest[s] nor describe[s] any
ingredient, quality or characteristic of those . . . services." 2
J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition
§ 11:11, Westlaw (database updated June 2016); cf. Sun Banks of
Fla., Inc. v. Sun Fed. Sav. & Loan Ass'n, 651 F.2d 311, 315-17
(5th Cir. 1981) (suggesting that SUN is an arbitrary mark, neither
describing the geographic origin of a Florida-based bank, nor any
characteristic of the bank's services). In its brief in this
appeal, Cooperativa appears to contend that the ORIENTAL mark is
geographically descriptive rather than arbitrary. Having failed

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financial services from others in the marketplace. Oriental Group

also uses a logo consisting of the word ORIENTAL in orange letters

and distinctive orange trade dress. Oriental I, 698 F.3d at 14.

Defendant-appellee Cooperativa de Ahorro y Crédito

Oriental ("Cooperativa") has used ORIENTAL in its full name since

1966, and began using a shortened version, COOP ORIENTAL, in 1995.

For many years its advertising was "de minimis," id. at 23, and it

maintained only a few branches in the eastern part of the island.

However, starting in 2008, Cooperativa substantially expanded its

geographic reach, changed its branding, and began an advertising

campaign at roughly the same time. Between 2008 and 2010,

Cooperativa added branches in San Juan and other regions of Puerto

Rico, becoming a competitor to Oriental Group in such financial

services as checking and savings accounts, certificates of

deposit, IRAs, and credit cards. See id. at 13-14; Oriental Fin.

Grp. Inc. v. Cooperativa de Ahorro y Crédito Oriental, 750 F. Supp.

2d 396, 400-01 (D.P.R. 2010) ("2010 Injunction Order"). In 2009,

it rebranded itself and adopted new trade dress, similar to

Oriental's in tone and its use of the color orange. Oriental I,

698 F.3d at 13-14; 2010 Injunction Order, 750 F. Supp. 2d at 401.

As part of the rebranding, it also adopted a black, brown and

orange logo featuring the COOP ORIENTAL word mark, with the word

to raise this argument on the first appeal, however, it cannot do
so here.

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ORIENTAL in larger type than COOP. 2010 Injunction Order, 750 F.

Supp. 2d at 401. At the same time, it initiated "an expansive

advertising campaign in newspapers[,] television . . . [and]

billboards." Oriental I, 698 F.3d at 14. Soon thereafter, several

incidents of consumer confusion occurred in which consumers

wrongly believed that Oriental Group and Cooperativa were

affiliated. Id. at 19. Oriental Group then brought this action

on May 21, 2010.

B. The district court proceedings

Oriental Group sued Cooperativa for, inter alia, service

mark4 infringement under section 43(a) of the Lanham Act, 15 U.S.C.

§ 1125(a).5 Oriental Group alleged that Cooperativa's COOP

ORIENTAL word mark, and its logo and trade dress, were confusingly

similar to its ORIENTAL mark. Oriental I, 698 F.3d at 14. It

asked for injunctive relief against Cooperativa to prevent the use

of, inter alia, "any composite trademark that includes the term

4
Because the marks at issue are used to identify the source
of financial services rather than goods, they are service marks
rather than trademarks. See Chance v. Pac-Tel Teletrac Inc., 242
F.3d 1151, 1156 (9th Cir. 2001) ("Service marks and trademarks are
governed by identical standards . . . .").
5
Oriental Group also sued under the Puerto Rico Trademark
Act of 2009, Act No. 169 of Dec. 16, 2009. Consistent with the
district court's decision and the parties' briefs, we concern
ourselves only with federal trademark law, and assume without
deciding that there are no relevant differences between the Lanham
Act and the Puerto Rico Trademark Act of 2009. See Oriental I,
698 F.3d at 16 n.4.

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ORIENTAL." Id. (emphasis added). This claim did not include

Cooperativa's full name, which Oriental concedes is non-

infringing. Id. at 20.

After a preliminary injunction hearing in 2010, which

the parties subsequently agreed to treat as a bench trial on the

issue of a permanent injunction, the district court made findings

of fact and conclusions of law pursuant to Federal Rule of Civil

Procedure 52(a). 2010 Injunction Order, 750 F. Supp. 2d at 400.

The court found that Oriental Group's "mark is strong in Puerto

Rico," that it and Cooperativa "offer many of the same services to

some of the same geographical regions in Puerto Rico," and

"advertise in the same newspapers," and that incidents involving

actual consumer confusion took place beginning in 2010. Id. at

403-04. Building on those findings, the district court concluded

that Cooperativa's "new logo -- in particular, the prominent

placement of the word 'Oriental' -- and its new color scheme," in

"combination," "infringe[] [Oriental Group's] service mark under

both federal and Puerto Rico law." Id. at 406.

In determining whether an injunctive remedy was

appropriate, the court considered the factors outlined in eBay

Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006). See eBay, 547

U.S. at 391 (listing equitable considerations that must be

considered before a permanent injunction may be issued); Voice of

the Arab World, Inc. v. MDTV Med. News Now, Inc., 645 F.3d 26, 34

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(1st Cir. 2011) (applying the eBay factors in the trademark

context). After determining that Oriental Group suffered ongoing

and irreparable harm from the infringement, that the balance of

hardships favored Oriental Group, and that the public interest

would be served by an injunction, see eBay, 547 U.S. at 391, the

court enjoined Cooperativa from using its infringing orange trade

dress and logo, 2010 Injunction Order, 750 F. Supp. 2d at 405.

Though it was not clear on this point, the district court

apparently believed that Oriental Group was challenging only

Cooperativa's logo and trade dress, and had not challenged its use

of the word mark COOP ORIENTAL. Oriental I, 698 F.3d at 16 (citing

2010 Injunction Order, 750 F. Supp. 2d at 404, 406). Consistent

with that view of the case, the district court never analyzed the

likelihood of confusion based on the word mark alone, and allowed

Cooperativa to "revert to the mark and dress it used prior to

2009," which incorporates COOP ORIENTAL. 2010 Injunction Order,

750 F. Supp. 2d at 406. Its order also left Cooperativa free to

use the word mark in print and radio advertising. Cooperativa

subsequently registered COOP ORIENTAL and COOPERATIVA ORIENTAL

with the United States Patent and Trademark Office (PTO).

C. The first appeal

Unsatisfied, Oriental Group moved to amend or alter the

injunction to proscribe all use of COOP ORIENTAL and COOPERATIVA

ORIENTAL, even when not embedded in the infringing logo or

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accompanied by the infringing trade dress. Oriental I, 698 F.3d

at 15. It noted that consumers might encounter the word marks

abstracted from logos or trade dress in radio advertisements and

news media. The district court denied the motion on the ground

that Oriental Group had not shown a likelihood of confusion based

on the word marks alone. The court reasoned that Oriental Group's

evidence of consumer confusion was limited to the time following

the 2009 introduction of Cooperativa's new logo, whereas

Cooperativa's use of its shortened names, COOP ORIENTAL and

COOPERATIVA ORIENTAL, had begun in 1995. Id. The district court

entered final judgment, and Oriental Group timely appealed.6

In the first appeal, as here, the only issue was the

likelihood of confusion. We affirmed the judgment in part and

vacated in part. We held that "to the extent that the district

court concluded that Oriental did not challenge the COOP ORIENTAL

mark divorced from the 2009 orange trade dress, it was incorrect."

Id. at 16. To the contrary, "[t]he record is clear that Oriental

challenged not only Cooperativa's use of the 2009 logo and trade

6Oriental Group first raised the issue of ORIENTAL POP and
CLUB ORIENTALITO (a variant of CLUB DE ORIENTALITO) in a
supplemental brief supporting its motion to amend or alter the
injunction. These marks are not used as trade names for
Cooperativa as a whole -- they refer to financial products for
teenagers and children, respectively. In denying Oriental Group's
motion, the district court did not address these marks. Oriental
Group later asked that CLUB DE ORIENTALITO be enjoined, and dropped
references to CLUB ORIENTALITO. We address ORIENTAL POP and CLUB
DE ORIENTALITO in Part IV, infra.

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dress, but also Cooperativa's use of the COOP ORIENTAL mark and

similar marks apart from that trade dress." Id. Further, we held

that the district court erred when it rejected the request to

broaden the injunction on the ground that there was no evidence of

actual confusion prior to 2009. Id. at 17. As we pointed out,

this ruling ran "contrary to the established principle that

evidence of actual confusion is not necessary to establish a

likelihood of confusion." Id.; accord Societe des Produits Nestle,

S.A. v. Casa Helvetia, Inc., 982 F.2d 633, 640 (1st Cir. 1992).

Accordingly, we remanded for "the district court to determine

whether the COOP ORIENTAL mark and similar marks create a

likelihood of confusion, and to fashion an appropriate injunction

if a likelihood of confusion is established." Oriental I, 698

F.3d at 24.

Before remanding, we observed that "many of the findings

made by the district court are not specific to the orange trade

dress contained in the 2009 logo, and thus are equally relevant in

assessing Cooperativa's use of the COOP ORIENTAL mark standing

alone." Id. at 18. The district court had found that five of the

eight Pignons factors, used as a framework to gauge the likelihood

of confusion between marks, weighed in Oriental Group's favor.

Id.; see Pignons S.A. de Mecanique de Precision v. Polaroid Corp.,

657 F.2d 482, 487 (1st Cir. 1981). We held that the analysis of

those factors -- the similarity of Oriental Group's and

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Cooperativa's services (second factor); the relationship between

their channels of trade, advertising, and prospective customers

(third, fourth, and fifth factors); and the strength of Oriental

Group's mark (eighth factor) -- "equally support[ed] a finding of

likelihood of confusion with respect to the COOP ORIENTAL mark

divorced from the 2009 logo." Oriental I, 698 F.3d at 18. As for

the similarity of the marks (first factor), evidence of actual

confusion (sixth factor), and Cooperativa's intent (seventh

factor), we recognized that they might apply differently to the

word marks alone. Id. at 18-19. We "conclude[d] that there is at

least evidence in the record that would support" a finding of

likely confusion based on COOP ORIENTAL but left evaluation of the

evidence to the district court in the first instance. Id. at 18.

We instructed the district court to consider whether COOPERATIVA

ORIENTAL "and other potentially infringing usages of the ORIENTAL

mark" created a likelihood of confusion, but did not directly

address ORIENTAL POP or CLUB DE ORIENTALITO. Id. at 19-20.

D. This appeal

Roughly two years after we remanded the case, the

district court ordered a joint status report, and the parties

expressly declined to conduct further discovery or participate in

another evidentiary hearing. Accordingly, the district court

reviewed the same record evidence it first considered in 2010, and

considered whether Cooperativa's word marks created a likelihood

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of confusion. Oriental Fin. Grp., Inc. v. Cooperativa de Ahorro

y Crédito Oriental, No. 3:10-cv-1444 (JAF), 2014 WL 5844166 (D.P.R.

Nov. 12, 2014) ("2014 Order"). With regard to COOP ORIENTAL and

COOPERATIVA ORIENTAL, the district court found that the first,

sixth, and seventh Pignons factors weighed in favor of Cooperativa,

and concluded that with five factors favoring the plaintiffs and

three favoring the defendant, "Plaintiffs have not demonstrated a

likelihood of confusion by Defendant's use of the word marks 'Coop

Oriental' or 'Cooperativa Oriental.'" Id. at *5. It also found

no likelihood of confusion with respect to ORIENTAL POP and CLUB

DE ORIENTALITO. Id. at *6. Accordingly, it determined that the

word marks were non-infringing and found "no basis to broaden the

injunctive relief." Id. at *7.

Oriental Group timely brought this appeal. It argues

that four word marks used by Cooperativa -- COOP ORIENTAL,

COOPERATIVA ORIENTAL, ORIENTAL POP, and CLUB DE ORIENTALITO --

create a likelihood of confusion and therefore infringe its

ORIENTAL mark, and it seeks to enjoin Cooperativa from using them.

Cooperativa argues that they do not create a likelihood of

confusion, and that therefore the district court did not err in

denying Oriental Group's request to enjoin their use.

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 II.

A. Standard of review

To prevail in a trademark infringement claim under the

Lanham Act, "a plaintiff must establish (1) that its mark is

entitled to trademark protection, and (2) that the allegedly

infringing use is likely to cause consumer confusion." Boston

Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 12 (1st Cir.

2008). As the case comes to us, it is established that ORIENTAL

is an arbitrary -- and therefore inherently distinctive -- service

mark, Oriental I, 698 F.3d at 18 n.7, and that Oriental Group is

its senior user, id. at 13. Hence, Oriental Group's mark is

entitled to protection, and we need only address whether the

allegedly infringing marks create a likelihood of confusion.7

The issue before us is thus one of fact. Dorpan, S.L.

v. Hotel Meliá, Inc., 728 F.3d 55, 64 (1st Cir. 2013) ("Likelihood

of confusion is a question of fact."); Boston Duck Tours, 531 F.3d

at 15 (stating that the Pignons factors, used to gauge likelihood

of confusion, are issues of fact). We do not set aside findings

of fact unless they are clearly erroneous. In re Pharm. Indus.

7 Cooperativa belatedly suggests that Oriental Group does not
have rights in ORIENTAL. In its words, "the evidence fails to
show that [Oriental Group] has consistently used the mark
'oriental' alone, which it now wants to appropriate through
judicial fiat." The argument should have been raised on the first
appeal. It is now established that ORIENTAL is a protected mark
of Oriental Group.

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Average Wholesale Price Litig., 582 F.3d 156, 163 (1st Cir. 2009);

Fed. R. Civ. P. 52(a)(6). Accordingly, we may set aside the

district court's findings on the likelihood of confusion or the

Pignons factors only if we are "left with the definite and firm

conviction that a mistake has been committed." Anderson v. City

of Bessemer City, 470 U.S. 564, 573 (1985) (quoting United States

v. U.S. Gypsum Co., 333 U.S. 364, 395 (1948)).8

If we are convinced that there is "only one permissible

interpretation" of the evidence on the Pignons factors or the

likelihood of confusion, we are empowered to substitute our own

finding for that of the district court. Muñiz v. Rovira-Martinó,

453 F.3d 10, 13 (1st Cir. 2006); see also Dorpan, 728 F.3d at 66

(determining on appeal that "'Hotel Meliá' and 'Gran Meliá' are

essentially identical for trademark purposes," and that "[n]o

reasonable factfinder could conclude otherwise"). As we put it in

Boston Duck Tours, where the district court errs but "the

8 As discussed above, we review the district court's order
denying Oriental Group's motion to expand the scope of the
permanent injunction. Though injunctions are "often said to be
reviewed for abuse of discretion, a more complete statement is
that issues of law are reviewed de novo, factual findings for clear
error, and most other issues -- procedure, balancing of factors,
even law application -- with varying degrees of deference depending
upon the circumstances." Diálogo, LLC v. Santiago-Bauzá, 425 F.3d
1, 3 (1st Cir. 2005) (citation omitted). In this case, the
district court's decision not to expand the injunction to encompass
Cooperativa's word marks was based entirely on the factual finding
that the word marks created no likelihood of confusion and were
therefore non-infringing. Our review is limited to that finding,
and therefore we apply the clear error standard.

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underlying facts are largely undisputed," a remand would be "a

waste of judicial resources" and we may draw our own conclusions

on the Pignons factors and the likelihood of confusion. 531 F.3d

at 15.9

B. Legal background

We assume familiarity with trademark law, as discussed

in Oriental I, 698 F.3d at 15-17, and summarize only those aspects

relevant to the theory of infringement argued by Oriental Group in

this appeal. To set the stage, Oriental Group consists of a number

of financial firms with ORIENTAL in their names, and it has rights

in a family of marks, including the following: ORIENTAL GROUP,

ORIENTAL BANK, ORIENTAL MONEY, ORIENTAL INSURANCE, ORIENTAL

MORTGAGES, ORIENTAL ETA,10 KEOGH ORIENTAL,11 ORIENTAL SAVINGS PLUS,

9 In Oriental I, 698 F.3d at 19, we quoted Munoz v. Porto Rico
Ry. Light & Power Co. for the proposition that "this court on
appeal will not undertake to find the facts or to lay down rulings
on specific issues . . . but will remand the case to the court
below for final disposition on the evidence." 83 F.2d 262, 270
(1st Cir. 1936) (omission in original). That was the wisest course
in Munoz, where we heard an appeal from the grant of a preliminary
injunction at the outset of a case in which key facts were
disputed. It was also the best course in Oriental I itself, given
that the district court had entirely omitted to address the issue
of the word marks, and was well-placed to consider the issue in
the first instance. In both cases, the district court had not yet
weighed in on issues of fact. Munoz does not state a general rule
beyond such a case.
10 ORIENTAL ETA refers to an Electronic Transfer Account.
11ORIENTAL KEOGH refers to a type of retirement plan formerly
known as a "Keogh plan."

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ORIENTAL MANAGED INVESTMENTS, ORIENTAL FINANCIAL GROUP, ORIENTAL

FINANCIAL SERVICES, ORIENTALONLINE.COM, ORIENTAL KIDS, and

ORIENTAL AMIGA.12 Id. at 18 ("[T]he ORIENTAL mark is used as a

surname in Oriental's family of marks to identify businesses and

services associated with Oriental [Group.]"); see also J & J Snack

Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 1462 (Fed. Cir.

1991) (defining "family of marks"). In essence, Oriental Group's

theory is that the infringing marks will be seen as members of the

ORIENTAL family of marks, and, as a result, Cooperativa will be

confused for a member of Oriental Group's corporate family. See

15 U.S.C. § 1125(a)(1)(A) (defining trademark infringement to

include "confusion . . . as to the affiliation, connection, or

association of [the defendant] with [the plaintiff], or as to the

origin, sponsorship, or approval of his or her . . . services").

This confusion would arguably allow Cooperativa to free-ride on

the reputation, or imply that it has the financial backing, of the

larger Oriental Group.13

12 At trial, Oriental Group produced evidence of the Puerto
Rico registrations of ORIENTAL MONEY, ORIENTALONLINE.COM, ORIENTAL
KIDS, and ORIENTAL AMIGA. Per Cooperativa's motion in this court,
we take judicial notice of Oriental Group's Puerto Rico
registration of ORIENTAL MANAGED INVESTMENTS. Other marks listed
above have been used in commerce but are not necessarily
registered. Though we have recognized an ORIENTAL family of marks,
this is not necessarily a complete list of its members, and we
offer no opinion on whether all of the listed marks are protected
in their own right.
13Oriental Group illustrates the family-of-marks concept with
other examples from the Puerto Rico banking sector. One of its

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 As stated above, whether the defendant's mark creates a

likelihood of confusion is analyzed using eight non-exclusive

factors, sometimes referred to as the Pignons factors. This

analysis requires a comparison of the allegedly infringing mark

with the plaintiff's protected marks. Courts consider: "(1) the

similarity of the marks; (2) the similarity of the goods; (3) the

relationship between the parties' channels of trade; (4) the

relationship between the parties' advertising; (5) the classes of

prospective purchasers; (6) evidence of actual confusion; (7) the

defendant's intent in adopting its mark; and (8) the strength of

the plaintiff's mark." Oriental I, 698 F.3d at 17 (quoting Beacon

Mut. Ins. Co. v. OneBeacon Ins. Grp., 376 F.3d 8, 15 (1st Cir.

2004)); see also Pignons, 657 F.2d at 487.

Because the district court has already found that the

second, third, fourth, fifth, and eighth factors weigh in favor of

a finding of likelihood of confusion, 2014 Order, 2014 WL 5844166,

at *2; see also Oriental I, 698 F.3d at 18, we address only the

first, sixth, and seventh factors. These are, according to one of

our sister circuits, the three most important factors in

determining the likelihood of confusion. Sorensen v. WD-40 Co.,

792 F.3d 712, 726 (7th Cir. 2015) ("No single factor is

witnesses testified at trial that Citigroup uses a family of marks
to promote Citifinancial and Citimortgage, while Banco Popular
promotes Popular Auto, Popular Mortgage, and Popular Finances.

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dispositive, but we have said that three are especially important:

the similarity of the marks, the intent of the defendant, and

evidence of actual confusion.").

Similarity of the marks in particular can be highly

influential when the products bearing those marks "directly

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

Inc., 269 F.3d 270, 281 (3d Cir. 2001); see also Barton Beebe, An

Empirical Study of the Multifactor Tests for Trademark

Infringement, 94 Cal. L. Rev. 1581, 1600, 1603 (2006) (analyzing

which factors are most predictive of outcomes on likelihood of

confusion in the district courts, and observing that "[t]he

similarity of the marks factor is by far the most influential").

Put differently, similarity of the marks is highly salient where,

as here, the parties sell similar goods, via similar channels of

trade and similar modes of advertising, and compete for similar

consumers. See GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199,

1205 (9th Cir. 2000) (referring to "similarity of the marks,"

"relatedness of the services," and "use of a common marketing

channel" as "the controlling troika" of factors in determining the

likelihood of confusion in the internet context); see also

Attrezzi, LLC v. Maytag Corp., 436 F.3d 32, 39 (1st Cir. 2006)

("[T]he more similar the marks are, the less necessary it is that

the products themselves be very similar to create confusion.").

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 III.

We first address COOP ORIENTAL and COOPERATIVA ORIENTAL.

In analyzing the first, sixth, and seventh Pignons factors, and

the likelihood of confusion, we make no distinction between those

two marks. This approach is consistent with the briefs of the

parties and the opinions of the district court. The two marks are

indisputably similar to one another, and neither party identifies

any relevant difference between them for purposes of comparison

with ORIENTAL.

A. Similarity of the marks

Though we noted in 2012 that the first factor could weigh

in favor of Oriental Group, Oriental I, 698 F.3d at 18, the

district court determined that it did not, 2014 Order, 2014 WL

5844166, at *3. This was the most important factor in the district

court's conclusion that COOP ORIENTAL and COOPERATIVA ORIENTAL are

non-infringing. Its conclusion that these two marks are dissimilar

to ORIENTAL rests upon two premises: that the public in Puerto

Rico understands that the terms COOP and COOPERATIVA have a special

meaning, and that because of that meaning, these words make a

stronger impression than the word ORIENTAL.

1. Significance of COOP and COOPERATIVA

The district court explained that the terms COOP and

COOPERATIVA create "a recognizable difference with important

meaning in Puerto Rico," because Cooperativa "is a cooperative, a

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credit union formed under the laws of Puerto Rico," and not "a

full-service commercial bank"14 like Oriental Group. Id. It relied

on the assertion, unsupported by evidence, that "[t]he term 'Coop'

(or 'Cooperativa') is a common term easily recognizable by the

people of Puerto Rico," noting that cooperatives are required, and

for-profit entities forbidden, to use designators such as "Coop"

in their names. Id. (citing P.R. Laws Ann. tit. 7, § 1363a).15

We agree with Oriental Group that these assertions about

consumer perception constitute a finding of adjudicative fact by

judicial notice, to which Rule of Evidence 201 applies. See Fed.

R. Evid. 201 ("Judicial Notice of Adjudicative Facts"); United

States v. Bello, 194 F.3d 18, 22 (1st Cir. 1999).16

14The district court did not say why it considered Oriental
Group to be "full-service," and Cooperativa not. We note, again,
that the district court found that both institutions provide
checking and savings accounts, certificates of deposit, IRA
accounts, and credit cards. 2010 Order, 750 F. Supp. 2d at 400-
01.
15 The district court correctly notes that Puerto Rico's
Cooperative Savings and Credit Associations Act of 2002 requires
that a credit union include in its name the words "Savings and
Credit Cooperative" ("Cooperativa de Ahorro y Crédito"), or an
abbreviation thereof, such as "Coop." P.R. Laws Ann. tit. 7,
§ 1363a. The Act also provides, with exceptions not relevant here,
that no entity other than a cooperative may "use as a name, trade
name, mark or designation . . . the term 'cooperative' or 'COOP'."
Id. § 1369.
16 Though Oriental Group does not explicitly argue that this
is a matter of adjudicative fact, that is the necessary implication
of its argument that the court violated Rule 201. See Fed. R.
Evid. 201(a) ("This rule governs judicial notice of an adjudicative
fact only, not a legislative fact.").

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 Public perception of an element of a trademark is

typically a matter of adjudicative fact. See Bello, 194 F.3d at

22 (noting that an adjudicative fact "is a fact germane to what

happened in the case," while a legislative fact is "a fact useful

in formulating common law policy or interpreting a statute").

Because public perception of a mark is central to any trademark

dispute, we are particularly concerned that "Rule 201 [be] applied

with some stringency" in finding such facts. United States v.

Hoyts Cinemas Corp., 380 F.3d 558, 570 (1st Cir. 2004).

Rule 201, as applicable here, permits courts to take

judicial notice only of facts "not subject to reasonable dispute"

because they are "generally known within the trial court's

territorial jurisdiction." Fed. R. Evid. 201(b). The district

court effectively determined that it is indisputable not only that

consumers of financial services in Puerto Rico understand that

COOP and COOPERATIVA refer to a credit union, but also that they

understand that, as a credit union, Cooperativa may not be

affiliated with a for-profit bank like Oriental Group.17 It is

hardly beyond dispute that the public has such a clear

understanding of Puerto Rico banking laws. Indeed, as discussed

17As Oriental Group rightly points out in its brief, the key
issue "is not whether consumers know what type of entit[ies]
Cooperativa and Oriental [Group] are. The issue is whether
consumers are likely to believe that Cooperativa or its products
or services are somehow affiliated to Oriental [Group]."

- 20 -
below, the only available evidence points in the other direction

-- some customers actually believed that Cooperativa was

affiliated with Oriental Group. Oriental I, 698 F.3d at 19.

We have found no other examples of a court using judicial

notice to find such facts about the knowledge of the consuming

public. The use of judicial notice in trademark cases is, and

should be, limited to more obvious facts about consumer perception.

See Dippin' Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d

1197, 1204-05 (11th Cir. 2004) (affirming a finding by judicial

notice that the color of ice cream is indicative of its flavor).

More often, such conclusions should be supported by record

evidence. See, e.g., Keebler Co. v. Rovira Biscuit Corp., 624

F.2d 366, 375 (1st Cir. 1980) (affirming a finding that "export

soda" was generic for a type of soda cracker in Puerto Rico,

relying on witness testimony on the historical use of the term);

Enrique Bernat F., S.A. v. Guadalajara, Inc., 210 F.3d 439, 443-

45 (5th Cir. 2000) (holding that "chupa" is generic for lollipops

in Spanish, relying on record evidence of multiple firms using

"chupa" in product names for lollipops).18

18
We also observe that the finding was made without prior
notice to the parties, in violation of Rule 201. See Fed. R. Evid.
201(e) (requiring notice to parties to allow them "to be heard on
the propriety of taking judicial notice and the nature of the fact
to be noticed"); Cooperativa de Ahorro y Credito Aguada v. Kidder,
Peabody & Co., 993 F.2d 269, 273 (1st Cir. 1993).

- 21 -
 2. The most salient word

Further, the district court viewed COOP and COOPERATIVA

as the most salient words in their respective marks. Because those

words have an "important meaning in Puerto Rico," the district

court believed, consumers would distinguish COOP ORIENTAL and

COOPERATIVA ORIENTAL on the one hand from ORIENTAL on the other.

2014 Order, 2014 WL 5844166, at *3; see 4 J. Thomas McCarthy,

McCarthy on Trademarks & Unfair Competition § 23:42, Westlaw

(database updated June 2016) ("It is appropriate in determining

the question of likelihood of confusion to give greater weight to

the important or 'dominant' parts of a composite mark, for it is

that which may make the greatest impression on the ordinary

buyer.").

Such a finding cannot be sustained, however, even on

deferential review. COOP and COOPERATIVA are "merely []

descriptive term[s]" for a credit union. Oriental I, 698 F.3d at

18; cf. Nw. Airlines, Inc. v. NWA Fed. Credit Union, No. Civ. 03-

3625DWFSRN, 2004 WL 1968662, at *7 (D. Minn. Sept. 2, 2004)

(identifying "Federal Credit Union" as a generic term). COOP and

COOPERATIVA are "of minimal significance" to the similarity

analysis "because of [their] highly descriptive nature." Boston

Duck Tours, 531 F.3d at 30; accord Peoples Fed. Sav. Bank v.

People's United Bank, 672 F.3d 1, 13 (1st Cir. 2012). By contrast,

ORIENTAL, in addition to being a strong mark in its own right, is

- 22 -
an inherently distinctive term. "[A] buyer would be more likely

to remember and use" ORIENTAL "as indicating [the] origin of the

goods," and we therefore conclude that "this is the dominant

portion of the mark." McCarthy, supra, § 23:44. There is no

question that the common element of the marks -- ORIENTAL -- weighs

more heavily in the analysis than COOP or COOPERATIVA.

Where two marks share their most salient word, that fact

weighs strongly in favor of similarity. Dorpan, 728 F.3d at 66

("The marks 'Hotel Meliá' and 'Gran Meliá' are essentially

identical for trademark purposes because both marks have the word

'Meliá' as their most salient word."); Beacon Mut., 376 F.3d at 18

(concluding that a reasonable factfinder could conclude that

BEACON MUTUAL INSURANCE COMPANY was similar to ONEBEACON INSURANCE

GROUP in part because they shared BEACON as their "most salient"

word). The "addition of a suggestive or descriptive element" to

the dominant word in a mark "is generally not sufficient to avoid

confusion." Oriental I, 698 F.3d at 18 (quoting 4 J. Thomas

McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th

ed. 2012)); accord Pizzeria Uno Corp. v. Temple, 747 F.2d 1522,

1534-35 (4th Cir. 1984) (holding that, because PIZZERIA UNO and

TACO UNO share a dominant word, their similarity weighs in favor

of a likelihood of confusion).

- 23 -
 3. Family of marks

As further evidence of salience, the shared word

ORIENTAL is the "surname in Oriental's family of marks." Oriental

I, 698 F.3d at 18. The family is "a group of marks having a

recognizable common characteristic, wherein the marks are composed

and used in such a way that the public associates not only the

individual marks, but the common characteristic of the family,

with the trademark owner." J & J Snack Foods, 932 F.2d at 1462.

"[T]he purchasing public recognizes that the common

characteristic," the word ORIENTAL, "is indicative of a common

origin of the goods." Han Beauty, Inc. v. Alberto-Culver Co., 236

F.3d 1333, 1336 (Fed. Cir. 2001). This public association between

ORIENTAL and Oriental Group is further support for the proposition

that ORIENTAL is the most salient, and the most source-identifying,

element in the marks.

The family of marks concept also supports a finding of

similarity in another way. Oriental Group can show similarity of

the marks not only by comparing COOP ORIENTAL and COOPERATIVA

ORIENTAL with the ORIENTAL mark, but also with the entire family

of marks sharing the ORIENTAL root. J & J Snack Foods illustrates

the concept. There, the Federal Circuit agreed with McDonald's

Corporation that it not only owns particular word marks, e.g.,

McMUFFIN, McRIB, and McCHICKEN, but also has rights in the larger

family of marks sharing the same structure and the "Mc" root.

- 24 -
J & J Snack Foods, 932 F.2d at 1462-63. Hence, even if McDonald's

does not sell pretzels and McPRETZEL will not create confusion

with any particular "Mc" product, it is infringing if it is likely

to be confused for a member of the "Mc" family, and thus perceived

as a McDonald's product. Ultimately, because it shared the same

structure and "Mc" root as the other family members, McPRETZEL was

found to be infringing. Id. at 1464; see also McDonald's Corp. v.

McSweet, LLC, 112 U.S.P.Q.2d 1268, 2014 WL 5282256, at *5 (T.T.A.B.

2014) ("If an opposer is found to own a family of marks for a range

of goods, that is an additional factor -- beyond the similarities

between applicant's marks and goods, and any one of opposer's mark

and goods -- weighing in favor of a likelihood of confusion.").

Here, the contested marks clearly share similarities

with the ORIENTAL mark. But they share even greater similarities

with the family of ORIENTAL marks. Consider the list of marks

belonging to the family.19 Every one includes ORIENTAL as the

first word, except for KEOGH ORIENTAL. Most are two-word marks,

though several have three words. Most clearly refer to financial

services, though some, like ORIENTAL KIDS and ORIENTAL AMIGA, do

not. Most are English-language marks. Only one, ORIENTAL AMIGA,

19
As noted in Part II.B, supra, they are: ORIENTAL GROUP,
ORIENTAL BANK, ORIENTAL MONEY, ORIENTAL INSURANCE, ORIENTAL
MORTGAGES, ORIENTAL ETA, KEOGH ORIENTAL, ORIENTAL SAVINGS PLUS,
ORIENTAL MANAGED INVESTMENTS, ORIENTAL FINANCIAL GROUP, ORIENTAL
FINANCIAL SERVICES, ORIENTALONLINE.COM, ORIENTAL KIDS, and
ORIENTAL AMIGA.

- 25 -
is not. These facts do not necessarily mean that only the marks

with every signal characteristic of the family are members of the

family. ORIENTAL BANK and ORIENTAL MONEY are obviously members,

for example, but the trial evidence makes clear that ORIENTAL KIDS,

ORIENTAL AMIGA, and KEOGH ORIENTAL were also presented to the

public as members of the family.

In that context, consumers are likely to recognize the

pattern and conclude that COOP ORIENTAL and COOPERATIVA ORIENTAL

-- two-word marks consisting of ORIENTAL and a descriptive term

for financial services -- are members of the same family. They

are not a perfect match, given that COOPERATIVA can only be read

as a Spanish term. Further, both marks place the adjective

ORIENTAL second, consistent with Spanish grammar. Nonetheless,

the attributes they share with the ORIENTAL family weigh in favor

of a finding of similarity.

4. Sight, sound, and meaning

Though the district court focused on the meaning of the

marks, we also consider the impression they make through sight and

sound. See Boston Duck Tours, 531 F.3d at 24 ("The degree of

similarity between two marks . . . is determined by analyzing their

sight, sound, and meaning."). Adding one word to the ORIENTAL

mark changes the appearance and sound of the mark somewhat, but

not enough to make a decisive difference here. See Den-Mat Corp.

v. Block Drug Co., 895 F.2d 1421, at *1 (Fed. Cir. 1990) (Table)

- 26 -
("There is an obvious visual difference between a two-word and

one-word mark, but here the difference is not great enough to

overcome the similarities . . . ."). Indeed, though the fact that

COOP ORIENTAL and COOPERATIVA ORIENTAL are two-word marks

differentiates them from ORIENTAL, it makes them more similar to

the two-word marks in the ORIENTAL family.

Beyond the addition of a second word, Cooperativa claims

another difference in the sound of the marks -- that the ORIENTAL

mark is pronounced in English, while COOPERATIVA ORIENTAL and COOP

ORIENTAL are pronounced in Spanish. While the ORIENTAL element of

the marks looks the same, it argues, it sounds different in the

context of COOP or COOPERATIVA. The argument is consistent with

testimony from an Oriental Group marketing executive that ORIENTAL

is pronounced in English and COOP ORIENTAL in Spanish. Similarly,

"Cooperativa" is not an English word, and consumers are likely to

use a Spanish pronunciation of COOPERATIVA ORIENTAL. The

differences in pronunciation are limited, however –- while English

and Spanish pronunciations of "oriental" differ in the placement

of emphasis and pronunciation of the final vowel, they are

otherwise essentially the same. We conclude that this possible

difference in sound does not outweigh the strong similarities

between these marks.

- 27 -
 5. Conclusion on similarity

The conclusion is inescapable that ORIENTAL, COOP

ORIENTAL, and COOPERATIVA ORIENTAL are similar. The first Pignons

factor weighs in favor of Oriental Group. We are left with the

firm conviction that the district court erred in finding to the

contrary.

B. Evidence of actual confusion

The district court found that the lack of evidence of

actual confusion "weighs strongly in favor" of Cooperativa. 2014

Order, 2014 WL 5844166, at *4. In the district court's view,

"[t]he evidence before the court demonstrated a confusion between

the Defendant's 2009 trade dress and the Plaintiffs' trade dress

because of their shared color schemes and word placement emphasis.

Plaintiffs presented no evidence of actual confusion prior to the

Defendant's introduction of the 2009 trade dress despite

Defendant's use of 'Coop Oriental' for nearly fifteen years." Id.

Because Oriental Group offered evidence only of incidents taking

place in 2010, the district court was "convinced that absent the

infringing use of the 2009 trade dress, the instances of actual

confusion post-2009 would likely not have occurred." Id.

"Evidence of actual confusion is not invariably

necessary to prove likelihood of confusion; on the other hand,

absent evidence of actual confusion, when the marks have been in

the same market, side by side, for a substantial period of time,

- 28 -
there is a strong presumption that there is little likelihood of

confusion." Pignons, 657 F.2d at 490 (internal quotation marks

omitted). We have said that a lack of evidence of actual confusion

weighs against a finding of likely confusion when competing marks

have competed in the same market for six years, Aktiebolaget

Electrolux v. Armatron Int'l, Inc., 999 F.2d 1, 4 (1st Cir. 1993),

four years, Pignons, 657 F.2d at 490, or as little as three and a

half years, Keebler, 624 F.2d at 377. With these precedents in

mind, the district court concluded that because roughly 15 years

passed between Cooperativa's adoption of the COOP ORIENTAL word

mark in 1995 and the incidents of actual confusion evidenced at

trial, the absence of evidence suggested a lack of actual –- or

likely –- confusion. 2014 Order, 2014 WL 5844166, at *4.

This analysis misses two essential considerations.

First, the district court did not address the nature of the post-

2009 incidents evidenced at trial. They indicated that, around

the same time Cooperativa increased its advertising and began

competing with Oriental Group in San Juan and other areas, existing

customers of both institutions became confused and believed the

two were affiliated. In several instances, this confusion was

apparently driven by the word marks alone. As we summarized the

trial testimony in Oriental I:

A supervisor at one of Oriental's branches
testified that several customers had attempted to

- 29 -
 cash checks bearing the name COOPERATIVA ORIENTAL
at the Oriental branch, apparently associating that
name with Oriental's business. The supervisor also
testified that customers with Cooperativa accounts
had attempted to withdraw or deposit money at the
Oriental branch. A customer relations officer at
a different Oriental branch also testified that
customers had called an Oriental branch attempting
to verify their accounts, which were actually held
by Cooperativa. These customers, according to the
employee's testimony, relied on the similarity of
Oriental's marks and the COOP ORIENTAL mark in
assuming that Cooperativa was a subsidiary of
Oriental. Oriental also presented several other
examples of actual consumer confusion, including
telephone calls by Cooperativa customers to
Oriental branches and inquiries by Oriental
customers about branches that actually were a part
of Cooperativa. Each of these instances of actual
confusion appeared to be attributable to the use of
the name COOP ORIENTAL without the logo.

698 F.3d at 19 (emphasis added). The district court concluded too

quickly that these incidents, because they took place after the

adoption of Cooperativa's new logo and trade dress, were caused by

the new logo and trade dress.

Second, the district court treated 1995 to roughly 2010

as the relevant time frame, without analyzing whether, during that

time, the marks were actually "in the same market, side by side."

Pignons, 657 F.2d at 490. Yet for the great majority of that time,

the marks did not co-exist in any geographic market outside of

Humacao in eastern Puerto Rico. There is no dispute that, for

years after adopting the COOP ORIENTAL mark, Cooperativa did not

compete with Oriental Group beyond operating a small number of

- 30 -
branches in that relatively small municipality.20 Oriental I, 698

F.3d at 22 ("Cooperativa operated only three branches in the mid

to late 1990s, and these branches were located almost exclusively

within Humacao. At that time, Cooperativa had no presence in San

Juan. . . . It was not until 2008 that Cooperativa began to expand

its business into San Juan, acquiring three San Juan branches by

2010."). Further, Cooperativa's minimal advertising until roughly

2009 suggests that its COOP ORIENTAL mark appeared alongside

Oriental Group's marks little, if at all. See id. at 22-24.

Hence, the absence of evidence of confusion before 2010

tells us little, given the relative obscurity of COOP ORIENTAL and

COOPERATIVA ORIENTAL at the time. We conclude that the district

court clearly erred and that, given the trial evidence of actual

confusion apparently attributable to the word mark alone in the

2009 to 2010 timeframe, id. at 19, the sixth Pignons factor weighs

in favor of Oriental Group.

C. Defendant's intent

Though the district court found that Cooperativa "knew

of and intended to benefit from [Oriental Group's] considerable

advertising efforts" when it adopted its orange trade dress and

logo, 2010 Injunction Order, 750 F. Supp. 2d at 403, the same

20The U.S. Census Bureau estimates the population of Humacao
at about 55,000. U.S. Census Bureau, U.S. Dep't of Commerce,
Annual Estimates of the Resident Population: April 1, 2010 to July
1, 2015 (2015).

- 31 -
inference does not necessarily apply with respect to the word marks

alone. Cooperativa adopted service marks that are shortened

versions of its longstanding legal name. Common sense suggests

that the pithy COOP ORIENTAL makes for a better trade name than

"Cooperativa de Ahorro y Crédito Oriental" even absent any

similarity to Oriental Group's marks. Moreover, Cooperativa

adopted the mark in the 1990s, long before it entered into more

direct competition with Oriental Group. In Oriental I, we said

that an inference of bad faith "might . . . be drawn" based on

"Cooperativa's use of the COOP ORIENTAL mark standing alone." 698

F.3d at 19 (emphasis added). Since that time, however, no new

evidence has been presented, and the district court has come to

the opposite conclusion. See 2014 Order, 2014 WL 5844166, at *5.

The district court did not clearly err in finding that the seventh

Pignons factor weighs in Cooperativa's favor.

D. Conclusion on likelihood of confusion

The Pignons factors are not a "mechanical formula."

Attrezzi, 436 F.3d at 39. Oriental Group does not prevail simply

because seven of the eight factors weigh in its favor. It will

surely be the rare case, however, where the Pignons analysis is so

lopsided and yet no likelihood of confusion is found. This is not

that rare case. Oriental Group and Cooperativa offer similar

services to similar customers through similar channels of trade

and advertise in similar media. Cooperativa identifies its

- 32 -
services with a word mark similar to a strong mark belonging to

Oriental Group. Indeed, the marks share their most salient word,

and the only difference between them is the addition of the generic

term COOP or COOPERATIVA. Cooperativa's marks also share traits

in common with Oriental Group's family of marks. It is not

surprising that these marks have caused confusion in the past.

Under these circumstances, consumer confusion is also likely in

the future. We are left with the firm conviction that the district

court erred in finding no such likelihood. We hold that COOP

ORIENTAL and COOPERATIVA ORIENTAL infringe Oriental Group's rights

in the ORIENTAL mark.

IV.

Oriental Group also claims that the district court erred

in finding that ORIENTAL POP and CLUB DE ORIENTALITO were non-

infringing.21 This infringement claim differs from the COOP

ORIENTAL and COOPERATIVA ORIENTAL claims. ORIENTAL POP and CLUB

DE ORIENTALITO are product marks designating particular financial

services, while COOP ORIENTAL and COOPERATIVA ORIENTAL are house

marks referring to the institution providing those services.22

21We limit our review to ORIENTAL POP and CLUB DE ORIENTALITO,
the specific marks disputed in Oriental Group's opening brief and
Cooperativa's brief. Though Cooperativa's use of CUENTA
ORIENTALITO is documented in the record, Oriental Group did not
complain about the CUENTA ORIENTALITO mark until its reply brief
before this court.
22A "house mark" is a mark that appears in conjunction with
different "product marks," indicating that the products originate

- 33 -
There are no storefronts emblazoned with ORIENTAL POP or CLUB DE

ORIENTALITO –- they are the names of savings accounts intended for

children and teens, respectively.

These marks were also considered at a different point in

time than the others: at the post-trial final disposition hearing

after the 2010 injunction had gone into effect. Oriental Group

argued that Cooperativa's website violated the injunction insofar

as it referenced ORIENTAL POP and what was then CLUB ORIENTALITO.

The district court viewed the live website during the hearing and

found the use of those marks non-infringing, noting that the top

of the webpage included the full name Cooperativa Ahorro y Crédito

Oriental, and a subheading, "Ahorros" (literally, "Savings"),

which indicated that ORIENTAL POP and CLUB ORIENTALITO were types

of savings accounts. The website images as they appeared at the

hearing also clearly showed a distinctive logo reminiscent of

interlocking hands, and a green color scheme distinct from the

infringing orange trade dress Cooperativa had used earlier.

The district court revisited ORIENTAL POP and CLUB DE

ORIENTALITO (by then changed from CLUB ORIENTALITO) following

remand after Oriental I, beginning with the Pignons factors. 2014

Order, 2014 WL 5844166, at *5-6. Just as with COOP ORIENTAL and

from the same "house" or company. McCarthy, supra, § 23:43.
Examples include INTEL PENTIUM, FORD MUSTANG, and KELLOGG'S FROOT
LOOPS. Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1374
(Fed. Cir. 2002).

- 34 -
COOPERATIVA ORIENTAL, it considered only the first, sixth, and

seventh factors, and did not make findings as to the second, third,

fourth, fifth, and eighth. Instead, it applied the same findings

on those factors it had originally made with regard to

Cooperativa's orange logo and trade dress. See 2010 Injunction

Order, 750 F. Supp. 2d at 403-04. Neither party objected to that

approach. Hence, for purposes of this appeal, we assume that all

five of those factors favor Oriental Group.23

The district court again concluded that, even though

most of the factors weighed in favor of Oriental Group, there was

no likelihood of confusion, and thus no infringement, with respect

to either ORIENTAL POP or CLUB DE ORIENTALITO. The court in effect

adopted its earlier conclusion that the use of these marks in the

context of Cooperativa's website eliminated any risk of confusion.

In reviewing the court's determination, we begin with the Pignons

factors it addressed.

A. Similarity of the marks

As the district court recognized, the way the marks

appeared on Cooperativa's public website is central to the

23 In Oriental I, we said that the findings on these five
factors also applied to the COOP ORIENTAL mark and by implication
the COOPERATIVA ORIENTAL mark, but did not explicitly address their
application to ORIENTAL POP and CLUB DE ORIENTALITO. 698 F.3d at
18. We express no view on whether these findings will need to be
reassessed if Oriental Group pursues additional remedies against
CUENTA ORIENTALITO or other contested marks on remand.

- 35 -
infringement analysis.24 More particularly, context governs the

similarity analysis. "[I]n determining the similarity of marks in

an infringement action, a court must examine the visual appearance

of each mark in the context of its use." Jim Beam Brands Co. v.

Beamish & Crawford Ltd., 937 F.2d 729, 735 (2d Cir. 1991). In

Pignons, for example, the plaintiff's and defendant's allegedly

similar product marks were ALPA and ALPHA respectively, which "[i]n

spelling and pronunciation, . . . differ[ed] . . . only by virtue

of the letter 'h'." 657 F.2d at 487. But defendant Polaroid's

product mark "always appear[ed] in close proximity with an equally

prominent and uniquely identifying designation, such as 'Polaroid

SX-70 Land Camera Alpha 1[.]'" Id. Further, Polaroid packaged

its cameras in white, black or silver with a trademarked geometric

design, while plaintiff Pignons packaged its cameras in red and

white boxes bearing the word "Swiss" or "Switzerland," a white

cross on a red background, and a logo of a mountain. Id. In that

context, we observed that "otherwise similar marks are not likely

24However, although the district court relied on context in
its ultimate conclusion on infringement, it incorrectly failed to
consider context in addressing the first Pignons factor. It found
that both marks are similar to ORIENTAL because "the terms 'Club
de Orientalito' and 'Oriental POP,' standing alone, could easily
be confused as a product of Oriental." 2014 Order, 2014 WL
5844166, at *5 (emphasis added). As explained infra, rather than
considering context only as part of the overall likelihood-of-
confusion assessment, the court should have looked at how the marks
appeared to consumers when addressing the similarity factor. See
Pignons, 657 F.2d at 487.

- 36 -
to be confused" where they are consistently "used in conjunction

with the clearly displayed name and/or logo of the manufacturer."

Id.; see also Astra Pharm. Prods., Inc. v. Beckman Instruments,

Inc., 718 F.2d 1201, 1205 (1st Cir. 1983).

To a significant extent, the graphic arrangement of

Cooperativa's website, with the credit union's full name used as

a house mark, the interlocking hands logo, and the green color

scheme, serves the same function as Polaroid's use of its house

mark, logo, and distinctive packaging. With respect to ORIENTAL

POP, however, that context is not enough to distance the mark from

Oriental Group and the ORIENTAL family of marks such that the

similarity factor would weigh in favor of Cooperativa. Of

particular importance is that ORIENTAL POP -- a two-word mark with

ORIENTAL as the first word -- closely fits the pattern of the

ORIENTAL family of marks. Marks such as ORIENTAL AMIGA and

ORIENTAL KIDS closely resemble ORIENTAL POP in their structure and

use of the ORIENTAL root. See J & J Snack Foods, 932 F.2d at 1463-

64.

Further, the association between ORIENTAL POP and

Oriental Group's family of marks remains strong even in the context

of the website. ORIENTAL POP appeared on the website in large,

bolded text, and plainly identified a financial product. When

ORIENTAL is used in this way -- as the first word of a two-word

mark that represents a financial product -- it inevitably evokes

- 37 -
an association with Oriental Group's family of financial products.

The fact that ORIENTAL POP appears in conjunction with the name

and trade dress of a lesser-known financial institution is not

enough to dispel the similarity with the strong ORIENTAL mark and

its family.

With respect to CLUB DE ORIENTALITO, however, that

context serves to further distance the mark from Oriental Group's

family of marks. Unlike ORIENTAL POP, CLUB DE ORIENTALITO departs

from the ORIENTAL family's readily identifiable format of an

English-language mark containing a generic term for financial

services alongside the word ORIENTAL. Indeed, none of Oriental

Group's marks uses a variant like ORIENTALITO and, hence, a

consumer viewing the CLUB DE ORIENTALITO mark is less likely to

infer a link between it and the ORIENTAL family. In addition to

the different appearance and sound, ORIENTALITO has a somewhat

different meaning from ORIENTAL. "[T]he Spanish diminutive suffix

'ito' . . . is typically used to indicate smaller size. . . .

[A]dding the ending -ito to [a] word implies small size or

cuteness." In re Allen Batres Miranda, No. 77135681, 2009 WL

625571, at *1-2 (T.T.A.B. Feb. 11, 2009). The association between

CLUB DE ORIENTALITO and Oriental Group is thus considerably more

attenuated than for the other challenged marks we have examined.

The website context, featuring a prominent display of

Cooperativa's full name, logo and trade dress, reinforces the

- 38 -
distinction between this mark and Oriental Group. Hence, at least

when used in this way, the differences from the ORIENTAL family

are enough to assign the similarity factor to Cooperativa for CLUB

DE ORIENTALITO.

B. Actual confusion

The district court reasoned that because Oriental Group

had shown no evidence of actual confusion caused by ORIENTAL POP

or CLUB DE ORIENTALITO, the sixth Pignons factor weighed in favor

of Cooperativa. 2014 Order, 2014 WL 5844166, at *6. We assume

arguendo that no relevant evidence was shown.25 But, as discussed

above, lack of evidence of actual confusion does not weigh in

Cooperativa's favor unless Cooperativa's mark existed "in the same

market, side by side, for a substantial period of time" with

ORIENTAL. Pignons, 657 F.2d at 490. Here, available evidence

suggests that ORIENTAL POP and CLUB DE ORIENTALITO were not used

outside Humacao before Cooperativa's geographic expansion in 2008-

2010, and that they enjoyed far less advertising and public

exposure than COOP ORIENTAL and COOPERATIVA ORIENTAL did. A lack

25 Given that Oriental Group first complained about ORIENTAL
POP and CLUB DE ORIENTALITO after trial, there was little trial
evidence specifically addressed to those marks. In the district
court's words, "there [was] only a single time during the trial
when Plaintiffs mention[ed] 'Club de Orientalito' and 'Oriental
POP,' and that was during the testimony of its head of advertising.
The individual speculated that a consumer could get confused by
the Defendant's use of the terms." 2014 Order, 2014 WL 5844166,
at *6.

- 39 -
of actual confusion means little unless the purportedly confusing

marks are shown to the public over a sufficient period of time.

Because that is not the case here, we conclude that the district

court clearly erred, and that the sixth Pignons factor is neutral.26

C. Defendant's intent

The district court also found that the seventh factor,

Cooperativa's intent in adopting the marks, favored Cooperativa.

We agree with the district court that the absence of evidence as

to Cooperativa's intent requires this result. 2014 Order, 2014 WL

5844166, at *6.

D. Conclusion on likelihood of confusion

Ultimately, the district court found that six of the

Pignons factors favored Oriental Group and two favored

Cooperativa, but that, nonetheless, ORIENTAL POP and CLUB DE

ORIENTALITO created no likelihood of confusion.

26 The district court's suggestion that Peoples is to the
contrary is misplaced. See 2014 Order, 2014 WL 5844166, at *6
(citing Peoples, 672 F.3d at 10-11). The facts of Peoples are
analogous insofar as there was at best limited evidence of actual
confusion, and the plaintiff's and defendant's marks had only been
side by side in the market for a short time. But in Peoples,
rather than find that the lack of evidence indicated that the sixth
Pignons factor favored the defendant, we affirmed the district
court's conclusion that "the scarcity of such evidence [was] not
in itself dispositive of plaintiff's claim." Peoples, 672 F.3d at
11 (quoting Peoples Fed. Sav. Bank v. People's United Bank, 750 F.
Supp. 2d 217, 226 (D. Mass. 2010)). In essence, in Peoples as
here, we said that where there is no evidence of actual confusion
but the marks have only been in the same market for a brief time,
the sixth factor is neutral.

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 We affirm the district court's conclusion on CLUB DE

ORIENTALITO. For that mark, five Pignons factors favor Oriental

Group, two favor Cooperativa, and one is neutral. In this case,

the lack of similarity between the marks makes the difference.

The word mark is sufficiently distinct from ORIENTAL and its family

of marks that, at least when used in conjunction with a prominent

display of Cooperativa's distinctive house mark and trade dress,

we find no clear error in the district court's conclusion that it

is unlikely to cause consumer confusion. It is Oriental Group's

burden to show a likelihood of confusion. On this record, that

burden has not been met.

However, we find clear error in the district court's

conclusion as to ORIENTAL POP. The Pignons analysis is even more

lopsided than the district court's analysis suggested: six factors

favor Oriental Group, with one for Cooperativa and one neutral.

But the numbers alone do not tell the story -- here again,

similarity of the marks is the pivotal factor. Cooperativa

competes with Oriental Group to sign up similar customers for

similar bank accounts using similar modes of advertising in the

same geographic areas of Puerto Rico. In that competition, it

employs the product name ORIENTAL POP, a mark that naturally fits

into the ORIENTAL family of marks, and will likely be associated

with Oriental Group's family of financial products. Because of

its similarity to ORIENTAL and its family, consumers are likely to

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mistake ORIENTAL POP for a species within the same genus as

ORIENTAL MONEY, ORIENTAL KIDS, and ORIENTAL AMIGA. As a result,

consumers are likely to believe that ORIENTAL POP is somehow

affiliated with Oriental Group. The likelihood of such confusion

requires a finding that ORIENTAL POP infringes on the ORIENTAL

mark.

V.

The district clearly erred in finding that COOP

ORIENTAL, COOPERATIVA ORIENTAL, and ORIENTAL POP create no

likelihood of confusion with the ORIENTAL mark. To the contrary,

we hold that those marks infringe upon Oriental Group's trademark

rights. Accordingly, we vacate the district court's judgment as

it applies to those marks and remand for reconsideration of whether

to expand the scope of the injunction to address the use of those

marks. We affirm the portion of the judgment addressing CLUB DE

ORIENTALITO.

Injunctive relief does not flow automatically from a

finding of trademark infringement. See eBay, 547 U.S. at 391;

Voice of the Arab World, 645 F.3d at 32-35. The decision to grant

or deny expanded injunctive relief rests in the discretion of the

district court, to be exercised consistent with "well-established

principles of equity." eBay, 547 U.S. at 391. On remand, the

district court must reassess equitable factors such as the nature

of the harm flowing from the infringement, the availability of

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alternative remedies, and any hardship an injunction might cause

to Cooperativa or to the public. See id. It must do so in light

of present circumstances -- several years have passed since new

evidence was presented on this matter -- and the understanding

that it is now the law of the case that the COOP ORIENTAL,

COOPERATIVA ORIENTAL, and ORIENTAL POP marks do infringe on

Oriental Group's rights in the ORIENTAL mark.

The judgment below is affirmed-in-part, reversed-in-

part, and remanded. The parties are responsible for their own

costs.

So ordered.

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