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

United States Court of Appeals,

Eleventh Circuit.

No. 95-8751.

SUNAMERICA CORPORATION, a Delaware Corporation, f/k/a Sun Life
Group of America, Sun Life Insurance Company of America, a Maryland
Corporation, Plaintiffs-Counterdefendants-Appellants,

v.

SUN LIFE ASSURANCE COMPANY OF CANADA, a Canadian Corporation, Sun
Life Assurance Company of Canada (U.S.), a Delaware Corporation,
Defendants-Counterclaimants-Appellees.

March 19, 1996.

Appeal from the United States District Court for the Northern
District of Georgia. (No. 1:89-CV-1315), Jack T. Camp, Judge.

Before DUBINA and CARNES, Circuit Judges, and MILLS*, District
Judge.

CARNES, Circuit Judge:

This trademark case concerns a dispute between two insurance

companies over the right to use the mark SUN LIFE. The plaintiffs

are SunAmerica Corporation and its wholly-owned subsidiary, Sun

Life Insurance Company of America ("Sun Life of America")

(collectively, "SunAmerica"). The defendants are Sun Life

Assurance Company of Canada and its subsidiary, Sun Life Assurance

Company of Canada (U.S.) (collectively, "Sun Life of Canada").

SunAmerica appeals from a judgment entered in favor of Sun Life of

Canada on a counterclaim it brought against SunAmerica. The

district court's judgment permanently enjoined SunAmerica from

further use of any SUN LIFE mark.

Although Sun Life of Canada is the senior user of the SUN LIFE

*
Honorable Richard Mills, U.S. District Judge for the
Central District of Illinois, sitting by designation.
mark, it acquiesced in SunAmerica's use of the mark. That

acquiescence would estop Sun Life of Canada from asserting its

counterclaim, were it not for the existence of "inevitable

confusion" in the marketplace. The existence of inevitable

confusion operates to revive a senior user's claim that is

otherwise estopped by acquiescence. However, we hold in this

opinion that where such revival occurs, the district court must

consider the feasibility and efficacy of relief other than a

complete injunction against the junior user. Because the district

court's order is ambiguous as to whether it adequately considered

the feasibility and efficacy of alternative forms of relief, we

remand the case for further proceedings.
I. BACKGROUND FACTS AND PROCEDURAL HISTORY

In June 1989, SunAmerica brought federal unfair competition

and trademark infringement claims, and related state law claims,

against Sun Life of Canada, alleging that Sun Life of Canada's use

of the marks SUN LIFE (U.S.) and SUN LIFE, without any reference to

the geographic modifier "of Canada," was causing unacceptable

marketplace confusion. In response, Sun Life of Canada

counterclaimed against SunAmerica for trademark infringement,

seeking to enjoin SunAmerica from all use of the SUN LIFE mark.

Both parties moved for summary judgment.

The district court found confusing similarity between the

parties' marks. In particular, the district court found that the

mark SUN LIFE (U.S.) was likely to be confused with the mark SUN

LIFE OF AMERICA. Accordingly, the district court permanently

enjoined Sun Life of Canada from using the mark SUN LIFE (U.S.)
without some form of the geographic modifier "of Canada." Sun Life

of Canada appealed.

On appeal, in a brief per curiam opinion, this Court held that

the district court had erred by entering a permanent injunction

without first resolving Sun Life of Canada's counterclaim. We

vacated the permanent injunction issued by the district court and

remanded the case for consideration of that counterclaim.

SunAmerica Corp. v. Sun Life Assurance Co., 24 U.S.P.Q.2d 1505,

1506, 974 F.2d 1348 (11th Cir.1992) (hereinafter "SunAmerica I ").

In a concurring opinion, Judge Birch provided not only a thorough

summary of the facts and procedural history of the case through

that stage, but also a detailed analytical framework to guide the

parties and the district court on remand. Id. at 1506-13, 974 F.2d

1348 (Birch, J., concurring). We adopt Judge Birch's concurring

opinion in its entirety as our statement of the facts and

procedural history up through the time of the SunAmerica I

decision. We also adopt as the law of the circuit his opinion's

pronouncements about the relevant law. Because Judge Birch's

concurring opinion in SunAmerica I has not previously been

published in the Federal Reporter system, we attach that opinion

and the per curiam opinion it accompanied, as an appendix to this

opinion, infra pp. ---- - ----.

On remand after SunAmerica I, the district court found that

Sun Life of Canada had enforceable rights in its SUN LIFE marks and

that a likelihood of confusion existed between the names SUN LIFE

OF AMERICA and SUN LIFE OF CANADA. The district court also found,

however, that Sun Life of Canada had acquiesced to SunAmerica's use
of its allegedly infringing marks. Such acquiescence operates to

estop a senior user's trademark claim against a junior user's use

of the mark unless there is inevitable confusion between the marks.

Coach House Restaurant v. Coach and Six Restaurants, 934 F.2d 1551,

1564 (11th Cir.1991). Applying that standard to the facts, the

district court found that inevitable confusion existed between the

parties' names and that this inevitable confusion revived Sun Life

of Canada's trademark rights. Accordingly, the district court

permanently enjoined SunAmerica from any further use of the SUN

LIFE mark.1

SunAmerica filed motions to alter or amend the judgment, to

stay the judgment pending appeal, and for a new trial. The

district court denied these motions, and SunAmerica filed with this

Court an Emergency Motion to Stay Injunction Pending Appeal and to

Expedite Appeal. We denied the motion to stay, but granted the

motion to expedite the appeal. While the appeal was pending,

SunAmerica complied with the injunction by changing the name of Sun

Life of America to "SunAmerica Life Insurance Company."
II. WHETHER THIS APPEAL SHOULD BE DISMISSED AS MOOT

A. THE ESTOPPEL ISSUE

In support of its motion to stay the injunction pending

appeal, SunAmerica repeatedly represented to the district court

that if it complied with the district court's injunction by

changing its name from Sun Life Insurance Company of America, it

would be impossible, from both a commercial and regulatory

1
The district court also enjoined SunAmerica from further
use of SUN FINANCIAL SERVICES, but SunAmerica does not appeal
that aspect of the injunction.
standpoint, to later revert back to that name if SunAmerica

prevailed on appeal. For example, SunAmerica's senior

vice-president and general counsel stated in an affidavit that once

a name change had been implemented, the change would be

"essentially irreversible" and that reverting back to the prior

name would be "commercially impossible." SunAmerica's counsel made

numerous representations to the district court to the effect that

"[e]ven if Sun Life of America were to prevail on appeal, it could

not revert, either as a legal or practical matter, to its Sun Life

of America name," and that "to deny a stay is to effectively deny

any appellate relief." The district court rejected this argument

and denied SunAmerica's motion for a stay, finding that a name

change could be reversed if SunAmerica prevailed on appeal.

Echoing its refrain from the district court, SunAmerica made

repeated representations to this Court, in connection with its

emergency motion to stay, that compliance with the district court's

injunction would "effectively moot and deny appellate rights and

relief." SunAmerica made no fewer than eight such representations

in its Emergency Motion to Stay Injunction Pending Appeal and to

Expedite Appeal, including, for example, the following statements:

(1) [I]mplementing a name change is irreversible and would
effectively moot Appellants' right of appeal.

(2) [O]nce [SunAmerica] begins to implement a name change, as a
matter of commercial practicality it cannot reverse it. It
will have lost ... its right to an appeal.

(3) [U]nless its initiation of the [compliance] process is stayed
pending appeal, ... Sun Life of America's right of appeal will
be a nullity.

A panel of this Court nonetheless denied SunAmerica's motion for a

stay pending appeal, and SunAmerica has complied with the
injunction by changing its name.

The vigor with which SunAmerica argued that the name change

would moot this appeal is matched only by the vigor with which it

now argues, having been forced to change its name, that the appeal

is not moot after all. The same corporation and attorneys who

unequivocally represented to the district court and this Court that

a name change would be irreversible "as a matter of commercial

practicality," now just as unequivocally represent to this Court

that the practical effects of the name change are, in fact,

reversible. Such a sea change in factual representations prompted

us to ask SunAmerica's counsel at oral argument which of their

statements were false: the ones they made while seeking a stay, or

the ones they made after the stay was denied.

The essence of counsel's response was that the representations

were not really inconsistent because, even if it were commercially

impractical for SunAmerica to "officially" revert back to its

former name, relief from the injunction would permit SunAmerica to

make other beneficial use of the SUN LIFE mark, such as using the

mark in connection with a subsidiary created to market insurance

products that the marketplace already associated with the Sun Life

of America name. Therefore, reasoned counsel, the name change did

not moot this appeal. Of course, SunAmerica was careful to omit

any mention of the possibility of subsidiary use of the mark when

it was insisting that a name change would moot this appeal.

SunAmerica's representations to the district court and this Court

that the name change would be irreversible and as a result its

appeal would be moot necessarily carried with them a representation
that, absent a stay, no relief would be available to SunAmerica if

it prevailed on appeal. Or, as SunAmerica put it, unless the name

change was stayed its "right of appeal [would] be a nullity."

Either an appeal is mooted by a particular event or it is not.

Whether a particular event moots an appeal does not change

depending upon whether a party wishes that event to occur. Here,

SunAmerica made a clear factual representation, backed up with

affidavits, that a name change would moot this case, but now

unabashedly makes the opposite factual representation. Attorneys

should not, in the guise of "effective advocacy," make, or

participate in making, factual representations to courts that are

not true. If a party represents to the court that the opposite of

what he previously has represented about a factual matter is true,

he owes the court a satisfactory explanation for the contradictory

representations. This is especially the case where, as here, the

factual matters being represented (or misrepresented) are

particularly within the knowledge of the parties whose attorneys

are making the representations.

The type of tactics SunAmerica's counsel have employed in

this case invite us to fashion a doctrine that would estop

SunAmerica from asserting at this stage of the appeal the opposite

of what it had asserted earlier. In other words, we could hold

that because SunAmerica repeatedly represented to the district

court and to this Court that a name change would be irreversible

and would moot this appeal, it is now estopped from denying that

fact. We decline to dispose of this case on that ground for two

reasons. First, we have not previously put parties and their
counsel on notice of such a doctrine, at least not in the context

of mootness questions. We do so now. All future parties and their

counsel are on notice that if they make factual representations in

the district court or in this Court that denial of a stay will moot

the appeal, they may be estopped from arguing after the stay is

denied that the appeal is not moot.2 The second reason that we

will not hold that SunAmerica is equitably estopped from denying

that the name change is irreversible and the case is moot is that

the district court expressly found to the contrary. In denying the

motion for stay pending appeal, the district court rejected

SunAmerica's representations and found as a fact that a name change

would not be irreversible. In other words, the district court was

not fooled. The outcome of the estoppel analysis could well be

different in a future case where there is no express factfinding

2
SunAmerica argued to this Court that if we were to hold
that this case is moot, we would be under a duty to vacate the
judgment and injunctive orders of the district court under the
principles of United States v. Munsingwear, Inc., 340 U.S. 36,
39, 71 S.Ct. 104, 106, 95 L.Ed. 36 (1950) (noting the
"established practice" of vacating judgments in moot cases).
Because we decline to dismiss SunAmerica's appeal as moot on
equitable principles, it is unnecessary for us to resolve
definitively this question. We do note, however, that vacatur is
an equitable remedy. E.g., U.S. Bancorp Mortgage Co. v. Bonner
Mall Partnership, --- U.S. ----, ---- - ----, 115 S.Ct. 386, 390-
92, 130 L.Ed.2d 233 (1994). Were we to enforce an equitable
doctrine of mootness by estoppel, we would apply equitable
principles in determining whether to vacate the district court's
judgment in order to "dispose[ ] of the moot case[ ] in the
manner "most consonant to justice.' " Id. at ----, 115 S.Ct. at
391 (quoting United States v. Hamburg-Amerikanische Packetfahrt-
Actien Gesellschaft, 239 U.S. 466, 477, 36 S.Ct. 212, 216, 60
L.Ed. 387 (1916) (quoting South Spring Hill Gold Mining Co. v.
Amador Medean Gold Mining Co., 145 U.S. 300, 302, 12 S.Ct. 921,
921, 36 L.Ed. 712 (1892))). We could hardly be expected to grant
the equitable remedy of vacatur where doing so would have the
inequitable effect of rewarding a party for making inconsistent
representations to this Court.
contrary to the representation in question.

B. TRADITIONAL MOOTNESS ANALYSIS

Having decided not to bar SunAmerica's present position on

the mootness issue, we must now decide, using traditional doctrine,

whether the case became moot when SunAmerica complied with the

district court's injunction by changing the name of Sun Life

Insurance Company of America. We conclude that it did not, because

this Court could grant meaningful relief to SunAmerica if it were

to prevail on this appeal.

Regardless of whether it is, in fact, "commercially

impossible" for SunAmerica formally to reverse the name change

process, relief from the district court's injunction would permit

other commercial utilization of the SUN LIFE mark, such as using

the mark in connection with a subsidiary created to market

insurance products that the marketplace already associates with the

Sun Life of America name. In other words, we think that

SunAmerica's latest factual representations are true; its earlier

ones were not. A case does not become moot simply because an

appellate court is unable completely to restore the parties to the

status quo ante. Church of Scientology v. United States, 506 U.S.

9, 12-14, 113 S.Ct. 447, 450, 121 L.Ed.2d 313 (1992). The ability

of the appellate court to "effectuate a partial remedy" is

sufficient to prevent mootness. Id.; see also, e.g., United

States v. Florida Azalea Specialists, 19 F.3d 620, 622 (11th

Cir.1994) (holding that appeal was not moot because the appellate

court "could effectuate a partial remedy"). Because potential

relief remains available to SunAmerica, we hold that this case is
not moot and that we have jurisdiction to decide the merits of this

appeal. See, e.g., North Carolina v. Rice, 404 U.S. 244, 246, 92

S.Ct. 402, 404, 30 L.Ed.2d 413 (1971) (holding that federal courts

must resolve questions of mootness before assuming jurisdiction).
III. WHETHER THE INJUNCTIVE RELIEF GRANTED BY THE DISTRICT COURT
WAS APPROPRIATE

A. STANDARD OF REVIEW

Determination of this appeal requires consideration of: (1)

the factfindings of the district court; (2) the district court's

application of the law; and (3) the injunctive relief granted. We

review the factfindings of the district court, to the extent they

are properly presented on appeal, under the clearly erroneous

standard. E.g., Newell v. Prudential Ins. Co., 904 F.2d 644, 649

(11th Cir.1990). The district court's application of the law is

subject to de novo review. E.g., Church v. City of Huntsville, 30

F.3d 1332, 1342 (11th Cir.1994). We review the district court's

grant of injunctive relief for abuse of discretion, e.g., Panama

City Medical Diagnostic v. Williams, 13 F.3d 1541, 1545 (11th

Cir.1994), meaning we must affirm unless we at least determine that

the district court has made a "clear error of judgment," United

States v. Kelly, 888 F.2d 732, 745 (11th Cir.1989), or has applied

an incorrect legal standard, Cheney v. Anchor Glass Container

Corp., 71 F.3d 848, 849 n. 2 (11th Cir.1996).

B. FACTFINDINGS OF THE DISTRICT COURT

A review of the key factfindings of the district court

provides the backdrop to the legal analysis governing this case.

Among the key ones are findings that:

(1) Sun Life of Canada is the senior user of the SUN LIFE mark.
(2) The likelihood of confusion among the SUN LIFE marks used by
Sun Life of Canada and SunAmerica is "powerful" and
"substantial." In fact, the confusion among the marks is
"inevitable."

(3) The present confusion is not the result of Sun Life of Canada's
actions.

(4) Neither the use of geographic modifiers nor the subdivision of
channels of distribution is sufficient to remedy the present
confusion.

In its brief to this Court, SunAmerica states that the issues

it raises on appeal are questions of law subject to de novo review.

SunAmerica has not explicitly argued in the briefs or at oral

argument that any of the district court's factfindings are clearly

erroneous. With one possible exception, SunAmerica does not even

implicitly challenge any of the district court's findings of fact.

As this Court has held repeatedly, "[a]n argument not made is

waived." Continental Technical Servs. v. Rockwell Int'l Corp., 927

F.2d 1198, 1199 (11th Cir.1991); see also, e.g., Stepak v.

Addison, 20 F.3d 398, 412 (11th Cir.1994) (holding that issue not

addressed on appeal is waived); Roach v. M/V Aqua Grace, 857 F.2d

1575, 1578 n. 1 (11th Cir.1988) (stating that district court's

factual determination "has not been contested on appeal, and

appellant's argument to the contrary has thus been abandoned").

Although SunAmerica does not challenge directly any of the

district court's findings of fact, it does argue that the district

court erred in failing to consider "whether the actions of Sun Life

of Canada after acquiescence served to create additional

confusion." The premise of this argument is contradicted by the

district court's express finding that the "[p]laintiffs have not

shown that the present confusion is the result of Defendant's
actions." That finding is not clearly erroneous. Because all of

SunAmerica's potential challenges to the district court's

factfindings are waived, without merit, or both, we turn now to a

discussion of the legal issues.

C. THE LEGAL PRINCIPLES INVOLVING ACQUIESCENCE, INEVITABLE
CONFUSION, AND THE REVIVAL OF CLAIMS

To establish a prima facie case in an ordinary trademark

infringement suit, a claimant need only demonstrate that: (1) it

enjoys enforceable rights in its mark, and (2) the alleged

infringer adopted a mark that is the same or confusingly similar.

E.g., Conagra, Inc. v. Singleton, 743 F.2d 1508, 1512 (11th

Cir.1984). Sun Life of Canada demonstrated both of these elements

to the district court, something that SunAmerica does not dispute.

Because Sun Life of Canada established a prima facie case, the

district court was required to analyze SunAmerica's affirmative

defenses. SunAmerica I, 24 U.S.P.Q. at 1509, 974 F.2d 1348, infra

pp. ---- - ---- (Birch, J., concurring).

SunAmerica raised the affirmative defense of acquiescence.

Acquiescence is an equitable defense that denotes active consent by

a senior user to another's use of the mark. Coach House, 934 F.2d

at 1558. The defense requires proof of three elements: (1) the

senior user actively represented that it would not assert a right

or a claim; (2) the delay between the active representation and

assertion of the right or claim was not excusable; and (3) the

delay caused the defendant undue prejudice. Id. The district

court considered SunAmerica's proof on these points and concluded

that "[i]n this case, the facts show that Sun Life of Canada

acquiesced to [SunAmerica's] use of the allegedly infringing
marks." Sun Life of Canada does not challenge that conclusion.

Ordinarily, an acquiescence defense estops a senior user from

asserting rights against a party for the use of the mark to which

the senior user consented. See SunAmerica I, 24 U.S.P.Q. at 1511,

974 F.2d 1348, infra pp. ---- - ---- (Birch, J., concurring);

Coach House, 934 F.2d at 1564. Additionally, the existence of

acquiescence creates a legal duty on the part of the senior user to

respect the junior user's mark and to avoid creating confusion with

it. SunAmerica I, 24 U.S.P.Q. at 1511, 974 F.2d 1348, infra pp. --

-- - ---- (Birch, J., concurring). Insofar as the senior user's

and junior user's rights and duties respecting one another are

concerned, acquiescence causes both users' marks to "stand in

parity." Id. at 1512, 974 F.2d 1348, infra p. ----. "After

acquiescence, the senior user and junior user must treat one

another's marks with equal dignity." Id. at 1511, 974 F.2d 1348,

infra p. ----.

However, the defense of acquiescence is not absolute. Upon

a showing that "inevitable confusion"3 arises from the continued

dual use of the marks, a senior user's claim may be revived from

estoppel. Id. at 1510, 974 F.2d 1348, infra p. ----; Coach House,

934 F.2d at 1564; Iodent Chem. v. Dart Drug Corp., 207 U.S.P.Q.

602, 607 (T.T.A.B.1980). As we explained in Coach House, the

3
Due to the fact-intensive nature of the inquiry,
"inevitable confusion" does not lend itself to a formulaic,
mechanical definition. For present purposes, it is sufficient to
note that "the standard of confusion required for a finding of
inevitability of confusion is an increment higher than that
required for a finding of a likelihood of confusion." Coach
House Restaurant v. Coach and Six Restaurants, 934 F.2d 1551,
1564 (11th Cir.1991).
purpose of such a revival is to vindicate the public interest in

avoiding inevitable confusion in the marketplace: "Although [the

senior user] has acquiesced in use of their logo by the [junior

user], the public interest in preventing confusion around the

marketplace is paramount to any inequity caused the [junior user].

Consequently, if there is an inevitability of confusion, [the

senior user's] law suit may be revived from estoppel." Coach

House, 934 F.2d at 1564. Here, the district court found inevitable

confusion and held that the public interest required revival of Sun

Life of Canada's prior trademark rights.

As noted previously, SunAmerica does not dispute the district

court's factual finding of inevitable confusion. Instead, it

advances two alternative theories to challenge the district court's

legal analysis about inevitable confusion. First, SunAmerica

argues that the concept of inevitable confusion applies solely to

trademark registration and has no application in the infringement

suit context. This argument is squarely foreclosed by our contrary

holding in Coach House, 934 F.2d at 1564. See, e.g., Davis v.

Estelle, 529 F.2d 437, 441 (5th Cir.1976) (holding that "[o]ne

panel of this Court cannot disregard the precedent set by a prior

panel").

Second, SunAmerica argues that the district court erred by

"automatically" reviving Sun Life of Canada's claim from estoppel.

As SunAmerica correctly notes, we said in Coach House that "if

there is an inevitability of confusion, petitioner's law suit may

be revived from estoppel." Coach House, 934 F.2d at 1564.

SunAmerica seizes on the single word "may" to urge that a district
court has considerable discretion in determining whether a senior

user's claim should be revived from estoppel after a finding of

inevitable confusion, and argues that a court should engage in an

intricate balancing test before deciding how to exercise that

discretion. This argument illustrates the misunderstandings that

can arise from a myopic focus on a single word.

We do not read Coach House to require district judges to

engage in a complex balancing test to determine whether, after a

showing of inevitable confusion, a senior user's claim is revived

from estoppel. As we explained elsewhere in the Coach House

opinion, "In the event that petitioner ... proves the inevitability

of confusion required to survive the estoppel by acquiescence in

use at trial, the district court will have to address petitioner's

newest claims of servicemark infringement and unfair competition."

Id. at 1565 (emphasis added). In other words, unless an

acquiescent senior user shows inevitable confusion, estoppel bars

the senior user's claims; those claims may not (meaning "cannot")

be revived. When inevitable confusion is shown, however, the

senior user is no longer estopped; thus we say that the

previously-estopped claims "may" now be heard, not because a

discretionary test has entered the analysis, but because that which

was previously disallowed is now allowed. When that happens, the

district court, as we said, "will have to address" the senior

user's claims.

Moreover, SunAmerica's proposed balancing test would add an

additional layer of complexity to an analysis that is already, of

necessity, complex. Accordingly, the district court did not err by
reviving, upon a showing of inevitable confusion, Sun Life of

Canada's claims that were otherwise estopped by acquiescence. The

kind of balancing and exercise of discretion for which SunAmerica

calls is appropriate when the district court must decide what

relief to fashion after a senior user prevails on a revived claim,

but not earlier in the process when the district court is deciding

whether the senior user has "prove[n] the inevitability of

confusion required to survive the estoppel by acquiescence." Coach

House, 934 F.2d at 1565.

D. FASHIONING EQUITABLE RELIEF FOR REVIVED CLAIMS

Once a senior user demonstrates the inevitable confusion

required to revive a claim otherwise estopped by acquiescence, the

district court must determine the scope and nature of relief to be

granted. The senior user's ability to make out a prima facie case

will already have been established before consideration of

affirmative defenses, such as acquiescence. See SunAmerica I, 24

U.S.P.Q. at 1509, 974 F.2d 1348, infra pp. ---- - ---- (Birch, J.,

concurring). Therefore, the only task remaining before the

district court will be to determine the remedy best suited to meet

the goals of eliminating the inevitable confusion and protecting

the public interest.

Section 34(a) of the Lanham Act directs district courts to

apply traditional equitable principles when fashioning injunctive

relief in trademark cases: "The several courts vested with

jurisdiction of civil actions arising under this Act shall have

power to grant injunctions, according to the principles of equity

and upon such terms as the court may deem reasonable ...." 15
U.S.C.A. § 1116(a) (West Supp.1995) (emphasis added). Equitable

principles require consideration of the unique circumstances of

each case, with due regard for flexibility, practicality, and the

public interest:

The essence of equity jurisdiction has been the power of the
Chancellor to do equity and to mould each decree to the
necessities of the particular case. Flexibility rather than
rigidity has distinguished it. The qualities of mercy and
practicality have made equity the instrument for nice
adjustment and reconciliation between the public interest and
private needs as well as between competing private claims.

Hecht Co. v. Bowles, 321 U.S. 321, 329-30, 64 S.Ct. 587, 592, 88

L.Ed. 754 (1944).

In trademark cases, the scope of the injunction to be entered
depends upon the manner in which plaintiff is harmed, the
possible means by which that harm can be avoided, the
viability of the defenses raised, and the burden that would be
imposed on defendant and the potential effect on competition
between the parties.... "The law requires that courts closely
tailor injunctions to the harm that they address."

4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair

Competition, § 30.03[1] (4th ed. 1995) (quoting ALPO Petfoods v.

Ralston Purina Co., 913 F.2d 958, 972 (D.C.Cir.1990)). Therefore,

we have stated that "[t]he equitable relief that is granted should

be only that which is required to distinguish the two products, and

no more." B.H. Bunn Co. v. AAA Replacement Parts Co., 451 F.2d

1254, 1270 (5th Cir.1971).

Although the equitable principles reviewed above are relevant

to the relief stage of any trademark case, they apply with unique

force in cases involving acquiescence. In such cases, but for the

presence of inevitable confusion, the competing marks would "stand

in parity" and be of "equal dignity." See SunAmerica I, 24

U.S.P.Q. at 1511-12, 974 F.2d 1348, infra pp. ---- - ---- (Birch,
J., concurring). For this reason, acquiescence cases are

distinguishable from ordinary trademark infringement actions, in

which complete injunctions against the infringing party are the

order of the day. See, e.g., First Fed. Sav. & Loan Ass'n v. First

Fed. Sav. & Loan Ass'n, 929 F.2d 382, 384-85 (8th Cir.1991)

(upholding complete injunction where substantial evidence of actual

confusion was shown). In contrast, where competing marks are of

equal dignity due to acquiescence, any restriction of the junior

user's previously unrestricted freedom to use its mark results in

a certain degree of undeserved, albeit necessary, hardship. The

law requires this hardship because "the public interest in

preventing confusion around the marketplace is paramount," Coach

House, 934 F.2d at 1564, but the legitimate coexisting interests of

the parties in an acquiescence case counsels for minimizing the

hardship on either party to the extent possible consistent with the

public interest. Therefore, the hardship of a total injunction

against a junior user in an acquiescence case is permissible only

if the junior user fails to demonstrate the availability of a

feasible and effective alternative means of redressing the senior

user's revived claim and vindicating the public interest in

eliminating marketplace confusion, without causing undue hardship

to the senior user.4

4
As an additional factor in fashioning equitable relief
while avoiding unnecessary hardship to the junior user, the
district court should consider the history leading to the
inevitable confusion that revives the senior user's claims.
Specifically, it should consider whether the senior user comes to
the court with "unclean hands" wrongfully seeking to appropriate
the goodwill of the junior user's mark. The district court
should not enter injunctive relief that rewards a senior user
that has intentionally created inevitable confusion in order to
 The underpinnings of the foregoing rule of law are illuminated

by a brief consideration of the basic values at stake in such a

case. When inevitable confusion occurs in the marketplace due to

unrestricted dual use of a trademark, the "paramount" value of the

public interest demands some adjustment to the status quo; some

remedy must be fashioned. The confusion must be remedies even

where, as here, dual use after acquiescence causes the competing

marks otherwise to stand in parity. Any adjustment to the status

quo, however, will work some hardship on one or both of the

parties, because the court's imposition of a remedy will end the

previously unrestricted use of the mark by both parties. Someone

must suffer the remedy, and the law demands it not be the public.

That leaves only the parties to shoulder the hardship necessary to

end the confusion. Accordingly, the question becomes how the

requisite hardship will be allocated between the parties while

giving due consideration to their legitimate interests in the mark.

The court should give due consideration to the parties'

legitimate interests by considering the full range of remedial

alternatives available to cure marketplace confusion and to redress

the senior user's revived claim. When feasible and effective, the

court should fashion a remedy less harsh than the strong medicine

of a total injunction. On occasion, however, only that strong

revive its claim from estoppel, after acquiescing in a
competitor's use of a mark while that competitor establishes
goodwill in the mark. SunAmerica argues that this case presents
us with just such a scenario, but the district court found as a
fact that Sun Life of Canada did not cause the present confusion.
Should this hypothetical materialize in a future case, we are
confident that district courts will be able to fashion injunctive
relief that avoids the unjust enrichment of a predatory senior
user.
medicine will do and a total injunction must issue against one

party or the other. In that circumstance, it is to be expected

that usually the injunction will issue against the junior user.

That presumption is justified, if for no other reason, because the

senior user had the mark first, and it was the junior user who

began the mutual use that led eventually to inevitable confusion.

Stated differently, a junior user assumes the risk that, even if

the senior user acquiesces to the junior's use, inevitable

confusion may someday arise in the marketplace and that the only

feasible and effective way to eliminate this confusion will be a

complete injunction following revival of the senior user's claim.

In determining whether a remedy less than a total injunction

against the junior's use is feasible and effective, a court should

bear in mind that absent some overriding consideration, the senior

user ordinarily should not be required to stomach more of the

remedial medicine than the junior user. The same considerations we

have discussed that support the presumption that a total

injunction, where necessary, should ordinarily fall on the junior

user also support a presumption that in most cases the senior user

should not have to shoulder more of the remedial burden than the

junior user. Neither of these presumptions are insurmountable, and

we hedge by saying "ordinarily" and "in most cases," because we

cannot predict all the variables that will arise and, after all, we

are in the domain of equity, which is not easily fenced.

That point leads us to a discussion of our scope of review of

a district court's decision about how to remedy inevitable

confusion following from acquiescent use. As in virtually every
other area of the law, we will review factfindings only for clear

error. We will also review, essentially de novo, to ensure that

the district court applied the correct legal principles, which we

have previously discussed, to the facts. The applicable law does

not, however, function like a mathematical formula. The same facts

plugged into the same analytical framework will not necessarily

yield the same decision. The legal principles are not that

precise; there is room for judgment and for the exercise of

equitable discretion.

Accordingly, where the district court has not clearly erred

in finding the facts and has applied the correct legal principles,

we will review its ultimate remedial decision only for abuse of

discretion. The abuse of discretion standard of review is not

uniform across the law. It is applied more narrowly in some areas

than in others. See United States v. Cox, 995 F.2d 1041, 1043-44

(11th Cir.1993) (explaining that, although both grants and denials

of new trial motions are reviewed under the abuse of discretion

standard, "we have ... accorded grants of such motions less

deference than denials"). What we mean here when we say that we

will review the district court's ultimate decision about how to

remedy post-acquiescence inevitable confusion is that the district

court will be given considerable leeway, that there will be a wide

decisional range within which we will not reverse the court even if

we would have reached a different decision. See Macklin v.

Singletary, 24 F.3d 1307, 1311-12 (11th Cir.1994) (discussing abuse

of discretion review in terms of the district court's range of

permissible decisional choices).
E. THE REMEDY DECISION IN THIS CASE

We turn now to a review of the district court's remedy

decision in this case. After finding that Sun Life of Canada had

demonstrated the inevitable confusion required to revive its claim

from estoppel by acquiescence, the district court entered an order

enjoining SunAmerica from any further use of any SUN LIFE mark.

The district court completely enjoined SunAmerica's use of the

mark, even though SunAmerica proposed to the district court five

alternatives to a complete injunction: (1) requiring both parties

to use geographic modifiers in connection with their SUN LIFE

marks; (2) subdividing the distribution market such that

SunAmerica could use the SUN LIFE mark in the independent

broker-dealer market while Sun Life of Canada could use the mark

only through its career agent sales force; (3) prohibiting the use

of the SUN LIFE (U.S.) mark by Sun Life of Canada; (4) requiring

the parties to conduct mutual educational campaigns to

differentiate the parties and their marks; and (5) imposing

guidelines regarding the use and prominence of geographic modifiers

and/or corporate logos in connection with the SUN LIFE marks.

SunAmerica suggested that combinations of these alternatives should

be considered.

The district court considered and rejected the first three

alternatives. As to the first, the district court found that

geographic modifiers would be insufficient to alleviate the high

levels of confusion in the marketplace. As to the second, the

court found that the distribution market could not be meaningfully

subdivided. As to the third, the court found that Sun Life of
Canada had not used the SUN LIFE (U.S.) mark since May 1992,

indicating that an injunction barring use of that mark by Sun Life

of Canada would not effectively eliminate marketplace confusion.

None of these factfindings—and they are factfindings—is clearly

erroneous.

We are unable to determine, however, whether the district

court considered SunAmerica's other two proposed remedies before

enjoining SunAmerica from all further use of the SUN LIFE mark. We

are also unable to determine if the district court considered

whether the use of geographic modifiers in combination with

educational efforts and guidelines regarding the use and prominence

of those modifiers and/or corporate logos would have been feasible

and effective. The district court may have considered and rejected

all of these alternatives, but we cannot tell for sure. If the

court did consider and reject them—if it found as a fact that they

would not end inevitable public confusion over the marks—our review

of the record indicates that such a finding would not have been

clearly erroneous. However, we are not prepared to say at this

time that a contrary finding—such as that some combination of the

alternatives would have sufficed to protect the public interest

against marketplace confusion—would be clearly erroneous.

Therefore, we remand this case for the limited purpose of

providing the district court an opportunity to consider whether any

of SunAmerica's proposed alternatives to a complete injunction

would have sufficiently vindicated the public interest in

eliminating marketplace confusion. We leave to the sound

discretion of the district court the determination of whether
further hearings are needed for this purpose. If the district

court finds that none of the other alternatives, by themselves or

in combination, would end inevitable confusion, then the district

court's complete injunction against SunAmerica's use of the marks

is the only feasible and effective remedy. If, on the other hand,

the district court finds as a fact that some remedy or remedies

other than a complete injunction would be feasible and effective,

then the court should exercise its discretion, guided by the

general principles we have discussed previously, to choose among

all of the available remedies.

We REMAND this case to the district court for proceedings

consistent with this opinion. We leave the permanent injunction in

place for the district court to revisit if the results of the

proceedings it conducts consistent with this opinion indicate that

it should.

Because of the nature and complexity of the issues in this

case, our familiarity with them, and the nature of the remand, this

panel will exercise jurisdiction over a future appeal, should there

be one.

APPENDIX

DO NOT PUBLISH

IN THE UNITED STATES
COURT OF APPEALS
FOR THE ELEVENTH CIRCUIT

No. 91-8860

D.C. Docket No. 1:89-cv-1315-JTC

SunAmerica Corporation, a Delaware Corporation, f/n/a Sun Life
Group of America; Sun Life Insurance Company of America, a
Maryland corporation, Plaintiffs, Counterclaim-Defendants,
Appellees,

versus

Sun Life Assurance Company of Canada, a Canadian corporation;
Sun Life Assurance Company of Canada (U.S.), a Delaware
corporation, Defendants, Counterclaim-Plaintiffs, Appellants.

Appeal from the United States District Court
for the Northern District of Georgia

(September 9, 1992)

Before BIRCH, Circuit Judge, HILL and ESCHBACH*****, Senior Circuit
Judges.

PER CURIAM:

This case involves important trademark issues that are

factually and legally complex. Plaintiffs SunAmerica Corporation

and its wholly-owned subsidiary, Sun Life Insurance Company of

America ("Sun Life of America") (collectively, "SunAmerica"),

brought suit against defendants Sun Life Assurance Company of

Canada and its subsidiary, Sun Life Assurance Company of Canada

(U.S.) ("Sun Life of Canada (U.S.)") (collectively, "Sun Life of

Canada"). SunAmerica uses the mark SUN LIFE OF AMERICA; Sun Life

of Canada uses the mark SUN LIFE OF CANADA. In essence, each party

has now charged the other with employing confusingly similar marks

to designate its insurance products, in violation of the trademark

laws.

In the district court, both sides moved for summary judgment

on various claims and legal theories. The district court correctly

discerned that disputed issues of material fact precluded summary

judgment on the vast majority of these claims. However, the court

*****
Honorable Jesse E. Eschbach, Senior U.S. Circuit Judge
for the Seventh Circuit, sitting by designation.
concluded that one claim could be resolved on summary judgment—Sun

Life of Canada's use of the abbreviated mark SUN LIFE (U.S.) to

designate products affiliated with its American subsidiary. The

district court found the SUN LIFE (U.S.) mark to be confusingly

similar to SunAmerica's use of SUN LIFE OF AMERICA. Accordingly,

the court permanently enjoined Sun Life of Canada from using SUN

LIFE (U.S.) without some form of the geographical modifier "of

Canada." The propriety of this injunctive relief is all that is

before us on this appeal.

We hold that the issuance of the permanent injunction at this

stage of this case was improper. This is a complicated trademark

dispute, rife with subtle and pivotal interrelationships. The

district court's resolution of one trademark claim in this unique

case, without careful and proper regard for these

interrelationships, was error. In particular, the trial court

failed to explicitly delineate and resolve the issues raised by Sun

Life of Canada's counterclaim. In that counterclaim, Sun Life of

Canada alleges that SunAmerica is not entitled to receive

protection for any "Sun Life" mark because SunAmerica is the junior

user of a "Sun Life" mark. In other words, Sun Life of Canada

claims that its use of SUN LIFE (U.S.) cannot be enjoined in order

to avoid confusion with SUN LIFE OF AMERICA because SunAmerica has

no enforceable rights in the mark SUN LIFE OF AMERICA. We agree

with Sun Life of Canada that the resolution of this issue was a

prerequisite to determining SunAmerica's entitlement to a permanent

injunction. In failing to rule explicitly on all aspects of this

subject, the trial court's summary judgment injunction was
premature.

Therefore, we VACATE the permanent injunction entered by the

district court and REMAND the case to the district court for

further proceedings.

BIRCH, Circuit Judge, specially concurring:

The majority has found the district court's analysis and

development wanting. Since I am convinced that simply remanding

the case to the district judge without any comment may result in

future problems, I have succumbed to temptation and will endeavor

to provide some observations relative to the issues presented in

this complex case. The parties and the district court may well

choose to ignore these offerings, but hopefully, all concerned may

find them to be of some benefit in reaching a resolution of this

conflict.

I.

A.

The district court found that over the past few years, Sun

Life of Canada and SunAmerica have been "engaged in providing

similar [insurance] products and services, through similar trade

channels to similar customers, often through similar advertising

media." R15-137-13. This was not always the case. Sun Life of

Canada is the older and larger of the companies. Founded in Canada

in 1865, Sun Life of Canada began operations in the United States

in 1895, and it is not disputed that it was the first user of a

"Sun Life" mark for insurance products in this country. From its

inception, Sun Life of Canada has promoted and sold a variety of

insurance products to investment-oriented clients, including
traditional life insurance, immediate annuities, and deferred

annuities.

Although the current subsidiary of SunAmerica was founded in

Maryland in 1890, the company did not operate under the name Sun

Life Insurance Company of America until 1916. Sun Life of America

was always smaller and more specialized. Throughout most of its

history, Sun Life of America's business was primarily constituted

by the sale of basic mortality-based life insurance to industrial

workers in the Middle-Atlantic states. Despite the similarity of

names, then, Sun Life of Canada and Sun Life of America coexisted

peacefully for much of their history, apparently because they sold

different products in different markets to different clients. Both

parties admit to this harmonious coexistence. In fact, relations

were so cordial that "[i]n every circumstance in which the two

companies sought to expand into the same states, the first

registered company, typically Sun Life of Canada, gave its consent

to the newly-entering company seeking registration." R15-137-3.

Beginning in the early 1970s, seeds of tension were planted.

Sun Life of Canada created its American subsidiary, Sun Life of

Canada (U.S.), and began occasional abbreviation of that name to

"Sun Life (U.S.)" in 1973. Sun Life of Canada also began exploring

new means of distribution for its products; in particular, the

lucrative channels of national and regional stock brokerage firms

and broker-dealers. In 1978, Sun Life of Canada contracted with

Merrill Lynch for the distribution of annuities. In 1982, Sun Life

of Canada acquired Massachusetts Financial Services Company

("MFS"), one of the largest investment advisors in the United
States. By 1983, then, Sun Life of Canada and Sun Life of Canada

(U.S.) were marketing insurance products via brokerage houses and

broker-dealers utilizing the name, at least to some extent, "Sun

Life (U.S.)."

The early 1970s were also the origins of change for Sun Life

of America. The conglomerate Kaufman & Broad, Inc. ("Broad Inc.")

acquired Sun Life of America in 1973. Under the direction of Broad

Inc., Sun Life of America began to modernize and expand. By the

end of the 1970s, Sun Life of America had experimented with

different products, different distribution channels, and different

clients. In particular, Sun Life of America began experimenting

with the sale of annuities, through broker-dealers, to

investment-oriented clients. By the early 1980s, the seeds of

tension were beginning to take root. Sun Life of Canada (U.S.) was

sprouting with a shortened name; Sun Life of America was sprouting

with a different business. The clash was almost inevitable.1

Sun Life of America first protested Sun Life of Canada's use

of the mark SUN LIFE (U.S.) in June 1983. Sun Life of Canada

declined to stop its use of the shortened name of its American

subsidiary. Before Sun Life of America objected again in 1988, Sun

Life of Canada had sold some 4 billion dollars worth of innovative

annuity products, designated (at least in part) by the mark SUN

LIFE (U.S.), through MFS and other brokerage houses and

1
Two attempts to pretermit the clash failed. An agreement
reached in 1980—providing for the inclusion of the geographic
modifiers "of Canada" and "of America"—was limited to specified
names and marks. A broader "understanding" about the inclusion
of geographic modifiers was reached in 1982, but this
understanding was never formalized.
broker-dealers. On the other side of this developing conflict, Sun

Life of America continued its transformation into a company that

would also sell annuities to investment-oriented clients through

broker-dealer channels of distribution. In 1984, Sun Life of

American began its first significant development and marketing of

annuity products. Sun Life of America would shortly acquire

several brokerage firms. Sun Life of Canada claims that by the end

of 1989, Sun Life of America had completely abandoned its

origins—selling mortality-based life insurance to industrial

workers in the Middle-Atlantic states—in favor of a sophisticated

and revamped insurance business that competed directly with Sun

Life of Canada.

Shortly after Sun Life of America adopted its new name in

1916, Sun Life of Canada wrote the following in a letter to Sun

Life of America: "Under the circumstances, there is nothing to be

done in the matter, but to endeavor as far as possible, to avoid

any confusion through this similarity of names." R15-137-3. In

June 1989, the endeavoring ended and the litigation began.

B.

SunAmerica's lawsuit asserted various state and federal claims

against Sun Life of Canada. However, only SunAmerica's trademark

claim concerning Sun Life of Canada's use of SUN LIFE (U.S.) is at

issue in this appeal.2 SunAmerica's principal allegation with

2
SunAmerica also challenged (1) Sun Life of Canada's
adoption of a new "S" logo that allegedly infringes SunAmerica's
"S" logo, (2) Sun Life of Canada's use of the name "Sun Financial
Group" that allegedly infringes SunAmerica's use of "Sun
Financial Services," and (3) the continuing vitality of various
other Sun Life of Canada marks.
respect to this claim is that the use of SUN LIFE (U.S.) falsely

suggests to the public that Sun Life of Canada's insurance products

originate with SunAmerica, in violation of SunAmerica's trademark

rights under section 43(a) of the Lanham Act. See 15 U.S.C. §

1125(a) (1988).

In addition to responding to SunAmerica's allegations, Sun

Life of Canada counterclaimed. The counterclaim relevant to this

appeal3 contended that

Sun Life of Canada began using its name SUN LIFE OF CANADA in
the United States many years before plaintiffs began using SUN
LIFE OF AMERICA, that plaintiffs' usage of SUN LIFE OF AMERICA
has caused, and is likely to cause, confusion with defendants'
SUN LIFE OF CANADA name, and that plaintiffs should therefore
be enjoined from all further use of the SUN LIFE OF AMERICA
name and any other name or mark containing the salient words
SUN LIFE.

Appellants' Br. at 3. Although no party moved for summary judgment

with respect to Sun Life of Canada's counterclaim, both parties

submitted cross motions for summary judgment with respect to

SunAmerica's challenge to the use of SUN LIFE (U.S.).

The district court granted summary judgment to SunAmerica.

The trial court quickly found a likelihood of confusion based upon

an analysis of the marks at issue. Echoing this circuit's

seven-factor test for likelihood of confusion, see Dieter v. B & H

Indus., 880 F.2d 322, 326 (11th Cir.1989), cert. denied, [498] U.S.

[950], 111 S.Ct. 369, 112 L.Ed.2d 332 (1990); Jellibeans, Inc. v.

Skating Clubs, 716 F.2d 833, 840 (11th Cir.1983), the district

court ruled that there was a risk of confusion because SUN LIFE

(U.S.) could be considered "synonymous" with SUN LIFE OF AMERICA.

3
Sun Life of Canada also challenged (1) SunAmerica's "S"
logo, and (2) SunAmerica's right to use the name "SunAmerica."
In support of its finding, the court cited the companies' now

similar products, distribution channels, clients, and advertising,

as well as evidence of actual confusion. See R15-137-13-14.

Accordingly, the court permanently enjoined Sun Life of Canada from

using SUN LIFE (U.S.) standing alone in any advertisements,

promotional materials, press releases or other materials. Sun Life

of Canada's counterclaim—asserting that SunAmerica had no

enforceable rights in any "Sun Life" mark whatsoever—remained

pending.

II.

A.

Sun Life of Canada contends that the district court improperly

granted a permanent injunction without first completely resolving

the issues raised by the counterclaim:

[T]he District Court's summary judgment injunction should be
reversed because it is based on the invalid assumption that
plaintiffs have a continuing right to use the name SUN LIFE OF
AMERICA. Defendants' counterclaim ... asserts that the
confusion between the parties is caused by the fact that their
full names both begin with SUN LIFE, that defendants
admittedly used SUN LIFE OF CANADA long prior to plaintiffs'
first use of SUN LIFE OF AMERICA, and that the only effective
way to prevent confusion is to enjoin plaintiffs, the junior
users of a SUN LIFE name, from all further use of SUN LIFE OF
AMERICA. If defendants prevail on this claim at trial, the
sole basis for the summary judgment injunction—the finding
that defendants' use of SUN LIFE (U.S.) is likely to be
confused with plaintiffs' use of SUN LIFE OF AMERICA—will be
eliminated.

Appellants' Br. at 23. I agree with Sun Life of Canada.

An explicit determination of the issues raised by Sun Life of

Canada's counterclaim was required before the district court could

properly enter a permanent injunction in favor of SunAmerica.

SunAmerica's claim was based upon section 43(a) of the Lanham Act,
which provides in relevant part:

Any person who, on or in connection with any goods or
services, ... uses in commerce any word, term, name, symbol,
or device, ... which

(1) is likely to cause confusion, or to cause mistake, or to
deceive as to the affiliation, connection, or association of
such person with another person, or as to the origin,
sponsorship, or approval of his or her goods, services, or
commercial activities by another person, or

(2) in commercial advertising or promotion, misrepresents the
nature, characteristics, qualities, or geographic origin of
his or her or another person's goods, services, or commercial
activities,

shall be liable in a civil action by any person who believes
that he or she is or is likely to be damaged by such act.

15 U.S.C. § 1125(a) (1988). This court has repeatedly held that

in order to be entitled to injunctive relief under section 43(a) of

the APPENDIX—Continued

Lanham Act, a plaintiff must establish both "(1) that it has

trademark rights in the mark or name at issue ... and (2) that the

defendant adopted a mark or name that was the same, or confusingly

similar to the plaintiff's mark, such that there was a likelihood

of confusion...." ConAgra, [Conagra] Inc. v. Singleton, 743 F.2d

1508, 1512 (11th Cir.1984) (citation omitted); see Investacorp,

Inc. v. Arabian Inv. Banking Corp., 931 F.2d 1519, 1521-22 (11th

Cir.), cert. denied, [502] U.S. [1005], 112 S.Ct. 639, 116 L.Ed.2d

657 (1991); American Television and Communications Corp. v.

American Communications and Television, Inc., 810 F.2d 1546, 1548

(11th Cir.1987). Sun Life of Canada's counterclaim undertakes

directly to refute the existence of the first element that

SunAmerica must establish under section 43(a)—that SunAmerica has

enforceable trademark rights in the mark or name SUN LIFE OF
AMERICA. By skipping to the confusion issues and failing to rule

explicitly on SunAmerica's right to use any "Sun Life" mark, the

district court issued a permanent injunction that was premature.

As the moving party, Sun Life of America was required to

establish that there was no genuine issue of material fact about

its right to use SUN LIFE OF AMERICA and that it was entitled to

judgment as a matter of law on that issue. Fed.R.Civ.P. 56(c);

see Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548,

2552, 91 L.Ed.2d 265 (1986). The district court did not make a

specific ruling on the precise issue of Sun Life of America's right

to use "Sun Life" in light of Sun Life of Canada's counterclaim.

Indeed, the court did not make any specific findings of fact or

conclusions of law with respect to this matter. Although,

generally, a district court may not be required to make such

findings and conclusions in support of summary judgment rulings,

see Fed.R.Civ.P. 52(a), the cases have stressed the importance of

such findings to facilitate meaningful appellate review. See,

e.g., Clay v. Equifax, Inc., 762 F.2d 952, 956-58 (11th Cir.1985);

Hanson v. Aetna Life & Casualty, 625 F.2d 573, 575-76 (5th

Cir.1980).

SunAmerica claims that the district court did reach a decision

on the issues raised by Sun Life of Canada's counterclaim. I do

not agree. The district court did give isolated commentary about

SunAmerica's right to use "Sun Life," but I do not consider this

commentary to be an adequate disposition of these issues. Sun Life

of Canada's counterclaim and its impact upon SunAmerica's

entitlement to a permanent injunction was not specifically
addressed by the district court. On this particular record, then,

one cannot discern whether the district court ruled, after a full

and fair consideration of the issue, that Sun Life of America has

a protectible trademark interest in the use of "Sun Life." Perhaps

just as important, even assuming the district court did rule on the

issue, the court's factual and legal bases for doing so are

unclear, making appellate review of the purported decision

difficult if not impossible.

B.

I am not convinced that the district court's isolated

commentary on the issues raised by Sun Life of Canada's

counterclaim constituted a ruling on the subject, that commentary

persuades me to further delineate and describe the precise issues

that will likely confront the district court on remand. The

district court's discussion evinces the need for doctrinal

moorings. In suggesting that SunAmerica has enforceable rights in

SUN LIFE OF AMERICA, the district court stated that Sun Life of

Canada was precluded from challenging the use of SUN LIFE OF

AMERICA because it had permitted another party to use that mark for

such a long period of time. The district court sporadically

invoked various legal doctrines in support of its suggestion, but

did not expand upon the elements of any one. See R15-137-14

(acquiescence); id. (equitable estoppel); id. at 15 (laches);

id. at 26 (waiver). Moreover, the district court did not rely upon

any trademark case law in touching upon the issues raised by Sun

Life of Canada's counterclaim. I believe that a more methodical

approach, complete with an analysis of the issues as clarified by
this circuit's trademark jurisprudence, is essential in this case.

Resolution of complex intellectual property issues is seldom

properly accomplished in a broad and conclusory opinion format.

With respect to the issues raised by Sun Life of Canada's

counterclaim, the starting point must be Sun Life of Canada's

ability to establish a prima facie case under section 43(a) of the

Lanham Act.4 Once again, pursuant to the case law established in

this circuit, Sun Life of Canada is required to demonstrate both

4
Sun Life of Canada registered SUN LIFE OF CANADA in 1967.
However, such a registration would not defeat Sun Life of
America's prior rights (if any) created by its long prior use of
SUN LIFE OF AMERICA. See 15 U.S.C. §§ 1065, 1051 (1988).

Sun Life of Canada has also registered the following "Sun"
marks:

SUN LIFE OF CANADA 1967

FOLLOW THE SUN FOR LIFE 1967

SUN FUND 1971

SUN FUND (plus design) 1971

SUN PLAN 1981

SUN LIFE OF CANADA (stylized) 1981

SUN LIFEMASTER 1984

SUNPLAN 2 1984

SUN INTERESTMASTER 1985

SUN PENSIONMASTER 1985

SUN INTERESTMASTER-Q 1985

SUN EXECUMASTER 1986

SUN ULTRATERM 1987

SUN FINANCIAL GROUP 1987

SunAmerica has only registered its name "SunAmerica."
that it enjoys enforceable rights in its SUN LIFE OF CANADA mark

and that Sun Life of America's use of SUN LIFE OF AMERICA generated

a likelihood of confusion. E.g., ConAgra [Conagra ], 743 F.2d at

1512. With respect to the first factor, Sun Life of Canada would

need to demonstrate not only its first use of the unregistered

mark,5 but also that it acquired a protectible interest in SUN LIFE

OF CANADA (or the shortened form SUN LIFE6), either because the

mark is inherently distinctive or because the mark has acquired

secondary meaning. E.g., Investacorp, 931 F.2d at 1522. With

respect to the confusion issue, the district court's analysis

should once again be guided by the seven-factor test utilized in

cases like Dieter and Jellibeans.

Only after first discerning the extent of Sun Life of

Canada's protectible interest and any likelihood of confusion

should the district court proceed to an analysis of SunAmerica's

potential affirmative defenses. Although the district court

loosely characterized SunAmerica's putative defense, it appears

from the record that in all probability SunAmerica's defense sounds

in acquiescence. The distinguishing feature of the acquiescence

defense is the element of active or explicit consent to the use of

an allegedly infringing mark. Coach House Restaurant v. Coach and

Six Restaurants, 934 F.2d 1551, 1558 (11th Cir.1991). SunAmerica

has clearly claimed that Sun Life of Canada granted SunAmerica

express permission to use the SUN LIFE OF AMERICA mark;

5
Apparently, Sun Life of Canada was the first user of a "Sun
Life" mark in 45 of the 50 states.
6
Sun Life of Canada's mark may have been occasionally
abbreviated to just SUN LIFE as early as 1914.
demonstrated, for example, by Sun Life of Canada's aid in helping

Sun Life of America clear the hurdles imposed by the insurance

regulators of various states.7

SunAmerica can establish an acquiescence defense only if it

shows:

(1) That [Sun Life of Canada] actively represented that it
would not assert a right or a claim;

(2) that the delay between the active representation and
assertion of the right or claim was not excusable; and

(3) that the delay caused [Sun Life of America] undue
prejudice.

Coach House, 934 F.2d at 1558.8 Acquiescence would estop Sun

Life of Canada from APPENDIX—Continued

extinguishing SunAmerica's use of SUN LIFE OF AMERICA, unless there

is an inevitability of confusion between the two marks. Id. at

1564. I express no opinion on SunAmerica's ability to establish

7
The laches defense is associated with more passive consent,
usually demonstrated by a long period of silence. Coach House,
934 F.2d at 1558. Although "estoppel" or "estoppel by laches" is
sometimes used in the trademark area, the district court appears
to have borrowed its "equitable estoppel" language from the
workers' compensation context, as evidenced by the court's
citation to DeShong v. Seaboard Coast Line R.R., 737 F.2d 1520
(11th Cir.1984). The district court's invocation of "waiver" has
no trademark roots.
8
Sun Life of Canada's arguments on appeal imply that even if
SunAmerica could establish these three elements of an
acquiescence defense, Sun Life of Canada could still "revoke" its
acquiescence because acquiescence is merely an "implied license"
to use a mark. See ConAgra [Conagra ], 743 F.2d at 1516. I
disagree. ConAgra [Conagra ] stated that "[a]cquiescence alone
is analogous to an implied license to use the name." Id.
(emphasis added). By this, the court meant that if only the
first element is established—active consent—then the permission
is revocable. Once the remaining elements of acquiescence are
established, however, the permission is not revocable. Id. at
1516-18; see also Coach House, 934 F.2d at 1558 & n. 18, 1563-
64.
this defense to Sun Life of Canada's counterclaim. I note only

that the court's analysis of the first and third elements should be

straightforward based upon the evidence in the record;

accordingly, I will not comment further on those elements.

However, I believe that the second element requires additional

guidance.

In determining whether or not a prior user's delay is

"excusable," the district court must not limit itself solely to a

raw calculation of the time period involved. Rather, the court

should also examine the reasons for any delay. In the context of

this case, Sun Life of Canada has at least advanced a colorable

excuse: Sun Life of Canada contends that it had no reason to

assert an early challenge to Sun Life of America's use of a "Sun

Life" mark because until 1989, Sun Life of America sold different

products in a different market through different distribution

channels. Moreover, it may be that Sun Life of Canada could not

have successfully prosecuted an earlier infringement challenge

because until Sun Life of America changed its business, there was

negligible likelihood of confusion. Pursuit of an infringement

action may have been futile. Once again, I express no opinion on

whether or not any delay on the part of Sun Life of Canada was

"excusable." "Careful consideration of these factors, the possible

need for additional evidence, the finding of facts on the elements

of the ... defense, and the sound exercise of discretion based on

the facts are matters best left to the district court on remand."

ConAgra [Conagra ], 743 F.2d at 1518.

C.
 Citing Forum Corp. v. Forum Ltd., 903 F.2d 434 (7th Cir.1990),

Sun Life of Canada argues that this is an easy case simply because

Sun Life of America is admittedly the junior user of a "Sun Life"

mark. Sun Life of Canada contends that because Sun Life of America

is a second comer, it has a continuing duty to avoid confusion with

the first user's mark. Moreover, Sun Life of Canada presses, Sun

Life of America's duty to avoid confusion exists even when the

first user shortens or abbreviates its mark. In essence, Sun Life

of Canada contends that Sun Life of America has acted at its peril

since adopting a "Sun Life" mark in 1916.

The theory argued by Sun Life of Canada is legally

cognizable, but only to a point. There is ample support for the

proposition that a second user of a mark has a duty to avoid

confusion with a first user's mark. In the words of Professor

McCarthy:

It is well-settled that one who adopts a mark similar to the
mark of another for closely related goods acts at his peril
and any doubt there might be must be resolved against him. If
there is evidence that the junior user in fact knew of the
senior user's mark before beginning use, the "acting at one's
peril" rationale finds stronger support.

2 J. Thomas McCarthy, Trademarks and Unfair Competition § 23:21, at

106-07 (2d ed. 1984) (footnotes omitted). The second comer's duty

to avoid confusion also requires the second comer to anticipate the

possibility that the senior user will shorten or abbreviate its

mark to its salient portions. For example, in Forum Corp., the

Seventh Circuit held the junior user of a mark responsible for

avoiding confusion even though the senior user had abbreviated its

name:

It is the second user's responsibility to avoid confusion in
 its choice of a trademark, and that responsibility must
include choosing a mark whose salient portion would not likely
be confused with a first user's mark....

....

... [E]ven if [senior user The Forum Corporation of North
America] had shortened the form of its trademark throughout
the years, [junior user The Forum, Ltd.] would not be freed
from its responsibility to avoid confusion since the salient
and memorable feature of [the senior user's] mark is "Forum."

903 F.2d at 440, 441; cf. E. Remy Martin & Co. v. Shaw-Ross Int'l

Imports, Inc., 756 F.2d 1525, 1531 (11th Cir.1985) (shortening REMY

MARTIN to "Remy"); Century 21 Real Estate Corp. v. Sandlin, 846

F.2d 1175, 1179 (9th Cir.1988) (shortening CENTURY 21 to

"Century").

However, the duty to avoid confusion takes a different hue if

the first user has actively permitted the second comer's use of a

mark containing a salient portion of the senior user's mark. In

other words, if the first user of a trademark affirmatively

acquiesces to a second user's adoption and use of a mark that

contains the memorable aspect of the first user's mark, the senior

user cannot later complain that the second comer's mark creates

confusion with an anticipated or actual abbreviation of the first

user's mark. True, in Forum Corp., senior user The Forum

Corporation of North America could hold junior user The Forum,

Ltd., accountable for the confusion resulting from the senior

user's abbreviation to "The Forum," but only because the junior

user had no permission or right to incorporate into its own mark

the salient aspect of the senior user's mark. But The Forum

Corporation of North America could not affirmatively acquiesce to

a second comer's use of "The Forum, Ltd." and then change its own
name to "The Forum, Ltd." after an inexcusable delay accompanied by
9
undue prejudice. See supra slip op. at [----] - [----].

Similarly, Remy Martin could not consent to another cognac's use of

"Remy Smith" and then adopt for itself the name "Remy Smith," and

Century 21 could not acquiesce to the use of "Century 42" only to

later appropriate "Century 42" for itself.

Accordingly, if the junior user can establish the three

requisite elements of an acquiescence defense, then the duty to

avoid confusion becomes mutual. Typically, where the senior user

acquiesces to the junior user's mark, the senior user is estopped

from challenging that mark under section 43(a) of the Lanham Act.

It follows that the senior user should also be estopped from

adopting the junior user's mark for itself and from changing its

own mark in a manner that significantly heightens the risk of

confusion. After acquiescence, the senior user and the junior user

must treat one another's marks with equal dignity.

In the context of this dispute, then, the fact that Sun Life

of America is the junior user of a "Sun Life" mark is dispositive

only if Sun Life of Canada has not acquiesced to the use of SUN

LIFE OF AMERICA. Absent Sun Life of Canada's affirmative

acquiescence, Sun Life of America would have a duty to avoid

confusion with Sun Life of Canada's mark, including the duty to

anticipate both the shortening of SUN LIFE OF CANADA to SUN LIFE

and the designation of Sun Life of Canada's subsidiary in America

9
Again, this discussion must always be viewed against the
backdrop of the likelihood of confusion determination, which
necessarily involves an analysis of the seven-factor test;
including, for example, similarity of products, channels of
commerce and advertising media.
as SUN LIFE (U.S.). If Sun Life of Canada has acquiesced to the

use of SUN LIFE OF AMERICA, however, Sun Life of Canada also has a

duty to respect that mark and avoid creating confusion with it.

Once again, I express no opinion on the acquiescence defense. As

this issue will require a careful, fact-intensive consideration, I

shall leave it for the district court and its informed discretion

on remand. See ConAgra [Conagra ], 743 F.2d at 1518.

III.

Because the majority has vacated the permanent injunction for

the reasons stated above, I need not review the specifics of the

district court's resolution of SunAmerica's challenge to Sun Life

of Canada's use of SUN LIFE (U.S.). However, my review of the

record again indicates the need for doctrinal guidance and the

necessity of a methodical approach.

The starting point for the analysis of the claim that SUN LIFE

(U.S.) is confusingly similar to SUN LIFE OF AMERICA is, once

again, whether or not SunAmerica can establish a prima facie case

under section 43(a) of the Lanham Act. As indicated above, the

case law requires SunAmerica to establish (1) that it has a

protectible trademark interest in SUN LIFE OF AMERICA, and (2) that

Sun Life of Canada's use of the mark SUN LIFE (U.S.) creates a

likelihood of confusion with SUN LIFE OF AMERICA. With respect to

the first element, SunAmerica must not only survive Sun Life of

Canada's counterclaim, see supra slip op. at [----], but also

establish the acquisition of protectible trademark rights, either

because SUN LIFE OF AMERICA is inherently distinctive or because it

has acquired secondary meaning. See Investacorp, 931 F.2d at 1522.
With respect to confusion, the district court's analysis should

again follow the seven-factor test as established in cases like

Dieter and Jellibeans to determine whether or not Sun Life of

Canada's use of SUN LIFE (U.S.) creates a likelihood of confusion

with SUN LIFE OF AMERICA.

I think it also prudent to address Sun Life of Canada's

"causation" argument. Sun Life of Canada argues repeatedly on this

appeal that the "cause" of public confusion (if any) is not its use

of SUN LIFE (U.S.), but the combination of SunAmerica's use of a

mark that begins with "Sun Life" and SunAmerica's relatively recent

entrance into the business of selling annuities through

broker-dealers. Sun Life of Canada is certainly correct in

pointing out that the only reason the change in geographical

designation might make a difference is that in this case, both

parties have operated under names that begin with "Sun Life."

Nevertheless, historical similarities occasioned by the

parties' dual use of "Sun Life" would not necessarily disqualify

Sun Life of America from obtaining an injunction. Should the

district court find it necessary to reach the issue of whether or

not SUN LIFE (U.S.) is confusingly similar to SUN LIFE OF AMERICA,

it will only be because there has been a prior finding that

SunAmerica has a protectible trademark interest in SUN LIFE OF

AMERICA and that Sun Life of Canada has acquiesced to that

interest. At such a point, SunAmerica's mark and Sun Life of

Canada's mark would stand in parity. Under these circumstances,

even if Sun Life of America then took advantage of industry trends

by shifting to the sale of annuities through broker-dealers, it
would be entitled to assume that no party would take further steps

that would generate a greater likelihood of confusion than that

which previously existed at the time of acquiescence. Therefore,

if SunAmerica has enforceable rights in SUN LIFE OF AMERICA, it is

not fatal to SunAmerica's claim that a "but-for" cause of public

confusion might be SunAmerica's expansion into annuity products and

the broker-dealer markets, or that there may have been residual

similarities stemming from the parties' respective uses of "Sun

Life" for 75 years. As long as the district court finds, based

upon a careful analysis of the evidence, that Sun Life of Canada's

use of SUN LIFE (U.S.) now creates an additional likelihood of

confusion, an injunction will lie.10

Finally, after resolving the issues raised by Sun Life of

Canada's counterclaim and reaching a decision as to whether

SunAmerica can establish a prima facie case under section 43(a),

the district court should consider the two affirmative defenses

proffered by Sun Life of Canada—laches and acquiescence. The trial

court may not have understood that Sun Life of Canada's affirmative

defenses focus upon a different time period than SunAmerica's

apparent defense to the counterclaim. Sun Life of Canada's

defenses focus not upon the long history of the two companies, but

upon the relatively shorter period of time that Sun Life of Canada

has been utilizing the mark SUN LIFE (U.S.).

Sun Life of Canada first argues that SunAmerica should be

10
Sun Life of Canada also contests the admissibility and
authenticity of certain evidence before the district court. I
express no opinion on this issue. I trust that on remand, the
district court will ascertain that the evidence it considers is
admissible and authentic.
estopped from contesting the use of SUN LIFE (U.S.) because

SunAmerica had actual knowledge of the use of SUN LIFE (U.S.) in

1982, yet waited until June 1989 to file suit, after Sun Life of

Canada sold 4 billion dollars of products under the SUN LIFE (U.S.)

mark. Such delay, Sun Life of Canada contends, constitutes laches.

To establish this defense, Sun Life of Canada must prove:

(1) a delay in asserting a right or a claim,

(2) that the delay was not excusable, and

(3) that there was undue prejudice to the party against whom the
claim is asserted.

Ambrit [AmBrit], Inc. v. Kraft, Inc., 812 F.2d 1531, 1545 (11th

Cir.1986), cert. denied, 481 U.S. 1041, 107 S.Ct. 1983, 95 L.Ed.2d

822 (1987). Stated differently, SunAmerica is only estopped from

asserting its SUN LIFE (U.S.) claim if Sun Life of Canada

demonstrates that it suffered undue prejudice while SunAmerica

inexcusably delayed in asserting its rights. While I express no

opinion on the laches argument, I anticipate that the district

court will consider all of the relevant facts and circumstances

before reaching a conclusion on this equitable defense.

Sun Life of Canada next alleges that SunAmerica should be

estopped from contesting the use of SUN LIFE (U.S.) because

SunAmerica implicitly acquiesced to the use of SUN LIFE (U.S.) by

acting as an agent of Sun Life of Canada and selling Sun Life of

Canada's products under the name SUN LIFE (U.S.). Put another way,

Sun Life of Canada contends that by selling products designated by

SUN LIFE (U.S.), SunAmerica implicitly consented to Sun Life of

Canada's use of that specific mark (even if potentially confusing).

To establish this acquiescence defense, Sun Life of Canada would
need to establish the three elements identified above: active

representation, inexcusable delay, and undue prejudice. See supra

slip op. at [----] - [----]. I note for the district court that an

"active representation" need not come via a "specific endorsement"

or formal agreement, see R15-137-16; rather, implied acquiescence

may be inferred from a clear encouragement of the use of the

allegedly infringing mark, as when, for example, the plaintiff

substantially contributes to the marketing of the allegedly

infringing products. See, e.g., Coach House, 934 F.2d at 1563-64;

ConAgra [Conagra ], 743 F.2d at 1516-18; Land O'Lakes, Inc. v.

Land O'Frost, Inc., 224 U.S.P.Q. 1022, 1029-30 (TTAB 1984);

Hitachi Metals Int'l v. Yamakyu Chain Kabushiki, 209 U.S.P.Q. 1057,

1067 (TTAB 1981). Once again, in deciding this issue, the district

court should carefully consider SunAmerica's proffered reasons for

its alleged acquiescence and delay. See supra slip op. at [----] -

[----].

IV.

SunAmerica has described this case as "open-and-shut" because

Sun Life of Canada has allegedly used an identical mark for

competitive products. See Appellees' Br. at 4 n. 2 (citing 2 J.

Thomas McCarthy, Trademarks and Unfair Competition § 23:3, at 56

(2d ed. 1984)). As evidenced by my discussion, I am unpersuaded as

to that conclusion. This case has a complex and unique history

that spans over 100 years. Both parties to this dispute have

persuasive claims, counterclaims, and defenses. All are

interrelated. All require not only a careful analysis of each

party's trademarks, products, markets, clients, and distribution
channels, but also an analysis of how circumstances may have

changed over time. Arguably, in this case, convergence has created

competition and confusion. Only precise, step-by-step detailed

analysis can illuminate an appropriate resolution that is capable

of meaningful appellate review. To suggest otherwise ignores the

complexity and subtlety presented in this case.