dissenting:
I respectfully dissent.
I
The district court denied Sara Lee’s request to enjoin Kayser-Roth from using the trademark LEG LOOKS pantyhose in the food, drug, and mass merchandise market. The judgment of the district court was supported by many findings of fact, one of which was based on a contract of settlement between Sara Lee and Kayser-Roth in 1991. Because of that finding of fact, but also otherwise supported, the district court found that Sara Lee had acquiesced in Kayser-Roth’s use of the LEG LOOKS mark.
The majority concludes that this finding is clearly erroneous because “the 1991 agreement was intended only to govern Sara Lee’s future actions in marketing its LINGERIE LOOKS brand.” Op. at 463.
The agreement in question appears at A.2871 and grew out of Sara Lee’s attempt to register the trademark LINGERIE LOOKS in International Class 25. Kayser-Roth objected on the basis that that mark infringed on its registered mark LEG LOOKS and other marks such as Career Looks, Designer Looks and Silky Looks. Sara Lee agreed to comply with specific marketing and advertising practices, in particular that its LINGERIE LOOKS mark would always be used with and have added to it the L’EGGS trademark so that L’EGGS LINGERIE LOOKS would be the dominant trademark usage of Sara Lee. The agreement contained no market restrictions. The district court found that each party remained free to use its respective mark, LEG LOOKS by Kayser-Roth, and L’EGGS LINGERIE LOOKS, by Sara Lee. It found that in the agreement Sara Lee expressly acknowledged Kayser-Roth’s ownership of the registration for the LEG LOOKS mark and that such acknowledgement “supports the inference that [Sara Lee] recognized and consented to Defendant’s [Kayser-Roth’s] entitlement to the whole range of rights legally afforded by such ownership.” The district court found that Sara Lee would not have agreed to L’eggs LINGERIE LOOKS by Sara Lee if it thought it would be confused with LEG LOOKS, despite the sharing of the word leg.
The district court found the relevant market to be the national retail pantyhose market and that food, drug, and mass merchandise stores are some of the many outlets used by both parties to distribute pantyhose products in the national market. Sara Lee registered the L’eggs trademark in 1973 for use on ladies’ hosiery and pantyhose in International Class 25. Kayser-Roth registered the LEG LOOKS trademark in 1983 for use on ladies’ hosiery and pantyhose in International Class 25. The district court reviewed Kayser-Roth’s registration of LEG LOOKS and found no limitation to a particular corn-*469position or style. It further found that registration of a trademark bestows upon its owner a presumption that the “goods or services will move through all channels of trade suitable for goods or services of that type, and that they reach all purchasers and potential purchasers of them,” quoting RE/MAX of America, Inc. v. Realty Mart, Inc., 207 U.S.P.Q. 960, 965 (T.TAB.1980). The district court concluded that Kayser-Roth’s registration of LEG LOOKS, which had become ineontestible to the extent provided by 15 U.S.C. § 1065, established the presumption that it could distribute pantyhose under the LEG LOOKS mark through all channels suitable for the registered classification. It then found that department stores, mass merchandising stores, off-price outlets, food stores, and drug stores were all such suitable outlets and that both parties had marketed pantyhose in the national pantyhose market, including the food, drug, and mass merchandise market, since the 1970’s.
The majority, by confining its reasoning to the food, drug, and mass merchandising market, has not taken into account many or even most of the findings of fact I have just related. Especially, it has not taken into account the district court’s finding of fact that:
Given the functional interchangeability of pantyhose, Plaintiffs successful marketing of L’eggs pantyhose through FDM stores rather than department stores, and defendant’s current success with its pricing strategy, it would be unrealistic and flatly incorrect to find that low-cost pantyhose and high-priced pantyhose do not compete in the same market. Cf. Brown Shoe Co., 370 U.S. at 326 [82 S.Ct. at 1524] (refusal to divide the shoe market according to “priee/quality” distinctions). The court, therefore, finds that the relevant market in this case is, and has always been, the national retail pantyhose market.
That error, and the incorrect finding as clearly erroneous of the district court’s finding of acquiescence, are two essential weaknesses in the majority opinion.
I am of opinion that the district court’s findings of fact are plausible and supported by the evidence. “If the district court’s account of the evidence is plausible in light of the record viewed in its entirety, the court of appeals may not reverse it even though convinced that had it been sitting as the trier of fact, it would have weighed the evidence differently. Where there are two permissible views of the evidence, the factfinder’s choice between them cannot be clearly erroneous.” Anderson v. Bessemer City, 470 U.S. 564, 573-74, 105 S.Ct. 1504, 1511, 84 L.Ed.2d 518 (1985).
I would affirm the district court’s finding that Sara Lee had acquiesced in the defendant’s use of the mark LEG LOOKS.
I would also affirm its finding of relevant market.
II
I also do not agree with the majority’s view that anecdotal evidence of confusion and likelihood of confusion in this case is “massive” and “nearly overwhelming” and its conclusion that the district court did not consider, or miscalculated the likelihood of, consumer confusion. Confusion or likelihood of confusion is a question of fact not to be disturbed unless clearly erroneous. 3 J. Thomas McCarthy, Trademarks and Unfair Competition § 23.22 (1995). The district court discussed the relevant evidence in detail and gave specific reasons for crediting or discrediting anecdotal evidence, market studies, and expert testimony offered by both parties. This discussion, in fact, occupies 20 pages of the appendix (A.5331-5351).
The district court divided its discussion of the likelihood of confusion into five categories and its conclusion. The categories were (1) strength of the SHEER ENERGY trade dress; (2) similarity of the packages; (3) defendant’s intent; (4) similarity of the goods, sales facilities, and advertising; and (5) evidence of actual confusion. The majority opinion takes little or no issue with any of the district court’s discussion or fact finding except that with respect to actual confusion, as is illustrated on page 18-19 of the slip opinion, in the part labeled “D. Actual Confusion.” on which its holding is based.
The district court, in its consideration of evidence of actual confusion, listed as subcategories: A Consumers, B. Store Person*470nel, C. Misshelving and Misspelling, and D. Mail Intercept Surveys. The majority opinion discusses little or no evidence relevant to these categories and considered by the district court in detail, but bases its decision on the fact that it disagrees with the district court on the weight to be given the survey evidence and the effect to be given the anecdotal evidence. Op. at 466-467.
For example, included in the evidence considered by the district court, but not by the majority, is the following:
As of the August 1993 hearing, Kayser-Roth had sold over 3.5 million 1993 packages, yet only four consumers testified at the hearing to having bought the 1993 package, believing it contained L’eggs pantyhose, and only one of those believed it contained SHEER ENERGY pantyhose.
The largest proportion of anecdotal evidence of confusion came from plaintiffs’ sales merchandisers rather than store personnel, and even with that, plaintiff's employees gave evidence of only 25 encounters with store personnel who asked plaintiffs’ employees about the 1993 package.
Between the introduction of the 1993 package and the August 1993 hearing, Sara Lee’s sales merchandisers had made at least 800,000 store visits. Even if only 1/4 of those 800,000 visits had coincided with a display of the 1993 package, those 25 encounters would have occurred on barely more than 1/100 of 1% of the visits.
The evidence about misshelving or misspelling came from Sara Lee’s employees and included no explanation from those responsible for the errors. Since Kayser-Roth’s pantyhose were almost always shelved near Sara Lee’s, the district court did not consider a few clerical errors by unidentified store personnel or outside advertisers demonstrative of actual confusion.
With respect to the survey evidence of Sara Lee, the district court did not “accord the proffered results much weight” because of “the selection of an inappropriate controller by Sara Lee.” The district court also discounted Sara Lee’s surveys because “they insufficiently emulated market conditions.” Rather than take issue with that district court finding as to the weight of the evidence, the majority merely cut the result in half and used that arbitrary half-figure in coming to its conclusion.
The majority opinion does not take into account that the district court accorded more weight to Kayser-Roth’s survey evidence than it did to Sara Lee’s because it had come closer to emulating market conditions and controlling for the effect of color on packages.
The district court in this case, for some 20 pages, analyzed in detail the evidence of likelihood of confusion. The majority dismisses that analysis in one page with little analysis of the same evidence. Op. at 466-467. In my opinion, the majority opinion does not state a sufficient basis for its conclusion that the district court’s findings were clearly erroneous. Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 857-58, 102 S.Ct. 2182, 2190-91, 72 L.Ed.2d 606 (1982), stated that “[a]n appellate court cannot substitute its interpretation of the evidence for that of the trial court simply because the reviewing court might give the facts another construction, resolve the ambiguities differently, and find a more sinister cast to actions which the District Court apparently deemed innocent.” (Internal quotation omitted.) Yet, I suggest that is just what the majority has done in this case.
Ill
Whether or not the findings of fact of the district court I have referred to above are clearly erroneous, and even if the findings of fact of the majority are not clearly erroneous, in my opinion the majority erred when it sequestered the use of the word “leg” in connection with the sale and advertising of pantyhose in the food, drug, and mass merchandise market and gave that exclusive use to Sara Lee.
On page 465 of the opinion, the holding of the majority is disclosed.
According to the district court, because the word “leg” is generic, it may legally be used as part of an otherwise noninfringing pantyhose trademark.
*471We disagree. The district court faded to appreciate that the mark at issue is neither “leg eggs” nor “legs” but L’eggs ®, a word that represents a singular concept associated with — but very different from— pantyhose. Although the mark may not be wholly fanciful (because it is phonetically identical to a common word) or arbitrary (because it is not actually a “real” word), it is unquestionably suggestive, and therefore a strong, distinctive mark. L’eggs® conjures favorable images of attractive legs or legginess, and, by subtly reminding consumers of its famous egg packaging design, reinforces the association between the product and its source — a sure sign of a mark entitled to protection. (Italics added.)
Thus the majority holds that the word “leg” may not legally be used as part of an otherwise non-infringing pantyhose trademark in connection with the advertising or sale of pantyhose. I suggest that it is simply not possible to advertise or sell pantyhose without the use of the word “leg” and that the decision of the majority, that the use of the word “leg” in connection with the advertising and sale of pantyhose, is the exclusive right of Sara Lee, is error.
In remarkably similar circumstances, the Third Circuit held, in A.J. Canfield Co. v. Honickman, 808 F.2d 291 (3d Cir.1986), that “chocolate fudge,” as used in the name of a drink called “Diet Chocolate Fudge Soda,” was generic and was “available to all potential competitors.” 808 F.2d at 308. The court reasoned that “... if a term is necessary to describe a product characteristic that a competitor has a right to copy, a producer may not effectively preempt competition by claiming that term as its own.” 808 F.2d at 305.
Along the same line, the Seventh Circuit, in Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75 (7th Cir.1977), cert. denied, 434 U.S. 1025, 98 S.Ct. 751, 54 L.Ed.2d 772 (1978), decided that “Light” is a generic or common descriptive term when used with beer. 561 F.2d at 80. In that case, Miller had the registered mark of “LITE” and had sued Heileman, which had incorporated the word “light” in its sales and advertising. Of course, Miller’s suit failed. And the court stated that “[a] generic or common descriptive term is one which is commonly used as the name or description of a kind of goods. It cannot become a trademark under any circumstances.” 561 F.2d at 79. The Heileman case was followed in Miller Brewing Co. v. Falstaff Brewing Corp., 655 F.2d 5 (1st Cir.1981), which held that Miller was estopped by Heileman from prosecuting the same kind of a suit against Falstaff: The court relied on the reasoning of Judge Friendly in two cases for the rule which, in my opinion, should be followed here and is as follows:
“No matter how much money and effort the user of a generic term has poured into promoting the sale of its merchandise and what success it has achieved in securing public identification, it cannot deprive competing manufacturers of the product of the right to call an article by its name.” Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir.1976). “The reason is plain enough. To allow trademark protection for generic terms, i.e. terms which describe the genus of goods being sold, even when these have been identified with a first user, would grant the owner of the mark a monopoly since a competitor could not describe his goods as what they are.” CES Publishing Corp. v. St. Regis Publications, Inc., 531 F.2d 11, 13 (2d Cir.1975).
655 F.2d at 8.
I would conclude that the word “leg” is no less generic than the words “chocolate fudge,” as used in connection with diet soda, or the word “light,” as used with beer. I suggest again that this holding of the majority is error, regardless of whether or not the facts as found by the district court are clearly erroneous. Advertising and selling pantyhose without using the word “leg” just seems to me to be impossible.
IV
In sum, I am of opinion that the majority erred when it decided, either implicitly or expressly, that the holdings of the district court were clearly erroneous with respect to *472acquiescence, relevant market, and confusion. Absent the fact findings of the majority, which were contrary to those of the district court, the decision of the majority cannot stand.
Even considering for argument, however, that the fact findings of the majority were correct, its holding that the word “leg” is not a generic term is erroneous, I think, and also for that reason, the decision of the majority cannot stand.
I would affirm.