Borinquen Biscuit Corp. v. M v. Trading Corp.

United States Court of Appeals
For the First Circuit

No. 05-2591

BORINQUEN BISCUIT CORP.,

Plaintiff, Appellee,

v.

M.V. TRADING CORP.,

Defendant, Appellant.

APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF PUERTO RICO

[Hon. Juan M. Pérez-Giménez, U.S. District Judge]

Before

Selya, Circuit Judge,
Hansen,* Senior Circuit Judge,
and Lynch, Circuit Judge.

Manuel Fernández Bared, with whom Toro, Colón, Mullet, Rivera
& Sifre, P.S.C. was on brief, for appellant.
Rafael Escalera Rodriguez, with whom Ileann M. Cañellas Correa
and Reichard & Escalera were on brief, for appellee.

April 4, 2006

*Of the Eighth Circuit, sitting by designation.
 SELYA, Circuit Judge. After an evidentiary hearing, the

district court preliminarily enjoined defendant-appellant M.V.

Trading Corp. (M.V.) from advertising, distributing, or selling

cookies or crackers in Puerto Rico under the trade name "Ricas" on

the ground that such activities would likely infringe a registered

trademark held by plaintiff-appellee Borinquen Biscuit Corp.

(Borinquen). M.V. appeals. See 28 U.S.C. § 1292(a)(1). We

affirm.

I. BACKGROUND

Borinquen is a manufacturer and distributor of "galletas."

There is no precise English equivalent of this Spanish word;

"galleta" (or, in the plural, "galletas") encompasses all types of

crackers, cookies, and biscuits. Since 1976, Borinquen has sold a

round, yellowish, semi-sweet galleta in Puerto Rico under the

federally registered trademark "RICA." This galleta resembles a

cookie. Borinquen acquired the recipe for the product and the

rights to the mark from Sunland Biscuit Company (Sunland), which

had sold the galleta in Puerto Rico under that mark since 1962.

Sunland officially registered the mark on the principal register of

the Patent and Trademark Office (PTO) in 1969. The federal

registration states that "the Spanish word 'Rica' may be translated

as 'rich.'"

Borinquen's "RICA" has always borne a logo that consists of a

red circle encompassing the white-lettered phrase "Galletas RICA

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Sunland." Borinquen registered both the mark "RICA" and the

product's logo with the Puerto Rico Department of State in 2000.

It currently sells the product in predominately red-and-white

packaging, with the circular logo centered against a background

consisting of rows of the galletas.

While other firms have registered "rica" trademarks for

different kinds of products (e.g., bananas, brown sugar, and

tobacco), Borinquen's "RICA" is the only cookie, cracker, or

biscuit registered under that name in the United States. Moreover,

until the events at issue here, Borinquen was the only company to

use the word "rica" in connection with the marketing or

distribution of galletas in Puerto Rico.

The tectonic plates shifted in April of 2003, when M.V. began

selling a round, yellowish, salty galleta bearing the name "Nestlé

Ricas." This galleta, which resembles a cracker, is manufactured

by Nestlé Ecuador and imported by M.V. The product logo consists

of a white oval with the name "Ricas" centered in red letters and

with a red square in the upper right-hand corner of the oval

bearing the white-lettered brand name "Nestlé." M.V.'s packaging

is mostly red and white, albeit with some yellow and blue design.

The logo is centered in the upper half of the box against a

background of scattered galletas.

In or around the summer of 2004, Borinquen learned that M.V.

was marketing Nestlé Ricas in earnest. Since both parties'

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galletas were being sold in Puerto Rican supermarkets and

convenience stores, this was a matter of considerable concern.

Borinquen informed M.V. that it believed M.V.'s distribution of

galletas under the name "Ricas" infringed its registered trademark

and asked M.V. to cease and desist.

When M.V. refused, Borinquen filed suit for damages and

injunctive relief in the federal district court. In its complaint,

Borinquen alleged that M.V.'s use of the "Ricas" mark, coupled with

similarities in trade dress, infringed its trademark and trade

dress rights under federal law. See 15 U.S.C. §§ 1114(1),

1125(a).1 M.V. denied the essential allegations of the complaint

and counterclaimed for cancellation of Borinquen's "RICA" mark.

Coincident with the institution of suit, Borinquen moved for

a preliminary injunction. M.V. opposed that motion. The district

court held an evidentiary hearing on May 31 and June 7, 2005. The

president of each company testified about the advertising and sales

history of his product. In addition, each side presented expert

testimony anent the likelihood of confusion. The expert witnesses

approached the problem from different directions. Borinquen's

witness (an expert in advertising and brand recognition) polled

others in his field and concluded that confusion was probable.

M.V.'s witness (an expert in market research) conducted a survey of

1
Borinquen also brought a dilution claim under 15 U.S.C. §
1125(c). That claim was not pressed at the preliminary injunction
stage, so we make no further mention of it.

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100 consumers in metropolitan areas and concluded that consumers

could recognize differences in the packaging of the two products.

On that basis, she hypothesized that the marketing of Nestlé Ricas

created no likelihood of confusion.

On September 6, 2005, the district court issued a preliminary

injunction that enjoined M.V. from advertising, distributing, or

selling any cookies or crackers in Puerto Rico under the name

"Ricas." Borinquen Biscuit Corp. v. M.V. Trading Corp., No. 04-

2070, slip op. at 12 (D.P.R. Sept. 6, 2005) (D. Ct. Op.). The

court concluded, inter alia, that Borinquen was likely to succeed

in establishing both that its "RICA" mark was entitled to federal

trademark protection and that M.V.'s use of the "Ricas" mark was

likely to foment consumer confusion. This interlocutory appeal

ensued.

II. ANALYSIS

On appeal, M.V. advances two principal assignments of error.

First, it charges that the district court blundered in not

requiring Borinquen to establish that the "RICA" mark had acquired

secondary meaning. Second, it maintains that the district court

mistakenly concluded that M.V.'s product was likely to cause

consumer confusion. After delineating the legal standards

applicable to grants of preliminary injunctive relief, we address

each of these claims.

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 A. The Preliminary Injunction Standard.

The preliminary injunction standard is familiar. Before

granting this type of relief, a nisi prius court must consider (1)

the likelihood of the movant's success on the merits; (2) the

anticipated incidence of irreparable harm if the injunction is

denied; (3) the balance of relevant equities (i.e., the hardship

that will befall the nonmovant if the injunction issues contrasted

with the hardship that will befall the movant if the injunction

does not issue); and (4) the impact, if any, of the court's action

on the public interest. Ross-Simons of Warwick, Inc. v. Baccarat,

Inc., 102 F.3d 12, 15 (1st Cir. 1996); Narragansett Indian Tribe v.

Guilbert, 934 F.2d 4, 5 (1st Cir. 1991). While all these factors

must be weighed, the cynosure of this four-part test is more often

than not the movant's likelihood of success on the merits. See

Weaver v. Henderson, 984 F.2d 11, 12 (1st Cir. 1993) ("The sine qua

non of [the four-factor] formulation is whether the plaintiffs are

likely to succeed on the merits."). The importance of that inquiry

is magnified in trademark cases because the resolution of the other

three factors will depend in large part on whether the movant is

likely to succeed in establishing infringement. See Keds Corp. v.

Renee Int'l Trading Corp., 888 F.2d 215, 220 (1st Cir. 1989); see

also I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 33 (1st Cir.

1998) (noting that irreparable harm can be assumed if a trademark

holder demonstrates that it is likely to succeed in establishing

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infringement). This emphasis on likelihood of success is fully

consistent with the tenet that, as a matter of public policy,

trademarks should be protected against infringing uses. See

Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812, 820

(1st Cir. 1987).

A trial court's conclusions on these factors and its

determinations regarding their relative weighting engender

deferential appellate review. See Ross-Simons, 102 F.3d at 16.

Thus, a decision to grant a preliminary injunction will stand

unless the court "mistook the law, clearly erred in its factual

assessments, or otherwise abused its discretion in granting the

interim relief." McGuire v. Reilly, 260 F.3d 36, 42 (1st Cir.

2001).

On appeal, M.V. does not challenge the district court's

determinations regarding the last three components of the four-part

preliminary injunction framework. Consequently, we need consider

here only the first of the four factors: likelihood of success.

B. Likelihood of Success.

Before a party can succeed in an infringement action, it must

demonstrate both that its mark merits protection and that the

allegedly infringing use is likely to result in consumer confusion.

Boston Beer Co. v. Slesar Bros. Brewing Co., 9 F.3d 175, 180 (1st

Cir. 1993). For purposes of a preliminary injunction, however, the

trademark holder need only show a likelihood of success on these

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two elements. See Guilbert, 934 F.2d at 6 (explaining that "a

court's conclusions as to the merits of the issues presented on

preliminary injunction are to be understood as statements of

probable outcomes," not as final determinations). M.V. claims that

Borinquen did not adequately demonstrate below that it was likely

to satisfy its burden with respect to either element. We examine

each facet of this claim.

1. Eligibility for Trademark Protection. We start with M.V.'s

contention that the district court erred, as a matter of law, in

determining that Borinquen's "RICA" mark was entitled to trademark

protection. This contention proceeds from the premise that the

court should have required Borinquen to adduce evidence that its

mark had acquired secondary meaning. We reject this premise.

It is common ground that, in order to be eligible for trademark

protection, a mark must qualify as distinctive. See Two Pesos, Inc.

v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992). When considering

whether a mark meets that standard, courts often employ a taxonomy

that classifies marks along a continuum of increasing

distinctiveness. That continuum contains five categories: generic

marks, descriptive marks, suggestive marks, arbitrary marks, and

fanciful marks. See, e.g., id. at 768; I.P. Lund, 163 F.3d at 39.

By definition, generic marks can never be ranked as distinctive.

Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194

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(1985). In contrast, suggestive, arbitrary, and fanciful marks are

considered inherently distinctive. Two Pesos, 505 U.S. at 768.

The category of descriptive marks is more protean in nature.

Descriptiveness and distinctiveness are neither congruent concepts

nor productive of mutually exclusive classifications. Descriptive

marks are tentatively considered non-distinctive but can attain

distinctive status upon an affirmative showing of secondary meaning.

Id. at 769. This showing requires the trademark holder to establish

that "in the minds of the public, the primary significance of [the

mark] is to identify the source of the product rather than the

product itself." Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S.

844, 851 n.11 (1982). A mark is, therefore, considered distinctive

(and, thus, eligible for trademark protection) if it either is

inherently distinctive or exhibits acquired distinctiveness gained

through secondary meaning. Two Pesos, 505 U.S. at 769.

Both registered and unregistered trademarks may be eligible for

protection against infringing uses. See 15 U.S.C. §§ 1114, 1125;

see also Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 372 (1st

Cir. 1980). Withal, the proper mode of analysis regarding whether

a mark satisfies the distinctiveness criterion varies based on

whether or not the mark is registered.

When a party seeks protection for an unregistered trademark,

it is incumbent on that party to demonstrate affirmatively that its

mark is distinctive (either inherently or through acquired secondary

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meaning). Boston Beer, 9 F.3d at 180. The trial court must engage

in a specific inquiry to determine whether the proponent has met

that burden. See, e.g., I.P. Lund, 163 F.3d at 39-41. Here,

however, Borinquen's mark is registered, so this requirement does

not automatically attach.

When a party seeks protection for a registered trademark, its

burdens are lighter. Registration is "prima facie evidence of the

validity of the registered mark." 15 U.S.C. § 1115(a). When, as

in this case, the PTO registers a mark without first requiring the

applicant to prove secondary meaning, the holder of the mark is

entitled "to a presumption that its registered trademark is

inherently distinctive, as opposed to merely descriptive." Equine

Techs., Inc. v. Equitechnology, Inc., 68 F.3d 542, 545 (1st Cir.

1995); see Quabaug Rubber Co. v. Fabiano Shoe Co., 567 F.2d 154, 161

n.12 (1st Cir. 1977) (explaining that "registration is prima facie

evidence that the . . . mark is distinctive per se").2

The effect of that presumption varies depending on whether the

registered mark has attained incontestable status. If the

2
Even when the PTO's decision to register a mark depends on
the applicant's proof of secondary meaning, the holder is still
entitled to a presumption that its mark is distinctive and merits
protection. See 15 U.S.C. § 1115(a). In that instance, however,
the presumption is not that the mark is inherently distinctive,
but, rather, that the mark is valid because it enjoys secondary
meaning. See Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 393
(2d Cir. 1995). Because Borinquen's mark was not registered on
this basis, we do not address the effect of a secondary meaning
presumption.

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registered mark has become incontestable through the owner's

compliance with the applicable statutory formalities,3 the

presumption is conclusive. 15 U.S.C. § 1115(b). If, however, the

registered mark remains contestable, the putative infringer may

defend a suit on the ground that the mark does not merit protection

because it is not inherently distinctive (i.e., not suggestive,

arbitrary, or fanciful) but, rather, is merely descriptive of the

product. See id. § 1115(a). It follows, then, that under the

Lanham Act, the effect of registration for a contestable mark is "to

shift the burden of proof from the plaintiff . . . to the defendant,

who must introduce sufficient evidence to rebut the presumption of

the plaintiff's right to [exclusive] use" through proof that the

mark is merely descriptive. Keebler Co., 624 F.2d at 373. Inasmuch

as Borinquen's mark is registered but contestable (that is,

Borinquen has not satisfied the requirements of 15 U.S.C. § 1065),

see supra note 3, this is such a case.

That sets the stage for our analysis. When, as now, a mark is

registered but contestable, a putative infringer must offer

significantly probative evidence to show that the mark is merely

descriptive. Then — and only then — does the burden of proof shift

3
A mark becomes incontestable when its owner files an
affidavit with the PTO attesting that the following requirements
have been met: (i) there has been no final decision adverse to its
ownership or enforcement rights for the preceding five-year period;
(ii) there is no pending case or proceeding regarding the owner's
rights in the mark; and (iii) the owner is still using the mark.
See 15 U.S.C. § 1065.

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back, so that the party seeking protection must take an alternative

route and assume the devoir of persuasion on the issue of whether

its mark has acquired secondary meaning. See, e.g., Flextized, Inc.

v. Nat'l Flextized Corp., 335 F.2d 774, 779-80 (2d Cir. 1964).

Simply alleging descriptiveness is insufficient to compel the holder

of a registered mark to go forward with proof of secondary meaning;

the putative infringer must prove descriptiveness by a preponderance

of the evidence before the mix of issues changes and the burden of

persuasion on the new issue (secondary meaning) reverts to the

trademark holder. See Keebler Co., 624 F.2d at 373. If the

putative infringer does not cross that threshold, the presumption

holds and distinctiveness is presumed. See Pic Design Corp. v.

Bearings Speciality Co., 436 F.2d 804, 807 (1st Cir. 1971). In that

event, the court can proceed to consider the remaining elements of

the infringement claim without first demanding that the trademark

holder offer proof of secondary meaning. See id.

In the case at hand, these background principles get the grease

from the goose. Before us, M.V. insists that the district court

erroneously treated Borinquen's mark as incontestable because it did

not require proof of secondary meaning. This argument conflates two

issues and, in the bargain, mischaracterizes what transpired below.

The record, fairly read, supports a determination that M.V. failed

to prove, by a preponderance of the evidence, that the "RICA" mark

is merely descriptive. Therefore, the district court was warranted

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in not taking the next step and shifting the burden to Borinquen to

show that its registered but contestable mark had acquired secondary

meaning. See Keebler Co., 624 F.2d at 373. We explain briefly.

The issue of distinctiveness ordinarily presents a question of

fact. Equine Techs., 68 F.3d at 544. Although M.V. raised a

descriptiveness defense, it presented minimal evidence and argument

in support of that defense. For example, while M.V. conducted a

survey on the issue of consumer confusion, it adduced no comparable

evidence in support of its contention that Borinquen's mark is

merely descriptive.4 By like token, M.V. devoted scant attention to

the question of descriptiveness in its post-hearing brief. Given

this dearth of both evidence and argumentation, we think that the

decision to allow the distinctiveness presumption to control

withstands scrutiny.

M.V.'s counter-arguments, though ably presented, are not

sufficient, at the preliminary injunction stage, to offset the

4
The absence of reliable survey evidence is not, in and of
itself, dispositive when a putative infringer attempts to establish
that a registered mark is not entitled to protection on
descriptiveness grounds. The relevant inquiry focuses on the
primary significance of the mark to the product's consumers. See
Boston Athletic Ass'n v. Sullivan, 867 F.2d 22, 27 (1st Cir. 1989).
The preferred form of proof includes direct evidence (such as
consumer surveys) suggesting that the average purchaser actually
regards the mark as merely descriptive of the plaintiff's product.
See Keebler Co., 624 F.2d at 375. Direct evidence is not, however,
an absolute prerequisite. See id. (noting that, in some instances,
indirect evidence may suffice). This concept dovetails neatly with
the lessened proof requirements that apply at the preliminary
injunction stage.

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finding that Borinquen enjoyed a likelihood of success on the

merits. First, M.V. states that "RICA" should be dubbed a

descriptive mark because the word, translated literally, means

"tasty" or "rich" and, therefore, describes a desirable

characteristic of a cookie or cracker. With respect to a registered

mark, however, the putative infringer's burden is not simply to show

that the mark describes a feature of the trademark holder's product;

rather, it must show that consumers regard the mark as merely

descriptive of that product. See id. at 545. Here, the record

contains no such evidence.

This shortcoming is all the more glaring because the first

language of the prototypical Puerto Rican consumer is Spanish and,

as Borinquen notes, Spanish grammatical rules caution against

attributing a purely adjectival meaning to the term "RICA" when

viewed in the context of Borinquen's logo: "Galletas RICA Sunland."

A particular Spanish-language grammatical rule — the rule of

concordance — requires strict relationships of gender and number

between adjectives and nouns. See Gerald Erichsen, Spanish for

Beginners: Noun-Adjective Agreement (2006),

http://spanish.about.com/cs/forbeginners/a/adjective_agree.htm.

Hence, Borinquen's mark would need to use the plural ("RICAS") if

it were intended to serve as a grammatically correct descriptor of

the noun "Galletas." We think it follows that the average Spanish-

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speaking consumer would be unlikely to view the non-concordant mark

as a mere descriptor for the underlying product.

M.V.'s second counter-argument is equally unconvincing. It

maintains that Borinquen's mark must be considered descriptive

because, in 1964, the Puerto Rico Supreme Court determined that the

term "Rico" (the masculine of "Rica") was merely descriptive of the

product "Café Rico" and, thus, not entitled to protection under

local law. Cooperativa de Cafeteros v. Colón Colón, 91 P.R.R. 361

(1964). However, the distinctiveness inquiry is product-specific.

See Boston Athletic Ass'n v. Sullivan, 867 F.2d 22, 27 (1st Cir.

1989) (explaining that when a party challenges the validity of a

registered mark, it must show that the primary significance of the

mark to the consuming public is to merely to describe a particular

product). A term that merely describes one product may well be

distinctive as to another.

The phrase "Café Rico," as to which the Puerto Rico court found

that the adjective merely described the noun, comports with the

Spanish-language rule of concordance for nouns and adjectives

whereas the phrase "Galletas RICA," as to which the district court

found that the adjective did not merely describe the noun, does not.

Given this fractured grammatical usage, it seems more probable that

a Spanish-speaking consumer would find "Rico" merely descriptive of

"Café" than that she would find "RICA" merely descriptive of

"Galletas."

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 If more were needed — and we doubt that it is — M.V. adduced

considerable evidence of the successful registration of other marks

including the word "rica." Although M.V. introduced this evidence

in an apparent effort to show that Borinquen's mark is weak, it

tends to undercut M.V.'s contention that the term is, as a matter

of law, merely descriptive of Borinquen's product. After all, the

PTO requires an applicant to demonstrate that its mark is

distinctive before it will approve a registration. See 15 U.S.C.

§ 1052(e). Courts frequently have accorded weight to these kinds

of PTO determinations in evaluating whether a mark is descriptive

or inherently distinctive. See, e.g., Lone Star Steakhouse &

Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 934 (4th Cir.

1995). Given the PTO's expertise in the field, we are inclined to

do so here. To that extent, then, the PTO's acceptance of these

other marks for registration supports the idea that "rica" can be

an inherently distinctive term.

For these reasons, we conclude that the evidence adduced to

date suggests that M.V. is unlikely to rebut the presumption of

distinctiveness arising from Borinquen's contestable mark.

Consequently, the district court appropriately refrained from

requiring Borinquen to prove secondary meaning.5

5
In the interest of completeness, we note that the record does
contain some evidence that bears upon the issue of secondary
meaning. However, the view we take of this issue renders
superfluous any evaluation of that evidence.

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 2. Consumer Confusion. M.V.'s remaining assignment of error

attacks the district court's determination that its use of the

"Nestlé Ricas" mark was likely to cause consumer confusion. This

court has enumerated eight factors to guide the inquiry into

likelihood of confusion:

(1) the similarity of the marks; (2) the
similarity of the goods; (3) the relationship
between the parties' channels of trade; (4) the
relationship between the parties' advertising;
(5) the classes of prospective purchasers; (6)
evidence of actual confusion; (7) the
defendant's intent in adopting its mark; and
(8) the strength of the plaintiff's mark.

Astra Pharm. Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d

1201, 1205 (1st Cir. 1983); accord Pignons S.A. de Mecanique de

Precision v. Polaroid Corp., 657 F.2d 482, 487 (1st Cir. 1981). A

proper analysis takes cognizance of all eight factors but assigns

no single factor dispositive weight. Keds, 888 F.2d at 222;

Volkswagenwerk, 814 F.2d at 817. Because likelihood of confusion

is a factbound inquiry, appellate review of a trial-level finding

on that issue is for clear error. Keds, 888 F.2d at 222.

The court below applied the eight-factor screen and concluded

that, on the whole, the evidence preponderated in favor of a finding

that M.V.'s use of its mark in Puerto Rico was likely to result in

consumer confusion. This conclusion was predicated on a measured

view of the evidence. On the one hand, the court noted that the

parties' goods were dissimilar, that no actual confusion had been

shown, and that no evidence existed that M.V. intended to mislead

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consumers. D. Ct. Op. at 6-9. On the other hand, the court found

that the remaining factors all tended to favor a likelihood of

confusion. Id. at 5-9. The court then performed the necessary

balancing and determined that the latter points outweighed the

former. Id. at 9-10.

M.V. assails this determination, arguing that the court

misapplied the eight-factor test in two principal ways: by

underestimating the significance of Borinquen's failure to present

a consumer survey designed to show actual confusion and by deeming

"RICA" a strong mark. After careful perscrutation of the record,

we reject both arguments.

To begin, a trademark holder's burden is to show likelihood of

confusion, not actual confusion. While evidence of actual confusion

is "often deemed the best evidence of possible future confusion,"

Attrezzi, LLC v. Maytag Corp., 436 F.3d 32, 40 (1st Cir. 2006),

proof of actual confusion is not essential to finding likelihood of

confusion.5 See Volkswagenwerk, 814 F.2d at 818; see also Pignons,

657 F.2d at 490 (cautioning that "[e]vidence of actual confusion is

not invariably necessary to prove likelihood of confusion").

5
M.V.'s boast that the results of its own survey increased the
importance of establishing actual confusion rings hollow. The
district court supportably found M.V.'s survey to be of scant
evidentiary value. First, that survey was constructed to determine
whether potential customers could spot differences in the products'
packaging, not to identify whether M.V.'s use of its mark created
a likelihood of confusion. D. Ct. Op. at 7. Second, the small
sample size and large margin of error combined to cast considerable
doubt on its statistical integrity. Id.

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 Historically, we have attached substantial weight to a

trademark holder's failure to prove actual confusion only in

instances in which the relevant products have coexisted on the

market for a long period of time. See, e.g., Aktiebolaget

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

(finding lack of evidence of actual confusion significant because

products had coexisted in the same market for roughly six years).

This is not such a case: M.V.'s product was introduced to the Puerto

Rican market in April of 2003, and M.V.'s own evidence suggests that

sales did not proliferate until the summer of 2004. This

corresponds to the time frame in which Borinquen discovered the

presence of Nestlé Ricas and took action to protect its mark. Since

the preliminary injunction issued just over a year later, there was

no protracted period of product coexistence. Nor is there any other

compelling reason why, in this case, survey evidence should be

required at the preliminary injunction stage. We hold, therefore,

that while survey evidence would have been helpful, it was not

indispensable to a finding of likelihood of confusion. See id.; see

also Volkswagenwerk, 814 F.2d at 818 (upholding permanent injunction

despite plaintiff's failure to produce evidence of actual

confusion).

In much the same vein, the court did not clearly err in

determining that "RICA" is a relatively strong mark. Various

factors are relevant in ascertaining the strength of a trademark,

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including the length of time the mark has been used, the trademark

holder's renown in the industry, the potency of the mark in the

product field (as measured by the number of similar registered

marks), and the trademark holder's efforts to promote and protect

the mark. See Boston Athletic Ass'n, 867 F.2d at 32; see also Keds,

888 F.2d at 222. In assessing the strength of Borinquen's mark, the

district court found that the mark had been registered for more than

three decades; that Borinquen's "RICA" was the only cookie, cracker,

or biscuit trademarked under that name in the United States; and

that Borinquen's efforts in promoting and protecting its mark were

in conformance with industry standards. D. Ct. Op. at 9. These

three findings, all of which are supported by substantial evidence

in the record, furnish ample grounding for the court's conclusion

that "RICA" should be considered a strong mark.

To say more on this issue would be supererogatory. The short

of it is that we discern no clear error in the findings of fact

underlying the district court's determination that Borinquen has a

better-than-even chance of succeeding in establishing a likelihood

of consumer confusion.

III. CONCLUSION

We need go no further. Because Borinquen's trademark is

registered, it enjoys a presumption of inherent distinctiveness.

Since M.V. failed adequately to rebut that presumption at the

preliminary injunction stage, the district court did not err in

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determining, without requiring evidence of secondary meaning, that

Borinquen's mark was likely entitled to protection. Nor did the

court clearly err in finding that M.V.'s continued use of its

competing mark probably would result in consumer confusion.

Consequently, both the court's determination that Borinquen had

established a likelihood of success on the merits of its

infringement claim and its related decision to award Borinquen

preliminary injunctive relief are unimpugnable.

Affirmed.

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