Sabinsa Corp. v. Creative Compounds, LLC

PRECEDENTIAL
UNITED STATES COURT OF APPEALS
FOR THE THIRD CIRCUIT
__________

No. 08-3255
__________

SABINSA CORPORATION,
Appellant.

v.

CREATIVE COMPOUNDS, LLC

On Appeal from the United States District Court
for the District of New Jersey
(D. C. No. 2-04-cv-04239)
District Judge: Hon. Dennis M. Cavanaugh

Argued on May 13, 2009

Before: AMBRO and ROTH, Circuit Judges
and FISCHER*, District Judge

*Judge Nora Barry Fischer, United States District
Judge for the Western District of Pennsylvania, sitting by
designation.
 (Opinion filed: July 9, 2010)

James H. Hulme, Esquire (Argued)
Arent, Fox, Kintner, Plotkin & Kahn, LLP
1050 Connecticut Avenue, N.W., Suite 500
Washington, DC 20036

Counsel for Appellant Sabinsa Corporation

Sean R. Kelly, Esquire
Saiber, LLC
One Gateway Center, 13 th Floor
Suite 300
Newark, NJ 07102-5311

Counsel for Appellant Sabinsa Corporation

Brian J. McMahon, Esquire
Kevin McNulty, Esquire (Argued)
Gibbons, P. C.
One Gateway Center
Newark, NJ 07102-5310

Counsel for Appellee Creative Compounds, LLC

OPINION

2
ROTH, Circuit Judge:

Sabinsa Corporation appeals the District Court’s
judgment in favor of Creative Compounds, LLC, on Sabinsa’s
trademark infringement and unfair competition claims. The
District Court found that there was no likelihood of confusion
between Sabinsa’s mark, ForsLean, and Creative Compounds’s
mark, Forsthin, both of which refer to Coleus forskohlii extract,
an ingredient used in weight management products. Because the
District Court erred in its findings on the Lapp factors and its
ultimate finding on likelihood of confusion, we will reverse the
judgment. Further, because the undisputed facts weigh heavily
in favor of Sabinsa so that any reasonable fact finder, weighing
the Lapp factors properly, would find that Sabinsa had
demonstrated a likelihood of confusion, we conclude that there
is no need to remand for a re-weighing by the District Court of
the Lapp factors. We therefore remand this case for entry of
judgment in favor of Sabinsa.

I. Background

The following facts are undisputed.

Forskohlin is an extract derived from the roots of the
plant Coleus forskohlii, a member of the mint family, found
primarily in India. It is manufactured by harvesting and drying
the Coleus forskohlii root and then extracting the forskohlin into
a highly-concentrated slurry. The slurry is then combined with
inactive ingredients to make various concentrations, which are
sold in powder form.

3
 Sabinsa, an ingredient supplier for nutraceutical1
manufacturers, was founded in 1988 by Dr. Muhammed Majeed,
a scientist with experience in the pharmaceutical industry. In
1996, Dr. Majeed began research into the potential use of
forskohlin to promote lean body mass. After completing a
clinical trial, Sabinsa filed an intent-to-use application for the
trademark, ForsLean, formed by combining “Fors” from
forskohlin with “Lean” for lean body mass. Sabinsa first
marketed ForsLean to nutraceutical manufacturers in 2000.
Sabinsa has also created pamphlets marketing ForsLean directly
to the public. ForsLean was Sabinsa’s highest revenue-
generating product for at least five years preceding the trial in
the District Court.

In 2003, a severe drought struck India and affected
Sabinsa’s supply of forskohlin. As a result, Sabinsa both
worked to keep its customers interested in ForsLean and spent
significant resources helping farmers in India cultivate Coleus
forskohlii to ensure a continued supply in the future. Forskohlin
was available again in the spring of 2004, in part due to
Sabinsa’s efforts. Sabinsa thereafter created the “ForsLean

promise,” a commitment to its customers to ensure the supply of
forskohlin in the future.

Creative Compounds is also an ingredient supplier to the
nutraceutical industry although it operates with only seven

1
The nutraceutical industry provides ingredients for suppliers,
manufacturers, and marketers of nutritional supplements.

4
employees, none of whom is a scientist or Ph.D., and it conducts
no research and development. Creative Compounds began
selling forskohlin at the end of 2002. It did not, however, adopt
the trade name Forsthin for its product until the spring of 2004
– just as Sabinsa’s supply problems were coming to an end.
Though there is no indication that Creative Compounds ever had
a problem with supply associated with the drought in India, it
heavily promoted “The Return of Coleus” as it introduced its
new Forsthin brand: “Not long ago, Coleus was one of the most
powerful options in stimulant-free weight loss. That was until
raw material shortages and low-quality extracts made
maintaining a Coleus formula a nightmare. Those days are
over.” Creative Compounds made very few sales of forskohlin
in 2002, 2003, and 2004, but sold more than 1000 kilograms in
2005, nearly 600 kilograms in 2006, and nearly 700 kilograms
in 2007.

Sabinsa sent a cease-and-desist letter to Creative
Compounds in the summer of 2004, soon after the latter began
using the name Forsthin. Within a week and without contacting
Sabinsa, Creative Compounds filed a declaratory judgment
action in the United States District Court for the District of
Missouri. Sabinsa then filed this suit, and the Missouri suit was
dismissed in favor of this one.

Sabinsa’s Complaint alleged five claims, all of which
required that it prove both its ownership of a valid and legally
protectable trademark and a likelihood of confusion caused by
Creative Compounds’s use of the mark Forsthin. E.T. Browne
Drug Co. v. Cococare Prods., Inc., 538 F.3d 185, 191 (3d Cir.

5
2008). Creative Compounds has conceded that Sabinsa owns
the ForsLean mark and that the mark is valid and legally
protectable. Therefore, the only issue for trial was “whether or
not Defendant’s use of the mark Forsthin is likely to create
confusion in the marketplace when compared to Plaintiff’s mark
Fors[L]ean.”

On June 16, 2008, after a bench trial, the District Court
read into the record an oral decision in favor of Creative
Compounds. Sabinsa appealed. We have jurisdiction pursuant
to 28 U.S.C. § 1291.

II. Standard of Review

We exercise plenary review over the District Court’s
legal conclusions regarding the Lanham Act. See Checkpoint
Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270,
279 (3d Cir. 2001). Factual findings concerning the likelihood
of confusion are reviewed for clear error. See A & H
Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198,
210 (3d Cir. 2000). “Clear error exists when, giving all
deference to the opportunity of the trial judge to evaluate the
credibility of witnesses and to weigh the evidence, we are left
with a definite and firm conviction that a mistake has been
committed.” Id. at 194 (quotation marks and citation omitted).
Though “[l]ikelihood of confusion is a factual question[,] . . .
legal principles govern what evidence may, or must, be
considered by the District Court in reaching that conclusion, and
also what standards apply to its determination.” Id. at 210.

Pursuant to Federal Rule of Civil Procedure 52, a trial

6
court must make clear factual findings to support its
conclusions. 9 Wright & Miller, Federal Practice & Procedure
§ 2574, at 690. Rule 52 is not satisfied “by the statement of the
ultimate fact without the subordinate factual foundations for it
which also must be the subject of specific findings.” O'Neill v.
United States, 411 F.2d 139, 146 (3d Cir. 1969). “If
[subordinate findings] did not enter into the process by which
the ultimate factual finding was made, then it was without any
supporting foundation.” H. Prang Trucking Co., Inc. v. Local
Union No. 469, 613 F.2d 1235, 1238 (3d Cir. 1980)(citation
omitted).

III. The District Court’s Likelihood of Confusion Analysis

“To prove likelihood of confusion, plaintiffs must show
that consumers viewing the mark would probably assume the
product or service it represents is associated with the source of
a different product or service identified by a similar mark.”
Checkpoint Sys., 269 F.3d at 280 (internal quotation marks
removed). In Interpace Corp. v. Lapp, Inc., we set forth the
factors which may indicate a likelihood of confusion:

(1) the degree of similarity between the owner's mark and
the alleged infringing mark;
(2) the strength of the owner’s mark;
(3) the price of the goods and other factors indicative of
the care and attention expected of consumers when
making a purchase;
(4) the length of time the defendant has used the mark
without evidence of actual confusion arising;
(5) the intent of the defendant in adopting the mark;

7
 (6) the evidence of actual confusion;
(7) whether the goods, though not competing, are
marketed through the same channels of trade and
advertised through the same media;
(8) the extent to which the targets of the parties’ sales
efforts are the same;
(9) the relationship of the goods in the minds of
consumers because of similarity of functions; and
(10) other factors suggesting the consuming public might
expect the prior owner to manufacture a product in the
defendant’s market or that he is likely to expand into that
market.

721 F.2d at 463. “None of these factors is determinative in the
likelihood of confusion analysis and each factor must be
weighed and balanced one against the other.” Checkpoint Sys.,
269 F.3d at 280. In reviewing a district court’s analysis of the
Lapp factors, we can reverse the court’s conclusions if the
relevant factors are not properly set forth and not properly
weighed. See Kos Pharmaceuticals v. Andrx Corporation, 369
F. 3d 700, 711-12 (3d Cir. 2004).

In Kos, a trademark case involving the marks
“ADVICOR” and “ALTOCOR,” we reversed a district court’s
likelihood of confusion decision because it had erred in its
analysis of mark similarity, overemphasized customer
sophistication, applied the wrong standards regarding intent, and
ignored several other relevant Lapp factors. Id. at 711–12. The
same district judge made similar errors here. In finding that
there was no likelihood of confusion between ForsLean and
Forsthin, the District Court engaged in detailed analysis of only

8
three of the relevant Lapp factors and failed to discuss much of
the evidence presented by Sabinsa. The District Court then
asserted, “This Court is not going to comment on all of the
testimony offered at trial. Suffice it to say, I am satisfied that
the testimony taken as a whole amply supports the Court’s
decision.” However, while it is true that a district court may
find that “certain of the Lapp factors are inapplicable or
unhelpful in a particular case,” the court must still “explain its
choice not to employ those factors.” See A & H Sportswear, 237
F3d at 214 n.8. Here, the District Court failed to explain
whether it viewed these remaining factors as neutral or
irrelevant or how it weighed and balanced the combined factors.
Further, its reasoning concerning the three factors it chose to
analyze is flawed.

Typically, when a district court fails adequately to
support its findings, we merely remand for a re-weighing of the
applicable factors. Where the facts are largely undisputed,
however, “‘we need not remand’ if application of the correct
standard could support only one conclusion.” Kos, 369 F.3d at
712 (quoting Duraco Prods., Inc. v. Joy Plastic Enters., Ltd., 40
F.3d 1431, 1451 (3d Cir. 1994)); see also Lapp, 721 F.2d at 460
(reversing and directing entry of judgment). Such a remand
would be a waste of judicial resources. In Kos, for example, we
observed, “Regardless of how the factual disputes might be
resolved, any reasonable factfinder weighing the Lapp factors in
accordance with the correct legal standards would hold [in favor
of Kos].” Kos, 369 F.3d at 725. Accordingly, as we did in that
case, we will review the findings of the District Court, along
with the evidence presented by the parties, to determine
whether, in light of the controlling legal principles, the facts

9
and/or the failures in the District Court’s analysis compel a
result as a matter of law.

IV. The Individual Lapp Factors

A. Similarity of Marks (Lapp Factor One)

“The single most important factor in determining
likelihood of confusion is mark similarity.” A & H Sportswear,
237 F.3d at 216. Marks are confusingly similar “if ordinary
consumers would likely conclude that [the two products] share
a common source, affiliation, connection or sponsorship.”
Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 477
(3d Cir. 1994). The proper test is not a side-by-side comparison
but, rather, “whether the labels create the same overall
impression when viewed separately.” Kos, 369 F.3d at 713.
Overall impression is created by the sight, sound, and meaning
of the mark. See A & H Sportswear, 237 F.3d at 217. “‘The
degree of similarity . . . needed to prove likely confusion will
vary with the difference in the goods . . .. Where the goods . . .
are directly competitive, the degree of similarity required to
prove a likelihood of confusion is less than in the case of
dissimilar products.’” Kos, 369 F.3d at 713 (quoting 3 J.
Thomas McCarthy, M CC ARTHY ON T RADEMARKS AND U NFAIR
C OMPETITION § 23:20.1 (4th ed. 2003)).

The District Court found that this factor favors Creative
Compounds, asserting that, beyond the shared letters “fors,”
ForsLean and Forsthin have “no other similarity.” The court’s
reasoning, however, contains clear errors. First, for its visual
analysis, the District Court focused on minute differences in the

10
products’ logos while ignoring evidence that both marks are
often used in plain text without the surrounding graphics.2 The
District Court devoted only one sentence to a visual comparison
of the words ForsLean and Forsthin apart from their logos and
that sentence only contrasted the words “thin” and “lean” rather
than the “overall impression.” However, looked at as a whole,
ForsLean and Forsthin share all but three letters, have the same
dominant syllable and end letter, and have the same number of
syllables. Under these circumstances, the District Court clearly
erred in finding that the words are not visually similar. See Kos,
369 F.3d at 713 (because ADVICOR and ALTOCOR are
“[b]oth . . . seven-letter, three-syllable words that begin and end
with the same letters and the same sounds . . . the district court
clearly erred in failing to recognize that this factor weighs in
[the senior user’s] favor”).

Likewise, in analyzing the “connotative differences”
between ForsLean and Forsthin, the District Court ignored
evidence and failed to make sufficient subordinate findings.
The court stated that it “accepts Defendant’s arguments that a

2
Even the District Court’s comparison of the logos appears
misguided. The “ordinary customer” is supposed to have “only
general recollection” of one mark when encountering the
second. See Fisons Horticulture, 30 F.3d at 477–78. By that
standard, the two logos seem strikingly similar: Each contains
the respective product name, with the second syllable set off,
placed in front of foliage to symbolize the Coleus forskohlii
plant. Alone, however, this likely would not merit vacatur,
given the deference owed to the District Court’s findings.

11
different commercial impression is made by the word ‘lean’
versus ‘thin’” and that “[t]hin would convey to the consumer .
. . weight loss, whereas lean would convey a lean body type.”
As an initial matter, again the District Court erred by comparing
“lean” and “thin” rather than ForsLean and Forsthin. See Fisons
Horticulture, 30 F.3d at 477–78. More centrally, the District
Court’s finding is contrary to undisputed evidence at trial, none
of which was cited in its opinion: Creative Compounds uses
“thin” and “lean” interchangeably in its other weight loss
products, Creative Compounds’s sales manager and one of its
customers conceded at trial that “lean” invokes “weight loss”
and that Sabinsa promotes ForsLean to end users as a “weight
management” product. Indeed, during the trial, the District
Court took “judicial notice that there are products out there,
when they use the word ‘lean,’ that are weight loss products.”
Its ultimate finding that the words “thin” and “lean” “would
convey” different mental impressions to consumers is
impossible to reconcile with this earlier recognition that the
terms are interchangeable to consumers.

In sum, the District Court clearly erred in failing to find
that this factor favors Sabinsa.

B. Strength of Mark (Lapp Factor Two)

To determine the strength of the mark, courts look to (1)
the inherent features of the mark contributing to its
distinctiveness or conceptual strength and (2) the factual
evidence of the mark’s commercial strength or of marketplace
recognition of the mark. See A & H Sportswear, 237 F.3d at
221.

12
 Courts classify the distinctiveness or conceptual strength
of a mark as either (1) generic, like “Diet Chocolate Fudge
Soda”; (2) descriptive, like “Security Center”; (3) suggestive,
like “Coppertone”; or (4) arbitrary or fanciful, like “Kodak.” Id.
Arbitrary or fanciful marks use terms that neither describe nor
suggest anything about the product. Id. Suggestive marks
require consumer “imagination, thought, or perception” to
determine what the product is. Id. Descriptive marks “forthwith
convey[] an immediate idea of the ingredients, qualities or
characteristics of the goods.” Id. Generic marks “function as
the common descriptive name of a product class.” Id.

The District Court acknowledged that the “Fors” in
ForsLean and Forsthin “is apparently an abbreviation of the
generic term of the product, Coleus forskohlii.” It then
concluded that “[fors] is not a mere arbitrary term, but, rather,
a prefix used by each party combined with either the word ‘lean’
or ‘thin.’” Never, however, did the court assign a classification
for the ForsLean mark; rather, in evaluating the mark’s strength,
the court merely stated:

Defendant argues that Plaintiff’s mark is
conceptually weak because it is highly suggestive.
Sabinsa argues that its mark is commercially
strong based on its advertising efforts, press
mentions and its receipt of two industry awards
regarding its product. However, testimony at trial
reflected the parties’ sophisticated target
customers were aware of both parties’ marks and
that there is no confusion. This factor does not
support Plaintiff’s position.

13
This analysis amounts to legal error, and it culminated in a
clearly erroneous finding.

First, it does not follow that because Sabinsa and then
Creative Compounds used “fors” as an abbreviation for Coleus
forskohlii, the term is conceptually weak. As Sabinsa points out,
the “V” in V-8 stands for “vegetable” and the “8” stands for the
fact that the juice has eight vegetables, but V-8 is still an
arbitrary term. See Fisons Horticulture, 30 F.3d at 478 n.17
(citing Standard Brands, Inc. v. Smidler, 151 F.2d 34, 36 (2d
Cir. 1945) (“The letter V by itself no more signifies ‘vegetable’
than it does any other word of which it is the initial letter . . . .
As much is true of the figure 8 . . . .”)). There was no evidence
presented that “fors” is a generic term for forskohlin.
Accordingly, to the extent that the District Court meant to imply
that the parties’ use of “fors” as an abbreviation makes ForsLean
a generic or descriptive term, this is not the law.

Second, beyond its brief discussion of the abbreviation
“fors,” the District Court did not analyze either the conceptual
or commercial strength of ForsLean. Instead, as set forth above,
it described the parties’ arguments and then reiterated its finding
that there had been no confusion between the two companies
among its “sophisticated customers.” Actual confusion and the
sophistication of a party’s customers, however, are different
prongs of the Lapp test and were “impermissibly conflated” by
the District Court. See Kos, 369 F.3d at 722. Creative
Compounds argues that the District Court merely found that the
lack of confusion among the parties’ customers “trump[ed]” the
parties’ arguments concerning the conceptual and commercial
strength of ForsLean and that the “strength of the mark is a less

14
significant ‘confusion’ factor when the buyers know the actual
source of each product.” This argument mischaracterizes the
court’s analysis. If the court had meant to find that the strength
factor was in Sabinsa’s favor but less important than other
factors, it could have said so. Instead, the District Court found
that the strength of the ForsLean mark “does not support
Plaintiff’s position.” This was clear error.

Once again, because the facts underlying the strength
analysis are manifest and undisputed, we will review the facts
and law to determine whether they compel a particular result.
Sabinsa argues that ForsLean is arbitrary or suggestive, while
Creative Compounds argues that it is a descriptive mark because
it combines a description of the product (“fors”) with its
intended application (“lean”). While “lean” is certainly a
generic term, “fors” is not yet one. The parties to this case are
the only two that use “fors” as an abbreviation for forskohlin,
and while ForsLean is not a term that was created completely
out of whole cloth, it certainly requires consumer “imagination,
thought, or perception” to determine the nature of the product.
See A & H Sportswear, 237 F.3d at 222. It would, thus, appear
that ForsLean is a suggestive mark. Moreover, it was
undisputed that the ForsLean mark is commercially strong.
Accordingly, this factor favors Sabinsa as a matter of law.

C. Purchasers’ Care and Sophistication (Lapp Factor
Three)

“When consumers exercise heightened care in evaluating
the relevant products before making purchasing decisions,
courts have found there is not a strong likelihood of confusion.

15
Where the relevant products are expensive, or the buyer class
consists of sophisticated or professional purchasers, courts have
generally not found Lanham Act violations.” Checkpoint Sys.,
269 F.3d at 284. However, where the group of buyers is a
combination of professionals and ordinary consumers, the class
as a whole is not held to the higher standard of care. Id. at 285.

Under the heading “[p]rice and customer sophistication,”
the District Court found that “the product is expensive and the
customers are sophisticated purchasers who purchase the
product after careful thought and analysis. . . . Usually, the
customers are repeat customers. These customers exercise a
high level of care, and, therefore, eliminates [sic] the likelihood
of confusion.” The District Court also noted that “these
products are not sold over the counter” and that “both parties’
customers regularly ask technical questions about the scientific
and safety merits of the product prior to purchase.” The court
thus concluded that this factor favors Creative Compounds. The
court further weighed this factor heavily in its ultimate
conclusion that there is no likelihood of confusion.

The District Court’s reasoning inappropriately treats the
products’ direct buyers— here, the manufacturers of
nutraceuticals—as the only relevant consumers. In Kos, we
criticized the parties and the district court for treating medical
professionals as the only relevant consumers of pharmaceuticals,
noting that “drugs are increasingly marketed directly to potential
patients through, for example, ‘ask-your-doctor-about-Brand-X’
style advertising.” See Kos, 369 F.3d at 715–16. Here, Sabinsa
presented evidence—completely disregarded by the District
Court—that it directly markets ForsLean through just this type

16
of advertising, distributing pamphlets to retail outlets for
distribution to the public. The appropriate “standard of care to
be exercised,” therefore, should have been “equal to that of the
least sophisticated consumer in the class”—the general
consumer reading a ForsLean pamphlet who then chooses a
nutraceutical containing forskohlin. See Checkpoint Sys., 269
F.3d at 285 (quoting Ford Motor Co. v. Summit Motor Prods.,
Inc., 930 F.3d 277, 293 (3d Cir. 1991)); cf. Morgenstern Chem.
Co. v. G. D. Searle & Co., 253 F.2d 390, 392 (3d Cir. 1958)
(recognizing that “physicians and pharmacists . . . are carefully
trained to detect differences in the characteristics of
pharmaceutical products,” but holding that this “does not open
the door to the adoption by manufacturers of medicines of trade-
marks or names which would be confusingly similar to anyone
not exercising such great care”). The District Court thus
committed legal error when it concluded that this factor weighs
heavily in favor of Creative Compounds.

Once again, the facts are undisputed. Though the price
of forskohlin to suppliers is relatively high, the neutraceuticals
that contain forskohlin are clearly affordable to most interested
consumers. Further, the sales process is as quick as a trip to the
check-out counter. In addition, nutraceuticals, unlike
pharmaceuticals, require no consultation with a professional and
may often be impulse purchases. Moreover, there was no
showing that consumers of nutraceuticals are highly
sophisticated. Accordingly, this factor weighs in favor of
Sabinsa.

D. Length of Time Without Confusion (Lapp Factor
Four)/Evidence of Actual Confusion (Lapp Factor Six)

17
 Evidence of actual confusion is frequently difficult to
find. See Checkpoint Sys., 269 F.3d at 291. As a result, we
have determined that actual confusion is not necessary to
demonstrate a likelihood of success. See Fisons Horticulture,
30 F.3d at 472. Evidence of actual confusion is nevertheless
highly probative of a likelihood of confusion. See Checkpoint
Sys., 269 F.3d at 291. It was undisputed that ForsLean and
Forsthin had co-existed for approximately three-and-a-half years
at the time of trial without any evidence of actual confusion.
Moreover, Sabinsa failed to submit survey evidence concerning
actual confusion. Accordingly, the District Court did not err in
concluding that these factors favor Creative Compounds.

E. Intent of the Defendant in Adopting the Mark
(Lapp Factor Five)

Evidence of a defendant’s intent is not a prerequisite for
finding a Lanham Act violation; such evidence, however,
weighs heavily in favor of finding a likelihood of confusion.
See Id. at 286. In evaluating this factor, courts must look at
whether the defendant chose the mark to intentionally confuse
consumers, and thereby capitalize on the senior user’s goodwill,
and whether the defendant gave adequate care to investigating
its proposed mark. See Kos., 369 F.3d at 721. “[A] defendant’s
mere intent to copy, without more, is not sufficiently probative
of the defendant’s success in causing confusion to weigh such
a finding in the plaintiff’s favor; rather, defendant’s intent will
indicate a likelihood of confusion only if an intent to confuse
consumers is demonstrated via purposeful manipulation of the
junior mark to resemble the senior’s.” A & H Sportswear, 237
F.3d at 225–26.

18
 The District Court did not mention specific evidence
regarding Creative Compounds’s good or bad intent; rather, the
court found that “there is nothing in the record to suggest that
Creative Compounds attempted to pass off its goods as
Sabinsa’s. In fact, the evidence is to the contrary: Creative
Compounds has made efforts to distinguish itself and its
Forsthin product from Sabinsa.” The record belies these
conclusions. In fact, far from there being “nothing in the record
to suggest” bad intent, there was ample evidence that Creative
Compounds attempted to pass off its product as Sabinsa’s.
Creative Compounds’ personnel offered inconsistent testimony
concerning their trademark searches prior to the company’s
adopting the Forsthin mark. There was also evidence that
Creative Compounds’s President and CEO falsely claimed to
have conducted research that expanded on Sabinsa’s discoveries
regarding forskohlin. In addition, the timing of Creative
Compounds’s adoption of the Forsthin mark and its pamphlet
touting the “return of Coleus”—both of which coincided with
ForsLean renewing its supply of forskohlin following the
drought in India and issuing a “ForsLean promise” to its
customers regarding continued supply—would support an
inference that Creative Compounds intended to trade on
Sabinsa’s goodwill and confuse customers as to the source of its
product. Indeed, the fact that Creative Compounds chose “fors,”
not “coleus,” or “cole,” or “col,” as the first syllable of its brand
name, while also promoting the “return of Coleus,” would
suggest that the adoption of the “Forsthin” brand name was
aimed at “ForsLean.”

The District Court was, of course, permitted to credit or
discredit certain pieces of testimony and weigh them

19
accordingly. But in stating that there was “nothing in the record
to suggest” Creative Compounds’s bad intent, the District Court
failed even to acknowledge the existence of contradictory
evidence. Accordingly, its conclusory finding that this factor
favors Creative Compounds is clearly erroneous.

Sabinsa argues that the District Court failed to apply the
proper standards governing intent and that Creative
Compounds’s behavior in choosing a mark so similar to
ForsLean should at least be considered reckless, rendering it
sufficient to weigh this factor in Sabinsa’s favor. In Kos, we
held that the defendant’s adoption of the ALTOCOR mark, after
Kos had successfully used the ADVICOR mark for similar
goods and with notice of its objections, was sufficient to weigh
this factor in favor of Kos. See 369 F.3d at 721–22. Because
the District Court in the instant case ignored whole swaths of
evidence and failed to make any subordinate findings regarding
intent, however, it is impossible to determine whether it
appropriately comprehended the standard. Moreover, in contrast
to the ADVICOR mark, both “ForsLean” and “Forsthin” bear
some relationship to the underlying product; Creative
Compounds’s adoption of its mark, alone, therefore cannot be
considered enough to weigh the intent factor for Sabinsa.
Accordingly, unlike the other factors, the intent factor involves
disputed factual issues, and we are unable to hold that it favors
either party as a matter of law.

F. Whether the Goods are Marketed Through the
Same Channels of Trade and Advertised in the Same Media
(Lapp Factor Seven)/Extent to Which Targets of the Parties’
Sales Efforts are the Same (Lapp Factor Eight)

20
 “The greater the similarity in advertising and marketing
campaigns, the greater the likelihood of confusion.” Checkpoint
Sys., 269 F.3d at 288-89 (citation omitted). A court should
consider the trade exhibitions, publications, and other media the
parties use in marketing their products. See id at 489. Similarly,
when the parties target their sales efforts to the same group of
consumers, there is a greater likelihood of confusion between
the two marks. See id.

The District Court did not key its oral findings to these
factors, but nonetheless noted that the parties were
“competitors.” In any event, it is undisputed that the parties sell
the same product through the same channels of trade and the
same forms of advertising to the same target group of customers.
Accordingly, these factors weigh in favor of Sabinsa as a matter
of law.

G. Relationship of the Goods in the Minds of
Consumers (Lapp Factor Nine)

When ruling on this factor, a court should look at “how
similar, or closely related, the products are.” Kos., 369 F.3d at
723. If the products “fall under the same general product
category but operate in distinct niches,” they will probably not
be closely related. Checkpoint Sys., 269 F.3d at 288 (holding
that the District Court did not clearly err in finding that parties’
products were unrelated even though both fell under the broader
category of “corporate security” where the plaintiff focused on
physical security and the defendant focused on information and
computer security). “The question is whether the consumer
might . . . reasonably conclude that one company would offer

21
both of these related products.” Fisons Horticulture, 30 F.3d at
481.

The District Court made no findings as to this factor, but
it is undisputed that the products are physically identical.
Creative Compounds argues, as it did with respect to mark
similarity, that Forsthin is a “weight loss” product while
ForsLean is a “lean body mass” product. This argument is
misplaced because the products are physically identical and both
are marketed as weight management products. Creative
Compounds further argues that buyers purchase the products
directly from their sources and that “they are necessarily aware”
that ForsLean and Forsthin are sold by separate companies.
Customer sophistication, however, is Lapp factor three. Lapp
factor nine focuses not on consumer sophistication but on the
products themselves, since the determination is whether
consumers may see them as related. See Kos, 369 F.3d at 723.
Using that standard, this factor clearly weighs in favor of
Sabinsa. See Fisons, 30 F.3d at 481 (citing cases where the
relationship of goods was close enough to find likelihood of
confusion, including: women’s scarves and apparel with
women’s cosmetics and fragrances; liquor with restaurant
selling liquor; batteries and lamps with light bulbs and lamps;
and pipe tobacco and bar accessories with scotch whisky).

H. Other Facts Suggesting the Public Might Expect
the Prior Owner to Manufacture Both Products (Lapp
Factor Ten)

In making this final determination under the Lapp test,
courts should “look at the nature of the products or the relevant

22
market, the practices of other companies in the relevant fields,
any other circumstances that bear on whether consumers might
reasonably expect both products to have the same source.” Kos,
369 F.3d at 724. The District Court made no findings not
encompassed by the other factors, and neither party argues that
any relevant evidence exists. Accordingly, this factor is neutral.

V. Weighing the Lapp Factors

The most important factors, mark similarity and mark
strength, favor Sabinsa. ForsLean and Forsthin are similar in
appearance and meaning, and ForsLean is entitled to broad
protection because it is a strong mark both conceptually and
commercially. Moreover, ForsLean and Forsthin are physically
identical, they are marketed to the same customers in the same
ways, and the products’ ultimate consumers do not exercise a
particularly high level of care and sophistication when
purchasing nutraceuticals. Accordingly, factors one, two, three,
seven, eight, and nine favor Sabinsa as a matter of law. In
contrast, since the District Court’s findings regarding lack of
actual confusion are supported by the record, factors four and
six favor Creative Compounds.

There is a factual dispute concerning Creative
Compounds’s intent in creating its mark. Even assuming that
the District Court would completely discredit the evidence of
bad intent, however, it would be clear error to allow the factors
in favor of Creative Compounds to outweigh Sabinsa’s strong
showing on mark similarity and the remaining factors. We have
repeatedly held that neither intent nor actual confusion are
prerequisites to a finding of likelihood of confusion. See

23
Checkpoint Sys., 269 F.3d at 286, 291. As the Court of Appeals
for the Second Circuit has observed, “intent is largely irrelevant
in determining if consumers likely will be confused as to source.
The history of advertising suggests that consumer reactions
usually are unrelated to manufacturer intentions.” Lois
Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867,
875 (2d Cir. 1986). Likewise, we have recognized that evidence
of actual confusion is often difficult to find because many
instances go unreported. Checkpoint Sys., 269 F.3d at 291.

As we did in Kos, we have carefully considered whether
to direct the District Court on remand to re-weigh the
Lapp factors in light of the proper legal standards. We conclude
once again “that doing so would serve no useful purpose . . .
[and] waste judicial resources.” See Kos, 369 F.3d at 725. The
undisputed facts weigh heavily in favor of Sabinsa as a matter
of law, and any reasonable factfinder weighing the Lapp factors
in accordance with the correct legal standards would hold that
Sabinsa had demonstrated a likelihood of confusion. See id.; cf.
Fisons, 30 F.3d at 482 (Garth concurring) (“I can see no purpose
in remanding for retrial of Fisons’ Lanham Act claims when it
is so evident that the marks at issue here are confusingly

similar.”). Accordingly, we see no reason to remand for further
analysis on likelihood of confusion.

VI. Conclusion

For the foregoing reasons, we will reverse the judgment
in favor of Creative Compounds and remand this case for entry

24
of judgment in favor of Sabinsa and for other proceedings not
inconsistent with this opinion.

25
 Sabinsa Corp. v. Creative Compounds LLC
No. 08-3255

AMBRO, Circuit Judge, concurring

I join Judge Roth’s excellent opinion in full, and write separately only to

emphasize two unusual features of this case. First, Sabinsa offered no evidence of actual

confusion, a factor that we have previously described as “highly probative” in this

context. Checkpoint Sys. v. Check Point Software Techs., Inc., 269 F.3d 270, 291 (3d Cir.

2001). This is especially concerning here, where Sabinsa could have easily conducted a

survey of customers to assess actual confusion in the relevant market. Given this, we

could reasonably infer that Sabinsa expected that any survey results would undermine its

case. Nonetheless, “[e]vidence of actual confusion is not required,” and Judge Roth’s

Lapp analysis convinces me that, “while evidence of actual confusion would strengthen

plaintiff’s case, it is not essential.” Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30

F.3d 466, 476 (3d Cir. 1994).

Second, the District Court concluded that the “consumers who purchase[d] these

products [we]re sophisticated users in the business of marketing and/or manufacturing

dietary supplements.” Indeed, the record suggests that the parties’ primary targets were

the manufacturers of retail items and not either retailers or retail consumers. Because

manufacturing requires a base level of expertise and attention to ingredients, in the mine-

run case such purchasers are expected to be sophisticated enough to distinguish between

brands—even when the relevant brands have names as similar as “Forsthin” and
“ForsLean.” As we have previously explained, “[w]hen consumers exercise heightened

care in evaluating the relevant products before making purchasing decisions, courts have

found there is not a strong likelihood of confusion.” Checkpoint, 269 F.3d at 284. Yet

Judge Roth’s opinion again persuades me that other factors in the Lapp analysis,

including mark strength and mark similarity, outweigh concerns about the sophistication

and care of the target audience. Furthermore, there is evidence in the record that weakens

the District Court’s analysis (or at least the weight it attributed to this factor), including

evidence that manufacturers in this specific industry vary considerably in overall

sophistication and care.

2