A&F and Victoria's Secret Court Cases For IPR SBMSN

189 U.S.P.Q. 759, 189 U.S.P.Q.
769
ABERCROMBIE & FITCH COMPANY, Plaintiff-Appellant,

v.
HUNTING WORLD, INCORPORATED, Defendant-Appellee.
No. 21, Docket 74-2540.
United States Court of Appeals,

Second Circuit.
Argued Sept. 18, 1975.
Decided Jan. 16, 1976.
Opinion on Limited Rehearing Feb. 26, 1976.
Richard H. Wels, New York City (Moss, Wels & Marcus, New York City, of counsel), for defendant-
appellee.
Roy C. Hopgood, New York City (Paul H. Blaustein, and Hopgood, Calimafde, Kalil, Blaustein &
Lieberman, New York City, of counsel), for plaintiff-appellant.
Before FRIENDLY, TIMBERS and GURFEIN, Circuit Judges.
FRIENDLY, Circuit Judge:
1
This action in the District Court for the Southern District of New York by Abercrombie & Fitch
Company (A&F), owner of well-known stores at Madison Avenue and 45th Street in New York City and
seven places in other states.1 against Hunting World, Incorporated (HW), operator of a competing
store on East 53rd Street, is for infringement of some of A&F's registered trademarks using the word
'Safari'. It has had a long and, for A&F, an unhappy history. On this appeal from a judgment which not
only dismissed the complaint but canceled all of A&F's 'Safari' registrations, including several that
were not in suit, we relieve A&F of some of its unhappiness but not of all.
I.
The complaint, filed in January, 1970, after describing the general nature of A&F's business,
reflecting its motto, "The Greatest Sporting Goods Store in the World," alleged as follows: For many
years A&F has used the mark 'Safari' on articles "exclusively offered and sold by it." Since 1936 it has
used the mark on a variety of men's and women's outer garments. Its United States trademark
registrations include:
3
Trademark Number Issued Goods
Safari 358,781 7/26/38 Men's and Women's outer
garments, including hats.
Safari Mills2 125,531 5/20/19 Cotton Piece goods.

Safari 652,098 9/24/57 Men's and Women's outer
garments, including shoes.
Safari 703,279 8/23/60 Woven cloth, sporting goods,
apparel, etc.
A&F has spent large sums of money in advertising and promoting products identified with its mark
'Safari' and in policing its right in the mark, including the successful conduct of trademark
infringement suits. HW, the complaint continued, has engaged in the retail marketing of sporting
apparel including hats and shoes, some identified by use of 'Safari' alone or by expressions such as
'Minisafari' and 'Safariland'. Continuation of HW's acts would confuse and deceive the public and
impair "the distinct and unique quality of the plaintiff's trademark." A&F sought an injunction against
infringement and an accounting for damages and profits.
HW filed an answer and counterclaim. This alleged, inter alia, that "the word 'safari' is an ordinary,
common, descriptive, geographic, and generic word" which "is commonly used and understood by the
public to mean and refer to a journey or expedition, especially for hunting or exploring in East Africa,
and to the hunters, guides, men, animals, and equipment forming such an expedition" and is not
subject to exclusive appropriation as a trademark. HW sought cancellation of all of A&F's registrations
using the word 'Safari' on the ground that A&F had fraudulently failed to disclose the true nature of
the term to the Patent Office.
HW having moved for summary judgment, Judge Lasker granted this only in part, 327 F.Supp. 657
(S.D.N.Y.1971). He held, 327 F.Supp. at 662, that:Although "safari" is a generic word, a genuine issue
of fact exists as to whether the plaintiff has created a secondary meaning in its use of the word
"identifying the source" and showing that "purchasers are moved to buy it because of its source."
7
On the other hand, he concluded that A&F had no right to prevent HW from using the word 'Safari'
to describe its business as distinguished from use in the sale of a particular product3 a conclusion we
do not understand to be disputed; that HW had not infringed A&F's registered mark using the word
'Safari' under its brand name on a "classical safari hat" or in advertising this as "The Hat for Safari"
since such use was purely descriptive, 327 F.Supp. at 664; that HW had also not infringed by using
the term 'Minisafari' as a name for its narrower brimmed safari hats, and that HW was entitled to use
the word 'Safariland' as the description of an area within its shop and as the name of a corporation
engaged in the wholesale distribution of products imported from East Africa by an affiliate, Lee
Expeditions, Ltd., and in the "Safariland News," a newsletter issued by HW and Lee Expeditions, 327
F.Supp. at 664-65. With respect to shoes he concluded that both parties had used the word 'Safari' in
a fanciful rather than a descriptive sense and hence that plaintiff might have a valid infringement
claim it it could establish a secondary meaning, 327 F.Supp. at 665.
8
On A&F's appeal this court reversed and remanded for trial, 461 F.2d 1040 (2 Cir. 1972). Most of
Judge Thomsen's opinion for the court concerned the issue of appealability, as did most of Judge
Timbers' concurring opinion and all of Judge Feinberg's dissent. Intimating no opinion on the ultimate
merits, this court concluded "that genuine issues of fact exist which made it improper to enter a
summary judgment finally denying even in part the injunctive relief sought by plaintiff." Id. at 1042.
9
Judge Ryan, before whom the action was tried on remand, ruled broadly in HW's favor. He found
there was frequent use of the word 'Safari' in connection with wearing apparel, that A&F's policing
efforts thus had evidently been unsuccessful, and that A&F had itself used the term in a descriptive
sense not covered by its registration, e. g., in urging customers to make a "Christmas Gift Safari" to
the A&F store. After referring to statements by Judge Lasker that 'Safari' was a "weak" mark, 327
F.Supp. at 663, the judge found the mark to be invalid. 'Safari,' the court held, "is merely descriptive
and does not serve to distinguish plaintiff's goods as listed on the registration from anybody else's";
while such terms are afforded protection by the Lanham Act if they come to identify the company
merchandising the product, rather than the product itself, A&F had failed to establish that this had
become the situation with respect to 'Safari'.4 The opinion did not discuss A&F's assertion that some of
its marks had become incontestable under § 15 of the Lanham Act, 15 U.S.C. § 1065. The court
entered a judgment which dismissed the complaint and canceled not only the four registered
trademarks in suit but all A&F's other registered 'Safari' trademarks.5 A&F has appealed.II.
10
It will be useful at the outset to restate some basic principles of trademark law, which, although
they should be familiar, tend to become lost in a welter of adjectives.
11
The cases, and in some instances the Lanham Act, identify four different categories of terms with
respect to trademark protection. Arrayed in an ascending order which roughly reflects their eligibility
to trademark status and the degree of protection accorded, these classes are (1) generic, (2)
descriptive, (3) suggestive, and (4) arbitrary or fanciful. The lines of demarcation, however, are not
always bright. Moreover, the difficulties are compounded because a term that is in one category for a
particular product may be in quite a different one for another,6 because a term may shift from one
category to another in light of differences in usage through time,7 because a term may have one
meaning to one group of users and a different one to others,8 and because the same term may be put
to different uses with respect to a single product.9 In various ways, all of these complications are
involved in the instant case.
12
A generic term is one that refers, or has come to be understood as referring, to the genus of which
the particular product is a species. At common law neither those terms which were generic nor those
which were merely descriptive could become valid trademarks, see Delaware & Hudson Canal Co. v.
Clark, 80 U.S. (13 Wall.) 311, 323, 20 L.Ed. 581 (1872) ("Nor can a generic name, or a name merely
descriptive of an article or its qualities, ingredients, or characteristics, be employed as a trademark
and the exclusive use of it be entitled to legal protection"). The same was true under the Trademark
Act of 1905, Standard Paint Co. v. Trinidad Asphalt Mfg. Co.,220 U.S. 446, 31 S.Ct. 456, 55 L.Ed. 536
(1911), except for marks which had been the subject of exclusive use for ten years prior to its
enactment, 33 Stat. 726.10 While, as we shall see, p. ---- infra, the Lanham Act makes an important
exception with respect to those merely descriptive terms which have acquired secondary meaning, see
§ 2(f), 15 U.S.C. § 1052(f), it offers no such exception for generic marks. The Act provides for the
cancellation of a registered mark if at any time it "becomes the common descriptive name of an article
or substance," § 14(c). This means that even proof of secondary meaning, by virtue of which some
"merely descriptive" marks may be registered, cannot transform a generic term into a subject for
trademark. As explained in J. Kohnstam, Ltd. v. Louis Marx and Company, 280 F.2d 437, 440, 47
CCPA 1080 (1960), 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. See, accord, Application of Preformed Line Products Co., 323 F.2d 1007, 51 CCPA 775
(1963); Weiss Noodle Co. v. Golden Cracknel and Specialty Co., 290 F.2d 845, 48 CCPA 1004 (1961);
Application of Searle & Co., 360 F.2d 650, 53 CCPA 1192 (1966). We have recently had occasion to
apply this doctrine of the impossibility of achieving trademark protection for a generic term, CES
Publishing Corp. v. St. Regis Publications, Inc., 531 F.2d 11 (1975). The pervasiveness of the principle
is illustrated by a series of well known cases holding that when a suggestive or fanciful term has
become generic as a result of a manufacturer's own advertising efforts, trademark protection will be
denied save for those markets where the term still has not become generic and a secondary meaning
has been shown to continue. Bayer Co. v. United Drug Co., 272 F. 505 (2 Cir. 1921) (L. Hand, D. J. );
DuPont Cellophane Co. v. Waxed Products Co., 85 F.2d 75 (2 Cir.) (A. N. Hand, C. J. ), cert. denied,
299 U.S. 601, 57 S.Ct. 194, 81 L.Ed. 443 (1936); King-Seeley Thermos Co. v. Aladdin Industries,
1958).
13
Cir. 1963). A term may thus be generic in one market and descriptive or suggestive or fanciful in
another.
14
The term which is descriptive but not generic11 stands on a better basis. Although § 2(e) of the
Lanham Act, 15 U.S.C. § 1052, forbids the registration of a mark which, when applied to the goods of
the applicant, is "merely descriptive," § 2(f) removes a considerable part of the sting by providing that
"except as expressly excluded in paragraphs (a)-(d) of this section, nothing in this chapter shall
prevent the registration of a mark used by the applicant which has become distinctive of the
applicant's goods in commerce" and that the Commissioner may accept, as prima facie evidence that
the mark has become distinctive, proof of substantially exclusive and continuous use of the mark
applied to the applicant's goods for five years preceding the application. As indicated in the cases cited
in the discussion of the unregistrability of generic terms, "common descriptive name," as used in §§
14(c) and 15(4), refers to generic terms applied to products and not to terms that are "merely
descriptive." In the former case any claim to an exclusive right must be denied since this in effect
would confer a monopoly not only of the mark but of the product by rendering a competitor unable
effectively to name what it was endeavoring to sell. In the latter case the law strikes the balance, with
respect to registration, between the hardships to a competitor in hampering the use of an appropriate
word and those to the owner who, having invested money and energy to endow a word with the good
will adhering to his enterprise, would be deprived of the fruits of his efforts.
15
The category of "suggestive" marks was spawned by the felt need to accord protection to marks
that were neither exactly descriptive on the one hand nor truly fanciful on the other a need that was
particularly acute because of the bar in the Trademark Act of 1905, 33 Stat. 724, 726, (with an
exceedingly limited exception noted above) on the registration of merely descriptive marks regardless
of proof of secondary meaning. See Orange Crush Co. v. California Crushed Fruit Co., 54 U.S.App.D.C.
313, 297 F. 892 (1924). Having created the category the courts have had great difficulty in defining it.
Judge Learned Hand made the not very helpful statement:
16
It is quite impossible to get any rule out of the cases beyond this: That the validity of the mark
ends where suggestion ends and description begins.
17
Franklin Knitting Mills, Inc. v. Fashionit Sweater Mills, Inc., 297 F. 247, 248 (2 Cir. 1923), aff'd per
curiam, 4 F.2d 1018 (2 Cir. 1925) a statement amply confirmed by comparing the list of terms held
suggestive with those held merely descriptive in 3 Callmann, Unfair Competition, Trademarks and
Monopolies § 71.2 (3d ed.). Another court has observed, somewhat more usefully, that:
18
A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to

the nature of goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients,
qualities or characteristics of the goods.
19
Stix Products, Inc. v. United Merchants & Manufacturers Inc., 295 F.Supp. 479, 488 (S.D.N.Y.1968)
a formulation deriving from General Shoe Corp. v. Rosen, 111 F.2d 95, 98 (4 Cir. 1940). Also useful is
the approach taken by this court in Aluminum Fabricating Co. of Pittsburgh v. Season-All Window
Corp., 259 F.2d 314 (2 Cir. 1958), that the reason for restricting the protection accorded descriptive
terms, namely the undesirability of preventing an entrant from using a descriptive term for his
product, is much less forceful when the trademark is a suggestive word since, as Judge Lumbard
wrote, 259 F.2d at 317:
20
The English language has a wealth of synonyms and related words with which to describe the
qualities which manufacturers may wish to claim for their products and the ingenuity of the public
relations profession supplies new words and slogans as they are needed.
21
If a term is suggestive, it is entitled to registration without proof of secondary meaning. Moreover,

as held in the Season-All case, the decision of the Patent Office to register a mark without requiring
proof of secondary meaning affords a rebuttable presumption that the mark is suggestive or arbitrary
or fanciful rather than merely descriptive.
22
It need hardly be added that fanciful or arbitrary terms12 enjoy all the rights accorded to suggestive
terms as marks without the need of debating whether the term is "merely descriptive" and with ease
of establishing infringement.
23
In the light of these principles we must proceed to a decision of this case.
III.
24
We turn first to an analysis of A&F's trademarks to determine the scope of protection to which they
are entitled. We have reached the following conclusions: (1) applied to specific types of clothing
'safari' has become a generic term and 'minisafari' may be used for a smaller brim hat; (2) 'safari' has
not, however, become a generic term for boots or shoes; it is either "suggestive" or "merely
descriptive" and is a valid trademark even if " merely descriptive" since it has become incontestable
under the Lanham Act; but (3) in light of the justified finding below that 'Camel Safari,' 'Hippo Safari'
and 'Safari Chukka' were devoted by HW to a purely descriptive use on its boots, HW has a defense
against a charge of infringement with respect to these on the basis of "fair use." We now discuss how
we have reached these conclusions.
25
It is common ground that A&F could not apply 'Safari' as a trademark for an expedition into the
African wilderness. This would be a clear example of the use of 'Safari' as a generic term. What is
perhaps less obvious is that a word may have more than one generic use. The word 'Safari' has
become part of a family of generic terms which, although deriving no doubt from the original use of
the word and reminiscent of its milieu, have come to be understood not as having to do with hunting
in Africa, but as terms within the language referring to contemporary American fashion apparel. These
terms name the components of the safari outfit well-known to the clothing industry and its customers:
the 'Safari hat', a broad flat-brimmed hat with a single, large band; the 'Safari jacket', a belted bush
jacket with patch pockets and a buttoned shoulder loop; when the jacket is accompanied by pants, the
combination is called the 'Safari suit'. Typically these items are khaki-colored.
26
This outfit, and its components, were doubtless what Judge Ryan had in mind when he found that
"the word 'safari' in connection with wearing apparel is widely used by the general public and people in
the trade." The record abundantly supports the conclusion that many stores have advertised these
items despite A&F's attempts to police its mark. In contrast, a search of the voluminous exhibits fails
to disclose a single example of the use of 'Safari', by anyone other than A&F and HW, on merchandise
for which A&F has registered 'Safari' except for the safari outfit and its components as described
above.
27
What has been thus far established suffices to support the dismissal of the complaint with respect
to many of the uses of 'Safari' by HW. Describing a publication as a "Safariland Newsletter", containing
bulletins as to safari activity in Africa, was clearly a generic use which is nonenjoinable, see CES
Publishing Co. v. St. Regis Publications, Inc., supra. A&F also was not entitled to an injunction against
HW's use of the word in advertising goods of the kind included in the safari outfit as described above.
And if HW may advertise a hat of the kind worn on safaris as a safari hat, it may also advertise a
similar hat with a smaller brim as a minisafari. Although the issue may be somewhat closer, the
principle against giving trademark protection to a generic term also sustains the denial of an
injunction against HW's use of 'Safariland' as a name of a portion of its store devoted at least in part
to the sale of clothing as to which the term 'Safari' has become generic.
28
A&F stands on stronger ground with respect to HW's use of 'Camel Safari', 'Hippo Safari' and
Chukka 'Safari' as names for boots imported from Africa. As already indicated, there is no evidence
that 'Safari' has become a generic term for boots. Since, as will appear, A&F's registration of 'Safari'
for use on its shoes has become incontestable, it is immaterial (save for HW's contention of fraud
which is later rejected) whether A&F's use of 'Safari' for boots was suggestive or "merely descriptive."
29
HW contends, however, that even if 'Safari' is a valid trademark for boots, it is entitled to the
defense of "fair use" within § 33(b)(4) of the Lanham Act, 15 U.S.C. § 1115(b)(4). That section offers
such a defense even as against marks that have become incontestable when the term charged to be
an infringement is not used as a trademark "and is used fairly and in good faith only to describe to
users the goods and services of such party, or their geographic origin."
30
Here, Lee Expeditions, Ltd., the parent company of HW, has been primarily engaged in arranging
safaris to Africa since 1959; Robert Lee, the president of both companies, is the author of a book
published in 1959 entitled "Safari Today The Modern Safari Handbook" and has, since 1961, booked
persons on safaris as well as purchased safari clothing in Africa for resale in America. These facts
suffice to establish, absent a contrary showing, that defendant's use of 'Safari' with respect to boots
was made in the context of hunting and traveling expeditions and not as an attempt to garner A&F's
good will. The district court here found the HW's use of 'Camel Safari', 'Hippo Safari', and 'Safari
Chukka' as names for various boots imported from Africa constituted "a purely descriptive use to
apprise the public of the type of product by referring to its origin and use." The court properly followed
the course sanctioned by this court in Venetianaire Corp. of America v. A&P Import Co., 429 F.2d
1079, 1081-82 (1970), by focusing on the "use of words, not on their nature or meaning in the
abstract" (emphasis in original). When a plaintiff has chosen a mark with some descriptive qualities,
he cannot altogether exclude some kinds of competing uses even when the mark is properly on the
register, see 3 Callmann, supra, § 85.1; Kiki Undies Corp. v. Alexander's Dep't Stores, Inc., 390 F.2d
604 (2 Cir. 1968); contrast Kiki Undies Corp. v. Promenade Hosiery Mills, Inc., 411 F.2d 1097 (2 Cir.
1969), cert. dismissed, 396 U.S. 1054, 90 S.Ct. 707, 24 L.Ed.2d 698 (1970). We do not have here a
situation similar to those in Venetianaire, supra, and Feathercombs, Inc. v. Solo Products Corp., 306
F.2d 251 (2 Cir. 1962), in both of which we rejected "fair use" defenses, wherein an assertedly
descriptive use was found to have been in a trademark sense. It is significant that HW did not use
'Safari' alone on its shoes, as it would doubtless have done if confusion had been intended.
31
We thus hold that the district court was correct in dismissing the complaint.
IV.
32
We find much greater difficulty in the court's broad invalidation of A&F's trademark registrations.
Section 37 of the Lanham Act, 15 U.S.C. § 1119, provides authority for the court to cancel those
registrations of any party to an action involving a registered mark.13 The cases cited above, p. ----,
establish that when a term becomes the generic name of the product to which it is applied, grounds
for cancellation exist. The relevant registrations of that sort are Nos. 358,781 and 703,279. Although
No. 358,751 dates back to July 20, 1938, and No. 703,279 was registered on August 23, 1960, and an
affidavit under § 15(3), 15 U.S.C. § 1065(3), was filed on October 13, 1965, cancellation may be
decreed at any time if the registered mark has become "the common descriptive name of an article or
substance," § 14(c), see also § 15(4), 15 U.S.C. §§ 1064(c) and 1065(4). The whole of Registration
No. 358,781 thus was properly canceled. With respect to Registration No. 703,279 only a part has
become generic14 and cancellation on that ground should be correspondingly limited.15 Such partial
cancellation, specifically recognized by § 37, accords with the rationale by which a court is authorized
to cancel a registration, viz, to "rectify" the register by conforming it to court judgments which often
must be framed in something less than an all-or-nothing way.
33
There remain eight other registrations and those terms not pared from No. 703,279. Three of these
registrations, Nos. 652,098, 768,332 and 770,336, and the non-generic portions of No. 703,279
appear to have become incontestable by virtue of the filing of affidavits under § 15(3), of five years
continuous use.16 There is nothing to suggest that the uses included in these registrations, except the
uses described above with respect to 703,279 are the common descriptive names of either current
fashion styles or African expeditions. The generic term for A&F's 'safari cloth Bermuda shorts', for
example, is 'Bermuda shorts', not 'safari'; indeed one would suppose this garment to be almost ideally
unsuited for the forest or the jungle and there is no evidence that it has entered into the family for
which 'Safari' has become a generic adjective. The same analysis holds for luggage, portable grills,
and the rest of the suburban paraphernalia, from swimtrunks and raincoats to belts and scarves,
included in these registrations. HW alleged that these registrations were procured by fraud, a claim
which, if successful, would deny incontestability to A&F's marks, see § 14(c), 15 U.S.C. § 1064(c). But
these allegations seem to have meant no more than that HW believed the terms to be merely
descriptive and hence unregistrable, and that the Patent Office must have been duped into registering
them in the first place without proof of secondary meaning. However, we regard these terms as
suggestive rather than "merely descriptive." Moreover, even if they were the latter, assuming that the
person filing the applications made the required allegation that "no other person, firm, corporation, or
association, to the best of his knowledge and belief, has the right to use such mark in commerce
either in the identical form thereof or in such near resemblance thereto as might be calculated to
deceive," see § 1(a)(1), 15 U.S.C. § 1051(a)(1), there is nothing to show that such statements were
knowingly false when made. Cf. Bart Schwartz Int'l Textiles, Ltd. v. F.T.C., 289 F.2d 665, 48 CCPA
933 (1961); National Trailways Bus System v. Trailway Van Lines, Inc., 269 F.Supp. 352
(E.D.N.Y.1965). The scheme of the Lanham Act forbids a denial of incontestability to a "merely
descriptive" mark which would otherwise have become incontestable under § 14 on the basis of a
mere allegation of fraud in obtaining registration, without supporting proof.
34
We hold also that the registrations which have not become incontestable should not have been
canceled. 'Safari' as applied to ice chests, axes, tents and smoking tobacco does not describe such
items. Rather it is a way of conveying to affluent patrons of A&F a romantic notion of high style,
coupled with an attractive foreign allusion. As such, these uses fit what was said many years ago in
upholding 'Ideal' as a mark for hair brushes:
35
The word "Ideal" has no application to hair brushes, except as we arbitrarily apply it, and the word
is in no sense indicative or descriptive of the qualities or characteristics or merits of the brush except
that it meets the very highest ideal, mental conception, of what a hair brush should be.
36
Hughes v. Alfred H. Smith Co., 205 F. 302, 309 (S.D.N.Y.), aff'd. per curiam, 209 F. 37 (2 Cir.
1913). It is even wider of the mark to say that 'Safari Mills' "describes" cotton piece goods. Such uses
fit into the category of suggestive marks. We need not now decide how valuable they may prove to
be; it suffices here that they should not have been canceled.
37
In sum, we conclude that cancellation should have been directed only with respect to No. 358,781
and portions of No. 703,279 and the New York registration. With respect to the remaining
registrations A&F will have the benefits accorded by § 7(b) that registration shall be "prima facie
evidence of the validity of the registration . . . and of (the) registrant's exclusive right to use the mark
in commerce," 15 U.S.C. § 1057(b). This means "not only that the burden of going forward is upon
the contestant of the registration but that there is a strong presumption of validity so that the party
claiming invalidity has the burden of proof (and) must put something more into the scales than the
registrant." Aluminum Fabricating Co. of Pittsburgh v. Season-All Window Corp., 259 F.2d 314, 316 (2
Cir. 1958). In the case of registrations that have become incontestable A&F will have the further
benefit accorded by § 33(a), 15 U.S.C. § 1115(a), subject to the limitations contained therein and in §
33(b), 15 U.S.C. § 1115(b). Whether all this will suffice for a victory will depend on the facts in each
case.
38
So much of the judgment as dismissed the complaint is affirmed; so much of the judgment as
directed cancellation of the registrations is affirmed in part and reversed in part, and the cause is
remanded for the entry of a new judgment consistent with this opinion. No costs.
PER CURIAM:
On Petition of Appellant for Rehearing
39
By petition for rehearing plaintiff-appellant, Abercrombie & Fitch Company (A& F), requested us to
alter our opinion filed January 16, 1976, in two respects: one was that footnote 14, p. ----, describing
the scope of cancellation of Trademark Registration No. 703,279, be modified by omitting the word
"shirts". The other was that we should not uphold the "fair use" defense, pp. ---- - ----, as to Hippo
Safari and Camel Safari shoes. We called upon defendant-appellee Hunting World, Inc. (HW) to
answer.
40
We agree with A&F that footnote 14 was in error in indicating that Safari had become generic with
respect to shirts. Since the mark has become incontestable, it is of no moment, on the issue of
cancellation, that, as HW urges, the mark may now be "merely descriptive," pp. ---- - ----. HW's
answer adduces nothing to show that Safari has become the "common descriptive name" for this type
of shirt; indeed, HW admits never having advertised its own shirts as such. While HW asserts that "the
record is clear that the upper garment of the safari suit is referred to interchangeably as a safari bush
jacket and as a safari shirt," the cited pages do not bear this out.
41
On the other hand we see no force in A&F's criticisms of the portion of our opinion relating to the
fair use defense with respect to Hippo Safari and Camel Safari shoes sufficient to lead us to change
the views previously expressed or, indeed, to require further discussion.
42
The petition for rehearing is granted to the extent of striking the word "shirts" from fn. 14 on p. ----
and is otherwise denied.
A&F also conducts a substantial mail order business
The mark 'Safari Mills' was acquired by assignment from the original registrant, Robert Suffern
He noted that HW had grown "from the operation of a company which actually organizes safaris and has common
officers with that company," 327 F.Supp. at 663
This finding that A&F did not establish "secondary meaning" for its marks is not here disputed
There were, in addition to Nos. 358,781, 125,531, 652,098, and 703,279, supra, also plaintiff's New York
Registration No. R-8008 (for 'Safari' applied to sporting goods apparel) and the following United States
Registrations for 'Safari' not relied on by A&F in its complaint: 768,332 (luggage); 770,336 (portable grills);
777,180 (insulated ice chests); 779,394 (camping tents); 803,036 (axes); 856,889 (smoking tobacco)
The judgment also enjoined HW from using the letters 'T.M.' and 'R.' after the terms 'Minisafari Hat' and
'Safariland' a ruling from which HW has not appealed.
To take a familiar example "Ivory" would be generic when used to describe a product made from the tusks of
elephants but arbitrary as applied to soap
See, e. g., Haughton Elevator Co. v. Seeberger, 85 U.S.P.Q. 80 (1950), in which the coined word 'Escalator',
originally fanciful, or at the very least suggestive, was held to have become generic
8
See, e. g., Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y.1921)
See 15 U.S.C. § 1115(b)(4)
10
Some protection to descriptive marks which had acquired a secondary meaning was given by the law of unfair
competition. The Trademark Act of 1920 permitted registration of certain descriptive marks which had acquired
secondary meaning, see Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315, 59 S.Ct. 191, 83
L.Ed. 195 (1938)
11
See, e. g., W. E. Bassett Co. v. Revlon, Inc., 435 F.2d 656 (2 Cir. 1970). A commentator has illuminated the
distinction with an example of the "Deep Bowl Spoon":
"Deep Bowl" identifies a significant characteristic of the article. It is "merely descriptive" of the goods, because it
informs one that they are deep in the bowl portion . . . . It is not, however, "the common descriptive name" of the
article (since) the implement is not a deep bowl, it is a spoon . . . . "Spoon" is not merely descriptive of the article
it identifies the article (and therefore) the term is generic.
Fletcher, Actual Confusion as to Incontestability of Descriptive Marks, 64 Trademark Rep. 252, 260 (1974). On the
other hand, "Deep Bowl" would be generic as to a deep bowl.
12
As terms of art, the distinctions between suggestive terms and fanciful or arbitrary terms may seem needlessly
artificial. Of course, a common word may be used in a fanciful sense; indeed one might say that only a common
word can be so used, since a coined word cannot first be put to a bizarre use. Nevertheless, the term "fanciful", as
a classifying concept, is usually applied to words invented solely for their use as trademarks. When the same legal
consequences attach to a common word, i. e., when it is applied in an unfamiliar way, the use is called "arbitrary."
13
In contrast to the rule under the Trademark Act of 1905, see Drittel v. Friedman, 154 F.2d 653, 654 (2 Cir. 1946),
§ 37 of the Lanham Act permits cancellation on a counterclaim by a defendant who does not own a registered
mark. See Best & Co. v. Miller, 167 F.2d 374, 376-77 (2 Cir. 1948)
14
To wit, pants, shirts, jackets, coats and hats
15
Similar partial cancellation is the proper remedy with respect to the New York registration
16
In limiting ourselves to these four registrations we are proceeding solely on the basis of the certified copies of
trademark registrations filed as exhibits. Since HW's answer challenged incontestability only on the ground of
fraud, A&F may not have been alerted to the desirability of informing the court of the filing of § 15(3) affidavits. In
view of our holding that the other five registrations should not have been canceled, this is immaterial
237 F.3d 198 (3rd Cir. 2000)
A&H SPORTSWEAR, INC; MAINSTREAM SWIMSUITS, INC., APPELLANTS

V.
VICTORIA'S SECRET STORES, INC.; VICTORIA'S SECRET CATALOGUE, INC.
Nos. 99-1734 and 99-1735
U.S. Court of Appeals, Third Circuit

Argued: April 26, 2000
Filed December 01, 2000
On Appeal From the United States District Court For the Eastern District of Pennsylvania (D.C. Civ. No.
94-cv-07408) District Judge: Honorable Franklin S. Van Antwerpen
Arthur H. Seidel, Esquire (argued) Stephen J. Meyers, Esquire Michael F. Snyder, Esquire Seidel,
Gonda, Lavorgna & Monaco 1800 Two Penn Center Plaza Philadelphia, PA 19102 Norman Seidel,
Esquire Laub, Seidel, Cohen & Hof Eastern Dollar Savings & Trust Co. Bldg. 8 Centre Square Easton,
PA 18042 Counsel for Appellants
Frank J. Colucci, Esquire (argued) Richard P. Jacobson, Esquire Colucci & Umans 101 East 52nd Street
Manhattan Tower New York, NY 10022 H. Robert Fiebach, Esquire Cozen & O'Connor The Atrium 1900
Market Street Philadelphia, PA 19103 Counsel for Appellees
Before: Becker, Chief Judge, Barry and Bright,* Circuit Judges.
OPINION OF THE COURT
I. Facts .......................................................... 208
II. Procedural History ............................................. 209
III. The Direct Confusion Claim ..................................... 210
A. The Lapp Test and the District Court's Opinion ............ 211
B. The Test for Directly Competing Goods ....................... 212

C. The District Court's Methodology ............................ 215
IV. Review of the District Court's Analysis ........................ 216
A. Similarity of the Marks ..................................... 216
1. Sight, Sound, Meaning .................................... 217
2. The Housemarks and the Disclaimer ........................ 218
3. The PTO's Rejection of Victoria's Secret's Application ... 220
4. Summary .................................................. 221
B. Strength of the Marks ....................................... 221
1. Distinctiveness or Conceptual Strength ................... 221
2. Commercial Strength of the Mark .......................... 224
3. Summary .................................................. 224
C. Product Similarity .......................................... 224
D. Marketing and Advertising Channels .......................... 225
E. Sophistication of Consumers ................................. 225
F. The Intent of the Defendant ................................. 225
G. Actual Confusion ............................................ 226
H. Combining the Factors ....................................... 227
V. The Reverse Confusion Claim .................................... 227
A. Introduction ................................................ 227

B. The Test for Reverse Confusion .............................. 229
1. The Factors that are the Same ............................ 229
2. Similarity of the Marks .................................. 229
3. Strength of the Marks .................................... 230
a. Commercial Strength ................................... 230
b. Distinctiveness or Conceptual Strength ................ 231
4. The Intent of the Defendant .............................. 232
5. Factors Relating to Actual Confusion ..................... 233
6. Other Relevant Facts ..................................... 234
7. Summary of the Test for Reverse Confusion ................ 234
C. The District Court's Opinion................................. 234
D. Guidance for Remand ......................................... 236
1. Introduction ............................................. 236
2. Similarity of the Marks .................................. 236
3. Strength of the Marks .................................... 236
4. Intent ................................................... 237
E. Summary ..................................................... 237
VI. Conclusion....................................................... 238
Becker, Chief Judge.

1
The critical question in this trademark infringement case, before us for the second time, is whether
a typical consumer is likely to confuse MIRACLESUIT swimwear with THE MIRACLE BRA
swimwear.1 The former is a product of Plaintiff A&H Sportswear Company ("A&H"), which
manufactures ten percent of all swimsuits made in the United States. The latter is a product of
Defendant Victoria's Secret, the lingerie leviathan that recently entered the swimwear market. A&H
filed suit in the District Court for the Eastern District of Pennsylvania claiming that The Miracle Bra
swimwear mark violates the Lanham Act because it is confusingly similar to the Miraclesuit swimwear
mark, which A&H registered first. A&H contends that: (1) consumers are likely to wrongly associate
The Miracle Bra with A&H (the direct confusion claim2); or, in the alternative, (2) consumers are likely
to think that Miraclesuit is a product of Victoria's Secret (the reverse confusion claim).
2
During an extensive bench trial, A&H argued that Victoria's Secret should be enjoined from using
The Miracle Bra mark for swimwear. Finding a "possibility of confusion," the District Court granted
relief to A&H. Following an appeal to this Court that clarified that likelihood of confusion (instead of
possibility of confusion) was the correct standard, the District Court concluded that A&H had failed to
show by a preponderance of the evidence that Victoria's Secret's The Miracle Bra swimwear mark
created a likelihood of either direct or reverse confusion with the Miraclesuit product.
In Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983), this Court established a ten-
factor test (the "Lapp" test) to determine the likelihood of confusion for direct confusion claims
between goods that do not directly compete in the same market, but we have never decided what
factors should be considered in the case of directly competing goods. The District Court therefore
fashioned its own multi-factored test that approximates, but does not completely match, the Lapp
test. In employing its test, the District Court acknowledged that the most important factor was the
similarity of the marks, and determined that their overall commercial impressions were not similar.
The District Court placed particular emphasis on the fact that the The Miracle Bra mark typically
appears alongside Victoria's Secret's housemark (the mark of the manufacturer), and that Victoria's
Secret uses a disclaimer with its mark that explicitly states that The Miracle Bra swimwear is unrelated
to Miraclesuit or A& H. The court also concluded that Victoria's Secret's intent, the paucity of credible
incidents of actual confusion, and the sophistication of the consumers weighed in favor of Victoria's
Secret, while the competitive proximity of the products and the strength of the Miraclesuit mark
weighed in favor of A&H. Taking all this into account, the District Court found no likelihood of direct
confusion between the marks, rejected A&H's direct confusion claim, and, on the assumption that the
disclaimer would continue to be used in an effective manner, denied injunctive relief. Notwithstanding
that likelihood of confusion is an issue of fact subject to deferential review, the District Court's
disposition of the direct confusion claim has given rise to a number of important issues in this appeal.
5
A&H first contends that multi-factored tests, like the one used by the District Court, are inapplicable
to competing goods, and that with directly competing goods a court should examine only the similarity
of the marks. We disagree. Though a court need not look beyond the marks when goods are directly
competing and the marks virtually identical, we conclude that the factors we have developed in the
noncompeting goods context are helpful tools and should be used to aid in the determination of the
likelihood of confusion in other cases. Our jurisprudence does not preclude this result, and the District
Court did not err in taking other considerations into account.
Alternatively, A&H submits that the District Court erred as a matter of law by not following precisely
the ten-factor Lapp test that we have previously developed to determine likelihood of confusion. It
argues that by not considering certain factors that would clearly have weighed in favor of A&H, the
District Court distorted the likelihood of confusion standard. We reject this argument for two reasons.
First, we have developed the ten-factor Lapp test only as a guide. Although all of the factors can be
useful, the Lanham Act does not require that they be followed precisely so long as the relevant
comparisons suggested by the test are made. More importantly, although the District Court arguably
used a creative test, all of the Lapp factors are integrated, in one way or another, into the court's
analysis. Therefore, even if the Lapp test were mandatory, A&H could not show prejudice.
A&H also argues that, regardless of the test to be used, the District Court clearly erred in resting its
finding that there was no likelihood of confusion on Victoria Secret's disclaimer. A&H asserts that it
constitutes legal error even to consider such a disclaimer, but we disagree, seeing no reason to forbid
courts from considering this kind of distinguishing feature. In this case, the District Court properly
weighed the disclaimer. We also reject A&H's assertion that the District Court erred in failing to give
weight to the refusal of a Patent and Trademark Office ("PTO") examining attorney to register The
Miracle Bra mark for swimwear because of its similarity to Miraclesuit. Where, as here, the PTO
examining attorney did not consider all the relevant factors, and lacked significant information that
was available to the District Court, his determination need not be given weight. In fact, one legal error
that we do find weighs in Victoria's Secret's favor: The District Court erred by relying almost entirely
on its classification of A&H's mark as "suggestive to arbitrary" in its determination that Miraclesuit was
a conceptually strong mark deserving of a high degree of protection. In sum, we conclude that neither
the District Court's fact- finding nor its balancing of factors warrants reversal, and hence we will affirm
its judgment on the direct confusion claim.
As for the reverse confusion claim, A&H challenges the District Court's treatment as inadequate,
and inconsistent with the method laid out in our leading reverse confusion case, Fisons Horticulture,
Inc. v. Vigoro Industries, Inc., 30 F.3d 466 (3d Cir. 1994). Fisons adopted the doctrine of reverse
confusion, and used the Lapp factors to assess the likelihood of such confusion, with a few minor
modifications. The District Court interpreted our precedents to require a two-step inquiry, engaging
the Lapp factors only after an initial assessment that the disparity in commercial strength reached a
high threshold. Because the threshold degree of commercial disparity that the court believed was
required was not met, the court did not even examine whether there existed a likelihood of confusion.
After reviewing Fisons and our precedent, we are persuaded that the District Court erred in
fashioning a two- step inquiry, and in failing to consider the Lapp factors as they apply to reverse
confusion claims. We will demonstrate that the application of some of the factors changes in the
reverse confusion context, and we conclude that, on the record before us, the judgment must be
vacated with respect to the reverse confusion claim and the case remanded for further proceedings.
I. Facts3
10
The Miraclesuit bathing suit is made by A&H, which manufactures ten percent of all swimwear in the
United States. The Miraclesuit is distributed by Swim Shaper, a division of Mainstream Swimsuits. The
Miraclesuit is advertised as having a slimming effect on the wearer without using uncomfortable
girdle-like binds. Its material purportedly smooths out middle body bulges and works with a flattering
design to confuse the eye such that the wearer is advised, in advertising and in tags that generally
accompany the product, that she will "[l]ook ten pounds lighter in 10 seconds[:] The ten seconds it
takes to slip it on." Miraclesuits also include tags indicating that they are Swim Shaper products.
11
Miraclesuits, which sell for between $50 and $100, come in both single pieces and bikinis. Many are
equipped with push-up bras, shaping or underwire bras, or simple, unshaped bras. They are typically
sold to trade buyers for department store sales and national mail-order catalogues, and, on two
occasions, they were featured in the Victoria's Secret catalogue. A&H received a trademark
registration for the mark Miraclesuit in the fall of 1992. The District Court found that A&H has spent
over $1.2 million to advertise the Miraclesuit in magazines and trade papers, and has received the
equivalent of $1.5 million of advertising in "free publicity," i.e., publicity in trade magazines, consumer
columns, and the general press. The advertising and publicity campaign has been a success, and
Miraclesuits constitute approximately ten percent of all of A&H's sales.
12
While A&H is busy selling skinny waists and midriffs, Victoria's Secret, the nation's premier lingerie
seller, has focused on instant enlargements of the bust.4 In 1993, Victoria's Secret released The
Miracle Bra, a padded push- up bra. Victoria's Secret filed an application to register it's the Miracle Bra
trademark, and unleashed an avalanche of advertising and publicity, ultimately spending over $13
million on The Miracle Bra products. The campaign succeeded, and sales of The Miracle Bra products
have topped $140 million since they were first introduced.
13
In 1994, Victoria's Secret's trademark application for The Miracle Bra mark on lingerie was
approved. Later that year, Victoria's Secret moved The Miracle Bra mark into swimwear, and The
Miracle Bra swimsuit and The Miracle Bra bikini started appearing in Victoria's Secret catalogues. (The
Miracle Bra lingerie and swimwear are sold only in Victoria's Secret stores and catalogues.). The cost
of The Miracle Bra swimwear varies, but it is typically in the neighborhood of $70, and The Miracle Bra
and Victoria's Secret tags are prominently featured on all swimwear. This product also succeeded: The
total sales of The Miracle Bra swimsuits reached $28 million by summer 1997. The last critical fact
regarding this swimwear is that, as a result of this litigation, Victoria's Secret has committed itself to
using the following disclaimer with all promotion, advertising, and sales of The Miracle Bra: "The
Miracle Bra Swimwear Collection is exclusive to Victoria's Secret and is not associated with Miraclesuit
by Swimshaper."
14
In 1995, after this litigation began, Victoria's Secret applied to the PTO for a trademark for The
Miracle Bra for swimsuits, bathing suits, and bikinis. Because it had previously conducted a search for
The Miracle Bra as applied to lingerie, which had led it to the conclusion that The Miracle Bra did not
threaten to infringe on other trademarks, Victoria's Secret had not conducted a separate
trademark search of The Miracle Bra trademark as it applied to swimwear. However, the PTO
examining attorney denied Victoria's Secret's application due to its similarity to Miraclesuit because he
determined that: (1)"Miracle" was the dominant feature of each mark; and (2) the product lines
overlap. The denial was not appealed.
II. Procedural History
15
In December 1994, A&H filed a complaint against Victoria's Secret, alleging direct and reverse
trademark infringement, unfair competition, dilution, and unjust enrichment. The District Court held a
bench trial on liability in the fall of 1995, and a damages and relief trial in 1996. The court found that
Victoria's Secret's use of The Miracle Bra on its lingerie created no likelihood of confusion with A&H's
Miraclesuit. See A&H Sportswear Co. v. Victoria's Secret Stores, Inc., 926 F. Supp. 1233, 1264 (E.D.
Pa. 1996) ("A&H I"). However, with regard to Victoria's Secret's use of The Miracle Bra mark on
swimwear, the District Court found a "possibility of confusion" with A&H's Miraclesuit swimwear. See
id. at 1269. Based upon this finding, it ordered Victoria's Secret not to use The Miracle Bra tag with
swimwear unless it was accompanied by the disclaimer: "The Miracle Bra (TM) swimwear collection is
exclusive to Victoria's Secret and not associated with Miraclesuit (R) by Swim Shaper (R)." A&H
Sportswear Co. v. Victoria's Secret Stores, Inc., 967 F. Supp. 1457, 1482 (E.D. Pa. 1997) ("A&H II").
The District Court also ordered that royalties on past and future sales of The Miracle Bra swimsuits be
paid to A&H. See id. at 1483. Both parties appealed. Although the District Court granted a stay of its
order pending appeal, Victoria's Secret has continued to use the disclaimer voluntarily and has
represented to us at oral argument that it will continue to do so regardless of the outcome of this
litigation.
16
During the prior appeal, we heard the case en banc to consider the viability of the "possibility of
confusion" standard originally used by the District Court. We rejected that standard, and remanded
the case to the District Court to apply the traditional "likelihood of confusion" standard to the
swimsuits' marks. See A&H Sportswear Inc. v. Victoria's Secret Stores, Inc., 166 F.3d 197, 206 (3d
Cir. 1999) ("A&H III"). The bulk of the en banc opinion is devoted to explaining the rejection of the
"possibility of confusion" standard. However, we also commented on what has become a central
question in the current appeal, namely, whether the likelihood of confusion analysis differs for
competing, as opposed to noncompeting, goods:
17
[T]he standard to be applied when goods that are the subject of a trademark infringement claim are
directly competing, as is the situation with [Miraclesuit and The Miracle Bra swimwear], is different
than that applied when the goods are not competing. The ten- factor test for likelihood of confusion
between marks that are not competing, derived from Scott Paper Co. [v. Scott's Liquid Gold, Inc.],
589 F.2d[1225,] 1229 [(3d Cir. 1978)], is not required when the goods directly compete. In fact, we
have said that "where the trademark owner and the alleged infringer deal in competing goods or
services, the court need rarely look beyond the mark itself.
18
Id. at 202 (quoting Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 462 (3d Cir. 1983)). We also
suggested that the District Court should, on remand, consider whether this case implicated the
reverse confusion doctrine, noting the possibility that the later-entering mark of the junior user-- in
this case the larger, more powerful company (Victoria's Secret)--might be overwhelming the mark of
the prior, or senior, user (A&H), the phenomenon typifying reverse confusion.
19
Following our mandate, the District Court applied the "likelihood of confusion" test and found that
there was no likelihood of direct confusion and no grounds for consideration of reverse confusion. It
therefore denied the request for injunctive relief. See A&H Sportswear Co. v. Victoria's Secret Stores,
Inc., 57 F. Supp. 2d 155, 178-79 (E.D. Pa. 1999) ("A&H IV"). A&H appeals. We review the District
Court's factual determinations for clear error, but we give plenary review to its legal conclusions. See
A&H III, 166 F.3d at 202-03. Likelihood of confusion is a factual question, see id., but 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. We review the denial of the request for injunctive
relief for abuse of discretion. See Warner-Lambert Co. v. Breathasure, Inc., 204 F.3d 87, 89 n.1 (3d
Cir. 2000).
III. The Direct Confusion Claim
20
We measure federal trademark infringement, 15 U.S.C. S 1114, and federal unfair competition, 15
U.S.C. S 1125(a)(1)(A), by identical standards. See A&H III, 166 F.3d at 202.5 To prove either form of
Lanham Act violation, a plaintiff must demonstrate that (1) it has a valid and legally protectable mark;
(2) it owns the mark; and (3) the defendant's use of the mark to identify goods or services causes a
likelihood of confusion. See Commerce Nat'l Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d
432, 437 (3d Cir. 2000). The plaintiff bears the burden of proof. See American Home Prods. Corp. v.
Barr Labs., Inc., 834 F.2d 368, 371 (3d Cir. 1987). It is undisputed that A&H owns Miraclesuit, and
that it is a valid and legally protectable mark. Therefore, the questions in this case involve the
delineation and application of standards for the evaluation of likelihood of confusion.
21
A. The Lapp Test and the District Court's Opinion
22
A likelihood of confusion exists when "consumers viewing the mark would probably assume that the
product or service it represents is associated with the source of a different product or service identified
by a similar mark." Dranoff-Perlstein Assocs. v. Sklar, 967 F.2d 852, 862 (3d Cir. 1992) (quotation
marks omitted). In Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983), we stated that when
the goods involved in a trademark infringement action directly compete with each other, a court "need
rarely look beyond the mark itself " to determine the likelihood of confusion. Id. at 462. For
noncompeting goods, we developed a nonexhaustive list of factors to consider in determining whether
there is a likelihood of confusion between marks:
23
(1) the degree of similarity between the owner's mark and the alleged infringing mark;
24
(2) the strength of the owner's mark;
25
(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;
26
(5) the intent of the defendant in adopting the mark;
27
(6) the evidence of actual confusion;
28
(7) whether the goods, though not competing, are marketed through the same channels of trade
and advertised through the same media;
29
(8) the extent to which the targets of the parties' sales efforts are the same;
30
(9) the relationship of the goods in the minds of consumers because of the similarity of function;
31
(10) other facts suggesting that 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.
32
Id. at 463 (citing Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1229 (3d Cir. 1978)).
Throughout the opinion we will refer to these factors as the "Lapp" factors.
33
The District Court recognized that we have not "explicitly elucidated what kind of factors should be
considered in the case of directly competing goods." A&H IV, 57 F. Supp. 2d at 163. It chose not to
use the Lapp test, but instead developed its own test, drawing on many of the same factors:
34
(1) strength of the plaintiff's mark;
35
(2) similarity between the marks;
36
(3) similarity of the products and the degree to which they directly compete with each other;
37
(4) marketing or advertising channels used;
38
(5) sophistication of consumers;
39
(6) defendant's intent in selecting the mark; and
40
(7) incidents of actual confusion.
41
Id. A&H contends that the District Court erred in three ways in applying these factors. First, it
argues that when goods are directly competing, a district court need only examine the similarity of the
marks. Second, it submits that inasmuch as the District Court fashioned its own test, the Lapp factors
it omitted would have tipped the balance in favor of finding a likelihood of confusion. Third, it contends
that on any test the similarity of the marks creates a likelihood of confusion.
B. The Test for Directly Competing Goods
42
We have not previously settled upon a method that district courts should use to examine whether
there exists a likelihood of confusion between directly competing goods. Uncertainty on this point in
the district courts within the circuit, as demonstrated in the margin, counsels that we clarify this area
of law.6
43
The multi-factored test rescribed above was developed to determine likelihood of confusion for
noncompeting goods. See Versa Prods. Co., Inc. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189, 202 (3d Cir.
1995). This genesis is apparent in the substance of the test: factor (7) directs a court to look at the
markets of the goods "though not competing"; factor (9) directs that the court examine the "similarity
of function"; and factor (10) directs that the court look at "other facts suggesting that 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." These factors are not apposite for directly competing goods: By
definition, the goods are competing, their function is the same, and the senior and junior user are
already in each other's markets.
44
Nonetheless, despite the test's etiology, the raison d'etre of the Lapp factors and the purpose of
their development was to aid in the navigation of the difficult course of determining a "likelihood of
confusion." A district court should not be foreclosed from using any factors that it deems helpful in
analyzing whether a likelihood of confusion exists between given products, whether or not they
directly compete. Lapp's suggestion that, for competing goods, the court "need rarely look beyond the
mark itself," Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 462 (3d Cir. 1983), may be an exercise in
unjustified optimism; cases are often not easy, and courts will frequently need help in sorting out the
likelihood of confusion. District courts within this circuit, as well as other appellate courts, have found
that consideration of the Lapp factors (or their analogs from other circuits) can be quite useful for
determining likelihood of confusion even when the goods compete directly. See, e.g., Barr e-National,
Inc. v. Barr Labs., Inc., 773 F. Supp. 735, 742 (D.N.J. 1991); Banff, Ltd. v. Federated Dep't Stores,
Inc., 841 F.2d 486, 490 (2d Cir. 1988).
45
Further, we recognize that many of the Lapp factors that are specifically applicable only to
noncompeting goods are often used by courts to determine, in the first instance, whether goods are or
are not directly competing. This makes the plaintiff's proposed prohibition on the examination of
evidence beyond the marks themselves somewhat illusory. For instance, in AMF Inc. v. Sleekcraft
Boats, 599 F.2d 341 (9th Cir. 1979), the Court of Appeals for the Ninth Circuit concluded that two
lines of recreational boats were not directly competitive because they were marketed to different
consumers and were designed for different uses. See id. at 348. This inquiry approximates Lapp
factors (8) and (9), which look to the different functions of the products and the different target
customers. Similarly, in Induct-O-Matic Corp. v. Inductotherm Corp., 747 F.2d 358 (6th Cir. 1984),
the court affirmed a district court's conclusion that the parties were direct competitors based on an
examination of the similarity of the parties' customer base, geographical trading area, and products,
see id. at 362, factors which approximate Lapp factors (7), (8), and (9). Indeed, in A&H I, the District
Court first applied the Lapp test in analyzing A&H's infringement claim regarding the use of The
Miracle Bra mark on lingerie, and then observed that much of the same analysis could be used to
determine whether The Miracle Bra swimsuit and the Miraclesuit shared the same market. See id. at
1266.7
46
The above observations lead us to conclude that the Lapp factors should be used both for
competing and for noncompeting goods. As for those factors that specifically refer to noncompeting
goods, we believe that, rather than force courts first to inquire as to whether or not the goods are
directly competitive simply for the purpose of determining if those factors apply--and, presumably,
applying Lapp factors to make this initial determination-- factors (7), (9), and (10) of the Lapp test
must be adapted to make them applicable whether the products directly compete or not.
47
In holding that the Lapp test is to be employed when examining both competing and noncompeting
goods, we acknowledge that we have at times suggested that the method for comparing competing
goods is different from that for noncompeting goods. In Williamson-Dickie Manufacturing Co. v. Davis
Manufacturing Co., 251 F.2d 924 (3d Cir. 1958), for example, we did not look beyond the marks
themselves in upholding a trial court's determination that the marks "Dickie Davis" and "Dickie's" for
boys' clothing were confusingly similar. See id. at 926-27. Furthermore, in Lapp we stated that
48
[w]here the trademark owner and the alleged infringer deal in competing goods or services, the
court need rarely look beyond the mark itself. In those cases the court will generally examine the
registered mark, determine whether it is inherently distinctive or has acquired sufficient secondary
meaning to make it distinctive, and compare it against the challenged mark.
49
721 F.2d at 462 (emphasis added). Additionally, in Fisons, we noted that the
50
showing of proof plaintiff must make for [likelihood of confusion] depends on whether the goods or
services offered by the trademark owner and the alleged infringer are in direct competition . . . .
Where the goods or services are not competing, the similarity of the marks is only one of a number of
factors the court must examine to determine likelihood of confusion.
51
30 F.3d at 472-73. Finally, in A&H III, we stated that "the standard to be applied when goods . . .
are directly competing . . . is different than that applied when the goods are not competing." 166 F.3d
at 202. In each of these cases, we arguably implied that when the goods are competing, the similarity
of the marks is the only relevant factor.
52
Nonetheless, we read our prior opinions on this subject to counsel only that a district court may, if
it so chooses, examine only mark similarity for directly competing goods.
53
A&H urges us to take the quoted statement from A&H III to mean that a district court should not
consider any factors at all beyond the similarity of the marks themselves. However, we believe that
the word "standard" is different from the word "test." The better reading of this statement is the literal
one: The "standard" for determining when marks are likely to be confused is different when the marks
directly compete, i.e., the factor regarding the similarity of marks may increase in importance, but it
does not eliminate the other factors entirely. This proposition is not only unremarkable, it flows
naturally from the Lapp test, which considers the competition and potential competition of the
products in the marketplace. We have certainly never held that a court may not look beyond the
marks themselves to determine likelihood of confusion. The quote from Lapp itself, rescribed in our
prior opinion in this case ("the court need rarely look beyond the mark itself ") presumes that a court
might sometimes need to look beyond the mark. Lapp, 721 F.2d at 462.
54
We think that this inference is a sound one, for there appears to be no reason, statutory or
otherwise, to impose the restrictive rule proposed by A&H. Indeed, the cases relied upon by A&H do
no more than suggest that the Lapp inquiry may be unnecessary in some directly competing goods
cases. See, e.g., A&H III, 166 F.3d at 202 (holding that in directly competing goods cases, the multi-
factored test "is not required"). At all events, because we have never before been confronted with this
question, any implication in our prior cases that courts are foreclosed from looking beyond mark
similarity for competing goods would have been dictum.
55
Our conclusion that the Lapp factors may be used to determine the likelihood of confusion in cases
of directly competing goods, at least when the marks are not identical, accords with the approaches of
the Second, Sixth, Eighth, and Ninth Circuits, which also have approved using multi-factored tests,
developed for noncompetitive goods, in the competitive goods arena. See Banff, Ltd. v. Federated
Dep't Stores, Inc., 841 F.2d 486, 490 (2d Cir. 1988); Jet, Inc. v. Sewage Aeration Sys., 165 F.3d 419,
421-22 (6th Cir. 1999); Duluth News-Tribune v. Mesabi Publ'g Co., 84 F.3d 1093, 1096 (8th Cir.
1996); Dr. Seuss Enters., L.P. v. Penguin Books U.S.A., Inc., 109 F.3d 1394, 1404 (9th Cir. 1997).
56
As explained above, we do not hold that a District Court must use the factors. In fact our
precedents suggest the opposite. If products are directly competing, and the marks are clearly very
similar, a district judge should feel free to consider only the similarity of the marks themselves. See,
e.g., Opticians Ass'n of Am. v. Independent Opticians of Am.,920 F.2d 187, 195 (3d Cir. 1990)
("[v]ery little analysis" was necessary in a case where a splinter group of a larger organization
continued to use the organization's collective mark). Moreover, the court often need not apply each
and every factor; when goods are directly competing, both precedent and common sense counsel that
the similarity of the marks takes on great prominence.8 At all events, the factors are meant to be
tools, not hurdles. On the other hand, when, as in this case, the degree of confusing similarity of the
marks is not clear, see Barre-National, Inc., 773 F. Supp. at 742, a court can turn to the other factors.
Here, the District Court did not err in choosing to look beyond the marks themselves.
57
To summarize, we hold that whether or not the goods directly compete, the Lapp factors should be
employed to test for likelihood of confusion. Therefore, likelihood of confusion for both competing and
noncompeting goods should be tested with reference to the following:
58
59
(2) the strength of the owner's mark;
60
consumers when making a purchase;
61
(4) the length of time the defendant has used the mark without evidence of actual confusion
arising;
62
63
64
(7) whether the goods, competing or not competing, are marketed through the same channels of
trade and advertised through the same media;
65
66
(9) the relationship of the goods in the minds of consumers, whether because of the near-identity
of the products, the similarity of function, or other factors;
67
(10) other facts suggesting that the consuming public might expect the prior owner to manufacture
both products, or expect the prior owner to manufacture a product in the defendant's market, or
expect that the prior owner is likely to expand into the defendant's market.
68
As we stress further below, the Lapp test is a qualitative inquiry. Not all factors will be relevant in
all cases; further, the different factors may properly be accorded different weights depending on the
particular factual setting. A district court should utilize the factors that seem appropriate to a given
situation.
C. The District Court's Methodology
69
A&H argues in the alternative that inasmuch as the District Court used a multi-factored test, it
should have considered all of the Lapp factors, and that the "missing" factors would have favored
A&H. It therefore contends that the court erred as a matter of law in fashioning its own test. However,
the test used by the District Court is functionally the same as the Lapp test. A comparison of these
factor lists reveals that the ostensibly missing Lapp factors appear to be incorporated into the District
Court's test. Lapp factor (9), "the relationship of the goods in the minds of the consumers because of
the similarity of function," and Lapp factor (8), "the extent to which the targets of the parties' sales
efforts are the same," are subsumed in the court's factor (3), which considers the "similarity of the
products and the degree to which they directly compete with each other." Lapp factor (4), "the length
of time the defendant has used the mark without evidence of actual confusion" is subsumed along
with factor (6), "evidence of actual confusion," within the District Court's factor (7), "incidents of
actual confusion." Lapp factor (10), "other facts suggesting that the consuming public might expect
the prior owner to manufacture both products, or expect the prior owner to manufacture a product in
the defendant's market, or expect that the prior owner is likely to expand into the defendant's
market," is unmentioned, but also unnecessary, because the similarity of the goods and their
competitive relationship was accounted for in the court's factor (3).
70
A&H essentially argues that, had the Lapp test been applied as written, a greater absolute number
of factors would have been decided in its favor, thus leading to a different outcome; for instance, the
court's factor (3), rather than counting in its favor a single time, would have been divided into at least
two factors, each of which would have weighed in its favor. However, we have repeatedly insisted that
the Lapp factors are not to be mechanically tallied, but rather that they are tools to guide a qualitative
decision. See Fisons, 30 F.3d at 476 n.11 ("The weight given to each factor in the overall picture, as
well as its weighing for plaintiff or defendant, must be done on an individual fact- specific basis.").
71
The District Court did not engage in a simplistic quantitative comparison, but accurately understood
the role of the factors:
72
No single factor is dispositive, and a finding of a likelihood of confusion does not require a positive
finding on a majority of these factors. Instead, they are simply a guide to help determine whether
confusion would be likely between the use of two contested trademarks on competing products. In
addition to the listed factors, a court is free to consider other relevant factors in determining whether
a likelihood of confusion exists.
73
A&H IV, 57 F. Supp. 2d at 164 (citations omitted). Although it might promote clarity always to use
the same factors in the same order, the District Court covered all the ground covered by the Lapp
factors and did so with care. Therefore, we conclude, the court did not err in its use of the factors.
IV. Review of the District Court's Analysis
74
Because we hold that the District Court's methodology was functionally similar to the Lapp test, we
will review the court's decision on its own terms; i.e., using the multi-factored test that the District
Court created. In the future, however, for the sake of consistency, district courts should employ the
formulation of the test for confusion as set forth in Lapp and in Part III. B, supra.
A. Similarity of the Marks
75
The single most important factor in determining likelihood of confusion is mark similarity. See
Fisons, 30 F.3d at 476. The test for such similarity is" `whether the labels create the same overall
impression when viewed separately.' " Id. (quoting Banff, Ltd. v. Federated Dep't Stores, Inc., 841
F.2d 486, 492 (2d Cir. 1988)). Marks "are confusingly similar if ordinary consumers would likely
conclude that [the two products] share a common source, affiliation, connection or sponsorship." Id.
Side-by-side comparison of the two marks is not the proper method for analysis when the products
are not usually sold in such a fashion. Instead, an effort must be made to move into the mind of the
roving consumer. See Ciba-Geigy Corp. v. Bolar Pharm. Co., Inc., 747 F.2d 844, 851 (3d Cir. 1984)
(affirming a district court's conclusion that, in the trade dress context, "[r]ealistically, the likelihood of
confusion cannot be assessed by a side-by-side comparison of the plaintiff's and defendant's products.
It is the overall physical appearance of defendant's trade dress which is critical"); 3 J. McCarthy,
Trademarks and Unfair Competition S 23:59, at 23-162 (4th ed. 2000) ("The law does not require that
the reasonably prudent purchaser keep a handy file of photographs and labels which he or she must
pull out to compare with the label of every product purchased.").
76
The District Court acknowledged this principle, recognizing that "side-by-side comparison of the
conflicting marks is improper if that is not the way buyers see the products in the market." A&H IV, 57
F. Supp. 2d at 167-68. However, the general rule that marks should be viewed in their entirety does
not undermine the common-sense precept that the more forceful and distinctive aspects of a mark
should be given more weight, and the other aspects less weight. See Country Floors, Inc. v.
Partnership of Gepner and Ford, 930 F.2d 1056, 1065 (3d Cir. 1991) ("When the dominant portions of
the two marks are the same, confusion is likely."). Applying these principles, the court looked at the
sight, sound, and meaning of the marks, and considered the effect of the housemarks and Victoria's
Secret's disclaimer.
1. Sight, Sound, Meaning
77
The District Court closely examined the sight, sound, and meaning of the competing marks and
concluded that, purely on the aesthetic level, the marks alone are "somewhat distinct." A&H IV, 57 F.
Supp. 2d at 167. Considering the sound of the marks, it noted that although they share the term
MIRACLE, there are different numbers of syllables, and the last syllable of each is different. Moreover,
Miraclesuit bleeds two words together while The Miracle Bra consists of three discrete words. In short,
the District Court concluded that the two marks sound different. We agree. The court also properly
noted that in previous cases, where courts had found a likelihood of confusion based on sound, a
closer phonetic similarity was often present. See id. (citing Bell Publ'g Corp. v. Bantam
Doubleday Dell Publ'g Group, 17 U.S.P.Q.2d 1634, 1637 (E.D. Pa. 1990) ("Dell" and "Bell"); Pocono
Rubber Cloth Co. v. J.A. Livingston, Inc., 79 F.2d 446, 448 (3d Cir. 1935) ("swavelle" and "swavel")).
78
The District Court recognized that other, less similar-sounding marks had been found to be
confusingly similar, as in Williamson-Dickie Manufacturing Co. v. Davis Manufacturing Co., 251 F.2d
924, 926-27 (3d Cir. 1958), where the court upheld the trial court's determination that the marks
"Dickie Davis" and "Dickie's" were confusingly similar. However, it concluded that these cases could be
distinguished because the presentations of the Miraclesuit and The Miracle Bra marks were sufficiently
different to create an overall impression that was not confusingly similar, especially in light of
Victoria's Secret's disclaimer and the use of the housemarks, as discussed infra Section IV.A.2.
79
Turning to the visual difference, the court noted that Miraclesuit is often accompanied by the "Look
ten pounds lighter in ten seconds!" slogan, in various incarnations. Moreover, the court observed that:
80
The Miracle Bra is presented in either all capital block letters or in small capital letters with the
letters, T,M,B alone in upper capital letters, while the Miraclesuit has sometimes been advertised with
the initial letter M capitalized and the rest of the mark in lower-case letters in italicized script or as one
word with both the M and S capitalized.
81
A&H IV, 57 F. Supp. 2d at 167. The court also determined that the meaning of the two marks was
slightly different, as the descriptive word "bra" focused attention on the brassiere portion of the
Victoria's Secret product, rather than on the entire suit. See A&H IV, 57 F. Supp. 2d at 166- 67
(stating that the term "bra" distinguishes the Victoria's Secret product because it "identifies the
particular feature of the garment where the `miracle' is manifested"). This conclusion accords with the
District Court's finding in A&H I, which was upheld by the en banc court. See A&H III, 166 F.3d at 195
("[D]escriptive terms (such as `bra' and `suit') must be considered in assessing infringement.").
82
Taking all of these elements into account, the District Court concluded that, without consideration of
the role of the housemark and the disclaimer, "the Miraclesuit mark and The Miracle Bra mark are
somewhat distinct in sight, sound and meaning." A&H IV, 57 F. Supp. 2d at 168. A&H challenges this
analysis. It begins by asserting that, because the dominant portion of each mark is the word "Miracle,"
and the other words in each mark are generic (bra, swimwear, suit, the), the marks must be deemed
confusingly similar. It grounds this analysis on Country Floors, Inc. v. Partnership of Gepner and
Ford, 930 F.2d 1056 (3d Cir. 1991), in which we noted that it was relevant for purposes of comparison
whether, in registering two marks, the PTO required certain descriptive elements of the mark to be
disclaimed. Comparing "Country Tiles" and "Country Floors," we held that because "floors" and "tiles"
were discounted as generic in the application to the PTO, "the use of the word `Country' by the
Partnership is a material, although not necessarily a controlling, consideration on the Corporation's
claim that `Country Tiles' logo directly infringed on the Corporation's federal trademark." Id. at 1065.
83
According to A&H, the same logic dictates that these marks are likely to be confused. Not only is
the dominant portion of each mark "MIRACLE," but the PTO examining attorney discounted the word
"bra" in Victoria's Secret's PTO application to use The Miracle Bra for swimwear. Furthermore, A&H
notes that in Fisons, in which "Fairway" and "Fairway Green" were up against each other, we took the
district court to task for focusing too heavily on the differences between the marks instead of
analyzing the overall impression. There, we held that "a subsequent user may not avoid likely
confusion by appropriating another's entire mark and adding descriptive or non-descriptive matter to
it." Id. at 477 (quoting 2 J. McCarthy, Trademarks and Unfair Competition S 23:15[8], at 23-102 (3d
ed. 1992)).
84
We agree with A&H that the words "the" and "bra" and "suit" are not particularly potent, but none
of our cases has suggested a per se rule about the impact of generic terms within a nongeneric
trademark; ultimately, the weight to be given each word is a judgment call, best suited to the fact-
finder. Although the District Court might well have been more emphatic in stating its ultimate
conclusions on this score, in our view, the court did not err, much less clearly err, in finding that the
sight and sound were distinct, despite the fact that the differences involve generic elements.9
2. The Housemarks and the Disclaimer
85
Having found the marks only "somewhat distinct," the District Court further concluded that
Victoria's Secret's use of its housemark and disclaimer renders the marks dissimilar.10 As the District
Court recognized, affixing a well-known housemark like that of Victoria's Secret can help diminish the
likelihood of confusion. See A&H IV, 57 F. Supp. 2d at 168. We have previously acknowledged the
importance of housemarks in comparing the "overall impression" of two marks. A&H III, 166 F.3d at
195. In our previous decision, A&H III, we noted the relevance of the fact that both The Miracle Bra
and Miraclesuit were sold with housemarks. See id. at 195.
86
Although A&H contends that Victoria's Secret's housemark should not have been a part of the
similarity of marks analysis, the consideration of the effect of such marks has wide support in the case
law. "Use of a strong, well-known mark as a part of a composite name reduces the likelihood that the
remainder of the composite name will create a commercial impression distinct from that mark." Four
Seasons Hotels Ltd. v. Koury Corp., 776 F. Supp. 240, 247 (E.D.N.C. 1991); see also W. W. W.
Pharm. Co., Inc. v. Gillette Co., 984 F.2d 567, 573 (2d Cir. 1993) ("[W]hen a similar mark is used in
conjunction with a company name, the likelihood of confusion may be lessened."); Astra Pharm.
Prods, Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1205 (1st Cir. 1983) ("[O]therwise similar
marks are not likely to be confused where used in conjunction with the clearly displayed name and/or
logo of the manufacturer."); Henri's Food Prods Co., Inc. v. Kraft, Inc., 717 F.2d 352, 355-56 (7th Cir.
1983) ("Yet even Kraft agrees that a prominent housemark may also tend to lessen confusion."). But
see Frehling Enters., Inc. v. International Select Group, Inc., 192 F.3d 1330, 1337-38 (11th Cir. 1999)
(adding brand name did not lessen likelihood of confusion for marks of otherwise "striking similarity");
A.J. Canfield Co. v. Vess Beverages, Inc., 612 F. Supp. 1081, 1091 (N.D. Ill. 1985) ("Vess's use of its
own VESS housemark in conjunction with Chocolate Fudge is not a defense to Canfield's infringement
claim, for the use of another's trademark constitutes infringement with or without the use of the
infringer's housemark."), aff'd, 796 F.2d 903 (7th Cir. 1986).
87
Furthermore, and most importantly, the District Court concluded that the disclaimer used by
Victoria's Secret "create[d] a distinction" between the two marks. Therefore, it held that there was no
similarity "solely based on the presumption that Defendants will continue to use the disclaimer when
marketing The Miracle Bra swimwear." A&H IV, 57 F. Supp. 2d at 169. The court grounded its finding
on the fact that
88
[a]lthough the positioning varied, the disclaimer often appeared in dark, black type against a light
background at the lower left corner of the actual page on which The Miracle Bra Swimwear Collection
was featured in the catalog, just above the telephone number for placing an order. The President of
VS Catalogue stated that since there are only a few seconds in which to capture a consumer's
attention, placement near the telephone number is particularly appropriate.
89
Id. (citations omitted). The disclaimer, the court concluded, tips the balance and makes it unlikely
that consumers will be confused by the marks themselves.11
90
A&H argues that disclaimers cannot be considered when determining likelihood of confusion, relying
heavily on United States Jaycees v. Philadelphia Jaycees, 639 F.2d 134, 142 (3d Cir. 1981), in which
we held that an injunction requiring an infringing organization to add the word "Philadelphia" to its use
of the word "Jaycees" was too narrow a remedy for a Lanham Act violation. However, Jaycees does
not control for two reasons. First, the addition of a geographical term, unlike the use of a housemark,
is unlikely to vitiate confusion, as one could easily conclude that the Philadelphia Jaycees was a
subgroup of the larger national organization. In this case, the contest is not between Miraclesuit and
Philadelphia Miraclesuit, a situation that would probably cause confusion, but rather is between two
different names, one of which has a prominent disclaimer highlighting the difference. Second, our
decision in Jaycees addressed the propriety of a remedy, and was premised on a finding of a Lanham
Act violation, whereas in this case, we analyze the disclaimer and housemark to determine whether
there was any violation at all.
91
In sum, the District Court committed no legal error in considering the disclaimer. We are also
satisfied that the District Court committed no factual error in concluding that Victoria's Secret's
disclaimer helped to dispel potential consumer confusion between the Miraclesuit and The Miracle Bra
swimwear.
92
3. The PTO's Rejection of Victoria's Secret's Application
93
Finally, A&H argues that the District Court erred in failing to give weight to the fact that the PTO
attorney rejected Victoria's Secret's application to register The Miracle Bra for "swimsuits, bathing
suits and bikinis" on the ground that there was a likelihood of confusion between its mark and
Miraclesuit.12 A&H does not argue that a PTO determination is controlling, but rather that it is
important evidence that should be given considerable weight.13
94
There is some jurisprudence, although not in Third Circuit case law, suggesting that a PTO
determination that marks are likely to be confused should be given weight as a matter of law. See,
e.g., Guardian Life Ins. Co. of Am. v. American Guardian Life Assur. Co., 943 F. Supp. 509, 523 (E.D.
Pa. 1996) ("While not dispositive of the issue of likelihood of confusion, the PTO's refusal to register
Defendant's marks is entitled to substantial consideration by this Court."); Driving Force, Inc. v.
Manpower, Inc., 498 F. Supp. 21, 25 (E.D. Pa. 1980) (same); Syntex Labs., Inc. v. Norwich Pharm.
Co., 437 F.2d 566, 569 (2d Cir. 1971) (refusal of Patent Office to register a mark is "entitled to great
weight").
95
On the other hand, the Ninth Circuit has held that a preliminary determination by a low-level PTO
administrator should not be accorded much weight, especially where the PTO officer did not have
access to the full panoply of information that might inform a likelihood-of-confusion analysis. See
Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794, 802 (9th Cir. 1970). The court explained:
96
Any such determination made by the Patent Office under the circumstances just noted must be
regarded as inconclusive since made at its lowest administrative level. . . . The determination by the
Patent Office is rendered less persuasive still by the fact that the Patent Office did not have before it
the great mass of evidence which the parties have since presented to both the District Court and this
court in support of their claims.
97
Id. (citation omitted). Moreover, other courts have held that a court need not defer to the patent
office when there is relevant evidence not considered by the office that informs the analysis. See, e.g.,
Marketing Displays, Inc. v. Traffix Devices, Inc., 200 F.3d 929, 934 (6th Cir. 1999).
98
We find Carter-Wallace and Marketing Displays persuasive, and conclude that, although an initial
PTO determination by an examining attorney may be considered, it need not be given weight when
the PTO attorney did not review all the evidence available to the District Court. In A&H I, 926 F.Supp.
at 1255, the District Court concluded that even a preliminary PTO determination should be given
"substantial weight," but it gave no weight to the PTO's decision in its most recent opinion. It was not
clear error to refuse to do so. As in Carter-Wallace, the PTO in this case was making a low-level
preliminary determination, and did not have the benefit of the complete record before the District
Court. Furthermore, the PTO attorney's decision was conclusory, not searching or analytical. See note
9, supra. Although we prefer to avoid conflicts with the PTO, we do not think that such a decision
needed to receive deference here, where the District Court's conclusion that the marks were not
confusingly similar relied upon the housemarks and Victoria's Secret's disclaimer, matters apparently
not considered by the examining attorney.
4. Summary
99
In sum, we conclude that the District Court did not clearly err in concluding that the marks
themselves were not confusingly similar, considering their overall commercial impression, and did not
make an error of law in choosing to consider Victoria's Secret's housemark and the disclaimer, or in
refusing to give weight to the decision of the PTO attorney.
B. Strength of the Marks
100
With respect to Lapp factor (2),"the strength of the owner's mark," the District Court applied the
Fisons test, which measures mark strength by "(1) the distinctiveness or conceptual strength of the
mark; and (2) the commercial strength or marketplace recognition of the mark." A&H IV, 57 F.Supp.
2d at 164. The first prong of this test looks to the inherent features of the mark; the second looks to
factual evidence of "marketplace recognition." See Fisons, 30 F.3d at 479. The District Court
concluded that the mark Miraclesuit ranged "conceptually" from suggestive to arbitrary, and that
evidence of A&H's advertising expenditures demonstrated that Miraclesuit had commercial strength, as
well. Level of distinctiveness and mark strength are factual determinations that we review for clear
error, see Ford Motor Co. v. Summit Motor Prods., Inc., 930 F.2d 277, 292 n.18 (3d Cir. 1991), but
our review of legal conclusions is plenary.
1. Distinctiveness or Conceptual Strength
101
In order to determine whether a mark is protectable as a trademark, marks are divided into four
classifications: (1) generic (such as "DIET CHOCOLATE FUDGE SODA"); (2) descriptive (such as
"SECURITY CENTER"); (3) suggestive (such as "COPPERTONE"); and (4) arbitrary or fanciful (such as
"KODAK"). See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992).14 Arbitrary or fanciful
marks use terms that neither describe nor suggest anything about the product; they "bear no logical
or suggestive relation to the actual characteristics of the goods." A.J. Canfield, 808 F.2d at 296
(citation omitted). Suggestive marks require consumer "imagination, thought, or perception" to
determine what the product is. Id. at 297. Descriptive terms "forthwith convey[ ] an immediate idea of
the ingredients, qualities or characteristics of the goods." Id. Generic marks are those that "function
as the common descriptive name of a product class." Id. at 296. In order to qualify for Lanham Act
protection, a mark must either be suggestive, arbitrary, or fanciful, or must be descriptive with a
demonstration of secondary meaning. See id. at 297. Generic marks receive no protection; indeed,
they are not "trademarks" at all. See id. at 305.
102
Under the Lanham Act, stronger marks receive greater protection. See, e.g., Versa Prods. Co., Inc.
v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189, 203 (3d Cir. 1995) (observing that stronger marks carry greater
recognition, and that therefore a similar mark is more likely to cause confusion). Although the
conceptual strength of a mark is often associated with the particular category of "distinctiveness" into
which a mark falls (i.e., arbitrary, suggestive, or descriptive), that is not the only measure of
conceptual strength. This is because the classification system's primary purpose is to determine
whether the mark is protectable as a trademark in the first place--that is, to determine whether
consumers are likely to perceive the mark as a signifier of origin, rather than as a mere identification
of the type of product. See A.J. Canfield, 808 F.2d at 296; Banff, Ltd. v. Federated Dep't Stores,
Inc., 841 F.2d 486, 489 (2d Cir. 1988). The classification of a mark as arbitrary, suggestive, or
descriptive is only secondarily used to determine the degree of protection a mark should receive once
protectability has been established. These two inquiries--whether a mark is, in fact, a trademark,
versus how much protection the mark should receive--are often identical, but they do not have to be.
See Plus Prods. v. Plus Discount Foods, Inc., 722 F.2d 999, 1005 (2d Cir. 1983) ("Although this
classification system is a helpful tool [for determining strength] . . . it is not determinative . . . .").
103
Suggestive or arbitrary marks may, in fact, be "weak" marks, particularly if they are used in
connection with a number of different products. For instance, in H. Lubovsky, Inc. v. Esprit de Corp.,
627 F. Supp. 483 (S.D.N.Y. 1986), the court concluded that the mark "Esprit," though suggestive,
was, in fact, a "weak" mark. See id. at 487. Similarly, common marks like "Arrow," though certainly
not particularly descriptive of the underlying product, have been held to be "weak" marks. See Arrow
Distilleries, Inc. v. Globe Brewing Co., 117 F.2d 347, 351 (4th Cir. 1941). "Self- laudatory" marks like
"Sure," see Procter & Gamble Co. v. Johnson & Johnson, Inc., 485 F. Supp. 1185, 1196 (S.D.N.Y.
1980), "Super Duper," see S.M. Flickinger Co., Inc. v. Beatrice Foods Co., 174 U.S.P.Q. 51, 56
(T.T.A.B. 1972), "Plus," see Plus Prods., 722 F.2d at 1005, or, in this case, "Miracle," are generally
held to be weak marks. See 2 McCarthy, supra, S11:81, at 11-146 to 147.15 Thus, the classification of
a mark as "descriptive" or "arbitrary" for the purpose of determining whether it receives trademark
protection at all--though a useful guide in assessing the strength or weakness of a mark--is not
dispositive. See Express Servs., Inc. v. Careers Express Staffing Servs., 176 F.3d 183, 186 (3d Cir.
1999) (observing that classification of distinctiveness is "useful" in determining conceptual strength
(citing Banff, Ltd., 841 F.2d at 491)).
104
The District Court originally determined that the MIRACLE part of Miraclesuit was fanciful because it
does not describe or reveal anything about the product. However, the court believed that the SUIT
part was generic because it merely describes the qualities of the product. In sum, taking the mark's
parts together, the court concluded that Miraclesuit "ranges from suggestive to arbitrary" because it
requires some consumer imagination to determine its meaning, and therefore that the mark should
receive the highest level of protection. A&H IV, 57 F. Supp. 2d at 165.
105
For reasons we will presently explain, we conclude that the District Court's categorization of the
Miraclesuit mark was clearly erroneous, and that the term m Miraclesuit does not rise to the arbitrary
level but is, at best, merely suggestive. Further, we believe that the Court erred as a matter of law in
holding that its categorization of the mark was dispositive of the inquiry into the mark's strength.
Because both of these conclusions were relevant to the District Court's determination that the mark
was entitled to a high level of protection, we review each separately.
106
The District Court concluded that the Miraclesuit mark ranged from "suggestive to arbitrary"
because it believed that the word MIRACLE did not reveal anything about the product. To the contrary,
we believe that both parts of the mark describe or suggest something about the product: The word
"suit" has many meanings, but "bathing suit" is a frequent and familiar one. The word MIRACLE,
unlike, say, XEROX, indicates the effect that the product is supposed to have on the user or wearer,
and is ultimately merely a declaration of praise. Just as a "miracle worker" is a person who works
miracles, a "miraclesuit" is a suit that works miracles. Whether the slimming effect is literally
miraculous may be subject to debate, but the mark itself communicates something about the product.
Suggestive or descriptive marks are, of course, protected, but, depending on surrounding
circumstances (discussed below), they may receive lesser protection than arbitrary marks.
107
We also believe that the District Court committed an error of law in its automatic conclusion that,
because the Miraclesuit mark "range[d] from suggestive to arbitrary," it therefore should receive the
highest level of protection, thus dismissing efforts by Victoria's Secret to show that the Miraclesuit
mark is conceptually weaker because MIRACLE has been used by several other companies. MIRACLE is
used in other apparel markets, such as hosiery, children's wear, ready-to-wear, and maternity wear.
The court held that these other uses were irrelevant because the term MIRACLE was not used
specifically in conjunction with swimwear. See A&H IV, 57 F. Supp. 2d at 165 n.16. Although the wide
use of a term within the market at issue is more probative than the wide use of a term in other
markets, see Fisons, 30 F.3d at 479, the extensive use of the term in other markets may also have a
weakening effect on the strength of the mark.
108
For example, in Sun Banks of Florida, Inc. v. Sun Federal Savings & Loan Association, 651 F.2d
311, 316-17 & n.8 (5th Cir. 1981), the court gave special weight to the fact that 25 competing
financial institutions used the word "sun" in their titles, but also noted that over 4,400 Florida
businesses used the term. The Sun Banks court thus clearly considered extensive use in other markets
in its assessment of the weakness of the contested term m. See also Triumph Hosiery Mills, Inc. v.
Triumph Int'l Corp., 308 F.2d 196, 199 n.2 (2d Cir. 1962) ("The mark `Triumph' is a so- called weak
mark, i.e. it has been used many times to identify many types of products and services."). The
relevance of such other uses of similar marks is apparent; if a consumer is aware that a particular
mark, like "Triumph" or "Ace," is often used to designate a variety of products made by a variety of
manufacturers, that consumer will be less likely to assume that in a particular case, two individual
products, both with the mark "Triumph," come from the same source. See Steve's Ice Cream v.
Steve's Famous Hot Dogs, 3 U.S.P.Q.2d 1477, 1479 (T.T.A.B. 1987) ("[T]he numerous third-party
uses [of Steve's] demonstrate that the purchasing public has become conditioned to recognize that
many businesses . . . use the term . . . and . . . is able to distinguish between these businesses based
on small distinctions among the marks."); cf. S.C. Johnson & Son, Inc. v. Johnson, 116 F.2d 427, 430
(2d Cir. 1940) ("When all is said, if a man allows the good will of his business to become identified
with a surname so common as Johnson, it is fair to impose upon him some of the risk that another
Johnson may wish to sell goods not very far afield. . . .").
109
A&H notes that in Fisons we stated that"[w]hile other registrations and uses of Fairway for related
products and services would make the mark less strong if they were in the same market, their use in
different markets and for products and services that are not closely related does not necessarily
undermine Fisons' claim of strength." 30 F.3d at 479. We read this sentence to mean no more than it
says, and not, as A&H urges, as a per se rule against considering the use of the mark in different
markets and for unrelated products. The short of it is that, whatever category of distinctiveness into
which the mark falls, the multiple uses of MIRACLE in other markets is relevant to a determination of
A&H's mark's strength.
2. Commercial Strength of the Mark
110
Turning to the second part of the test, the District Court determined that the Miraclesuit mark has a
high level of commercial strength. It based its finding on the fact that A&H had spent so much money
on advertising, and that "their efforts undoubtedly resulted in increased public recognition." A&H IV,
57 F. Supp. 2d at 165. The court also noted that A&H's swimwear sales have steadily increased.
Taking these two indications of commercial strength into account, the District Court concluded that the
commercial strength inquiry weighed in favor of A&H. Although evidence of money spent does not
automatically translate into consumer recognition, it is clearly relevant, and hence the District Court's
methodology and conclusion does not appear to be in error or to involve a misapplication of the law.
3. Summary
111
The District Court erred in concluding that the Miraclesuit mark contained an arbitrary component,
and in concluding that the mark Miraclesuit was conceptually strong solely on the basis of its
categorization. However, if anything, the District Court's error weighed in A&H's favor by leading the
court to reject evidence that the Miraclesuit mark was weaker than A&H claimed. Therefore, the
District Court's error does not affect our affirmance of the District Court's conclusion that there was no
likelihood of direct confusion between Miraclesuit and The Miracle Bra.
C. Product Similarity
112
In discussing product similarity, the District Court first noted that although the products were both
swimsuits, they have slightly different functions: The Miraclesuit is designed and advertised to make
the figure appear slim, whereas The Miracle Bra suit is designed and advertised to enhance cleavage.
However, the court also noted that most Miraclesuits have bras--some even have cleavage enhancing
bras--and that a few Miracle Bra suits have lower body control. A review of these facts led the District
Court to conclude that the Miraclesuit and Miracle Bra suits were "somewhat interchangeable." A&H
IV, 57 F. Supp. 2d at 170. Therefore, it concluded, the product similarity factor favored A&H.
113
Given the evidence that, although both products may have a primary bust or midriff focus, both
products also have attributes that enhance both aspects of the female figure, we do not think that the
District Court clearly erred in making this finding. Furthermore, there was evidence that both products
pitch themselves as "improving" female shapeliness through swimwear, and although the means of
improvement are different and the products have different foci, the two suits are similar. In sum,
while the products are not identical, the court committed no error of law here, and its conclusion on
product similarity is supported by the record.
D. Marketing and Advertising Channels
114
The District Court concluded that the channels of sale and advertising of the products overlap. It
noted that both the price range for the suits and their means of sale are similar. It observed that the
Miraclesuit has been advertised in in-store promotions, magazines, department store bill enclosures,
and press kits to buyers, editors, and publishers, and that The Miracle Bra suits have been marketed
in point-of-sale promotions in Victoria's Secret stores, and through press kits and print and television
advertising. The court held that the channels of trade were similar, in that Miraclesuit is sold to
department stores and catalogues that compete with Victoria's Secret Stores and Victoria's Secret
Catalogue. Although the court noted that The Miracle Bra suits are never sold outside of the Victoria's
Secret store or catalogue, and that "[s]uch fine distinctions between the channels in which the
products are sold may weigh in favor of diminishing a likelihood of confusion," A&H IV, 57 F. Supp. 2d
at 171, it concluded that the "conditions of purchase" were similar, and weighed this factor in favor of
A&H.
115
Although there are significant differences in trade channels--notably, that Victoria's Secret sells its
product only in its own stores and catalogues--perfect parallelism will rarely be found. Furthermore,
the Miraclesuit has twice been sold in Victoria's Secret catalogues. Thus, the District Court did not
clearly err in its factual conclusion that channels of marketing and advertising weigh in favor of A&H.
E. Sophistication of Consumers
116
The District Court next considered the "sophistication of consumers," which is the functional
equivalent of Lapp factor (3), "the price of the goods and other factors indicative of the care and
attention expected of consumers when making a purchase." The court concluded that the products'
consumers were likely to be sophisticated, and weighed this factor in favor of the defendants. Three
considerations drove this decision. The court relied on cases holding that buyers of women's apparel
are sophisticated purchasers, and on the fact that A&H had presented no evidence that its consumers
were not sophisticated. The court also noted that the "entire success" of each brand "relies on the
premise that consumers will discern the slimming effect and cleavage enhancement features of their
respective swimsuits." A&H IV, 57 F. Supp. 2d at 172.
117
A&H submits that the District Court erred in reaching this conclusion. It points to Victoria's Secret's
admission during this litigation that the attention of consumers must be captured within a few
seconds. See A&H II, 967 F. Supp. at 1466. However, there are no hard and fast rules for this
determination, and the celerity with which one makes a decision does not correlate exactly with the
extent of one's discrimination in matters of taste. The District Court's conclusion that consumers will
be discriminating in their selection of swimwear, whether one-piece or bikinis, rings especially true.
We find no error in the District Court's conclusion that this factor weighs in favor of Victoria's Secret.
F. The Intent of the Defendant
118
Before discussing this factor, it is important to reiterate the purpose of the "intent" inquiry in the
Lapp analysis. Intent is relevant to the extent that it bears on the likelihood of confusion. We have
held that 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. See Versa
Prods. Co., Inc. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189, 205-06 (3d Cir. 1995).16 Courts' willingness to
infer the efficacy of an intent to confuse is thus somewhat punitive, due in part to a willingness to
believe that a closer nexus exists between an intent to deceive and success in that effort than exists
between an intent to copy and success in causing confusion. See id. at 205-07. Some degree of bad
faith is also relevant to the selection of an appropriate remedy. See A&H III, 166 F.3d at 208-09.
119
The District Court found that Victoria's Secret had not intended to confuse customers when it began
using The Miracle Bra in conjunction with its swimwear line. The record supports the conclusion that
Victoria's Secret brought the mark into swimwear because of its success in lingerie. The court thus
properly found that Victoria's Secret had not expanded The Miracle Bra into swimwear in an effort to
ride on A&H's good name.
120
A&H argues that the court should have weighed the intent factor in its favor because when The
Miracle Bra was registered for lingerie, Victoria's Secret's counsel learned that there were several pre-
existing MIRACLE marks, including A&H's Miraclesuit. However, the court credited evidence that in
1994, when Victoria's Secret attempted to register The Miracle Bra for "swimsuits, bathing suits and
bikinis," Victoria's Secret Stores assumed that its original trademark search had uncovered no
confusingly similar registrations. See A&H IV, 57 F.Supp. 2d at 173. The court also credited the
evidence that no one at Victoria's Secret Stores responsible for the expansion of The Miracle Bra to
swimwear had ever heard of the Miraclesuit or knew that Victoria's Secret Catalogue had ever sold
Miraclesuits. Further, the court found that Victoria's Secret Catalogue had chosen to expand the mark
into swimwear for "legitimate reasons." Id. The PTO attorney's denial of registration occurred after this
suit had been filed. See id. The District Court held, therefore, that it was "entirely credible" that no
one at Victoria's Secret Stores knew about Miraclesuit and that "[a]t best, this lack of communication
was a result of bureaucratic carelessness and was not intentionally done for the purpose of profiting
from the notoriety of Plaintiffs' Miraclesuit mark." Id. at 173-74. We discern no clear error or
misapplication of law in these findings, or in the District Court's weighing of the intent factor in
Victoria's Secret's favor.
G. Actual Confusion
121
The District Court found that, although there was some evidence of actual confusion, that evidence
was insufficient to permit weighing this factor in A&H's favor. A&H produced an article in Women's
Wear Daily mentioning "the introduction of the Miracle Swimsuit in the upcoming Victoria's Secret
Catalog." A&H IV, 57 F. Supp. 2d at 174. An A&H sales agent testified that a professional swimwear
buyer asked him if A&H carried The Miracle Bra swimsuit; that a professional swimwear representative
asked if the two were related; that a former buyer asked if the Miraclesuit had that push-up element
she had heard so much about; and that a buyer asked him for an appointment to see The Miracle Bra
line. See id. A&H also presented testimony that one of its own public relations agents thought that
A&H made both Miraclesuit and The Miracle Bra; that a buyer stated that she had heard of the
Miraclesuit as a suit that enhanced the bust; and that an A&H receptionist had received two inquiries
concerning The Miracle Bra. See id.
122
The District Court, while not explicitly discrediting this evidence, viewed it with great skepticism,
given the interested sources and the inability to cross-examine the supposedly confused
individuals.17 Furthermore, it concluded that, even if it credited all the submissions, the evidence of
actual confusion was isolated and idiosyncratic. See id. at 175. This decision is supported by the case
law. "Ownership of a trademark does not guarantee total absence of confusion in the marketplace.
Selection of a mark with a common surname naturally entails a risk of some uncertainty and the law
will not assure absolute protection." Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1231
(3d Cir. 1978). Although some cases hold that, given the difficulty of proving actual confusion,
relatively little showing on the part of the plaintiffs is required, see, e.g., World Carpets, Inc. v. Dick
Littrell's New World Carpets, 438 F.2d 482, 489 (5th Cir. 1971), other cases warn against using
isolated instances of confusion to buttress a claim, see, e.g., Amstar Corp. v. Domino's Pizza,
Inc., 615 F.2d 252, 263 (5th Cir. 1980). It is within the District Court's discretion to consider the facts,
and weigh them. In our view, the District Court's conclusion as to the absence of actual confusion was
supported by the record, and hence we will not disturb its decision to weigh this factor in favor of
Victoria's Secret.
H. Combining the Factors
123
As the foregoing discussion demonstrates, the District Court carefully considered the relevant
factors weighing for and against a finding of likelihood of confusion. Most importantly, the court
determined that, although the overall commercial impressions of the marks are only "somewhat
distinct" if one looks just to sight, sound, and meaning, the fact that Victoria's Secret uses a
housemark and a disclaimer tips the balance and makes this factor, the similarity of the marks
themselves, weigh in favor of Victoria's Secret. This factor was essential to the District Court's
ultimate finding of fact; it found that "solely" on the assumption that the disclaimer would continue to
be used, the marks were not similar. As to the other factors, the court found that: (1) the products;
and (2) the channels of marketing were sufficiently similar to weigh those factors in favor of A&H, but
that: (3) the consumers were sophisticated; (4) Victoria's Secret exhibited no culpable intent in
selecting its mark; and (5) there was insufficient credible evidence of instances of actual confusion, all
of which weighed in favor of Victoria's Secret. We find no reason to disturb any of these findings.
Finally, the court also concluded that the mark Miraclesuit merited a high level of protection, and
weighed this factor in favor of A&H. Though we believe that the District Court could have been more
emphatic in its finding that the marks were dissimilar, and may also have overrated the strength of
the Miraclesuit mark, these factors only support our affirmance of the ultimate conclusion that the
marks are not likely to be directly confused.
124
Although a number of factors favored A&H, these do not upset the balance. In sum, we find no
error in the District Court's careful consideration and weighing of the factors, and its use of them as
tools in reaching its ultimate finding of fact. We therefore will affirm the judgment with respect to the
direct confusion claim.
V. The Reverse Confusion Claim
A. Introduction
125
We recently recognized the doctrine of "reverse confusion" as a distinct basis for a claim under S
43(a) of the Lanham Act. See Fisons, 30 F.3d at 475. While the essence of a direct confusion claim is
that a junior user of a mark is said to free-ride on the "reputation and good will of the senior user by
adopting a similar or identical mark," id., reverse confusion occurs when "the junior user saturates the
market with a similar trademark and overwhelms the senior user." Id. (quoting Ameritech, Inc. v.
American Info. Techs. Corp., 811 F.2d 960, 964 (6th Cir. 1987)). The harm flowing from reverse
confusion is that
126
[t]he public comes to assume the senior user's products are really the junior user's or that the
former has become somehow connected to the latter. .. . [T]he senior user loses the value of the
trademark--its product identity, corporate identity, control over its goodwill and reputation, and ability
to move into new markets.
127
Ameritech, Inc., 811 F.2d at 964; see also Fisons, 30 F. 3d at 479; Sands, Taylor & Wood Co. v.
Quaker Oats Co., 978 F.2d 947, 957 (7th Cir. 1992); Banff, Ltd. v. Federated Dep't Stores, Inc., 841
F.2d 486, 490-91 (2d Cir. 1988); Capital Films Corp. v. Charles Fries Prods, Inc., 628 F.2d 387, 393
(5th Cir. 1980); Big O Tire Dealers, Inc., v. Goodyear Tire & Rubber Co., 561 F.2d 1365, 1372 (10th
Cir. 1977). As we explained in Fisons, reverse confusion protects "smaller senior users . . . against
larger, more e powerful companies who want to use identical or confusingly similar trademarks." 30
F.3d at 475. Absent reverse confusion, "a company with a well established trade name and with the
economic power to advertise extensively [would be immunized from suit] for a product name taken
from a competitor." Big O Tire Dealers, Inc., 561 F.2d at 1372 (citation omitted). The doctrine of
reverse confusion--or, at least, some of its applications--is not without its critics. See, e.g., Thad G.
Long & Alfred M. Marks, Reverse Confusion: Fundamentals and Limits, 84 Trademark Rep. 1, 2-3
(1994); Daniel D. Domenico, Note, Mark Madness: How Brent Musburger and the Miracle Bra May
Have Led to a More Equitable and Efficient Understanding of the Reverse Confusion Doctrine in
Trademark Law, 86 Va. L. Rev. 597, 613-14, 621-24 (2000).18 The chief danger inherent in
recognizing reverse confusion claims is that innovative junior users, who have invested heavily in
promoting a particular mark, will suddenly find their use of the mark blocked by plaintiffs who have
not invested in, or promoted, their own marks. See Weiner King, Inc. v. Wiener King Corp., 615 F.2d
512, 522 (C.C.P.A. 1980). Further, an overly-vigorous use of the doctrine of reverse confusion could
potentially inhibit larger companies with established marks from expanding their product lines --for
instance, had Victoria's Secret thought, at the outset, that it would not be permitted carry over
its popular The Miracle Bra mark from lingerie to swimwear, it might have chosen not to enter the
swimsuit market at all.
128
This would be an undesirable result; in fact, it is precisely to allow a certain amount of "space" for
companies to expand their product lines under established marks that we allow infringement suits
against suppliers of noncompeting goods. See Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 464 (3d
Cir. 1983). This is not to say that the reverse confusion doctrine does not have its proper place; as
has been recognized, without the existence of such a claim, smaller business owners might not have
any incentive to invest in their marks at all, for fear the mark could be usurped at will by a larger
competitor. See SK&F, Co. v. Premo Pharm. Labs., Inc., 625 F.2d 1055, 1067 (3d Cir. 1980)
("[P]ermitting piracy of . . . identifying trade dress can only discourage other manufacturers from
making a similar individual promotional effort."). However, these concerns do sensitize us to the
potential untoward effects of an overenthusiastic enforcement of reverse confusion claims, although
they cannot supersede our judicial recognition of the doctrine.
B. The Test for Reverse Confusion
129
As in a direct confusion claim, the ultimate question in a reverse confusion claim is whether there is
a likelihood of consumer confusion as to the source or sponsorship of a product. See Fisons, 30 F.3d at
475. Although it would seem somewhat counterintuitive to posit that the likelihood of confusion
analysis changes from the direct confusion to the reverse confusion context,19 there are differences
between the two situations that bear mentioning. Therefore, to clarify the test for reverse confusion
that has developed in our jurisprudence, we will walk through the factors that a district court should
consider (where relevant) in assessing a such a claim.
1. The Factors that are the Same
130
As an initial matter, there are several factors that should generally be analyzed in the same way for
a reverse confusion claim as they are for a direct confusion claim.20 First, the attentiveness of
consumers does not change (factor (3)); in both direct and reverse confusion, the question is whether
this is the kind of product that consumers will care enough about to notice the differences, or
purchase hastily with only a limited impression. See Fisons, 30 F.3d at 476 n.12 (considering this
factor in the same manner as it would for direct confusion). Second, and similarly, the degree to which
the channels of trade and advertisement overlap (factor (7)) should be analyzed in the same fashion.
See id. at 475-76 (analyzing the channels of trade in the same manner). Finally, Lapp factors (8) and
(9), considering the similarity of the targets of the parties' sales efforts and the similarity of products,
are also analyzed no differently in the reverse confusion context. See id. at 475, 481 (treating these
factors in the same way for reverse confusion as they would have been treated for direct confusion).
2. Similarity of the Marks
131
Generally speaking, the similarity of the marks themselves is necessarily analyzed in the same way
in direct and reverse confusion claims; the court looks to sight, sound, and meaning, and compares
whether these elements combine to create a general commercial impression that is the same for the
two marks. See, e.g., Fisons, 30 F.3d at 478-79 (analyzing the commercial impression of the marks in
light of direct confusion principles). Therefore, a district court would not need to examine these in a
different manner than it would in a direct confusion claim.
132
On the other hand, the direct confusion claim in this case was rejected by the District Court in
considerable measure because the court felt that the Victoria's Secret housemark, coupled with the
disclaimer, alleviated any confusion that might otherwise result. See A&H IV, 57 F. Supp. 2d at 168-
69. Yet in the reverse confusion context, the presence of housemarks or disclaimers must obviously be
treated differently than in the direct confusion context. It is the essence of the reverse confusion claim
that, when consumers come across the Miraclesuit in the stream of commerce, they will confuse it
with The Miracle Bra and think that it is a Victoria's Secret product. Therefore, the weight of a
disclaimer on the Victoria's Secret product is necessarily lessened. Because A&H puts no disclaimer on
its product to distinguish it from The Miracle Bra, the consumer considering a purchase of the
Miraclesuit will not have the same handy reminder that Miraclesuit is not associated with The Miracle
Bra or Victoria's Secret. This is not to say that such a disclaimer may not, in fact, mitigate confusion in
some cases; if consumers are faced with the disclaimer every time they flip through the Victoria's
Secret catalogue, they are less likely to forget that Miraclesuit is unrelated to The Miracle Bra
swimwear.
133
As to the presence of the housemark on the Victoria's Secret product, not only is there the
possibility that consumers will fail to remember the mark when encountering A&H's swimwear, but
there is also the possibility that the mark will aggravate, rather than mitigate, reverse confusion, by
reinforcing the association of the word "miracle" exclusively with Victoria's Secret. See, e.g., Sands,
Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 960 (7th Cir. 1992); Americana Trading Inc. v.
Russ Berrie & Co., 966 F.2d 1284, 1288 (9th Cir. 1992). Of course, we do not suggest that this
actually occurred in this particular case; after all, the District Court observed that A&H typically
includes its own housemark on Miraclesuits, see A&H IV, 57 F. Supp. 2d at 160, but, because the
court only conducted a likelihood of confusion analysis for the direct confusion claim, it only briefly
addressed the significance of the A&H housemark, see id. at 168 n.17.
134
Clearly, the proper significance to be accorded these facts is a matter best suited for the
determination of the trial court. Instead, we merely highlight the questions raised by the use of the
housemarks and disclaimers in order to emphasize that a district court must separately examine the
similarity factor to determine whether there are any aspects of the analysis that should be different for
a reverse confusion claim, and, if so, alter its examination accordingly.
3. Strength of the Marks
135
An important difference between reverse and direct confusion manifests in the analysis of the
strength of the marks. As we explained supra, this factor requires consideration both of the mark's
commercial and conceptual strength. For ease of understanding, we will explain the appropriate
treatment of commercial strength first, and the treatment of conceptual strength second.
136
a. Commercial Strength
137
It has been observed that a consumer first encountering a mark with one set of goods is likely to
continue to associate the mark with those goods, and whether any subsequent confusion is "direct" or
"reverse" will depend on whether the consumer's first experience was with the junior or the senior
user of the mark. See Banff, Ltd. v. Federated Dep't Stores, Inc., 841 F.2d 486, 490 (2d Cir. 1988)
(acknowledging such a possibility); Long & Marks, supra, at 5. The greater the commercial disparity
between the manufacturers, the more likely it is that a consumer's first experience with a mark will be
with one particular manufacturer. That is, if one manufacturer--junior or senior--expends tremendous
sums in advertising while the other does not, consumers will be more likely to encounter the heavily
advertised mark first. Where the greater advertising originates from the senior user, we are more
likely to see a case of direct confusion; if the greater advertising originates from the junior user,
reverse confusion is more likely. See 3 McCarthy, supra, S23:10, at 23-32; cf. Fisons, 30 F.3d at 479
(observing that direct confusion involves a junior user "trad[ing] on" a senior user's name and thus
expending less on advertising, whereas reverse confusion involves the opposite pattern).
138
Logically, then, in a direct confusion claim, a plaintiff with a commercially strong mark is more likely
to prevail than a plaintiff with a commercially weak mark. Conversely, in a reverse confusion claim, a
plaintiff with a commercially weak mark is more likely to prevail than a plaintiff with a stronger mark,
and this is particularly true when the plaintiff's weaker mark is pitted against a defendant with a far
stronger mark. McCarthy has written that "the relatively large advertising and promotion of the junior
user . . . is the hallmark of a reverse confusion case." 3 McCarthy, supra, S23:10, at 23-37."[T]he
lack of commercial strength of the smaller senior user's mark is to be given less weight in the analysis
because it is the strength of the larger, junior user's mark which results in reverse confusion."
Commerce Nat'l Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 444 (3d Cir. 2000).
As we explained in Fisons, "the evidence of commercial strength is different from what we expect in a
case of forward confusion, where the junior user tries to palm off his goods as those of the senior
user." 30 F.3d at 479.
139
Therefore, in a reverse confusion claim, a court should analyze the "commercial strength" factor in
terms of (1) the commercial strength of the junior user as compared to the senior user; and (2) any
advertising or marketing campaign by the junior user that has resulted in a saturation in the public
awareness of the junior user's mark. See Fisons, 30 F.3d at 474, 479.
140
b. Distinctiveness or Conceptual Strength
141
In Fisons we remanded the case for the district court to "reevaluate[ ] . . . distinctiveness as well as
[the mark's] commercial strength" for the reverse confusion claim. Fisons, 30 F.3d at 479. Although
we explained that the evaluation of commercial strength would have to be altered for reverse
confusion claims, we did not discuss how distinctiveness, or conceptual strength, should be re-
weighed in light of our adoption of the reverse confusion doctrine. Nor did we clarify this aspect of our
jurisprudence in Commerce National Insurance Services, Inc. v. Commerce Insurance Agency,
Inc., 214 F.3d 432 (3d Cir. 2000), where we referred to the different test for "commercial strength," in
a reverse confusion context, without reference to "conceptual strength."
142
As stated above, in the paradigmatic reverse confusion case, the senior user has a commercially
weak mark when compared with the junior user's commercially strong mark. When it comes to
conceptual strength, however, we believe that, just as in direct confusion cases, a strong mark should
weigh in favor of a senior user. Our decision is supported by the fact that those courts that have
clearly distinguished conceptual from commercial strength in the reverse confusion context have
weighed a conceptually strong mark in the senior user's favor, in the same manner as they would in
direct confusion cases. See, e.g., Worthington Foods, Inc. v. Kellogg Co., 732 F. Supp. 1417, 1456
(S.D. Ohio 1990).
143
In H. Lubovsky, Inc. v. Esprit de Corp., 627 F. Supp. 483 (S.D.N.Y. 1986), the court explained that
conceptual distinctiveness was relevant in the same way for a reverse confusion claim because "if a
customer saw a doll in a toy store bearing a strong familiar trademark like `Exxon,' he might well
assume that the oil company had gone into the toy business; if, on the other hand, he saw a doll
bearing a familiar but weak laudatory trademark like Merit, he would be unlikely to assume that it is
connected with the similarly named gasoline or cigarettes." Id. at 487; see also Long & Marks, supra,
at 22.
144
The H. Lubovsky logic resonates, for it makes more sense to hold that conceptual strength, unlike
commercial strength, works in the plaintiff's favor. That is, if we were to apply the rule stated above
for commercial strength, i.e., weighing weakness in the plaintiff's favor, we would bring about the
perverse result that less imaginative marks would be more likely to win reverse confusion claims than
arbitrary or fanciful ones. We therefore hold that, as in direct confusion claims, a district court should
weigh a conceptually strong mark in the plaintiff's favor, particularly when the mark is of such a
distinctive character that, coupled with the relative similarity of the plaintiff's and defendant's marks,
a consumer viewing the plaintiff's product is likely to assume that such a mark would only have been
adopted by a single source--i.e., the defendant.
4. The Intent of the Defendant
145
In the direct confusion context, the intent of the defendant is relevant to the extent that it bears on
the likelihood of confusion analysis. As we have said:
146
In the likelihood of confusion inquiry . . . we do not focus on a defendant's bare intent to adopt a
mark . . . substantially identical to a plaintiff's mark . . ., since there is little basis in fact or logic for
supposing from a defendant's intent to copy without more that the defendant's actions will in fact
result in confusion. Thus, what we have held is that a defendant's intent to confuse or deceive
consumers as to the product's source may be highly probative of likelihood of confusion.
147
Versa Prods. Co., Inc. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189, 205 (3d Cir. 1995) (emphasis
omitted).
148
When reverse, rather than direct, confusion is alleged, "intent to confuse," is unlikely to be present.
Cf. Fisons, 30 F.3d at 480. However, though perhaps unusual, should an intent to confuse exist, it
would be relevant to the likelihood of confusion analysis in the same manner as it would for a direct
confusion claim. For instance, in Commerce National Insurance Services, Inc. v. Commerce Insurance
Agency, Inc., 214 F.3d 432 (3d Cir. 2000), we were confronted with a situation in which the litigants
had used very similar marks in noncompetitive industries for a number of years, each fully aware of
the other and with no incidents of actual confusion. Eventually, however, the larger company
expanded into the smaller company's line of business, deliberately choosing to promote its services
under an almost identical mark. In holding that the smaller company could maintain its claim against
the larger for reverse confusion, we specifically highlighted the possibility that the larger company had
adopted the mark with the deliberate intent of pushing its rival out of the market, and that it was this
sort of usurpation of business identity that the reverse confusion doctrine was designed to prevent.
See id. at 445.
149
As we have noted in our two prior cases on this issue, the defendant's intent may be discovered
through such inquiries as whether the defendant was aware of the senior user's mark when it adopted
its own mark, and whether the defendant considered that its adoption of the mark might result in
confusion. See id. at 444; Fisons, 30 F.3d at 480. If such an intent to confuse does, in fact, exist in a
reverse confusion case, it should weigh against the defendant in the same manner as it would in a
direct confusion case. Cf. W. W. W. Pharm. Co., Inc. v. Gilette Co., 984 F.2d 567, 575 (2d Cir. 1993)
(weighing the "intent" factor in a reverse confusion case in the defendant's favor because the plaintiff
had not demonstrated an intent to confuse).
150
Although we recognize that our opinion in Fisons perhaps implied that mere carelessness, as
opposed to deliberate intent to confuse, would weigh in a plaintiff's favor in a reverse confusion case,
we are reluctant to adopt such an interpretation, as it would be manifestly out of step with our prior
holdings regarding the relevance of "intent" in trademark infringement claims. Cf. O. Hommel Co. v.
Ferro Corp., 659 F.2d 340, 354 (3d Cir. 1981). Ultimately, all of the Lapp factors are meant only to
determine whether confusion is likely; mere carelessness, like deliberate copying, does not shed any
light on this inquiry. Further, to the extent that the intent inquiry in the likelihood of confusion analysis
carries with it the attribution of fault, there is no reason to ascribe higher penalties to a lower degree
of fault because a particular case involves reverse, rather than direct, confusion. Finally, in light of the
policy concerns implicated by the reverse confusion doctrine, it would be troubling indeed to hold that
a lesser degree of culpability would weigh in the plaintiff's favor for a reverse confusion claim than it
would for a direct confusion claim.
5. Factors Relating to Actual Confusion
151
As a matter of intuition, one would expect that in a reverse confusion claim, evidence of actual
confusion would be as important as in a direct confusion claim, though the nature of the confusion
that would be probative would be quite different. See Lang v. Retirement Living Publ'g Co., 949 F.2d
576, 583 (2d Cir. 1991) (holding that evidence of "actual confusion" in which the public thought the
senior user was the origin of the junior user's products was irrelevant for a reverse confusion claim).
As applied to this case, for example, evidence that consumers thought that The Miracle Bra was an
A&H product would be probative on a direct confusion claim, but not on a reverse confusion claim.
Conversely, evidence that consumers thought that Miraclesuit was a Victoria's Secret product would
support a reverse confusion claim, but not a direct confusion claim. This was apparently the District
Court's intuition; although it declined to consider A&H's reverse confusion claim, it did observe that
most of the evidence A&H had put forth with regard to "actual confusion" related to direct, rather than
reverse, confusion. See A&H IV, 57 F. Supp. 2d at 178 n.32.
152
However, marshalling evidence of actual confusion is often difficult. See, e.g., Liquid Glass Enters.,
Inc. v. Dr. Ing. h.c.F. Porsche AG, 8 F. Supp. 2d 398, 403 (D.N.J. 1998). In our view, if we were to
create a rigid division between "direct" and "reverse" confusion evidence, we would run the risk of
denying recovery to meritorious plaintiffs. For example, if a plaintiff alleged theories of both direct and
reverse confusion and was able to prove a few instances of "actual" confusion in each direction, we
might conclude that the plaintiff did not have enough evidence of either type to succeed on either of
its claims, even though, taken together, all of the evidence of actual confusion would be probative of a
real problem. As we explained in Part V.B.3, supra, the manifestation of consumer confusion as
"direct" or "reverse" may merely be a function of the context in which the consumer first encountered
the mark. Isolated instances of "direct" confusion may occur in a reverse confusion case, and vice-
versa. See Long & Marks, supra, at 5. Though we might expect that, in most instances, the
consumer's first encounter will be with the mark that has greater commercial strength, this will not
invariably be the case.
153
Given the problems litigants typically encounter in locating evidence of actual confusion, then, we
decline to create a strict bar to the use of "direct" confusion evidence in a "reverse" confusion case, or
vice versa. However, evidence working in the same direction as the claim is preferred, and "misfitting"
evidence must be treated carefully, for large amounts of one type of confusion in a claim for a
different type may in fact work against the plaintiff. For instance, the existence of reverse confusion
might disprove a plaintiff's claim that its descriptive mark has secondary meaning, thus resulting in no
recovery at all. See Jefferson Home Furniture Co, Inc. v. Jefferson Furniture Co., Inc., 349 So.2d 5, 8
(Ala. 1977).
154
It follows that the other factor relating to actual confusion, Lapp factor (4), examining the time the
mark has been used without evidence of actual confusion, should be approached similarly.
6. Other Relevant Facts
155
The final factor of the Lapp test directs courts to look at "other facts suggesting that the consuming
public might expect the prior owner to manufacture both products, or expect the prior owner to
manufacture a product in the defendant's market, or expect that the prior owner is likely to expand
into the defendant's market." This factor is necessarily transformed in the reverse confusion context to
an examination of other facts suggesting that the consuming public might expect the larger, more
powerful company to manufacture both products, or expect the larger company to manufacture a
product in the plaintiff's market, or expect that the larger company is likely to expand into the
plaintiff's market. See Fisons, 30 F.3d at 480 (directing the district court to examine facts suggesting
that the public might think that the junior user would expand into the senior user's market).
156
7. Summary of the Test for Reverse Confusion
157
In sum, in the typical case in which there is a claim of reverse confusion, a court should examine
the following factors as aids in its determination whether or not there is a likelihood of such confusion:
158
159
(2) the strength of the two marks, weighing both a commercially strong junior user's mark and a
conceptually strong senior user's mark in the senior user's favor;
160
consumers when making a purchase;
161
(4) the length of time the defendant has used the mark without evidence of actual confusion
arising;
162
163
164
(7) whether the goods, competing or not competing, are marketed through the same channels of
trade and advertised through the same media;
165
166
(9) the relationship of the goods in the minds of consumers, whether because of the near-identity
of the products, the similarity of function, or other factors;
167
(10) other facts suggesting that the consuming public might expect the larger, more powerful
company to manufacture both products, or expect the larger company to manufacture a product in the
plaintiff's market, or expect that the larger company is likely to expand into the plaintiff's market.
168
As with the test for direct confusion, no one factor is dispositive, and in individual cases, particular
factors may not be probative on the issue of likelihood of confusion. "The weight given to each factor
in the overall picture, as well as its weighing for plaintiff or defendant, must be done on an individual
fact-specific basis." Fisons, 30 F.3d at 476 n.11.
C. The District Court's Opinion
169
The District Court approached the reverse confusion claim in a different manner from that described
in the foregoing section. It held that before engaging the reverse confusion factors, A&H needed to
demonstrate, as a threshold matter, that Victoria's Secret "used their economic power to overwhelm
the market with advertising" of their product. A&H IV, 57 F.Supp. 2d at 178. The opinion therefore
focused only on a comparison between the commercial strengths of the Miraclesuit and The Miracle
Bra, i.e., only on one aspect of the "mark strength" inquiry. The District Court found that Victoria's
Secret had saturated the market with $13 million in The Miracle Bra advertising, and that a
"meaningful portion" of the advertising went towards promoting The Miracle Bra swimwear. It then
compared Victoria's Secret's effort to A&H's effort to promote Miraclesuit swimwear; A&H spent over
$1.2 million on advertising, and received $1.5 million in free publicity.21
170
The court noted that A&H did not dispute--even heralded --the fact that its campaign was widely
successful. Therefore, it found that "[p]laintiffs' [sic] are not entirely without market power in the
swimwear industry" and that "[i]n light of Plaintiffs' advertising campaign, we find that, in comparison,
Defendants did not saturate the marketplace with its advertising to promote The Miracle Bra
swimwear." Id. at 177. Consequently, the District Court concluded that the doctrine of reverse
confusion was not even implicated, and "decline[d] to examine whether a likelihood of reverse
confusion exists." Id. at 178.
171
In A&H III, we began our discussion of reverse confusion with an explanation of the phenomenon:
"Reverse confusion occurs when a larger more powerful company uses the trademark of a smaller,
less powerful senior owner and thereby causes likely confusion as to the source of the senior user's
goods or services." 166 F.3d at 207 (quoting Fisons, 30 F.3d at 474.). In Fisons, we stated that it
would be necessary to recognize the reverse confusion doctrine to provide protection to "smaller,
senior users" against "larger, more powerful companies." 30 F.3d at 475. While these are accurate
statements about the doctrine of reverse confusion, the District Court appears to have interpreted
them as establishing a separate, threshold step that must be examined prior to engaging the Lapp
test, and, finding the threshold not met, concluded that A&H's power to advertise extensively
precluded it from bringing a reverse confusion claim. The District Court was correct to note that
commercial disparity is, in fact, a factor to consider (factor (2), to be specific); however, it erred in
applying a threshold commercial disparity requirement, in effect making this sole factor determinative
and treating the reverse confusion inquiry as requiring a two-step process.
172
The quoted statements are understandably confusing, and the method of applying the doctrine of
reverse confusion is admittedly still developing. However, a close examination of Fisons, from which
the quotes hail, reveals that they are nothing more than descriptions of the phenomenon of reverse
confusion, and do not establish an initial inquiry that a court needs to make in order to apply the
reverse confusion analysis. In Fisons we held that the Lapp factors constitute the method courts
should use in order to determine if a likelihood of reverse confusion exists. We made no mention of a
threshold requirement, nor did we direct the District Court, on remand, to use one.
173
The District Court further explained its choice not to apply the reverse confusion factors by
reference to the fact that several reverse confusion cases involve enormous junior companies pitted
against tiny senior companies; it cited these cases and concluded that the same degree of economic
disparity was non-existent in this case. See A&H IV, 57 F. Supp. 2d at 178. The difficulty with this
conclusion is that in Fisons itself, in which we found a viable reverse confusion claim, Fisons had fully
25% of the peat moss market, greater than A&H's 10% of the swimwear market. This suggests that a
company need not be all that weak within its market in order to bring a viable reverse confusion
claim. See Fisons, 30 F.3d at 479; see also Fuji Photo Film v. Shinohara Shoji Kabushiki, 754 F.2d
591 (5th Cir. 1985) (finding a viable reverse confusion claim where the plaintiff had spent millions of
dollars). In fact, in stating that "[i]n reverse confusion, the junior user is typically a wealthier, more
powerful company who can overwhelm the market with advertising," 30 F.3d at 479 (emphasis
added), we implied that there might be the rare case in which reverse confusion exists where the
junior company overwhelms the senior user with advertisements although it is not wealthier and more
powerful.
174
In short, we hold that, although economic disparity between the companies and the marks is an
important consideration in the evaluation of the marks' commercial strength, the District Court legally
erred in fashioning a threshold "economic disparity" requirement before a reverse confusion claim will
even be considered. Because the District Court failed to undertake the Lapp analysis with respect to
A&H's reverse confusion claim, we must vacate the judgment with respect to that claim and remand to
the District Court for a redetermination of those factors that receive different treatment under direct
and reverse confusion theories, and for a reweighing of all of the factors once those redeterminations
have been made.
D. Guidance for Remand
1. Introduction
175
If the record suggested that, under the test we have set forth, A&H could not succeed as a matter
of law in a reverse confusion claim, we would be bound to explicate our reasoning and affirm the
judgment of the District Court. However, we do not so conclude, and hence vacatur and remand is
necessary. Inasmuch as we have clarified the law of reverse confusion in this circuit by filling the gaps
left in Fisons, it will be useful to the District Court if we comment on the extent to which it needs to
revisit the various issues.
176
As explained supra, the factors concerning the market, sales, and function similarity (factors (3),
(7), (8) & (9)) need not be reexamined for the reverse confusion claim because the District Court has
already discussed them in connection with direct confusion and there is typically no difference in the
analysis of these factors for reverse and direct confusion claims. As for the "actual confusion" factors
((4) & (6)), the District Court did not credit the evidence proffered by A&H and, in its best light,
regarded it as de minimis. A&H's evidence of actual confusion primarily supported its claim for direct,
rather than reverse, confusion, see supra Section IV. G., with the only exception being the Women's
Wear Daily article mentioning "the introduction of the Miracle Swimsuit in the upcoming Victoria's
Secret catalog." Because these incidents, though relevant to reverse confusion, are more probative of
direct confusion but the District Court felt that they were too weak to support even that claim, the
court may, but need not, re-examine this factor on remand.
2. Similarity of the Marks
177
When addressing the direct confusion claim, the District Court placed great weight on the presence
of Victoria's Secret's housemark and disclaimer when it concluded that the marks were not confusingly
similar. See A&H IV, 57 F. Supp. 2d at 168-69. However, as we explained supra, although such
embellishments of the junior user's mark may still have relevance in the reverse confusion context,
their weight must necessarily be reevaluated. Therefore, on remand, the District Court should
reconsider the similarity of the marks in light of A&H's reverse confusion claims.
3. Strength of the Marks
178
The District Court did not consider the commercial strength of the marks within the ambit of the
reverse confusion Fisons analysis, but it functionally did as much in its "threshold" determination that
A&H lacked sufficient "economic disparity" relative to Victoria's Secret to advance a reverse confusion
claim. Therefore, the District Court essentially demonstrated that it weighed this factor in favor of
Victoria's Secret. However, in comparing the relative commercial strengths of the products, the
District Court committed clear error: Although it considered the free publicity received by A&H in
determining its commercial strength, it did not consider the free publicity received by Victoria's Secret.
This led to an inaccurate comparison of their relative commercial vitality. Had the court used the same
calipers to measure the commercial strength of each, it might have determined that the Miraclesuit
had less commercial strength relative to The Miracle Bra. Of course, the court might well deem the
difference unimportant, but we cannot say that either Victoria's Secret or A&H should have this factor
weighed in its favor as a matter of law.
179
Furthermore, the court should have also considered the conceptual strength of the Miraclesuit
mark, according to the standards for conceptual strength set forth in Sections IV. B and V.B.3, supra.
In so doing, the court must gauge the strength of the Miraclesuit mark and must consider whether--as
with the example set forth supra involving a doll with the mark "Exxon"--the Miracle Bra/Miraclesuit
marks are so distinctive that, when considered simultaneously with the court's determination as to
their similarities, consumers with a general awareness of The Miracle Bra swimsuit are likely to
assume that the Miraclesuit is a Victoria's Secret product.
4. Intent
180
In its evaluation of A&H's direct confusion claim, the District Court concluded that Victoria's Secret's
"choice to extend The Miracle Bra mark to swimwear was for legitimate reasons, rather than out of
bad faith." A&H IV, 57 F. Supp. 2d at 172. However, because it "decline[d] to examine whether a
likelihood of reverse confusion exists," id. at 178, the District Court focused on whether Victoria's
Secret had intended to "profit[ ] from the notoriety of Plaintiffs' Miraclesuit mark," A&H IV, 57 F.
Supp. 2d at 173-74. The court did not specifically address the question whether Victoria's Secret,
rather than intending to "free ride" on A&H's goodwill, instead intended to usurp it by deliberately
undertaking to cause consumer confusion (and thereby destroy A&H's business identity). On remand,
the District Court should consider whether its previous finding of Victoria's Secret's good faith is
dispositive of the reverse confusion intent analysis, or whether further examination of this issue is
warranted.
E. Summary
181
Although we believe that the District Court's evaluation of individual factors relating to market,
sales, and functionality would have remained unchanged had it examined A&H's reverse confusion
claim in light of the Lapp factors, we simply do not know how it would have treated the commercial
strength and mark similarity factors had it considered the free advertising The Miracle Bra received, or
the effect of the housemark and disclaimer in the reverse confusion context. We also cannot predict
what the result would have been had the District Court examined the "intent" factor in light of A&H's
reverse confusion claim, or how the District Court would have weighed the various factors had it not
determined that there was a threshold commercial disparity requirement.
182
The question of likelihood of confusion is ultimately one of fact, and we cannot roll up our sleeves
and engage in the balancing ourselves. In its balancing on the direct confusion claim, the District
Court found that the case was close, holding that no likelihood of confusion existed "solely based on
the presumption that Defendants will continue to use the disclaimer when marketing The Miracle Bra
swimwear," A&H IV, 57 F. Supp. 2d at 169. As we have explained, we believe that Victoria's Secret's
disclaimer has a lessened significance for reverse confusion. We also believe that the conceptual
strength of the Miraclesuit mark must be reevaluated. Under these circumstances, we cannot say as a
matter of law that a different weighing of the factors could not have influenced the District Court to
make a different finding of ultimate fact, thus necessitating a remand.
VI. Conclusion
183
We will affirm the District Court's judgment for Victoria's Secret on the direct confusion claim.
However, we will vacate the judgment with respect to the reverse confusion claim, and remand to the
District Court for further proceedings consistent with this opinion. The District Court may wish to hear
and consider additional evidence from the parties on reverse confusion. The parties shall bear their
own costs.
Notes:
Honorable Myron H. Bright, United States Circuit Judge for the Eighth Circuit, sitting by designation.
We will refer to the marks in lower case throughout the remainder of the opinion.
Although we described this phenomenon as "forward confusion" in Fisons Horticulture, Inc. v. Vigoro Industries,
Inc., 30 F.3d 466, 479 (3d Cir. 1994), we think that the term "direct confusion" is more sonorous and accurate.
Products are not "forwardly confused" but "directly confused."
The facts are set forth more fully in the District Court's three opinions in this case. See A&H Sportswear Co. v.
Victoria's Secret Stores, Inc., 926 F. Supp. 1233 (E.D. Pa. 1996); A&H Sportswear Co. v. Victoria's Secret Stores,
Inc., 967 F. Supp. 1457 (E.D. Pa. 1997) (as amended); A&H Sportswear Co. v. Victoria's Secret Stores, Inc., 57 F.
Supp. 2d 155 (E.D. Pa. 1999).
4
Victoria's Secret Stores, a Delaware corporation with headquarters in Columbus, Ohio, has over 650 stores
nationwide. Victoria's Secret Catalogue, a Delaware corporation with headquarters in New York City, distributes
over 300 million catalogues annually. Both companies are independent subsidiaries of Intimate Brands, Inc., owned
by The Limited, Inc., which is based in London. See A&H Sportswear Inc. v. Victoria's Secret Stores, Inc., 166 F.3d
197, 200 (3d Cir. 1999).
Section 32(1) of the Lanham Act provides:
Any person who shall, without the consent of the registrant--
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection
with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which
such use is likely to cause confusion, or to cause mistake, or to deceive; . . . shall be liable in a civil action by the
registrant . . . .
15 U.S.C. S 1114(1).
The same standard is embodied in section 43(a) of the Lanham Act, which governs unfair competition claims. That
section provides, in pertinent part:
Any person who, on or in connection with any goods or services, . . . uses in commerce any word, term, name,
symbol, or device, . . . or any false designation of origin . . . which--
(A) is likely to cause confusion, or to cause mistake, or to deceive as to . . . the origin, sponsorship, or approval of
his or her goods, services, or commercial activities by another person . . . 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. S 1125(a)(1).
In Capital Bonding Corp. v. ABC Bail Bonds, Inc., 69 F. Supp. 2d 691 (E.D. Pa. 1999), the court cited Lapp in
support of its conclusion that "[b]ecause Capital and ABC deal in competing services, we need only compare the
Capital image with the ABC image and determine whether the marks are confusingly similar." Id. at 696. In New
York Style Bagel Chip Co. v. That's Entertainment, Inc., No. 90-7759, 1992 WL 46854 (E.D. Pa. Mar. 9, 1992), the
court followed the statement in Lapp that the court need not look beyond the marks in determining likelihood of
confusion if they are directly competing, see id. at *9, but held that the Lapp factors could be used when relevant
and helpful, see id. at *13. In Barnes Group, Inc. v. Connell Ltd. Partnership, 793 F. Supp. 1277, 1300 (D. Del.
1992), however, the court used all of the Lapp factors for competing goods without a discussion of whether such a
use was appropriate. Likewise, in Icon Solutions, Inc. v. IKON Office Solutions, Inc., No. 97-4178, 1998 WL 314672
(E.D. Pa. June 15, 1998), the court used four Lapp factors, noting that the Lapp factors can be used in directly
competing cases although developed for noncompeting goods. See id. at *6-*7; see also W.L. Gore & Assocs., Inc.
v. Johnson & Johnson, 882 F. Supp. 1454, 1457-60 (D. Del. 1995) (using some Lapp factors in determining that a
preliminary injunction was not required).
7
Courts have also occasionally borrowed from antitrust law's definition of "relevant market" and "submarket" to
determine whether goods are directly competitive for the purpose of unfair competition claims. See, e.g., Sara Lee
Corp. v. Kayser-Roth Corp., 1994 U.S. Dist. LEXIS 19198, at *98 (M.D.N.C. Oct. 13, 1994); Worthington Foods,
Inc. v. Kellogg Co., 732 F. Supp. 1417, 1436 (S.D. Ohio 1990); cf. A&H I, 926 F. Supp. at 1267 (citing to an
antitrust case in its inquiry as to whether The Miracle Bra swimwear and Miraclesuit competed in the same
market). In Brown Shoe Co., Inc. v. United States, 370 U.S. 294 (1962), the Supreme Court explained that
products may belong to distinct "submarkets," which may be determined by reference to, inter alia, the functions
of the products, whether the products are marketed to different consumers via different vendors, and whether the
public understands the submarkets to be "separate economic entit[ies]." Id. at 325. These factors for discovering
the presence of competition in the antitrust realm also track Lapp factors (7) through (10).
Although a district court may reasonably decide that certain of the Lapp factors are inapplicable or unhelpful in a
particular case, we do counsel that, to facilitate review, the court explain its choice not to employ those factors.
A&H also argues that all the cases cited by the District Court concern generic or descriptive marks, and not the
"highly protectable" mark of Miraclesuit. However, as we discuss below in Part IV.B.1, the level of protectability is a
factor discrete from mark strength in "likelihood of confusion" analysis, and it is debatable whether A&H's mark
even qualifies for a "high" degree of protection conceptually. Further, A&H has presented no support for its
contention that the analysis of mark similarity in a case involving generic marks is not relevant precedent for the
similarity of marks analysis in a case involving highly protected marks.
10
The court also observed in a footnote that A&H's use of its own housemark helps render the marks dissimilar. See
A&H IV, 57 F. Supp. 2d at 168 n.17.
11
We consider Victoria's Secret legally bound to continue the disclaimer practice, as counsel for Victoria's Secret
stated in oral argument that it intends to do. It would be well advised to continue to place the disclaimer near to
the telephone number in the catalogue. We judicially notice the fact that, in one recent catalogue, the disclaimer
was not so near the telephone number, a lapse that is potentially problematic.
12
A&H also argues that the District Court did not even consider the effect of the PTO attorney's denial. This is
incorrect; in its discussion of Victoria's Secret's intent, the court acknowledged that the PTO had rejected Victoria's
Secret's application, but concluded that such a rejection was not dispositive. See A&H IV, 57 F.Supp. 2d at 173
n.26.
13
The application denial reads in relevant part (with several citations omitted):
A. Similarity of the Marks
...
The registrant's mark is Miraclesuit. The SUIT portion of the mark is descriptive of the type of clothing, in this case,
swimsuits. The dominant part of the registered mark is MIRACLE. The dominant part of the applicant's mark is
MIRACLE. These dominant parts are identical. When the applicant's mark is compared to a registered mark, "the
points of similarity are of greater importance than the points of difference."
While the examining attorney cannot ignore a disclaimed portion of a mark and must view marks in their entireties,
one feature of a mark may be more significant in creating a commercial impression. Disclaimed matter is typically
less significant or less dominant. The addition of generic wording such as BRA does not make the mark less similar
to the registered mark (see below for disclaimer requirement).
B. Similarity of the Goods
If the marks of the respective parties are identical or highly similar, the examining attorney must consider the
commercial relationship between the goods or services of the respective parties carefully to determine whether
there is a likelihood of confusion. The applicant seeks to register its mark for goods in international class 25 for
"swimsuits, bathing suits and bikinis." Registrant's goods are also under international class 25 for "swimwear." The
applicant's goods include the same goods as the registrants; swimsuits, bathing suits and bikinis are types of
swimwear. Because of the confusing similarity between the registrant's mark Miraclesuit and the applicant's mark
The Miracle Bra and the identical class and nature of the goods the, [sic] applicant's mark would cause consumer
confusion as to the source of goods.
14
The examples are culled from A.J. Canfield Co. v. Honickman, 808 F.2d 291 (3d Cir. 1986), Security Center, Ltd. v.
First National Security Centers, 750 F.2d 1295 (5th Cir. 1985), Douglas Labs. Corp. v. Copper Tan, Inc., 210 F.2d
453 (2d Cir. 1954), and Wal-Mart Stores, Inc. v. Samara Bros., 120 S. Ct. 1339 (2000).
15
In fact, McCarthy observes that courts often hold self-laudatory marks to be descriptive. See McCarthy, supra, S
11:17, at 11-22 to 24.
16
In fact, as has been recognized in the trade dress context, copying, absent an intent to confuse, might do no more
e than signal to potential consumers that the junior user's product is in direct competition with the senior user's
product. Such copying might thus serve a valuable communicative function. See Conopco, Inc. v. May Dep't Stores
Co., 46 F.3d 1556, 1565 (Fed. Cir. 1994).
17
The court also chose not to credit the surveys conducted by either side, a decision that has not been challenged.
18
The Domenico note analyzes, inter alia, the propriety of the remedy awarded by the District Court in A&H II.
19
Indeed, some courts have simply inquired whether there exists a likelihood of confusion between the marks,
temporarily putting aside the distinction between "direct" or "reverse" confusion until after such a likelihood has
been demonstrated. See Americana Trading Inc. v. Russ Berrie & Co., 966 F.2d 1284, 1290 (9th Cir. 1992)
(reversing district court grant of summary judgment to defendants, on the ground that plaintiffs had put forth
enough evidence of "confusion"--some direct, some reverse--to create a genuine issue of material fact).
20
We say "generally" only because we recognize that there may be unforeseen circumstances in which these factors
actually do apply differently in the reverse confusion context.
21
This finding is significant because A&H contends that the court erred in considering A&H's free publicity, but not
considering whether Victoria's Secret received the same, as is discussed in Part V.D.3, infra.

A&F and Victoria's Secret Court Cases For IPR SBMSN

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189 U.S.P.Q. 759, 189 U.S.P.Q.

ABERCROMBIE & FITCH COMPANY, Plaintiff-Appellant,

No. 21, Docket 74-2540.

United States Court of Appeals,

Before FRIENDLY, TIMBERS and GURFEIN, Circuit Judges.

FRIENDLY, Circuit Judge:

Safari 358,781 7/26/38 Men's and Women's outer

garments, including hats.

Safari Mills2 125,531 5/20/19 Cotton Piece goods.

A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to

If a term is suggestive, it is entitled to registration without proof of secondary meaning. Moreover,

In the light of these principles we must proceed to a decision of this case.

On Petition of Appellant for Rehearing

A&F also conducts a substantial mail order business

See 15 U.S.C. § 1115(b)(4)

To wit, pants, shirts, jackets, coats and hats

237 F.3d 198 (3rd Cir. 2000)

A&H SPORTSWEAR, INC; MAINSTREAM SWIMSUITS, INC., APPELLANTS

Nos. 99-1734 and 99-1735

U.S. Court of Appeals, Third Circuit

Before: Becker, Chief Judge, Barry and Bright,* Circuit Judges.

OPINION OF THE COURT

I. Facts .......................................................... 208

II. Procedural History ............................................. 209

III. The Direct Confusion Claim ..................................... 210

B. The Test for Directly Competing Goods ....................... 212

IV. Review of the District Court's Analysis ........................ 216

A. Similarity of the Marks ..................................... 216

1. Sight, Sound, Meaning .................................... 217

2. The Housemarks and the Disclaimer ........................ 218

3. The PTO's Rejection of Victoria's Secret's Application ... 220

4. Summary .................................................. 221

B. Strength of the Marks ....................................... 221

1. Distinctiveness or Conceptual Strength ................... 221

2. Commercial Strength of the Mark .......................... 224

3. Summary .................................................. 224

C. Product Similarity .......................................... 224

D. Marketing and Advertising Channels .......................... 225

E. Sophistication of Consumers ................................. 225

F. The Intent of the Defendant ................................. 225

G. Actual Confusion ............................................ 226

H. Combining the Factors ....................................... 227

V. The Reverse Confusion Claim .................................... 227

A. Introduction ................................................ 227

1. The Factors that are the Same ............................ 229

2. Similarity of the Marks .................................. 229

3. Strength of the Marks .................................... 230

a. Commercial Strength ................................... 230

b. Distinctiveness or Conceptual Strength ................ 231

4. The Intent of the Defendant .............................. 232

5. Factors Relating to Actual Confusion ..................... 233

6. Other Relevant Facts ..................................... 234

7. Summary of the Test for Reverse Confusion ................ 234

C. The District Court's Opinion................................. 234

D. Guidance for Remand ......................................... 236

1. Introduction ............................................. 236

2. Similarity of the Marks .................................. 236

3. Strength of the Marks .................................... 236

4. Intent ................................................... 237

E. Summary ..................................................... 237

VI. Conclusion....................................................... 238

Becker, Chief Judge.