Beruflich Dokumente
Kultur Dokumente
No. 95-1098
Plaintiff - Appellee,
v.
EQUITECHNOLOGY, INCORPORATED
AND RONALD LAROCHE,
Defendants - Appellants.
____________________
____________________
Before
_____________________
Scott J. Fields,
_________________
with
on brief for
appellants.
Victor H. Polk, Jr., with whom Bingham, Dana & Gould was on
___________________
______________________
____________________
November 3, 1995
____________________
TORRUELLA,
TORRUELLA,
Chief Judge.
Chief Judge.
____________
Plaintiff-appellee,
Equine
Technologies,
Inc.,
brought
trademark
infringement
Larouche (its
founder).
The district
action
Inc., and
Ronald
We
affirm.
BACKGROUND
BACKGROUND
__________
Plaintiff
developed and
is
Massachusetts
patented a line
of specialized "hoof
pads
under
the
trademark
also
"EQUINE
which has
pads" which
hoof
TECHNOLOGIES"1 since
1989.
corporation
on the
TECHNOLOGIES mark.
Primary Register of
which is
Plaintiff's mark
the Patent
and
Defendant, a Florida
selling hoof
1993.
In its promotion
hoof
pad."
Defendant's
and
mark "EQUITECHNOLOGIES" in
custom
petition
for
as a
trademark
that
it
was confusingly
plaintiff.
continued to
similar
to
the
append the
mark
____________________
-2-
by
mark.
registered
to its
Court
for Massachusetts
alleging
trademark infringement
and unfair
preliminary injunction
to enjoin
Equitechnologies
district
appeals.
during
the
federal and
state claims
pendency
of
the
of
for a
the mark
lawsuit.
The
DISCUSSION
DISCUSSION
__________
"Trademark law
the
by another in
F.2d
Cir. 1991).
42,
43 (1st
district
court may
grant a
the
plaintiff
has
demonstrated
(1)
that
it
will
suffer
such
injury outweighs
merits;
any
harm which
defendant; (3)
granting the
a likelihood of
injunction
success on
the
not be adversely
affected by the
F.2d 215,
1981)).
v. Bellotti, 641
________
Planned
_______
F.2d 1006,
-3-
erred
in
finding
plaintiff's
"merely
a likelihood
claims
because the
descriptive"
plaintiff,
of
of
the
success
mark
"EQUINE
horse
on
hoof
See
___
the merits
of
TECHNOLOGIES" is
pads
produced
15 U.S.C.
by
1052(e)(1)
While we
we agree
with
"A
term
is
suggestive
if it
requires
goods.
term
is
descriptive
if
it
imagination,
as to the nature of
forthwith
conveys
an
____________________
the classification of a
A court's
merits
inquiry
into whether
trademark protection
term
starts with
of
of
"distinctiveness."
the spectrum
there
middle
never
there
are generic
identify a product,
can
At one
be
such as aspirin,
protected.
are so-called
In the
descriptive
be
protected, but
acquired a "secondary
only
if
meaning" by
it has
which
a particular
product or
other end of
the
source.
spectrum,
At the
there
are
suggestive,
without
meaning.
These
proof
terms
of
are
can be
secondary
considered
"inherently distinctive."
Boston Beer Co. v. Slesar Bros. Brewing Co., 9 F.3d 175, 180 (1st
_______________
________________________
-4-
immediate idea
of
the goods."
or characteristics
Found.,
______
872 F.2d 1035, 1040 (D.C. Cir. 1989) (citing Stix Prods.
___________
Inc. v.
____
F. Supp. 479,
488
(S.D.N.Y. 1968)).
1990).
Merely
protection
under trademark
means of distinguishing
because
law "both
because
they are
to
a poor
or services of
a similar
nature."
Vess
____
In
determining
descriptive
of a product,
mark in its
entirety, with
whether a
particular
a reviewing
mark is
court must
a view toward
"what the
merely
consider the
purchasing
re
In
__
______________________________
1988).
The district
is not
merely descriptive of
which we
because
its product
it is
validity.
U.S.C.
See 15
___
of fact
The clear
Moreover,
Principal Register,
is a finding
registered by the
entitled to
1115(a)
PTO on the
legal presumption
(registration of
of
mark on
-5-
the
registered mark
goods
1115(a)
or
services
entitles
registered
merely
in commerce
specified
the
in the
plaintiff
trademark is
descriptive.
on or
inherently
to
in connection
certificate").
presumption
distinctive, as
with the
Section
that
its
opposed to
567 F.2d 154, 161 (1st Cir. 1977) (federal registration "is prima
facie evidence that such mark has become distinctive of the goods
_____________________
____________________
is descriptive
of horses.4
The
is merely descriptive of
to its contention
veterinarian)
that "[a]
would
whether
plaintiff's
consumer (i.e.,
naturally expect
district court, we
question, however, is
farrier or
company
called EQUINE
equine
Like the
unsupported by case
law,
____________________
3
to
because plaintiff's
first
application for
by the PTO.
to the presumption
of validity.
4
any
When registering
exclusive
descriptive
rights
nature.
to
As
the
term
"EQUINE"
plaintiff
plaintiff disclaimed
because
correctly
of
points
its
out,
descriptive whole.
-6-
Plaintiff is likely
claim
that
the
descriptive
to prevail on its
mark
because
is
not
it
merely
does
not
goods.
Simply
virtually no
except that
idea of
it has
to
the product
do with
horses.
the
know
if
"u" into a
horseshoe.
viewing public
still does
the product
is
itself
hoof pad, or if
simply a
graphic technique
to evoke
The
clearly
court's
erroneous.
reasonably be thought
applies has
might
finding
The
term
to suggest
to do with horses.
of
non-descriptiveness
"Equine
is
Technologies"
not
might
to which
it
it has do
with
hooves
"requires
or
horseshoes.
the consumer to
But
we
think
the mark
clearly
in order to
Union
_____
Nat'l Bank, 909 F.2d 839, 844 (5th Cir. 1990) (quoting Zatarains,
__________
__________
Inc. v.
____
1983)).
The
plaintiff's
mark
product
itself
or
its
does not
convey
intended
information
consumers;
about
rather,
it
particular.
We
find no
error in the
district court's
holding
-7-
likelihood of confusion
we pause briefly
the wrong
legal standard
question.
Defendant
incorrectly
immediately
implicitly
analyzed
describes
in analyzing the
maintains
only
the
the
the
question of
actual
that
"merely descriptive"
district
whether
product,
that a trademark
and
the
court
mark
therefore
may be merely
of
the goods,
the class
characteristics
Unfair
court
user of
of the goods.
Competition,
argument is
of
11.5
that defendant
that plaintiff's
the
goods, or
(1994).
The
problem with
consistently argued to
mark
desirable
was invalid
this
the district
precisely because
it
The
district
specific
court
contention.
arguments on appeal
court.
was
therefore
Defendant
that it
responding
is
not
explicitly raise
an issue
defendant's
entitled
failed to present
to
to the
to
raise
district
litigant's failure to
court forecloses
(citing McCoy v.
_____
22 (1st
Defendant's
court
second contention
is
(1992)).
We
that
the
district
-8-
marks.
"Once the
entitled
to trademark
protection, the
made that
a term
pivotal inquiry
is
becomes
confusion."
(prohibiting
confusion,
the
or
to
use
of
cause mistake,
separate
findings.
factors,
mark
each
See, e.g.,
___ ____
of
See 15 U.S.C.
___
that
or
to
is based upon
which
is
"likely
deceive").
likelihood
to
requires
its
own
cause
In
an analysis of
this
eight
factual
1114(1)
222.
F.2d at 606;
The determination as to
of confusion exists is
a question of
whether a
fact, which we
The
findings made by
in this case
1) Similarity of
Marks:
impressions made on
effect" of the
The
marks, the
so close.
although, to
Based on the
the
"total
two marks
is
strong.
2) Similarity
narrow category of
differential
goods
is
purchasers
of Goods:
hoof care
between the
strong.
of
the
products.
products, the
Moreover,
goods
are
even
Even
to the
assuming a
similarity between
assuming
sophisticated
that
the
farriers
price
the
prime
and
-9-
3,4,5)
Channels of
Prospective Purchasers:5
Trade, Advertising,
and Class
of
their products at
the same trade shows, and advertise in the same magazines, to the
6) Evidence
than
minimal
of Actual Confusion:
showing
of actual
confusion,
citing
several
instances of
is
inadequate
to make
finding with
respect
The record
to defendant's
8)
the
presumption
of
validity
attached
to
registered
marks.
analyzed each
of the
The district
eight
factors,
analysis of
Defendant
and
the last
contends
plaintiff's mark
court meticulously
it is
only
with
that the
district
respect
to the
defendant asserts
court
erred in
court's
error.
finding
erroneous finding
fatally infects
the
court's conclusion
that
We reject this
strength of a mark is
in
reasons.
First,
the
be considered
____________________
5 As
these
Aktiebolaget, 999
____________
(collecting cases).
-10-
F.2d at
3 n.3
F.2d
findings that
six
of
the seven
other
factors
demonstrate
- are
Second,
the
district
In determining
a trademark's
examined
"the
length of
relative
renown
in
court's
conclusion
that
time
its field;
mark has
the
been
strength
of
used
court has
and the
the mark
in
plaintiff's
field of
business;
and the
plaintiff's action
this
case,
in
the district
court noted
the following
In
factors in
support of
its conclusion: (1) the mark has been in use for four
years; (2)
affixed, including
(3)
plaintiff
world; (4)
74 print advertisements
has received
plaintiff has
competitor to change
Moreover, the
favorable
by a
promoting the
publicity
in the
mark;
horse
infringing
competitor to register
the mark
a similar
been registered by
at
name.
the PTO,
the mark
is moderately strong.
See DeCosta,
___ _______
981 F.2d at
606.
-11-
is moderately strong.
Finally,
industry
use a
'Technology.'"
district court
combination
This
of Equi,
assertion is
opinion expressly
Equine,
belied by
Eque, Eques
the record.
cites each of
and
The
these examples,
but notes that only one of those companies directly competes with
plaintiff,
and concludes
visually or
aurally, as
that
"its
mark
is not
defendants' trademark."
as
similar,
Defendant has
We have considered
all of defendant's
The district
by
other arguments
accordance with
standard.
The
district court
correctly
found that
it
was
likely
that consumers
would
be
to succeed on
also
correctly
issuance
of
plaintiff's
ruled that
the
preliminary
favor.
infringement claim.
other factors
injunction
The court
relevant
weighed
to the
heavily
in
court decision.
CONCLUSION
CONCLUSION
__________
-12-
For
the reasons
stated
herein, the
Costs to appellee.
judgment of
the
-13-