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USCA1 Opinion

UNITED STATES COURT OF APPEALS


FOR THE FIRST CIRCUIT
____________________

No. 95-1098

EQUINE TECHNOLOGIES, INC.,

Plaintiff - Appellee,

v.

EQUITECHNOLOGY, INCORPORATED
AND RONALD LAROCHE,

Defendants - Appellants.

____________________

APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MASSACHUSETTS

[Hon. Patti B. Saris, U.S. District Judge]


___________________

____________________

Before

Torruella, Chief Judge,


___________

Campbell, Senior Circuit Judge,


____________________

and Cyr, Circuit Judge.


_____________

_____________________

Scott J. Fields,
_________________

with

whom Duane, Morris & Heckscher,


____________________________

Lawrence G. Green and Perkins, Smith & Cohen were


__________________
_______________________

on brief for

appellants.

Victor H. Polk, Jr., with whom Bingham, Dana & Gould was on
___________________
______________________

brief for appellee.

____________________

November 3, 1995
____________________

TORRUELLA,
TORRUELLA,

Chief Judge.
Chief Judge.
____________

Plaintiff-appellee,

Equine

Technologies,

Inc.,

brought

trademark

infringement

against defendants-appellants, Equitechnology,

Larouche (its

founder).

The district

motion for a preliminary injunction,

action

Inc., and

Ronald

court granted plaintiff's

and defendant appeals.

We

affirm.

BACKGROUND
BACKGROUND
__________

Plaintiff

developed and

is

Massachusetts

patented a line

of specialized "hoof

act as shock absorbers for horses.

pads

under

the

trademark

Plaintiff also sells a

also

"EQUINE

which has

pads" which

Plaintiff has sold its

hoof

TECHNOLOGIES"1 since

1989.

hoof cleanser called CLEAN TRAX

sold under the EQUINE

has been registered

corporation

on the

TECHNOLOGIES mark.

Primary Register of

which is

Plaintiff's mark

the Patent

and

Trademark Office ("PTO") since March 1993.

Defendant, a Florida

selling hoof

1993.

care products using the

In its promotion

hoof

pad."

stated that the

its product make it "ideal

Defendant's

and

mark "EQUITECHNOLOGIES" in

efforts, defendant has

"shock absorption qualities" of

custom

corporation, began marketing

petition

for

as a

trademark

registration was preliminarily rejected by the PTO on the grounds

that

it

was confusingly

plaintiff.

continued to

similar

to

the

Notwithstanding the ruling of the

append the

mark

official trademark registration

____________________

The "u" in EQUINE is in the form of a horseshoe.

-2-

by

PTO, defendant has

mark.

registered

to its

Plaintiff sued defendant in

Court

for Massachusetts

alleging

trademark infringement

and unfair

preliminary injunction

to enjoin

Equitechnologies

district

appeals.

during

the

the United States District

federal and

state claims

competition, and moved

defendant from using

pendency

of

the

of

for a

the mark

lawsuit.

The

court granted the preliminary injunction, and defendant

DISCUSSION
DISCUSSION
__________

"Trademark law

the

seeks to prevent one

same 'mark' as--or one

similar to--that used

such a way that he confuses the

the goods (or service)."

seller from using

by another in

public about who really produced

DeCosta v. Viacom Int'l, Inc., 981 F.2d


_______
__________________

602, 605 (1st Cir.

1992); WCVB-TV v. Boston Athletic Ass'n, 926


_______
______________________

F.2d

Cir. 1991).

42,

43 (1st

district

court may

grant a

preliminary injunction in a trademark case when it concludes that

the

plaintiff

has

demonstrated

(1)

that

it

will

suffer

irreparable injury if the injunction is not granted; (2) that any

such

injury outweighs

would cause the

merits;

any

harm which

defendant; (3)

and (4) that the

granting the

a likelihood of

public interest will

injunction

success on

the

not be adversely

affected by the

granting of the injunction.

Int'l Trading Corp., 888


____________________

F.2d 215,

Parenthood League of Massachusetts


___________________________________

1009 (1st Cir.

1981)).

220 (1989) (citing

v. Bellotti, 641
________

The central issue in

most preliminary injunction trademark

Keds Corp. v. Renee


__________
_____

Planned
_______

F.2d 1006,

this case, as with

cases, see id., is whether


___ __

plaintiff demonstrated a likelihood of success on the merits.

-3-

Defendant's first contention is that the district court

erred

in

finding

plaintiff's

"merely

a likelihood

claims

because the

descriptive"

plaintiff,

of

of

the

success

mark

"EQUINE

horse

and therefore invalid.

on

hoof

See
___

the merits

of

TECHNOLOGIES" is

pads

produced

15 U.S.C.

by

1052(e)(1)

(proscribing registration of merely descriptive marks).

While we

think plaintiff's mark is

we agree

with

"suggestive" of its product,

the district court that the mark EQUINE TECHNOLOGIES is not

"merely descriptive" of hoof pads for horses.2

"A

term

is

suggestive

if it

requires

thought and perception to reach a conclusion

goods.

term

is

descriptive

if

it

imagination,

as to the nature of

forthwith

conveys

an

____________________

We have explained the significance of

the classification of a

mark as either "descriptive" or "suggestive."

A court's
merits

inquiry

into whether

trademark protection

term

starts with

the classification of that term along the


spectrum
end

of

of

"distinctiveness."

the spectrum

terms that have


to
and

there

middle

never
there

are generic

passed into common usage

identify a product,
can

At one

be

such as aspirin,

protected.

are so-called

In the

descriptive

terms, such as a geographical term, which


can

be

protected, but

acquired a "secondary

only

if

meaning" by

it has
which

consumers associate it with

a particular

product or

other end of

the

source.

spectrum,

At the

there

are

suggestive,

arbitrary and fanciful terms that


protected

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
_______________
________________________

Cir. 1993) (internal citations omitted).

-4-

immediate idea

of

the goods."

of the ingredients, qualities

Blinded Veterans Ass'n v.


_______________________

or characteristics

Blinded Am. Veterans


____________________

Found.,
______

872 F.2d 1035, 1040 (D.C. Cir. 1989) (citing Stix Prods.
___________

Inc. v.
____

United Merchants & Mfrs., Inc., 295


_______________________________

F. Supp. 479,

488

(S.D.N.Y. 1968)).

See also Union Nat'l Bank of Texas (Laredo) v.


________ __________________________________

Union Nat'l Bank of Texas (Austin),


___________________________________

1990).

Merely

protection

descriptive terms generally

under trademark

means of distinguishing

because

909 F.2d 839, 844 (5th Cir.

law "both

are not entitled

because

one source of services

they are

to

a poor

from another and

they are often necessary to the description of all goods

or services of

a similar

nature."

A.J. Canfield Co. v.


__________________

Vess
____

Beverages, Inc., 796 F.2d 903, 906 (7th Cir. 1986).


_______________

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

public would think when confronted with the mark as a whole."

re

Hutchinson Technology Inc.,

852 F.2d 552,

In
__

552-54 (Fed. Cir.

______________________________

1988).

The district

is not

merely descriptive of

which we

court's determination that plaintiff's mark

review only for clear error.

Bros. Brewing Co., 9 F.3d 175,


__________________

error hurdle is "quite high."

because

its product

it is

validity.

U.S.C.

See 15
___

of fact

Boston Beer Co. v. Slesar


_______________
______

180 (1st Cir. 1993).

The clear

Id. (citation omitted).


__

Moreover,

plaintiff's mark has been

Principal Register,

is a finding

registered by the

entitled to

1115(a)

PTO on the

legal presumption

(registration of

of

mark on

Principal Register "shall be prima facie evidence of the validity

-5-

of the registered mark . . . and of the registrant's right to use

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

See Quabaug Rubber Co. v. Fabiano Shoe Co.,


___ __________________
________________

567 F.2d 154, 161 (1st Cir. 1977) (federal registration "is prima

facie evidence that such mark has become distinctive of the goods

in commerce"); Liquid Controls Corp. v. Liquid Control Corp., 802

_____________________

F.2d 934, 936

(7th Cir. 1986).3

____________________

That said, we turn to the facts

at issue in this case.

There is no dispute in this case that the term "equine"

is descriptive

of horses.4

the mark, in its entirety,

The

is merely descriptive of

product -- hoof pads for horses.

to its contention

veterinarian)

that "[a]

would

whether

plaintiff's

Defendant's argument boils down

consumer (i.e.,

naturally expect

TECHNOLOGIES to make high-tech

district court, we

question, however, is

farrier or

company

called EQUINE

hoof pads for horses."

find this argument

equine

Like the

unsupported by case

law,

____________________

3
to

Defendant argues that plaintiff's mark is somehow not entitled


this presumption

because plaintiff's

trademark protection was rejected.


fact that plaintiff,

first

application for

Defendant seems to ignore the

as it was entitled, amended its application

and its mark was subsequently placed on the registry


Plaintiff's mark

is therefore fully entitled

by the PTO.

to the presumption

of validity.

4
any

When registering
exclusive

descriptive

its mark with the PTO,

rights

nature.

to
As

the

term

"EQUINE"

plaintiff

trademarks may properly incorporate

plaintiff disclaimed
because

correctly

of

points

its

out,

descriptive terms for a non-

descriptive whole.

-6-

and lacking in basic common sense.

The district court concluded:

Plaintiff is likely
claim

that

the

descriptive

to prevail on its

mark

because

is

not

it

merely

does

not

immediately conjure up the thought of the


subject
gives

goods.

Simply

virtually no

except that

hearing the name

idea of

it has

to

the product

do with

horses.

Seeing the mark provides a better clue as


it transforms the
However,
not

the

know

if

"u" into a

horseshoe.

viewing public

still does

the product

is

itself

horseshoe, or a horseshoe related product


like a
is

hoof pad, or if

simply a

the enlarged "u"

graphic technique

to evoke

the idea of horses.

The

clearly

court's

erroneous.

reasonably be thought

applies has

might

finding

The

term

to suggest

to do with horses.

also suggest, to the


_______

of

non-descriptiveness

"Equine

is

Technologies"

that the product

not

might

to which

it

The addition of the upturned "u"

perceptive consumer, that

it has do

with

hooves

"requires

or

horseshoes.

the consumer to

But

we

think

the mark

exercise the imagination

clearly

in order to

draw a conclusion as to the nature of goods and services."

Union
_____

Nat'l Bank, 909 F.2d 839, 844 (5th Cir. 1990) (quoting Zatarains,
__________
__________

Inc. v.
____

1983)).

Oak Grove Smokehouse, Inc., 698


__________________________

The

plaintiff's

mark

product

itself

or

its

does not

F.2d 786, 790 (5th Cir.

convey

intended

information

consumers;

about

rather,

it

requires imagination to connect the term "Equine Technologies" to

hoof care products, in general, and to the plaintiff's product in

particular.

We

find no

error in the

district court's

holding

that plaintiff's mark was not merely descriptive of its product.

-7-

Before moving on to defendant's argument concerning the

likelihood of confusion

between the two marks,

we pause briefly

to address defendant's contention that the district court applied

the wrong

legal standard

question.

Defendant

incorrectly

immediately

implicitly

analyzed

describes

in analyzing the

maintains

only

the

the

the

question of

actual

rejected the concept

that

"merely descriptive"

district

whether

product,

that a trademark

and

the

court

mark

therefore

may be merely

descriptive if it describes the intended purpose, function or use

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

See 1 J. McCarthy, Trademarks and


___

(1994).

The

problem with

consistently argued to

mark

desirable

was invalid

this

the district

precisely because

it

merely described plaintiff's product; i.e., hoof pads for horses.

The

district

specific

court

contention.

arguments on appeal

court.

was

therefore

Defendant

that it

responding

is

not

explicitly raise

that party from

an issue

defendant's

entitled

failed to present

See Boston Beer, 9 F.3d at 180 ("a


___ ___________

to

to the

to

raise

district

litigant's failure to

before the district

court forecloses

raising the issue for the first time on appeal")

(citing McCoy v.
_____

22 (1st

Massachusetts Inst. of Technology, 950 F.2d 13,


_________________________________

Cir. 1981), cert. denied,


_____ ______

112 S. Ct. 1939

therefore treat these new arguments as waived.

Defendant's

court

second contention

is

(1992)).

We

See id. at 181.


___ __

that

the

district

erred in finding a likelihood of confusion between the two

-8-

marks.

"Once the

entitled

determination has been

to trademark

protection, the

made that

a term

pivotal inquiry

is

becomes

whether the allegedly infringing mark is likely to cause consumer

confusion."

Boston Beer, 9 F.3d at 180.


___________

(prohibiting

confusion,

the

or

to

use

of

cause mistake,

circuit, this determination

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

Aktiebolaget Electrolux v. Armatron Int'l,


_______________________
_______________

Inc., 999 F.2d 1, 2-3 (1st Cir. 1993); DeCosta, 981


____
_______

Keds Corp., 888 F.2d at


__________

1114(1)

222.

F.2d at 606;

The determination as to

of confusion exists is

a question of

whether a

fact, which we

review only for clear error.

The

See Aktiebolaget, 999 F.2d at 3.


___ ____________

findings made by

the district court

in this case

are summarized below:

1) Similarity of

ear and the mind by

the eye, the

Marks:

impressions made on

the two marks are quite close,

two marks are not

effect" of the

The

marks, the

so close.

although, to

Based on the

similarity between 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

Both products belong

products.

products, the

Moreover,

goods

are

even

Even

to the

assuming a

similarity between

assuming

sophisticated

that

the

farriers

price

the

prime

and

veterinarians, the goods are similar enough to create confusion.

-9-

3,4,5)

Channels of

Prospective Purchasers:5

Trade, Advertising,

The parties present

and Class

of

their products at

the same trade shows, and advertise in the same magazines, to the

same target groups of consumers.

6) Evidence

than

minimal

of Actual Confusion:

showing

of actual

Plaintiff made more

confusion,

citing

several

instances of

consumer and promotional confusion

between the two

companies and their products.

7) Defendant's Intent in Adopting the Mark:

is

inadequate

to make

finding with

respect

The record

to defendant's

intent in adopting the mark.

8)

the

Strength of the Mark:

presumption

of

validity

Defendant failed to overcome

attached

to

registered

marks.

analyzed each

of the

Plaintiff's mark is moderately strong.

The district

eight

factors,

analysis of

Defendant

and

the last

contends

plaintiff's mark

court meticulously

it is

only

with

factor that the

that the

district

respect

to the

defendant asserts

court

to be moderately strong, and

erred in

court's

error.

finding

asserts that this

erroneous finding

fatally infects

the

court's conclusion

that

there is a likelihood of confusion between the two products.

We reject this

strength of a mark is

in

argument for two

reasons.

but one of eight factors to

analyzing the likelihood of confusion issue.

First,

the

be considered

See Keds Corp.,


___ __________

____________________

5 As
these

is the custom in this


factors together.

circuit, the district court analyzed


See
___

Aktiebolaget, 999
____________

(collecting cases).

-10-

F.2d at

3 n.3

888 F.2d at 222 ("No one factor is necessarily determinative, but

each must be considered.") (citing

F.2d

812, 817 (1st Cir. 1987)).

findings that

six

of

Volkswagen AG v. Wheeler, 814


_____________
_______

The district court's subsidiary

the seven

other

factors

demonstrate

likelihood of confusion -- the intent factor being inconclusive -

- are

sufficient to sustain the court's ultimate conclusion that

such confusion exists.

Second,

the

district

plaintiff's mark was moderately

In determining

a trademark's

examined

"the

length of

relative

renown

in

court's

conclusion

that

strong is not clearly erroneous.

relative strength, this

time

its field;

mark has

the

been

strength

of

used

court has

and the

the mark

in

plaintiff's

field of

promoting the mark."

business;

and the

plaintiff's action

Keds Corp., 888 F.2d at 222 (quoting Boston


__________
______

Athletic Ass'n v. Sullivan, 867 F.2d 22, 32 (1st Cir. 1989)).


______________
________

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)

plaintiff has actively

affixed, including

(3)

plaintiff

world; (4)

74 print advertisements

has received

plaintiff has

competitor to change

least one attempt

Moreover, the

marketed goods with

favorable

by a

promoting the

publicity

in the

successfully compelled one

its name; and (5)

mark;

horse

infringing

the PTO has rejected

competitor to register

plaintiff's mark has

the mark

a similar

been registered by

at

name.

the PTO,

which provides additional support for the court's conclusion that

the mark

is moderately strong.

See DeCosta,
___ _______

981 F.2d at

606.

-11-

These findings, which defendant

has not challenged as erroneous,

sufficiently support the court's conclusion that plaintiff's mark

is moderately strong.

Finally,

defendant contends that "the Court completely

ignored the relevance of the fact that numerous companies in this

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

not argued that this factual finding is clearly erroneous.

We have considered

and find them without merit.

all of defendant's

The district

case is detailed and comprehensive.

court opinion in this

The court carefully reviewed

the evidence, made specific findings of

by

other arguments

fact which are supported

the record, and resolved the question of injunctive relief in

accordance with

the proper legal

standard.

The

district court

correctly

found that

it

was

likely

that consumers

would

be

confused by the two marks, and that plaintiff is therefore likely

to succeed on

also

the merits of its

correctly

issuance

of

plaintiff's

ruled that

the

preliminary

favor.

infringement claim.

other factors

injunction

The court

relevant

weighed

to the

heavily

in

We find no basis for disturbing the district

court decision.

CONCLUSION
CONCLUSION
__________

-12-

For

the reasons

district court is affirmed.


affirmed.

stated

herein, the

Costs to appellee.

judgment of

the

-13-