Petro Stopping Centers, L.P. v. James River Petroleum, Inc.

Decision Date26 November 1997
Docket NumberNo. 97-1215,97-1215
Citation130 F.3d 88
PartiesPETRO STOPPING CENTERS, L.P., Plaintiff-Appellant, v. JAMES RIVER PETROLEUM, INCORPORATED, Defendant-Appellee.
CourtU.S. Court of Appeals — Fourth Circuit

ARGUED: Paul Forest Kilmer, Gadsby & Hannah, L.L.P., Washington, DC, for Appellant. Edward Eric Scher, Thorsen, Marchant & Scher, L.L.P., Richmond, Virginia, for Appellee. ON BRIEF: Carol L.B. Matthews, Thomas W. Brooke, Caroline A. Leonard, Gadsby & Hannah, L.L.P., Washington, DC, for Appellant. Julie M. Whitlock, Thorsen, Marchant & Scher, L.L.P., Richmond, Virginia, for Appellee.

Before WILKINSON, Chief Judge, MURNAGHAN, Circuit Judge, and PHILLIPS, Senior Circuit Judge.

Affirmed by published opinion. Chief Judge WILKINSON wrote the opinion, in which Judge MURNAGHAN and Senior Judge PHILLIPS joined.

OPINION

WILKINSON, Chief Judge:

Petro Stopping Centers, L.P. ("Petro Stopping") sued James River Petroleum, Inc. ("James River"), alleging federal and common law trademark infringement, federal and common law unfair competition, federal dilution, and Virginia false advertising claims. After a bench trial, the district court entered judgment for James River on all counts. The court found Petro Stopping's marks to be fairly weak and concluded that the remaining factors did not support a likelihood of confusion. We now affirm.

I.

Petro Stopping operates and franchises over forty full service automobile and truck travel centers in twenty-seven states, including one each in Ruther Glen, Virginia and Fort Chiswell, Virginia. The company has been in business since 1975. Most of Petro Stopping's facilities operate under the marks PETRO STOPPING CENTER or PETRO TRAVEL PLAZA.

Petro Stopping has a total of fourteen registered federal service marks that contain the term PETRO. Examples include PETRO PRIDE, PETRO:LUBE, PETRO:2, PETRO:PLUS, and PETRO:TREAD. No registration is for the word PETRO alone, although the company has registered PETRO with background colors as a composite mark for truck stop services. The PETRO mark is almost always displayed in white letters with a green rectangular background, placed above a red-orange strip. Petro Stopping's first registered mark, PETRO STOPPING CENTER, was placed on the Principal Register of the Patent and Trademark Office ("PTO") in August 1982. The company registered its eighth service mark, the PETRO with background colors composite mark, in July 1990. At least eight of Petro Stopping's marks, including the registration for PETRO with back ground colors, have become incontestable pursuant to 15 U.S.C. § 1065.

Petro Stopping's truck stop facilities are located adjacent to interstate highways at the exits. They offer a wide variety of goods and services, including separate fueling areas for cars and trucks, truck maintenance, truck weighing scales, truck washes, restaurants, retail stores, fax machines, ATM machines, showers, laundry, quiet rooms, game rooms, television rooms, movie theaters, and barber shops. These travel facilities are staffed twenty-four hours a day. Customers purchasing fuel or other goods and services at Petro Stopping's sites can pay with cash, checks, or credit cards, including a PETRO credit card. The company advertises its facilities in radio spots, in publications directed to truckers, in truck stop directories, and on billboards and Virginia Department of Transportation ("VDOT") exit signs. The company claims that over the past five years it has sold in excess of $2 billion of goods and services and has spent over $6.25 million in promoting its truck stop services.

James River is engaged in petroleum distribution. In 1992, the company expanded into the "card lock" business. In this enterprise, James River generally sells its services to commercial owners of car or truck fleets. These fleet owners purchase accounts that allow their drivers or authorized agents to use payment cards at James River's unmanned, self-service filling stations. James River participates in the Commercial Fueling Network ("CFN"), and is therefore part of a network of independent card lock fuel facilities. Before trial, the company had five Richmond area stations and planned to open a sixth. James River operates its card lock facilities under the name JAMES RIVER PETRO CARD. The James River mark uses a white (or sometimes gray) background and contains one stylized, red "JR" logo, in large font. Next to the logo, in a much smaller font, appear the words "James River" in blue upper and lower case letters. Below that, in an even smaller font, the words "PETRO CARD" appear in slanted red upper case letters with horizontal lines drawn to give the effect that the words are moving. 1

James River's card lock facilities are not located adjacent to interstate highways. Although one of the company's fuel stations is located near a separately-owned convenience store and another near a separately-owned restaurant, the company's card lock facilities do not offer any services comparable to Petro Stopping's truck stops except for fueling. James River's stations are not staffed. Fuel can be purchased only through the use of a card issued by James River or another CFN member. The company has run limited advertisements in small local trade newsletters, but does not utilize any billboards or VDOT signs. The company's sites are also listed in CFN directories. James River focuses its marketing, however, on the direct solicitation of commercial accounts.

Petro Stopping filed this suit against James River on July 1, 1996. The district court held a bench trial on December 2 and 3, 1996, and ruled for James River in all respects. On the trademark infringement and unfair competition claims, the district court found no likelihood of confusion, noting specifically that PETRO is "merely descriptive and a fairly weak mark." Petro Stopping now appeals.

II.
A.

To prove trademark infringement, a plaintiff must show both that it has a valid, protectable trademark and that the defendant's use of a "reproduction, counterfeit, copy, or colorable imitation," 15 U.S.C. § 1114(1), creates a likelihood of confusion. Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 930 (4th Cir.1995). Although Petro Stopping sometimes conflates these two distinct elements in its arguments to this court, only the second requirement--likelihood of confusion--is at issue in this appeal. 2 In determining whether a plaintiff has demonstrated likelihood of confusion, courts of this circuit are guided by the factors announced in Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir.1984). A court should consider (1) the strength or distinctiveness of the plaintiff's mark, (2) the similarity of the two parties' marks, (3) the similarity of the goods and services the marks identify, (4) the similarity of the facilities the two parties use in their businesses, (5) the similarity of advertising used by the two parties, (6) the defendant's intent, and (7) actual confusion. These factors are not of equal importance or equal relevance in every case. Id.

This circuit reviews district court determinations regarding likelihood of confusion under a clearly erroneous standard. Id. at 1526. We may find a district court's conclusions clearly erroneous only when there is no evidence in the record to support those conclusions or when, upon review of the record ourselves, we are left with a definite and firm conviction that a mistake has been committed. Id. We have previously recognized that likelihood of confusion is an inherently factual issue. Lone Star Steakhouse, 43 F.3d at 933. In this appeal, where only this type of factual determination is contested and the decision was rendered after a two-day bench trial, the standard of review is a deferential one requiring appellate respect for the trial court's findings.

B.

The district court found that the first Pizzeria Uno factor--the strength of the plaintiff's mark--favored a finding of no likelihood of confusion because PETRO is descriptive and weak. Petro Stopping first contends that because eight of its PETRO marks are incontestable, the district court was legally precluded from reaching its conclusion. The company claims that the Supreme Court's decision in Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985), forecloses any argument by James River that PETRO is descriptive.

We disagree. Petro Stopping misapprehends the Park 'N Fly holding and confuses the issue of a trademark's validity with the separate inquiry into a mark's strength for purposes of the likelihood of confusion determination. In Park 'N Fly, the Supreme Court held that a defendant in an infringement suit cannot claim that an incontestable mark is merely descriptive and therefore invalid and undeserving of any protection. The Court did not hold, however, that the descriptive nature of a mark may not be considered in the separate likelihood of confusion inquiry. This characterization of the Court's holding is confirmed by the Trademark Law Revision Act of 1988, which amended one of the Lanham Act's incontestability provisions to clarify that "[s]uch conclusive evidence of the right to use the registered mark shall be subject to proof of infringement." Pub.L. No. 100-667, § 128(b)(1), 102 Stat. 3935, 3945 (codified at 15 U.S.C. § 1115(b)) (emphasis added).

We recognized this crucial distinction in Lone Star Steakhouse. There the district court had concluded that the incontestability of the mark in question was dispositive of the likelihood of confusion inquiry. After considering Park 'N Fly, the holdings of other circuits, and the opinions of the commentators on this issue, we stated:

We agree with the above reasoning that incontestability affects the validity of the trademark but does not establish the likelihood of confusion necessary to warrant protection from infringement. Likelihood of...

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