Jordache Enterprises, Inc. v. Hogg Wyld, Ltd.

• Decision Date: 14 September 1987
• Docket Number: No. 85-2254,85-2254
• Citation: 828 F.2d 1482,4 USPQ2d 1216
• Parties: , 56 USLW 2192, 4 U.S.P.Q.2d 1216 JORDACHE ENTERPRISES, INC., Plaintiff-Appellant, v. HOGG WYLD, LTD., Susan Duran, Marsha Stafford and Oink, Inc., Defendants-Appellees.
• Court: U.S. Court of Appeals — Tenth Circuit

Page 1482

828 F.2d 1482

92 A.L.R.Fed. 1, 56 USLW 2192, 4

U.S.P.Q.2d 1216

JORDACHE ENTERPRISES, INC., Plaintiff-Appellant, v. HOGG WYLD, LTD., Susan Duran, Marsha Stafford and Oink Inc., Defendants-Appellees.

No. 85-2254.

United States Court of Appeals Tenth Circuit.

Sept. 14, 1987.

Donald A. Kaul, of Brownstein, Zeidman and Schomer, Washington, D.C., for plaintiff-appellant.

Donald W. Garland (Thomas F. Blueher and Leonard J. DeLayo, Jr., on the brief), of DeLayo, Olson & Blueher, P.A., Albuquerque, N.M., for defendants-appellees.

Before McKAY, MOORE and TACHA, Circuit Judges.

TACHA, Circuit Judge.

This case, a trademark infringement action brought against a manufacturer that identifies its blue jeans for larger women with a smiling pig and the word "Lardashe" on the seat of the pants, reminds us that "you can't make a silk purse out of a sow's ear." ¹ Appellant Jordache Enterprises, Inc., alleges error in a district court decision finding no likelihood of confusion between the Jordache and Lardashe trademarks and finding no violation of New Mexico's antidilution statute. We affirm.

Appellant, a New York corporation formed by three immigrant brothers in 1978, is the fourth largest blue jeans manufacturer in the United States. It produces and markets all types of apparel for men, women, and children, the principal product being designer blue jeans. Most items are identified by one of appellant's several registered trademarks, including the word "Jordache" printed in block letters, the word "Jordache" printed in block letters and superimposed over a drawing of a horse's head, and a drawing of a horse's head alone. Some products are identified by the word "Jordache" written in script lettering, a mark which has not been registered.

An intensive advertising campaign has created great customer awareness of Jordache products. In 1984, for example, appellant spent about thirty million dollars annually on television, radio, newspaper, and magazine advertisements and other promotional efforts. The message of this advertising has been that Jordache jeans convey "the look of the good life." Jordache jeans are now sold in retail outlets throughout the world.

Appellant has licensed Shaker Sport to manufacture and market Jordache jeans for larger women. Shaker Sport has expended substantial resources in advertising these jeans, and it had sold between 33,000 and 60,000 pairs by 1985.

In 1984, appellees Marsha Stafford and Susan Duran formed Hogg Wyld, Ltd., now Oink, Inc., for the purpose of marketing designer blue jeans for larger women. In an operation conducted out of their homes in New Mexico, the two women designed a product, selected a manufacturer, and ultimately sold over 1,000 pairs of jeans. Sales were limited to specialty shops in several southwestern states and to acquaintances or others who heard of the product. The women have not directly advertised their jeans, although several retailers have done so.

The name of the Oink, Inc. blue jeans gave rise to this suit. Names suggested at one time or another for the jeans by Stafford, Duran, or others, included "Thunder Thighs," "Buffalo Buns," "Seambusters," "Rino Asirus," "Hippo Hoggers," "Vidal Sowsoon," and "Calvin Swine." Other names and marks were suggested as a take-off on Stafford's childhood nickname, "lardass." This nickname inspired ideas such as "Wiseashe" with a picture of an owl, "Dumbashe" with a picture of a donkey, "Horsesashe" with a picture of a horse, and "Helium Ash" with a picture of a balloon. The women decided to name their jeans "Lardashe."

Appellant first became aware of Lardashe jeans after an Albuquerque TV station broadcast a news segment, which was also broadcast nationally by NBC, highlighting the new product. Jordache brought suit against Stafford, Duran, and their corporation, alleging trademark infringement in violation of the Lanham Trade-Mark Act, 15 U.S.C. Secs. 1051-1127, the New Mexico Trademark Act, N.M.Stat.Ann. Secs. 57-3-1 to -14 (1987), and common law. The district court, after a three-day bench trial, held that no trademark infringement had occurred on any of the alternative claims. Jordache Enters. v. Hogg Wyld, Ltd., 625 F.Supp. 48 (D.N.M.1985). Jordache now appeals to this court.

I.

The Lanham Act prohibits the unauthorized use of a reproduction, copy, or imitation of a registered trademark in a way that "is likely to cause confusion" with the registered mark. 15 U.S.C. Sec. 1114(1)(a); see also 15 U.S.C. Sec. 1125(a) (similar test for infringement of an unregistered trademark by a junior user). "Confusion occurs when consumers make an incorrect mental association between the involved commercial products or their producers." San Francisco Arts & Athletics, Inc. v. United States Olympic Comm., --- U.S. ----, 107 S.Ct. 2971, 2995, 97 L.Ed.2d 427 (1987) (Brennan, J., dissenting). This court has identified several factors, originally set forth in Restatement of Torts Sec. 729 (1938), that are relevant to whether there is a likelihood of confusion between two marks:

"(a) the degree of similarity between the designation and the trade-mark or trade name in

(i) appearance;

(ii) pronunciation of the words used;

(iii) verbal translation of the pictures or designs involved;

(iv) suggestion;

(b) the intent of the actor in adopting the designation;

(c) the relation in use and manner of marketing between the goods or services marketed by the actor and those marketed by the other;

(d) the degree of care likely to be exercised by purchasers."

Beer Nuts, Inc. v. Clover Club Foods Co. (Beer Nuts II), 805 F.2d 920, 925 (10th Cir.1986) (quoting Beer Nuts, Inc. v. Clover Club Foods Co. (Beer Nuts I), 711 F.2d 934, 940 (10th Cir.1983)). ² This list is not exhaustive. All of the factors are interrelated, and no one factor is dispositive. Id. The party alleging infringement has the burden of proving likelihood of confusion. Lindy Pen Co. v. Bic Pen Corp., 725 F.2d 1240, 1243 (9th Cir.1984), cert. denied, 469 U.S. 1188, 105 S.Ct. 955, 83 L.Ed.2d 962 (1985).

The district court examined these factors and concluded that there is no likelihood of confusion between the Jordache trademark and the Lardashe trademark. 625 F.Supp. at 53-54. Likelihood of confusion is a question of fact that we review under the clearly erroneous standard. Amoco Oil Co. v. Rainbow Snow, Inc., 809 F.2d 656, 661 (10th Cir.1987); see also Beer Nuts II, 805 F.2d at 923 n. 2. Appellant contends that the district court erred as a matter of law in its consideration of several of the factors and that, in any event, the court's findings are clearly erroneous.

A.

The similarity between the marks in appearance, pronunciation of the words used, translation of the designs used, and suggestion or meaning is the first factor to consider in determining whether there is a likelihood of confusion. The district court found that the Jordache mark and the Lardashe mark are not confusingly similar. Appellant argues that the court employed an improper legal construction of "suggestion" or "meaning" in reaching this result. Even if we were to reject this argument, appellant would have us hold the finding of no similarity to be clearly erroneous.

Trademarks may be confusingly similar if they suggest the same idea or meaning. For example, this court has held that a trademark consisting of an overflowing stein with the words "Brew Nuts" conveys the same meaning as a trademark consisting of the words "Beer Nuts." Beer Nuts II, 805 F.2d at 926. The district court in the present case found that "the two marks suggest dissimilar images or concepts." 625 F.Supp. at 53. Appellant alleges that the district court erred as a matter of law in its application of this factor by attributing a meaning of "class" or "style" to the Jordache mark. According to appellant, since the word "Jordache" has no inherent meaning, the district court necessarily must have relied upon a legally incorrect understanding of "suggestion" or "meaning" in order to find no similarity between the marks.

This argument mischaracterizes the findings of the district court. The court found the words "Jordache" and "Lardashe" similar, but not the horse and pig designs. The court did not find the word "Jordache" has an inherent meaning. Rather the "meaning" described by the court referred to the "relatively subtle and refined" horse design that is employed in the Jordache trademarks. The district court did not attach an improper "meaning" to the Jordache marks.

Appellant further argues that the district court erred in finding the trademarks are not confusingly similar. Similarities between trademarks are to be given more weight than differences. Beer Nuts II, 805 F.2d at 925. The district court found that "[t]he overall differences between the two marks greatly overcomes the similarity in spelling and pronunciation of the names Jordache and Lardashe." 625 F.Supp. at 53.

Our review of the evidence shows that the marks, and their suggested images, are obviously different. Many of the Jordache jeans are identified by a small brown patch with the word "Jordache" written in white in block letters with a gold horse's head superimposed over the lettering. In other instances, the patch is white with blue block lettering and no horse. Sometimes "Jordache" is written in script or only the horse's head is used. In contrast, the Lardashe jeans have a large, brightly colored pig head and two hooves, giving the appearance that a pig is peering over the back pocket. The word "Lardashe" is written in script beneath the pig's head, below which is an upside down embroidered heart. See appendix. We agree with the district court that the "striking, brightly colored, and far from subtle" pig design is "humorous, or 'cute,' or facetious." 625 F.Supp. at 53. Thus, while the similarity of the words used in the mark would support an inference of likelihood of confusion, we agree with the district court's finding that the striking...