J. B. Williams Co., Inc. v. Le Conte Cosmetics, Inc.

• Decision Date: 02 June 1975
• Docket Number: No. 73-2470,73-2470
• Citation: 189 USPQ 10,523 F.2d 187
• Parties: , 189 U.S.P.Q. 10 The J. B. WILLIAMS COMPANY, INC., Plaintiff-Appellant, v. LE CONTE COSMETICS, INC., and Elton C. Toland and Lenore Toland, Defendants-Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 187

523 F.2d 187

186 U.S.P.Q. 317, 189 U.S.P.Q. 10

The J. B. WILLIAMS COMPANY, INC., Plaintiff-Appellant, v. LE CONTE COSMETICS, INC., and Elton C. Toland and Lenore Toland, Defendants-Appellees.

No. 73-2470.

United States Court of Appeals Ninth Circuit.

June 2, 1975.

As Revised on Denial of Rehearing Sept. 18, 1975.

Charles E. Wills, Los Angeles, Cal. (argued), for plaintiff-appellant.

John E. Kelly, Santa Monica, Cal. (argued), Joseph H. Miller, Jr., Beverly Hills, Cal., for defendants-appellees.

OPINION

Before ELY and GOODWIN, Circuit Judges, and RENFREW, ^* District Judge.

RENFREW, District Judge:

On May 10, 1972, plaintiff-appellant filed a complaint in two counts against Le Conte Cosmetics, Inc., Elton C. Toland, its principal owner and executive officer, and Lenore Toland, his former wife, for infringement of plaintiff's trademark (15 U.S.C. § 1051 et seq.) and unfair competition. Defendants filed an answer and counterclaims on July 10, 1972, and plaintiff replied to the counterclaims on July 27, 1972. On September 1, 1972, plaintiff asked for leave to amend its complaint to add a third claim for relief for false representations (15 U.S.C. § 1125(a)). This motion was denied. Defendants and plaintiff then both filed motions for summary judgment with accompanying affidavits. On March 26, 1973, the date set for the oral hearing on these motions, Lenore Toland was dismissed from the action by plaintiff. Defendants dismissed all of their counterclaims, and the court and parties then agreed to try the case solely on the basis of the affidavits and exhibits already presented, and certain stipulated facts, on the issue whether there was a "reasonable likelihood of confusing the source and origin of defendants' product with that of plaintiff's". ¹ The court found that there was no such likelihood and entered judgment in favor of defendants. For the reasons stated herein, we reverse.

The J. B. Williams Co. has produced hand soaps and shampoos under the trademark "Conti" since 1924. Since 1966 Le Conte Cosmetics has marketed its line of cosmetics and hair care products under the mark "Le Conte". The primary issue on this appeal is whether the trial court correctly determined there was not a likelihood of confusion of "Conti" with "Le Conte". This Court stated in Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 152 (9th Cir. 1963):

"Numerous cases in this and other circuits hold that under the circumstances here present, the question of the likelihood of confusion is one for us to decide. In Sleeper Lounge Company v. Bell Manufacturing Co., 9 Cir., 253 F.2d 720, 723, this court quoted with approval the quotation in Miles Shoes, Inc. v. R. H. Macy & Co., 2 Cir., 199 F.2d 602, that 'we are in as good a position as the trial judge to determine the probability of confusion.'

"One reason for applying the rule of that case and of the other cases in accord cited in the margin (footnote deleted) is that this determination of likelihood of confusion partakes more of the character of a conclusion of law than of a finding of fact."

See also Friend v. H. A. Friend and Co., 416 F.2d 526, 531 (9th Cir. 1969), wherein the court stated: "(L)ikelihood of confusion is a matter to be determined by this court (citing Fleischmann )".

Whether likelihood of confusion is more a question of law or one of fact depends on the circumstances of each particular case. ² To the extent that the conclusion of the trial court is based solely upon disputed findings of fact, the appellate court must follow the conclusion of the trial court unless it finds the underlying facts to be clearly erroneous. Thus, this Court has refused on many occasions to decide De novo the facts underlying the trial court's determination of whether likelihood of confusion existed. See Carter-Wallace, Inc. v. Proctor & Gamble Co., 434 F.2d 794, 799 (9th Cir. 1970); Paul Sachs Originals Co. v. Sachs, 325 F.2d 212, 214 (9th Cir. 1963); Plough, Inc. v. Kreis Laboratories, 314 F.2d 635, 641 (9th Cir. 1963). However, if the facts are not in dispute, the appellate court is "in as good a position as the trial judge to determine the probability of confusion". Fleischmann Distilling Corp. v. Maier Brewing Co., supra, 314 F.2d at 152, quoting Miles Shoes, Inc. v. R. H. Macy & Co., 199 F.2d 602 (2d Cir. 1952).

In the present case, as in Fleischmann, ³ no facts presented to the trial court are in dispute. The matter was submitted to the court based on affidavits, exhibits, and certain stipulated facts. No testimony was taken at trial. Since no issue of material fact arises from the affidavits, exhibits and stipulated facts, the determination by the trial judge, as to whether in light of those undisputed facts there existed a "likelihood of confusion" between Conti and Le Conte is a question of law, readily reviewable by this Court. ⁴

This situation is distinguished from those cases, Supra, in which the trial court's conclusion of whether or not there is a likelihood of confusion is based upon disputed issues of fact, resolved at trial. Each case of trademark infringement must be analyzed based on its own facts. The results reached in different cases decided by this circuit only appear to be contradictory when the particular facts of each case are not analyzed.

Thus, in Paul Sachs Originals Co. v. Sachs, supra, it was disputed at trial whether the name "Sachs" had become the dominant portion of appellant's trademark. The trial court found that it had not, and a panel of this court, including two of the judges who had decided Fleischmann, supra, the same year, refused to disturb the trial court's finding because it was not clearly erroneous.

The standard followed in this Circuit in reviewing the trial court's decision regarding likelihood of confusion was set out in HMH Publishing Co., Inc. v. Lambert, 482 F.2d 595, 599, n. 6 (9th Cir. 1973):

"If the facts are not in dispute and the issue of confusing similarity is based solely upon a comparison of the marks in the context of extrinsic facts, the appellate court may determine the issue of confusing similarity."

To this standard, we add a corollary test, namely, where the conclusion of the trial court is based solely upon disputed findings of fact, the appellate court need not follow the conclusion of the trial court where it finds the underlying facts to be clearly erroneous.

When, as in the present case, the trial court has based its decision upon affidavits, exhibits and certain stipulated facts, none of which raises an issue of material fact, this court can, and should, determine the issue of likelihood of confusion for itself.

In order to determine whether there is a likelihood of confusion in a trademark infringement case, the Court must consider numerous factors, including Inter alia the strength or weakness of the marks, similarity in appearance, sound, and meaning, the class of goods in question, the marketing channels, evidence of actual confusion, ⁵ and evidence of the intention of defendant in selecting and using the alleged infringing name. ⁶ See Carter-Wallace, Inc. v. Proctor & Gamble Co., supra, 434 F.2d at 800; Paul Sachs Originals Co. v. Sachs, supra, 325 F.2d at 214. After considering these factors, the Court then must determine whether there exists a likelihood of confusion.

Structuring the analysis in this fashion, it becomes easier to determine whether the trial court findings on the listed factors are ones of law or fact. Characterization is facilitated by an example. Consider the finding in the instant case on similarity of appearance. There was no dispute as to the actual appearance of the marks. With the actual appearance on evidentiary fact, the next step was to decide whether to a reasonable viewer the marks were similar in appearance. That finding, if affirmative, would be aggregated with the other factors and the aggregate assessed as a foundation for the ultimate "likelihood of confusion" determination. Individually, each of these findings is preliminary to and not Per se determinative of the ultimate issue.

Viewing the foundational question as one of "confusing similarity" is improper because it merges analysis of one of the preliminary inquiries with the conceptually distinct step of applying the statutory standard. ⁷ The marks may be similar in appearance (foundational fact) yet not likely to cause confusion as to their source, particularly when all the factors are considered. Using this approach, similarity of appearance and the remaining factors provide foundational facts and should be assessed on review under the clearly erroneous rule.

The first step in the analysis is to determine whether the mark seeking protection is "strong" or "weak". A "strong" mark is one which is used only in a "fictitious, arbitrary and fanciful manner", See National Lead Co. v. Wolfe, 223 F.2d 195, 199 (9th Cir. 1955), whereas a " weak" mark is a mark that is a meaningful work in common usage, See Sunbeam Lighting Co. v. Sunbeam...