Marathon Mfg. Co. v. Enerlite Products Corp.

• Decision Date: 05 August 1985
• Docket Number: No. 84-2436,84-2436
• Citation: 767 F.2d 214,226 USPQ 836
• Parties: MARATHON MANUFACTURING COMPANY, Plaintiff-Appellee, v. ENERLITE PRODUCTS CORPORATION, Defendant-Appellant.
• Court: U.S. Court of Appeals — Fifth Circuit

Page 214

767 F.2d 214

226 U.S.P.Q. 836

MARATHON MANUFACTURING COMPANY, Plaintiff-Appellee, v. ENERLITE PRODUCTS CORPORATION, Defendant-Appellant.

No. 84-2436.

United States Court of Appeals Fifth Circuit.

Aug. 5, 1985.

Reising, Ethington, Barnard, Perry & Milton, Owen E. Perry, Troy, Mich., for defendant-appellant.

Vinson & Elkins, W. Ronald Robins, Houston, Tex., for plaintiff-appellee.

Appeal from the United States District Court for the Southern District of Texas.

Before CLARK, Chief Judge, and RANDALL, and JOLLY, Circuit Judges.

PER CURIAM:

This trademark case was heard before the district court on cross-motions for summary judgment. The only disputed issue was whether the mark "MARATHON 10" used by Enerlite Products Corporation was likely to be confused with the "MARATHON" trademark used by Marathon Manufacturing Company. The district court found that a likelihood of confusion existed and issued a permanent injunction prohibiting Enerlite from using its mark, "MARATHON 10". We affirm.

I

The Marathon Manufacturing Company (Marathon) manufactures and sells electric batteries under the trademark "MARATHON". Through its corporate predecessor, Marathon has sold batteries under the MARATHON label since 1924. Marathon's principal battery products are nickel cadmium batteries which are technologically complex, relatively expensive, rechargeable batteries manufactured by only three companies in the United States. The majority of Marathon's nickel cadmium batteries are wholesaled to original equipment manufacturers who use them in a variety of products, including airplanes, medical equipment and battery powered consumer devices. Marathon's batteries are also available on the retail market through a national network of distributors, located principally at airports.

Enerlite Products Corporation (Enerlite) was formed in 1980. In late 1982, Enerlite began marketing its MARATHON 10 product which consists of ten 1 1/2 volt nickel cadmium "D" size battery cells electrically interconnected to form a 12 volt battery pack. This battery pack is housed in an opaque plastic case for use as an auxiliary power source for portable video recorders, televisions, power tools and the like. Enerlite does not manufacture nickel cadmium batteries, or any part of the battery pack. It purchases the battery cells from one of Marathon's competitors, and employs others to interconnect the cells and house them in the plastic case that forms the auxiliary power pack. Enerlite retails its products directly to consumers. Enerlite sells three lines of video power packs, MARATHON 10, SPRINT and PRO. Only the MARATHON 10 mark is at issue here.

II

Upon learning that Enerlite was marketing a nickel cadmium battery product under the mark MARATHON 10, Marathon filed suit under the Lanham Act for 1) infringement of federally registered trademarks, 15 U.S.C. Sec. 1114(1); 2) false designation of origin or false description, 15 U.S.C. Sec. 1125(a); and under common law for 3) trademark infringement; and 4) unfair competition.

As a general rule, the same facts which would support an action for trademark infringement would also support an action for unfair competition. Boston Professional Hockey Ass'n v. Dallas Cap & Emblem Mfg., 510 F.2d 1004, 1009-10 (5th Cir.1975). The gravamen for any action of trademark infringement or common law unfair competition is whether the challenged mark is likely to cause confusion. World Carpets, Inc. v. Dick Littrell's New World Carpets, 438 F.2d 482, 487 (5th Cir.1971); Kentucky Fried Chicken Corp. v. Diversified Packaging Corp., 549 F.2d 368, 382 (5th Cir.1977). Therefore, each of these causes of action hinges on whether the similarity between the MARATHON and MARATHON 10 marks creates a likelihood of confusion. See Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 258 (5th Cir.1980); Kentucky Fried Chicken, 549 F.2d at 386.

After extensive discovery, both sides filed motions for summary judgment, asserting that no material facts were in dispute, except the ultimate fact of whether the admitted circumstances were likely to cause confusion. The parties do not dispute Marathon's ownership of its marks or its priority of adoption.

Although some circuits treat likelihood of confusion as a question of law, this circuit has held that likelihood of confusion is a question of fact which can only be set aside if clearly erroneous. Amstar, 615 F.2d at 257-58; T.G.I. Fridays, Inc. v. International Restaurant Group, Inc., 569 F.2d 895, 899 (5th Cir.1978). Although the parties filed cross-motions for summary judgment, this procedure was improper. Summary judgment may not be granted when a genuine issue as to a material fact exists. Fed.R.Civ.P. 56(c). At first blush this error would appear to require reversal. However, all parties agreed to the fact finding procedures actually followed. They merely persuaded the court to label the procedure improperly.

At oral argument, counsel for both Enerlite and Marathon agreed that what really occurred was a submission of the case on the written record, developed after extensive discovery and supplemented with oral argument before the district judge. Despite the label: summary judgment, all parties fully agree that the district court reached a conclusion by making a single finding of fact as to likelihood of confusion based on underlying facts which were either not substantially in dispute or left to the district court to decide from the voluminous record on submission. Because all parties agreed to this procedure, we will look to the substance of the matter and not merely its label. A trial procedure which accomplishes what the parties and court intend does not become erroneous merely because it is misnamed. Such error can be, and is here, harmless. Fed.R.Civ.P. 61.

Our review on appeal then consists of deciding whether the factual finding of likelihood of confusion was clearly erroneous under Fed.R.Civ.P. 52(a). Armstrong Cork Co. v. World Carpets, Inc., 597 F.2d 496, 501 (5th Cir.1979); Holiday Inns, Inc. v. Holiday Out in America, 481 F.2d 445, 447 (5th Cir.1973). We find it is not. Rather, ample evidence supports the finding of the district judge.

III

The test for determining likelihood of confusion in a trademark case is well established. In this circuit, likelihood of confusion is determined by evaluating a variety of factors including the type of trademark at issue; similarity of design; similarity of product; identity of retail outlets and purchasers; identity of advertising media utilized; defendant's intent; and actual confusion. Amstar, 615 F.2d at 259; Roto-Rooter Corp. v. O'Neal, 513 F.2d 44 45 (5th Cir.1975). None of these factors by itself is dispositive of the likelihood of confusion question, and different factors will weigh more heavily from case to case depending on the particular facts and circumstances involved. See, e.g., Armco, Inc. v. Armco Burglar Alarm Co., Inc., 693 F.2d 1155, 1160 (5th Cir.1982) (these seven factors are not the only ones properly considered); Frostie Co. v. Dr. Pepper Co., 341 F.2d 363, 367 (5th Cir.1965) (all relevant evidence should be considered).

Essentially, Enerlite alleges the district court made three errors in concluding its MARATHON 10 mark was likely to cause confusion. First, in determining the similarity of design, the court erroneously focused on the similarity between the words "MARATHON" and "MARATHON 10", rather than the overall dissimilarity between the composite marks or corporate logos used by each company. Second, in assessing the identity of retail outlets and purchasers, the court failed to recognize that the markets for each product are so different that customer confusion would be impossible. Third, the record shows no confusion on the part of actual Marathon customers. Enerlite raises additional points which are either incorporated within the discussion of the above issues or are irrelevant to the central question of whether the district court's finding of likelihood of confusion was clearly erroneous. Because Enerlite has not complained of findings relative to the other factors pertinent to likelihood of confusion as listed above, we do not address those factors.

A.

Enerlite alleges the district court incorrectly focused on the word "Marathon", rather than the composite marks or corporate logos used by each company. Marathon owns two federal trademark registrations for use on nickel cadmium batteries. One of the trademarks consists of the word "Marathon" printed in slightly stylized rounded block letters:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The other registered mark shows the word "Marathon" used in conjunction with the company's logo:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Marathon also stamps the name MARATHON in plain block letters into the casing of each of its batteries.

Enerlite's MARATHON 10 mark appears on its product as follows:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Enerlite argues that a finding of infringement must be based on a visual comparison of the marks as actually affixed to the goods. Enerlite contends that Marathon does not use its word-only trademark on its batteries, but rather affixes its more distinctive corporate logo to the outside of each battery. Marathon does not dispute this assertion. We therefore accept Enerlite's view that the Marathon corporate logo is the relevant mark on Marathon batteries. Enerlite asserts that the more distinctive logo should be compared to the MARATHON 10 mark, because the logo is the mark the public associates with Marathon batteries in the market place. Enerlite contends a side-by-side comparison of the MARATHON 10 mark with the Marathon corporate logo creates an overall impression so dissimilar the public could not possibly be confused, and that the finding by the district court was clearly erroneous.

Enerlite claims the district court improperly...