Sun-Fun Products, Inc. v. Suntan Research & Development Inc.

• Decision Date: 17 September 1981
• Docket Number: SUN-FUN,No. 79-2719,79-2719
• Citation: 656 F.2d 186
• Parties: PRODUCTS, INC., Plaintiff-Appellant, v. SUNTAN RESEARCH & DEVELOPMENT INC., Defendant-Appellee. . Unit B
• Court: U.S. Court of Appeals — Fifth Circuit

Page 186

656 F.2d 186

213 U.S.P.Q. 91

SUN-FUN PRODUCTS, INC., Plaintiff-Appellant, v. SUNTAN RESEARCH & DEVELOPMENT INC., Defendant-Appellee.

No. 79-2719.

United States Court of Appeals, Fifth Circuit.

Unit B

Sept. 17, 1981.

Stern & Wells, P. A., Sylvan A. Wells, Daytona Beach, Fla., for plaintiff-appellant.

Peter L. Niles, Daytona Beach, Fla., for defendant-appellee.

Appeal from the United States District Court for the Middle District of Florida.

Before GODBOLD, Chief Judge, TUTTLE and HILL, Circuit Judges.

GODBOLD, Chief Judge:

Plaintiff Sun-Fun Products appeals from directed verdicts for defendant Suntan Research and Development (SRD) in a suit for trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. § 1051 et seq. The district court directed a verdict on the trademark claim at the close of plaintiff's evidence and on the unfair competition claim at the close of defendant's evidence. We reverse on both claims.

Sun-Fun is a manufacturer of suntan preparations. Since the company's inception in the mid-1960's its products have borne a trademark composed of the brand name "Native Tan" and a sunburst symbol surrounding a figure resembling the head of a tiki god. ¹ Headquartered in Daytona Beach, Florida, Sun-Fun sells Native Tan products throughout the United States and has spent over $2,000,000 promoting its products and its logo through a variety of advertising and promotional techniques.

SRD also produces suntan preparations and is located in Daytona Beach. Since 1970 its founder and president, David Hampton, has operated a lifeguard service through which he sold suntan products at various pool decks in Florida and elsewhere. In the early 1970's Hampton purchased from other manufacturers the suntan preparations sold at these pool decks, including substantial quantities of Native Tan products. Around 1975 he decided to produce his own suntan products and formed SRD. He chose as a logo the brand name "Beach Buff" and a sunburst surrounding a couple clad in swimsuits. ² Thereafter Hampton sold only Beach Buff products at the pool decks. A small percentage of Beach Buff products was also sold through retail outlets. After this suit was filed SRD modified the Beach Buff logo and substantially changed the appearance of the bottles used for its product. ³

Sun-Fun sued SRD for trademark infringement and unfair competition, and a jury trial was held. In addition to evidence about the development of the Native Tan mark and numerous exhibits of both Native Tan and Beach Buff products, Sun-Fun presented the testimony of Douglas Weisburg, a former employee of both parties to this suit. Weisburg testified that after working for Sun-Fun for six years he accepted a job with SRD in 1974 or 1975. Hampton was then in the process of developing logo and packaging for his new products. Weisburg stated that Hampton instructed him to design a package for the product as similar as possible to that of Native Tan. According to Weisburg's testimony, he (Weisburg) subsequently designed the original Beach Buff bottles with a bottle of Native Tan on the table in front of him. He also testified that Hampton designed the Beach Buff logo and ignored his complaints that the sunburst too closely resembled Native Tan's sunburst.

At the close of Sun-Fun's evidence the district judge directed a verdict for SRD on the trademark claim. Relying on Armstrong Cork Co. v. World Carpets, Inc., 597 F.2d 496 (5th Cir.), cert. denied, 444 U.S. 932, 100 S.Ct. 277, 62 L.Ed.2d 190 (1979), he ruled that the two trademarks were so dissimilar that there was no likelihood of confusion. Defendant then presented evidence to rebut the remaining unfair competition claim, including the testimony of Hampton, which directly conflicted with that of Weisburg. At the close of defendant's evidence the district judge directed a verdict for defendant on that claim as well. He concluded that there was no likelihood of confusion in the trade dress of the two products because Beach Buff was sold primarily at pool decks where it was the only suntan preparation displayed, thus precluding any side-by-side comparison of the two products.

Our standard of review of the directed verdicts on both claims is clear. A motion for a directed verdict shall be granted only when, viewing the evidence as a whole and all inferences therefrom in the light most favorable to the party opposing the motion, the district court determines that a reasonable jury could not reach a contrary verdict. Walker v. Tenneco Oil Co., 615 F.2d 1121, 1123 (5th Cir. 1980).

Trademark Infringement

The governing standard in trademark infringement actions is "likelihood of confusion." 15 U.S.C. § 1114; Exxon Corp. v. Texas Motor Exchange of Houston, 628 F.2d 500, 504 (5th Cir. 1980). Whether two marks are likely to be confused depends upon an amalgam of factors. Among these factors are "the type of trademark, the similarity of design, the similarity of the product, the identity of retail outlets and purchasers, the similarity of advertising media used, defendant's intent, and actual confusion." Exxon, 628 F.2d at 504. Other factors include previous contractual or business relations between the parties, 3 R. Callman, The Law of Unfair Competition Trademarks and Monopolies § 82.2(b)(3) (3d ed. 1969), and the degree of care purchasers are likely to exercise when selecting products of the type sold by the parties, Armstrong Cork, 597 F.2d at 504 n.10; Restatement Torts § 729 (1938).

The district court's directed verdict was based upon only one of these factors, similarity of design. The district judge appears to have reasoned that the marks were so dissimilar in appearance that the other extrinsic factors were irrelevant. We disagree. The two marks must bear some threshold resemblance in order to trigger inquiry into extrinsic factors, but this threshold is considerably lower than the degree of similarity required where the plaintiff presents little or no evidence on extrinsic factors supporting infringement. This court routinely has evaluated factors other than degree of similarity in cases where the marks were found to be quite similar, e. g., Exxon, supra, and in cases where the marks were found to be distinguishable, e. g., Armstrong Cork, supra; Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252 (5th Cir.), cert. denied, --- U.S. ----, 101 S.Ct. 268, 66 L.Ed.2d 129 (1980). Evaluation of these other factors is necessary because it is difficult to assess degree of similarity in a vacuum:

In assessing the likelihood of deception occasioned by the use of the trademark in question, all the surrounding circumstances should be scrupulously explored. The fact that the litigating trademarks appear side by side in the judicial solemnity of the courtroom is by itself enough of a falsification of actual market conditions to defy realistic appraisal. Judges, therefore, must attempt to pierce this patently unreal situation and refer to the operative facts behind the scene. Equally as significant as the general appearance of the trademarks is their use in the public market, their effect upon dealers, purchasers and other competitors, the relationship of the trademark's owners, e. g., whether they meet with competing articles in competing markets, how they develop their business, and whether they are acting bona or mala fide.

Callman, § 82.2.

The threshold level of similarity required to trigger inquiry into the other factors was satisfied here. Our analysis begins with the well-established proposition that similarity of design stems from the overall impression conveyed by the mark and not a dissection of individual features, Exxon, supra; Armstrong Cork, supra. A comparison of Sun-Fun's mark and SRD's mark reveals articulable similarity.

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

Both marks are composed of a brand name centered over a sunburst that surrounds a figure. Although one might expect that the mark of a producer of suntan preparation might feature prominently a depiction of the sun, the sunbursts in these two marks are strikingly similar and differ significantly from any other sunburst mark in evidence. Each resembles a corona and encircles a sun-associated figure. Moreover, each consists of a nearly identical pattern of irregular fingers of flame. The similarity of these sunbursts, coupled with the similar format of the two logos, creates a sufficient impression of similarity to require submission of the similarity issue to the jury.

There are, of course, identifiable differences between the marks: the brand names above the sunbursts and the figures within them are unalike. A jury might well conclude that the marks are too dissimilar to justify a finding of infringement. We merely hold that it was improper for the district judge to weigh these similarities and differences instead of the jury. ⁴

Our conclusion is bolstered by the evidence Sun-Fun presented in support of extrinsic factors that are relevant to a determination of trademark infringement. The linchpin of Sun-Fun's case was Weisburg's testimony that he had been instructed to copy the Native Tan bottle. Evidence of intentional deception carries special weight in the calculus of determining likelihood of confusion. Indeed, proof that a defendant chose a mark with the intent of copying plaintiff's mark, standing alone, may justify an inference of confusing similarity, Exxon, 628 F.2d at 506; Amstar Corp., 615 F.2d at 263. Weisburg's testimony, coupled with the articulable similarity of the marks described above, raises a jury question.

Analysis of Sun-Fun's evidence regarding other extrinsic factors lends further support to our decision. With respect to the strength of trademark, ⁵ the evidence indicates that Sun-Fun's "Native Tan" trademark was registered and that it had appeared on plaintiff's products for at least seven or eight years before defendant placed Beach Buff on the market. It...