MARKEY, Chief Judge.
Blue Bell, Inc. (Wrangler) appeals from a final judgment of the District Court for the Northern District of California in this suit for trademark infringement and unfair competition brought by Levi Strauss & Co. (Strauss). We affirm.
In 1936, Chris Lucier, a Strauss employee, conceived the idea of a permanent identifier for pants, visible while the pants were being worn. The permanent identifier was a folded ribbon sewn with its ends captured in the seam of a rear patch pocket. For convenience, the identifier is here called the "pocket tab".
Strauss adopted and used the pocket tab as a trademark in 1936. Over the ensuing 44 years, it has continuously and widely used the mark, most often in this form:
Strauss has obtained and maintained six federal trademark registrations covering its pocket tab,
District Court Proceedings
Suit was filed on May 1, 1970, charging Wrangler with federal trademark infringement and unfair competition. In November, 1974, Strauss moved to dismiss the action as moot, Wrangler having discontinued its HONDO line. Wrangler successfully opposed dismissal, maintaining that it had a continuing interest in judicial resolution of its right to use an external projecting label on the pocket of its pants.
Bench trial began on October 25, 1977, but just before trial, Wrangler gave Strauss samples of a new line of jeans which it proposed to market.
To include Wrangler's new line in the suit, Strauss filed a supplemental complaint on October 27, 1977, again asserting trademark infringement and unfair competition. On October 31, 1977, Wrangler filed an answer and counterclaim.
At the conclusion of trial on November 3, 1977, with the salutary recognition that the facts were fresh at hand, the district court rendered its decision in this succinct yet fully adequate opinion from the bench:
23. Defendant has infringed plaintiff's rights in the pocket TAB and unfairly competed with plaintiff by using the pocket TAB in the seam of a right rear patch pocket on pants and such use of the pocket TAB is enjoinable by the Court.
On July 14, 1978, the Court entered its judgment, in which it stated that (1) Wrangler had infringed the Strauss trademark and unfairly competed in selling, offering for sale, and advertising pants bearing the WRANGLER projecting label on a right rear patch pocket; (2) Wrangler had not infringed or unfairly competed in selling, offering for sale, or advertising pants bearing the HONDO ribbon sewn to the top portion of a right rear inset pocket,
We need not decide whether the Strauss pocket tab device was inherently distinctive at the time of its adoption 44 years ago, for, if it were not, it could nonetheless serve as a trademark, and be protected as such, if it thereafter acquired distinctiveness, a phenomenon referred to as the acquisition of a "secondary meaning". 1 J. McCarthy, Trademarks and Unfair Competition § 15:1 (1973). The basic element of secondary meaning is a mental recognition in buyers' and potential buyers' minds that products connected with the symbol or device emanate from or are associated with the same source. As recognized in this circuit, "[s]econdary meaning has been defined as association nothing more". Carter-Wallace, Inc. v. Proctor & Gamble Co., 434 F.2d 794, 802 (9th Cir. 1970). The word "secondary" refers only to second in time, for the additional association-with-source meaning often overtakes the original or first-in-time meaning of the symbol or device.
That a distinctive location and defined shape of a label function as a trademark
Whether a symbol or device has acquired secondary meaning being a question of fact, Norm Thompson Outfitters, Inc. v. General Motors Corp., 448 F.2d 1293, 1296 (9th Cir. 1971); North American Aircoach Systems v. North American Aviation, 231 F.2d 205, 210 (9th Cir. 1955), cert. denied 351 U.S. 920, 76 S.Ct. 709, 100 L.Ed. 1452 (1956), findings regarding that question shall not be set aside unless clearly erroneous. K-S-H Plastics, Inc. v. Carolite, Inc., 408 F.2d 54, 58 (9th Cir.), cert. denied 396 U.S. 825, 90 S.Ct. 69, 24 L.Ed.2d 76 (1969). Fed.R.Civ.P. 52(a).
The district court received copious evidence, direct and circumstantial, on the use and recognition of the pocket tab mark. Use of the mark continuously for 44 years, sales of products bearing the mark of $500,000,000 in the one year before suit, a use on 500,000,000 garments between 1969 and 1977, and widespread advertising directed to the mark, were among the facts of record. Based on that and further evidence, the court entered findings 16 through 45, in support of its conclusion 6 that "[the Levi Strauss] pocket tab trademark has acquired a secondary meaning in the marketplace and is distinctive of [Levi Strauss's] garments in commerce". None of the court's findings being clearly erroneous, we shall not disturb that conclusion.
Likelihood of Confusion
Secondary meaning and likelihood of buyer confusion are separate but related determinations, the relationship rising from the same evidentiary findings. The stronger the evidence of secondary meaning, the stronger the mark, and the more likely is confusion. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 349 n. 12 (9th Cir. 1979).
The present record establishes that Strauss, by extensive use and advertising, built its mark into one which prospective buyers associate with only one seller of pants,
Wrangler argues that its pants were clearly labeled to indicate source. It asserts that its label prominently carried the word WRANGLER and the pants carried a paper billboard identifying Wrangler as the manufacturer. Therefore, argues Wrangler, a purchaser of those pants would not be likely to be confused into believing that they originated with Strauss. The argument is without merit.
First, nothing of record indicates that the mere presence of Wrangler's word mark avoids a likelihood of confusion. A late comer who adopts a mark with intent to capitalize upon a market previously developed by competitors in the field (Finding 98) must at least prove that his effort has been futile. HMH Publishing Co. v. Brincat, 504 F.2d 713, 720 (9th Cir. 1974); National Lead Co. v. Wolfe, 223 F.2d 195, 202 (9th Cir.); cert. denied 350 U.S. 883, 76 S.Ct. 135, 100 L.Ed. 778 (1955).
Second, Wrangler focuses upon the condition of its pants when sold and limits its argument to "point of sale" circumstances. However, billboards and other point of sale materials are removed by the purchaser and have no confusion-obviating effect when the pants are worn. Wrangler's use of its projecting label is likely to cause confusion among prospective purchasers who carry even an imperfect recollection of Strauss's mark and who observe Wrangler's projecting label after the point of sale. It is axiomatic in trademark law that "side-by-side" comparison is not the test. Walt Disney Productions v. Air Pirates, 581 F.2d 751, 759 (9th Cir. 1978), cert. denied 439 U.S. 1132, 99 S.Ct. 1054, 59 L.Ed.2d 94 (1979); G. Heileman Brewing Co. v. Independent Brewing Co., 191 F. 489, 497 (9th Cir. 1911); Geigy Chemical Corp. v. Atlas Chemical Industries, Inc., 438 F.2d 1005, 1007, 58 C.C.P.A. 972 (1971). Restatement of Torts § 728, Comment b (1938).
Strauss has established that a substantial number of prospective buyers associate its pocket tab trademark with only one seller of pants, and that Wrangler's use of a projecting label with its ends captured in an edge of a rear patch pocket of its pants is likely to cause confusion, to cause mistake, or to deceive.
We affirm the district court's judgment finding and enjoining trademark infringement and unfair competition.
Wrangler alleges that Strauss is guilty of fraud on the Patent and Trademark Office and unclean hands, that it is guilty of conduct amounting to estoppel, acquiescence, and abandonment of its rights, and that the mark is merely ornamental or functional. The district court entered extensive findings disposing of each of these allegations as unfounded. Those findings are fully supported in the record and are not clearly erroneous.