Rehearing and Rehearing En Banc Denied September 14, 1981.
POLITZ, Circuit Judge:
This is an action for service mark infringement alleging violation of the Lanham Trademark Act, 15 U.S.C. §§ 1051-1127,
Appellee Sun Banks, one of the largest multi-bank holding companies in Florida, began doing business in 1967 under the name First at Orlando Corporation. When several banks outside the Orlando area were acquired, the decision was made to adopt a less geographically-restrictive corporate name. On April 12, 1974, after an extensive marketing campaign, appellee officially changed its name to Sun Banks of Florida, Inc. On June 17, 1977, the United States Patent and Trademark Office issued U. S. Registration No. 1,013,709 to appellee. The service mark includes the words "Sun Banks" together with an orange colored arc. In addition to the federal service mark, Sun Banks has five service marks used in connection with its banking businesses that are registered with the State of Florida: "Sun Bank," "Sun Banks" with orange arc design, "SunBank24" (automated teller machine), "SunBanker24" (plastic banking card), and "Sun Banks Preferred
Appellant Sun Federal, a savings and loan association with its principal place of business in Tallahassee, Leon County, Florida, conducted business under the name Leon Federal Savings and Loan Association from 1952 until 1975. In 1975 appellant received Federal Home Loan Bank Board approval to open a branch in Venice, Sarasota County, Florida. In marked similarity to Sun Banks' motivation, this development prompted consideration of a less parochial name, and on November 1, 1975, the association changed its name to Sun Federal Savings and Loan Association. Sun Federal subsequently obtained Florida registration of the service mark "BRIGHT ORANGE SUN AND THE WORDS SUN FEDERAL SAVINGS AND LOAN ASSOCIATION." Sun Federal did not seek federal registration.
At the time of trial, Sun Banks did not own banking facilities in either Tallahassee or Venice. Both parties, however, clearly indicated their intentions to expand throughout Florida and, at the time of this writing, very probably are co-existing within one or more communities.
II. Likelihood of Confusion
The essential question is the "likelihood of confusion" concerning the identity or association between Sun Banks and Sun Federal due to their common use of the name and mark "SUN." 15 U.S.C. § 1114(1); Armstrong Cork Co. v. World Carpets, Inc., 597 F.2d 496 (5th Cir. 1979), cert. denied, 444 U.S. 932, 1100 S.Ct. 277, 62 L.Ed.2d 190 (1979). In assessing whether there is a likelihood of confusion with respect to service marks, we weigh several objective factors: type of service mark, similarity of design, similarity of service, identity of service facilities and customers, similarity of advertising media used, defendant's intent and actual confusion. Roto-Rooter Corporation v. O'Neal, 513 F.2d 44 (5th Cir. 1975). The district court concluded that there was a likelihood of confusion. The threshold consideration on appeal is the applicable standard of appellate review.
Sun Banks urges the aegis of our repeated statements that the likelihood of confusion is a factual finding reviewable under the clearly erroneous test of Rule 52(a), Fed.R.Civ.P. Exxon Corp. v. Texas Motor Exchange of Houston, 628 F.2d 500 (5th Cir. 1980); Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252 (5th Cir. 1980), cert. denied, 449 U.S. 899, 101 S.Ct. 268, 66 L.Ed.2d 129 (1980). Sun Federal seeks a more hospitable landing zone and offers a distinction between "likelihood of confusion" as a question of fact in the appellate review crucible and factors of precedential magnitude which must be considered by a court in determining "whether confusion is likely." We find the offered distinction ingenious but unpersuasive. Our comment in Kentucky Fried Chicken v. Diversified Packaging, 549 F.2d 368, 384 (5th Cir. 1977), that "when a district court labors under a misapprehension concerning the governing legal norms, the `clearly erroneous' standard no longer cirmcumscribes appellate review," may not be taken as an erosion of the standard of review applicable to a finding of likelihood of confusion.
Sun Federal asserts two errors of law by the trial judge in assessing the burden of proof. Because of our disposition of the case they need not be fully addressed.
Notwithstanding the nuances that might be suggested, the commanding appellate question is whether the district court's finding of likelihood of confusion is clearly erroneous. We are convinced that it is. See United States v. Gypsum Go., 333 U.S. 364, 395, 68 S.Ct. 525, 542, 92 L.Ed. 746 (1948) ("A [district court's] finding is `clearly erroneous' when although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed."); W. R. B. Corporation v. Geer, 313 F.2d 750, 753 (5th Cir. 1963), cert. denied, 379 U.S. 841, 85 S.Ct. 78, 13 L.Ed.2d 47 (1964) ("the clearly erroneous concept of Fed.R.Civ.P. 52(a) requires findings to be set aside if the Court is left with the impression that the result is not the truth and right of the case"). In arriving at our conclusion, we apply seriatim the factors listed in Roto-Rooter Corporation v. O'Neal, supra.
A. Type of Service Mark
A vital factor in the determination whether there is a likelihood of confusion between the two services marks at bar is the strength or weakness of Sun Banks' mark.
We do not necessarily disagree with the trial judge that Sun Banks' mark should be categorized as "arbitrary." This label alone, however, does not precipitate absolute protection. Arbitrariness refers to the quality of a mark, i. e., that it bears no relation to the service provided. The ultimate strength of a mark, the key inquiry before us, is determined by a number of factors which establish its standing in the marketplace. As we observed in Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d at 260:
In Amstar we reversed a finding of likelihood of confusion, in part because the district court failed properly to weigh the impact of extensive third-party uses of the "Domino" mark. In the case at bar we are confronted with an even more impressive array of third-party single and multi-word uses of the "Sun" mark. The evidence reflects that in 1976 over 4400 businesses registered with the Florida Secretary of State used the word "Sun" in their names. A significant number of these businesses fell within the category designated financial institutions.
We are not convinced the court in Tisch Hotels meant to convey that third-party use of a word can never be relevant to the issue of likelihood of confusion. Regardless, we decline to accept that proposition in this case. To the contrary, we find the extensive third-party use of the word "Sun" impressive evidence that there would be no likelihood of confusion between Sun Banks and Sun Federal. See, e. g., Amstar Corp. v. Domino's Pizza, Inc., supra (72 third-party registrations of the mark "Domino"); Armstrong Cork Co. v. World Carpets, Inc., supra (multiple uses of the mark "World"); American Heritage Life Ins. Co. v. Heritage Life Ins. Co., supra (multiple uses of the mark "Heritage"); Holiday Inns, Inc. v. Holiday Out in America, 481 F.2d 445 (5th Cir. 1973) (multiple uses of the mark "Holiday"); El Chico, Inc. v. El Chico Cafe, 214 F.2d 721 (5th Cir. 1954) (27 third-party registrations of the mark "Chico," "El Chico" and other similar names).
Furthermore, we find that the mark "Sun Banks" comes within the general rubric reported in 3 Callmann, Law of Trademarks § 82.1(i), at 722:
See Patton Paint Co. v. Sunset Paint Co., 290 F. 323 (D.C.Cir.1923) ("Sun-Proof" versus "Sun Glo"); Patton Paint Co. v. Sunset Paint Co., 290 F. 326 (D.C.Cir.1923) ("Sun-Proof" versus "Sunset"). In substance this same view was expressed by the Florida Supreme Court in Sun Coast v. Shupe, 52 So.2d 805, 805 (Fla.1951), in rejecting a request that the court enjoin use of the name "Sun Coast":
Representatives of both Sun Banks and Sun Federal attested that the word "Sun" was selected for their new names because it personified Florida and conveyed the universal appeal of warmth and friendliness. As stated by Sun Banks: "Sun was more than just a name. It was a symbol of our heritage and our future." And while Florida certainly cannot claim a monopoly on its association with the sun, it can justifiably claim, perhaps by acquisitive prescription, a somewhat special relationship.
We agree with the district court that the name "Sun" is too broad to be geographically descriptive. See World Carpets, Inc. v. Dick Littrell's New World Carpets, 438 F.2d 482 (5th Cir. 1971). However, this is merely further proof of the widespread use of the term which militates against a finding of likelihood of confusion.
Finally, we find the district court was unduly concerned that Sun Federal's evidence of third-party use was not supported by data reflecting the type of business of those users. The evidence abundantly established existing third-party use of the name "Sun," both within and without the financial community.
B. Similarity of Design
An examination of the Sun Banks and Sun Federal service marks discloses a similarity in appearance only with respect to the inclusion of the name "Sun" and the orange color of the logos. Sun Banks' logo:
Sun Federal's logo:
The district court placed considerable emphasis on the common word usage "because it tends to immediately suggest a connection between the two institutions." We fail to perceive an "immediate connection" in light of such common use of the word "Sun" by Florida businesses. See 3 Callmann, Law of Trademarks § 82.1(1), at 765-66 ("such marks as a star or the sun in word or picture are of such long standing in the business world and have been used in so many lines of business that neither can be considered the exclusive mark of one manufacturer or tradesman so as to deny its use by others").
It is well established that "[s]imilarity of appearance is determined on the
C. Similarity of Service
Traditionally, a number of distinctions existed between the services offered by commercial banks and savings and loan associations. The Depository Institutions Deregulation and Monetary Control Act of 1980 substantially closed that gap, particularly by permitting savings and loan associations to act in areas previously reserved to commercial banks.
D. Identity of Service Facilities and Customers
Consistent with the similarity of services provided by Sun Banks and Sun Federal, both businesses operate from substantially similar facilities and are capable of attracting similar customers. The identity of service facilities for the most part includes branch offices and subsidiary banks located in areas of high exposure such as shopping centers or large residential areas. The identity of customers, in turn, is largely the result of comparable services offered. Although we again find this factor to be of some weight, see Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d at 262 ("Dissimilarities between the retail outlets for and the predominant consumers of plaintiff's and defendants' goods lessen the possibility of confusion, mistake, or deception."), it is insufficient to overcome the result commanded by our other inquiries.
E. Similarity of Advertising Media Used
During the four year period from 1973 to 1976, Sun Banks expended approximately $6.5 million on the development and promotion of its new name. Various advertising media were employed, including local, state and national newspapers and magazines, radio and television, pamphlets and circulars, posters, billboards and signs. Sun Federal's advertising, while limited primarily to Leon and Sarasota Counties, has been carried on through much of the same media. This factor has a bearing on likelihood of confusion, see Exxon Corp. v. Texas Motor Exchange of Houston, 628 F.2d at 506 ("The greater the similarity in the campaigns, the greater the likelihood of confusion."), but in this case is insufficient to sustain a finding of likelihood of confusion in light of the restricted range of protection to which Sun Banks' weak mark is entitled.
F. Defendant's Intent
That a latecomer adopts another's name or mark, deliberately seeking to capitalize
G. Actual Confusion
Evidence that use of the Sun Banks and Sun Federal service marks has led to past confusion would be persuasive proof that future confusion is likely. Roto-Rooter Corporation v. O'Neal, supra (four persons mistakenly employed defendant although intending to use services of plaintiff). Although the record contains several isolated instances of uncertainty whether there was a connection between the two businesses, in light of the number of transactions conducted and the extent of the parties' advertising, the amount of past confusion is negligible.
The first indicia of confusion offered by Sun Banks came in response to a letter written by Sun Banks' president to all subsidiary banks requesting employees to report incidents of confusion stemming from Sun Federal's use of the word "Sun." In three years, less than fifteen such incidents were reported. Some of those involved relatives of Sun Banks' employees, while others could not be identified. Apparently none of the remarks was made by a potential customer considering whether to transact business with one or the other of the parties. Sun Banks also produced four witnesses who recounted having inquired whether Sun Banks and Sun Federal were related. Again in each instance there is no indication that the inquiry was made by a potential customer concerning the transaction of business.
Such evidence of confusion should be given appropriate consideration. In determining the likelihood of confusion, however, a court must consider all of the evidence, including countervailing circumstances which lessen the impact of asserted instances of confusion. See First Southern Fed. Sav. v. First Southern Sav., 614 F.2d 71 (5th Cir. 1980) (no substantial likelihood of confusion even though actual confusion existed on several occasions). We find the countervailing circumstances in this case to lessen significantly the impact of any actual confusion which might have occurred.
We conclude that the evidence compels the finding that there is no likelihood of confusion between the Sun Federal and Sun Banks service marks. When there is no likelihood of confusion, there can be no trademark infringement. 15 U.S.C. § 1114(1); Amstar Corp. v. Domino's Pizza, Inc., supra. This holding disposes of both the federal law claim and the state law claim of unfair competition asserted under pendent jurisdiction.
The judgment of the district court is REVERSED.
O'KELLEY, District Judge, dissenting:
I must respectfully dissent from the majority's opinion reversing the district court. I would affirm the district judge. To do
I would therefore affirm the trial judge for the reasons stated in his opinion and order dated August 15, 1978.
The complaint alleged a third theory of recovery: dilution of Sun Banks' service mark in violation of Fla. Stat. § 495.151 (1977). On the basis that the likelihood of confusion between the two service marks in question went to the source of the services provided by the litigants, the district court rejected the claim of dilution, quoting from our language in Holiday Inns, Inc. v. Holiday Out in America, 481 F.2d 445, 450 (5th Cir. 1973):
Sun Banks makes no issue of this adverse finding.