R. LANIER ANDERSON, III, Circuit Judge:
In this case, we are required to enter once again "the rather swampy area of unfair competition." B.H. Bunn Co. v. AAA Replacement Parts Co., 451 F.2d 1254 (5th Cir.1971) (Goldberg, J.). The court below dismissed appellee's claim for copyright infringement, but awarded damages and granted injunctive relief for trademark infringement, trade dress infringement, and a variety of state law claims. After wading through a morass of exhibits, briefs and record volumes, we affirm the judgments rendered below but remand so that the trial court can mark out a clearer path for appellants to follow through the slough of unfair competition law.
John H. Harland Co. ("Harland"), a Georgia corporation with headquarters in Atlanta, is a major manufacturer and seller of bank stationery products, including personalized bank checks. Clarke Checks, Inc. ("Clarke"), a Texas corporation with headquarters in San Antonio, also manufactures and sells bank stationery products, including personalized bank checks. Unlike Harland, which markets its products nationally, Clarke's business is primarily based in the south and southeastern portions of the United States. Both companies sell their products through catalogs and brochures which are shown to consumers by new accounts personnel at banking institutions.
Harland and Clarke, as well as other bank stationery companies, have long manufactured three-checks-to-a-page desk-style checkbooks. In these checkbooks, the checks typically are attached to permanent check stubs which can be used to record check transactions. A perforation makes it easy to detach the check from the stub, which remains in the checkbook as a permanent record. Such desk-style checkbooks are relatively large and, unlike wallet-style checkbooks, not readily portable. Although a person can remove one or more checks from the checkbook and carry them to other locations, the checkwriter does not have either a stub or a ledger on which to record the transaction. Thus, this type of checkbook traditionally has been used primarily for business accounts rather than personal accounts.
In 1976, Harland began marketing a new product which solves the portability problem commonly associated with three-checks-to-a-page desk-style checkbooks. Harland inserted a small, carry-around stub between the check and the checkbook's permanent stub. This intermediate stub has lines for recording the date, the amount of the check, the payee, and the purpose of the check, the same information which normally would be placed on a permanent stub. The addition of this intermediate stub makes it more convenient to use checks from the desk-style checkbook at various locations. A person can remove the checks and the corresponding carry-around stubs from the checkbook,
In 1979, Clarke modified its standard three-checks-to-a-page desk-style checkbook to include an intermediate carry-around stub. There is no doubt from the record that Clarke's modification was a response to the competitive success of Harland's Odyssey Collection. Nor is there any doubt that Clarke's development process consisted largely of copying Harland's product. Clarke officials reviewed Harland's catalog and advertising materials, placed an order for some of Harland's Odyssey Collection check packages, and referred to Harland's products when designing Clarke's new desk-style format.
In its complaint, Harland brought claims for trademark infringement, unfair competition (including trade dress infringement), trademark dilution, injury to business reputation, deceptive trade practices and copyright infringement, arising under the common law, the statutes of the State of Georgia, the Trademark Act of 1946 (commonly known as the Lanham Act), 15 U.S.C.A.
On appeal, appellee/cross-appellant Harland contends that the district court erred when it granted summary judgment in favor of Clarke on the copyright infringement claim. Appellant/cross-appellee Clarke contends that the evidence was insufficient to support the findings of trademark infringement and trade dress infringement. Clarke also contends that the district court's injunction is overbroad and does not set forth in sufficient detail the act or acts sought to be restrained. We consider each of these contentions below.
II. COPYRIGHT INFRINGEMENT
The first issue on appeal concerns the propriety of the district court's granting of Clarke's motion for summary judgment on the copyright infringement claim. The district court held that Harland's Memory Stub product was not subject to copyright protection because it was merely a blank form which did not convey information. Thus, the district court concluded that Harland's copyright registrations only protected the artistic background designs on the Odyssey Collection checks.
It is well-established that blank forms which do not convey information or contain original pictorial expression are not copyrightable. See, e.g., Baker v. Selden, 101 U.S. 99, 107, 25 L.Ed. 841 (1879) (holding that "blank account-books are not the subject of copyright"); M.M. Business Forms Corp. v. Uarco, Inc., 472 F.2d 1137, 1139 (6th Cir.1973) ("Generally, forms, including blank forms, which are intended to be used for recording facts are not the proper subjects of copyright."); Time-Saver Check, Inc. v. Deluxe Check Printers, Inc., 178 U.S.P.Q. (BNA) 510 (N.D.Tex.1973) (holding that blank bank checks and attached duplicate forms to be used with carbon paper for record purposes are not copyrightable). This rule is embodied in regulations on the scope of copyright protection promulgated by the Copyright Office, which state in relevant part:
37 C.F.R. § 202.1 (1982) (emphasis added).
Harland's Memory Stub does not convey any information beyond that contained on previously existing check stubs which are manufactured by numerous bank stationery companies. The Memory Stub merely provides lines on which the check writer can record the date, the dollar amount of the check, the payee of the check, and the purpose of the check. Cf. Time-Saver Check, Inc. v. Deluxe Check Printers, Inc., supra. Thus, we agree with the district court that Harland's Memory Stub is merely designed for recording information and does not convey information or contain original pictorial expression. Consequently, we affirm the grant of summary judgment on the ground that the "Memory Stub expression" was not copyrightable.
III. TRADEMARK INFRINGEMENT
Clarke contends that the district court erred when it declined to grant either a directed verdict or judgment notwithstanding the verdict on Harland's trademark infringement claim. According to Clarke, the jury should not have been permitted to consider the trademark infringement issue because, as a matter of law, Clarke's Entry Stub mark does not infringe on Harland's registered Memory Stub mark.
Section 32(1) of the Lanham Act, 15 U.S.C.A. § 1114(1), governs lawsuits for the infringement of a federally registered trademark. A defendant is liable for infringement if, without the consent of the registrant, he uses "in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark" which "is likely to cause confusion, or to cause mistake, or to deceive." Id. Thus, the critical question in most actions under § 32(1) is whether there is a likelihood of confusion, mistake, or deception between the registered mark and the allegedly infringing mark. See, e.g., Sun-Fun Products, Inc. v. Suntan Research & Development, Inc., 656 F.2d 186, 189 (5th Cir.1981).
This court and the former Fifth Circuit have identified a number of factors which should be considered when analyzing whether there is a likelihood of confusion between two marks. Among the 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 Corp. v. Texas Motor Exchange, Inc., 628 F.2d 500, 504 (5th Cir.1980); see also Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 832-33 (11th Cir.1982) (applying essentially the same factors to determine whether there was likelihood of confusion in a trade dress infringement case); Safeway Stores, Inc. v. Safeway
In this case, the district court properly instructed the jury on the factors it should consider in determining whether there was a likelihood of confusion between Harland's registered Memory Stub trademark and Clarke's use of the mark Entry Stub.
Although the issue is a close one, we have concluded that the jury's verdict on the trademark infringement issue must be affirmed. An evaluation of the factors which this circuit has identified as relevant in trademark infringement cases convinces us that a reasonable and fair-minded jury could find that there was a likelihood of confusion between Harland's registered Memory Stub trademark and Clarke's use of the Entry Stub mark.
A. Type of Trademark.
The first factor to consider is whether Memory Stub is a "strong" or a "weak" trademark. "[T]he strength and distinctiveness of plaintiff's mark is a vital consideration in determining the scope of protection it should be accorded. `Strong marks are widely protected, as contrasted to weak marks.'" Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d at 259 (quoting Lunsford, Trademark Basics, 59 Trade-Mark Rep. 873, 878 (1969)).
Harland contends that Memory Stub is a strong trademark. To support this contention, Harland focuses on several former Fifth Circuit cases which indicated that "[a] strong trademark is one that is rarely used
Clarke disagrees with Harland's characterization of Memory Stub as a strong mark and with Harland's method of determining the "strength" of the mark. According to Clarke, the key consideration in determining the strength of a trademark is whether the mark is "arbitrary" or "fanciful," "suggestive," or merely "descriptive." An arbitrary or fanciful mark has no inherent relationship to the product or service with which it is associated. A suggestive mark suggests some characteristic of the product or service to which it is applied, but requires the consumer to use his imagination to determine the nature of the product or service. A descriptive mark describes a characteristic or quality of the product or service, such as its intended use, its ingredients, its dimensions, its desirable features, or its end effect on the consumer. See Sun Banks v. Sun Federal Savings & Loan Ass'n, 651 F.2d 311, 315-16 (5th Cir.1981) (discussing classification of service marks and trademarks); Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1183-84 (5th Cir.1980) (discussing categories of trademarks), cert. denied, 450 U.S. 981, 101 S.Ct. 1516, 67 L.Ed.2d 816 (1981). A purely fanciful or arbitrary mark is generally considered strong and is given "protection over a wide range of related products and variations in appearance of the mark." 1 J.T. McCarthy, Trademarks & Unfair Competition § 11:24, at 398 (1973). A descriptive mark, on the other hand, is considered weak and is given a "narrow range of protection." Id. A suggestive mark falls somewhere between the two preceding types of marks and, although a suggestive mark can be protected without evidence that it has acquired secondary meaning,
Recent authority in this circuit indicates that both of the factors cited by the parties should be considered when analyzing the strength of a particular trademark. In Safeway Stores, Inc. v. Safeway Discount Drugs, Inc., supra, for example, the court discussed the categories of marks and then stated: "The words of a mark are not, however, the sole factors determining its strength. Also important is the extent of third-party use of the mark." 675 F.2d at 1164. Cf. Sun Banks v. Sun Federal Savings & Loan Ass'n, 651 F.2d at 315 ("The ultimate strength of a mark ... is determined by a number of factors which establish its standing in the marketplace."); Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d at 259-60 (discussing both number of third-party uses and categorization of mark in concluding that "Domino" was entitled to only limited protection outside the product areas in which plaintiff already had used its mark); 1 J.T. McCarthy, supra, § 11:24, at 401 (suggesting that the "`strong-weak' classification should be based both upon the amount of use of the term by others in this product and geographical area and upon the quantum of `strength' and consumer recognition of the mark at issue"). Thus, while the fact that Memory Stub and similar marks have not been used by other parties normally might indicate that Harland's mark is strong, this indication is significantly weakened by the suggestive or possibly even descriptive nature of the Memory Stub mark. Consequently, we do not believe that Harland's Memory Stub mark is a particularly strong mark. This does not mean, of course, that the Memory Stub mark cannot be infringed upon. See AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 350 (9th Cir.1979) (although a weak mark is entitled to only a "restricted range of protection," infringement will be found "if the marks are quite similar, and the goods closely related ...."); New West Corp. v. NYM Co., 595 F.2d 1194, 1202 (9th Cir.1979) (even if appellee's mark was weak, appellee was entitled to protection "due to the obvious similarities of the marks in appearance and sound, along with the identical product and market distribution area"). Accordingly, we must carefully examine the remaining factors in order to determine whether, despite the fact that Harland's mark is not particularly strong, a reasonable jury could nonetheless conclude that Clarke's Entry Stub mark creates a likelihood of confusion between the two marks.
B. Similarity of Design.
"The similarity of design is determined by considering the overall impression created by the mark[s] as a whole rather than simply comparing individual features of the marks." Exxon Corp. v. Texas Motor Exchange, Inc., 628 F.2d at 504-05. This consideration includes a comparison of the appearance, sound and meaning of the marks, as well as the manner in which the marks are used. See 2 J.T. McCarthy, supra, §§ 23:4, 5, 7, 8, 15, 18; Restatement of Torts § 729(a) (1938); Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d at 260-61; Armstrong Cork Co. v. World Carpets, Inc., 597 F.2d at 501-04.
There are some obvious similarities between the appearance, sound and meaning of the mark Memory Stub and the mark Entry Stub. Both marks consist of a relatively short word which ends with "ry" followed by the word "Stub." Cf. AMF, Inc. v. Sleekcraft Boats, 599 F.2d at 351 (Slickcraft/Sleekcraft); National Association of Blue Shield Plans v. United Bankers Life Insurance Co., 362 F.2d 374 (5th Cir.1966) (Blue Shield/Red Shield). In the context of bank check products, however,
Although the similarities in appearance, sound and meaning between the marks Memory Stub and Entry Stub are far from overwhelming, these similarities are accentuated by the manner in which the marks are used. Clarke, like Harland, places its mark on the intermediate carry-around stub. See Figures 3 and 4. Although Clarke's mark is in smaller print and is located at the bottom of the stub rather than at the top, both marks are placed within the decorative information box on the stub and both are used to label or "name" the stub. Further, both parties use the marks in their advertising materials and in the catalogs which they make available to new accounts personnel at banks. Thus, we believe that there are some similarities in the overall commercial impression created by Harland's Memory Stub mark and Clarke's Entry Stub mark.
C. Similarity of Products.
"The greater the similarity between the products and services, the greater the likelihood of confusion." Exxon Corp. v. Texas Motor Exchange, Inc., 628 F.2d at 505. In this case, the products are virtually identical.
D. Identity of Retail Outlets and Purchasers.
"Dissimilarities between the retail outlets for and the predominant customers of plaintiff's and defendant's goods lessen the possibility of confusion, mistake, or deception." Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d at 262. Harland and Clarke sell their products through the same retail outlets — banking institutions — and compete for exactly the same customers in the south and southeastern portions of the United States.
E. Similarity of Advertising Media Used.
"The fifth factor used in evaluating the likelihood of confusion is the similarity between the parties' advertising campaigns. The greater the simiarity in the campaigns, the greater the likelihood of confusion." Exxon Corp. v. Texas Motor Exchange, Inc., 628 F.2d at 506. In this case, Harland and Clarke use virtually identical methods of advertising their products, relying primarily on catalogs which are available at banks. Both parties also use, to a lesser
F. Defendant's Intent.
Although objective factors are most important in assessing the likelihood of confusion between two marks, see 2 J.T. McCarthy, supra, § 23:30, courts also examine the defendant's subjective intent. Indeed, the former Fifth Circuit once stated that if "a plaintiff can show that a defendant adopted a mark with the intent of deriving benefit from the reputation of the plaintiff, that fact alone `may be sufficient to justify the inference that there is confusing similarity.'" Exxon Corp. v. Texas Motor Exchange, Inc., 628 F.2d at 506 (quoting Restatement of Torts § 729, Comment (f) (1938)); see also Sun Banks v. Sun Federal Savings & Loan Ass'n, 651 F.2d at 318-19 ("That a latecomer adopts another's name or mark, deliberately seeking to capitalize on the other's reputation and benefit from the confusion, is an important factor for any court.").
In this case, there is some evidence from which the jury might have inferred that Clarke adopted the Entry Stub mark in order to appropriate some of the good will associated with Harland's Memory Stub mark. Clarke was well aware of the success of Harland's Memory Stub product. More importantly, the record suggests that the officials who developed Clarke's Entry Stub product attempted to copy Harland's product as closely as possible, even using one of Harland's Memory Stub products as a model when "designing" the new Clarke product.
Clarke argues that any possible inference of intent to trade on the reputation of Harland's mark by adopting a confusingly similar mark is necessarily negated by evidence that Clarke officials consulted trademark counsel before adopting the Entry Stub mark.
G. Actual Confusion.
"Although evidence of actual confusion is not necessary to a finding of likelihood of confusion, it is nevertheless the best evidence of likelihood of confusion." Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d at 263. See also Safeway Stores, Inc. v. Safeway Discount Drugs, Inc., 675 F.2d at 1166-67 (discussing the significance of evidence of actual confusion).
Harland contends that it "introduced clear evidence of instances of actual confusion" at trial. Brief of Appellee/Cross Appellant at 14. In contrast, Clarke argues that "Harland attempted to show actual confusion, but utterly failed." Brief of Appellant/Cross-Appellee at 37. Our own examination of the record indicates that although the evidence of actual confusion was not sufficient to compel a finding of likelihood of confusion, it was "worthy of some consideration." Safeway Stores, Inc. v. Safeway Discount Drugs, Inc., 675 F.2d at 1167 (holding that two instances of actual confusion, "one misdirected dunning letter from a creditor of [defendant] and one customer inquiry at [defendant]," were sufficient evidence of actual confusion to be "worthy of some consideration"); cf. World Carpets, Inc. v. Dick Littrell's New World Carpets, 438 F.2d 482, 490 (5th Cir.1971) (noting that "reason tells us that ... very little proof of actual confusion would be necessary to prove the likelihood of confusion").
At trial, Harland presented evidence of two instances of actual confusion. Both instances involved order forms for intermediate carry-around stub products which were received by Clarke but which contained the word "Memory." In one instance, the order form clearly asked for Clarke's "3-to-page Deskette" with Clarke's "World of Beauty" artistic background design, but a card attached to the order form included the words "Cover and Memory Case." (Emphasis added.)
Having analyzed the key factors individually, we must now weigh the factors to determine whether there was sufficient evidence
IV. TRADE DRESS INFRINGEMENT
Section 43(a) of the Lanham Act, 15 U.S.C.A. § 1125, states in relevant part:
This court and the former Fifth Circuit have held that § 43(a) creates a federal cause of action for trade dress infringement. See, e.g., Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d at 830-32; Sun-Fun Products, Inc. v. Suntan Research & Development Inc., 656 F.2d at 192.
"Trade dress" involves the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques. See, e.g., Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d at 831 ("adoption procedures used by [plaintiff] in the sale of its dolls qualify as protectable trade dress"); SK & F Co. v. Premo Pharmaceutical Laboratories, Inc., 481 F.Supp. 1184, 1187 (stating that "[t]rade dress is a complex composite of features" including, inter alia, size, color, texture, and graphics, which must "be considered together, not separately"), aff'd, 625 F.2d 1055 (3d Cir.1980); 1 J.T. McCarthy, supra, § 8.1, at 230-31.
Most trade dress infringement actions involve the packaging or labeling of goods. See, e.g., Chevron Chemical Co. v. Voluntary Purchasing Groups, Inc., 659 F.2d 695 (5th Cir.1981) (Unit A) (packaging of lawn and garden chemical products), cert. denied, 457 U.S. 1126, 102 S.Ct. 2947, 73 L.Ed.2d 1342 (1982); Sun-Fun Products, Inc. v. Suntan Research & Development Inc., supra, (packaging of sun tan preparations); Perfect Fit Industries, Inc. v. Acme Quilting Co., 618 F.2d 950 (2d Cir.1980) (packaging of mattress pads), cert. denied, 459 U.S. 832, 103 S.Ct. 73, 74 L.Ed.2d 71 (1982). Recently, however, courts have recognized that the design of a product itself may constitute protectable trade dress under § 43(a) of the Lanham Act. See, e.g., Warner Bros., Inc. v. Gay Toys, Inc., 658 F.2d 76 (2d Cir.1981) (distinctive color and symbols on toy car protected under § 43(a)); Harlequin Enterprises Ltd. v. Gulf & Western Corp., 644 F.2d 946 (2d Cir.1981) (distinctive book covers protected against trade dress infringement); Truck Equipment Service Co. v. Fruehauf Corp., 536 F.2d 1210 (8th Cir.) (unique exterior design of twin hopper bottomed grain semi-trailer protected under § 43(a)), cert. denied, 429 U.S. 861, 97 S.Ct. 164, 50 L.Ed.2d 139 (1976).
In order to prevail on a claim for trade dress infringement under § 43(a), plaintiff must prove three basic things: "[T]hat the trade dress of the two products is confusingly similar, that the features of the trade dress are primarily non-functional, and that the trade dress has acquired secondary meaning." Black & Decker Co. v. Ever-ready Appliance Manufacturing Co., 518 F.Supp. 607, 616 (E.D.Mo.1981), aff'd, 684 F.2d 546 (8th Cir.1982); accord,
We need not discuss the first element of trade dress infringement, likelihood of confusion, in detail. The factors relevant to determining whether there is a likelihood of confusion between the trade dress of two products are "essentially the same" as those relevant to determining whether there is a likelihood of confusion between the parties' trademarks. Sun-Fun Products, Inc. v. Suntan Research & Development Inc., 656 F.2d at 192; see also Boston Professional Hockey Ass'n v. Dallas Cap & Emblem, Inc., 510 F.2d 1004, 1010 (5th Cir.) ("As a general rule ... the same facts which would support an action for trademark infringement would also support an action for unfair competition."), cert. denied, 423 U.S. 868, 96 S.Ct. 132, 46 L.Ed.2d 98 (1975). We have already concluded above that these factors supported the jury's finding that there was a likelihood of confusion between the parties' marks. Thus, although the scope of the inquiry is somewhat broader under § 43(a), see Sun-Fun Products, Inc. v. Suntan Research & Development Inc., 656 F.2d at 192 (stating that "[t]he touchstone under [§ 43(a)] is not similarity of the registered mark but similarity in the overall trade dress of the products"), we have little difficulty concluding that these factors also support the jury's conclusion that there was a likelihood of confusion between the trade dress of the Memory Stub and Entry Stub products.
We also have little difficulty with the third element of an action for trade dress infringement, secondary meaning.
The crucial question on the trade dress aspect of this case, therefore, is whether Harland has met the second requirement for a trade dress infringement action by demonstrating that any features of the trade dress of its Memory Stub product are "primarily nonfunctional."
"The issue of functionality has been consistently treated as a question of fact." Vuitton Et Fils S.A. v. J. Young Enterprises, Inc., 644 F.2d at 775. Thus, as with the finding of likelihood of confusion discussed in Part III, supra, we must affirm the jury's verdict if it was based on substantial evidence.
As the Eighth Circuit once stated, "[t]he line between functionality and nonfunctionality is not ... brightly drawn in every case." Truck Equipment Service Co. v. Freuhauf Corp., 536 F.2d at 1218. In this case, we believe that many of the features of Harland's Memory Stub product — such as the concept and location of the carry-around stub,
V. THE SCOPE OF INJUNCTIVE RELIEF
Clarke's final argument on appeal is that the permanent injunction entered by the district court does not set forth in sufficient detail the acts which are prohibited. We agree.
Federal Rule of Civil Procedure 65(d) states in relevant part:
The judgment entered by the district court enjoins Clarke from "using trade dress for bank check products which is confusingly similar to the trade dress or overall appearance of plaintiff's Memory Stub check products or is likely to cause confusion therewith ...." Record on Appeal,
2 J.T. McCarthy, supra, § 30.8, at 334.
Accordingly, we vacate the portion of the district court's order quoted above and remand to the district court for entry of an order which specifically describes the acts which are prohibited by the permanent injunction.
AFFIRMED IN PART, VACATED AND REMANDED IN PART.
Harland's use of an intermediate stub was not entirely new, nor was the idea of an end stub to temporarily record information from a transaction. Payroll checks, manufactured by several companies, have long contained an intermediate stub which is designed to be detached, along with the corresponding check, from the permanent check stub. Before cashing the check, the payee detaches the intermediate stub, which contains such information as gross pay, taxes, and net pay. See Figure 1. "Counter checks" issued by banks often have a stub on which information regarding the transaction can be temporarily recorded. See Figure 2. Harland's innovation was to combine these two concepts, creating an intermediate stub on which information regarding a transaction could be recorded temporarily until the check writer could enter the information on the permanent stub in the desk-style checkbook.
The same standard is applicable on appeal to determine whether the evidence was sufficient to submit the case to the jury. Id. at 367 n. 1; 9 C. Wright & A. Miller, Federal Practice & Procedure: Civil § 2524, at 542 n. 28 (1971).
Of course, even if Harland's mark initially was weak, it may have subsequently acquired strength through Harland's promotional efforts. See Standard Int'l Corp. v. American Sponge & Chamois Co., 394 F.2d 599, 600 (C.C.P.A.1968) ("[A] mark which is initially a weak one may, by reason of subsequent use and promotion, acquire such distinctiveness that it can function as a significant indication of a particular producer as source of the goods with which it is used."). Harland featured the Memory Stub mark prominently in its advertising and received over 400,000 orders for Memory Stub products during the three years prior to Clarke's use of the Entry Stub mark. Thus, the fact that Harland's counsel believed the mark was weak in 1976 does not necessarily suggest that the mark was still weak in 1979.
The trial court's instructions stated that in determining the likelihood of confusion, the jury "should consider consumers, including purchasers or users of the parties' products, and ... should also consider persons who assist consumers in selecting and ordering the goods they wish to purchase." Record on Appeal, vol. 7, at 868. Neither party has objected to this charge on appeal. In the absence of more detailed information regarding the marketing of bank check products, we assume that this portion of the instructions was correct.
Record on Appeal, vol. 7, at 871-72. The judge's instructions correctly stated the current law regarding the role of functionality in trade dress infringement actions. See, e.g., Vuitton Et Fils S.A. v. J. Young Enterprises, Inc., 644 F.2d at 772-75; Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 203-05 (2d Cir.1979).
Clarke contends, however, that the trial judge erred by failing to give a proffered instruction which included a detailed definition of the term functionality. We admit that the trial judge could have expanded on the instructions regarding the doctrine of functionality, but we reject Clarke's contention that the judge's failure to do so constitutes reversible error. As noted above, the instructions actually given correctly stated the law. Further, our review of the entire record, including the evidence presented during the trial, the arguments of counsel for both parties, and the instructions given, indicates that the jury was adequately informed about the role of functionality in a trade dress infringement action. Cf. First Virginia Bankshares v. Benson, 559 F.2d 1307, 1316 (5th Cir.1977) (stating that the standard test for reviewing the trial court's instructions is to "consider the challenged instruction as part of the entire charge, in view of the allegations of the complaint, the evidence presented, and the arguments of counsel, to determine whether the jury was misled and whether the jury understood the issues"), cert. denied, 435 U.S. 952, 98 S.Ct. 1580, 55 L.Ed.2d 802 (1978); see also Shelak v. White Motor Co., 581 F.2d 1155, 1160-61 (5th Cir.1978). Moreover, Clarke's proffered instruction contained an incorrect definition of functionality. The proffered instruction stated: "When a feature of goods or of its wrappers or containers appeals to the consumer and affects his or her choice, that feature is functional." Record on Appeal, vol. 2, at 1451 (Defendant's Request to Charge No. 38) (emphasis in original). We believe that this definition is overly broad because many nonfunctional, arbitrary features of a product may appeal to the consumer and affect his or her choice. Our conclusion is supported by the Ninth Circuit's recent rejection of a similar definition of functionality in Vuitton Et Fils S.A. v. J. Young Enterprises, Inc., supra. The district court had found that a repeated fabric design on plaintiff's luggage products was functional because it constituted "the primary decoration of those goods" and was "a factor in their consumer appeal and saleability." 644 F.2d at 773. The Ninth Circuit reversed, stating in relevant part: "We disagree with the district court insofar as it found that any feature of a product which contributes to the consumer appeal and saleability of the product is, as a matter of law, a functional element of that product." Id. The Ninth Circuit also rejected the argument that a design is functional if it is related to the reasons consumers purchase the product, noting that even trademarks would be functional under such a definition because they help to sell goods by identifying the manufacturer. Id. at 774. See also The Problem of Functional Features, supra note 26, at 88 (criticizing a similar definition of functionality, any product element which is "an important ingredient in the commercial success of the product," as overly broad); cf. Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850 n. 10, 102 S.Ct. 2182, 2186 n. 10, 72 L.Ed.2d 606, 613 n. 10 (1982) ("In general terms, a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.").