KRAVITCH, Circuit Judge:
In the fall of 1982, when the fancy of Georgia sports fans turned to thoughts of college football, Bill Laite Distributing Co.
Laite hoped that the "Battlin' Bulldog" would pile up yardage and score big points in the always-competitive alcoholic beverage market. Unfortunately, however, the pug-faced pooch was thrown for a loss by the University of Georgia Athletic Association, Inc. ("UGAA"), which obtained preliminary and permanent injunctive relief in federal district court based on the "likelihood of confusion" between the "Battlin' Bulldog" and the "University of Georgia Bulldog." Laite now cries "foul," arguing that (1) the "University of Georgia Bulldog" is not a valid trade or service mark worthy of protection, (2) the district court used the wrong factors in comparing the "Battlin' Bulldog" with the "University of Georgia Bulldog," and (3) the court's conclusion that the sale of "Battlin' Bulldog Beer" created a "likelihood of confusion" is clearly erroneous. After viewing a "replay" of the proceedings below, we conclude that no error was committed and affirm the judgment of the district court in all respects.
The University of Georgia's athletic teams have long used the nickname, "Bulldogs."
In October, 1982, Laite began distributing the red-and-black cans of "Battlin' Bulldog Beer" to stores in the Atlanta area and throughout Georgia. One side of the cans contained the portrayal of an English bulldog described earlier. The opposite side of the cans contained the words, "BATTLIN' BULLDOG BEER" (in prominent red block letters), and, "Not associated with the University of Georgia" (in small silver print). Laite previously had sought permission from UGAA to use an exact reproduction of the "University of Georgia Bulldog" on the cans, but such permission had been denied.
Upon learning of the appearance of "Battlin' Bulldog Beer" on the market,
UGAA moved for a preliminary injunction to prevent Laite from producing, distributing, or selling "Battlin' Bulldog Beer." After a hearing, the district court granted UGAA's motion, concluding that UGAA was likely to prevail on its Lanham Act claim and that the remaining conditions for preliminary injunctive relief were met.
Laite then moved to alter or amend the district court's order and judgment, or in the alternative for a new trial, on the grounds that the parties had reserved the right to submit additional evidence in support of their respective positions. The district court took additional evidence from both parties, and, after reviewing the additional evidence, entered an order (1) granting Laite's motion to alter or amend the order and judgment for the purpose of including the additional evidence in the record, but (2) otherwise denying Laite's motion. This appeal ensued.
We kick off our discussion by noting that the district court, in granting preliminary injunctive relief to UGAA, discussed only the Lanham Act claim and did not mention the claims arising under Georgia law. In the final order granting UGAA's request for a permanent injunction, the district court stated:
Again, the district court did not mention the state law claims. On appeal, therefore, we are limited to determining whether the district court's decision was proper under section 43(a) of the Lanham Act.
A. Whether the "University of Georgia Bulldog" is a Valid Trade or Service Mark Worthy of Protection
Laite's first argument on appeal is that the "University of Georgia Bulldog" is not a valid trade or service mark worthy of protection.
The threshold question, however, is whether Universal City Studios accurately states the law of this circuit concerning the need for proof of secondary meaning under section 43(a) of the Lanham Act. We conclude that it does not. The general rule in this circuit is that proof of secondary meaning is required only when protection is sought for descriptive marks, as opposed to arbitrary or suggestive marks. We have long recognized that:
Sun Banks of Florida, Inc. v. Sun Federal Savings & Loan Ass'n, 651 F.2d 311, 315 (5th Cir.1981)
3 R. Callmann, The Law of Unfair Competition, Trademarks and Monopolies §§ 19.25, 19.26 at pp. 19-79, 19-85 (4th ed. 1983).
Although most of our cases applying this general rule have involved claims under 15 U.S.C. § 1114(a) for infringement of federally registered marks, the same rule necessarily applies to section 43(a) claims based on non-federally-registered marks. After all, "registration of a trademark confers only procedural advantages and does not enlarge the registrant's rights, for ownership of the trademark rests on adoption and use, not on registration." Turner v. HMH Publishing Co., 380 F.2d 224, 228 (5th Cir.) (citation omitted), cert. denied, 389 U.S. 1006, 88 S.Ct. 566, 19 L.Ed.2d 601 (1967). We also note that the Fifth Circuit, in an action under section 43(a) based on infringement of a trade dress, has held:
Chevron Chemical Co. v. Voluntary Purchasing Groups, Inc., 659 F.2d 695, 702 (5th Cir. Unit A 1981), cert. denied, 457 U.S. 1126, 102 S.Ct. 2947, 73 L.Ed.2d 1342 (1982).
We therefore hold that, contrary to the language of Universal City Studios, proof of secondary meaning is required in an action under section 43(a) only when protection is sought for a descriptive mark, as opposed to an arbitrary or suggestive mark.
B. Whether the District Court Used the Wrong Factors in Comparing the "Battlin' Bulldog" with the "University of Georgia Bulldog"
Laite's next argument is that the district court used the wrong factors in comparing the "Battlin' Bulldog" with the "University of Georgia Bulldog." Laite correctly points out that this circuit has recognized seven factors as relevant to the determination of a "likelihood of confusion" between two trade or service marks: (1) the type of mark at issue, (2) the similarity of design between the two marks, (3) the similarity of product, (4) the identity of retail outlets and purchasers, (5) the identity of advertising media utilized, (6) the defendant's intent, and (7) actual confusion between the two marks. See Roto-Rooter Corp. v. O'Neal, 513 F.2d 44, 45 (5th Cir.1975); accord, Conagra, Inc. v. Singleton, 743 F.2d 1508, 1514 (11th Cir.1984); Jellibeans, Inc. v. Skating Clubs of Georgia, Inc., 716 F.2d 833, 840 (11th Cir.1983); Safeway Stores, Inc., 675 F.2d at 1164; Sun-Fun Products, Inc. v. Suntan Research & Development Inc., 656 F.2d 186, 189 (5th Cir. Unit B 1981);
The difficulty with this argument is two-fold. First, we are not convinced, after examining the record and the orders entered by the district court, that the court failed to consider all seven of the relevant factors. At the preliminary injunction hearing, counsel for Laite discussed at length the seven factors, as set out in the Amstar Corp. case.
The second problem with Laite's argument is that it is inextricably intertwined with the question whether the district court's factual finding of "likelihood of confusion" was correct. In Sun Banks of Florida, Inc., the appellant, like Laite, attempted to avoid the "clearly erroneous" standard of review for factual findings by arguing that the district court failed to consider the proper factors in determining "likelihood of confusion." We rejected this distinction, explaining:
651 F.2d at 314.
Similarly, in Safeway Stores, Inc., we refused to treat as a separate ground for reversal the appellant's claim that the district court had failed to consider all seven of the relevant factors. Instead, we indicated that "[o]ur review of the district court's ruling ... is governed by the clearly erroneous test even though the court's analysis of the factors relevant to a finding of likelihood of confusion was incomplete." 675 F.2d at 1164 n. 3 (emphasis added).
In short, even were we to agree with Laite that the court below failed to consider some of the relevant factors, this would not constitute an independent basis for reversing the court's decision. The real question is whether the court's ultimate determination about the "likelihood of confusion" was correct.
C. Whether the District Court's Conclusion that the Sale of "Battlin' Bulldog Beer" Created a "Likelihood of Confusion" is Clearly Erroneous
Laite's final argument is that the district court's conclusion that the sale of "Battlin' Bulldog Beer" created a "likelihood of confusion" is clearly erroneous. See Jellibeans, Inc., 716 F.2d at 839-40 & n. 16 ("likelihood of confusion" factual finding subject to "clearly erroneous" standard of review); Safeway Stores, Inc., 675 F.2d at 1163 (same); Amstar Corp., 615 F.2d at 257-58 (same). But see Elby's Big Boys of Steubenville, Inc. v. Frisch's Restaurants, Inc., 459 U.S. 916, 103 S.Ct. 231, 74 L.Ed.2d 182 (1982) (White, J., dissenting from denial of certiorari) (discussing split in circuits on whether "likelihood of confusion" is question of fact or legal conclusion). A district court's factual 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." United States v. United States Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525, 542, 92 L.Ed. 746 (1948). While the "clearly erroneous" standard of review is less stringent than the well-known sports rule, "The referee is always right," it nevertheless presents a formidable challenge to appellants who, like Laite, seek to overturn the factual findings of a district court.
After reviewing the record, we cannot say that we are "left with the definite and firm conviction that a mistake has been committed." Id. On the contrary, we agree with the district court that the sale of "Battlin' Bulldog Beer" created a "likelihood of confusion." We find most significant the same two factors that were identified by the district court, the similarity of design between the two marks and the defendant's intent. In our view, these two factors alone are sufficient to support the conclusion reached by the court below.
The most cursory visual examination of the two bulldogs in this case reveals their similarity:
As the district court pointed out, it is the combination of similar design elements, rather than any individual element, that compels the conclusion that the two bulldogs are similar. Had the cans of "Battlin' Bulldog Beer" been printed in different colors, or had the "Battlin' Bulldog" worn a different monogram on its sweater, we might have a different case. Instead, the cans are red and black, the colors of the University of Georgia, and the "Battlin' Bulldog" wears the letter "G." To be sure, the "Battlin' Bulldog" is not an exact reproduction of the "University of Georgia
The defendant's intent likewise is apparent from the record. The record establishes that the Royal Brewing Company of New Orleans, Louisiana, the brewer of "Battlin' Bulldog Beer," wrote to several southeastern colleges, including the University of Georgia, seeking permission to use the colleges' symbols on cans of beer.
Although we find the defendant's intent and the similarity of design between the two marks sufficient to support the district court's finding of a "likelihood of confusion," we also note that the remaining five factors either support the same conclusion or, at least, do not undermine it. For example, as we previously noted, the type of mark at issue in this case is at best "suggestive," if not downright "arbitrary." Such marks traditionally have been characterized as "strong." See Safeway Stores, Inc., 675 F.2d at 1164-65 ("Safeway" mark held "a relatively strong one with at least the qualities of a suggestive mark"). The fact that many other colleges, junior colleges, and high schools use an English bulldog as a symbol
Nor do we find it significant that the record in this case includes numerous examples of products containing either exact or approximate reproductions of the "University of Georgia Bulldog." The record does not reveal how many of these products were licensed by UGAA; the widespread use of a mark by licensees would tend to support, rather than rebut, the proposition that UGAA's mark is a strong one.
We also find in the record persuasive evidence of actual confusion between the two marks. UGAA introduced an affidavit from a University of Georgia professor who stated:
According to the affidavit, one caller expressly stated that he thought it was clear that the "Battlin' Bulldog Beer" can included a "University of Georgia Bulldog."
Laite argues that any "confusion" over the beer relates not to its origin, but to whether it has been licensed by the University of Georgia. According to Laite, no one actually believes that the University of Georgia has gone into the brewing business. Regardless of the validity of this statement, we find it irrelevant to the issues in this case. In Boston Professional Hockey Ass'n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir.), cert. denied, 423 U.S. 868, 96 S.Ct. 132, 46 L.Ed.2d 98 (1975), this court's predecessor held that "confusion" need not relate to the origin of the challenged product. Rather, "confusion" may relate to the public's knowledge that the trademark, which is "the triggering mechanism" for the sale of the product, originates with the plaintiff. See id. at 1012.
Laite also argues that no confusion could result from the sale of "Battlin' Bulldog Beer" because the cans contain the disclaimer, "Not associated with the University of Georgia." We reject this argument for two reasons. First, the disclaimer is relatively inconspicuous on the individual cans, and practically invisible when the cans are grouped together into six-packs. Second, in the Boston Pro. Hockey case we dismissed a similar argument, stating:
510 F.2d at 1013.
Finally, we find the remaining three factors, similarity of product, identity of retail outlets and purchasers, and identity of advertising media utilized, less significant in the instant case than in most trade or service mark cases. These factors primarily relate to the "likelihood of confusion" between a plaintiff's and a defendant's products. Here, however, as in Boston Pro. Hockey, the confusion stems not from the defendant's unfair competition with the plaintiff's products, but from the defendant's misuse of the plaintiff's reputation and good will as embodied in the plaintiff's mark.
The "Battlin' Bulldog's" football career thus comes to an abrupt end. Laite devised a clever entrepreneurial "game plan," but failed to take into account the strength of UGAA's mark and the tenacity with which UGAA was willing to defend that mark. Like the University of Georgia's famed "Junkyard Dog" defense, UGAA was able to hold its opponent to little or no gain. Because we find that the district court did not err, in fact or in law, when it granted permanent injunctive relief to UGAA, we hereby AFFIRM.
[A]ny person who shall:
shall be liable to a civil action by the owner of such registered trademark or service mark....
The persuasive value of Chevron Chemical Co. is not diminished because the case involved a trade dress rather than a trade or service mark. In fact, the Chevron Chemical Co. court based its holding on the law of trademarks:
659 F.2d at 702.
Although the record does not reveal whether Royal Brewing Company contacted any other schools, one shudders to think of such possible concoctions as "Deacon Beer" (Wake Forest University) or "Quaker Beer" (the University of Pennsylvania).
Id. at 204-05 (citations omitted); accord, National Football League Properties, Inc. v. Wichita Falls Sportswear, Inc., 532 F.Supp. 651, 659 (W.D.Wash.1982) ("Trademark law does not just protect the producers of products. The creation of confusion as to sponsorship of products is also actionable."); cf. University of Pittsburgh v. Champion Products Inc., 686 F.2d 1040, 1047-48 (3d Cir.) (discussing development of "confusion of sponsorship" doctrine), cert. denied, 459 U.S. 1087, 103 S.Ct. 571, 74 L.Ed.2d 933 (1982).
In International Order of Job's Daughters v. Lindeburg & Co., 633 F.2d 912 (9th Cir.1980), the Ninth Circuit sharply criticized the Boston Pro. Hockey decision for "extend[ing] the protection [of trademark law] beyond that intended by Congress and beyond that accorded by any other court." Id. at 919. The Ninth Circuit explained the basis for its criticism as follows:
Id. at 918.
We respectfully disagree. The record in the instant case reveals that, in one week, at least ten to fifteen members of the public contacted UGAA to inquire about the connection between "Battlin' Bulldog Beer" and the University of Georgia. See infra text at p. 1547. This evidence indicates that, contrary to the unsupported assertion of the Ninth Circuit in Job's Daughters, at least some members of the public do assume that products bearing the mark of a school or a sports team are sponsored or licensed by the school or team. See also National Football League Properties, Inc., 532 F.Supp. at 659 (survey revealed that roughly half of all persons shown football jerseys containing names of National Football League teams and players "believed that the manufacturer was required to obtain authorization from the NFL or one of the member clubs in order to manufacture the jerseys").
Furthermore, in our view, most consumers who purchase products containing the name or emblem of their favorite school or sports team would prefer an officially sponsored or licensed product to an identical non-licensed product. Were this not true, the word "official" would not appear in so many advertisements for such products.