OPINION OF THE COURT
SCIRICA, Circuit Judge.
In this Lanham Act case, plaintiff Checkpoint Systems, Inc. alleges Check Point Software Technologies, Inc. infringed on its trademark and engaged in unfair competition in violation of 15 U.S.C. §§ 1114, 1125(a). Finding no likelihood of confusion between Checkpoint Systems's and Check Point Software's marks, the District Court found no Lanham Act violation. We will affirm.
Plaintiff Checkpoint Systems, Inc. has been manufacturing and distributing commercial electronic security control systems since 1967.
Checkpoint Systems primarily sells four types of security monitoring devices: (1) electronic article surveillance systems; (2) access control systems; (3) closed circuit television systems; and (4) radio frequency identification devices. Its principal and most successful products are electronic article surveillance systems designed to alert retailers when items are removed from confined areas. Primarily used to prevent theft of merchandise from stores and books from libraries, these systems consist of circuited tags, electronic sensors, and deactivation equipment. The systems work by placing circuited tags on merchandise which are deactivated at the time of sale. If the tags are not deactivated, an alarm sounds. Electronic article surveillance systems cost between $2000 and $5000, plus the cost of individual tags. A large retail chain, including many of Checkpoint Systems's current clients, may spend over $20 million a year on this technology.
Checkpoint Systems also manufactures electronic access control systems in the form of security cards that permit selected personnel to have access to restricted areas. Checkpoint Systems intends to use these electronic access control systems to make "smart cards" that will enable log-on access to computers and will facilitate monitoring of physical access to restricted areas. This product was in the development stage when this lawsuit commenced.
Checkpoint Systems also sells closed circuit television systems that monitor activity
In 1997, Checkpoint Systems began developing radio frequency identification devices with the view to creating "intelligent tags" for merchandise to carry information on "merchandise history." This radio technology would permit greater information storage than currently available on traditional bar code technology. These systems cost from $80,000 to $140,000.
The sale of electronic article surveillance systems to retail, industrial, institutional and government users comprises 90% of Checkpoint Systems's business. Revenues for article surveillance systems amounted to $365-380 million in 1999; revenues for access control systems were $15 million. Checkpoint Systems's electronic article surveillance systems have a 30% market share, but its systems dominate the drug store segment with a 70% market share. Its largest competitor is Sensormatic Electronic Corporation, which has a 45% share of the overall market.
Checkpoint Systems promotes its products primarily through its direct sales force, trade shows, direct mailings to security systems dealers and its internet website. It spends $8 million annually on advertising and marketing. The trade shows in which it advertises are targeted to security professionals and retailers. Checkpoint Systems concentrates its print advertising in two magazines: Security
The "CHECKPOINT" trademark is displayed prominently on all of Checkpoint Systems's products including all security tags, sensors, computer screens and access control cards. Checkpoint Systems is a public company whose stock is traded on the New York Stock Exchange under the symbol "CKP."
Defendant Check Point Software Technologies, Inc. writes computer programs that protect and manage access to information. Check Point Software's principal product is "firewall" technology. Firewalls are computer systems that prevent unauthorized internal or external entry into computer networks. Check Point Software's firewall systems regulate data by acting as a screen between a business's private computer networks (intranets) and the wider Internet. These systems are sophisticated software applications that cost $2,999 for a single firewall and hundreds of thousands of dollars for more complicated systems. Check Point Software firewall products must be installed and maintained by computer network information specialists.
At the time Check Point Software was founded in Israel in 1993, its founders were unaware of Checkpoint Systems. They adopted the "Check Point" mark because they believed their computer firewall technology, which limited access to data, resembled military check points that prevent access to restricted areas.
Check Point Software is recognized as a leader in the firewall market with 40% of
In its promotional materials, Check Point Software markets itself as active in the corporate security industry. Its products are installed as a part of the overall network design or "architecture" of a business's computer system. They are not functional software applications that can be purchased by a consumer and installed at will.
Check Point Software uses "Check Point" as its trade name. It has used this mark in several manifestations including, "CHECK POINT," "Checkpoint," and "CHECKPOINT."
Check Point Software promotes its network security products through trade shows, direct advertising, educational seminars, and its web site. The trade shows and seminars in which it advertises are targeted to the Internet and computer network markets. These exhibitions do not include physical security manufacturers or their products. It also advertises in two widely circulated computer trade magazines, PC Week and Network World. Its computer security programs are sold predominately to institutional and corporate clients. Check Point Software's principal competitors are computer companies like Cisco Systems and Network Associates. Check Point Software is a public company whose stock is traded on the NASDAQ under the symbol "CHKP."
In early 1996, Checkpoint Systems attempted to register the internet domain name www.checkpoint.com, but discovered it was registered by Check Point Software. After its request to discontinue use was rebuffed, Checkpoint Systems filed suit alleging trademark infringement and unfair competition under the Lanham Act. In a non-jury trial, the District Court held Check Point Software neither violated the Lanham Act nor infringed Checkpoint Systems's trademark. Examining likelihood of confusion, the District Court applied the factors enumerated in Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir.1983), finding that only one factor — the strong similarity between the parties' marks — favored plaintiff Checkpoint Systems. With respect to the other Lapp factors, the court found the litigants operated in different and non-competing segments of the broad corporate security industry and that the level of consumer care in making purchasing decisions counseled against a finding of likely confusion. After determining the parties employed different marketing techniques in different industries, the court found there was no evidence that the two markets are converging. The court also found the few instances of misdirected correspondence and "minor degree of investor confusion" along with the failure to prove the existence of a single instance of a mistaken purchasing decision based on mark confusion weighed heavily against finding a Lanham Act violation. Additionally, the District Court held there was insufficient evidence of reverse confusion.
The District Court had jurisdiction over plaintiff's Lanham Act claims under 28 U.S.C. §§ 1331, 1338(a) and 15 U.S.C. § 1051 et seq. We have jurisdiction over the final judgment of the District Court under 28 U.S.C. § 1291. We exercise plenary review over the District Court's legal conclusions concerning the Lanham Act. Express Servs., Inc. v. Careers Express Staffing Servs., 176 F.3d 183, 185 (3d Cir. 1999), cert. denied, 531 U.S. 1052, 121 S.Ct. 656, 148 L.Ed.2d 559 (2000). We review factual findings on the likelihood of confusion for clear error. A & H Sportswear Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 210 (3d Cir.2000).
Checkpoint Systems alleges Check Point Software engaged in unfair competition and trademark infringement in violation §§ 32 and 43(a) of the Lanham Act when it adopted the Checkpoint mark.
None of these factors is determinative in the likelihood of confusion analysis and each factor must be weighed and balanced one against the other. Fisons, 30 F.3d at 473 ("[N]ot all factors must be given equal weight. The weight given to each factor in the overall picture, as well as the weighing for plaintiff or defendant, must be done on an individual fact-specific basis."); see also A & H Sportswear, 237 F.3d at 215 ("[T]he Lapp test is a qualitative inquiry. Not all factors will be relevant in all cases; further, the different factors may properly be accorded different weights depending on the particular factual setting."). We stated,
Fisons, 30 F.3d at 473.
As noted, the District Court applied the appropriate Lapp factors to find there was no likelihood of confusion. We will address the District Court's application of each factor.
A. Similarity of Marks —
Lapp Factor (1)
Although the degree of similarity between the owner's mark and the alleged infringing mark is but one factor in the multi-factor confusion analysis, we have recognized that when products directly compete, mark similarity "may be the most important of the ten factors in Lapp." Fisons, 30 F.3d at 476; see also A & H Sportswear, 237 F.3d at 216 ("The single most important factor in determining likelihood of confusion is mark similarity."). As we held in Versa Prods. Co. v. Bifold Co. (Mfg.), 50 F.3d 189, 202 (3d Cir.1995), "unless the allegedly infringing mark ... is substantially similar to the protectable mark ..., it is highly unlikely that consumers will confuse the product sources represented by the different marks." "[I]f the overall impression created by marks is essentially the same, `it is very probable that the marks are confusingly similar.'" Opticians Assn. of Am., 920 F.2d at 195 (quoting J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition, § 23:7 (2d ed.1984)). In applying this test, courts attempt to "move into the mind of the roving consumer," A & H Sportswear, 237 F.3d at 216, and determine "whether the labels create the same overall impression when viewed separately." Fisons, 30 F.3d at 476; see also Banff, Ltd. v. Federated Dep't Stores, Inc., 841 F.2d 486, 492 (2d Cir.1988). Courts must "compare the appearance, sound and meaning of the marks," Harlem Wizards Entm't. Basketball, Inc. v. NBA Props., Inc., 952 F.Supp. 1084, 1096 (D.N.J.1997), to determine whether the "average consumer, on encountering one mark in isolated circumstances of marketplace and having only [a] general recollection of the other, would likely confuse or associate the two." Fisons, 30 F.3d at 477-78.
Here, the District Court found Check Point Software's mark was very similar to Checkpoint Systems's mark. The court noted that "[w]hen the dominant portions of the two marks are the same and the overall impression created by the marks is essentially the same `it is very probable that the marks are confusingly similar.'" Checkpoint Sys., 104 F.Supp.2d at 457-58 (quoting Opticians Assn. of Am., 920 F.2d at 195). The court found the dominant portion of each parties' trademark is the word "Checkpoint." Even though Check Point Software has at times used the mark in slightly different forms including, "Checkpoint," "CheckPoint," or "Check Point," the dominant features of its mark are still the words "check" and "point." Additionally because "Systems," "Software," "Technologies," and "Inc.," are generic or descriptive terms, the District Court found their addition to the dominant terms "check" and "point" would not lead the average consumer to disassociate the products. J. Thomas McCarthy, 3 McCarthy on Trademarks and Unfair Competition, § 23:50 (4th ed. 2000) ("The Trademark Board has said that the general rule is that a subsequent user may not avoid likely confusion by appropriating another's
On appeal, Checkpoint Systems contends the District Court ignored its finding of mark similarity when it ultimately determined there was no likelihood of confusion. But mark similarity is not necessarily determinative of likely confusion, particularly when the products do not directly compete. A & H Sportswear, 237 F.3d at 214 ("[W]hen the marks directly compete ... the factor regarding the similarity of marks may increase in importance, but it does not eliminate the other factors entirely."); Fisons, 30 F.3d at 473 ("Where the goods or services are not competing the similarity of the marks is only one of a number of factors the court must examine to determine likelihood of confusion."). Here, the District Court determined that in weighing all the Lapp factors, there was not a strong likelihood of confusion. We see no error.
B. Strength of Mark —
Lapp Factor (2)
Versa Prods., 50 F.3d at 203.
The strength of a mark is determined by (1) the distinctiveness or conceptual strength of the mark and (2) its commercial strength or marketplace recognition. Fisons, 30 F.3d at 478-79. Under distinctiveness, we look at the inherent features of the mark. Trademarks protected under the Lanham Act are divided into four categories:
A & H Sportswear, 237 F.3d at 221-22 (quoting A.J. Canfield Co. v. Honickman, 808 F.2d 291, 296-97 (3d Cir.1986)).
In Ford Motor Co., we further explained the categorization of marks stating,
930 F.2d at 292 n. 18 (quoting 1 McCarthy, Trademarks and Unfair Competition at § 11:3-5, 20).
While generic marks do not receive trademark protection, arbitrary, suggestive and descriptive marks with a
The District Court found Checkpoint Systems's mark was either suggestive or descriptive with a secondary meaning within the electronic article surveillance market. We see no error. The mark is suggestive to the extent it requires consumer imagination to determine that Checkpoint Systems's security products serve as "check points" to prevent unauthorized access and theft of merchandise. But the mark is descriptive insofar as its products serve as checkpoints. That is, they occupy a point at which customers are checked for stolen merchandise or people are checked for authorization to access restricted areas. In either event, the mark has achieved a strong secondary meaning in the physical article security market. Checkpoint Systems has spent millions of dollars in advertising its physical article security systems and the mark has achieved high recognition among consumers in this market. The District Court was therefore correct in stating, "Checkpoint [Systems] has used its name and mark in connection with its electronic article surveillance products for more than thirty years continuously, extensively, and in a substantially exclusive manner, and that long use renders the mark strong within the physical surveillance field." Checkpoint Sys., 104 F.Supp.2d at 458.
The mark has not, however, attained a strong secondary meaning in other segments of the corporate security market, particularly in the information technology market. There is no evidence that Checkpoint Systems spent a substantial amount of resources in advertising in this market, nor is there any evidence that Checkpoint Systems has achieved mark recognition in
Plaintiffs claim the District Court erred in its commercial strength analysis because it undervalued the overwhelming strength of the Checkpoint Systems mark in the article surveillance market. But the District Court held, properly in our view, that courts must look at the strength of the mark in the industry in which infringement is alleged. See, e.g., Homeowners Group, Inc., 931 F.2d at 1107-08 ("[A mark] may ... have high recognition which is limited to a particular product or market segment."); Mead Data Cent., Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1031 (2d Cir.1989) (luxury car maker could not demonstrate that its powerful mark extended to the completely unrelated market of legal research tools); IDV N. Am., Inc. v. S & M Brands, Inc., 26 F.Supp.2d 815, 824 (E.D.Va.1998) ("A mark may be strong in the market in which it is used but weak in another market in which it is not used."). Here, the alleged infringement extends beyond the physical article security field into other, broader segments of the security industry, including computer security. The District Court did not clearly err in finding that Checkpoint Systems's mark's strength was limited to the physical article security market. Because the mark was not strong in the network access security market, it was not entitled to heightened protection within that market.
C. Factors Indicative of the Care and Sophistication of Purchasers — Lapp Factor (3)
When consumers exercise heightened care in evaluating the relevant products before making purchasing decisions, courts have found there is not a strong likelihood of confusion. Where the relevant products are expensive, or the buyer class consists of sophisticated or professional purchasers, courts have generally not found Lanham Act violations. Versa Prods., 50 F.3d at 204 ("Inexpensive goods require consumers to exercise less care in their selection than expensive ones. The more important the use of the product, the more care that must be exercised in its selection."). As a leading treatise notes,
3 McCarthy on Trademarks, § 23:95; see also Astra Pharm. Prods., Inc. v. Beckman
3 McCarthy on Trademarks, § 23:101; see also Ford Motor Co., 930 F.2d at 293 ("Professional buyers, or consumers of very expensive goods, will be held to a higher standard of care."); Perini Corp. v. Perini Constr., Inc., 915 F.2d 121, 128 (4th Cir.1990) ("[I]n a market with extremely sophisticated buyers, the likelihood of consumer confusion cannot be presumed on the basis of the similarity in trade name alone."); Oreck Corp. v. U.S. Floor Sys., Inc., 803 F.2d 166, 173-74 (5th Cir.1986) (business purchasers of expensive products not likely to confuse goods with similar marks).
When the purchasing class is mixed, courts normally do not hold the general class to a high standard of care. Ford Motor Co., 930 F.2d at 293 ("When the buyer class is mixed, the standard of care to be exercised by the reasonably prudent purchaser will be equal to that of the least sophisticated consumer in the class."). If there is evidence that both average consumers and specialized commercial purchasers buy goods, there is a lower standard of care because of the lack of sophistication of some of the relevant purchasers. Id. ("Where the buyer class `consists of both professional buyers and consumers then the issue will center on the consumers, for confusion within the lowest stratum of reasonably prudent buyers may give rise to liability even if professional buyers in the market are not confused.'") (quoting Worthington Foods, Inc. v. Kellogg Co., 732 F.Supp. 1417, 1448 (S.D.Ohio 1990)).
Evaluating the care and sophistication exercised by consumers of Checkpoint Systems's and Check Point Software's products, the District Court found,
Checkpoint Sys., 104 F.Supp.2d at 460.
We agree. The consumers of Checkpoint Systems's and Check Point Software's products place great importance on, and take great care in, purchasing these products. Checkpoint Systems's consumers exercise a heightened standard of care in their purchasing decisions because they need to ensure the article surveillance equipment can be quickly and easily repaired and is readily available for new merchandise. Similarly, purchasers of Check Point Software's firewall technology are highly technical computer and information specialists that must ensure the software is compatible with other programs.
Checkpoint Systems contends that not all the relevant consumers are sophisticated purchasers and that many "mom and pop stores," which exercise a lower standard of care, purchase both parties' products. The District Court acknowledged these smaller commercial purchasers were part of the relevant consumer class and adjusted its evaluation of consumer sophistication accordingly. Because the systems are expensive and require on-going maintenance, the court found these smaller commercial consumers view the purchase of both parties' products as an important investment decision. The court also noted that many small businesses turn to outside experts to assist in the purchase of complicated computer and article surveillance systems. Additionally, only computer specialists with significant training can install and make informed purchasing decisions about Check Point Software's complicated firewall technology. Furthermore, expert witnesses testified that smaller "mom and pop stores" would likely not have need for the complicated security software manufactured by Check Point Software.
The District Court properly evaluated the care exercised by consumers of these products in making purchasing decisions. The evidence supports the finding that the purchase of both parties' products involve a significant investment and even smaller commercial consumers exercise a heightened degree of care in evaluating the products and making purchasing decisions. We see no clear error.
D. Intent of the Defendant in Adopting the Mark —
Lapp Factor (5)
While evidence of a party's intentional use of another party's mark to cause confusion is not a prerequisite to proving a Lanham Act violation, see generally Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 875 (2d Cir.1986), courts have recognized that evidence of "intentional, willful and admitted adoption of a mark closely similar to the existing marks" weighs strongly in favor of finding the likelihood of confusion. National Football League Props., Inc. v. New Jersey Giants, Inc., 637 F.Supp. 507, 518 (D.N.J.1986). Here, the District Court found, "[t]here is no evidence or even inference that defendant chose its name with plaintiff's name or products in mind." Checkpoint Sys., 104 F.Supp.2d at 465. We agree.
E. Relationship of goods in the minds of consumers because of the similarity of product functions —
Lapp Factor (7)
Under this prong, courts examine whether buyers and users of each parties' goods are likely to encounter the goods of the other, creating an assumption of common source affiliation or sponsorship. Fisons, 30 F.3d at 481 ("The question is whether the consumer might ... reasonably conclude that one company would offer both of these related products."). The test is whether the goods are similar enough that a customer would assume they were offered by the same source. Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1187 (6th Cir.1988).
Checkpoint Systems contends that both parties operate in the overlapping business of corporate security. While each serves a different branch of this broad industry (i.e., Checkpoint Systems primarily focuses
Checkpoint Systems also contends it has developed integrated circuit technology in its radio frequency and closed circuit television products that allow consumers to link Checkpoint Systems hardware with their computer systems. It argues these physical security products employ secure information lines similar to the firewall products that Check Point Software manufactures.
Checkpoint Sys., 104 F.Supp.2d at 466. The court continued,
The District Court did not clearly err. The "relatedness" analysis is intensely
The District Court held that Checkpoint Systems's products are simply different from Check Point Software's products. While Checkpoint Systems's access control, closed circuit television and radio frequency products may employ similar technology, their purpose is physical article surveillance or personal access. On the other hand, Check Point Software's firewall technology is not intended to prevent theft of merchandise or limit physical access. Its purpose is to prevent third parties from accessing information from unsecure computer lines. Because the products serve different functions, and there is only "minimal overlap" in the product technology, it is unlikely consumers would be confused by the similar marks.
F. The extent to which the parties' goods are marketed through the same channels of trade —
Lapp Factor (9)
Courts have recognized that "the greater the similarity in advertising and
Here, there is no evidence that a single security expert has sufficient knowledge in both the physical security and information security realms that he purchases both of these products for his corporation.
Here, the District Court found the parties "products are advertised in different magazines and are promoted in entirely different trade shows." Checkpoint Sys., 104 F.Supp.2d at 466. Checkpoint Systems advertises in trade shows and trade publications that are marketed to physical and retail security specialists.
Additionally, Check Point Software's products are only sold to consumers through its "specialized value added resellers." These "resellers" do not sell physical article security systems. On the other hand, consumers can purchase Checkpoint Systems's physical security products from its direct mailings and product catalogues or through its direct sales force. For these reasons, the District Court concluded, "[T]he parties do not market their products through the same trade channels or markets, and ... their target customers generally belong to distinctly different groups." Id. at 467. We see no clear error.
G. The extent to which targets of the parties' sales efforts are the same —
Lapp Factor (8)
We have recognized that when parties target their sales efforts to the same consumers, there is a stronger likelihood of confusion. Lapp, 721 F.2d at 463-64. This analysis too is intensely factual.
The District Court found the parties market their products to different users. Checkpoint Systems markets its products to physical security consumers. Check Point Software markets its products to MIS professionals. Even though many companies often purchase both types of products, most rely on information specialists to make purchasing decisions about network security systems, especially since Check Point Software's firewall systems must be installed as part of the overall architecture of a business's total computer system. But information specialists are not essential to make purchasing decisions about physical article security systems.
On the basis of this finding, the court concluded there is not a strong likelihood that users and consumers of the parties' products were likely to come across advertisements
H. Evidence of Converging markets —
Lapp Factor (10)
We have held that evidence that the markets in which the parties sell their goods are converging is "pivotal in non-competing products cases." Lapp, 721 F.2d at 463. "One of the chief reasons for granting a trademark owner protection in a market not his own is to protect his right someday to enter that market. When it appears extremely likely ... that the trademark owner will soon enter the defendant's field, this ... factor weighs heavily in favor of injunctive relief." Id. (internal citation omitted). Under this factor we look not only to evidence that a plaintiff has actually moved into the defendant's market, but also to "other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant's market, or that it is likely to expand into that market." Id. at 463. Evaluating this factor, courts look to evidence that other companies sell products in both markets, as well as evidence that the products at issue are so closely related that the consuming public might find it natural for one company to do so. Here, the District Court found the physical article security market in which Checkpoint Systems sold its products was not converging with the computer information security market in which Check Point Software sold its firewall products. Nor would consumers expect that Checkpoint Systems would naturally expand into the network information security market. The court stated, "[T]he weight of the evidence indicates that, if anything, the fields are diverging as network security becomes more and more specialized, and the interrelatedness of Internet and intranets becomes more complex." Checkpoint Sys., 104 F.Supp.2d at 452. The court noted that some of Checkpoint Systems's competitors in the physical article security field had attempted to move into the information security field. But these competitors had been largely unsuccessful in expanding into this field thereby
Id. at 467 n. 17.
Checkpoint Systems disputes this finding contending that modern security specialists look to purchase network security systems that work hand in hand with physical security systems. It argues these specialists recognize that computer security products are worthless if not physically secure. Consumers, they claim, are likely to assume that a company that sells products in the physical security market is likely to expand into the network security market to provide businesses with complete security packages. But the District Court found that the increasingly complex market for network security systems requires expertise to understand evolving technology. Because of
Additionally, there is little evidence that either party currently operates in both the physical security and network security markets. On appeal, Checkpoint Systems points to several of its products, including its physical access control systems, its "smart card" technology, its radio frequency identification devices, and its closed circuit television systems as examples of products that operate in both the physical security and network information security markets. It contends these products employ similar secure network lines to Check Point Software's network security technology in order to provide physical article security. But even though its products employ some overlapping computer technology, Checkpoint Systems's products are intended to provide physical article and access security and are sold to consumers looking to purchase physical security products. Check Point Software's products are sold to consumers looking to purchase network information security products. The District Court's finding is supported by the evidence. We see no clear error.
I. Evidence of actual confusion and the length of time the defendant has used the mark without evidence of actual confusion —
Lapp Factors (4),(6)
Evidence of actual confusion is not required to prove likelihood of confusion. Versa Prods., 50 F.3d at 205; Fisons, 30 F.3d at 476 ("[W]hile evidence of actual confusion would strengthen plaintiff's case, it is not essential."). We have recognized that it is difficult to find evidence of actual confusion because many instances are unreported. For this reason, evidence of actual confusion may be highly probative of the likelihood of confusion. Frisch's Rests., Inc. v. Elby's Big Boy of Steubenville, Inc., 670 F.2d 642, 648 n. 5 (6th Cir.1982); see also Tisch Hotels, Inc. v. Americana Inn, Inc., 350 F.2d 609, 612 (7th Cir.1965) ("[S]ince reliable evidence of actual confusion is difficult to obtain in trademark and unfair competition cases, any such evidence is substantial evidence of likelihood of confusion."). "If a defendant's product has been sold for an appreciable period of time without evidence of actual confusion, one can infer that continued marketing will not lead to consumer confusion in the future. The longer the challenged product has been in use, the stronger this inference will be." Versa Prods., 50 F.3d at 205.
Here the District Court found, "Though there is some evidence in the record of temporary initial confusion between the companies, by experts, the media, investors and consumers, there is no evidence of actual customer confusion in connection with the purchase of defendant's products." Checkpoint Sys., 104 F.Supp.2d at 447. The court continued stating,
Id. at 450. The court concluded,
Id. at 464.
On appeal Checkpoint Systems argues the District Court erred because it limited its actual confusion inquiry to evaluating evidence of consumer confusion at the point of sale rather than according weight to evidence of investor confusion and other initial interest confusion. It contends the Lanham Act affords protection against other types of confusion, including initial interest confusion, investor confusion and post-sale confusion.
Several courts of appeals have found initial interest confusion and post-sale confusion actionable under the Lanham Act. We agree and hold initial interest confusion is actionable under the Lanham Act. We also hold the District Court properly evaluated the evidence of initial interest confusion and did not clearly err in finding this evidence did not weigh heavily in favor of finding likely confusion. We first turn to a discussion of the relevance of initial interest to Lanham Act claims.
A leading treatise on trademark infringement states:
3 McCarthy on Trademarks and Unfair Competition, § 23:6 (internal quotations and footnotes omitted). Several courts of appeals, including the Second, Seventh, and Ninth Circuits have found initial interest confusion actionable under the Lanham Act. In Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254 (2d Cir. 1987), the United States Court of Appeals for the Second Circuit found actionable initial interest confusion when it enjoined the defendant from using the trade name Pegasus because the name was confusingly similar to the plaintiff's "flying horse"
Similarly in Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1057 (9th Cir.1999), the United States Courts of Appeals for the Ninth Circuit recognized that initial interest confusion is actionable under the Lanham Act. In Brookfield Communications, plaintiffs alleged that defendant West Coast Entertainment's use of the web site www.moviebuff.com infringed on its "MovieBuff" mark. Brookfield used the "MovieBuff" mark on computer software that it sold to industry professionals. This software contained a searchable database of entertainment related data, including information about film release schedules, box office receipts, films in development and other entertainment news. West Coast's "moviebuff.com" website was a free searchable entertainment database that assisted its consumers in making educated decisions about the rental and purchase of movies. The website also sold movie and other entertainment accessories. The court found actionable confusion under the Lanham Act reasoning:
Id. at 1057 (internal citations omitted); see also Interstellar Starship Servs., Ltd. v. Epix Inc., 184 F.3d 1107, 1110 (9th Cir. 1999) ("We recognize a brand of confusion called `initial interest' confusion, which permits a finding of a likelihood of confusion although the consumer quickly becomes aware of the source's actual identity and no purchase is made as a result of the confusion."), cert. denied, 528 U.S. 1155, 120 S.Ct. 1161, 145 L.Ed.2d 1073 (2000); but see Bryce J. Maynard, Note, The Initial Interest Confusion Doctrine and Trademark Infringement on the Internet, 57 Wash & Lee L.Rev. 1303 (urging caution in finding actionable initial interest confusion on the Internet).
In Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188 (5th Cir.1998), the United States Court of Appeals for the Fifth Circuit also recognized initial interest confusion. The court there found the plaintiff assignees of the rights of the estate of Elvis Presley were entitled to injunctive relief against the defendant bar owner's use of the name "The Velvet Elvis" because it was likely to create confusion. In finding initial interest confusion the court reasoned,
Id. at 204.
The United States Court of Appeals for the Seventh Circuit has equated initial interest confusion to a "bait and switch scheme." In Dorr-Oliver, Inc. v. Fluid Quip, Inc., 94 F.3d 376, 382 (7th Cir.1996), the court stated,
Id. (internal citation omitted); see also Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 464 (7th Cir.2000) ("[Initial interest] confusion, which is actionable under the Lanham Act, occurs when a consumer is lured to a product by its similarity to a known mark, even though the consumer realizes the true identity and origin of the product before consummating a purchase.").
We join these circuits in holding that initial interest confusion is probative of a Lanham Act violation.
Congress recognized the relevance of initial interest confusion and its effect on a company's goodwill when it amended the Lanham Act in 1962. In its original form, the Lanham Act only applied where the use of similar marks was "likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods or services." Esercizio v. Roberts, 944 F.2d 1235, 1245 (6th Cir.1991) (quoting 1946 Lanham Act.) (emphasis added). In 1962 Congress deleted the term "purchasers," affording Lanham Act protection where a mark is "likely to cause confusion or mistake or to deceive." Id. Several courts have found the amendment expanded the reach of the Lanham Act beyond mere purchasers to recognize pre-sale confusion as well as post-sale confusion. See, e.g., id. ("Since Congress intended to protect the reputation of the manufacturer as well as to protect purchasers, the Act's protection is not limited to confusion at the point of sale."); Koppers Co. v. Krupp-Koppers GmbH, 517 F.Supp. 836, 843-44 (W.D.Pa.1981) (holding Congress intended to broaden the scope of protections with the 1962 Amendment to the Lanham Act); see also 3 McCarthy on Trademarks & Unfair Competition, § 23.7 ("In 1962, Congress struck out language in the Lanham Act which required confusion, mistake or deception of `purchasers as to the source of origin of such goods and services.' Several courts have noted this expansion of the test of infringement and held that it supports a finding of infringement when even non-purchasers are deceived."). We agree with the view that Congress's amendment of the Lanham Act in 1962 expanded trademark protection to include instances in which a mark creates initial interest confusion.
Check Point Software notes that some circuits have only found "initial interest" confusion probative of likely confusion when the products at issue are direct competitors or where there is a strong interrelatedness between the products.
Some courts have looked at the relatedness of the relevant products in evaluating whether initial interest confusion is probative of likely confusion. See Hasbro, Inc., 232 F.3d at 2 ("Certainly in a case involving such disparate products and services as this, the court's refusal to enter the `initial interest confusion' thicket is well taken given the unlikelihood of `legally significant' confusion."); Brookfield Communications, 174 F.3d at 1056 (when products are unrelated "the likelihood of confusion would probably be remote."). Other courts look at evidence that the defendant intentionally adopted the plaintiff's mark to create confusion among consumers making purchasing decisions. See, e.g., Dorr-Oliver, 94 F.3d at 382-83. Still other courts view the level of care consumers exercise in their purchasing decisions to determine whether initial interest confusion has dissipated prior to a purchasing decision. See, e.g., Brookfield Communications, 174 F.3d at 1057 (finding initial interest confusion actionable because "[I]n the Internet context, ... entering a web site takes little effort — usually one click from a linked site or a search engine's list; thus, Web surfers are more likely to be confused as to the ownership of a web site than traditional patrons of a brick-and-mortar store would be of a store's ownership."); Rust Env't & Infrastructure, Inc. v. Teunissen, 131 F.3d 1210, 1217 (7th Cir.1997) (initial interest confusion unlikely with sophisticated consumers). Safeway Stores, Inc. v. Safeway Disc. Drugs, 675 F.2d 1160, 1167 (11th Cir.1982) ("Short-lived confusion or confusion of individuals casually acquainted with a business is worthy of little weight.").
Product relatedness and level of care exercised by consumers are relevant factors in determining initial interest confusion. When products are similar, a firm is more likely to benefit from the goodwill of a firm with an established mark. And when consumers do not exercise a high level of care in making their
We now turn to whether the District Court properly evaluated the evidence of actual confusion, including Checkpoint Systems's evidence of initial interest confusion. It is undisputed that Checkpoint Systems presented no evidence of actual consumer confusion in the form of mistaken purchasing decisions. But it presented the following evidence of initial interest confusion: (1) e-mails that Checkpoint Systems received inquiring about firewall products; (2) customer inquiries to Checkpoint Systems employees, including its CEO, that expressed an interest in purchasing firewalls; (3) service calls made to Checkpoint Systems that were intended for Check Point Software; (4) misdirected calls to Checkpoint Systems's receptionist that were intended for Check Point Software; and (5) reports in the media that confused Checkpoint Systems and Check Point Software. The District Court found this evidence insufficient to support a finding of likely confusion reasoning,
Checkpoint Sys., 104 F.Supp.2d at 464-65.
On appeal Checkpoint Systems claims the District Court erred as a matter of law by requiring it to produce evidence of actual consumer confusion in the form of mistaken purchasing decisions. It also contends the court erred in discounting its evidence of initial interest confusion as de minimis. See Tisch Hotels, Inc., 350 F.2d at 612.
But the District Court properly evaluated the evidence of initial interest confusion within the context of the relevant Lapp factors stating,
Checkpoint Sys., 104 F.Supp.2d at 462 (citations omitted). The court concluded,
Id. at 462-63.
This is the proper analysis. Checkpoint Systems's and Check Point Software's products are unrelated and are sold in different markets to consumers who exercise a heightened degree of care in making purchasing decisions. The markets for the parties' products are not converging, nor is there evidence that Check Point Software intentionally adopted the Check Point mark to create confusion.
Nor did the District Court err in finding the evidence of initial interest confusion was de minimis. At oral argument, Checkpoint Systems averred that at most there was evidence of twenty instances of initial interest confusion over the period of time the parties operated in the United States. Some of this confusion consisted of misdirected calls and therefore it is uncertain whether the consumers were confused by the parties' similar names or whether directory assistance erred in connecting consumers with the parties. Duluth News-Tribune v. Mesabi Publ'g Co., 84 F.3d 1093, 1098 (8th Cir.1996) (misdirected communications are not evidence of confusion where the sender knows which party he or she wished to send his communication but erred in the delivery of the message). Furthermore, the District Court properly took into account the potential bias of Checkpoint Systems's employees who testified they had been approached by consumers interested in Check Point Software's firewall products as well as Checkpoint Systems's expert security witnesses who testified they erroneously believed that Check Point Software was affiliated with Checkpoint Systems. A & H Sportswear, 237 F.3d at 227; Reed-Union Corp. v. Turtle Wax, Inc., 77 F.3d 909, 911-12 (7th Cir.1996) (fact finder's credibility judgments about confusion testimony are virtually never clearly erroneous).
We agree with the District Court that this limited initial interest confusion (i.e., the handful of e-mails and other anecdotal evidence of mistaken consumer inquiries) was de minimis when viewed in light of the
On appeal, Checkpoint Systems contends the District Court erred in evaluating evidence of investor confusion. While a handful of district courts have found evidence of investor confusion probative of a Lanham Act violation, see, e.g., Acxiom Corp. v. Axiom, Inc., 27 F.Supp.2d 478 (D.Del.1998); Koppers Co. v. Krupp-Koppers GmbH, 517 F.Supp. 836 (W.D.Pa. 1981), no appellate court has yet so held.
In Acxiom, the district court held that "investor confusion may be considered by the trial court as part of its application of the Lapp factors." 27 F.Supp.2d at 501. In support of its likelihood of confusion claim, plaintiff in that case presented evidence of two investors and a potential investor who testified that they were confused by the similar names. The court held this evidence counseled in favor of finding likely confusion. It reached this conclusion on the basis of its view that the 1962 amendment to the Lanham Act evinced "a clear congressional intent to `outlaw the use of trademarks which are likely to cause confusion, mistake, or deception of any kind, not merely of purchasers
Checkpoint Systems contends investor confusion is probative of the likelihood of confusion and the District Court erred in discounting this evidence. But given the parties limited briefing on this issue as well as the scant evidence of investor confusion here,
Here it seems unlikely that investors would be confused by the parties' similar marks or somewhat similar stock symbols ("CKP" and "CHKP" for Checkpoint Systems and Check Point Software, respectively). Many investors are sophisticated parties who exercise a high degree of care in making investment decisions. Also, the parties' shares are traded on different exchanges (Checkpoint Systems's stock is traded on the New York Stock Exchange and Check Point Software's stock is traded on the NASDAQ). Given the paucity of evidence of investor confusion here, it is unnecessary to resolve the issue here, and we believe it is prudent to reserve judgment at this time.
J. Totality of Lapp Factors
The District did not err in its factual findings nor in its application of the individual Lapp factors to those findings. Furthermore, the District Court's conclusion that the combination of the Lapp factors do not establish substantial likelihood of confusion in the marketplace is consistent with its findings. Even though mark similarity — a factor favorable to Checkpoint Systems — is ordinarily the most important element in the multi-factor Lapp analysis, it is not necessarily determinative, especially where, as here, the markets for competing marks are highly distinct. Because Checkpoint Systems's and Check Point Software's products are not related, and are marketed to different consumers through different channels, the evidence
On appeal, Checkpoint Systems challenges the District Court's analysis of its "reverse confusion" claim, contending the mark of Check Point Software (the junior user) has become so strong in the relevant market that the consuming public might assume that Check Point Software is actually the source of the products of Checkpoint Systems (the senior user).
In Fisons, 30 F.3d at 475, we expressly recognized a cause of action for reverse confusion, stating,
30 F.3d at 474 (citing Sands, Taylor & Wood Co., 978 F.2d at 947).
Courts have recognized that "failure to recognize reverse confusion would essentially immunize from unfair competition liability companies that have well established trade names and the financial ability to advertise a senior mark taken from smaller, less powerful competitors." Harlem Wizards, 952 F.Supp. at 1091-92 (citing Big O Tire Dealers, Inc., v. Goodyear Tire & Rubber Co., 561 F.2d 1365, 1372 (10th Cir.1977)); see also Dreamwerks, 142 F.3d at 1130. "Were reverse confusion not a sufficient basis to obtain Lanham Act protection, a larger company could with impunity infringe the senior mark of a smaller one." Fisons, 30 F.3d at 475.
In a direct confusion case, the consuming public may assume that the established, senior user is the source of the junior user's goods. In a reverse confusion case, the consuming public may assume the converse; that is, that the junior, but more powerful, mark user is the source of the senior user's products. The harm to the senior user is not just that its goodwill is appropriated, but that the value
In A & H Sportswear, we held that in a typical reverse confusion case, courts should employ the same Lapp factors in assessing likelihood of confusion.
In a typical direct confusion claim, the stronger the senior user's mark, the greater the likelihood of confusion caused by a junior user's use of a similar mark. But in a reverse confusion situation, the senior user's claim may be strengthened by a showing that the junior user's mark is commercially relatively strong. The greater relative strength of the junior mark allows the junior user to "overwhelm" the marketplace, diminishing the value of the senior user's mark. While analysis of the strength of the senior user's mark is relevant, the more important inquiry focuses on the junior user's mark. "[T]he lack of commercial strength of the smaller senior user's mark is to be given less weight in the analysis because it is the strength of the larger, junior user's mark which results in reverse confusion.'" A & H Sportswear, 237 F.3d at 231 (quoting Commerce Nat'l Ins. Servs., Inc., 214 F.3d at 444). Courts should look at the commercial strength of the junior user's mark to determine whether its advertising and marketing has resulted in a "saturation in the public awareness of the junior user's mark." Id.
Checkpoint Systems contends the District Court improperly evaluated the strength of the marks. Because the court found its mark weak in the electronic access control products (the product most similar to Check Point Software's firewall technology),
Unlike its other findings, the District Court did not scrutinize the reverse confusion claim, perhaps because it was not extensively argued. It did not expressly analyze the relative strengths of the marks for purposes of this claim, nor did it directly examine the strength of Check Point Software's mark. As noted, it is the strength of the junior user's mark that is crucial in establishing a reverse confusion claim, because it is the strength of its mark that might lead consumers to mistakenly identify "Checkpoint" — labeled products with Check Point Software. A & H Sportswear, 237 F.3d at 231. In its limited discussion of the reverse confusion claim, the court stated,
Checkpoint Sys., 104 F.Supp.2d at 461.
Had the District Court the benefit of our recent opinion in A & H Sportswear, it doubtless would have been guided by our analysis. But its failure to do so does not require reversal. In light of its Lapp-factors findings, a focused analysis under
The District Court properly noted that reverse confusion is most likely in cases involving competing or related products. When products are related, consumers may be likely to assume they are produced by the same company. But when not related, the likelihood of confusion diminishes dramatically. Given the strong distinctiveness of the respective markets as found by the District Court, any confusion would appear unlikely. For this reason, a focused analysis of the strength of Check Point Software's mark would not affect the court's conclusion.
To establish a claim of reverse confusion, there must be evidence that consumers of Checkpoint Systems's products were likely to assume that Check Point Software was the source of those products. See Dreamwerks, 142 F.3d at 1130 ("The question ... is whether consumers doing business with the senior user might mistakenly believe that they are dealing with the junior user."). But as noted, the court found the decision makers who purchased Checkpoint Systems's products were not likely to be the target audience of Check Point Software's advertising or marketing. See Checkpoint Sys., 104 F.Supp.2d at 466 ("That there is no overlap in the places these parties market their products tends to diminish the chance that someone who is a specialist in network security will even come across an advertisement for plaintiff, and vice versa."). And even if purchasers received such marketing materials, the high level of care with which they ordinarily made their purchasing decisions substantially lessened the likelihood of confusion. Put another way, the strength of Check Point Software's mark within the corporate information security market would not likely affect the consumers within Checkpoint Systems's market, given the level of distinctiveness of the relevant markets found by the District Court.
In light of these findings, the strength of Check Point Software's mark could have a determinative effect on the outcome of the reverse confusion analysis, if at all, only if extremely powerful. Only then could it "overwhelm" the marketplace diminishing the value of Checkpoint Systems's mark. Although the District Court did not analyze this factor, it was correct in finding that, "[i]n the present case, involving noncompeting, unrelated products, such `overwhelming' has not even remotely occurred." Checkpoint Sys., 104 F.Supp.2d at 461.
As we held in Fisons, the court's application of the Lapp factors is not mechanical; rather it must weigh each factor against the others. 30 F.3d at 473. When the reviewing court determines that almost all the relevant factors favor one party, it may discount one factor. See, e.g., Jet, Inc. v. Sewage Aeration Sys., 165 F.3d 419, 423 (6th Cir.1999) (finding no reversible error when the district court erred in its application of the "converging markets" factor but correctly applied other factors); Freedom Sav. and Loan Ass'n v. Way, 757 F.2d 1176, 1186 (11th Cir.1985) (finding no reversible error where District Court erred in its application of the "similarity of products or services" factor but correctly applied other factors). We see no legal error here.
Checkpoint Systems also contends the District Court erred in its evaluation of the evidence of actual confusion in its reverse confusion claim. In A & H Sportswear, we stated that in most trademark cases, parties allege both direct and reverse confusion since "the manifestation of consumer confusion as `direct' or `reverse' may merely be a function of the context in
Finally, Checkpoint Systems contends the District Court erred in requiring evidence of actual confusion of purchasers at the point of sale to prove its reverse confusion claim. But as we have discussed, plaintiffs have mischaracterized the court's analysis. The court factored Checkpoint Systems's evidence of initial interest and investor confusion into its confusion analysis but found the evidence insubstantial. We see no clear error.
For the foregoing reasons, we will affirm the judgment of the District Court.
Commerce Nat'l Ins. Serv. Inc., 214 F.3d at 438 (quoting Scott Paper Co., 589 F.2d at 1228); see also Ford Motor Co., 930 F.2d at 292 (listing a "non-exclusive list of factors which may be considered [in determining whether a mark has achieved a secondary meaning,] includ[ing] the extent of sales and advertising leading to buyer association, length of use, exclusivity of use, the fact of copying, customer surveys, customer testimony, the use of the mark in trade journals, the size of the company, the number of sales, the number of customers, and actual confusion."); Charles Jacquin Et Cie, Inc. v. Destileria Serralles, Inc., 921 F.2d 467, 476 (3d Cir. 1990) ("While consumer surveys are useful, and indeed the most direct method of demonstrating secondary meaning and likelihood of confusion, they are not essential where, as here, other evidence exists.").
237 F.3d at 222.
Here, there is no evidence that a single security expert has sufficient knowledge in both the physical security and information security realms that he purchases both of these products for his corporation.
954 F.2d at 716 (quoting S.Rep. No. 2107, at 4 (1962), reprinted in 1962 U.S.C.C.A.N. 2844, 2847).
944 F.2d at 1249-50 (Kennedy J., dissenting) (quoting Polo Fashions, Inc. v. Craftex, Inc., 816 F.2d 145, 148 (4th Cir.1987)).
Checkpoint Sys., 104 F.Supp.2d at 463-64.
Checkpoint Sys., 104 F.Supp.2d at 463-64.
Ameritech, Inc. v. Am. Info. Techs. Corp., 811 F.2d 960, 964 (6th Cir.1987).
Checkpoint Sys., 104 F.Supp.2d at 461.
The proper inquiry in a reverse confusion claim is whether consumers will assume the senior user's goods are associated with the junior user. Just as in a direct confusion claim, the relatedness of the parties' products is integral to the finding of likely confusion. If two products are unrelated, there is little reason to assume confusion since most consumers would not assume that a single company would market two completely unrelated products. On the other hand, when the goods are related, a customer might reasonably assume the junior user with a strong market presence would sell both products. Fisons, 30 F.3d at 481 ("The question is whether the consumer might therefore reasonably conclude that one company would offer both of these related products.").
The District Court recognized that consumers of Check Point Software's highly sophisticated technical computer security systems would have no reason to believe that Checkpoint Systems's physical article surveillance system was manufactured by Check Point Software. Because the "computer information" niche that Check Point Software operated in was unique and technical there is no reason to believe a consumer would assume that Check Point Software had expanded into the market for a different type of security product. The same is true of Checkpoint Systems's customers. Because of the complicated technology involved in the "computer information" niche, these customers would not assume that Checkpoint Systems had moved into this market. The court properly recognized that even though the relevant case law does not require directly competing goods in order to find reverse confusion, product relatedness is a very important factor to finding that a consumer might confuse the source of products. See, e.g., id.; Scott Paper, 589 F.2d at 1230. We see no error.
Checkpoint Sys., 104 F.Supp.2d at 464 (internal citations omitted).