I.P. Lund Trading ApS v. Kohler Co.

United States Court of Appeals

For the First Circuit

No. 98-1334

I.P. LUND TRADING ApS and KROIN INC.,

Plaintiffs, Appellees,

v.

KOHLER CO. and ROBERN, INC.,

Defendants, Appellants.

No. 98-1492

I.P. LUND TRADING ApS and KROIN INC.,

Plaintiffs, Cross-Appellants,

v.

KOHLER CO. and ROBERN, INC.,

Defendants, Cross-Appellees.

APPEALS FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MASSACHUSETTS

[Hon. Nancy Gertner, U.S. District Judge]

Before

Torruella, Chief Judge,

Boudin and Lynch, Circuit Judges.

David H. Gibbs, with whom Cornelius J. Moynihan, John

V. Snellings, Jason C. Kravitz, and Peabody & Brown were on

briefs, for plaintiffs.

Hugh Latimer, with whom Michael L. Sturm, Karyn K.

Ablin, Wiley, Rein & Fielding, Stephen H. Lash, Jager, Smith &

Stetler, James R. Kieckhefer, and Kohler Co. were on briefs,

for defendants.

December 22, 1998

LYNCH, Circuit Judge. This is an appeal from the

district court's issuance of a preliminary injunction enjoining

defendants Kohler Company and Robern, Inc. from selling the

Kohler Falling Water faucet, a faucet resembling plaintiff

Lund's VOLA faucet. The VOLA faucet mounts on a wall, has been

in the design collection at the Museum of Modern Art, and has

a certain cachet among those who enjoy bathrooms and kitchens

beautiful. Kohler intended to produce a faucet like Lund's,

but not identical to it, and hence designed the now-enjoined

Falling Water faucet. There were two basic claims before the

trial court: that the Falling Water faucet "diluted" the VOLA

faucet's trade dress within the meaning of the Federal

Trademark Dilution Act of 1995 ("FTDA"), 15 U.S.C. 1125(c),

and that the Falling Water faucet infringed the VOLA's trade

dress. Lund won a preliminary injunction on the first ground,

but not on the second. See I.P. Lund Trading ApS v. Kohler

Co., 11 F. Supp. 2d 112, 127 (D. Mass. 1998) ("Lund I").

This difference in results was not anomalous. The

district court found, as to the infringement claim, that while

the VOLA faucet was not inherently distinctive, it had acquired

secondary meaning and thus was protectable, but that there was

no infringement because there was no confusion on the part of

consumers. In contrast, under the FTDA, where no confusion

need be shown, the court found the VOLA faucet was famous and

that Kohler's faucet diluted the identity of the VOLA faucet.

This case presents complex issues arising in areas of

intellectual property law recently extended and not yet well

demarcated. Few courts of appeals have yet interpreted the

FTDA and this court has never addressed certain key issues,

under both the infringement and FTDA claims, necessary to the

resolution of the case. The district court wrote thoughtfully,

and, particularly as to the FTDA issues, without much appellate

guidance. The claim for protection here comes not from

traditional marks such as names but from the very design of the

faucet itself -- that design is said to give the faucet its

identity and distinctiveness. Although Lund may have been able

to obtain a design patent and so protect its VOLA faucet in

that way, at least for a period of fourteen years, see 35

U.S.C. 173, it chose not to. Rather, it chose to turn for

protection to legal doctrines of trademark and trade dress,

originally crafted without product designs in mind. The trade

dress of product designs, unlike other forms of trade dress,

cannot be separated from the product itself. Kohler has raised

serious constitutional concerns, saying that this use of the

FTDA against a competing product essentially gives a perpetual

monopoly to product design, a perpetual monopoly prohibited by

the Patent Clause.

Kohler and Robern (collectively "Kohler") argue that

the district court erred in its determination that plaintiffs

I.P. Lund Trading ApS and Kroin Incorporated (collectively

"Lund") demonstrated a likelihood of success on the merits of

their claim under the FTDA that the Falling Water faucet

dilutes the trade dress of Lund's VOLA faucet. Lund cross-

appeals, arguing that the district court erred in determining

that Lund was unlikely to succeed on the merits of its

infringement claim. We affirm the denial of the preliminary

injunction on the infringement claim. We vacate the grant of

the injunction on the FTDA claim.

Several questions of first impression are resolved in

this opinion. We hold that the burden of showing non-

functionality of a product for which trade dress protection is

sought rests on the party seeking that protection. Here that

is the plaintiff Lund. In analyzing inherent distinctiveness

in the context of product design, we hold that while the well-

known Abercrombie test provides a useful analogy, strict

application of the test is not required; we reiterate this

court's adherence to the Seabrook Foods test. We emphasize

that, in any case where the trade dress is said to arise from

the product design, there must be separate analyses as to (1)

whether a design is inherently distinctive and (2) whether it

has nonetheless acquired distinctiveness through secondary

meaning. As to secondary meaning said to stem from the design

of the product itself, we hold that the plaintiff must show

that the primary significance of the design is to signify its

source.

Under the FTDA, we hold that a party who wishes to

establish fame of the trade dress for which protection is

sought bears a significantly greater burden than the burden of

establishing distinctiveness for infringement purposes. The

FTDA creates an exceptional anti-dilution remedy for truly

famous marks. Once this greater burden of establishing fame

has been met under the FTDA, the issue of dilution must be

addressed. We reject the use of the "Sweet factors" as the test

for dilution and instead require an inquiry into whether target

customers will perceive the products as essentially the same.

We hold that the dilution standard is a rigorous one, and Lund

has not shown that it is likely to succeed. While we

acknowledge serious constitutional concerns about application

of the FTDA to a dilution claim against a competing product

which does not confuse consumers, the resolution of the case

obviates the as applied constitutional issue, and we decline to

address any residual facial challenge.

I. Standard of Review

The district court "enjoys considerable discretion"

in determining whether to grant a preliminary injunction, but

its decision "must be supported by adequate findings of fact

and conclusions of law." TEC Eng'g Corp. v. Budget Molders

Supply, Inc., 82 F.3d 542, 544-45 (1st Cir. 1996); see alsoCamel Hair & Cashmere Inst. of America, Inc. v. Associated Dry

Goods Corp., 799 F.2d 6, 12-13 (1st Cir. 1986). "On appellate

review of the grant or denial of a preliminary injunction, the

deferential standard of 'abuse of discretion' applies to

judgment calls, by the district court, such as those that

involve the weighing of competing considerations." Public

Serv. Co. v. Patch, No. 98-1764, 1998 WL 823177, at *5 (1st

Cir. Dec. 3, 1998). As explained in Ocean Spray Cranberries,

Inc. v. Pepsico, Inc., 160 F.3d 58 (1st Cir. 1998), "[t]he

usual rubric refers to abuse of discretion . . . but this

phrasing is most pertinent to issues of judgment and the

balancing of conflicting factors; rulings on abstract legal

issues remain reviewable de novo, and findings of fact are

assessed for clear error." Id. at 61 n.1 (citations omitted).

If findings are made under incorrect standards, little or no

deference is due those findings. Cf. Uno v. City of Holyoke,

72 F.3d 973, 978 (1st Cir. 1995). Further, "[a]buse of

discretion occurs . . . when a material factor deserving

significant weight is ignored, when an improper factor is

relied upon, or when all proper and no improper factors are

assessed, but the court makes a serious mistake in weighing

them." Foster v. Mydas Assocs., Inc., 943 F.2d 139, 143 (1st

Cir. 1991) (internal quotation marks omitted).

A party seeking a preliminary injunction must

establish that 1) it is substantially likely to succeed on the

merits of its claim; 2) absent the injunction there is "a

significant risk of irreparable harm"; 3) the balance of

hardships weighs in its favor; and 4) the injunction will not

harm the public interest. TEC Eng'g Corp., 82 F.3d at 544

(discussing a claim for trade dress infringement). In the

trademark context, "irreparable harm may be shown even in the

absence of actual injury to plaintiff's business based on

plaintiff's demonstration of a likelihood of success on the

merits on its claim." Calamari Fisheries, Inc. v. The Village

Catch, Inc., 698 F. Supp. 994, 1013 (D. Mass. 1988) (citing

Camel Hair & Cashmere Inst., 799 F.2d at 14). There is no

argument that the district court applied the wrong test for

injunctive relief; there is considerable dispute over the

subsidiary tests which the court applied in determining whether

there was probability of success on the various elements of the

claims.

II. Facts and Procedural History

Lund, a Danish corporation, manufactures bathroom and

kitchen fixtures and accessories, including faucets. Lund has

been a family-owned corporation since its establishment in

1873. In 1969, Lund introduced the VOLA faucet, designed by

the noted architect Arne Jacobsen. The faucet, which has

received numerous awards over the past quarter-century, is

Lund's principal revenue-producing product. Lund has sold a

total of more than 600,000 VOLA faucets. The faucet has been

regularly advertised and featured in numerous magazines. Kroin

Incorporated is the sole United States distributor of the VOLA.

Kohler is the largest supplier of plumbing fixtures

in this country, selling hundreds of types of kitchen and

bathroom fixtures. In 1994, Kohler contacted Lund regarding

the possibility of selling the VOLA faucet under Kohler's name.

In 1995, Kohler purchased eight VOLA faucets from Lund for the

purpose of testing the faucets to see if they fit in a sink

that Kohler planned to introduce and to ensure that the faucets

complied with United States regulations. Kohler claims that it

tested the faucets and found that they did not meet U.S.

regulations regarding water flow capacity and resistance to

hydrostatic pressure, a contention Lund contests, and as to

which there was conflicting evidence.

Kohler gave a VOLA faucet to Erich Slothower, an

industrial designer employed by Kohler. Slothower then

designed the Falling Water faucet, which Kohler introduced for

sale at a price lower than that of the VOLA faucet. Slothower

testified that he examined the VOLA carefully prior to

designing the Falling Water, but that he attempted to make the

Falling Water faucet different from the VOLA. Kohler's large

size and well-established distribution channels mean that the

Falling Water is likely to be more easily available, in

addition to being less expensive.

The district court found a number of similarities

between the VOLA and the Falling Water faucets. Both are

"single-control, wall-mounted faucets" with handles that

"utilize a thin cylindrical lever to adjust water temperature

and volume"; both have "spouts and aerator holders . . . of

uniform diameter," with the spouts "bend[ing] downward at right

angles softened by a curve"; and "both faucets offer spouts in

almost exactly the same three lengths." Lund I, 11 F. Supp. 2d

at 116. Both faucets fit no-hole sinks. In contrast, most

sinks sold in the United States are "three-hole" sinks, with one

hole each for the water spout and the hot and cold spigots.

However, the district court also found dissimilarities between

the faucets, including differences in the faucets' handles, a

rounded lever on the Falling Water faucet compared to a flat

lever on the VOLA, and a rounded bonnet -- a piece that

connects the faucet to the wall -- on the mounting end of the

Falling Water spout, compared to no bonnet on the VOLA. Seeid. The court also found that the housemarks, "VOLA" and

"Kohler," are clearly dissimilar and are prominently displayed

on the faucets. See id. at 123.

Co-defendant Robern, which Kohler acquired in August

1995, also purchased a number of VOLA faucets. Before being

acquired by Kohler, Robern purchased 218 VOLA faucets from

Kroin for use in a sink module. Robern apparently promoted its

sink module pictured with the VOLA faucets. At approximately

the same time as Kohler acquired Robern, Kroin refused to sell

additional VOLA faucets to Robern, claiming that Robern was

selling the faucets to Kroin's customers at prices below those

Kroin was charging. One year later, Robern announced plans to

market its sink module with the Falling Water faucet. Lund

produced evidence that Robern has continued to use pictures of

the VOLA in promotional materials, despite the fact that it has

replaced the VOLA with the Falling Water faucet in its sink

modules.

Kohler introduced the Falling Water faucet to the

market in 1996. Lund filed suit on February 27, 1997, alleging

trade dress infringement under Section 43(a) of the Lanham Act

and trade dress dilution under the FTDA. Kohler denied any

violations and argued that the FTDA was unconstitutional as

applied to product designs. The district court held an

evidentiary hearing on April 16 and 30, 1997.

The court ruled on the motion for a preliminary

injunction in three stages. In a February 5, 1998 Memorandum

and Order, the court found that Lund had demonstrated a

substantial likelihood of success on its dilution claim, and so

enjoined Kohler from selling its Falling Water faucet. SeeLund I, 11 F. Supp. 2d at 127. At the same time, the court

found that Lund had failed to show likelihood of success on its

claim of trade dress infringement, and it reserved decision on

the question of the constitutionality of the FTDA pending

additional briefing. See id.

On February 12, 1998, the district court stayed the

preliminary injunction pending resolution of Kohler's claim

that application of the FTDA to product designs violates the

Patent Clause.

In an order dated March 31, 1998 and a memorandum

dated April 2, 1998, the district court found that Kohler's

constitutional argument was unlikely to succeed on the merits,

lifted the stay on the injunction, and ordered Lund to post a

bond of $250,000. See I.P. Lund Trading ApS v. Kohler Co., 11

F. Supp. 2d 127, 134-35 (D. Mass. 1998) ("Lund II").

The district court also denied Kohler's request to

stay the injunction pending appeal to this court. On April 29,

1998, this court rejected Kohler's request for a stay pending

appeal.

III. Purposes of Trademark and Trade Dress Protection

The basic building blocks of the analysis are worth

reiterating. Section 43(a) of the Lanham Act provides

protection against the use of "any word, term, name, symbol, or

device" that "is likely to cause confusion, or to cause mistake,

or to deceive" as to the source of a product. 15 U.S.C.

1125(a). Trade dress includes "the design and appearance of [a]

product together with the elements making up the overall image

that serves to identify the product presented to the consumer."

Chrysler Corp. v. Silva, 118 F.3d 56, 58 (1st Cir. 1997)

(alteration in original) (quoting Fun-Damental Too, Ltd. v.

Gemmy Indus. Corp., 111 F.3d 993, 999 (2d Cir. 1997)) (internal

quotation marks omitted). The new law, the FTDA, Lanham Act

section 43(c), grants protection to "famous" marks against any

use of the mark that "causes dilution of the distinctive quality

of the mark." 15 U.S.C. 1125(c).

To resolve the issues presented, we go back to the

underlying purposes of trademark and trade dress infringement

and dilution protections. The various intellectual property

protection mechanisms serve related but distinct ends. These

distinct ends inform the selection of appropriate tests under

the different sections of the Lanham Act. These distinctions

are also particularly pertinent to Kohler's constitutional

claim that dilution protection of trade dress of product design

amounts to an unconstitutional perpetual monopoly under the

Patent Clause of the Constitution. The Patent Clause itself

describes the "exclusive Right" given as being for "limited

Times." U.S. Const. art. I, 8, cl. 8. "The laws of patents,

copyright, trade secrets, trademarks, unfair competition, and

misappropriation balance the conflicting interests in

protection and dissemination differently in different contexts

through specific rules that determine just who will receive

protection, of just what kind, under what circumstances, and

for how long." DeCosta v. Viacom Int'l, Inc., 981 F.2d 602, 605

(1st Cir. 1992).

A primary purpose of trade dress or trademark

protection is to protect that which identifies a product's

source. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159,

162 (1995) (noting that "the statutory definition of a trademark

. . . requires that a person 'us[e]' or 'inten[d] to use' the

mark 'to identify and distinguish his or her goods, including

a unique product, from those manufactured or sold by others and

to indicate the source of the goods, even if that source is

unknown'" (alterations in original) (quoting 15 U.S.C. 1127)).

"The purpose of trademark laws is to prevent the use of the same

or similar marks in a way that confuses the public about the

actual source of the goods or service." Star Fin. Servs., Inc.v. Aastar Mortgage Corp., 89 F.3d 5, 9 (1st Cir. 1996).

Traditional trademark and trade dress law thus encourages

production of products of high quality "and simultaneously

discourages those who hope to sell inferior products by

capitalizing on a consumer's inability quickly to evaluate the

quality of an item offered for sale." Qualitex, 514 U.S. at

164. More importantly for our purposes, trademark and trade

dress protection serves to protect both the trademark or trade

dress owner and the public by avoiding confusion or mistake.

In contrast, dilution statutes, and the FTDA in

particular, protect only the trademark or trade dress owner and

are not concerned with possible confusion on the part of

consumers. See J. Gilson, Trademark Protection and Practice 5.12 (1998). Any protection of the public intended by the

FTDA is indirect at best. "Anti-dilution statutes have

developed to fill a void left by the failure of trademark

infringement law to curb the unauthorized use of marks where

there is no likelihood of confusion between the original use

and the infringing use." L.L. Bean, Inc. v. Drake Publishers,

Inc., 811 F.2d 26, 30 (1st Cir. 1987). Filling this void,

Congress passed the FTDA in 1995 both to provide uniform

national protection against dilution and to bring this

country's law into conformity with international agreements.

See H.R. Rep. No. 104-374, at 3-4 (1995), reprinted in 1995

U.S.C.C.A.N 1029, 1030-31.

IV. Prerequisites for Protection from Infringement and

Dilution

Despite different purposes being served, claims for

protection against trademark and trade dress infringement, on

the one hand, and dilution, on the other, share three common

elements before the analyses diverge. Those elements are that

marks (a) must be used in commerce, (b) must be non-functional,

and (c) must be distinctive. While all such marks may be

protected against infringement, under the FTDA only famous and

distinctive marks are eligible for protection against dilution.

No requirement for fame is present in trademark and trade dress

infringement.

A. Use in Commerce

There is no dispute that both Lund's and Kohler's

faucets have been used in commerce, thus satisfying the first

requirement for protection against both infringement and

dilution. See 15 U.S.C. 1125(a),(c).

B. Functionality

1. Legal Standards

To be protected under the Lanham Act, a trademark or

trade dress must not be functional. See Two Pesos, Inc. v.

Taco Cabana, Inc., 505 U.S. 763, 775 (1992). If the trade

dress is functional, it receives no protection under trademark

law. The functionality doctrine has considerable economic and

legal significance. "The functionality doctrine prevents

trademark law, which seeks to promote competition by protecting

a firm's reputation, from instead inhibiting legitimate

competition by allowing a producer to control a useful product

feature." Qualitex, 514 U.S. at 164. Thus, the functionality

doctrine marks the boundaries of trade dress protection.

As discussed later, "if functional features were

given trademark or trade dress protection, such protection

would clearly clash with the objectives of federal functional

patent law." 1 J. McCarthy, McCarthy on Trademarks and Unfair

Competition 7:64 (4th ed. 1996). The rule against functional

features being protected as symbols of origin "is obviously to

prevent the grant of perpetual monopoly by the issuance of a

trade-mark in the situation where a patent has either expired,

or . . . cannot be granted." Sylvania Elec. Prods., Inc. v.Dura Elec. Lamp Co., 247 F.2d 730, 732 (3d Cir. 1957).

The core inquiry into whether trade dress is

functional requires examination of the effects that granting

protection to a product will have on the ability of others to

compete. Thus, in Inwood Laboratories, Inc. v. Ives

Laboratories, Inc., 456 U.S. 844 (1982), the Court stated that

a functional product feature is one that "is essential to the

use or purpose of the article or [that] . . . affects the cost

or quality of the article." Id. at 851 n.10. In Qualitex, the

Court added that the inquiry into functionality turns in part

on whether granting protection to a mark "would permit one

competitor . . . to interfere with legitimate (nontrademark-

related) competition through actual or potential exclusive use

of an important product ingredient." Qualitex, 514 U.S. at

170.

The fact that a product contains some functional

elements does not, however, preclude Lanham Act protection.

"[A] particular arbitrary combination of functional features,

the combination of which is not itself functional, properly

enjoys protection." Taco Cabana Int'l, Inc. v. Two Pesos, Inc.,

932 F.2d 1113, 1119 (5th Cir. 1991), aff'd, 505 U.S. 763

(1992). The crucial inquiry is into the effect that granting

protection will have on the opportunity of others to compete.

As the parties note, this court has not previously

decided whether a showing of non-functionality is an element of

the claim of the party seeking protection, or whether

functionality is an affirmative defense on which the defending

party has the burden. See TEC Eng'g Corp., 82 F.3d at 546 n.3.

In Fisher Stoves, Inc. v. All Nighter Stove Works, Inc., 626

F.2d 193 (1st Cir. 1980), this court, although not resolving

the issue, stated that it was "not at all clear" that the

district court erred when it placed the burden of proof on the

plaintiff. Id. at 195. Other circuit courts which have

decided the issue are split. Compare Sunbeam Prods., Inc. v.

West Bend Co., 123 F.3d 246, 251 (5th Cir. 1997) (holding that

plaintiffs bear the burden), cert. denied, 118 S. Ct. 1795

(1998), Woodsmith Publ'g Co. v. Meredith Corp., 904 F.2d 1244,

1247 (8th Cir. 1990), Rachel v. Banana Republic, Inc., 831 F.2d

1503, 1506 (9th Cir. 1987), Ambrit, Inc. v. Kraft, Inc., 812

F.2d 1531, 1535 (11th Cir. 1986), Kwik-Site Corp. v. Clear View

Mfg. Co., 758 F.2d 167, 178 (6th Cir. 1985), and CIBA-GEIGY

Corp. v. Bolar Pharm. Co., 747 F.2d 844, 854 (3d Cir. 1984),

with Computer Care v. Service Sys. Enters., Inc., 982 F.2d

1063, 1068 (7th Cir. 1992) (holding that defendants bear the

burden), Brunswick Corp. v. Spinit Reel Co., 832 F.2d 513, 520

(10th Cir. 1987), and LeSportsac, Inc. v. K Mart Corp., 754

F.2d 71, 75-76 (2d Cir. 1985). See generally 1 McCarthy

7:72. The Lanham Act itself provides no guidance on the

issue, and the caselaw contains little discussion of the

rationale for allocating the burden of proof to plaintiffs or

defendants.

We hold that the party alleging trademark

infringement and dilution bears the burden of proving non-

functionality of those elements of the physical object that the

plaintiff claims constitute the mark and for which the

plaintiff is seeking protection. Several rationales support

the burden being placed on those seeking protection, here the

plaintiff. Functionality, or, more precisely, a showing of

non-functionality of the elements for which protection is

sought, is an essential component of the protection the law

gives to trademarks and trade dress. A showing of non-

functionality is essential because the doctrine prevents

trademarks from limiting legitimate competition. Put

differently, "functionality" plays an important role in

preventing a constitutional problem between the Lanham Act and

patent law. Moreover, Congress did not intend to provide

Lanham Act protection to functional aspects of products, seeTwo Pesos, 505 U.S. at 775, and thus it would be anomalous if

the burden were not placed on the party seeking protection.

Such an assignment of the burden of proof ensures that

trademarks serve their intended purpose of identifying product

sources.

A plaintiff's product is known best by plaintiff

itself. A contrary result, placing the burden on defendant,

could lead to untoward results. It could also lead to

unwarranted litigation. If protected elements of a product are

indeed functional, and the burden of showing non-functionality

is placed on plaintiff, plaintiff will have incentives not to

bring unwarranted actions hoping that defendants will fail to

raise or prove functionality as an affirmative defense. It

would be far easier for plaintiffs to obtain protection for

functional aspects of their products -- and thus limit

legitimate competition -- if defendants were to bear the burden

of proof, as defendants might lack the ability or incentive to

pursue the issue fully. There is value in minimizing the

chances of the issue not being properly raised or presented.

2. Application of Functionality Doctrine

The district court did not make a specific finding on

functionality and the record on the important issue of

functionality is unclear. Although Lund I commented that "[n]o

one argues that the VOLA design is 'functional,' as that term

is used in trademark law," Lund I, 11 F. Supp. 2d at 120 n.12,

Kohler did in fact argue in a filing that "to the extent that

some features on the respective faucets may somewhat resemble

each other, these features are either functional in nature and

thus not protectable under the Lanham Act or so commonly used

in the plumbing industry that they are obvious -- not

distinctive of a particular product" (emphasis added). Thus

Kohler did not waive the issue. We cannot say that it is

obvious no aspect of the VOLA is functional; indeed some

aspects give the appearance of being functional and so the

issue is a real one. There are significant dissimilarities

between the two faucets, and at least some of the similarities

that do exist are suggestive of functionality. Nonetheless, we

will assume at this stage of the case that there is some non-

functional residuum based on the aesthetic unity and

proportions of the VOLA.

The issue of functionality plays a key role in this

case. In the absence of a finding of non-functionality of the

aspects of the VOLA for which protection is sought, and in

light of our placing the burden of proof on plaintiff, there

can be no trademark or trade dress protection. If the VOLA

design or aspects of it are functional, then the only source of

exclusive rights would be in a utility patent. Trademark and

trade dress law cannot be used to evade the requirements of

utility patents, nor the limits on monopolies imposed by the

Patent Clause. This also means that in the absence of a

finding of non-functionality, no protection is available under

the FTDA and no injunction may issue under the FTDA, a point to

which we return later.

But there is another reason that the functionality

analysis must be undertaken. There is a relationship between

functionality and distinctiveness:

If a feature is functional, it is likely that all

similar articles will have a similar functional

feature, and one seller's feature is not likely to

evoke any response in buyers that it is unique or is

a distinctive symbol of origin.

1 McCarthy 7:64. It is also clear that even if a functional

feature has achieved secondary meaning as an indication of

origin, that feature is not protectable under trademark or

trade dress law. See Fisher Stoves, 626 F.2d at 195-96; 1

McCarthy 7:66.

C. Distinctiveness

The third prerequisite for protection is

distinctiveness. In order to receive trade dress protection,

a product must either be inherently distinctive or have

acquired secondary meaning. See Two Pesos, 505 U.S. at 769;

TEC Eng'g Corp., 82 F.3d at 545. The inquiry into

distinctiveness turns on the total appearance of the product,

not on individual elements. Cf. Sunbeam, 123 F.3d at 251

(stating that "'trade dress' refers to the total image and

overall appearance of a product"). The district court found,

within the usual preliminary injunction standards about

likelihood of success, that the VOLA faucet was not inherently

distinctive but that it had acquired secondary meaning.

1. Inherently Distinctive Marks

In analyzing whether a product's mark is distinctive,

courts have often divided marks into the five categories set

forth in Abercrombie & Fitch Co. v. Hunting World, Inc., 537

F.2d 4 (2d Cir. 1976): 1) generic, 2) descriptive, 3)

suggestive, 4) arbitrary, and 5) fanciful. See Two Pesos, 505

U.S. at 768 (discussing Abercrombie); Abercrombie, 537 F.2d at

9. Suggestive, arbitrary, and fanciful marks are deemed

inherently distinctive; descriptive marks receive protection

only upon a showing that they have acquired secondary meaning;

and generic marks are not protectable. Abercrombie itself

addressed words, the usual form of mark. The Abercrombie test

has been used in some other areas of trade dress, such as

product packaging and the overall appearance of a restaurant.

See Two Pesos, 505 U.S. at 768-69, 773.

Courts have struggled with whether the Abercrombietest, originally designed for words, should be imported

wholesale into that specialized area of trade dress claimed to

come from product design. Although the Supreme Court in Two

Pesos endorsed the Abercrombie test in the context of non-

verbal trade dress not involving product designs, at least two

circuits have been skeptical of the appropriateness of the test

in the product design context. See Knitwaves, Inc. v.

Lollytogs Ltd., 71 F.3d 996, 1007-08 (2d Cir. 1995); Duraco

Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1445-

49 (3d Cir. 1994); 1 McCarthy 8:12. Indeed, these courts,

questioning whether a product design can ever be inherently

distinctive, apply a more rigorous standard for determining

inherent distinctiveness of product designs than they do for

determining the inherent distinctiveness of more traditional

forms of trade dress. See Knitwaves, 71 F.3d at 1008-09

(requiring that a product design serve primarily to indicate a

product's source); Duraco Prods., 40 F.3d at 1449 (requiring

product designs to be "(i) unusual and memorable; (ii)

conceptually separable from the product; and (iii) likely to

serve primarily as a designator of origin of the product"). The

problem with applying traditional trademark or trade dress

classifications to product designs arises because "one cannot

automatically conclude from a product feature or configuration

-- as one can from a product's arbitrary name . . . -- that, to

a consumer, it functions primarily to denote the product's

source." Duraco Prods., 40 F.3d at 1441.

Parting from the skeptics, the Eighth Circuit has

rejected any differentiation between product designs and other

forms of trade dress. See Stuart Hall Co. v. Ampad Corp., 51

F.3d 780, 787-88 (8th Cir. 1995). The Stuart Hall court argued

that the Second and Third Circuit tests would effectively

eliminate the possibility that a product design could be

inherently distinctive, collapsing the inherent distinctiveness

inquiry into the secondary meaning inquiry. See id. at 787

("The requirement of source-identification applies not to

whether a trade dress is inherently distinctive, but to whether

it has a secondary meaning."). Such an outcome would directly

contradict the Supreme Court's holding in Two Pesos that

inherently distinctive trade dress is protectable even absent

a showing of secondary meaning. See id. at 788 (citing Two

Pesos, 505 U.S. at 769-70).

The district court here applied the Second Circuit's

Knitwaves test. It examined whether the VOLA's design was

"likely to serve primarily as a designator of origin of the

product." Lund I, 11 F. Supp. 2d at 120 (quoting Knitwaves, 71

F.3d at 1008) (internal quotation marks omitted). Like the

court in Knitwaves, the district court did so by looking to

whether the VOLA's creators intended the design to serve as a

source indicator. See id.; see also Knitwaves, 71 F.3d at 1009

("As Knitwaves' objective in the two sweater designs was

primarily aesthetic, the designs were not primarily intended as

source identification. Those sweater designs therefore fail to

qualify for protection of trade dress inherent in product

design."). The court found that the VOLA's design was "not

'primarily' intended as source identification" because "Lund's

design objective was 'primarily aesthetic,'" and thus "the

design of the VOLA faucet cannot be considered inherently

distinctive." Id.

Lund argues that the district court was in error

because it was obligated by Supreme Court precedent to apply

the Abercrombie test. Lund argues that application of the

wrong test produced the wrong result. Lund points to other

decisions in the District of Massachusetts which have rejected

the Knitwaves and Duraco Products tests and adopted the

Abercrombie analysis in the product design context. See Big

Top USA, Inc. v. Wittern Group, 998 F. Supp. 30, 46-47 (D.

Mass. 1998); Lainer v. Bandwagon, Inc., 983 F. Supp. 292, 300

(D. Mass. 1997).

We do not believe that the Supreme Court's

endorsement of the Abercrombie test in Two Pesos requires a

strict application of the Abercrombie test in all contexts,

particularly where product design is involved. The Supreme

Court stated only that "[m]arks are often classified in" the

five Abercrombie categories. Two Pesos, 505 U.S. at 768. The

Court did not mandate the application of the Abercrombie test;

rather, it affirmed the use of the Abercrombie factors in the

case before it. See id. at 768-69. The holding of Two Pesoswas that plaintiffs seeking protection for inherently

distinctive trade dress are not required to demonstrate

secondary meaning. See id. at 770. Unless the Court decides

to carve out an exception to this rule for claims about product

design, which we deem unlikely, then the holding must be

honored. And so we agree with the Eighth Circuit that the test

for inherent distinctiveness should not be altered to the

degree that it eviscerates the distinction between inherently

distinctive trade dress and trade dress that has acquired

secondary meaning. We do not believe, however, that analysis

of the problem using different factors than the Abercrombiefactors results in such an outcome.

This court has previously relied on the test set

forth in Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d

1342 (C.C.P.A. 1977), to determine whether a product design is

inherently distinctive, and we do so again. In Wiley v.

American Greetings Corp., 762 F.2d 139 (1st Cir. 1985), this

court stated that inherent distinctiveness of a product design

should be determined by reference to

whether [the design] was a "common" basic shape or

design, whether it was unique or unusual in a

particular field, whether it was a mere refinement of

a commonly-adopted and well-known form of

ornamentation for a particular class of goods viewed

by the public as dress or ornamentation for the

goods, or whether it was capable of creating a

commercial impression distinct from the accompanying

words.

Id. at 141 (alteration in original) (quoting Seabrook Foods,

568 F.2d at 1344) (internal quotation marks omitted). We also

agree with one commentator's analysis that "[i]n reality, all

three [Seabrook Foods] questions are merely different ways to

ask whether the design, shape or combination of elements is so

unique, unusual or unexpected in this market that one can

assume without proof that it will automatically be perceived by

customers as an indicator of origin -- a trademark." 1 McCarthy

8:13. Although the plaintiff in Wiley brought suit under

state common law, we find the test equally applicable to claims

brought under the Lanham Act.

The Seabrook Foods test is largely consistent with

the Second Circuit's Knitwaves test for inherent

distinctiveness, that is, whether the design "is likely to serve

primarily as a designator of origin of the product." Knitwaves,

71 F.3d at 1008 (quoting Duraco Prods., 40 F.3d at 1449)

(internal quotation marks omitted); see also Landscape Forms,

Inc. v. Columbia Cascade Co., 113 F.3d 373, 378 n.3 (2d Cir.

1997) (rejecting an argument that the Knitwaves and Seabrook

Foods tests are inconsistent).

In contrast to the Second Circuit, however, we

believe that Two Pesos obliges courts to maintain a clear

distinction between the inquiry into secondary meaning and the

inquiry into inherent distinctiveness. Cf. Knitwaves, 71 F.3d

at 1008. Although plaintiffs seeking to demonstrate that a

product design is inherently distinctive may find that their

task is a difficult one, Two Pesos makes clear that this

opportunity remains open. Product designs are unlike many more

traditional subjects of trademark protection, "which almost

automatically tell a customer that they refer to a brand,"

Qualitex, 514 U.S. at 162-63, and it is therefore unlikely that

many product designs will be found to be inherently

distinctive. Nevertheless, plaintiffs seeking trade dress

protection for product designs are entitled to attempt to show

that their designs are so unique as to be primarily perceived

as indicating the product's origin. Cf. 2 McCarthy 15:9 ("A

design or shape, or a trade dress that is so fanciful as to be

inherently distinctive can function as a mark without the need

for proof of secondary meaning. The issue is whether this

shape is so different or unusual for this type of goods or

services that its distinctiveness can be assumed.").

Applying Knitwaves, the district court did make a

finding as to inherent distinctiveness. It found that the

VOLA's design is not "likely to serve primarily as a designator

of origin of the product." On this record that finding cannot

be said to be clearly erroneous. One aspect of the test

applied in reaching this conclusion is, nonetheless,

problematic. The district court relied on evidence as to

Lund's intent. But the plaintiff's intent is not entitled to

much weight in a determination of whether a product design is

inherently distinctive. See 1 McCarthy 8.13 (stating that

"the intent of the designer is a very weak indicator of the

likely reaction of potential customers"); cf. Landscape Forms,

113 F.3d at 377 n.3 ("If Knitwaves forced courts to decide

whether a manufacturer's purpose was to create either something

of beauty or something indicative of source, we agree the task

would often prove impossible."). The district court may,

however, have given little weight to this factor in reaching

its conclusion.

The district court used the Knitwaves test, which is

consistent with this Circuit's Wiley/Seabrook test, to reach

its conclusion. There is adequate evidence in the record to

support the district court's determination there was little

probability of success in demonstrating that the VOLA's design

inherently and primarily serves to identify the faucet's

source.

2. Secondary Meaning

The second method for demonstrating that a product's

trademark or trade dress is distinctive and thus protectable is

through a showing that the mark has acquired secondary meaning.

"To establish secondary meaning, a manufacturer must show that,

in the minds of the public, the primary significance of a

product feature or term is to identify the source of the

product rather than the product itself." Inwood Lab., 456 U.S.

at 851 n.11.

While some have suggested that the primary

significance test is too stringent, particularly for product

design cases, we reject any lesser test. The Supreme Court has

consistently used "primary significance." As the Court said in

a case concerning a product design (the shape of a shredded

wheat cereal biscuit), secondary meaning occurs when "the

primary significance . . . in the minds of the consuming public

is not the product but the producer." Kellogg Co. v. National

Biscuit Co., 305 U.S. 111, 118 (1938). Where protection of the

product design itself is at issue, there is every reason to

hold to the usual stringent primary significance test in order

to minimize constitutional concerns.

Secondary meaning may be "established in a number of

ways," and courts may weigh a number of factors, including the

length or exclusivity of use of a mark, "the size or prominence

of [plaintiff's] enterprise," and the existence of substantial

advertising by plaintiff. President & Trustees of Colby

College v. Colby College-New Hampshire, 508 F.2d 804, 807-08

(1st Cir. 1975). Other factors include the product's

"[e]stablished place in the market" and "[p]roof of intentional

copying." 2 McCarthy 15:30; see also Boston Beer Co. Ltd.

Partnership v. Slesar Bros. Brewing Co., 9 F.3d 175, 182 (1st

Cir. 1993) (listing factors). Secondary meaning may be

determined with reference to a particular trade or "branch of

the purchasing public." See Colby College, 508 F.2d at 808

(quoting G. & C. Merriam Co. v. Saalfield, 198 F. 369, 373 (6th

Cir. 1912)) (internal quotation marks omitted).

The district court found that Lund had a likelihood

of success of showing that the VOLA had achieved secondary

meaning, noting that "there is sufficient evidence in the record

. . . to conclude that purchasers of high-end bathroom

fixtures, including interior designers, now know the VOLA by

sight." Lund I, 11 F. Supp. 2d at 121. The district court also

found that "[e]nough money and effort has been invested in

promoting the VOLA's design that it is recognizable as coming

from a unique source, albeit through a variety of distributors,"

and that "the primary significance of the VOLA design, to the

relevant public, is as a high-end product, coming from Lund."

Id.

Kohler challenges the district court's determination

that the VOLA has most likely acquired secondary meaning. We

review the district court's findings of fact for clear error.

The district court's conclusion is doubtful for

several reasons. First, as noted, there was no analysis of

functionality and there is a relationship between functionality

and secondary meaning.

Second, the context suggests otherwise -- the

district court found, under separate but related doctrines,

that the faucets were mostly dissimilar. Cf. 2 McCarthy

15:38 (stating that copying may give rise to an inference of

secondary meaning). The court found that there was no customer

confusion. It is in this barren context that the claim is made

that something in the design which is not functional serves

primarily to signify the source of the faucet and not primarily

to signify that it is an aesthetically pleasing faucet.

Third, little is present of the evidence

traditionally relied on (but which admittedly is not a sine qua

non) for a finding of secondary meaning. The secondary meaning

analysis is primarily a subjective one, looking into the minds

of potential customers. Customer survey evidence, while not

required, is a valuable method of showing secondary meaning.

See Boston Athletic Ass'n v. Sullivan, 867 F.2d 22, 32 n.9 (1st

Cir. 1989); Colby College, 508 F.2d at 809. As the district

court correctly noted, the purported survey evidence was

unreliable. The expert testimony, which involved one expert

testifying for each side, was contradictory.

Fourth, the VOLA has been sold by a number of

different companies in this country and has not been advertised

here as coming from Lund. This situation is akin to the use of

different marks to identify a single product. "When a product

. . . design is sold by the authority of plaintiff under

several different word marks . . ., it is more difficult for

plaintiff to prove acquisition of secondary meaning - that is,

that the shape or design identifies a single source." 1

McCarthy 8:14 (emphasis in original).

Finally, while such testimony is entitled to little

weight because the focus is on the understanding of prospective

purchasers, the testimony is that Lund did not intend in

designing the product that the design signify source.

It is true that the VOLA product has been much

advertised or featured, but at times without any source

attribution or with attribution to different sources.

Lund relies heavily on the testimony of Corbin, a

retailer presented as Lund's expert. Corbin stated that the

VOLA was "perceived as a high-end product, a very simple and

elegant product; one that is generally known by name as either

a Kroin faucet or Jacobsen faucet; . . . a design icon . . . ."

But to say it is a design success is not to say that the

primary significance of the design is to signify its source.

In the end we need not resolve the point. Lund lost

on the infringement preliminary injunction and for other

reasons, even if Lund had shown secondary meaning, it has not

shown itself entitled to relief under the FTDA.

V. Infringement

Establishing trademark infringement requires a

showing that prospective buyers of the product in question --

here, high-end faucets -- are likely to be confused as to the

product's source. See 15 U.S.C. 1125(a); Two Pesos, 505 U.S.

at 769; TEC Eng'g Corp., 82 F.3d at 545; Purolator, Inc. v.

EFRA Distribs., Inc., 687 F.2d 554, 559 (1st Cir. 1982); cf.International Ass'n of Machinists & Aerospace Workers v.

Winship Green Nursing Ctr., 103 F.3d 196, 201 (1st Cir. 1996)

("[T]he law has long demanded a showing that the allegedly

infringing conduct carries with it a likelihood of confounding

an appreciable number of reasonably prudent purchasers

exercising ordinary care."). Establishing infringement also

requires a showing that the plaintiff uses, and thus owns, the

mark in question, and that the defendant's mark is similar to

or the same as the plaintiff's mark. See DeCosta, 981 F.2d at

605. A plaintiff is not entitled to a preliminary injunction

on a trademark infringement claim unless it can persuade the

district court that it is likely to be able to demonstrate

consumer confusion. See WCVB-TV v. Boston Athletic Ass'n, 926

F.2d 42, 44 (1st Cir. 1991).

This court has identified eight factors to be weighed

in determining likelihood of confusion:

(1) the similarity of the marks; (2) the similarity

of the goods; (3) the relationship between the

parties' channels of trade; (4) the relationship

between the parties' advertising; (5) the classes of

prospective purchasers; (6) evidence of actual

confusion; (7) the defendant's intent in adopting its

mark; and (8) the strength of the plaintiff's mark.

. . . No one factor is necessarily determinative,

but each must be considered.

Boston Athletic Ass'n, 867 F.2d at 29 (quoting Volkswagenwerk

Aktiengesellschaft v. Wheeler, 814 F.2d 812, 817 (1st Cir.

1987)) (citations and internal quotation marks omitted). The

factors are non-exclusive, however, and are not always apt to

the particular facts of a case. See Winship Green, 103 F.3d at

201. In addition, the first factor, similarity, "is determined

on the basis of the total effect of the designation, rather

than a comparison of individual features." Pignons S.A. de

Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 487

(1st Cir. 1981) (internal quotation marks omitted).

The district court applied these eight factors and

determined that, taken together, the factors weighed against a

finding of a likelihood of consumer confusion. The court found

that the strength of the VOLA's mark and the similarity of the

VOLA and the Falling Water products were factors that favored

the plaintiffs, but that the class of prospective purchasers,

the channels of trade, the defendant's intent, and the

dissimilarity of the VOLA and Falling Water marks all favored

the defendants. The court found that the two remaining factors

did not weigh in favor of either party.

Lund argues that the district court misapplied the

eight factors listed above, saying the court committed four

errors. First, Lund argues that the district court accorded

consumer sophistication excessive weight, particularly in

reaching its determination that the channels of trade and the

classes of prospective consumers made confusion less likely.

Second, Lund argues that the court erred in its determination

that the dissimilarity of the marks weighed against a finding

of consumer confusion. Third, Lund argues that the district

court erred when it found that Kohler's intention not to copy

the VOLA weighed against a finding of consumer confusion.

Fourth, Lund argues that the district court ignored evidence of

actual consumer confusion.

Review of factual determinations is for clear error.

We have carefully considered each of Lund's arguments, and are

unpersuaded that the district court's determination as to the

probability of success on each of these points was erroneous.

However, we clarify two matters.

First, little weight should be given to the

determination that Kohler did not intend to copy the VOLA. In

Chrysler, this court commented that "[s]trictly, intent, or lack

thereof, does not affect the eyes of the viewer." Chrysler, 118

F.3d at 59 n.3. We added that "[p]roof of bad intent may,

psychologically, hurt as an admission," but "[p]roof of good

intent does not change appearance." Id. Similarly, in Star

Financial Services we commented that "a finding of good faith

is no answer if likelihood of confusion is otherwise

established." Star Fin. Servs., 89 F.3d at 11 (quoting Colby

College, 508 F.2d at 811-12) (internal quotation marks

omitted). Thus a finding of no intent to copy may not outweigh

other factors that suggest a likelihood of confusion.

Second, the district court's discussion of post-sale

confusion was based on an erroneous premise. In finding that

post-sale confusion was unlikely, the court commented that

"there is little or no chance that [the faucets] will be resold

to unwary consumers." Lund I, 11 F. Supp. 2d at 123. Post-sale

confusion refers not to the resale of the original product,

however, but to the risk that non-purchasers, who themselves

may be future consumers, will be deceived. See 3 McCarthy

23:7 (noting that "[t]he damage to the senior user . . . is that

consumers could acquire the prestige value of the senior user's

product by buying the copier's cheap imitation," and that in

such a case, "[e]ven though the knowledgeable buyer knew that

it was getting an imitation, viewers would be confused"). For

example, in a case involving counterfeit Rolex watches, the

court commented that

[i]ndividuals examining the counterfeits, believing

them to be genuine Rolex watches, might find

themselves unimpressed with the quality of the item

and consequently be inhibited from purchasing the

real time piece. Others who see the watches bearing

the Rolex trademarks on so many wrists might find

themselves discouraged from acquiring a genuine

because the items have become too common place and no

longer possess the prestige once associated with

them.

Rolex Watch U.S.A., Inc. v. Canner, 645 F. Supp. 484, 495 (S.D.

Fla. 1986). In other words, even if the purchaser of a Falling

Water faucet knew that she was buying the Kohler faucet and not

the VOLA, the district court could still find a likelihood of

confusion if subsequent viewers of the faucet would believe it

to be a VOLA. Cf. Keds Corp. v. Renee Int'l Trading Corp., 888

F.2d 215, 222 (1st Cir. 1989) (noting that "point of sale

confusion was not the only issue" because "prospective

consumers, viewing the clothes on other people, would be

confused as to the origin of the goods"). However, because the

district court's determination of no likelihood of post-sale

confusion does not appear to have been a key factor in its

decision, we do not believe it undercuts the court's conclusion

regarding probability of success on the merits.

The district court correctly found that Lund was

unlikely to prevail on the merits of its infringement claim,

and so correctly denied the preliminary injunction on those

grounds.

VI. Dilution

Lund obtained the preliminary injunction against

Kohler's distribution and promotion of the Falling Water faucet

based on the district court's finding of likelihood of success

under the new federal anti-dilution statute, the FTDA, which

became effective in 1996. The injunction rested on the

conclusion that Lund had established a likelihood of success of

showing two essential elements. The first is that the "mark,"

that is, the VOLA product design as an identifying mark, was

"famous." The second is that Kohler's Falling Water faucet

"diluted" Lund's mark. Both the terms "famous" and "dilution"

are terms of art given specific rigorous meanings by the FTDA.

We start with the language of the Act. The FTDA

provides:

The owner of a famous mark shall be entitled, subject

to the principles of equity and upon such terms as

the court deems reasonable, to an injunction against

another person's commercial use in commerce of a mark

or trade name, if such use begins after the mark has

become famous and causes dilution of the distinctive

quality of the mark, and to obtain such other relief

as is provided in this subsection.

15 U.S.C. 1125(c)(1).

The FTDA created a new "federal cause of action to

protect famous marks from unauthorized users that attempt to

trade upon the goodwill and established renown of such marks

and, thereby, dilute their distinctive quality." H.R. Rep. No.

104-374, at 3, reprinted in 1995 U.S.C.C.A.N at 1030. Congress

acted against a "patch-quilt system" of state law protection in

which approximately twenty-five states had laws prohibiting

trademark dilution. Id. While creating a federal cause of

action, Congress expressly did not preempt state law, but

attempted to create uniformity through the availability of a

federal cause of action. A second consideration -- protection

of famous marks of U.S. companies abroad -- also motivated

Congress. See id. at 4, reprinted in 1995 U.S.C.C.A.N at 1031.

Enactment of the FTDA was consistent with agreements which were

part of the Uruguay Round of the General Agreement on Tariffs

and Trade (specifically, the Agreement on Trade-Related Aspects

of Intellectual Property Rights, including Trade in Counterfeit

Goods ("TRIPS")) and the Paris Convention. Enactment of the law

was also thought to be of value to the U.S. in bilateral and

multi-lateral trade negotiations. See id.

Sponsors of the bill articulated the type of problem

the Act was meant to solve:

[T]his bill is designed to protect famous trademarks

from subsequent uses that blur the distinctiveness of

the mark or tarnish or disparage it, even in the

absence of a likelihood of confusion. Thus, for

example, the use of DuPont shoes, Buick aspirin, and

Kodak pianos would be actionable under this bill.

141 Cong. Rec. S19306, S19310 (daily ed. Dec. 29, 1995)

(statement of Sen. Hatch). Thus the archetypal problems

involved non-competing products as to which there could, by

definition, be no confusion and a world-famous brand name which

was either tarnished or blurred by its application to a

different product which was obviously trading on the good will

of that name.

The language of the FTDA itself is, however, not

limited to addressing these archetypal problems. A few

observations are in order. First, the Act applies to products

which are competitors (as is true of the faucets here) as well

as to products which are totally dissimilar and are not

competitors. Second, the Act applies to a famous "mark" and

does not restrict the definition of that term to names or

traditional marks. In the absence of such a restriction, the

Act applies to all types of marks recognized by the Lanham Act,

including marks derived from product designs. Kohler's

argument that the Act cannot, as a matter of statutory

interpretation, be applied to product design is rejected.

Third, the Act applies even where there is no customer

confusion, a point with consequences discussed later. Fourth,

the additional protection afforded by the Act requires that a

mark go beyond what is required for ordinary Lanham Act

protection. Only those marks which are "distinctive and famous"

are protected. 15 U.S.C. 1125(c)(1). As set forth in the

1987 Trademark Review Commission Report, the precursor of the

1996 Act, this language reflected "the policy goal that to be

protected, a mark had to be truly prominent and renowned." 3

McCarthy 24.91 (citing The United States Trademark

Association Trademark Review Commission Report and

Recommendations to USTA President and Board of Directors, 77

Trademark Rep. 375, 459-60 (1987)). With this background, we

turn to the district court's two essential conclusions.

A. Fame and Distinctiveness

The requirements of commercial use, non-

functionality, and distinctiveness are common to both the

infringement claim and the FTDA dilution claim. In order to

fall within the sphere of protection against dilution the FTDA

adds an additional requirement: the FTDA grants protection only

to famous marks. See 15 U.S.C. 1125(c); cf. Gilson

5.12[1][a] (calling the FTDA "a major breakthrough for an

elite category of trademark owners"). The FTDA provides a non-

exclusive list of eight factors that courts should consider in

determining whether a mark is "distinctive and famous." 15

U.S.C. 1125(c)(1). The eight statutory factors are:

(A) the degree of inherent or acquired

distinctiveness of the mark;

(B) the duration and extent of use of the mark in

connection with the goods or services with which the

mark is used;

(C) the duration and extent of advertising and

publicity of the mark;

(D) the geographical extent of the trading area in

which the mark is used;

(E) the channels of trade for the goods or services

with which the mark is used;

(F) the degree of recognition of the mark in the

trading areas and channels of trade used by the

marks' owner and the person against whom the

injunction is sought;

(G) the nature and extent of use of the same or

similar marks by third parties; and

(H) whether the mark was registered under the Act of

March 3, 1881, or the Act of February 20, 1905, or on

the principal register.

Id. The district court found likelihood of success on the

claim that the VOLA's design was a famous mark. Kohler

challenges this finding.

Both the text and legislative history of the original

bill in 1988 and the FTDA itself indicate a congressional

intent that courts should be discriminating and selective in

categorizing a mark as famous. For example, the Senate

Judiciary Committee Report on the 1988 precursor bill said the

Committee wished "to underscore its determination that the new

dilution provisions should apply only to . . . very unique

marks." 3 McCarthy 24:92 n.6 (quoting S. Rep. No. 100-515,

at 41-42) (internal quotation marks omitted). The Trademark

Review Commission noted that the showing of fame required

employment of a "higher standard" than fame among an

"appreciable number of persons" in order to be "eligible for

this extraordinary remedy." Id. n.8 (quoting The United States

Trademark Association Trademark Review Commission Report, 77

Trademark Rep. at 461) (internal quotation marks omitted). One

commentator has referred to this category of famous marks as

"Supermark[s]." See Gilson 5.12[1][a]. As the Restatement

(Third) of Unfair Competition notes:

A mark that evokes an association with a specific

source only when used in connection with the

particular goods or services that it identifies is

ordinarily not sufficiently distinctive to be

protected against dilution.

Restatement (Third) of Unfair Competition 25 cmt. e (1995).

The record here reflects that there was not

sufficient attention paid to the heightened fame standard that

the FTDA establishes. The district court found that "in its

market, the VOLA's design is famous and distinctive" based on

its prior analysis under the infringement claim that "the VOLA

mark is strong, and has acquired secondary meaning in its

market; and it has been used for some twenty years in this

country." Lund I, 11 F. Supp. 2d at 125. Both the Restatement

(Third) of Unfair Competition and the state anti-dilution

statutes against the background of which Congress enacted the

FTDA make clear that the standard for fame and distinctiveness

required to obtain anti-dilution protection is more rigorous

than that required to seek infringement protection. SeeRestatement (Third) of Unfair Competition 25 cmt. e. As one

commentator has stated:

Certainly, the mere acquisition of secondary meaning

to achieve trademark status in a non-inherently

distinctive designation is nowhere near sufficient to

achieve the status of "famous mark" under the anti-

dilution statute. The acquisition of secondary

meaning merely establishes the minimum threshold

necessary for trademark status: section 43(c)

requires a great deal more.

3 McCarthy 24:91; see also Gilson 5.12[1][c][ii] ("A

trademark can certainly be distinctive without being famous,

but it cannot be famous without being distinctive.").

We do not understand the district court's conclusion

about fame, despite some ambiguity, to have rested solely on

its conclusion that the VOLA faucet was distinctive (because it

had acquired secondary meaning); any such per se analysis would

be erroneous. But it appears that the district court did not

apply the more rigorous definition of fame under the FTDA.

While one can posit a case having very strong facts which

support a distinctiveness finding based on secondary meaning

and then using those facts to support the separate, more

rigorous analysis of fame, the facts in this case do not have

such strength. Lund has a difficult case to establish fame

through the product design of the VOLA faucet, and this record

is not strong. There has been no use by Kohler of the VOLA

name, or any other name by which the faucet is known. Kohler's

use, if any, is of a like product design. There is little to

suggest that this product design, itself unregistered and not

inherently distinctive, is so strong a mark and so well

publicized and known that it has achieved the level of fame

Congress intended under the Act. Consumer surveys could be

used as evidence of such fame, but consumer surveys are absent

from this case. Additionally, although some marks, such as

COCA-COLA, may be so famous as to be judicially noticed, seeGilson 5.12[1][c][iii], the VOLA faucet is far from being a

candidate for such judicial notice.

Further, national renown is an important factor in

determining whether a mark qualifies as famous under the FTDA.

Although the district court found that "in the world of interior

design and high-end bathroom fixtures, the VOLA is renowned,"

Lund I, 11 F. Supp. 2d at 126, and that the faucet has been

featured and advertised in national magazines and displayed in

museums, whether the VOLA's identifying design is sufficiently

famous to qualify for the FTDA's protection is far from clear.

In light of the rigorous standard for fame, we find that Lund

has not met its burden of showing likelihood of success.

B. Dilution

Under the FTDA, even if a mark is famous there is no

relief unless that mark has been diluted. As the district

court noted, there are two types of dilution recognized:

blurring and tarnishing. This case involves no claim of

tarnishing, an area in which Congress expressed a strong

interest. Further, in light of the finding of no customer

confusion, only a particular type of blurring may be involved.

The intellectual origins of the dilution doctrine are

traced to a 1927 Harvard Law Review article, which urged

protection against "the gradual whittling away or dispersion of

the identity and hold upon the public mind of the mark or name

by its use upon non-competing goods." Schecter, The Rational

Basis of Trademark Protection, 40 Harv. L. Rev. 813, 825

(1927). Although the origins of the doctrine are concerned

with non-competing goods, Congress used language in the FTDA

which extends dilution protection even to competing goods.

"Dilution" is defined as "the lessening of the capacity of a

famous mark to identify and distinguish good or services." 15

U.S.C. 1127; see also H.R. Rep. No. 104-374, at 3, reprinted

in 1995 U.S.C.C.A.N at 1030 (stating that dilution "applies when

the unauthorized use of a famous mark reduces the public's

perception that the mark signifies something unique, singular,

or particular"); 3 McCarthy 24:93 ("The crux is whether this

particular challenged use lessens the capacity of the famous

mark to carry out its role as a trademark -- namely, to

identify and distinguish.").

This case differs in several respects from usual

dilution cases. First, unlike most claims of dilution by

tarnishment or blurring, the aspect of its product that Lund

seeks to protect -- the design of the VOLA faucet -- likely

could have been protected by a design patent. The possibility

of obtaining a design patent is not dispositive of the

availability of trade dress protection: more than one form of

intellectual property protection may simultaneously protect

particular product features. Moreover, design patent

protection would not have provided protection identical to that

sought here. Nevertheless, the availability of design patent

protection does suggest that the claim in this case differs

fundamentally from the claims the drafters of the FTDA had in

mind -- cases where dilution protection is the only form of

protection available for a famous mark threatened by

unauthorized use of the mark that lessens the mark's capacity

to identify its source. Congress's intent to provide

protection where none previously existed is evidenced by the

House Report's statement that "[a] federal dilution statute is

necessary because famous marks ordinarily are used on a

nationwide basis and dilution protection is currently only

available on a patch-quilt system of protection, in that only

approximately 25 states have laws that prohibit trademark

dilution." H.R. Rep. No. 104-374, at 3, reprinted in 1995

U.S.C.C.A.N. at 1030.

Second, Lund is seeking protection against a direct

competitor. Although the FTDA states that dilution protection

is available against unauthorized use of a famous mark that

lessens the mark's ability "to identify and distinguish goods

or services, regardless of the presence or absence of . . .

competition between the owner of the famous mark and other

parties," 15 U.S.C. 1127 (emphasis added), dilution protection

has most often been extended to non-competing uses of a mark,

see, e.g., H.R. Rep. No. 104-374, at 3, reprinted in 1995

U.S.C.C.A.N. at 1030 (giving examples of "DUPONT shoes, BUICK

aspirin, and KODAK pianos"); 3 McCarthy 24.72 (noting "split

of authority under . . . state statutes as to whether the anti-

dilution rule is applicable where the parties are in

competition"). The FTDA recognizes the possibility that

dilution may occur in some circumstances where, although some

consumers are not confused as to the products' sources, a

competitor's use of a mark tarnishes or blurs a senior mark.

Nevertheless, such cases are likely to be exceptions to the

more common cases of dilution by non-competing marks. Dilution

laws are intended to address specific harms; they are not

intended to serve as mere fallback protection for trademark

owners unable to prove trademark infringement.

While there may be a tendency to think of dilution in

terms of confusion, Congress made it clear that dilution can

occur even in the absence of confusion. It is simple to see

why that should be so when non-competing goods are at issue.

No one would confuse Kodak pianos with Kodak film, but the use

of the name on the piano could dilute its effectiveness as a

mark for the film. But Congress did not say that there can be

dilution without confusion only among non-competing goods. As

the district court aptly noted, the analysis becomes

complicated when the concept of blurring is applied to

competing similar products.

We deal first with the approach taken by the district

court, an approach which had support in precedent. The

district court articulated the standard for determining

blurring as follows: "Lund must demonstrate that 'the use of a

junior mark has caused a lessening of demand for the product or

services bearing the famous mark.'" Lund I, 11 F. Supp. 2d at

126 (quoting Ringling Bros.-Barnum & Bailey Combined Shows,

Inc. v. Utah Div. of Travel Dev., 955 F. Supp. 605, 616 (E.D.

Va. 1997)). This, we think, is not the correct standard. As

Kohler observes, demand for one product is almost always

lessened whenever a competing product achieves a measurable

degree of success. Further, blurring has to do with the

identification of a product and that is not the same thing as

a lessening of demand.

In addressing the dilution claim, the district court

used the "Sweet factors," named after the six factors set forth

in Judge Sweet's concurrence in Mead Data Central, Inc. v.

Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1035 (2d Cir.

1989) (Sweet, J., concurring), which involved a claim brought

under a New York dilution statute. Some district courts have

used these factors to examine whether dilution exists under the

FTDA. See, e.g., Ringling Bros.-Barnum & Bailey Combined

Shows, Inc. v. B.E. Windows Corp., 937 F. Supp. 204, 211-14

(S.D.N.Y. 1996); WAWA, Inc. v. Haaf, 40 U.S.P.Q.2d (BNA) 1629,

1632-33 (E.D. Pa. Aug. 7, 1996), aff'd, 116 F.3d 471 (3d Cir.

1997); Clinique Lab., Inc. v. Dep Corp., 945 F. Supp. 547, 562

(S.D.N.Y. 1996).

Kohler argues that Judge Sweet's six-factor test is

inappropriate in determining whether dilution has occurred for

purposes of the FTDA. We agree. The Sweet factors have been

criticized by both courts and commentators for introducing

factors that "are the offspring of classical likelihood of

confusion analysis and are not particularly relevant or helpful

in resolving the issues of dilution by blurring." 3 McCarthy

24:94.1. The six Sweet factors are: "1) similarity of the

marks 2) similarity of the products covered by the marks 3)

sophistication of consumers 4) predatory intent 5) renown of

the senior mark [and] 6) renown of the junior mark." Mead

Data, 875 F.2d at 1035 (Sweet, J., concurring). McCarthy urges

that only the first and fifth of Judge Sweet's factors -- the

similarity of the marks and the renown of the senior mark --

are relevant to determining whether dilution has occurred. See3 McCarthy 24:94.1; see also Hershey Foods Corp. v. Mars,

Inc., 998 F. Supp. 500, 520 (M.D. Pa. 1998) (stating that

"whether the products are similar or not adds nothing to the

analysis" because "dilution can apply to competitors"); Klieger,

Trademark Dilution: The Whittling Away of the Rational Basis

for Trademark Protection, 58 U. Pitt. L. Rev. 789, 826-27

(1997) (noting that "few of these factors bear any relation to

whether a particular junior use will debilitate the selling

power of a mark" and that "[s]o long as a mark qualifies for

dilution protection and the senior and junior uses of the mark

are not so unrelated as to foreclose the possibility of a

mental connection, blurring . . . is a foregone conclusion").

These criticisms are well taken.

The district court's finding of likelihood of

dilution by blurring depended on its use of inappropriate Sweet

factors. As McCarthy points out, use of factors such as

predatory intent, similarity of products, sophistication of

customers, and renown of the junior mark work directly contrary

to the intent of a law whose primary purpose was to apply in

cases of widely differing goods, i.e. Kodak pianos and Kodak

film. See 3 McCarthy 24:94.1.

There are difficulties with the Sweet factors even

when used with competing goods. Blurring occurs in the minds

of potential customers. Predatory intent tells little about

how customers in fact perceive products. That customers are

sophisticated may well mean less likelihood of blurring. That

customers knowingly choose to pay less to get a similar

product, and trade lower price against having a product of

greater fame, does not, contrary to Lund's argument, establish

blurring. Indeed, the district court's findings, in the

infringement context, of dissimilarity and sophistication of

the customers tend to cut against any finding of blurring. "The

familiar test of similarity used in the traditional likelihood

of confusion test cannot be the guide [for dilution analysis],

for likelihood of confusion is not the test of dilution." Id. 24:90.1. Instead, the inquiry is into whether target

customers are likely to view the products "as essentially the

same." Id.

There is a more fundamental problem here in

attempting to apply the dilution analysis to the design itself

of the competing product involved. We doubt that Congress

intended the reach of the dilution concept under the FTDA to

extend this far and our doubts are heightened by the presence

of constitutional constraints. Where words are the marks at

issue it is easy to understand that there can be blurring and

tarnishment when there is a completely different product to

which the words are applied. The congressional history

described earlier gives such examples. What is much more

difficult is to see how dilution is to be shown where some of

a design is partially replicated and the result is largely

dissimilar and does not create consumer confusion. If that is

so, as is true here, then it is difficult to see that there has

been dilution of the source signaling function of the design

(even assuming that such a function has been established

through secondary meaning).

Instead, it appears that an entirely different issue

is at stake -- not interference with the source signaling

function but rather protection from an appropriation of or free

riding on the investment Lund has made in its design. That

investment is usually given protection by patents, which have

a limited duration. See W.T. Rogers Co., 778 F.2d at 348. But

again, that free riding or appropriation appears to be of the

beauty of the object and not of the source, and may in fact be

good for consumers. As the district court observed, these

sophisticated buyers know a different source is involved and

are, accordingly, most likely purchasing because of the

aesthetics. And even if there is some appropriation or free

riding, the extent of it here is not clear. Certainly it is

not plausible to think that Congress intended to protect

aesthetic characteristics by simply assuming harm or damages

based on the fact that the plaintiff will sell less if the

defendant sells more. What is clear is that the interests here

are not the interests at the core of what Congress intended to

protect in the FTDA.

It is possible that Congress did not really envision

protection for product design from dilution by a competing

product under the FTDA, but the language it used does not

permit us to exclude such protection categorically and rare

cases can be imagined. But a broad reading of dilution would

bring us close to the constitutional edge, and we decline to

attribute such brinksmanship to Congress, and so insist on

rigorous review.

Under the interpretation of the fame and dilution

requirements for the FTDA set forth today, the requirements for

granting the preliminary injunction have not been met.

VII. Constitutionality of the FTDA

Kohler argues that the FTDA may never

constitutionally be applied to enjoin a competitor in a product

design trade dress case. Kohler's constitutional challenge

involves two steps. First, Kohler argues that applying the

FTDA to product designs grants patent-like protections for an

unlimited period of time. Second, Kohler argues that

Congress's Commerce Clause power -- the basis of Congress's

regulation of trademarks and trade dress -- cannot be used to

trump the Patent Clause. Lund responds that federal anti-

dilution legislation is fully consistent with Congress's

Commerce Clause power, and that patent and trademark laws

protect different interests and serve different goals.

The district court correctly noted that Kohler faced

a "very high preliminary injunction standard on their

[constitutional] claim," and that the statute was

"presumptively constitutional." Lund II, 11 F. Supp. 2d at

134. The court concluded that defendant Kohler was unlikely to

succeed with its argument that the FTDA is unconstitutional in

all product design contexts.

Kohler's constitutional attack on application of the

FTDA here is mooted by our resolution of the injunction issue.

To the extent Kohler is mounting something akin to a facial

attack, we think it better not to address constitutional issues

in the abstract. The resolution of any conflict between the

Patent Clause and the FTDA is better handled on specific facts

which present the issues with clarity, and not on the basis of

theoretical impacts.

VIII. Conclusion

Both the parties and the district court labored

through this case without the benefit of binding precedent on

a number of key and difficult issues, particularly the

interpretation of the FTDA. The denial of the preliminary

injunction on the infringement claim is affirmed. The grant of

the injunction on the FTDA claim is vacated inasmuch as there

were no findings on functionality and standards for determining

both fame and dilution under the FTDA were used which are

different from those announced today and the evidence does not

show probability of success under those standards. The case is

remanded for further proceedings not inconsistent with this

opinion. No costs are awarded.

- Concurring opinion follows -

BOUDIN, Circuit Judge, concurring. Ordinarily the

creator of something new--a useful device, a pharmaceutical

drug, an ornament, a painting--owns any such object that he or

she makes but can prevent its replication by others only

pursuant to the patent and copyright laws. A central

limitation on patent and copyright protection, stemming from

the Constitution itself, is that it is limited in time. SeeU.S. Const. art. I, 8, cl. 8; 35 U.S.C. 101, 154 (20-year

utility patent); 35 U.S.C. 171, 173 (14-year design patent);

17 U.S.C. 302-304 (various limited-time copyrights). After

the period of protection expires, copying by others is allowed.

This case presents, in addition to other problems, the threat

that the permanent injunction sought may prevent the Lund

faucet from being duplicated forever.

In substance, Lund created a faucet configuration

called VOLA that involves a downward curving water pipe

protruding from a wall (rather than the sink itself) and a

similarly protruding control rod to regulate both water flow

and temperature (instead of the usual pair of spigots). The

concept of a wall-based mechanism, and the size and shape and

relative proportions of the pipe and control rod, are pleasing

to customers. The resulting VOLA faucet configuration is

successful and recognized in the trade.

Lund has now obtained a preliminary injunction against

Kohler forbidding Kohler from selling Kohler's own faucet

system that embodies the same concept and a similar but not

identically shaped pipe and control rod. What Lund regards as

the scope of its "monopoly" is not entirely clear: all we know

is that this Kohler faucet system has been enjoined. What will

be assumed, or else the legal problems would be even greater

than they are, is that the concept of a water pipe and control

rod protruding from a wall is not sought to be prohibited but

only one whose shape and size are similar to VOLA. Even so,

a serious problem exists because the assumed protection (if the

preliminary injunction matures into a permanent one) could be

perpetual.

Lund says that this perpetual protection of its design

is permitted because its source is not a design patent --Lund

has not sought one--but rather the trademark laws. Trademarks

are ordinarily conceived as names (e.g., Kodak) or marks (the

AT&T striped circle logo), but trademarks also include so-

called "trade dress," see 15 U.S.C. 1127; and this in turn

includes the ornamental design of an article where the design

performs the traditional "source signaling" function of

trademarks. Usually, this is achieved by the "wrapping" (e.g.,

the classic Coca Cola bottle) or some ornament affixed to the

product (the star symbol on the Mercedes hood); but the design

of the product itself can sometimes qualify.

A permanent restriction on copying the design of a

product might still seem offensive to patent and copyright

policy, but at least this protection can be explained where the

replication would otherwise confuse buyers as to source,

traditionally the concern of trademark protection. The

difficulty in this case arises because Congress has removed the

requirement of confusion for protection of "famous" trademarks

and said that, in the alternative, they will be protected

against "dilution" even where no confusion exists as to source.

15 U.S.C. 1125(c). Congress was worried that even without

customer confusion as to source a famous trade name or mark,

like "Kodak," could be blurred or degraded by being attached by

others to their own products (e.g., sports clothing, dog food).

See 141 Cong. Rec. S19306, S19310 (daily ed. Dec. 29, 1995)

(statement of Sen. Hatch).

By contrast to a trademark consisting of a name or

insignia, a product design will not often qualify as a

trademark inviting protection from dilution. A trade name or

device usually identifies source, but the design of the product

itself in most cases makes the product more efficient,

attractive, or both. If more efficient, trademark protection

is foreclosed altogether under the "functionality" doctrine,

see Qualitex, 514 U.S. at 164; Two Pesos, 505 U.S. at 775; and

if attractiveness is the primary function, the product design

does not normally qualify as a candidate to achieve secondary

meaning and thus trademark status. See Inwood Labs., Inc. v.

Ives Labs., Inc., 456 U.S. 844, 851 n.11 (1982).

But conceivably in some rare case a product design

might have source signaling as its main function (perhaps the

old 1950's Cadillac tail fin might be an instance) and be

copied by a competitor (say, for Volkswagen Beetles) without

any risk of customer confusion. At that point, if the new

trademark statute is taken literally, Cadillac might then claim

a permanent monopoly on its tail fin design, subject only to a

showing that Volkswagen's use threatened to "dilute" the

strength of that tail fin as a Cadillac trademark. See 15

U.S.C. 1125(c). One may wonder whether Congress ever

contemplated such a result, but the statute's language arguably

permits it or at least does not explicitly foreclose the

possibility.

If so, much turns on how dilution is defined and

proved. The federal statute is recent, but state laws have

protected against dilution for some time, and under those

statutes there is some tendency to assume that dilution is

threatened wherever the famous trademark is copied. After all,

the concern is with the long-term "whittling away" of the

strength of the mark by other unauthorized uses, see L.L. Bean,

Inc. v. Drake Publishers, Inc., 811 F.2d 26, 30 (1st Cir.

1987), and, absent confusion, there may be no immediate damage

from any single use. Where only a word or symbol is forever

preempted, this protective approach toward the trademark may

make sense, and in all events does not pose much risk to the

policies of the patent and copyright clauses.

The situation is quite different where design of an

article is given permanent protection without any threat of

confusion. If buyers prefer articles of that design, then the

public pays a price whenever the design cannot eventually be

used by other manufacturers. In the case of patents and

copyrights, the foreclosure of competition is deemed a price

worth paying for a limited time--in order to induce such

creations--but only for a limited time. Is this policy of

time-limited protection, constitutional at its core, overcome

wherever dilution is threatened--even though no confusion can

be proved and any impairment of the trademark may be only

potential and directed primarily to protecting the seller

rather than the public?

One might point to the possible diversion of sales from

Lund to Kohler as practical harm in this very case. Yet such

diversion does not prove either confusion or dilution: a copied

product can easily take sales from the original manufacturer if

the copied product is better made or sold at a lower price or

the design is slightly better--outcomes generally beneficial to

the public. Giving weight to diversion of sales, in the

absence of confusion of customers, simply underscores that the

protection is generally similar to that afforded for patented

articles--save that the protection here may be unlimited in

time. Giving patent-like protection a new name does not avoid

constitutional limitations. Cf. Bonito Boats, Inc. v. Thunder

Craft Boats, Inc., 489 U.S. 141, 146 (1989).

The traditional interest in trademark protection is

stretched very thin in dilution cases where confusion is absent

and a professed aim is to protect the maker's investment in the

trademark. See H.R. Rep. No. 104-374, at 3 (1995), reprinted

in 1995 U.S.C.C.A.N. at 1030. And the threat to the public

interest, ordinarily countered by the time limit on patent

protection, is acute where a permanent protection is offered

not to a word or symbol but to the design of an article of

manufacture. In such an instance, it is a difficult

constitutional question whether protecting the investment can

outweigh the public interest in replication, a question best

deferred unless and until all other preconditions for

protection are resolved in favor and decision on this last

issue is absolutely necessary. See El Dia, Inc. v. Hernandez

Colon, 963 F.2d 488, 494 (1st Cir. 1992).