Fison Horticulture, Inc. v. Vigoro Industries, Inc.

Opinions of the United

1994 Decisions States Court of Appeals

for the Third Circuit

7-22-1994

Fison Horticulture, Inc. v. Vigoro Industries, Inc.

Precedential or Non-Precedential:

Docket 93-7224

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UNITED STATES COURT OF APPEALS

FOR THE THIRD CIRCUIT

________________

Nos. 93-7224 & 93-7287

________________

FISONS HORTICULTURE, INC.,

Appellant in No. 93-7224

v.

VIGORO INDUSTRIES, INC.,

Appellant in No. 93-7287

_______________________________________________

On Appeal from the United States District Court

for the District of Delaware

(D.C. Civil Action No. 92-00066)

___________________

Argued January 20, 1994

Before: SCIRICA, LEWIS and GARTH, Circuit Judges

(Filed July 22, 1994)

JACK R. PIROZZOLO, ESQUIRE (Argued)

Willcox, Pirozzolo & McCarthy

50 Federal Street

Boston, Massachusetts 02110

DONALD F. PARSONS, JR., ESQUIRE

Morris, Nichols, Arsht & Tunnell

1201 North Market Street

P.O. Box 1347

Wilmington, Delaware 19899

Attorneys for Appellant/Cross-Appellee

Fisons Horticulture, Inc.

1

BYRON L. GREGORY, ESQUIRE (Argued)

MICHELLE C. BURKE, ESQUIRE

McDermott, Will & Emery

227 West Monroe Street

Chicago, Illinois 60606

Attorneys for Appellee/Cross-Appellant

Vigoro Industries, Inc.

__________________

OPINION OF THE COURT

__________________

SCIRICA, Circuit Judge.

This is a trademark infringement case concerning

products in the home lawn and garden market. The owner of the

trademark "Fairway" for peat moss alleges another company

infringed its right to the mark and competed unfairly by selling

fertilizer under the name "Fairway Green."

Fisons Horticulture, Inc. ("Fisons"), a Canadian

corporation with its principal place of business in Bellvue,

Washington, brought this suit against Vigoro Industries, Inc.,

("Vigoro"), a Delaware corporation with its principal place of

business in Fairview Heights, Illinois. Fisons, which markets

peat moss under the registered trademark "Fairway", claims

Vigoro's use of the brand name "Fairway Green" for fertilizer

constitutes trademark infringement0 and unfair competition0under

0

Section 32 of the Lanham Act, 15 U.S.C. § 1114 (1988 & Supp. IV

1992) protects registered trademarks and provides in part:

(1) Any person who shall, without the consent of the

registrant --

(a) use in commerce any reproduction, counterfeit,

copy, or colorable imitation of a registered mark

2

the Lanham Act, 15 U.S.C. §§ 1051-1127 (1988 and Supp. IV 1992),

infringement of a common law trademark, common law unfair

competition, and violates the Delaware Deceptive Trade Practices

Act, Del. Code Ann. tit. 6, §§ 2531-33 (1993).

After a bench trial, the district court entered

judgment for Vigoro on Fisons' claims and for Fisons on Vigoro's

cross-claim for attorneys' fees under 15 U.S.C. § 1114(1), as

provided by 15 U.S.C. § 1117. Both parties appealed. For

reasons that follow, we will reverse the district court's

judgment for Vigoro on Fisons' Lanham Act claims, affirm its

in connection with the sale, offering for sale,

distribution, or advertising of any goods or

services on or in connection with which such use

is likely to cause confusion, . . .

. . .

shall be liable in a civil action by the registrant for

the remedies hereinafter provided.

0

Section 43(a) of the Lanham Act, 15 U.S.C. § 1125 (1988 & Supp.

IV 1992), which provides protection for both registered and

unregistered marks, states in part:

(a)(1) Any person who, on or in connection with any

goods or services, or any container for goods, uses in

commerce any word, term, name, symbol, or device, or

any combination thereof, or any false designation of

origin, false or misleading description of fact, or

false or misleading representation of fact, which --

(A) is likely to cause confusion, or to cause

mistake, or to deceive as to the affiliation,

connection, or association of such person with

another person, or as to the origin, sponsorship,

or approval of his or her goods, services, or

commercial activities by another person, . . .

. . .

shall be liable in a civil action by any person who

believes that he or she is or is likely to be damaged

by such act.

3

judgment for Fisons on attorneys' fees, and remand for a new

trial.

I.

A. Fisons Horticulture, Inc. and Fairway Peat Moss

Fisons is a subsidiary of a British-owned company,

Fisons, PLC, which has three divisions: pharmaceuticals,

scientific equipment, and horticultural products. Its

horticulture division has companies in the United Kingdom,

France, and the Benelux Countries, as well as in North America.

Fisons markets Canadian sphagnum peat moss, a natural

organic product used to improve soil texture and protect plants

from temperature extremes, under the registered trademark

"Fairway" in the United States. Fisons acquired the Fairway

trademark in 1980 from the original owner, Western Peat Company,

Ltd., which first used the trade name in 1959 and registered it

in 1960.

Fairway is not the only name under which Fisons sells

peat moss; it also uses the names "Sunshine" and "Parkland."

Sunshine and Parkland together account for over 95% of its sales

in the United States and Fairway accounts for the remainder.0

Fisons' three brands of peat moss account for about 25% of the

U.S. peat moss market. From 1987 through 1991, Fisons sold over

0

It is not uncommon for one business to use multiple brand names

for what is essentially the same product; the use of different

brand names allows Fisons to sell peat moss to a lawn and garden

store under a brand name not sold by a nearby competing discount

outlet.

4

$500,000 of Fairway peat moss each year. Fisons sells Fairway

peat moss primarily to homeowners for lawn and garden care

through the traditional channels -- lawn and garden stores,

hardware stores, home improvement centers, supermarkets, drug

stores, and discount stores. Fisons does not advertise Fairway

peat moss directly to consumers. Instead, it promotes its

product to retailers, makes advertising copy available to them,

and reimburses them for their advertising expenses.0

Besides selling peat moss, Fisons sells to the U.S.

greenhouse market potting mixes; analyses of soil, water and

tissue samples; and professional fertilizer. It also offers an

extensive line of lawn and garden products in Canada. Fisons has

been considering expanding its product line in the United States

by acquiring regional fertilizer brands and unifying them as a

national brand for the consumer fertilizer market. One of the

proposed trademarks for the national fertilizer brand is Fairway.

Fairway peat moss is sold in a white plastic bag with

the mark "Fairway" in large script in green letters above the

words "peat moss" in block red letters. The bag has a central

design of a golf course green surrounded by roses. A pin with a

red triangular flag appears in the center of the green, and the

word "sphagnum" is printed in white on the flag. On the back of

the package, recommended uses are listed as "preparing new

lawns," "top dressing old lawns," and "garden soil mix or mulch."

0

But in 1990, a year in which Fisons had retail sales of Fairway

peat moss in 17 states for a total of $684,316, only one retailer

published an advertisement for Fairway; it sought reimbursement

for $1,232.57.

5

The package notes that peat moss is used with fertilizer and that

it "saves fertilizer".

B. Vigoro Industries, Inc. and Fairway Green Fertilizer

Vigoro Industries has been in the fertilizer business

in the United States since 1890, and the Vigoro name has been

used on products since 1924. It is a prominent name in the

industry and it plans to compete with the market leader, O.M.

Scott & Sons Co., across the full range of Scott products. Vigoro

sells its products to consumers through garden centers, discount

stores, hardware stores, seed and feed stores, home improvement

centers and supermarkets and drug stores.

Before 1991, Vigoro offered standard quality fertilizer

to consumers, but in 1991, it decided to offer to the upscale

consumer market a new line of premium-quality fertilizers,

containing the patented slow-release nitrogen ingredient it used

in its premium golf course fertilizer. Vigoro hired an

advertising agency to help select a name and promotional program

for the new product. After a search disclosed that many proposed

names were registered as trademarks by other companies, the

agency recommended "Fairway Green."0

0

One of the names explored for Vigoro's new line of fertilizers

was "Golf Course Green," but the advertising agency's trademark

attorney found that a subsidiary of Sandoz Pharmaceutical

Corporation owned the named "Golf" for fertilizers and

herbicides. The trademark appeared to be inactive, so Vigoro

requested a royalty-free license to use "Golf Course Green." When

it was refused, Vigoro decided not to use the name. Vigoro made

no similar request of Fisons or any other owners of a "Fairway"

trademark.

6

The agency's trademark counsel stated in her

recommendation that "Fairway" was registered as a trademark by

several companies:

As we discussed, there is a possibility

that one or more of the owners of "fairway"

marks might contest Vigoro's right to use

FAIRWAY GREEN. However, since there is no

history of any of the prior users opposing

each other's uses of "fairway," the risk

should be acceptabl[y] low.

There is also a risk that the

application will be assigned to an examiner

who will take a strict position and site

[sic] one or more of the prior "fairway"

registrations as grounds for refusing to

register your mark. Because so many

"fairway" marks have been registered in the

past I believe this risk is also low.

Fisons Horticulture, Inc., v. Vigoro Indus., No. 92-66, slip op.

at 3 (D. Del. Mar. 3, 1993).

There were several other registrations and applications

including the word "Fairway," but few of them were in the same

trademark category as Fisons' Fairway, that is, U.S. class 10,

"Fertilizers." In that class, Western Peat, Fisons' predecessor,

had registered "Fairway" for peat moss in 1960 and O.M. Scott had

registered "Super Fairway" for agricultural and horticultural

fertilizers in 1988. O. M. Scott marketed Super Fairway for

commercial but not consumer use. After Vigoro applied for

registration of "Fairway Green" for its fertilizers in May, 1991,

Fisons contested both that application and O. M. Scott's prior

registration and applied for its own registration of "Fairway"

for fertilizer.

7

In addition to these trademark registrations and

applications in U.S. trademark class 10, approximately six

companies had registered or were trying to register "Fairway" for

one or more other products and services related to lawns and

gardens: grass seed, lawn and garden machinery and equipment, and

lawn services; but only three such registrations were completed

and active at the time the survey was made. Others were pending

or had been abandoned. Finally, there were unregistered uses of

the name "Fairway" for goods and services relating to lawns and

gardens, as shown by surveys of telephone books.

In May, 1991, Vigoro decided on the Fairway Green name.

It filed its trademark application on May 20, 1991 and introduced

the new product line at the National Hardware Show in August,

1991. The Hardware Show was the first notice Fisons had of

Vigoro's use of the name "Fairway Green." By June, 1992, Vigoro

had spent over $500,000 on advertising and promotion and had sold

approximately $1.3 million of Fairway Green products in 33

states. Fisons protested Vigoro's attempt to register the

trademark on September 26, 1991 and filed a suit in Delaware

Chancery Court on January 10, 1992; Vigoro removed it to United

States District Court.

Fairway Green fertilizer is sold in a heavy paper bag.

The background color of the bag is green, red, purple or magenta,

depending on which of four varieties of the fertilizer it

contains. On the front of the bag is a large yellow rectangle

that has in white on purple the words "Vigoro" at the top and

"Premium Lawn Fertilizer" just below the middle. Between these

8

two, in larger green letters with yellow highlighting borders,

are the words "Fairway Green." The word "Fairway" arches over

the word "Green," and in the arch is a golf course green

containing a golf ball, cup, and a pin with a red triangular

flag. Behind the golf course green is a yellow setting sun with

blue rays. On the package is the statement: "Keeps grass green

longer with fewer clippings when compared with soluble

fertilizers. Contains the controlled-release nitrogen used on 70

of America's top 100 golf courses. Environmentally-oriented,

formulated without nitrates."

C. Purchase and Use of the Products

Fairway peat moss and Fairway Green fertilizer occupy

the same segment of the lawn and garden products market, the

"fertilizer/soil conditioner" segment. They are frequently used

together to prepare the soil for planting, but the use of peat

moss may cut down on the use of fertilizer, as noted on the

Fairway peat moss package. The two products are both low-cost

items,0 and there was testimony that consumers who use these

products typically spend very little time deciding which product

to buy. Peat moss and lawn and garden fertilizers are often

displayed in the same area of stores, and both target homeowners

who do their own lawn and garden work. A number of other

companies selling lawn and garden products, including the market

0

A 4 cubic foot bag of Fairway peat moss has a retail price of

approximately $8.00 - $15.00; a 20-25 pound bag of Fairway Green

fertilizer has a retail price of approximately $8.00 - $15.00,

with discounts and rebates.

9

leader, O.M. Scott, sell both peat moss and fertilizer; Vigoro

sells bark mulch as well as fertilizer.

II.

"The law of trademark protects trademark owners in the

exclusive use of their marks when use by another would be likely

to cause confusion." Interpace Corp. v. Lapp, Inc., 721 F.2d

460, 462 (3d Cir. 1983); see, Ford Motor Co. v. Summit Motor

Products, Inc., 930 F.2d 277, 291-93 (3d Cir.), cert. denied, 112

S.Ct. 373 (1991), and authorities cited therein; Scott Paper Co.

v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1228-29 (3d Cir.

1978). To prove trademark infringement, a plaintiff must show

that: (1) the mark is valid and legally protectable; (2) the mark

is owned by the plaintiff; and (3) the defendant's use of the

mark to identify goods or services is likely to create confusion

concerning the origin of the goods or services. Ford Motor Co.,

930 F.2d at 291 (citing Opticians Ass'n of America v. Independent

Opticians of America, 920 F.2d 187, 192 (3d Cir. 1990)).

The first two requirements, validity and legal

protectability, are proven where, as here, a mark was federally

registered and has become "incontestible" under the Lanham Act,

15 U.S.C. §§ 1058 and 1065.0 Ford Motor Co., 930 F.2d at 291

(citing Opticians Ass'n, 920 F.2d at 194). If the mark has not

0

A trademark becomes incontestable after the owner files

affidavits stating that the mark has been registered, that it has

been in continuous use for five consecutive years, and that there

is no pending proceeding and there has been no adverse decision

concerning the registrant's ownership or right to registration.

10

been federally registered or, if registered, has not achieved

incontestability, validity depends on proof of secondary meaning,

unless the unregistered mark is inherently distinctive. Ford

Motor Co., 930 F.2d at 291 (citing A.J. Canfield Co. v.

Honickman, 808 F.2d 291, 296 (3d Cir. 1986)). The mark in this

case is both registered and incontestible.

A plaintiff must also prove the third requirement, the

likelihood of confusion, which exists "when the consumers viewing

the mark would probably assume that the product or service it

represents is associated with the source of a different product

or service identified by a similar mark." Dranoff-Perlstein

Assoc. v. Sklar, 967 F.2d 852, 862 (3d Cir. 1992) (internal

quotations omitted). "Proof of actual confusion is not

necessary; likelihood of confusion is all that need be shown."

Ford Motor Co., 930 F.2d at 292 (internal citations omitted).0

The showing of proof plaintiff must make for this requirement

depends on whether the goods or services offered by the trademark

0

Some actions brought under the Lanham Act require proof of

actual confusion and others do not. In an action brought under

sections 32 and 43(a) of the Lanham Act for trademark

infringement, 15 U.S.C. §§ 1114(1) and 1125(a)(1)(A), plaintiff

need not provide proof of actual confusion; he need only show

likelihood of confusion. Ford Motor Co., 930 F.2d at 292. In an

action brought under another part of section 43(a) of the Lanham

Act for false advertising, 15 U.S.C. § 1125(a)(1)(B), plaintiff

need not prove the challenged advertising misled the public if he

can show it was literally false. However, if his claim is not

that the advertising was false but that it was misleading, he

must prove the public was actually misled or confused by it.

Johnson & Johnson-Merck Consumer Pharmaceuticals Co. v. Rhone-

Poulenc Rorer Pharmaceuticals, 19 F.3d 125, 129-30 (3d Cir.

1994); Sandoz Pharmaceuticals Corp. v. Richardson-Vicks, Inc.,

902 F.2d 222, 228-29 (3d Cir. 1990).

11

owner and the alleged infringer are in direct competition. "Where

the trademark owner and the alleged infringer deal in competing

goods or services, the court need rarely look beyond the mark

itself." Lapp, 721 F.2d at 462 (citations omitted). The court

focuses on the marks to determine whether they are "confusingly

similar." Country Floors, Inc. v. Gepner, 930 F.2d 1056, 1063

(3d Cir. 1991). 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.

To determine likelihood of confusion where

the plaintiff and defendant deal in non-

competing goods or services, the court must

look beyond the trademark to the nature of

the products themselves, and to the context

in which they are marketed and sold. The

closer the relationship between the products,

and the more similar their sales contexts,

the greater the likelihood of confusion. Once

a trademark owner demonstrates the likelihood

of confusion, it is entitled to injunctive

relief.

Lapp, 721 F.2d at 462 (citations omitted).

Likelihood of confusion is also the test for actions

brought under section 43(a) of the Lanham Act, 15 U.S.C.

§1125(a)(1)(A) for unfair competition to prevent false

representations as to the source or origin of goods or services

by a mark confusingly similar to one already in use. See, e.g.,

Sun-Fun Products, Inc. v. Suntan Research & Development Inc., 656

F.2d 186, 192 (5th Cir. Unit A Sept. 1981) (factors relevant to

unfair competition claim under 15 U.S.C. § 1125 "essentially the

same" as those relevant to trademark infringement claim under 15

U.S.C. § 1114).

12

A. Likelihood of Confusion Under the Lanham Act.

We have adopted a ten-factor test to determine

likelihood of confusion in the market place as to a product's

source in cases of alleged trademark infringement and unfair

competition by a producer of a non-competing product. Dranoff-

Perlstein, 967 F.2d at 862-63 (3d Cir. 1992); Ford Motor Co., 930

F.2d at 293; Lapp, 721 F.2d at 463; Scott Paper, 589 F.2d at

1229. They are:

(1) degree of similarity between the owner's mark and

the alleged infringing mark;

(2) the strength of the owner's mark;

(3) the price of the goods and other factors indicative

of the care and attention expected of consumers when making a

purchase;

(4) the length of time the defendant has used the mark

without evidence of actual confusion arising;

(5) the intent of the defendant in adopting the mark;

(6) the evidence of actual confusion;

(7) whether the goods, though not competing, are

marketed through the same channels of trade and advertised

through the same media;

(8) the extent to which the targets of the parties'

sales efforts are the same;

(9) the relationship of the goods in the minds of

consumers because of the similarity of function; and

13

(10) other facts suggesting that the consuming public

might expect the prior owner to manufacture a product in the

defendant's market, or that he is likely to expand into that

market.

In Lapp, we applied these factors to decide an issue of

trademark protection where two parties used the same trademark on

non-competing products. The Lapp Division of plaintiff Interpace

Corporation ("Lapp-Interpace") made and sold ceramic insulators

under the "Lapp" trademark. The trademark was registered in

1953. Defendant, Lapp, Inc., the U.S. marketing arm of a German

corporation, had distributed wire, cable and related electrical

hardware in the U.S. under the names "Lapp" and "Lapp Cable"

since 1977 but had never applied for federal registration of its

mark. Lapp-Interpace sued under the Lanham Act to enjoin Lapp,

Inc., from using the "Lapp" name on its products. The district

court had dismissed the complaint because of its reading of Scott

Paper. We reversed, holding that Scott Paper mandated judgment

for the plaintiff. Lapp, 721 F.2d at 462.

The district court made factual findings in every

relevant area of inquiry, but it did not formally apply the Scott

Paper factors. Lapp, 721 F.2d at 463. We applied them and found

they weighed in favor of the plaintiff. While the parties'

sales efforts at that time were not directed to the same targets,

there was evidence that they would likely clash in the future;

defendant, which had previously sold wire and cable for use in

electrical components shipped to Europe and conforming to

European specifications, had begun to manufacture wire and cable

14

that met United Stated specifications. We noted "[t]his

development considerably increase[d] the overlap in the parties'

actual and potential customer pool," id. at 464, and determined

plaintiff's ceramic insulators and defendant's wire and cable

were closely related functionally. Both were basic electrical

components and were often used together.

We concluded customers would find it natural for the

manufacturer of Lapp ceramic insulators and pole hardware to

expand into wire and cable, and Lapp-Interpace introduced

evidence it planned to do just that. We noted:

The likelihood-of-expansion factor is pivotal

in non-competing products cases such as this.

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, as it does here, that the trademark

owner will soon enter the defendant's field,

this final factor weighs heavily in favor of

injunctive relief.

Id. (citation omitted). We noted the purpose of the ten-factor

analysis was to determine likelihood of confusion in those cases

where the trademark owner had not yet entered the defendant's

market. The factors are of importance here, where the markets

for peat moss and fertilizer overlap slightly, but are not in

direct competition. The two products are often used together.

Fisons has not yet entered the consumer fertilizer market, but

claims it has plans to do so and introduced evidence to that

effect.

B. Reverse Confusion

15

Plaintiffs under the Lanham Act also rely on "reverse

confusion" or "dilution" of trademark theories that have been

adopted by a number of other courts of appeal.0 Ordinarily, one

expects that the new or junior user of the mark will use to its

advantage the reputation and good will of the senior user by

adopting a similar or identical mark. Reverse confusion occurs

when a larger, more powerful company uses the trademark of a

smaller, less powerful senior owner and thereby causes likely

confusion as to the source of the senior user's goods or

services. See Sands, Taylor & Wood Co. v. Quaker Oats Co., 978

F.2d 947 (7th Cir. 1992) (Quaker Oats Co.'s use of "Thirst-Aid"

in advertising for Gatorade was trademark infringement of

"Thirst-Aid" registered trademark owned and formerly used by

small Vermont company); Banff, Ltd. v. Federated Dep't Stores,

Inc., 841 F.2d 486 (2d Cir. 1988) (marketer of women's clothing

with unregistered trademark "Bee Wear" could enjoin Bloomingdales

from using term "B-Wear" in its stores and on its clothes);

Ameritech, Inc. v. American Information Technologies Corp., 811

F.2d 960 (6th Cir. 1987) (use by defendant holding company for

five midwestern Bell telephone companies of unregistered trade

name and mark of plaintiff, a small Ohio corporation that

reclaimed industrial oils, might cause consumers to assume

plaintiff was subsidiary of defendant); Capital Films Corp. v.

Charles Fries Productions, Inc., 628 F.2d 387 (5th Cir. 1980)

0

While we have not previously adopted these theories, in Lapp, we

spoke of protecting the market for expansion by a senior user of

a trademark, one of the considerations in reverse confusion. See

Lapp, 721 F.2d at 464.

16

(reverse confusion doctrine could be applied where defendants,

including American Broadcasting Company, planned to produce movie

on Lee Harvey Oswald bearing same title as movie produced by

small production company); Big O Tire Dealers, Inc., v. Goodyear

Tire & Rubber Co., 561 F.2d 1365 (10th Cir. 1977) (reverse

confusion occurs where "infringer's use of plaintiff's mark

results in confusion as to origin of plaintiff's product"). In

reverse confusion,

the junior user saturates the market with a

similar trademark and overwhelms the senior

user. The public comes to assume the senior

user's products are really the junior user's

or that the former has become somehow

connected to the latter. The result is that

the senior user loses the value of the

trademark -- its product identity, corporate

identity, control over its goodwill and

reputation, and ability to move into new

markets.

Ameritech, 811 F.2d at 964.

Without the recognition of reverse confusion, smaller

senior users would have little protection against larger, more

powerful companies who want to use identical or confusingly

similar trademarks.

The logical consequence of [failing to

recognize reverse confusion] would be the

immunization from unfair competition

liability of a company with a well

established trade name and with the economic

power to advertise extensively for a product

name taken from a competitor. If the law is

to limit recovery to passing off, anyone with

adequate size and resources can adopt any

trademark and develop a new meaning for that

trademark as identification of the second

user's products.

17

Big O Tire Dealers, 561 F.2d at 1372 (quoting Big O Tire Dealers

v. Goodyear Tire & Rubber Co., 408 F. Supp. 1219, 1236 (D. Colo.

1976)).

Although we have not yet adopted the doctrine of

reverse confusion in a trademark case, we do so here and endorse

the statement of the United States Court of Appeals for the

Second Circuit:

The objectives of [the Lanham] Act -- to

protect an owner's interest in its trademark

by keeping the public free from confusion as

to the source of goods and ensuring fair

competition -- are as important in a case of

reverse confusion as in typical trademark

infringement. 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. Consequently, we hold that

reverse confusion . . . is actionable under

§43(a) of the Lanham Act.

Banff, 841 F.2d at 490-91 (citation omitted).

III.

On appeal, Fisons contends the district court

misapplied the relevant law in finding there was little

likelihood of confusion.0 We have jurisdiction under 28 U.S.C. §

1291.

0

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

Sheet Metal Workers Int'l Assn., Local 19 v. 2300 Group, Inc.,

949 F.2d 1274, 1278 (3d Cir. 1991), and exercise plenary review

over its interpretation, application and conclusions of law.

Tudor Dev. Group v. United States Fidelity & Gaur. Co., 968 F.2d

357, 359 (3d Cir. 1992). We review the cross-appeal of a denial

of attorneys' fees under the Lanham Act for abuse of discretion.

Standard Terry Mills, Inc. v. Shen Mfg. Co., 803 F.2d 778, 782

(3d Cir. 1986).

18

In this case, the mark is registered and incontestible,

so plaintiff had to show only likelihood of confusion to be

entitled to relief. Because the goods in question are not in

direct competition, the district court applied the ten-factor

test of Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir.

1983). The district court found "purchasers of ordinary

intelligence" were unlikely to confuse the Fisons' Fairway

trademark with Vigoro's Fairway Green mark. On appeal, Fisons

contends the court misapplied the Lapp factors and should have

applied the law of reverse confusion.

In its analysis of the likelihood of confusion, the

district court combined some of the ten factors set out in Ford

Motor Co. v. Summit Motor Products, Inc., 930 F.2d 277, 293 (3d

Cir. 1991) and Lapp and omitted others. We follow its outline

and note the corresponding Lapp factors in parentheses.

A. Channels of Trade and Evidence of Actual Confusion (Lapp

factors (6), (4), (7), (8) and (3)).

The district court stated:

These two products, fertilizer and peat

moss, are sold in similar channels of trade,

including retail home and garden supply

stores, and they are directed to the same or

similar purchasers, homeowners who do their

own lawn and garden care. With Vigoro

placing its product in the market in August

of 1992, and having implemented an extensive

plan for promotion and advertising in that

market, one would have expected that, if

there were a substantial risk of actual

confusion in the market place, the plaintiff

would have come forward at the trial in July

19

of 1991 with some evidence of that actual

confusion. It did not.

Fisons Horticulture, slip op. at 8. Although acknowledging the

channels of trade (Lapp factor (7)) and the target audience (Lapp

factor (8)) were the same or similar, the district court did not

weigh these similarities in Fisons' favor. Instead, it appeared

to assume that because of these similarities, plaintiff should

have been able to collect and present evidence of actual

confusion (Lapp factor 6)) if there had been any risk or

likelihood of confusion. Because plaintiff did not present such

evidence, the court apparently failed to count the similarities

in channels of trade and target audience in Fisons' favor. The

district court misapplied the law here. In Lapp, we did not

discount the strength of plaintiff's case in one area because of

weakness in another; we weighed each factor separately.0 More

importantly, while evidence of actual confusion would strengthen

plaintiff's case, it is not essential. As we stated in Lapp,

"Once a trademark owner demonstrates likelihood of confusion, it

is entitled to injunctive relief." Lapp, 721 F.2d at 462.

Furthermore, the district court's conclusion that any

evidence of actual confusion (Lapp factor (6)) would have

appeared in the time the two products were on the market (Lapp

0

This is not to say that all factors must be given equal weight.

The weight given to each factor in the overall picture, as well

as its weighing for plaintiff or defendant, must be done on an

individual fact-specific basis. Not all of the factors are

present in every case. We have emphasized the importance of

similarity of the marks in likelihood of confusion, Ford Motor

Co., 930 F.2d at 293, but we have not ranked the factors

otherwise.

20

factor (4)) may not be warranted in this case. The district

court stated that Vigoro had placed its product in the market in

August, 1991, a year before the start of the trial, but that

finding was in error. August, 1991 was the date of the trade

show when Vigoro first displayed its new product, not the date of

distribution to retail outlets or even to distributors. The

fertilizer was not shipped to distributors until January 1992 and

probably was not offered to consumers until a month or more after

that. The test is the likelihood of confusion from the

perspective of ordinary consumers, not from the perspective of

people in the trade. See Ford Motor Co., 930 F.2d at 297. By

the start of trial, the product had been available to consumers

for less than six months.

When parties have used similar marks for a sufficient

period of time without evidence of consumer confusion about the

source of the products, there is an inference that future

consumers will not be confused either. See e.g. Scott Paper, 589

F.2d at 1230 (finding no likelihood of confusion in part because

"defendant's mark had been utilized . . . for over forty years

without any evidence of actual confusion."). In this case, the

district court will have to reevaluate Lapp factor (4) in light

of the fact that Vigoro's produce was not available to consumers

until the winter or spring of 1992. In addition, the court

should take into account that the products were ones consumers

21

spend little time and care in selecting; in the case of such

products, confusion as to their origin may pass unnoticed.0

B. Similarity of the Two Marks (Lapp factor (1)).

As we have said, degree of similarity of the marks may

be the most important of the ten factors in Lapp. Ford Motor

Co., 930 F.2d at 293. In considering this factor, the district

court noted the obvious similarities in Fisons' and Vigoro's

marks. "Both include the word fairway. Both attempt to

associate the product with golf, and both do so by using a

package design that has a golf course green, a pin on the green

and a red triangular flag on the pin [as opposed to the

rectangular flag generally found on golf courses]." Fisons

Horticulture, slip op. at 8. The court, however, declined to

find these similarities confusing. It stated:

0

Because the products at issue represent a small investment for

the consumer, this may not be a case in which actual confusion

would readily manifest itself to a manufacturer. The products

are not likely to malfunction. If the consumer thinks Fairway

peat moss and Fairway Green fertilizer are produced by the same

company, the manufacturers may not know. "Purchasers are unlikely

to bother to inform the trademark owner when they are confused

about an inexpensive product." Beer Nuts v. Clover Club Foods

Co., 805 F.2d 920, 928 (10th Cir. 1986); see also Union Carbide

Corp. v. Ever-Ready, Inc., 531 F.2d 366, 383 (7th Cir.), cert.

denied, 429 U.S. 830 (1976).

The court did not discuss Lapp factor (3), the price of

the goods and other factors indicative of the care and attention

expected of ordinary consumers when making a purchase. The

greater the care and attention, the less the likelihood of

confusion. Although the district court made no finding on this

factor, there was uncontested evidence in the record that

consumers spend little time and attention deciding which of the

low-cost products to buy in this market.

22

[W]hile the two marks incorporate the word

[fairway]0, they do so in ways that suggest

somewhat different things. Fairway suggests

a thing or a place, a golf course fairway.

Fairway Green suggests a color, the color of

a golf course fairway (although including a

drawing of a golf course green on the package

may lead one to associate Fairway Green with

the green on a golf course). The names alone

do not, therefore suggest a risk of

confusion.

Id. at 8-9 (footnote added). The court went on to note that

while there were some similarities in the packaging, the

differences in design, color, and materials were so substantial

they tended to differentiate the products and sellers.0 Id. at

9.

The fact that there may be some differences in what the

two names suggest is not alone enough to conclude the names are

not confusingly similar. Vigoro's use of Fisons' entire

trademark, "Fairway," in an arc over a descriptive word, "green,"

suggests a likelihood of confusing similarity. "[A] subsequent

user may not avoid likely confusion by appropriating another's

entire mark and adding descriptive or non-descriptive matter to

it." J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair

Competition, § 23:15[8] at 23-102 (3d ed. 1992). Vigoro contends

that courts have not recognized such a rule explicitly, but this

court and others have recognized it implicitly. In Lapp, we

0

The district court's opinion used the word "green" here, but it

must have meant "fairway," because both marks contain only one

common word, "fairway."

0

Fisons pointed out the similarities in the pictures of golf

course greens on the packages, but made no claim for trade dress

infringement. However, similarity in trade dress is "highly

probative" of likelihood of confusion. Ford Motor Co., 930 F.2d

at 297.

23

found the trademarks "Lapp" and "Lapp Cable" identical for all

practical purposes. 721 F.2d at 463. See also Tree Tavern

Products, Inc. v. Conagra, Inc., 640 F.Supp. 1263, 1270 (D. Del.

1986) ("[S]imilarity between the marks 'Side Dish' and 'Banquet

Side Dish for One' is obvious"); Country Floors, Inc. v. Gepner,

930 F.2d 1056 (3d Cir. 1991) (where dominant portions of two

marks, "Country Floors" and "Country Tiles," are the same,

confusion is likely). Here, the similarity of marks resembles

that in Lapp. As Fisons correctly noted, trademark infringement

does not require exact copying of the trademark as the owner uses

it. "The marks need not be identical, only confusingly similar."

Merchant & Evans, Inc. v. Roosevelt Bldg. Products Co., 963 F.2d

628, 636 (3d Cir. 1992) (quoting Country Floors, 930 F.2d at

1063). They are confusingly similar if ordinary consumers would

likely conclude that Fairway peat moss and Fairway Green

fertilizer share a common source, affiliation, connection or

sponsorship. Sands, Taylor & Wood Co. v. Quaker Oats Co., 978

F.2d 947, 957 (7th Cir. 1992); see also International Kennel

Club, Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1089 (7th Cir.

1988); M. Kramer Mfg. Co. v. Andrews, 783 F.2d 421, 449 (4th Cir.

1986).

In analyzing the appearance of the products, as in

analyzing their names, the district court did not seem to focus

on the overall impression. As the United States Court of Appeals

for the Second Circuit stated, the test for determining the

similarity of the marks is "whether the labels create the 'same

overall impression' when viewed separately." Banff, Ltd. v.

24

Federated Dep't Stores, Inc., 841 F.2d 486, 492 (2d Cir. 1988)

(citations omitted). See American Auto. Ass'n. v. AAA Ins.

Agency, Inc., 618 F. Supp. 787, 792 (W.D.Tex. 1985) (In

determining whether two marks are confusingly similar,

appropriate test is not side-by-side comparison of marks, the

emphasizing differences in detail, but whether average consumer,

on encountering one mark in isolated circumstances of marketplace

and having only general recollection of the other, would likely

confuse or associate the two.) In Ford Motor Co., 930 F.2d at

293, we stated:

Perhaps the most important of these [10]

factors is the first on the Scott Paper list:

the degree of similarity between the two

marks. We recently held that "if the overall

impression created by marks is essentially

the same, 'it is very probable that the marks

are confusingly similar.'"

Id. at 293.

We conclude the district court misapprehended the legal

standard when it undertook a detailed analysis of the differences

in the marks rather than focusing on the overall impression

created by them.

25

C. Strength of the Fairway Mark (Lapp factor (2)).

The district court credited Fisons' evidence of

strength of its mark: that the mark was incontestible within the

meaning of the Lanham Act, 15 U.S.C. §§ 1058, 1065,0 that it was

a strongly suggestive mark bordering on being arbitrary, and that

it had been in use for thirty years. However, the court

concluded:

This list of examples of the strength of

the Fisons mark is not particularly

compelling evidence of risk of confusion.

Fisons has not, for example, shown that its

FAIRWAY mark is uncommon, or contains an

unusual use of the word; nor has it shown

that it has built up the strength of the mark

over the years with a substantial economic

investment that can be confirmed by evidence

of a depth of consumer awareness of the mark

and its product. Fisons' failure to offer

this evidence undermines its argument that

FAIRWAY is, in fact, a strong mark.

Fisons Horticulture, slip op. at 10. Fisons contends the

district court applied incorrect standards in ignoring its

evidence of strength and using other tests for the strength of

its mark. Fisons argues its mark qualifies for protection

because of its distinctiveness. Trademark law recognizes

categories of marks based on their levels of inherent

distinctiveness. From least to most distinctive, they are: (1)

generic; (2) descriptive; (3) suggestive; (4) arbitrary; and (5)

fanciful.0 Two Pesos, Inc. v. Taco Cabana, Inc., 112 S.Ct. 2753,

0

For the meaning of "incontestible" under the Lanham Act, see,

supra, n. 7.

0

Sometimes, only four categories are used, with arbitrary and

fanciful grouped together. See e.g. Dranoff-Perlstein Assoc. v.

Sklar, 967 F.2d 852, 855 (3d Cir. 1992).

26

2757 (1992). The latter three categories are deemed "inherently

distinctive" and are entitled to protection. Id. The word

"green" is so common that it has no trademark significance when

applied to lawn and garden products, but there was expert

testimony, which the district court accepted, that the term

"Fairway" was either suggestive or arbitrary.0 It could

therefore qualify for protection.

The district court focused on Fisons' failure to show

that its mark, "Fairway," was uncommon or contained an unusual

use of the word. The fact that a word is common does not

necessarily make it weak or unworthy of protection as a

trademark; the district court's focus on an unusual use of the

word is closer to mark. As the United States Court of Appeals

for the Sixth Circuit stated, "The significant factor is not

whether the word itself is common, but whether the way the word

is used in a particular context is unique enough to warrant

trademark protection." Wynn Oil Co. v. Thomas, 839 F.2d 1183,

1190 n.4 (6th Cir. 1988). The words "shell," "camel" and "apple"

are not uncommon, but they are arbitrary when applied to

gasoline, cigarettes and computers. 1 McCarthy on Trademarks,

0

Arbitrary trademarks are ones that do not describe any quality

or characteristic of the goods or services for which they are

used. The mark "V-8" on juice made from eight different

vegetables was held to be arbitrary. Standard Brands, Inc. v.

Smidler, 151 F.2d 34 (2d Cir. 1945). As a result of advertising,

consumers came to associate the mark with such a drink, but

without advertising, no one could have reasonably expected

consumers to associate V-8 with a vegetable juice cocktail. Id.;

see also 1 McCarthy on Trademarks § 11.04[1].

27

§11:26[3].0 Similarly, the term "Fairway," is not uncommon, but

when applied to peat moss, Fisons' expert stated it ranked

between arbitrary and suggestive on the scale of distinctiveness.

Fisons therefore presented evidence that its use of the common

term was unusual enough that it could qualify for trademark

protection.

Distinctiveness on the scale of trademarks is one

measure of a mark's strength. See, e.g., Nutri/System Inc. v.

Con-Stan Industries, Inc., 809 F.2d 601, 605 (9th Cir. 1987).

Commercial strength, or marketplace recognition of the mark, is

another. See e.g. Ford Motor Co., 930 F.2d at 297. Vigoro

contends the registration and use of "Fairway" as a trademark by

third parties for related products and services undermines

Fisons' claim of the strength of its mark. O.M. Scott registered

a trademark, "Super Fairway," for commercial fertilizer in 1989,

and six other companies have active or pending registrations of

marks using the term "Fairway" for grass seed, lawn and garden

machinery and equipment, and lawn services. While other

registrations and uses of Fairway for related products and

services would make the mark less strong if they were in the same

market, their use in different markets and for products and

services that are not closely related does not necessarily

undermine Fisons' claim of strength.

0

McCarthy refers to the conclusion that a common word is

automatically "weak" as a trademark as the 'Common Word' fallacy.

1 McCarthy on Trademarks § 11.26[3].

28

The district court found Fisons had not demonstrated it

had built up consumer awareness of the mark and its product

through substantial investment and concluded Fisons' failure to

offer evidence of commercial strength "undermines its argument

that FAIRWAY is, in fact, a strong mark." Fisons Horticulture,

slip op. at 10. If this were a case of forward confusion, rather

than reverse confusion, the district court would be correct in

giving considerable weight to evidence of commercial strength, or

its absence.

But in a case of reverse confusion, the evidence of

commercial strength is different from what we expect in a case of

forward confusion, where the junior user tries to palm off his

goods as those of the senior user. In forward confusion, the

junior user trades on the senior user's good name; it is

therefore saved much of the expense of advertising to create

market recognition of its mark. In reverse confusion, the junior

user is typically a wealthier, more powerful company who can

overwhelm the market with advertising. An aggressive junior user

may thereby achieve greater commercial strength in a short period

of time than the senior user has after years of marketing its

product. See, e.g., Big O Tire Dealers, Inc. v. Goodyear Tire &

Rubber Co., 561 F.2d 1365, 1367-68 (10th Cir. 1977) (in one year,

defendant Goodyear spent over $9,690,000 in massive, nationwide

promotional campaign using "Bigfoot" trademark of plaintiff, a

small tire-buying organization with total net worth of $200,000).

"The result is that the senior user loses the value of the

trademark -- its product identity, corporate identity, control

29

over its goodwill and reputation, and ability to move into new

markets." Ameritech, Inc. v. American Information Technologies

Corp., 811 F.2d 960, 964 (6th Cir. 1987). In one year, Vigoro

spent over $500,000 on advertising its new product, Fairway

Green. That is approximately the amount of Fisons' total yearly

sales of Fairway peat moss.

Fisons' Fairway mark was strong on the scale of

trademarks and in active use when Vigoro started using the

Fairway Green mark, but it was commercially weak. The district

court, in treating this case like one of forward confusion, put

great emphasis on the lack of commercial strength of Fisons' mark

and virtually none on its distinctiveness. In reverse confusion,

the mark of the senior user is typically weaker commercially than

that of the junior user. On remand, the strength of Fisons' mark

will have to be reevaluated in light of our adoption of reverse

confusion and its distinctiveness as well as its commercial

strength will have to be considered.

D. Vigoro's Intent in Adopting the Mark (Lapp factor (5)).

The district court had the following to say about

Vigoro's intent:

The relevant intent inquiry in a likelihood

of confusion case is "whether the defendant

adopted a mark with the intent of promoting

confusion and appropriating the prior user's

good will." W.W.W. Pharmaceutical Co., Inc.

v. The Gillette Co., 23 U.S.P.Q.2d 1609, 1619

(S.D.N.Y. 1992), aff'd, 1993 U.S. App. LEXIS

1051 (2d Cir. 1993). There is no proof that

Vigoro adopted the name Fairway green in an

attempt to benefit from the general good will

developed by Fisons in its FAIRWAY mark.

30

Fisons Horticulture, slip op. at 10.

While the inquiry the district court identifies as the

"relevant intent inquiry" is important, it is appropriate to

cases of forward confusion, not reverse confusion. In the latter

type of case, the junior user does not seek to trade on the good

will and name of the senior user; instead he overwhelms it.

The intent inquiry appropriate to this case is more

like one we identified in Lapp in relying on the district court's

finding that Lapp, "while it may have acted innocently, was

careless in not conducting a thorough name search for American

uses of the name." Lapp, 721 F.2d at 463. The questions the

district court should consider here are whether Vigoro conducted

an adequate name search for other companies marketing similar

goods under trademarks including the name "Fairway," and whether

it followed through with its investigation when it found there

were such companies. Did Vigoro consider the likelihood of

confusion with other companies' marks and products (as opposed to

considering the likelihood that someone would contest its new

mark)? Did it attempt to contact companies using a similar mark,

such as Fisons? Was Vigoro careless in its evaluation of the

likelihood of confusion?

31

E. Fisons' Plans to Enter the Market (Lapp factor (10)).

The district court found:

Fisons currently sells fertilizer in

Canada. At the trial it offered some

evidence that it had plans to expand that

business into the United States. There was

not sufficient evidence on this point to

suggest that this possibility should be a

factor in an analysis of a risk of possible

likelihood of confusion.

Fisons Horticulture, slip op. at 10. As this factor appears in

Lapp, it includes "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." 721 F.2d at 463-64. The district court considered only

evidence of planned expansion, the second part of the test. Such

a narrow view is not warranted.

Under Lapp, the court looks not only at the likelihood

of expansion, but also at facts "suggesting the consuming public

might expect the prior owner to manufacture a product in the

defendant's market." 721 F.2d at 463. In a case of reverse

confusion, it may also consider facts suggesting the consuming

public might expect the junior owner to manufacture a product in

the senior user's market. One fact suggesting this possibility

is that other companies market both products. Fisons presented

evidence that the market leader, O.M. Scott, sold both peat moss

and fertilizer under the same brand name, Hyponex. In addition,

three other lawn and garden companies in this country, Kellog,

Gandini and Fertiloam sell both peat moss and fertilizer under

the same brand name. Therefore, the public is used to seeing

32

both fertilizer and peat moss marketed under the same name by the

same company.

Second, the products are closely related and are used

together in preparing lawns and gardens. Even if other companies

did not market both products, the consuming public might find it

natural for one company to do so. See, e.g., International

Kennel Club, 846 F.2d at 1089 (fact that parties' products are

the kind the public might very well attribute to the same source

provides additional evidence of likelihood of confusion).

Finally, there is Fisons' evidence of planned

expansion. In Lapp, we stated:

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. 2 J.T. McCarthy,

Trademarks and Unfair Competition § 24:5

(1973). When it appears extremely likely, as

it does here, that the trademark owner will

soon enter the defendant's field, this . . .

factor weighs heavily in favor of injunctive

relief.

Lapp, 721 F.2d at 464. In Lapp, where the evidence showed

expansion to be extremely likely, the factor weighed heavily in

plaintiff's favor. If there is evidence of expansion, but it is

less strong, it will weigh less heavily in plaintiff's favor.

F. Relationship of the Goods (Lapp factor (9)).

The district court did not consider this factor, "the

relationship of the goods in the minds of consumers because of

the similarity of function." Fisons' peat moss and Vigoro's

fertilizer are both sold as soil conditioners and meant to be

33

used for the same purpose: to improve the soil for planting. The

question is whether the consumer might therefore reasonably

conclude that one company would offer both of these related

products. In Scott Paper, 589 F.2d at 1230, we noted other cases

in which the relationship of the products was close enough to

lead to the likelihood of confusion and the relationship of those

products: Scarves by Vera, Inc. v. Todo Imports Ltd., 544 F.2d

1167, 1173 (2d Cir. 1976) (women's scarves and apparel with

women's cosmetics and fragrances); James Burrough Ltd. v. Sign of

Beefeater, Inc., 540 F.2d 266, 275 (7th cir. 1976) (liquor with

restaurant selling liquor); Union Carbide Corp. v. Ever-Ready,

Inc., 531 F.2d 366, 381-82 (7th Cir.), cert. denied, 429 U.S. 830

(1976) (batteries and lamps with light bulbs and lamps); Alfred

Dunhill of London, Inc. v. Kasser Distillers Products Corp., 350

F. Supp. 1341 (E.D. Pa. 1972), aff'd without opinion, 480 F.2d

917 (3d cir. 1973) (pipe tobacco and bar accessories with scotch

whisky). See Scott Paper, 589 F.2d at 1230.

In Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1187 (6th

Cir. 1988), the court analyzed this factor under the category,

"Relatedness of the Goods." It assessed the relatedness of the

car care products one company sold to consumers and the bulk car

wax for use in car washes and the car washing service another

company sold under an essentially similar trademark. The court

noted the test was whether the goods were similar enough that a

consumer could assume they were offered by the same source. The

court concluded, "A consumer who was used to buying CLASSIC

products to wash his or her car could easily assume that the

34

makers of CLASSIC products had expanded into the car wash

business." 839 F.2d at 1187.

In this case, the question is whether a consumer who

bought Fisons' peat moss could reasonably assume that the company

had expanded its offerings to include fertilizer or, as would be

more likely in this case of reverse confusion, whether a consumer

who bought or saw the advertising for Fairway Green fertilizer

could reasonably assume that the same source also offered the

Fairway peat moss it saw in the stores.

G. Weighing the Factors

Of the ten factors set out in Ford Motor Co. and Lapp

for determining the likelihood of confusion, the district court

misapplied some and did not consider others. On remand, it

should consider each of the factors and weigh each in a manner

consistent with this opinion and with the other case law.

H. State Law Claims

The district court concluded that Fisons' Lanham Act

claims failed because there was no likelihood of confusion and,

therefore, its state law claims failed as well. Because the

court will reconsider the likelihood of confusion on remand, it

should also reconsider Fisons' state law claims.

IV.

For reasons stated above, we will reverse the judgment

of the district court as to Fisons' claims under the Lanham Act

and remand for a new trial on those claims and the state law

35

claims.0 We will affirm the judgment of the district court

denying Vigoro's claim for attorneys' fees as a prevailing party

under the Lanham Act.

Fisons Horticulture v. Vigoro Industries

No. 93-7224 and 93-7287

GARTH, Circuit Judge, concurring in part and dissenting in part:

The majority opinion has convincingly analyzed this

appeal under Scott Paper Co. v. Scott's Liquid Gold, Inc., 589

F.2d 1225 (3d Cir. 1978) and Interpace Corp. v. Lapp, 721 F.2d

460 (3d Cir. 1983). While I am in wholehearted agreement with

the majority that we must reverse the district court's ruling on

the merits,0 I can see no purpose in remanding for retrial of

Fisons' Lanham Act claims when it is so evident that the marks at

issue here are confusingly similar.

Accordingly, I would reverse the decision of the

district court, enter judgment in favor of Fisons on its Lanham

Act claims, and remand with instructions that the district court

fashion the appropriate relief, and consider Fisons' state

claims.

0

We recognize that an extensive record has already been developed

in this case. We will leave it to the sound discretion of the

district court to determine whether any additional evidence is

appropriate.

0

I also agree with the majority that we must affirm the

district court's denial of Vigoro's request for attorneys' fees

inasmuch as Vigoro is no longer the prevailing party under 15

U.S.C. § 1117.

36

I

The majority's able opinion not only details the

analysis required in Lanham Act cases, but also applies that

analysis to the record before us on appeal. Typically, having

found error in the district court's application of the Lapp

analysis, we would reverse and remand to the district court with

instructions to take actions consistent with the foregoing

opinion.

Nevertheless, I see little need to do so in the present

case. Judge Scirica's majority opinion already has performed the

Scott Paper/Lapp analysis and the requisite balancing. That

analysis can lead to only one conclusion: that the district court

erred in ruling for Vigoro on the merits of Fisons' Lanham Act

claims.

Although we have held that a district court's finding

of similarity does not necessarily compel a conclusion that two

marks are confusingly similar, Merchant & Evans, Inc. v.

Roosevelt Building Products Co., Inc., 963 F.2d 628, 636 (3d Cir.

1992); Country Floors, Inc. v. Gepner, 930 F.2d 1056, 1065 (3d

Cir. 1991), we also have held that "[p]erhaps the most important

of [the] factors is the first on the Scott Paper list: the degree

of similarity between the two marks." Ford Motor Co. v. Summit

Motor Products, Inc., 930 F.2d 277, 293 (3d Cir. 1991). In

Opticians Ass'n of Am. v. Independent Opticians of Am., 920 F.2d

187, 195 (3d Cir. 1990), we held that, "if the overall impression

created by the marks is essentially the same, 'it is very

37

probable that the marks are confusingly similar.'" (Citation

omitted).

As the majority recognizes, in analyzing the appearance

of the products at issue here, the district court failed to focus

on their overall impression. Maj. Op. typescript at 25. One

need only look at the marks themselves to conclude that they are

so similar that one can only wonder how an ordinary consumer of

the goods could be anything but confused by the parties'

indistinguishable use of the FAIRWAY mark. The packaging of the

products, the prominent use of the word "Fairway," and the

inclusion of a triangular flag rising from a tee centered on a

golfing green, are, for all intents and purposes, virtually

identical as to both products. Under Ford Motor Co. and

Opticians Association of America, this similarity all but creates

a presumption of the requisite likelihood of confusion.

Consequently, I see no point in ordering the district

court to revisit this trademark controversy in its entirety, and

compelling the parties to spend additional time, money, and

efforts on re-litigating the Scott Paper/Lapp factors, when the

conclusion to which the district court must come has been

outlined so effectively in the majority's opinion.

II

Accordingly, I would reverse the district court's order

and remand with the direction that the district court enter

judgment for Fisons on its Lanham Act claims. On remand, then,

the district court would have to do no more than fashion the

38

appropriate relief (i.e., frame an injunction, assess damages,

impose or not impose attorneys' fees, costs, interest, etc.) and

resolve Fisons' state law claims, which the district court failed

to address adequately in its initial decision. Because the

majority would dispose of this appeal in a manner which I believe

is wasteful of judicial resources, I dissent from so much of the

majority's opinion as would remand to the district court for

retrial of Fisons' Lanham Act claims.

39