The opinion
CORNELIA G. KENNEDY, Circuit Judge,
concurring.
I agree with the majority of the panel that the District Court was not clearly erroneous in finding that the market survey did not properly measure consumer confusion.
I write separately because I do not believe the majority has fully considered Frisch’s theory with respect to confusion. Frisch’s argues that consumers will be confused because they so strongly associate the name “Shoney’s” with “Big Boy” that they will also assume that “Shoney’s Towne and Country” is also licensed by or associated with “Big Boy”. The majority agrees with the District Court that “Big Boy” is a weak mark. A mark that designates the source is a strong mark, and I agree that “Big Boy” does not strongly designate the source. However, the confusion that is claimed here is not just confusion over the source — it is confusion over whether a particular source is associated with the national “Big Boy” trademark. “Big Boy” is a strong mark in the sense that it is “highly distinctive.” The two marks that need to be compared here are “Shoney’s Big Boy” and “Shoney’s Towne and Country”. Frisch’s argues that a consumer seeing “Shoney’s Towne and Country” will think of “Shoney’s Big Boy”, a mark which Shoney’s cannot use in states in which Frisch’s has the exclusive right to the “Big Boy” mark. The majority reasons that the strength of the name “Shoney’s” reduces the possibility of confusion. However, when we consider Frisch’s association theory and compare the two marks, the strength of the name “Shoney’s”, which is common to both, increases the similarity and thus the likelihood of associating the two marks.
I would permit Frisch’s to pursue its theory of confusion by association. This type of “likelihood of confusion” depends on the existence of actual consumer confusion, however. I agree with the majority’s analysis of the consumer survey presented by Frisch’s and the conclusion that Frisch’s has not established a sufficient likelihood of success on the merits to require issuance of a preliminary injunction. I therefore concur in the majority opinion with the exception of its analysis of the strength and similarity of the marks.