Opposition Brief — Laube v. Sunbeam Corp.

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No. 96-284 3

ja _______ ___________ _]

IN THE

Supreme Court of the United States

OCTOBER TERM, 1996

KIM E, LAUBE, d/b/a

Kim E. LAUBE COMPANY,

Petitioner,

Vv.

SUNBEAM CORPORATION,

Respondent.

On Petition for a Writ of Certiorari to the

United States Court of Appeals

for the Third Circuit

BRIEF IN OPPOSITION FOR RESPONDENT

SUNBEAM CORPORATION

GFORGE P. FAINES

(Counsel of Record)

MICHAEL J. KLINE

JULIE A. MALONEY

THorP, REED & ARMSTRONG

One Riverfront Center

Pittsburgh, PA 15222

(412) 394-2394

Counsel for

Sunbeam Corporation

TE A i I

SSA NTE eM, SAA TE CC RE A LTA CARNE RTO AMR: SMI IHR

WILSON - Epcs PRINTING Co., Inc. - 789-0096 - WasHincron. D.C. 20001

RULE 29.6 STATEMENT

Respondent, Sunbeam Corporation, now known as

Sunbeam Products, Inc., is a wholly-owned subsidiary

of Sunbeam Corporation, formerly known as Sun-

beam-Oster Company, Inc. Respondent Sunbeam Cor-

poration (now known as Sunbeam Products, Inc.)

does not have any non-wholly-owned subsidiaries.

(i)

= ee re eS

TABLE OF CONTENTS

Page

BULL 20.6 STATEMENT .............................................. i

pe Oe Ny sy | Ee ERS Vv

RESET CORSE A 1

ptasmees OF sue CASS... 2

A. Procedural History ................................ SEF cee 2

B. Evidence Presented At The Preliminary Injunc-

A SERIO sae ae a a 4

1. Sunbeam’s Use of A5® as a Trademark __ 4

2. Kim Laube and the Laube A-5 Clipper ...... io 5

3. Confusion Regarding the Laube A-5 Clipper.. 6

REASONS FOR DENYING THE WRIT... 9

I. BECAUSE LAUBE FAILED TO TIMELY

OBJECT TO KEN TURNER’S TESTIMONY

REGARDING RETURNED CLIPPERS, HE

HAS WAIVED HIS RIGHT TO CHALLENGE

THIS TESTIMONY ON APPEAL... 9

Il. BECAUSE THE ADMISSIBILITY OR EX-

CLUSION OF HEARSAY EVIDENCE TO

PROVE ACTUAL CONFUSION NECESSAR-

ILY TURNS UPON THE PARTICULAR

FACTS OF THE CASE PRESENTED, NO

SPLIT EXISTS WITHIN OR AMONGST THE

CIRCUITS REGARDING THE USE OF SUCH

EG ROAR Ree eee 10

A. The Third Circuit’s Decision in Versa

cg BR RECS eet ER a aR oe 11

B. Decisions From Other Circuits... 13

(iii)

TABLE OF CONTENTS—Continued

Page

III. ASSUMING, ARGUENDO, THAT THE THIRD

CIRCUIT TECHNICALLY ERRED IN AP-

PROVING THE USE OF CERTAIN HEAR-

SAY EVIDENCE AS PROOF OF ACTUAL

CONFUSION, THIS ERROR WAS HARMLESS

BECAUSE EVALUATION OF THE OTHER

SCOTT PAPER FACTORS OVERWHELM-

INGLY DEMONSTRATED A LIKELIHOOD

Glee GSN RID shite tena ac ees 15

A. Similarity of the Marks ................................... 16

BB. Berematen OF Gee BEAPUB qn. nao. ...sccccseceeseesenseee 17

C. Price of Goods/Care and Attention of

ID isha idaeitinincGctbeeabbice lguaibdaittalbieniii 18

D. Length of Time Without Actual Confusion.... 18

ie AIT TUE cick icitnincicsebeicnintcgindiminas 18

a I ID si eid scthicccaeais ntaetmmniia dais 19

G. ee CN ee Se 19

H. Targets of the Parties’ Sales Efforts .............. 19

cL. meaner OC Pemeen Co 19

CITA IIIIN scentistnsctpicianhincasctdentnal pembaatonaniccntinicceninmnuprats 20

TABLE OF AUTHORITIES

CASES: Page

Berner Intern. Corp. v. Mars Sales Co., 987 F.2d

Se Se I: BUND i ncdinestebemcicicsebteinchuadehaviamershnnm dicen 17

Century 21 Real Estate Corp. v. Sandlin, 846 F.2d

ee Bo Rt | GER Cae ere eenetee 17

Country Floors v. Partnership of Gepner & Ford,

980 F.2d 1066 (8d Cir. 1901) -........0000.. 2... 16

Duluth News-Tribune v. Mesabi Pub. Co., 84 F.3d

| I eR ees nar et 13

Fisons Horticulture, Inc. v. Vigoro Industries, Inc.,

oe pe Gee Cee Can, S006) ...... erakicc.. 16, 17

Ford Motor Co. v. Summit Motor Products, Inc.,

930 F.2d 277 (3d Cir. 1991), cert. denied sub

nom, Altran Corp. v. Ford Motor Co., 502 U.S.

SE SPIED trssrctonscensihapintaioniagicosendpumennenbbicnaielcadnnes 17, 18

Goodman v. Lukens Steel Co., 482 U.S. 656

2 FOS ELC ROR EER A LABEL A Wie A PRI 14

Harris Market Research v. Marshall Marketing,

948 F.2d 1518 (10th Cir. 1991) 200. cackate Sena 9

International Kennel Club v. Mighty Star, Inc., 846

F Sy. Ft | eee 14

Morris v. U.S. Dept. of Treasury, I.R.S., 813 F.2d

et: ey A eS Aer aeey ee eee 9

Scott Paper Company v. Scott’s Liquid Gold, Inc.,

589 F.2d 1225 (8d Cir. 1978) ..........0000000.... 4, 15, 16, 20

Smith Fiberglass Products, Inc. v. Ameron, Inc.,

eo Oe: a gt et een ee 14

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763

SUED Ai pditicinccthccsc rab ub eslbnitininns tease ohana css see 17

United States v. Johnston, 268 U.S. 220 (1925) ...... 14, 15

Versa Products Co., Inc. v. Bifold Co. (Mfg.) Ltd.,

50 F.3d 189 (3d Cir. 1995), cert. denied, ——

U.S. ——, 116 S. Ct. 54 (1995) 2.00... 11, 12, 13, 16

Vitek Systems, Inc. v. Abbott Laboratories, 675

ae: I Ge MAIR FD ccecknceeiccesennceanceees Satie ch 14

Westward Co. v. Gem Products, Inc., 570 F.Supp.

Rs Ree eR RENE Su 18

IN THE

Suprenw Court uf the United States

OCTOBER TERM, 1996

No. 96-284

Kim E. LAUBE, d/b/a

Kim E. LAUBE COMPANY,

Petitioner,

Vv.

SUNBEAM CORPORATION,

Respondent.

On Petition for a Writ of Certiorari to the

United States Court of Appeals

for the Third Circuit

BRIEF IN OPPOSITION FOR RESPONDENT

SUNBEAM CORPORATION

INTRODUCTION

The Petition for Writ of Certiorari does not pre-

sent any issue warranting this Court’s review. In

arguing that the Third Circuit Court of Appeals erred

in approving the use of certain hearsay evidence as

proof of actual and likely confusion in a trademark

infringement case, petitioner Kim E. Laube, d/b/a

Kim E. Laube Company (“Laube’’) takes extraordi-

nary liberties with the facts and ignores the other

overwhelming evidence which supported the court’s

finding that Laube’s use of a mark which is virtually

identical to Sunbeam’s trademark is likely to cause

confusion.

Petitioner’s argument that there is a conflict within

and among the circuits with respect to the admissi-

bility of hearsay evidence to prove actual confusion

is fallacious. There is no such conflict. The disparate

decisions reached by the various courts that have con-

sidered the issue are not the result of any conflict

in the law, but rather are simply a reflection of the

fact that different factual circumstances lead to dif-

ferent evidentiary rulings.

No two trademark cases are alike. Thus, it would

be virtually impossible for this Court to adopt (as

Petitioner urges) a single rule to deal with the

myriad types of evidence which a trademark infringe-

ment plaintiff might offer to show actual confusion.

The decision to admit such evidence is more properly

left to the trial court which is in a better position to

evaluate all of the evidence and balance the competing

interests.

Even if the Third Circuit technically erred in al-

lowing Sunbeam to use hearsay evidence to prove

actual confusion in this case, the Petition should still

be denied because proof of actual confusion was only

one of nine factors the court considered in finding a

likelihood of confusion between Sunbeam’s trademark

and Laube’s infringing mark. These other factors—

which Laube does not challenge in this Court—over-

whelmingly demonstrate that Laube’s use of Sun-

beam’s trademark is likely to cause confusion.

STATEMENT OF THE CASE

A. Procedural History

Sunbeam Corporation (“Sunbeam”) commenced

this trademark infringement action in January 1992

seeking, inter alia, a preliminary injunction preclud-

ing Laube from using the mark “‘A-5” on, or in con-

nection with, the marketing and distribution of pro-

fessional animal grooming clippers and related prod-

ucts. The A5® mark was coined by Sunbeam ' more

than 30 years ago to market a new product—an elec-

trical animal clipper with detachable blades which

snap on and off. Until April 1991, when Laube (a

former distributor of Sunbeam’s A5® clippers) began

marketing “Laube A-5” clippers, Sunbeam’s use of the

A5® mark had been exclusive. No other animal

grooming equipment manufacturer had ever used the

A5® mark to identify its clippers or clipper blades.

On March 1-3, 1998, then Magistrate Judge Gary

Lancaster held an evidentary hearing on Sunbeam’s

motion for a preliminary injunction. Judge Lancaster

recommended that a preliminary injunction be issued

against Laube, finding that Laube chose to use “A-5”

on his clippers for the very purpose of associating

them with the A5® clippers sold by Sunbeam, and that

Laube’s use of the A-5 mark was likely to cause con-

fusion. 24a. On June 15, 1993, the district court

adopted Judge Lancaster’s report and recommenda-

tion and preliminarily enjoined Laube from using the

A-5 mark.

On May-2, 1994, the Third Cireuit Court of Ap-

peals remanded the case solely because it concluded

that the magistrate judge had not completely evalu-

ated (by making written finding of fact) the likeli-

1 The A5® clippers and clipper blades at issue are marketed

under the Oster® name. Sunbeam and Oster were at one time

owned by the now-defunct Allegheny International. When

Allegheny International emerged from bankrupcy, Sunbeam

and Oster became known as Sunbeam-Oster Company, Inc.,

which later changed its name to Sunbeam Corporation.

hood of confusion factors set forth in Scott Paper Co.

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

1978).

On remand, Magistrate Judge Francis Caiazza (to

whom the case had been assigned when Judge

Lancaster became a district court judge) carefully

considered each of the nine Scott Paper factors. 21a-

27a. Finding that each and every one of the factors

weighed in favor of Sunbeam, Magistrate Judge

Caiazza recommended that the preliminary injunction

be reinstated against Laube. 27a-28a. The district

court judge adopted this recommendation, and its

order was affirmed on appeal. 3a-4a. On May 23,

1996, the Third Cireuit denied Laube’s petition for

rehearing. la-2a.

B. Evidence Presented At The Preliminary Injunction

Hearing

1. Sunbeam’s Use of A5® as a Trademark

In 1962, Sunbeam coined the designation “A5” for

its new clippers.” The “A” and the “5” do not refer

to any characteristic or feature of the clipper. Sun-

beam arbitrarily chose them to market the clipper.

Sunbeam also manufactures A5® blades to be used

in connection with its A5® clippers.

For the past 30 years, Sunbeam has continuously

and exclusively used the trademark A5® (and since

1984 the trademark Golden A5®) in connection with

2In 1998, the United States Patent & Trademark Office

(“PTO”) issued a certificate of registration to Sunbeam for

the trademark A5®. Despite having an opportunity to do so,

Laube did not file any opposition to Sunbeam’s registration

of the A5® mark. The trademark Golden A5® was regis-

tered by the PTO on September 1, 1992. Likewise, no opposi-

tion to this mark was pursued by Laube.

its manufacture and sale of animal clippers and clip-

per blades. Sunbeam’s competitors in the animal

grooming industry manufacture detachable blade

clippers, and in some instances accompanying blades,

however, they do not refer to their clippers or their

blades as either “A5” or “A-5’. In fact, until Laube

began marketing his A-5 clipper, no other animal

grooming equipment manufacture had ever used the

designation “A5” to identify its clippers or clipper

blades.

Sunbeam advertises and promotes its A5® clippers

and blades in a variety of ways, including placing ads

in various trade magazines, using “co-op” advertise-

ments and distributing product catalogs. Over the

years, Sunbeam has spent in excess of $1 million to

advertise and promote its A5® and Golden A5® clip-

pers and blades.

Sunbeam, via its nationwide sales force, sells its

A5® clippers and A5® blades to catalog distributors,

regular distributors, veterinarians, pet grooming pro-

fessionals and retail chain stores which sell directly

to consumers. Sunbeam’s primary sales of A5® clip-

pers and blades are through catalog distributors.

As a result of Sunbeam’s continuous and exclusive

use and promotion of the A5® mark to identify its

clippers and clipper blades, individuals in the pet

grooming industry have come to associate A5® with

Sunbeam and only Sunbeam.

2. Kim Laube and the Laube A-5 Clipper

Laube has been in the animal grooming business

since 1972, when he first began sharpening and re-

pairing clippers and clipper blades in the San Diego,

California area. During the 1980’s, Laube was an

authorized distributor of Sunbeam’s pet grooming

products, including Sunbeam’s A5® clippers and

blades. Sunbeam terminated Laube’s distributorship

when, in contravention of his distributorship agree-

ment, Laube began selling competitors’ clipper

products.

In April 1991, Laube appeared at a trade show in

New Jersey with a cordless animal clipper which he

referred to as the “Laube A-5”. At the time Laube

selected this name for his clipper, he was admittedly

aware of Sunbeam’s use of A5® to identify its clip-

pers and clipper blades. Laube neither sought, nor

received, Sunbeam’s permission to use the A5® mark

on his clippers. In May 1993, while these proceedings

were ongoing, Laube began marketing and distribu-

ting a new product—‘Laube A-5” blades.

Laube’s clipper is available in five colors, including

black. Laube advertises his clipper through his own

promotional material, as well as through ‘‘co-op” ad-

vertisements. Sunbeam’s A5® clipper and Laube’s

A-5 clipper frequently appear side by side in these

co-op advertisements. Laube also promotes his clipper

at trade shows around the country.

3. Confusion Regarding the Laube A-5 Clipper

Shortly after Laube began marketing and distrib-

uting his A-5 clipper, Sunbeam sales representatives

began to receive inquiries from customers requesting

information about, or seeking to purchase, Laube’s

clippers from Sunbeam.

Richard Sporing, one of Sunbeam’s district sales

managers, testified that in September 1991 he at-

tended the Groom-Expo show in Hershey, Pennsyl-

vania. At this trade show, several people approached

Sporing and asked to see Sunbeam’s “new clipper

that comes in different colors and has a battery

pack.” Sunbeam does not make a cordless clipper

with a battery pack, and its A5® clippers are only

available in black and burgundy.

In March 1992, Sporing attended a grooming sem-

inar in Pittsburgh and was again approached by peo-

ple asking to see Sunbeam’s “new” clipper, which they

described as having a battery pack and being avail-

able in different colors. Sporing testified that these

customers specifically indicated to him that they were

confused as to the source of Laube’s clipper because

it was called the ‘“Laube A-5” clipper.

Shortly after this Pittsburgh seminar, Sporing re-

ceived a telephone call from the buyer for Pennsyl-

vania Veterinary Supply (“PVS”), one of Sporing’s

20 largest accounts. The buyer for PVS, who had

apparently seen the Laube A-5 clipper at a trade

show in San Diego, requested information about the

product number, price and other aspects of the clip-

per and expressed an interest in ordering it for

distribution.

In addition to Sporing’s testimony regarding in-

stances of confusion, Sunbeam also offered into evi-

dence several inter-company memoranda which Sun-

beam’s vice president of sales and marketing had re-

ceived from the sales force. These memoranda

described the following incidents:

* Sunbeam’s district sales manager in Florida

noted that a customer at a trade show tried to

order a Laube clipper from Sunbeam, and an-

other customer requested that Sunbeam send

him parts for his Laube clipper.

* Sunbeam’s district sales manager in the Pacific

Northwest recounted an incident at a trade

show where a customer asked to see Sunbeam’s

cordless clipper. The manager showed the cus-

tomer Sunbeam’s Model 125-10 Pro Cord/

Cordless product, at which point the customer

replied, “No, I mean your large pink clipper

with removable blades.” The manager was

approached at another trade show by a cus-

tomer asking to see the Kim Laube A-5.

Sunbeam’s district sales manager in Tennessee

reported that the manager of Sunbeam’s au-

thorized service center in Memuhis called to

inquire about the new model A5 with the

Laube name on it, because he had received one

for blade fitting.

Sunbeam’s district sales manager in California

reported that she had received a call from a

distributor needing to order parts for “our

cordless A5.” The distributor had assumed the

clipper was Sunbeam’s because it said A-5.

Sunbeam’s California sales manager also re-

ported that at the July 1992 WWPSA trade

show, 5 to 10 groomers had approached Sun-

beam’s booth looking for “that bright colored

A5”; “your pink rechargeable”; “your Laube

clipper.”

Finally, Sunbeam offered evidence of actual confu-

sion through the testimony of Ken Turner, who works

for a clipper repair company in Philadelphia. Tur-

ner’s company is an authorized repair service center

for Sunbeam clippers. The company does not repair

Laube clippers and has no affiliation with Laube.

Turner testified that in the year preceding the injunc-

tion hearing, he had received two Laube clippers for

repair. Turner testified that he had received the

clippers because they were still under warranty and

the customers wanted them repaired at no charge.

REASONS FOR DENYING THE WRIT

I. BECAUSE LAUBE FAILED TO TIMELY OBJECT

TO KEN TURNER’S TESTIMONY REGARDING

RETURNED CLIPPERS, HE HAS WAIVED HIS

RIGHT TO CHALLENGE THIS TESTIMONY ON

APPEAL

As noted earlier, Sunbeam offered the testimony

of Ken Turner to show that there had been actual

confusion among consumers as a result of Laube hav-

ing used Sunbeam’s A5® trademark in the name of

his clippers. Turner testified that the authorized

Sunbeam repair center at which he works had re-

ceived two Laube A-5 clippers for repair within the

year preceding the injunction hearing. The clippers

had been sent to the repair center because they were

still under warranty and the cusicmers wanted them

repaired at no charge. -

At no time during Mr. Turner’s testimony did

counsel for Laube object to the purportedly hearsay

nature of such testimony. In fact, counsel for Laube

failed to object to the admissibility of Mr. Turner’s

testimony on any grounds.

Hearsay objections must be raised at the time the

allegedly objectionable testimony is offered at trial.

See, e.g., Morris v. U.S. Dept. of Treasury, I.R.S.,

813 F.2d 343, 347 (11th Cir. 1987) (Party “bound

by answers that are hearsay, if not objected to.’’).

Such objections cannot be raised for the first time on

appeal. See Harris Market Research v. Marshall

Marketing, 948 F.2d 1518, 1525 (10th Cir. 1991)

(court in copyright infringement case refused to con-

sider issue of whether exhibits offered by plaintiff

constituted inadmissible hearsay because this objec-

tion was raised for the first time on appeal). Because

Laube failed to object. to Mr. Turner’s testimony at

the time it was offered, he has waived his right to

raise this issue on appeal. Accordingly, the only re-

maining issue is whether the Third Circuit’s approval

of the district court’s use of Mr. Sporing’s testimony

and the inter-office memoranda to prove actual con-

fusion is in conflict with other decisions of the Third

Circuit or other courts of appeal.

Il. BECAUSE THE ADMISSIBILITY OR EXCLUSION

OF HEARSAY EVIDENCE TO PROVE ACTUAL

CONFUSION NECESSARILY TURNS UPON THE

PARTICULAR FACTS OF THE CASE PRESENTED,

NO SPLIT EXISTS WITHIN OR AMONGST THE

CIRCUITS REGARDING THE USE OF SUCH

EVIDENCE

Petitioner would have this Court believe that two

competing rules of law have developed within and

amongst the circuits regarding the use of hearsay

evidence to prove actual confusion. Petitioner urges

this Court to grant certiorari to resolve this ‘“con-

flict.” Not only is there no conflict, but there are not

even two competing rules of law. The decisions which

various courts have reached have been guided by and

dependent upon the particular facts of each case. In

fact, it would be almost impossible (and certainly in-

advisable) to create a single rule to deal with the

myriad evidentiary issues faced by a court in a trade-

mark infringement action. The admissibility of dif-

ferent types of evidence is best left to the trial judge

who is in a better position to determine—under the

totality of the circumstances—whether, and to what

extent, such evidence proves actual confusion.

A. The Third Circuit’s Decision in Versa Products

Petitioner argues that the Third Circuit’s decision

in this case conflicts with the Third Circuit’s earlier

decision in Versa Products Co., Inc. v. Bifold Co.

(Mfg.) Ltd., 50 F.3d 189 (3d Cir. 1995), cert. de-

nied, —— U.S. —~—, 116 S.Ct. 54 (1995).* The deci-

sion to reject plaintiff’s hearsay evidence in Versa,

while allowing it in this case was dictated by the dis-

parate nature of the infringement claims at issue,

and the quality and relevance of the evidence pre-

sented. There is no conflict.

At issue in Versa was whether defendant had in-

fringed the product configuration of plaintiff’s direc-

tional control valve. In reversing the district court’s

issuance of a permanent injunction, the Third Circuit

repeatedly noted that many of the principles and

rules of law applicable to traditional trademark in-

fringement cases, including application of the Scott

Paper factors, were not relevant, “because of policy

considerations applicable [only] in product configura-

tion cases.” 50 F.3d at 193. The court went on to

note that, “the law of trade dress in product config-

uration will differ in ke» respects from the law of

trademarks. ...” Jd. at 202.

Having established these case specific guidelines,

the Third Circuit in Versa proceeded to reject a_ma-

jority of the findings of fact and conclusions of law

made by the district court. Without discussion (or

* Petitioner made a similar argument in asking the Third

Circuit for a rehearing en banc. The Third Circuit apparently

did not believe that there was such a conflict, denying the

petition for rehearing. 1a-2a. Significantly, Judge Becker, who

authored the Versa opinion was on the panel that rejected

Laube’s appeal.

any indication as to whether its holding was to be ex-

panded beyond product configuration cases), the Third

Circuit held that the district court had “erred in rely-

ing on hearsay evidence for the proposition that

there was actual confusion.” Jd. at 212. The hearsay

evidence at issue consisted of testimony by plaintiff’s

vice president that he had been advised by plaintiff’s

European sales manager that “there was confusion

at trade shows” because plaintiff’s and defendant’s

valves resembled one another. /d. Plaintiff also of-

fered the testimony of a sales manager regarding

conversations between the manager and two trade

show attendees “regarding the issue of confusion.”

Id.

The Third Circuit’s holding that the district court

had erred in relying on such evidence to prove actual

confusion was prompted as much by the irrelevance

and unreliability of such evidence, as by the fact that

it was hearsay:

Vetter [plaintiff’s vice president] could not even

identify the people allegedly confused, instead

referring [defendant’s] attorney to ‘the brief.’

Moreover, Vetter’s response only proves that

people thought the valves’ appearances were sim-

ilar, not that they were actually confused by the

similar appearances.

50 F.3d at 212.

In contrast, the evidence Sunbeam offered here was

(as two different magistrate judges found) credible

*That the Third Circuit did not intend to create an all-

encompassing rule excluding the use of hearsay evidence to

prove actual confusion is reflected in its comment that a fax

mistakenly sent to plaintiff asking for a quote on defendant’s

valves “would suggest confusion.” 50 F.3d at 212 n.17.

and reliable, and spoke directly to the issue at hand,

i.e., Whether Laube’s use of Sunbeam’s A5® mark is

likely to cause confusion. 25a-26a. Sunbeam’s dis-

trict sales manager recounted a number of instances

in which he had been approached by customers either

inquiring about, or seeking to purchase, Laube’s clip-

per from Sunbeam. These customers expressly indi-

cated that they had assumed Laube was associated

with Sunbeam because of his use of the A-5 designa-

tion. Sunbeam also offered a series of memoranda in

which other Sunbeam sales representatives indicated

that they too had received numerous inquiries regard-

ing Laube’s A-5 clipper.

In light of this overwhelming evidence of confu-

sion, and the fact that a trademark rather than a

product configuration was at issue, it is not surpris-

ing that the Third Circuit in this case affirmed the

district court’s acceptance of such evidence as proof

of actual confusion. The disparate decisions in this

case and the Versa case are not the result of a con-

flict in the law of the Third Circuit but rather an

acknowledgement that the facts and circumstances

mandated different results.

B. Decisions From Other Circuits

Petitioner’s argument that there is a conflict

among the various circuits is likewise without merit.

‘In fact, the issue as expressed by the majority of

other circuits is not whether hearsay evidence should

be admitted but rather, once admitted, how much

weight should be given to such evidence under the

circumstances. Compare Duluth News-Tribune v.

Mesabi Pub. Co., 84 F.3d 1093, 1098 (8th Cir. 1996)

(evidence of misdirected mail and phone calls found

to be de minimis “and to show inattentiveness on the

part of the caller or sender rather than actual con-

fusion”) and International Kennel Club v. Mighty

Star, Inc., 846 F.2d 1079, 1090 (7th Cir. 1988) (let-

ters, phone calls and inquiries received by plaintiff

regarding defendant’s product “constitute probative

evidence of a likelihood of confusion”).

Those few courts which have excluded evidence of

actual confusion as hearsay have done so because of a

deficiency in the evidence presented, not because a

general rule of exclusion mandated such a result.

See, e.g., Smith Fiberglass Products, Inc. v. Ameron,

Inc., 7 F.8d 1327, 1831 (7th Cir. 1993) (lack of an

exact quote and the identity of the customer making

the statement to plaintiff’s employee precluded a find-

ing that such evidence fell under an exception to the

hearsay rule); Vitek Systems, Inc. v. Abbott Labora-

tories, 675 F.2d 190, 193-94 (8th Cir. 1982) (court

permitted plaintiffs’ employees to testify as to in-

stances of customer confusion, but refused to admit

employee’s memorandum of a meeting’ with a

customer).

As indicated earlier, such disparate holdings are

not the result of any conflict within or among the

circuits. These holdings merely reflect the fact that

different factual circumstances will lead to different

evidentiary rulings. There is no conflict with respect

to legal principles and holdings which would warrant

this Court’s attention. As it is not this Court’s func-

tion to serve as either a fact finder or a reviewer of

evidence, Petitioner’s writ should be denied. See, e.g.,

Goodman v. Lukens Steel Co., 482 U.S. 656, 665

(1987) (“[B]oth courts below having agreed on the

facts, we are not inclined to examine the record for

ourselves. .. .”); United States v. Johnston, 268 U.S.

220, 227 (1925) (“We do not grant a certiorari to

review evidence and discuss specific facts.”’).

Ill. ASSUMING, ARGUENDO, THAT THE THIRD CIR-

CUIT TECHNICALLY ERRED IN APPROVING

THE USE OF CERTAIN HEARSAY EVIDENCE AS

PROOF OF ACTUAL CONFUSION, THIS ERROR

WAS HARMLESS BECAUSE EVALUATION OF

THE OTHER SCOTT PAPER FACTORS OVER-

WHELMINGLY DEMONSTRATED A LIKELIHOOD

OF CONFUSION

In Scott Paper Co. v. Scott’s Liquid Gold, Inc., 589

F.2d 1225 (3d Cir. 1978), the Third Circuit enumer-

ated a number of factors to be considered by a court

in determining whether a trademark plaintiff has

demonstrated a likelihood of confusion. Those factors

include:

(1) the degree of similarity between the marks;

(2) the strength of the owner’s mark;

(8) the price of the goods and other factors in-

dicative 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 con-

fusion;

(5) the intent of the defendant in adopting the

mark;

(6) evidence of actual confusion;

(7) whether the goods are marketed through

the same channels of trade and advertised

through the same media;

(8) the extent to which the targets of the par-

ties’ sales efforts are the same; and

(9) the relationship of the goods in the minds

of the public because of the similarity of

function.

589 F.2d at 1229.

Not all of these factors are entitled to the same

weight, and a plaintiff need not prove each and every

element to prevail on its claim for trademark in-

fringement. Fisons Horticulture, Inc. v. Vigoro In-

dustries, Inc., 30 F.3d 466, 476 n.11 (8d Cir. 1994)

(“[W]Jeight given to each factor in the overall pic-

ture, as well as its weighing for plaintiff or defend-

ant, must be done on an individual fact-specific

basis.” ). In fact, a plaintiff need not even show actual

confusion if there is sufficient evidence of a likelihood

of confusion. Jd. at 476; see also Country Floors v.

Partnership of Gepner & Ford, 930 F.2d 1056, 1064

(3d Cir. 1991).

Assuming, arguendo, that the Third Circuit erred

in considering as evidence of actual confusion the

hearsay evidence * offered by Sunbeam, such error was

harmless because evaluation of the other Scott Paper

factors overwhelmingly demonstrated a likelihood of

confusion.

A. Similarity of the Marks

Similarity of the plaintiff’s and defendant’s marks

is the “first and primary factor” to be considered in

the likelihood of confusion inquiry. Versa Products,

supra, 50 F.3d at 202 (emphasis added); see also

Fisons Horticulture, Inc. v. Vigoro Industries, Inc.,

’ Sunbeam disputes Petitioner’s contention that the testi-

mony and other evidence which Sunbeam presented at the

injunction hearing constitutes hearsay. For purposes of this

proceeding, however, it is not necessary for this Court to re-

solve this dispute.

30 F.3d 466, 472 (3d Cir. 1994) (“Where [as here]

the trademark owner and the alleged infringer deal

in competing goods or services, the court need rarely

look beyond the mark itself. The court focuses on

the marks to determine whether they are confusingly

similar.” (Citations omitted) ).

Here, the mark used by Laube (i.e., A-5) is vir-

tually identical to Sunbeam’s A5® mark. Although

Laube includes his name as a prefix to the A-5 mark,

the dominant feature of the mark is the “A” and the

“5”, 21a. As the district court noted, “Confusion is

the normal result when the dominant features of the

two marks are identical.” 21a.

B. Strength of the Marks

In evaluating the strength of a particular mark,

courts divide trademarks into four categories: (1)

arbitrary or fanciful; (2) suggestive; (3) descrip-

tive; and (4) generic. Two Pesos, Inc. v. Taco

Cabana, Inc., 505 U.S. 768, 768 (1992). Fanciful

marks “consist of coined words which have been in-

vented for the sole purpose of functioning as a trade-

mark.” Ford Motor Co. v. Summit Motor Products,

Inc., 930 F.2d 277, 292, n.18 (3d Cir. 1991), cert.

denied sub nom. Altran Corp. v. Ford Motor Co., 502

U.S. 939 (1991) (citations omitted). Such marks

are considered to be “strong”? marks, automatically

qualifying for trademark protection. See, e.g., Berner

Intern. Corp. v. Mars Sales Co., 987 F.2d 975, 979

(38d Cir. 1993); Century 21 Real Estate Corp. v.

Sandlin, 846 F.2d 1175, 1179 (9th Cir. 1988).

As indicated earlier, A5® was coined by Sunbeam

more than 30 years ago to market a new clipper. Ac-

cordingly, it is a strong mark. In addition, the dis-

trict court found that “the grooming industry relates

the ‘A5’ mark with the Sunbeam product.” 22a.

C. Price of Goods/Care and Attention of Purchasers

Laube’s clippers retail for $99.99; Sunbeam’s clip-

pers retail for $92.42. As noted by the district court:

When Viewed in the context of the likelihood

of confusion, the similarity of the cost of the

Laube and the Sunbeam clippers serves to mis-

lead an appreciable number of ordinary prudent

purchasers as to the source of the product, espe-

cially when this factor is considered in conjunc-

tion with the likeness of the mark now utilized

by the plaintiff and the defendant.

23a. [footnote omitted].

D. Length of Time Without Actual Confusion

The district court found that shortly after Laube

introduced his Laube A-5 clipper, a Sunbeam service

center received a pair of Laube clippers for repair.®

The fact that a defendant’s products are sent to

plaintiff for repair constitutes evidence of actual con-

fusion. See, e.g., Ford Motor Co., supra, 930 F.2d

at 300; Westward Co. v. Gem Products, Inc., 570

F. Supp. 948, 950 (E.D. Mi. 1983).

B. Laube’s Intent

Laube, as a former distributor of Sunbeam’s A5®

clippers, was subjectively aware of Sunbeam’s use of

the A5® mark. 24a. In fact, the magistrate judge

who presided over the original injunction hearing

* As indicated above, Laube’s counsel failed to object to this

testimony at the time it was offered. Accordingly, Laube has

waived his right to object to the Court’s consideration of this

evidence.

concluded that Laube had used the A-5 designation

for the sole purpose of associating it with Sunbeam’s

A5® clipper. 24a. On remand, the new magistrate

judge came to the same conclusion. 25a. (“Laube’s

use of the ‘A-5’ mark is strongly suggestive of his

intention to draw from [Sunbeam’s A5®] mark.”)

F. Actual Confusion

As indicated earlier, evidence that a defendant’s

products have been returned to the plaintiff for repair

constitutes strong proof of actual confusion. Thus,

even if this Court rejects Sunbeam’s other evidence

of actual confusion, Sunbeam has still offered this

proof of actual confusion.’

G. Marketing Channels

The district court found that Sunbeam and Laube

solicit business in the same manner, 7.e., through the

use of trade publications, catalogs, brochures and

appearances at trade shows. 27a.

H. Targets of the Parties’ Sales Efforts

Here too, the district court found a substantial

overlap in the markets targeted by Sunbeam and

Laube. They both reach distributors, veterinarians,

professional groomers and consumers. 27a.

I. Similarity of Function

As the district court noted, “[a]side from the fact

that the Laube clipper is cordless, [Sunbeam’s] ‘A5’

? Petitioner complains that the district court failed to prop-

erly consider the survey evidence which he presented to show

an alleged lack of confusion. The district court properly

refused to accord the survey significant weight because the

survey failed to consider possible confusion among the rele-

vant class of purchasers. 26a.

clipper performs the same function as the Laube ‘A-5’

clipper.” 27a.

An analysis of the Scott Paper factors led the dis-

trict court to conclude that they “aptly indicate a

likelihood of confusion.” 27a. Of significaat impor-

tance to the district court was the similarity of the

marks, the strength of Sunbeam’s mark, Laube’s in-

tent and the brief interval of time which elapsed

between the introduction of the Laube A-5 clipper

and the subsequent return of a Laube clipper to a

Sunbeam repair center. 27a. None of these findings

is challenged by Laube in his Petition. Accordingly,

any error by the Third Circuit in accepting Sun-

beam’s allegedly hearsay evidence as proof of actual

confusion was harmless.

CONCLUSION

For the foregoing reasons, the petition for writ of

certiorari should be denied.

Respectfully submitted,

GEORGE P. FAINES