PUBLISHED

UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

PETRO STOPPING CENTERS, L.P.,
Plaintiff-Appellant,

v.
                                                                      No. 97-1215
JAMES RIVER PETROLEUM,
INCORPORATED,
Defendant-Appellee.

Appeal from the United States District Court for the
Eastern District of Virginia, at Richmond.
Robert R. Merhige, Jr., Senior District Judge.
(CA-96-530-3)

Argued: October 28, 1997

Decided: November 26, 1997

Before WILKINSON, Chief Judge, MURNAGHAN, Circuit Judge,
and PHILLIPS, Senior Circuit Judge.

_________________________________________________________________

Affirmed by published opinion. Chief Judge Wilkinson wrote the
opinion, in which Judge Murnaghan and Senior Judge Phillips joined.

_________________________________________________________________

COUNSEL

ARGUED: Paul Forest Kilmer, GADSBY & HANNAH, L.L.P.,
Washington, D.C., for Appellant. Edward Eric Scher, THORSEN,
MARCHANT & SCHER, L.L.P., Richmond, Virginia, for Appellee.
ON BRIEF: Carol L.B. Matthews, Thomas W. Brooke, Caroline A.
Leonard, GADSBY & HANNAH, L.L.P., Washington, D.C., for
Appellant. Julie M. Whitlock, THORSEN, MARCHANT & SCHER,
L.L.P., Richmond, Virginia, for Appellee.

_________________________________________________________________

OPINION

WILKINSON, Chief Judge:

Petro Stopping Centers, L.P. ("Petro Stopping") sued James River
Petroleum, Inc. ("James River"), alleging federal and common law
trademark infringement, federal and common law unfair competition,
federal dilution, and Virginia false advertising claims. After a bench
trial, the district court entered judgment for James River on all counts.
The court found Petro Stopping's marks to be fairly weak and con-
cluded that the remaining factors did not support a likelihood of con-
fusion. We now affirm.

I.

Petro Stopping operates and franchises over forty full service auto-
mobile and truck travel centers in twenty-seven states, including one
each in Ruther Glen, Virginia and Fort Chiswell, Virginia. The com-
pany has been in business since 1975. Most of Petro Stopping's facili-
ties operate under the marks PETRO STOPPING CENTER or
PETRO TRAVEL PLAZA.

Petro Stopping has a total of fourteen registered federal service
marks that contain the term PETRO. Examples include PETRO
PRIDE, PETRO:LUBE, PETRO:2, PETRO:PLUS, and PETRO:-
TREAD. No registration is for the word PETRO alone, although the
company has registered PETRO with background colors as a compos-
ite mark for truck stop services. The PETRO mark is almost always
displayed in white letters with a green rectangular background, placed
above a red-orange strip. Petro Stopping's first registered mark,
PETRO STOPPING CENTER, was placed on the Principal Register
of the Patent and Trademark Office ("PTO") in August 1982. The
company registered its eighth service mark, the PETRO with back-
ground colors composite mark, in July 1990. At least eight of Petro
Stopping's marks, including the registration for PETRO with back-

                     2
ground colors, have become incontestable pursuant to 15 U.S.C.
§ 1065.

Petro Stopping's truck stop facilities are located adjacent to inter-
state highways at the exits. They offer a wide variety of goods and
services, including separate fueling areas for cars and trucks, truck
maintenance, truck weighing scales, truck washes, restaurants, retail
stores, fax machines, ATM machines, showers, laundry, quiet rooms,
game rooms, television rooms, movie theaters, and barber shops.
These travel facilities are staffed twenty-four hours a day. Customers
purchasing fuel or other goods and services at Petro Stopping's sites
can pay with cash, checks, or credit cards, including a PETRO credit
card. The company advertises its facilities in radio spots, in publica-
tions directed to truckers, in truck stop directories, and on billboards
and Virginia Department of Transportation ("VDOT") exit signs. The
company claims that over the past five years it has sold in excess of
$2 billion of goods and services and has spent over $6.25 million in
promoting its truck stop services.

James River is engaged in petroleum distribution. In 1992, the
company expanded into the "card lock" business. In this enterprise,
James River generally sells its services to commercial owners of car
or truck fleets. These fleet owners purchase accounts that allow their
drivers or authorized agents to use payment cards at James River's
unmanned, self-service filling stations. James River participates in the
Commercial Fueling Network ("CFN"), and is therefore part of a net-
work of independent card lock fuel facilities. Before trial, the com-
pany had five Richmond area stations and planned to open a sixth.
James River operates its card lock facilities under the name JAMES
RIVER PETRO CARD. The James River mark uses a white (or
sometimes gray) background and contains one stylized, red "JR" logo,
in large font. Next to the logo, in a much smaller font, appear the
words "James River" in blue upper and lower case letters. Below that,
in an even smaller font, the words "PETRO CARD" appear in slanted
red upper case letters with horizontal lines drawn to give the effect
that the words are moving.1
_________________________________________________________________
1 Although the term PETRO CARD had appeared alone on a canopy at
one of James River's facilities, that display was removed prior to the fil-
ing of the present suit. The signs at that facility now display the mark
JAMES RIVER PETRO CARD in its entirety.

                    3
James River's card lock facilities are not located adjacent to inter-
state highways. Although one of the company's fuel stations is
located near a separately-owned convenience store and another near
a separately-owned restaurant, the company's card lock facilities do
not offer any services comparable to Petro Stopping's truck stops
except for fueling. James River's stations are not staffed. Fuel can be
purchased only through the use of a card issued by James River or
another CFN member. The company has run limited advertisements
in small local trade newsletters, but does not utilize any billboards or
VDOT signs. The company's sites are also listed in CFN directories.
James River focuses its marketing, however, on the direct solicitation
of commercial accounts.

Petro Stopping filed this suit against James River on July 1, 1996.
The district court held a bench trial on December 2 and 3, 1996, and
ruled for James River in all respects. On the trademark infringement
and unfair competition claims, the district court found no likelihood
of confusion, noting specifically that PETRO is"merely descriptive
and a fairly weak mark." Petro Stopping now appeals.

II.

A.

To prove trademark infringement, a plaintiff must show both that
it has a valid, protectible trademark and that the defendant's use of a
"reproduction, counterfeit, copy, or colorable imitation," 15 U.S.C.
§ 1114(1), creates a likelihood of confusion. Lone Star Steakhouse &
Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 930 (4th Cir. 1995).
Although Petro Stopping sometimes conflates these two distinct ele-
ments in its arguments to this court, only the second requirement --
likelihood of confusion -- is at issue in this appeal.2 In determining
_________________________________________________________________
2 Whether the district court erroneously classified Petro Stopping's
marks as descriptive for purposes of the marks' validity and protectibility
is irrelevant to this appeal because neither party disputes the validity of
Petro Stopping's marks. The question whether the district court properly
characterized PETRO as descriptive and weak with respect to the first
likelihood of confusion factor -- strength of the mark -- is a different
issue that will be considered herein.

                     4
whether a plaintiff has demonstrated likelihood of confusion, courts
of this circuit are guided by the factors announced in Pizzeria Uno
Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984). A court should
consider (1) the strength or distinctiveness of the plaintiff's mark,
(2) the similarity of the two parties' marks, (3) the similarity of the
goods and services the marks identify, (4) the similarity of the facili-
ties the two parties use in their businesses, (5) the similarity of adver-
tising used by the two parties, (6) the defendant's intent, and
(7) actual confusion. These factors are not of equal importance or
equal relevance in every case. Id.

This circuit reviews district court determinations regarding likeli-
hood of confusion under a clearly erroneous standard. Id. at 1526. We
may find a district court's conclusions clearly erroneous only when
there is no evidence in the record to support those conclusions or
when, upon review of the record ourselves, we are left with a definite
and firm conviction that a mistake has been committed. Id. We have
previously recognized that likelihood of confusion is an inherently
factual issue. Lone Star Steakhouse, 43 F.3d at 933. In this appeal,
where only this type of factual determination is contested and the
decision was rendered after a two-day bench trial, the standard of
review is a deferential one requiring appellate respect for the trial
court's findings.

B.

The district court found that the first Pizzeria Uno factor -- the
strength of the plaintiff's mark -- favored a finding of no likelihood
of confusion because PETRO is descriptive and weak. Petro Stopping
first contends that because eight of its PETRO marks are incontest-
able, the district court was legally precluded from reaching its conclu-
sion. The company claims that the Supreme Court's decision in Park
'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985), fore-
closes any argument by James River that PETRO is descriptive.

We disagree. Petro Stopping misapprehends the Park 'N Fly hold-
ing and confuses the issue of a trademark's validity with the separate
inquiry into a mark's strength for purposes of the likelihood of confu-
sion determination. In Park 'N Fly, the Supreme Court held that a
defendant in an infringement suit cannot claim that an incontestable

                     5
mark is merely descriptive and therefore invalid and undeserving of
any protection. The Court did not hold, however, that the descriptive
nature of a mark may not be considered in the separate likelihood of
confusion inquiry. This characterization of the Court's holding is con-
firmed by the Trademark Law Revision Act of 1988, which amended
one of the Lanham Act's incontestability provisions to clarify that
"[s]uch conclusive evidence of the right to use the registered mark
shall be subject to proof of infringement." Pub. L. No. 100-667,
§ 128(b)(1), 102 Stat. 3935, 3945 (codified at 15 U.S.C. § 1115(b))
(emphasis added).

We recognized this crucial distinction in Lone Star Steakhouse.
There the district court had concluded that the incontestability of the
mark in question was dispositive of the likelihood of confusion
inquiry. After considering Park 'N Fly, the holdings of other circuits,
and the opinions of the commentators on this issue, we stated:

          We agree with the above reasoning that incontest-
          ability affects the validity of the trademark but
          does not establish the likelihood of confusion nec-
          essary to warrant protection from infringement.
          Likelihood of consumer confusion remains an
          independent requirement for trademark infringe-
          ment. . . . [We] hold that we are free to address
          whether Plaintiffs' incontestable trademark is
          descriptive or suggestive in determining whether
          the likelihood of consumer confusion exists in this
          case.

Lone Star Steakhouse, 43 F.3d at 935. Similarly, in Shakespeare Co.
v. Silstar Corp. of Amer., Inc., 110 F.3d 234, 238-40 (4th Cir.),
petition for cert. filed, 66 U.S.L.W. 3283 (U.S. Oct. 1, 1997), we held
that although a district court cannot cancel an incontestable trademark
on grounds of functionality or descriptiveness, it can and should con-
sider those grounds when determining whether likelihood of confu-
sion has been established. Thus, our precedent squarely forecloses the
argument Petro Stopping seeks to raise in this appeal.

The company next claims that the district court was precluded from
finding PETRO to be descriptive and weak because the PTO had

                    6
already found its marks to be at least suggestive. The PTO requires
applicants with marks found to be descriptive to prove that the marks
have secondary meaning before granting registration. 15 U.S.C.
§ 1052(f). Because the PTO did not require such proof with respect
to Petro Stopping's applications for registration, it can safely be
assumed that the PTO believed the marks were at least suggestive.
Lone Star Steakhouse, 43 F.3d at 934. Relying on RFE Indus., Inc.
v. SPM Corp., 105 F.3d 923, 926 (4th Cir.), cert. denied, 117 S. Ct.
2512 (1997), Petro Stopping argues that a district court is not free to
substitute its own finding for that of the PTO. Despite the PTO's
apparent conclusions, we find no clear error in the district court's
determination that PETRO is a descriptive, weak mark.

Although courts should accord deference to the PTO's findings
when assessing the strength of a mark under the likelihood of confu-
sion test, see Pizzeria Uno, 747 F.2d at 1534, the PTO's "determina-
tion is not conclusive." Id. The fact that the PTO does not view a
mark as descriptive serves only as prima facie evidence that the mark
is suggestive. Accordingly, the presumption may be rebutted by the
defendant. Id.; see also Champions Golf Club, Inc. v. The Champions
Golf Club, Inc., 78 F.3d 1111, 1118 (6th Cir. 1996) (remanding to dis-
trict court "to determine whether the mark is descriptive or sugges-
tive" despite noting that PTO's registration created presumption that
mark was not descriptive).

More significantly, the placement of a mark in either the suggestive
or descriptive category is merely the first step in assessing the
strength of a mark for purposes of the likelihood of confusion test.
Lang v. Retirement Living Publ'g Co., 949 F.2d 576, 581 (2d Cir.
1991); Western Publ'g Co. v. Rose Art Indus., Inc., 910 F.2d 57, 61
(2d Cir. 1990); Miss World (UK) Ltd. v. Mrs. America Pageants, Inc.,
856 F.2d 1445, 1449 (9th Cir. 1988). Even a mark held to be sugges-
tive may be found weak under the first likelihood of confusion factor.
See Estee Lauder Inc. v. The Gap, Inc., 108 F.3d 1503, 1509-11 (2d
Cir. 1997) (finding mark suggestive, but holding district court's con-
clusion that mark was moderately strong to be clearly erroneous). The
strength of a mark "`ultimately depends on the degree to which the
designation is associated by prospective purchasers with a particular
source.'" Id. at 1510 (quoting Restatement (Third) of Unfair Competi-
tion § 21 cmt. i (1995)). Thus, courts must examine, in addition to the

                    7
mark's characterization as suggestive or descriptive, the extent of sec-
ondary meaning a mark has acquired in the eyes of consumers. Lang,
949 F.2d at 581; Western Publ'g, 910 F.2d at 61; Miss World (UK),
856 F.2d at 1449. This secondary meaning evidence may also serve
to rebut the presumption arising from PTO action that a mark is not
descriptive.

The district court considered just such evidence of secondary
meaning, customer confusion, and third-party use in finding PETRO
to be descriptive and weak. The court specifically found that "[i]n the
present context, PETRO does not have secondary meaning in the card
lock business." It also concluded that the lack of customer confusion
evidence confirmed the weakness of PETRO as a mark. Finally, the
district court found that a "number of other companies commonly use
PETRO to describe petroleum related goods and services." In review-
ing the record on which the district court based its conclusion, we are
not left with a definite and firm conviction that a mistake has been
made.

Substantial evidence existed in the record showing the considerable
number of third-party registrations and uses of the term PETRO.
James River submitted evidence showing that over 2,700 businesses
in the United States use PETRO as part of their name. The company
also submitted evidence showing that 117 third-party federal registra-
tions or applications for registration contain the word PETRO, sixty-
three of which are for use in connection with petroleum or fuel-
related goods and services. Even before Petro Stopping registered its
first service mark for PETRO STOPPING CENTER in 1982, forty-
two other marks including the term PETRO existed on the trademark
register.

Petro Stopping argues, however, that evidence of third-party regis-
trations alone is insufficient to conclude that a mark is weak. The
company maintains that only proof that third parties actually use the
term PETRO would be relevant. We disagree. The frequency with
which a term is used in other trademark registrations is indeed rele-
vant to the distinctiveness inquiry under the first likelihood of confu-
sion factor. Pizzeria Uno, 747 F.2d at 1530-31. This is especially true
when the number of third-party registrations is great. For example, in
Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 259-60 (5th Cir.

                    8
1980), the court found it impossible to dismiss evidence of seventy-
two third-party registrations in the PTO of the appellant's mark. See
also Estee Lauder, 108 F.3d at 1511 (weakness of mark demonstrated
by fact that over seventy trademark registrations, pending applications
for registration or renewal, or publications-for-opposition included the
term used in plaintiff's mark). "Specifically, third-party registrations
are `relevant to prove that some segment of the composite marks
which both contesting parties use has a normally understood and well-
recognized descriptive or suggestive meaning, leading to the conclu-
sion that that segment is relatively weak.'" First Sav. Bank, F.S.B. v.
First Bank Sys., Inc., 101 F.3d 645, 654 (10th Cir. 1996) (quoting 1
J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 11.27[2][b] (3d ed. 1995)). Therefore, the abundant
evidence of third-party registration and use of the term PETRO sol-
idly supports the district court's conclusion that PETRO is a fairly
weak mark.

Finally, Petro Stopping's own representations to the PTO in 1981
undercut the company's current arguments to this court. At that time,
the PTO objected to registration of Petro Stopping's service mark
because of likelihood of confusion with previously registered trade-
marks that included the term PETRO. Petro Stopping contended then
that, because of the wide use and registration of PETRO as part of
composite trademarks, "the term `Petro' is entitled to a very narrow
scope of protection." The company further urged"that the term is
extremely dilute and entitled to a weak scope of protection." Petro
Stopping now asks this court to accept precisely the opposite proposi-
tion. The company's promotion of, and commerce under, its service
marks may have strengthened them since the time of its trademark
counsel's representations. However, in light of the considerable num-
ber of federally registered trademarks using the term PETRO, and the
extent of its use by businesses generally, the strength of Petro Stop-
ping's marks must be understood to be confined to the field for which
they are registered, namely truck stop services. See Amstar Corp., 615
F.2d at 260 ("The third-party uses and registrations discussed above
merely limit the protection to be accorded plaintiff's mark outside the
uses to which plaintiff has already put its mark."). In Petro Stopping's
own words, outside of truck stop services its mark is "entitled to a
weak scope of protection." In short, the district court's conclusion that
PETRO is a descriptive and weak mark is not a clearly erroneous one.

                     9
C.

Petro Stopping next argues that the district court erred by finding
the two companies' marks to be dissimilar. Petro Stopping contends
that the district court should have focused on the similarities between
the marks rather than emphasizing the dissimilarities. This argument
fails to persuade. In assessing similarity of marks under the second
Pizzeria Uno factor, courts generally focus on the dominant portions
of parties' marks. Lone Star Steakhouse, 43 F.3d at 936; Pizzeria
Uno, 747 F.2d at 1534-35. This practice does not mean that courts
confine their scrutiny merely to similarities. Because every triable
case of trademark infringement involves marks that are similar at
some level, Petro Stopping's rule would obviate the need for courts
ever to inquire into the second Pizzeria Uno factor.

We noted in Pizzeria Uno that an overall test under this factor is
whether there exists a "similarity in appearance and sound which
would result in confusion." Id. at 1534. Here, the companies' two
marks present entirely different appearances. Petro Stopping's service
mark is displayed in green, white, and red-orange. James River's
mark utilizes red, blue, white, and sometimes gray. Petro Stopping's
mark never contains the words "James River," never includes a JR
logo, and never is portrayed with horizontal lines suggesting move-
ment. To the extent that the James River mark has a dominant portion,
it appears to be the large JR logo, not the term PETRO. Because of
these marked differences in appearance, we do not find the district
court's conclusion under this factor to be clearly erroneous.

Petro Stopping next maintains the district court erred by finding the
third and fourth Pizzeria Uno factors -- similarity of goods, services,
and facilities -- to support a finding of no likelihood of confusion.
Besides the sale of fuel, the two parties' services and facilities differ
in virtually every respect. Petro Stopping's travel center facilities
offer, among other services, maintenance, weighing scales, truck
washes, restaurants, retail stores, fax and ATM machines, showers,
laundry, quiet rooms, game rooms, television rooms, movie theaters,
and even barber shops. James River's facilities sell only fuel. Petro
Stopping's travel center sites are located adjacent to interstate high-
ways near the exits and usually occupy anywhere between fifteen to
thirty acres of land. James River's card lock facilities are not visible

                     10
from interstate highways, not located at interstate exits, and normally
occupy only one acre or less of land. Even Petro Stopping's own
Chief Executive Officer admitted that the distinctive design utilized
by his company's facilities would suffice to distinguish them from a
hypothetical truck stop using the term PETRO if opened by another
company within twenty miles. Even if these stark differences did not
suffice, it would be nearly impossible for a person seeking a Petro
Stopping facility to be lured into purchasing fuel at a James River sta-
tion because the latter accepts only cards issued by James River or
other CFN members as a means of payment. The district court's find-
ings under the third and fourth factors, therefore, were not clearly
erroneous.

Petro Stopping next argues that the district court erred by finding
that the fifth Pizzeria Uno factor -- similarity of advertising -- sup-
ported a finding of no likelihood of confusion. The company contends
specifically that James River promotes its services in the CFN direc-
tories, in a manner similar to Petro Stopping's own promotion of its
services in truck stop directories. We are not persuaded. It is true that
the CFN directories, which are available only to members of the CFN
network and not to the public generally, do list the James River sta-
tions as member companies. However, because truck drivers whose
employers hold an account with a CFN member probably would fre-
quent only those facilities at which they can purchase fuel through
their account, the listing of James River's facilities in the CFN direc-
tories is unlikely to create confusion with Petro Stopping's travel cen-
ters. Furthermore, Petro Stopping ignores important differences
between the types of advertising practiced by each company. Petro
Stopping advertises in radio spots, in publications directed at truckers,
on billboards, and on VDOT exit signs. The company emphasizes the
diversity of services available at its facilities. James River has run
only limited advertisements in small, local newsletters. The company
promotes the advantages of the card lock system, not the variety of
available services. We identify no clear error in the district court's
finding under the similarity of advertising factor.

Finally, Petro Stopping claims that the district court erred under the
last Pizzeria Uno factor -- actual confusion. The district court found
that there was little evidence of such confusion in the record. Petro
Stopping maintains that courts normally accord significance to even

                    11
one instance of actual confusion. This argument, however, sweeps too
broadly. Petro Stopping submitted evidence showing it is a significant
commercial actor in the truck stop industry. In light of its huge vol-
ume of commerce, Petro Stopping's meager evidence of actual confu-
sion is at best de minimis. Universal Money Ctrs., Inc. v. American
Tel. & Tel. Co., 22 F.3d 1527, 1535 (10th Cir. 1994). At worst, the
company's failure to uncover more than a few instances of actual con-
fusion creates a "presumption against likelihood of confusion in the
future." Amstar Corp., 615 F.2d at 263. We perceive no clear error
in the district court's determination under this final factor.

III.

The district court's findings on each of the Pizzeria Uno factors
were firmly grounded in the evidence. We also hold that the district
court's ultimate finding of no likelihood of confusion, based on its
overall perception of the evidence adduced at trial, is not a clearly
erroneous one. For the foregoing reasons, we affirm the judgment of
the district court.

AFFIRMED

                    12
