                        Revised June 14, 1999

                IN THE UNITED STATES COURT OF APPEALS

                        FOR THE FIFTH CIRCUIT

                        _____________________

                            No. 98-31063
                        _____________________


           SUGAR BUSTERS LLC,

                                Plaintiff-Appellee,

           v.

           ELLEN C BRENNAN; THEODORE M BRENNAN; SHAMROCK
           PUBLISHING INC,

                                Defendants-Appellants.

_________________________________________________________________

           Appeal from the United States District Court
               for the Eastern District of Louisiana
_________________________________________________________________
                            May 25, 1999
Before KING, Chief Judge, and POLITZ and BENAVIDES, Circuit
Judges.

KING, Chief Judge:

        This appeal challenges the district court’s grant of a

preliminary injunction prohibiting defendants-appellants from

selling or distributing a book entitled “SUGAR BUST For Life!” as

infringing plaintiff-appellee’s federally registered service

mark, “SUGARBUSTERS.”   Plaintiff-appellee is an assignee of a

registered “SUGARBUSTERS” service mark and the author of a best-

selling diet book entitled “SUGAR BUSTERS! Cut Sugar to Trim

Fat.”   We determine that the assignment of the registered
“SUGARBUSTERS” service mark to plaintiff-appellee was in gross

and was therefore invalid, and we vacate the injunction.

However, because plaintiff-appellee might still obtain protection

for its book title from unfair competition under § 43(a) of the

Lanham Act, 15 U.S.C. § 1125(a), we remand to the district court

to consider plaintiff-appellee’s unfair competition claims.

                 I. FACTUAL AND PROCEDURAL HISTORY

     Plaintiff-appellee Sugar Busters, L.L.C. (plaintiff) is a

limited liability company organized by three doctors and H.

Leighton Steward, a former chief executive officer of a large

energy corporation, who co-authored and published a book entitled

“SUGAR BUSTERS! Cut Sugar to Trim Fat” in 1995.    In “SUGAR

BUSTERS! Cut Sugar to Trim Fat,” the authors recommend a diet

plan based on the role of insulin in obesity and cardiovascular

disease.   The authors’ premise is that reduced consumption of

insulin-producing food, such as carbohydrates and other sugars,

leads to weight loss and a more healthy lifestyle.    The 1995

publication of “SUGAR BUSTERS! Cut Sugar to Trim Fat” sold over

210,000 copies, and in May 1998 a second edition was released.

The second edition has sold over 800,000 copies and remains a

bestseller.

     Defendant-appellant Ellen Brennan was an independent

consultant employed by plaintiff to assist with the sales,

publishing, and marketing of the 1995 edition.    In addition,

Ellen Brennan wrote a foreword in the 1995 edition endorsing the

                                 2
diet plan, stating that the plan “has proven to be an effective

and easy means of weight loss” for herself and for her friends

and family.   During her employment with plaintiff, Ellen Brennan

and Steward agreed to co-author a cookbook based on the “SUGAR

BUSTERS!” lifestyle.   Steward had obtained plaintiff’s permission

to independently produce such a cookbook, which he proposed

entitling “Sugar Busting is Easy.”    Plaintiff reconsidered its

decision in December 1997, however, and determined that its

partners should not engage in independent projects.    Steward then

encouraged Ellen Brennan to proceed with the cookbook on her own,

and told her that she could “snuggle up next to our book, because

you can rightly claim you were a consultant to Sugar Busters!”

     Ellen Brennan and defendant-appellant Theodore Brennan then

co-authored “SUGAR BUST For Life!,” which was published by

defendant-appellant Shamrock Publishing, Inc. in May 1998.

“SUGAR BUST For Life” states on its cover that it is a “cookbook

and companion guide by the famous family of good food,” and that

Ellen Brennan was “Consultant, Editor, Publisher, [and] Sales and

Marketing Director for the original, best-selling ‘Sugar

Busters!TM Cut Sugar to Trim Fat.’”   The cover states that the

book contains over 400 recipes for “weight loss, energy, diabetes

and cholesterol control and an easy, healthful lifestyle.”

Approximately 110,000 copies of “SUGAR BUST For Life!” were sold

between its release and September 1998.



                                 3
     Plaintiff filed this suit in the United States District

Court for the Eastern District of Louisiana on May 26, 1998,

asserting causes of action for trademark infringement and

dilution under 15 U.S.C. §§ 1114 and 1125(c), unfair competition

and trade dress infringement under § 43(a) of the Lanham Act, 15

U.S.C. § 1125(a), and trademark dilution, misrepresentation,

unfair competition and misappropriation of trade secrets under

Louisiana state law.   Plaintiff sought to enjoin defendants-

appellants Ellen Brennan, Theodore Brennan and Shamrock

Publishing, Inc. (collectively, defendants) from selling,

displaying, advertising or distributing “SUGAR BUST For Life!,”

to destroy all copies of the cookbook, and to recover damages and

any profits derived from the cookbook.

     The mark that is the subject of plaintiff’s infringement

claim is a service mark that was registered in 1992 by

Sugarbusters, Inc., an Indiana corporation operating a retail

store named “Sugarbusters” in Indianapolis that provides products

and information for diabetics.   The “SUGARBUSTERS” service mark,

registration number 1,684,769, is for “retail store services

featuring products and supplies for diabetic people; namely,

medical supplies, medical equipment, food products, informational

literature and wearing apparel featuring a message regarding

diabetes.”   Sugarbusters, Inc. sold “any and all rights to the

mark” to Thornton-Sahoo, Inc. on December 19, 1997, and Thornton-

Sahoo, Inc. sold these rights to Elliott Company, Inc. (Elliott)

                                 4
on January 9, 1998.   Plaintiff obtained the service mark from

Elliott pursuant to a “servicemark purchase agreement” dated

January 26, 1998.   Under the terms of that agreement, plaintiff

purchased “all the interests [Elliott] owns” in the mark and “the

goodwill of all business connected with the use of and symbolized

by” the mark.   Furthermore, Elliott agreed that it “will cease

all use of the [m]ark, [n]ame and [t]rademark [i]nterests within

one hundred eighty (180) days.”

     In support of its request for a preliminary injunction,

plaintiff argued to the district court that the recipes in the

cookbook did not comport with the “SUGAR BUSTERS!” lifestyle and

that consumers were being misled into believing that defendants’

cookbook was affiliated with, or otherwise approved by,

plaintiff.   Plaintiff asserted that even if its purported service

mark is found invalid, plaintiff is still entitled to a

preliminary injunction under § 43(a) of the Lanham Act because

its title “SUGAR BUSTERS! Cut Sugar to Trim Fat!” has developed a

“secondary meaning” in the minds of customers, plaintiff has

developed a common law service mark through the seminars it holds

regarding the “SUGAR BUSTERS!” lifestyle, and defendants

infringed plaintiff’s trade dress.

     Defendants argued to the district court that plaintiff’s

service mark is invalid because:       (1) it was purchased “in

gross,” (2) the term “SUGARBUSTERS” has become generic through

third-party use, and (3) plaintiff abandoned the mark by

                                   5
licensing it back to Elliott without any supervision or control

over the retail store in Indiana that continues to operate under

the “Sugarbusters” name.     Defendants argued that, even if the

service mark is valid, their cookbook could not infringe it

because the mark is limited to a retail store and a trademark may

not be obtained for a book title.      Finally, defendants asserted

that their use of the title was a “fair use” and that plaintiff

is not entitled to an injunction under equitable principles

because Stewart breached his agreement with Ellen Brennan and

invited her to write the cookbook that is now the subject of this

case.

     The district court heard evidence relating to the

preliminary injunction for three days beginning on June 30, 1998

and entered a preliminary injunction on September 22, 1998 that

prohibits defendants from engaging in the sale and distribution

of their cookbook, “SUGAR BUST For Life!”      See Sugar Busters,

L.L.C. v. Brennan, 48 U.S.P.Q.2d 1511, 1512 (E.D. La. 1998).        The

district court found that plaintiff is the owner of the

registered service mark, “SUGARBUSTERS,” and that the mark is

registered in International Class 16, “information, literature,

and books.”   Id. at 1514.    The district court found that the mark

is valid and that the transfer of the mark to plaintiff was not

“in gross” because

     [t]he plaintiff has used the trademark to disseminate
     information through its books, seminars, the Internet, and
     the cover of plaintiff’s recent book, which reads “Help

                                   6
      Treat Diabetes and Other Diseases.” Moreover, the plaintiff
      is moving forward to market and sell its own products and
      services, which comport with the products and services sold
      by the Indiana corporation. There has been a full and
      complete transfer of the good will related to the mark, and
      the plaintiff has licensed the Indiana corporation to use
      the mark for only six months to enable it to wind down its
      operations.

Id.   The district court then considered whether defendants’ use

of the mark “‘creates a likelihood of confusion in the minds of

potential customers as to the source, affiliation, or

sponsorship’” of the cookbook using the factors we outlined in

Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 188, 194 (5th

Cir. 1998).1   Sugar Busters, 48 U.S.P.Q.2d at 1513 (quoting Elvis

Presley Enters., 141 F.3d at 193).

      The district court found that “plaintiff has established

that there is a likelihood of confusion in the minds of

customers,” that there is a substantial threat plaintiff will

suffer irreparable injury without a preliminary injunction, that

this threatened injury outweighs any damage that an injunction

may cause defendants, and that an injunction will not disserve

the public interest.   Id. at 1516.   The court refused to consider

defendants’ fair-use argument because it was raised for the first


      1
       The nonexhaustive list of factors relevant to determining
the likelihood of confusion that we enunciated in Elvis Presley
Enterprises is as follows: (1) the type of trademark allegedly
infringed, (2) the similarity between the marks, (3) the
similarity of the products or services, (4) the identity of the
retail outlets and purchasers, (5) the identity of the
advertising media used, (6) the defendant’s intent, and (7) any
evidence of actual confusion. See 141 F.3d at 194.

                                 7
time in defendants’ post-hearing brief, found defendants’

equitable argument insufficient to prevent an injunction, and

enjoined defendants from engaging in the sale and distribution of

“SUGAR BUST For Life!”   See id. at 1517.   Because the district

court entered the injunction based on plaintiff’s trademark

infringement claim, the court declined to analyze or discuss

plaintiff’s remaining claims.   See id. at 1516.    Defendants

timely appeal.




                          II. DISCUSSION

     Defendants argue that the district court erroneously

concluded that plaintiff’s purported service mark in

“SUGARBUSTERS” is valid and that their cookbook infringes the

mark.   Defendants also argue that plaintiff’s unfair competition

claims under § 43(a) of the Lanham Act fail because that section

cannot protect a single book title or, alternatively, that remand

is necessary because the district court did not consider whether

the book title has acquired secondary meaning.     Defendants assert

that remand is also necessary on plaintiff’s claim that it has an

unregistered service mark in “SUGAR BUSTERS!” as a result of the

seminars it held promoting the book because the district court

did not consider this argument or make any factual finding

regarding likelihood of confusion.   Finally, defendants argue

that the district court erred by rejecting their arguments

                                 8
regarding fair use and equitable principles.   We address each of

these arguments in turn.2

                       A. Standard of Review

     We review a district court’s ultimate decision to grant a

preliminary injunction for an abuse of discretion.    See

Affiliated Prof’l Home Health Care Agency v. Shalala, 164 F.3d

282, 284 (5th Cir. 1999); Sunbeam Prods., Inc. v. West Bend Co.,

123 F.3d 246, 250 (5th Cir. 1997), cert. denied, 118 S. Ct. 1795

(1998).   A preliminary injunction is an extraordinary equitable

remedy that may be granted only if plaintiff establishes the

following four elements:    (1) a substantial likelihood of success

on the merits, (2) a substantial threat that plaintiff will

suffer irreparable injury if the injunction is denied, (3) that

the threatened injury outweighs any damage that the injunction

might cause defendants, and (4) that the injunction will not

disserve the public interest.    See Hoover v. Morales, 164 F.3d

     2
       Defendants also argue that the district court committed
reversible error by entering a preliminary injunction without
considering whether to impose a bond on plaintiff. See FED. R.
CIV. P. 65(c) (“No restraining order or preliminary injunction
shall issue except upon the giving of security by the applicant,
in such sum as the court deems proper, for the payment of such
costs and damages as may be incurred or suffered by any party who
is found to have been wrongly enjoined or restrained.”); Phillips
v. Chas. Schreiner Bank, 894 F.2d 127, 131 (5th Cir. 1990)
(“Because of the importance of the bond requirement, failure to
require the posting of a bond or other security constitutes
grounds for reversal of an injunction.”) (internal quotation
marks omitted). Because we vacate the preliminary injunction on
other grounds, we need not consider the consequences of the
district court’s failure to impose, or defendants’ failure to
request, such security.

                                  9
221, 224 (5th Cir. 1998); Sunbeam Prods., 123 F.3d at 250.

Defendants’ arguments challenging the preliminary injunction

focus only on the first element--the likelihood that plaintiff

will succeed on the merits of its claims.     Because this element

“presents a mixed question of law and fact, this court must

uphold the district court’s subsidiary fact findings unless

clearly erroneous; conclusions of law and the ultimate

application of the law to the facts, however, are freely

reviewable.”     Byrne v. Roemer, 847 F.2d 1130, 1133 (5th Cir.

1988).     Finally, plaintiff reminds us that we may “affirm a

judgment of the district court if the result is correct, even if

our affirmance is upon grounds not relied upon by the district

court.”3    Foreman v. Babcock & Wilcox Co., 117 F.3d 800, 804 (5th

Cir. 1997), cert. denied, 118 S. Ct. 1050 (1998); see Herwald v.

Schweiker, 658 F.2d 359, 362-63 (5th Cir. Unit A Oct. 1981)

(applying rule to preliminary injunction).

                B. Plaintiff’s Registered Service Mark

     A trademark is merely a symbol of goodwill and has no

independent significance apart from the goodwill that it


     3
       Plaintiff argues that we should affirm the district
court’s preliminary injunction based on its unfair competition
claims under § 43(a) if its trademark infringement claim fails.
Specifically, plaintiff argues that defendants’ book title is
likely to cause confusion with respect to plaintiff’s book title
and with seminars that plaintiff held promoting its book.
Plaintiff does not raise, and we do not consider, its trademark
dilution, trade-dress infringement, or state-law claims as
alternative bases supporting the preliminary injunction.

                                  10
symbolizes.   See Marshak v. Green, 746 F.2d 927, 929 (2d Cir.

1984); 2 J. THOMAS MCCARTHY, MCCARTHY   ON   TRADEMARKS   AND   UNFAIR COMPETITION

§ 18:2 (4th ed. 1999) [hereinafter MCCARTHY].             “A trade mark only

gives the right to prohibit the use of it so far as to protect

the owner’s good will . . . .”     Prestonettes, Inc. v. Coty, 264

U.S. 359, 368 (1924) (Holmes, J.).           Therefore, a trademark cannot

be sold or assigned apart from the goodwill it symbolizes.                   See

15 U.S.C. § 1060 (“A registered mark or a mark for which

application to register has been filed shall be assignable with

the goodwill of the business in which the mark is used, or with

that part of the goodwill of the business connected with the use

of and symbolized by the mark.”); Marshak, 746 F.2d at 929.                    The

sale or assignment of a trademark without the goodwill that the

mark represents is characterized as in gross and is invalid.                    See

PepsiCo, Inc. v. Grapette Co., 416 F.2d 285, 287 (8th Cir. 1969);

2 MCCARTHY § 18:3.

     The purpose of the rule prohibiting the sale or assignment

of a trademark in gross is to prevent a consumer from being

misled or confused as to the source and nature of the goods or

services that he or she acquires.        See Visa, U.S.A., Inc. v.

Birmingham Trust Nat’l Bank, 696 F.2d 1371, 1375 (Fed. Cir.

1982).   “Use of the mark by the assignee in connection with a

different goodwill and different product would result in a fraud

on the purchasing public who reasonably assume that the mark

signifies the same thing, whether used by one person or another.”

                                   11
Marshak, 746 F.2d at 929.   Therefore, “‘if consumers are not to

be misled from established associations with the mark, [it must]

continue to be associated with the same or similar products after

the assignment.’”   Visa, U.S.A., 696 F.2d at 1375 (quoting

Raufast S.A. v. Kicker’s Pizzazz, Ltd., 208 U.S.P.Q. 699, 702

(E.D.N.Y. 1980)).

     Plaintiff’s purported service mark in “SUGARBUSTERS” is

valid only if plaintiff also acquired the goodwill that

accompanies the mark; that is, “the portion of the business or

service with which the mark is associated.”     Id.   Defendants

claim that the transfer of the “SUGARBUSTERS” mark to plaintiff

was in gross because “[n]one of the assignor’s underlying

business, including its inventory, customer lists, or other

assets, were transferred to [plaintiff].”   Defendants’ view of

goodwill, however, is too narrow.    Plaintiff may obtain a valid

trademark without purchasing any physical or tangible assets of

the retail store in Indiana--“the transfer of goodwill requires

only that the services be sufficiently similar to prevent

consumers of the service offered under the mark from being misled

from established associations with the mark.”     Id. at 1376

(internal quotation marks omitted); see Marshak, 746 F.2d at 930

(“The courts have upheld such assignments if they find that the

assignee is producing a product or performing a service

substantially similar to that of the assignor and that the

consumers would not be deceived or harmed.”); PepsiCo, 416 F.2d

                                12
at 288 (“Basic to this concept [of protecting against consumer

deception] is the proposition that any assignment of a trademark

and its goodwill (with or without tangibles or intangibles

assigned) requires the mark itself be used by the assignee on a

product having substantially the same characteristics.”); cf.

Money Store v. Harriscorp Fin., Inc., 689 F.2d 666, 678 (7th Cir.

1982) (“In the case of a service mark . . . confusion would

result if an assignee offered a service different from that

offered by the assignor of the mark.”).

     The district court found, without expressly stating the

applicable legal standard, that “[t]here has been a full and

complete transfer of the good will related to the mark.”     Sugar

Busters, 48 U.S.P.Q.2d at 1514.    The proper standard, as

discussed above, is whether plaintiff’s book and the retail store

in Indiana are sufficiently similar to prevent consumer confusion

or deception when plaintiff uses the mark previously associated

with the store as the title of its book.    We conclude that even

if the district court applied this standard, its finding that

goodwill was transferred between Elliott and plaintiff is clearly

erroneous.

     In concluding that goodwill was transferred, the district

court relied in part on its finding that the mark at issue is

registered in International Class 16, “information, literature,

and books.”   However, the registration certificate issued by the

United States Patent and Trademark Office states that the service

                                  13
mark is “in class 42" and is “for retail store services featuring

products and supplies for diabetic people.”     Id.   The district

court also relied on its finding that “plaintiff is moving

forward to market and sell its own products and services, which

comport with the products and services sold by the Indiana

corporation.”    Id.   Steward testified, however, that plaintiff

does not have any plans to operate a retail store, and plaintiff

offered no evidence suggesting that it intends to market directly

to consumers any goods it licenses to carry the “SUGAR BUSTERS!”

name.    Finally, we are unconvinced by plaintiff’s argument that,

by stating on the cover of its diet book that it may “[h]elp

treat diabetes and other diseases” and then selling some of those

books on the Internet, plaintiff provides a service substantially

similar to a retail store that provides diabetic supplies.      See

PepsiCo, 416 F.2d at 286-89 (determining that pepper-flavored

soft drink and cola-flavored soft drink are not substantially

similar and therefore purported assignment was in gross and

invalid).    We therefore must conclude that plaintiff’s purported

service mark is invalid.    Thus, its trademark infringement claim

under 15 U.S.C. § 1114 cannot succeed on the merits and the

district court improperly relied on this ground in granting

plaintiff’s request for a preliminary injunction.4

     4
       Defendants also argue that plaintiff’s purported service
mark is invalid because plaintiff offered no evidence
demonstrating the validity of the purported assignment from
Sugarbusters, Inc. to Thornton-Sahoo, Inc., or Thornton-Sahoo’s

                                  14
                    C. Unfair Competition Claims

     Plaintiff argues that we must still uphold the preliminary

injunction because it has demonstrated a likelihood of success on

the merits of its claims under § 43(a) of the Lanham Act.5   The

Supreme Court has recognized that § 43(a) “‘prohibits a broader

range of practices than does § 32,’ which applies to registered

marks,” and that § 43(a) protects qualifying unregistered marks.

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992)

(quoting Inwood Lab., Inc. v. Ives Lab., Inc., 456 U.S. 844, 858

(1982)).    Plaintiff asserts that the district court could have

granted the preliminary injunction on the basis of its claim that



subsequent assignment to Elliott, and because plaintiff licensed
the mark back to Elliott without retaining any supervision or
control. See Exxon Corp. v. Oxxford Clothes, Inc., 109 F.3d
1070, 1075 (5th Cir.) (“A trademark owner’s failure to exercise
appropriate control and supervision over its licensees may result
in an abandonment of trademark protection for the licensed
mark.”), cert. denied, 118 S. Ct. 299 (1997). Because we find
Elliott’s purported assignment of the service mark to plaintiff
invalid, we need not consider these arguments.
     5
         Under § 43(a),

     Any person who, on or in connection with any goods or
     services . . . 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, which . . . 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.

15 U.S.C. § 1125(a).

                                 15
defendants’ use of the title “SUGAR BUST For Life!” is likely to

cause confusion or deceive consumers as to its connection with

plaintiff’s book, “SUGAR BUSTERS! Cut Sugar to Trim Fat.”

Additionally, plaintiff argues that it has developed a common law

service mark in “SUGAR BUSTERS!” based on seminars it has held

promoting its book, and that defendants’ title is likely to cause

confusion with respect to those seminars.   We consider

plaintiff’s arguments in turn.

                     1. Plaintiff’s Book Title

     As a preliminary matter, we must consider defendants’

contention that a book title may not receive protection under

§ 43(a).   Defendants contend that “titles of single literary

works are not registerable” as trademarks, and therefore that

§ 43(a) cannot protect plaintiff’s title because the Supreme

Court has held “that the general principles qualifying a mark for

registration under § 2 of the Lanham Act are for the most part

applicable in determining whether an unregistered mark is

entitled to protection under § 43(a).”   Id.; see Thompson Med.

Co. v. Pfizer Inc., 753 F.2d 208, 215 (2d Cir. 1985) (“The

starting point of our examination [under § 43(a)] is determining

whether a mark is eligible for protection.”).    Defendants argue

that just as generic marks can be neither registered as

trademarks nor protected under § 43(a), see Union National Bank

of Texas, Laredo, Texas v. Union National Bank of Texas, Austin,

Texas, 909 F.2d 839, 844 (5th Cir. 1990) (“Generic terms are

                                 16
never eligible for trademark protection.”);    A.J. Canfield Co. v.

Honickman, 808 F.2d 291, 297 (3d Cir. 1986) (stating that “if we

hold a designation generic, it is never protectable”), a single

book title is ineligible for trademark registration or § 43(a)

protection.

     In order to be registered as a trademark, a mark must be

capable of distinguishing the applicant’s goods from those of

others.   See 15 U.S.C. § 1052; Two Pesos, 505 U.S. at 768.

“Marks are often classified in categories of generally increasing

distinctiveness; following the classic formulation set out by

Judge Friendly, they may be (1) generic; (2) descriptive; (3)

suggestive; (4) arbitrary; or (5) fanciful.”    Two Pesos, 505 U.S.

at 768 (citing Abercrombie & Fitch Co. v. Hunting World, Inc.,

537 F.2d 4, 9 (2d Cir. 1976)).   The latter three categories of

marks are entitled to trademark protection because they are

inherently distinctive--they serve to identify a particular

source of a product.   See id.   Generic marks, in contrast,

“‘refe[r] to the genus of which the particular product is a

species’” and are neither registerable as trademarks, id.

(quoting Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S.

189, 194 (1985)) (alteration in original), nor protectable under

§ 43(a), see Thompson Medical, 753 F.2d at 212.6   The final

     6
       In their initial appellate brief, defendants state that
the term “Sugar Busters” for a diet book title has become generic
and is therefore not entitled to any trademark protection.
However, in their reply brief, defendants argue that no portion

                                 17
category, consisting of marks that describe a product, “do not

inherently identify a particular source, and hence cannot be

protected” unless they acquire distinctiveness through secondary

meaning.   Two Pesos, 505 U.S. at 769.   Such secondary meaning is

achieved when, “‘in the minds of the public, the primary

significance of a product feature or term is to identify the

source of the product rather than the product itself.’”         Id. at

766 n.4 (quoting Inwood Lab., 456 U.S. at 851 n.11); see Sunbeam

Prods., 123 F.3d at 252 (recognizing that “descriptive marks are

entitled to protection only if they have come to be uniquely

associated with a particular source”); RESTATEMENT (THIRD)   OF   UNFAIR

COMPETITION § 13 (1995) [hereinafter RESTATEMENT] (describing

secondary meaning as “acquired distinctiveness”).


of the district court’s opinion “address[es] the genericness
issue which has been raised by the Brennans--namely, that the
unregistered term ‘Sugar Busters’ for a diet has become generic.”
Indeed, defendants argued to the district court that the term
“Sugar Busters” is generic for a diet and introduced evidence of
a survey where participants supplied “Sugar Busters” as a name
for a diet “based upon cutting back on foods high in sugar
content,” but did not argue that plaintiff’s book title, “SUGAR
BUSTERS! Cut Sugar to Trim Fat,” is generic. See Soweco, Inc. v.
Shell Oil Co., 617 F.2d 1178, 1183 (5th Cir. 1980) (“A word may
be generic of some things and not of others: ‘ivory’ is generic
of elephant tusks but arbitrary as applied to soap.”); Blinded
Veterans Ass’n v. Blinded Am. Veterans Found., 872 F.2d 1035,
1041 (D.C. Cir. 1989) (“[W]e accept the general proposition that
[w]ords which could not individually become a trademark may
become one when taken together.”) (Ginsburg, J.) (internal
quotation marks omitted); 2 MCCARTHY § 11:27 (“[A] composite mark
is tested for its validity and distinctiveness by looking at it
as a whole, rather than dissecting it into its component
parts.”). Because defendants failed to argue that plaintiff’s
book title is generic to the district court, we decline to
address the issue.

                                 18
     Over forty years ago, the Court of Customs and Patent

Appeals (the predecessor to the current Federal Circuit)

considered whether the title of a single book may be the subject

of a trademark.    See In re Cooper, 254 F.2d 611, 613-16 (C.C.P.A.

1958).   The court determined that, “however arbitrary, novel or

nondescriptive of contents the name of a book--its title--may be,

it nevertheless describes the book.”    Id. at 615.   As the court

explained,

     The purchaser of a book is not asking for a “kind” or “make”
     of book. He is pointing out which one out of millions of
     distinct titles he wants, designating the book by its name.
     It is just as though one walked into a grocery store and
     said “I want some food” and in response to the question
     “What kind of food?” said, “A can of chicken noodle soup.”

Id. at 614-15; see also International Film Serv. Co. v.

Associated Producers, Inc., 273 F. 585, 587 (S.D.N.Y. 1921) (“A

title is, if not strictly descriptive, at least suggestive, and

not an arbitrary sign . . . . [T]he title is the proper name of a

specific thing, not the differential of a species, as in the case

of fungibles.”) (Hand, J.).   The Trademark Trial and Appeal Board

has consistently interpreted Cooper as prohibiting the

registration of single book titles as trademarks.     See, e.g., In

re Posthuma, 45 U.S.P.Q.2d 2011, 2012-13 (T.T.A.B. 1998); In re

Scholastic Inc., 23 U.S.P.Q.2d 1774, 1776-77 (T.T.A.B. 1992); In

re Hal Leonard Publ’g Co., 15 U.S.P.Q.2d 1574, 1576 (T.T.A.B.

1990); In re Nat’l Council Books, Inc., 121 U.S.P.Q. 198, 198-99

(T.T.A.B. 1959).


                                 19
     The descriptive nature of a literary title does not mean,

however, that such a title cannot receive protection under

§ 43(a).   In fact, the Cooper decision itself recognized that

“[i]t is well known that the rights in book titles are afforded

appropriate protection under the law of unfair competition.”     254

F.2d at 617.   If the title of such a single work has acquired

secondary meaning, “the holder of the rights to that title may

prevent the use of the same or confusingly similar titles by

other authors.”   Rogers v. Grimaldi, 875 F.2d 994, 998 (2d Cir.

1989); see also Trapani v. CBS Records, Inc., 857 F.2d 1475, No.

87-6034, 1988 WL 92438 at *3 (6th Cir. Sept. 2, 1988)

(unpublished opinion) (“It is clear that the title to a song

cannot be copyrighted as such, or registered as a trademark.

However, a title may be protected as a common law trademark if

two elements are satisfied: the title has acquired ‘secondary

meaning,’ and the allegedly infringing use of the title creates a

substantial likelihood of confusion.”) (citations omitted); 2

MCCARTHY §§ 10:1-:5.   Thus, for plaintiff to prevail under

§ 43(a), it must demonstrate (1) that its title has secondary

meaning, and (2) that defendants’ title is likely to confuse or

mislead consumers under the factors set forth in Elvis Presley

Enterprises, 141 F.3d at 194.7

     7
       Any finding that defendants’ book title is likely to cause
confusion with plaintiff’s book title must be “particularly
compelling” to outweigh defendants’ First Amendment interest in
choosing an appropriate book title for their work. Twin Peaks

                                 20
       Plaintiff must demonstrate a high degree of proof to

establish secondary meaning.8      See Vision Ctr. v. Opticks, Inc.,

596 F.2d 111, 118 (5th Cir. 1979); Thompson Med., 753 F.2d at

217.       Plaintiff must show that “the title is sufficiently well

known that consumers associate it with a particular author’s

work.”       Rogers, 875 F.2d at 998; see also Sunbeam Prods., 123

F.3d at 253 (stating that “the primary element of secondary

meaning is a mental association in buyer[s’] minds between the

alleged mark and a single source of the product”) (internal

quotation marks omitted).       Because the determination of whether a

mark has acquired secondary meaning is primarily an empirical

inquiry, “survey evidence is the most direct and persuasive

evidence.”       Sunbeam Prods., 123 F.3d at 253-54.   Survey evidence

is not the only relevant evidence, however--“[i]n addition, the

court may consider the length and manner of the use of a mark,

the nature and extent of advertising and promotion of the mark,

the sales volume of the product, and instances of actual

confusion.”       Id. at 254; see Pebble Beach Co. v. Tour 18 I Ltd.,


Prods., Inc. v. Publications Int’l, Ltd., 996 F.2d 1366, 1379 (2d
Cir. 1993); see Simon & Schuster, Inc. v. Dove Audio, Inc., 970
F. Supp. 279, 296 (S.D.N.Y. 1997); No Fear, Inc. v. Imagine
Films, Inc., 930 F. Supp. 1381, 1382-84 (C.D. Cal. 1995).
       8
       Plaintiff must show that its title “SUGAR BUSTERS! Cut
Sugar to Trim Fat” had developed secondary meaning at the time
that defendants allegedly violated § 43(a) by releasing their
book, “SUGAR BUST For Life!” See Braun Inc. v. Dynamics Corp.,
975 F.2d 815, 825 (Fed. Cir. 1992); Thompson Med., 753 F.2d at
217; Brooks Shoe Mfg. Co. v. Suave Shoe Corp., 716 F.2d 854, 861
n.17 (11th Cir. 1983).

                                    21
155 F.3d 526, 541 (5th Cir. 1998); Thompson Med., 753 F.2d at

217; 2 MCCARTHY § 10.13.

     Plaintiff asserts that the record is “replete with evidence

sufficient to support a ruling [on secondary meaning] by this

[c]ourt,” including evidence that plaintiff sold over 210,000

copies of its book prior to May 1998, received unsolicited media

coverage, used the title exclusively for thirty months, and was

intentionally copied by defendants.9   Furthermore, plaintiff

argues that the district court found secondary meaning in

plaintiff’s book title when it stated that it “finds that the

trademark, SUGARBUSTERS, has gained strength, not only locally,

but nationally due to its use in conjunction with the success of

the book.”   Sugar Busters, 48 U.S.P.Q.2d at 1514.   We disagree

with plaintiff’s contention that the district court has already

considered and found secondary meaning with respect to

plaintiff’s book title.    The language that plaintiff cites from

the district court’s opinion pertains to the strength of the

registered “SUGARBUSTERS” service mark--a mark we have already


     9
       Plaintiff also stated at oral argument that “[t]here is a
very good survey in [the record] done by a professional pollster
for [plaintiff] to show that this secondary meaning exists.” The
survey, which was performed at a Louisiana shopping mall in June
1998, asked some respondents whether they had ever heard the name
“SUGARBUSTERS!,” others whether they had ever heard the name
“SUGAR BUST,” and asked all respondents whether they thought of
“a special enzyme, a diet plan, a low calorie sweetener or
something else” when they heard these names. We fail to see how
this survey suggests whether consumers associate the title “SUGAR
BUSTERS! Cut Sugar to Trim Fat” with plaintiff or its book.

                                 22
determined was not validly assigned to plaintiff--and the opinion

states explicitly that the district court did not consider

plaintiff’s unfair competition arguments.    See id. at 1516.

Accordingly, we decline plaintiff’s invitation to make such

factual findings on our own, and we remand plaintiff’s unfair

competition claim to the district court so that it can determine

whether the book title “SUGAR BUSTERS! Cut Sugar to Trim Fat” had

obtained secondary meaning in May 1998 and, if so, whether

defendants’ book title is so likely to confuse consumers that it

outweighs any First Amendment interests defendants have in the

title of their book.

                       2. Plaintiff’s Seminars

     Plaintiff argues that the preliminary injunction should also

be upheld under § 43(a) because defendants’ book title violates

its common law service mark in seminars that it held promoting

“SUGAR BUSTERS! Cut Sugar to Trim Fat.”   Specifically, plaintiff

alleges that it has held over one hundred seminars regarding the

“SUGAR BUSTERS!” lifestyle since the fall of 1995 and that

defendants’ book title should be enjoined because it is likely to

cause confusion with respect to these seminars.

     The district court did not consider plaintiff’s argument

regarding these alleged seminars and made no factual findings on

this issue.   We therefore remand plaintiff’s claim to the

district court so that it may properly determine whether

plaintiff used such a mark with these seminars and whether such

                                 23
use was generic, descriptive, suggestive, arbitrary or fanciful.

If the district court determines that such use is protectable

under § 43(a), the court should determine whether plaintiff has

demonstrated “particularly compelling” evidence indicating that

consumers are likely to confuse the title of defendants’ book

with such a mark.    See Twin Peaks Prods., Inc. v. Publications

Int’l, Ltd., 996 F.2d 1366, 1379 (2d Cir. 1993).

                             D. Fair Use

     Defendants argue that plaintiff cannot prevail on its

§ 43(a) claims because defendants’ use of their book title “SUGAR

BUST For Life!” is protected by the fair-use doctrine.    See

Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1190 (5th Cir.

1980) (applying fair-use defense to § 43(a) claim).    The fair-use

defense allows a party to use a term in good faith to describe

its goods or services, but only in actions involving descriptive

terms and only when the term is used in its descriptive sense

rather than in its trademark sense.    See 15 U.S.C. § 1115(b)(4);

Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 791

(5th Cir. 1983); RESTATEMENT § 28 & cmt. c; see also 2 MCCARTHY

§ 10:14 (“Since the use of a descriptive title cannot serve to

prevent others from using the title in a descriptive, non-

trademark sense, others may be able to use the title as the only

term available.”).   The fair-use defense does not apply if a term

is used as a mark to identify the markholder’s goods or services,

but the fair use of a term may be protected even if some residual

                                 24
confusion is likely.     See Pebble Beach, 155 F.3d at 545 n.12;

Soweco, 617 F.2d at 1189 n.30 (“[W]e are convinced that even if

there were a likelihood of confusion, the defendant would still

be entitled to its fair-use defense, so long as it had met the

requirements of § 1115(b)(4).    To hold otherwise would

effectively eviscerate the fair-use defense.”); RESTATEMENT § 28

cmt. b.    The fair-use defense thus prevents a markholder from

“appropriat[ing] a descriptive term for his exclusive use and so

prevent others from accurately describing a characteristic of

their goods.”     Soweco, 617 F.2d at 1185.

     The district court declined to consider defendants’ fair-use

argument, stating that it was raised for the first time in

defendants’ post-hearing brief.     See Sugar Busters, 48 U.S.P.Q.2d

at 1517.    Fair use is an affirmative defense that is usually

waived if not affirmatively pled under Federal Rule of Civil

Procedure 8(c).     See Car-Freshner Corp. v. S.C. Johnson & Son,

Inc., 70 F.3d 267, 268 (2d Cir. 1995); Dakota Indus., Inc. v.

Ever Best Ltd., 28 F.3d 910, 912-13 (8th Cir. 1994).       We have

recognized, however, that if “a defendant raises [an] issue at a

‘pragmatically sufficient time,’ and if the plaintiff is not

prejudiced in its ability to respond, there is no waiver of the

defense.”    Simon v. United States, 891 F.2d 1154, 1157 (5th Cir.

1990) (quoting Lucas v. United States, 807 F.2d 414, 418 (5th

Cir. 1986)); see Allied Chem. Corp. v. Mackay, 695 F.2d 854, 855-

56 (5th Cir. 1983) (“Where the matter is raised in the trial

                                  25
court in a manner that does not result in unfair surprise . . .

technical failure to comply precisely with Rule 8(c) is not

fatal.”).    We find no such waiver here.   Defendants pled fair use

as an affirmative defense in their answer to plaintiff’s

complaint, presented relevant evidence at the preliminary

injunction hearing, and argued the issue in their post-hearing

brief.    Furthermore, plaintiff filed a rebuttal brief in

September 1998, addressing explicitly the fair-use argument and

claiming that the defense was “refuted in plaintiff’s original

brief.”    We therefore remand defendants’ fair-use argument to the

district court so that it may properly consider this potential

defense to plaintiff’s unfair competition claims.

                     E. Equitable Considerations

     Defendants’ final argument is that plaintiff is not entitled

to a preliminary injunction under principles of equity.      See 15

U.S.C. § 1116(a) (“The several courts vested with jurisdiction of

civil actions arising under this chapter shall have power to

grant injunctions, according to the principles of equity and upon

such terms as the court may deem reasonable, to prevent . . . a

violation under section 1125(a) of this title.”).    Defendants

assert that plaintiff engaged in inequitable conduct because

Steward breached an agreement with Ellen Brennan to co-author a

cookbook, Steward invited Ellen Brennan to “snuggle up” to

plaintiff’s book, plaintiff terminated Ellen Brennan’s employment



                                 26
after she retained counsel, and plaintiff refused to abide by a

purported settlement of the claims at issue in this case.

     The district court found that defendants’ asserted

“equitable considerations based on the arguments of ‘inequitable

behavior’ and ‘improper purpose’ are inadequate to present a

defense based on equitable relief.”    Sugar Busters, 48 U.S.P.Q.2d

at 1517.    The court apparently relied on the omission of these

terms from the statement in 15 U.S.C. § 1069 that “[i]n all inter

parties proceedings equitable principles of laches, estoppel, and

acquiescence, where applicable may be considered and applied.”

See id.    We do not agree with the district court’s assessment

that the equitable considerations relevant to a preliminary

injunction of unfair competition are so limited as to exclude

consideration of inequitable conduct or purpose.      See Levi

Strauss & Co. v. Shilon, 121 F.3d 1309, 1313 (9th Cir. 1997)

(“‘Unclean hands is a defense to a Lanham Act infringement

suit.’ . . . In its claim for equitable relief, ‘the defendant

must demonstrate that the plaintiff’s conduct is inequitable and

that the conduct relates to the subject matter of its claims.’”)

(quoting Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d

837, 847 (9th Cir. 1987)) (citations omitted); RESTATEMENT § 32 &

cmt. a (“The doctrine of unclean hands is applicable in actions

for the infringement of registered trademarks . . . and in

actions involving unregistered marks under § 43(a) of the [Lanham

Act] and at common law.”); 5 MCCARTHY §§ 31:44-:58.    Without

                                 27
expressing any opinion as to the merit of defendants’ arguments

that plaintiff has engaged in inequitable conduct and that such

conduct is sufficient to preclude an equitable remedy, we remand

this issue so that the district court may properly consider this

potential defense.

                         III. CONCLUSION

     For the foregoing reasons, we VACATE the preliminary

injunction and REMAND to the district court for further

proceedings consistent with this opinion.




                               28
