
USCA1 Opinion

	




                            UNITED STATES COURT OF APPEALS                                FOR THE FIRST CIRCUIT                                 ____________________          No. 95-1098                              EQUINE TECHNOLOGIES, INC.,                                Plaintiff - Appellee,                                          v.                             EQUITECHNOLOGY, INCORPORATED                                 AND RONALD LAROCHE,                               Defendants - Appellants.                                 ____________________                     APPEAL FROM THE UNITED STATES DISTRICT COURT                          FOR THE DISTRICT OF MASSACHUSETTS                      [Hon. Patti B. Saris, U.S. District Judge]                                            ___________________                                 ____________________                                        Before                               Torruella, Chief Judge,                                          ___________                           Campbell, Senior Circuit Judge,                                     ____________________                               and Cyr, Circuit Judge.                                        _____________                                _____________________               Scott  J.  Fields,  with  whom Duane,  Morris  &  Heckscher,               _________________              ____________________________          Lawrence G.  Green and Perkins, Smith  & Cohen were  on brief for          __________________     _______________________          appellants.               Victor H. Polk, Jr., with whom Bingham,  Dana & Gould was on               ___________________            ______________________          brief for appellee.                                 ____________________                                   November 3, 1995                                 ____________________                    TORRUELLA,  Chief  Judge.   Plaintiff-appellee,  Equine                    TORRUELLA,  Chief  Judge.                                ____________          Technologies,  Inc.,  brought  a  trademark  infringement  action          against defendants-appellants, Equitechnology,  Inc., and  Ronald          Larouche (its  founder).  The district  court granted plaintiff's          motion for a preliminary injunction,  and defendant appeals.   We          affirm.                                      BACKGROUND                                      BACKGROUND                                      __________                    Plaintiff  is  a  Massachusetts  corporation  which has          developed and  patented a line  of specialized "hoof  pads" which          act as shock absorbers for horses.   Plaintiff has sold its  hoof          pads  under  the  trademark  "EQUINE  TECHNOLOGIES"1 since  1989.          Plaintiff also sells a  hoof cleanser called CLEAN TRAX  which is          also  sold under the EQUINE  TECHNOLOGIES mark.  Plaintiff's mark          has been registered  on the  Primary Register of  the Patent  and          Trademark Office ("PTO") since March 1993.                    Defendant, a Florida  corporation, began marketing  and          selling hoof  care products using the  mark "EQUITECHNOLOGIES" in          1993.   In its promotion  efforts, defendant has  stated that the          "shock absorption qualities" of  its product make it "ideal  as a          custom   hoof   pad."     Defendant's   petition  for   trademark          registration was preliminarily rejected by the PTO on the grounds          that  it  was confusingly  similar  to  the  mark  registered  by          plaintiff.  Notwithstanding the ruling of the  PTO, defendant has          continued to  append the  official trademark registration  to its          mark.                                        ____________________          1  The "u" in EQUINE is in the form of a horseshoe.                                         -2-                    Plaintiff sued defendant in  the United States District          Court  for Massachusetts  alleging  federal and  state claims  of          trademark infringement  and unfair  competition, and moved  for a          preliminary injunction  to enjoin  defendant from using  the mark          Equitechnologies  during  the  pendency  of  the  lawsuit.    The          district  court granted the preliminary injunction, and defendant          appeals.                                      DISCUSSION                                      DISCUSSION                                      __________                    "Trademark law  seeks to prevent one  seller from using          the  same 'mark' as--or one  similar to--that used  by another in          such a way that he confuses the  public about who really produced          the goods (or service)."  DeCosta v. Viacom Int'l, Inc., 981 F.2d                                    _______    __________________          602, 605 (1st Cir.  1992); WCVB-TV v. Boston Athletic  Ass'n, 926                                     _______    ______________________          F.2d  42,  43 (1st  Cir. 1991).   A  district  court may  grant a          preliminary injunction in a trademark case when it concludes that          the  plaintiff   has  demonstrated   (1)  that  it   will  suffer          irreparable injury if the injunction is not granted; (2) that any          such  injury outweighs  any  harm which  granting the  injunction          would cause the  defendant; (3)  a likelihood of  success on  the          merits;  and (4) that the  public interest will  not be adversely          affected by the  granting of the injunction.  Keds Corp. v. Renee                                                        __________    _____          Int'l Trading  Corp., 888  F.2d 215,  220 (1989) (citing  Planned          ____________________                                      _______          Parenthood League  of Massachusetts  v. Bellotti, 641  F.2d 1006,          ___________________________________     ________          1009 (1st Cir.  1981)).  The central issue in  this case, as with          most preliminary injunction trademark  cases, see id., is whether                                                        ___ __          plaintiff demonstrated a likelihood of success on the merits.                                         -3-                    Defendant's first contention is that the district court          erred  in  finding  a likelihood  of  success  on  the merits  of          plaintiff's  claims  because the  mark  "EQUINE  TECHNOLOGIES" is          "merely  descriptive"   of  the  horse  hoof   pads  produced  by          plaintiff,  and therefore invalid.   See  15 U.S.C.    1052(e)(1)                                               ___          (proscribing registration of merely descriptive marks).  While we          think plaintiff's mark is  "suggestive" of its product,  we agree          with  the district court that the mark EQUINE TECHNOLOGIES is not          "merely descriptive" of hoof pads for horses.2                    "A  term  is  suggestive  if it  requires  imagination,          thought and perception to reach a conclusion  as to the nature of          goods.   A  term  is  descriptive  if  it  forthwith  conveys  an                                        ____________________          2  We have explained the significance of  the classification of a          mark as either "descriptive" or "suggestive."                      A court's  inquiry  into whether  a  term                      merits  trademark protection  starts with                      the classification of that term along the                      spectrum  of  "distinctiveness."   At one                      end  of  the spectrum  there  are generic                      terms that have  passed into common usage                      to  identify a product,  such as aspirin,                      and  can  never  be  protected.    In the                      middle  there  are so-called  descriptive                      terms, such as a geographical term, which                      can  be  protected, but  only  if  it has                      acquired a "secondary  meaning" by  which                      consumers associate it with  a particular                      product or  source.  At the  other end of                      the   spectrum,  there   are  suggestive,                      arbitrary and fanciful terms that  can be                      protected  without   proof  of  secondary                      meaning.    These  terms  are  considered                      "inherently distinctive."          Boston Beer Co. v. Slesar Bros. Brewing Co., 9 F.3d 175, 180 (1st          _______________    ________________________          Cir. 1993) (internal citations omitted).                                                    -4-          immediate idea  of the ingredients, qualities  or characteristics          of  the goods."  Blinded  Veterans Ass'n v.  Blinded Am. Veterans                           _______________________     ____________________          Found.,  872 F.2d 1035, 1040 (D.C. Cir. 1989) (citing Stix Prods.          ______                                                ___________          Inc. v.  United Merchants &  Mfrs., Inc., 295  F. Supp. 479,  488          ____     _______________________________          (S.D.N.Y. 1968)).  See also Union Nat'l Bank of Texas (Laredo) v.                             ________ __________________________________          Union  Nat'l Bank of Texas (Austin),  909 F.2d 839, 844 (5th Cir.          ___________________________________          1990).  Merely  descriptive terms generally  are not entitled  to          protection  under trademark  law "both  because  they are  a poor          means of distinguishing  one source of services  from another and          because  they are often necessary to the description of all goods          or services of  a similar  nature."   A.J. Canfield  Co. v.  Vess                                                __________________     ____          Beverages, Inc., 796 F.2d 903, 906 (7th Cir. 1986).          _______________                    In  determining  whether a  particular  mark is  merely          descriptive  of a product,  a reviewing  court must  consider the          mark in its  entirety, with  a view toward  "what the  purchasing          public would think when confronted with the mark as a whole."  In                                                                         __          re  Hutchinson Technology Inc.,  852 F.2d 552,  552-54 (Fed. Cir.          ______________________________          1988).  The district  court's determination that plaintiff's mark          is not  merely descriptive of  its product  is a finding  of fact          which we  review only for clear error.  Boston Beer Co. v. Slesar                                                  _______________    ______          Bros. Brewing  Co., 9 F.3d 175,  180 (1st Cir. 1993).   The clear          __________________          error hurdle is "quite high."  Id. (citation omitted).  Moreover,                                         __          because  plaintiff's mark has been  registered by the  PTO on the          Principal Register,  it is  entitled to  a  legal presumption  of          validity.    See 15  U.S.C.    1115(a)  (registration of  mark on                       ___          Principal Register "shall be prima facie evidence of the validity                                         -5-          of the registered mark . . . and of the registrant's right to use          the  registered mark  in commerce  on or  in connection  with the          goods  or  services  specified  in the  certificate").    Section          1115(a)  entitles  the  plaintiff   to  a  presumption  that  its          registered  trademark is  inherently  distinctive, as  opposed to          merely  descriptive.  See Quabaug Rubber Co. v. Fabiano Shoe Co.,                                ___ __________________    ________________          567 F.2d 154, 161 (1st Cir. 1977) (federal registration "is prima          facie evidence that such mark has become distinctive of the goods          in commerce"); Liquid Controls Corp. v. Liquid Control Corp., 802                         _____________________    ____________________          F.2d 934, 936  (7th Cir. 1986).3  That said, we turn to the facts          at issue in this case.                    There is no dispute in this case that the term "equine"          is descriptive  of horses.4   The  question, however, is  whether          the mark, in its entirety,  is merely descriptive of  plaintiff's          product -- hoof pads for horses.  Defendant's argument boils down          to its contention  that "[a]  consumer (i.e.,  farrier or  equine          veterinarian)  would  naturally expect  a  company  called EQUINE          TECHNOLOGIES to make high-tech  hoof pads for horses."   Like the          district court, we  find this argument  unsupported by case  law,                                        ____________________          3  Defendant argues that plaintiff's mark is somehow not entitled          to  this presumption  because plaintiff's  first  application for          trademark protection was rejected.  Defendant seems to ignore the          fact that plaintiff,  as it was entitled, amended its application          and its mark was subsequently placed on the registry  by the PTO.          Plaintiff's mark  is therefore fully entitled  to the presumption          of validity.               4  When registering  its mark with the PTO,  plaintiff disclaimed          any  exclusive  rights  to  the  term  "EQUINE"  because  of  its          descriptive  nature.     As   plaintiff  correctly   points  out,          trademarks may properly incorporate  descriptive terms for a non-          descriptive whole.                                             -6-          and lacking in basic common sense.                    The district court concluded:                         Plaintiff is likely  to prevail on its                      claim   that  the  mark   is  not  merely                      descriptive    because   it    does   not                      immediately conjure up the thought of the                      subject  goods.  Simply  hearing the name                      gives  virtually no  idea of  the product                      except that  it has  to  do with  horses.                      Seeing the mark provides a better clue as                      it transforms the  "u" into a  horseshoe.                      However,  the  viewing public  still does                      not  know  if  the product  is  itself  a                      horseshoe, or a horseshoe related product                      like a  hoof pad, or if  the enlarged "u"                      is  simply a  graphic technique  to evoke                      the idea of horses.                    The  court's  finding  of  non-descriptiveness  is  not          clearly  erroneous.     The  term   "Equine  Technologies"  might          reasonably be thought  to suggest  that the product  to which  it          applies has  to do with horses.  The addition of the upturned "u"          might  also suggest, to the  perceptive consumer, that  it has do                      _______          with  hooves  or  horseshoes.   But  we  think  the mark  clearly          "requires  the consumer to  exercise the imagination  in order to          draw a conclusion as to the nature of goods and services."  Union                                                                      _____          Nat'l Bank, 909 F.2d 839, 844 (5th Cir. 1990) (quoting Zatarains,          __________                                             __________          Inc. v.  Oak Grove Smokehouse, Inc., 698  F.2d 786, 790 (5th Cir.          ____     __________________________          1983)).   The  mark  itself  does not  convey  information  about          plaintiff's  product  or  its   intended  consumers;  rather,  it          requires imagination to connect the term "Equine Technologies" to          hoof care products, in general, and to the plaintiff's product in          particular.  We  find no  error in the  district court's  holding          that plaintiff's mark was not merely descriptive of its product.                                         -7-                    Before moving on to defendant's argument concerning the          likelihood of confusion  between the two marks,  we pause briefly          to address defendant's contention that the district court applied          the wrong  legal standard  in analyzing the  "merely descriptive"          question.     Defendant   maintains   that  the   district  court          incorrectly  analyzed  only  the  question of  whether  the  mark          immediately   describes   the  actual   product,   and  therefore          implicitly  rejected the concept  that a trademark  may be merely          descriptive if it describes the intended purpose, function or use          of  the goods,  the class  of  user of  the  goods, or  desirable          characteristics  of the goods.  See 1 J. McCarthy, Trademarks and                                          ___          Unfair  Competition,     11.5  (1994).    The  problem with  this          argument is  that defendant  consistently argued to  the district          court  that plaintiff's  mark  was invalid  precisely because  it          merely described plaintiff's product; i.e., hoof pads for horses.          The  district  court  was  therefore  responding  to  defendant's          specific  contention.    Defendant   is  not  entitled  to  raise          arguments on appeal  that it  failed to present  to the  district          court.  See Boston Beer, 9 F.3d at 180 ("a  litigant's failure to                  ___ ___________          explicitly raise  an issue  before the district  court forecloses          that party from  raising the issue for the first time on appeal")          (citing McCoy v.  Massachusetts Inst. of Technology, 950 F.2d 13,                  _____     _________________________________          22 (1st  Cir. 1981), cert. denied,  112 S. Ct. 1939  (1992)).  We                               _____ ______          therefore treat these new arguments as waived.  See id. at 181.                                                          ___ __                    Defendant's  second contention  is  that  the  district          court  erred in finding a likelihood of confusion between the two                                         -8-          marks.   "Once the  determination has been  made that  a term  is          entitled  to trademark  protection, the  pivotal inquiry  becomes          whether the allegedly infringing mark is likely to cause consumer          confusion."  Boston Beer, 9 F.3d at 180.  See 15 U.S.C.   1114(1)                       ___________                  ___          (prohibiting  the  use  of  a  mark  that  is  "likely  to  cause          confusion,  or  to  cause mistake,  or  to  deceive").   In  this          circuit, this determination  is based upon  an analysis of  eight          separate  factors,  each  of   which  requires  its  own  factual          findings.  See, e.g.,  Aktiebolaget Electrolux v. Armatron Int'l,                     ___  ____   _______________________    _______________          Inc., 999 F.2d 1, 2-3 (1st Cir. 1993); DeCosta, 981  F.2d at 606;          ____                                   _______          Keds Corp., 888 F.2d at  222.  The determination as to  whether a          __________          likelihood  of confusion exists is  a question of  fact, which we          review only for clear error.  See Aktiebolaget, 999 F.2d at 3.                                        ___ ____________                    The  findings made by  the district court  in this case          are summarized below:                    1) Similarity of  Marks:  The  impressions made on  the          ear and the mind by  the two marks are quite close,  although, to          the eye, the  two marks are not  so close.   Based on the  "total          effect" of the  marks, the  similarity between the  two marks  is          strong.                    2) Similarity  of Goods:   Both products belong  to the          narrow category of  hoof care  products.  Even  assuming a  price          differential  between the  products, the  similarity between  the          goods  is  strong.    Moreover,  even  assuming  that  the  prime          purchasers  of   the   goods  are   sophisticated  farriers   and          veterinarians, the goods are similar enough to create confusion.                                         -9-                    3,4,5)  Channels of  Trade, Advertising,  and Class  of          Prospective Purchasers:5   The parties present  their products at          the same trade shows, and advertise in the same magazines, to the          same target groups of consumers.                    6) Evidence  of Actual Confusion:   Plaintiff made more          than  a  minimal  showing  of actual  confusion,  citing  several          instances of  consumer and promotional confusion  between the two          companies and their products.                    7) Defendant's Intent in Adopting the Mark:  The record          is  inadequate  to make  a  finding with  respect  to defendant's          intent in adopting the mark.                    8)  Strength of the Mark:  Defendant failed to overcome          the   presumption  of  validity  attached  to  registered  marks.          Plaintiff's mark is moderately strong.                    The district  court meticulously  analyzed each  of the          eight  factors,  and  it is  only  with  respect  to the  court's          analysis of  the last  factor that the  defendant asserts  error.          Defendant  contends  that the  district  court  erred in  finding          plaintiff's mark  to be moderately strong, and  asserts that this          erroneous finding  fatally infects  the  court's conclusion  that          there is a likelihood of confusion between the two products.                    We reject this  argument for two  reasons.  First,  the          strength of a mark is  but one of eight factors to  be considered          in  analyzing the likelihood of confusion issue.  See Keds Corp.,                                                            ___ __________                                        ____________________          5 As  is the custom in this  circuit, the district court analyzed          these  factors together.   See  Aktiebolaget, 999  F.2d at  3 n.3                                     ___  ____________          (collecting cases).                                         -10-          888 F.2d at 222 ("No one factor is necessarily determinative, but          each must be considered.") (citing  Volkswagen AG v. Wheeler, 814                                              _____________    _______          F.2d  812, 817 (1st Cir. 1987)).  The district court's subsidiary          findings that  six  of  the seven  other  factors  demonstrate  a          likelihood of confusion -- the intent factor being inconclusive -          - are  sufficient to sustain the court's ultimate conclusion that          such confusion exists.                    Second,   the   district   court's    conclusion   that          plaintiff's mark was moderately  strong is not clearly erroneous.          In determining  a trademark's  relative strength, this  court has          examined  "the  length of  time  a  mark has  been  used  and the          relative  renown  in  its field;  the  strength  of  the mark  in          plaintiff's  field of  business;  and the  plaintiff's action  in          promoting the mark."  Keds Corp., 888 F.2d at 222 (quoting Boston                                __________                           ______          Athletic Ass'n v. Sullivan, 867 F.2d 22, 32 (1st Cir. 1989)).  In          ______________    ________          this  case,  the district  court noted  the following  factors in          support of  its conclusion: (1) the mark has been in use for four          years; (2)  plaintiff has actively  marketed goods with  the mark          affixed, including  74 print advertisements  promoting the  mark;          (3)  plaintiff  has received  favorable  publicity  in the  horse          world; (4)  plaintiff has  successfully compelled one  infringing          competitor to change  its name; and (5)  the PTO has rejected  at          least one attempt  by a  competitor to register  a similar  name.          Moreover, the  plaintiff's mark has  been registered by  the PTO,          which provides additional support for the court's conclusion that          the mark  is moderately strong.   See DeCosta,  981 F.2d at  606.                                            ___ _______                                         -11-          These findings, which defendant  has not challenged as erroneous,          sufficiently support the court's conclusion that plaintiff's mark          is moderately strong.                    Finally,  defendant contends that "the Court completely          ignored the relevance of the fact that numerous companies in this          industry  use a  combination  of Equi,  Equine,  Eque, Eques  and          'Technology.'"   This  assertion is  belied by  the record.   The          district court  opinion expressly  cites each of  these examples,          but notes that only one of those companies directly competes with          plaintiff,  and concludes  that  "its  mark  is not  as  similar,          visually or  aurally, as  defendants' trademark."   Defendant has          not argued that this factual finding is clearly erroneous.                    We have considered  all of defendant's  other arguments          and find them without merit.  The district  court opinion in this          case is detailed and comprehensive.  The court carefully reviewed          the evidence, made specific findings of  fact which are supported          by  the record, and resolved the question of injunctive relief in          accordance with  the proper legal  standard.  The  district court          correctly  found that  it  was  likely  that consumers  would  be          confused by the two marks, and that plaintiff is therefore likely          to succeed on  the merits of its  infringement claim.   The court          also  correctly  ruled that  the  other factors  relevant  to the          issuance  of   a  preliminary   injunction  weighed   heavily  in          plaintiff's  favor.  We find no basis for disturbing the district          court decision.                                      CONCLUSION                                      CONCLUSION                                      __________                                         -12-                    For  the reasons  stated  herein, the  judgment of  the          district court is affirmed.  Costs to appellee.                            affirmed.                                         -13-
