1                 IN THE UNITED STATES COURT OF APPEALS

2                         FOR THE FIFTH CIRCUIT
3                            _______________

4                              No. 96-60413
5                              No. 96-60540
6                            _______________



                         SUNBEAM PRODUCTS, INC.,

                                               Plaintiff-Appellee,

                                  VERSUS

                          THE WEST BEND COMPANY,

                                               Defendants-Appellants.

                        _________________________

              Appeals from the United States District Court
                 for the Southern District of Mississippi
                         _________________________

                            September 15, 1997

    Before JOLLY, SMITH, and DENNIS, Circuit Judges.

    JERRY E. SMITH, Circuit Judge:



         The West Bend Company challenges a preliminary injunction

    entered pursuant to the Lanham Act, 15 U.S.C. § 1125(a).    Finding

    no reversible error, we affirm.



                                      I.

         Sunbeam Products, Inc. (“Sunbeam”), sued The West Bend Company

    (“West Bend”), requesting injunctive relief to bar West Bend from

    manufacturing and marketing a stand mixer, Model No. 41012 (“West

    Bend Mixer #1”).   The complaint alleged that West Bend Mixer #1

                                      1
unlawfully replicated the product configuration of a stand mixer

made by Sunbeam, the “American Classic Mixmaster®,” Model No. 2360.



      Sunbeam alleged that the manufacture and sale of West Bend

Mixer #1 violated the Lanham Act, 15 U.S.C. § 1125(a); the Federal

Trademark Dilution Act of 1995, 15 U.S.C. § 1125(c); and the common

law of unfair competition, trade dress infringement, dilution, and

false and misleading advertising.           To demonstrate that West Bend

had   unlawfully   replicated   its       product   configuration,   Sunbeam

identified six “key design features” in the American Classic

Mixmaster® that, when taken in combination, allegedly distinguish

the Sunbeam mixer from all other commercially available stand

mixers:

      (1)   a     distinctive    “torpedo-shaped”    housing
            configuration with a rounded rear-mounted speed
            control dial that conforms to the shape of the
            housing;

      (2)   a distinctive handle attached to the front of the
            housing that arches over the housing and terminates
            in the space above the housing;

      (3)   a distinctive beater-eject button located on the
            left side of the housing beneath the handle;

      (4)   a distinctive “tear-drop shaped” face plate on the
            front of the housing;

      (5)   a distinctive horizontal stripe or groove along the
            side of the housing; and

      (6)   a distinctive   combination        of   black   and   white
            features.

      The district court granted a temporary restraining order

(“TRO”) on April 12, 1996, enjoining West Bend from marketing any

products embodying the Mixmaster® product design trademark or

                                      2
similar designs or using any other mark or device likely to dilute

the distinctive quality of the Mixmaster® product design and the

Sunbeam trademark.          In particular, the court enjoined West Bend

from marketing West Bend Mixer #1, or displaying it at a pending

Gourmet Show in San Francisco on May 4-8, 1996.              West Bend filed a

motion to quash the TRO, leading the court to dissolve it on

April 16, 1996.       Nevertheless, the court set a hearing for April 30

to consider the motion for preliminary injunction.

      Following the hearing, the court granted Sunbeam's request for

a preliminary injunction on May 3, 1996, reinstating the injunction

against       West   Bend    Mixer   #1.       The   preliminary    injunction

substantially reinstated the terms of the TRO.

      West Bend filed an emergency motion to clarify the injunction,

proposing      an    alternative     design    for   the   mixer   (“West   Bend

Mixer #2”).      On May 6, the court ruled that West Bend Mixer #2 also

violated the Sunbeam trademark and was likewise prohibited by the

preliminary injunction, but the court suggested that West Bend

could escape the injunction by modifying the speed control dial. 1

The court modified the terms of the preliminary injunction to

reflect this ruling on May 14.

      West Bend redesigned the stand mixer in an effort to comply,

and the new design (“West Bend Mixer #3”) was presented to the

court on May 13-14.          On May 14, the court further modified the

terms of the preliminary injunction to bar West Bend Mixer #3.               The

          1
            In addition, the court required West Bend to make two future
modifications: (1) eliminate the “middle-up arced” handle curvature by August 31,
1996; and (2) remove and redesign the face plate by December 31, 1996.

                                           3
court approved a design incorporating additional modifications,

which subsequently was marketed by West Bend (“West Bend Mixer

#4”). The most prominent difference between West Bend Mixer #3 and

#4 was the elimination of mixing speed terms from the speed control

dial (e.g., “mix,” “beat,” “stir,” and “blend”).

       Finally, on May 23, the court entered an order and findings

summarizing the scope of the preliminary injunction.                  West Bend

filed a notice of appeal from the preliminary injunction, the two

orders modifying it, and the final order and findings.

       On July 31, 1996, West Bend submitted to the district court

its design for the next generation of mixers (“West Bend Mixer

#5”).    On August 6, the court ruled that West Bend Mixer #5 was

prohibited by the preliminary injunction, but approved a design

that incorporated the nondescript speed control dial of Mixer #4

(“West Bend Mixer #6”).

       On August 12, West Bend filed a notice of appeal from the

August    6   order,   and   the    cases      were   consolidated.    We   have

jurisdiction over these cases under 28 U.S.C. § 1292(a)(1), which

authorizes interlocutory appeal from preliminary injunctions.



                                         II.

       A preliminary injunction is an extraordinary equitable remedy

that    may   be   granted   only   if    the    plaintiff   establishes    four

elements: (1) a substantial likelihood of success on the merits;

(2) a substantial threat that the movant will suffer irreparable

injury if the injunction is denied; (3) that the threatened injury


                                          4
outweighs any damage that the injunction might cause the defendant;

and (4) that the injunction will not disserve the public interest.

See Blue Bell Bio-Medical v. Cin-Bad, Inc., 864 F.2d 1253, 1256

(5th Cir. 1989).      These four elements are mixed questions of law

and fact.      Accordingly, we review the factual findings of the

district court only for clear error, but we review its legal

conclusions de novo.        Likewise, although the ultimate decision

whether to grant or deny a preliminary injunction is reviewed only

for abuse of discretion, a decision based on erroneous legal

principles is reviewed de novo.            Id.2



                                     III.

      The Lanham Act, 15 U.S.C. § 1125(a), creates a cause of action

for trade dress infringement, analogous to the common law cause of

action for unfair competition.         “Trade dress” refers to the total

image and overall appearance of a product.           Blue Bell, 864 F.2d at

1256.3   The protection of trade dress is tantamount to trademark

protection:


      2
        See also Falcon Rice Mill, Inc. v. Community Rice Mill, Inc., 725 F.2d
336, 344 (5th Cir. 1984) (“If the trial court misapplies the governing legal
standards, however, the 'clearly erroneous' standard is inapplicable.”).
      3
        “Trade dress” may include features such as the size, shape, color, color
combinations, textures, graphics, and even sales techniques that characterize a
particular product. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764
n.1 (1992) (citing John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980
(11th Cir. 1983)). Accordingly, the inquiry does not focus on isolated elements
of the dress, but on whether a combination of features creates a distinctive
visual impression, identifying the source of the product. Falcon Rice Mill,
725 F.2d at 346; accord Taco Cabana Int'l, Inc. v. Two Pesos, Inc., 932 F.2d
1113, 1118-19 (5th Cir. 1991), aff'd, 505 U.S. 763 (1992). Thus, “[t]he whole,
in trademark law, is often greater than the sum of its parts.” Association of
Coop. Members, Inc. v. Farmland Indus., Inc., 684 F.2d 1134, 1140 (5th Cir.
1982); accord Taco Cabana, 932 F.2d at 1120.

                                       5
          Protection of trade dress, no less than of trademarks,
          serves the Act's purpose to “secure to the owner of the
          mark the goodwill of his business and to protect the
          ability of consumers to distinguish among competing
          producers.     National protection of trademarks is
          desirable, Congress concluded, because trademarks foster
          competition and the maintenance of quality by securing to
          the producer the benefits of a good reputation.”

Two Pesos, 505 U.S. at 774 (citations omitted).4

          To demonstrate an unlawful trade dress infringement, the

plaintiff must first establish that the trade dress qualifies for

trade dress protection. This inquiry encompasses three issues: (1)

distinctiveness, (2) secondary meaning, and (3) functionality.5 If

the    court    concludes   that   the    trade    dress     is    protected,   the

plaintiff       must   demonstrate       that     it   has        been   infringed.

“Infringement occurs only when there is a likelihood of confusion

between the products of the plaintiff and the defendant.”                       Blue

Bell, 864 F.2d at 1256; accord Taco Cabana, 932 F.2d at 1118-19.



      4
       Accordingly, because the Lanham Act “provides no basis for distinguishing
between trademark and trade dress,” Two Pesos, 505 U.S. at 773, the test for
trade dress protection is identical to that for trademark protection. “[T]he
protection of trademarks and trade dress under § 43(a) serves the same statutory
purpose of preventing deception and unfair competition. There is no persuasive
reason to apply different analysis to the two.” Id.
      5
       To warrant protection under the Lanham Act, a particular mark or product
characteristic must distinguish the product from products manufactured by others.
See Two Pesos, 505 U.S. at 768. Some marks are “inherently distinctive” and
automatically entitled to trademark protection.       Others, however, are not
inherently distinctive, but are merely descriptive of a certain product.
Nevertheless, even marks that are not inherently distinctive may become uniquely
associated with a particular source, thereby acquiring a “secondary meaning.”
Id. at 766 n.4.    “The general rule regarding distinctiveness is clear:       An
identifying mark is distinctive and capable of being protected if it either
(1) is inherently distinctive or (2) has acquired distinctiveness through
secondary meaning.” Id. at 769.
      Secondary meaning entitles a mark or trade dress to trademark protection,
despite the absence of an inherently distinctive characteristic. Accordingly,
a plaintiff need not demonstrate that a product has acquired a secondary meaning
if the mark is inherently distinctive, thereby entitling it to protection per se.
Id. at 773-74.

                                         6
       To establish that the product configuration of the American

Classic Mixmaster® merits trademark protection, therefore, Sunbeam

must    demonstrate     that   the    product    configuration      is   either

inherently distinctive or has acquired a secondary meaning, and

that this distinctive product configuration is not functional.                If

a trade dress is functional, it does not merit protection, even if

it is inherently distinctive or has acquired secondary meaning.

Two Pesos, 505 U.S. at 775.6         If the product configuration of the

American    Classic    Mixmaster®     warrants    trade   dress    protection,

Sunbeam also must demonstrate a likelihood of confusion, in order

to prevail on its claim of trade dress infringement under the

Lanham Act.



                                       A.

       As a threshold matter, we must determine whether the product

configuration of the American Classic Mixmaster® merits protection,

either because the product configuration is inherently distinctive

or because it has acquired a secondary meaning.                We now examine

these various considerations.



                                       1.

       For purposes of trademark law, marks or product features

      6
        “[A] design is legally functional, and thus unprotectible, if it is one
of a limited number of equally efficient options available to competitors and
free competition would be unduly hindered by according the design trademark
protection.” Two Pesos, 505 U.S. at 775. “'[A] product feature is functional,'
and cannot serve as a trademark, 'if it is essential to the use or purpose of the
article or if it affects the cost or quality of the article.'” Qualitex Co. v.
Jacobson Prods. Co., 514 U.S. 159, 165 (1995) (quoting Inwood Lab., Inc. v. Ives
Lab., Inc., 456 U.S. 844, 850 n.10 (1982)).

                                       7
traditionally have been arranged into five categories: (1) generic,

(2) descriptive, (3) suggestive, (4) arbitrary, and (5) fanciful.

Two Pesos, 505 U.S. at 768.7         This hierarchy determines the degree

of trademark protection to which a given mark is entitled.                   The

latter three categories are considered inherently distinctive,

“because their intrinsic nature serves to identify a particular

source of a product.”       Id.

      In contrast, marks that are merely descriptive of a product

are not considered inherently distinctive, “because they do not

inherently     identify     a     particular   source.”        Id.    at   769.

Accordingly, descriptive marks are entitled to protection only if

they have come to be uniquely associated with a particular source,

thereby acquiring a “secondary meaning.”           Id. at 766 n.4. Finally,

generic marks are not protected under any circumstances, because

they refer not to a particular product or manufacturer, but solely

to “the genus of which the particular product is a species.”                 Id.

at 768 (quoting Park 'N Fly, Inc. v. Dollar Park & Fly, Inc.,

469 U.S. 189, 194 (1985)).

      As this hierarchy illustrates, the essence of a protected mark



      7
        See also Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9
(2d Cir. 1976) (defining these five categories for purposes of trademark law).
Although these classifications were first coined in the context of trademark law,
they have also been applied to cases involving trade dress. See Two Pesos,
505 U.S. at 773 (approving the application of the Abercrombie classifications to
trade dress litigation); Chevron Chem. Co. v. Voluntary Purchasing Groups, Inc.,
659 F.2d 695, 702 (5th Cir. Unit A Oct. 1981) (holding that the same principles
that govern trademark law should apply to trade dress litigation). “Thus, a
trade dress feature is distinctive if it is arbitrary or fanciful, and not
descriptive or functional. Functional features cannot be protected, and merely
descriptive features must have acquired secondary meaning before qualifying for
protection.” Sicilia Di R. Biebow & Co. v. Cox, 732 F.2d 417, 426 (5th Cir.
1984).

                                       8
is its capacity to distinguish a product and identify its source.

The gravamen of trademark law is source identification. Therefore,

a given mark or trade dress is “inherently distinctive” only if it

is “sufficiently distinctive of itself to identify the producer.”

Chevron, 659 F.2d at 702; accord Sicilia Di R. Biebow, 732 F.2d at

426.           “Trade   dress   is   inherently   distinctive   when,   by   its

'intrinsic nature,' it identifies the particular source of the

product.”         Imagineering, Inc. v. Van Klassens, Inc., 53 F.3d 1260,

1263-64 (Fed. Cir.), cert. denied, 116 S. Ct. 277 (1995).8

       Insofar as product configurations are fundamentally different

from trademarks and trade dress, there is some question whether a

product configuration can ever be deemed “inherently distinctive.”

See Duraco Prod., Inc. v. Joy Plastic Enter., 40 F.3d 1431, 1445-46

(3rd Cir. 1994).9          Unlike traditional trademarks and trade dress,


           8
         “If a mark or dress serves as a symbol of origin it is considered
distinctive and protectable. Unless a mark or dress is deemed 'inherently' or
'sufficiently' distinctive, however, secondary meaning must be established.”
Sno-Wizard Mfg. v. Eisemann Prod. Co., 791 F.2d 423, 425 n.2 (5th Cir. 1986);
accord Taco Cabana, 932 F.2d at 1119-20. See also Duraco Prods., 40 F.3d at 1442
(explaining that “inherently distinctive trade dress is protected because
presumptively it primarily identifies the product’s source”).
       9
         Although product configurations technically are regarded as trade dress,
critics distinguish product configurations and designs from product packaging,
which is more closely associated with traditional trademark law. See, e.g.,
Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1007-08 (2d Cir. 1995); Duraco
Prods., 40 F.3d at 1448; see also Landscape Forms, Inc. v. Columbia Cascade Co.,
113 F.3d 373, 378-79 (2d Cir. 1997) (discussing the Knitwaves interpretation);
RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 16 cmt. b (1995).

       Product packaging designs, like trademarks, often share membership
       in a practically inexhaustible set of distinct but approximately
       equivalent variations, and an exclusive right to a particular
       overall presentation generally does not substantially hinder
       competition in the packaged good, the item in which a consumer has
       a basic interest. A product configuration, contrariwise, commonly
       has finite competitive variations that, on the whole, are equally
       acceptable to consumers.

                                                                (continued...)

                                          9
which function primarily to identify the source of a given product,

the primary purpose of product configuration is not identification.

Accordingly, as the Third Circuit stated, “one cannot automatically

conclude from a product feature or configurationSSas one can from

a product’s arbitrary name, for exampleSSthat, to a consumer, it

functions primarily to denote the product’s source.” Id. at 1441.10

      Hence,     some     commentators         have   suggested      that    product

configurations can never be considered “inherently distinctive.”11

Nevertheless, we need not reach this controversial question in the

instant case, because the product configuration of the American

Classic Mixmaster® has acquired a secondary meaning.




(...continued)
Duraco Prods., 40 F.3d at 1448. But see Stuart Hall Co. v. Ampad Corp., 51 F.3d
780, 787-88 (8th Cir. 1995) (criticizing the distinction between product
packaging and product configuration for purposes of trade dress law).
      10
         An arbitrary or fanciful mark or dress is presumed, as a matter of law,
to achieve consumer recognition immediately upon its adoption and use, because
the primary function of the mark or dress is source identification. In contrast,
a product configuration cannot generally warrant a presumption of identification,
“as consumers usually appreciate a product’s configuration for its contribution
to the inherent appeal of the product, not (in the absence of secondary meaning)
its signifying function.” Duraco Prods., 40 F.3d at 1441.
      11
          See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 16 cmt. b (1995) (noting that
product designs are not ordinarily considered inherently distinctive and may be
protected only upon proof of secondary meaning); J. Thomas McCarthy, MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 8.12 (4th ed. 1997) (collecting conflicting
authorities). Indeed, this court has also suggested that a product configuration
cannot be inherently distinctive. See Sicilia Di R. Biebow, 732 F.2d at 426 n.7
(“Unlike a product's configuration, which may acquire trademark value over time
and by exposure to consumers, arbitrary and nonutilitarian trade dress or
packaging usually is designed to act immediately as an identifier of source.”)
(emphasis added). But see Two Pesos, 505 U.S. at 772-75 (assuming arguendo that
a product configuration may be inherently distinctive); Duraco Prods., 40 F.3d
at 1446 (noting that Two Pesos must be read as “giving an imprimatur to finding
trade dress in a product configuration to be inherently distinctive under certain
narrow circumstances”); Sicilia Di R. Biebow, 732 F.2d at 425 n.3 (“The same
[distinctiveness] principles apply in the context of trade dress, although
selection is from designs and configurations, not words.”).

                                          10
                                         2.

      Assuming arguendo that the unique product configuration of the

American     Classic        Mixmaster®    cannot   be    deemed    inherently

distinctive, the district court did not err in concluding that it

has acquired secondary meaning, for purposes of the preliminary

injunction test.       A mark or product feature has acquired secondary

meaning if it “has come through use to be uniquely associated with

a specific source.”           Two Pesos, 505 U.S. at 766 n.4; accord

RESTATEMENT (THIRD)    OF   UNFAIR COMPETITION § 13 cmt. e (1995).          The

determination that a feature has acquired secondary meaning is a

finding of fact, which we review for clear error.                 Sno-Wizard,

791 F.2d at 427.

      Because 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,'” the determination whether a mark or dress

has acquired secondary meaning is primarily an empirical inquiry.

Sicilia Di R. Biebow, 732 F.2d at 425 n.4 (citation omitted).              This

court has expressly stated, and the Supreme Court has agreed, that

the gravamen of the secondary meaning determination is “'the

empirical question of current consumer association.'” Taco Cabana,

932 F.2d at 1120 n.7 (quoted in Two Pesos, 505 U.S. at 770).

Accordingly, survey evidence is the most direct and persuasive

evidence of secondary meaning.           Sno-Wizard, 791 F.2d at 427.12      In



      12
         “To establish secondary meaning, a manufacturer must show that, 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.” Inwood Lab.,
456 U.S. at 851 n.11 (1982) (emphasis added).

                                         11
the instant case, Sunbeam introduced no survey evidence to prove

that the “key design features” of the American Classic Mixmaster®

have acquired secondary meaning.13

      To compensate for the absence of empirical survey evidence,

Sunbeam proffered a variety of evidence to show secondary meaning.

We have recognized that consumer surveys are not the only evidence

relevant to the determination of secondary meaning.              In 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.

See Bank of Tex. v. Commerce Southwest, Inc., 741 F.2d 785, 787

(5th Cir. 1984).     Nevertheless, the ultimate determination whether

a particular mark or dress has acquired secondary meaning remains

an empirical question of consumer association.            See id. at 787-89.

      In support of its claim, Sunbeam offered evidence documenting

the   evolution    of   the   American     Classic    Mixmaster®,     consumer

testimonials, and the sales and marketing history of Sunbeam stand

mixer designs, contending that this product pedigree warrants a

presumption of secondary meaning.          While this evidence is relevant

to the inquiry, it does not establish the requisite consumer

association between the product configuration of the American

Classic Mixmaster® and the source of the product.



     13
        Sunbeam explains that the district court proceedings were conducted with
a sense of urgency, as a result of the impending Gourmet Show in San Francisco.
Therefore, Sunbeam did not have time to compile survey data to prove its case.
While this explanation would not excuse the omission of empirical data at trial,
it is precisely the sort of contingency that the lower burden of proof governing
preliminary injunctions is intended to accommodate, as this case illustrates.

                                      12
      In   concluding    that   the    American   Classic    Mixmaster®     has

acquired secondary meaning, the district court relied solely on the

pedigree of the current model.           Noting that the American Classic

Mixmaster® has evolved from stand mixers marketed by Sunbeam since

1930, the court inferred that the design has acquired secondary

meaning.

      Evidence of long use is insufficient to prove secondary

meaning, however, without empirical proof that the design “has come

through use to be uniquely associated with a specific source.”              Two

Pesos, 505 U.S. at 766 n.4.14         The district court erred by assuming

that the long and distinguished pedigree of the American Classic

Mixmaster®, without more, is sufficient to demonstrate secondary

meaning.15

      Were this case presented for review following final judgment,

we would be constrained to hold that Sunbeam had not demonstrated

that the American Classic Mixmaster® has acquired secondary meaning

entitling its product configuration to trade dress protection.

Review of a preliminary injunction is more circumscribed, however.

      To be entitled to a preliminary injunction, Sunbeam need only



     14
        See also Bank of Tex., 741 F.2d at 788 (disavowing that “length of time
alone is sufficient to establish secondary meaning”).
      15
         This is particularly true where, as here, the alleged secondary meaning
is founded upon a product configuration, rather than upon a traditional mark or
dress, because “consumers do not associate the design of a product with a
particular manufacturer as readily as they do a trademark or product packaging
trade dress.” EFS Mktg., Inc. v. Russ Berrie & Co., 76 F.3d 487, 491 (2d Cir.
1996); see also Duraco Prods., 40 F.3d at 1448 (opining that “a consumer is
substantially more likely to trust a product's packaging, rather than its
configuration, as an indicium of source”). Therefore, the mere fact that a
certain product configuration has a long pedigree does not warrant a presumption
of secondary meaning.

                                        13
show “a substantial likelihood of success on the merits.”   In this

case, the distinction is dispositive.     While the evidence upon

which the district court relied would not be sufficient to support

a judgment of trade dress infringement warranting final injunctive

relief, we conclude that it is sufficient to warrant a preliminary

injunction.

     The general principles qualifying a mark or trade dress for

registration as a trademark, under the registration provisions of

the Lanham Act, are likewise applicable to the determination

whether an unregistered mark is entitled to trademark protection.

See Two Pesos, 505 U.S. at 768.       The Lanham Act permits the

registration of marks that have acquired a secondary meaning, and

states that

     [t]he Commissioner may accept as prima facie evidence
     that the mark has become distinctive, as used on or in
     connection with the applicant's goods in commerce, proof
     of substantially exclusive and continuous use thereof as
     a mark by the applicant in commerce for the five years
     before the date on which the claim of [acquired]
     distinctiveness is made.

15 U.S.C. § 1052(f).

     This statutory presumption is relevant to the instant case.

The district court concluded that the external appearance of the

American Classic Mixmaster® has not changed in over seventeen years

and found that the other mixers on the market do not “even closely

resemble the overall appearance of the Sunbeam Mixmaster® mixer.”

This finding of fact is not clearly erroneous and is sufficient to

demonstrate “substantially exclusive and continuous use” of the




                                14
“key design features” ascribed to the American Classic Mixmaster®.16

      Therefore, the district court was entitled to accept this

evidence as prima facie evidence of secondary meaning.                      15 U.S.C.

§   1052(f);    Stuart   Hall    Co.,       51   F.3d   at    789.        Under   these

circumstances, although the evidence is not conclusive, Sunbeam has

demonstrated a substantial likelihood of success on the merits of

its trade dress infringement claim.



                                            B.

      Having concluded that the unique product configuration of the

Sunbeam American Classic Mixmaster® has acquired secondary meaning,

we must determine whether that product design is functional.                       If a

product characteristic is functional, it is not entitled to trade

dress      protection.     See       Two    Pesos,   505     U.S.    at    775.      The

functionality     doctrine      is    the    great   countervailing         factor   in

trademark law, balancing the interest in facilitating innovation

against the interest in fostering competition in the free market.

“The doctrine acts to separate those configurations that may be

protected as property rights or trademarks and those designs that

the law will not permit any person to appropriate or monopolize.”

Sicilia Di R. Biebow, 732 F.2d at 422.


      16
        This finding obviates West Bend's claim that the “key design features”
of the American Classic Mixmaster® have changed over the long life of the
product, and that other manufacturers have used the same features in competing
products.   It is undisputed that the “key design features” of the American
Classic Mixmaster® have remained constant since 1979, and the district court
found that no competing manufacturer has adopted an identical product
configuration during this period.       This evidence is sufficient to show
“substantially exclusive and continuous use,” for purposes of the Lanham Act, and
is prima facie evidence of secondary meaning.

                                            15
      Accordingly, this court has adopted the “utilitarian” standard

of functionality, which focuses on the protection of competition.

“The ultimate inquiry concerning functionality,” we have explained,

“is whether characterizing a feature or configuration as protected

'will hinder competition or impinge upon the rights of others to

compete effectively in the sale of goods.'”             Id. at 429 (quoting

In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1342 (C.C.P.A.

1982)).       In    order    to   be    classified      as   a   “functional”

characteristic, therefore, a product design or feature must be

“superior    or    optimal   in   terms      of   engineering,    economy   of

manufacture,       or   accommodation       of    utilitarian    function   or

performance.”      Id.17

      The Supreme Court has placed its imprimatur on this standard,

observing “a design is legally functional, and thus unprotectible,

if it is one of a limited number of equally efficient options

available to competitors and free competition would be unduly

hindered by according the design trademark protection.” Two Pesos,

505 U.S. at 775 (citing Sicilia).            In a subsequent decision, the

Court further observed that “'a product feature is functional,' and

cannot serve as a trademark, 'if it is essential to the use or

purpose of the article or if it affects the cost or quality of the

article.'”     Qualitex Co. v. Jacobson Prod. Co., 514 U.S. at 165




     17
        We have specifically applied the utilitarian standard in the context of
product configuration litigation. See Sno-Wizard, 791 F.2d 423, 426 n.3 (5th
Cir. 1986) (citing Sicilia Di R. Biebow).

                                       16
(1995) (quoting Inwood Labs., 456 U.S. 844, 850 n.10 (1982)).18

      The district court did not err in concluding that the product

configuration of the American Classic Mixmaster® is not functional

and thus is entitled to protection. For purposes of this analysis,

we must distinguish the isolated components of the product from the

trade dress, or “total image,” of the American Classic Mixmaster®.

Even if a product design incorporates certain functional features,

we have held that “a particular arbitrary combination of functional

features, the combination of which is not itself functional,

properly enjoys protection.”         Taco Cabana, 932 F.2d at 1119.

      Notwithstanding this principle, West Bend argues that Sunbeam

may not obtain trade dress protection for a product configuration

that includes functional features. This is manifestly not the law.

To the contrary, we previously have characterized this argument as

a “fallacious syllogism,” belied by the principle that an arbitrary

combination of functional features may be non-functional.                 Id.19.
“Trade dress” may include features such as the size, shape, color, color
combinations, textures, graphics, and even sales techniques that characterize a

particular product.   See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764

n.1 (1992) (citing John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980



     18
        This utilitarian theory of functionality, with its focus on competition,
lowers the threshold for trade dress protection. “A design that merely assists
in a product or configuration’s utility is not functional and may therefore be
protected.” Sicilia Di R. Biebow, 732 F.2d at 429.
     19
        The case West Bend cites for this proposition, Elmer v. ICC Fabricating,
Inc., 67 F.3d 1571 (Fed. Cir. 1995), is plainly distinguishable from this case.
First, Elmer concerns a trade dress claim in which every element was functional;
as Sunbeam notes, while some features of the American Classic Mixmaster® might
be functional, others plainly are not (e.g., color combinations, aesthetic
handles). This distinction is critical, as the trade dress of a product entails
its “total image” and “overall appearance.” Blue Bell, 864 F.2d at 1256.

                                       17
(11th Cir. 1983)).


      Accordingly, the inquiry does not focus on isolated elements of the dress,

but on whether a combination of features creates a distinctive visual impression,
identifying the source of the product. Falcon Rice Mill v. Community Rice Mill,
725 F.2d 336, 346 (5th Cir. 1984); accord Taco Cabana Int'l, Inc. v. Two Pesos,

Inc., 932 F.2d 1113, 1118-19 (5th Cir. 1991), aff'd, 505 U.S. 763 (1992). Thus,
“[t]he whole, in trademark law, is often greater than the sum of its parts.”

Association of Coop. Members, Inc. v. Farmland Indus., Inc., 684 F.2d 1134, 1140

(5th Cir. 1982); accord Taco Cabana Int'l, Inc., 932 F.2d at 1120.20
      Likewise, the fact that the American Classic Mixmaster® incorporates
functional features named in utility patents does not compel the conclusion that

the product configuration is legally functional.   Insofar as the trade dress of

a product entails its “total image” and “overall appearance,” Blue Bell, 864 F.2d
at 1256, an arbitrary combination of functional features may nevertheless be non-




     Second, the trade dress in Elmer was coextensive with a
utility patent, which incorporated every element of the trade
dress. Under these circumstances, the Federal Circuit feared that
trade dress protection would effectively extend the life of the
patent after its formal expiration. See Elmer, 67 F.3d at 1580.
In contrast, the trade dress claim in the instant case entails a
combination of several features, with individual utility patents
granted to certain features. In this regard, the principle that
trade dress is the “total image” of a product, rather than its
isolated components, is dispositive.          Unlike the situation in
Elmer, granting trade dress protection to the arbitrary product
configuration of the American Classic Mixmaster® would not restrict
any competitors from copying the individual functional features
after the individual utility patents have expired, but would simply prohibit
competitors from copying the arbitrary combination of features embraced in the
American Classic Mixmaster®. Hence, there is no conflict between patent law and
trademark law in the instant case.
      Finally, the proposition that a unique combination of functional features
is functional per se, despite the absence of any adverse effect on competition,
is incompatible with the utilitarian functionality doctrine of the Fifth Circuit.
It is also flatly inconsistent with the established rule that a particular
arbitrary combination of functional features, the combination of which is not
functional, is entitled to trade dress protection. See Taco Cabana, 932 F.2d
at 1119.

                                       18
functional for purposes of trade dress protection.21            Therefore, West Bend’s
arguments are without merit.
      The district court acknowledged that, when viewed in isolation, certain

“key design features” of the American Classic Mixmaster® might be considered
functional.    Nevertheless, the court found that “the particular combination of
functional features and the way they are arranged and packaged” warranted the

conclusion    that   the   “overall   shape   and   configuration   is    non-functional.”
Accordingly, the court properly focused its inquiry on the trade dress, rather

than on the isolated components of the product configuration.             See Taco Cabana,

932 F.2d at 1118-19.
      Protection of the arbitrary combination of features comprising the American
Classic Mixmaster® would not frustrate competition.         West Bend has presented no

evidence demonstrating that the product configuration of Model No. 2360 is

optimal in terms of engineering, economy of manufacture, or accommodation of
utilitarian function.

      To the contrary, Sunbeam observes that several other manufacturers compete
successfully in the stand mixer market without pirating the unique product

configuration of the American Classic Mixmaster®.         Therefore, protection of the

Sunbeam design would not impinge upon the rights of others to compete effectively
in the sale of goods, the litmus test of functionality.                  See Sicilia Di R.
Biebow, 732 F.2d at 429.      Consequently, insofar as there are equally efficient

options available to competitors, and free competition would not be unduly harmed


      21
         Furthermore, the mere fact that a feature is named in a utility patent
does not automatically render it functional. Many non-functional configurations
are incidentally included in utility patents. Dogloo, Inc. v. Doskocil Mfg. Co.,
893 F. Supp. 911, 919 (C.D. Cal. 1995).
      Even if the product configuration of the American Classic Mixmaster® was
incidentally illustrated in the utility patents, therefore, this does not compel
the conclusion that the design is functional. “[A] utility patent must be
examined in detail to determine whether the disclosed configuration is really
primarily functional or just incidentally appears in the disclosure of a patent.
There is no doubt that many non-functional shapes and configurations happen to
be described or pictured as an incidental detail in functional patents.”
J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 7:89 (4th ed. 1997).
We conclude that the product configuration of the American Classic Mixmaster® is
not a functional part of the utility patents but appears only in incidental
detail, without significance for trademark law.

                                              19
by according the product configuration trademark protection, the district court
did not err in concluding that the design of the American Classic Mixmaster® is
not functional.    See Two Pesos, 505 U.S. at 775.



                                            C.

      Finally,       having     determined       that   the    American    Classic

Mixmaster® is entitled to trade dress protection, we must determine

whether that trade dress has been infringed by the West Bend stand

mixers.     “Infringement occurs only when there is a likelihood of

confusion between the products of the plaintiff and the defendant.”
Blue Bell, 864 F.2d at 1256.              Likelihood of confusion is a question

of fact, which we review for clear error.               Id. at 1259-60; Sicilia

Di R. Biebow, 732 F.2d at 430.

      In determining the likelihood of confusion, the district court

must apply the “digits of confusion” test.                     The factors to be

weighed   in      this    calculus    include     (1)   similarity    of   the   two

products;      (2)       identity    of     retail   outlets    and   purchasers;

(3) identity of advertising media; (4) strength of the trademark or

trade dress; (5) intent of the defendant; (6) similarity of design;

(7) actual confusion; and (8) degree of care employed by consumers.

See Blue Bell, 864 F.2d at 1259-60; Sno-Wizard, 791 F.2d at 428.

Proof of actual confusion is not a prerequisite, and no single

factor is dispositive of the likelihood of confusion. Taco Cabana,

932 F.2d at 1122 n.9.

      The district court weighed all eight factors and found that

there is a substantial likelihood of confusion between the mixers.

On appeal, West Bend challenges the weight accorded three factors

                                            20
in this analysis, arguing that they disprove any risk of confusion.

The conclusions of the district court are not clearly erroneous.22



                                          1.

       The district court concluded that West Bend had intentionally

copied      the    product       configuration      of   the     American     Classic

Mixmaster®.        The intent of the defendant is a “'critical factor,

since if the mark was adopted with the intent of deriving benefit

from the reputation of [the plaintiff,] that fact alone may be

sufficient        to   justify    the   inference    that      there   is   confusing

similarity.'” Chevron, 659 F.2d at 703-04 (quoting Amstar Corp. v.

Domino's Pizza, Inc., 615 F.2d 252, 263 (5th Cir. 1980)).23

       West Bend objects to this characterization of the evidence,

arguing that there is no evidence of intent to derive benefit from

the Sunbeam reputation.            Direct evidence is unnecessary, however;

impermissible intent may be inferred from the fact that a defendant

plagiarized the trade dress of a product.                See Chevron, 659 F.2d at

704.

       After considering the evidence, the district court found that



       22
        West Bend does not dispute that the first four factors in this calculus
support the findings: (1) The two products are identical; (2) the products are
marketed to the same consumers through the same retailers; (3) the two companies
use the same advertising media to market their products; and (4) the American
Classic Mixmaster® enjoys a “strong” distinctive trade dress. Even a “weak”
trade dress may be protected within its own product line, moreover, thereby
warranting injunctive relief in the instant case.            See Taco Cabana,
932 F.2d at 1120. Finally, although Sunbeam introduced no evidence of actual
confusion by consumers, proof of actual confusion is not a prerequisite to
injunctive relief. Id. at 1122 n.9; Blue Bell, 864 F.2d at 1260.
       23
        Accord Taco Cabana, 932 F.2d at 1122 n.11; Blue Bell, 864 F.2d at 1259;
Sno-Wizard, 791 F.2d at 428.

                                          21
“there has been no other plausible explanation presented by the

Defendant for the virtual replication of the Plaintiff's Mixmaster®

mixer,” and inferred that West Bend had intended to imitate the

American Classic Mixmaster® and thereby benefit from the consumer

goodwill associated with Sunbeam mixers.                This circumstantial

inference is corroborated by direct evidence: West Bend submitted

a picture of the American Classic Mixmaster® to its manufacturer in

China, directing his attention to “this one.”24                The court was

entitled to infer that West Bend intended to copy the American

Classic Mixmaster® and usurp consumer goodwill, and this finding of

fact is not clearly erroneous.

      Granted, the defendant's intent is only one element in the

likelihood-of-confusion inquiry, and intent alone is not sufficient

to establish trade dress infringement.           See Blue Bell, 864 F.2d at

1258-59.    Nevertheless, it is firmly established that a finding of

intent may support an inference of consumer confusion.                   Id. at

1259.

      Moreover, the evidence of intent does not stand alone in the

instant    case,   but    is   corroborated   by   several    other   factors.

Finally, the proper weighing of the relevant factors is left to the

district court.     Id.    The district court was entitled to find that

West Bend intentionally copied the design of the American Classic



         24
            Indeed, in addition to the photograph of the American Classic
Mixmaster®, West Bend included a marked-up copy of the product description
accompanying the Sunbeam mixer, altering the product specifications and replacing
references to Sunbeam with references to West Bend. This plagiarism supports the
inference that West Bend used the American Classic Mixmaster® as a template for
its mixers.

                                       22
Mixmaster®, and it reasonably could infer a likelihood of confusion

from this unlawful intent.



                                       2.

       West Bend criticizes the district court for its holistic view

of the similarities between the American Classic Mixmaster® and the

West Bend mixers, arguing that the court should have considered the

“key design features” of the mixers to determine whether there was

a likelihood of confusion between the two product configurations.

Once again, West Bend ignores the fact that the trade dress of a

product is comprised of its “total image” and “overall appearance,”

not isolated components.         Blue Bell, 864 F.2d at 1256.

       In particular, for purposes of the likelihood of confusion

inquiry, the courts must consider the overall trade dress of the

product.    “[I]t is the 'combination of features as a whole rather

than a difference in some of the details which must determine

whether the competing product is likely to cause confusion in the

mind   of   the    public.'”     Chevron,    659   F.2d    at   704   (citations

omitted).         Accordingly,   the   district    court    did   not    err   in

concluding that the similarities in design between the American

Classic Mixmaster® and the West Bend mixers created a likelihood of

confusion.25


      25
         West Bend reminds us that it introduced expert testimony to establish
that the American Classic Mixmaster® and the West Bend mixers employ a different
“form language” and thus bear a different appearance. Nevertheless, the district
court did not credit this expert testimony, finding that the two products are “as
alike as two peas in a pod.” This is a fact issue, and the trier of fact is
entitled to choose between two equally permissible views of the evidence. This
                                                                (continued...)

                                       23
                                       3.

       Finally, the likelihood of confusion created by similar trade

dresses and product configurations may be alleviated by other

source indicia, such as manufacturer's labels.           E.g., Blue Bell,

864 F.2d at 1260; Sno-Wizard, 791 F.2d at 428.            Particularly in

product configuration litigation, where consumers are less likely

to rely on the configuration as a source identifier, labels and

packaging may eliminate confusion.          See Versa Prods. Co. v. Bifold

Co., 50 F.3d 189, 203 (3rd Cir.), cert. denied, 116 S. Ct. 54

(1995).       As the Third Circuit explains, “clarity of labeling in

packaging and advertising will suffice to preclude almost all

possibility of consumer confusion as to source stemming from the

product's configuration.”       Id.

       It is uncontested that both the West Bend stand mixers and the

Sunbeam American Classic Mixmaster® are labeled with the trademarks

of their respective manufacturers.          Therefore, West Bend contends

that    any    risk   of   confusion    has   been   eliminated,   as   the

manufacturer's labels and distinctive packaging distinguish the

competing products and allay any fears of consumer confusion. This

is particularly true, West Bend argues, because stand mixers are

not impulse purchases, but are expensive household appliances;

consumers ordinarily exercise a higher degree of care in purchasing

such items, thereby reducing the likelihood of consumer confusion.

Indeed, in the case of a high-priced, single-purchase article,



(...continued)
factual determination is not clearly erroneous.

                                       24
there is hardly a likelihood of confusion when the name of the

manufacturer is openly displayed on a product.              E.g., Blue Bell,

864 F.2d at 1260; Sno-Wizard, 791 F.2d at 428-29.

      Nevertheless, although this argument has considerable merit

and enjoys substantial support in our precedent, it is insufficient

to demonstrate that the district court clearly erred in finding a

likelihood of confusion under the unique facts of the instant case.

While we have recognized that labels may dispel consumer confusion,

under appropriate circumstances, we have never held that this is an

absolute affirmative defense to every trademark infringement claim.

To the contrary, we have also observed that the mere labeling of a

product will not automatically alleviate a likelihood of confusion,

Sno-Wizard, 791 F.2d at 429, and the ultimate determination of

consumer confusion is a question of fact for the district court.26




                                      D.

      In conclusion, Sunbeam established a substantial likelihood of

success on the merits of its trade dress infringement claim.                 It

introduced    sufficient     evidence      to   prove   secondary     meaning,



      26
         We have never vacated a preliminary injunction on the ground that a
manufacturer's label alleviated any likelihood of confusion, as a matter of law.
In every decision cited to us by West Bend, we affirmed preliminary injunctions
because the findings of the district courts were not clearly erroneous. See,
e.g., Blue Bell, 864 F.2d at 1260; Sno-Wizard, 791 F.2d at 428-29. Obviously,
the proposition that a court may conclude that a manufacturer's labels alleviate
the risk of consumer confusion is not tantamount to the proposition that the
court must reach such a conclusion, notwithstanding the other factors mandated
under the “digits of confusion” test. Such a rule would eviscerate the district
court's role as the finder of fact, and we decline to endorse it as a matter of
law.

                                      25
particularly given the statutory presumption that the substantially

continuous and exclusive use of a particular mark or dress for over

five years raises an inference of secondary meaning.            Accordingly,

the district court correctly found that the product configuration

of the American Classic Mixmaster® warrants trade dress protection.

      Second, the product configuration of the American Classic

Mixmaster® is not functional. Notwithstanding the incorporation of

certain functional features, the protected trade dress is the total

image and overall appearance of the American Classic Mixmaster®.

      Finally, the district court was entitled to find a likelihood

of confusion between the American Classic Mixmaster® and the West

Bend mixers.    While the use of manufacturers' labels might dispel

any   confusion,    the   district    court    is    entitled   to    evaluate

conflicting evidence, and its factual determination regarding the

likelihood of confusion is not clearly erroneous. Accordingly, the

court   did   not   err   in   concluding     that   Sunbeam    has   shown   a

substantial likelihood of success on the merits of its trade dress

infringement claim, warranting a preliminary injunction under the

Lanham Act.



                                     III.

      West Bend argues that the preliminary injunction is contrary

to the public interest, because trade dress protection for the

product configuration of the American Classic Mixmaster® would

grant a “permanent patent” on the key design features of the mixer.

This alarmist rhetoric is unfounded.


                                      26
     As we have stated, trade dress protection of the “total image”

and “overall appearance” of the American Classic Mixmaster® is not

tantamount to protection of the isolated functional components,

which remain in the public domain absent protection by patent law.

Therefore,   trade   dress   protection   of   the   American   Classic

Mixmaster® protects the whole, which is greater than the sum of its

parts.   Sunbeam “does not seek protection for individual elements,

but for a particular combination of elements which constitute trade

dress as a whole.”   Taco Cabana, 932 F.2d at 1119.

     The Lanham Act embodies two strong countervailing policies:

protection of the proprietary interest in distinctive trademarks,

minimizing consumer confusion and maximizing consumer confidence,

versus fostering competition and its attendant economic benefits.

Trademark law accommodates these countervailing public policies by

limiting trademark protection to distinctive, non-functional marks.

     In the instant case, therefore, the public interest calculus

is subsumed within the merits of the trade dress infringement

claim:   Because the product configuration of the American Classic

Mixmaster® is entitled to trade dress protection, it necessarily

follows that the preliminary injunction serves the public interest.

Indeed, trade dress protection of the American Classic Mixmaster®

will not frustrate competition, but will foster it.



                                 IV.

     West Bend attempted to comply with the preliminary injunction

by proposing a series of modifications to its original stand mixer.


                                  27
With only two exceptions, the district court rejected these mixers,

modifying the preliminary injunction to include the new designs.

We need not consider each subsequent design modification in detail,

as the district court possesses broad discretion to vindicate the

preliminary injunction by prohibiting subsequent modifications that

do not move a “safe distance” away from the trademark infringement.

“In such a case as this, where the appellants have been found

guilty of infringing the trade-mark rights of others, they should

thereafter be required to keep a safe distance away from the

dividing line between violation of, and compliance with, the

injunction.”      Eskay Drugs, Inc. v. Smith, Kline & French Labs.,

188 F.2d 430, 432 (5th Cir. 1951).27

      The   “safe    distance”     rule     vests   broad      discretion       in   the

district court, to ensure that the Lanham Act is not frustrated by

manufacturers who seek to circumvent injunctions with subsequent

modifications.       Accordingly, the “safe distance” rule permits the

court to issue injunctions that sweep even more broadly than the

Lanham Act would permit against a manufacturer who has not already

been found liable for trademark infringement.                   “'[A] competitive

business,     once    convicted       of   unfair     competition     in    a    given

particular, should thereafter be required to keep a safe distance

away from the margin lineSSeven if that requirement involves a

handicap    as    compared     with     those   who     have    not   disqualified

themselves.'” Chevron, 659 F.2d at 705 (quoting Broderick & Bascom


       27
          See also J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 30.13[1] (4th ed. 1997).

                                           28
Rope Co. v. Manoff, 41 F.2d 353, 354 (6th Cir. 1930)).28                 Having

crossed the line of fair competition, a manufacturer may be ordered

to stand back from it.



                                       V.

      In summary, the district court did not abuse its discretion by

issuing   the   preliminary     injunction.       The   order    granting    the

injunction, accordingly, is AFFIRMED.29




      28
         Accord Conan Properties, Inc. v. Conans Pizza, Inc., 752 F.2d 145, 154
(5th Cir. 1985) (“When fashioning an injunction in a suit such as this, the court
must give careful consideration to the possibility that a defendant found to have
either infringed the plaintiff's mark or unfairly competed with the plaintiff
will modify his behavior ever so slightly and attempt to skirt the line of
permissible conduct. Courts have responded to this problem by issuing broad
injunctions that prohibit conduct that clearly infringes the plaintiff's mark as
well as conduct that ordinarily would not justify any relief.”).
     29
        Given our conclusion that the preliminary injunction was justified under
the Lanham Act, we need not consider whether it likewise was warranted under the
Federal Trademark Dilution Act, 15 U.S.C. § 1125(c).

                                       29
