             United States Court of Appeals
                        For the First Circuit

No. 12-1659

                    SWAROVSKI AKTIENGESELLSCHAFT;
                   SWAROVSKI NORTH AMERICA LIMITED,

                        Plaintiffs, Appellees,

                                  v.

                         BUILDING #19, INC.,

                        Defendant, Appellant.


             APPEAL FROM THE UNITED STATES DISTRICT COURT
                   FOR THE DISTRICT OF RHODE ISLAND

               [Hon. Mary M. Lisi, U.S. District Judge]


                                 Before
                          Lynch, Chief Judge,
                        Boudin,* Circuit Judge,
                    and Woodlock,** District Judge.


     Michael C. Gilleran with whom Michael D. Riseberg, Jeffrey K.
Techentin, Rory Z. Fazendeiro and Adler Pollock & Sheehan P.C. were
on brief for appellant.
     Robert K. Taylor with whom Partridge Snow & Hahn LLP was on
brief for appellees.

                           January 9, 2013



     *
       Judge Boudin heard oral argument in this matter, and
participated in the semble, but he did not participate in the
issuance of the panel's opinion in this case. The remaining two
panelists therefore issued the opinion pursuant to 28 U.S.C.
§ 46(d).
     **
          Of the District of Massachusetts, sitting by designation.
            Per    Curiam.       Defendant-appellant        Building       #19,   Inc.

appeals from the entry of a preliminary injunction restricting its

use of the word "Swarovski" in newspaper advertising to a certain

font size.        The case is ongoing in the district court, with

requests for permanent injunctive relief pending.                      The dispute

began when Building #19 obtained a number of Swarovski crystal

figurines that it hoped to resell, and in order to promote the sale

designed    a   newspaper       advertisement    emblazoned         with   the    name

"Swarovski"       in    large   print   font.     Alerted      to    the    proposed

advertisement, Swarovski Aktiengesellschaft and Swarovski North

America Limited (collectively, "Swarovski") sought a preliminary

injunction barring Building #19 from using the Swarovski name or

mark in its advertising.            After a hearing, the district court

issued an oral opinion that granted the preliminary injunction in

part by limiting Building #19's use of the Swarovski name to a much

smaller font size.

            Building #19 is an off-price retail store that acquires

products through         secondary,     non-traditional      channels       and then

resells    them    at    discounted     prices   in   its    11   stores     located

throughout New Hampshire, Massachusetts and Rhode Island.                         The

business is known by its motto, "Good Stuff Cheap," and aside from

Swarovski crystal figurines, Building #19 has previously acquired

and resold brand-name collectible merchandise made by companies

such as Thomas Kinkade and M.I. Hummel.                     Building #19 spends


                                         -2-
millions of dollars on newspaper advertising in New England to

market itself as a vendor of salvage, overstock and discontinued

merchandise--these ads often feature descriptions of the advertised

goods alongside humorous cartoons.

            Swarovski is a world-famous manufacturer and distributor

of crystal, jewelry and other luxury products.                It holds several

registered federal trademarks for the mark "Swarovski," which it

has used in the United States since at least 1969.                   Swarovski

monitors and polices the use of its mark through a dedicated anti-

infringement unit.       It sells its crystal products online, in

Swarovski    retail    stores   (including   stores      in    New   Hampshire,

Massachusetts and Rhode Island), in small independent retailers and

in authorized national retailers such as Macy's, Bloomingdale's and

Nordstrom.    Swarovski merchandise may also be purchased through

secondary channel re-sellers, eBay and other discount retailers.

            In December 2011, Building #19 acquired a number of

Swarovski    crystal    figurines,    with   a   total    retail      value   of

approximately $500,000, from an insurer's salvage sale after a

severe storm damaged the warehouse where they had been stored by

their prior owner.       The figurines were apparently unaltered and

free from damage, and came boxed in their original packaging with

the Swarovski Certificate of Authenticity.                Although industry

practice varies, in this case the salvor placed no restrictions on

Building #19's ability to use the "Swarovski" name or product


                                     -3-
label.   Swarovski itself never directly authorized Building #19 to

use its trademark or name.

           That same month, Building #19 conducted two, one-day-only

sales of its Swarovski merchandise. It promoted the events through

newspaper advertisements, one of which was headlined with the word

"SWAROVSKI" in extra-large, capitalized, bold, and distinctive

lettering.     The bodies of the ads included cartoons of a tornado

wrecking a warehouse, several pictures of crystal figurines, a list

of the available items along with their prices and other text

describing the details of the sale.        The name "Building #19" also

appeared at the bottom of the advertisements in extra-large,

capitalized,    bold   and   distinctive   lettering.   At   the   events

themselves, Building #19 set up a separate, roped-off display and

sales area for the crystal along with various decorations featuring

the word "Swarovski."

           On December 7, 2011, Swarovski sent Building #19 a cease

and desist letter objecting to the ads, and a week later, on

December 14, Swarovski filed a complaint against Building #19 in

the United States District Court for the District of Rhode Island.

It alleged various claims for trademark infringement and unfair

competition under the Lanham Act and Rhode Island statutory and

common law.      In response, Building #19 agreed to voluntarily

refrain from further advertising or sale of the Swarovski crystal

in its possession.


                                   -4-
            All was well until April 5, 2012, when Building #19

provided     Swarovski      with    a    copy       of    a     proposed      newspaper

advertisement that it intended to run to promote a Mother's Day

sale of its remaining Swarovski crystal, and invited Swarovski to

suggest    any    further   steps       it   could       take    to   avoid    consumer

confusion.       The advertisement came crowned with a headline that

read "ONE DAY EVENT 11AM to 8PM, Tornado Hits Warehouse containing

GENUINE SWAROVSKI(R) CRYSTAL Collectibles."                     The word "Swarovski"

appeared in extra-large, capitalized, bold and distinctive font.

Like the previous ads, the body of the advertisement contained

several images and text giving details on the sale.                           The name

"Building #19" ran at the bottom of the add in extra-large,

capitalized, bold and distinctive font.                    A disclaimer, in much

smaller, unbolded font, also appeared near the bottom of the ad,

reading: "Disclaimer: Building #19 is selling GENUINE SWAROVSKI(R)

CRYSTAL products BUT Building #19 is NOT an authorized dealer, has

no affiliation, connection or association with SWAROVSKI(R) and the

standard SWAROVSKI(R) limited warranty is not available to our

customers.        (The   lawyers    told       us    we    should     add     that   big

'but'....)."

            In response, Swarovski filed a motion for a preliminary

injunction to forbid Building #19 from: (1) using the Swarovski

trademark or name or any other marks or names or logos confusingly

similar thereto in advertisements, in-store promotions, customer


                                         -5-
cards or signage of any kind, and (2) doing any act likely to

induce the mistaken belief that Swarovski products or services are

in any way affiliated, connected or associated with or sponsored by

Building #19, including creating display areas tending to imply a

"store within a store" event.

            On May 1, 2012, the district court held an evidentiary

hearing on Swarovski's motion, during which it heard arguments from

counsel as well as witness testimony from several Building #19

employees and two Swarovski employees who attended the first

crystal    sale.       After    a     brief   recess,      the   district     court

acknowledged the need for an expedited determination, due to

Building #19's wish to advertise before Mother's Day on May 13, and

so the court departed from its usual practice of issuing a written

decision and instead engaged "in a little more rough justice by

providing an oral decision today."             Ultimately, the court granted

Swarovski's motion only to the extent that the capitalized word

"Swarovski" at the top of the proposed advertisement could be no

larger    than   the   font    used    for    the   name   "Swarovski"      in   the

disclaimer at the bottom of the proposed advertisement.                     Neither

party raised any objection to this decision at the time.

            Building #19 now appeals the district court's order,

arguing that it failed to include the necessary findings (1) that

its use of the "Swarovski" mark was likely to confuse consumers and

(2) that Swarovski would suffer irreparable harm as a result of its


                                        -6-
use of the mark.     We agree, and therefore reverse the grant of the

injunction and remand so that the district court may make further

findings on these points.

              A district court faced with a motion for a preliminary

injunction must weigh four factors: “(1) the plaintiff's likelihood

of success on the merits; (2) the potential for irreparable harm in

the absence of an injunction; (3) whether issuing an injunction

will burden the defendants less than denying an injunction would

burden the plaintiffs; and (4) the effect, if any, on the public

interest.”      United States v. Weikert, 504 F.3d 1, 5 (1st Cir.

2007).    We review a district court's grant of a preliminary

injunction for abuse of discretion.      See Peoples Fed. Sav. Bank v.

People's United Bank, 672 F.3d 1, 9 (1st Cir. 2012).        Within that

framework, we review fact findings for clear error and issues of

law de novo.      Bos. Duck Tours, LP v. Super Duck Tours, LLC, 531

F.3d 1, 11 (1st Cir. 2008).

              We begin with the district court's approach to the first

prong    of    the   preliminary   injunction   analysis,   Swarovski's

likelihood of success on its infringement claim against Building

#19, because while each of the four factors is important, "the

cynosure of this four-part test is more often than not the movant's

likelihood of success on the merits."      Borinquen Biscuit Corp. v.

M.V. Trading Corp., 443 F.3d 112, 115 (1st Cir. 2006).       This is so

especially in a trademark infringement case, since "the resolution


                                   -7-
of the other three factors will depend in large part on whether the

movant is likely to succeed in establishing infringement."           Id.

          To   establish    infringement   successfully,     a   trademark

plaintiff must demonstrate that the defendant used an imitation of

its protected mark in commerce in a way that is "likely to cause

confusion, or to cause mistake, or to deceive."              15 U.S.C. §

1114(1)(a)   (2006).1      Historically,   the    subject   of   trademark

"confusion" has been the source of the good or service to which the

mark is attached.   See New Kids on the Block v. News Am. Publ'g,

Inc., 971 F.2d 302, 305 (9th Cir. 1992).         For instance, a shoddy

crystal manufacturer might label its goods "Swarovski" or something

similar in order to fool consumers into thinking they were buying

the luxury product.     "The typical situation in a trademark case

involves the defendant's having passed off another's mark as its

own or having used a similar name, confusing the public as to

precisely whose goods are being sold."           Century 21 Real Estate

Corp. v. LendingTree, Inc., 425 F.3d 211, 217 (3rd Cir. 2005).             In

this circuit, we evaluate the likelihood of such confusion through




     1
      A successful infringement action requires the plaintiff to
prove both (1) that its mark merits protection and (2) that the
allegedly infringing use of its mark is likely to result in
consumer confusion. Borinquen Biscuit Corp., 443 F.3d at 116.
Because both parties apparently agree that the "Swarovski" mark
merits protection, we focus only on the question of whether
Building #19's use of that mark was likely to confuse consumers.

                                  -8-
the eight-factor analysis laid out in Pignons S.A. de Mecanique de

Precision v. Polaroid Corp., 657 F.2d 482 (1st Cir. 1982).2

            But the "confusion" at issue in this case is of a

different kind. Building #19 has not labeled its own products with

the "Swarovski" mark, but instead wants to use the "Swarovski" mark

to describe actual Swarovski crystal.           Because some trademarked

products are so well-known and so unique, "many goods and services

are effectively identifiable only by their trademarks."              New Kids

on the Block, 971 F.2d at 306.            As the district court found,

Swarovski   crystal   is   among    them.     Unlike    typical     trademark

infringement, where the defendant uses the plaintiff's mark to

refer to the defendant's product, this so-called "nominative use"

involves Building     #19's   use   of    Swarovski's   mark   to   refer to

Swarovski's own product.3 Id. at 308.




     2
      The eight factors are: (1) the similarity of the marks, (2)
the similarity of the goods, (3) the relationship between the
parties' channels of trade, (4) the relationship between the
parties' advertising, (5) the classes of prospective purchasers,
(6) the evidence of actual confusion, (7) the defendant's intent in
adopting the mark and (8) the strength of the plaintiff's mark.
Pignons, 657 F.2d at 487-91.
     3
      "Nominative use" may also include situations where the
defendant ultimately describes his own product, so long as his use
of the mark is in reference to the plaintiff's product.        For
instance, a car mechanic who specializes in Volkswagens might put
the word "Volkswagen" in an advertisement; he makes nominative use
of the word in reference to another's product, but he does so in
order to describe his own service.     See Century 21 Real Estate
Corp.,    425   F.3d   at   214,   218    (citing   Volkswagenwerk
Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1969)).

                                    -9-
            The potential for confusion in a nominative use case is

not one of source--here, the crystal really was manufactured by

Swarovski--but rather one of endorsement or affiliation.                  The fear

is   that   a   consumer     glancing        at     Building     #19's   proposed

advertisement might mistakenly believe that Swarovski had some

official    association     with   the    sale;       perhaps    that    Swarovski

sponsored the sale and so stood behind the goods as a direct

seller, or that it had partnered with Building #19 in a way that

might detract from its luxury status.               See Century 21 Real Estate

Corp., 425 F.3d at 221; New Kids on the Block, 971 F.2d at 308.

            Because this kind of confusion does not implicate the

traditional "source-identification function" of a trademark, id.,

other    circuits,   most   notably      the      Ninth   and   the   Third,   have

developed a distinct "nominative fair use" analysis to identify

unlawful infringement in cases like this one.4                    Although these

courts differ on the precise articulation of the doctrine and on

whether it should replace the standard likelihood-of-confusion

analysis or should serve as an affirmative defense, they generally

evaluate the lawfulness of a defendant's nominative use of a mark

through the lens of three factors: (1) whether the plaintiff's

product was identifiable without use of the mark; (2) whether the



     4
      See, e.g., Century 21 Real Estate Corp., 425 F.3d at 220; New
Kids on the Block, 971 F.2d at 308; see also Bd. of Supervisors for
La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d
465, 489 (5th Cir. 2008), cert. denied, 556 U.S. 1268 (2009).

                                      -10-
defendant used more of the mark than necessary; and (3) whether the

defendant accurately portrayed the relationship between itself and

the plaintiff. See Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610

F.3d 1171, 1175-76 (9th Cir. 2010); Century 21 Real Estate Corp.,

425 F.3d at 222.        In the First Circuit, we have recognized the

"underlying principle" of nominative fair use, but like several

other circuits, we have never endorsed any particular version of

the doctrine. See Universal Commc'n Sys., Inc. v. Lycos, Inc., 478

F.3d 413, 424 (1st Cir. 2007); see also Rosetta Stone Ltd. v.

Google, Inc., 676 F.3d 144, 154-55 (4th Cir. 2012); Tiffany (NJ)

Inc. v. eBay Inc., 600 F.3d 93, 102-03 (2d Cir.), cert. denied, 131

S. Ct. 647 (2010); Paccar v. Telescan Techs., L.L.C., 319 F.3d 243,

256-57 (6th Cir. 2003).

           Given the uncertainty in this area of the law, the

district court made an admirable attempt to evaluate the likelihood

that Swarovski would succeed on its infringement claim against

Building #19.       Ultimately, however, the district court's opinion,

perhaps because it was delivered to provide an expedited resolution

of the interlocutory motion contemporaneously with the hearing, did

not   include   a    finding    on   whether   Building     #19's   use   of   the

"Swarovski" mark in its proposed advertisement was likely to

confuse   consumers     in     order   to   support   the    issuance     of   the




                                       -11-
preliminary injunction.5      Nor are we able to infer such a finding

from the court's reasoning.

            There is a need for greater clarity on the matter of

likely confusion in this case. A trademark holder's claim over his

mark extends to uses of the mark "likely to cause confusion, or to

cause mistake, or to deceive."        15 U.S.C. § 1114(1)(a); see also 4

McCarthy on Trademarks and Unfair Competition § 23:1 (4th ed. 2012)

(describing     likelihood    of   confusion      as   the   "[k]eystone"   of

trademark infringement).       Swarovski may not charge infringement

against all unauthorized uses of the "Swarovski" name, but only

those    uses   likely   to   cause    consumer    confusion,    mistake    or

deception.      The Supreme Court has made clear that a trademark

infringement action "requires a showing that the defendant's actual

practice is likely to produce confusion in the minds of consumers,"

with the burden placed firmly on the plaintiff. KP Permanent Make-

Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 117-18

(2004).    Without such a showing, no trademark infringement has

occurred and so the trademark holder has no cause of action.

            In this case, there is no indication from the record that

the district court found a likelihood of confusion either under the

traditional eight-factor Pignons test or under the nominative fair



     5
      The determination of likely confusion is a question of fact,
Bos. Beer Co. Ltd. P'ship v. Slesar Bros. Brewing Co., Inc., 9 F.3d
175, 183 (1st Cir. 1993), which on appeal we ordinarily review for
clear error, Bos. Duck Tours, 531 F.3d at 15.

                                      -12-
use test.    The court first stated that Swarovski had tried to

"shoehorn" this case into the analysis laid out in Pignons, but

that Pignons "was a very different case from this." The court then

applied the Pignons analysis, as it felt it was required to do by

our precedent.    It found that only the first, second and eighth

factors weighed in Swarovski's favor,6 while the third, fourth,

fifth, sixth and seventh factors either benefitted Building #19 or

did not help either party.7     The court ultimately concluded that it

was "not so sure that Plaintiff met its burden under the Pignons

test."   While this statement may not be a negative finding on the

matter, it certainly does not indicate a positive finding that

Swarovski   had   met   its   burden   under   the   traditional   Pignons

confusion test.




     6
      For the first two factors, the court observed that Building
#19 was clearly using the "Swarovski" name (although not its logo)
and selling authentic Swarovski goods. For the eighth factor, the
court noted that the Swarovski mark was strong and prevalent.
     7
      The court found that the third and fourth factors weighed in
favor of Building #19, since Swarovski sells only online or through
high-end retail stores, while Building #19 is an off-price
discounter brick-and-mortar store that advertises in the local
press. It found that the fifth factor, the classes of prospective
purchasers, was a "wash," since Building #19 admitted to targeting
high-end buyers.    For the sixth factor, the evidence of actual
confusion, the court noted that there was only one piece of
disputed, arguably hearsay, evidence, and that it "questioned
whether it was accurately recounted here." And in regard to the
seventh factor, Building #19's intent in adopting the mark, the
court observed that Building #19 had not adopted the mark, but
instead was utilizing the name "Swarovski" simply to describe the
items that it was selling.

                                   -13-
           The court next analyzed the advertisement through the

three nominative fair use factors, as Building #19 urged it to do

in its opposition motion to Swarovski's motion for a preliminary

injunction, and which the court believed were more appropriate to

the facts of this case.        Yet the court never explained if it was

using   those   factors   to    measure    the   likelihood   of   consumer

confusion.      The court described the three nominative fair use

factors as: (1) whether "the product [was] readily identifiable

without use of the mark," (2) whether the defendant "utilize[d]

more of the mark than [was] necessary," and (3) whether the

defendant "falsely suggested that [it] was sponsored or endorsed by

the trademark holder."     It found that the first and third factors

weighed in favor of Building #19: Swarovski crystal was not readily

identifiable without use of the "Swarovski" name, and the proposed

ad made clear the product's origin, how it came into the hands of

Building #19 and that the sale was not sponsored by Swarovski.

Presumably, then, these factors did not suggest a likelihood of

confusion to the district court.

           In its application of the second factor, on which its

decision against Building #19 must have turned, the district court

stated that in the headline of the proposed advertisement, "the

name Swarovski is larger than any other font in that ad.              It's

larger than the name Building #19.          It's larger than the words

'one-day event.'    It is clearly, I think, more use of the mark than


                                    -14-
is   necessary   to    make   the   point."   Nevertheless,   the   court

apparently believed that the font and size of the word "Swarovski"

as it appeared in the advertisement's disclaimer was sufficient to

attract the attention of anyone reading the advertisement.           The

court concluded that "Defendant has some issues with its burden

under the nominative fair use test because I think that they are

wanting to use more of the mark than is necessary to describe the

product."

            This analysis does not mention consumer confusion, but

merely decided that Building #19 used "more of the mark than

necessary" to effectively communicate its message.       But as we have

explained, a trademark holder has no right to police "unnecessary"

use of its mark.      Whether necessary or not, a defendant's use of a

mark must be confusing in the relevant statutory sense for a

plaintiff to raise a viable infringement claim.      See Prestonettes,

Inc. v. Coty, 264 U.S. 359, 368 (1924) (Holmes, J.) ("When the mark

is used in a way that does not deceive the public we see no such

sanctity in the word as to prevent its being used to tell the

truth.   It is not taboo."); Dow Jones & Co., Inc. v. Int'l Sec.

Exch., Inc., 451 F.3d 295, 308 (2d Cir. 2006) ("While a trademark

conveys an exclusive right to the use of a mark in commerce in the

area reserved, that right generally does not prevent one who trades

a branded product from accurately describing it by its brand name,




                                     -15-
so long as the trader does not create confusion by implying an

affiliation with the owner of the product.").

               The word "Swarovski" in the headline of Building #19's

proposed advertisement might, in theory, have created confusion in

a number of ways: it might have made the ad look like one from

Swarovski rather than Building #19; it might have lead viewers to

believe that Swarovski endorsed or sponsored the sale; or it might

have suggested some official affiliation between Swarovski and

Building #19.        But the district court referenced none of these

possibilities in its analysis; instead, it simply applied the

second nominative fair use factor in order to restrict Building

#19's    use    of   the   word   "Swarovski"   to   the   minimum   font   size

necessary to convey its message.8

               Part of the difficulty may have stemmed from the fact

that different circuits use the doctrine to measure different

concepts.9      In the Ninth Circuit, the three factors are applied to



     8
      The district court did make brief references to the
likelihood of confusion in its questioning of counsel and when
introducing the nominative fair use test ("But what evidence is
there of confusion?"; "[U]nder this test, the likelihood of
confusion is evaluated by determining three factors . . . "), but
they do not support Swarovski's contention that the district court
made a finding on confusion.
     9
      The district court did suggest that it was following the lead
of Tiffany (NJ), Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010) in
applying the nominative fair use analysis, but Tiffany did "not
address the viability of the [nominative fair use] doctrine" and
instead applied existing Second Circuit precedent to resolve the
case. Id. at 102.

                                       -16-
determine confusion; they "replace[]" the traditional likelihood of

confusion   analysis    "as   the   proper    test   for   likely    consumer

confusion whenever defendant asserts to have referred to the

trademarked good itself."       Toyota Motor Sales, 610 F.3d at 1182

(internal quotation marks omitted).          But in the Third Circuit, the

three factors "demonstrate fairness"; once the plaintiff has proven

likely confusion through the traditional analysis, the defendant

may invoke the nominative fair use factors to show that its use of

the mark was fair.     Century 21 Real Estate Corp., 425 F.3d at 222

(emphasis added).

            We   are   especially   wary      here   because   the   court's

conclusion that Building #19 "has some issues with its burden under

the nominative fair use test" suggests that it had the Third

Circuit's "affirmative defense" iteration of the doctrine in mind.

See id.     As we explained above, the Third Circuit applies the

nominative fair use factors to measure fairness, not confusion, and

a defendant's failure to meet its burden under that version of the

test means nothing if the plaintiff has not first demonstrated a

likelihood of confusion through the traditional analysis. See id.

("Once plaintiff has met its burden of proving that confusion is

likely, the burden then shifts to defendant to show that its

nominative use of plaintiff's mark is fair.").

            Without at this time endorsing any particular approach to

the nominative fair use doctrine, it is enough to observe that


                                    -17-
whether the factors serve as the plaintiff's case-in-chief (as

appears to be true in the Ninth Circuit)10 or as an affirmative

defense (as in the Third)11 a trademark defendant has no burden to

prove anything until the plaintiff has first met its responsibility

to show infringement by demonstrating that the defendant's use of

its mark is likely to confuse consumers. Cf. KP Permanent Make-Up,

Inc., 543 U.S. at 120 ("[I]t is only when a plaintiff has shown

likely     confusion   by    a    preponderance    of   the   evidence   that   a

defendant could have any need of an affirmative defense.").12               The

district     court   erred       by   granting   Swarovski's   request   for    a

preliminary injunction without first finding that Building #19's

use of its mark in the proposed advertisement was likely to cause

confusion.




     10
          Toyota Motor Sales, 610 F.3d at 1182-83.
     11
          Century 21 Real Estate Corp., 425 F.3d at 220-22.
     12
      Swarovski offers a final reason for affirming the district
court on this point, suggesting that because Building #19 proposed
to the district court that it apply the nominative fair use test,
Building #19 either is estopped from challenging it on appeal or
has waived its right to do so. See Perry v. Blum, 629 F.3d 1, 8
(1st Cir. 2010) (judicial estoppel); Windsor Mount Joy Mut. Ins.
Co. v. Giragosian, 57 F.3d 50, 56 n.7 (1st Cir. 1995) (waiver).
But this argument misapprehends Building #19's challenge to the
district court's order; Building #19 does not contend that the
court should have applied an analysis other than the nominative
fair use test, but rather that the court applied the test
incorrectly. On appeal, it is not estopped from arguing, nor has
it waived its right to argue, that the district court misapplied
the nominative fair use doctrine.

                                        -18-
               This problem is related to the second ground for Building

#19's appeal: the absence of an irreparable injury finding.                            Even

though likelihood of success is "the cynosure" of the preliminary

injunction      test,     Borinquen       Biscuit       Corp.,    443    F.3d    at   115,

irreparable harm is still one of the four required elements for a

preliminary injunction.              See Weikert, 504 F.3d at 5.

               Swarovski       suggests    that    the    court    did    consider       the

likelihood of irreparable harm, since it noted at the beginning of

its decision that "because this is Plaintiffs' motion, Plaintiff

bears    the     burden    of     demonstrating         the     four    elements      of    a

preliminary      injunction."           Swarovski        also    highlights      evidence

presented in the hearing that its luxury brand reputation would

suffer as a result of its association with Building #19.                               But,

there was no formal finding of irreparable harm, and that is

consonant with the lack of any finding of confusion.                         Without an

explanation by the district court, there is no indication in the

record   that     the     court      concluded    that     Swarovski      would    suffer

irreparable      harm     if    it    allowed     the    advertisement      to     run      as

proposed.

               Swarovski also emphasizes that in the First Circuit, a

trademark       plaintiff        seeking     a     preliminary          injunction         who

demonstrates likely confusion creates a presumption of irreparable

harm.    See Am. Bd. of Psychiatry & Neurology, Inc. v. Johnson-

Powell, 129 F.3d 1, 3 (1st Cir. 1997) (citing Societe Des Produits


                                           -19-
Nestle, S.A. v. Casa Helvetia, Inc., 982 F.2d 633, 640 (1st Cir.

1992); Keds Corp. v. Renee Int'l Trading Corp., 888 F.2d 215, 220

(1st Cir. 1989); Camel Hair & Cashmere Inst. of Am., Inc. v.

Associated Dry Goods Corp., 799 F.2d 6, 14-15 (1st Cir. 1986)).   In

the past, we have applied this presumption because "[b]y its very

nature, trademark infringement results in irreparable harm because

the attendant loss of profits, goodwill, and reputation cannot be

satisfactorily quantified and, thus, the trademark owner cannot

adequately be compensated.   Hence, irreparable harm flows from an

unlawful trademark infringement as a matter of law."    Societe Des

Produits Nestle, S.A., 982 F.2d at 640.      But the recent Supreme

Court decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388,

393-94 (2006) has threatened the continuing viability of this

presumption. We briefly discuss the argument, although it does not

apply in the absence of a finding of confusion.

          In eBay, the Court reviewed a request for a permanent

injunction in a patent infringement dispute, and held that "the

decision whether to grant or deny injunctive relief rests within

the equitable discretion of the district courts, and . . . such

discretion must be exercised consistent with traditional principles

of equity, in patent disputes no less than in other cases governed

by such standards."   Id. at 394.   The Court therefore rejected the

general rule applied by the Court of Appeals that an injunction

should issue once patent infringement has been established, and


                               -20-
warned lower courts away from applying "broad classifications" or

"categorical rule[s]" that would pervert the traditional four-

factor     test.         Id.    at       393-94.          However,   two    concurrences

respectively        by    Chief      Justice        Roberts    and   Justice    Kennedy,

separately joined by a total of seven justices, suggested that such

rules could survive as "lesson[s] of . . . historical practice"

that might inform the district courts' equitable discretion "when

the   circumstances            of    a    case     bear   substantial      parallels   to

litigation the courts have confronted before."                             Id. at 395-97

(Kennedy, J., concurring); see also id. at 394-95 (Roberts, C.J.,

concurring).

             Since then, we have said that there is "no principled

reason why [eBay] should not apply" to a request for a preliminary

injunction to halt trademark infringement, despite the difference

in context.        Voice of the Arab World, Inc. v. MDTV Med. News Now,

Inc., 645 F.3d 26, 33 (1st Cir. 2011).                        However, we have so far

declined     to     address          whether       eBay's     bar    on    "general"   or

"categorical" rules includes the presumption of irreparable harm in

trademark disputes.             See id.          at 34.     Building #19 urges us to

address the issue now, and to hold, as other circuits have done in

patent and copyright infringement cases,13 that for preliminary

injunctions in trademark infringement suits, eBay prohibits a



      13
      No circuit court has yet decided whether eBay abolishes the
presumption of irreparable harm in trademark infringement cases.

                                              -21-
presumption of irreparable harm based on a showing of likely

success on the merits.         See Robert Bosch LLC v. Pylon Manuf. Corp.,

659 F.3d 1142, 1149 (Fed. Cir. 2011) (patent infringement); Perfect

10, Inc. v. Google, Inc., 653 F.3d 976, 981 (9th Cir. 2011), cert.

denied, 132 S. Ct. 1713 (2012) (copyright infringement); Salinger

v.   Colting,     607   F.3d    68,   76-78    (2d       Cir.   2010)      (copyright

infringement).

             But we need not decide that question to decide this case.

Whether or not the presumption of irreparable harm remains viable

in this context, it is difficult to see how irreparable harm could

be established without a finding of confusion, and so the district

court's decision did not include adequate findings to support its

grant of the injunction against Building #19.                       Cf. Am. Bd. of

Psychiatry and Neurology, 129 F.3d at 3 ("[A] trademark plaintiff

who demonstrates a likelihood of success on the merits creates a

presumption of irreparable harm.") (emphasis added).

             In   further   proceedings       on   the    claims     for    permanent

injunctive relief, the district court might conclude, as Swarovski

suggests in its brief, that Swarovski has presented sufficient

evidence to establish irreparable harm to its luxury reputation

without the benefit of the presumption, or that the facts of this

case   are   so   similar      to   past   cases     "that      a   presumption    of

irreparable injury is an appropriate exercise of its discretion in

light of the historical traditions."               N. Am. Med. Corp. v. Axiom


                                       -22-
Worldwide, Inc., 522 F.3d 1211, 1228 (11th Cir. 2008) (citing eBay,

547 U.S. at 394-97 (concurring opinions of Chief Justice Roberts

and Justice Kennedy)).

           "Where the district court . . . has not addressed a

relevant and required issue," we may "remand the case to the

district court for further consideration."          Bos. Duck Tours, LP,

531 F.3d at 15.      In this case, the district court did not include

the necessary findings, first, on whether Swarovski was likely to

succeed   in   its    infringement    claim    against   Building   #19   by

establishing that the proposed advertisement was likely to confuse

consumers,     and   second,   on    whether    Swarovski   would    suffer

irreparable harm as a result of the ad.              Because affirmative

findings on both questions are required for a district court to

issue a preliminary injunction, see Weikert, 504 F.3d at 5, we

reverse the preliminary injunction against Building #19 and remand

the case to the district court for further proceedings on the

remaining claims for relief consistent with this opinion.

           It is so ordered.




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